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

• Decision Date: 13 July 1994
• Docket Number: No. 92-3444,92-3444
• Parties: , 1994 Copr.L.Dec. P 27,300, 31 U.S.P.Q.2d 1641 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 1335

26 F.3d 1335

63 USLW 2066, 1994 Copr.L.Dec. P 27,300,

31 U.S.P.Q.2d 1641

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.

July 13, 1994.

Thomas L. Cantrell, Roger L. Maxwell, H. Dale Langley, Jr., Johnson & Gibbs, Dallas, TX, for plaintiff-appellant.

Al Harrison, Denya Guntur, Houston, TX, for defendants-appellees.

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

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

Before JOHNSON, JOLLY, and JONES, Circuit Judges.

EDITH H. JONES, Circuit Judge:

Fifteen years ago Engineering Dynamics, Inc. (EDI) successfully defended itself against claims that its computer program infringed registered copyrights held by Synercom Technology, Inc. on Synercom's user manuals and input formats. That case held that neither the input formats brought to the court's attention nor their sequence and organization were copyrightable. Synercom Technology, Inc. v. University Computing Co., 462 F.Supp. 1003 (N.D.Tex.1978). EDI has now switched sides and seeks a judgment of copyright infringement against Structural Software, Inc. (SSI), a competitor who copied many of EDI's input and output formats. The parties primarily differ over the district court's holding that computer input and output formats are not copyrightable and hence cannot infringe a copyright directly or as a derivative work. See district court opinion at 785 F.Supp. 576, 582 (E.D.La.1991).

This opinion examines the extent of copyright and trade dress law protection of computer/user interfaces and user manuals. We reverse the district court's holding that computer/user interface in the forms of input and output formats are uncopyrightable and reverse and remand to determine whether there was infringement. We affirm the court's other rulings.

BACKGROUND

In 1970, Synercom brought to market a computer program called STRAN, designed to solve engineering problems in the field of structural analysis. The program required the user to "input" a large amount of data, including construction details and anticipated environmental and other external forces that would act upon the structure. The computer program performed numerous tedious calculations using accepted engineering principles to generate output which facilitated the design and construction of the structure.

In 1975, EDI entered the market with its computer program, SACS II, ¹ which utilized precisely the same input formats and input sequence as Synercom's STRAN program. Both SACS and STRAN were run only on mainframe computers. Part of EDI's marketing strategy was to stress the complete compatibility of SACS with STRAN's input formats, entered into the computer via decks of 80-column keypunch cards. Synercom, 462 F.Supp. at 1008, 1012. Synercom had obtained thirteen copyright registrations covering nine input formats and sued EDI for infringement. Then-district judge Higginbotham ruled that the formats of the keypunch cards, as well as their sequence and organization, were not copyrightable, thus relieving EDI of any liability for format infringement. Judge Higginbotham also held, however, that EDI had infringed Synercom's copyright in its user manuals. As part of a resulting settlement agreement, EDI prepared a new edition of its user manual, SACS III, which did not infringe Synercom's copyright.

Over the years, EDI refined SACS III and its input formats to accommodate users' desire for greater speed, flexibility, and ease of operation. After many piecemeal revisions, EDI changed the name of its program to SACS IV. Despite the fact that actual paper keypunch cards are rarely used anymore, EDI has retained the 80-column data input format. Most users now enter data as image files and store the data on a magnetic storage device, e.g., a floppy disk. The 80-column card format is familiar to relevant users of these programs, thus facilitating training and allowing them to reevaluate old data decks. This opinion follows industry practice and uses the terms "input format" and "card" interchangeably.

The SACS IV input formats instruct the user to place specific kinds of information in a specific place on the card. The first five columns or so are reserved for identification of the card by its name, e.g., WAVE. The parties' versions of this card are reproduced in the appendix hereto. Subsequent columns of various widths are reserved to enter instructive and descriptive data. The WAVE card, for example, is used to calculate ocean wave forces on structures built offshore. Several columns allow the user to instruct the computer as to which wave scenario (load case) is to be generated and by what wave theory. Much of the data entered describes conditions and parameters needed to generate hypothetical wave forces, e.g., the waves' size, frequency, and direction. The placement of the required information on the proper card and in the proper columns is crucial to obtaining correct results. Other input formats instruct or describe many other structural and environmental factors.

