Editor's note: The official transcripts of Supreme Court oral arguments do not identify the individual Justices who pose questions from the bench. Based on the notes that I took at the oral argument, as well as those of one of my colleagues, I've attempted to match each question with the appropriate Justice. In addition, I've inserted the full case name and citation for each case that was mentioned in the course of oral argument. Any material that I've added to the transcript appears in brackets.

--Jesse Feder

Oral Argument of Henry B. Gutman On Behalf of Petitioner

MR. GUTMAN: Mr. Chief Justice, and may it please the Court:

This is a copyright infringement case. It was brought and tried under that statute and none other.

It is our position and the issue before the Court that the First Circuit committed error here when it held that section 102(b) of the Copyright Act precludes, as a matter of law, protecting the separable original expression contained in the menus of Lotus 1-2-3. This holding was not based upon the finding of fact that there was any merger in this instance of the expression in those menus with any idea or process or method.

Judge Keeton in the district court made fact findings exactly to the contrary after trial and the First Circuit said -- and this is in the petition appendix at 21a -- that it was accepting that fact finding as correct. And clearly there's no finding that any of it was clearly erroneous, so there's no First Circuit-

QUESTION [Justice O'Connor]: And that fact finding found some protectible expression I take it.

MR. GUTMAN: Protectible expression and a lack of merger, Your Honor, and originality. Frankly, Judge Keeton conducted the trial on all of the elements under 102(a) as set out in Feist [Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)], and on each of those grounds, our menus passed muster. The judge -- the First Circuit did not reject any of that fact finding as clearly erroneous.

Rather, the First Circuit reached its conclusion by failing to apply or by applying incorrectly the idea/expression dichotomy. This error is alone sufficient ground for a reversal on remand, without reaching any of the other issues that have been briefed in this case.

QUESTION [Chief Justice Rehnquist]: I thought the First Circuit also found it was a method of operation and therefore not patentable.

MR. GUTMAN: But what it didn't -- I'm sorry. I believe the Chief Justice meant copyrightable I think.

QUESTION [Chief Justice Rehnquist]: Copyrightable, yes. We had a patent case before lunch.

MR. GUTMAN: I was here. I remember. (Laughter.)

MR. GUTMAN: I remember, and I do want that distinction to be clear in our argument today. But that is a point of contention between the parties.

What they found was that because it provides the means -- these menus provide the means by which users control and operate Lotus 1-2-3, it is therefore part of a method of operation. The error -- the error -- was that the First Circuit made no effort to determine whether there was expression that could be distinguished or separated from the method of operation. That's the fundamental error here.

This Court taught in Feist that the idea/expression dichotomy applies in every case and that it is not an option. One does not just define. One looks at the work and attempts to determine whether there is expression that can be separated from the idea. This is the crux of the interaction between sections 102(a) and 102(b) of the statute.

QUESTION [Justice Souter]: But isn't the difficulty that we have here is that there are varying sort of degrees of merger and utility? At one extreme is the computer program itself. At another extreme, not in this case, would be I suppose the dashboard of the Model T Ford.

Here we're dealing with something that is in sort of a median range. It is in fact used in the most utilitarian of fashions, and yet theoretically one can say, yes, it is expressive and that there is some degree of -- certainly of non-merger.

And isn't the problem that the First Circuit had and the problem that we had -- have is not an analytical problem, but a problem of saying that something which is kind of in the middle could be classified one way or the other. And Judge Boudin answered that by saying you ought to look to certain, quite practical consequences. Isn't that the way we should look at it, as a choice case rather than analysis case?

MR. GUTMAN: Respectfully, I would disagree, Justice Souter. It's -- it is an analysis case. Copyright rarely provides black and white answers or bright lines.

The issue in each of these cases -- and this is the heart of the idea/expression dichotomy -- is to look at the works and determine whether the portions that are at issue are portions that cannot be -- to which the protection may not extend, in the words of 102(b), because they are a system, a method, et cetera.

What we are talking about in this instance is words, whose only function and purpose is to inform the user as to what functionality is available in the program and how to access it, that is, which keystrokes to use in order to get the program to do --

QUESTION [Justice O'Connor]: Well, part of what troubles people I suppose is that if you have a little menu command and all it says is exit, block, move, et cetera, maybe those are just functional. What is it about the Lotus program that makes it protectible expression in your view?

MR. GUTMAN: This was the subject of the trial in the district court, Your Honor, and Judge Keeton was mindful of the Court's decision in Feist. We have an extensive trial record, and it was the creative choices, unlike Feist where one took a given set of names and simply alphabetized them which did not have that minimum spark of creativity that the Copyright Act requires.

In this instance, the creators of Lotus 1-2-3 beyond having made the decisions as to what functions the program should perform, all of which Judge Keeton clearly provided was not protected. The functionality, he said, was part of the unprotected idea, and we did not seek to get him to rule otherwise on that subject. The functions the program performs are not protected.

Even taking that as a given, what Judge Keeton found was that the creators of 1-2-3 had a vast array of choices in terms of how they would present that functionality to the user and that's where the expression is. The expression is in deciding what words -- just deciding whether to have menus or not, deciding what words to use in the menus, deciding what --

QUESTION [Justice Kennedy]: But at a certain level it seems to me that the expression necessarily merges with the function certainly at a very simple level, start/stop to make the machine go.

MR. GUTMAN: There's no question, Justice Kennedy, that there are certain menus and certain user interfaces that would be far too simple to pass the Feist test. We are not taking the position, never have, did not in the court below, in the First Circuit did not --

QUESTION [Justice Kennedy]: But it's more than creativity, sweat of the brow. I'm not quite sure what it is that you say is protected.

MR. GUTMAN: Well, if I may use the inelegant analogy of sweat, I believe that what the Feist case established is that not all sweat has equal impact under copyright law. Sheer sweat of the brow doesn't make it. That's clear after Feist. But intellectual creative sweat, expressive sweat, spending months, as the authors of 1-2-3 did. considering dozens and dozens and dozens of different iterations of a menu structure and of precise words to use and their placement to find what you think is the best way of presenting it is precisely the kind of creative activity which I think does pass muster under Feist.

