ICM Corp. v. Met's, Inc.

Tokyo High Court Decision of March 31, 1992*

Heisei 3 (ra) No. 142
Appeal from Decision on Preliminary Injunction
(Lower court decision: Tokyo District Court, Heisei 0 (yo) No. 2577)

* Translated by Dennis S. Karjara, Arizona State University College of Law,
with assistance of Keiji Sugiyama, Esq., South-Toranomon Law Ofiices, Tokyo


Appellants: ICM Corp., AG Soft Corp.

Respondents: Met's Inc., City Soft Corp.

[Addresses of the parties and names of the attorneys are omitted]


      The appeal in this case is dismissed.
      Costs of appeal to be borne by appellants.


I. Judgment Sought by the Parties

1. Appellants

(1) That the lower court decision be vacated.

(2) That the respondents be ordered neither to make nor sell, nor to license third parties to reproduce, any of the programs listed in Exhibits (2) and (3) to the lower court decision.

(3) That the respondents be ordered to give up possession of all programs listed in Exhibits (2) and (3) to the lower court decision, together with any hard disks for the NEC 9801 personal computer incorporating them, to the custody of the bailiff of the Tokyo District Court.

2. Respondents

That a decision be entered in accordance with the Order.

II. Claims of the Parties

Beyond the following claims of the parties, they are the same as "Part 2 Claims of the Parties" in the lower court decision, to which reference is hereby made.

1. Appellants [Petitioners]

(1) The IBF Files are program works as set forth in Article 10(3)(ix) of the Japanese Copyright Law [JCL].
The lower court concluded that copyright protection does not extend to the structure of the IBF Files itself, because it is a format, a grammar belonging to a system of characters or other symbols or their organization (JCL Art. 10(3)(i)) used to express programs.

However, even if we concede that the individual commands of IBF Files are a "programming language" under JCL Art. 10(3)(i), "each IBF File program" is composed in that language and is creative expression independent of that programming language itself. They can therefore become the object of copyright protection as programs.

What appellants are seeking protection for as programs are not the words or rules used to write the individual lines of the IBF Files. Rather, it is the expressive whole of each IBF File newly created using those words and rules in between eight and twenty steps.

Moreover, the reference in JCL Art. 2(1)(x-ii) ' s definition of a program to "causing a computer to function so as to achieve a certain result" does not require machine language that can cause a computer to operate directly. It is sufficient that it be expressed in such a way that it can cause a computer to operate after being converted into machine language through translation processes. The IBF Files implement computer instructions by passing through various routines and ultimately being converted into machine language, and they therefore fit within the above definition of a program.

(2) The IBF Files show creativity.

(i) The lower court decision treats the choice of format for the IBF Files as constrained by MENU.EXE File, leaving no room for choice. It could therefore find no expressive creativity in the IBF Files based on choice of format.
However, when one considers the purpose and circumstances associated with the development of each program comprising EO System, IBF Files should be considered the main program and MENU.EXE File the subprogram. It is therefore error to deny creativity in the IBF File formats based on constraints from MENU.EXE File.

In considering the question of copyright infringement, the interests of the developer of a program and the interests of the developer of a later, newer program by reference to the first program must be balanced. Therefore, expressive creativity in a program must also be determined based on the purpose and background of the program's development.

In considering the circumstances of the program development for EO System, the goal was to make a program that even a beginner could easily understand and use to install any program at all. Program developed was effected with the IBF Files as the centerpiece, so they were frist. Then, based on those instructions, decisions were made in order concerning the program flow as a whole, what to do about the interface, what to do about the application programs to be installed, etc.

Therefore, even if we grant that a layperson might well feel, when a user employs EO System, that MENU.EXE File came first and constrained the IBF Files, it is not something that should be accepted in the determination of what constitutes a program in the issue of program copyright infringement.

The lower court decision says that MENU.EXE File, which constrains the format of IBF Files, was created by the very same developers as IBF Files and that therefore the programs at issue (IBF Files) lack creativity because they are constrained not by the computing machine itself but rather by the program (MENU.EXE File) freely created by those developers for use in the same application. This goes against common sense.

In the process of making a program, it is natural to create modules, etc., with a view to achieving things like program efficiency. In this case, too, the modules mutually constrain one another.

Therefore, the finding of the lower court that "The choice of format for the IBF Files is constrained by MENU.EXE File, so there is no room for choice" lacks a rational foundation and leads to the extreme conclusion that a program comprised of modules cannot have creativity .

(ii) In addition, the lower court decision offers as a ground for denying creativity in the IBF Files that the expression of the ID Line, the expression of the punctuation marks, and the expression of things like the "* " at the head of lines like the ID Line are all constrained by MENU.EXE File, so there is no room for choice in these expressions.

However, the relation between the IBF Files and MENU.EXE File is as set forth above. The notion that the IBF Files are constrained by MENU.EXE File is fundamentally in error.

