The IT Law Wiki


Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1307, 225 U.S.P.Q. (BNA) 156 (E.D. Pa. 1985) (full-text), aff’d, 797 F.2d 1222, 230 U.S.P.Q. (BNA) 481 (3d Cir. 1986) (full-text), cert. denied, 479 U.S. 1031 (1987).

Factual Background[]

Elaine Whelan, an employee of Strohl Systems, developed custom programs in EDL language for defendant’s IBM Series 1 computer system. The agreement provided that “all software developed by [Strohl] for your dental laboratory system [will] remain under our ownership.” Whelan later incorporated, obtained rights to the system from Strohl, and entered into an agreement with the defendant to market the programs.

Defendant Rand Jaslow unsuccessfully attempted to develop his own system for the IBM Series 1 using the BASIC programming language. Defendants terminated the marketing agreement with plaintiff, and, using a surreptitiously obtained copy of the EDL source code, adapted it (with expert help) for the IBM PC and marketed the adapted program under a similar name. Whelan sued for copyright infringement.

District Court Proceedings[]

The court held that (1) although Jaslow explained to Whelan how a dental lab worked, he was not a co-author of the program; Whelan alone was the author of both the source and object code; (2) Jaslow’s use of the EDL source code to develop a competitive product, even thought not a literal translation, it was a copyright infringement:

The idea of a computerized system to control the operations of a dental lab is not subject to copyright. The particular expression of the idea created and fixed in the plaintiff’s IBM-Series 1 Dentalab system, however, is copyrightable, and the evidence demonstrates that defendants actually did copy that expression in writing the source and object codes for their IBM-PC Dentcom system.

The evidence establishes that it would be very difficult if not impossible to literally translate a program written in EDL to a program written in BASIC. The evidence makes clear that transferring or converting from one computer language to another is not comparable to translating a book written in English to French. At least, it would be a very inefficient method of copying a program to attempt to work solely from the source code and literally translate it from EDL to BASIC. As I understand the evidence, in order to copy a program written in EDL for use in a computer that operates on a source code written in BASIC, one would study the method and manner that a computer receives, assembles, calculates, holds, retrieves and communicates data. This requires a study of the manner in which the information flows sequentially from one function to another. Once this is fully understood, one may copy this exact manner of operation for use in a computer that responds to commands written in a different source code language.

The court awarded damages for copyright infringement of $42,000 for two sales of the Series 1 system after the marketing agreement ended and $101,269 for 23 sales of the IBM PC software.

Appellate Court Proceedings[]

The Third Circuit upheld the trial court's finding of copyright infringement based upon the defendant's copying of the "structure, sequence and organization" of plaintiff's software. While recognizing that copyright protection does not extend to the "idea" or functionality of the program, the court found that similarities in the file structures, screen outputs and certain subroutines, while not comprising a majority of the total number of lines of code in defendant's software, were similarities in "expression," and therefore constituted copyright infringement.[1]

In so finding, the court set forth a test for determining the line between unprotectable ideas and the protectable expression of those ideas which test favors finding protectable expression:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.[2]

In applying the above rule, the appellate court quoted from the District Court record:

Different computer systems may functionally serve similar purposes without being copies of each other. There is evidence in the record that there are other software programs for the business management of dental laboratories in competition with plaintiff's program. There is no contention that any of them infringe although they may incorporate many of the ideas and functions.[3]


  1. 797 F.2d at 1238-39.
  2. Id. at 1236 (emphasis in original).
  3. Id. at 1238-39.