QUESTION [Justice Kennedy]: What is the general rule that you apply in order to have us follow that and make that analysis and come out in your case? This is protected because --

MR. GUTMAN: Because --

QUESTION [Justice Kennedy]: -- of the creativity --

MR. GUTMAN: Because it is --

QUESTION [Justice Kennedy]: -- is so substantial?

MR. GUTMAN: I'm sorry. Because it is original within the meaning of Feist. It's the work of the author, and it shows that minimal spark of creativity quite easily, well beyond. This is not a close case under Feist.

Two, because there is not a merger of the idea or functions of the program and the expression in these particular menus.

Now, the way Judge Keeton made that judgment was based on a factual record before him which included dozens of different spreadsheet programs, all of which provided fundamentally the same functionality, but which had very different menus.

Indeed, the single -- if one had to rely on only a single bit of evidence to refute merger here, I would rely on the infringing work itself, Borland's program Quattro Pro, because it provided in the same package, in the same program two separate sets of menus, ours and theirs, to access precisely the same functionality. So, they --

QUESTION [Justice Ginsburg]: Mr. Gutman, may I ask you one thing that I think was very much on Judge Boudin's mind?

You have just explained that (b) doesn't exempt wholesale anything you could call a method of operation. Sure, it's a method of operation but it has expression, and you have to separate the expression out just like you do with an idea, with a procedure, anything else. They're all binary in that respect.

But Judge Boudin said the user has put in a lot of the user's own sweat or whatever to develop something new, and that something is in the form of all these macros. And those macros were not created by Lotus 1-2-3. It was the user, working with this machine, to get up -- to customize a whole set of things for the user's own operation. The user can't extract that, the user's own work, unless the user can resort to the Lotus commands.

So, I noticed something in your reply brief. You said, of course, for the user this would be a fair use. There would be no infringement for the user. So, can one look at this and say what Borland is doing is facilitating the user's fair use?

MR. GUTMAN: Well, I think, Your Honor, that the user and Borland stand in very different positions for fair use purposes. What the user does in terms -- for example, if a user wanted to convert a 1-2-3 macro so that it would work in Quattro Pro and the conversion was required, there is much that that user could do for his or her own personal purposes that I think would fairly easily qualify as a fair use.

When a competitor makes a wholesale appropriation of your entire menu structure, which is the communicative core of the user interface of the program --

QUESTION [Justice Ginsburg]: But that's my question. Is -- can the user -- how can the user with all these macros make use of them with the Borland spreadsheet?

MR. GUTMAN: Well, that brings me -- the user can rewrite the macro or convert it as necessary even if Borland had done none of what it did in infringement.

But that does bring me naturally to the second point I wanted to make, which is because the First Circuit dealt the way it did with copyrightability, it never reached the next step which is infringement.

And there were two separate active infringements here on the part of Borland. One was copying the words on the screen, the menus themselves. The second, which was a mid-litigation development and the subject of our supplemental complaint, was this macro key reader, which was an internal translator.

Now, there may very well be different issues. There are different issues in terms of infringement between those two different acts of infringement, and the First Circuit never reached any of those.

QUESTION [Justice Ginsburg]: May I ask you something about the key reader? Do I -- one of the briefs suggested that just providing the key reader wouldn't be enough because all you could do with the key reader was run your macros as is, that in order to modify them, you would have to have access to all the commands.

MR. GUTMAN: Or to fix them. And if -- what that point makes, which was made by a number of the amici, Your Honor -- what that illustrates is exactly our point, that the purpose of the menus is to inform. The only reason they would want the words -- if someone -- let me back up a step.

If someone wanted, having already purchased Quattro Pro and being a Quattro Pro user now, not only to convert a 1-2-3 macro so that it could be used in Quattro Pro, but to keep writing it as a 1-2-3 macro, which wouldn't make sense once you've switched -- even if someone wanted to do that, what the argument of the amici is is that, well, you'd still need to look at those words of the menu in order to understand what you were doing.

And the response to that is, if so, it is only because the function of those words is to inform. You could get the same information out of a piece of paper or a 1-2-3 users manual which, as a former 1-2-3 user, you presumably have.

QUESTION [Chief Justice Rehnquist]: Mr. Gutman, a moment ago you said something about a finding of infringement. I just read over your question presented. I don't see that it presents anything about any question of infringement.

MR. GUTMAN: That's exactly the point. That's exactly the point, Mr. Chief Justice. The infringement issue, which is where these two different points come up is not before the Court and wasn't addressed by the First Circuit.

So, my point is if I am correct, if our position is correct, that the First Circuit made a -- an error in interpreting 102(a) and its relationship to 102(b) and there's a reversal on remand, the First Circuit can then deal with the infringement issues, at which point it may or may not decide that the key reader is different from the menus.

I mean, we understand and recognize that the protection on the key reader, that the issues are different and that the arguments are not as strong there because the expressive content is not as strong. But that is not an issue that this Court has before it because, as the Chief Justice just pointed out, the issue raised in the petition and the only issue dealt with by the First Circuit, and thus before the Court, is the issue of copyrightability and this fundamental issue of the relationship between the two pieces of 102.

QUESTION [Justice Breyer]: But assuming -- I assume the 469 words are in English and they each express something, but I take it that the genius of what Lotus did was to work out ways of organizing and presenting in a certain order possible functions of a computer, possible functions of certain programs. Let's put file first and follow it with edit, and that's a lot of work. They did that.

Copyright doesn't protect the ingenious system they worked out, does it?

MR. GUTMAN: Well --

QUESTION [Justice Breyer]: That's the last thing copyright has in mind.

MR. GUTMAN: Well --

QUESTION [Justice Breyer]: And if that's so, the question then comes down to whether one can easily or reasonably easily use their system, unless something else protects it, without using their words. And if the answer to that question is Baker v. Selden[, 101 U.S. 99 (1879)], isn't that the issue in the case, or is it? I'm trying to get you to discuss in general that kind of an issue.

MR. GUTMAN: Certainly. I would not agree that the words are the system, Your Honor.

QUESTION [Justice Breyer]: No, no. The system is calling up certain kinds of commands in a certain order. You could use a different word. You don't have to say file, but it's the most natural word to use or it is a natural word to use. I don't want to get into an argument about that.

