Lexmark International, Inc. v. Static Control Components, Inc.

SUTTON, Circuit Judge.

This copyright dispute involves two computer programs, two federal statutes and three theories of liability. The first computer program, known as the "Toner Loading Program," calculates toner level in printers manufactured by Lexmark International. The second computer program, known as the "Printer Engine Program," controls various printer functions on Lexmark printers.

The first statute, the general copyright statute, 17 U.S.C. § 101 et seq., has been with us in one form or another since 1790 and grants copyright protection to "original works of authorship fixed in any tangible medium of expression," id. § 102(a), but does not "extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery," id. § 102(b). The second federal statute, the Digital Millenium Copyright Act (DMCA), 17 U.S.C. § 1201 et seq., was enacted in 1998 and proscribes the sale of products that may be used to "circumvent a technological measure that effectively controls access to a work" protected by the copyright statute.

These statutes became relevant to these computer programs when Lexmark began selling discount toner cartridges for its printers that only Lexmark could re-fill and that contained a microchip designed to prevent Lexmark printers from functioning with toner cartridges that Lexmark had not re-filled. In an effort to support the market for competing toner cartridges, Static Control Components (SCC) mimicked Lexmark's computer chip and sold it to companies interested in selling remanufactured toner cartridges.

Lexmark brought this action to enjoin the sale of SCC's computer chips and raised three theories of liability in doing so. Lexmark claimed that SCC's chip copied the Toner Loading Program in violation of the federal copyright statute. It claimed that SCC's chip violated the DMCA by circumventing a technological measure designed to control access to the Toner Loading Program. And it claimed that SCC's chip violated the DMCA by circumventing a technological measure designed to control access to the Printer Engine Program.

After an evidentiary hearing, the district court decided that Lexmark had shown a likelihood of success on each claim and entered a preliminary injunction against SCC. As we view Lexmark's prospects for success on each of these claims differently, we vacate the preliminary injunction and remand the case for further proceedings.

The Parties. Headquartered in Lexington, Kentucky, Lexmark is a leading manufacturer of laser and inkjet printers and has sold printers and toner cartridges for its printers since 1991. Lexmark is a publicly traded corporation and reported $4.8 billion in revenue for 2003.

Static Control Components is a privately held company headquartered in Sanford, North Carolina. Started in 1987, it currently employs approximately 1,000 workers and makes a wide range of technology products, including microchips that it sells to third-party companies for use in remanufactured toner cartridges.

The Two Computer Programs. The first program at issue is Lexmark's "Toner Loading Program," which measures the amount of toner remaining in the cartridge based on the amount of torque (rotational force) sensed on the toner cartridge wheel. Maggs Aff. ¶ 24, JA 709. The Toner Loading Program relies upon eight program commands — "add," "sub" (an abbreviation for subtract), "mul" (multiply), "pct" (take a percent), "jump," "if," "load," and "exit" — to execute one of several mathematical equations that convert the torque reading into an approximation of toner level. Goldberg Aff. ¶ 21, JA 578; Maggs Aff. ¶ 24, JA 709. If the torque is less than a certain threshold value, the program executes one equation to calculate the toner level, and if the torque equals or exceeds that threshold, the program executes a different equation to calculate the toner level. Goldberg Aff. ¶ 19, JA 576-77. The exact code of the Toner Loading Program varies slightly for each printer model, and this case involves two versions of the program — one for Lexmark's T520 and T522 printer models and another for Lexmark's T620 and T622 printer models. The Toner Loading Program for the T520/522 printers comprises 33 program instructions and occupies 37 bytes of memory, while the Toner Loading Program for the T620/622 printers comprises 45 program commands and uses 55 bytes of memory. To illustrate the modest size of this computer program, the phrase "Lexmark International, Inc. vs. Static Control Components, Inc." in ASCII format would occupy more memory than either version of the Toner Loading Program. Burchette Aff. ¶ 13, JA 106. The Toner Loading Program is located on a microchip contained in Lexmark's toner cartridges.

