*The Honorable John C. Godbold, Senior Circuit Judge, United States Court of

Appeals for the Eleventh Circuit, sitting by designation.

F I L E D

United States Court of Appeals

Tenth Circuit

SEP 22 1997

PATRICK FISHER

Clerk

PUBLISH

UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

MITEL, INC., a Delaware corporation,

Plaintiff - Appellant,

v.

IQTEL, INC., a Colorado corporation,

Defendant - Appellee.

No. 95-1394

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

(D. Ct. No. 95-B-900)

Eric C. Cohen, Welsh & Katz, Chicago, Illinois (Robert B. Breisblatt and Joseph

R. Marcus, Welsh & Katz, Chicago, Illinois, and Carole K. Jeffery, Davis,

Graham & Stubbs, Denver, Colorado, with him on the briefs), appearing for

Plaintiff-Appellant.

Dennis A. Graham (Robert R. Marshall, Jr., Harold R. Bruno, III, M. Gabriel

McFarland, with him on the briefs), Hopper and Kanouff, Denver, Colorado,

appearing for Defendant-Appellee.

Before TACHA, GODBOLD,*

 and HOLLOWAY, Circuit Judges.

TACHA, Circuit Judge.
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INTRODUCTION

Plaintiff Mitel, Inc. (“Mitel”) appeals the denial of its motion for a

preliminary injunction in this action for copyright infringement. 17 U.S.C.

§ 502(a). At issue is the protectability of a set of four-digit numeric instructions

known as “command codes.” Mitel created these command codes to access the

features of a piece of telecommunications hardware known as a call controller.

Mitel contends that the district court erred in denying its motion for a

preliminary injunction based upon the court’s conclusion that Mitel failed to

demonstrate a substantial likelihood that it will prevail on the merits of its claim. 

See Mitel, Inc. v. Iqtel, Inc., 896 F. Supp. 1050, 1054 (D. Colo. 1995). 

Specifically, Mitel argues that the district court erred by concluding that (1)

Mitel’s command codes are unprotectable under 17 U.S.C. § 102(b) because they

are a “procedure process, system, [or] method of operation”; (2) Mitel’s command

codes are unprotectable under the scenes a faire doctrine; and (3) Iqtel’s use of

the command codes is a fair use under the Copyright Act, 17 U.S.C. § 107. We

exercise jurisdiction pursuant to 28 U.S.C. § 1292(a)(1) and affirm.

BACKGROUND

Mitel and Iqtel manufacture competing call controllers. A call controller is

a piece of computer hardware that enhances the utility of a telephone system by
1 A very limited number of functions also permit the entry of a letter (e.g., C, D, E,

or F) to set a function at a particular level of operation. Such entry, however, may only be

accomplished by utilizing a computer keyboard and not a telephone keypad.

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automating the selection of a particular long distance carrier and activating

optional features such as speed dialing. Typically, a long distance carrier

purchases a call controller from a manufacturer like Mitel or Iqtel and installs it

on the premises of its business customer to automate that customer’s access to the

carrier’s long distance service.

I. Mitel’s Call Controller and Command Codes

Mitel began manufacturing the Smart-1 call controller for sale in 1985. In

order to activate and manipulate the features of its call controller, Mitel devised

an instruction set of over sixty four-digit numeric command codes. Mitel

published and copyrighted manuals describing how to program its call controller

by using these command codes.

A technician activates features of a call controller by dialing the four-digit

command code for a particular controller function on a touch-tone telephone or a

computer keyboard connected to the call controller. The numeric value of each

digit of a command code is generally limited to the keys on a telephone keypad,

i.e., 0-9, *, and #.1

Each command code may be broken down into separate parts, the names

and particular definitions of which are important to our analysis. The first three
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digits of a command code are known together as the “register.” For most of

Mitel’s codes, two digits of each three-digit register arbitrarily identify the

particular function selected. A third digit may identify the particular telephone

line to be accessed or the preprogrammed “route” that a call will take through the

public telephone network to its destination. Mitel numbers telephone lines and

routes sequentially. For example, the register “X27" identifies the function “Time

to Auto Answer.” By activating this function a technician may specify the period

of time the controller waits before answering an incoming call after it detects

ringing. The “X” indicates the number of the telephone line for which the feature

will be activated, 1-4 or 5 for all lines. Were a technician to enter 427, the

controller would understand that the technician wished to set the period of time to

wait before answering calls ringing on line four.

Mitel’s other registers identify features that do not apply to particular lines

or routes. The functions accessed by this latter group are identified by a leading

“0” followed by two arbitrary digits that represent the function to be accessed. 

For example, 006 stands for “RS-232 Baud Rate.” Were a technician to enter

006, the controller would understand that the technician wished to set the speed at

which the controller was to communicate with other pieces of computer

equipment, a printer for example.
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The first digit of a register that is not a line number or a route number often

represents a particular group of similar functions, e.g., a first digit of “9”

indicates a group of special programming functions. Mitel admits that it

arbitrarily selected the particular digit that represents each group of functions.

The final digit of Mitel’s command codes is known as the “description.” 

The description is a number or symbol (usually 0 through 9, *, or #) that

represents a particular setting within each function. The various possible settings

for each controller function are referred to as “values.” Thus, for each function, a

“value” is assigned to each digit in the range of possible “descriptions.” For

example, the possible descriptions and accompanying values for the function 006

(RS-232 Baud Rate) described above are:

Description Value

1 110 baud

2 300 baud

3 600 baud

4 1200 baud

5 2400 baud

6 4800 baud

7 9600 baud

Therefore, in order to set the RS-232 Baud Rate at 4800 baud, a technician would

press the digits 0066 into a touch-tone telephone keypad. The combination of
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values and descriptions vary in nature and degree from function to function. 

Thus, the description “4” stands for the value of “1200 baud” for function 006,

but stands for the value of “40 seconds” for the X27 (Time to Auto-Answer)

function.

III. Iqtel’s Call Controller, Command Codes, and Copying

Iqtel began manufacturing the IQ200+ call controller for sale in 1994. Iqtel

devised an instruction set of command codes to activate the features of its call

controller. Although the Iqtel and Mitel call controllers provide many of the same

features, to identify features of its controller, Iqtel selected “registers” that were

different from Mitel’s “registers.” Iqtel used identical “descriptions” and

“values” where the functions of the IQ200+ were the same as Mitel’s Smart-1

controller.

Because Mitel controlled a large share of the call controller market, Iqtel

concluded that it could compete with Mitel only if its IQ200+ controller were

compatible with Mitel’s controller. Iqtel reasoned that technicians who install

call controllers would be unwilling to learn Iqtel’s new set of instructions in

addition to the Mitel command code set, and the technicians’ employers would be

unwilling to bear the cost of additional training. In addition to its own set of

command codes, therefore, Iqtel designed the IQ200+ controller to accept Mitel

command codes. 
2

 For example, Mitel’s register for RS-232 Baud Rate is “006.” Iqtel’s register for

RS-232 Baud Rate is “022.” However both Mitel and Iqtel selected the same descriptions

and values for this function, namely:

1 for 110 baud

2 for 300 baud

3 for 600 baud

4 for 1200 baud

5 for 2400 baud

6 for 4800 baud

7 for 9600 baud

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In order to produce a call controller compatible with Mitel’s controller,

Iqtel copied Mitel’s command codes in three important respects. First, Iqtel

programmed the IQ200+ to accept Mitel command codes and translate them to the

corresponding Iqtel command code. Iqtel named this feature the “Mitel

Translation Mode.” Second, Iqtel facilitated technicians’ use of this mode by

publishing an appendix to its manual that listed and cross-referenced Mitel and

Iqtel command codes. Third, in its own command codes, Iqtel copied Mitel’s

“values” and the “descriptions” assigned to them for the call controllers’ common

functions.2

Iqtel’s IQ200+ proved to be highly competitive with Mitel’s Smart-1 call

controller. Mitel commenced this copyright infringement action on April 25,

1995. Mitel sought a preliminary injunction and the court heard three days of

evidence on the matter. On August 23, 1995, the district court issued its decision

denying Mitel’s motion for a preliminary injunction because Mitel failed to
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demonstrate a substantial likelihood that it will prevail on the merits of its claim. 

Mitel, Inc., 896 F. Supp. 1050.

Resting its decision on several grounds, the court found that Mitel’s

command codes are not copyrightable subject matter because they constitute a

method of operation under 17 U.S.C. § 102(b), they are unoriginal under 17

U.S.C. § 102(a), and they are dictated by external factors and unprotectable under

the scenes a faire doctrine. Id. at 1054-56. In addition, the court concluded that

if the command codes were protectable, Iqtel’s copying was a fair use of Mitel’s

codes. Id. at 1056. Mitel now appeals these determinations.

