By AARON ZITNER
c.1996 The Boston Globe
WASHINGTON - Handing a loss to Lotus Development Corp., the Supreme
Court on Tuesday said it could reach no decision in a case that had
been billed as its first opportunity to consider what elements of
computer software can be protected by copyright.
The court said it was divided 4-4 on Lotus' claim that Borland
International Inc. had illegally taken parts of the Lotus 1-2-3
spreadsheet for one of its own products. By its split vote, the
justices upheld a lower court ruling against Lotus.
The ninth justice, John Paul Stevens, was stranded at his home in
Florida when oral arguments were heard Jan. 8, the day a major
blizzard hit Washington. But Stevens had previously removed himself
from the case.
Specialists in copyright law had been hoping the Supreme Court would
straighten out a decade of conflicting rulings on software by lower
courts, and many said they were disappointed by the two-sentence
ruling.
``This is like a World Cup soccer game that ends in a tie - very high
stakes, very high visibility and a very high desire for an outcome,''
said Lee Gesmer, a computer law specialist with the Boston law firm
Lucash Gesmer & Updegrove.
``The industry had been waiting for a case like this to reach the
Supreme Court for years,'' Gesmer said, ``and they had declined a
number of cases where they could weigh in on these issues.''
The court issued no opinions in the case and did not say how each
justice voted, which lawyers said was common in 4-4 ties. Similarly, a
court spokesman said Stevens never announces the reason for
disqualifying himself.
Lotus, based in Cambridge, Mass., had filed the lawsuit against
California-based Borland in 1990 for taking a system of menus and
commands from the 1-2-3 spreadsheet and incorporating them into
Borland's Quattro and Quattro Pro spreadsheets.
Lotus argued that the command menus were a creative product and
deserved the same copyright protection given to musical scores and
books. Lotus won its case in 1993 before US District Judge Robert E.
Keeton of Boston.
But the 1st US Circuit Court of Appeals threw out the case last March.
The appeals court agreed with Borland that the commands were more like
the order of pedals in a car or of buttons on a tape deck, which
cannot be copyrighted.
If it had won, Lotus had said it might seek more than $100 million in
damages.
The high court's action means the 1st Circuit's decision is a
precedent only in that jurisdiction, which includes Massachusetts,
Maine, New Hampshire, Rhode Island and Puerto Rico. Courts in other
jurisdictions may cite the 1st Circuit decision but are not bound by
it.
Lotus, now a unit of International Business Machines Corp., said in a
written statement that it was ``clearly disappointed'' by the ruling.
``We filed suit because we believed our position was consistent with
federal copyright law and prior case law,'' the company said. ``It is
disappointing that the Supreme Court did not provide more guidance to
the industry on these critical copyright issues.''
Others had been hoping for guidance, as well. ``One thing business
people want is certainty and the thing they didn't get here was
certainty,'' said Steven Henry, managing partner with Wolf, Greenfield
& Sacks, a Boston intellectual-property law firm.
The stakes are high for software users as well as for manufacturers.
If Lotus had won the suit early on, it would have made it harder for
Lotus users to switch to Quattro because they would have had to learn
a new set of commands, said Richard Stallman of the League for
Programming Freedom in Cambridge, which says legal protections for
software may block the improvement of computer technology.
``The investment made by Lotus in developing the program 1-2-3, of
which the (command) language is a small part, is dwarfed by the
investment that users made in learning that language,'' Stallman said.
``Lotus was attempting to appropriate the users' investment in
themselves'' by blocking them from using on the Borland program the
commands they had learned on 1-2-3.
Lawyers said courts in recent years have generally narrowed the
copyright protections for software, but the rulings are not uniform.
Further confusing the picture, courts have also expanded the patent
coverage for software. The US Patent and Trademark Office may also
approve rules to make more software patentable. Patent applications
must meet a higher legal standard to be granted and offer a different
legal protection than do copyrights.
IBM shares rose 3 7/8 Tuesday to close at 87.
NYT-01-17-96 0925EST