What I'm trying to work out is -- the analogy that I've been using, which no one likes, is I could invent a system for organizing a department store: first floor, women's; second floor, men's; third floor, boys. Within the department store floors, pants here, trousers there, shirts there. Within the shirts, dress, not dress, et cetera. And I could have little signs over each one. The genius is in my system, not the words on the sign, and you have the right under the copyright law to tie up the system by copyrighting the words gentlemen, ladies, and saying, oh, you could use caballeros, you could use damas, you could use monsieur. I mean, you see?

MR. GUTMAN: I understand the point of the question, but in this case it's not correct. That is, Borland's own product -- again, this is -- Borland's own product is a refutation of the point because they did present exactly that same organization of functions, which Your Honor referred to as the system. Yet, their commands for accessing exactly the same functions are quite different.

QUESTION [Justice Breyer]: In exactly the same order and in exactly the same format. I mean, the genius of this was not just that you could -- you had a system of access. It was which words came first, what order they're presented in. Is that what Borland was able to do?

MR. GUTMAN: Borland provided exactly -- exactly -- the same functions. It's a single program. The computational engine on the inside is one engine, and there are two separate menus, two separate sets of menus --

QUESTION [Justice Breyer]: And how could that system work in order to attract to its use those people who had already learned Lotus?

MR. GUTMAN: By -- well, the answer, Your Honor, would be that they would do it the way everybody else who produced a competing spreadsheet tried to do it. Some of them succeeded, some of them failed.

QUESTION [Justice Breyer]: But is it the purpose of copyright law to throw up that kind of obstacle to the use not of some expressions, but to the use of a person who invented a different system? That's what I'm continuously worried about.

MR. GUTMAN: No. I understand the worry, Your Honor, and where we have a different perspective is that we don't believe we are trying to protect the system. We are protecting a particular set of words which could have been widely varied without changing the system, the idea, what Judge Keeton called the idea, what we're referring to as the set of functionality.

QUESTION [Justice Kennedy]: In order to refute that point, do the respondents have to rely on a doctrine or the idea of merger, that the expression -- they so, oh, no, you're wrong because the function has merged with the expression. Is that the only way they can win?

MR. GUTMAN: Well, there are a lot of defenses available under the copyright law.

QUESTION [Justice Kennedy]: Well, is that their principal refutation of your argument? Let me put it that way.

MR. GUTMAN: Their -- no. Their principal refutation before this Court is to argue that this really isn't a question of copyright law. It's a question of patent law, which is a separate issue.

QUESTION [Justice Kennedy]: Well, but the question is why is this expression that you ask for -- to be protected by the copyright -- why is that so divorced from the function?

It seems to me that it's different than the text. The text describing how Lotus works everybody says is copyrightable. The command menus are not according to the First Circuit. And the difference, it seems to me, is that in the case of the command menus, it does merge very closely with the function.

MR. GUTMAN: Well, the difference, Your Honor, is -- the only difference between the longer texts that are acknowledged to be protected --

QUESTION [Justice Kennedy]: Yes.

MR. GUTMAN: -- is conciseness, and there is nothing in copyright law that says a very concise index or table of contents of a work is not protected from being copied by someone who likes it. You can't copy the index of the Samuelson economics text because you think that's a good way to teach economics and you'd like to make it the model for your own independently written beyond that point economics text.

QUESTION [Justice Breyer]: There is something in copyright law that stops you from copying a concise thing. If the only way to practice Mr. Selden's art is to copy the concise words at the head of a column, you can't do it. And now you're going to come back and tell me but it isn't absolutely necessary to use those same words.

And then the question is, how much do we read into that word absolute? I mean, if it's possible to find another word somewhere, is that sufficient? How -- what's -- that's what I'm struggling for, the test of how far Baker v. Selden reaches.

MR. GUTMAN: It's a sliding scale, Your Honor. The degree of freedom of expression that is available -- and I would remind the Court that when we look at these questions -- these are copyrightability questions -- we're looking not at the work of the infringer. The question isn't what freedom did Borland have when it wrote. The question is what freedom did Lotus have when the authors of 1-2-3 sat down to write. That's where one focuses.

And if that freedom of expression available to the creator, the author is narrowly limited, then the right in copyright is narrowly limited. It's thin. For example, a factual work, a compilation. There perhaps all you have is your own organization and --

QUESTION [Justice O'Connor]: If all you had were just a few words in the command like block, move, stop, print, perhaps not copyrightable, but what did we have here? 469 commands and 50 menus and submenus and so on and so on. Is that right?

MR. GUTMAN: Exactly right, Your Honor. If these words and menus were printed in a little pamphlet, a little pocket guide to 1-2-3, a reminder on a printed page, I don't think there's any question they'd be protected. I don't think anybody would -- we wouldn't be here. The fact that they are --

QUESTION [Justice Souter]: You could also protect a -- an original language that you had written then too.

MR. GUTMAN: Well, the question -- languages is a tricky question because if one --

QUESTION [Justice Souter]: Well, it's one more removed, but I suppose you could make the same argument that that was indistinguishable from your ultimate program which is copyrightable that you can make with respect to the menu.

MR. GUTMAN: The program is certainly copyrightable, Your Honor. We are not claiming protection of the language.

QUESTION [Justice Souter]: Yes, but why couldn't you? Why isn't that -- I mean, what is it that draws the line at such a claim? It seems to me that your argument would carry you right to that point.

MR. GUTMAN: Well, this is more like a users manual, Your Honor. This is a users manual. It's a short, concise users manual for the program, and copyright has always protected --

QUESTION [Justice Souter]: Yes, but you're saying your argument is, well, you can't distinguish in practical terms between the program and the users manual. Well, if you had invented a language and the only way to get to the menu was to the use of language, you could make the same argument.

MR. GUTMAN: Well, there is a distinction between -- in languages. Again, this Court has not decided -- and there are some suggestions from Learned Hand in an old decision -- that a language, not English or French, not some natural language, but that an invented language could be protected by copyright. Fortunately, I don't believe the Court has to decide that --

QUESTION [Justice Ginsburg]: What about computer languages?

