TABLE OF CONTENTS I. INTRODUCTION 639 II. COPYRIGHT LAW AND COMPUTER SOFTWARE 641 A. CONTU and the Protection of Software via Copyright 641 B. Functionality and Expressiveness Can Coexist 644 III. WHAT COPYRIGHT PROTECTION FOR COMPUTER SOFTWARE MEANS 646 A. Defining and Protecting Software's Constituent Parts 646 B. Non-Literal Similarity and Computer Software 649 IV. CONCLUSION 651 I. INTRODUCTION
It was not a foregone conclusion that Congress would choose to make computer software copyrightable. In the lengthy period of study preceding the 1976 Copyright Act, as well as afterward, some scholars advocated sui generis intellectual property protection for the digital code that would run certain hardware devices. (1) And even the commission that Congress convened to study the issue split in its recommendation. (2)
But when Congress made clear that computer programs would, in fact, be copyrightable, it effectively imported several centuries' worth of well-studied (if often misunderstood) legal doctrines to bear on the questions that would inevitably follow from its decision to categorize software as a "literary work," protectable like any other. Sorting out the proper application of these copyright doctrines--to operating systems, video displays, nested hierarchies embedded in functional menus, and other elements of software--has not always been straightforward. (3) But the essential, threshold proposition stands: by bringing software into the world of copyright, Congress plainly did not mean to abrogate longstanding copyright principles; it meant to subject software to them.
Are non-literal elements of computer software--for example, its "structure, sequence, and organization" (4)--protectable in their own right, separate and apart from the literal code? The answer is to be found in pre-existing principles of copyright protection: because the non-literal elements of "literary works" had, at the time, long been understood to be protectable, and because Congress chose to classify software as a "literary work," the non-literal elements of software are indeed protectable. There is no indication in the text or history of the Copyright Act to suggest otherwise. And it is no answer to say that computer software should be treated differently--with a thinner scope of protection in this and other respects--because it is "functional." Congress was well aware that computer software is inherently functional in respects that other literary works are not. Yet it still made computer software copyrightable.
It seems to me that Professor Menell, in his valuable contribution to this volume, implicitly embraces the view that Congress meant for the protection afforded computer software to be different from the protection afforded other works, because computer software is functional. From that premise, he argues that the Federal Circuit in Oracle v. Google erred at every turn. But the premise is, I think, mistaken. And to the extent that critics of Oracle v. Google base their complaints on the notion that the functional nature of software should yield a meaningfully narrower scope of protection from that afforded other works, it is incumbent on such critics to articulate precisely where Congress evinced that intention. As the Register of Copyrights in the era when many questions of first impression concerning the scope of digital rights initially presented themselves, I am not aware of any evidence that Congress ever did so.
COPYRIGHT LAW AND COMPUTER SOFTWARE
CONTU and the Protection of Software via Copyright
In 1980, as the world sat on the brink of the digital age, Congress amended the Copyright Act to provide computer programs the same copyright protection as all other literary works. (5) Its choice to do so, however, was far from preordained. Within academia and beyond, scholars and practitioners debated the proper type--and the proper scope--of protection for computer programs. Some recommended denying copyright protection to computer software altogether, observing, for example, that "[o]ne should become suspicious of the need for protection at present upon learning that the software industry is currently burgeoning without the use of copyright...." (6) Others proposed protecting computer programs with specially tailored legislation, whether appended to an existing statute or in new, standalone provisions. (7) one scholar, for example, proposed creating what he termed "the petty patent," which would protect computer programs for a shorter time period than the typical seventeen-year patent, and which would require elements borrowed from both copyright and patent law: originality, novelty, and utility. (8) Another suggested that a special section be added to the Copyright Statute wherein Congress could account for the fact that "in some respects... a new computer program is similar to a new machine," but in other respects "a computer program can be duplicated with the same ease that one can duplicate a literary work." (9)
In view of the longstanding debate on the subject, Congress tasked a commission--the National Commission on New Technological Uses of Copyrighted Works ("CONTU")--with analyzing and recommending appropriate copyright protection for software. After careful study and consideration, CoNTU released a final report in which it recommended that federal law treat computer software as copyrightable material. (10)
Congress adopted CONTU's recommendations wholesale, making its report particularly useful in terms of shedding light on Congress's intent. (11) In the report, CONTU made clear its view that software should be treated no different than any other work of authorship (12)--protectable if original. CONTU recommended that Congress amend the 1976 Copyright Act to "make explicit that computer programs, to the extent they embody an author's original creation, are proper subject matter of copyright." (13) Accordingly, under CONTU's recommendation, software would be protected as long as "the 'author' contributed something more than a 'merely trivial' variation, something recognizably 'his own.'" (14)
CONTU addressed at some length what protecting computer software should entail and how such protection would fit within existing copyright doctrines. Even then, it was apparent that the limitations contained in section 102(b) of the Copyright Act could pose particular challenges for computer software. That section states: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." Recognizing that essentially everything about software could, from a certain perspective, be characterized as falling under one or more of these rubrics, CONTU observed that "the distinction between copyrightable computer programs and uncopyrightable processes or methods of operations does not always seem to 'shimmer with clarity.'" (15) The majority of the commission thus thought it "important that the distinction between programs and processes be made clear." (16) To do so, it drew on the "venerable copyright case" Baker v. Selden, which it described as holding "that a valid copyright in a book describing a system of accounting, based upon the now-universal T-accounts, did not bar others from using that accounting system." (17) That holding, CONTU went on, "is often misconstrued as imposing a limit on copyrightability of works which express ideas, systems, or processes." But, CONTU continued, "[a]s Professor Nimmer observes, 'the rationale for the doctrine of Baker v. Selden in no event justifies the denial of copyrightability to any work.'" (18)
Congress enshrined Baker's holding in section 102(b) of the Copyright Act long before CoNTU was formed. Under Baker and section 102(b), CONTU explained, "[c]opyright... protects the program so long as it remains fixed in a tangible medium of expression but does not protect the electro-mechanical functioning of a machine."...