The lower court decision also says there is no room for expressive choice in the Title Line, the Command Line, or the Device Line, because these are constrained by the application program that is the target of the installation. However, many kinds of programs exist that, like EO System, install application programs onto hard disks, and they use a variety of methods even when they are installing the same application program. Therefore, the trial court erred on this point as well.

The lower court also denied creativity in the Installation Sequence Line, on the ground that it was almost identical to expressions used in MS-DOS batch files.

This approach, however, compares individual commands and symbols employed by MS-DOS with those of the IBF Files, ignoring the composition of the program as a whole. Even if we were to write a program with the same function as that of IBF Files with commands and rules completely identical to those of MS-DOS, it would be a program with its own individual and independent creativity. The trial court decision has forgotten this obvious point.

Thus, in conclusion from what we have said above, the trial court erred in considering each step of the IBF Files one by one and basing on that its determination of the existence and degree of freedom of expressive choice. A program does not exist as independent steps but rather has meaning only after multiple steps have been combined and tied together. The trial court's methods for determining creativity were in error.

2. Respondents [Defendants]

(1) Respondent Met's

(i) Appellants insist that that the lower court erred in holding that the structure of IBF Files is a format, a grammar belonging to a system of characters or other symbols or their organization (JCL Art. 10(3)(i)) used to express programs.

The trial court's reference to the "structure of the IBF Files" is to a descriptive framework (sequence) distinct from the content of the individual flles; it does not refer, as appellants assert, to the individual IBF Files. The decision addressed the structure of the IBF Files itself because appellants claimed copyright in ideas, grammars, rules, and algorithms, which cannot be protected [by copyright]. This conclusion was not erroneous.

(ii) Appellants also assert error in the trial court's denial of creativity in choice of format for the IBF Files on the ground that, because the choice of format was constrained by MENU.EXE File, there was in fact no room for choice.

However, what the decision is dealing with at that point is the structure of the IBF Files. It says no more than that, once the structure is decided, it is fixed by MENU.EXE File, so when one gets around to writing a particular IBF File, there is no longer any choice in the format itself.

The concrete meaning of appellants' reference to the "overall structure of the individual entries in the IBF Files" is not clear, but the structure that describes the individual IBF Files as a sequence of "ID Line, Title Line, Device Line" is the same as the structure that enters these items, in the same sequence, in the individual IBF Files. The former structure was decided and fixed by the MENU.EXE File, so any individual IBF File that did not follow this structure could not be read. The lower court's decision rests on this obvious assumption, and it is therefore not in error.

(2) Respondent City Soft

(i) A program under the Copyright Law requires instructions to a computer for the purpose of causing the computer to function (JCL Art. 2(1)(x-ii)).

The IBF Files are data files containing information concerning the files of the application software to be installed. That is to say, MENU.EXE File, an executable file (program) causing the computer to operate, opens the IBF Files (a data file), loads the information stored there into the computer's memory, and, based on its interpretation of those contents, executes the installation. The data file accomplishes its assignment solely through its employment by MENU.EXE File.

The IBF Files contain solely character information to be read by MENU.EXE File and include no instructions whatever for the computer. Even where "C O P Y . . . "appears in IBF Files, it is the character information "COPY" and is not something that causes the computer hardware to operate. MENU.EXE File reads this character information and effects the necessary operation.

(ii) IBF Files lack creativity, as set forth in the lower court's decision.

Fundamentally, the structure of IBF Files does not have creativity based on IBF Files itself.

IBF Files must be written according to the required sequence so that it can be read by MENU.EXE File, and it is therefore structured as an "object to be read" . If we are to speak of creativity, it is in MENU.EXE File. The structure of IBF Files is completely constrained by MENU.EXE File.

It would be one thing to attack respondents' MFD.EXE File and HCA Files by asserting creativity in IBF Files including the main MENU.EXE File, but it is problematic to separate the IBF Files and assert creativity in them alone.


1. Such matters as the organization and business of the appellants, the development and marketing of their EO System, the structure of EO System and the content of IBF Files (its order of entry, the function of each line, and the entered contents of each line) are as set forth on page 22 (front), line 2, through page 29 (front), line 6, of the lower court decision, to which we here make reference. (However, the IBF Files themselves do not cause a computer to function, as set forth in Part 2.)

2. First, we will consider whether or not IBF Files is a program within the meaning of the Copyright Law. (Appellants assert that IBF Files itself is an independent program work.)

Article 2(1)(x-ii) of the Copyright Law defines a program as "a combination of instructions causing a computer to function so as to achieve a certain result."

In other words, a program under the Copyright Law must be a set of instructions for a computer that cause the computer to effect a specific process. Such programs that have creativity are then "program works" of the Law. under Article 10(1) and receive the protection of the Law

Therefore, even where something is recorded electromagnetically in a storage medium as an electronic file that can be read by a computer, it is not a program if it does not carry out the above function.