MR. GUTMAN: Again, there --

QUESTION [Justice Ginsburg]: What about Fortran or Basic?

MR. GUTMAN: People protect the compilers, and if one wanted to draw that analogy, our program, our menus are more like the compiler than they are like a language. Now, that's not an issue that was dealt with by either of the courts below. There's nothing in the record on it, and language could itself -- what is a language? What is a computer language is itself a subject that could consume much time and debate and much expert testimony, none of which is in this case. We're not claiming --

QUESTION [Justice Souter]: May I ask you a -- I'm sorry. If you -- are you done?

MR. GUTMAN: I just wanted to make it clear we aren't claiming it's protected. I'm sorry, Justice Souter.

QUESTION [Justice Souter]: Let me ask you an entirely different kind of question, and it goes to this point of whether it is indeed possible to draw the line that the First Circuit drew between program and menu.

The respondents pointed to evidence that that is what Congress intended to do, and they did this at page -- I wrote it down -- page 37 of their brief by referring to the CONTU report and said that the CONTU report apparently expressly referred to the copyrightability of a source code, an object code, and possibly the flow chart, and that's where it stopped so that it would be reasonable to read the 1980 amendments as expressing Congress' judgment that this material would be copyrightable and that anything beyond that need not be.

Is that a fair argument and an accurate argument -- an accurate statement of the CONTU report?

MR. GUTMAN: It's not, Your Honor, because CONTU also talked, for example, about databases which are texts that shows up on the screen of a computer. So, CONTU never said only the code of a program is what would be protected.

And, again, the CONTU report has --

QUESTION [Justice Souter]: Well, it didn't say that it is only what would be protected, but it expressly said that it would be protected.


QUESTION [Justice Souter]: With the negative pregnant that beyond that Congress -- if Congress in fact was more or less adopting that suggestion, that Congress did not positively intend to go any further.

QUESTION [Chief Justice Rehnquist]: Well, Congress didn't enact the CONTU report, did they?

MR. GUTMAN: That -- I was about to say that, Mr. Chief Justice.

I would prefer, rather than --

QUESTION [Chief Justice Rehnquist]: Good point. (Laughter.)

QUESTION [Justice Souter]: But the CONTU report was made to Congress, wasn't it?

MR. GUTMAN: Yes, Your Honor.

QUESTION [Justice Souter]: And it preceded the legislation. So, do you feel that it has no interpretive significance?

MR. GUTMAN: As legislative history goes, it is of the light variety. It ranks below House reports and Senate reports and in all instances below the words of the statute which says, copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of a machine or device.

QUESTION [Justice Breyer]: Is this a pictorial, graphic, or sculptural work?

MR. GUTMAN: No, Your Honor. It's a literary work.

QUESTION [Justice Breyer]: Why not? Why not? It's not the words in the pocket. It comes up on a screen. It comes up on a screen in a certain order and it's designed people -- for people with a mouse in fact as to where physically they point.

MR. GUTMAN: It's -- it is still a literary work, Your Honor.

QUESTION [Justice Breyer]: Because?

MR. GUTMAN: That's what Congress said. These are words.

QUESTION [Justice Breyer]: So, is the word Asia on a map make the map a literary work?

MR. GUTMAN: It fits within the definition in the statute, Your Honor, of a literary work. It also fits within 102(a)'s express terms, and on that basis we think it's -- it is both a protectible work under 102(a) and a literary work, which is also what Congress said concerning computer programs.

I'd like to, if I could, reserve my remaining time for rebuttal.

QUESTION [Chief Justice Rehnquist]: Very well, Mr. Gutman. Mr. Reback, we'll hear from you.

Oral Argument of Gary L. Reback On Behalf of Respondent

MR. REBACK: Mr. Chief Justice, and may it please the Court:

Pursuant to the patent and the copyright clause of the Constitution, Congress enacted two regimes for the granting of private monopolies. One regime -- under one regime, the grant of private monopoly is done in a wholly indiscriminate, uncritical, unexamined way, and under the other regime, the regime of patents, grants of private monopoly are made following an exacting examination and the satisfaction of very high thresholds.

Now, as Judge Boudin explained below, because of the way Congress set up the first regime, the regime of copyright, it's used for subject matter where the damage to society by a mistake in grant of protection is not all that great, where the problem of overprotection is not something that we should really worry about because even if we mistakenly grant protection, the next author can always make a near substitute.

QUESTION [Chief Justice Rehnquist]: Is there any reason to think that Congress was of this view that was expressed by Judge Boudin?

MR. REBACK: Yes, I think so, Your Honor. I think so for several reasons.

The first is that 102(a) of the statute -- the statute formerly read in 1909, all the writings of an author. And that created confusion in the case law, and the language was changed to make it clear that not all writings are copyrightable, but rather that there is a separate ambit for things that we don't worry about overprotection and a regime of patents in which we do worry about that. That's most directly set out in 102(b). That's the language that is expressly intended to keep copyright from undermining the patent system.

QUESTION [Chief Justice Rehnquist]: Well, it shows a narrowing certainly, but I would not think just the one citation you make means that Congress adopted the view the Judge Boudin expressed.

MR. REBACK: Well, Judge Boudin had a variety of things to say in his opinion.

But the point that 102(b) is intended to prevent overcompensation to the first author I think comes through from the language of the statute itself. The statute doesn't read the idea of a system is uncopyrightable. It says a system is uncopyrightable. It doesn't say the idea of a method of operation is uncopyrightable. It says a method of operation is uncopyrightable.

If we apply that, 102(b), to the Baker v. Selden situation, Selden may have had a terrific system, but people had no way to use that system, or at least to use it efficiently, until he put some textual labels on it. The same is true of Lotus' system. The only way people can use systems is through some kind of textual label, and the teaching of Baker v. Selden to us is that the bare set of words, through which people use or manipulate or operate a system, that's on the uncopyrightable side of the line.

That's what 102(b) does. It prevents the copyright law from undermining the ambit where we care about overprotection, where a mistake in grant of overprotection would do real damage to society because there's not adequacy of near substitutes.