DISCUSSION

A plaintiff seeking a preliminary injunction must establish that (1) it has a

substantial likelihood of prevailing on the merits, (2) it will suffer irreparable

injury unless the injunction issues, (3) its threatened injury outweighs the injury

caused the defendant by the injunction, and (4) an injunction would not be

adverse to the public interest. Country Kids ‘n’ City Slicks, Inc. v. Sheen, 77

F.3d 1280, 1283 (10th Cir. 1996). We review the denial of a preliminary

injunction to determine whether the district court “‘abuse[d] its discretion,

commit[ted] an error of law, or [wa]s clearly erroneous in its preliminary factual

findings.’” Country Kids, 77 F.3d at 1283 (quoting Autoskill Inc. v. National
3

 We use copying as a general term which includes infringement of any of a

copyright holder’s rights as set forth in 17 U.S.C. § 106. In pertinent part, section 106

provides:

Subject to sections 107 through 120, the owner of copyright under this title

has the exclusive rights to do and to authorize any of the following: (1) to

reproduce the copyrighted work in copies . . .; (2) to prepare derivative

works based upon the copyrighted work; (3) to distribute copies . . . of the

copyrighted work to the public by sale or other transfer of ownership, or by

rental, lease, or lending . . . .

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Educational Support Systems, Inc., 994 F.2d 1476, 1487 (10th Cir. 1993))

(alterations in original).

In order to establish copyright infringement plaintiff must prove (1) that it

owns a valid copyright, and (2) that the defendant copied protectable elements of

the copyrighted work. Feist Publications Inc. v. Rural Tel. Serv. Co., 499 U.S.

340, 361 (1991); Country Kids, 77 F.3d at 1284. As to the first element, Iqtel

does not appeal the district court’s determination that Mitel owns a valid

copyright in the disputed work.

The second element requires us to consider two distinct issues. First we

must determine whether, as a factual matter, the defendant copied3

 plaintiff’s

work. Country Kids, 77 F.3d at 1284. Second, as a mixed question of law and

fact, we must evaluate whether the elements copied by the defendant are protected

by copyright. Id. As to the first issue, Iqtel admits that it copied virtually the

entire set of Mitel command codes when it created its command set and the Mitel
- 10 -

Translation Mode for the IQ200+ call controller. In addition, Iqtel undisputedly

published the codes as part of the Mitel-to-Iqtel code translation tables in IQ200+

installation manuals.

Thus, the appeal before us requires us to evaluate whether Mitel is

substantially likely to prove that the command codes copied by Iqtel are protected

by copyright. If we conclude that the codes are protectable expression, we must

then consider whether Iqtel’s copying constitutes a fair use of the command codes

under 17 U.S.C. § 107. Before analyzing whether the command codes are

protectable, however, we must address the appropriate framework for our

analysis.

I. The Analytical Framework

“Copyright protection subsists . . . in original works of authorship fixed in

any tangible medium of expression . . . from which they can be perceived,

reproduced, or otherwise communicated.” 17 U.S.C. § 102(a). Section 102(b)

limits the scope of copyright protection by providing that “[i]n no case does

copyright protection for an original work of authorship extend to any idea,

procedure, process, system, [or] method of operation . . . regardless of the form in

which it is described, explained, illustrated, or embodied.” 17 U.S.C. § 102(b).
4

 The abstractions test is a conceptual tool that helps the court separate idea from

expression. Judge Learned Hand first enunciated the approach in Nichols v. Universal

Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930):

Upon any work, and especially upon a play, a great number of patterns of

increasing generality will fit equally well, as more and more of the incident

is left out. The last may perhaps be no more than the most general

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Section 102(b) codifies one of copyright law’s fundamental

distinctions—copyright protection extends to an “author’s original expression and

not to the ideas embodied in that expression.” Gates Rubber Co. v. Bando Chem.

Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993). Thus, when considering whether a

defendant copied protectable elements of a copyrighted work, we must determine

whether or to what extent the copied portions constitute ideas, processes, systems,

or methods of operation, on one hand, or protectable expression, on the other. 