EDI's structural analysis program is actually a "suite" of 23 semi-autonomous modules, each created to facilitate certain aspects of structural analysis. Each module is designed to interact with other modules of the suite, for example, by preprocessing certain data, then feeding it to another module. One module called SEASTATE generates and calculates the environmental effects on an offshore structure. This is an important module because most EDI customers use SACS for designing offshore structures, such as drilling platforms. Another module called EDI has not copyrighted any of the actual computer programs comprising the SACS suite, i.e., the source code and object code. Instead, it has chosen to protect itself by maintaining the program as an unpublished trade secret via confidentiality contracts with users and other security techniques. It has, however, obtained four copyright registrations covering the user manuals for three of the 23 modules: SACS III, SACS IV, SEASTATE, and JOINTCAN. The SACS suite of programs allegedly specifies over 200 input formats. The four copyrighted user manuals describe 51 formats (excluding nonformatted cards such as header cards and end cards), most of them pertinent to SACS III ² and SEASTATE.

JOINTCAN is used to design the "joint cans" which connect tubular members of a structure, taking into account various stresses, tolerances, and construction techniques. The heart of the SACS suite is a module itself called SACS. This module processes, through the computer, user-supplied environmental and design data and calculates the static and dynamic forces within and upon each component of the structure. A large quantity of output data is then organized and printed in a systematic fashion that facilitates further engineering or construction efforts, e.g., showing the kinds and quantities of forces to which each component of the structure is subject.

In 1986, Rao Guntur began developing a similar structural analysis program targeted at the offshore platform market that could be used on a personal computer. Guntur's company, Structural Software, Inc. (SSI), began marketing his program, StruCAD*3D, that same year. EDI brought its PC version to market a short time later. Although built on a different public-domain structural analysis program, StruCAD borrowed heavily from the SACS user interface. Like SACS, data entry for StruCAD is based on an 80-column format. As was the case when EDI copied Synercom's input format and sequence, many of StruCAD's potential customers were already familiar with EDI's interface; SSI wanted to minimize required training for these users and facilitate conversion of SACS input data files to StruCAD's formats. StruCAD utilizes 126 input formats.

EDI's allegations in the instant case differ in three important respects from Synercom's allegations in 1978. First, the decks of computer keypunch cards prepared for use in Synercom's program STRAN were completely compatible with SACS II when it was introduced. In the instant case, many individual data cards completed for use in SACS would require some, but not extensive, modification before they could be run in StruCAD. Second, StruCAD requires dozens of input formats completely different from those found in SACS III or SACS IV. Third, while only nine input formats were alleged to have been copied in Synercom, and the copyright registrations on each of the nine were at issue, EDI does not claim protection for any of its individual input formats and output reports. Instead, it contends that the sequence and organization of formats and reports is as a whole copyrightable.

EDI brought suit against SSI and against Guntur in his individual capacity, claiming that they copied 56 of EDI's input formats. To support its claim, EDI assembled numerous exhibits highlighting the similarities between the alleged infringing formats. A close examination of the WAVE input format description, for example, (see Appendix) reveals that both programs' cards require precisely the same information in precisely the same data columns, except that StruCAD requires that columns 5-8 and 31-38 be left blank while in SACS these columns are optional. (But note that SACS also requires that 31-38 be left blank if columns 25-30 are used.) In addition to the infringement claim based on input formats, EDI alleges copying of output report formats, copying of EDI's user manuals for use in the StruCAD manual, and copying of portions of EDI's user manuals for use on StruCAD's "help screens." EDI also brought unfair competition claims against SSI, alleging violations of Guntur and SSI (hereinafter often jointly referred to as SSI) admit that Guntur copied EDI material when he developed...