Broderbund Software, Inc. v. Unison World

Decision Date08 October 1986
Docket NumberNo. C-85-3457 WHO.,C-85-3457 WHO.
PartiesBRODERBUND SOFTWARE, INC., a California corporation, and Pixellite Software, a California general partnership, Plaintiffs, v. UNISON WORLD, INC., Defendant.
CourtU.S. District Court — Northern District of California

COPYRIGHT MATERIAL OMITTED

Claude M. Stern, Scott D. Baker, Horwich & Warner, San Francisco, Cal., for plaintiffs.

Robert W. Dunaway, Paul David Marotta, Remer, Remer & Dunaway, Mountain View, Cal., for defendant.

OPINION AND ORDER

ORRICK, District Judge.

In this action for audiovisual copyright infringement, textual copyright infringement, trademark infringement, and unfair competition, the Court severed the case, and tried only the liability portion of the audiovisual copyright infringement claim. For the reasons set forth in this Opinion, which constitute the Court's findings of fact and conclusions of law required by Federal Rule of Civil Procedure 52(a), the Court finds the defendant has infringed the copyright of plaintiff Pixellite Software on the audiovisual displays of the computer program known as The Print Shop.

I

Plaintiffs, Broderbund Software, Inc. ("Broderbund"), and Pixellite Software ("Pixellite"), are the exclusive licensee and the copyright holder, respectively, of a computer software printing program called "The Print Shop" ("Print Shop"). Defendant, Unison World, Inc. ("Unison"), markets a computer software printing program called "The Printmaster" ("Printmaster"). Both "Print Shop" and "Printmaster" are menu-driven programs that enable their users to create customized greeting cards, signs, banners, and posters. Plaintiffs claim that the overall appearance, structure, and sequence of the audiovisual displays in "Printmaster" infringe plaintiffs' copyright on "Print Shop."

David Balsam and Martin Kahn, the principals of plaintiff Pixellite Software, began developing "Print Shop" in the spring of 1983. At the time, the program was known as "Perfect Occasion" and was not a printing program. Rather, it was a program that would allow its users to create custom greeting cards out of the software disks themselves. "Perfect Occasion" would have allowed users to type their greetings, surrounded by graphics and borders, onto the disks. The disks would then be mailed or otherwise delivered to the recipient, who would need access to a compatible personal computer to view the "greeting card." Balsam and Kahn spent two or three months developing "Perfect Occasion" and showed it to Broderbund in the summer of 1983.

Concerned about the salability of a program that created greetings cards legible only on computers, Broderbund encouraged Balsam and Kahn to convert "Perfect Occasion" into a printing program. Balsam and Kahn, with the help of Broderbund artists, spent almost an entire year developing what was to become "Print Shop." Broderbund obtained from Pixellite an exclusive license to distribute "Print Shop" worldwide and began marketing the product in May 1984. At the time of its introduction onto the market, "Print Shop" could be operated only on Apple computers. The product was a success, selling approximately 500,000 copies (to date of trial) at a manufacturer's suggested retail price of $49.95.

Defendant, Unison, is primarily engaged in the business of converting other publishers' software to make it adaptable with different computers. Unison rarely, if ever, develops entirely original programs. As of April 15, 1986, Unison had developed software for Epson, Sharp, and Panasonic. In May 1984, the president of Unison, Hong Lu, approached the president of Broderbund, Douglas Carlston. At the time, Unison was programming a video game called "Flappy," which was a conversion of a game created by DB Soft, a Japanese company. Lu wanted to know if Broderbund would consider publishing "Flappy."

From their dealings concerning "Flappy," Broderbund and Unison also began discussing the possibility of converting the just-released "Print Shop" to make it adaptable with other computers, mostly Japanese. Lu had excellent contacts with Japanese software producers. When Broderbund personnel went to tour Unison's facilities, Lu told them he was also interested in the conversion rights to an IBM version of "Print Shop." Lu told Edward Bernstein, Broderbund's director of product development, that Unison could create a "Print Shop" version for IBM computers in three months. Bernstein was skeptical about whether Unison could actually produce a quality conversion within three months. Broderbund had already made several unsuccessful attempts to produce an IBM version of "Print Shop."

Although Broderbund originally informed Lu that the IBM rights to "Print Shop" were unavailable, at some point Broderbund developed a need for an IBM conversion. Unison personnel met with Balsam and Kahn to discuss whether it was really possible in three months to create an IBM version that was faithful to the original. Broderbund made it clear that if Unison were to receive the IBM rights to "Print Shop," it had to produce an exact reproduction of the original. Balsam very briefly showed the source code (the text that is translated into an "object code" and then directs the computer to perform its functions) to one of Unison's programmers, MacDuff Hughes, to give Hughes a feel for the depth and complexity of "Print Shop." Balsam also gave Unison personnel some commercially-available copies of "Print Shop" to show Japanese producers.

