Apple Computer, Inc. v. Microsoft Corp.

• Decision Date: 18 May 1993
• Docket Number: No. C-88-20149-VRW.,C-88-20149-VRW.
• Court: U.S. District Court — Northern District of California
• Parties: APPLE COMPUTER, INC., Plaintiff, v. MICROSOFT CORPORATION and Hewlett-Packard Company, Defendants.

821 F. Supp. 616

APPLE COMPUTER, INC., Plaintiff, v. MICROSOFT CORPORATION and Hewlett-Packard Company, Defendants.

No. C-88-20149-VRW.

United States District Court, N.D. California.

May 18, 1993.

Jack E. Brown, Brown & Bain, P.A., Phoenix, AZ, Lois W. Abraham, Chris R. Ottenweller, Martin L. Lagod, Brown & Bain, Palo Alto, CA, Bernard Petrie, San Francisco, CA, for plaintiff Apple Computer, Inc.

David T. McDonald, Karl J. Quackenbush, McDonald & Quackenbush, P.S., William O. Ferron, Seed & Berry, Seattle, WA, John N. Hauser, McCutchen, Doyle, Brown & Enersen, San Francisco, CA, David H. Binney, Preston, Thorgrimson, Shidler, Gates & Ellis, Seattle, WA, for defendant Microsoft Corp.

Jonathan A. Marshall, William G. Pecau, Jon R. Stark, Steven I. Wallach, Pennie & Edmonds, New York City, Neil Boorstyn, McCutchen, Doyle, Brown & Enersen, San Francisco, CA, Stephen P. Fox, Roland I. Griffin, Hewlett-Packard Co., Palo Alto, CA, for defendant Hewlett-Packard Co.

ORDER ADDRESSING MOTIONS FOR RECONSIDERATION, FOR SUMMARY JUDGMENT FOR LACK OF SUBSTANTIAL SIMILARITY AND FOR CONTRIBUTORY INFRINGEMENT.

WALKER, District Judge.

On May 5, 1993, at 2:00 p.m., the court conducted a hearing to address the following issues:

(1) Hewlett-Packard Company's ("HP") and Microsoft Corporation's ("Microsoft") motions for summary judgment for lack of substantial similarity;

(2) Apple Computer, Inc.'s ("Apple") motion to reconsider the court's April 14, 1993, ruling directing application of the virtual identity standard in determining the similarity of defendants' works as a whole;

(3) Microsoft's motion for summary judgment on Apple's contributory infringement claim; and

(4) Apple's claim that HP cannot rely on the November 22, 1985 license agreement ("1985 Agreement") as a defense to Apple's infringement claim.

Shortly before the May 5 hearing, the court issued tentative rulings on each of the foregoing motions and invited the parties to direct their comments accordingly. Having considered the extensive and capable oral arguments of counsel and having reviewed the papers, declarations and exhibits submitted, the court hereby: (1) GRANTS in part and DENIES in part Microsoft's motion for summary judgment for lack of substantial similarity; (2) GRANTS in part and DENIES in part HP's motion for summary judgment for lack of substantial similarity; (3) DENIES Apple's motion for reconsideration; (4) DENIES Microsoft's motion for summary judgment on Apple's contributory infringement claim; and (5) DENIES Apple's motion regarding HP's lack of a sublicense under the 1985 Agreement.

In addition, HP requested the court to rule on its Motion For Summary Judgment That It Is Not Jointly And Severally Liable With Microsoft and its Motion for Summary Judgment On The Literary And Application Program Works In Suit. Microsoft also urged the court to rule on its Motion For Partial Summary Judgment Dismissing Apple's Claims Against Windows 2.03 and 3.0 Based On Certain Copyrights before the commencement of trial. Having reviewed the papers submitted, the court hereby DENIES HP's first motion, GRANTS HP's second motion, and GRANTS Microsoft's motion dismissing Apple's claims against Windows based on certain copyrights.

I.

To prevail on its claim of copyright infringement, Apple must ultimately prove both ownership of a valid copyright and copying of protected expression by defendants. Copying may be inferred from (1) access to the copyrighted work by defendants and (2) substantial similarity of both ideas and expression between the copyrighted work and the allegedly infringing work. Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir.1988).

As articulated in Apple Computer, Inc. v. Microsoft Corp., 799 F.Supp. 1006 (N.D.Cal. 1992) (hereinafter "August 7 order"), the Ninth Circuit employs a two-part analysis for determining substantial similarity: extrinsic and intrinsic tests. The extrinsic test is an objective one to determine whether there is substantial similarity in the ideas; it depends upon specific criteria which can be listed and analyzed. Analytic dissection is appropriate. Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977); Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir.1990). The intrinsic test is a subjective one to determine whether there is substantial similarity in expression; it depends on the response of the ordinary reasonable person. Krofft, 562 F.2d at 1164. Infringement can only be found if each of the two parts is satisfied. Id.; Olson v. National Broadcasting Co., Inc., 855 F.2d 1446, 1449 (9th Cir.1988); Frybarger v. International Business Machines Corp., 812 F.2d 525, 529 (9th Cir.1987).