The district court relied alternatively on two means of separating Mitel’s idea

from expression: a literal application of § 102(b) and the abstraction-filtrationcomparison test.

In recent opinions this court has relied increasingly upon the conceptual

framework known as abstraction-filtration-comparison to aid in separating idea

from expression and identifying protectable expression. We utilize this approach

as follows:

First, in order to provide a framework for analysis, . . . a court should

dissect the [work] according to its varying levels of generality as 

provided in the abstractions test.4

 Second, poised with this
statement of what the play is about, and at times might consist only of its

title; but there is a point in this series of abstractions where they are no

longer protected, since otherwise the playwright could prevent the use of his

‘ideas,’ to which, apart from their expression, his property is never

extended.

The test does not identify protectable expression, “[r]ather it is merely one tool that can

be utilized to accomplish this task.” Gates, 9 F.3d at 834.

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framework, the court should examine each level of abstraction in

order to filter out those elements of the [work] which are

unprotectable. Filtration should eliminate from comparison the

unprotectable elements of ideas, processes, facts, public domain

information, merger material, scenes a faire material, and other

unprotectable elements suggested by the particular facts of the

program under examination. Third, the court should then compare

the remaining protectable elements with the allegedly infringing

[work] to determine whether the defendants have misappropriated

substantial elements of the plaintiff's [work].

Gates, 9 F.3d at 834 (footnote added). Although abstraction-filtration-comparison

analysis is particularly useful in cases involving copyright in computer programs,

we recently noted that the approach merits application in cases that extend well

beyond that narrow context. Country Kids, 77 F.3d at 1284 n.5.

As its initial basis for finding Mitel’s command codes unprotectable, the

district court applied the literal language of section 102(b) and concluded that

Mitel’s set of command codes is an unprotected method of operation or “a method

for achieving a particular result.” Gates Rubber, 9 F.3d at 836 n.13. The court

based its conclusion upon the finding that Mitel’s command codes comprise the
5

 Although not cited by the district court, the court discussed the applicability of

Lotus with the parties at oral argument.

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method by which a long distance carrier matches the call controller’s functions,

the carrier’s technical demands, and the telephone customer’s choices.

The First Circuit reached a similar conclusion in Lotus Development Corp.

v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d without opinion by an

evenly divided Court, 116 S. Ct. 804 (1996).5 Lotus concerned whether the

commands and the menu trees in which the commands were organized in the

spreadsheet program Lotus 1-2-3 constituted copyrightable subject matter. Id. at

809. The Lotus court defined “method of operation”:

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.

Lotus, 49 F.3d at 815.

Based upon this definition, the First Circuit concluded that the “menu

command hierarchy” was not protected by copyright because the hierarchy and its

components constituted a “method of operation” unprotectable under 17 U.S.C.

§ 102(b). Id. The Lotus court concluded that the question whether a work is

excluded from protection under section 102(b) logically precedes consideration of

whether the individual components of the work are “expressive.” Id. Most

significantly, the Lotus court held that otherwise protectable expression that is
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embodied in a method of operation is excluded under section 102(b) from

copyright protection because it is part of the method of operation:

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.

[W]e . . . hold that [the] expression [in Lotus’s expressive

choices in choosing and arranging command terms] 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.

Lotus, 49 F.3d at 816.

We conclude 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. 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. 

Rather, sections 102(a) & (b) interact to secure ideas for public domain and to set

apart an author’s particular expression for further scrutiny to ensure that

copyright protection will “promote the . . . useful Arts.” U.S. Const. art. I, § 8,

cl. 8. Our abstraction-filtration-comparison approach is directed to achieving this
- 15 -

balance. Thus, we decline to adopt the Lotus court’s approach to section 102(b),

and continue to adhere to our abstraction-filtration-comparison approach. See

Gates Rubber, 9 F.3d at 843 (noting the applicability of abstraction-filtrationcomparison to “menus and sorting criteria”); Autoskill, 994 F.2d at 1493, 1495

n.23 (stating that “more than literal application of § 102(b) is required”) (citing

Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1211-12 (8th Cir. 1986)).

We are mindful of the concern expressed by the Lotus court that, by its very

nature, the abstraction-filtration-comparison approach tends to produce a core of

copyrightable protectable expression that, if literally copied, would make the

copier liable for infringement. Lotus, 49 F.3d at 815. Undoubtedly, the portions

of a work to which a court applies abstraction analysis frequently contain a level

of abstraction which reveals expression that does not fall within the excluded

categories of section 102(b). 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.