The second program is Lexmark's "Printer Engine Program." The Printer Engine Program occupies far more memory than the Toner Loading Program and translates into over 20 printed pages of program commands. The program controls a variety of functions on each printer — e.g., paper feed and movement, and printer motor control. D. Ct. Op. ¶ 24, at 5. Unlike the Toner Loading Program, the Printer Engine Program is located within Lexmark's printers.

Lexmark obtained Certificates of Registration from the Copyright Office for both programs. Neither program is encrypted and each can be read (and copied) directly from its respective memory chip. Id. ¶ 44, at 8.

Lexmark's Prebate and Non-Prebate Cartridges. Lexmark markets two types of toner cartridges for its laser printers: "Prebate" and "Non-Prebate." Prebate cartridges are sold to business consumers at an up-front discount. In exchange, consumers agree to use the cartridge just once, then return the empty unit to Lexmark; a "shrink-wrap" agreement on the top of each cartridge box spells out these restrictions and confirms that using the cartridge constitutes acceptance of these terms. Id. ¶¶ 13-14, at 3. Non-Prebate cartridges are sold without any discount, are not subject to any restrictive agreements and may be re-filled with toner and reused by the consumer or a third-party remanufacturer. Id. ¶¶ 15-18, at 3-4.

To ensure that consumers adhere to the Prebate agreement, Lexmark uses an "authentication sequence" that performs a "secret handshake" between each Lexmark printer and a microchip on each Lexmark toner cartridge. Both the printer and the chip employ a publicly available encryption algorithm known as "Secure Hash Algorigthm-1" or "SHA-1," which calculates a "Message Authentication Code" based on data in the microchip's memory. If the code calculated by the microchip matches the code calculated by the printer, the printer functions normally. If the two values do not match, the printer returns an error message and will not operate, blocking consumers from using toner cartridges that Lexmark has not authorized. Yaro Decl. ¶ 7, JA 82 ("To prevent unauthorized toner cartridges from being used with Lexmark's T520/522 and T620/622 laser printers, Lexmark utilizes an authentication sequence.").

SCC's Competing Microchip. SCC sells its own microchip — the "SMARTEK" chip — that permits consumers to satisfy Lexmark's authentication sequence each time it would otherwise be performed, i.e., when the printer is turned on or the printer door is opened and shut. SCC's advertising boasts that its chip breaks Lexmark's "secret code" (the authentication sequence), which "even on the fastest computer available today ... would take Years to run through all of the possible 8-byte combinations to break." D. Ct. Op. ¶ 103, at 19. SCC sells these chips to third-party cartridge remanufacturers, permitting them to replace Lexmark's chip with the SMARTEK chip on refurbished Prebate cartridges. These recycled cartridges are in turn sold to consumers as a low-cost alternative to new Lexmark toner cartridges.

Each of SCC's SMARTEK chips also contains a copy of Lexmark's Toner Loading Program, which SCC claims is necessary to make its product compatible with Lexmark's printers. The SMARTEK chips thus contain an identical copy of the Toner Loading Program that is appropriate for each Lexmark printer, and SCC acknowledges that it "slavishly copied" the Toner Loading Program "in the exact format and order" found on Lexmark's cartridge chip. Id. ¶¶ 92, 96, at 18. A side-by-side comparison of the two data sequences reveals no differences between them. Able Decl. ¶¶ 10-15, JA 502-05.

The parties agree that Lexmark's printers perform a second calculation independent of the authentication sequence. After the authentication sequence concludes, the Printer Engine Program downloads a copy of the Toner Loading Program from the toner cartridge chip onto the printer in order to measure toner levels. Before the printer runs the Toner Loading Program, it performs a "checksum operation," a "commonly used technique" to ensure the "integrity" of the data downloaded from the toner cartridge microchip. D. Ct. Op. ¶ 77, at 14. Under this operation, the printer compares the result of a calculation performed on the data bytes of the transferred copy of the Toner Loading Program with the "checksum value" located elsewhere on the toner cartridge microchip. If the two values do not match, the printer assumes that the data was corrupted in the program download, displays an error message and ceases functioning. If the two values do match, the printer continues to operate.

