Citation[edit | edit source]

Brown Bag Software v. Symantec Corp., 12 U.S.P.Q.2d (BNA) 1191 (N.D. Cal. 1989), aff'd, 960 F. 2d 1465, 1476, 22 U.S.P.Q.2d (BNA) 1429 (9th Cir.) (full-text), cert. denied, 506 U.S. 869 (1992).

Factual Background[edit | edit source]

Dave Winer was the originator of outlining computer software for a personal computer. His company, Living Videotext, developed products called ThinkTank (for the IBM PC) and MORE (for the Apple Macintosh). These products take the metaphor of outlining and automate it through use of a personal computer. After Living Videotext released ThinkTank and MORE, John Friend developed for Brown Bag a "clone"-like competitive product (originally marketed as shareware) called PC-OUTLINE. For a number of reasons, Living Videotext did not pursue an infringement claim against John Friend or against Brown Bag.

Living Videotext ultimately merged into Symantec and Symantec marketed both ThinkTank and MORE. After the merger, Symantec hired John Friend to revise ThinkTank and MORE to the next level of innovation for an outlining product. John Friend ultimately developed for Symantec an advanced outlining product called GRANDVIEW. After GRANDVIEW was released, Brown Bag filed suit in the District Court claiming copyright and trade dress infringement of PC-OUTLINE by Symantec's GRANDVIEW software product.

District Court Proceedings[edit | edit source]

The district court granted summary judgment in favor of Symantec on the copyright claims. The district court's opinion did not address the Lanham Act trade dress issues.

Appellate Court Proceedings[edit | edit source]

The Ninth Circuit affirmed the district court's ruling on the copyright claims but remanded the action for the district court's consideration of the Lanham Act claims.

The Ninth Circuit affirmed detailed analytical dissection of the copyrightable expression from uncopyrightable features embodied in the user interface:

In particular, the extrinsic test for literary works requires analytical dissection of several "objective components of expression," . . . within a literary work such as plot, theme, character and dialogue. Similarity of these objective components in two literary works logically gives rise to a triable issue of similarity. Likewise, computer programs are subject to Shaw type analytic dissection of various components, e.g., screens, menus, and keystrokes. Because the district court found that Brown Bag made no showing of similarity along these lines with regard to copyrighted components of PC-OUTLINE, summary judgment was not precluded by the rule announced in Shaw.[1]

In evaluating Brown Bag's position that the overall "look and feel" of the programs at issue had to be compared and evaluated, the Ninth Circuit rejected Brown Bag's position because "the record fails to include any evidence indicating that Brown Bag requested the district court to make this analysis."[2] More importantly, however, the Ninth Circuit noted that:

The degree to which unprotected or unprotectable features must be eliminated from a comparison of two works is difficult to say. Although copyright protection is not afforded to certain elements of a work, such limitations "must not obscure the general proposition that copyright may inhere, under appropriate circumstances, in the selection and arrangement of unprotected components. Nimmer Section 13.03[F][5] at 13-78.44 n. 342; accord, Feist Publications, Inc. v. Rural Telephone Serv. Co., [499 U.S. 340], 111 S. Ct. 1282, 1289, 1294, 113 L.Ed. 2d 358 (1991); see Nimmer, Section 13.03[F][5], at 13-78.45 n. 345 (discussing Ninth Circuit cases).[3]

References[edit | edit source]

  1. 960 F.2d at 1477 (citations omitted).
  2. Id. at 1476.
  3. Id. at 1476 n.4.
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