National University of Study and Research in

Law
Ranchi.

Case Analysis

Whelan Associates Inc.

V.
Jaslow Dental Laboratory Inc
(3rd Cir. 1986)

Submitted to:
Mrs.Murthy
Faculty IPR
NUSRL

Submitted by:
Saif Ali
Sem- VI/B
Roll No. 346

Pre-note: Whelan Associates., Inc. v. Jaslow Dental Laboratory, Inc. was a landmark case
in defining principles that applied to copyright of computer software in the United States,

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extending beyond literal copying of the text to copying the more abstract structure, sequence
and organization. The decision initiated a six-year period of excessive copyright protection,
suppressing innovation.

A. Background & Facts of the Case:

In 1978 Rand Jaslow tried to build a computer program to handle customer management,
billing, accounting, inventory management and other functions for Jaslow Dental
Laboratories. He gave up after a few months and hired Strohl Systems to do the job. The
software was built by the half-owner of Strohl, Elaine Whelan, and delivered in March 1979.
It was written in the EDL language and ran on an IBM Series/1 minicomputer. Strohl kept
ownership of the software, which was branded Dentalab, and could license it to other
companies in exchange for a 10% commission to Jaslow. In November 1979 Whelan left
Strohl and set up her own business, acquiring the right to the software.

Later, Jaslow became engaged in selling the Dentalab software in exchange for a percentage
of the gross sales. He formed a company named Dentcom which in late 1982 began to
develop a program in a different computer language (BASIC) but with very similar
functionality called Dentlab, marketed as a Dentalab successor. The new software could run
on IBM Personal Computers, giving access to a broader market. On 30 June 1983 Jaslow's
company filed a suit in Pennsylvania state court alleging that Whelan had misappropriated its
trade secrets. Whelan filed a countersuit in federal court in Pennsylvania alleging that the
Dentlab software violated Whelan's copyrights in the Dentalab software. The district court
ruled that Dentlab was substantially similar to Dentalab because its structure and overall
organization were substantially similar. Jaslow appealed the decision to the U.S. Third Circuit
Court of Appeals.

B. Procedural History ere the Appeal

Contentions at various stages:

Plaintiffs (Jaslow) contention in the initial suit: It was alleged that Whelan Associates had
misappropriated its trade secrets in the suit filed by Jaslows company in Pennsylvania State
Court.

Plaintiffs (Whelan) contention in the Countersuit: It was alleged that Dentcoms licensing of
the Dentalab and Dentcom programs infringed Whelan Associates copyright in Dentalab;
that Dentcoms use of the terms Dentlab or Dentalab, violated Pennsylvania common

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law and 15 U.S.C. S.1125(a) 15 USC 1125 (Lanham Trademark Act of 1946) (false
designation of origin) and that Dentcoms activities violated various other federal and state
laws pertaining to unfair competition and tortious interference with contractual relations.

Defendants (Jaslow) contention in the Countersuit: it was contended that Whelan Associates
copyright was invalid for two reasons. Firstly, that the omission of Rand Jaslow from the
registration form, defendants averred, rendered the copyright defective. Secondly, the
defendants maintained that even if Rand Jaslow had not co-authored the program, he owned
the copyright because the program had been written by someone employed by him.

Defendants also averred that Rand Jaslow had developed the Dentcom system independently,
and therefore could not have violated Whelan Associates copyright, even if the copyright
were valid. Finally, defendants claimed that their use of Dentalab or Dentlab violated
neither federal nor state law, for, inter alia those terms are merely general descriptions of
goods and services, not names of particular praoducts. Defendants counterclaimed that
Whelan Associates had usurped defendants copyright and that by continuing to sell Dentalab,
and was engaging in unfair competition.

By agreement of the parties, the trade secret action was removed from the Court of Pleas to
the District Court and became a counterclaim.

THUS, the District Court ruled in favour of Whelan Associates on all grounds

C. The Arguments on Appeal

On appeal, the defendants attack on two grounds the district courts holding that there was
sufficient evidence of substantial similarity.

Firstly, the defendants argue that because the District Court did not find any similarity
between the literal elements (source and object code) of the programs, but only similarity
in their overall structures, its finding of substantial similarity was incorrect, for the copyright
covers only the literal elements of computer programs, not their overall structures. Secondly,
is that even if the protection of copyright law extends to non-literal elements such as the
structure of computer programs, there was not sufficient evidence of substantial similarity to
sustain the district courts holding in this case.

D. Relevant Rule-Law

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The district court ruling in the Whelan case drew on the established doctrine that even
when the component parts of a work cannot be copyrightable, the structure and
organization of a work may be. The court also drew support from the 1985 SAS Inst. Inc.
v. S&H Computer Sys. Inc.1 in which it had been found that copyright protected
organizational and structural details, not just specific lines of code. Structure, sequence and
organization (SSO) in this case was defined as "the manner in which the program operates,
controls and regulates the computer in receiving, assembling, calculating, retaining,
correlating, and producing useful information." SSO refers to non-literal elements of
computer programs that include "data input formats, file structures, design, organization and
flow of the code, screen outputs or user interfaces, and the flow and sequencing of the
screens."

E. Decision

The following was laid down by the Third Circuit Court of Appeals:

The following was laid down in the above case:

Copyright programs are classified as literary works for the purposes of copyright.

The copyrights of other literary works can be infringed even when there is no
substantial similarity between the work's literal elements. Copyright "cannot be
limited literally to the text, else a plagiarist would escape by making immaterial
variations".

The structure and logic of the program is a significant cost in computer

programming.

Allowing copyright protection beyond the literal computer code would provide the
proper incentive for programmers by protecting their most valuable efforts, while not
giving them a stranglehold over the development of new computer devices that
accomplish the same end.

It is not true that "approximation" of a program short of perfect reproduction is

valueless. On the contrary, one can approximate a program and thereby gain a

1 225 USPQ 916 (M.D. Tenn. 1985); 605 F.Supp. 816

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 significant advantage over competitors even though additional work is needed to
complete the program.

The conclusion is inescapable that the detailed structure of a program is part of the
expression, not the idea of that program. Copyright protection of computer programs
may extend beyond the program's literal code to their structure, sequence and
organisation.

F. Analysis & Conclusion

The law with respect to protection of Computer Programmes in India is still at a nascent
stage and needs more pruning to be able to substantially cater to the various aspects of
copyright in the field of computer programmes. There is much to debate upon and settle
the future course of development in this area. Different approaches or innovative tests
could also be laid down by the Indian Jurists and academia to have a well-structures law
in the concerned area. However, as seen in the Whelan Case, the concept in the USA is
much more advanced and developed.

The Whelan Case is a classic example of the Idea-Expression Dichotomy which had
caused much debate and confusion in the legal academic arena. The case extended
protection to even the idea expressed by the computer literature when it incorporated in
the SSO approach of determining protection, i.e. the Structure, Sequence and
Organization.

Going by the holding of the Court, the structure and logic behind a computer programme
is a significant cost and if only the literal elements are protected then a bypass route is left
open for infringers. For example, if only the text is protected in a script for a play, then
the infringer can bypass by copying the plot and stage setting of the play.

In such cases, like that of a play or a computer programme, the structure, sequence and
organization are part of the expression and hence should be provided protection. It
wouldnt be a long-shot if it was said that the legal maxim what you cannot do
directly, you cannot do indirectly applies perfectly in cases such as the Whelan Case.