The Lawsuit. On December 30, 2002, Lexmark filed a complaint in the United States District Court for the Eastern District of Kentucky seeking to enjoin SCC (on a preliminary and permanent basis) from distributing the SMARTEK chips. The complaint contained three theories of liability. First, Lexmark alleged that SCC violated the copyright statute, 17 U.S.C. § 106, by reproducing the Toner Loading Program on its SMARTEK chip. Second, it alleged that SCC violated the DMCA by selling a product that circumvents access controls on the Toner Loading Program. Third, it alleged that SCC violated the DMCA by selling a product that circumvents access controls on the Printer Engine Program.

The district court initially concluded that Lexmark had established a likelihood of success on its copyright infringement claim for SCC's copying of its Toner Loading Program. Computer programs are "literary works" entitled to copyright protection, the court reasoned, and the "requisite level of creativity" necessary to establish the originality of the programs "is extremely low." D. Ct. Op. ¶¶ 9, 11, at 23. Because the Toner Loading Program could be written in multiple ways, the district court added, SCC had not rebutted the presumption of validity created by Lexmark's copyright registration for the Toner Loading Program. Id. ¶ 13-14, at 24; see also 17 U.S.C. § 410(c).

In coming to this conclusion, the district court rejected each of the defenses asserted by SCC. First, the district court determined that the Toner Loading Program was not a "lock-out code" (and unprotectable because its elements are dictated by functional compatibility requirements) since "the use of any Toner Loading Program could still result in a valid authentication sequence and a valid checksum." Id. ¶ 22, at 26. But even if the Toner Loading Program were a "lock-out code," the district court believed copyright infringement had still taken place because "`[s]ecurity systems are just like any other computer program and are not inherently unprotectable.'" Id. ¶ 25, at 27 (quoting Atari Games Corp. v. Nintendo of Am., Inc., Nos. 88-4805 & 89-0027, 1993 WL 214886, at *7 (N.D.Cal. Apr.15, 1993) ("Atari II")). Second, the court rejected SCC's fair use defense in view of the commercial purpose of the copying, the wholesale nature of the copying and the effect of the copying on the toner cartridge market. Id. at 28-30. Third, the district court rejected SCC's argument that Lexmark was "misus[ing]" the copyright laws "to secure an exclusive right or limited monopoly not expressly granted by copyright law." Id. at 38-39.

The district court next determined that Lexmark had established a likelihood of success on its two DMCA claims, one relating to the Toner Loading Program, the other relating to the Printer Engine Program. Observing that the anti-trafficking provision of the DMCA, 17 U.S.C. § 1201(a)(2), "prohibits any product or device that circumvents a technological measure that prevents unauthorized access to a copyrighted work," D. Ct. Op. ¶ 64, at 40, the district court concluded that Lexmark had established a likelihood of success that SCC's SMARTEK chip did this very thing. In the district court's view, Lexmark's authentication sequence (not the checksum calculation) constitutes a "technological measure" that "effectively controls access" to two copyrighted works — the Toner Loading Program and the Printer Engine Program. The authentication sequence, it determined, "controls access" because it "controls the consumer's ability to make use of these programs." Id. ¶ 71, at 41. Because SCC designed the SMARTEK chip to circumvent Lexmark's authentication sequence, because circumvention was the sole commercial purpose of the SMARTEK chip and because SCC markets these chips as performing that function, the court reasoned that SCC likely had violated the DMCA's prohibitions on marketing circumvention devices. Id. at 42-43. See 17 U.S.C. 1201(a)(2).