QUESTION [Justice Kennedy]: What are the legal labels we've used to express this? Are you talking about the doctrine of merger, that is to say that the expression merges into the function? Or are you saying that we can decide and should decide this case by saying that there is a definitional distinction between expression on the one hand and method of operation on the other? I take it you could prevail under either approach.

MR. REBACK: Yes, we would I think.

But I don't think this calls for -- I think the first place to start --

QUESTION [Justice Kennedy]: I would just say it doesn't seem to me that the argument you've just made, which was a sensible one, is reflected in either of the two categories that I mentioned. If you just wanted to say, oh, well, this is very important for people to have, I suppose we could make that functional sort of judgment that this shouldn't be protected. But it seems to me that the cases require us to use different kinds of labels.

MR. REBACK: I think that --

QUESTION [Justice Kennedy]: And I need to know what kind of labels I'm supposed to use to --


QUESTION [Justice Kennedy]: -- to reach that result.

MR. REBACK: Yes, Your Honor. Yes.

The labels that were used in Baker v. Selden were the labels of system and method of operation. Those same labels are present in 102(b). That in our view is the way that this case should be resolved. Merger does --

QUESTION [Justice Ginsburg]: Mr. Reback, wouldn't that change the character and understanding of 102(b)?

I mean, all these categories come together and the idea/expression dichotomy is so basic to copyright, I thought it was assumed that every one of these process, system, method of operation -- that you have to extract out of them what is the expression, the separable expression. And sometimes there's nothing left except stop and go and sometimes there's a merger, but that you can't just say, oh, method of operation. Forget it. We don't have to worry about expression.

That seems to me a wholly different way of looking at 102(b) than runs through all of copyright. There's always the question, is there separable expression? And if the answer is no, that leads one way. But just to say this fits within the description method of operation, period, we can take it out wholesale, is something that I have not seen in anything other than this First Circuit case.

MR. REBACK: And I would argue in Baker v. Selden, Your Honor. In other words, we don't see the dichotomy between each of these words and expression. As I said, it doesn't say the idea of a system. It says a system. An expression is not itself a defined term. Sometimes expression covers things that are not tangible, like the plot of a play. In other situations, things that are tangible, like the textual labels in Baker v. Selden, are uncopyrightable.

The issue, the fundamental issue, to us of Baker v. Selden is the distinction between the protection of the utilitarian and the protection of these other things which like artistic works we don't have to worry about overprotection with respect to. That was a contorted sentence, but I think I'm trying to get that point --

QUESTION [Justice Breyer]: But even in Baker v. Selden, there was something there that was protected. There was the book. There was the explanation of it.

MR. REBACK: And so as there is here, Your Honor. There is a users manual. There is on-line help text. There are long prompts. The issue is where should the line be drawn.

What happened in this case, Your Honor, is that the district court moved the line one notch over from where it had been in Baker v. Selden. That movement had enormous ramifications. All we've ever asked for and all the First Circuit did was to put the line back where it was, where it had been 100 years.

QUESTION [Justice Breyer]: That's exactly the question. You have 469 words. They're in a certain order.

QUESTION: Commands I guess.

QUESTION [Justice Breyer]: Right. There are -- yes, the commands. And they're English words, and if they were in a book, I guess they'd certainly be copyrightable and you'd give them what Feist calls thin protection.

But they're not. They're on a screen. So, you say, okay, Baker v. Selden. It's like Mr. Selden's accounting system. And everyone, even your opponents, agree that that would be so if, in order to work the system of organization, you had to use these 469 words.

But they say Judge Keeton found you don't have to use these 469 words. You could use some other words, so you don't have to tie up that expression in order to use Mr. Lotus' brilliant system of organization.

And now, what is your response to that?

MR. REBACK: My response to that is that this case in many respects is an easier case than Baker v. Selden because in this case you have to use those words to run macros. There is that degree of blockage of barrier to entry in this situation that doesn't exist elsewhere.

QUESTION [Justice Breyer]: Okay. Point --

MR. REBACK: That's what --

QUESTION [Justice Breyer]: I've got that point, but there -- that's complicated because it's the success of their system that created that obstacle.

Is there any other point? That is, is Baker v. Selden tied to the words? You necessarily have to use this expression to get the accounting system? Or do we go beyond necessarily? And there are certainly themes in copyright law that suggest that you go beyond it in order to avoid tying up a utilitarian idea, but what's the particular point? How would you phrase the test and --

MR. REBACK: The -- I'm sorry.

The test is the bare words through which users use or operate the system is uncopyrightable. That is the system from the perspective of the user. That would be our description of the test.

QUESTION [Justice Breyer]: So, if they could get the exact system and simply use any one of 5,000 other words to operate it exactly as well, you could not protect that expression?

MR. REBACK: Whatever word -- as Mr. Gutman said, you look from the perspective of the original developer. Whatever word they choose to enable users to operate the system, that word is uncopyrightable --

QUESTION [Justice Scalia]: You don't need any word at all.

MR. REBACK: -- if there are 5 or 469.

QUESTION [Justice Scalia]: You don't need any word at all to enable the user to operate it.

MR. REBACK: I don't think you could just --

QUESTION [Justice Scalia]: You could have an instruction manual that says to do this thing, move the cursor three spaces over to the right and hit enter. You don't need a word that shows you on the screen when you move it three spaces over to the right that it's on file and when you hit enter, you get into file. You don't need any words at all.

MR. REBACK: Well, let me respond --

QUESTION [Justice Scalia]: So, how can you say that the words are inseparable from the operation when you don't even need them? You could simply have a written users manual.

MR. REBACK: I'm saying the words are inseparable from the system. But I take Your Honor's point. The issue is one of degree, as members of this Court have pointed out. I can't use the system efficiently in any respect by doing that because it requires me to use a whole wide variety of keystrokes.

And if I may make one other point, Your Honor. With --

QUESTION [Justice Scalia]: Before you go on.

MR. REBACK: Please.

QUESTION [Justice Scalia]: You could say the same thing about a users manual as far as that goes. You can't use the system without a users manual. Does that merge with the system itself as well?

MR. REBACK: No, no. It does not. And the issue is where to draw the line, and we say you draw the line between the bare words that state the system and the users manual. The line is someplace in there.

