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

Guest Post by Pamela Samuelson, Berkeley Law School.  Professor Samuelson’s newest article Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, is forthcoming in the Berkeley Technology Law Journal.

“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.

[1991 Patent-Copyright Overlap Study]

Among the most significant of the Study’s software 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.

68 thoughts on “Are Copyright and Patent Overlapping or Mutually Exclusive in Protecting Software Innovations?

  1. Unless semantic games are being played here with the word “exclusive” is there anyone in the field that does not know that many large software programs [by MS, Apple, Adobe, etc.] are protected by copyrights on the software code itself, some utility patents on some of the features, and, in some cases, some design patents on screen icons?

    1. Paul,

      Not sure what you mean by your post.

      “Exclusive” is per aspect being protected. Surely, you do not mean that an item must choose one area of protection, exclusive of all other areas (thereby not obtaining protections intended for different aspects).

  2. Great post. I think we need to move to a regime of election of IP regimes. Such a regime exists for Vessel Hull Design. Perhaps we could move towards such a regime by having the USPTO require disclaimers as a condition for patent grant. Such disclaimers would expressly exclude identifiable copyright subject matter. Disclaimer practice works for trademarks; it should be expanded to patents.

    1. Excuse my ignorance but what is meant by “election” of an “IP regime” and what is the “regime” that already exists for “Vessel Hull Design”. I mean, what vessels fall within the ambit of this particular “regime”?

    2. Shubba, same question that I put to Paul at 12.1.

      You cannot be seriously thinking that people should be forced to “elect” only partial protection for items that may have multiple aspects protectable under multiple IP laws, can you?

      1. There should be election when the areas of law overlap so closely to result in double compensation and in unworkable standards for the courts, such as in the area of design. That may be occurring anyway. As for specific works, such as software, if the possibility for overlap and multiple protection for the same aspects of the work because of unworkable standards is quite real and substantial, then the IP owner should elect or be required to make a disclaimer, probably in their patent, of any copyright protection for the overlap.

        1. SHubba,

          I believe that you are assuming your own conclusion. As pointed out herein, there is no such “double compensation,” as each of the different IP laws only overlap upon the item that itself has multiple aspects.

          Each of the aspects themselves are – and should be – fully protectable under each of the separate laws that those separate laws are geared to protect.

          As to “unworkable standards for the courts, such as in the area of design” – can you be a little more specific as to what you are indicating? While you do this, also try to keep in mind how this type of “unworkable standard” applies for those items that do not have multiple aspects. Your statement – on its face – implies a MUCH larger problem outside of any such “double compensation” that you may feel exists.

          With that in mind, your statement of “the possibility for overlap and multiple protection for the same aspects of the work” is simply a false statement and evinces a lack of understanding on your part on the non-overlap (subject matter) that the different IP laws protect. You assume a conclusion that you want to have in order to force an action that you feel should be in place, but your feelings just do not accurately reflect the actuality of the laws.

          1. You seem to respond out of anger. My analysis does not say anything about the size of the problem. It reaches the conclusion that in some instances the kind of separation which does exist across subject matter may not be possible. As with respect to software, the line between patented processes and copyrighted expression may be a fiction, or at least a line impossible to monitor. I think election of remedies or at least a disclaimer on the patent of any copyrightable material would be a narrow and appropriate solution. Disclaimer practice occurs in trademark law already.

            1. Not responding out of anger, Shubha, and don’t know why you would think that. (being direct and cutting through malarkey are not signs of anger).

              As is, the conclusion you reached merely evinces a lack of understanding on your part, and a further desire from you to limit rights that separate IP laws may furnish.

              Your post in reply continues to show a lack of understanding of both patent law and copyright law. You give no answer to the “difficulties” you posit (and as I noted, such difficulties would arise for items seeking only a singular aspect of protection).

              Disclaimer – in and of itself is barely an issue. The more concerning issue is the “why” you seek such, and the rather apparent lack of understanding of the pertinent laws for the context of which you want to push your “solution.”

  3. It is a matter of great pleasure to note that the Spring Bank Holiday in the UK coincides with Memorial Day in the US, and consequently the Federal Circuit will be doing nothing today to increase 35 USC 101-related entropy.