Notwithstanding our endorsement of abstraction-filtration-comparison

analysis, we emphasize that the approach is valuable only insofar as it aids the

court in distinguishing protectable elements of a work from those that are

unprotectable. Not every case requires an extensive abstraction-filtration-
- 16 -

comparison analysis. Rather, “the appropriate test to be applied and the order in

which its various components are to be applied . . . may vary depending upon the

claims involved, the procedural posture of the suit, and the nature of the [works]

at issue.” Gates Rubber Co., 9 F.3d at 834 n.12. 

Where, as here, the alleged infringement constitutes the admitted literal

copying of a discrete, easily-conceptualized portion of a work, we need not

perform complete abstraction-filtration-comparison analysis. Mitel does not

claim copyright in the names of the functions that are accessed by its command

codes or in the idea of using four-digit numeric codes to manipulate the functions

of a call controller. Rather, Mitel contends that copyright protection extends only

to its selection of particular four-digit numbers that activate and manipulate the

functions of the Smart-1 call controller and to the particular “values” assigned to

the “description” digit of Mitel’s codes. Thus, we may proceed directly to the

protectability analysis that is normally subsumed in the filtration portion of the

abstraction-filtration-comparison approach.

II. Protectability Analysis

The district court concluded that Mitel’s command codes contain no

protectable expression because the expression in the command codes lacks

requisite originality and is not entitled to protection against infringement under
- 17 -

the scenes a faire doctrine. We agree with the district court that Mitel’s command

codes are largely unoriginal. Further, to the extent that the codes contain original

expression, that expression is excluded from protection under the scenes a faire

doctrine.

A. Originality

Copyright inheres only in original works of authorship. 17 U.S.C. § 102(a);

Feist Publications, 499 U.S. at 345; Gates Rubber, 9 F.3d at 837. “Original, as

the term is used in copyright, means only that the work was independently created

by the author . . . and that it possesses at least some minimal degree of creativity.” 

Feist Publications, 499 U.S. at 345. Although originality is not a “stringent”

requirement, “[t]here remains a narrow category of works in which the creative

spark is utterly lacking or so trivial as to be virtually non-existent.” Id. at 359.

Even though the district court discussed originality under section 102(a)

and method of operation under section 102(b) together, the court clearly found

that Mitel’s command codes lack originality. The district court stated that “the

numbers constituting the command codes were arbitrarily chosen and arbitrarily

assigned to each function.” Mitel, 896 F. Supp. at 1055. Relying on Toro Co. v.

R&R Prods. Co., 787 F.2d 1208, the court concluded that such arbitrariness was

insufficient to sustain a finding of originality.
6

 According to Mitel, its witnesses used the word “arbitrary” to mean that the

command codes could have been written in a variety of different ways, not only the way

that was chosen by Mitel’s engineers. Thus, Mitel contends that the expression contained

in its command codes is not subject to application of the merger doctrine. Under that

doctrine, copyrightable expression is denied protection from infringement because the

expression “is inseparable from or merged with the ideas, processes, or discoveries

underlying the expression.” Gates Rubber, 9 F.3d at 838 (citing Concrete Mach. Co. v.

Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-07 (1st Cir. 1988); see Hart v. Dan

Chase Taxidermy Supply Co., 86 F.3d 320, 322 (2d Cir. 1996) (merger of idea and

expression properly considered in the context of infringement rather than

copyrightability). Mitel fails to recognize that originality is an independent requirement

that is not satisfied merely because the merger doctrine is inapplicable. The district court

did not apply the merger doctrine to deny Mitel’s command codes protection from

infringement, and we do not rely on that doctrine to reach today’s holding.

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In Toro the Eighth Circuit rejected the copyrightability of a lawn tractor

manufacturer’s numbering of replacement parts because the numbers were

insufficiently original. Id. at 1213. When the manufacturer created each part, it

assigned the part an arbitrary identifying number. Id. The court held that the

arbitrary assignment of numbers to parts lacked any creativity or variation by

which one could distinguish authorship. Id. Like the Toro court, the district

court in this case concluded that Mitel used such minimal effort and judgment to

select the “registers” and “descriptions” that they are unoriginal under section

102(a). We agree.