Finally, the district court determined that the DMCA's "reverse engineering" exception to liability did not apply. D. Ct. Op. at 47-48; see 17 U.S.C. § 1201(f)(2), (3). Under the exception, circumvention devices may be produced and made available to others "solely for the purpose of enabling interoperability of an independently created program with other programs." 17 U.S.C. § 1201(f)(3). The court deemed this defense inapplicable because "SCC's SMARTEK microchips cannot be considered independently created computer programs." D. Ct. Op. ¶ 94, at 47.

Because Lexmark had established a likelihood of success on the merits, the district court presumed irreparable harm, id. at 48-49, and concluded that the public interest would favor an injunction against SCC, id. at 50-51. After weighing other potential hardships, the district court concluded that the preliminary injunction should issue.

We apply an abuse-of-discretion standard in reviewing a district court's entry of a preliminary injunction. Performance Unlimited, Inc. v. Questar Publishers, Inc., 52 F.3d 1373, 1378 (6th Cir. 1995). A district court abuses its discretion if it relies upon clearly erroneous findings of fact, employs an incorrect legal standard or improperly applies the correct law to the facts. See id.

Four factors govern whether a district court should enter a preliminary injunction: (1) the plaintiff's likelihood of success on the merits; (2) the possibility of irreparable harm to the plaintiff in the absence of an injunction; (3) public interest considerations; and (4) potential harm to third parties. Forry, Inc. v. Neundorfer, Inc., 837 F.2d 259, 262 (6th Cir.1988). In the copyright context, much rests on the first factor because irreparable harm is presumed once a likelihood of success has been established, id. at 267, and because an injunction likely will serve the public interest once a claimant has demonstrated a likelihood of success in this setting, Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 612 (1st Cir. 1988). We see no reason why a similar presumption of irreparable harm should not apply to claims under the DMCA. See Universal City Studios, Inc. v. Reimerdes, 82 F.Supp.2d 211, 215 (S.D.N.Y.2000). Like the district court before us, we accordingly focus on the likelihood that Lexmark will succeed on its claims under the general copyright statute and the DMCA.

The Constitution expressly gives Congress the power to grant protection to original works of authorship. See U.S. Const. art. I, § 8, cl. 8. Relying on that authority, Congress has established the following standard for copyright protection:

(a) Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression.... Works of authorship include the following categories: (1) literary works; (2) musical works ...; (3) dramatic works...; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

17 U.S.C. § 102 (emphasis added). The copyright statute grants owners of protected works the exclusive right to use them in certain ways. See id. § 106 (granting copyright owners the exclusive right to reproduce copyrighted works, to create derivative works based on original works, to distribute copies of the works, and to perform or display the works publicly).

As this case comes to the court, the parties agree that computer programs may be entitled to copyright protection as "literary works" under 17 U.S.C. § 101 and may be protected from infringement under 17 U.S.C. § 106. And that is true with respect to a computer program's object code (the binary code — a series of zeros and ones — that computers can read) and its source code (the spelled-out program commands that humans can read). See 17 U.S.C. § 101 (defining "computer program[s]" as "set[s] of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result"); 17 U.S.C. § 117(a) (describing "limitations on exclusive rights" for "computer programs" and providing that infringement does not occur when a copy of a computer program is made either "as an essential step in the utilization of the computer program" or "for archival purposes"); H.R.Rep. No. 1476 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 [hereinafter House Report] ("The term `literary works' ... includes ... computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves."); accord Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 838 (Fed.Cir.1992) ("Atari I"); Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1247-49 (3d Cir.1983).

The parties also agree that Lexmark has registered the Toner Loading Program with the Copyright Office, which is an infringement suit prerequisite, see 17 U.S.C. § 411(a), and which constitutes prima facie evidence of the copyright's validity, see id. § 410(c). And the parties agree that SCC shoulders the burden of rebutting the presumptive validity of Lexmark's copyright. See Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093, 1095 (6th Cir.1995).