QUESTION [Justice Souter]: But does that answer their question that it's the combinations that they are trying to seek? It's not the mere words. It's the menu which is a combination of words in hierarchical order, and that -- your answer doesn't seem to go to that claim of theirs.

MR. REBACK: What they are seeking to protect is the organization of the words. The organization of those words --

QUESTION [Justice Souter]: So, the freedom of words from copyright doesn't answer their point.

MR. REBACK: No. What I'm saying is the bare set of words through which that organization is stated -- in other words, the bare set of words through which users can operate the organization or manipulate the organization -- that's what 102(b) puts off limits from copyright.

QUESTION [Justice Souter]: The word file. Somebody else can use the word file.

MR. REBACK: Absolutely.

QUESTION [Justice Souter]: Okay. They say absolutely right. But using it in the combination, the hierarchical set of orders that we have devised, that is subject to copyright.

MR. REBACK: I think --

QUESTION [Justice Souter]: In other words, you can use the words without using our menu. That's their argument.

MR. REBACK: You could use the words in a different context you mean, Your Honor --

QUESTION [Justice Souter]: In different combinations, yes.

MR. REBACK: Well, the same would be true --

QUESTION [Justice Souter]: Or to do different things for that matter.

MR. REBACK: The same would be true of the textual headings in Baker v. Selden. In other words, Baker -- Lotus makes the point that Baker used different words, but that didn't change the copyrightability of the words that Selden chose to enable people to use his system.

QUESTION [Justice Souter]: But technically someone could have come up with a different set of column headings for Selden's system and still have come up with the same results. So, isn't it the case that implicit in Selden is some kind of calculus saying it would be too socially expensive to require them to do that? And isn't that the same calculus that Judge Boudin was going through, and isn't that why this is not merely an analytical issue?

MR. REBACK: I see your point. Yes, Your Honor. And indeed, it is made all the more acute by the presence of macros because the functionality --

QUESTION [Justice Souter]: That throws up the stakes considerably.

MR. REBACK: That's right. That's right. That's what makes it the kind of situation that Your Honor is describing. I did not understand Your Honor's question and I apologize for that.

QUESTION [Justice Souter]: Well. I can't blame you for that. (Laughter.)

MR. REBACK: I did want to point out --

QUESTION [Justice O'Connor]: Of course, the -- even if some portion of this is copyrightable, as the district court would have found, it doesn't take it out of public use in the sense that presumably Lotus could license a use of its system to someone. It isn't as though this is forever unavailable to other people. It just merges into the whole economics of what it's worth to buy the right to use it. Isn't that right?

MR. REBACK: In one sense, certainly. Copyright is an economic calculus, and the issue is --

QUESTION [Justice O'Connor]: Sure.

MR. REBACK: -- do we give Lotus the ability to put up that barrier of entry or should they have to get a patent to do that. That's our point. It's not that they can't protect these words.

QUESTION [Justice O'Connor]: I find that a little difficult to swallow. I mean, the copyright law does appear at least to permit the copyright of a so-called users manual, and if that is carried out in the form of a menu command hierarchy, why isn't that protectible under the broad language of 102(a)?

MR. REBACK: I'm sorry, Your -- a users manual would be protected under the broad language of 102(a). Even --

QUESTION [Justice O'Connor]: And when it's in the form of a menu command hierarchy, why isn't it also in light of the broad language of 102(a)? I mean, at least some portion of it, the portion that is clearly original and expressive, if that is the finding of the trial court.

MR. REBACK: The -- as we point out in our brief, there are -- and as Your Honor indicates, there are 102(a) works here like the users manual. They embody these words. But I don't think the words would be 102(a) material, but if they were, in our view they'd be disqualified by 102(b). That's the learning and that's where the line is and that's what the statute says.

That -- you know, expression is not a defined term in the copyright law or in the copyright statute, and the notion that it -- that expression means something textual is not carried throughout the copyright law.

QUESTION [Justice Kennedy]: Is that why you concede -- I think you concede -- that the program code that Lotus wrote, the code that enables the machine to react to the human commands, is copyrightable?

MR. REBACK: The statute draws a line --

QUESTION [Justice Kennedy]: Am I correct that you conceded that that's copyrightable?

MR. REBACK: Absolutely, Your Honor. The --

QUESTION [Justice Kennedy]: It seems a little odd that the closer you get to the machine, the more expression there is, but when you back up, then you tell me I have to have a patent.

MR. REBACK: Well, the --

QUESTION [Justice Kennedy]: It seems to me that the closer to the human you come, the more -- the stronger the case is for expression.

MR. REBACK: The --

QUESTION [Justice Kennedy]: Your argument doesn't work quite that way.

MR. REBACK: Well, the statute draws a line between the computer program, which is protectible by copyright, and the method of operating the computer program which is not protectible by copyright. Congress --

QUESTION [Justice Ginsburg]: The First Circuit decision does, but I don't see that in the statute, especially if you read these words to be subject to the like interpretation, idea/expression, procedure/expression, process/expression. That's what -- as far as I know, the First Circuit is the only one that has said once you can call it a method of operation, it's out entirely. Forget about anything else. It's a method of operation, period. It's not copyrightable.

Tell me about an operating system. The basic --


QUESTION [Justice Ginsburg]: Is that subject to copyright?

MR. REBACK: An operating system is a computer program. A computer program is a composition. That is copyrightable. This is a very important difference in copyright law. A menu command hierarchy is a method. A computer program is not a method. It's a composition. Copyright protects compositions. It's like a method of dance notation, uncopyrightable, and choreography that is copyrightable. A method of musical notation that's not copyrightable and a musical score that is copyrightable. Language which is uncopyrightable, but compositions in language that are copyrightable.

Programs are written in command sets like the macro language. Borland's program happens to be written in the method -- the command set called C, which was created by AT&T. Copyright has always protected compositions, but has not protected the underlying command sets.

The reason the district court's decision created such an uproar is that it extended copyright from the protection of compositions like the operating system software to the protection of methods. That has never been done before. That has all kinds of ramifications of the type we've been discussing here, all untoward and should be, if attainable at all, attainable through the patent law.