    Consider the novelty, utility and categorical compliance of the following claim:

    A method for preventing increase of disorder or randomness in the interpretation of 35 USC 101, comprising the steps of:
    (a) declaring a public holiday on 29 May 2017; and
    (b) ordering closure of the Federal Courts including the Court of Appeal for the Federal Circuit during that holiday
    whereby no decision can issue during the holiday prejudicial to the scope of section 101 or inappropriately expanding extra-statutory judicial exceptions.

    Best wishes to other commentators and readers for a pleasant holiday.

  4. Overlap? How about the drawings of a new and innovative keel design for an Americas Cup racing yacht? With the keel arts so crowded, anything new would be manifest only in detailed drawings or a “picture” claim of a patent.

    Does any copyright subsist in such drawings? Could there be something patentable in such drawings? Both, perhaps?

    1. The drawing would be eligible for patenting under the proposed “revisions” being promoted by the AIPLA, PCA (Patent Cl0wns of America) etc. It’s useful, non-natural, and it’s not ‘solely in the human mind’.

      1. There is this thing called Design Patents that already allows drawings to be eligible for patents.

        I know that you know this, because we have talked about how dreadful the Design Patent law has been written.

        Further, the various revisions to 101 being floated about have ZERO to do with “drawings would be eligible.”

        It’s like you are not even trying anymore….

        1. Anon. It amazes me how you are simultaneously so arrogant and ignorant.

          Design patents do not “cover” drawings. Reread 35 USC 171, if you even read it before.

          The ornamental design of an article of manufacture is not the same thing as a drawing.

          1. Arrogance with ignorance is shown below from Dobu (who cannot even be bothered with understanding the delightful article that he posted a link to).

            1. Not gonna let you off the hook here because your above comment and your exchange with dobu underscores your lack of understanding of the fundamentals.

              It has been suggested before that you are not a practitioner and this is fairly evident by your comments. In spite of this you seem to have a great following on here among people who seemingly are practitioners.

              This idea that software is a machine rather than a set of instructions given to a machine fits nicely with your idea that pictures themselves are patentable because both are misunderstandings about what IP protects and what it does not.

              1. LOL- my conversation with Dobu shows that HE does not understand the fundamentals.

                If you are “siding” with him, your critique is meaningless.

              2. you seem to have a great following on here

                LOL

                It’s more like a “small minds think alike” thing. They all get their scripts from the same echo chamber, and the lines are very easy to remember. All you gotta do, really, is take a p*ss on “socialists”, “academics,” and “regulation” every once in a while and you’re cred is cemented among the small-minded flag wavers and patent kool-aid drinkers who tr0ll here.

              3. Quasar: misunderstandings about what IP protects

                Rest assured: “anon” and his c0h0rts believe that IP should be permitted to protect everything that isn’t nailed down (take one guess as to why they want so badly for that to be true).

                Once you understand this, everything they do and say starts to make “sense”. Sure, the hypocricy and self-contradictory nature of what comes out of their pie h0les is overwhelming and transparent (as is the abject st 00 pity) but at least it’s explainable.

          2. The ornamental design of an article of manufacture is not the same thing as a drawing.

            A distinction without a difference – given the vernacular being used here.

            Lighten up Francis.

    2. Q: Overlap?
      A: Yes, overlap. As I stated below, the question of overlap is rather a bland question. Is there anything that you can think of to interject some excitement to the rather mundane fact that an item can have several different aspects to the item, and each of the several aspects may quite uneventfully fall into those things that different sets of IP laws protect?

      Q:How about the drawings of a new and innovative keel design for an Americas Cup racing yacht?
      A: How about them? Or perhaps you are confusing a pipe and a drawing of a pipe…?
      link to en.wikipedia.org

      Q: With the keel arts so crowded, anything new would be manifest only in detailed drawings or a “picture” claim of a patent.
      A: Or not. I see no basis for the conclusory statement that you make here.

      Q: Does any copyright subsist in such drawings?
      A: Technically speaking, copyright subsists quite apart from what the expression is completed for – and where that expression is made. Of course (and aside from any “This is not a pipe” issues), it is well known that a person submitting a patent application may preserve copyright protection in items within the submission. Maybe you want to throw something else against the wall?

      Q: Could there be something patentable in such drawings?
      A: Of course. But’s that not that interesting of a question.

      Q: Both, perhaps?
      A: Again, of course. But again, not that interesting of a question.

