Digital Communications Associates, Inc. v. Softklone Distributing

• Decision Date: 31 March 1987
• Docket Number: Civ. A. No. 86-128-A.
• Citation: 659 F. Supp. 449
• Parties: DIGITAL COMMUNICATIONS ASSOCIATES, INC., Plaintiff, v. SOFTKLONE DISTRIBUTING CORPORATION, a Florida Corporation, and Foretec Development Corporation, a Florida Corporation, Defendants.
• Court: U.S. District Court — Northern District of Georgia

659 F. Supp. 449

DIGITAL COMMUNICATIONS ASSOCIATES, INC., Plaintiff, v. SOFTKLONE DISTRIBUTING CORPORATION, a Florida Corporation, and Foretec Development Corporation, a Florida Corporation, Defendants.

Civ. A. No. 86-128-A.

United States District Court, N.D. Georgia, Atlanta Division.

March 31, 1987.

COPYRIGHT MATERIAL OMITTED

Stanley F. Birch, Jr., Atlanta, Ga., for plaintiff.

Frank G. Smith, III, Atlanta, Ga., for defendants.

ORDER

O'KELLEY, District Judge.

The above-styled action is before the court for a consolidated hearing/trial on the plaintiff's motion for a preliminary injunction and request for a permanent injunction. Fed.R.Civ.P. 65(a)(2). The plaintiff, in its amended complaint, has alleged copyright infringement, federal and common law unfair competition, and violations of its common law right of publicity. The defendants, in their amended answer, have counterclaimed for declaratory judgment and have alleged common law unfair competition and violations of the federal antitrust laws. By stipulation of the parties, the plaintiff's claims of unfair competition and violation of the right to privacy and the defendants' counterclaims, as well as all issues of damages, have been deferred. The only issue presently before the court for consideration and upon which evidence has been presented is the question of the defendants' liability for copyright infringement. Based upon the evidence presented at the hearing/trial and otherwise contained in the record and file, the court makes the following findings of fact and conclusions of law. Fed.R.Civ.P. 52.

Findings of Fact

While the legal conclusions to be drawn from the facts are hotly in dispute, the basic facts underlying the claim of copyright infringement are not. The original plaintiff in this action, Microstuff, Inc., a Georgia corporation, was organized in 1979. During the early 1980's, it developed and marketed the Crosstalk asynchroneous data communication system. Following its initial development, the Crosstalk system has undergone several revisions. In 1983, Microstuff began marketing Crosstalk XVI, an updated version of its earlier Crosstalk system. The purpose of the Crosstalk system is to enable the user's computer to "communicate" with other computers. Thus, a user with a microcomputer can access information and data stored in other microcomputers or in a remote mainframe computer. Although Microstuff has had many competitors producing similar data communication programs, it's Crosstalk system have been extremely successful in the marketplace.

One of the elements of the Crosstalk XVI system that has enabled it to receive such widespread support is its distinctively designed "status screen" screen display also called its "main menu." (A copy of which is appended to this order as exhibit A.) The "status screen" screen display, which appears immediately following the "boot-up" or sign-on screen display, contains in its upper portion an arrangement and grouping of parameter/command terms under various descriptive headings. Next to each of the parameter/command terms are values, either numerical or verbal. The value of each parameter/command reflects the value at which the program is operating and is either selected by the user or by the computer program ("default settings"), e.g., the number 300 next to the "SPeed" parameter/command indicates the byte or baud rate at which the computer program is communicating with other computers. Two letters of each parameter/command term are capitalized and highlighted. By typing those two letters, the user can effectuate that specific command.

The lower portion of the status screen display, excluding the bottom line, called the "window," can display a wide variety of text including anything the user might wish to cause to appear there. Upon typing in a "HElp" command, the user can call up into the "window" a list of all the Crosstalk XVI parameter/command terms. The list of terms is arranged in four alphabetical groupings. Because of the size of the list, all the terms cannot be displayed in the window at one time. By pressing the "enter" key on the keyboard when the first portion of the terms is shown in the window, the remainder of the terms will appear.

The bottom line of the status screen is the "command" line. On this line, the user can enter "commands" or instructions to the computer to change the values at which it operates. After entering a command changing the operation of the program, the change is then reflected by a change in the value next to the corresponding parameter/command term in the upper portion of the screen. For example, if the user wishes to change the byte or baud rate (speed) of the program to 1200, he can type and enter the two letter symbol for the byte or baud rate command along with the rate he desires, e.g. "SP 1200," the computer will then operate at a 1200 byte or baud rate, and the number "1200" will appear in the upper portion of the status screen next to the parameter/command term "SPeed."

