Hyunseok Kim | The Right to a Jury in Determining Copyrightability of Computer Program Elements

Introduction

Copy and paste. Copy and paste. Copy and ... click. "You're under arrest," a police officer says. You protest, "But literally everyone uses this code!" "Tell it to the judge," the officer responds. "Or maybe it's the jury. We'll see." Should you care? Your future may depend on who makes that call.

The right to trial by jury, codified in the Seventh Amendment, stands as one of the fundamental rights of American citizens. Jacob v. New York City, 315 U.S. 752, 752 (1942). Yet, it is not unlimited. As the modern world becomes more complex, so do disputes.

Historically, certain matters, such as equity, were tried by judges rather than juries. In some cases, even when a matter would normally be tried under common law, its complexity may render it unsuitable for a jury. In Kirby v. Lake Shore & Michigan Southern Railroad, the Supreme Court recognized that when accounts were so complicated that a jury could not "unravel the transactions involved," courts should use equitable procedures. 120 U.S. 130, 134 (1887). In a modern context, this means that judges are more suited for complex or technical cases. In re Japanese Elec. Prods. Antitrust Litig., 631 F.2d 1069, 1086 (3d Cir. 1980) (holding that jury trial may be denied in complex antitrust and dumping cases); Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (holding that judges are better suited to find the meaning of patent terms).

This fundamental tension has now emerged in the software development field. Developers face hard choices every day. Basic codes like menu structures and input forms are often reused for the sake of efficiency or because of familiarity. But if juries, rather than judges, decide whether and which of these elements can be copyrighted, developers risk unpredictable outcomes. A jury in one jurisdiction might protect elements that a jury elsewhere finds uncopyrightable. The uncertainty would create confusion about what can be safely reused, potentially chilling free and active software development. Yet removing these decisions from juries would further erode the cherished right to trial by jury and leave another technical field to unelected judges.

Circuits are divided on whether judges or juries should determine the copyrightability of computer program elements. The Fifth, Ninth, and Eleventh Circuits let juries decide, while the First, Second, Third, Fourth, Seventh, Eighth, and Federal Circuits reserve this determination for judges. The resolution of this issue would have profound implications for technology companies and the essential right to trial by jury in an increasingly complex world.

Issue

Whether questions of copyrightability are decided by a Court or by a jury

The Split

Fifth, Ninth, and Eleventh Circuits

The Fifth Circuit's approach illustrates the jury-determined position in the case of MGMTL, LLC. v. Strategic Tech. Inst.,No. 23-30298, 2024 U.S. App. LEXIS 21729 (5th Cir. Aug. 27, 2024). Jorge Menes, a former Marine, developed the Security Management and Reporting Tool ("SMART") while working as a security manager at the Marine Forces Reserve ("MFR"). The program, written in 26,000 lines of Visual Basic code, processed Department of Defense personnel data and generated security forms. After failing to sell SMART directly to MFR, Menes's company MGMTL partnered with defense contractor Strategic Technology Institute, Incorporated ("STI") to market the program.

Initially collaborative, the relationship soured when STI discovered Menes had alienated a key potential customer, MFR, by making SMART non-operational when MFR wouldn't purchase a license. STI then developed the Personnel Administrative Security System ("PASS"), its own web-based version with over 100,000 lines of new code. While both sides agreed there was no direct code copying, MGMTL sued because PASS used menu structures and input forms similar to those of their original program, SMART.

The district court sent these questions to the jury, which found no unprotectable elements despite STI's argument that these were basic operational elements. As the court explained, "questions relating to the bases and sources of an expert's opinion affect the weight to be assigned that opinion rather than its admissibility and should be left for the jury's consideration." The court emphasized that "it is the role of the adversarial system, not the court, to highlight weak evidence." MGMTL, LLC v. Strategic Tech., No. 20-2138-WBV-MBN, 2022 U.S. Dist. LEXIS 27682, at *28 (E.D. La. Feb. 16, 2022).

The Fifth Circuit affirmed, deferring to the jury as "the ultimate fact finder." MGMTL, LLC, 2024 U.S. App. LEXIS 21729, at *9. As STI argues in its cert petition, this decision effectively allowed protection of "highly functional software" elements that could give developers monopolies over basic operational features.

The Ninth and Eleventh Circuits take similar approaches. In North Coast Industries v. Jason Maxwell, Inc., the Ninth Circuit held that "the plaintiff was entitled to have the validity of its copyright determined by a trier-of-fact." 972 F.2d 1031, 1035 (9th Cir. 1992). Similarly, the Eleventh Circuit treats copyrightability as a factual question, holding in Home Legend, LLC v. Mannington Mills, Inc. that "whether a work is sufficiently original to merit copyright protection is a question of fact." 784 F.3d 1404, 1409 (11th Cir. 2015).

First, Second, Third, Fourth, Seventh, Eighth, and Federal Circuits

The Second Circuit articulated the opposing view in Comput. Assocs. Int'l v. Altai, 982 F.2d 693 (2d Cir. 1992). The case involves job scheduling software for IBM mainframe computers. Computer Associates ("CA") developed CA-SCHEDULER with a sub-program called ADAPTER that allowed the program to work across different operating systems. When a programmer who had been employed at CA left to join competitor Altai, Inc. ("Altai"), he took ADAPTER's source code and used it to create a similar program, OSCAR, copying about 30% of the code. After CA sued, Altai discovered the copying and initiated a clean-room rewrite, creating OSCAR 3.5 with entirely new code.

The Second Circuit held that "the trier of fact need not be limited by the strictures of its own lay perspective" when evaluating computer programs. Id. at 713. Unlike traditional copyright cases involving "aesthetic arts," software requires an expert's opinion to "dismantl[e] the intricacies of computer science" and "formulate and apply an appropriate rule of law." Id. Thus, the court held that computer programs are "somewhat impenetrable by lay observers" and that while experts may assist, judges should ultimately determine copyrightability. Id.

This approach has been widely adopted. The First Circuit holds that the extent of protection is a "matter of law, determined by the court." Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 (1st Cir. 2001). The Third Circuit likewise finds uncopyrightable elements as a matter of law. Pyrotechnics Mgmt., Inc. v. XFX Pyrotechnics LLC, 38 F.4th 331, 341 (3d Cir. 2022). The Seventh Circuit has explicitly stated, "copyrightability is an issue of law for the court." Schrock v. Learning Curve Int'l, Inc., 586 F.3d 513, 517 (7th Cir. 2009).

Looking Forward

Following the Fifth Circuit decision, STI has filed a petition for a writ of certiorari with the Supreme Court. The issue's importance extends beyond software copyright. As technology grows more complex, courts face increasing tension between the constitutional right to trial by jury, the need for technically informed decision-making, and  the pursuit of more uniform standards. Patents already require judges to construe technical claims, while securities fraud cases often hinge on complex financial instruments. Antitrust disputes similarly demand sophisticated economic analysis. The Supreme Court's resolution of this split could shape how courts balance democratic participation with technical expertise in an increasingly complex legal landscape.

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