For the next four to six weeks, programmer Hughes was under orders from both Lu and David Lodge, Unison's products manager, to develop a program as identical to "Print Shop" as possible—to "imitate" it. Balsam and Kahn would meet periodically with Hughes to discuss Hughes' progress in developing the IBM version. Kahn, who handled the programming duties for Pixellite, told Hughes that the aspect ratios (governing the proportioning of dots), hollowing (placing white borders on individual letters to make them stand out) and kerning (closing spaces between letters) would be difficult. Hughes set out to recreate "Print Shop" as closely as possible.

After Hughes had made considerable progress toward a faithful reproduction of "Print Shop," however, negotiations for the IBM rights broke down. Lu felt Broderbund was offering an insufficient advance payment on Unison's percentage of the royalties. Lu now told Hughes to stop copying "Print Shop" because the negotiations had failed. Instead, Lu instructed Hughes to finish developing their enhanced version of "Print Shop" as soon as possible. Hughes was no longer to feel "constrained" by the actual structure or appearance of "Print Shop"he was now free to improve on it. This enhanced version would then be released by Unison as its own creation. By releasing its own enhanced version of "Print Shop," Unison was simply following what had been Lu's game plan all along. Lu wished to obtain the "Print Shop" or Broderbund name, but he always intended to release some enhanced version of "Print Shop," whether or not he could reach a licensing agreement with Broderbund.

Lu's order to stop any further copying of "Print Shop" did not include copying that had already been incorporated into Hughes' work in progress. Hughes had already finished the menu screens, so he kept them. He had also finished about ten screens in the "greeting card" and "sign" functions, which he kept. And, despite the fact that he had a totally different idea for the user interface in the "picture editor" function, Hughes used the "Print Shop" user interface because it was "much further along." Hughes thought it would be a waste of time to go back and redesign the screens, and he was in a hurry to finish the project so he could get back to Stanford, where he was a mathematics major.

After Hughes finished his part of the project, other programmers at Unison added a "calendar" function to the IBM version, streamlined the method by which the user could select ready-made designs, and provided for the memorization of designs. The Unison-IBM version otherwise remained the same as Hughes had designed it.

In March 1985, Unison released its program under the name "Printmaster." On May 28, 1985, plaintiffs brought this action for copyright infringement, trademark infringement, and unfair competition. In November 1985, Broderbund released its IBM version of "Print Shop." It is to these facts that the Court now applies the law applicable to audiovisual copyrights.

II
A. Are the Audiovisual Displays Protected under the Copyright Laws?

First and foremost, the Court must deal with the threshold issue, the protection vel non of audiovisual displays under the copyright laws.

1. The dichotomy between ideas and expression.

It is axiomatic that copyright protects only the expression of ideas and not the ideas themselves. See Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954); see also 17 U.S.C. § 102(b) (1977). Thus, if an idea is indistinguishable from its expression, that is, if the idea is "merged" into its expression, the expression cannot be protected under the copyright laws. For example, in Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 741-42 (9th Cir.1971), the court held that the idea of a jewel-encrusted bee pin could not be distinguished from the expression of that idea. As long as more than one manufacturer produced jewel-encrusted bee pins, the court found, it was inevitable that there would be a substantial similarity between the two forms of expression. In other words, the number of ways in which one can design a jewel-encrusted bee pin is strictly limited. Under such circumstances, to give one manufacturer a copyright on its bee pin would be to give that manufacturer a monopoly on the jewel-encrusted bee pin market because no other manufacturer could possibly conceive of a substantially different jewel-encrusted bee pin.

Defendant herein argues that the idea underlying the menu screens, input...

To continue reading

Request your trial
13 cases
  • Computer Associates Intern., Inc. v. Altai, Inc.
    • United States
    • U.S. Court of Appeals — Second Circuit
    • December 17, 1992
    ...& Control, Inc., 1987 Copyright Law Dec. (CCH) p 26,062 at 20,912, 1987 WL 6419 (S.D.N.Y.1987); Broderbund Software Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1133 (N.D.Cal.1986), others have rejected it, see Plains Cotton Co-op v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1262 (5......
  • Metro-Goldwyn-Mayer Studios, Inc. v. Grokster
    • United States
    • U.S. District Court — Central District of California
    • October 16, 2007
    ...Furthermore, StreamCast has likely benefitted from Plaintiffs' unwillingness to cooperate. See Broderbund Software, Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1138 (N.D.Cal.1986) ("Far from being injured by the alleged infringement of Letraset's copyright, defendant may have profited fro......
  • Lotus Dev. Corp. v. Paperback Software Intern., Civ. A. No. 87-76-K.
    • United States
    • U.S. District Court — District of Massachusetts
    • June 28, 1990
    ...may extend beyond the programs' literal code to their structure, sequence, and organization"); Broderbund Software, Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1133 (N.D.Cal.1986) ("copyright protection is not limited to the literal aspects of a computer program, but rather ... it extends......
  • Intamin, Ltd. v. Magnetar Technologies Corp.
    • United States
    • U.S. District Court — Central District of California
    • May 22, 2009
    ...207 (4th Cir.2002); McCormick v. Cohn, No. CV 90-0323 H, 1992 WL 687291 (S.D.Cal. Jul. 31, 1992); Broderbund Software, Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1138 (N.D.Cal.1986). First, the Court notes that district court decisions are not binding precedent and need not be followed, ......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT