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The information below is provided for general educational purposes and not as
legal advice. Laws in areas in which we practice change continually and also
vary from jurisdiction to jurisdiction. Therefore no visitor to our site should
rely on any of the articles provided for legal advice, but should always consult
their own attorney regarding legal matters.
IMPACT OF APPLE VS. FRANKLIN DECISION
By Rob Hassett
© 1983 Rob Hassett, Atlanta, Georgia. All Rights Reserved.
Background and Summary
This article first appeared in the December 5, 1983 issue of Computer World and
addressed the decision of the U.S. Court of Appeals for the Third Circuit
regarding the Apple Computer v. Franklin Computer Corporation lawsuit. This was
a very important case both to copyright law in general and to the evolution of
the computer industry. (3 Pages)
On August 30, 1983 the U.S. Court of Appeals for the 3rd Circuit filed an
opinion deciding that operating system computer programs contained only within
computer hardware (in this case on chips) can be the subject of copyright.
According to the opinion, engineers at Franklin Computer Corp. copied operating
system programs developed and used by Apple Computer, Inc. so that programs
designed for the Apple II computer could also be run on the Franklin Ace
computer. Apple Computer filed suit claiming copyright infringement. Apple
Computer requested that the trial judge bar Franklin from using, copying or
selling those programs until the trial of the case, an understandable request
inasmuch as the final trial could be delayed for years.
In deciding whether to grant a request of this type, the courts generally
consider two factors. First, is the moving party likely to prevail on the merits
of the case at the trial? Second, what are the relative harms that will occur to
each of the parties if the motion is granted, as opposed to if the motion is
denied?
Four-Front Attack
In addition to the usual legal arguments on procedure, Franklin's attorneys
argued that the programs, or portions of the programs, were not protectable
under the copyright laws anyway. They launched a four-front attack.
First, they argued that at least a portion of the programs were written in
machine language, more an engineering than a written phenomenon. Since copyright
laws apply to expressions, not engineering phenomena, the programs were not
subject to copyright.
Second, some of the programs were contained on a read-only memory (ROM), which
was only a three-dimensional device rather than in a written code that could be
protectable under copyright laws.
Third, the operating system programs constituted ideas as opposed to mere
expressions, copyright laws not being applicable to ideas.
Franklin's attorneys also argued the "big guy, little guy" point that Franklin
might be out of business if the motion were granted. If the motion were denied,
Apple Computer would suffer, at the most, only the loss of some sales.
The trial court had denied Apple Computer's motion. It reasoned that it was
unclear at the juncture that the copyright laws applied. It bought the "big guy,
little guy" argument that the harm to Apple Computer of denying the motion was
greatly outweighed by the harm to Franklin of granting the motion. The stage was
thus set for the appeal by Apple Computer.
Reversed the Ruling
The 3rd Circuit Court of Appeals reversed the ruling of the trial judge and sent
the case back down for further determinations. The Court of Appeals held that:
Programs in machine language were copyrightable.
Whether programs were contained on a ROM chip or anywhere else made no
difference.
The court also said that where properly "copyrighted material was concededly
copied," the balancing of harm tests normally applied in the determination of
whether to grant a preliminary injunction was inapplicable: So much for the
"little guy" whose actions were taken with wide open eyes. The Court of Appeals
left two questions open for further determination by the trial judge.
First, the Court of Appeals restated the doctrine that it is only the expression
of ideas, and not the idea themselves, that can be copyrighted. The court went
on to adopt the rule that if an idea may be expressed in only one way, the idea
and expression are said to be the same thing and, in that situation, even the
expression may not be copyrighted.
Subject of Debate
The question of what is an idea has long been the subject of debate; but the
Court of Appeals went on to say that the general function of translating source
code into object code qualifies as an idea. The court cautioned that even though
the function of translating such code in general was an idea, the function of
translating any particular programs, such as Apple-compatible software, was not
covered by this noncopyrightability rule if translation of other
non-Apple-compatible software could be accomplished by different expressions.
Second, the court left it to the trial judge to decide whether Apple Computer
had properly complied with the statutory formalities pertaining to copyright
registration.
Although Apple Computer has overcome major obstacles in the lawsuit, it would,
for the following reasons, be premature to say that Franklin has lost the case
at the trial level:
It may be determined that one or more of the most important operating programs
were governed by the idea-expression merger doctrine and are, therefore, not
copyrightable.
It may be determined that various copyright registrations procedures were not
followed.
It should be noted that if Franklin does lose the lawsuit, but survives the
damages awarded, Franklin can be positioned to develop its own programs to
obtain Apple Computer compatibility.
Not Copied
Indications are that the operating systems for the other major compatible
systems were not copied. This decision would, therefore, be unlikely to affect
companies manufacturing most of the other compatibles. There is a question of
how well the "non-copy" compatibles work.
If Apple Computer ultimately prevails, what effect, if any, will this decision
have on purchasers of the Franklin Ace? Will these people be considered to be
infringers of the Apple Computer operating system? Are these systems subject to
seizure?
Every case must be considered on its own facts. However, the copyright laws bar
copying or publishing materials without permission of the owner, not the use of
them. The few appellate courts that have decided the issue have held that
wrongfully copied materials in the possession of subsequent purchasers are not
subject to seizure for copyright infringement, with limited exceptions related
to imported copies. Note that the use of application software generally requires
that the application software be copied onto RAM which would seem to arguably
make users of application software liable for infringement.
Regardless of the ultimate outcome of this case, the opinion will presently
discourage any producer or intended producer of compatibles from copying
operating system programs. In most cases, the risk will far outweigh the
development cost savings.
The above information is provided for general educational purposes and not as
legal advice. Laws in areas in which we practice change continually and also
vary from jurisdiction to jurisdiction. Therefore no visitor to our site should
rely on any of the articles provided for legal advice, but should always consult
their own attorney regarding legal matters.
© 1983 Rob Hassett, Atlanta, Georgia. All Rights Reserved.