QUESTION [Chief Justice Rehnquist]: What exactly is the difference between composition and method, as you see?

MR. REBACK: The method or the system includes words, syntax, and grammar, which are taken by someone who then, applying their own sweat, as the user does here with respect to a macro, and their own creativity, creates a program.

That's the difference between -- one should not confuse, we would respectfully submit, the syntax and grammar of the English language with compositions written in the English language. They're two different things in our view.

QUESTION [Justice Ginsburg]: Let's take the macros out of it.

MR. REBACK: Yes, Your Honor.

QUESTION [Justice Ginsburg]: Then, as far as I can tell, the First Circuit is -- still comes out where it is. It doesn't matter. Judge Boudin focused on that but the First Circuit didn't. The First Circuit -- it wouldn't have made any difference if no user ever made a macro.

MR. REBACK: That's right. The First Circuit views Baker v. Selden and 102(b) as we do, as creating a policy and societal judgment that you need to satisfy the high thresholds of a patent if you to -- are to control the bare words through which users manipulate or operate a system. That's where they draw the line. That's where we would draw the line and that's where we see the Court in Baker v. Selden drawing the line.

The majority opinion in the First Circuit, though, does also refer to the existence of macros in order to demonstrate that that line is an appropriate societal line because otherwise people would have to relearn a different system for every device that they would operate and --

QUESTION [Justice Ginsburg]: They added in the macros to add weight to a conclusion that they had already reached.

MR. REBACK: I would agree with that. I would agree with that, Your Honor.

QUESTION [Justice Scalia]: Mr. Reback, as I understand it, your opponent is not insisting that you cease from using the same -- what were you contrasting with composition? What is the opposite of composition?

MR. REBACK: The system or method, Your Honor.

QUESTION [Justice Scalia]: System or method. He's not insisting that you abandon his system or method. You can you could have the same thing three times over with the cursor to the right and then hit enter, and you can set it up exactly the same way so long as you don't use the same words that he chose to use in his description of it on the screen.

MR. REBACK: He's -- yes, Your Honor.

QUESTION [Justice Scalia]: You can use the very same program or method. He's not stopping you from using it.

MR. REBACK: No, no.

QUESTION [Justice Scalia]: He just doesn't want you to use the same description of it that he adopted.

MR. REBACK: We are talking terminology here, but he doesn't have any objection to me making the cursor move or making electrons run through the computer.

QUESTION [Justice Scalia]: And saying that in an instruction manual.

MR. REBACK: And saying that in an instruction manual.

QUESTION [Justice Scalia]: In your own way.

MR. REBACK: He has great exception to me allowing users to run their programs on my spreadsheet. That's what he takes exception to. Or to use my spreadsheet in the way that they have learned to use spreadsheets. They've memorized keystrokes. They've learned that system. He doesn't want them transporting that learning to my spreadsheet.

He draws the line between the totally abstract and the first words that are attached to that abstraction. We say that's not where the statute draws the line. It doesn't say idea of a system --

QUESTION [Justice O'Connor]: But Borland just made -- Borland made a wholesale copying of a very complex menu command hierarchy.

MR. REBACK: Yes, Your Honor.

QUESTION [Justice O'Connor]: I mean, just wholesale. I can't imagine a case that would present the question more starkly.

MR. REBACK: There is no utility in copying 90 percent of the menu command hierarchy because then the investment of the user in a skill set or macros wouldn't work. That's the reason it is all or nothing, and that's the reason that there is the starkness in the case.

QUESTION [Justice Ginsburg]: And maybe that's why Judge Boudin said applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit. But still, to say we're going to take something like method of operation and give it a kind of meaning that it doesn't have in other contexts --

MR. REBACK: That's how it's used in the patent law, Your Honor.

QUESTION [Justice Breyer]: But wait. It's not method of -- I have an airplane cockpit.


QUESTION [Justice Breyer]: 469 levers on it, and each one I put a label on. Those are words. Okay? I have a department store with 469 departments organized in a particular way, and each label has a -- each department has a sign over it. Each of those signs and each of those labels has a word in English. The order in which they are pasted up there is terribly important.

Now, what is it in the law of copyright that stops me from copyrighting those 469 words in the order they are on the labels in the cockpit or in the departments of the department store?

MR. REBACK: Well --

QUESTION [Justice Breyer]: What is the doctrine? How do you phrase it in English? I have a strong instinct from reading your briefs I guess and also the other side disagrees nonstop that there may be such a principle. But what is it if there is such a principle?

I don't think it's the word method of operation. I don't think it's Baker v. Selden literally. I can find theme after theme that tells us that the copyright law is not to be used so that one company will monopolize the Internet henceforth into world reality.

MR. REBACK: Right.

QUESTION [Justice Breyer]: But I think possibly that could be for Congress.

But -- so, what -- if it's the copyright law that's supposed to prevent that from happening, how does the copyright law stop them from getting the copyright on the 469 words?

MR. REBACK: I think that the copyright law stops them, and the principle is the same. I mean, to tie in Justice Ginsburg's question, all the other circuits have also held that when it's necessary for compatibility, even literal code may be copied. So, the principle is one of how much economic power do you give the person who created the words.

In the -- in -- with respect to, say, artistic works or traditional works of literature, we don't give the person through copyright enough economic power to prevent the creation of near substitutes. And in this case that's exactly the amount of economic power that's being given. That's what Judge Boudin says. Another method of operation, another system, a different set of words is not a near substitute to users who have invested in this set of words.

QUESTION [Justice Kennedy]: So, what you're suggesting is the standard is do not give a copyright that's unfair?

MR. REBACK: No, but that would be a good standard. (Laughter.)

MR. REBACK: But I don't think that I could phrase it any more clearly than they do in 102(b). Since people invest in methods of operation and since there is societal utility in having people operate efficient systems or creating efficient systems of department stores or jet cockpits, we're only going to put efficient systems of that type off limits to competition so long as you satisfy the high threshold of utility patent. You can protect it. You can get the right to license it. You can have all those rights, but you must satisfy the higher threshold. That would be our point.

QUESTION [Justice Kennedy]: In other words, if the other side wins, there's never going to be, in effect, a new program because there will never be a practical way to use that program.