  5. Affirmative compliance with 35 USC 101 including the four eligible categories is a neglected area of study, amongst attorneys, amongst commentators and amongst judges.

    On a quick re-reading of Bilski, Justice Kennedy appears to have ducked the problem of deciding what is a positively eligible process, whilst concluding that the claimed subject-matter was a judicial exception. With hindsight this was an unfortunate cop-out: it was as much the duty of the Court to define what is, as a matter of substance, WITHIN the statute as to define that subject matter which is OUTWITH the statute.

    1. Interesting thought Paul.

      What will commentators here think, about the judicial function of 35 USC 101, to give effect to the patents clause of the Constitution, when they read your observation?

      Perhaps that everything man-made should be eligible, except for narrowly construed judicial exceptions?

      Or perhaps that patents are a restraint of trade, to be issued only (exceptionally) when they seem to promote progress within the ambit of the useful arts; but otherwise, in general, not?

      1. You guys just generate these mud and throw it against the wall everyday. You seem to exploit the ignorance of the judges and Congress.

      2. about the judicial function of 35 USC 101,

        That particular “mud” (I would characterize it as something else 😉 ), should be disabused by remembering the separation of powers doctrine that exists in our Sovereign.

        The ONLY “judicial” function is to interpret – NOT to impose “implicit” (or explicit) legislation scrivened from the Bench.

        MaxDrei’s own implicit plea for the Court to impose their policies reflects a sad reality that we have not yet learned the historical lesson. Thus, this invites again my resolution that Congress take up their Constitutionally valid power to employ jurisdiction stripping of a non-original jurisdiction matter, and remove the Supreme Court from hearing patent law appeals. Yes, the simian-fire-hosing does make it necessary to also create a new untainted Article III patent court (in order to preserve the actual holding of Marbury), but that’s a minor point to the major action to keep the addict at bay and to stop the Court from thrusting their fingers into the nose of wax of 35 USC 101.

        Additionally, NW, I would point out to you that Mr. Cole is (perhaps a bit slowly) starting to change his tune and apply a bit more vigor to his critiques of the Supreme Court.

        He is (again, slowly) taking steps away from viewing the “Supreme” in the “Supreme Court” as some deity-type mandate.

        Others would do well to remember that the checks and balances in our Sovereign apply to ALL three branches and that the Supreme Court itself is NOT above the Constitution.

        I would then renew my call for anyone thinking otherwise to explicitly share their particular attorney State oath, and we can discuss the duty that attorneys actually have when faced with a wayward Supreme Court….

          1. LOL – this must have recently escaped moderation.

            Are we back to playing that mindless game of yours “JD?’

            You would be better off with the funny gifs that you used to share.

  6. To answer the title of the thread:

    Yes.

    Copyright and Patent are BOTH Overlapping or Mutually Exclusive in Protecting Software Innovations.

    They are overlapping in the sense that a single item may have multiple aspects.

    Software has aspects of both a writing for expressiveness and a writing for the patent aspect of a manufacture (a machine component).

    The mutually exclusive aspect comes in from the law side: each of the two protections are configured to cover aspects that the other does not cover.

    Does anyone really not know or understand this?

    Copyright: protects expression

    Patent: protects utility (or the word that Malcolm pretends that he is three years old and cannot comprehend: functionality.

    Funny how utility is not a “statutory category,” and yet anyone (being inte11ectually honest) and discussing 101 full well “gets” the meaning.

    That this is somehow a mystery or is something to be “debated” is quite frankly asinine.

    So let’s recap:

    Software is not logic.
    Software is not math.
    Software is not a story.
    Software is not the thought of software.
    Software is not the execution of software.

    Software is a “ware.”

    Built by the hand of man (nowhere is there a limitation that excludes the work of the hand of man from being a manufacture just because the form of that manufacture happens to be in writing).
    Software is ONLY built to be a machine component.

    Anything manufactured in the form of software can have an equivalent (in the patent sense, and yes, that does mean that it does not have to be “exactly equal“) in the other types of “wares” as a Person Having Ordinary Skill In The Art readily knows.

    That would be hardware or firmware.

    Class dismissed.

    1. I read Samuelson’s papers in law school. My take away was that she had no idea what software was or how it worked. Her arguments about similarities in comparing designs of flow charts was so naïve as to elicit belly laughs from me (and crying later when I realized people like this were running our legal system.)

