Guest Post: Are Copyright and Patent Overlapping or Mutually Exclusive in Protecting Software Innovations?

Prof. Pamela Samuelson is the Richard M. Sherman Distinguished Professor of Law and Information at the University of California, Berkeley.  She is recognized as a pioneer in digital copyright law, intellectual property, cyberlaw and information policy.  We’re pleased to be able to republish this post, which first appeared on Patently-O.

“Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.” So said the Supreme Court in Mazer v. Stein, 347 U.S. 201, 217 (1954).

In Oracle Am. Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014), the Federal Circuit invoked this language in rejecting Google’s “policy” argument that application program interface (API) designs were more appropriately patent, not copyright, subject matter. Id. at 1380-81. The Oracle decision seemingly accepted as unobjectionable the possibility of overlapping utility patent and copyright protections in program interfaces, and perhaps even of copyright as a gap filler for interface designs for which patents had not been obtained.

Because the contours of copyright and patent protections for software innovations remain unclear notwithstanding more than 50 years of experience trying to apply these intellectual property (IP) regimes to these utilitarian writings and virtual machines, the question of whether or to what extent copyright and patent overlap or are mutually exclusive continues to bedevil the field. The Federal Circuit’s Oracle decision is unlikely to be the last word on this subject.

Recently, I rediscovered the 1991 study that the Patent & Trademark Office (PTO) and the Copyright Office wrote about the software IP overlap or exclusivity issue. The Patent-Copyright Laws Overlap Study (May 1991) was prepared at the behest of the House Subcommittee on Intellectual Property and the Administration of Justice. The Study is more than 90 pages in length and has more than 50 pages of appendices.

Among the most significant of the Study’s findings is that there is “no overlap in subject matter: copyright protects the authorship in a set of statements that bring about a certain result in the operation of a computer, and patents cover novel and nonobvious computer processes.” Letter from Ralph Oman and Harry F. Manbeck to the Hon. William J. Hughes, July 17, 1991 (transmitting the Study to the then Chair of the House Subcommittee).

Another finding is that “[p]atent protection is not available for computer programs per se,” which supports the Study’s conclusion that copyright and utility patent for programs are not “coextensive.” Study at iii (emphasis in the original). The Study identifies the doctrinal rationale for this exclusivity: program innovations “consist of mental steps or printed matter.” Id. at vii. Copyright and patent could, however, protect “totally different aspects” of program innovations. Id. at 2. The Study cited to the Supreme Court’s decision in Baker v. Selden, 101 U.S. 99 (1879) as the “bedrock opinion for the view that patent and copyright are mutually exclusive.” Id. at 19.

As for user interface designs, the Study reports that “[t]he mere display on a screen of commands, menus, questions and answers, forms, or icons is not generally considered patentable subject matter for utility patents” because “it is generally considered to be merely printed matter.” Id. at 45-46. Yet processes to produce user interface displays might be eligible for utility patenting. Id. at 47. (The Study discusses the possibility of design patent protection for icons. Id. at 46-47.)

Insofar as user interface screen displays have original expressive elements (e.g., videogame graphics), they would be eligible for copyright protection. Id. at 60-67. However, many aspects of user interface designs are akin to blank forms and lack originality. Id. at 68-69. Some aspects of user interfaces, such as lists of commands, are uncopyrightable under the doctrines of merger and scenes a faire and the words and short phrases exclusion. Id. at 70-71.

The Study recognized that some commentators had raised concerns about overbroad copyright protection for programs; yet, others, it noted, think that expansive protection is needed. Id. at 86-87. The Study concluded that this debate notwithstanding, it would be “premature” to conclude that the risks of overbroad protections were significant as there is “no overlap in subject matter” between copyright and patent. Id. at 88-90. The Study urged Congress to wait and see how the law evolved. Id. at 89.

“At the bottom of this debate,” said the Study, “it appears is the question of protection of functionality….” Id. at 87. It would be contrary to the statutory exclusions set forth in 17 U.S.C. § 102(b) for copyright to protect program functionality. (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.”) Study at 87. According to the Study, the protection of functionality “is assigned to patents where a much more rigorous test must be undergone and the barriers to entry in terms of time, cost, and complexity, are higher.” Id. at 88.

It is unfortunate that the Federal Circuit did not have access to this Study when deciding the copyrightability issue in the Oracle case, as its conclusions might have given the court pause about invoking the Mazer overlap-endorsing dicta in response to Google’s mutual exclusivity argument.

In a forthcoming article, Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, I challenge the Federal Circuit’s conclusion that copyright and utility patent can provide overlapping IP protections for software innovations. The article notes that the Mazer dicta was made in the context of a real, if partial, overlap in copyright and design patent subject matters. Stein’s statuette qualified as a work of art under U.S. copyright law. However, used as the base of a lamp, the design was also eligible for design patent protection as an ornamental design of an article of manufacture.

The Court in Mazer was unequivocal about copyright and utility patents having separate domains. It cited approvingly to two of Baker’s progeny that had held “that the Mechanical Patent Law and Copyright Laws are mutually exclusive,” Mazer, 201 U.S at 215, n.33 (emphasis added). See Taylor Instrument Co. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943) (no copyright in temperature recording charts because they were integral parts of previously patented machines) and Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C. Cir. 1947) (accord). Overlaps in design patent and copyright subject matters had, by contrast, long been accepted. Mazer, 201 U.S. at 215, n.33.

The exact contours of utility patent and copyright protections for software innovations may not shimmer with clarity, but the 1991 Study adheres to the Supreme Court’s long-standing pronouncements in Baker and Mazer that copyright and utility patent are and should be mutually exclusive. Now if only the Federal Circuit can be made to understand this.