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Week 3
  • 1 Useful Articles

    • 1.1 Pivot Point, Int'l v. Charlene Products (2004)

      1

      372 F.3d 913

      2
      PIVOT POINT INTERNATIONAL, INCORPORATED, Plaintiff-Appellant, Cross-Appellee,
      v.
      CHARLENE PRODUCTS, INCORPORATED and Peter Yau, Defendants-Appellees, Cross-Appellants.
      3

      No. 01-3888.
      No. 02-1152.
      United States Court of Appeals, Seventh Circuit.
      Argued June 6, 2003.
      Decided June 25, 2004.
      Rehearing En Banc Denied August 10, 2004.[1]

      4

      [915] Robert E. Browne (Argued), Neal, Gerber & Eisenberg, Chicago, IL, for Plaintiff-Appellant, Cross-Appellee.

      5

      James B. Meyer (Argued), Meyer & Wyatt, Gary, IN, Martin H. Redish (Argued), Mayer, Brown, Rowe & Maw, Chicago, IL, for Defendants-Appellees, Cross-Appellants.

      6

      Before RIPPLE, KANNE and DIANE P. WOOD, Circuit Judges.

      7

      RIPPLE, Circuit Judge. Pivot Point International, Inc. ("Pivot Point"), brought this cause of action against Charlene Products, Inc., and its president Peter Yau (collectively "Charlene"), for copyright infringement pursuant to 17 U.S.C. § 501(b). The district court granted summary judgment for the defendants on the ground that the copied subject matter, a mannequin head, was not copyrightable under the Copyright Act of 1976 ("1976 Act"), 17 U.S.C. § 101 et seq. For the reasons set forth in the following opinion, we reverse the judgment of the district court and remand the case for proceedings consistent with this opinion. 

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      I. BACKGROUND
      9
      A. Facts
      10

      Pivot Point develops and markets educational techniques and tools for the hair design industry. It was founded in 1965 by Leo Passage, an internationally renowned hair designer. One aspect of Pivot Point's business is the design and development of mannequin heads, "slip-ons" (facial forms that slip over a mannequin head) and component hair pieces.

      11

      In the mid-1980s, Passage desired to develop a mannequin that would imitate the "hungry look" of high-fashion, runway models. Passage believed that such a mannequin could be marketed as a premium item to cutting-edge hair-stylists and to stylists involved in hair design competitions. Passage then worked with a German artist named Horst Heerlein to create an original sculpture of a female human head. Although Passage discussed his vision with Heerlein, Passage did not give Heerlein any specific dimensional requirements. From Passage's description, Heerlein created a sculpture in plaster entitled "Mara."

      12

      Wax molds of Mara were made and sent to Pivot Point's manufacturer in Hong Kong. The manufacturer created exact reproductions of Mara in polyvinyl chloride ("PVC"). The manufacturer filled the PVC form with a liquid that expands and hardens into foam. The process of creating the Mara sculpture and of developing the mannequin based on the sculpture took approximately eighteen months.

      13

      In February of 1988, when Pivot Point first inspected the PVC forms of Mara, it discovered that the mannequin's hairline had been etched too high on the forehead. The manufacturer corrected the mistake by adding a second, lower hairline. Although the first, higher hairline was visible upon inspection, it was covered with implanted hair. The early PVC reproductions of Mara, and Pivot Point's first shipment of the mannequins in May of 1988, possessed the double hairlines.

      14

      About the same time that it received its first shipment of mannequins, Pivot Point obtained a copyright registration for the design of Mara, specifically the bareheaded female human head with no makeup or hair. Heerlein assigned all of his rights in the Mara sculpture to Pivot Point. Pivot Point displayed the copyright notice in the name of Pivot Point on each mannequin.

      15

      Pivot Point enjoyed great success with its new mannequin. To respond to customer demand, Pivot Point began marketing the Mara mannequin with different types and lengths of hair, different skin [916] tones and variations in makeup; however, no alterations were made to the facial features of the mannequin. For customer ease in identification, Pivot Point changed the name of the mannequin based on its hair and skin color; for instance, a Mara mannequin implanted with yak hair was called "Sonja," and the Mara mannequin implanted with blonde hair was called "Karin."

      16

      At a trade show in 1989, Charlene, a wholesaler of beauty products founded by Mr. Yau,[2] displayed its own "Liza" mannequin, which was very close in appearance to Pivot Point's Mara. In addition to the strikingly similar facial features, Liza also exhibited a double hairline that the early Mara mannequins possessed.

      17

      On September 24, 1989, Pivot Point noticed Charlene for copyright infringement. When Charlene refused to stop importing and selling the Liza mannequin, Pivot Point filed this action.[3]

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      B. District Court Proceedings
      19

      Pivot Point filed a multi-count complaint in district court against Charlene. It alleged violations of federal copyright law as well as state-law claims; Charlene both answered the complaint and counterclaimed. After extensive discovery, Pivot Point filed a comprehensive motion for summary judgment on its complaint and Charlene's counterclaims. Charlene filed several cross-motions for summary judgment as well. The district court tentatively ruled on these motions in July 2001 and issued a final ruling in October 2001.

      20
      1. Merits
      21

      In its opinion, the district court stated that "[t]he principal dispute is whether a human mannequin head is copyrightable subject matter. If it is, then there must be a trial on the question whether Liza is a knock off of Mara." R.401 at 1. The district court explained that, although sculptural works are copyrightable under 17 U.S.C. § 102(a)(5), sculptures that may be copyrighted are limited by the language of 17 U.S.C. § 101, which provides in relevant part:

      22

      Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

      23

      According to the district court, there was no question that Mara was a sculpture. However, in the district court's view, the sculpture served utilitarian ends. "Students in beauty schools practice styling hair on Mara's head and may practice other skills by applying makeup to Mara's eyes, lips, and cheeks. The parties dispute which functions are primary." R.401 at 2.

      24

      The district court then explored whether the artistic and utilitarian aspects of Mara were "separable" for purposes of the piece's copyrightability: "The statutory separability requirement confines copyright protection to those aspects of the design that exist apart from its utilitarian value, and that could be removed without reducing the usefulness of the item." Id. at 3. The district court observed that [917] drawing this line is particularly troublesome.

      25

      The statute, continued the district court, is generally recognized to suggest two types of separability: physical separability and conceptual separability. The district court explained that physical separability occurs when the ornamental nature of the object can be physically removed from the object and that

      26

      [c]onceptual separability differs from physical separability by asking not whether the features to be copyrighted could be sliced off for separate display, but whether one can conceive of this process. Relying on a comment in the House Report on the 1976 amendments, the second circuit in Kieselstein-Cord [v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980),] purported to adopt conceptual separability as the exclusive test (632 F.2d at 992, contrasting that approach with Esquire [v. Ringer, 591 F.2d 796 (D.C.Cir.1978)], which opted for physical separability, 591 F.2d at 803-04). Why a court should repair to the legislative history is unclear; the second circuit did not identify any ambiguity in § 101 that needed to be resolved, and a statement in the House Report that what appears on the face of the statutory text to be two requirements (physical and conceptual separability) should be administered as just one is not a proposition that in today's legal climate can be indulged. The Supreme Court does not permit the use of legislative history to alter, as opposed to elucidate, a statutory text.

      27

      Id. at 4.

      28

      Despite this lack of statutory moorings, the district court nevertheless reviewed the differing formulations for conceptual separability and determined that the definition proposed by Professor Paul Goldstein was the best one: "a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it." R.401 at 5 (quoting 1 Paul Goldstein, Copyright: Principles, Law & Practice § 2.5.3, at 109 (1989)). The district court believed that the strength of this definition "comes from the fact that it differs little, if at all, from the test of physical separability embraced by the D.C. Circuit in Esquire and by the majority in Carol Barnhart [Inc., v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir.1985)]." Id. Applying this test led the district court to conclude that

      29

      Mara cannot be copyrighted because, even though one can conceive of Mara as a sculpture displayed as art, it would not be equally useful if the features that Pivot Point want to copyright were removed. So long as a utilitarian function is makeup tutoring and practice and the fact that Pivot Points sells Mara without eye or lip coloring shows that this is a function even if not, in Pivot Point's view, the "primary" one — the utilitarian value would be diminished by removing the aesthetic features that Pivot Point wants to protect by copyright.

      30

      Id.

      31

      As a final matter, the district court distinguished two cases, Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir.1996), and Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir.1996), which upheld the copyrightability of animal and fish mannequins. The district court found the Hart case unpersuasive, but concluded that "one cannot say of Mara what the fourth circuit said of animal mannequins: Mara is valued not for 'its own appearance' but for what it enables students to do and learn. Mara is a 'useful article' as § 101 and Superior Form Builders deploy that term." Id. at 6.

      32
      2. Fee Petition
      33

      [918] Although fees are available under the 1976 Act, the district court's order made no provision for fees. Charlene, therefore, sought an award of attorneys' fees of approximately $421,915 pursuant to 17 U.S.C. § 505. Charlene submitted its fees to Pivot Point and sought to confer and exchange information as required by Northern District of Illinois Local Rule 54.3(d). Pivot Point would not participate in this exercise on the basis that any fee request would be untimely because Charlene had missed the fourteen-day deadline for filing a fee motion set forth in Federal Rule of Civil Procedure 54(d)(2)(B).

      34

      Charlene then moved for an instruction from the district court ordering Pivot Point to participate in the fee request process but the district court refused. It explained that its "opinion and declaratory judgment resolving this case on the merits did not make any provision for attorneys' fees." R.413 at 1. Because the judgment did not contain an order with respect to an attorneys' fee petition, the district court did not believe Local Rule 54.3 was applicable. Instead, the parties were bound by the fourteen-day deadline set forth in Federal Rule 54(d)(2)(B). Furthermore, the district court believed that its reading of Local Rule 54.3 — as not extending the time period allowed in Federal Rule 54 — saved the local rule because otherwise it would be inconsistent with Federal Rule 54 and therefore invalid pursuant to Federal Rule 83.[4]

      35

      Finally, the district court acknowledged that it had the discretion to extend the time to file such a motion; however, it stated that it was "not even slightly disposed to grant any [extension], because the parties knew well before October 2 what the judgment was likely to provide." Id. at 1.

      36

      Pivot Point now appeals from the district court's summary judgment in favor of Charlene; Charlene appeals from the district court's judgment with respect to its attorneys' fee petition.

      37
      II. ANALYSIS
      38
      A. Standard of Review
      39

      This court reviews de novo a district court's grant of summary judgment. See Silk v. City of Chicago, 194 F.3d 788, 798 (7th Cir.1999). In evaluating the judgment, we "construe all facts in the light most favorable to the non-moving party and draw all reasonable and justifiable inferences in favor of that party." Bellaver v. Quanex Corp., 200 F.3d 485, 491-92 (7th Cir.2000). If the record shows "that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law," summary judgment is appropriate. Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

      40
      B. Copyrightability
      41

      [919] The central issue in this case is whether the Mara mannequin is subject to copyright protection. This issue presents, at bottom, a question of statutory interpretation. We therefore begin our analysis with the language of the statute. Two provisions contained in 17 U.S.C. § 101 are at the center of our inquiry. The first of these is the description of pictorial, graphic and sculptural works:

      42

      Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

      43

      The definition section further provides that "[a] 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a 'useful article.'" 17 U.S.C. § 101. As is clear from the definition of pictorial, graphic and sculptural work, only "useful article[s]," as the term is further defined, are subject to the limitation contained in the emphasized language above. If an article is not "useful" as the term is defined in § 101, then it is a pictorial, graphic and sculptural work entitled to copyright protection (assuming the other requirements of the statute are met).

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      1. Usefulness
      45

      Pivot Point submits that the Mara mannequin is not a "useful article" for purposes of § 101 because its "inherent nature is to portray the appearance of runway models. Its value," continues Pivot Point, "resides in how well it portrays the appearance of runway models, just as the value of a bust — depicting Cleopatra, for example, ... — would be in how well it approximates what one imagines the subject looked like." Appellant's Br. at 19. Pivot Point relies upon the decisions of the Fourth Circuit in Superior Form Builders and of the Second Circuit in Hart for the proposition that mannequins, albeit in those cases animal and fish mannequins, are not useful articles. Specifically, the Fourth Circuit explained that

      46

      [a] mannequin provides the creative form and expression of the ultimate animal display.... Even though covered with a skin, the mannequin is not invisible but conspicuous in the final display. The angle of the animal's head, the juxtaposition of its body parts, and the shape of the body parts in the final display is little more than the portrayal of the underlying mannequin. Indeed, the mannequin can even portray the intensity of flexed body parts, or it can reveal the grace of relaxed ones. None of these expressive aspects of a mannequin is lost by covering the mannequin with a skin. Thus, any utilitarian aspect of the mannequin exists "merely to portray the appearance" of the animal.

      47

      Superior Form Builders, 74 F.3d at 494; see also Hart, 86 F.3d at 323 ("The function of the fish form is to portray its own appearance, and that fact is enough to bring it within the scope of the Copyright Act."). Consequently, in Pivot Point's view, because the Mara mannequin performs functions similar to those of animal [920] and fish mannequins, it is not a useful article and is therefore entitled to full copyright protection.

      48

      Charlene presents us with a different view. It suggests that, unlike the animal mannequins at issue in Superior Form Builders and in Hart, the Mara mannequin does have a useful function other than portraying an image of a high-fashion runway model. According to Charlene, Mara also is marketed and used for practicing the art of makeup application. Charlene points to various places in the record that establish that Mara is used for this purpose and is, therefore, a useful article subject to the limiting language of § 101.

      49

      Pivot Point strongly disputes that the record establishes such a use and argues that the district court's reliance on Charlene's alleged proof improperly resolves an issue of fact against the non-moving party in contravention of Federal Rule of Civil Procedure 56.[5] Indeed, our own review of the record leads us to believe that many of the documents cited by Charlene are susceptible to more than one interpretation.

      50

      Nevertheless, we shall assume that the district court correctly ruled that Mara is a useful article and proceed to examine whether, despite that usefulness, it is amenable to copyright protection.

      51
      2. Separability
      52

      We return to the statutory language. A useful article falls within the definition of pictorial, graphic or sculptural works "only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101.[6] It is common [921] ground between the parties and, indeed, among the courts that have examined the issue, that this language, added by the 1976 Act, was intended to distinguish creative works that enjoy protection from elements of industrial design that do not. See H.R.Rep. No. 94-1476, at 55 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5668 (stating that the purpose behind this language was "to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design"). Although the Congressional goal was evident, application of this language has presented the courts with significant difficulty. Indeed, one scholar has noted: "Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectible pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design." Paul Goldstein, 1 Copyright § 2.5.3, at 2:56 (2d ed.2004).

      53

      The difficulty in the application of this language would not have come, in all likelihood, as a surprise to the Congressional drafters. The language employed by Congress is not the language of a bright-line rule of universal application. Indeed, the circuits that have addressed the interpretative problem now before us uniformly have recognized that the wording of the statute does not supply categorical direction, but rather requires the Copyright Office and the courts "to continue their efforts to distinguish applied art and industrial design." Robert C. Denicola, Applied Art & Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L.Rev. 707, 730 (1983). In short, no doubt well-aware of the myriad of factual scenarios to which its policy guidance would have to be applied, Congress wisely chose to provide only general policy guidance to be implemented on a case-by-case basis through the Copyright Office and the courts.

      54

      Even though the words of the statute do not yield a definitive answer, we believe that the statutory language nevertheless provides significant guidance in our task. We therefore shall examine in more detail what that language has to tell us, and we return to the necessary starting point of our task, § 101.

      55

      The statutory language provides that "the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article." Although the italicized clause contains two operative phrases — "can be identified separately from" and "are capable of existing independently of" — we believe, as have the other courts that have grappled with this issue,[7] that Congress, in amending the statute, intended these two phrases to state a single, integrated standard to determine when there is sufficient separateness between the utilitarian and artistic aspects of a work to justify copyright protection.

      56

      [922] Certainly, one approach to determine whether material can be "identified separately," and the most obvious, is to rely on the capacity of the artistic material to be severed physically from the industrial design. See Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (holding that a statuette incorporated into the base of a lamp is copyrightable). When a three-dimensional article is the focus of the inquiry, reliance on physical separability can no doubt be a helpful tool in ascertaining whether the artistic material in question can be separated from the industrial design. As Professor Denicola points out, however, such an approach really is not of much use when the item in question is two-dimensional. See Denicola, supra, at 744. Indeed, because this provision, by its very words, was intended to apply to two-dimensional material, it is clear that a physical separability test cannot be the exclusive test for determining copyrightability.

      57

      It seems to be common ground between the parties and, indeed, among the courts and commentators, that the protection of the copyright statute also can be secured when a conceptual separability exists between the material sought to be copyrighted and the utilitarian design in which that material is incorporated.[8] The [923] difficulty lies not in the acceptance of that proposition, which the statutory language clearly contemplates, but in its application. As noted by Pivot Point, the following tests have been suggested for determining when the artistic and utilitarian aspects of useful articles are conceptually separable: 1) the artistic features are "primary" and the utilitarian features "subsidiary," Kieselstein-Cord, 632 F.2d at 993; 2) the useful article "would still be marketable to some significant segment of the community simply because of its aesthetic qualities," Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2004); 3) the article "stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function," Carol Barnhart, 773 F.2d at 422 (Newman, J., dissenting); 4) the artistic design was not significantly influenced by functional considerations, see Brandir Int'l, 834 F.2d at 1145 (adopting the test forwarded in Denicola, supra, at 741); 5) the artistic features "can stand alone as a work of art traditionally conceived, and ... the useful article in which it is embodied would be equally useful without it," Goldstein, 1 Copyright § 2.5.3, at 2:67; and 6) the artistic features are not utilitarian, see William F. Patry, 1 Copyright Law & Practice 285 (1994).

      58

      Pivot Point submits that "the test for conceptual separability should reflect the focus of copyright law — the artistic, not the marketability, design process, or usefulness." Appellant's Br. at 26. According to Pivot Point, the central inquiry is whether the article is a "'work of art.'" Id. Pivot Point further explains:

      59

      Conceptual separability would inhere in a "work of art" integrated into a useful article, or a "work of art" put to unexpected use, since the independent concepts of art and utility coexist. Conceptual separability would not exist in a useful article rendered simply aesthetically pleasing, since the independent concept of art does not exist, only the "artistic" embellishment to its utility, so that such "artistic" features are actually utilitarian. Should the "artistic" embellishment of utility reach the level of a "work of art," however, conceptual separability may exist.

      60

      Id. at 26-27. This test, Pivot Point suggests, has the additional benefit of "satisf[ying] most, if not all, of the current definitions of conceptual separability." Id. at 27.

      61

      Charlene, by contrast, lauds the district court's adoption of Professor Goldstein's test. "Under Goldstein's test," Charlene [924] asserts, "'a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it.'" Appellees' Br. at 26 (quoting R.401 at 5; emphasis added). Charlene contends that this approach mirrors that adopted by the majority in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), "the most closely related precedent to the case at bar." Appellees' Br. at 26.

      62

      Although both sides present thoughtful explanations for their proposed tests, we perceive shortcomings in the parties' choices. With respect to Pivot Point's focus on the article as a "work of art," it is certainly correct that Congress, in enacting § 101, attempted to separate the artistic from the utilitarian. However, this approach necessarily involves judges in a qualitative evaluation of artistic endeavors — a function for which judicial office is hardly a qualifier. With respect to the Charlene's approach, we believe that the test, at least when applied alone, is tied too closely to physical separability and, consequently, does not give a sufficiently wide berth to Congress' determination that artistic material conceptually separate from the utilitarian design can satisfy the statutory mandate.

      63

      In articulating a meaningful approach to conceptual separability, we note that we are not the first court of appeals to deal with this problem. The work of our colleagues in the other circuits provides significant insights into our understanding of Congressional intent. Indeed, even when those judges have disagreed on the appropriate application of the Congressional mandate to the case before them, their insight yield a bountiful harvest for those of us who now walk the same interpretative path.

      64

      Among the circuits, the Court of Appeals for the Second Circuit has had occasion to wrestle most comprehensively with the notion of "conceptual separability." Its case law represents, we believe, an intellectual journey that has explored the key aspects of the problem. We therefore turn to a study of the key stages of doctrinal development in its case law.

      65
      a.
      66

      The Second Circuit first grappled with the issue of conceptual separability in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980). In that case, Kieselstein-Cord, a jewelry designer, had created a line of decorative and jeweled belt buckles inspired by works of art; he obtained copyright registrations for his designs. When the line was successful, Accessories by Pearl, Inc., ("Pearl") copied the designs and marketed its own, less-expensive versions of the belt buckles. Kieselstein-Cord then sued Pearl for copyright infringement; however, Pearl claimed that the belt buckles were not copyrightable because they were "'useful articles' with no 'pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects' of the buckles." Id. at 991-92. The Second Circuit disagreed. Although it did not articulate a specific test for evaluating conceptual separability, it focused on the "primary" and "subsidiary" elements of the article and concluded:

      67

      We see in appellant's belt buckles conceptually separable sculptural elements, as apparently have the buckles' wearers who have used them as ornamentation for parts of the body other than the waist. The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function. This conclusion is not at variance with the [925] expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design. Pieces of applied art, these buckles may be considered jewelry, the form of which is subject to copyright protection.

      68

      Id. at 993 (internal citations omitted).[9]

      69
      b.
      70

      The Second Circuit revisited the issue of conceptual separability in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985). In that case, Carol Barnhart, a provider of retail display items, developed four mannequins consisting of human torsos for the display of shirts and jackets. It obtained copyright registrations for each of the forms.[10] When a competitor, Economy Cover, copied the designs, Carol Barnhart claimed infringement of that copyright. The Second Circuit held that the designs were not copyrightable. It explained:

      71

      [W]hile copyright protection has increasingly been extended to cover articles having a utilitarian dimension, Congress has explicitly refused copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the useful article. Such works are not copyrightable regardless of the fact that they may be "aesthetically satisfying and valuable.

      72

      Applying these principles, we are persuaded that since the aesthetic and artistic features of the Barnhart forms are inseparable from the forms' use as utilitarian articles the forms are not copyrightable.... [Barnhart] stresses that the forms have been responded to as sculptural forms, and have been used for purposes other than modeling clothes, e.g., as decorating props and signs without any clothing or accessories. While this may indicate that the forms are "aesthetically satisfying and valuable," it is insufficient to show that the forms possess aesthetic or artistic features that are physically or conceptually separable from the forms' use as utilitarian objects to display clothes. On the contrary, to the extent the forms possess aesthetically pleasing features, even when these features are considered in the aggregate, they cannot be conceptualized as existing independently of their utilitarian function.

      73

      Id. at 418 (internal citations omitted). The court also rejected the argument that Kieselstein-Cord was controlling. The majority explained that what distinguished the Kieselstein-Cord buckles from the Barnhart forms was "that the ornamented surfaces of the buckles were not in any respect required by their functions; the artistic and aesthetic features would thus be conceived as having been added to, or superimposed upon, an otherwise utilitarian article." Id. at 419.

      74

      Perhaps the most theoretical and comprehensive discussion of "conceptual separability," as opposed to physical separability, can be found in the dissenting opinion of Judge Newman in Carol Barnhart, 773 F.2d at 419. After reviewing the possible ways to determine conceptual separability, Judge Newman set forth his choice and rationale:

      75

      How, then, is "conceptual separateness" to be determined? In my view, the answer derives from the word "conceptual." For the design features to be "conceptually separate" from the utilitarian [926] aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. The test turns on what may reasonably be understood to be occurring in the mind of the beholder or, as some might say, in the "mind's eye" of the beholder....

      76

      The "separateness" of the utilitarian and non-utilitarian concepts engendered by an article's design is itself a perplexing concept. I think the requisite "separateness" exists whenever the design creates in the mind of the ordinary observer two different concepts that are not inevitably entertained simultaneously. Again, the example of the artistically designed chair displayed in a museum may be helpful. The ordinary observer can be expected to apprehend the design of a chair whenever the object is viewed. He may, in addition, entertain the concept of a work of art, but, if this second concept is engendered in the observer's mind simultaneously with the concept of the article's utilitarian function, the requisite "separateness" does not exist. The test is not whether the observer fails to recognize the object as a chair but only whether the concept of the utilitarian function can be displaced in the mind by some other concept. That does not occur, at least for the ordinary observer, when viewing even the most artistically designed chair. It may occur, however, when viewing some other object if the utilitarian function of the object is not perceived at all; it may also occur, even when the utilitarian function is perceived by observation, perhaps aided by explanation, if the concept of the utilitarian function can be displaced in the observer's mind while he entertains the separate concept of some non-utilitarian function. The separate concept will normally be that of a work of art.

      77

      Id. at 422-23.

      78
      c.
      79

      The Second Circuit soon addressed conceptual separability again in Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir.1987). That case involved the work of an artist, David Levine; specifically, Levine had created a sculpture of thick, interwoven wire. A cyclist friend of Levine's realized that the sculpture could, with modification, function as a bicycle rack and thereafter put Levine in touch with Brandir International, Inc. ("Brandir"). The artist and the Brandir engineers then worked to modify the sculpture to produce a workable and marketable bicycle rack. Their work culminated in the "Ribbon Rack," which Brandir began marketing in 1979. Shortly thereafter, Cascade Pacific Lumber Co. ("Cascade") began selling a similar product, and, in response, Brandir applied for copyright protection and began placing copyright notices on its racks. The Copyright Office, however, rejected the registration on the ground that the rack did not contain any element that was "capable of independent existence as a copyrightable pictorial, graphic or sculptural work apart from the shape of the useful article." Id. at 1146.

      80

      The court first considered the possible tests for conceptual separability in light of its past decisions and, notably, attempted to reconcile its earlier attempts:

      81

      Perhaps the differences between the majority and the dissent in Carol Barnhart might have been resolved had they had before them the Denicola article on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, [67 Minn. L.Rev. 707 (1983)].... Denicola argues that "the statutory directive requires a distinction [927] between works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in which they appear." He views the statutory limitation of copyrightability as "an attempt to identify elements whose form and appearance reflect the unconstrained perspective of the artist," such features not being the product of industrial design. Id. at 742. "Copyrightability, therefore, should turn on the relationship between the proffered work and the process of industrial design." Id. at 741. He suggests that "the dominant characteristic of industrial design is the influence of nonaesthetic, utilitarian concerns" and hence concludes that copyrightability "ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations." Id. To state the Denicola test in the language of conceptual separability, if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

      82

      We believe that Professor Denicola's approach provides the best test for conceptual separability and, accordingly, adopt it here for several reasons. First, the approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles' function, while in Carol Barnhart the distinctive features of the torsos — the accurate anatomical design and the sculpted shirts and collars — showed clearly the influence of functional concerns.... Second, the test's emphasis on the influence of utilitarian concerns in the design process may help ... "alleviate the de facto discrimination against nonrepresentational art that has regrettably accompanied much of the current analysis." Id. at 745.

      83

      Id. at 1145 (footnotes omitted).

      84

      Applying Professor Denicola's test to the Ribbon Rack, the court found that the rack was not copyrightable. The court stated that, "[h]ad Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the application to a utilitarian end nor commercialization of that use would have caused the object to forfeit its copyrighted status." Id. at 1147. However, when the Ribbon Rack was compared to earlier sculptures, continued the court, it was "in its final form essentially a product of industrial design." Id.

      85

      In creating the RIBBON Rack, the designer ... clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose. These altered design features of the RIBBON Rack, including the spacesaving, open design achieved by widening the upper loops ..., the straightened vertical elements that allow in- and above-ground installation of the rack, the ability to fit all types of bicycles and mopeds, and the heavy-gauged tubular construction of rustproof galvanized steel, are all features that combine to make for a safe, secure, and maintenance-free system of parking bicycles and mopeds.

      86

      . . .

      87

      ... While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the product of industrial design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures as aesthetic choices.... Thus there remains no artistic element of the RIBBON Rack that can be identified as [928] separate and "capable of existing independently, of, the utilitarian aspects of the article.

      88

      Id. at 1146-47.