The parties also share common ground when it comes to most of the general principles of copyright infringement applicable to this case. A plaintiff may establish a claim of copyright infringement by showing (1) ownership of a valid copyright in the computer program at issue (here, the Toner Loading Program) and (2) that the defendant copied protectable elements of the work. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir.2003). The first prong tests the originality and non-functionality of the work, see M.M. Bus. Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1139 (6th Cir.1973), both of which are presumptively established by the copyright registration. The second prong tests whether any copying occurred (a factual matter) and whether the portions of the work copied were entitled to copyright protection (a legal matter). See Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 534-35 & n. 14 (5th Cir.1994); see generally M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.01[B] (2003) [hereinafter Nimmer]. If no direct evidence of copying is available, a claimant may establish this element by showing that the defendant had access to the copyrighted work and that the copyrighted work and the allegedly copied work are substantially similar. Kohus, 328 F.3d at 853-54.

As to the first prong, the Supreme Court has instructed that "[o]riginal ... means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity," even if the work is not a "novel" one. Feist, 499 U.S. at 345-46 (originality requires both "independent creation plus a modicum of creativity"). And although constitutionally mandated, the threshold showing of originality is not a demanding one. Id. at 345, 111 S.Ct. 1282 ("To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.").

But even if a work is in some sense "original" under § 102(a), it still may not be copyrightable because § 102(b) provides that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of [its] form." 17 U.S.C. § 102(b). This provision embodies the common-law idea-expression dichotomy that distinguishes the spheres of copyright and patent law. "[U]nlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself." Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 98 L.Ed. 630 (1954); see also Baker v. Selden, 101 U.S. 99, 101-02, 25 L.Ed. 841 (1879) (explaining that while a book describing a bookkeeping system is worthy of copyright protection, the underlying method described is not); Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d Cir.1992) ("It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea."). While this general principle applies equally to computer programs, id.; see also House Report at 5667 (extending copyright protection to computer programs only "to the extent that they incorporate authorship in programmer's expression of original ideas, as distinguished from ideas themselves"), the task of separating expression from idea in this setting is a vexing one, see Altai, 982 F.2d at 704 ("The essentially utilitarian nature of a computer program further complicates the task of distilling its idea from its expression."); Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir.1992); see also Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 819-20 (1st Cir.1995) (Boudin, J., concurring). "[C]ompared to aesthetic works, computer programs hover even more closely to the elusive boundary line described in § 102(b)." Altai, 982 F.2d at 704.

In ascertaining this "elusive boundary line" between idea and expression, between process and non-functional expression, courts have looked to two other staples of copyright law — the doctrines of merger and scènes à faire. Where the "expression is essential to the statement of the idea," CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 68 (2d Cir.1994); see also Lotus Dev., 49 F.3d at 816 ("If specific words are essential to operating something, then they are part of a `method of operation' and, as such, are unprotectable."), or where there is only one way or very few ways of expressing the idea, Warren Publ'g, Inc. v. Microdos Data Corp., 115 F.3d 1509, 1519 n. 27 (11th Cir.1997), the idea and expression are said to have "merged." In these instances, copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work's uncopyrightable ideas as well. See Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir.1993); see also Murray Hill Publ'ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 319 n. 2 (6th Cir.2004) (noting that where idea and expression are intertwined and where non-protectable ideas predominate, expression is not protected); see generally Nimmer § 13.03[B][3]. For computer programs, "if the patentable process is embodied inextricably in the line-by-line instructions of the computer program, [] then the process merges with the expression and precludes copyright protection." Atari I, 975 F.2d at 839-40; see, e.g., PRG-Schultz Int'l, Inc. v. Kirix Corp., No. 03 C 1867, 2003 WL 22232771, at *4 (N.D.Ill. Sept.22, 2003) (determining that copyright infringement claim failed because expression merged with process in computer software that performed auditing tasks).