In the present case, the parties do not dispute Apple's ownership of valid copyrights, and defendants clearly had access to Apple's copyrighted works. The only remaining issue is whether defendants' works are substantially similar in both ideas and expression to warrant a finding of infringement.

Here, the court has already completed the extrinsic analysis and summarized its results in the August 7 order. In that order, the court determined that the vast majority of the allegedly similar items were unprotectible due to merger, scènes à faire, functionality and unoriginality. Of the approximately one-hundred fifty alleged similarities, the court found that only five items—A1, D1, G4, G13 and J10—could possibly be associated with unlicensed artistic expression to be compared under the "virtually identical" standard in the course of intrinsic analysis. Apple, 799 F.Supp. at 1041-42. The court also concluded that only items G28, G29, G33 and H2 could be associated with unlicensed artistic expression to be judged under the "substantial similarity" standard during the intrinsic analysis phase. Id.

After the court issued the August 7 order, both HP and Microsoft moved for summary judgment for lack of substantial similarity on the remaining elements. Microsoft moved for summary judgment as to items A1, D1 and G4. HP moved for summary judgment as to items A1, D1, G4, G13, J10, G28, G29, G33 and H2. Section II presents the court's rulings on each of these remaining items.

II.

A1 The design and layout in Macintosh includes overlapping rectangular windows in front of a muted background pattern.

The only feature of the overlapping windows in the Macintosh Finder and Lisa Desktop which reflects any separate artistic expression is the drop shadow that appears at the right and lower edges of the overlapping windows in those works. As stated in the August 7 order, this item is to be judged on a virtually identical standard. Yet, no version of HP's NewWave nor any version of Microsoft's Windows uses a drop shadow on its windows. Therefore, item A1 in both NewWave and Windows is not virtually identical to item Al in Macintosh or Lisa.

D1 Macintosh design animation drags a gray outline of the window along with the cursor when the mouse is pressed on a window's title bar.

Applying the virtual identity standard as noted by the August 7 order, the court finds that item D1 in all versions of Microsoft's Windows and all versions of HP's NewWave is not virtually identical to item D1 in Apple's works. Apple's works depict a moving window with a thin (single-pixel wide), dotted, gray outline. In contrast, the outlines in each version of the Microsoft and HP works are solid, contrasting colored and of variable width, capable of increasing or decreasing thickness (up to several-pixel wide).

Furthermore, the court previously ruled that the use of an outline to indicate a moving window is not protectible, and Apple has pointed to no separate artistic expression beyond the outline. Accordingly, HP's and Microsoft's motions for lack of similarity as to item D1 are GRANTED.

G4 Macintosh design animation moves an icon to any part of the screen by dragging it along with the cursor when the user presses the mouse on the icon. Windows 2.03 and NewWave (within the NewWave Office windows) also present the same animation design, appearance and style.

When an icon is moved in Macintosh Finder, the icon is represented by a thin (single-pixel) outline that approximates the shape of the icon and its title. The shape of the outline varies with the length of the icon title and generally resembles an inverted "T". While the outline moves about with the cursor, the icon itself is shown at its original position in inverse video. In Lisa Desktop, a moving icon is shown by an outline in the shape of the icon that is dragged with the cursor. At its original location the icon is whited-out while the title remains in inverse video.

Each version of NewWave uses visual displays that are markedly different when an icon is moved. The moving icon is represented by a set of thick (several-pixel wide) dark brackets that are the same size and shape regardless of the shape of the icon and the length of its name. At its original position, the icon is grayed-out. These displays are not virtually identical to the corresponding displays of item G4 in Apple's works.

Similarly, each version of Microsoft's Windows employs methods of depicting a moving icon that differ significantly from those used in Macintosh and Lisa. For example, in Windows 3.0 and 2.03, the moving icon is represented not by an outline or square brackets but by a complete icon with all its details. Also, while the user moves the icon to a new position, nothing remains at the original position, not even an inverse video image or a whited-out shadow. Accordingly, the court GRANTS HP's and Microsoft's motions for summary judgment for lack of virtual identity as to item G4.

G13 The design and layout in Macintosh presents different images within the outline of a generic page icon to indicate objects of different non-directory type.

In its August 7 order, the court held that the actual depiction of the images in the page icons can be protectible. Apple has not,...