      89
      d.
      90

      We believe that the experience of the Second Circuit is also reflected in the more recent encounter of the Fourth Circuit with the same problem. In Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir.1996), the court considered whether animal mannequins qualified for copyright protection. The Fourth Circuit first considered whether the mannequins were useful articles as defined by § 101 and concluded that they were not:

      91

      A mannequin provides the creative form and expression of the ultimate animal display.... Even though covered with a skin, the mannequin is not invisible but conspicuous in the final display. The angle of the animal's head, the juxtaposition of its body parts, and the shape of the body parts in the final display is little more than the portrayal of the underlying mannequin.... None of these expressive aspects of a mannequin is lost by covering the mannequin with a skin. Thus, any utilitarian aspect of the mannequin exists "merely to portray the appearance" of the animal. See 17 U.S.C. § 101.

      92

      ... It is the portrayal of the animal's body expression given by the mannequin that is thus protectable under the Copyright Act. We therefore agree with the district court in this case because "the usefulness of the forms is their portrayal of the appearance of animals." The mannequin forms "by definition are not useful articles.

      93

      Id. at 494 (quoting Superior Form Builders v. Dan Chase Taxidermy Supply Co., Inc., 851 F.Supp. 222, 223 (E.D.Va.1994)).

      94

      The court, however, also considered whether, if useful, the utilitarian and aesthetic aspects of the mannequin were separable:

      95

      To the extent that an argument can be made that the mannequins in this case perform a utilitarian function — other than portraying themselves — by supporting the mounted skins, we believe the function to be conceptually separable from the works' sculptural features. See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.1987) ("Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists."); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980) (finding sculptural element of belt buckle conceptually separable from utilitarian function).

      96

      Id. Thus, without specifically adopting one of the tests of conceptual separability, the Fourth Circuit determined that artistic work put into the design of the animal frame was copyrightable; the fact that a skin was placed on the model and that the model, therefore, was useful in the display of the skin did not negate the artistic elements of the design.[11]

      97
      e.
      98

      [929] There is one final Second Circuit case that bears comment. In Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d 133 (2d Cir.2004), the Second Circuit rejected the idea that a particular expression of features on a doll's face was not subject to copyright protection. The case arose out of the alleged copying of the facial features of Mattel's Barbie dolls by Goldberger Doll Manufacturing when creating its "Rockettes 2000" doll. On Goldberger's motion for summary judgment, the district court held that "copyright protection did not extend to Barbie's eyes, nose, and mouth ...." Id. at 134. The Second Circuit reversed. Although it did not speak specifically in terms of conceptual separability, the court's reasoning is nevertheless instructive; it stated:

      99

      The proposition that standard or common features are not protected is inconsistent with copyright law. To merit protection from copying, a work need not be particularly novel or unusual. It need only have been "independently created" by the author and possess "some minimal degree of creativity." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).... There are innumerable ways of making upturned noses, bow lips, and widely spaced eyes. Even if the record had shown that many dolls possess upturned noses, bow lips, and wide-spread eyes, it would not follow that each such doll — assuming it was independently created and not copied from others — would not enjoy protection from copying.

      100

      Id. at 135 (footnotes and parallel citations omitted). Additionally, the court noted the scope of the copyright protection that the Barbie dolls enjoyed:

      101

      The copyright does not protect ideas; it protects only the author's particularized expression of the idea. Thus, Mattel's copyright in a doll visage with an upturned nose, bow lips, and widely spaced eyes will not prevent a competitor from making dolls with upturned noses, bow lips, and widely spaced eyes, even if the competitor has taken the idea from Mattel's example, so long as the competitor [930] has not copied Mattel's particularized expression. An upturned nose, bow lips, and wide eyes are the "idea" of a certain type of doll face. That idea belongs not to Mattel but to the public domain. But Mattel's copyright will protect its own particularized expression of that idea and bar a competitor from copying Mattel's realization of the Barbie features.

      102

      Id. at 136 (citations omitted).

      103
      C. Application
      104

      Each of these cases differs in the object at issue and the method by which the court evaluated whether the object was entitled to copyright protection. Yet, each court attempted to give effect to "the expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design." Kieselstein-Cord, 632 F.2d at 993; see also Carol Barnhart, 773 F.2d at 417-18 (reviewing legislative history in detail and concluding that, although "copyright protection has increasingly been extended to cover articles having a utilitarian dimension," Congress did not intend all useful articles that are "aesthetically satisfying or valuable" to be copyrightable); Brandir Int'l, 834 F.2d at 1145 (adopting Professor Denicola's test that makes copyrightability dependent upon "the extent to which the work reflects artistic expression uninhibited by functional considerations" (internal quotation marks and citations omitted)); Superior Form Builders, 74 F.3d at 494 (distinguishing the animal mannequins at issue from "aesthetically pleasing articles of industrial design").

      105

      The Second Circuit cases exhibit a progressive attempt to forge a workable judicial approach capable of giving meaning to the basic Congressional policy decision to distinguish applied art from uncopyrightable industrial art or design. In Kieselstein-Cord, the Second Circuit attempted to distinguish artistic expression from industrial design by focusing on the present use of the item, i.e., the "primary ornamental aspect" versus the "subsidiary utilitarian function" of the object at issue. 632 F.2d at 993. In Carol Barnhart, the Second Circuit moved closer to a process-oriented approach:

      106

      What distinguishes those [Kieselstein-Cord] buckles from the Barnhart forms is that the ornamented surfaces of the buckles were not in any respect required by their utilitarian functions; the artistic and aesthetic features could thus be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article. The unique artistic design was wholly unnecessary to performance of the utilitarian function. In the case of the Barnhart forms, on the other hand, the features claimed to be aesthetic or artistic, e.g., the life-size configuration of the breasts and the width of the shoulders, are inextricably intertwined with the utilitarian feature, the display of clothes. Whereas a model of a human torso, in order to serve its utilitarian function, must have some configuration of the chest and some width of shoulders, a belt buckle can serve its function satisfactorily without any ornamentation of the type that renders the Kieselstein-Cord buckles distinctive.

      107

      773 F.2d at 419. Thus, it was the fact that the creator of the torsos was driven by utilitarian concerns, such as how display clothes would fit on the end product, that deprived the human torsos of copyright protection.

      108

      This process-oriented approach for conceptual separability — focusing on the process of creating the object to determine whether it is entitled to copyright protection — is more fully articulated in Brandir and indeed reconciles the earlier case law pertaining to conceptual separability.

      109

      [T]he approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, [931] for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles' function, while in Carol Barnhart the distinctive features of the torsos — the accurate anatomical design and the sculpted shirts and collars — showed clearly the influence of functional concerns. Though the torsos bore artistic features, it was evident the designer incorporated those features to further the usefulness of the torsos as mannequins.

      110

      Brandir, 834 F.2d at 1145.

      111

      Furthermore, Brandir is not inconsistent with the more theoretical rendition of Judge Newman in his Carol Barnhart dissent — that "the requisite 'separateness' exists whenever the design creates in the mind of an ordinary observer two different concepts that are not inevitably entertained simultaneously." 773 F.2d at 422. When a product has reached its final form as a result of predominantly functional or utilitarian considerations, it necessarily will be more difficult for the observer to entertain simultaneously two different concepts — the artistic object and the utilitarian object. In such circumstances, Brandir has the added benefit of providing a more workable judicial methodology by articulating the driving principle behind conceptual separability — the influence of industrial design. When the ultimate form of the object in question is "as much the result of utilitarian pressures as aesthetic choices," "[f]orm and function are inextricably intertwined," and the artistic aspects of the object cannot be separated from its utilitarian aspects for purposes of copyright protection. Brandir, 834 F.2d at 1147.

      112

      Conceptual separability exists, therefore, when the artistic aspects of an article can be "conceptualized as existing independently of their utilitarian function." Carol Barnhart, 773 F.2d at 418. This independence is necessarily informed by "whether the design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences." Brandir, 834 F.2d at 1145. If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. Conversely, when the design of a useful article is "as much the result of utilitarian pressures as aesthetic choices," id. at 1147, the useful and aesthetic elements are not conceptually separable.

      113

      Applying this test to the Mara mannequin, we must conclude that the Mara face is subject to copyright protection. It certainly is not difficult to conceptualize a human face, independent of all of Mara's specific facial features, i.e., the shape of the eye, the upturned nose, the angular cheek and jaw structure, that would serve the utilitarian functions of a hair stand and, if proven, of a makeup model. Indeed, one is not only able to conceive of a different face than that portrayed on the Mara mannequin, but one easily can conceive of another visage that portrays the "hungry look" on a high-fashion runway model. Just as Mattel is entitled to protection for "its own particularized expression" of an "upturned nose[], bow lips, and widely spaced eyes," Mattel, 365 F.3d at 136, so too is Heerlein (and, therefore, Pivot Point as assignee of the copyright registration) entitled to have his expression of the "hungry look" protected from copying.

      114

      Mara can be conceptualized as existing independent from its use in hair display or make-up training because it is the product of Heerlein's artistic judgment. When Passage approached Heerlein about creating the Mara sculpture, Passage did not provide Heerlein with specific dimensions or measurements; indeed, there is no evidence that Heerlein's artistic judgment was constrained by functional considerations. [932] Passage did not require, for instance, that the sculpture's eyes be a certain width to accommodate standard-sized eyelashes, that the brow be arched at a certain angle to facilitate easy make-up application or that the sculpture as a whole not exceed certain dimensional limits so as to fit within Pivot Point's existing packaging system. Such considerations, had they been present, would weigh against a determination that Mara was purely the product of an artistic effort. By contrast, after Passage met with Heerlein to discuss Passage's idea for a "hungry-look" model, Heerlein had carte blanche to implement that vision as he saw fit. Consequently, this is not a situation, such as was presented to the Second Circuit in Carol Barnhart, in which certain features ("accurate anatomical design and the sculpted shirts and collars") were included in the design for purely functional reasons. Brandir, 834 F.2d at 1145. Furthermore, unlike "the headless, armless, backless styrene torsos" which "were little more than glorified coat-racks used to display clothing in stores," Hart, 86 F.3d at 323, the creative aspects of the Mara sculpture were meant to be seen and admired. Thus, because Mara was the product of a creative process unfettered by functional concerns, its sculptural features "can be identified separately from, and are capable of existing independently of," its utilitarian aspects. It therefore meets the requirements for conceptual separability and is subject to copyright protection.

      115
      Conclusion
      116

      The Mara mannequin is subject to copyright protection. We therefore must reverse the summary judgment in favor of Charlene Products and Mr. Yau; the case is remanded for a trial on Pivot Point's infringement claim. Furthermore, because Charlene Products and Mr. Yau have not prevailed on the merits at this point, the judgment of the district court with respect to attorneys' fees must be vacated. The cross-appeal with respect to attorneys' fees is moot. Pivot Point may recover its costs in this court.

      117

      REVERSED AND REMANDED; CROSS-APPEAL DISMISSED

      118

      __________

      119

      KANNE, Circuit Judge, dissenting.

      120

      Writing for the majority, Judge Ripple has applied his usual thorough and scholarly approach to this difficult intellectual property problem; however, I cannot join the majority opinion because I am not persuaded that the "Mara" mannequin is copyrightable. All functional items have aesthetic qualities. If copyright provided protection for functional items simply because of their aesthetic qualities, Congress's policy choice that gives less protection in patent than copyright would be undermined. See American Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th Cir.1997).

      121

      The majority rightly assumes that Mara is a "useful article" as defined in 17 U.S.C. § 101. Opinion at 920. To receive copyright protection as a "sculptural work," then, Mara must come within the narrow restrictions placed on "useful articles" in the definition of pictorial, graphic, and sculptural works:

      122
      [T]he design of a useful article ... shall be considered a... sculptural work only if, and only to the extent that, such design incorporates ... sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
      123

      17 U.S.C. § 101 (emphasis added). As the district court noted, the statute requires, on its face, that sculptural features must be separately identified from the utilitarian aspects of the article ("conceptual separability") and they must exist independently from the utilitarian aspects of the article [933] ("physical separability") in order to receive copyright protection. As to whether both conceptual and physical separability are required for copyrightability, most courts and commentators have concluded that only one or the other test is appropriate. But that issue is not presented here because Mara is not copyrightable regardless of whether both or either is applied.

      124

      Taking physical separability first, the district court used examples from case law to illustrate that the sculptural features in many useful items can be physically removed from the object and sold separately without affecting the functionality of the useful article. See, e.g., Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (holding that a sculpture of a dancer carved into the base of a lamp may be copyrighted); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980) (holding that decorative belt buckles could be copyrighted as separate objects sold not to hold up one's pants).

      125

      Mara, on the other hand, has only functional attributes. Thus, any physical separation of a portion of her would not be independent of her utilitarian aspects. She is sold to beauty schools as a teaching device; students style her hair and apply makeup as realistic training for such pursuits on live subjects. A mannequin head without a neck, or with different eyes and musculature, would not serve the utilitarian purpose of applying makeup or teaching the art of matching hair styles to facial features. As the district court explained: "Beauty students style hair to flatter the face, not to be worn on featureless ovoids. The use of a mannequin head in training students of beauty schools lies in its aesthetic qualities." There is nothing in Mara that we could physically remove that would not be part of Mara's utility as a teaching aid. Like mannequins of human torsos, Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 418-19 (2d Cir.1985), mannequins of human faces are not physically separable from their functional purpose and are therefore not copyrightable.

      126

      Next, the district court considered various restatements of the meaning of "conceptual separability" (whether features can be identified or conceived of separately from the utilitarian aspects) and applied the most appropriate one to Mara. Professor Goldstein, in his treatise, Copyright: Principles, Law & Practice, presents a reasonable explanation of the statutory text: "a ... sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it." Mara has no conceptually separable features to which copyright protection could be granted. Her features are incapable of being identified separately from the utilitarian use of those features. Without features, the mannequin's head and neck would be little more than an egg on a stick, useless for its intended purpose. Mara possesses neither physical nor conceptual separability.

      127

      The majority, concluding that Congress intended "to state a single, integrated standard," deduced that the standard must be "conceptual separability." This may be correct, as it is very difficult to divine the distinction between physical and conceptual separability if those standards are properly stated. In my view, however, the majority's explanation of conceptual separability lacks a basis in the statute. As the majority sees it, conceptual separability "exists ... when the artistic aspects of an article can be conceptualized as existing independently of their utilitarian function." Opinion at 931. The majority further explains that the way to determine if this is the case is to look to the process of design: if independent "artistic" choices were made in the sculpture's creation, and such [934] choices were not later sullied by the influence of industrial design, then some of the useful article is a conceptually separable sculpture and therefore copyrightable, Opinion at 931-32.

      128

      Problematically, the majority's test for conceptual separability seems to bear little resemblance to the statute. The statute asks two questions: Does the useful article incorporate "sculptural features that can be identified separately from the utilitarian aspects" of the article? And are these features "capable of existing independently" from the utilitarian aspects? The copyright statute is concerned with protecting only non-utilitarian features of the useful article. To be copyrightable, the statute requires that the useful article's functionality remain intact once the copyrightable material is separated. In other words, Pivot Point needs to show that Mara's face is not a utilitarian "aspect" of the product "Mara," but rather a separate non-utilitarian "feature." The majority, by looking only to whether the features could also "be conceptualized as existing independently of their utilitarian function" and ignoring the more important question of whether the features themselves are utilitarian aspects of the useful article, mistakenly presupposes that utilitarian aspects of a useful article can be copyrighted. If we took away Mara's facial features, her functionality would be greatly diminished or eliminated, thus proving that her features cannot be copyrighted.

      129

      Moreover, the "process-oriented approach," advocated by the majority drifts even further away from the statute. Opinion at 930. The statute looks to the useful article as it exists, not to how it was created. I believe it simply is irrelevant to inquire into the origins of Mara's eyes, cheekbones, and neck. If such features have been fully incorporated as functional aspects of the mannequin, then copyright does not provide protection. Even if we were to look at the "process" that led to the creation of Mara, it is undeniable that, from the beginning, Pivot Point intended Mara to serve a functional purpose and commissioned her creation to fulfill that purpose (not to create a work of art for aesthetic beauty).

      130

      The majority, as evidenced by its emphasis on the fact that Charlene Products apparently copied Mara with its doll, "Liza," seems unduly concerned in this context with Charlene's questionable business practices. This is immaterial to the determination of whether the Mara doll is protected by copyright law. Importantly, other possible legal protections for Pivot Point's intellectual property — design patent, trademark, trade dress, and state unfair competition law — are available to address the majority's concerns. Copyright does not protect functional products. Charlene is free, under its own brand name, to copy and sell copies of useful articles that do not have patent protection. See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964). I fear that the majority's opinion grants copyright protection to functional aspects of a useful article. I would, therefore, affirm the district court's grant of summary judgment in favor of Charlene Products and Mr. Yau.

      131

      __________

      132

      [1] Chief Judge Joel M. Flaum, The Honorable Frank H. Easterbrook and The Honorable Ann Claire Williams did not participate in the consideration of the petition for rehearing en banc.

      133

      [2] Mr. Yau was not unfamiliar with Pivot Point. Shortly before founding Charlene Products in 1985, Mr. Yau had worked for Pivot Point.

      134

      [3] Charlene eventually obtained a copyright registration for its Liza mannequin.

      135

      [4] Federal Rule of Civil Procedure 83 provides:

      136

      (1) Each district court, acting by a majority of its district judges, may, after giving appropriate public notice and an opportunity for comment, make and amend rules governing its practice. A local rule shall be consistent with — but not duplicative of — Acts of Congress and rules adopted under 28 U.S.C. §§ 2072 and 2075, and shall conform to any uniform numbering system prescribed by the Judicial Conference of the United States. A local rule takes effect on the date specified by the district court and remains in effect unless amended by the court or abrogated by the judicial council of the circuit. Copies of rules and amendments shall, upon their promulgation, be furnished to the judicial council and the Administrative Office of the United States Courts and be made available to the public.

      137

      Fed.R.Civ.P. 83(a)(1) (emphasis added).

      138

      [5] The district court relied heavily on this fact in concluding that Mara is a useful object:

      139

      Mara is a work of "applied art" and displays "artistic craftsmanship" — Pivot Point commissioned a sculptor to design a mannequin head that emulates features of runway models — but serves utilitarian ends: Students in beauty schools practice styling hair on Mara's head and may practice other skills by applying makeup to Mara's eyes, lips, and cheeks. The parties dispute which functions are primary. Charlene Products says that Mara is used primarily for practicing makeup; Pivot Point insists that its primary use is hair styling. This factual dispute might have legal significance if Pivot Point were contending that Mara's sole use is hair styling; then it is (barely) possible to imagine a suitable mannequin head devoid of human features. (The legal significance of this possibility is explicated below.) But Pivot Point contends only that Mara's "primary" use is hair styling; it does not deny that a use (if only, in its view, a secondary one) is the application of makeup and other beauty-school arts, and the evidence would not permit a reasonable jury to conclude that Mara has no utilitarian value for makeup practice. (Pivot Point says that it "generally" sells Mara with painted-on makeup, which reveals by negative implication that it also sells Mara without eye or cheek coloring, so that beauty-school students can add their own.)

      140

      R.401 at 2.

      141

      [6] Prior to the addition of this language in the 1976 Act, Congress had not explicitly authorized the Copyright Office to register "useful articles." Indeed, when Congress first extended copyright protection to three-dimensional works of art in 1870, copyright protection was limited to objects of fine art; objects of applied art still were not protected. See Paul Goldstein, 1 Copyright § 2.5.3 at 2:58 (2d ed.2004). This changed with the adoption of the Copyright Act of 1909 ("1909 Act"); Professor Goldstein explains:

      142
      The 1909 Act, which continued protection for three-dimensional works of art, dropped the requirement that they constitute fine art and thus opened the door to protection of useful works of art. In 1948, the Copyright Office broadened the scope of protection for three-dimensional works of art to cover "works of artistic craftsmanship insofar as their form but not their utilitarian aspects are concerned." The United States Supreme Court upheld this interpretation in Mazer v. Stein, [347 U.S. 201, 213, 74 S.Ct. 460, 98 L.Ed. 630 (1954),] holding that the fact that statuettes in issue were intended for use in articles of manufacture — electric lamp bases — did not bar them from copyright. Five years later, in 1959, the Copyright Office promulgated a rule that if "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively shaped will not qualify it as a work of art." The regulation did, however, permit registration of features of a utilitarian article that "can be identified separately and are capable of existing independently as a work of art.
      143

      Id. (quoting 37 C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c) (1959); footnotes omitted).

      144

      [7] See infra note 8.

      145

      [8] Although the district court was skeptical that the statutory language encompassed both physical and conceptual separability, circuits have been almost unanimous in interpreting the language of § 101 to include both types of separability. See Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488, 494 (4th Cir.1996) (asking whether functional aspects of animal mannequins are "conceptually separable from the works' sculptural features"); Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1144 (2d Cir.1987) (stating that "'[c]onceptual separability' is alive and well"); Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 418 (2d Cir.1985) (judging copyrightability of mannequin torsos based on whether "forms possess aesthetic or artistic features that are physically or conceptually separable from the forms' use as utilitarian objects to display clothes"); Norris Indus., Inc. v. Int'l Tel. & Tel. Corp., 696 F.2d 918, 923 (11th Cir.1983) ("Both case law and legislative history indicate that separability encompasses works of art that are either physically severable from the utilitarian article or conceptually severable."); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980) (applying test of conceptual separability).

      146

      Only one appellate court has rejected the idea of conceptual separability. See Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C.Cir.1978). In that case, arising under the 1909 Act, the Copyright Office had refused to register a design for outdoor lighting fixtures. The district court, however, believed the fixtures were copyrightable and issued a writ of mandamus that the copyright issue. However, the D.C. Circuit reversed. The precise question before the court was whether the regulation implementing the 1909 Act mandated that the Copyright Office register a copyright for the lighting fixtures. The regulation at issue provided:

      147
      (c) If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.
      148

      Id. at 800 (quoting 37 C.F.R. § 202.10(b) (1976)). The Copyright Office took the position that the regulation barred "copyright registration for the overall shape or configuration of a utilitarian article, no matter how aesthetically pleasing that shape or configuration may be." Id. In determining whether to accept or reject the proffered interpretation, the court noted that "[c]onsiderable weight is to be given to an agency's interpretation of its regulations," especially when "an administrative interpretation relates to a matter within the field of administrative expertise." Id. at 801. The court concluded that the Copyright Office had adopted a "reasonable and well-supported interpretation of § 202.10(c)." Id. at 800. In the court's view, the interpretation was grounded in "the principle that industrial designs are not eligible for copyright." Id. The court also believed that the interpretation found support in the legislative history of the newly enacted 1976 Act. The court acknowledged, however, that the legislative history was not "free from ambiguity"; it explained:

      149
      Esquire could arguably draw some support from the statement that a protectable element of a utilitarian article must be separable "physically or conceptually" from the utilitarian aspects of the design. But any possible ambiguity raised by this isolated reference disappears when the excerpt is considered in its entirety. The underscored passages indicate unequivocally that the overall design or configuration of a utilitarian object, even if it is determined by aesthetic as well as functional considerations, is not eligible for copyright. Thus the legislative history, taken as congressional understanding of existing law, reinforces the Register's position.
      150

      Id. at 803-04.

      151

      As is evident from the passages set forth above, the issue addressed by the D.C. Circuit in Esquire arose in a much different procedural and legal environment than the issue in the present case. The court's focus in Esquire was a regulation adopted pursuant to the former law and its obligation to defer to the agency's interpretation of the law embodied in that regulation. Furthermore, the court acknowledged that the 1976 Act was "not applicable to the case before" it. Id. at 803. Given these differences, we do not believe that the D.C. Circuit would conclude that its decision in Esquire disposed of the issue of conceptual separability presently before this court.

      152

      [9] Judge Weinstein (sitting by designation) dissented. See Kieselstein-Cord, 632 F.2d at 993.

      153

      [10] There were a total of four mannequins at issue, two male and two female. Of those four, two of the mannequin forms were unclothed, and two were formed with one layer of clothing and were meant specifically for the display of outerwear.

      154

      [11] Notably, in Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir.1996), the Second Circuit shortly thereafter addressed the question whether a fish mannequin was copyrightable. Although the court did not address specifically the issue before us today, its analysis is nevertheless helpful. Referring to its decision in Carol Barnhart, the Second Circuit posed the question rather simplistically: "Is taxidermy different [for purposes of copyright protection]?" Id. at 321. The Second Circuit resolved that it is:

      155

      We do not agree that Barnhart mandates a finding that fish mannequins are "useful articles" undeserving of copyright protection.... [W]e do not believe that the Barnhart torsos can be analogized to the fish in this case. In Barnhart, the headless, armless, backless styrene torsos were little more than glorified coat-racks used to display clothing in stores. The torsos were designed to present the clothing, not their own forms. In taxidermy, by contrast, people look for more than a fish skin; they wish to see a complete "fish." The superficial characteristics of the fish, such as its color and texture, are admittedly conveyed by the skin, but the shape, volume, and movement of the animal are depicted by the underlying mannequin. Whether the fish is shown as resting, jumping, wiggling its tail, or preparing to munch on some plankton, is dictated by the mannequin and by its particular form, not by the skin.

      In short, the fish mannequin is designed to be looked at. That the fish mannequin is meant to be viewed clothed by a fish skin, rather than naked and on its own, makes no difference. The function of the fish form is to portray its own appearance, and that fact is enough to bring it within the scope of the Copyright Act. 17 U.S.C. § 101; accord Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488 (4th Cir.1996) (distinguishing Barnhart and holding that mammal taxidermy mannequins are "sculptural works" rather than "useful articles" because their utilitarian aspects serve "merely to portray the appearance" of the animal)....

      We conclude that fish mannequins even if considered "useful articles," are useful insofar as they "portray the[ir] appearance." 17 U.S.C. § 101. That makes them copyrightable.

      156

      Id. at 323 (internal citation omitted). Thus, the Second Circuit distinguished fish mannequins from human mannequins; however, it did so on the basis that the fish mannequins were not "useful articles" as that term is defined in § 101, not on the basis that, although useful, the artistic aspects were physically or conceptually separable from the useful aspects of the article.

      157

       

    • 1.2 Shine v. Childs (2005)

      1

      382 F.Supp.2d 602 (2005)

      2
      Thomas SHINE, Plaintiff,
      v.
      David M. CHILDS and Skidmore Owings & Merrill, LLP, Defendants.

      No. 04 Civ. 8828 (MBM).

      3

      United States District Court, S.D. New York.

      August 10, 2005.

      4

      [603] [604] Andrew Baum, Paul Fields, Atul R. Singh, Michael J. Sullivan, Darby & Darby P.C., New York, New York, for Plaintiff.

      5

      Richard A. Williamson, Flemming, Zulack & Williamson, LLP, New York, New York, Marcia B. Paul, Davis Wright Tremaine LLP, New York, New York, for Defendants.

      6
      OPINION & ORDER
      7
      MUKASEY, District Judge.
      8

      Plaintiff Thomas Shine sues David M. Childs and Skidmore, Owings & Merrill, LLP (SOM) for copyright infringement under the United States Copyright Act, 17 U.S.C. § 101 — § 1332 (2000). Shine alleges that he created designs for an original skyscraper which Childs saw and later copied in the first design plan for the [605] Freedom Tower at the World Trade Center (WTC) site. Defendants move to dismiss the Complaint, or alternatively for summary judgment. For the reasons explained below, defendants' motion for summary judgment is granted in part and denied in part.

      9
      I.
      10

      The facts viewed in the light most favorable to the plaintiff, see Higgins v. Metro-North R.R. Co., 318 F.3d 422, 424 (2d Cir.2003), are as follows. In fall 1999, Shine was a student in the Masters of Architecture Program at the Yale School of Architecture. As part of the required curriculum in his program, he took a studio class on skyscrapers taught by renowned architect Cesar Pelli. (Compl.¶ 8) The object of this studio was to create a design proposal for a monumental skyscraper that would be built on West 32nd Street in Manhattan and used by the media during the 2012 Olympic Games; the building was to be adjacent to the proposed West Side stadium. See id.; Shine Decl. ¶ 5.

      11

      During the first half of October 1999, Shine developed a preliminary model for his design, which he refers to as "Shine '99" for the purposes of this litigation.[1] Plaintiff describes Shine '99 as a tower that tapers as it rises, with "two straight, parallel, roughly triangular sides, connected by two twisting facades, resulting in a tower whose top [is] in the shape of a parallelogram." (Compl.¶ 9) See id. Ex. A, pp. 1-4 (photographs of Shine '99); see also App. One.

      12

      By the end of the fall 1999 semester, Shine had developed a more sophisticated model of his design, entitled "Olympic Tower." Shine describes this structure as "a twisting tower with a symmetrical diagonal column grid, expressed on the exterior of the building, that follows the twisting surface created by the floor plates' geometry." (Id. ¶ 10) According to Shine, the column grid he designed gives rise to "an elongated diamond pattern, supporting a textured curtain wall with diamonds interlocking and protruding to create a crenelated appearance." (Id.) See id. Ex. B, pp. 1-9 (photographs of various models and sketches of Olympic Tower and its design elements); see also App. Two.

      13

      On or about December 9, 1999, Shine presented his designs for Olympic Tower to a jury of experts invited by the Yale School of Architecture to evaluate and critique its students' work. During a 30-minute presentation to the panel, Shine explained his tower's structural design, and displayed different structural and design models (including Shine '99), renderings, floor plans, elevations, sections, a site plan, and a photomontage giving a visual impression of the tower's exterior. (Shine Decl. ¶¶ 7-9) Defendant Childs was on the panel, and he praised Olympic Tower during the presentation, as did the other luminaries[2] evaluating Shine's work. When the review was completed, Shine was applauded by the jury and other visitors, which, according to Shine, is "highly unusual" at a student's final review. (Shine Decl. ¶ 10) After the presentation, Childs approached Shine, complimented Shine's color pencil rendering of Olympic Tower, and invited Shine to visit after his graduation. See Compl. ¶ 11; Shine Decl. ¶ 10.

      14

      [606] Childs' favorable reaction to Olympic Tower was also documented in Retrospecta, an annual alumni magazine[3] published by the Yale School of Architecture featuring selected works by the school's current students. The 1999-2000 edition of Retrospecta featured a large composite photographic rendering of Olympic Tower set against an imaginary New York sunset, in addition to smaller inset photographs of two of Shine's models of the tower. Favorable comments from the panel members were printed next to the photographic rendering, including the following compliment from Childs: "It is a very beautiful shape. You took the skin and developed it around the form — great!" (Compl.Ex. C) Shine does not allege that he had any contact with Childs after the December 1999 panel evaluation. However, he does claim that Childs' design for the Freedom Tower, unveiled four years later, infringed Shine '99 and Olympic Tower.

      15

      Childs did not begin work on the Freedom Tower until summer 2003. In order to choose the best possible design for the rebuilt WTC, the Lower Manhattan Development Corporation and the Port Authority of New York and New Jersey held an architectural competition in 2002 and 2003, in search of a master WTC site plan. In February 2003, Studio Daniel Libeskind's plan entitled "Memory Foundations" was selected as the winning design. See Suzanne Stephens, Imagining Ground Zero: Official and Unofficial Proposals for the World Trade Center Site 11, 28-29 (2004). In summer 2003, WTC developer Larry Silverstein asked Childs, who is a Consulting Design Partner at SOM, to begin working as design architect and project manager for the tallest building at the proposed new WTC site as conceptualized by Libeskind — the building that later would be called the Freedom Tower. Id. at 29. Libeskind was to serve as collaborating architect during the initial concept and schematic design phases. Id. at 32. In spite of what was described as a "difficult marriage" between Childs and Libeskind, see id. at 29, a design for the Freedom Tower was completed within six months, and was presented to the public at a press conference at Federal Hall in lower Manhattan on December 19, 2003. See id. at 32; Compl. ¶ 17; Durschinger Aff. ¶ 34. At this presentation, SOM and Childs displayed six large computer-generated images of the Freedom Tower, see Stephens at 34-35; two scale models of the Tower, see Durschinger Aff. Exs. N, O, and P; and a computer slide show detailing the Tower's design principles, see Durschinger Aff. Ex. Q. They also distributed a press packet containing six images of the proposed Tower, see id. Ex. R; see also App. Three.

      16

      As described by Shine, this version of the Freedom Tower "tapers as it rises and has two straight, parallel, roughly triangular facades on opposite sides, with two twisting facades joining them." (Compl.¶ 18) Shine alleges that this design is substantially similar to the form and shape of Shine '99, and that it incorporates a structural grid identical to the grid in Olympic Tower, as well as a facade design that is "strikingly similar" to the one in Olympic Tower. (Id.) Apparently, others at the Yale School of Architecture noticed the similarity between the Freedom Tower and Shine's design: According to plaintiff's expert, Yale Professor James Axley, several days after Childs unveiled the design for the Freedom Tower, one of Shine's original models for Olympic Tower "was retrieved [607] from archival storage and placed on the desk of the Dean of the School of Architecture." (Axley Decl. ¶ 7)

      17

      Shine registered Olympic Tower as an architectural work with the U.S. Copyright Office on March 30, 2004 (Compl.Ex. E), and did the same for Shine '99 on June 24, 2004 (id. Ex. D). He filed the Complaint in this action on November 8, 2004, claiming that defendants copied his designs without his permission or authorization, and stating that defendants distributed and claimed credit for his designs "willfully and with conscious disregard" for his rights in his copyrighted works. (Id. ¶ 22)

      18

      Shine requests an injunction to prevent further infringement by defendants, as well as actual damages and defendants' profits realized by their infringement. (Id. ¶¶ 27-28) Defendants move to dismiss the Complaint, or alternatively for summary judgment, claiming that Shine's works are not original and not worthy of protection, and further arguing that there is no substantial similarity between either work and the Freedom Tower.

      19

      It should be noted that in June 2005, after law enforcement authorities, among others, objected to the Freedom Tower's original design,[4] Childs, SOM, and Libeskind unveiled a substantially redesigned version of the Tower. The alleged infringing design apparently has been scrapped and is unlikely to be constructed. The new version has, at least to this court's untrained eye, little similarity to either of Shine's copyrighted works, and the court assumes that Shine makes no claim that it infringes his works. Because the alleged infringing design may never be constructed, Shine's actual damages in this action may be reduced, and he may be unable to show the need for an injunction. But because defendants' original design for the Freedom Tower remains in the public domain, Shine's infringement claim stands.

      20

      Defendants have moved under Fed.R.Civ.P. 12(b)(6) to dismiss the Complaint, or alternatively, for summary judgment under Fed.R.Civ.P. 56. Because plaintiff has treated the motion as one for summary judgment, see Pl. Br. at 11, and because both parties have submitted materials outside the Complaint that the court has found helpful, the court will consider those materials, and apply summary judgment standards. In assessing whether a genuine issue of material fact remains to be tried, the court will view the facts in the light most favorable to the nonmoving party. SCS Communications, Inc. v. Herrick Co., 360 F.3d 329, 338 (2d Cir.2004).

      21
      II.
      22

      To prevail, plaintiff must prove "`(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Williams, 84 F.3d at 587 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). To prove copying of original elements of his work, in addition to showing originality, plaintiff must demonstrate both that defendants actually copied his works, and that such copying was illegal because there is substantial similarity between each of his works and the alleged infringing work — the Freedom Tower. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995).

      23

      Defendants argue first that neither Shine '99 nor Olympic Tower qualifies as an architectural work under the Copyright Act. They argue also that both designs are unoriginal and functional, and therefore unworthy of whatever copyright protection [608] they currently have. Finally, assuming that plaintiff's copyrights are valid, defendants deny that they copied plaintiff's designs, and assert that there is no substantial similarity between plaintiff's designs and the Freedom Tower. Plaintiff counters that Shine '99 and Olympic Tower are each original, copyrightable designs, that defendants actually copied each work, and that the Freedom Tower is substantially similar to each in different ways.

      24
      A. Architectural Works Under the Copyright Act
      25

      Prior to 1990, the United States did not allow structures to be copyrighted, except those few that did not serve any utilitarian purpose. See 1 Nimmer on Copyright § 2.20[A]. However, in 1989, the United States became a party to the Berne Convention for the Protection of Literary and Artistic Works, which required protection for "`three dimensional works relative to ... architecture.'" See id. (quoting Berne Convention for the Protection of Literary and Artistic Works, revised at Paris, July 24, 1971, art. 2, 828 U.N.T.S. 221). Membership in the Berne Convention required the United States to protect works of architecture; therefore, in 1990, Congress amended the Copyright Act, adding the Architectural Works Copyright Protection Act (AWCPA), which included architectural works as a new category of copyrightable material.

      26

      The AWCPA defines an architectural work as:

      27

      the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

      28

      17 U.S.C. § 101. Defendants cite various portions of the legislative history of the AWCPA to argue that Shine's models are not architectural works meriting copyright protection. They claim that Shine's works are preliminary or conceptual, and do not meet the standard of a "design of a building." They argue also that plans for the "design of a building" may be protected only if a building actually could be constructed from the plans.

      29

      Defendants cite no cases to support their reading of the AWCPA. The statute nowhere states or implies that only designs capable of construction are worthy of protection. Although our Circuit has not specifically articulated the standard by which an architectural design is to be evaluated under the Copyright Act, when considering pictorial, graphic, and sculptural (PGS) works, also protected by the Act, see 17 U.S.C. § 101, it has twice noted that plans or designs not sufficiently detailed to allow for construction still may be protected. See Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 57 (2d Cir.1999) ("[W]e do not mean to suggest that, in the domain of copyrighted architectural depictions, only final construction drawings can contain protected expression."); Sparaco v. Lawler, Matusky & Skelly Eng'rs LLP, 303 F.3d 460, 469 (2d Cir.2002) ("We do not mean to imply that technical drawings cannot achieve protected status unless they are sufficiently complete and detailed to support actual construction."). This reasoning should apply equally to architectural works, because our Circuit also has held that "`[i]n general, architectural works are subject to the same standards that apply to other copyrightable works.'" Attia, 201 F.3d at 53 n. 3 (quoting 1 Nimmer § 2.20[A]). It is true that "generalized ideas and concepts pertaining to the placement of elements, traffic flow, and engineering strategies," or in other words, "ideas and concepts," are not worthy of protection. Id. at 57. However, once a design includes "specific expression and [609] realization of ... ideas," copying constitutes infringement. Sparaco, 303 F.3d at 469; cf. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) ("[N]o principle can be stated as to when an imitator has gone beyond copying the `idea' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc.") (L.Hand, J.).

      30

      Both Shine '99 and Olympic Tower are worthy of protection under the AWCPA. Shine '99 is a scale model of a twisting tower: Two of the tower's sides are smooth and taper straight toward the top creating a roughly triangular shape; the other two sides twist and taper as they rise, and one of those sides features four graded setbacks or levels that narrow as the tower rises. The top of the tower forms a parallelogram. See Compl. Ex. A, pp. 1-4; Shine Decl. ¶ 18. Shine '99, although certainly a rough model, is more than a concept or an idea; it is a distinctive design for a building. As explained above, whether a tower actually could be constructed from this model is irrelevant. Defendants argue that the shape and form of Shine '99 are so rudimentary and standard that protecting it would be akin to protecting a particular geometric shape, such as "an ellipse, a pyramid, or an egg." (Def. Br. at 28) However, the AWCPA protects "the design of a building as embodied in any tangible medium of expression ... [including] the overall form as well as the arrangement and composition of spaces and elements in the design...." 17 U.S.C. § 101. Individual arguably "standard" elements of Shine '99, such as its twist or its setbacks, might not be worthy of protection, but the arrangement and composition of the various elements in the model do at least arguably constitute the "design of a building" under the AWCPA.

      31

      The same is true for Olympic Tower, which is a much more intricate and detailed design than Shine '99. The copyrighted Olympic Tower materials include two models of the tower, one of the building's internal supports and one of its external appearance. Both models show that the building twists on all four sides; comparing the models reveals that the internal diamond-shaped grid supporting the tower is reflected and repeated in the external "skin" on its facade — a design that Childs commented on during his evaluation of Shine's work. See Compl. Ex. B, pp. 2-6; Ex. C. Shine also copyrighted elevation sketches of the tower to display the building's core at different levels, see id. Ex. B, pp. 7-8, a photomontage of what the building might look like against the New York sky, see id. Ex. B. p. 1, as well as what appears to be a sketch of the undulating triangular grid design for the exterior, of the building, see id. Ex. B, p. 9. The detailed and specific materials Shine copyrighted for Olympic Tower certainly constitute the "design of a building," and qualify it as an architectural work under the AWCPA.

      32
      B. Originality
      33

      Defendants next claim that neither Shine '99 nor Olympic Tower is sufficiently original to warrant protection under the AWCPA. Using the House Committee Report on the AWCPA as their guide, defendants argue for a two-step analysis of the originality and functionality of an architectural work: First, the House Report noted, the work in question should be examined for the presence of original design elements. If such elements exist and are not functionally required, the Report concluded, then the work is protectable. (Def. Br. at 31) Following this framework, defendants argue that no single part of Shine's work is original; that any parts that might be original are functionally required to support its design and therefore unprotectable; and that the arrangement [610] of the various design elements featured in Shine's work is a compilation not meriting protection under existing law.

      34

      In this analysis, defendants fly high and fast over the large body of Supreme Court and Second Circuit case law on originality and copyright infringement, as well as the text of the AWCPA, which states that "the overall form as well as the arrangement and composition of spaces and elements in the design" of an architectural work may be the subject of a valid copyright. 17 U.S.C. § 101. First, defendants fail to acknowledge that plaintiff's "certificates of [copyright] registration constitute prima facie evidence of the validity not only of their copyrights, but also of the originality of [the] works." Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir.2001); see also 17 U.S.C. § 410(c) (a copyright registration certificate, when issued within five years of the first publication of the work, is prima facie evidence of ownership of a valid copyright). It is also true, however, that originality is "the sine qua non of copyright," Feist, 499 U.S. at 345, 111 S.Ct. 1282, and if a work is not original, then it is not protectable. If a certain element within a work is not original, that element is not protectable "even if other elements, or the work as a whole, warrant protection." Boisson, 273 F.3d at 268.

      35

      Plaintiff need not clear a high bar in order for his architectural works to qualify as original:

      36

      In the copyright context, originality means the work was independently created by its author, and not copied from someone else's work. The level of originality and creativity that must be shown is minimal, only an "unmistakable dash of originality need be demonstrated, high standards of uniqueness in creativity are dispensed with."

      37

      Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 764-65 (2d Cir.1991) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir.1989)); see also Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988) (describing the requirement of originality as "little more than a prohibition of actual copying") (internal quotation marks omitted). Additionally, our Circuit has held that "a work may be copyrightable even though it is entirely a compilation of unprotectible elements." Knitwaves, 71 F.3d at 1003-04.

      38

      If the court followed defendants' suggestion and analyzed the elements of plaintiff's works separately, comparing only those elements that are copyrightable to those present in the designs for the Freedom Tower, as our Circuit noted, "we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past." Id. at 1003 (internal quotation marks omitted); see also, e.g., Covington Indus., Inc. v. Nichols, No. 02 Civ. 8037, 2004 WL 784825, *3, 2004 U.S. Dist. LEXIS 6210, at *8-*11 (S.D.N.Y. Apr. 12, 2004) (holding that although neither vertical nor horizontal stripes, nor individual colors, nor the practice of basket weaving was original, the total concept of plaintiff's design for a colored, striped basket was original); Sunham Home Fashions, LLC v. Pem-America, Inc., No. 02 Civ. 6284, 2002 WL 31834477, *5, 2002 U.S. Dist. LEXIS 24185, *18-*19 (S.D.N.Y. Dec. 17, 2002) ("Although the idea of a plaid or floral pattern may not of its own be original, the patterns' sizes, shapes, arrangements and colors taken together are original and copyrightable.").

      39

      Following this analysis, both Shine '99 and Olympic Tower at least arguably are protectable and original. It is true that, as defendants' expert points out, twisting towers have been built before. Towers with diamond-windowed facades have been built before. Towers with support grids [611] similar to the one in Olympic Tower have been built before. Towers with setbacks have been built before. But defendants do not present any evidence that the particular combinations of design elements in either Shine '99 or Olympic Tower are unoriginal.[5] These works each have at least the mere "dash of originality" required for copyrightability, not to mention that they both have been copyrighted, and therefore are prima facie original.

      40

      Defendants argue also that any original aspect of Olympic Tower's facade is functionally required by the support grid utilized by Shine, and therefore unprotectable. See Meier Aff. ¶¶ 19-22, 39-40; Def. Br. at 33. However, Shine's expert disputes this contention. See Axley Decl. ¶ 10. Therefore, even if certain of the original design elements of Olympic Tower are dictated by functionality and therefore not copyrightable — a proposition for which there is no apparent support in the case law or the AWCPA — a material issue of fact on this matter remains for trial.

      41
      C. Infringement
      42

      To prove infringement,

      43

      [a] plaintiff must first show that his or her work was actually copied. Copying may be established either by direct evidence of copying, or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony. If actual copying is established, a plaintiff must then show that the copying amounts to an improper appropriation by demonstrating that substantial similarity to protected material exists between the two works.

      44

      Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); see also Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003).

      45
      1. Actual Copying
      46

      As explained above, unless the rare situation exists where plaintiff has direct proof that defendants copied his work, plaintiff may prove actual copying by showing that defendants had access to his copyrighted works, and that similarities that suggest copying exist between the protected works and the alleged infringing work. Cf. Castle Rock Entm't v. Carol Publ'g Group, 150 F.3d 132, 137 (2d Cir.1998) ("`[P]robative,' rather than `substantial' similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. It is only after actual copying is established that one claiming infringement then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears `substantial similarity' to protected expression in the earlier work.") (internal citations omitted); see also 4 Nimmer § 13.03[B].[6]

      47

      For the purposes of this motion, defendants concede that Childs had access to both Shine '99 and Olympic Tower when he evaluated them as part of the expert jury at the Yale School of Architecture in December 1999. (Def. Br. at 38) Therefore, [612] all that plaintiff must prove to show actual copying in this action is probative similarity between his works and the Freedom Tower. The court may consider expert testimony when assessing probative similarity, see Laureyssens, 964 F.2d at 140. Given the substantial disagreement between plaintiff's expert Axley and defendants' expert Meier on the alleged similarity between Olympic Tower and the Freedom Tower, compare Axley Decl. ¶¶ 21-24 with Meier Aff. ¶¶ 32-41, and that these experts' views are, at least to the court's untrained eye, plausible, there is at least an issue of material fact remaining for trial as to the probative similarity between those two works.

      48

      However, plaintiff's expert Axley does not comment on whether any similarity exists between Shine '99 and the Freedom Tower. According to plaintiff, "the shape of Freedom Tower is remarkably similar to the shape of Shine '99" because both towers have two straight parallel walls and two twisting walls. (Shine Decl. ¶ 18) Shine claims that the four setbacks on one side of Shine '99 were "intended as an alternative approach to the form of the twisting sides." (Id.) Whether they were so intended or not, these setbacks are a distinctive feature of the model which bear no resemblance to any feature of the Freedom Tower. Even imagining Shine '99 with four smooth sides, there are still no similarities between Shine '99 and the Freedom Tower that are probative of actual copying. Both towers twist as they rise, but as defendants' expert points out with ample evidence, see Meier Aff. Exs. D, G, the idea of a twisting tower with a rectangular base and parallel sides is by no means unique. There is no evidence to suggest that Childs would have thought of the idea of a twisting tower only by viewing Shine '99. Plaintiff's own expert could not find similarities between Shine '99 and the Freedom Tower substantial enough to warrant comment. Other than that Childs had access to the design, there is no evidence to suggest that defendants actually copied the form or shape of Shine '99. Therefore, no material issue of fact regarding the probative similarity of Shine '99 and the Freedom Tower remains for trial, and defendant's motion for summary judgment as to Shine '99 is granted.

      49
      2. Substantial Similarity
      50

      Because there is at least an issue of material fact as to whether defendants actually copied Shine's design for Olympic Tower, the court now must determine whether reasonable jurors could find that substantial similarity exists between Olympic Tower and the Freedom Tower. Our Circuit has not yet had occasion to compare the substantial similarity of a copyrighted architectural work such as Olympic Tower to an alleged infringing work, so it is not entirely clear which standard the court should use for the comparison.[7]

      51

      However, "total concept and feel" is the dominant standard used to evaluate substantial similarity between artistic works in our Circuit, and that standard is the most appropriate one in this case. See id. (noting that "[i]n recent years we have found it productive to assess claims of inexact-copy infringement by comparing the contested design's `total concept and overall feel' with that of the allegedly infringed work," and applying this test to compare two carpet designs); Boisson, 273 F.3d at 272 (using the "total concept and feel" test to compare to quilt designs and [613] noting that substantial similarity has "always" been guided by this test); Knitwaves, 71 F.3d at 1003 (applying the "total concept and feel" test to compare two different designs on sweaters); Laureyssens, 964 F.2d at 141 (using overall aesthetic appeal test to compare two foam rubber puzzles); see also Sturdza, 281 F.3d at 1296 (comparing two architectural works and holding that "[t]he substantial similarity determination requires comparison not only of the two works' individual elements in isolation, but also of their `overall look and feel.'" (quoting Boisson, 273 F.3d at 266)).

      52

      Defendants argue that court should apply the test set forth in Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693 (2d Cir.1992) to compare the two complex architectural works here. In Altai, the court was asked to determine whether one computer program infringed another, and in doing so, it devised a new test for determining substantial similarity in that context. The Court described its test as follows:

      53

      In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would be able to sift out all non-protectable material. Left with a kernel, or possibly kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of an allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement.

      54

      Id. at 706. However, as noted above in the discussion of originality, the AWCPA protects the "overall form as well as the arrangement and composition of spaces and elements in the design" of architectural works. 17 U.S.C. § 101. If the court were to follow the Altai analysis and separate out only those "kernels" of expression that would qualify as original, that, as our Circuit has held, "would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors, and symbols." Boisson, 273 F.3d at 272.

      55

      Our Circuit noted recently that some commentators have worried that "`the total concept and feel' standard may `invite an abdication of analysis,' because `feel' can seem `a wholly amorphous referent.'" Tufenkian, 338 F.3d at 134 (quoting 4 Nimmer § 13.03[A][1][c]). But the Court added that the total concept and feel test was not "so incautious," because where it has been applied, courts have taken care to identify "precisely the particular aesthetic decisions — original to the plaintiff and copied by the defendant — that might be thought to make the designs similar in the aggregate." Id. The Court explained further that

      56

      while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation. For the defendant may infringe on the plaintiff's work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art — the excerpting, modifying, and arranging of public domain compositions, if [614] any, together with the development and representation of wholly new motifs and the use of texture and color, etc. — are considered in relation to one another. The court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking.

      57

      Id. at 134-35. Although this analysis was applied to carpet designs, it also is appropriate for architectural works, because the AWCPA protects the "overall form" of architectural designs in addition to their individual copyrightable elements.

      58

      The court has already found that, even though several of its component parts may not be original, the composite design of Olympic Tower is at least arguably unique and original. See supra Part III.B. Now the court must determine whether, examining the "total concept and feel" of both works, there is an issue of material fact as to whether the design of the Freedom Tower infringes on any of the original aesthetic expressions of the Olympic Tower.

      59

      This task presents the question of the point of view from which the "concept and feel" substantial similarity analysis should be conducted. Defendants argue that the analysis should be conducted with the aid of expert testimony, but they cite no Second Circuit authority for this proposition.[8] It seems odd that defendants would advocate such a test, because there is significant disagreement between the respective parties' two highly qualified experts regarding the substantial similarity of Olympic Tower and the Freedom Tower. According to the experts, many issues of material fact remain in dispute as to total concept and feel. If the court were to adopt defendants' suggestion and consider expert testimony in its analysis of substantial similarity, it would have no choice but to deny summary judgment on the issue.

      60

      However, the Second Circuit has long held that substantial similarity should be determined not with the help of or solely by experts in the relevant field, but from the perspective of the ordinary observer:

      61

      The plaintiff's legally protected interest is not, as such, his reputation ... but his interest in the potential financial returns from his [work] which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ... lay [public] ... that defendant wrongfully appropriated something which belongs to the plaintiff.

      62

      Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir.1946) (footnotes omitted). Because the lay public's approbation usually is the foundation of returns that derive from a copyrighted work, an allegedly infringing work is considered substantially similar to a copyrighted work if "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Folio Impressions, 937 F.2d at 765.

      63

      [615] Our Circuit refined the ordinary observer test in cases where certain aspects of the copyrighted work are taken directly from the public domain, and applied a "more discerning" ordinary observer test. "What must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." Key Publ'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991). However, this "more discerning" ordinary observer test must be applied in conjunction with the "total concept and feel" test, so as not to deny protection to works that have combined unoriginal elements in a unique and copyrightable fashion, as is at least arguably true here. Boisson, 273 F.3d at 272-73; see also Williams, 84 F.3d at 590 ("[A] scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another."). Noting the difficulty of applying the "more discerning ordinary observer" test to the "total concept and feel" evaluation, the Boisson Court counseled that with all of the above concepts in mind, the court's substantial similarity analysis ultimately should be guided by "common sense." 273 F.3d at 273.

      64

      With these principles in mind, the court finds that reasonable ordinary observers could disagree on whether substantial similarity exists between the Freedom Tower and Olympic Tower. Defendants present several photographic comparisons between the two structures in their Reply Memorandum. See Def. Reply Br. at 12, 18, 21, and 24. Although defendants offer these comparisons to point out what they claim are significant differences between the two towers, "[i]t has long been settled that `no plagiarist can excuse the wrong by showing how much of his work he did not pirate.'" Tufenkian, 338 F.3d at 132 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936) (L.Hand, J.)). Any lay observer examining the two towers side by side would notice that: (1) each tower has a form that tapers and twists as it rises, (2) each tower has an undulating, textured diamond shaped pattern covering its facade, and (3) the facade's diamond pattern continues to and concludes at the foot of each tower, where one or more half diamond shapes open up and allow for entry. These combination of these elements gives the two towers a similar "total concept and feel" that is immediately apparent even to an untrained judicial eye.

      65

      It is possible, even likely, that some ordinary observers might not find the two towers to be substantially similar because, as defendants note, there are differences between the Freedom Tower and Olympic Tower, including, inter alia, the number of sides of each tower that twist (the Freedom Tower's two versus Olympic Tower's four); the direction of each tower's twist (the Freedom Tower twists clockwise and Olympic Tower twists counterclockwise); the shape of each tower's ground floor (the Freedom Tower is a parallelogram and Olympic Tower is a square); and the various contrasting details of each tower's entrance and facade. See Def. Reply Br. at 11-24; see also Warner Bros., Inc. v. Am. Broad. Cos., 654 F.2d 204, 211 (2d Cir.1981) ("[W]hile `no plagiarist can excuse the wrong by showing how much of his work he did not pirate,' a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiff's.") (quoting Sheldon, 81 F.2d at 56). However, it also is possible that a lay observer, applying the total concept and feel test, might find that the Freedom Tower's twisting shape and undulating diamond-shaped facade make it substantially similar to Olympic Tower, and therefore [616] an improper appropriation of plaintiff's copyrighted artistic expression.

      66

      Because reasonable jurors could disagree as to the substantial similarity between Olympic Tower and the Freedom Tower, defendants' motion for summary judgment as to plaintiff's claims regarding Olympic Tower is denied.

      67

      * * * * * *

      68

      For the foregoing reasons, defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Shine '99 is granted. Defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Olympic Tower is denied.

      69

      SO ORDERED.

      70

      [1] The Complaint states that plaintiff began designing Shine '99 on or about "October 1, 1997." However, because the rest of the Complaint refers only to events occurring in 1999, this reference to 1997 appears to be a typographical error.

      71

      [2] In addition to Childs and Shine's professor Cesar Pelli, the jury included Yale professor and urban planner Alexander Garvin, architecture writer and critic Paul Goldberger, and Robert A.M. Stern, dean of the Yale School of Architecture. (Shine Decl. ¶ 6)

      72

      [3] Because Childs is an alumnus of the Yale School of Architecture, he presumably received a copy of this issue of Retrospecta. However in his Answer, Childs denies that he ever saw a copy of the issue referenced by Shine in the Complaint. (Durschinger Aff. Ex. D, ¶ 12)

      73

      [4] See Glenn Collins, A Freedom Tower Restarted From Scratch, The New York Times, July 10, 2005.

      74

      [5] None of the designs defendants indicate as evidence of the unoriginality of Shine's works bear any significant resemblance to either Shine '99 or Olympic Tower. See Meier Aff. Exs. E.2, E.5, J, L.

