Chapter 1: An Overview of Copyright I. History I.A. The Statute of Anne I.B. Federal Copyright I.C. The Early Statutes I.D.

The Copyright Act of 1909 I.E. The Copyright Act of 1976 I.F. Later Legislation II. Current Copyright Law II.A. How Copyright Comes Into Being II.A.1. Fixation of a Work II.A.2. Types of Works II.A.3. Originality Is Required II.B. Compilations, Collections, And Derivative Works II.B.1. Reproductions or Derivative Works? II.B.2. Special Provisions II.C. Copyright Notice And Registration II.C.1. Form of the Notice II.C.2. Registration of Copyright II.D. Federal Government Works II.D.1. Exemption from Copyright II.D.2. Government Contract Works II.E. Ideas Versus Expression II.E.1. Two Key Supreme Court Cases II.E.2. Idea-Expression Merger and Scènes À Faire II.F. Copyright Ownership II.F.1. Joint Works II.F.2. Works Made For Hire II.F.3. Collective Works II.G. Copyright Duration II.G.1. Why So Long? II.H. Rights In Copyright II.H.1. Reproduction II.H.2. Derivative Works II.H.3. Public Distribution and First Sale II.H.4. Public Performance or Display II.H.5. Rights In Different Types of Works II.H.6. Assignments and Licensing II.I. Fair Use II.I.1. Consider All Factors II.I.2. Fair Use as a Safety Valve II.J. Indirect Infringement II.J.1. Contributory Infringement II.J.2. Vicarious Infringement

II.K. Misuse Of Copyright II.L. Remedies For Copyright Infringement II.L.1. Time Limits For Filing Suit II.L.2. Damages II.L.3. Attorney Fees and Costs II.L.4. Criminal Infringement Chapter 2: Copyright of Computer Programs I. The History Of Software Copyright I.A. Early ³Software´: The Piano Roll I.B. The First Software Copyrights I.C. Software Under the 1976 Act I.D. The CONTU Recommendations I.E. Congressional Action I.E.1. Adoption of the CONTU Recommendations, with an Unexplained Change I.E.2. The 1990 Software Rental Prohibition I.E.3. The 1998 Addition to Section 117 II. The Scope Of Software Copyright II.A. Copyrights or Patents? II.B. Object Code II.B.1. Williams Electronics v. Artic International II.B.2. Apple v. Franklin II.C. RAM Copies II.C.1. MAI v. Peak: Fixed Reproductions II.C.2. A Better Way to Look at RAM Copies II.D. Summary III. Beyond Mere Copying of a Computer Program III.A. Structure, Sequence, and Organization III.A.1. The Third Circuit¶s Whelan Decision III.A.2. Criticism Of Whelan III.B. Abstraction, Filtration, Comparison III.B.1. The Second Circuit¶s Altai Decision III.B.2. The Tenth Circuit¶s Elaboration On Altai III.B.3. Filtration III.B.3.a. Efficiency III.B.3.b. External Factors III.B.3.c. Material in the Public Domain III.B.3.d. Facts III.B.4. Comparison III.C. Methods of Operation III.C.1. The Paperback Decision III.C.2. Borland at the District Court III.C.3. Borland at the First Circuit III.C.4. Tenth Circuit Criticism of Borland IV. Applying The AFC Test

IV.A. A Suggested Approach IV.B. A Judge¶s Comments on the Suggested Approach V. Reverse Engineering Of Software V.A. The Federal Circuit¶s Atari Decision V.B. The Ninth Circuit¶s Sega Decision V.B.1. The First Fair Use Factor V.B.2. The Second Fair Use Factor V.B.3. The Third and Fourth Fair Use Factors V.B.4. Summarizing The Four Factors V.C. Revising Sega in Sony v. Connectix VI. Other Software Copyright Issues VI.A. Source Code and Derivative Works VI.B. Source Code and Object Code VI.C. Source Code and Displays VI.D. New Software from Old VI.D.1. Using a Clean Room VI.D.2. Piecewise Reimplementation VI.D.3. Section 117 Adaptations VI.D.4. Derivative Works and Compilations VII. Summary Chapter 3: Copyright of Digital Information I. Why Digital Works are Different I.A. The Ease of Copying and Distributing Digital Works I.B. Copyright Laws are a Bad Fit I.B.1. File Sharing I.B.1.a. The Public Distribution Right I.B.1.b. The Reproduction Right I.B.1.c. The Adaptation Right I.B.1.d. The Public Performance Rights I.B.1.e. The Public Display Right I.B.1.f. What Can Be Done I.B.2. Intermediate Copies I.B.2.a. A New Right to Control Access and Use? I.B.2.b. Transitory Duration? I.B.2.c. Fair Use? I.B.2.d. What Can Be Done II. Protecting Digital Information II.A. The Audio Home Recording Act II.B. The White Paper II.C. Digital Sound Recordings II.C.1. The New Exclusive Right II.C.2. Exceptions II.C.3. Webcasting III. What Not to Protect

III.A. The Court Decisions III.A.1. Netcom III.A.2. When a Service Provider Will Be Liable III.B. Congress Codifies the Decisions III.B.1. The Four Safe Harbors III.B.2. Benefits of Being in the Safe Harbor III.B.3. Notice-and-Takedown Procedures III.B.3.a. Notice III.B.3.b. Takedown III.B.3.c. Put-back III.B.4. Mere Conduits for Others¶ Communications III.B.5. Service Provider Caching III.B.6. Stored User Information III.B.7. Directories and Links III.B.8. Other Safe Harbor Requirements III.B.9. Special Rules for Schools IV. Protection Through Technology IV.A. Why Technology, Why Laws? IV.B. Past Technological Protections IV.C. The White Paper IV.D. The WIPO Copyright Treaty IV.E. Technological Protections and the DMCA IV.E.1. The Trafficking Provisions IV.E.2. Accessing Through Circumvention IV.E.3. Distinction From Copyright IV.E.4. Fair Use IV.E.5. What Anticircumvention Isn¶t IV.E.6. Rights Management Information IV.E.7. Permitted Circumventions IV.E.7.a. Law Enforcement, Content Filters, and Privacy IV.E.7.b. Libraries and Educational Institutions IV.E.7.c. Reverse Engineering IV.E.7.d. Encryption Research IV.E.7.e. Code as Speech IV.E.7.f. Security Testing Chapter 4: An Overview of Patents I. History I.A. The Patent Act of 1790 I.B. The Patent Act of 1793 I.C. The Patent Act of 1836 I.D. Later Recodifications II. Why Patents? III. What Can Be Patented III.A. Basic Requirements

1.2. Presumption of Validity VIII.D. Reexamination Chapter 5: Software-Based Inventions I.2. The Supreme Court¶s Benson Decision . Printed Matter III.C. Inventorship V. Three Choices IX. Patent Term VII.B. Infringement VIII. The Preamble IV.3.5.B.A.B.B.A. Dependent and Independent Claims IV.B.D. What To Do If You Are Told You Are Infringing a Patent IX.C.A.B. Methods of Doing Business IV.A. Means Plus Function Elements V. Prior Art V.A.6.4. Nonliteral Infringement VIII.B.B. Interferences VI. Reviewing the Claims IX.1. Provisional Applications V.2.5.4.B. The Steps of a Method IV. Reluctance at the Beginning I.B. Penalties for Infringement VIII.B.C.B. Trying to Patent a Computer Algorithm I.B. Anticipation And Obviousness VI.B. Damages Recoverable VIII. Statutory Bars V. Patent Misuse VIII.A. Nature Of A Patent VII.6. Mental Processes III.C.B. Other Claim Forms IV. Computer Software III. Marking VIII.1.1. Rejection of a Claim VII.B.B.D.E. Getting A Utility Patent IV. The Description IV. Novelty V.D. When a Claim ³Reads On´ Something IV. Claims IV.A.3. Abstract Ideas III.B.B. ³Patent Pending´ VIII.B.III. Laws of Nature III. Secondary Considerations VI. Provisional Rights IX. Exceptions To The Broad Classes III.

A. And my son. After Alappat II. you will be asked your user name and password. click here. The Supreme Court¶s Flook Decision I. except for the appendices containing excerpts from the statutes (which are available by clicking on the link in the footnote).B.C. The Patent Office¶s Guidelines III. Diehr¶s Rubber Molding II. Patent Office Guidelines: Stored Information V. Beauregard¶s Floppy Disks V. published by BNA Books. I¶ve also created an active table of contents on the left side of each page. In addition to the many people who helped me with the printed treatise.A. but I¶ve highlighted the quoted passage in the decision so that you can see any citations that have been omitted to make the quote easier to read and see the quoted passage in its context. The treatise quotes extensively from primary material such as court decisions. such as the one for ³Software Copyrights. Trying to Make Sense of Benson I. You¶ll see them change color or the cursor change whenever you position over them. You can find a link to it at the end of the abbreviated table of contents to the left of each page. For subscribers to BNA's online Intellectual Property Library. The hypertext link in the footnote following a quotation from a court decision not only takes you to the decision. with links to the section in this online version. After Diehr II. you¶ll be taken there.F.C. by clicking on the link just below. tables of cases and statutes. I have divided the material for the online version differently than the hierarchy of headings and subheadings in the printed version. Other Ways of Claiming V. and my biography.D.D. After you click on the link. There is also a complete table of contents. was invaluable in helping me highlight the quotations. the index. I¶ll be doing the same for quotations from congressional reports. which contains the cases from 68 USPQ through the current volume of USPQ2d.C. Mark Hollaar.´ the table of contents expands to show you those parts when you click on the major topic entry.E.´ This online version contains all the text of the printed version. For more information about BNA's online Intellectual Property Library or to get a free trial subscription. and the hypertext links have been hidden. But before going there. the footnotes have been grayed so they are easier to skip over when reading the text. If you click on any entry in the table of contents. The Effect on Copyright V. Trying To Draw the Line II.B. My good friend Steve McRea designed the graphics for the pages on this web site. Simple things add greatly.I. I have included hyptertext links in the cases that will take you to the cited case or page. Eventually. some of whom are mentioned in its preface. Applying for a Software Patent Introduction to the online version Welcome to the online version of my treatise. In the next few months. ³Legal Protection of Digital Information. take a minute to look at the copyright and other important information. . I¶ve moved the footnote text so that it appears at the point where the little raised footnote number would be. all of them will.D. And if there are many parts to that entry. A New Clarity: The Alappat Decision II. Beyond Beauregard VI. I hope that you enjoy this online version and find it useful. Many footnote entries have hypertext links to the document referenced in the footnote. to try to make the web pages for some topics be of a more reasonable size. For browsers that support it. Chakrabarty¶s Bacteria I. I¶ve updated the material to make the corrections indicated in the errata to the printed version. You can find out more about it in the Preface section. Business Methods and State Street Bank IV. there are two people who deserve special thanks for their help developing this online version. Printed Matter and Computer Software V.