In processing a program on a computer, one effects a specific process through calls on given programs in the system, and for this purpose, in addition to the program, data giving processing information are necessary, but for reasons of efficiency data are , often kept in files separate from the main program. In these circumstances, the data file is read by the program and processed by the computer, but it cannot be said to include sets of instructions for the computer, and therefore it is not a program under the Copyright Law. Of course, when different files are used, the processing result will be different, but that follows from the differences in the data content stored in the files. Clearly we cannot say that the data give instructions to the computer. Similarly, where data are described by specific symbols or letters ("symbols, etc.") that are defined by the program itself, we might concede that the program will read those symbols, etc., and effect the process contained in their meaning. But even so, this amounts to nothing more than the program's effecting a specific process upon reading the symbols, etc., as data, and we cannot say that the symbols, etc., are instructions for the computer. Therefore, the data contained in the symbols, etc., cannot be said to constitute a program under the Copyright Law.

Thus, the structure and function of IBF Files are as originally found. In addition, according to plaintiff's Exhibit 8, to establish the environment and transfer operations for the purpose of installing application software on the hard disk, the main MENU.EXE program reads the installation procedure recorded in IBF Files, newly creates a batch file called AZSTEMP.BAT (the batch file is newly created, so IBF Files itself is not the batch file), and installs the applications software on the hard disk through execution of the batch file. We recognize plaintiff's Exhibit 7, which says, "IBF Files . . . are batch files. It has its own form and is similar to an MS-DOS batch file." However, in contrast to the common represention of a batch file (batch processing, that is, a set of commands for the purpose of automatic execution of a process) with the extension " .BAT", IBF Files uses extensions " .IBA" or " .IBF" . When we compare this with the aforementioned AZSTEMP.BAT, which does have the "BAT" extension, it is again clear that IBF Files are not batch files.

In accordance with these findings of fact, IBF Files is nothing more than a file containing installation information (name of the applications software, information concerning the device drivers, etc.) that is read by the MENU.EXE program when EO System processes the installation of applications software onto a hard disk. It is not a set of instructions for a computer. IBF Files itself does not act as a program causing the computer to install applications software. In other words, the recorded contents of IBF Files are to be read as data by EO System, so we must say that it is simply a data file.

The "COPY" used by IBF Files employs identical characters as the MS-DOS command "COPY", but those characters are simply defined by the MENU.EXE program. They are character information read by the MENU.EXE program and not a command causing a computer to operate. The symbols "!", "?", etc., are similar. They are simply defined by the MENU.EXE program and are nothing more than symbols that can be understood solely by that program.

The appellants maintain that IBF Files, through various routines, is ultimately translated into machine language that effects instructions to the computer, and that therefore the requirement for instructions to a computer of the Copyright Law's program definition is met. But based on the earlier findings of fact, the role of IBF Files is over once it is read by the MENU.EXE program. It is clear that it is not converted into machine language, and appellants' argument in this regard is without foundation.

Appellants also argue the program characteristics of IBF Files by claiming it establishes and combines commands that are valid for and function solely with EO System (district court decision page 17 (front), line 5, to page 18 (back), line 9).

However, even if we concede that, when a program processes data, the program processing will vary depending on the content of the symbols, etc., that is something that is determined by the program itself. The symbols, etc., and combinations do not function as commands; it is simply a question of the method of entering data defined by the program. The commands that appellants assert are uniquely valid for functioning with EO System, too, are simply entered according to the demands of the MENU.EXE program and are nothing more than symbols, etc., to be read as data by it. In other words, a program means the descriptive expression based on combinations of instructions to cause a computer to function so as to achieve a particular result. The descriptive content of IBF Files is similar to the descriptive format of the MS-DOS start command or "DEVICE=" setting, or "COPY" command, but in EO System they are no more than data. They do not cause a computer to function, so they do not have the characteristics of a program. (This is similar to the case of a program for statistical processing of the age composition (and similar factors) of a group. When the symbol "*" is appended at the head of the data listing for the age (and other factors) of a particular person, the system is to read and statistically process as well the person's occupation. In this situation the statistical processing for persons with a "*" symbol is based on a reading of the occupation as well as the age (and other factors). Such description of the associated data cannot be said to be a program within the meaning of the Copyright Law on the ground that they are commands valid only for this particular program.)

Therefore, there is also no basis for this claim of appellant.

3. In accordance with the above, we cannot recognize IBF Files as a program within the meaning of copyright. As there are no other evidentiary materials that would lead to such a conclusion, there is no need for further consideration. We must say that there is no evidentiary support for appellants' claim of protected rights, so the lower decision dismissing the claim was correct. As there was thus no basis for this appeal, we dismiss it. Costs of appeal, pursuant to application of the provisions of Articles 95, 89, and 93(1) of the Code of Civil Procedure, to be borne in accordance with the order.