      75

      [6] The phrase "probative similarity" is used to distinguish this stage of infringement analysis from "substantial similarity," which is examined only after actual copying is shown. The idea of probative similarity was first suggested in a law review article, and later adopted by our Circuit. See Alan Latman, "Probative Similarity" as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L.Rev. 1187 (1990); Laureyssens, 964 F.2d at 140.

      76

      [7] In two recent cases where it analyzed the resemblance between copyrighted PGS works and structures, the Court generally discussed the similarities between the copyrighted materials and the alleged infringing works, but did not utilize a specific procedure for these comparisons. See Sparaco, 303 F.3d at 467-70; Attia, 201 F.3d at 56-58.

      77

      [8] Defendants note that the Altai Court granted discretion to district courts to allow expert testimony in evaluating the substantial similarity of computer programs. However, they cite no case where a court has actually utilized such testimony, either to examine computer programs or any other copyrighted material. See Def. Br. at 44 (citing Altai, 982 F.2d at 713). Indeed, the Altai Court noted that its decision to allow expert testimony on the substantial similarity of computer programs was not intended "to disturb the traditional role of lay observers in judging substantial similarity in copyright cases that involve the aesthetic arts, such as music, visual works or literature." Altai, 982 F.2d at 713-14.

  • 2 Software

    • 2.1 Lotus v. Borland (1995)

      1
      49 F.3d 807 (1995)
      2
      LOTUS DEVELOPMENT CORPORATION, Plaintiff, Appellee,
      v.
      BORLAND INTERNATIONAL, INC., Defendant, Appellant.
      3
      No. 93-2214.
      4

      United States Court of Appeals, First Circuit.

      5
      Heard October 6, 1994.
      6
      Decided March 9, 1995.
      7

       

      8

      [808] Gary L. Reback, with whom Peter N. Detkin, Michael Barclay, Isabella E. Fu, Wilson Sonsini Goodrich & Rosati, P.C., Palo Alto, CA, Peter E. Gelhaar, Katherine L. Parks, and Donnelly Conroy & Gelhaar, Boston, MA, were on brief for appellant.

      9

      Matthew P. Poppel, Boston, MA, et al., were on brief for Computer Scientists, amicus curiae.

      10

      Dennis S. Karjala, Tempe, AZ, and Peter S. Menell, Berkeley, CA, on brief, amici curiae.

      11

      Jeffrey C. Cannon and Baker Keaton Seibel & Cannon, Walnut Creek, CA, were on brief for Computer Software Industry Ass'n, amicus curiae.

      12

      Laureen E. McGurk, David A. Rabin, Bryan G. Harrison and Morris Manning & Martin, Atlanta, GA, were on brief for Chicago Computer Soc., Diablo Users Group, Danbury Area Computer Soc., IBM AB Users Group, Kentucky-Indiana Personal Computer Users Group, Long Island PC Users Group, Napa Valley PC Users Group, Pacific Northwest PC Users Group, Palmetto Personal Computer Club, Philadelphia Area Computer Soc., Inc., Phoenix IBM PC Users Group, Pinellas IBM PC Users Group, Quad Cities Computer Soc., Quattro Pro Users Group, Sacramento PC Users Group, San Francisco PC Users Group, Santa Barbara PC Users Group, Twin Cities PC Users Group, and Warner Robbins Personal Computer Ass'n, amici curiae.

      13

      Diane Marie O'Malley and Hanson Bridgett Marcus Vlahos & Rudy, San Francisco, [809] CA, were on brief for Software Entrepreneurs' Forum, amicus curiae.

      14

      Peter M.C. Choy, Mountain View, CA, was on brief for American Committee for Interoperable Systems, amicus curiae.

      15

      Howard B. Abrams, Detroit, MI, Howard C. Anawalt, Santa Clara, CA, Stephen R. Barnett, Berkeley, CA, Ralph S. Brown, Stephen L. Carter, New Haven, CT, Amy B. Cohen, Longmeadow, MA, Paul J. Heald, Athens, GA, Peter A. Jaszi, John A. Kidwell, Madison, WI, Edmund W. Kitch, Charlottesville, VA, Roberta R. Kwall, Chicago, IL, David L. Lange, Durham, NC, Marshall Leaffer, Toledo, OH, Jessica D. Litman, Ann Arbor, MI, Charles R. McManis, St. Louis, MO, L. Ray Patterson, Athens, GA, Jerome H. Reichman, David A. Rice, Chestnut Hill, MA, Pamela Samuelson, Pittsburgh, PA, David J. Seipp, Boston, MA, David E. Shipley, Lexington, KY, Lionel S. Sobel, Santa Monica, CA, Alfred C. Yen, Newton, MA, and Diane L. Zimmerman, New York City, were on brief for Copyright Law Professors, amicus curiae.

      16

      Henry B. Gutman, Baker & Botts, LLP, with whom Kerry L. Konrad, Joshua H. Epstein, Kimberly A. Caldwell, O'Sullivan Graev & Karabell, New York City, Thomas M. Lemberg, James C. Burling, and Hale and Dorr, Boston, MA, were on brief for appellee.

      17

      Morton David Goldberg, June M. Besek, David O. Carson, Jesse M. Feder, Schwab Goldberg Price & Dannay, New York City, and Arthur R. Miller, Cambridge, MA, were on brief for Apple Computer, Inc., Digital Equip. Corp., International Business Machines Corp., and Xerox Corp., amici curiae.

      18

      Jon A. Baumgarten, Proskauer Rose Goetz & Mendelsohn, and Robert A. Gorman, New York City, were on brief for Adobe Systems, Inc., Apple Computer, Inc., Computer Associates Intern., Inc., Digital Equip. Corp., and International Business Machines Corp., amici curiae.

      19

      Herbert F. Schwartz, Vincent N. Palladino, Susan Progoff, Fish & Neave, New York City, William J. Cheeseman, and Foley Hoag & Eliot, Boston, MA, were on brief for Computer and Business Equip. Mfrs. Ass'n, amicus curiae.

      20

      Before TORRUELLA, Chief Judge, BOUDIN and STAHL, Circuit Judges.

      21

      STAHL, Circuit Judge.

      22

      This appeal requires us to decide whether a computer menu command hierarchy is copyrightable subject matter. In particular, we must decide whether, as the district court held, plaintiff-appellee Lotus Development Corporation's copyright in Lotus 1-2-3, a computer spreadsheet program, was infringed by defendant-appellant Borland International, Inc., when Borland copied the Lotus 1-2-3 menu command hierarchy into its Quattro and Quattro Pro computer spreadsheet programs. See Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F.Supp. 78 (D.Mass. 1992) ("Borland I"); Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F.Supp. 203 (D.Mass. 1992) ("Borland II"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F.Supp. 202 (D.Mass. 1993) ("Borland III"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F.Supp. 223 (D.Mass. 1993) ("Borland IV").

      23
      I.
      24
      Background
      25

      Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting functions electronically on a computer. Users manipulate and control the program via a series of menu commands, such as "Copy," "Print," and "Quit." Users choose commands either by highlighting them on the screen or by typing their first letter. In all, Lotus 1-2-3 has 469 commands arranged into more than 50 menus and submenus.

      26

      Lotus 1-2-3, like many computer programs, allows users to write what are called "macros." By writing a macro, a user can designate a series of command choices with a single macro keystroke. Then, to execute that series of commands in multiple parts of the spreadsheet, rather than typing the whole series each time, the user only needs to type the single pre-programmed macro keystroke, causing the program to recall and perform the designated series of commands automatically. Thus, Lotus 1-2-3 macros [810] shorten the time needed to set up and operate the program.

      27

      Borland released its first Quattro program to the public in 1987, after Borland's engineers had labored over its development for nearly three years. Borland's objective was to develop a spreadsheet program far superior to existing programs, including Lotus 1-2-3. In Borland's words, "[f]rom the time of its initial release ... Quattro included enormous innovations over competing spreadsheet products."

      28

      The district court found, and Borland does not now contest, that Borland included in its Quattro and Quattro Pro version 1.0 programs "a virtually identical copy of the entire 1-2-3 menu tree." Borland III, 831 F.Supp. at 212 (emphasis in original). In so doing, Borland did not copy any of Lotus's underlying computer code; it copied only the words and structure of Lotus's menu command hierarchy. Borland included the Lotus menu command hierarchy in its programs to make them compatible with Lotus 1-2-3 so that spreadsheet users who were already familiar with Lotus 1-2-3 would be able to switch to the Borland programs without having to learn new commands or rewrite their Lotus macros.

      29

      In its Quattro and Quattro Pro version 1.0 programs, Borland achieved compatibility with Lotus 1-2-3 by offering its users an alternate user interface, the "Lotus Emulation Interface." By activating the Emulation Interface, Borland users would see the Lotus menu commands on their screens and could interact with Quattro or Quattro Pro as if using Lotus 1-2-3, albeit with a slightly different looking screen and with many Borland options not available on Lotus 1-2-3. In effect, Borland allowed users to choose how they wanted to communicate with Borland's spreadsheet programs: either by using menu commands designed by Borland, or by using the commands and command structure used in Lotus 1-2-3 augmented by Borland-added commands.

      30

      Lotus filed this action against Borland in the District of Massachusetts on July 2, 1990, four days after a district court held that the Lotus 1-2-3 "menu structure, taken as a whole — including the choice of command terms [and] the structure and order of those terms," was protected expression covered by Lotus's copyrights. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 68, 70 (D.Mass.1990) ("Paperback").[1] Three days earlier, on the morning after the Paperback decision, Borland had filed a declaratory judgment action against Lotus in the Northern District of California, seeking a declaration of non-infringement. On September 10, 1990, the district court in California dismissed Borland's declaratory judgment action in favor of this action.

      31

      Lotus and Borland filed cross motions for summary judgment; the district court denied both motions on March 20, 1992, concluding that "neither party's motion is supported by the record." Borland I, 788 F.Supp. at 80. The district court invited the parties to file renewed summary judgment motions that would "focus their arguments more precisely" in light of rulings it had made in conjunction with its denial of their summary judgment motions. Id. at 82. Both parties filed renewed motions for summary judgment on April 24, 1992. In its motion, Borland contended that the Lotus 1-2-3 menus were not copyrightable as a matter of law and that no reasonable trier of fact could find that the similarity between its products and Lotus 1-2-3 was sufficient to sustain a determination of infringement. Lotus contended in its motion that Borland had copied Lotus 1-2-3's entire user interface and had thereby infringed Lotus's copyrights.

      32

      On July 31, 1992, the district court denied Borland's motion and granted Lotus's motion in part. The district court ruled that the Lotus menu command hierarchy was copyrightable expression because

      33
      [a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1-2-3. In fact, Borland has constructed just such an alternate tree for use in Quattro Pro's native mode. Even if one holds the arrangement of menu commands constant, it is possible to generate literally millions of satisfactory [811] menu trees by varying the menu commands employed.
      34

      Borland II, 799 F.Supp. at 217. The district court demonstrated this by offering alternate command words for the ten commands that appear in Lotus's main menu. Id. For example, the district court stated that "[t]he `Quit' command could be named `Exit' without any other modifications," and that "[t]he `Copy' command could be called `Clone,' `Ditto,' `Duplicate,' `Imitate,' `Mimic,' `Replicate,' and `Reproduce,' among others." Id. Because so many variations were possible, the district court concluded that the Lotus developers' choice and arrangement of command terms, reflected in the Lotus menu command hierarchy, constituted copyrightable expression.

      35

      In granting partial summary judgment to Lotus, the district court held that Borland had infringed Lotus's copyright in Lotus 1-2-3:

      36
      [A]s a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright because of (1) the extent of copying of the "menu commands" and "menu structure" that is not genuinely disputed in this case, (2) the extent to which the copied elements of the "menu commands" and "menu structure" contain expressive aspects separable from the functions of the "menu commands" and "menu structure," and (3) the scope of those copied expressive aspects as an integral part of Lotus 1-2-3.
      37

      Borland II, 799 F.Supp. at 223 (emphasis in original). The court nevertheless concluded that while the Quattro and Quattro Pro programs infringed Lotus's copyright, Borland had not copied the entire Lotus 1-2-3 user interface, as Lotus had contended. Accordingly, the court concluded that a jury trial was necessary to determine the scope of Borland's infringement, including whether Borland copied the long prompts[2] of Lotus 1-2-3, whether the long prompts contained expressive elements, and to what extent, if any, functional constraints limited the number of possible ways that the Lotus menu command hierarchy could have been arranged at the time of its creation. See Borland III, 831 F.Supp. at 207. Additionally, the district court granted Lotus summary judgment on Borland's affirmative defense of waiver, but not on its affirmative defenses of laches and estoppel. Borland II, 799 F.Supp. at 222-23.

      38

      Immediately following the district court's summary judgment decision, Borland removed the Lotus Emulation Interface from its products. Thereafter, Borland's spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users, and as a result Borland users could no longer communicate with Borland's programs as if they were using a more sophisticated version of Lotus 1-2-3. Nonetheless, Borland's programs continued to be partially compatible with Lotus 1-2-3, for Borland retained what it called the "Key Reader" in its Quattro Pro programs. Once turned on, the Key Reader allowed Borland's programs to understand and perform some Lotus 1-2-3 macros.[3] With the Key Reader on, the Borland programs used Quattro Pro menus for display, interaction, and macro execution, except when they encountered a slash ("/") key in a macro (the starting key for any Lotus 1-2-3 [812] macro), in which case they interpreted the macro as having been written for Lotus 1-2-3. Accordingly, people who wrote or purchased macros to shorten the time needed to perform an operation in Lotus 1-2-3 could still use those macros in Borland's programs.[4] The district court permitted Lotus to file a supplemental complaint alleging that the Key Reader infringed its copyright.

      39

      The parties agreed to try the remaining liability issues without a jury. The district court held two trials, the Phase I trial covering all remaining issues raised in the original complaint (relating to the Emulation Interface) and the Phase II trial covering all issues raised in the supplemental complaint (relating to the Key Reader). At the Phase I trial, there were no live witnesses, although considerable testimony was presented in the form of affidavits and deposition excerpts. The district court ruled upon evidentiary objections counsel interposed. At the Phase II trial, there were two live witnesses, each of whom demonstrated the programs for the district court.

      40

      After the close of the Phase I trial, the district court permitted Borland to amend its answer to include the affirmative defense of "fair use." Because Borland had presented all of the evidence supporting its fair-use defense during the Phase I trial, but Lotus had not presented any evidence on fair use (as the defense had not been raised before the conclusion of the Phase I trial), the district court considered Lotus's motion for judgment on partial findings of fact. See Fed.R.Civ.P. 52(c). The district court held that Borland had failed to show that its use of the Lotus 1-2-3 menu command hierarchy in its Emulation Interface was a fair use. See Borland III, 831 F.Supp. at 208.

      41

      In its Phase I-trial decision, the district court found that "each of the Borland emulation interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3 menu tree is capable of a wide variety of expression." Borland III, 831 F.Supp. at 218. The district court also rejected Borland's affirmative defenses of laches and estoppel. Id. at 218-23.

      42

      In its Phase II-trial decision, the district court found that Borland's Key Reader file included "a virtually identical copy of the Lotus menu tree structure, but represented in a different form and with first letters of menu command names in place of the full menu command names." Borland IV, 831 F.Supp. at 228. In other words, Borland's programs no longer included the Lotus command terms, but only their first letters. The district court held that "the Lotus menu structure, organization, and first letters of the command names ... constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at 233. Accordingly, the district court held that with its Key Reader, Borland had infringed Lotus's copyright. Id. at 245. The district court also rejected Borland's affirmative defenses of waiver, laches, estoppel, and fair use. Id. at 235-45. The district court then entered a permanent injunction against Borland, id. at 245, from which Borland appeals.

      43

      This appeal concerns only Borland's copying of the Lotus menu command hierarchy into its Quattro programs and Borland's affirmative defenses to such copying. Lotus has not cross-appealed; in other words, Lotus does not contend on appeal that the district court erred in finding that Borland had not copied other elements of Lotus 1-2-3, such as its screen displays.

      44
      II.
      45
      Discussion
      46

      On appeal, Borland does not dispute that it factually copied the words and arrangement of the Lotus menu command hierarchy. Rather, Borland argues that it "lawfully copied the unprotectable menus of Lotus 1-2-3." Borland contends that the Lotus menu command hierarchy is not copyrightable because it is a system, method of operation, process, or procedure foreclosed from protection by 17 U.S.C. § 102(b). Borland also raises a number of affirmative defenses. [813]

      47

       

      48
      A. Copyright Infringement Generally
      49

      To establish copyright infringement, a plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 n. 19 (1st Cir.1994); Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988). To show ownership of a valid copyright and therefore satisfy Feist's first prong, a plaintiff must prove that the work as a whole is original and that the plaintiff complied with applicable statutory formalities. See Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340 (5th Cir.1994). "In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid." Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir.1990); see also 17 U.S.C. § 410(c); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991) (presumption of validity may be rebutted).

      50

      To show actionable copying and therefore satisfy Feist's second prong, a plaintiff must first prove that the alleged infringer copied plaintiff's copyrighted work as a factual matter; to do this, he or she may either present direct evidence of factual copying or, if that is unavailable, evidence that the alleged infringer had access to the copyrighted work and that the offending and copyrighted works are so similar that the court may infer that there was factual copying (i.e., probative similarity). Engineering Dynamics, 26 F.3d at 1340; see also Concrete Mach., 843 F.2d at 606. The plaintiff must then prove that the copying of copyrighted material was so extensive that it rendered the offending and copyrighted works substantially similar. See Engineering Dynamics, 26 F.3d at 1341.

      51

      In this appeal, we are faced only with whether the Lotus menu command hierarchy is copyrightable subject matter in the first instance, for Borland concedes that Lotus has a valid copyright in Lotus 1-2-3 as a whole[5] and admits to factually copying the Lotus menu command hierarchy. As a result, this appeal is in a very different posture from most copyright-infringement cases, for copyright infringement generally turns on whether the defendant has copied protected expression as a factual matter. Because of this different posture, most copyright-infringement cases provide only limited help to us in deciding this appeal. This is true even with respect to those copyright-infringement cases that deal with computers and computer software.

      52
      B. Matter of First Impression
      53

      Whether a computer menu command hierarchy constitutes copyrightable subject matter is a matter of first impression in this court. While some other courts appear to have touched on it briefly in dicta, see, e.g., Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476, 1495 n. 23 (10th Cir.), cert. denied, ___ U.S. ___, 114 S.Ct. 307, 126 L.Ed.2d 254 (1993), we know of no cases that deal with the copyrightability of a menu command hierarchy standing on its own (i.e., without other elements of the user interface, such as screen displays, in issue). Thus we are navigating in uncharted waters.

      54

      Borland vigorously argues, however, that the Supreme Court charted our course more than 100 years ago when it decided Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879). In Baker v. Selden, the Court held that Selden's copyright over the textbook in which he explained [814] his new way to do accounting did not grant him a monopoly on the use of his accounting system.[6] Borland argues:

      55
      The facts of Baker v. Selden, and even the arguments advanced by the parties in that case, are identical to those in this case. The only difference is that the "user interface" of Selden's system was implemented by pen and paper rather than by computer.
      56

      To demonstrate that Baker v. Selden and this appeal both involve accounting systems, Borland even supplied this court with a video that, with special effects, shows Selden's paper forms "melting" into a computer screen and transforming into Lotus 1-2-3.

      57

      We do not think that Baker v. Selden is nearly as analogous to this appeal as Borland claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such its grid of horizontal rows and vertical columns certainly resembles an accounting ledger or any other paper spreadsheet. Those grids, however, are not at issue in this appeal for, unlike Selden, Lotus does not claim to have a monopoly over its accounting system. Rather, this appeal involves Lotus's monopoly over the commands it uses to operate the computer. Accordingly, this appeal is not, as Borland contends, "identical" to Baker v. Selden.

      58
      C. Altai
      59

      Before we analyze whether the Lotus menu command hierarchy is a system, method of operation, process, or procedure, we first consider the applicability of the test the Second Circuit set forth in Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.1992).[7] The Second Circuit designed its Altai test to deal with the fact that computer programs, copyrighted as "literary works," can be infringed by what is known as "nonliteral" copying, which is copying that is paraphrased or loosely paraphrased rather than word for word. See id. at 701 (citing nonliteral-copying cases); see also 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1] (1993). When faced with nonliteral-copying cases, courts must determine whether similarities are due merely to the fact that the two works share the same underlying idea or whether they instead indicate that the second author copied the first author's expression. The Second Circuit designed its Altai test to deal with this situation in the computer context, specifically with whether one computer program copied nonliteral expression from another program's code.

      60

      The Altai test involves three steps: abstraction, filtration, and comparison. The abstraction step requires courts to "dissect the allegedly copied program's structure and isolate each level of abstraction contained within it." Altai, 982 F.2d at 707. This step enables courts to identify the appropriate framework within which to separate protectable expression from unprotected ideas. Second, courts apply a "filtration" step in which they examine "the structural components at each level of abstraction to determine whether their particular inclusion at that level was `idea' or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain." Id. Finally, courts compare the protected elements of the infringed work (i.e., those that survived the filtration screening) to the corresponding elements of the allegedly infringing work to determine whether there was sufficient copying of protected material to constitute infringement. Id. at 710.

      61

      In the instant appeal, we are not confronted with alleged nonliteral copying of computer code. Rather, we are faced with Borland's deliberate, literal copying of the Lotus menu command hierarchy. Thus, we must determine not whether nonliteral copying occurred in some amorphous sense, but rather whether the literal copying of the Lotus [815] menu command hierarchy constitutes copyright infringement.

      62

      While the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code, we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement. In fact, we think that the Altai test in this context may actually be misleading because, in instructing courts to abstract the various levels, it seems to encourage them to find a base level that includes copyrightable subject matter that, if literally copied, would make the copier liable for copyright infringement.[8] While that base (or literal) level would not be at issue in a nonliteral-copying case like Altai, it is precisely what is at issue in this appeal. We think that abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage, as both the Altai and the district court tests require, obscures the more fundamental question of whether a menu command hierarchy can be copyrighted at all. The initial inquiry should not be whether individual components of a menu command hierarchy are expressive, but rather whether the menu command hierarchy as a whole can be copyrighted. But see Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir.1993) (endorsing Altai's abstraction-filtration-comparison test as a way of determining whether "menus and sorting criteria" are copyrightable).

      63
      D. The Lotus Menu Command Hierarchy: A "Method of Operation"
      64

      Borland argues that the Lotus menu command hierarchy is uncopyrightable because it is a system, method of operation, process, or procedure foreclosed from copyright protection by 17 U.S.C. § 102(b). Section 102(b) 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." Because we conclude that the Lotus menu command hierarchy is a method of operation, we do not consider whether it could also be a system, process, or procedure.

      65

      We think that "method of operation," as that term is used in § 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer. Thus a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words. Similarly, if a new method of operation is used rather than described, other people would still be free to employ or describe that method.

      66

      We hold that the Lotus menu command hierarchy is an uncopyrightable "method of operation." The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the "Copy" command. If users wish to print material, they use the "Print" command. Users must use the command terms to tell the computer what to do. Without the menu command hierarchy, users would not be able to access and control, or indeed make use of, Lotus 1-2-3's functional capabilities.

      67

      The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3's functional capabilities to the user; it also serves as the method by which the program is operated and controlled. The Lotus menu command hierarchy is different from the Lotus long prompts, for the long prompts are not necessary to the operation of the program; users could operate Lotus 1-2-3 even if there were no long prompts.[9] The Lotus [816] menu command hierarchy is also different from the Lotus screen displays, for users need not "use" any expressive aspects of the screen displays in order to operate Lotus 1-2-3; because the way the screens look has little bearing on how users control the program, the screen displays are not part of Lotus 1-2-3's "method of operation."[10] The Lotus menu command hierarchy is also different from the underlying computer code, because while code is necessary for the program to work, its precise formulation is not. In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus's underlying code (and indeed it did not); to allow users to operate its programs in substantially the same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable "method of operation."[11]

      68

      The district court held that the Lotus menu command hierarchy, with its specific choice and arrangement of command terms, constituted an "expression" of the "idea" of operating a computer program with commands arranged hierarchically into menus and submenus. Borland II, 799 F.Supp. at 216. Under the district court's reasoning, Lotus's decision to employ hierarchically arranged command terms to operate its program could not foreclose its competitors from also employing hierarchically arranged command terms to operate their programs, but it did foreclose them from employing the specific command terms and arrangement that Lotus had used. In effect, the district court limited Lotus 1-2-3's "method of operation" to an abstraction.

      69

      Accepting the district court's finding that the Lotus developers made some expressive choices in choosing and arranging the Lotus command terms, we nonetheless hold that that expression is not copyrightable because it is part of Lotus 1-2-3's "method of operation." We do not think that "methods of operation" are limited to abstractions; rather, they are the means by which a user operates something. If specific words are essential to operating something, then they are part of a "method of operation" and, as such, are unprotectable. This is so whether they must be highlighted, typed in, or even spoken, as computer programs no doubt will soon be controlled by spoken words.

      70

      The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a "method of operation." In other words, our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression.[12] Rather, our initial inquiry is whether the Lotus menu command hierarchy is a "method of operation." Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further whether that method of operation could have been designed differently. The "expressive" choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter.

      71

      Our holding that "methods of operation" are not limited to mere abstractions is bolstered by Baker v. Selden. In Baker, the Supreme Court explained that

      72
      the teachings of science and the rules and methods of useful art have their final end in application and use; and this application [817] and use are what the public derive from the publication of a book which teaches them.... The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters-patent.
      73

      Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so that people could learn it and use it. Accordingly, it falls squarely within the prohibition on copyright protection established in Baker v. Selden and codified by Congress in § 102(b).

      74

      In many ways, the Lotus menu command hierarchy is like the buttons used to control, say, a video cassette recorder ("VCR"). A VCR is a machine that enables one to watch and record video tapes. Users operate VCRs by pressing a series of buttons that are typically labelled "Record, Play, Reverse, Fast Forward, Pause, Stop/Eject." That the buttons are arranged and labeled does not make them a "literary work," nor does it make them an "expression" of the abstract "method of operating" a VCR via a set of labeled buttons. Instead, the buttons are themselves the "method of operating" the VCR.

      75

      When a Lotus 1-2-3 user chooses a command, either by highlighting it on the screen or by typing its first letter, he or she effectively pushes a button. Highlighting the "Print" command on the screen, or typing the letter "P," is analogous to pressing a VCR button labeled "Play."

      76

      Just as one could not operate a buttonless VCR, it would be impossible to operate Lotus 1-2-3 without employing its menu command hierarchy. Thus the Lotus command terms are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the buttons themselves. Unlike the labels on a VCR's buttons, which merely make operating a VCR easier by indicating the buttons' functions, the Lotus menu commands are essential to operating Lotus 1-2-3. Without the menu commands, there would be no way to "push" the Lotus buttons, as one could push unlabeled VCR buttons. While Lotus could probably have designed a user interface for which the command terms were mere labels, it did not do so here. Lotus 1-2-3 depends for its operation on use of the precise command terms that make up the Lotus menu command hierarchy.

      77

      One might argue that the buttons for operating a VCR are not analogous to the commands for operating a computer program because VCRs are not copyrightable, whereas computer programs are. VCRs may not be copyrighted because they do not fit within any of the § 102(a) categories of copyrightable works; the closest they come is "sculptural work." Sculptural works, however, are subject to a "useful-article" exception whereby "the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101. A "useful article" is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." Id. Whatever expression there may be in the arrangement of the parts of a VCR is not capable of existing separately from the VCR itself, so an ordinary VCR would not be copyrightable.

      78

      Computer programs, unlike VCRs, are copyrightable as "literary works." 17 U.S.C. § 102(a). Accordingly, one might argue, the "buttons" used to operate a computer program are not like the buttons used to operate a VCR, for they are not subject to a useful-article exception. The response, of course, is that the arrangement of buttons on a VCR would not be copyrightable even without a useful-article exception, because the buttons are an uncopyrightable "method of operation." Similarly, the "buttons" of a computer program are also an uncopyrightable "method of operation."