beyond what could be done by hand. To print a book. and on April 10. and independent printers began to compete with the members of the Stationers Company. I. (Its full name is quite a descriptive mouthful: ³An act for the encouragement of learning. created a new market of readers who could not previously afford books. copies of the best edition of the book had to be deposited at nine specified libraries.B. Any assignment of the copyright had to be recorded with the Stationers Company. during the times therein mentioned. More important. By the end of the 15th century. by vesting the copies of printed books in the authors or purchasers of such copies. That was when the copying of works. History The history of copyright {FN1: An excellent discussion of the history of copyright can be found in Chapter 1 of Copyright Law and Practice by William Patry (BNA Books.A. the Statute of Anne granted the rights to control copying to the author of a book. as well as an industry to supply those readers. the first copyright laws in the American colonies were used to control what was published. A royal charter as the exclusive printer of books was given in 1557 to the Worshipful Company of Stationers of London. which permitted the rapid and inexpensive reproduction of written material (at least when compared to hand-copying or custom-engraving an entire page). certainly not what the Stationers Company desired from Parliament. no copyright would have existed under the law. Finally. The Stationers asked Parliament for legislative help. Registration with the Stationers Company was required before publication so that printers wouldn¶t innocently infringe an author¶s copyright.´) The Statute of Anne was not the solution the Stationers had wanted. it granted protection for new works for 14 years from the date of publication and allowed authors to renew the protection for another 14 years if they were alive at the end of the initial protection period. Shortly after the Revolutionary War. A later amendment also required that a notice of the copyright registration be included in each printed copy. This. Existing works were protected for 21 years from the effective date of the law. not the publisher.Chapter 1: An Overview of Copyright I. 1710. in turn. movable-type printing presses were in use in England. there was no problem with unauthorized copying. Copyright law has reacted to changes in technology ever since. since the number of printers were few and well-known to one another. but to prevent works critical of the Crown from being printed. and registration was not allowed if another printer had previously registered the manuscript. the Continental Congress recommended that . Initially. a printer had to register it with the Stationers Company. Instead of providing perpetual rights to a work. The Statute of Anne The Stationers¶ monopoly ended in 1692. and if there had not been that registration. The first regulation of printing was not to prevent unauthorized copying. I. a group of printers. became possible. Federal Copyright As in England. Publishers enjoyed rights to print a book only if granted to them by its author. the Statute of Anne became the first English copyright law. 1994)} is generally regarded as beginning with the invention of the printing press.

) This public bargain theory of copyright is in contrast to the copyright theory for most European countries (except England). The writing or invention enters the ³public domain. seems with equal reason to belong to the inventors. These ³moral rights´ are recognized in United States copyright law only for works of fine art. Patents and copyrights must have limited durations. And the Supreme Court has said that ³originality is a constitutional requirement´ for copyright protection. even though there would be no such restriction if Congress legislated them under the Commerce Clause. like oil paintings. where a writing is treated as the ³sacred child of its creator. there are some that question whether this original bargain theory holds today. the exclusive Right to their respective Writings and Discoveries. The copy right of authors has been solemnly adjudged in Great Britain to be a right at common law. But Article I. the creator lets the public have all rights to the writing or invention after the term of protection ends. to Authors and Inventors. Madison states: The utility of this power [to grant patents and copyrights] will scarcely be questioned. not a grant of authority. with the claims of individuals. rather than a patchwork system in which each state had its own rules. the reason for the clause was to make clear that such protections would be national in scope. and the national and international scope of copyright and patents. the courts have read that clause expansively..´ As the terms were used at that time. the Commerce Clause gives Congress the authority ³to regulate commerce with foreign nations. The right to useful inventions. and most of them have anticipated the decision of this point. §8} the ³Patent and Copyright Clause.´ {FN2: U. In trade for protection for a limited term (and the ability to commercially exploit the writing or invention during that time because of that protection). 346. In Federalist Paper 43. (Since Congress continues to extend the term of copyright protection. 1278 (1991)} Federal copyright can be viewed as a bargain between the creator of the writing or invention and the people.´ and is protected not only from unauthorized reproduction but also from things that change its appearance or integrity or its attribution to its creator. for limited Times. One can see that there are two parallel themes running through the clause: science-authors-writings and useful artsinventors-discoveries. In particular.) Others argue that any copyright or patent law passed by Congress must be shown to ³promote the Progress of Science and the useful Arts´ when they feel that copyright or patent is limiting something that they feel is worthwhile. The states cannot separately make effective provision for either of the cases. Many commentators now treat the Patent and Copyright Clause as a limitation on Congress. 499 U. saying that it gives Congress the authority to regulate virtually anything that affects interstate or foreign commerce. and trademarks are protected as long as they are being used. and the ³useful arts´ are what we now call technology. An observation here ± there is very little discussion of the history of the clause in the Constitution. . 18 USPQ2d 1275.´ Starting at the time of the New Deal. by securing. Rural Telephone. Arguably. that are produced in limited numbers. Section 8 also gives Congress other powers. Article I. {FN3: Feist v. With the new Constitution.S. Given today¶s broad reading of the Commerce Clause. and among the several states. The public good fully coincides in both cases. there is little need for a separate Patent and Copyright Clause.S. ³science´ referred to knowledge. as represented by the federal government. by laws passed at the instance of Congress. 340. A special clause was necessary to give Congress the authority to put in place such a national system.the states adopt copyright laws. the Congress was given the power ³to promote the Progress of Science and the useful Arts. Const.´ where anybody can do whatever he or she wishes with it. (Federal trademark protection gets its authority from the Commerce Clause.

1870. . or book´ and also protected unpublished manuscripts. registration of the work with the clerk of the district court and publication of the registration in a newspaper for four weeks was necessary. in part because some authors believed the constitutional provision (³Congress shall have the power to protect . {FN4: 35 Stat. It also extended the copyright term to an initial period of 28 years and a onetime renewal period of 28 years. 1909. chart. this would be unworkable. The Copyright Act of 1790 was based on the Statute of Anne. and a more international view of copyright. The result was the Copyright Act of 1909. and 1976. The Early Statutes Congress initially protected the works of authors by private bills. But protection was limited to United States citizens. I. In 1891. For example. but a court case held that protection was lost without the notice. 1790. the United States finally recognized the copyright of foreign authors if they registered their copyright in the United States and the book included the proper notice. an amendment required the deposit of copyrighted works with the Smithsonian Institution and the Library of Congress. The consequence of a lack of a proper notice was not spelled out. But copyright of foreign books written in English was conditioned on the work being printed in the United States or from plates first made in the United States. The Copyright Act of 1909 At the start of the twentieth century. new technologies. In 1846. 1 (1909)} which would remain the framework for copyright protection until the Copyright Act of 1976 became effective in 1978. it was clear that there was a need for an omnibus revision of the copyright statutes. administration of copyright registration was centralized in the Library of Congress. A performance right for dramatic works was added in 1856. The copyright laws have been revised many times. The 1909 Act expanded the list of protected works and included a catchall indicating Congress¶s intent to protect ³all the works´ of an author.D. . Although a notice was not required. Between those revisions. and photographs were given protection in 1865. including complete revisions in 1831.I. President Washington signed the United States¶ first general copyright act into law. and on May 31. where it remains to this day. granting initial rights in a work to its author for 14 years with a renewal term of another 14 years. along with the original requirement of deposit with the Secretary of State. In the major revision of 1870. New media and types of works needed to be addressed. . One copy of the work also had to be deposited with the Secretary of State within six months of publication. Later revisions to the copyright statutes clarified that protection would be lost without proper notice at the time of publication. in 1802 historical and other prints were included as copyrightable subject matter and a requirement of a notice of copyright on every printed copy was added. dating from the first publication with proper notice. amendments were made to accommodate additional subject matter.C. allowing the unrestricted copying of foreign (chiefly English) books. The deposit requirement of two copies to the Library of Congress provided a free copy of virtually every book published for the national library. The 1790 Act gave protection to any ³map. Clearly. This manufacturing clause would remain in the copyright statutes until 1986. Publication without notice still resulted in loss of copyright protection. and many other types of works (including paintings and statues) were included within its scope.´) required Congress to provide the protection for each specific work.