For similar reasons, when external factors constrain the choice of expressive vehicle, the doctrine of "scènes à faire" — "scenes," in other words, "that must be done" — precludes copyright protection. See Twentieth Century Fox Film, 361 F.3d at 319-20; see generally Nimmer § 13.03[B][4]. In the literary context, the doctrine means that certain phrases that are "standard, stock, ... or that necessarily follow from a common theme or setting" may not obtain copyright protection. Gates Rubber, 9 F.3d at 838. In the computer-software context, the doctrine means that the elements of a program dictated by practical realities — e.g., by hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, target industry practices, and standard computer programming practices — may not obtain protection. Id. (citing case examples); see Sega Enters., 977 F.2d at 1524 ("To the extent that a work is functional or factual, it may be copied."); Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1473 (9th Cir.1992) (affirming district court's finding that "[p]laintiffs may not claim copyright protection of an... expression that is, if not standard, then commonplace in the computer software industry"). As "an industry-wide goal," programming "[e]fficiency" represents an external constraint that figures prominently in the copyrightability of computer programs. Altai, 982 F.2d at 708.

Generally speaking, "lock-out" codes fall on the functional-idea rather than the original-expression side of the copyright line. Manufacturers of interoperable devices such as computers and software, game consoles and video games, printers and toner cartridges, or automobiles and replacement parts may employ a security system to bar the use of unauthorized components. To "unlock" and permit operation of the primary device (i.e., the computer, the game console, the printer, the car), the component must contain either a certain code sequence or be able to respond appropriately to an authentication process. To the extent compatibility requires that a particular code sequence be included in the component device to permit its use, the merger and scènes à faire doctrines generally preclude the code sequence from obtaining copyright protection. See Sega Enters., 977 F.2d at 1524 ("When specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement.") (quoting National Commission on New Technological Uses of Copyrighted Works, Final Report 20 (1979)) (emphasis added); Atari Games Corp. v. Nintendo of Am., Inc., Nos. 88-4805 & 89-0027, 1993 WL 207548, at *1 (N.D.Cal. May 18, 1993) ("Atari III") ("Program code that is strictly necessary to achieve current compatibility presents a merger problem, almost by definition, and is thus excluded from the scope of any copyright.").

In trying to discern whether these doctrines apply, courts tend to "focus on whether the idea is capable of various modes of expression." Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 (5th Cir.1992) (quoting Franklin Computer, 714 F.2d at 1253); Atari I, 975 F.2d at 840 ("The unique arrangement of computer program expression which generates [the] data stream does not merge with the process so long as alternate expressions are available."). The question, however, is not whether any alternatives theoretically exist; it is whether other options practically exist under the circumstances. See Altai, 982 F.2d at 708 ("While, hypothetically, there might be a myriad of ways in which a programmer may effectuate certain functions within a program ... efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options."); Atari I, 975 F.2d at 840 (noting that "no external factor dictated the bulk of the program" and finding the program copyrightable). In order to characterize a choice between alleged programming alternatives as expressive, in short, the alternatives must be feasible within real-world constraints.

The Supreme Court's decision in Feist helps to illustrate the point. In Feist, the alleged infringer had included 1,309 of the plaintiff's alphabetically-organized telephone book listings in its own telephone directory. 499 U.S. at 344, 111 S.Ct. 1282. The facts comprising these listings, it was clear, theoretically could have been organized in other ways — for instance, by street address or phone number, or by the age or height of the individual. But by virtue of tradition and settled expectations, the familiar alphabetical structure copied by the defendant amounted to the only organizational option available to the defendant. Id. at 363, 111 S.Ct. 1282. For these reasons, the Supreme Court determined that alphabetical phone listings did not satisfy the low threshold of originality for copyright protection. Id.; see Altai, 982 F.2d at 711 (noting that although Feist dealt with factual compilations under 17 U.S.C. § 101, the decision's "underlying tenets apply to much of the work involved in computer programmin