      79

      That the Lotus menu command hierarchy is a "method of operation" becomes clearer when one considers program compatibility. Under Lotus's theory, if a user uses [818] several different programs, he or she must learn how to perform the same operation in a different way for each program used. For example, if the user wanted the computer to print material, then the user would have to learn not just one method of operating the computer such that it prints, but many different methods. We find this absurd. The fact that there may be many different ways to operate a computer program, or even many different ways to operate a computer program using a set of hierarchically arranged command terms, does not make the actual method of operation chosen copyrightable; it still functions as a method for operating the computer and as such is uncopyrightable.

      80

      Consider also that users employ the Lotus menu command hierarchy in writing macros. Under the district court's holding, if the user wrote a macro to shorten the time needed to perform a certain operation in Lotus 1-2-3, the user would be unable to use that macro to shorten the time needed to perform that same operation in another program. Rather, the user would have to rewrite his or her macro using that other program's menu command hierarchy. This is despite the fact that the macro is clearly the user's own work product. We think that forcing the user to cause the computer to perform the same operation in a different way ignores Congress's direction in § 102(b) that "methods of operation" are not copyrightable. That programs can offer users the ability to write macros in many different ways does not change the fact that, once written, the macro allows the user to perform an operation automatically. As the Lotus menu command hierarchy serves as the basis for Lotus 1-2-3 macros, the Lotus menu command hierarchy is a "method of operation."

      81

      In holding that expression that is part of a "method of operation" cannot be copyrighted, we do not understand ourselves to go against the Supreme Court's holding in Feist. In Feist, the Court explained:

      82
      The primary objective of copyright is not to reward the labor of authors, but to promote the Progress of Science and useful Arts. To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.
      83

      Feist, 499 U.S. at 349-50, 111 S.Ct. at 1290 (quotations and citations omitted). We do not think that the Court's statement that "copyright assures authors the right to their original expression" indicates that all expression is necessarily copyrightable; while original expression is necessary for copyright protection, we do not think that it is alone sufficient. Courts must still inquire whether original expression falls within one of the categories foreclosed from copyright protection by § 102(b), such as being a "method of operation."

      84

      We also note that in most contexts, there is no need to "build" upon other people's expression, for the ideas conveyed by that expression can be conveyed by someone else without copying the first author's expression.[13] In the context of methods of operation, however, "building" requires the use of the precise method of operation already employed; otherwise, "building" would require dismantling, too. Original developers are not the only people entitled to build on the methods of operation they create; anyone can. Thus, Borland may build on the method of operation that Lotus designed and may use the Lotus menu command hierarchy in doing so.

      85

      Our holding that methods of operation are not limited to abstractions goes against Autoskill, 994 F.2d at 1495 n. 23, in which the Tenth Circuit rejected the defendant's argument that the keying procedure used in a computer program was an uncopyrightable "procedure" or "method of operation" under § 102(b). The program at issue, which was designed to test and train students with reading deficiencies, id. at 1481, required students to select responses to the program's queries "by pressing the 1, 2, or 3 keys." Id. at 1495 n. 23. The Tenth Circuit held that, "for purposes of the preliminary injunction, ... the record showed that [this] keying procedure reflected at least a minimal degree [819] of creativity," as required by Feist for copyright protection. Id. As an initial matter, we question whether a programmer's decision to have users select a response by pressing the 1, 2, or 3 keys is original. More importantly, however, we fail to see how "a student select[ing] a response by pressing the 1, 2, or 3 keys," id., can be anything but an unprotectable method of operation.[14]

      86
      III.
      87
      Conclusion
      88

      Because we hold that the Lotus menu command hierarchy is uncopyrightable subject matter, we further hold that Borland did not infringe Lotus's copyright by copying it. Accordingly, we need not consider any of Borland's affirmative defenses. The judgment of the district court is

      89

      Reversed.

      90

      Concurrence follows.

      91

      BOUDIN, Circuit Judge, concurring.

      92

      The importance of this case, and a slightly different emphasis in my view of the underlying problem, prompt me to add a few words to the majority's tightly focused discussion.

      93
      I.
      94

      Most of the law of copyright and the "tools" of analysis have developed in the context of literary works such as novels, plays, and films. In this milieu, the principal problem — simply stated, if difficult to resolve — is to stimulate creative expression without unduly limiting access by others to the broader themes and concepts deployed by the author. The middle of the spectrum presents close cases; but a "mistake" in providing too much protection involves a small cost: subsequent authors treating the same themes must take a few more steps away from the original expression.

      95

      The problem presented by computer programs is fundamentally different in one respect. The computer program is a means for causing something to happen; it has a mechanical utility, an instrumental role, in accomplishing the world's work. Granting protection, in other words, can have some of the consequences of patent protection in limiting other people's ability to perform a task in the most efficient manner. Utility does not bar copyright (dictionaries may be copyrighted), but it alters the calculus.

      96

      Of course, the argument for protection is undiminished, perhaps even enhanced, by utility: if we want more of an intellectual product, a temporary monopoly for the creator provides incentives for others to create other, different items in this class. But the "cost" side of the equation may be different where one places a very high value on public access to a useful innovation that may be the most efficient means of performing a given task. Thus, the argument for extending protection may be the same; but the stakes on the other side are much higher.

      97

      It is no accident that patent protection has preconditions that copyright protection does not — notably, the requirements of novelty and non-obviousness — and that patents are granted for a shorter period than copyrights. This problem of utility has sometimes manifested itself in copyright cases, such as Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879), and been dealt with through various formulations that limit copyright or create limited rights to copy. But the case law and doctrine addressed to utility in copyright have been brief detours in the general march of copyright law.

      98

      Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs — macros — in reliance upon the menu. Better typewriter keyboard [820] layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. See P. David, CLIO and the Economics of QWERTY, 75 Am.Econ.Rev. 332 (1985). The QWERTY keyboard is nothing other than a menu of letters.

      99

      Thus, to assume that computer programs are just one more new means of expression, like a filmed play, may be quite wrong. The "form" — the written source code or the menu structure depicted on the screen — look hauntingly like the familiar stuff of copyright; but the "substance" probably has more to do with problems presented in patent law or, as already noted, in those rare cases where copyright law has confronted industrially useful expressions. Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.

      100

      All of this would make no difference if Congress had squarely confronted the issue, and given explicit directions as to what should be done. The Copyright Act of 1976 took a different course. While Congress said that computer programs might be subject to copyright protection, it said this in very general terms; and, especially in § 102(b), Congress adopted a string of exclusions that if taken literally might easily seem to exclude most computer programs from protection. The only detailed prescriptions for computers involve narrow issues (like back-up copies) of no relevance here.

      101

      Of course, one could still read the statute as a congressional command that the familiar doctrines of copyright law be taken and applied to computer programs, in cookie cutter fashion, as if the programs were novels or play scripts. Some of the cases involving computer programs embody this approach. It seems to be mistaken on two different grounds: the tradition of copyright law, and the likely intent of Congress.

      102

      The broad-brush conception of copyright protection, the time limits, and the formalities have long been prescribed by statute. But the heart of copyright doctrine — what may be protected and with what limitations and exceptions — has been developed by the courts through experience with individual cases. B. Kaplan, An Unhurried View of Copyright 40 (1967). Occasionally Congress addresses a problem in detail. For the most part the interstitial development of copyright through the courts is our tradition.

      103

      Nothing in the language or legislative history of the 1976 Act, or at least nothing brought to our attention, suggests that Congress meant the courts to abandon this case-by-case approach. Indeed, by setting up § 102(b) as a counterpoint theme, Congress has arguably recognized the tension and left it for the courts to resolve through the development of case law. And case law development is adaptive: it allows new problems to be solved with help of earlier doctrine, but it does not preclude new doctrines to meet new situations.

      104
      II.
      105

      In this case, the raw facts are mostly, if not entirely, undisputed. Although the inferences to be drawn may be more debatable, it is very hard to see that Borland has shown any interest in the Lotus menu except as a fall-back option for those users already committed to it by prior experience or in order to run their own macros using 1-2-3 commands. At least for the amateur, accessing the Lotus menu in the Borland Quattro or Quattro Pro program takes some effort.

      106

      Put differently, it is unlikely that users who value the Lotus menu for its own sake — independent of any investment they have made themselves in learning Lotus' commands or creating macros dependent upon them — would choose the Borland program in order to secure access to the Lotus menu. Borland's success is due primarily to other features. Its rationale for deploying the Lotus menu bears the ring of truth.

      107

      Now, any use of the Lotus menu by Borland is a commercial use and deprives Lotus of a portion of its "reward," in the sense that an infringement claim if allowed would increase Lotus' profits. But this is circular reasoning: broadly speaking, every limitation on copyright or privileged use diminishes the reward of the original creator. Yet not every writing is copyrightable or every use an infringement. The provision of reward is [821] one concern of copyright law, but it is not the only one. If it were, copyrights would be perpetual and there would be no exceptions.

      108

      The present case is an unattractive one for copyright protection of the menu. The menu commands (e.g., "print," "quit") are largely for standard procedures that Lotus did not invent and are common words that Lotus cannot monopolize. What is left is the particular combination and sub-grouping of commands in a pattern devised by Lotus. This arrangement may have a more appealing logic and ease of use than some other configurations; but there is a certain arbitrariness to many of the choices.

      109

      If Lotus is granted a monopoly on this pattern, users who have learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a typist who has learned the QWERTY keyboard would be the captive of anyone who had a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3 has had such sway in the market that it has represented the de facto standard for electronic spreadsheet commands. So long as Lotus is the superior spreadsheet — either in quality or in price — there may be nothing wrong with this advantage.

      110

      But if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus. Lotus has already reaped a substantial reward for being first; assuming that the Borland program is now better, good reasons exist for freeing it to attract old Lotus customers: to enable the old customers to take advantage of a new advance, and to reward Borland in turn for making a better product. If Borland has not made a better product, then customers will remain with Lotus anyway.

      111

      Thus, for me the question is not whether Borland should prevail but on what basis. Various avenues might be traveled, but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland's use is privileged. No solution is perfect and no intermediate appellate court can make the final choice.

      112

      To call the menu a "method of operation" is, in the common use of those words, a defensible position. After all, the purpose of the menu is not to be admired as a work of literary or pictorial art. It is to transmit directions from the user to the computer, i.e., to operate the computer. The menu is also a "method" in the dictionary sense because it is a "planned way of doing something," an "order or system," and (aptly here) an "orderly or systematic arrangement, sequence or the like." Random House Webster's College Dictionary 853 (1991).

      113

      A different approach would be to say that Borland's use is privileged because, in the context already described, it is not seeking to appropriate the advances made by Lotus' menu; rather, having provided an arguably more attractive menu of its own, Borland is merely trying to give former Lotus users an option to exploit their own prior investment in learning or in macros. The difference is that such a privileged use approach would not automatically protect Borland if it had simply copied the Lotus menu (using different codes), contributed nothing of its own, and resold Lotus under the Borland label.

      114

      The closest analogue in conventional copyright is the fair use doctrine. E.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). Although invoked by Borland, it has largely been brushed aside in this case because the Supreme Court has said that it is "presumptively" unavailable where the use is a "commercial" one. See id. at 562, 105 S.Ct. at 2231-32. But see Campbell v. Acuff-Rose Music, Inc., ___ U.S. ___, ___, 114 S.Ct. 1164, 1174, 127 L.Ed.2d 500 (1994). In my view, this is something less than a definitive answer; "presumptively" does not mean "always" and, in any event, the doctrine of fair use was created by the courts and can be adapted to new purposes.

      115

      But a privileged use doctrine would certainly involve problems of its own. It might more closely tailor the limits on copyright protection to the reasons for limiting that protection; but it would entail a host of administrative problems that would cause [822] cost and delay, and would also reduce the ability of the industry to predict outcomes. Indeed, to the extent that Lotus' menu is an important standard in the industry, it might be argued that any use ought to be deemed privileged.

      116

      In sum, the majority's result persuades me and its formulation is as good, if not better, than any other that occurs to me now as within the reach of courts. Some solutions (e.g., a very short copyright period for menus) are not options at all for courts but might be for Congress. In all events, the choices are important ones of policy, not linguistics, and they should be made with the underlying considerations in view.

      117

      [1] Judge Keeton presided over both the Paperback litigation and this case.

      118

      [2] Lotus 1-2-3 utilizes a two-line menu; the top line lists the commands from which the user may choose, and the bottom line displays what Lotus calls its "long prompts." The long prompts explain, as a sort of "help text," what the highlighted menu command will do if entered. For example, the long prompt for the "Worksheet" command displays the submenu that the "Worksheet" command calls up; it reads "Global, Insert, Delete, Column, Erase, Titles, Window, Status, Page." The long prompt for the "Copy" command explains what function the "Copy" command will perform: "Copy a cell or range of cells." The long prompt for the "Quit" command reads, "End 1-2-3 session (Have you saved your work?)."

      119

      Prior to trial, the parties agreed to exclude the copying of the long prompts from the case; Lotus agreed not to contend that Borland had copied the long prompts, Borland agreed not to argue that it had not copied the long prompts, and both sides agreed not to argue that the issue of whether Borland had copied the long prompts was material to any other issue in the case. See Borland III, 831 F.Supp. at 208.

      120

      [3] Because Borland's programs could no longer display the Lotus menu command hierarchy to users, the Key Reader did not allow debugging or modification of macros, nor did it permit the execution of most interactive macros.

      121

      [4] See Borland IV, 831 F.Supp. at 226-27, for a more detailed explanation of macros and the Key Reader.

      122

      [5] Computer programs receive copyright protection as "literary works." See 17 U.S.C. § 102(a)(1) (granting protection to "literary works") and 17 U.S.C. § 101 (defining "literary works" as "works ... expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, phonorecords, film, tapes, disks, or cards, in which they are embodied" (emphasis added)); see also H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 ("The term `literary works' ... includes computer data bases, and computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves.").

      123

      [6] Selden's system of double-entry bookkeeping is the now almost-universal T-accounts system.

      124

      [7] We consider the Altai test because both parties and many of the amici focus on it so heavily. Borland, in particular, is highly critical of the district court for not employing the Altai test. Borland does not, however, indicate how using that test would have been dispositive in Borland's favor. Interestingly, Borland appears to contract its own reasoning at times by criticizing the applicability of the Altai test.

      125

      [8] We recognize that Altai never states that every work contains a copyrightable "nugget" of protectable expression. Nonetheless, the implication is that for literal copying, "it is not necessary to determine the level of abstraction at which similarity ceases to consist of an `expression of ideas,' because literal similarity by definition is always a similarity as to the expression of ideas." 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A](2) (1993).

      126

      [9] As the Lotus long prompts are not before us on appeal, we take no position on their copyrightability, although we do note that a strong argument could be made that the brief explanations they provide "merge" with the underlying idea of explaining such functions. See Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir.1967) (when the possible ways to express an idea are limited, the expression "merges" with the idea and is therefore uncopyrightable; when merger occurs, identical copying is permitted).

      127

      [10] As they are not before us on appeal, we take no position on whether the Lotus 1-2-3 screen displays constitute original expression capable of being copyrighted.

      128

      [11] Because the Lotus 1-2-3 code is not before us on appeal, we take no position on whether it is copyrightable. We note, however, that original computer codes generally are protected by copyright. See, e.g., Altai, 982 F.2d at 702 ("It is now well settled that the literal elements of computer programs, i.e., their source and object codes, are the subject of copyright protection.") (citing cases).

      129

      [12] We think that the Altai test would contemplate this being the initial inquiry.

      130

      [13] When there are a limited number of ways to express an idea, however, the expression "merges" with the idea and becomes uncopyrightable. Morrissey, 379 F.2d at 678-79.

      131

      [14] The Ninth Circuit has also indicated in dicta that "menus, and keystrokes" may be copyrightable. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.), cert. denied, BB Asset Management, Inc. v. Symantec Corp., ___ U.S. ___, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992). In that case, however, the plaintiff did not show that the defendant had copied the plaintiff's menus or keystrokes, so the court was not directly faced with whether the menus or keystrokes constituted an unprotectable method of operation. Id.

      132

       

    • 2.2 Oracle v. Google (2014)

      1
      ORACLE AMERICA, INC., Plaintiff-Appellant,
      v.
      GOOGLE INC., Defendant-Cross-Appellant.

      Nos. 2013-1021, 2013-1022

      2

      United States Court of Appeals, Federal Circuit.

      Decided: May 9, 2014.

      3

      E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiff-appellant. With him on the brief were MARK S. DAVIES, ANDREW D. SILVERMAN, KELLY M. DALEY; and ANNETTE L. HURST, GABRIEL M. RAMSEY, and ELIZABETH C. MCBRIDE, of San Francisco, California. Of counsel on the brief were DORIAN E. DALEY, DEBORAH K. MILLER, MATTHEW SARBORARIA, and ANDREW C. TEMKIN, Oracle America, Inc., of Redwood Shores, California; and DALE M. CENDALI, DIANA M. TORRES, SEAN B. FERNANDES, and JOSHUA L. SIMMONS, Kirkland & Ellis LLP, of New York, New York. Of counsel were SUSAN M. DAVIES, Kirkland & Ellis LLP, of New York, New York; MICHAEL A. JACOBS, Morrison & Foerster LLP, of San Francisco, California; and KENNETH A. KUWAYTI, of Palo Alto, California.

      4

      ROBERT A. VAN NEST, Keker & Van Nest LLP, of San Francisco, California, argued for defendant-cross-appellant. With him on the brief were CHRISTA M. ANDERSON, STEVEN A. HIRSCH, MICHAEL S. KWUN, and DANIEL E. JACKSON. Of counsel on the brief were IAN C. BALLON and HEATHER MEEKER, Greenberg Traurig, LLP, of East Palo Alto, California; RENNY HWANG, Google Inc., of Mountain View, California; and DARYL L. JOSEFFER and BRUCE W. BABER, King & Spalding LLP, of Washington, DC.

      5

      MARCIA B. PAUL, Davis Wright Tremaine LLP, of New York, New York, for amicus curiae Ralph Oman. With her on the brief were LACY H. KOONCE, III and DEBORAH A. ADLER.

      6

      WILLIAM A. RUDY, Lathrop & Gage LLP, of Kansas City, Missouri, for amici curiae Picture Archive Council of America, Inc., et al. With him on the brief were CAROLE E. HANDLER and BRIANNA E. DAHLBERG, of Los Angeles, California.

      7

      GREGORY G. GARRE, Latham & Watkins, LLP, of Washington, DC, for amici curiae Microsoft Corporation, et al. With him on the brief was LORI ALVINO MCGILL. Of counsel on the brief were PAUL T. DACIER, KRISHNENDU GUPTA, EMC Corporation, of Hopkinton, Massachusetts; and DOUGLAS LUFTMAN, NETAPP, Inc., of Sunnyvale, California.

      8

      JARED BOBROW, Weil, Gotshal & Manges LLP, of Redwood Shores, California, for amici curiae Eugene H. Spafford, Ph.D., et al. With him on the brief was AARON Y. HUANG.

      9

      MATTHEW S. HELLMAN, Jenner & Block LLP, of Washington, DC, for amicus curiae BSA/The Software Alliance. With him on the brief was PAUL M. SMITH.

      10

      STEVEN T. COTTREAU, Clifford Chance US LLP, of Washington, DC, for amici curiae, Scott McNealy, et al.

      11

      MEREDITH JACOB, Program on Information Justice and Intellectual Property, American University, Washington College of Law, of Washington, DC, for amici curiae Intellectual Property Law Professors.

      12

      JULIE P. SAMUELS, Electronic Frontier Foundation, of San Francisco, California, for amici curiae Computer Scientists. With her on the brief was MICHAEL BARCLAY. Of counsel on the brief was JASON M. SCHULTZ, NYU Technology Law and Policy Clinic, NYU School of Law, of New York, New York.

      13

      JONATHAN BAND, Jonathan Band PLLC, of Washington, DC, filed a brief for amicus curiae Computer & Communications Industry Association. With him on the brief was MATTHEW SCHRUERS, Computer & Communications Industry Association, of Washington, DC.

      14

      CHAD RUBACK, The Ruback Law Firm, of Dallas, Texas, filed a brief for amici curiae Rackspace US, Inc., et al.

      15

      JENNIFER M. URBAN, Samuelson Law, Technology and Public Policy Clinic, U.C. Berkeley School of Law, of Berkeley, California for amici curiae Software Innovators, et al.

      16

      Before O'MALLEY, PLAGER, and TARANTO, Circuit Judges.

      17
      O'MALLEY, Circuit Judge.
      18

      This copyright dispute involves 37 packages of computer source code. The parties have often referred to these groups of computer programs, individually or collectively, as "application programming interfaces," or API packages, but it is their content, not their name, that matters. The predecessor of Oracle America, Inc. ("Oracle") wrote these and other API packages in the Java programming language, and Oracle licenses them on various terms for others to use. Many software developers use the Java language, as well as Oracle's API packages, to write applications (commonly referred to as "apps") for desktop and laptop computers, tablets, smartphones, and other devices.

      19

      Oracle filed suit against Google Inc. ("Google") in the United States District Court for the Northern District of California, alleging that Google's Android mobile operating system infringed Oracle's patents and copyrights. The jury found no patent infringement, and the patent claims are not at issue in this appeal. As to the copyright claims, the parties agreed that the jury would decide infringement, fair use, and whether any copying was de minimis, while the district judge would decide copyrightability and Google's equitable defenses. The jury found that Google infringed Oracle's copyrights in the 37 Java packages and a specific computer routine called "rangeCheck," but returned a noninfringement verdict as to eight decompiled security files. The jury deadlocked on Google's fair use defense.

      20

      After the jury verdict, the district court denied Oracle's motion for judgment as a matter of law ("JMOL") regarding fair use as well as Google's motion for JMOL with respect to the rangeCheck files. Order on Motions for Judgment as a Matter of Law, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. May 10, 2012), ECF No. 1119. Oracle also moved for JMOL of infringement with respect to the eight decompiled security files. In granting that motion, the court found that: (1) Google admitted to copying the eight files; and (2) no reasonable jury could find that the copying was de minimis. Oracle Am., Inc. v. Google Inc., No. C 10-3561, 2012 U.S. Dist. LEXIS 66417 (N.D. Cal. May 11, 2012) ("Order Granting JMOL on Decompiled Files").

      21

      Shortly thereafter, the district court issued its decision on copyrightability, finding that the replicated elements of the 37 API packages—including the declaring code and the structure, sequence, and organization—were not subject to copyright protection. Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012) ("Copyrightability Decision"). Accordingly, the district court entered final judgment in favor of Google on Oracle's copyright infringement claims, except with respect to the rangeCheck code and the eight decompiled files. Final Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle appeals from the portion of the final judgment entered against it, and Google cross-appeals from the portion of that same judgment entered in favor of Oracle as to the rangeCheck code and eight decompiled files.

      22

      Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court's copyrightability determination with instructions to reinstate the jury's infringement finding as to the 37 Java packages. Because the jury deadlocked on fair use, we remand for further consideration of Google's fair use defense in light of this decision. With respect to Google's cross-appeal, we affirm the district court's decisions: (1) granting Oracle's motion for JMOL as to the eight decompiled Java files that Google copied into Android; and (2) denying Google's motion for JMOL with respect to the rangeCheck function. Accordingly, we affirm-in-part, reverse-in-part, and remand for further proceedings.

      23
      BACKGROUND
      24
      A. The Technology
      25

      Sun Microsystems, Inc. ("Sun") developed the Java "platform" for computer programming and released it in 1996.[1] The aim was to relieve programmers from the burden of writing different versions of their computer programs for different operating systems or devices. "The Java platform, through the use of a virtual machine, enable[d] software developers to write programs that [we]re able to run on different types of computer hardware without having to rewrite them for each different type." Copyrightability Decision, 872 F. Supp. 2d at 977. With Java, a software programmer could "write once, run anywhere."

      26

      The Java virtual machine ("JVM") plays a central role in the overall Java platform. The Java programming language itself—which includes words, symbols, and other units, together with syntax rules for using them to create instructions—is the language in which a Java programmer writes source code, the version of a program that is "in a human-readable language." Id. For the instructions to be executed, they must be converted (or compiled) into binary machine code (object code) consisting of 0s and 1s understandable by the particular computing device. In the Java system, "source code is first converted into `bytecode,' an intermediate form, before it is then converted into binary machine code by the Java virtual machine" that has been designed for that device. Id. The Java platform includes the "Java development kit (JDK), javac compiler, tools and utilities, runtime programs, class libraries (API packages), and the Java virtual machine." Id. at 977 n.2.

      27

      Sun wrote a number of ready-to-use Java programs to perform common computer functions and organized those programs into groups it called "packages." These packages, which are the application programming interfaces at issue in this appeal, allow programmers to use the prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch. They are shortcuts. Sun called the code for a specific operation (function) a "method." It defined "classes" so that each class consists of specified methods plus variables and other elements on which the methods operate. To organize the classes for users, then, it grouped classes (along with certain related "interfaces") into "packages." See id. at 982 (describing organization: "[e]ach package [i]s broken into classes and those in turn [are] broken into methods"). The parties have not disputed the district court's analogy: Oracle's collection of API packages is like a library, each package is like a bookshelf in the library, each class is like a book on the shelf, and each method is like a how-to chapter in a book. Id. at 977.

      28

      The original Java Standard Edition Platform ("Java SE") included "eight packages of pre-written programs." Id. at 982. The district court found, and Oracle concedes to some extent, that three of those packages—java.lang, java.io, and java.util—were "core" packages, meaning that programmers using the Java language had to use them "in order to make any worthwhile use of the language." Id. By 2008, the Java platform had more than 6,000 methods making up more than 600 classes grouped into 166 API packages. There are 37 Java API packages at issue in this appeal, three of which are the core packages identified by the district court.[2] These packages contain thousands of individual elements, including classes, subclasses, methods, and interfaces.

      29

      Every package consists of two types of source code— what the parties call (1)declaring code; and (2) implementing code. Declaring code is the expression that identifies the prewritten function and is sometimes referred to as the "declaration" or "header." As the district court explained, the "main point is that this header line of code introduces the method body and specifies very precisely the inputs, name and other functionality." Id. at 979-80. The expressions used by the programmer from the declaring code command the computer to execute the associated implementing code, which gives the computer the step-by-step instructions for carrying out the declared function.

      30

      To use the district court's example, one of the Java API packages at issue is "java.lang." Within that package is a class called "math," and within "math" there are several methods, including one that is designed to find the larger of two numbers: "max." The declaration for the "max" method, as defined for integers, is: "public static int max(int x, int y)," where the word "public" means that the method is generally accessible, "static" means that no specific instance of the class is needed to call the method, the first "int" indicates that the method returns an integer, and "int x" and "int y" are the two numbers (inputs) being compared. Copyrightability Decision, 872 F. Supp. 2d at 980-82. A programmer calls the "max" method by typing the name of the method stated in the declaring code and providing unique inputs for the variables "x" and "y." The expressions used command the computer to execute the implementing code that carries out the operation of returning the larger number.

      31

      Although Oracle owns the copyright on Java SE and the API packages, it offers three different licenses to those who want to make use of them. The first is the General Public License, which is free of charge and provides that the licensee can use the packages—both the declaring and implementing code—but must "contribute back" its innovations to the public. This arrangement is referred to as an "open source" license. The second option is the Specification License, which provides that the licensee can use the declaring code and organization of Oracle's API packages but must write its own implementing code. The third option is the Commercial License, which is for businesses that "want to use and customize the full Java code in their commercial products and keep their code secret." Appellant Br. 14. Oracle offers the Commercial License in exchange for royalties. To maintain Java's "write once, run anywhere" motto, the Specification and Commercial Licenses require that the licensees' programs pass certain tests to ensure compatibility with the Java platform.

      32

      The testimony at trial also revealed that Sun was licensing a derivative version of the Java platform for use on mobile devices: the Java Micro Edition ("Java ME"). Oracle licensed Java ME for use on feature phones and smartphones. Sun/Oracle has never successfully developed its own smartphone platform using Java.

      33
      B. Google's Accused Product: Android
      34

      The accused product is Android, a software platform that was designed for mobile devices and competes with Java in that market. Google acquired Android, Inc. in 2005 as part of a plan to develop a smartphone platform. Later that same year, Google and Sun began discussing the possibility of Google "taking a license to use and to adapt the entire Java platform for mobile devices." Copyrightability Decision, 872 F. Supp. 2d at 978. They also discussed a "possible co-development partnership deal with Sun under which Java technology would become an open-source part of the Android platform, adapted for mobile devices." Id. The parties negotiated for months but were unable to reach an agreement. The point of contention between the parties was Google's refusal to make the implementation of its programs compatible with the Java virtual machine or interoperable with other Java programs. Because Sun/Oracle found that position to be anathema to the "write once, run anywhere" philosophy, it did not grant Google a license to use the Java API packages.

