*

Honorable Charles E. Simons, Jr., Senior U.S. District

Judge for the District of South Carolina, sitting by designation. 

United States Court of Appeals,

Eleventh Circuit.

No. 94-5262.

MITEK HOLDINGS, INCORPORATED, MiTek Industries, Incorporated,

Plaintiffs-Appellants,

v.

ARCE ENGINEERING COMPANY, INCORPORATED, Defendant-Appellee.

Aug. 5, 1996.

Appeal from the United States District Court for the Southern

District of Florida. (No. 91-2629-CIV-KMM), K. Michael Moore,

Judge.

Before BIRCH and CARNES, Circuit Judges, and SIMONS*

, Senior

District Judge.

BIRCH, Circuit Judge:

This case presents our circuit with an issue of first

impression, namely the scope of copyright protection afforded to

nonliteral elements of a computer program. The holder of copyright

registrations in three versions of a wood truss layout program

brought an infringement action against a competitor, alleging

infringement of several of the program's nonliteral elements,

including the menu and submenu command tree structure and other

elements of the user interface. At the conclusion of a bench

trial, the district court found that the copyright registrant's

program contained largely unprotectable elements, and in those

instances where elements were protectable and appropriated by the

putative infringer, it deemed the copying to be de minimis.

Therefore, the district court entered judgment for the putative
 1

We refer to Arce Engineering as "ArcE", rather than "Arce,"

to avoid confusion with the name of one of the principals of

ArcE, Antonio Arce. 

 2This program has also been called "LayoutPro Layout

Program" and the "FramePro Layout Program." 

 3MiTek did not file suit until after it had registered its

claim of copyright in all three versions of the ACES program. 

infringer on the copyright infringement claim and denied the

copyright registrant's motion for a preliminary injunction. For

the reasons that follow, we AFFIRM the judgment of the district

court.

I. BACKGROUND

Plaintiffs-appellants MiTek Holdings, Inc. and MiTek

Industries, Inc. ("MiTek"), hold registration certificates for

their claims of copyright in three versions of the ACES wood truss

layout program, known as ACES Layout versions 1, 2, and 3.

Defendant-appellee Arce Engineering Company, Inc. ("ArcE"),1

 is the

producer of a layout program known as TrussPro.2 The only version

of TrussPro at issue in this case is TrussPro Layout Program

Version 1, and we will refer to that ArcE program as "TrussPro."

There is no dispute that the ACES program, at least its first two

versions, were released prior to the publication of TrussPro. A

few months after ArcE released TrussPro, MiTek filed suit against

ArcE, alleging copyright infringement and seeking a preliminary

injunction.3 The district court conducted a bench trial, and in

its findings of facts and conclusions of law, found in favor of

ArcE. See MiTek Holdings, Inc. v. Arce Eng'g Co., 864 F.Supp. 1568

(S.D.Fla.1994). Before we address the numerous issues on appeal,

it is important to provide some background as to both the wood
 4

A wood truss "layout program" is a computer program that

graphically draws and places wood trusses on the walls of a

building structure, indicating the size and location of the

trusses. 

 5Given the programs' subject matter, roof truss design, it

is inevitable that there will be similarities, particularly in

the output. "Substantial similarity," in the copyright context,

refers to appropriation by the putative infringer of the

truss industry and the relationship between the parties to this

litigation.

Both MiTek and ArcE are in the business of supplying products

and services to the wood truss industry. A wood truss is group of

wood beams, usually triangular in shape, that supports a roof; the

beams in a wood truss are held together by connector plates. Wood

trusses often are not constructed by the builder, but rather by

off-site "fabricators" who build roof trusses to certain

specifications and then deliver them in bulk to building sites.

The use of off-site fabricators reduces construction time as well

as labor costs. Prior to the advent of personal computers,

fabricators would design and arrange the wood trusses by engaging

an engineer to obtain the necessary truss specifications and

drawings for the planned structures. After fabricators began using

personal computers, layout programs,4

 like the ones at issue in

this case, were developed to permit fabricators to do their own

engineering and related work for their building designs, thereby

eliminating the need to employ an engineer.

 In this case, the parties disagree over whether or not the

layout programs are "substantially similar" in a copyright context,

but both sides agree that the programs at issue were written by the

same author, Emilio Sotolongo ("Sotolongo").5

 In 1988, Sotolongo
"fundamental essence or structure" of a protected work. Computer

Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 701 (2d

Cir.1992) (citation omitted). 

 6The district court found that "[a]t this time, another

software company, Online, had developed a program known as

"Trusstar' which used intersecting planes and was considered to

be superior to existing layout programs that could only depict

truss layouts two-dimensionally." MiTek, 864 F.Supp. at 1572. 

In order to have a better understanding of what Aces wanted to

develop, Sotolongo visited one of Aces's clients, a truss

manufacturer, to observe the operation of Online's Trusstar

program firsthand. It was the goal of Aces for Sotolongo to

write a program that, while utilizing some of the same ideas used

in Trusstar, would be more "user friendly." The district court

found that Sotolongo intended on accomplishing this by having his

program "logically follow[ ] the steps a draftsman would go

through in developing a layout by hand." Id. 