Mitel’s arbitrary selection of a combination of three or four numbers

required de minimis creative effort. Mitel’s own witnesses testified to the

arbitrariness of the command codes.6

 Scott Harper, a Mitel marketer who selected
- 19 -

some of the “registers” and “descriptions,” testified that he selected the numbers

arbitrarily, without any attempt to place his mark on them. App’t App., Vol III at

807. Similarly, John Zabel, a Mitel software design engineer, testified that

Mitel’s command codes are arbitrary and largely sequential. Id. at 756. Finally,

plaintiff’s own expert testified that Mitel’s registers were arbitrary and “real close

to random,” and that there is no evidence of anyone trying to “put their mark” on

the codes. Id. at 771, 772. In addition, the record contains no evidence that

particular digits of the “register” representing logical groups of functions were

selected in a non-arbitrary manner. We agree with the district court that “‘the

random and arbitrary use of numbers in the public domain does not evince enough

originality to distinguish authorship.’” Order at 9 (quoting Toro, 787 F.2d at

1213).

Further, purely sequential elements of the codes are not original under

section 102(a). The “descriptions” are strictly sequential and matched with

increasing incremental “values.” The concept of numbering registers and

descriptions in ascending sequence is analogous to arranging telephone entries in

alphabetical order. See Feist, 499 U.S. at 362-63. Both of these arrangements are

obvious and insufficiently creative to constitute original expression under section

102. Id. Thus, Mitel’s arbitrary assignment of particular numbers to particular

functions and its sequential ordering in registers and descriptions “lack[] the
- 20 -

modicum of creativity necessary to transform mere selection into copyrightable

expression.” Id. at 362.

We must also consider the originality of the remaining component of

Mitel’s command codes—the content of the “values” created by Mitel and

assigned to its “descriptions.” Mitel devised the “values” to set each function at a

particular level of operation. For example, the possible “values” or settings for

the function 006 (RS-232 Baud Rate) described above are 110 baud, 300 baud,

600 baud, 1200 baud, 2400 baud, 4800 baud, and 9600 baud. As another

example, upon the failure of a call sent over a particular telephone network route,

the technician can activate the “R58” function which tells the controller how to

respond to the failure. The possible values for the function include several

combinations of redialing over another route or reattempting the call over the

same route again before trying another route.

Unlike the merely arbitrary or sequential registers and descriptions

discussed above, Mitel’s values reveal “‘the existence of . . . intellectual

production, of thought, and conception.’” Feist Publications, 499 U.S. at 362

(quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 59-60 (1884))

(omission in original). We find that the effort required of Mitel’s employees to

devise appropriate values for the wide variety of individual functions reflects at

least the “‘minimal degree of creativity’” to qualify as an “original” work of
- 21 -

authorship. Autoskill, 994 F.2d at 1495 n.23 (quoting Feist Publications, 499

U.S. at 345)). Thus, we must further evaluate whether the expression found in

Mitel’s values is protected from infringement or excluded from protection by the

scenes a faire doctrine.

2. Scenes a Faire

The district court concluded that Mitel’s command codes should be denied

copyright protection under the scenes a faire doctrine because they are largely

dictated by external factors such as hardware compatibility requirements and

industry practices. Under the scenes a faire doctrine, 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. Gates Rubber, 9 F.3d at 838; Autoskill, 994 F.2d at

1494.

Granting copyright protection to the necessary incidents of an idea

would effectively afford a monopoly to the first programmer to

express those ideas. Furthermore, where a particular expression is

common to the treatment of a particular idea, process, or discovery, it

is lacking in the originality that is the sine qua non for copyright

protection.

Gates Rubber, 9 F.3d at 838. For example, “[f]oot chases and the morale 

problems of policemen, not to mention the familiar figure of the Irish cop, are 

venerable and often-recurring themes of police fiction,” and are unprotectable

scenes a faire. Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986).
- 22 -

We have extended this traditional copyright doctrine to exclude from

protection against infringement those elements of a work that necessarily result

from external factors inherent in the subject matter of the work. For computerrelated applications, these external factors include hardware standards and

mechanical specifications, software standards and compatibility requirements,

computer manufacturer design standards, industry programming practices, and

practices and demands of the industry being serviced. See Gates Rubber, 9 F.3d

at 838; Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 709-10 (2d Cir.

