Engineering Dynamics, Inc. v. Structural Software, Inc.

• Decision Date: 16 February 1995
• Docket Number: No. 92-3444,92-3444
• Citation: 46 F.3d 408
• Parties: ENGINEERING DYNAMICS, INC., Plaintiff-Appellant Cross-Appellee, v. STRUCTURAL SOFTWARE, INC., and S. Rao Guntur, Defendants-Appellees Cross-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 408

46 F.3d 408

34 U.S.P.Q.2d 1157

ENGINEERING DYNAMICS, INC., Plaintiff-Appellant Cross-Appellee, v. STRUCTURAL SOFTWARE, INC., and S. Rao Guntur Defendants-Appellees Cross-Appellants.

No. 92-3444.

United States Court of Appeals, Fifth Circuit.

Feb. 16, 1995.

Thomas L. Cantrell, Roger L. Maxwell and H. Dale Langley, Jr., Jenkens & Gilchrist, Dallas, TX, for appellant.

Lawrence A. Waks, Sutherland, Asbill & Brennan, Austin, TX, for amici-Software Entre & Software Ind.

Eugene Preaus, Preaus, Roddy & Krebs, Denya Guntur, Al Harrison, Houston, TX, for amicus-Advanced & BMC.

Peter M.C. Choy, Am. Committee for Interoperable Systems, Mountain View, CA, for amicus-ACIS.

N. Elton Dry, Houston, TX, for amicus Mid-Cities PC User's Group.

Appeal from the United States District Court for the Eastern District of Louisiana.

ON PETITION FOR REHEARING AND SUGGESTION FOR REHEARING EN BANC

(Opinion July 13, 1994, (5th Cir.1994) 26 F.3d 1335)

Before JOHNSON, JOLLY and JONES, Circuit Judges.

EDITH H. JONES, Circuit Judge:

No active member of the court having requested a poll of the court, the panel rejects the suggestion for rehearing en banc. Nevertheless, we issue this supplement to the panel opinion to avoid any confusion as to its scope.

1. The petition for rehearing and amicus petitions in support of rehearing suggest that our initial opinion held that EDI's user formats are not only protectable but protected by copyright law because there "are numerous ways the input formats could be organized." This is an overly simplistic view of the opinion. The panel adheres to its adoption of the abstraction-filtration-comparison test and to its application of the test on the facts before us. See e.g., Computer Assoc's Int'l Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.1992). One of those facts, among many, was that EDI created input/output formats to facilitate the engineering and design of offshore structures and in this context, the formats were more than a "blank form." The panel did not say that in any case involving user interface the fact that the "author" has selected from among possible formats is dispositive.

The panel also found a minimal level of originality consistent with Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 499 U.S. 340, 358, 111 S.Ct. 1282, 1294, 113 L.Ed.2d 358 (1991) ("Originality requires only that ... the selections' arrangement display some minimal level of creativity."). ¹ In general, copyright only protects originality of user interface to the extent that the selection of variable inputs from the universe of potential inputs reflects non-functional judgments. Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823, 838 (10th Cir.1993) ("[W]here a particular expression is common to the treatment of a particular idea, process or discovery [, i.e. scenes a faire,] it is lacking in the originality that is the sine qua non for copyright protection.") (citing Feist, 499 U.S. at 348, 111 S.Ct. at 1289). Consequently, as our opinion explains, the district court will inquire on remand whether EDI exercised any judgment in formulating the input cards or merely reflected the industry standards and laws of engineering.

2. This opinion cannot properly be read to extend to the manufacturing of computer hardware so as to deter achieving compatibility with other models or to the practice employed by users of programs of analyzing application programs to "read" the file formats of other programs. ²

3. Finally, although the panel opinion identifies the benchmark for "substantial similarity" as the compilation en masse, the following language is subject to some ambiguity:

[After] determin[ing] whether variations in the registered and copyrightable format cards adopted by StruCAD render the cards noninfringing elements of the larger work at the individual card level. Then the court may determine whether the subset of StruCAD cards that are individually substantially similar to their counterparts in SACS, are, taken together, so substantially similar to EDI's copyrighted work or a part thereof as to constitute infringement.

26 F.3d 1335 (emphasis added). To avoid any mistaken impression, the underlined words should be deleted and the following sentence added:

Of course SSI may not replicate component parts of EDI's protected work with impunity; substantial similarity may be measured by comparing the products as a whole, but the more exact a duplication of constituent pieces of a work the less overall similarity that may be required. See Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 548 [105 S.Ct. 2218, 2224, 85 L.Ed.2d 588] (1985) (300 words copied from plaintiff's 450-page book constituted infringement).

In all other respects, the motions for panel rehearing are DENIED.

1 Familiarity with the universe of possibilities upon which the "author" has premised a selection of input/output formats permits assessment of their originality. See Kregos v. Assoc'd Press, 937 F.2d 700, 704-05 (2d Cir.1991). Kregos which reversed a trial court's holding as a matter of law that a chart of nine items of information...