      35

      When the parties' negotiations reached an impasse, Google decided to use the Java programming language to design its own virtual machine—the Dalvik virtual machine ("Dalvik VM")—and "to write its own implementations for the functions in the Java API that were key to mobile devices." Id. Google developed the Android platform, which grew to include 168 API packages—37 of which correspond to the Java API packages at issue in this appeal.

      36

      With respect to the 37 packages at issue, "Google believed Java application programmers would want to find the same 37 sets of functionalities in the new Android system callable by the same names as used in Java." Id. To achieve this result, Google copied the declaring source code from the 37 Java API packages verbatim, inserting that code into parts of its Android software. In doing so, Google copied the elaborately organized taxonomy of all the names of methods, classes, interfaces, and packages— the "overall system of organized names—covering 37 packages, with over six hundred classes, with over six thousand methods." Copyrightability Decision, 872 F. Supp. 2d at 999. The parties and district court referred to this taxonomy of expressions as the "structure, sequence, and organization" or "SSO" of the 37 packages. It is undisputed, however, that Google wrote its own implementing code, except with respect to: (1) the rangeCheck function, which consisted of nine lines of code; and (2) eight decompiled security files.

      37

      As to rangeCheck, the court found that the Sun engineer who wrote it later worked for Google and contributed two files he created containing the rangeCheck function— "Timsort.java" and "ComparableTimsort"—to the Android platform. In doing so, the nine-line rangeCheck function was copied directly into Android. As to the eight decompiled files, the district court found that they were copied and used as test files but "never found their way into Android or any handset." Id. at 983.

      38

      Google released the Android platform in 2007, and the first Android phones went on sale the following year. Although it is undisputed that certain Android software contains copies of the 37 API packages' declaring code at issue, neither the district court nor the parties specify in which programs those copies appear. Oracle indicated at oral argument, however, that all Android phones contain copies of the accused portions of the Android software. Oral Argument at 1:35, available at http://www. cafc.uscourts.gov/oral-argument-recordings/XXXX-XXXX/all. Android smartphones "rapidly grew in popularity and now comprise a large share of the United States market." Copyrightability Decision, 872 F. Supp. 2d at 978. Google provides the Android platform free of charge to smartphone manufacturers and receives revenue when customers use particular functions on the Android phone. Although Android uses the Java programming language, it is undisputed that Android is not generally Java compatible. As Oracle explains, "Google ultimately designed Android to be incompatible with the Java platform, so that apps written for one will not work on the other." Appellant Br. 29.

      39
      C. Trial and Post-Trial Rulings
      40

      Beginning on April 16, 2012, the district court and the jury—on parallel tracks—viewed documents and heard testimony from twenty-four witnesses on copyrightability, infringement, fair use, and Google's other defenses. Because the parties agreed the district court would decide copyrightability, the court instructed the jury to assume that the structure, sequence, and organization of the 37 API packages was copyrightable. And, the court informed the jury that Google conceded that it copied the declaring code used in the 37 packages verbatim. The court also instructed the jury that Google conceded copying the rangeCheck function and the eight decompiled security files, but that Google maintained that its use of those lines of code was de minimis. See Final Charge to the Jury (Phase One), Oracle Am., Inc. v. Google Inc., 3:10-cv-3561 (N.D. Cal. Apr. 30, 2012), ECF No. 1018 at 14 ("With respect to the infringement issues concerning the rangeCheck and other similar files, Google agrees that the accused lines of code and comments came from the copyrighted material but contends that the amounts involved were so negligible as to be de minimis and thus should be excused.").

      41

      On May 7, 2012, the jury returned a verdict finding that Google infringed Oracle's copyright in the 37 Java API packages and in the nine lines of rangeCheck code, but returned a noninfringement verdict as to eight decompiled security files. The jury hung on Google's fair use defense.

      42

      The parties filed a number of post-trial motions, most of which were ultimately denied. In relevant part, the district court denied Oracle's motion for JMOL regarding fair use and Google's motion for JMOL as to the rangeCheck files. Order on Motions for Judgment as a Matter of Law, Oracle Am., Inc. v. Google Inc., No. 3:10cv-3561 (N.D. Cal. May 10, 2012), ECF No. 1119. The district court granted Oracle's motion for JMOL of infringement as to the eight decompiled files, however. In its order, the court explained that: (1) Google copied the files in their entirety; (2) the trial testimony revealed that the use of those files was "significant"; and (3) no reasonable jury could find the copying de minimis. Order Granting JMOL on Decompiled Files, 2012 U.S. Dist. LEXIS 66417, at *6.

      43

      On May 31, 2012, the district court issued the primary decision at issue in this appeal, finding that the replicated elements of the Java API packages—including the declarations and their structure, sequence, and organization—were not copyrightable. As to the declaring code, the court concluded that "there is only one way to write" it, and thus the "merger doctrine bars anyone from claiming exclusive copyright ownership of that expression." Copyrightability Decision, 872 F. Supp. 2d at 998. The court further found that the declaring code was not protectable because "names and short phrases cannot be copyrighted." Id. As such, the court determined that "there can be no copyright violation in using the identical declarations." Id.

      44

      As to the overall structure, sequence, and organization of the Java API packages, the court recognized that "nothing in the rules of the Java language . . . required that Google replicate the same groupings even if Google was free to replicate the same functionality." Id. at 999. Therefore, the court determined that "Oracle's best argument. . . is that while no single name is copyrightable, Java's overall system of organized names—covering 37 packages, with over six hundred classes, with over six thousand methods—is a `taxonomy' and, therefore, copyrightable." Id.

      45

      Although it acknowledged that the overall structure of Oracle's API packages is creative, original, and "resembles a taxonomy," the district court found that it "is nevertheless a command structure, a system or method of operation—a long hierarchy of over six thousand commands to carry out pre-assigned functions"—that is not entitled to copyright protection under Section 102(b) of the Copyright Act. Id. at 999-1000. In reaching this conclusion, the court emphasized that, "[o]f the 166 Java packages, 129 were not violated in any way." Id. at 1001. And, of the 37 Java API packages at issue, "97 percent of the Android lines were new from Google and the remaining three percent were freely replicable under the merger and names doctrines." Id. On these grounds, the court dismissed Oracle's copyright claims, concluding that "the particular elements replicated by Google were free for all to use under the Copyright Act." Id.

      46

      On June 20, 2012, the district court entered final judgment in favor of Google and against Oracle on its claim for copyright infringement, except with respect to the rangeCheck function and the eight decompiled files. As to rangeCheck and the decompiled files, the court entered judgment for Oracle and against Google in the amount of zero dollars, per the parties' stipulation. Final Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Oracle timely appealed from the portion of the district court's final judgment entered against it and Google timely crossappealed with respect to rangeCheck and the eight decompiled files. Because this action included patent claims, we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

      47
      DISCUSSION
      48
      I. ORACLE'S APPEAL
      49

      It is undisputed that the Java programming language is open and free for anyone to use. Except to the limited extent noted below regarding three of the API packages, it is also undisputed that Google could have written its own API packages using the Java language. Google chose not to do that. Instead, it is undisputed that Google copied 7,000 lines of declaring code and generally replicated the overall structure, sequence, and organization of Oracle's 37 Java API packages. The central question before us is whether these elements of the Java platform are entitled to copyright protection. The district court concluded that they are not, and Oracle challenges that determination on appeal. Oracle also argues that the district court should have dismissed Google's fair use defense as a matter of law.

      50

      According to Google, however, the district court correctly determined that: (1) there was only one way to write the Java method declarations and remain "interoperable" with Java; and (2) the organization and structure of the 37 Java API packages is a "command structure" excluded from copyright protection under Section 102(b). Google also argues that, if we reverse the district court's copyrightability determination, we should direct the district court to retry its fair use defense.

      51

      "When the questions on appeal involve law and precedent on subjects not exclusively assigned to the Federal Circuit, the court applies the law which would be applied by the regional circuit." Atari Games Corp. v. Nintendo of Am., Inc., 897 F.2d 1572, 1575 (Fed. Cir. 1990). Copyright issues are not exclusively assigned to the Federal Circuit. See 28 U.S.C. § 1295. The parties agree that Ninth Circuit law applies and that, in the Ninth Circuit, whether particular expression is protected by copyright law is "subject to de novo review." Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000).[3]

      52

      We are mindful that the application of copyright law in the computer context is often a difficult task. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 820 (1st Cir. 1995) (Boudin, J., concurring) ("Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit."). On this record, however, we find that the district court failed to distinguish between the threshold question of what is copyrightable— which presents a low bar—and the scope of conduct that constitutes infringing activity. The court also erred by importing fair use principles, including interoperability concerns, into its copyrightability analysis.

      53

      For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection. Because there is an insufficient record as to the relevant fair use factors, we remand for further proceedings on Google's fair use defense.

      54
      A. Copyrightability
      55

      The Copyright Act provides protection to "original works of authorship fixed in any tangible medium of expression," including "literary works." 17 U.S.C. § 102(a). It is undisputed that computer programs— defined in the Copyright Act as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result," 17 U.S.C. § 101—can be subject to copyright protection as "literary works." See Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 838 (Fed. Cir. 1992) ("As literary works, copyright protection extends to computer programs."). Indeed, the legislative history explains that "literary works" includes "computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667.

      56

      By statute, a work must be "original" to qualify for copyright protection. 17 U.S.C. § 102(a). This "originality requirement is not particularly stringent," however. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991). "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. at 345.

      57

      Copyright protection extends only to the expression of an idea—not to the underlying idea itself. Mazer v. Stein, 347 U.S. 201, 217 (1954) ("Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself."). This distinction—commonly referred to as the "idea/expression dichotomy"—is codified in Section 102(b) of the Copyright Act, which provides:

      58

      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.

      59

      17 U.S.C. § 102(b); see Golan v. Holder, 132 S. Ct. 873, 890 (2012) ("The idea/expression dichotomy is codified at 17 U.S.C. § 102(b).").

      60

      The idea/expression dichotomy traces back to the Supreme Court's decision in Baker v. Selden, 101 U.S. 99, 101 (1879). In Baker, the plaintiff Selden wrote and obtained copyrights on a series of books setting out a new system of bookkeeping. Id. at 100. The books included an introductory essay explaining the system and blank forms with ruled lines and headings designed for use with that system. Id. Baker published account books employing a system with similar forms, and Selden filed suit alleging copyright infringement. According to Selden, the "ruled lines and headings, given to illustrate the system, are a part of the book" and "no one can make or use similar ruled lines and headings, or ruled lines and headings made and arranged on substantially the same system, without violating the copyright." Id. at 101.

      61

      The Supreme Court framed the issue on appeal in Baker as "whether the exclusive property in a system of book-keeping can be claimed, under the law of copyright, by means of a book in which that system is explained." Id. In reversing the circuit court's decision, the Court concluded that the "copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in such book." Id. at 104. Likewise, the "copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds." Id. at 103. The Court found that, although the copyright protects the way Selden "explained and described a peculiar system of book-keeping," it does not prevent others from using the system described therein. Id. at 104. The Court further indicated that, if it is necessary to use the forms Selden included in his books to make use of the accounting system, that use would not amount to copyright infringement. See id. (noting that the public has the right to use the account-books and that, "in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it").

      62

      Courts routinely cite Baker as the source of several principles incorporated into Section 102(b) that relate to this appeal, including that: (1) copyright protection extends only to expression, not to ideas, systems, or processes; and (2) "those elements of a computer program that are necessarily incidental to its function are . . . unprotectable." See Computer Assocs. Int'l v. Altai, 982 F.2d 693, 704-05 (2d Cir. 1992) ("Altai") (discussing Baker, 101 U.S. at 103-04).

      63

      It is well established that copyright protection can extend to both literal and non-literal elements of a computer program. See Altai, 982 F.2d at 702. The literal elements of a computer program are the source code and object code. See Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). Courts have defined source code as "the spelled-out program commands that humans can read." Lexmark Int'l, Inc. v. Static Control Components, Inc., 387 F.3d 522, 533 (6th Cir. 2004). Object code refers to "the binary language comprised of zeros and ones through which the computer directly receives its instructions." Altai, 982 F.2d at 698. Both source and object code "are consistently held protected by a copyright on the program." Johnson Controls, 886 F.2d at 1175; see also Altai, 982 F.2d at 702 ("It is now well settled that the literal elements of computer programs, i.e., their source and object codes, are the subject of copyright protection."). Google nowhere disputes that premise. See, e.g., Oral Argument at 57:38.

      64

      The non-literal components of a computer program include, among other things, the program's sequence, structure, and organization, as well as the program's user interface. Johnson Controls, 886 F.2d at 1175. As discussed below, whether the non-literal elements of a program "are protected depends on whether, on the particular facts of each case, the component in question qualifies as an expression of an idea, or an idea itself." Id.

      65

      In this case, Oracle claims copyright protection with respect to both: (1) literal elements of its API packages— the 7,000 lines of declaring source code; and (2) non-literal elements—the structure, sequence, and organization of each of the 37 Java API packages.

      66

      The distinction between literal and non-literal aspects of a computer program is separate from the distinction between literal and non-literal copying. See Altai, 982 F.2d at 701-02. "Literal" copying is verbatim copying of original expression. "Non-literal" copying is "paraphrased or loosely paraphrased rather than word for word." Lotus Dev. Corp. v. Borland Int'l, 49 F.3d 807, 814 (1st Cir. 1995). Here, Google concedes that it copied the declaring code verbatim. Oracle explains that the lines of declaring code "embody the structure of each [API] package, just as the chapter titles and topic sentences represent the structure of a novel." Appellant Br. 45. As Oracle explains, when Google copied the declaring code in these packages "it also copied the `sequence and organization' of the packages (i.e., the three-dimensional structure with all the chutes and ladders)" employed by Sun/Oracle in the packages. Appellant Br. 27. Oracle also argues that the nonliteral elements of the API packages—the structure, sequence, and organization that led naturally to the implementing code Google created—are entitled to protection. Oracle does not assert "literal" copying of the entire SSO, but, rather, that Google literally copied the declaring code and then paraphrased the remainder of the SSO by writing its own implementing code. It therefore asserts non-literal copying with respect to the entirety of the SSO.

      67

      At this stage, it is undisputed that the declaring code and the structure and organization of the Java API packages are original. The testimony at trial revealed that designing the Java API packages was a creative process and that the Sun/Oracle developers had a vast range of options for the structure and organization. In its copyrightability decision, the district court specifically found that the API packages are both creative and original, and Google concedes on appeal that the originality requirements are met. See Copyrightability Decision, 872 F. Supp. 2d at 976 ("The overall name tree, of course, has creative elements. . . ."); Id. at 999 ("Yes, it is creative. Yes, it is original."); Appellee Br. 5 ("Google does not dispute" the district court's finding that "the Java API clears the low originality threshold."). The court found, however, that neither the declaring code nor the SSO was entitled to copyright protection under the Copyright Act.

      68

      Although the parties agree that Oracle's API packages meet the originality requirement under Section 102(a), they disagree as to the proper interpretation and application of Section 102(b). For its part, Google suggests that there is a two-step copyrightability analysis, wherein Section 102(a) grants copyright protection to original works, while Section 102(b) takes it away if the work has a functional component. To the contrary, however, Congress emphasized that Section 102(b) "in no way enlarges or contracts the scope of copyright protection" and that its "purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged." Feist, 499 U.S. at 356 (quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670). "Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation." Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997). Section 102(a) and 102(b) are to be considered collectively so that certain expressions are subject to greater scrutiny. Id. In assessing copyrightability, the district court is required to ferret out apparent expressive aspects of a work and then separate protectable expression from "unprotectable ideas, facts, processes, and methods of operation." See Atari, 975 F.2d at 839.

      69

      Of course, as with many things, in defining this task, the devil is in the details. Circuit courts have struggled with, and disagree over, the tests to be employed when attempting to draw the line between what is protectable expression and what is not. Compare Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir. 1986) (everything not necessary to the purpose or function of a work is expression), with Lotus, 49 F.3d at 815 (methods of operation are means by which a user operates something and any words used to effectuate that operation are unprotected expression). When assessing whether the non-literal elements of a computer program constitute protectable expression, the Ninth Circuit has endorsed an "abstraction-filtration-comparison" test formulated by the Second Circuit and expressly adopted by several other circuits. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525 (9th Cir. 1992) ("In our view, in light of the essentially utilitarian nature of computer programs, the Second Circuit's approach is an appropriate one."). This test rejects the notion that anything that performs a function is necessarily uncopyrightable. See Mitel, 124 F.3d at 1372 (rejecting the Lotus court's formulation, and concluding that, "although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection."). And it also rejects as flawed the Whelan assumption that, once any separable idea can be identified in a computer program everything else must be protectable expression, on grounds that more than one idea may be embodied in any particular program. Altai, 982 F.2d at 705-06.

      70

      Thus, this test eschews bright line approaches and requires a more nuanced assessment of the particular program at issue in order to determine what expression is protectable and infringed. As the Second Circuit explains, this test has three steps. In the abstraction step, the court "first break[s] down the allegedly infringed program into its constituent structural parts." Id. at 706. In the filtration step, the court "sift[s] out all non-protectable material," including ideas and "expression that is necessarily incidental to those ideas." Id. In the final step, the court compares the remaining creative expression with the allegedly infringing program.[4]

      71

      In the second step, the court is first to assess whether the expression is original to the programmer or author. Atari, 975 F.2d at 839. The court must then determine whether the particular inclusion of any level of abstraction is dictated by considerations of efficiency, required by factors already external to the program itself, or taken from the public domain—all of which would render the expression unprotectable. Id. These conclusions are to be informed by traditional copyright principles of originality, merger, and scenes a faire. See Mitel, 124 F.3d at 1372 ("Although this core of expression is eligible for copyright protection, it is subject to the rigors of filtration analysis which excludes from protection expression that is in the public domain, otherwise unoriginal, or subject to the doctrines of merger and scenes a faire.").

      72

      In all circuits, it is clear that the first step is part of the copyrightability analysis and that the third is an infringement question. It is at the second step of this analysis where the circuits are in less accord. Some treat all aspects of this second step as part of the copyrightability analysis, while others divide questions of originality from the other inquiries, treating the former as a question of copyrightability and the latter as part of the infringement inquiry. Compare Lexmark, 387 F.3d at 537-38 (finding that the district court erred in assessing principles of merger and scenes a faire in the infringement analysis, rather than as a component of copyrightability), with Kregos, 937 F.2d at 705 (noting that the Second Circuit has considered the merger doctrine "in determining whether actionable infringement has occurred, rather than whether a copyright is valid"); see also Lexmark, 387 F.3d at 557 (Feikens, J., dissenting-in-part) (noting the circuit split and concluding that, where a court is assessing merger of an expression with a method of operation, "I would find the merger doctrine can operate only as a defense to infringement in that context, and as such has no bearing on the question of copyrightability."). We need not assess the wisdom of these respective views because there is no doubt on which side of this circuit split the Ninth Circuit falls.

      73

      In the Ninth Circuit, while questions regarding originality are considered questions of copyrightability, concepts of merger and scenes a faire are affirmative defenses to claims of infringement. Ets-Hokin, 225 F.3d at 1082; Satava v. Lowry, 323 F.3d 805, 810 n.3 (9th Cir. 2003) ("The Ninth Circuit treats scenes a faire as a defense to infringement rather than as a barrier to copyrightability."). The Ninth Circuit has acknowledged that "there is some disagreement among courts as to whether these two doctrines figure into the issue of copyrightability or are more properly defenses to infringement." Ets-Hokin, 225 F.3d at 1082 (citations omitted). It, nonetheless, has made clear that, in that circuit, these concepts are to be treated as defenses to infringement. Id. (citing Kregos, 937 F.2d at 705 (holding that the merger doctrine relates to infringement, not copyrightability); Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996) (explaining why the doctrine of scenes a faire is separate from the validity of a copyright)).

      74

      With these principles in mind, we turn to the trial court's analysis and judgment and to Oracle's objections thereto. While the trial court mentioned the abstractionfiltration-comparison test when describing the development of relevant law, it did not purport to actually apply that test. Instead, it moved directly to application of familiar principles of copyright law when assessing the copyrightability of the declaring code and interpreted Section 102(b) to preclude copyrightability for any functional element "essential for interoperability" "regardless of its form." Copyrightability Decision, 872 F. Supp. 2d at 997.

      75

      Oracle asserts that all of the trial court's conclusions regarding copyrightability are erroneous. Oracle argues that its Java API packages are entitled to protection under the Copyright Act because they are expressive and could have been written and organized in any number of ways to achieve the same functions. Specifically, Oracle argues that the district court erred when it: (1) concluded that each line of declaring code is uncopyrightable because the idea and expression have merged; (2) found the declaring code uncopyrightable because it employs short phrases; (3) found all aspects of the SSO devoid of protection as a "method of operation" under 17 U.S.C. § 102(b); and (4) invoked Google's "interoperability" concerns in the copyrightability analysis. For the reasons explained below, we agree with Oracle on each point.

      76
      1. Declaring Source Code
      77

      First, Oracle argues that the district court erred in concluding that each line of declaring source code is completely unprotected under the merger and short phrases doctrines. Google responds that Oracle waived its right to assert copyrightability based on the 7,000 lines of declaring code by failing "to object to instructions and a verdict form that effectively eliminated that theory from the case." Appellee Br. 67. Even if not waived, moreover, Google argues that, because there is only one way to write the names and declarations, the merger doctrine bars copyright protection.

      78

      We find that Oracle did not waive arguments based on Google's literal copying of the declaring code. Prior to trial, both parties informed the court that Oracle's copyright infringement claims included the declarations of the API elements in the Android class library source code. See Oracle's Statement of Issues Regarding Copyright, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. Apr. 12, 2012), ECF No. 899-1, at 3 (Oracle accuses the "declarations of the API elements in the Android class library source code and object code that implements the 37 API packages" of copyright infringement.); see also Google's Proposed Statement of Issues Regarding Copyright, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. Apr. 12, 2012), ECF No. 901, at 2 (Oracle accuses the "declarations of the API elements in Android class library source code and object code that implements the 37 API packages.").

      79

      While Google is correct that the jury instructions and verdict form focused on the structure and organization of the packages, we agree with Oracle that there was no need for the jury to address copying of the declaring code because Google conceded that it copied it verbatim. Indeed, the district court specifically instructed the jury that "Google agrees that it uses the same names and declarations" in Android. Final Charge to the Jury at 10.

      80

      That the district court addressed the declaring code in its post-jury verdict copyrightability decision further confirms that the verbatim copying of declaring code remained in the case. The court explained that the "identical lines" that Google copied into Android "are those lines that specify the names, parameters and functionality of the methods and classes, lines called `declarations' or `headers.'" Copyrightability Decision, 872 F. Supp. 2d at 979. The court specifically found that the declaring code was not entitled to copyright protection under the merger and short phrases doctrines. We address each in turn.

      81
      a. Merger
      82

      The merger doctrine functions as an exception to the idea/expression dichotomy. It provides that, when there are a limited number of ways to express an idea, the idea is said to "merge" with its expression, and the expression becomes unprotected. Altai, 982 F.2d at 707-08. As noted, the Ninth Circuit treats this concept as an affirmative defense to infringement. Ets-Hokin, 225 F.3d at 1082. Accordingly, it appears that the district court's merger analysis is irrelevant to the question of whether Oracle's API packages are copyrightable in the first instance. Regardless of when the analysis occurs, we conclude that merger does not apply on the record before us.

      83

      Under the merger doctrine, a court will not protect a copyrighted work from infringement if the idea contained therein can be expressed in only one way. Satava v. Lowry, 323 F.3d 805, 812 n.5 (9th Cir. 2003). For computer programs, "this means that when specific [parts of the code], even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement." Altai, 982 F.2d at 708 (citation omitted). We have recognized, however, applying Ninth Circuit law, that the "unique arrangement of computer program expression . . . does not merge with the process so long as alternate expressions are available." Atari, 975 F.2d at 840.

      84

      In Atari, for example, Nintendo designed a program— the 10NES—to prevent its video game system from accepting unauthorized game cartridges. 975 F.2d at 836. Nintendo "chose arbitrary programming instructions and arranged them in a unique sequence to create a purely arbitrary data stream" which "serves as the key to unlock the NES." Id. at 840. Because Nintendo produced expert testimony "showing a multitude of different ways to generate a data stream which unlocks the NES console," we concluded that Nintendo's specific choice of code did not merge with the process. Id.

      85

      Here, the district court found that, "no matter how creative or imaginative a Java method specification may be, the entire world is entitled to use the same method specification (inputs, outputs, parameters) so long as the line-by-line implementations are different." Copyrightability Decision, 872 F. Supp. 2d at 998. In its analysis, the court identified the method declaration as the idea and found that the implementation is the expression. Id. ("The method specification is the idea. The method implementation is the expression. No one may monopolize the idea.") (emphases in original). The court explained that, under the rules of Java, a programmer must use the identical "declaration or method header lines" to "declare a method specifying the same functionality." Id. at 976. Because the district court found that there was only one way to write the declaring code for each of the Java packages, it concluded that "the merger doctrine bars anyone from claiming exclusive copyright ownership" of it. Id. at 998. Accordingly, the court held there could be "no copyright violation in using the identical declarations." Id.

      86

      Google agrees with the district court that the implementing code is the expression entitled to protection—not the declaring code. Indeed, at oral argument, counsel for Google explained that, "it is not our position that none of Java is copyrightable. Obviously, Google spent two and a half years . . . to write from scratch all of the implementing code." Oral Argument at 33:16.[5] Because it is undisputed that Google wrote its own implementing code, the copyrightability of the precise language of that code is not at issue on appeal. Instead, our focus is on the declaring code and structure of the API packages.

      87

      On appeal, Oracle argues that the district court: (1) misapplied the merger doctrine; and (2) failed to focus its analysis on the options available to the original author. We agree with Oracle on both points. First, we agree that merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them. See Satava, 323 F.3d at 812 n.5 ("Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea."). The evidence showed that Oracle had "unlimited options as to the selection and arrangement of the 7000 lines Google copied." Appellant Br. 50. Using the district court's "java.lang.Math.max" example, Oracle explains that the developers could have called it any number of things, including "Math.maximum" or "Arith.larger." This was not a situation where Oracle was selecting among preordained names and phrases to create its packages.[6] As the district court recognized, moreover, "the Android method and class names could have been different from the names of their counterparts in Java and still have worked." Copyrightability Decision, 872 F. Supp. 2d at 976. Because "alternative expressions [we]re available," there is no merger. See Atari, 975 F.2d at 840.

      88

      We further find that the district court erred in focusing its merger analysis on the options available to Google at the time of copying. It is well-established that copyrightability and the scope of protectable activity are to be evaluated at the time of creation, not at the time of infringement. See Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521, 524 (9th Cir. 1984) (quoting National Commission on New Technological Uses of Copyrighted Works, Final Report at 21 (1979) ("CONTU Report") (recognizing that the Copyright Act was designed "to protect all works of authorship from the moment of their fixation in any tangible medium of expression")). The focus is, therefore, on the options that were available to Sun/Oracle at the time it created the API packages. Of course, once Sun/Oracle created "java.lang.Math.max," programmers who want to use that particular package have to call it by that name. But, as the court acknowledged, nothing prevented Google from writing its own declaring code, along with its own implementing code, to achieve the same result. In such circumstances, the chosen expression simply does not merge with the idea being expressed.[7]

      89

      It seems possible that the merger doctrine, when properly analyzed, would exclude the three packages identified by the district court as core packages from the scope of actionable infringing conduct. This would be so if the Java authors, at the time these packages were created, had only a limited number of ways to express the methods and classes therein if they wanted to write in the Java language. In that instance, the idea may well be merged with the expression in these three packages.[8] Google did not present its merger argument in this way below and does not do so here, however. Indeed, Google does not try to differentiate among the packages for purposes of its copyrightability analysis and does not appeal the infringement verdict as to the packages. For these reasons, we reject the trial court's merger analysis.