1992); Plains Cotton Coop. Assoc. v. Goodpasture Serv., Inc., 807 F.2d 1256,

1262 (5th Cir. 1987) (declining to extend protection to a computer program where

the similarities between the plaintiff’s and defendant’s programs were dictated by

“the externalities of the cotton market” and by other “market factors”); see also 4

MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 13.03[F][3], at

13-130-141 (1997) [hereinafter NIMMER]. Because these factors concern

functional aspects of a work, the scenes a faire doctrine plays a particularly

important role in ensuring that copyright rewards and stimulates artistic creativity

in a utilitarian work “in a manner that permits the free use and development of

non-protectable ideas and processes” that make the work useful. Computer

Assocs., 982 F.2d at 711.
- 23 -

In its discussion of scenes a faire, the district court properly focused on the

factual circumstances surrounding Mitel’s selection of registers, descriptions, and

values. A portion of its analysis, however, discussed whether external factors

such as market forces and efficiency considerations justified Iqtel’s copying of

the command codes. The court’s analytical focus should have remained upon the

external factors that dictated Mitel’s selection of registers, descriptions, and

values. By excluding expression dictated by external factors from protection

against infringement, copyright law secures for public use the “necessary

incidents” of ideas and processes and strikes the appropriate “‘balance between

competition and protection.’” Computer Assocs., 982 F.2d at 711 (quoting Apple

Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983)). 

Thus, the scenes a faire doctrine identifies and excludes from protection against

infringement expression whose creation “flow[ed] naturally from considerations

external to the author’s creativity.” NIMMER § 13.03[F][3], at 13-131.

Nonetheless, in this case the district court correctly found that much of the

expression in Mitel’s command codes was dictated by the proclivities of

technicians and limited by significant hardware, compatibility, and industry

requirements. In particular, the record contains substantial evidence supporting

the conclusion that Mitel’s values should be excluded from protection against

infringement under the scenes a faire doctrine.
7

 DTMF stands for “Dual Tone Multiple Frequency” and is merely the acronym for

what most of us know as “touch-tone” telephone dialing.

- 24 -

External factors frequently dictated Mitel’s selection of particular values to

activate the range of call controller functions. For example, many of the values

were selected by Mitel’s product management department in response to customer

demand or to ensure compatibility with equipment already installed in the central

offices of Mitel’s customers. Frequently, the values were divided in equal

increments across a numerical range, and the descriptions and the value

increments were matched in ascending steps. Standard programming conventions

such as “1” for “on” and “0” for “off” determined some of the descriptions and

values. App’t App., Vol. III at 757. In addition, some of the values for the set of

command codes that were actually copied were dictated by the need for

compatibility with older-model Mitel call controllers or the limits on the

capabilities of the controller itself. Id. Other values were dictated by the limits

inherent in the public telephone networks that the call controllers accessed. For

example, the vice president of Iqtel, Don Jorgenson, testified that the phone

company is able to recognize touch-tone numbers only when the tone lasts 40

milliseconds or longer. Id. Thus, the minimum length of time that a technician

can set a touch-tone to last using Mitel’s command code X02 (“DTMF7 Dialing

Rates”) or Iqtel’s command code 17L (“DTMF Tone Length) is 40 milliseconds. 
- 25 -

App’t App., Vol. II at 283, 456. In sum, although Mitel’s values constitute nonarbitrary original expression, they are unprotectable as scenes a faire because they

were dictated by external functionality and compatibility requirements of the

computer and telecommunications industries.

Consideration of Mitel’s motion for a preliminary injunction did not require

the district court to conduct an exacting examination and analysis of every

component of every command code. Rather, the district court must determine

upon the evidence before it whether the plaintiff is substantially likely to succeed

on the merits of its action. The record in this case contains ample evidence that

Mitel is not substantially likely to succeed on the merits. The doctrines of

originality and scenes a faire render Mitel’s command codes unprotected by

copyright. Therefore, we need not consider whether Iqtel’s copying of Mitel’s

command codes constituted fair use under 17 U.S.C. § 107.

CONCLUSION

Mitel has failed to demonstrate that its command codes contain expression

that is original and goes beyond the necessary incidents of the ideas which the

codes express. We therefore conclude that the district court did not abuse its

discretion in denying Mitel’s motion for a preliminary injunction. The decision of

the district court is AFFIRMED.