MR. REBACK: It would take --

QUESTION [Justice Kennedy]: Is that in a sentence what you're saying?

MR. REBACK: I wouldn't say never, but the barrier of entry --

QUESTION [Justice Kennedy]: Almost --

QUESTION [Justice Ginsburg]: I think you can in view of what's happened. Right? Because Lotus 1-2-3 is no longer the front runner.

MR. REBACK: But the record reflects that. That's because Microsoft was able to make a compatible product because Lotus didn't sue them. Lotus didn't sue them. They had the same words. They were able to establish compatibility, and that changed the overall concept of the software industry.

I'd like to make one very important point here. It's the point made in Fogerty [v. Fantasy, Inc., 114 S. Ct 1023 (1994)]. There is a constitutional limitation here. There is the constitutional limitation of the patent in the copyright clause, and the learning of this Court from Fogerty is that every interpretation we make of the copyright statute must be an aid of the public benefit requirement of the Constitution.

QUESTION [Chief Justice Rehnquist]: Well, do you think we could throw out some part of Congress' act by saying that it wasn't an aid of the constitutional grant?

MR. REBACK: Not in this case. I read -- we read the statute as saying that with respect to the things in 102(b), Congress has decided that the protection of those things through the regime of indiscriminate grants of private monopoly puts too much off limits. Congress has made that decision.

This Court has repeatedly said that if we can't tell whether the extension of copyright in the particular case is within the congressional ambit or within the congressional purpose or not, we shouldn't take that step. We should leave it to Congress. I think that that's the case here.

QUESTION [Chief Justice Rehnquist]: What is that? Some sort of a tie counts for the runner approach?

MR. REBACK: Yes, absolutely. I would read that in --

QUESTION [Chief Justice Rehnquist]: What case do you find that in?

MR. REBACK: In [Twentieth Century Music Corp. v.] Aiken[, 422 U.S. 151 (1975)] and Sony [Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)] and Fogerty.

But I would go so far, Your -- Mr. Chief Justice, as to say that in this case Congress has made that decision. They made it in 102(b). They said that with respect to the things in 102(b) that there is such a risk of overprotection, of overcompensation to the first author, that even if some other calculation could be made of the kind that Justice Ginsburg is suggesting, we can't go that far.

QUESTION [Justice Ginsburg]: No. I wasn't suggesting that kind of calculation at all. What I was suggesting is that we are dealing with the statute and you've been featuring Judge Boudin who at the end says, some solutions, e.g., a very short copyright period for menus. So, that makes me wonder what is he doing. Menus maybe are protected too much and maybe they shouldn't be protected for as long. So, he's really struggling with this idea.

But the notion that because there may be too much protection, the Court should then revise the statute is troubling.

MR. REBACK: Oh, yes, and I would not read that as what he is saying, and we're certainly not saying that.

People routinely get patents over menu command hierarchies. IBM has done it. Lotus has applied for it in Europe. The claim of the patent covers the menu command hierarchy. They can get protection. They just want that protection without going through examination, without showing novelty or non-obviousness. They want the same degree or virtually the same degree of protection --

QUESTION [Justice Ginsburg]: But to get a copyright you need minimal creativity. Right?

MR. REBACK: That's correct.

QUESTION [Justice Ginsburg]: Don't you need a lot more originality for a patent?

QUESTION: Novelty.

QUESTION [Justice Ginsburg]: Novelty for a patent.

MR. REBACK: Right. That's reflective of the fact that we should not put off limits to competition certain kinds of things unless people satisfy those exacting requirements.

QUESTION [Chief Justice Rehnquist]: Thank you, Mr. Reback.

MR. REBACK: Thank you, Mr. Chief Justice.

QUESTION [Chief Justice Rehnquist]: Mr. Gutman, you have 2 minutes remaining.

Rebuttal Argument On Behalf of Petitioner

MR. GUTMAN: Thank you.

Mr. Reback conceded that a musical score or a choreography would be protected by copyright even though the score instructs the player in how to play his or her instrument, even though the choreography instructs the dancer in where to move his or her feet and body, and even though they can be memorized like the keystrokes of Lotus 1-2-3. Copyright has always protected instructive materials. There's nothing different here.

It is also not an argument that this particular work, through its popularity, has become too important to protect. This Court in a more important context, I would submit, answered that question definitively in Harper & Row[, Publishers v. Nation Enterprises, 471 U.S. 539 (1985)].

QUESTION [Justice Souter]: But doesn't the musical score do two things? It instructs the player, but it also defines the work of art and that is something different from the relationship between the menu command and the program.

MR. GUTMAN: Well, it explains -- in this case it explains or provides a means for someone to perform the work of art. The music exists even if there's no score. Even if no one wrote it, the music could exist.

QUESTION [Justice Breyer]: The music is not a work of commercial utility.

MR. GUTMAN: But that's not the standard.

QUESTION [Justice Breyer]: It isn't? Isn't there a difference in copyright fundamental between whether a work is a work of commercial utility? Does your case depend on that, there not being?

MR. GUTMAN: Copyright has always provided protection to commercially useful works.

And, again, any -- all of these issues only go to the question of the scope of protection, and here Judge Keeton found virtually identical copying which even would have met the Baker v. Selden necessary incidents test. That is the standard in Baker v. Selden.

The final point I wanted to touch on is that all the policy arguments about compatibility and competition do not address and do not take into account the corrective power of the market. If consumers and customers want open systems and software companies don't provide it, if it's a competitive market, they will make their wishes known by voting with their feet. Some would say Borland has said that that's what happened to Lotus.

In instances where that's not sufficient, Congress has spoken. The Copyright Act has many detailed provisions providing for compulsory licensing in instances where that was not good enough and the ordinary rules didn't apply. This is not one of those cases.

I would end with what I think was the thrust of --

QUESTION [Chief Justice Rehnquist]: Well, you have ended.

MR. GUTMAN: I just did. Thank you very much. (Laughter.)

CHIEF JUSTICE REHNQUIST: The case is submitted.

(Whereupon, at 2:00 p.m., the case in the above-entitled matter was submitted.)

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