Summary
The Ninth Circuit affirmed a preliminary injunction barring Formula International from copying, selling, or distributing Apple computer programs and from using the mark "Pineapple" or confusingly similar marks. The court held that Apple was likely to succeed on its copyright and trademark claims, that operating-system computer programs may be copyrightable, and that irreparable harm and the balance of hardships supported the injunction.
Topics
Practice areas
Questions Presented
- Whether the district court properly preliminarily enjoined Formula from copying, selling, and distributing computer programs for which Apple held registered copyrights.
- Whether operating-system computer programs are copyrightable even though they control a computer's internal operations and are not application programs that directly communicate with users.
- Whether Apple demonstrated a sufficient likelihood of success and irreparable harm to support a copyright preliminary injunction.
- Whether the district court abused its discretion by preliminarily enjoining Formula from using the trademark "Pineapple" on its computer products.
- Whether the district court was required at the preliminary-injunction stage to consider all eight likelihood-of-confusion factors identified in AMF Inc. v. Sleekcraft Boats.
Holdings
- Computer programs are not excluded from copyright protection merely because they manage a computer's internal operations rather than directly interact with a user. Under the Copyright Act, operating-system programs may be copyrightable expression when they embody an author's original creation and are fixed in a tangible medium.
- The district court did not err in finding that Apple had demonstrated a likelihood of success on its copyright infringement claim.
- Apple's showing of a reasonable likelihood of success on its copyright infringement claim supported a presumption of irreparable harm, and the evidence of Apple's investment in developing the programs further supported the injunction.
- The district court did not abuse its discretion in preliminarily enjoining Formula's use of the mark "Pineapple" because the mark was confusingly similar to Apple's mark when used on related computer products.
- The district court reasonably concluded that continued trademark infringement threatened irreparable harm to Apple's reputation and goodwill and that the balance of hardships favored Apple.
Key quotations
“That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” (725 F.2d at 524)
“The computer program when written embodies expression; never has the Copyright Act required that the expression be communicated to a particular audience.” (725 F.2d at 525)
Factual background
Formula sold a computer kit under the mark "Pineapple" that was designed to be compatible with Apple's Apple II computer. The kit included two operating-system programs embodied in ROMs that Formula conceded were substantially similar to Apple-copyrighted programs, and Apple presented evidence that Formula sold copies of three additional Apple programs. Apple and Formula sold similar products through similar marketing channels, while Formula had sold only 49 computer kits and derived only a small percentage of its total revenue from computer products.
Procedural history
Apple sued Formula for copyright, trademark, and patent infringement and unfair competition, while Formula asserted antitrust and unfair competition counterclaims and sought declaratory relief. After limited discovery, the district court granted Apple's motion for a preliminary injunction on April 12, 1983, enjoining Formula from copying, importing, selling, distributing, or advertising Apple-copyrighted computer programs and from using the mark "Pineapple" or a confusingly similar mark. The Ninth Circuit affirmed.