 7

As noted by the district court, the market for wood truss

layout programs "had grown increasingly competitive by early

1989, when layout programs were being marketed by other software

companies, including Online, Alpine, Hydro-Air and Gang-Nail." 

MiTek, 864 F.Supp. at 1572. 

began working in Miami for Advanced Computer Engineering

Specialties, Inc. ("Aces"), the software arm of the Bemax Companies

("Bemax"). Bemax sold connector plates to the wood truss industry.

Sotolongo was employed by Aces to develop a wood truss layout

program that depicted three-dimensional representations of truss

layouts.6 Version 1 of the ACES program was published in March of

1989, upon display of the program at a trade show. ACES Version 1

was well received by the wood truss industry. 7 However, since

Version 1 did not have its own printing functions, Sotolongo was

asked to develop an improved version that would permit the user to

print the layout. Aces released Version 2 in September of 1990.

This version not only featured printing capabilities, but also had

expanded memory capacity and a slightly different screen
 8

Version 1 featured a three-box visual display, whereas

Version 2 featured a four-box visual display; the extra box was

the result of the addition of a top bar main menu. The other

three boxes are the work space area, which occupies most of the

screen, the command trees running down the right side of the

screen, and a command module running along the bottom of the

screen. 

 9It is undisputed that Sotolongo wrote the three ACES

programs as a work-for-hire employee, and he advances no claim

that the copyrights belong to him, not MiTek (via assignment from

arrangement.8 In March of 1991, ACES Version 3 was published,

featuring some enhanced graphics capabilities.

During the process of developing Version 3 of the ACES

program, Sotolongo was approached by Art Sordo, MiTek's President

of Operations, to gauge his interest in working for MiTek. MiTek

wanted Sotolongo to compose a new truss layout program that was

superior to the ACES program. Although MiTek offered Sotolongo a

significant raise, he declined the offer, in large part because

MiTek made its programmers maintain detailed logs and notes of the

steps taken in writing their programs. Sotolongo testified that he

preferred to work without notes, and that he would often

conceptualize program segments in his mind. Sotolongo advised Aces

of the MiTek offer and explained his reasons for rejecting it. He

was concerned, however, with rumors that MiTek was going to acquire

Aces and he asked Aces about this. Sotolongo was assured that the

acquisition was not going to occur, and as a reward for his

loyalty, he was given a raise.

Contrary to what Sotolongo was advised, MiTek purchased Aces

for $2.5 million on April 1, 1991. As part of the purchase, MiTek

received an assignment of Aces's copyrights in the layout programs

at issue in this case.9

 Eugene Toombs, the president and chief
Aces). See 17 U.S.C. § 201(b) (1996). 

 10The district court noted that "[t]he Aces programs

mimicked a Windows-type program by giving the user the option of

either typing in commands by hand or using a mouse to activate

functions of the program through the use of pull-down menus." 

MiTek, 864 F.Supp. at 1574. Although the program mimicked a

Windows-type environment, it still was not as user-friendly, for

it lacked certain distinctive features that generally appear in

application programs written for Windows. As the district court

noted, "[t]hese features include the use of icons instead of

words, a "frame' around the program which contains certain

elements such as a "button' at the top left, scroll bar arrows at

executive officer of MiTek, testified at trial that "the reason we

paid the price we did [for Bemax/Aces], very frankly, was because

of the software," and he further stated that the ACES layout

program was the "key" to the software. R6-485. After the sale was

announced, Sotolongo inquired of MiTek if its preacquisition offer

was still open. He was told that it was not, since MiTek now had

acquired the intellectual property rights to the ACES program.

MiTek did offer Sotolongo a job, but at a salary lower than what

was previously offered.

At approximately the same time, Antonio Arce, one of the

principals of ArcE, approached Sotolongo and recruited him to come

work for ArcE. ArcE owned a layout program, but it only operated

on Hewlett Packard equipment, and ArcE wanted Sotolongo to develop

a program that functioned in the Microsoft Windows ("Windows")

environment on International Business Machines Corp. ("IBM")

compatible computers. Arce testified that he was aware that

Sotolongo had been the principal programmer for all three versions

of the ACES program. The ACES programs, however, were written for

the MS-DOS ("DOS") operating system, which was starting to be

replaced by the more user-friendly Windows operating system.10
the right and the bottom, and a menu bar at the top." Id. In

addition, according to MiTek's expert witness, "[a] Windows

program also has certain file access features, help features, and

printing features different from traditional DOS programs." Id.

For a comparison of the main menu bar of the ACES program (DOS)

with that of TrussPro (Windows), see Appendix A. 