§301} The 1976 Act covered all ³original works of authorship. the Berne Convention. 92-140.S. and going to a term of at least 50 years after the death of the author. but legislation was not passed until 1976. copyright protection was extended to sound recordings. 83-743. I. registration formalities. these formalities kept the United States from joining the oldest international copyright agreement. Congress established the National Commission on New Technological Uses of Copyrighted Works (CONTU) to study these issues and report back to Congress. 391}However. and in 1954 the United States made minor amendments to the copyright statutes to accommodate the UCC. No. {FN5: Copyright Act of 1909. {FN7: Pub. was included in . {FN9: 17 U. {FN6: Pub. In the meantime. L. the copyright term ran until 50 years after the death of the author. a compulsory license was introduced. §302} It gave broad rights to the copyright owner. In 1955. if at all.´ Following the Berne Convention approach. 61 Stat. rather than a term measured from the date of publication. permitting the use of copyrighted works to be judged for fairness on a case-by-case basis. but tempered these rights with a series of exceptions for particular cases. a placeholder Section 117. Along with the bifurcated term of 56 years. limiting the deposit requirement for foreign works. 85 Stat. any other performer could record the work and pay a statutory royalty. No. It specifically preempted any state copyright law protecting unpublished works. the Act retained the formalities of notice and registration and the manufacturing requirement. and manufacturing clause of the previous copyright law were continued. It also codified a ³fair use´ exception. While publication was the touchstone of the past copyright laws. In 1971. the Universal Copyright Convention (UCC) was established in 1952 by the United States and other countries. the Copyright Act of 1909 needed another major revision. §1(e)} After the recording of a musical composition was allowed by its author. A draft bill was proposed in 1961.To solve a dispute over the protection of mechanical reproductions of musical compositions.C. so the United States was still unable to join the Berne Convention. The deposit requirement. preserving the status quo. Congress authorized the Copyright Office to begin a study on a new copyright act.S. such as phonograph records. {FN8: 17 U. {FN10: 17 U.S. L. the 1976 Act protected both published and unpublished works from the time of their fixation in a tangible medium of expression. The Copyright Act of 1976 The Copyright Act of 1976 represented a dramatic change in the nature of copyright. Rather than further delay the passage. 655} Primarily. §107} But while its scope and term of protection brought United States law in line with the Berne Convention. at the time of its passage there were still difficulties in deciding how to treat computer programs and computer databases. which had been established in 1886 by a number of countries to provide international copyright protection.E. which had previously been protected only by state law. these consisted of changing the form of the required notice.C. Because the United States would not change its laws to meet the Berne requirements by eliminating formalities such as notice and registration. Even though the 1976 Act took more than two decades to draft. Almost as an afterthought.C. Congress exempted from copyright the public performance of a recorded work in a jukebox. establishing a balance between authors and users of copyrighted works. and exempting many foreign works from the manufacturing clause. it had again become clear that because of new technology and types of works.

the duration of a copyright was extended by 20 years. the United States joined the Berne Convention. according to Section 102(a) of the Copyright Act: Copyright protection subsists . It also provided legal support for technical measures to protect copyrighted material from unauthorized access. 2827}This continued the trend of extending the term of copyright so that works that were still protected when the Copyright Act of 1976 was passed will not enter the public domain until 95 years after they were first published. after a century of considering it. or otherwise communicated. when Congress passed the Digital Millennium Copyright Act (DMCA) {FN12: Pub. 105-298. §102(a)} Copyright protection ³subsists. Other amendments were made to the copyright statute to address digital recordings. {FN11: 17 U.´ which means that it comes into being. Later Legislation In 1988.the 1976 Act. whenever something original is fixed in a medium of expression ± in other words. represents a substantial change in the way copyright protection comes into being. L. §117} I. although it still is required for domestic works involved in litigation. The mandatory notice requirement was eliminated. satellite distribution of television. a work had to be published with a copyright notice.S. . and other new technologies. Chapter 1: An Overview of Copyright II. {FN14: 17 U. . Instead. 2860} to address aspects of copyright particular to digital information. How Copyright Comes Into Being The current copyright law in the United States. Copyright Office. at the moment of its creation. But perhaps the most dramatic amendment came in 1998. But now. and the claim to copyright registered in the U. The DMCA made clear that copyright protected works transmitted in cyberspace.´ although ³copyrighted´ incorrectly implies that some action other than the fixing of the work in a medium of expression was required.S. and in 1980 the Act was revised by adding a definition of computer programs and replacing Section 117. Finally. Current Copyright Law II. from which they can be perceived. although notice could still be placed on a work. 105-304.C.S. reproduced. but it provided special liability exceptions for service providers on the Internet.C. in original works of authorship fixed in any tangible medium of expression. Registration was no longer necessary for foreign works. {FN13: Pub. 1978). so that it now stands at the life of the author plus 70 years. L. We¶ll use the term ³copyrighted´ to mean ³protected by copyright. In 1978. a few major changes were made to try to meet the requirements of the Berne Convention. 112 Stat. the Copyright Act of 1976 (which became effective on January 1. . for the work to be fully protected. CONTU issued its report.F. an unpublished work was not protected by federal law. now known or later developed. 112 Stat. The Copyright Act of 1976 included unpublished works within its scope. either directly or with the aid of a machine or device. Also in 1998. either some type of state copyright or a misappropriation action.A. Before that Act. any protection would have to come from state law. Before the Copyright Act of 1976. The manufacturing clause had expired in 1986 and was no longer a hindrance.

or otherwise communicated.and explicitly preempted any state laws that might provide a similar protection.´ which are defined in Section 101: ³Copies´ are material objects. or any other stable form. or otherwise communicated for a period of more than transitory duration. In a report that accompanied the passage of the Copyright Act of 1976. or medium of fixation may be ± whether it is in words.1. unless that work was previously written down or is recorded at the time it is spoken. or otherwise communicated. Rep. and from which the work can be perceived. under which statutory copyrightability in certain cases has been made to depend upon the form or medium in which the work is fixed. The term ³copies´ includes the material object. if at all. {FN18: 17 U.´ {FN19: H. The term ³phonorecords´ includes the material object in which the sounds are first fixed. The fixed work does not have to be directly perceivable by a person but can be one that requires some machine or device for its display or performance. A work consisting of sounds. or both. and from which the sounds can be perceived. whether embodied in a physical object in written. notes. reproduced.C. is sufficiently permanent or stable to permit it to be perceived. it¶s a copy. {FN15: 17 U. No. Fixation of a Work Section 101 defines when something has been fixed: A work is ³fixed´ in a tangible medium of expression when its embodiment in a copy or phonorecord. 94-1476 at 52} Works can be fixed in either ³copies´ or ³phonorecords. is ³fixed´ for purposes of this title if a fixation of the work is being made simultaneously with its transmission. reproduced. its drafters said: This broad language is intended to avoid the artificial and largely unjustifiable distinctions . that are being transmitted. . §101} Fixation can be the writing of a work on a piece of paper. While the distinction between phonorecords and copies may be important in some aspects of the copyright law. printed.S. or any other act that will enable the work to be perceived later by somebody else. sounds.S. §101} As noted by the Act¶s drafters. manner. by or under the authority of the author. It doesn¶t include the speaking of a work. Works that are not fixed are protected by a state statute or a common law theory.{FN16: 17 U. §301} II. or having the work in your head. photographic.´ {FN17: H. numbers. either directly or with the aid of a machine or device. pictures. and whether it is capable of perception directly or by means of any machine or device ³now known or later developed. . in which the work is first fixed. the typing of a work into a computer (assuming it is then stored on a disk or even in RAM). Rep.S. ³Phonorecords´ are material objects in which sounds.A. No.C.C. reproduced. in which a work is fixed by any method now known or later developed. in most cases discussed here it will make no difference. ³µcopies¶ and µphonorecords¶ together comprise all of the material objects in which copyrightable works are capable of being fixed. punched. or any other graphic or symbolic indicia. 94-1476 at 53} If it¶s not a phonorecord.R. and reflects a historically different way of treating them. sculptural.R. either directly or with the aid of a machine or device. are fixed by any method now known or later developed. other than those accompanying a motion picture or other audiovisual work. other than a phonorecord. images. other than phonorecords. magnetic. . Under the bill it makes no difference what the form.

but is a particular kind of ³copy. in the sense of the bill. reflect a fundamental distinction between the ³original work´ which is the product of ³authorship´ and the multitude of material objects in which it can be embodied. periodicals. II.S.C.R. and sculptural works. numbers. which Section 101 defines as works. where a work is prepared over a period of time. a ³book´ is not a work of authorship. graphic. although it includes the first copyrighted work. when you have written part of it and take a break.´ which in turn can be embodied in a wide range of ³copies´ and ³phonorecords. {FN21: 17 U. (5) pictorial. for example.S. the author may write a ³literary work. are literary works. you have created a work protected by copyright. and so forth.´ including books. Thus. or other verbal or numerical symbols or indicia. and (8) architectural works. tapes. tape recordings. {FN22: 17 U.´ Instead. if you are writing a book or a computer program or anything else. film. (6) motion pictures and other audiovisual works. are literary works. the portion of it that has been fixed at any particular time constitutes the work as of that time.2. expressed in words. and where the work has been prepared in different versions. together with their usage in section 102 and throughout the bill. §102(a)} Of most interest to us. you create another work protected by its own copyright. computer punch cards. But programmers shouldn¶t start comparing themselves to Shakespeare as authors of literary works. {FN23: 17 U. each version constitutes a separate work. (7) sound recordings. (2) musical works. and it is also possible to have a ³copy´ or ³phonorecord´ embodying something that does not qualify as an ³original work of authorship. because the drafters of the Copyright Act noted that .C. §101} So.C.A. as we consider copyright protection of digital information such as computer programs or Web pages. No.S.The drafters noted a difference between the work and the medium of expression in which it is fixed: The definitions of these terms in section 101. microfilm. 94-1476 at 53} Section 101 also discusses when a work is created: A work is ³created´ when it is fixed in a copy or phonorecord for the first time. including any accompanying music. in which they are embodied. periodicals. regardless of the nature of the material objects. Rep. §101} Computer programs. {FN20: H. (3) dramatic works.´ The two essential elements ± original work and tangible object ± must merge through fixation in order to produce subject matter copyrightable under the statute. manuscripts. Types of Works Section 102(a) goes on to illustrate the types of works that are copyrightable: Works of authorship include the following categories: (1) literary works. other than audiovisual works. It is possible to have an ³original work of authorship´ without having a ³copy´ or ³phonorecord´ embodying it. disks. or cards. phonorecords. such as books. When you write a little more. (4) pantomimes and choreographic works. including any accompanying words.

The Supreme Court discussed that standard in one of its major copyright cases. rather than the general ³literary works´: ³Audiovisual works´ are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors. {FN25: 17 U. as distinguished from the ideas themselves. 340. ³Sound recordings´ are works that result from the fixation of a series of musical.S. such as films or tapes. directories. viewers. and that it possesses at least some minimal degree of creativity. the copyright laws contain a variety of special exceptions that apply to one type of work. if any. or instructional works and compilations of data. Section 101 also defines ³pictorial. in which they are embodied. To be sure. §§108-122} The copyright laws are a series of compromises. and sculptural works.S. the Copyright Office will accept a single registration that covers both aspects of the work. and not another. in which the works are embodied. and computer programs to the extent that they incorporate authorship in the programmer¶s expression of original ideas. But the classification of a work will determine which of the protections available under copyright will be available for the work. or use of a work. as the term is used in copyright. a work must be original to the author. reference. together with accompanying sounds. but not including the sounds accompanying a motion picture or other audiovisual work. the public performance right only applies to sound recordings that are in digital form.The term ³literary works´ does not connote any criterion of literary merit or qualitative value: it includes catalogs.´ Of possible interest to the protection of digital information are ³audiovisual works´ and ³sound recordings. Originality Is Required Besides fixation. Original. {FN27: See 17 U. Because of this. it is most common to consider computer programs as literary works even though they also may have aspects of an audiovisual work. or other phonorecords. 18 USPQ2d 1275 (1991)} To qualify for copyright protection. Rep.´ ³motion pictures. means only that the work was independently created by the author (as opposed to copied from other works).A. with respect to copyrightability it makes no difference the category in which a work falls. All that is important for copyright protection to attach to the work is that it be original and fixed. II. graphic. or other sounds. between the broad rights of the copyright owners and the public¶s use of the work. or electronic equipment. §106} Furthermore. 94-1476 at 54} They make the same observation about other works.C. regardless of the nature of the material objects. {FN26: See 17 U. or in other situations. and similar factual.C. such as disks. {FN24: H.´ because digital information may fall into these definitions. regardless of the nature of the material objects.´ and ³architectural works. the law requires originality for copyright protection. some general. tapes. It also includes computer data bases.C. spoken. §101} If a work is both an audiovisual work and a computer program (which is a literary work). the requisite .S. But the standard for originality is very low. some very specific. Feist Publications v. No. While the Act specifies eight different categories for copyrighted works. Rural Telephone Service: {FN28: 499 U.3.R.S. For example. Just because something may be allowed for one category of work in a particular situation doesn¶t mean that it is allowed for other categories of works.

level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. {FN29: 499 U.S. at 345346, 18 USPQ2d at 1278 (citations omitted)}

Chapter 1: An Overview of Copyright
II.B. Compilations, Collections, And Derivative Works
Copyright can protect not only an original work but also works that are collections of other works, or works based on preexisting works. But in those cases, the scope of the new copyright is limited to the parts of the collection or derivative work that are original. Before looking at those special provisions, it is necessary to understand more terms defined in Section 101: A ³compilation´ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ³compilation´ includes collective works. A ³collective work´ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. A ³derivative work´ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ³derivative work´. {FN30: 17 U.S.C. §101} The drafters of the Copyright Act explained the differences between a compilation and a derivative work this way: Between them the terms ³compilations´ and ³derivative works´ which are defined in section 101, comprehend every copyrightable work that employs preexisting material or data of any kind. There is necessarily some overlapping between the two, but they basically represent different concepts. A ³compilation´ results from a process of selecting, bringing together, organizing, and arranging previously existing material of all kinds, regardless of whether the individual items in the material have been or ever could have been subject to copyright. A ³derivative work,´ on the other hand, requires a process of recasting, transforming, or adapting ³one or more preexisting works´; the ³preexisting work´ must come within the general subject matter of copyright set forth in section 102, regardless of whether it is or was ever copyrighted. {FN31: H.R. Rep. No. 94-1476 at 57}

II.B.1. Reproductions or Derivative Works?

There is also a gray area between reproducing a work and creating a derivative work. One does not need to produce a perfect copy in order to infringe a copyright. Otherwise, a copier could simply make a minor change (an unimportant word in a book, or a pixel or two in a computer image) and avoid infringing. The test for infringement established by court cases is whether the copy is ³substantially similar´ to the original work. There is no hard-and-fast rule determining when something is a substantially similar copy, and when it is a derivative work, since both will incorporate the original work in some way and also have changed material. (There are few hardand-fast rules in intellectual property law.) But the touchstone for a derivative work is the ³recasting, transforming, or adapting´ of the original work, often to a new form.
II.B.2. Special Provisions

The special provisions for compilations and derivative works are contained in Section 103: (a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully. (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. {FN32: 17 U.S.C. §103} In the legislative history, the drafters explained those provisions: The most important point here is one that is commonly misunderstood today: copyright in a ³new version´ covers only the material added by the later author, and has no effect one way or the other on the copyright or public domain status of the preexisting material. . . . The second part of the sentence that makes up section 103(a) deals with the status of a compilation or derivative work unlawfully employing preexisting copyrighted material. In providing that protection does not extend to ³any part of the work in which such material has been used unlawfully,´ the bill prevents an infringer from benefiting, through copyright protection, from committing an unlawful act, but preserves protection for those parts of the work that do not employ the preexisting work. Thus, an unauthorized translation of a novel could not be copyrighted at all, but the owner of copyright in an anthology of poetry could sue someone who infringed the whole anthology, even though the infringer proves that publication of one of the poems was unauthorized. Under this provision, copyright could be obtained as long as the use of the preexisting work was not ³unlawful,´ even though the consent of the copyright owner had not been obtained. For instance, the unauthorized reproduction of a work might be ³lawful´ under the doctrine of fair use or an applicable foreign law, and if so the work incorporating it could be copyrighted. {FN33: H.R. Rep. No. 94-1476 at 57-58} Many works are protected by a number of copyrights. For example, when a movie is made from a best-selling novel, the material that comes from that novel is protected by the novel¶s

original copyright. The screenplay is a derivative work of the novel and has its own copyright covering its original aspects. (For example, added dialogue or the instructions for the staging of a scene.) Both are literary works. The actual movie, an audiovisual work, has its own copyright covering the things that are original to the movie and not in the screenplay, such as the director¶s particular arrangement for a shot. The musical score of the movie also has its own copyright. In each case, the copyright covers only what is original to that particular work.

Chapter 1: An Overview of Copyright
II.C. Copyright Notice And Registration
It used to be a requirement that a copyright notice be included with a published work for copyright protection to attach to the work. Works protected under the 1909 Act required notice at the time of first publication, or copyright would be lost forever. The 1976 Act continued to require notice, but was somewhat forgiving if the notice was omitted. Since the United States joined the Berne Convention in 1989 and amended the Copyright Act, notice is optional.
II.C.1. Form of the Notice

Section 401 gives the requirements for a proper notice: (a) General Provisions.± Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner, a notice of copyright as provided by this section may be placed on publicly distributed copies from which the work can be visually perceived, either directly or with the aid of a machine or device. (b) Form of Notice.± If a notice appears on the copies, it shall consist of the following three elements: (1) the symbol © (the letter C in a circle), or the word ³Copyright´, or the abbreviation ³Copr.´; and (2) the year of first publication of the work; in the case of compilations, or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient. The year date may be omitted where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful articles; and (3) the name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner. (c) Position of Notice.± The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of the notice on various types of works that will satisfy this requirement, but these specifications shall not be considered exhaustive. {FN34: 17 U.S.C. §401} Sections 401 through 406, along with the Copyright Office regulations, give the various rules for copyright notices. And while notice is now optional, Section 401(e) indicates the advantage to the copyright owner of including proper notice:

If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant¶s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section 504(c)(2). {FN35: 17 U.S.C. §401(e)} Section 504 has to do with statutory damages, and Section 504(c)(2) covers innocent infringement by the employee of a nonprofit educational institution, library, or public broadcasting station. But the penalties for somebody who is not an innocent infringer are much higher than those for an innocent infringer, so it is valuable to place a copyright notice on a work even though it is no longer required.
II.C.2. Registration of Copyright

As with notice, registration of a copyright is optional. Copyright protection exists from the moment of creation and fixation, regardless of notice and registration. But registration is required before any infringement suit can be filed for a domestic work, {FN36: 17 U.S.C. §411} and timely registration is required for certain remedies. {FN37: 17 U.S.C. §412}Registration is simple and inexpensive. You simply fill out a form and send it to the Copyright Office, along with two copies of the work and a $30 registration fee. Information regarding registration, and the necessary forms, can be found at the Copyright Office¶s Web site: http://www.loc.gov/copyright Finally, to help build the collection of the Library of Congress, Section 407 requires that copies of published works be given at no cost to the Library. If the required deposit is not made, the Library can fine the copyright owner and purchase the work. The Librarian of Congress may exempt certain works, whose donation would work a hardship on the copyright owner, or can reduce the number of copies required from two to one.