      Great comments Anon. I agree with everything you wrote, although I prefer the blue Anon.

    2. How does “vaporware” fit in your list?

      And before you dismiss it as just someone being clever, keep in mind “software” was coined as a joke.
      http://www.niquette.com

      “Machine component”? Not to anyone who actually authors software.

      1. Machine component”? Not to anyone who actually authors software.

        LOL.

        No, seriously.

        Your answer is just not real.

      2. Dobu you should like a low level person that is assigned work. I used to be a software engineer and a product manager.

        Actually, one of things I found interesting is that our products were both hardware and software. And the interesting thing was that you had to hire about the same number of people whether you were maintaining the functionality in hardware or software. Think about that.

        (I can also tell you the patent application that I wrote that is the most valuable to the tune of 10’s of millions of licensing deals would be invalid under the remove all software assumption. And, I worked with the inventor that made the invention by himself. It is a combination of hardware and software. You could strip the hardware down to sensors, CPU, and emitters.)

        None of what you guys say properly separates

      3. Dobu,

        Let us engage on your first point…

        Let’s start with:

        va·por·ware
        ˈvāpərˌwer/
        noun COMPUTING informal

        software or hardware that has been advertised but is not yet available to buy, either because it is only a concept or because it is still being written or designed.

        from the quick Google search for defining that term.

        Is that an acceptable definition to you for our dialogue?

        (further, your linked story is amusing, but what point do you think it makes? It certainly does NOT support your larger views here, nor does it take anything at all away from the views that I have posted).

        1. …and I would be remiss if I did not reference the penultimate statement of your own linked story (even – or especially – if that story does not support ANY of your views):

          “To be sure, you won’t know a priori the eventual value of your daily entries, but you have laid the foundation — you have put in place the time-line — for authenticating your claims to anything you will ever do that subsequently reveals itself to the world as being worthwhile — including the coining of an important word. The payoff for that particular entry then can be immense, and your ego will be the beneficiary. Not doing so — not planning ahead — can result in painful lamentations as this memoir demonstrates.”

          Needless to say, I look forward to engaging with you Dobu on this subject matter.

          1. Anon,

            Okay, if I have to hold your hand and lead you through it . . .

            You make much hay of “software” being a “ware”. It was classified as a “ware” as a joke, not as some attempt to equate it with actual machine components.

            I did not ask for a definition of “vaporware”, I asked how it fit in your list of “wares”, where you continually wave your arms and attempt to drag software into the realm of actual machine components because someone called it a “ware”. Is vaporware a machine component, too, just because it’s a “ware”?

            Software is information. Try googling “components of a computer”, and see how far down you have to go before you find a page that lists “software” as one of those components. Good luck.

            1. Potential Post rePeat…

              I did not ask for a definition of “vaporware”, I asked how it fit in your list of “wares”,

              And I answered you with a potential definition, so that we could continue the dialogue.

              You seem that you only wanted to make a joke (and a rather bad one at that), as you apparently only skimmed the item that you linked to and do not understand how that article simply does not support your “world view.”

              We can proceed (if you dare), if you simply tell me if the definition of vaporware is acceptable.

              Oh, and I would also recommend that you read the article that you linked to. No guarantee that it will help you, but it certainly cannot hurt to try.

            2. Potential Post rerePeat…

              I did not ask for a definition of “vaporware”, I asked how it fit in your list of “wares”,

              And I answered you with a potential definition, so that we could continue the dialogue.

              You seem that you only wanted to make a joke (and a rather bad one at that), as you apparently only skimmed the item that you linked to and do not understand how that article simply does not support your “world view.”

              We can proceed (if you dare), if you simply tell me if the definition of vaporware is acceptable.

              Oh, and I would also recommend that you read the article that you linked to. No guarantee that it will help you, but it certainly cannot hurt to try.

            3. and see how far down you have to go before you find a page

              All you have to do is ask the right question…
              Page 1, for example of a Google search to “Is software a computer component?” provides numerous hits.

              This one in particular is interesting: link to osdata.com

              Your “world view” is simply not correct Dobu – time for you to stop marching with the lemmings.

              1. I have no issues with that definition of “vaporware”.

                Yes, I read the article I linked, and it supports my assertion that “software” was coined as a joke, and not a serious classification of “wares”.

                Quoting your linked article: “A computer system consists of three major components: hardware, software, and humans . . .”.

