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Copying Is Not the Ultimate Test for Copyright Infringement

Copying alone is insufficient to establish copyright infringement, according to the U. S. Court of Appeals for the Tenth Circuit.  In an infringement action involving computer software, the 10th Circuit held that copyright infringement does not depend solely on whether a defendant has copied a plaintiff’s work, but ultimately depends on whether the defendant copied elements that are subject to copyright protection.  Paycom Payroll, LLC v. Richison, Case No. 13-6181 (10th Cir., July 11, 2014) (Briscoe, C.J.).

The accused infringer, David Richison, wrote two software programs, called BOSS and Independence, for the processing of payrolls.  Richison assigned the rights in these programs to Ernest Group d/b/a Paycom Payroll, which he co-founded. Richison later left Paycom and formed his own company, Period Financial Corporation.  At Period, Richison continued to write software programs for payroll processing, including a program called Cromwell.  Paycom sued Richison, alleging that the Cromwell program, as well as other software, infringed the copyright in Richison’s earlier software, BOSS and Independence.

The parties agreed to submit the question of copyright infringement to a court-appointed special master.  The special master issued a report concluding that Cromwell infringed the plaintiff’s copyright in the earlier software programs.  The district court adopted the special master’s report and ordered the destruction of all copies of Cromwell.

Richison appealed to the 10th Circuit, arguing that the special master’s report was inadequate to support a finding of copyright infringement.  The 10th Circuit agreed, concluding that the special master had “proceeded from the false premise that an infringement analysis begins and ends with ‘copying in fact.’”  The ultimate question is not whether Cromwell was created from scratch or copied from the earlier software programs.  Instead, the proper inquiry is whether Cromwell copied the protected elements of the earlier software programs.

To determine whether protectable elements were copied, courts apply the “abstraction-filtration-comparison” test.  First, at the abstraction step, the ideas (which are not protected by copyright) are separated from the expression of the idea (which is subject to copyright protection).  Second, unprotectable elements (such as material that is in the public domain or otherwise unoriginal, or subject to the doctrines of merger and scenes à faire) are filtered out.  Finally, the remaining protected elements in the plaintiff’s software are compared to the allegedly copied software to determine if the two works are substantially similar.

The court concluded that in his report the special master failed to conduct the abstraction-filtration-comparison test.  The abstraction-filtration-comparison test must be performed “conscientiously and systematically.” While the special master did find that the menu items in the plaintiff’s software were unprotectable as a mode of operation, as being in the public domain, or being unoriginal, the special master failed to perform any further abstraction analysis of plaintiff’s software.  As the 10th Circuit noted “absent abstraction, . . . filtration cannot proceed.”  Thus, the 10th Circuit vacated the district court’s order adopting the special master’s report and remanded with instructions for the district court to request a more thorough report with which to analyze the copyright infringement claim.

Paycom Payroll, LLC v. Richison  - Copyrights / Software

© 2020 McDermott Will & Emery


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