Chapter 1: An Overview of Copyright
II.D. Federal Government Works
II.D.1. Exemption from Copyright

The Copyright Act of 1976 specifically exempts works created by the federal government from copyright protection, continuing a provision from the previous copyright acts. Section 105 states: Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise. {FN38: 17 U.S.C. §105} Section 101 clarifies what this includes: A ³work of the United States Government´ is a work prepared by an officer or employee of the United States Government as part of that person¶s official duties. {FN39: 17 U.S.C. §101} Note that this is a special rule that federal government works are always in the ³public domain.´ Public domain works have no copyright owner, and anyone can use the work as they see

Government contract or grant. {FN40: H. No. Congress or the agency involved finds that the need to have a work freely available outweighs the need of the private author to secure copyright. under the particular circumstances. This was discussed by the drafters of the Act: A more difficult and far-reaching problem is whether the definition should be broadened to prohibit copyright in works prepared under U. Those arguing in favor of potential copyright protection have stressed the importance of copyright as an incentive to creation and dissemination in this situation. Government Contract Works The prohibition against copyrights for United States Government publications does not apply to the works produced under government contracts.2. Where.R. 94-1476 at 59} A reasonable test of whether a government contractor should be allowed to copyright a work produced under the contract.D. works that fell into the public domain because of a failure to comply with a requirement like notice or registration. that work should not be protected by copyright. However. the Government agency concerned could determine in each case whether to allow an independent contractor or grantee. The bill deliberately avoids making any sort of outright.fit without infringement. the problem can be dealt with by specific legislation. should include whether the information is necessary in the normal functioning of government. Rep. If the government contracts to have its laws or regulations written. The argument that has been made against allowing copyright in this situation is that the public should not be required to pay a ³double subsidy.´ and that it is inconsistent to prohibit copyright in works by Government employees while permitting private copyrights in a growing body of works created by persons who are paid with Government funds. and works whose authors have dedicated them to the public. where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work. it will automatically be copyrighted.S. and the basically different policy considerations. Although when such a law or regulation is written. the right to secure a private copyright would be withheld. the contractor should be . public domain works include those works so old that their copyright has expired. or for something that is incorporated by reference in a law or regulation. unqualified prohibition against copyright in works prepared under Government contract or grant. or contractual restrictions. There may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like. applicable to works written by Government employees and those applicable to works prepared by private organizations with the use of Federal funds. to secure copyright in works prepared in whole or in part with the use of Government funds. there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works. it can be assumed that. II. The 1976 Act is silent on whether the works of state or local governmental agencies can be copyrighted. agency regulations. but there are cases holding that works published by state or local governments are eligible for copyright protection. As the bill is written. either for its own benefit or for transfer to the government. Besides federal government works.

or agree to distribute it to anybody. or discovery.S. the Supreme Court decided in Baker v. system. regardless of the form in which it is described.E.S. and containing detailed explanations of the art. regardless of the form in which it is described. considered as a book. Selden {FN43: 101 U. Section 102(b) makes clear that copyright protection does not extend to any idea. charging only for the cost of copying. graphic. and. or embodied in such work. Chapter 1: An Overview of Copyright II. rather than merely to the ³writing´ expressing his ideas. conveying information on the subject of book-keeping. In 1879. Its purpose is to restate. The specific provision is in Section 102(b): In no case does copyright protection for an original work of authorship extend to any idea. to make clear that the expression adopted by the programmer is the copyrightable element in a computer program. then. Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. system. Such a book may be explanatory either of old systems. as the work of an author.R. explained.1. explained. musical. It pertains to the literary. the scope of copyright has been limited to particular expression of an idea. Section 102(b) is intended. 94-1476 at 56-57} II. it may be a very valuable acquisition to the practical . that the basic dichotomy between expression and idea remains unchanged. or artistic form in which the author expressed intellectual concepts. comes primarily from two Supreme Court cases. Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer. process. principle. {FN42: H. and that the actual processes or methods embodied in the program are not within the scope of the copyright law. process. Ideas Versus Expression Through both court decisions and specific language in the Copyright Act of 1976. though only explanatory of well-known systems. procedure.E. There is no doubt that a work on the subject of book-keeping. not the idea that underlies that expression.required to dedicate the copyright to the public. method of operation. concept. or of an entirely new system. {FN41: 17 U. it is claimed only as a book. procedure. concept. §102(b)} This provision was described by the drafters: Copyright does not preclude others from using the ideas or information revealed by the author¶s work. but. illustrated. may be the subject of a copyright. method of operation. We will discuss this in more detail when we look at copyright protection for computer programs. or embodied in such work.C. 99 (1879)} that the copyright of a book that described a particular bookkeeping technique did not protect the forms necessary to use the technique. or discovery. Rep. No. illustrated. in the context of the new single Federal system of copyright. principle. Two Key Supreme Court Cases The law at the time of the passage of the Copyright Act of 1976 regarding copyright protection for expression but not for the underlying ideas or any functional aspects of the work. among other things.

S. the use of overlapping windows was found to be a stock aspect of windowed displays and therefore not protectable by copyright. and the art which it is intended to illustrate. scenes of soldiers marching would be common in many war movies. at 101-102} In 1954. Chapter 1: An Overview of Copyright . would be the subject of copyright. but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. 201. or on the mode of drawing lines to produce the effect of perspective. the limited number of ways of expressing the idea are not entitled to copyright protection because. Thus. the Court held that a copyrighted book on a peculiar system of bookkeeping was not infringed by a similar book using a similar plan which achieved similar results where the alleged infringer made a different arrangement of the columns and used different headings. inBaker v. there might not be a copyright infringement. The mere statement of the proposition is so evident.2. and bodies of law have been developed through court cases for different types of copyrighted works. For example.S. or on the mixture and application of colors for painting or dyeing. The merger doctrine means that even if things are substantially similar. or watches. be they old or new. But there are a number of themes that run through most idea-expression analyses. and yet neither will infringe the other's copyright. Idea-Expression Merger and Scènes À Faire When there are only a limited number of ways that a concept or idea can be expressed. The same distinction may be predicated of every other art as well as that of book-keeping. independently making maps of the same territory. In Mazer v. {FN45: 347 U. when the court speaks of two men.E. 100 USPQ 325 (1954)} the Court addressed the scope of copyright protection for a sculpture that formed the base of a lamp. but not function. a copyright gives no exclusive right to the art disclosed. 100 USPQ at 333 (citations omitted)} The test of whether something is an unprotectable idea or protectable expression is inherently ad hoc. and it is therefore said that the two have ³merged. {FN46: 347 U. {FN44: 101 U. something outside the scope of copyright. Such common elements are called scènes à faire. each may obtain the exclusive right to make copies of his own particular map. They found that the artistic aspects of the sculpture were protected by copyright.S. there is little difference between the idea and its expression. Though the maps are identical. But there is a clear distinction between the book. each a perfectionist. The distinction is illustrated in Fred Fisher. A treatise on the composition and use of medicines. Another factor is whether the expression is something that you would expect to find in a work on a particular topic or expressing a certain concept. protection is given only to the expression of the idea ± not the idea itself. the Supreme Court restated the principle that copyright protects expression. Stein. II. or even identical. Likewise a copyrighted directory is not infringed by a similar directory which is the product of independent work. that would be protecting the idea. as such. or churns. Dillingham. at 217-218. Selden. that it requires hardly any argument to support it.knowledge of the community. v. In a copyright case regarding computer displays. but not the functional aspects associated with being a lamp base: Unlike a patent. Inc. or stock incidents.´ When this happens. in essence. on the construction and use of ploughs.

´ The touchstone here is the intention. the employer or other person for whom the work was prepared is considered the author for purposes of this title. Joint Works Section 101 defines a ³joint work´ as ³a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. at the time the writing is done. in which the elements of merger and unity are lacking. Rep.C.C. without the permission of any other co-owner. before starting on the work. that the parts be absorbed or combined into an integrated unit. or the words and music of a song).F. Works Made For Hire When the work is made as part of the creator¶s regular employment. It is best to have an agreement regarding the ownership of a joint work. opera. Under the definition of section 101. the copyright is initially owned by that author. perhaps making one author the owner of the copyright with an agreement to pay royalties to the other authors.S.R.´ also in section 101. or any other copyrighted work for which there may be more than one author. in the case of a ³joint work. and Section 201(b) states a special rule: In the case of a work made for hire. since copyright automatically comes into being when an author fixes a work in a medium. §201} II. {FN47: 17 U. The authors of a joint work are coowners of copyright in the work.´ {FN48: 17 U. the work is a ³work made for hire´.´ {FN49: H.S. although the parts themselves may be either ³inseparable´ (as the case of a novel or painting) or ³interdependent´ (as in the case of a motion picture. copy.II.C.1. or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as ³inseparable or interdependent parts of a unitary whole. a work is ³joint´ if the authors collaborated with each other. and.´ the coauthors of the work are likewise coowners of the copyright. But each co-owner is responsible to the other co-owners for any royalties or other payments received for the co-owned work. unless the parties have expressly agreed otherwise in a written instrument signed by them. distribute. §201(b)} . No. 94-1476 at 120} Since each coauthor of a joint work is an owner of the copyright of that work.± Copyright in a work protected under this title vests initially in the author or authors of the work.2. The definition of ³joint work´ is to be contrasted with the definition of ³collective work. each can license. there the key elements are assemblage or gathering of ³separate and independent works * * * into a collective whole. §101} The drafters discussed this: Two basic and well-established principles of copyright law are restated in section 201(a): that the source of copyright ownership is the author of the work. or under contract in certain circumstances.F. This is stated in Section 201: (a) Initial Ownership. {FN50: 17 U. or do anything else permitted of a copyright owner with sole rights to a work.F. and that. Copyright Ownership Not too surprisingly.S. owns all of the rights comprised in the copyright. II. including assigning the copyright to another.