 11The district court found that Sotolongo did not refer to

any notes regarding the ACES programs because he had not taken

any, and that he erased all of the code that he had relating to

the ACES layout programs. MiTek, 864 F.Supp. at 1574. MiTek

presented no evidence to the contrary. 

 12Version 1 of the ACES layout program corresponds to claim

of copyright registration number TX-3-175-806, effective November

6, 1991. This registration was later corrected by supplemental

registration number TX-3-564-806, effective September 3, 1993. 

The supplemental registration was made in order to correct the

date of first publication, which was originally listed

incorrectly as February 11, 1989. It was corrected to reflect

the correct date of publication, March 10, 1989. MiTek, 864

F.Supp. at 1474 n. 2.

Version 2 of the ACES program is covered by claim of

copyright registration number TX-2-934-789, effective

October 3, 1990. This registration was later corrected by

supplemental registration TX-3-175-804, effective November

6, 1991. The supplemental registration was made in order to

correct a spelling error and to correct the date of first

publication to September 26, 1990. The original

registration had been filed by Aces prior to its acquisition

by MiTek, and it misunderstood the term "date of

publication" to refer to the date of the publication of the

first version of the program, not to the date of the

publication of the separate and derivative work. Id. at n.

3.

Sotolongo accepted ArcE's offer of employment. Arce testified

that he instructed Sotolongo to write the new layout program "from

scratch," not relying on any source or object code from the ACES

programs.11 In August of 1991, Sotolongo completed TrussPro, and

customer testing of the program began shortly thereafter. By early

November, Aces had released Version 3 of its layout program. On

November 15, 1991, MiTek filed suit against ArcE, alleging

copyright infringement.12 ArcE counterclaimed that MiTek's
Version 3 of the ACES layout program corresponds to

claim of copyright registration number TX-3-175-805,

effective November 6, 1991. The date of first publication

is listed as March 13, 1991. All of these claims of

copyright were properly assigned to MiTek when it acquired

Aces. Id. at 1574. See also 17 U.S.C. § 201(d). 

 13ArcE does not appeal the district court's dismissal of its

abuse of process counterclaim. Thus, that is not before us on

appeal. 

institution of the action constituted an abuse of process under

Florida law. On December 9, 1993, the district court granted

MiTek's motion to dismiss ArcE's counterclaim, finding that an

abuse of process claim cannot be based solely on the filing of an

allegedly meritless complaint.13 MiTek, 864 F.Supp. at 1574. On

that same day, the district court granted MiTek's motion to waive

a jury trial. MiTek elected not to seek actual damages in the

case, but rather limited itself to statutory damages and attorneys'

fees pursuant to 17 U.S.C. §§ 504(c) & 505. Accordingly, it had no

constitutional or statutory right to a jury trial. See Cable/Home

Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 852-53

(11th Cir.1990) (noting that "in an equitable copyright

infringement seeking only minimum statutory damages and injunctive

relief, there is "no constitutional or statutory right to a jury

trial' ") (quoting Twentieth Century Music Corp. v. Frith, 645 F.2d

6, 7 (5th Cir. Unit B May 1981) (per curiam)). A six-day bench

trial was held in December, at the conclusion of which the district

court ruled in favor of ArcE.

II. ISSUES ON APPEAL

On appeal, MiTek asserts that the district court erred in:

(1) failing to separate copyrightable expression in the ACES
 14Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693,

706-11 (2d Cir.1992). See also Bateman v. Mnemonics, 79 F.3d

1532, 1543-46 (11th Cir.1996) (discussing and applying the Altai

test). 

program from the program's ideas, because it failed to perform an

abstraction under the Altai14 abstraction-filtration-comparison test

or failed to undertake a similar means of analysis; (2) finding

that the menu and submenu command tree structure in the ACES

program is an uncopyrightable "process," based on its failure to

abstract; (3) concluding that the menu and submenu command tree

structure is an uncopyrightable "process" because of its erroneous

finding of fact that the menu and the submenu command tree

structure of the ACES program mimics the way a draftsman draws such

a layout by hand; (4) failing to consider the copyrightability of

the ACES program as a whole, including the combination of elements

that themselves may not be copyrightable; (5) applying the wrong

standard in comparing the programs at issue in this case; and (6)

finding that ArcE's copying of the copyrightable elements of the

ACES program was de minimis. We will address these issues in turn.

III. DISCUSSION

A. Claims of Copyright Infringement

 To establish copyright infringement, MiTek must prove "(1)

ownership of a valid copyright, and (2) copying of constituent

elements of the work that are original." Feist Publications, Inc.

v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296,

113 L.Ed.2d 358 (1991); see also Bateman v. Mnemonics, Inc., 79

F.3d 1532, 1541 (11th Cir.1996). A plaintiff satisfies Feist 's

first prong by demonstrating that "the work as a whole is
original," and that it has "complied with applicable statutory

formalities." Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d

807, 813 (1st Cir.1995), aff'd by an equally divided Court, ---

U.S. ----, 116 S.Ct. 804, 133 L.Ed.2d 610 (1996). The Copyright

Act provides that "[i]n any judicial proceedings the certificate of

a registration made before or within five years after first

publication of the work shall constitute prima facie evidence of

the validity of the copyright and of the facts stated in the

certificate." 17 U.S.C. § 410(c) (1996). "Once the plaintiff

produces a certificate of copyright, the burden shifts to the

defendant to demonstrate why the claim of copyright is invalid."