      90
      b. Short Phrases
      91

      The district court also found that Oracle's declaring code consists of uncopyrightable short phrases. Specifically, the court concluded that, "while the Android method and class names could have been different from the names of their counterparts in Java and still have worked, copyright protection never extends to names or short phrases as a matter of law." Copyrightability Decision, 872 F. Supp. 2d at 976.

      92

      The district court is correct that "[w]ords and short phrases such as names, titles, and slogans" are not subject to copyright protection. 37 C.F.R. § 202.1(a). The court failed to recognize, however, that the relevant question for copyrightability purposes is not whether the work at issue contains short phrases—as literary works often do—but, rather, whether those phrases are creative. See Soc'y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 52 (1st Cir. 2012) (noting that "not all short phrases will automatically be deemed uncopyrightable"); see also 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.01[B] (2013) ("[E]ven a short phrase may command copyright protection if it exhibits sufficient creativity."). And, by dissecting the individual lines of declaring code at issue into short phrases, the district court further failed to recognize that an original combination of elements can be copyrightable. See Softel, Inc. v. Dragon Med. & Scientific Commc'ns, 118 F.3d 955, 964 (2d Cir. 1997) (noting that, in Feist, "the Court made quite clear that a compilation of nonprotectible elements can enjoy copyright protection even though its constituent elements do not").

      93

      By analogy, the opening of Charles Dickens' A Tale of Two Cities is nothing but a string of short phrases. Yet no one could contend that this portion of Dickens' work is unworthy of copyright protection because it can be broken into those shorter constituent components. The question is not whether a short phrase or series of short phrases can be extracted from the work, but whether the manner in which they are used or strung together exhibits creativity.

      94

      Although the district court apparently focused on individual lines of code, Oracle is not seeking copyright protection for a specific short phrase or word. Instead, the portion of declaring code at issue is 7,000 lines, and Google's own "Java guru" conceded that there can be "creativity and artistry even in a single method declaration." Joint Appendix ("J.A.") 20,970. Because Oracle "exercised creativity in the selection and arrangement" of the method declarations when it created the API packages and wrote the relevant declaring code, they contain protectable expression that is entitled to copyright protection. See Atari, 975 F.2d at 840; see also 17 U.S.C. §§ 101, 103 (recognizing copyright protection for "compilations" which are defined as work that is "selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship"). Accordingly, we conclude that the district court erred in applying the short phrases doctrine to find the declaring code not copyrightable.

      95
      c. Scenes a Faire
      96

      The scenes a faire doctrine, which is related to the merger doctrine, operates to bar certain otherwise creative expression from copyright protection. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994). It provides that "expressive elements of a work of authorship are not entitled to protection against infringement if they are standard, stock, or common to a topic, or if they necessarily follow from a common theme or setting." Mitel, 124 F.3d at 1374. Under this doctrine, "when certain commonplace expressions are indispensable and naturally associated with the treatment of a given idea, those expressions are treated like ideas and therefore [are] not protected by copyright." Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004). In the computer context, "the scene a faire doctrine denies protection to program elements that are dictated by external factors such as `the mechanical specifications of the computer on which a particular program is intended to run' or `widely accepted programming practices within the computer industry.'" Softel, 118 F.3d at 963 (citation omitted).

      97

      The trial court rejected Google's reliance on the scenes a faire doctrine. It did so in a footnote, finding that Google had failed to present evidence to support the claim that either the grouping of methods within the classes or the code chosen for them "would be so expected and customary as to be permissible under the scenes a faire doctrine." Copyrightability Decision, 872 F. Supp. 2d at 999 n.9. Specifically, the trial court found that "it is impossible to say on this record that all of the classes and their contents are typical of such classes and, on this record, this order rejects Google's global argument based on scenes a faire." Id.

      98

      On appeal, Google refers to scenes a faire concepts briefly, as do some amici, apparently contending that, because programmers have become accustomed to and comfortable using the groupings in the Java API packages, those groupings are so commonplace as to be indispensable to the expression of an acceptable programming platform. As such, the argument goes, they are so associated with the "idea" of what the packages are accomplishing that they should be treated as ideas rather than expression. See Br. of Amici Curiae Rackspace US, Inc., et al. at 19-22.

      99

      Google cannot rely on the scenes a faire doctrine as an alternative ground upon which we might affirm the copyrightability judgment of the district court. This is so for several reasons. First, as noted, like merger, in the Ninth Circuit, the scenes a faire doctrine is a component of the infringement analysis. "[S]imilarity of expression, whether literal or non-literal, which necessarily results from the fact that the common idea is only capable of expression in more or less stereotyped form, will preclude a finding of actionable similarity." 4 Nimmer on Copyright § 13.03[B][3]. Thus, the expression is not excluded from copyright protection; it is just that certain copying is forgiven as a necessary incident of any expression of the underlying idea. See Satava, 323 F.3d at 810 n.3 ("The Ninth Circuit treats scenes a faire as a defense to infringement rather than as a barrier to copyrightability.").

      100

      Second, Google has not objected to the trial court's conclusion that Google failed to make a sufficient factual record to support its contention that the groupings and code chosen for the 37 Java API packages were driven by external factors or premised on features that were either commonplace or essential to the idea being expressed. Google provides no record citations indicating that such a showing was made and does not contend that the trial court erred when it expressly found it was not. Indeed, Google does not even make this argument with respect to the core packages.

      101

      Finally, Google's reliance on the doctrine below and the amici reference to it here are premised on a fundamental misunderstanding of the doctrine. Like merger, the focus of the scenes a faire doctrine is on the circumstances presented to the creator, not the copier. See Mitel, 124 F.3d at 1375 (finding error to the extent the trial court discussed "whether external factors such as market forces and efficiency considerations justified Iqtel's copying of the command codes"). The court's analytical focus must be upon the external factors that dictated Sun's selection of classes, methods, and code—not upon what Google encountered at the time it chose to copy those groupings and that code. See id. "[T]he scenes a faire doctrine identifies and excludes from protection against infringement expression whose creation `flowed naturally from considerations external to the author's creativity.'" Id. (quoting Nimmer § 13.03[F][3], at 13-131 (1997)). It is this showing the trial court found Google failed to make, and Google cites to nothing in the record which indicates otherwise.

      102

      For these reasons, the trial court was correct to conclude that the scenes a faire doctrine does not affect the copyrightability of either the declaring code in, or the SSO of, the Java API packages at issue.

      103
      2. The Structure, Sequence, and Organization of the API Packages
      104

      The district court found that the SSO of the Java API packages is creative and original, but nevertheless held that it is a "system or method of operation . . . and, therefore, cannot be copyrighted" under 17 U.S.C. § 102(b). Copyrightability Decision, 872 F. Supp. 2d at 976-77. In reaching this conclusion, the district court seems to have relied upon language contained in a First Circuit decision: Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), aff'd without opinion by equally divided court, 516 U.S. 233 (1996).[9]

      105

      In Lotus, it was undisputed that the defendant copied the menu command hierarchy and interface from Lotus 1-2-3, a computer spreadsheet program "that enables users to perform accounting functions electronically on a computer." 49 F.3d at 809. The menu command hierarchy referred to a series of commands—such as "Copy," "Print," and "Quit"—which were arranged into more than 50 menus and submenus. Id. Although the defendant did not copy any Lotus source code, it copied the menu command hierarchy into its rival program. The question before the court was "whether a computer menu command hierarchy is copyrightable subject matter." Id.

      106

      Although it accepted the district court's finding that Lotus developers made some expressive choices in selecting and arranging the command terms, the First Circuit found that the command hierarchy was not copyrightable because, among other things, it was a "method of operation" under Section 102(b). In reaching this conclusion, the court defined a "method of operation" as "the means by which a person operates something, whether it be a car, a food processor, or a computer." Id. at 815.[10] Because the Lotus menu command hierarchy provided "the means by which users control and operate Lotus 1-2-3," it was deemed unprotectable. Id. For example, if users wanted to copy material, they would use the "Copy" command and the command terms would tell the computer what to do. According to the Lotus court, the "fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a `method of operation.'" Id. at 816. (noting that "our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression"). The court further indicated that, "[i]f specific words are essential to operating something, then they are part of a `method of operation' and, as such, are unprotectable." Id.

      107

      On appeal, Oracle argues that the district court's reliance on Lotus is misplaced because it is distinguishable on its facts and is inconsistent with Ninth Circuit law. We agree. First, while the defendant in Lotus did not copy any of the underlying code, Google concedes that it copied portions of Oracle's declaring source code verbatim. Second, the Lotus court found that the commands at issue there (copy, print, etc.) were not creative, but it is undisputed here that the declaring code and the structure and organization of the API packages are both creative and original. Finally, while the court in Lotus found the commands at issue were "essential to operating" the system, it is undisputed that—other than perhaps as to the three core packages—Google did not need to copy the structure, sequence, and organization of the Java API packages to write programs in the Java language.

      108

      More importantly, however, the Ninth Circuit has not adopted the court's "method of operation" reasoning in Lotus, and we conclude that it is inconsistent with binding precedent.[11] Specifically, we find that Lotus is inconsistent with Ninth Circuit case law recognizing that the structure, sequence, and organization of a computer program is eligible for copyright protection where it qualifies as an expression of an idea, rather than the idea itself. See Johnson Controls, 886 F.2d at 1175-76. And, while the court in Lotus held "that expression that is part of a `method of operation' cannot be copyrighted," 49 F.3d at 818, this court—applying Ninth Circuit law—reached the exact opposite conclusion, finding that copyright protects "the expression of [a] process or method," Atari, 975 F.2d at 839.

      109

      We find, moreover, that the hard and fast rule set down in Lotus and employed by the district court here— i.e., that elements which perform a function can never be copyrightable—is at odds with the Ninth Circuit's endorsement of the abstraction-filtration-comparison analysis discussed earlier. As the Tenth Circuit concluded in expressly rejecting the Lotus "method of operation" analysis, in favor of the Second Circuit's abstraction-filtrationcomparison test, "although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection." Mitel, 124 F.3d at 1372. Specifically, the court found that Section 102(b) "does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction." Id.

      110

      Other courts agree that components of a program that can be characterized as a "method of operation" may nevertheless be copyrightable. For example, the Third Circuit rejected a defendant's argument that operating system programs are "per se" uncopyrightable because an operating system is a "method of operation" for a computer. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1250-52 (3d Cir. 1983). The court distinguished between the "method which instructs the computer to perform its operating functions" and "the instructions themselves," and found that the instructions were copyrightable. Id. at 1250-51. In its analysis, the court noted: "[t]hat the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability." Id. at 1252 (quoting CONTU Report at 21). The court focused "on whether the idea is capable of various modes of expression" and indicated that, "[i]f other programs can be written or created which perform the same function as [i]n Apple's operating system program, then that program is an expression of the idea and hence copyrightable." Id. at 1253. Notably, no other circuit has adopted the First Circuit's "method of operation" analysis.

      111

      Courts have likewise found that classifying a work as a "system" does not preclude copyright for the particular expression of that system. See Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1212 (8th Cir. 1986) (rejecting the district court's decision that "appellant's parts numbering system is not copyrightable because it is a `system'" and indicating that Section 102(b) does not preclude protection for the "particular expression" of that system); see also Am. Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th Cir. 1997) ("A dictionary cannot be called a `system' just because new novels are written using words, all of which appear in the dictionary. Nor is word-processing software a `system' just because it has a command structure for producing paragraphs.").

      112

      Here, the district court recognized that the SSO "resembles a taxonomy," but found that "it is nevertheless a command structure, a system or method of operation—a long hierarchy of over six thousand commands to carry out pre-assigned functions." Copyrightability Decision, 872 F. Supp. 2d at 999-1000.[12] In other words, the court concluded that, although the SSO is expressive, it is not copyrightable because it is also functional. The problem with the district court's approach is that computer programs are by definition functional—they are all designed to accomplish some task. Indeed, the statutory definition of "computer program" acknowledges that they function "to bring about a certain result." See 17 U.S.C. § 101 (defining a "computer program" as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result"). If we were to accept the district court's suggestion that a computer program is uncopyrightable simply because it "carr[ies] out pre-assigned functions," no computer program is protectable. That result contradicts Congress's express intent to provide copyright protection to computer programs, as well as binding Ninth Circuit case law finding computer programs copyrightable, despite their utilitarian or functional purpose. Though the trial court did add the caveat that it "does not hold that the structure, sequence and organization of all computer programs may be stolen," Copyrightability Decision, 872 F. Supp. 2d at 1002, it is hard to see how its method of operation analysis could lead to any other conclusion.

      113

      While it does not appear that the Ninth Circuit has addressed the precise issue, we conclude that a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection. See Mitel, 124 F.3d at 1372. We agree with Oracle that, under Ninth Circuit law, an original work—even one that serves a function—is entitled to copyright protection as long as the author had multiple ways to express the underlying idea. Section 102(b) does not, as Google seems to suggest, automatically deny copyright protection to elements of a computer program that are functional. Instead, as noted, Section 102(b) codifies the idea/expression dichotomy and the legislative history confirms that, among other things, Section 102(b) was "intended to make clear that the expression adopted by the programmer is the copyrightable element in a computer program." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670. Therefore, even if an element directs a computer to perform operations, the court must nevertheless determine whether it contains any separable expression entitled to protection.

      114

      On appeal, Oracle does not—and concedes that it cannot—claim copyright in the idea of organizing functions of a computer program or in the "package-class-method" organizational structure in the abstract. Instead, Oracle claims copyright protection only in its particular way of naming and organizing each of the 37 Java API packages.[13] Oracle recognizes, for example, that it "cannot copyright the idea of programs that open an internet connection," but "it can copyright the precise strings of code used to do so, at least so long as `other language is available' to achieve the same function." Appellant Reply Br. 13-14 (citation omitted). Thus, Oracle concedes that Google and others could employ the Java language—much like anyone could employ the English language to write a paragraph without violating the copyrights of other English language writers. And, that Google may employ the "package-class-method" structure much like authors can employ the same rules of grammar chosen by other authors without fear of infringement. What Oracle contends is that, beyond that point, Google, like any author, is not permitted to employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages—the details and arrangement of the prose.

      115

      As the district court acknowledged, Google could have structured Android differently and could have chosen different ways to express and implement the functionality that it copied.[14] Specifically, the court found that "the very same functionality could have been offered in Android without duplicating the exact command structure used in Java." Copyrightability Decision, 872 F. Supp. 2d at 976. The court further explained that Google could have offered the same functions in Android by "rearranging the various methods under different groupings among the various classes and packages." Id. The evidence showed, moreover, that Google designed many of its own API packages from scratch, and, thus, could have designed its own corresponding 37 API packages if it wanted to do so.

      116

      Given the court's findings that the SSO is original and creative, and that the declaring code could have been written and organized in any number of ways and still have achieved the same functions, we conclude that Section 102(b) does not bar the packages from copyright protection just because they also perform functions.

      117
      3. Google's Interoperability Arguments are Irrelevant to Copyrightability
      118

      Oracle also argues that the district court erred in invoking interoperability in its copyrightability analysis. Specifically, Oracle argues that Google's interoperability arguments are only relevant, if at all, to fair use—not to the question of whether the API packages are copyrightable. We agree.

      119

      In characterizing the SSO of the Java API packages as a "method of operation," the district court explained that "[d]uplication of the command structure is necessary for interoperability." Copyrightability Decision, 872 F. Supp. 2d at 977. The court found that, "[i]n order for at least some of [the pre-Android Java] code to run on Android, Google was required to provide the same java.package.Class.method() command system using the same names with the same `taxonomy' and with the same functional specifications." Id. at 1000 (emphasis omitted). And, the court concluded that "Google replicated what was necessary to achieve a degree of interoperability—but no more, taking care, as said before, to provide its own implementations." Id. In reaching this conclusion, the court relied primarily on two Ninth Circuit decisions: Sega Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), and Sony Computer Entertainment, Inc. v. Connectix, Corp., 203 F.3d 596 (9th Cir. 2000).

      120

      Both Sega and Sony are fair use cases in which copyrightability was addressed only tangentially. In Sega, for example, Sega manufactured a video game console and game cartridges that contained hidden functional program elements necessary to achieve compatibility with the console. Defendant Accolade: (1) reverse-engineered Sega's video game programs to discover the requirements for compatibility; and (2) created its own games for the Sega console. Sega, 977 F.2d at 1514-15. As part of the reverse-engineering process, Accolade made intermediate copies of object code from Sega's console. Id. Although the court recognized that the intermediate copying of computer code may infringe Sega's copyright, it concluded that "disassembly of copyrighted object code is, as a matter of law, a fair use of the copyrighted work if such disassembly provides the only means of access to those elements of the code that are not protected by copyright and the copier has a legitimate reason for seeking such access." Id. at 1518. The court agreed with Accolade that its copying was necessary to examine the unprotected functional aspects of the program. Id. at 1520. And, because Accolade had a legitimate interest in making its cartridges compatible with Sega's console, the court found that Accolade's intermediate copying was fair use.

      121

      Likewise, in Sony, the Ninth Circuit found that the defendant's reverse engineering and intermediate copying of Sony's copyrighted software program "was a fair use for the purpose of gaining access to the unprotected elements of Sony's software." Sony, 203 F.3d at 602. The court explained that Sony's software program contained unprotected functional elements and that the defendant could only access those elements through reverse engineering. Id. at 603. The defendant used that information to create a software program that let consumers play games designed for Sony's PlayStation console on their computers. Notably, the defendant's software program did not contain any of Sony's copyrighted material. Id. at 598.

      122

      The district court characterized Sony and Sega as "close analogies" to this case. Copyrightability Decision, 872 F. Supp. 2d at 1000. According to the court, both decisions "held that interface procedures that were necessary to duplicate in order to achieve interoperability were functional aspects not copyrightable under Section 102(b)." Id. The district court's reliance on Sega and Sony in the copyrightability context is misplaced, however.

      123

      As noted, both cases were focused on fair use, not copyrightability. In Sega, for example, the only question was whether Accolade's intermediate copying was fair use. The court never addressed the question of whether Sega's software code, which had functional elements, also contained separable creative expression entitled to protection. Likewise, although the court in Sony determined that Sony's computer program had functional elements, it never addressed whether it also had expressive elements. Sega and Sony are also factually distinguishable because the defendants in those cases made intermediate copies to understand the functional aspects of the copyrighted works and then created new products. See Sony, 203 F.3d at 606-07; Sega, 977 F.2d at 1522-23. This is not a case where Google reverse-engineered Oracle's Java packages to gain access to unprotected functional elements contained therein. As the former Register of Copyrights of the United States pointed out in his brief amicus curiae, "[h]ad Google reverse engineered the programming packages to figure out the ideas and functionality of the original, and then created its own structure and its own literal code, Oracle would have no remedy under copyright whatsoever." Br. for Amicus Curiae Ralph Oman 29. Instead, Google chose to copy both the declaring code and the overall SSO of the 37 Java API packages at issue.

      124

      We disagree with Google's suggestion that Sony and Sega created an "interoperability exception" to copyrightability. See Appellee Br. 39 (citing Sony and Sega for the proposition that "compatibility elements are not copyrightable under section 102(b)" (emphasis omitted)). Although both cases recognized that the software programs at issue there contained unprotected functional elements, a determination that some elements are unprotected is not the same as saying that the entire work loses copyright protection. To accept Google's reading would contradict Ninth Circuit case law recognizing that both the literal and non-literal components of a software program are eligible for copyright protection. See Johnson Controls, 886 F.2d at 1175. And it would ignore the fact that the Ninth Circuit endorsed the abstractionfiltration-comparison inquiry in Sega itself.

      125

      As previously discussed, a court must examine the software program to determine whether it contains creative expression that can be separated from the underlying function. See Sega, 977 F.2d at 1524-25. In doing so, the court filters out the elements of the program that are "ideas" as well as elements that are "dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself." Altai, 982 F.2d at 707.

      126

      To determine "whether certain aspects of an allegedly infringed software are not protected by copyright law, the focus is on external factors that influenced the choice of the creator of the infringed product." Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 215 (3d Cir. 2002) (citing Altai, 982 F.2d at 714; Mitel, 124 F.3d at 1375). The Second Circuit, for example, has noted that programmers are often constrained in their design choices by "extrinsic considerations" including "the mechanical specifications of the computer on which a particular program is intended to run" and "compatibility requirements of other programs with which a program is designed to operate in conjunction." Altai, 982 F.2d at 709-10 (citing 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01 at 13-66-71 (1991)). The Ninth Circuit has likewise recognized that: (1) computer programs "contain many logical, structural, and visual display elements that are dictated by . . . external factors such as compatibility requirements and industry demands"; and (2) "[i]n some circumstances, even the exact set of commands used by the programmer is deemed functional rather than creative for purposes of copyright." Sega, 977 F.2d at 1524 (internal citation omitted).

      127

      Because copyrightability is focused on the choices available to the plaintiff at the time the computer program was created, the relevant compatibility inquiry asks whether the plaintiff's choices were dictated by a need to ensure that its program worked with existing third-party programs. Dun & Bradstreet, 307 F.3d at 215; see also Atari, 975 F.2d at 840 ("External factors did not dictate the design of the 10NES program."). Whether a defendant later seeks to make its program interoperable with the plaintiff's program has no bearing on whether the software the plaintiff created had any design limitations dictated by external factors. See Dun & Bradstreet, 307 F.3d at 215 (finding an expert's testimony on interoperability "wholly misplaced" because he "looked at externalities from the eyes of the plagiarist, not the eyes of the program's creator"). Stated differently, the focus is on the compatibility needs and programming choices of the party claiming copyright protection—not the choices the defendant made to achieve compatibility with the plaintiff's program. Consistent with this approach, courts have recognized that, once the plaintiff creates a copyrightable work, a defendant's desire "to achieve total compatibility. . . is a commercial and competitive objective which does not enter into the . . . issue of whether particular ideas and expressions have merged." Apple Computer, 714 F.2d at 1253.

      128

      Given this precedent, we conclude that the district court erred in focusing its interoperability analysis on Google's desires for its Android software. See Copyrightability Decision, 872 F. Supp. 2d at 1000 ("Google replicated what was necessary to achieve a degree of interoperability" with Java.). Whether Google's software is "interoperable" in some sense with any aspect of the Java platform (although as Google concedes, certainly not with the JVM) has no bearing on the threshold question of whether Oracle's software is copyrightable. It is the interoperability and other needs of Oracle—not those of Google—that apply in the copyrightability context, and there is no evidence that when Oracle created the Java API packages at issue it did so to meet compatibility requirements of other pre-existing programs.

      129

      Google maintains on appeal that its use of the "Java class and method names and declarations was `the only and essential means' of achieving a degree of interoperability with existing programs written in the [Java language]." Appellee Br. 49. Indeed, given the record evidence that Google designed Android so that it would not be compatible with the Java platform, or the JVM specifically, we find Google's interoperability argument confusing. While Google repeatedly cites to the district court's finding that Google had to copy the packages so that an app written in Java could run on Android, it cites to no evidence in the record that any such app exists and points to no Java apps that either pre-dated or post-dated Android that could run on the Android platform.[15] The compatibility Google sought to foster was not with Oracle's Java platform or with the JVM central to that platform. Instead, Google wanted to capitalize on the fact that software developers were already trained and experienced in using the Java API packages at issue. The district court agreed, finding that, as to the 37 Java API packages, "Google believed Java application programmers would want to find the same 37 sets of functionalities in the new Android system callable by the same names as used in Java." Copyrightability Decision, 872 F. Supp. 2d at 978. Google's interest was in accelerating its development process by "leverag[ing] Java for its existing base of developers." J.A. 2033, 2092. Although this competitive objective might be relevant to the fair use inquiry, we conclude that it is irrelevant to the copyrightability of Oracle's declaring code and organization of the API packages.

      130

      Finally, to the extent Google suggests that it was entitled to copy the Java API packages because they had become the effective industry standard, we are unpersuaded. Google cites no authority for its suggestion that copyrighted works lose protection when they become popular, and we have found none.[16] In fact, the Ninth Circuit has rejected the argument that a work that later becomes the industry standard is uncopyrightable. See Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 n.8 (9th Cir. 1997) (noting that the district court found plaintiff's medical coding system entitled to copyright protection, and that, although the system had become the industry standard, plaintiff's copyright did not prevent competitors "from developing comparative or better coding systems and lobbying the federal government and private actors to adopt them. It simply prevents wholesale copying of an existing system."). Google was free to develop its own API packages and to "lobby" programmers to adopt them. Instead, it chose to copy Oracle's declaring code and the SSO to capitalize on the preexisting community of programmers who were accustomed to using the Java API packages. That desire has nothing to do with copyrightability. For these reasons, we find that Google's industry standard argument has no bearing on the copyrightability of Oracle's work.

      131
      B. Fair Use
      132

      As noted, the jury hung on Google's fair use defense, and the district court declined to order a new trial given its conclusion that the code and structure Google copied were not entitled to copyright protection. On appeal, Oracle argues that: (1) a remand to decide fair use "is pointless"; and (2) this court should find, as a matter of law, that "Google's commercial use of Oracle's work in a market where Oracle already competed was not fair use." Appellant Br. 68.

      133

      Fair use is an affirmative defense to copyright infringement and is codified in Section 107 of the Copyright Act. Golan, 132 S. Ct. at 890 ("[T]he fair use defense, is codified at 17 U.S.C. § 107."). Section 107 permits use of copyrighted work if it is "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." 17 U.S.C. § 107. The fair use doctrine has been referred to as "`the most troublesome in the whole law of copyright.'" Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th Cir. 2012) (quoting Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam)). It both permits and requires "courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (quoting Stewart v. Abend, 495 U.S. 207, 236 (1990)).

      134

      "Section 107 requires a case-by-case determination whether a particular use is fair, and the statute notes four nonexclusive factors to be considered." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549 (1985). Those factors are: (1) "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;" (2) "the nature of the copyrighted work;" (3) "the amount and substantiality of the portion used in relation to the copyrighted work as a whole;" and (4) "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107. The Supreme Court has explained that all of the statutory factors "are to be explored, and the results weighed together, in light of the purpose[] of copyright," which is "[t]o promote the Progress of Science and useful Arts." Campbell, 510 U.S. at 578, 575 (internal citations omitted).

      135

      "Fair use is a mixed question of law and fact." Harper & Row, 471 U.S. at 560. Thus, while subsidiary and controverted findings of fact must be reviewed for clear error under Rule 52 of the Federal Rules of Civil Procedure, the Ninth Circuit reviews the ultimate application of those facts de novo. See Seltzer v. Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013) (citing SOFA Entm't, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277 (9th Cir. 2013)). Where there are no material facts at issue and "the parties dispute only the ultimate conclusions to be drawn from those facts, we may draw those conclusions without usurping the function of the jury." Id. (citing Fisher v. Dees, 794 F.2d 432, 436 (9th Cir. 1986)). Indeed, the Supreme Court has specifically recognized that, "[w]here the district court has found facts sufficient to evaluate each of the statutory factors, an appellate court `need not remand for further factfinding . . . [but] may conclude as a matter of law that [the challenged use] [does] not qualify as a fair use of the copyrighted work.'" Harper & Row, 471 U.S. at 560 (citation omitted).

      136

      Of course, the corollary to this point is true as well— where there are material facts in dispute and those facts have not yet been resolved by the trier of fact, appellate courts may not make findings of fact in the first instance. See Shawmut Bank, N.A. v. Kress Assocs., 33 F.3d 1477, 1504 (9th Cir. 1994) ("[W]e must avoid finding facts in the first instance."); see also Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1323 (Fed. Cir. 2008) ("Appellate courts review district court judgments; we do not find facts."). Here, it is undisputed that neither the jury nor the district court made findings of fact to which we can refer in assessing the question of whether Google's use of the API packages at issue was a "fair use" within the meaning of Section 107. Oracle urges resolution of the fair use question by arguing that the trial court should have decided the question as a matter of law based on the undisputed facts developed at trial, and that we can do so as well. Google, on the other hand, argues that many critical facts regarding fair use are in dispute. It asserts that the fact that the jury could not reach a resolution on the fair use defense indicates that at least some presumably reasonable jurors found its use to be fair. And, Google asserts that, even if it is true that the district court erred in discussing concepts of "interoperability" when considering copyrightability, those concepts are still relevant to its fair use defense. We turn first to a more detailed examination of fair use.