and indexes. For the purpose of the foregoing sentence.S. pictorial. commenting upon. the agreement that commissions the work must include a clause transferring the copyright to the person commissioning the work.Note that there is no need for a specific agreement or term in an employment contract for the employer to get the copyright to the work. as a supplementary work. The change had been included in a bill having to do with a number of intellectual property topics. So what is a work made for hire? Section 101 defines two different types of works made for hire ± ones prepared by an employee. Congress removed sound recordings from the list of commissioned works that may be works made for hire. or assisting in the use of the other work. pictorial illustrations. The second factor in (1) is that the work must be prepared ³within the scope of his or her employment. It is likely that any computer software written by a person employed as a programmer is a work made for hire as long as there is some relationship to the programmer¶s job assignment. or graphic work prepared for publication and with the purpose of use in systematic instructional activities. If there is some question over whether something is within the scope of your employment.´ That does not mean that the work needs to be specifically requested. as that term is used in (1). with little discussion. If you are receiving a regular paycheck. and an ³instructional text´ is a literary. as a part of a motion picture or other audiovisual work. It is important to note that in (2). revising. Ownership of the copyright by the employer is the default. Those factors are similar to the ones used by the Internal Revenue Service in deciding whether an employer has to withhold tax and pay a portion of the Social Security tax. or as an atlas. editorial notes. explaining. musical arrangements. and ones specially ordered or commissioned: (1) a work prepared by an employee within the scope of his or her employment. in which case (2) applies. as some companies take a broad view of what is within the scope of employment. appendixes. you should have that clarified before starting on the creation of the work. and that agreement must be in writing and must be signed by both the employer and the employee. or a contractor. absent some other agreement. as an instructional text. Congress added sound recordings to the types of commissioned works that can be works made for hire. afterwords. a ³supplementary work´ is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing. as answer material for a test. {FN51: 17 U. such as forewords. as a compilation. and included a provision saying that nothing should be read into the insertion and subsequent removal of sound recordings from the list. . A statement in an employment manual. Simply paying for it is not enough.C. if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. as a translation. answer material for tests. saying that an employee owns the copyright on certain works that would otherwise be works made for hire is not enough. only certain commissioned works are works made for hire. concluding. you are likely an employee. bibliographies. illustrating. tables. When singers and musicians objected after the change became law. If somebody commissioning any other type of work wants to have the copyright to that work. For a short period of time. or (2) a work specially ordered or commissioned for use as a contribution to a collective work. as a test. maps. §101} A number of factors must be considered in determining whether somebody is an employee. charts.

with a 14-year renewal. transfer of a material object does not of itself carry any rights under the copyright. to the life of the author plus 70 years (or 95 years after first publication for some works). in the absence of an agreement. That right is not available if the work is a work made for hire.C. 1978. II. §201(c)} Section 202 states an important principle regarding the ownership of a copyright and the ownership of a copy of a work: Ownership of a copyright. or at least assign their copyright to the record company? A signed contract is necessary either to transfer the copyright to the record company or to make it a work made for hire if it is a commissioned work. This allows an author to renegotiate a license or assignment if the value of the work turns out to be much greater than expected. is distinct from ownership of any material object in which the work is embodied. Copyright Duration The term of protection has been progressively expanded from 14 years. and vests initially in the author of the contribution. §202} The drafters discussed this: The principle restated in section 202 is a fundamental and important one: that copyright ownership and ownership of a material object in which the copyrighted work is embodied are entirely separate things. The difference can be found in Section 203 {FN52: 17 U. In the absence of an express transfer of the copyright or of any rights under it. including the copy or phonorecord in which the work is first fixed. and any later collective work in the same series. No. Rep. and this includes transfer of the copy or phonorecord ± the original manuscript. ± in which the work was first fixed. does not of itself convey any rights in the copyrighted work embodied in the object.± Copyright in a work created on or after January 1. nor. is given in Section 302: (a) In General.3. when they routinely sign contracts agreeing that the recording is a work made for hire.R. §203} .S. subsists from its creation and.S. etc. {FN53: 17 U. . The term for a work created on or after January 1. Collective Works Section 201 also has a special ownership rule for collective works: Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole.C.which allows the author of a work to terminate any assignment or license after 35 years.C. or of any of the exclusive rights under a copyright. the unique painting or statue.S. the photographic negative.F. Conversely. 1978. {FN55: H. {FN54: 17 U. Transfer of ownership of any material object. the master tape recording.G. except as provided by the following subsections. 94-1476 at 124} Chapter 1: An Overview of Copyright II. transfer of a copyright does not necessarily require the conveyance of any material object. Thus. does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object. any revision of that collective work. the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work.Why should the recording artists be concerned that something is a work made for hire.

94-1476 at 134-135} 1. a pseudonymous work.± In the case of an anonymous work. II. No. {FN56: 17 U. is entitled to the benefit of a presumption that the author has been dead for at least 70 years. The statement shall identify the person filing it. or died less than 70 years before. . or a statement that the author is still living on a particular date. or a period of 120 years from the year of its creation. the copyright endures for a term of 95 years from the year of its first publication. Pseudonymous Works. whichever expires first. .endures for a term consisting of the life of the author and 70 years after the author¶s death. The Register shall maintain current records of information relating to the death of authors of copyrighted works.G.S. and that an author is presumed to have died 50 years after a work is created or 25 years after it is published. The Copyright Office can be informed of the actual date of death of the author. the nature of that person¶s interest. based on such recorded statements and.´ It doesn¶t indicate a particular time zone for determining when the year ends. but not for authors that are companies (as is the case for a work made for hire) or for unidentified authors. The present 56-year term is not long enough to insure an author and his dependents the fair economic benefits from his works. and Works Made for Hire. to the extent the Register considers practicable. . Rep. on data contained in any of the records of the Copyright Office or in other reference sources.± In the case of a joint work prepared by two or more authors who did not work for hire. the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author¶s death. . the drafters gave a number of reasons why they went from a term of 28 years. Section 305 provides that ³All terms of copyright . Reliance in good faith upon this presumption shall be a complete defense to any action for infringement under this title. . . or that the author is still alive. and shall comply in form and content with requirements that the Register of Copyrights shall prescribe by regulation. So that one need not quibble about the exact date of the death of an author. for authors that are people. (d) Records relating to death of authors. (b) Joint Works. any person who obtains from the Copyright Office a certified report that the records provided by subsection (d) disclose nothing to indicate that the author of the work is living. (c) Anonymous Works. Why So Long? How long a copyright should last is a very controversial subject. run to the end of the calendar year in which they would otherwise expire. or a work made for hire. with the possibility of renewing for another 28 years.1. whichever expires first.± Any person having an interest in a copyright may at any time record in the Copyright Office a statement of the date of death of the author of the copyrighted work. (e) Presumption as to author¶s death. and the source of the information recorded. .C. .R.± After a period of 95 years from the year of first publication of a work. to a term of the life of the author plus 50 years: {FN57: H. In the report that accompanied the passage of the Copyright Act of 1976. or a term of 120 years from the year of its creation. §302} One way to think of all these various terms is to say that any copyright lasts until 70 years after the death of the author who lives the longest. . whichever comes first.

A system based on the life of the author would go a long way toward clearing up the confusion and uncertainty involved in the vague concept of ³publication.. Reno.] Chapter 1: An Overview of Copyright . the European Union extended the copyright term for all of its member states from life of the author plus fifty years to life of the author plus seventy years. No. would lose millions of dollars in export revenues. . which are huge markets for U. . But every copyright term extension.S. including works that have been widely disseminated by means other than publication. 4.C. In 1998. would not have to provide twenty years of copyright protection to U. This was to harmonize the term with that of Europe. . Cir. . this has profound effects for the United States if it does not extend copyright term as well. .´ and would provide a much simpler. The Court of Appeals for the District of Columbia Circuit found that Congress acted within its authority when it extended the copyright term. A very large majority of the world¶s countries have adopted a copyright term of the life of the author and 50 years after the author¶s death. starting in 1831 with changing the basic term from 14 to 28 years. . works and the U. . . it was argued that a retroactive extension of copyright term for existing works can¶t benefit ³the progress of science and the useful arts´ because those works are already in existence and the extension simply keeps them from entering the public domain sooner. The case is now on appeal to the Supreme Court. unlimited exclusive common law rights in their unpublished works. . . . {FN58: H. 6.R. have been applied retroactively to works still under copyright. 57 USPQ2d 1842 (D. The tremendous growth in communications media has substantially lengthened the commercial life of a great many works.´ The argument was that if the term of copyright protection is extended right before it is about to expire. Under the preemption provisions of section 301 and the single Federal system they would establish. so that American authors would not be disadvantaged. it effectively exceeds a limited time. Although limitations on the term of copyright are obviously necessary. . As the world leader in the export of intellectual property.3d 372. Congress again extended the term of copyright. to be heard during its October 2002 term. too short a term harms the author without giving any substantial benefit to the public.2. {FN59: 239 F. intellectual property. . the Supreme Court upheld the Copyright Term Extension Act. . . In addition.´ member states need only protect the work of foreign authors to the same extent that they would be protected in their country of origin. 2003. .S. Rep. this time to life plus 70 years. Under ³the rule of the shorter term. clearer method for computing the term. In 1995. 2001)} as against the constitutional provision that permits copyrights for only ³limited times.S. . One of the worst features of the present copyright law is the provision for renewal of copyright. See Eldred v. [On January 15. Ashcroft. 3. 7. authors will be giving up perpetual. European Union countries. . 105-452 at 4} The copyright term extension was challenged in Eldred v. 5.