                And this is the page you chose to champion your cause? Now, that’s laugh-out-loud funny. Tell me, Anon . . . in addition to being “machine components”, are humans a “manufacture”, too?
                =D

                1. You still fail to grasp the full story – mayhaps initially coined “as a joke,” the author laments his lack of being able to “prove” his authorship for the valuable meaning that the term as come to represent.

                  This very much does NOT align with your “world view.”

                  And yes, the article does list the system as having two wares and humans. Human components are just not the “b00geyman” that you want them to be, and the other two – ARE components in the sense that speaks to being protecting by patents.

                  As they (hardware and software) are components (which was your main issue), we can then next turn to whether those components are manufactured as the term “manufacture” is understood under patent law.

                  Clearly BOTH are – and just as clearly, they are manufactured differently, and that differently manufactured is what brings the benefits of one to the other.

                  Then, touching back on vaporware, as you accept the definition, I would direct you to the parts of the definition that drive distinctions, and explicitly note that THAT definition treats BOTH hardware and software as possibly being connoted (depending on those distinguishing items) as vaporware.

                  Please let me know if you are still following along….

                2. I linked to the article as a source for the word “software”, not as some kind of commentary on my alleged “world view”. I don’t follow how the author’s desire for recognition negates the article’s value as an information source.

                  Just as you reject your quoted article’s inclusion of “humans” as “machine components”, I reject your inclusion of “software” as a machine component. I will also point out that you left the word “machine” out of your computer component search. Try again.

                  Vaporware . . . advertised hardware or software that exists only as a concept . . . in the mind . . . abstract.

                3. Dobu,

                  I have to ask (without snark): are you really as dense as you appear to be in this exchange?

                  Part 1:

                  You state (as if making a point for yourself):

                  I linked to the article as a source for the word “software”, not as some kind of commentary on my alleged “world view”. I don’t follow how the author’s desire for recognition negates the article’s value as an information source.

                  Yes, it is already observed that you linked to an article because you thought it made a point about the word “software.” You saw that it appeared to start as a joke,

                  and that is all the thinking that you employed.

                  My counter – clearly – is that you cannot stop thinking at such a juvenile level.

                  You completely failed to grasp the full impact of the item that you yourself brought to the table. You keep on saying “I don’t follow” and it is clear that you miss the irony of you bringing this story forward. The story may have indicated a source of the word “software” and the musings of the initial views, but that story supports the very opposite of what the point of software as a war in relation to hardware (and firmware) mean.

                  Point blank: the story you supplied fully supports my views and not yours. One simply does not stop at the origin, just because that origin sounds in a joke that you like.

                  You strike out here and do not have the sense to even realize what is going on. It is simply not a matter of only origin of the word, but the meaning of the word as the word has developed. If one could stop only at the origin, then the rest of the story would be quite meaningless and the story would not even be told.

                  My point.

                  Part 2:

                  Again, you seem oblivious to the simple meaning behind items on the table for discussion.

                  To wit: “Just as you reject your quoted article’s inclusion of “humans” as “machine components”, I reject your inclusion of “software” as a machine component. I will also point out that you left the word “machine” out of your computer component search. Try again.

                  I need not “try again,” as my point is proven. Just because you cannot seem to grasp that, does not make it any less so.

                  First, I do not “reject” the article’s inclusion of “humans” as “machine components” because the article makes no such statement.

                  I point out that the inclusion of “humans” is to the system (not machine). I further comment that humans as an element of a system – in the patent world – is simply not a b00geyman that you seem to think that it is. It is beyond clear that the system has man and not-man aspects. Software then is included in the not-man aspect – along with the other system component hardware.

                  This clearly places hardware and software on equal footing – directly to my point on the “wares.”

                  My point.

                  Further, leaving “machine” out of my Google search changes nothing. Why would you even think otherwise?

                  Did you even bother trying the point that you attempt to make by running a Google search with “Is software a computer machine component?” instead?

                  Let me share the answer: NO, you did not.

                  My point.

                  Vaporware . . . advertised hardware or software that exists only as a concept . . . in the mind . . . abstract.

                  Great – now apply some thinking to what is going on here, and what I have already shared.

                  Note critically that the definition treats software AND hardware equally.

                  Then note that the distinction that you glom on to (applying equally to both) is a distinction apart from what hardware or software is.