Bateman, 79 F.3d at 1541.

In this case, Feist 's first prong is not at issue, because

ArcE does not contest the validity of the copyright registrations

for the three versions of the ACES program. What is at issue is

Feist 's second prong, namely whether ArcE has copied constituent

elements of the ACES programs that are original. As the Tenth

Circuit stated, "[t]his question involves two separate inquiries:

1) whether the defendant, as a factual matter, copied portions of

the plaintiff's program; and 2) whether, as a mixed issue of fact

and law, those elements of the program that have been copied are

protected expression and of such importance to the copied work that

the appropriation is actionable." Gates Rubber Co. v. Bando Chem.

Indus., Ltd., 9 F.3d 823, 832 (10th Cir.1993).

 Proof of copying as a factual matter may be shown either by

direct evidence, or in the absence of direct evidence, it may be

inferred from indirect evidence demonstrating that the defendant
had access to the copyrighted work and that there are probative

similarities between the allegedly infringing work and the

copyrighted work. Id.; see also Bateman, 79 F.3d at 1541. Even

if the court finds that the putative infringer copied portions of

the copyright owner's program, that is not the end of the inquiry.

Copyright infringement occurs only if one copies protected elements

of a copyrighted work; in other words, the portion of the

copyrighted work that is copied must "satisfy the constitutional

requirement of originality as set forth in Article I, § 8, cl. 8."

Bateman, 79 F.3d at 1542; see also Feist, 499 U.S. at 345-46, 111

S.Ct. at 1287-88 (noting that "[t]he sine qua non of copyright is

originality," as well as emphasizing that it is a "constitutional

requirement"). As the Court in Feist noted, "the mere fact that a

work is copyrighted does not mean that every element of the work

may be protected." Id. at 348, 111 S.Ct. at 1289.

 Significantly, the Copyright Act expressly states that:

In no case does copyright protection for an original work

of authorship extend to any idea, procedure, process, system,

method of operation, concept, principle, or discovery,

regardless of the form in which it is described, explained,

illustrated, or embodied in such work.

17 U.S.C. § 102(b) (1996) (emphasis added). Thus, in order for a

plaintiff to prevail on a claim of copyright infringement, the

court must find not only that the portion of the work copied is

original and thus protectable, but also that "the copying of

copyrighted material was so extensive that it rendered the

offending and copyrighted works substantially similar." Lotus, 49

F.3d at 813. In this case, the key inquiry is determining whether

the elements of the program that were allegedly copied are original
and hence protectable.

B. The District Court Opinion

 On appeal, the district court's conclusions of law are

reviewed de novo. Worthington v. United States, 21 F.3d 399, 400

(11th Cir.1994). A district court's findings of fact in a bench

trial "shall not be set aside unless clearly erroneous."

Fed.R.Civ.P. 52(a). "A finding is clearly erroneous when the

reviewing court, after assessing the evidence, "is left with [the]

definite and firm conviction that a mistake has been committed.' "

Worthington, 21 F.3d at 400 (quoting United States v. United States

Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746

(1948)). Applying these standards of review, we examine seriatim

the six issues presented.

1. Failure to Perform an Abstraction Under the Altai AbstractionFiltration-Comparison Test

 MiTek asserts that although the district court purported to

apply the abstraction-filtration-comparison test of Computer

Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.1992), it

failed not only to understand the test, but also to apply it

properly. More specifically, MiTek argues that the district court

erred in finding that no abstraction or similar type of analysis

was necessary. This finding was based on the district court's

determination that since MiTek had "identified 18 non-literal

elements of its layout programs that it contends are entitled to

copyright protection and which the Defendant infringed upon," the

court would "limit its inquiry as to the copyrightability of these

18 elements designated by the Plaintiff." MiTek, 864 F.Supp. at

1579. The district court concluded that it did not need to
undertake any abstraction, since MiTek had done this for it.

Accordingly, the district court proceeded directly to step two of

the Altai test, i.e., filtration.

MiTek is correct in asserting that the district court did not

further abstract the list of eighteen elements that MiTek presented

as being expressive and original elements of the three versions of

the ACES program. However, the district court did not err in

failing to further abstract the features that MiTek presented to it

in its Proposed Findings of Fact and Conclusions of Law as being

"original at the time they were first incorporated into those

versions of the ACES Layout Program." R2-104-10. During the bench

trial, one of MiTek's experts was questioned about an exhibit that

he had prepared, which he stated contained the "expressive features

in the Aces layout programs Versions 1, 2 and 3" that he deemed to

be "original." R5-367-68; see also Plaintiff's Exh. 18L, pp. 4-5.