H. it must be an actual copy.´ The difference between ³copies´ and ³phonorecords´ is primarily historical.2d 988. 221 USPQ 490 (2d Cir. either directly or with the aid of a machine or device. 1983)} the Beatles¶ George Harrison was found to have copied the song ³He¶s So Fine´ when he wrote ³My Sweet Lord. Reproduction Section 106 states the six exclusive rights of a copyright owner. or otherwise communicated for a period of more than transitory duration. a copyrighted work would be infringed by reproducing it in whole or in any substantial part. For a work to be ³reproduced. although it might come within the scope of clause (5). The drafters of the Copyright Act of 1976 discussed the reproduction right: Read together with the relevant definitions in section 101. transcribed. applicable to the reproduction of copyrighted sound recordings. including a number of special privileges for libraries contained in Section 108. {FN61: H. it was shown that he had heard ³He¶s So Fine´ many years before.´ Thus. But it is important to understand that there are rights in addition to reproduction that are given the copyright owner.1. The reproduction does not have to be exact. Rep.R. Rights In Copyright The copyright owner gets what is often termed a ³bundle of rights. and that the tune of ³My Sweet Lord´ was substantially similar. but in the case of a sound recording. We will look at the reproduction right in more detail when we discuss software copyrights and Internet copyrights. II. No. or otherwise communicated.II. Wide departures or variations from the copyrighted work would still be an infringement as long as the author¶s ³expression´ rather than merely the author¶s ³ideas´ are taken. the right ³to reproduce the copyrighted work in copies or phonorecords´ means the right to produce a material object in which the work is duplicated. {FN60: 722 F.´ In the infringement suit. An exception to this general principle. although it likely infringes the separate copyright in the music. Harrisongs Music. 94-1476 at 61-62} There are a variety of exceptions to the reproduction right. ³Reproduction´ under clause (1) of section 106 is to be distinguished from ³display´ under clause (5). is specified in section 114. And these rights can be separated out and granted to different people as the copyright owner sees fit.´ its fixation in tangible form must be ³sufficiently permanent or stable to permit it to be perceived. . or simulated in a fixed form from which it can be ³perceived. imitated.´ As under the present law. reproduced.´ including the right to control reproduction of the copyrighted work that we normally associate with copyright. Nor do you have to be looking at the original work when you make the copy. the showing of images on a screen or tube would not be a violation of clause (1).. It just has to be substantially similar to the copyrighted work. reproduced. The first is ³to reproduce the copyrighted work in copies or phonorecords. A sound-alike imitation of a sound recording is not an infringement of the copyright in the sound recording. and by duplicating it exactly or by imitation or simulation. In a 1983 case. ABKCO Music v.H.

Public Distribution and First Sale The third exclusive right is ³to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership.´ the ³distribution right. dramatization. condensation. A work consisting of editorial revisions. overlaps the exclusive right of reproduction to some extent. As Section 109 says: the owner of a particular copy or phonorecord lawfully made under this title. abridgment. However. transformed. . in the sense that reproduction requires fixation in copies or phonorecords. musical arrangement. if it be a literary work´).´ It is infringed even if the infringer did not have to reproduce the work in order to make the distribution. .C. such as a translation. as a whole. the infringing work must incorporate a portion of the copyrighted work in some form. it is sometimes convenient to talk about the right to control the preparation of derivative works as the ³adaptation right.´ much like we talk about the ³reproduction right. pantomime. abridgment. however. rather than just making a reproduction of an existing work. annotations. which codifies what is called the ³first-sale doctrine´ ± that copyright owners receive their just reward when they first sell a copyrighted work. It also reminds us that we are taking an existing work and modifying it in some way to produce a new copyrightable work. Rep. §101} The right to control the preparation of derivative works is a broadening of the adaptation right in the Copyright Act of 1909.´ and the definition in section 101 refers to ³a translation. or any other form in which a work may be recast.2. art reproduction. whereas the preparation of a derivative work. which specified particular adaptations for different types of works (³To translate the copyrighted work into other languages or dialects.´ Thus. art reproduction. dramatization.II. musical arrangement.´ and the ³display right´ as shorthand for the other exclusive rights.3. lease. motion picture version. sound recording. is entitled. To be an infringement the ³derivative work´ must be ³based upon the copyrighted work.´ As defined in Section 101: A ³derivative work´ is a work based upon one or more preexisting works. No. or by rental. and they should not receive an additional benefit when that purchaser disposes of the work in some way. or other modifications which. such as a ballet. or adapted. or improvised performance. or any person authorized by such owner. condensation. transformed. represent an original work of authorship. elaborations. without the authority of the . But the distribution right is limited in many instances by Section 109. . fictionalization. {FN63: H. It is broader than that right. Derivative Works The second exclusive right listed in Section 106 is ³to prepare derivative works based upon the copyrighted work.H.R. is a ³derivative work. As the drafters commented: The exclusive right to prepare derivative works.´ the ³performance right. may be an infringement even though nothing is ever fixed in tangible form.H. or any other form in which a work may be recast.S. specified separately in clause (2) of section 106. fictionalization.´ {FN62: 17 U. or adapted. a detailed commentary on a work or a programmatic musical composition inspired by a novel would not normally constitute infringements under this clause. to constitute a violation of section 106(2). 94-1476 at 62} II. sound recording. or lending. motion picture version. for example.

adapts. and pictorial. {FN64: 17 U.´ although in the plural. This does not mean that conditions on future disposition of copies or phonorecords. . To come within the scope of section 109(a). and motion pictures and other audiovisual works. Public Performance or Display The last three exclusive rights in Section 106 have to do with the public performance or display of certain types of works: (4) in the case of literary. imposed by a contract between their buyer and seller. but it does mean that they could not be enforced by an action for infringement of copyright. as where a publisher reproduces. {FN66: H. including the individual images of a motion picture or other audiovisual work. No. for example. musical. a printer reproduces copies without selling them or a retailer sells copies without having anything to do with their reproduction. It is possible to infringe one or more of these exclusive rights by a single act. to sell or otherwise dispose of the possession of that copy or phonorecord. Infringement takes place when any one of the rights is violated: where. 94-1476 at 61} II. recording. to display the copyrighted work publicly. are independent. For example. . The exclusive rights encompassed by these clauses.H. pantomimes. A library that has acquired ownership of a copy is entitled to lend it under any conditions it chooses to impose. the outright sale of an authorized copy of a book frees it from any copyright control over its resale price or other conditions of its future disposition. graphic. Rep. a copy or phonorecord must have been ³lawfully made under this title. There is no similar prohibition against renting movies on videotape or videodisc. You may not rent either a sound recording or a computer program unless that computer program is part of a machine that is being rented or the computer program is to be used with a video game console. Under section 202 however. pantomimes. though closely related. 94-1476 at79} There are two significant exceptions to the first-sale doctrine given in Section 109. as the drafters noted: The first three clauses of section 106. . any resale of an illegally ³pirated´ phonorecord would be an infringement. §109} The drafters provided some examples: Thus. are intended here and throughout the bill to include the singular.C. and sells copies of a person¶s copyrighted work as part of a publishing venture. extend to every kind of copyrighted work. which cover all rights under a copyright except those of performance and display. and choreographic works. A single act of infringement may violate all of these rights at once. adaptation. musical. and .copyright owner. they can generally be characterized as rights of copying. (5) in the case of literary. to perform the copyrighted work publicly. No. The references to ³copies or phonorecords.4. or sculptural works.R. {FN65: H. for example. dramatic. dramatic.S. and choreographic works. and publishing. would be unenforceable between the parties as a breach of contract. Rep. the owner of the physical copy or phonorecord cannot reproduce or perform the copyrighted work publicly without the copyright owner's consent.´ though not necessarily with the copyright owner¶s authorization.R.

and sculptural works. render. Another way of looking at the exclusive rights of a copyright owner is to consider the exclusive rights granted by the Copyright Act for each of the types of copyrighted works: y For literary works. derivative works.(6) in the case of sound recordings. slide. To ³transmit´ a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent. Rights In Different Types of Works It is important to note that the copyright laws treat different types of works differently.C. television image. y For pictorial.S. pantomimes and choreographic works: reproduction. either directly or by means of any device or process or. distribution.C. {FN69: 17 U. To ³perform´ a work means to recite. .C. The copyright laws are a series of compromises.S. including individual images of a motion picture or other audiovisual work: reproduction. some general. dramatic works. and public display. by means of any device or process. or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public. and there is a series of special exceptions that may apply to one type of work. musical works. II.S. §107} may permit a public performance or display.H. play. To perform or display a work ³publicly´ means(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. or in other situations. §106} Section 101 provides a number of important definitions: To ³display´ a work means to show a copy of it. derivative works. between the broad rights of the copyright owners and the public¶s use of the work. public performance. There are few general rules in copyright law. and public performance. some very specific. adaptation. in the case of a motion picture or other audiovisual work. dance.5. in the case of a motion picture or other audiovisual work. or any other device or process or. to show its images in any sequence or to make the sounds accompanying it audible. {FN67: 17 U. if the use has few or no economic consequences on the market for the work. distribution. to show individual images nonsequentially. fair use under Section 107 {FN70: 17 U. and public display.C. graphic. The fact that something may be allowed for one type of work in a particular situation doesn¶t mean that it is allowed for other types of works.S. y For motion pictures and other audiovisual works: reproduction. §§109-121} And. either directly or by means of a film. and not another. {FN68: 17 U. or act it. or use of a work. whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times. §101} There are a variety of special exceptions to the public display and performance rights detailed in Sections 109-121. to perform the copyrighted work publicly by means of a digital audio transmission.