                  Then note above in my lesson that I already make this distinction by stating that software is not the thought of software.

                  Quite clearly, you have a disconnect with the meaning of the “vapor” portion, and you are thinking that the “ware” portion is the portion that carries the meaning of “only a concept” or “in the mind” or “abstract.”

                  That is a mindless view.

                  Again, my point.

                  You have missed on every swing that you have taken.

                  And missed badly.

                4. Wow. You are just . . . all over the place. Someone points out a misconception in your world view, you go all apoplectic.

                  I think there’s a fault in your wetware.
                  =D

                  He sh00ts, he scooooores!

                5. There is NO “all over the place” when what I am doing is showing you – point by point – where you are incorrect. That phrase carries with it an implication that just does not exist here.

                  If you think that I have shown a lot (and that lot is all over the place), that is only because YOU are wrong all over the place.

                  Instead of empty snark of “He sh00ts, he scooooores!” you might actually address the substantive points put on the table.

    1. Also, this 1999 article by Gary R. Ignantin has perhaps the best lead-in dueling quotes…

      As the majority of hobbyists must be aware, most of you steal your software.
      -Bill Gates, founder of Microsoft Corporation

      Calling all your potential future customers thieves is perhaps ‘uncool’
      marketing strategy.

      -Homebrew Computer Club Member

      See: link to scholarship.law.upenn.edu

  7. Nicely reported.
    [The two do need to be timing-coordinated in some cases to prevent public disclosures of one from becoming prior art to the other. In that regard, note that AIA 102 and 103 applies to design patents as well as utility patents, and the copyright authors may not be the patent claim inventors, or vice versa.]

  8. My view for 10,000 feet is that APIs are copyrightable and not patentable.

    There should be no excuse for anybody not authorized to copy somebody else’s API for competitive purposes or simply to avoid paying a licensing fee.

    I do not by the argument whatsoever that APIs are patentable simply because they are used by programs in a computer and therefore smack of functionality.

    1. The assumption in the industry for decades was that APIs were neither patentable nor copyrightable. There is no public policy interest in preventing interoperability to create monopolies when no value is created. And APIs are not creative expression nor are they functional machines.

      So many have proceeded under the assumption that the law will continue as it was. But the CAFC wants to reverse that. It’s likely that someday a case will end up before a less corrupt circuit and the result will be the opposite and we’ll have to see what the Supremes think.

      But the problem for the industry now is dealing with the change. Every consumer device is built on interoperable APIs that could now be the subject of copyright claims. Every PC, every cell phone, every tablet depends on dozens of unlicensed APIs to operate. Microsoft’s and Dell’s business models were built from the beginning on the basis of APIs not being copyrightable.

      But the industry will be more careful about licensing in the future. It’s possible to make it work either way; there’s no inherent reason the industry can’t work around bad copyright rules. It isn’t like bad patent rules which can ruin you no matter how careful you are through strict liability: Copyright liability requires actual copying. The transition could get a little bit rocky, though.

      1. Owen, I think Java was and is somewhat unique given Sun’s licensing policy, the takeover by Oracle and Google’s defiance.

        It will not be repeated.

    2. A couple of amici briefs in support of Google in Oracle v. Google.

      Mozilla:

      link to blog.mozilla.org

      Computer and Communications Industry Association:

      link to ccianet.org

      At the end of their brief, the CCIA state that “Oracle and its amici complain that the district court improperly excluded evidence about the harm Android may have caused to markets other than the mobile market.” But the CCIA also note that Judge Alsup’s Omnibus Order on Motions in limine also excluded evidence favorable to Google, including in particular evidence that, in the 1990s, both Sun Microsystems and Oracle were members of the American Committee for Interoperable Systems (ACIS), which lobbied and wrote amici briefs (including one in Lotus v. Borland) articulating the contrary position to that taken by Oracle in Oracle v. Google. Indeed ACIS, at the time, was chaired by Peter Choy, who was Deputy General Counsel of Sun Microsystems. They include a link to their website, which contains a whole load of amici briefs:

      link to ccianet.org

      There is also a footnote in the CCIA referencing a substantial paper by Prof. Peter Menell on SSRN, entitled Rise of the API Copyright Dead?: An Updated Epitaph for Copyright Protection of Network and Functional Features of Computer Software at the following URL:

      link to papers.ssrn.com

  9. “functionality” is not eligible subject matter.