      137

      The first factor in the fair use inquiry involves "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). This factor involves two sub-issues: (1) "whether and to what extent the new work is transformative," Campbell, 510 U.S. at 579 (citation and internal quotation marks omitted); and (2) whether the use serves a commercial purpose.

      138

      A use is "transformative" if it "adds something new, with a further purpose or different character, altering the first with new expression, meaning or message." Id. The critical question is "whether the new work merely supersede[s] the objects of the original creation . . . or instead adds something new." Id. (citations and internal quotation marks omitted). This inquiry "may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like." Id. at 578-79. "The Supreme Court has recognized that parodic works, like other works that comment and criticize, are by their nature often sufficiently transformative to fit clearly under the fair use exception." Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S. at 579).

      139

      Courts have described new works as "transformative" when "the works use copy-righted material for purposes distinct from the purpose of the original material." Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003) ("Here, Passport's use of many of the television clips is transformative because they are cited as historical reference points in the life of a remarkable entertainer."), overruled on other grounds by Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 995 (9th Cir. 2011) (per curiam); see also Bouchat v. Baltimore Ravens Ltd. P'ship, 619 F.3d 301, 309-10 (4th Cir. 2010) (quoting A.V. ex rel. Vanderhyge v. iParadigms, LLC, 562 F.3d 630, 638 (4th Cir. 2009) ("[A] transformative use is one that `employ[s] the quoted matter in a different manner or for a different purpose from the original.'")). "A use is considered transformative only where a defendant changes a plaintiff's copyrighted work or uses the plaintiff's copyrighted work in a different context such that the plaintiff's work is transformed into a new creation." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007) (quoting Wall Data Inc. v. L.A. County Sheriff's Dep't, 447 F.3d 769, 778 (9th Cir. 2006), and finding that Google's use of thumbnail images in its search engine was "highly transformative").

      140

      A work is not transformative where the user "makes no alteration to the expressive content or message of the original work." Seltzer, 725 F.3d at 1177; see also Wall Data, 447 F.3d at 778 ("The Sheriff's Department created exact copies of RUMBA's software. It then put those copies to the identical purpose as the original software. Such a use cannot be considered transformative."); Monge, 688 F.3d at 1176 (finding that a magazine's publication of photographs of a secret celebrity wedding "sprinkled with written commentary" was "at best minimally transformative" where the magazine "did not transform the photos into a new work . . . or incorporate the photos as part of a broader work"); Elvis Presley Enters., 349 F.3d at 629 (finding that use of copyrighted clips of Elvis's television appearances was not transformative where "some of the clips [we]re played without much interruption, if any . . . [and] instead serve[d] the same intrinsic entertainment value that is protected by Plaintiffs' copyrights."). Where the use "is for the same intrinsic purpose as [the copyright holder's] . . . such use seriously weakens a claimed fair use." Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989)).

      141

      Analysis of the first factor also requires inquiry into the commercial nature of the use. Use of the copyrighted work that is commercial "tends to weigh against a finding of fair use." Harper & Row, 471 U.S. at 562 ("The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price."). "[T]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use." Campbell, 510 U.S. at 579.

      142

      The second factor—the nature of the copyrighted work—"calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied." Id. at 586. This factor "turns on whether the work is informational or creative." Worldwide Church of God, 227 F.3d at 1118; see also Harper & Row, 471 U.S. at 563 ("The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy."). Creative expression "falls within the core of the copyright's protective purposes." Campbell, 510 U.S. at 586. Because computer programs have both functional and expressive components, however, where the functional components are themselves unprotected (because, e.g., they are dictated by considerations of efficiency or other external factors), those elements should be afforded "a lower degree of protection than more traditional literary works." Sega, 977 F.2d at 1526. Thus, where the nature of the work is such that purely functional elements exist in the work and it is necessary to copy the expressive elements in order to perform those functions, consideration of this second factor arguably supports a finding that the use is fair.

      143

      The third factor asks the court to examine "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." 17 U.S.C. § 107(3). Analysis of this factor is viewed in the context of the copyrighted work, not the infringing work. Indeed, the statutory language makes clear that "a taking may not be excused merely because it is insubstantial with respect to the infringing work." Harper & Row, 471 U.S. at 565. "As Judge Learned Hand cogently remarked, `no plagiarist can excuse the wrong by showing how much of his work he did not pirate.'" Id. (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936)). In contrast, "the fact that a substantial portion of the infringing work was copied verbatim is evidence of the qualitative value of the copied material, both to the originator and to the plagiarist who seeks to profit from marketing someone else's copyrighted expression." Id. The Ninth Circuit has recognized that, while "wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use." Worldwide Church of God, 227 F.3d at 1118 (internal citation and quotation omitted). "If the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her." Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir. 2003). Under this factor, "attention turns to the persuasiveness of a parodist's justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors . . . [because] the extent of permissible copying varies with the purpose and character of the use." Campbell, 510 U.S. at 586-87.

      144

      The fourth and final factor focuses on "the effect of the use upon the potential market for or value of the copyrighted work." Harper & Row, 471 U.S. at 566. This factor reflects the idea that fair use "is limited to copying by others which does not materially impair the marketability of the work which is copied." Id. at 566-67. The Supreme Court has said that this factor is "undoubtedly the single most important element of fair use." Id. at 566. It requires that courts "consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant. . . would result in a substantially adverse impact on the potential market for the original." Campbell, 510 U.S. at 590 (citation and quotation marks omitted). "Market harm is a matter of degree, and the importance of this factor will vary, not only with the amount of harm, but also with the relative strength of the showing on the other factors." Id. at 590 n.21.

      145

      Oracle asserts that all of these factors support its position that Google's use was not "fair use"—Google knowingly and illicitly copied a creative work to further its own commercial purposes, did so verbatim, and did so to the detriment of Oracle's market position. These undisputable facts, according to Oracle, should end the fair use inquiry. Oracle's position is not without force. On many of these points, Google does not debate Oracle's characterization of its conduct, nor could it on the record evidence.

      146

      Google contends, however, that, although it admittedly copied portions of the API packages and did so for what were purely commercial purposes, a reasonable juror still could find that: (1) Google's use was transformative; (2) the Java API packages are entitled only to weak protection; (3) Google's use was necessary to work within a language that had become an industry standard; and (4) the market impact on Oracle was not substantial.

      147

      On balance, we find that due respect for the limit of our appellate function requires that we remand the fair use question for a new trial. First, although it is undisputed that Google's use of the API packages is commercial, the parties disagree on whether its use is "transformative." Google argues that it is, because it wrote its own implementing code, created its own virtual machine, and incorporated the packages into a smartphone platform. For its part, Oracle maintains that Google's use is not transformative because: (1) "[t]he same code in Android . . . enables programmers to invoke the same pre-programmed functions in exactly the same way;" and (2) Google's use of the declaring code and packages does not serve a different function from Java. Appellant Reply Br. 47. While Google overstates what activities can be deemed transformative under a correct application of the law, we cannot say that there are no material facts in dispute on the question of whether Google's use is "transformative," even under a correct reading of the law. As such, we are unable to resolve this issue on appeal.

      148

      Next, while we have concluded that it was error for the trial court to focus unduly on the functional aspects of the packages, and on Google's competitive desire to achieve commercial "interoperability" when deciding whether Oracle's API packages are entitled to copyright protection, we expressly noted that these factors may be relevant to a fair use analysis. While the trial court erred in concluding that these factors were sufficient to overcome Oracle's threshold claim of copyrightability, reasonable jurors might find that they are relevant to Google's fair use defense under the second and third factors of the inquiry. See Sega, 977 F.2d at 1524-25 (discussing the Second Circuit's approach to "break[ing] down a computer program into its component subroutines and subsubroutines and then identif[ying] the idea or core functional element of each" in the context of the second fair use factor: the nature of the copyrighted work). We find this particularly true with respect to those core packages which it seems may be necessary for anyone to copy if they are to write programs in the Java language. And, it may be that others of the packages were similarly essential components of any Java language-based program. So far, that type of filtration analysis has not occurred.

      149

      Finally, as to market impact, the district court found that "Sun and Oracle never successfully developed its own smartphone platform using Java technology." Copyrightability Decision, 872 F. Supp. 2d at 978. But Oracle argues that, when Google copied the API packages, Oracle was licensing in the mobile and smartphone markets, and that Android's release substantially harmed those commercial opportunities as well as the potential market for a Java smartphone device. Because there are material facts in dispute on this factor as well, remand is necessary.

      150

      Ultimately, we conclude that this is not a case in which the record contains sufficient factual findings upon which we could base a de novo assessment of Google's affirmative defense of fair use. Accordingly, we remand this question to the district court for further proceedings. On remand, the district court should revisit and revise its jury instructions on fair use consistent with this opinion so as to provide the jury with a clear and appropriate picture of the fair use defense.[17]

      151
      II. GOOGLE'S CROSS-APPEAL
      152

      Google cross-appeals from the portion of the district court's final judgment entered in favor of Oracle on its claim for copyright infringement as to the nine lines of rangeCheck code and the eight decompiled files. Final Judgment, Oracle Am., Inc. v. Google Inc., No. 3:10-cv-3561 (N.D. Cal. June 20, 2012), ECF No. 1211. Specifically, Google appeals from the district court's decisions: (1) granting Oracle's motion for JMOL of infringement as to the eight decompiled Java files that Google copied into Android; and (2) denying Google's motion for JMOL with respect to rangeCheck.

      153

      When reviewing a district court's grant or denial of a motion for JMOL, we apply the procedural law of the relevant regional circuit, here the Ninth Circuit. Trading Techs. Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1357 (Fed. Cir. 2010). The Ninth Circuit reviews a district court's JMOL decision de novo, applying the same standard as the district court. Mangum v. Action Collection Serv., Inc., 575 F.3d 935, 938 (9th Cir. 2009). To grant judgment as a matter of law, the court must find that "the evidence presented at trial permits only one reasonable conclusion" and that "no reasonable juror could find in the non-moving party's favor." Id. at 938-39 (citation and internal quotation marks omitted).

      154

      Oracle explains that the eight decompiled files at issue "contain security functions governing access to network files" while rangeCheck "facilitates an important sorting function, frequently called upon during the operation of Java and Android." Oracle Response to Cross-Appeal 60-61. At trial, Google conceded that it copied the eight decompiled Java code files and the nine lines of code referred to as rangeCheck into Android. Its only defense was that the copying was de minimis. Accordingly, the district court instructed the jury that, "[w]ith respect to the infringement issues concerning the rangeCheck and other similar files, Google agrees that the accused lines of code and comments came from the copyrighted materials but contends that the amounts involved were so negligible as to be de minimis and thus should be excluded." Final Charge to the Jury (Phase One), Oracle Am., Inc. v. Google, Inc., No. 3:10-cv-3561 (N.D. Cal. Apr. 30, 2012), ECF No. 1018, at 14.

      155

      Although the jury found that Google infringed Oracle's copyright in the nine lines of code comprising rangeCheck, it returned a noninfringement verdict as to eight decompiled security files. But because the trial testimony was that Google's use of the decompiled files was significant—and there was no testimony to the contrary—the district court concluded that "[n]o reasonable jury could find that this copying was de minimis." Order Granting JMOL on Decompiled Files, 2012 U.S. Dist. LEXIS 66417, at *6. As such, the court granted Oracle's motion for JMOL of infringement as to the decompiled security files.

      156

      On appeal, Google maintains that its copying of rangeCheck and the decompiled security files was de minimis and thus did not infringe any of Oracle's copyrights. According to Google, the district court should have denied Oracle's motion for JMOL "because substantial evidence supported the jury's verdict that Google's use of eight decompiled test files was de minimis." Cross-Appellant Br. 76. Google further argues that the court should have granted its motion for JMOL as to rangeCheck because the "trial evidence revealed that the nine lines of rangeCheck code were both quantitatively and qualitatively insignificant in relation to the [Java] platform." Id. at 78.

      157

      In response, Oracle argues that the Ninth Circuit does not recognize a de minimis defense to copyright infringement and that, even if it does, we should affirm the judgments of infringement on grounds that Google's copying was significant. Because we agree with Oracle on its second point, we need not address the first, except to note that there is some conflicting Ninth Circuit precedent on the question of whether there is a free-standing de minimis defense to copyright infringement or whether the substantiality of the alleged copying is best addressed as part of a fair use defense. Compare Norse v. Henry Holt & Co., 991 F.2d 563, 566 (9th Cir. 1993) (indicating that "even a small taking may sometimes be actionable" and the "question of whether a copying is substantial enough to be actionable may be best resolved through the fair use doctrine"), with Newton v. Diamond, 388 F.3d 1189, 1192-93 (9th Cir. 2003) ("For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement. This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial.") (internal citation omitted)).[18]

      158

      Even assuming that the Ninth Circuit recognizes a stand-alone de minimis defense to copyright infringement, however, we conclude that: (1) the jury reasonably found that Google's copying of the rangeCheck files was more than de minimis; and (2) the district court correctly concluded that the defense failed as a matter of law with respect to the decompiled security files.

      159

      First, the unrebutted testimony at trial revealed that rangeCheck and the decompiled security files were significant to both Oracle and Google. Oracle's expert, Dr. John Mitchell, testified that Android devices call the rangeCheck function 2,600 times just in powering on the device. Although Google argues that the eight decompiled files were insignificant because they were used only to test the Android platform, Dr. Mitchell testified that "using the copied files even as test files would have been significant use" and the district court specifically found that "[t]here was no testimony to the contrary." Order Granting JMOL on Decompiled Files, 2012 U.S. Dist. LEXIS 66417, at *6. Given this testimony, a reasonable jury could not have found Google's copying de minimis.

      160

      Google emphasizes that the nine lines of rangeCheck code "represented an infinitesimal percentage of the 2.8 million lines of code in the 166 Java packages—let alone the millions of lines of code in the entire [Java] platform." Google Cross-Appeal Br. 78-79. To the extent Google is arguing that a certain minimum number of lines of code must be copied before a court can find infringement, that argument is without merit. See Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987) ("[N]o bright line rule exists as to what quantum of similarity is permitted."). And, given the trial testimony that both rangeCheck and the decompiled security files are qualitatively significant and Google copied them in their entirety, Google cannot show that the district court erred in denying its motion for JMOL.

      161

      We have considered Google's remaining arguments and find them unpersuasive. Accordingly, we affirm both of the JMOL decisions at issue in Google's cross-appeal.

      162
      III. GOOGLE'S POLICY-BASED ARGUMENTS
      163

      Many of Google's arguments, and those of some amici, appear premised on the belief that copyright is not the correct legal ground upon which to protect intellectual property rights to software programs; they opine that patent protection for such programs, with its insistence on non-obviousness, and shorter terms of protection, might be more applicable, and sufficient. Indeed, the district court's method of operation analysis seemed to say as much. Copyrightability Decision, 872 F. Supp. 2d at 984 (stating that this case raises the question of "whether the copyright holder is more appropriately asserting an exclusive right to a functional system, process, or method of operation that belongs in the realm of patents, not copyrights"). Google argues that "[a]fter Sega, developers could no longer hope to protect [software] interfaces by copyright . . . Sega signaled that the only reliable means for protecting the functional requirements for achieving interoperability was by patenting them." Appellee Br. 40 (quoting Pamela Samuelson, Are Patents on Interfaces Impeding Interoperability? 93 Minn. L. Rev. 1943, 1959 (2009)). And, Google relies heavily on articles written by Professor Pamela Samuelson, who has argued that "it would be best for a commission of computer program experts to draft a new form of intellectual property law for machine-readable programs." Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 Duke L.J. 663, 764 (1984). Professor Samuelson has more recently argued that "Altai and Sega contributed to the eventual shift away from claims of copyright in program interfaces and toward reliance on patent protection. Patent protection also became more plausible and attractive as the courts became more receptive to software patents." Samuelson, 93 Minn. L. Rev. at 1959.

      164

      Although Google, and the authority on which it relies, seem to suggest that software is or should be entitled to protection only under patent law—not copyright law— several commentators have recently argued the exact opposite. See Technology Quarterly,Stalking Trolls, ECONOMIST, Mar. 8, 2014, http://www.economist. com/news/technology-quarterly/21598321-intellectualproperty-after-being-blamed-stymying-innovation-america-vague ("[M]any innovators have argued that the electronics and software industries would flourish if companies trying to bring new technology (software innovations included) to market did not have to worry about being sued for infringing thousands of absurd patents at every turn. A perfectly adequate means of protecting and rewarding software developers for their ingenuity has existed for over 300 years. It is called copyright."); Timothy B. Lee, Will the Supreme Court save us from software patents?, WASH. POST, Feb. 26, 2014, 1:13 PM, http://www.washingtonpost.com/blogs/the-switch/wp/ 2014/02/26/will-the-supreme-court-save-us-from-softwarepatents/ ("If you write a book or a song, you can get copyright protection for it. If you invent a new pill or a better mousetrap, you can get a patent on it. But for the last two decades, software has had the distinction of being potentially eligible for both copyright and patent protection. Critics say that's a mistake. They argue that the complex and expensive patent system is a terrible fit for the fast-moving software industry. And they argue that patent protection is unnecessary because software innovators already have copyright protection available.").

      165

      Importantly for our purposes, the Supreme Court has made clear that "[n]either the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted." Mazer v. Stein, 347 U.S. 201, 217 (1954). Indeed, the thrust of the CONTU Report is that copyright is "the most suitable mode of legal protection for computer software." Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 Stan. L. Rev. 1045, 1072 (1989); see also CONTU Report at 1 (recommending that copyright law be amended "to make it explicit that computer programs, to the extent that they embody an author's original creation, are proper subject matter of copyright"). Until either the Supreme Court or Congress tells us otherwise, we are bound to respect the Ninth Circuit's decision to afford software programs protection under the copyright laws. We thus decline any invitation to declare that protection of software programs should be the domain of patent law, and only patent law.

      166
      CONCLUSION
      167

      For the foregoing reasons, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages at issue are entitled to copyright protection. We therefore reverse the district court's copyrightability determination with instructions to reinstate the jury's infringement verdict. Because the jury hung on fair use, we remand Google's fair use defense for further proceedings consistent with this decision.

      168

      With respect to Google's cross-appeal, we affirm the district court's decisions: (1) granting Oracle's motion for JMOL as to the eight decompiled Java files that Google copied into Android; and (2) denying Google's motion for JMOL with respect to the rangeCheck function. Accordingly, we affirm-in-part, reverse-in-part, and remand for further proceedings.

      169

      AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

      170

      [1] Oracle acquired Sun in 2010.

      171

      [2] The 37 API packages involved in this appeal are: java.awt.font, java.beans, java.io, java.lang, java.lang.annotation, java.lang.ref, java.lang.reflect, java.net, java.nio, java.nio.channels, java.nio.channels.spi, java.nio.charset, java.nio.charset.spi, java.security, java.security.acl, java.security.cert, java.security.interfaces, java.security.spec, java.sql, java.text, java.util, java.util.jar, java.util.logging, java.util.prefs, java.util.regex, java.util.zip, javax.crypto, javax.crypto.interfaces, javax.crypto.spec, javax.net, javax.net.ssl, javax.security.auth, javax.security.auth.callback, javax.security.auth.login, javax.security.auth.x500, javax.security.cert, and javax.sql.

      172

      [3] The Supreme Court has not addressed whether copyrightability is a pure question of law or a mixed question of law and fact, or whether, if it is a mixed question of law and fact, the factual components of that inquiry are for the court, rather than the jury. Relatedly, it has not decided the standard of review that applies on appeal. Ten years ago, before finding it unnecessary to decide whether copyrightability is a pure question of law or a mixed question of law and fact, the Seventh Circuit noted that it had "found only a handful of appellate cases addressing the issue, and they are split." Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir. 2004). And, panels of the Ninth Circuit have defined the respective roles of the jury and the court differently where questions of originality were at issue. Compare North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1035 (9th Cir. 1992), with Ets-Hokin, 225 F.3d at 1073. More recently, several district courts within the Ninth Circuit have treated copyrightability as a question for only the court, regardless of whether it is a pure question of law. See Stern v. Does, No. 09-1986, 2011 U.S. Dist. LEXIS 37735, *7 (C.D. Cal. Feb. 10, 2011); Jonathan Browning, Inc. v. Venetian Casino Resort LLC, No. C 07-3983, 2009 U.S. Dist. LEXIS 57525, at *2 (N.D. Cal. June 19, 2009); see also Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 932 F. Supp. 220, 225 (N.D. Ill. 1996) (Easterbrook, J.) (citing to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and concluding that whether works are copyrightable is a question which the "jury has nothing to do with"). We need not address any of these questions, because the parties here agreed that the district court would decide copyrightability, and both largely agree that we may undertake a review of that determination de novo.

      173

      [4] Importantly, this full analysis only applies where a copyright owner alleges infringement of the non-literal aspects of its work. Where "admitted literal copying of a discrete, easily-conceptualized portion of a work" is at issue—as with Oracle's declaring code—a court "need not perform a complete abstraction-filtration-comparison analysis" and may focus the protectability analysis on the filtration stage, with attendant reference to standard copyright principles. Mitel, 124 F.3d at 1372-73.

      174

      [5] It is undisputed that Microsoft and Apple developed mobile operating systems from scratch, using their own array of software packages. When asked whether Google could also copy all of Microsoft or Apple's declaring code—codes that obviously differ from those at issue here—counsel for Google responded: "Yes, but only the structure, sequence, and organization. Only the command structure—what you need to access the functions. You'd have to rewrite all the millions of lines of code in Apple or in Microsoft which is what Google did in Android." Oral Argument at 36:00.

      175

      [6] In their brief as amici curiae in support of reversal, Scott McNealy and Brian Sutphin—both former executives at Sun who were involved in the development of the Java platform—provide a detailed example of the creative choices involved in designing a Java package. Looking at the "java.text" package, they explain that it "contains 25 classes, 2 interfaces, and hundreds of methods to handle text, dates, numbers, and messages in a manner independent of natural human languages. . . ." Br. of McNealy and Sutphin 14-15. Java's creators had to determine whether to include a java.text package in the first place, how long the package would be, what elements to include, how to organize that package, and how it would relate to other packages. Id. at 16. This description of Sun's creative process is consistent with the evidence presented at trial. See Appellant Br. 12-13 (citing testimony that it took years to write some of the Java packages and that Sun/Oracle developers had to "wrestle with what functions to include in the package, which to put in other packages, and which to omit entirely").

      176

      [7] The district court did not find merger with respect to the structure, sequence, and organization of Oracle's Java API packages. Nor could it, given the court's recognition that there were myriad ways in which the API packages could have been organized. Indeed, the court found that the SSO is original and that "nothing in the rules of the Java language . . . required that Google replicate the same groupings." Copyrightability Decision, 872 F. Supp. 2d at 999. As discussed below, however, the court nonetheless found that the SSO is an uncopyrightable "method of operation."

      177

      [8] At oral argument, counsel for Oracle was asked whether we should view the three core packages "differently vis-à-vis the concept of a method of operation than the other packages." See Oral Argument at 7:43. He responded: "I think not your Honor. I would view them differently with respect to fair use. . . . It's not that they are more basic. It's that there are just several methods, that is, routines, within just those three packages that are necessary to `speak the Java language.' Nothing in the other thirty-four packages is necessary in order to speak in Java, so to speak." Id. Counsel conceded, however, that this issue "might go to merger. It might go to the question whether someone—since we conceded that it's okay to use the language—if it's alright to use the language that there are certain things that the original developers had to say in order to use that language, arguably, although I still think it's really a fair use analysis." Id.

      178

      [9] The Supreme Court granted certiorari in Lotus, but, shortly after oral argument, the Court announced that it was equally divided and that Justice Stevens took no part in the consideration or decision of the case. The Court therefore left the First Circuit's decision undisturbed. See Lotus, 516 U.S. at 233-34.

      179

      [10] The Lotus majority cited no authority for this definition of "method of operation."

      180

      [11] As Oracle points out, the Ninth Circuit has cited Lotus only one time, on a procedural issue. See Danjaq LLC v. Sony Corp., 263 F.3d 942, 954 (9th Cir. 2001) (citing Lotus for the proposition that delay "has been held permissible, among other reasons, when it is necessitated by the exhaustion of remedies through the administrative process . . . when it is used to evaluate and prepare a complicated claim").

      181

      [12] This analogy by the district court is meaningful because taxonomies, in varying forms, have generally been deemed copyrightable. See, e.g., Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 517-20 (9th Cir. 1997); Am. Dental, 126 F.3d at 978-81.

      182

      [13] At oral argument, counsel for Oracle explained that it "would never claim that anyone who uses a package-class-method manner of classifying violates our copyright. We don't own every conceivable way of organizing, we own only our specific expression—our specific way of naming each of these 362 methods, putting them into 36 classes, and 20 subclasses." Oral Argument at 16:44.

      183

      [14] Amici McNealy and Sutphin explain that "a quick examination of other programming environments shows that creators of other development platforms provide the same functions with wholly different creative choices." Br. of McNealy and Sutphin 17. For example, in Java, a developer setting the time zone would call the "setTime-Zone" method within the "DateFormat" class of the java.text package. Id. Apple's iOS platform, on the other hand, "devotes an entire class to set the time zone in an application—the `NSTimeZone' class" which is in the "Foundation framework." Id. at 17-18 (noting that a "framework is Apple's terminology for a structure conceptually similar to Java's `package'"). Microsoft provides similar functionality with "an entirely different structure, naming scheme, and selection." Id. at 18 ("In its Windows Phone development platform, Microsoft stores its time zone programs in the `TimeZoneInfo' class in its `Systems' namespace (Microsoft's version of a `package' or `framework')."). Again, this is consistent with the evidence presented at trial.

      184

      [15] During oral argument, Google's counsel stated that "a program written in the Java language can run on Android if it's only using packages within the 37. So if I'm a developer and I have written a program, I've written it in Java, I can stick an Android header on it and it will run in Android because it is using the identical names of the classes, methods, and packages." Oral Argument at 31:31. Counsel did not identify any programs that use only the 37 API packages at issue, however, and did not attest that any such program would be useful. Nor did Google cite to any record evidence to support this claim.

      185

      [16] Google argues that, in the same way a formerly distinctive trademark can become generic over time, a program element can lose copyright protection when it becomes an industry standard. But "it is to be expected that phrases and other fragments of expression in a highly successful copyrighted work will become part of the language. That does not mean they lose all protection in the manner of a trade name that has become generic." Warner Bros., Inc. v. Am. Broadcasting Cos., 720 F.2d 231, 242 (2d Cir. 1983) ("No matter how well known a copyrighted phrase becomes, its author is entitled to guard against its appropriation to promote the sale of commercial products."). Notably, even when a patented method or system becomes an acknowledged industry standard with acquiescence of the patent owner, any permissible use generally requires payment of a reasonable royalty, which Google refused to do here. See generally In re Innovatio IP Ventures, LLC, No. 11-C-9308, 2013 U.S. Dist. LEXIS 144061 (N.D. Ill. Sept. 27, 2013).

      186

      [17] Google argues that, if we allow it to retry its fair use defense on remand, it is entitled to a retrial on infringement as well. We disagree. The question of whether Google's copying constituted infringement of a copyrighted work is "distinct and separable" from the question of whether Google can establish a fair use defense to its copying. See Gasoline Prods. Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931) ("Where the practice permits a partial new trial, it may not properly be resorted to unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice."). Indeed, we have emphasized more than once in this opinion the extent to which the questions are separable, and the confusion and error caused when they are blurred. The issues are not "interwoven" and it would not create "confusion and uncertainty" to reinstate the infringement verdict and submit fair use to a different jury. Id. We note, moreover, that, because Google only mentions this point in passing, with no development of an argument in support of it, under our case law, it has not been properly raised. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (when a party provides no developed argument on a point, we treat that argument as waived) (collecting cases).

      187

      [18] At least one recent district court decision has recognized uncertainty in Ninth Circuit law on this point. See Brocade Commc'ns Sys. v. A10 Networks, Inc., No. 10cv-3428, 2013 U.S. Dist. LEXIS 8113, at *33 (N.D. Cal. Jan. 10, 2013) ("The Ninth Circuit has been unclear about whether the de minimis use doctrine serves as an affirmative defense under the Copyright Act's fair use exceptions or whether the doctrine merely highlights plaintiffs' obligation to show that `the use must be significant enough to constitute infringement.'") (citing Newton, 388 F.2d at 1193; Norse, 991 F.2d at 566).

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