This same list was presented to the court by MiTek in its Proposed

Findings of Fact and Conclusions of Law. R2-104-10-12. In other

words, the district court took at face value MiTek's

representations as to what elements of the ACES program it

considered to be protectable expression; in accepting MiTek's

representations, the district court committed no error.

 What MiTek apparently fails to appreciate is that the

ultimate burden is on the copyright holder to prove infringement.

Therefore, if the copyright holder presents the court with a list

of features that it believes to be protectable (i.e., original and

outside of 17 U.S.C. § 102(b)), the court need not further abstract

such features. Perhaps the best approach for a district court in
 15The "literal elements" of a computer program are its

source and object code. Source code is a symbolic language that

humans can read, whereas object code is a translation of the

source code into a series of zeros and ones that is readable by a

computer. For a more detailed description of source and object

code and the issues related to computer code, see Bateman, 79

F.3d at 1539 n. 17 & n. 18. In this case, we are concerned not

with literal elements of a computer program, because MiTek

concedes that the source and object codes of the two programs are

not substantially similar. What is at issue are the "nonliteral

elements" of a program, which are the products that are generated

by the code's interaction with the computer hardware and

operating program(s). Examples of nonliteral elements of a

computer program include its screen displays and the main menu

and submenu command tree structure contained thereon. 

 16The Altai test was formulated "to determine whether the

nonliteral elements of two or more computer programs are

substantially similar." Altai, 982 F.2d at 706. The Altai case

was concerned with the nonliteral copying of the structure of a

computer program. In other words, there was no verbatim copying

of the source or object code (which would be literal copying of a

literal element), but rather, there were allegations of

substantial similarity (i.e., nonliteral copying) of nonliteral

elements, namely parameter lists, macros, and general flow

any computer program infringement case, whether involving literal

or nonliteral elements,15 is for it to require the copyright owner

to inform the court as to what aspects or elements of its computer

program it considers to be protectable. This will serve as the

starting point for the court's copyright infringement analysis.

While it is not clear that the district court specifically

requested this list, or if MiTek offered it to the court, the

desired result nonetheless was achieved, because MiTek provided the

court with such a delineation. After submitting a specification of

the elements that it deemed to be protectable, MiTek cannot now

argue that the district court failed to further abstract the

elements of its own designation of protectable features. The

purpose of the abstraction portion of the Altai test is to enable

courts to separate protectable expression from unprotected ideas,16
charts. Id. at 702. It is very important to differentiate

between both literal and nonliteral copying, as well as between

literal and nonliteral elements of a computer program. The

latter use of the terms "literal" and "nonliteral" are as terms

of art, whereas the former are not. However, courts

unfortunately often fail to distinguish between the two, or

simply mischaracterize what is at issue in a certain case. For

instance, the Lotus court stated that "[w]hile the Altai test may

provide a useful framework for assessing the alleged nonliteral

copying of computer code, we find it to be of little help in

assessing whether the literal copying of a menu command hierarchy

constitutes copyright infringement." 49 F.3d at 815. The

problem with this statement is that the Altai test was designed

to help assess nonliteral copying of a nonliteral element, not

nonliteral copying of computer code (a literal element). While

this slight misstatement has no effect on the ultimate outcome of

Lotus (since it is a literal copying case, not a nonliteral

copying case), it is an example of how imprecise language in

computer copyright cases can create confusion and conceivably

lead to a misreading of what the court is trying to say. 

Therefore, in this case, we will attempt to be precise—we are

dealing with the alleged nonliteral copying of nonliteral

elements (i.e., user interfaces) of a computer program. 

 17As the district court noted, "[a] "menu,' in computer

parlance, is a graphical user interface employed to store

information or functions of the computers in a place that is

convenient to reach, but saves screen space for other images." 

864 F.Supp. at 1580 n. 11. In both the ACES and TrussPro

programs, there are two separate menus of command choices, one

running across the top of the screen, and another running along

the right-hand side of the screen. A "submenu" is an additional

set of options that relates to a prior menu selection. 

 18A "command tree" or "command tree structure" informs the

user, in a hierarchical fashion, of the options available, and

and in this case, MiTek presented this analysis to the court.

Therefore, there is no merit to MiTek's claim that the district

court erred in failing to perform an abstraction under the Altai

test or in failing to undertake a similar type of analysis.

2. The ACES Menu and Submenu Command Tree Structure is an

Uncopyrightable Process

 MiTek also contends that the district court, in failing to

abstract the ACES program's menu17 and submenu command tree

structure,18 erred in concluding that it is a "process" and thus
also interacts with the user in requesting information from the

user in order to utilize the program. 