    Great.

    No one said any such thing, though.

    When you put away the straw, you might then want to realize that what is being said is NOT “subject matter,” but the “thing” being protected.

    No wonder you butcher both patents and copyright.

    Here are two short direct English sentences to help you out:

    Copyright protects expression.
    Patents protect utility.

    Functionality falls under utility, by the by.

    1. Functionality falls under utility, by the by

      First, “utility” is also not eligible subject matter. Go ahead and try to claim a new utility if you doubt me.

      Second, utility falls under functionality, not the other way around. Functionality is the broader concept, at least from the US patent law perspective.

      “ “functionality” is not eligible subject matter.” Great. No one said any such thing, though.

      LOL I’ll repeat the quote again: According to the Study, the protection of functionality “is assigned to patents

      Somebody definitely said “such a thing.”

      Fourth, you really know nothing about this topic. Give us all a break, please.

      1. Keep on beating that strawman of eligible subject matter (while clenching tight your eyes to what it means for the law to protect a given type of thing).

        It is sooooo cute.

        😉

        ps – what did the report have to say about logic itself?

  10. Another huge point that can’t be made often enough: there’s endless reams of hugely important discovery out there that isn’t protectable with copyrights or patents.

    The freedom that results from this absence of protection is a big deal to everybody, not just researchers and scientists. It’s a fundamental and necessary feature of our IP regime, not a bug.

  11. According to the Study, the protection of functionality “is assigned to patents

    Unfortunately for “the Study” and everyone else, “functionality” is not eligible subject matter.

    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.”

    Indeed they do. That’s why software doesn’t belong in the patent system. It never did. And eventually it will be expunged because there is no way forward except for a complete reboot.

    It’s still a mystery why we listen to the entitled whiners out there who reject the fundamental premises of the system and insist that their “do it on a computer” silliness has to be patentable. Because they say so! And because fake “structure”! Just look at all that fake “structure”! Very impressive, and very fake. And yes they want to be able to describe that fake “structure” at a high level of abstraction or else their magnificent and S00per D00per Incredibly Important “innovations” won’t be worth anything. <— this is the script, folks, for the past twenty years. Try to believe it.

    1. I think the author was trying to say that the difference between copyrightable subject matter and patentable subject matter lies in functionality. If the so-called copyrightable subject matter is actually a functional part of an apparatus, and the copyright would give exclusive rights in such an apparatus, then that the subject matter should not be copyrighted but rather should be dealt with by the patent laws, if at all.

      1. A copyright does not give “exclusive” rights like a patent in anything, much less apparatus – infringement requires copying and does not prevent genuinely independent creation or development, especially just for the same function.

        1. especially just for the same function.

          That appears to be miss the larger point that function itself is NEVER protected by copyright….

      2. I think the author was trying to say that the difference between copyrightable subject matter and patentable subject matter lies in functionality.

        Nope. That doesn’t work.

        Books and movies have functions. They are, therefore, functional. They posses a “functionality”.

        We can play word games all day long. We all know that the distinctions are more clear cut and also a bit more (but not much more) complex than can be captured in simple squishy terms like “functionality” or “expression.”

        1. Books and movies have functions. They are, therefore, functional. They posses a “functionality”.

          We can play word games all day long

          Some of us have called the likes of what you are doing as merely an obfuscating word game, and have attempted to call for you to stop playing such games.

          I even shared with you an explication (the Simple Set Theory explanation of the exceptions to the judicial doctrine of printed matter), simply told in direct statements (hewing to your “call” for better English), and repeatedly invited you to a dialogue on that explication, followed by months of my presenting hyperlinks to the explication, and then reprinting the explication in whole.

          You refused every time to engage in any meaningful and inte11ectually honest manner with that explication.

          That you now seem to want to take a position of “We all know that the distinctions are more clear cut and also a bit more (but not much more) complex than can be captured in simple squishy terms like “functionality” or “expression.” while YOU still want to play silly games with trying to confuse eligibility and the four particular classes of statutory subject matter with the overarching term of “functionality,” while continuously also prevaricating with your attempt to make software NOTHING but logic, is beyond brazen.

          The level of Accuse Others in your words is beyond brazen.

          It’s still a mystery why we listen to the entitled whiners out there who reject the fundamental premises of the system

          Indeed – but you simply are on the wrong side of your own statement.

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