In October, 1985, Microstuff obtained copyright registrations on the Crosstalk XVI user manual (version 3.6), copyright number TX-1-657-201, and the Crosstalk XVI computer program (version 3.6), copyright number TX-1-657-208. In December, 1985, Microstuff applied for copyright registration on the Crosstalk XVI "Main Menu" (version 3.6) (status screen). In support of its application, Microstuff deposited a printout of the status screen. After some delay, the Copyright Office registered the status screen as a "compilation of program terms," copyright number TX-1-719-301. On February 6, 1986, a second printout of the status screen was approved for registration, copyright number TX-1-735-829. Microstuff then placed copyright notices in the computer program's source code, on the box in which the computer program diskette is packaged, on the "bootup" or sign-on screen displayed when the program is turned on, and on every page of the user manual.

After obtaining a commercially available copy of the Crosstalk XVI program, the defendant ForeTec Development Corporation, a Florida corporation, decided in the summer of 1985 to develop a "clone" of Crosstalk XVI system. ForeTec employed legal counsel to assist it in determining which parts of the Crosstalk system were copyrightable. ForeTec's legal counsel advised ForeTec that the source and object codes of the Crosstalk XVI computer program and the Crosstalk XVI user manual were copyrightable, but that use of a similar or identical screen display to the Crosstalk XVI status screen would not constitute copyright infringement because the status screen was not copyrightable. ForeTec's Crosstalk XVI clone, called "Mirror," was completed and marketed in December, 1985. The Mirror program performs the same functions as the Crosstalk XVI program (with a few minor differences) and utilizes a status screen that is the source of the instant claim of infringement. (A copy of which is appended to this order as exhibit B.)

In August, 1985, ForeTec created a wholly owned subsidiary, the defendant Softklone Distributing Corporation, a Florida corporation, for the purpose of marketing and distributing "clone" computer programs such as the Mirror program. In October, 1986, Microstuff was purchased by Digital Communications Associates, Inc., a Georgia corporation. Digital Communications Associates, Inc. has been substituted as the plaintiff in this action.

CONCLUSIONS OF LAW

The two essential elements necessary to prove a claim of copyright infringement are ownership of a copyright by the plaintiff and copying by the defendant. Whelan, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1231 (3rd Cir. 1986). In order to establish ownership of a copyright, the plaintiff must establish (1) originality in the author of the copyrighted work; (2) copyrightability of the subject matter of the work; (3) proper citizenship of the author; (4) compliance with the applicable statutory formalities, e.g., reasonable notice of copyright affixed to work; and (5) (if the plaintiff is not the author) a transfer of rights or other relationship between the author and the plaintiff so as to constitute the plaintiff the valid copyright claimant. 3 Nimmer on Copyright ("Nimmer") § 13.01A (1986). In the instant action, the defendants' defense has focused on the second and fourth elements of plaintiff's copyright ownership, i.e., that the status screen is not copyrightable subject matter and that, even if it is, the failure of the plaintiff to place a copyright notice on the status screen in combination with its continued failure to use reasonable efforts to cure that omission have resulted in the placement of the status screen in the "public domain" and the forfeiture of its copyright protection.

COPYRIGHT PROTECTION FOR THE STATUS SCREEN

The plaintiff obtained three copyrights covering (1) the Crosstalk XVI user manual, (2) the Crosstalk XVI computer program, and (3) the Crosstalk XVI "Main Menu" (status screen). The plaintiff has alleged that the defendants' copying of the Crosstalk XVI "Main Menu" (status screen) is an infringement of both of the latter two copyrights.

1. General Copyright Law:

The right of copyright is a creature of federal statute, originally enacted in 1790, and is based upon the constitution, Article I, § 8, cl. 8. M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 432 (4th Cir.1986). Present statutory authority for the right of copyright is embodied in the Copyright Act of 1976, as amended in 1980, codified at 17 U.S.C. § 101 et seq. The 1976 Act, as amended, provides in pertinent part:

§ 101. As used in this title, the following terms and their variant forms mean the following:

"Audiovisual works" are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the

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