 19MiTek seems to misapprehend the fundamental principle of

copyright law that copyright does not protect an idea, but only

the expression of the idea. The idea-expression dichotomy is

clearly set forth in 17 U.S.C. § 102(b), which by its express

terms prohibits copyright protection for "any idea, procedure,

process, system, method of operation, concept, principle, or

discovery, regardless of the form in which it is described,

explained, illustrated, or embodied in such work." 17 U.S.C. §

102(b). Were we to grant copyright protection to MiTek's user

interface, which is nothing more than a process, we would be

affording copyright protection to a process that is the province

of patent law. As the Federal Circuit stated, "patent and

copyright laws protect distinct aspects of a computer program." 

Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 839

foreclosed from copyright protection by 17 U.S.C. § 102(b).

Although the copyrightability of nonliteral elements of a computer

program is an issue of first impression for our circuit, basic

principles of copyright law guide us in addressing it.

 The district court found that "the method the Aces Layout

Programs follow, including the menu and the sub-menu command tree

structure, is a process that is not entitled to copyright

protection." 864 F.Supp. at 1580. The district court's conclusion

was based principally on its finding that "the means by which the

Aces Layout Programs undertake their task of drafting roof truss

planes mimic the steps a draftsman would follow in designing a roof

truss plan by hand." Id. MiTek argues that the district court's

failure to abstract the ACES menu and submenu command tree

structure beyond the level at which MiTek presented it to the

district court led it to conclude that it is unprotectable as a

process. MiTek contends that an abstraction should have been

performed by the court and that such an abstraction would have

discovered substantial protectable expression.19
(Fed.Cir.1992). Patent law "provides protection for the process

or method performed by a computer in accordance with a program,"

whereas copyright protects only "the expression of that process

or method." Id. If, however, the patentable process and its

expression are indistinguishable or inextricably intertwined,

then "the process merges with the expression and precludes

copyright protection." Id. at 839-40. Such is the case with the

menu and the submenu command tree structure of the ACES program. 

 20Even were we to conclude that section 102(b) does not

prohibit the ACES main menu and submenu command tree structure

from being entitled to copyright protection, MiTek would not

prevail on this issue. This feature of the ACES programs is

unoriginal and not entitled to copyright protection. The look of

the ACES program is basically industry standard for computer

aided-design ("CAD") programs, with the menu bars running across

the top and the right, and the large work area occupying most of

the screen. In addition, based on the district court's

conclusion that the ACES programs "mimic the steps a draftsman

would follow in designing a roof truss plan by hand," a

conclusion with which we find no fault, the structure of the menu

 The First Circuit recently addressed the issue of "[w]hether

a computer menu command hierarchy constitutes copyrightable subject

matter." Lotus, 49 F.3d at 813. The Lotus court held that "the

Lotus menu command hierarchy is an uncopyrightable "method of

operation' " that provided "the means by which users control and

operate Lotus 1-2-3." Id. at 815. In reaching its conclusion, the

First Circuit analogized the "buttons" that operate a computer

program to those that operate a VCR, the latter being an obvious

example of a "method of operation." Id. at 817. Unlike the Lotus

court, we need not decide today whether a main menu and submenu

command tree structure is uncopyrightable as a matter of law. We

agree with the conclusion reached by the district court that the

ACES menu and submenu command tree structure is uncopyrightable

under 17 U.S.C. § 102(b). MiTek's argument that the district court

erred in denying protection under 17 U.S.C. § 102(b) is without

merit.20
and submenu command tree of the ACES programs tracking that

approach is unoriginal and uncopyrightable. The logical design

sequence is akin to a mathematical formula that may be expressed

in only a limited number of ways; to grant copyright protection

to the first person to devise the formula would effectively

remove that mathematical fact from the public domain. The merger

doctrine prohibits such an appropriation. See Gates, 9 F.3d at

838. 

 21The testimony of one of MiTek's experts seems to

contradict the argument that it makes in its brief. Thomas

Zgraggen, who prepared the list of 18 nonliteral elements that

MiTek claims are protected by copyright, testified, on direct

examination, in response to a question about the use of

trapezoids in the program, that "[t]his is the actual depiction

of a defined plane." R5-372. He also testified that "the

program chose to actually follow a more graphic method by showing

a trapezoid which actually encompasses the wall where that plane

has been defined." Id. Given this expert testimony by one of

MiTek's own witnesses, it is understandable that the court

concluded that the trapezoids in the ACES programs were used to

depict planes. If that is the case, then the district court

properly applied the merger doctrine to deny protection to the

use of trapezoids. 

 A related argument advanced by MiTek is that the district

court erred in characterizing the ACES program's use of trapezoids

in truss design as a means of visually depicting planes. MiTek

contends that the trapezoids are used not to depict planes, but

rather to indicate to the program user that a pitched or sloping

plane for a particular wall has been defined. MiTek states that

"[a]s part of defining the shape of the roof using the concept of

intersecting planes, after all the walls are entered, and after

information about each plane is entered for a particular wall, a

trapezoid shape surrounds the wall on the screen." Brief of

Appellants at 38. MiTek contends that "the use of a trapezoid in

this manner is a purely arbitrary, expressive feature." Id. We

are not certain that the district court misconstrued the purpose

behind the use of trapezoids,21 but even if it did, this use of
 22Even were we to conclude that this use of trapezoids is

entitled to protection, ArcE's use of trapezoids in its program

would constitute nothing more than nonactionable de minimis

copying. 

trapezoids lacks sufficient originality to be entitled to copyright

protection.22

3. The ACES Program Mimics the way a Draftsman Draws a Truss Layout

by Hand

Closely related to the menu and submenu command tree issue is

MiTek's contention that the district court erred in concluding that

the ACES program mimicked the steps that a draftsman would take in

drawing and designing a roof truss plan by hand. 864 F.Supp. at

1580. MiTek contends that its programs do not mimic the steps

taken by a draftsman, because, inter alia, a mouse is used, the

walls are drawn in different colors, and a pop-up keypad is used on

the screen to enter numeric information. Appellants Brief at 33-

38. We find that the district court was not suggesting that the

ACES program was an exact correlation to the steps that a draftsman

would take, given the different mediums that are being used (i.e.,

a computer as compared to a pen and paper). Constraints associated

with computer programs and computer design dictate a somewhat

different design process. However, as a general matter, the idea

of closely correlating the ACES program to the longhand steps taken

by a draftsman was the constraining force in the design of the menu

and submenu command tree structure. The logic inherent in this

step-by-step process renders the resulting program unoriginal in

that such logic may only be expressed in a limited number of ways.

More than a minor departure from the logical sequence renders the

result unusable. Thus, the district court did not err in
 23The Copyright Act defines the term compilation as "a work

formed by the collection and assembling of preexisting materials

or of data that are selected, coordinated, or arranged in such a

way that the resulting work as a whole constitutes an original

work of authorship." 17 U.S.C. § 101 (emphasis added). 

concluding that this structure is not entitled to copyright

protection.

4. Consideration of the Copyrightability of the ACES Program as a

Compilation

 MiTek argues that the district court gave short shrift to its

contention that the selection, coordination, and arrangement

embodied in the ACES program and its user interfaces are entitled

to compilation copyright protection. 23 It points out that the

Supreme Court, in Feist Publications, 499 U.S. at 359-60, 111 S.Ct.

at 1295, noted that a work comprised only of facts is copyrightable

to the extent that such facts are selected, arranged, or organized

(and thus presented) in an original way. This protection is

limited, however, and only extends to the work as a whole, and only

if the selection, coordination, or arrangement is sufficiently

original to be copyrightable.

 We acknowledge that a user interface, here a screen display

(itself an audiovisual work), may be entitled to copyright

protection as a compilation. In order to receive this protection,

however, the compilation must be original and expressive. MiTek

cites to Digital Communications Associates, Inc. v. Softklone

Distributing Corp., 659 F.Supp. 449, 463 (N.D.Ga.1987), as a case

in which a court concluded that "the status screen, which is a

compilation, is copyrightable to the extent of its arrangement and

design of parameter/command terms." Underlying this holding,
 24The terms "bodily appropriation of expression" and

"virtual identicality" have been used synonymously, although we

prefer the latter to the former. Both terms convey a level of

similarity greater than the "substantial similarity" standard of

the Altai abstraction-filtration-comparison test. 

however, was the Softklone court's finding that the copyright

holder's compilation met the requirements of 17 U.S.C. § 102,

namely that it was "(1) an original work of authorship (2) fixed in

a tangible medium from which it (3) can be perceived and (4) not an

idea or necessary expression of an idea." Id. Even this

determination was not the end of the analysis in Softklone, for

once the court determined that the status screens were protectable,

it still compared the putative infringer's status screens to those

of the copyright holder. Only after the court concluded that they

were "virtually identical" did it hold that the compilation

copyright in the status screens was infringed. Id. at 465.

 This circuit has never set forth what standard should be used

in analyzing claims of compilation infringement of nonliteral

elements of a computer program. Today, we join the Ninth Circuit

in adopting the "bodily appropriation of expression" or "virtual

identicality" standard.24 See Apple Computer, Inc. v. Microsoft

Corp., 35 F.3d 1435, 1446 (9th Cir.1994) (noting that, in the case

of alleged infringement of a work as a whole (i.e., a compilation),

"there can be no infringement unless the works are virtually

identical"), cert. denied, --- U.S. ----, 115 S.Ct. 1176, 130

L.Ed.2d 1129 (1995); Harper House, Inc. v. Thomas Nelson, Inc.,

889 F.2d 197, 205 (9th Cir.1989) (stating that "[a]s with factual

compilations, copyright infringement of compilations consisting of

largely uncopyrightable elements should not be found in the absence
 25The use of icons as opposed to words in command functions

is one of the most noticeable differences between programs that

operate in the Windows environment and those that operate in the

DOS environment. See Appendix A. 

of "bodily appropriation of expression' ") (citation omitted).

In analyzing MiTek's compilation claim, the district court

applied the virtual identicality standard and concluded that "the

visual display of the Arc[E] program differs sufficiently, if not

substantially, from the Aces Layout Programs to preclude a finding

of virtual identicality." MiTek, 864 F.Supp. at 1584. This

conclusion was based in part on the fact that "[t]he Arc[E] Program

depicts its commands as icons in the Windows environment, rather

than as words in the Aces Layout Programs."25 Id. Assuming without

deciding that the nonliteral elements of the ACES user interface

are a protectable compilation, we agree with the district court

that there is not a virtual identicality between the ACES program

and TrussPro, and thus MiTek's compilation infringement claim must

fail.

5. The Standard Applied in Comparing the Elements Found to be

Copyrightable

 Further, MiTek contends that the district court, in comparing

to TrussPro the five nonliteral elements of the ACES program that

it deemed to be protectable, erroneously employed a "substantial

identicality" standard rather than the appropriate "substantial

similarity" standard. MiTek's challenge is based on the following

portion of the district court's opinion: "[w]hen comparing the

core protectable elements of the copyright-holder's program to the

alleged infringer, the Court will employ the substantial

identicality standard applied by the Ninth Circuit to nonliteral
elements of computer programs, such as visual displays." 864

F.Supp. at 1578-79.

If the district court did apply the substantial identicality

standard in performing the comparison portion of the

abstraction-filtration-comparison test, then it erred in doing so.

Our circuit, in applying the Altai test, employs the substantial

similarity standard in comparing what remains after the abstraction

and filtration steps with respect to noncompilation copyrighted

works. See Bateman, 79 F.3d at 1541-45. We are not convinced,

however, that the district court incorrectly applied the

substantial identicality standard, because in the comparison

section of the opinion, the district court stated that:

Having distilled the Plaintiffs' programs to their core

of protectable expression, the Court now must compare these

elements to the Defendant's program. If any of the core

elements have been copied, the Court will look at the relative

importance of the copied elements to the overall program to

determine whether or not the Aces Layout Programs are

substantially similar to the Arc[E] Program....

The Court finds that of the five protectable elements

identified in the Aces Layout Programs, four are substantially

similar to elements in the Arc[E] programs.

MiTek, 864 F.Supp. at 1584 (emphasis added). Based on its

comparison, it appears that the district court used imprecise

language regarding "substantial identicality" in an earlier portion

of its opinion and later correctly compared for substantial

similarity in reaching its ultimate conclusion. There is no

indication that it applied a substantial identicality standard in

its comparison analysis; in fact, the language of the district

court's opinion leads us to conclude that it correctly compared for

substantial similarity. Thus, there is no merit to MiTek's
contention that the district court erred in comparing the

protectable elements of the ACES program to elements in TrussPro.

6. Copying of the Copyrightable Elements of the ACES Program was De

Minimis

 MiTek argues that the district court erred in concluding that

the copying by ArcE of the protectable elements of the ACES

programs was de minimis and therefore not actionable. In its

comparison analysis, after concluding that of the five protectable

elements of the ACES programs, four in TrussPro were substantially

similar, the district court concluded that:

A finding of a substantial similarity [of certain program

elements] does not end the Court's inquiry, however. To find

infringement, the Court must also determine that the Arc[E]

Program has appropriated substantial elements of the Aces

Layout Programs. The Court has reviewed the programs and

concludes that these five elements are not significant in the

context of the Aces Layout Programs as a whole.

864 F.Supp. at 1584. Based on this finding, the court concluded

that the copying was de minimis and not actionable.

MiTek cites to a treatise on copyright law, Nimmer on

Copyright, for the proposition that "even a quantitatively small

amount of copied material may be sufficiently important to the

operation of plaintiff's program to justify a finding of

substantial similarity." 3 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright § 13.03[F][5] at 13-146 (1996) (footnote

omitted) (hereinafter "Nimmer"). Certainly even a quantitatively

small amount of copied material may justify a finding of

substantial similarity, but, as Nimmer correctly observes, "[i]n

some cases, the amount of material copied will be so small as to be

de minimis, and will not justify a finding of substantial
 26Nimmer, in using the term "substantial similarity," is

referring to the program as a whole, not constituent elements of

the program. The district court concluded that, in TrussPro,

four of the five protected ACES elements were substantially

similar. However, its ultimate conclusion was that since these

elements lacked significance in the ACES program as a whole, the

two programs as a whole were not substantially similar; 

therefore, there was no finding of infringement. 

similarity."26 Id. (footnote omitted). We agree with the district

court that the elements that were considered original and

appropriated were not of such significance to the overall program

to warrant an ultimate finding of substantial similarity and hence

infringement. The burden is on the copyright owner to demonstrate

the significance of the copied features, and, in this case, MiTek

has failed to meet that burden.

IV. CONCLUSION

For the foregoing reasons, the district court's determination

that the TrussPro program does not infringe the ACES programs is

AFFIRMED.

 

APPENDIX A (R3-144-Pl. Exh. 18C)

 

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