I. But determination of whether or not something is a fair use is fact-intensive. distribution. The fact that a work is unpublished shall not itself bar a finding of fair use if such a finding is made upon consideration of all the above factors. and (4) the effect of the use upon the potential market for or value of the copyrighted work. A license is like a lease. Assignments and Licensing The copyright owner has a ³bundle of rights´ that can be assigned or licensed as desired. scholarship. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include± (1) the purpose and character of the use.H. When a license does not permit any further licensing in a particular field of use or geographic area. comment. and licensing the individual performances of the play (in cooperation with the playwright. An exclusive license can also be for all the rights under the copyright. and all four factors listed in Section 107 must be considered: Notwithstanding the provisions of sections 106 and 106A. No particular act is automatically fair use. y For architectural works: reproduction. Any licenses granted before the exclusive license remain valid. including whether such use is of a commercial nature or is for nonprofit educational purposes. An assignment occurs when all the rights are transferred to another person. (2) the nature of the copyrighted work. Fair Use Probably one of the most misunderstood concepts in copyright law is fair use. under which the licensor retains ownership of the copyright but gives certain rights to the licensee. the fair use of a copyrighted work. (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole. who owns the copyright in the portions of the play that are a derivative work of the novel). is not an infringement of copyright. teaching (including multiple copies for classroom use).6. II. and distribution. derivative works. derivative works. but no licenses can be granted after the exclusive license. But an exclusive license does not mean that it is the only license. just that there will be no more licenses in the area of exclusivity. {FN71: 17 U. Chapter 1: An Overview of Copyright II. The owner of the copyright can license or assign any or all of these rights to others. including such use by reproduction in copies or phonorecords or by any other means specified by that section.C. news reporting. §107} . This is a doctrine that provides a defense to copyright infringement for some acts. permitting a playwright to adapt the novel for a play. for purposes such as criticism. much like the sale of a house. such as licensing a book publisher for a novel. it is called an exclusive license for that field of use or geographic area. and public performance by digital audio transmission.S. or research.y For sound recordings: reproduction.

569. 225 USPQ 1073 (1985)} the Supreme Court found that the copying of about 300 words from a book as not a fair use. scholarship. it asks. nor must all four factors be weighted equally by the court. and the more transformative the new work. 539. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright. As we have seen. {FN72: 471 U. or news reporting. {FN73: Campbell v.2.S. 29 USPQ2d at 1965 (citations omitted)} II. or message. But the Supreme Court has stated that special consideration should be given to works that are ³transformative. in other words. the law gives broad exclusive rights to the copyright owner (reproduction. Within the limits imposed by Congress.´ The enquiry here may be guided by the examples given in the preamble to Section 107. although the Supreme Court has made it clear in the ³2 Live Crew´ case. news reporting. the court can balance the harm to the copyright owner with the public benefit of what would otherwise be an infringement. while in other cases the copying of an entire work was considered a fair use. Many people feel that the fourth factor is the most important. whether the new work merely ³supersedes the objects´ of the original creation. A person singing a song as he or she walks down the street may be performing it publicly. 510 U. the less will be the significance of other factors. {FN74: 510 U.I. but it would be unreasonable to treat that the same as performance of the song in a concert with thousands paying . or instead adds something new. Fair use allows a court to find that there is not an infringement where there is no special exception but that the use of the copyrighted work is reasonable.II. the goal of copyright. tempered by a number of specific exemptions. and public display and performance).1. comment. in Justice Story's words. to promote science and the arts.S. like commercialism. is generally furthered by the creation of transformative works. but where there is little or no economic harm to the market for a work by the use.I. with the four factors determining whether or not the particular use is fair. Instead. The fair use safety valve is most important for uses that are technically infringements. it does not say that any of those are automatically a fair use. adaptation. altering the first with new expression. 29 USPQ2d 1961 (1994)} which considered whether a commercial parody of a song was a fair use. but all four factors need not be met. the first two factors color the consideration of the others. at 578-579. It is in part through the fair use doctrine that the copyright laws are not a restriction on free speech. Nation Enterprises. with a further purpose or different character. or comment. The central purpose of this investigation is to see.´ Although such transformative use is not absolutely necessary for a finding of fair use.S. In Harper & Row v. looking to whether the use is for criticism. Often. whether and to what extent the new work is ³transformative. that may weigh against a finding of fair use. and the like. teaching. meaning. that there are no shortcuts and all four factors must be considered. Fair Use as a Safety Valve Fair use provides a safety valve for the copyright law. distribution. Acuff-Rose Music. Consider All Factors It is important to note that while the statute lists a number of purposes for fair use copying (³criticism. or research´). it says that a fair use for such purposes is not an infringement. Each of the four factors listed above must be considered in determining fair use.

since a potential sale for the CD is lost. II. and he made money from that booth rental as well as from admission fees from the people attending the flea market. with substantial effect on the potential market for that work. Most uses of digital works require the creation of intermediate copies. the Supreme Court¶s 1984 ³Betamax´ decision.J. That substantial participation could take the form of providing a device or service that facilitates the infringement if that device or service has no substantial use other than infringement. A person making a copy of that same CD for a friend will have a limited effect on the market.to attend. Chapter 1: An Overview of Copyright II.2. Contributory or vicarious infringement has been a major consideration in cases regarding the use of digital information on the Internet. Cherry Auction. 220 USPQ 665 (1984)} the Court held that Sony was not a contributory infringer by selling VCRs because there was a number of uses for the VCR (including time-shifting of a broadcast program for personal use) that would not infringe copyright. the Supreme Court has borrowed contributory infringement from the patent statute and noted that vicarious liability is common in the law. But a person making a song available through a file-sharing service on the Internet may not realize that he or she has become a worldwide distributor of that song. there is another form of indirect infringement: inducement of infringement. {FN75: Sony v. 76 F. you may be guilty of indirect copyright infringement as either a ³contributory infringer´ or a ³vicarious infringer´ if you help somebody else infringe.3d 259. such as inducing. Universal City Studios. II. Vicarious Infringement Vicarious infringement results when there has been a direct infringement and the vicarious infringer is in a position to control the direct infringer and benefits financially from the infringement. {FN76: Fonovisa Inc. Indirect Infringement Even if you do not directly infringe any of the exclusive rights in copyright.J. or materially contributing to the infringing conduct. A person making a copy of a CD to use in his or her car will have essentially no effect on the market for that work. in competition with the copyright owner. The two concepts are somewhat similar.J. In a 1996 Ninth Circuit case. This was more commonly seen in patent law.1. and often someone can be both a contributory infringer and a vicarious infringer. 417. Contributory Infringement Contributory infringement results when somebody knows of the direct infringement of another and substantially participates in that infringement. 37 USPQ2d 1590 (9th Cir. In the classic case on contributory infringement. The court also found that the flea market operator was guilty of contributory infringement. The court believed that many of the people who paid those admission fees did so to gain access to the counterfeit recordings. and it would be nonsensical to say that a purchaser of a digital work can¶t use it.464 U. But it is necessary to really understand ³the effect of the use upon the potential market for or value of the copyrighted work´ when considering whether a use is fair. v. causing. Although these concepts are not part of the Copyright Act of 1976. [In addition to contributory infringement and vicarious infringement. 1996)} the operator of a flea market where counterfeit recordings were regularly sold was found to be a vicarious infringer because he could have policed the vendors who rented booths from him but didn¶t. .S.

K. and public performance and display ± are quite broad. since it found a way to circumvent the system that limited the number of active copies. This was confirmed in the Supreme Court¶s unanimous opinion in MGM v. This is considered copyright misuse.2d 970. Before 1990 there were many cases regarding patent misuse. Reynolds asserted that even though it had infringed Lasercomb¶s copyright. but as I noted in my paper "Sony Revisited: A new look at contributory copyright infringement. Grokster.because it is specifically indicated in the patent statutes (17 U. and therefore when the patent owner comes to court. While cases in patent law provide some guidance regarding what might be inducement of infringement. .] Chapter 1: An Overview of Copyright II. it should not be found liable because Lasercomb had misused its copyright in the license agreement for the software. and the court agreed. That was a misuse by Lasercomb and the court refused to enforce their copyright against Reynolds. Misuse Of Copyright The exclusive rights given to the copyright owner ± reproduction. 15 USPQ2d 1846 (4th Cir. as shown by clear expression or other affirmative steps taken to foster infringement. {FN77: 911 F. the metes-and-bounds of copyright inducement won¶t be known until a few cases are litigated. The classic patent misuse occurs when a patent owner conditions the use of a patented item (such as a salt spreader) on the purchase of a nonpatented item (such as salt) also supplied by the patent owner.C. it is with ³unclean hands´ and the court will refuse to enforce the patent until the misuse ends and its effects no longer exist. The courts have found that such an action attempts to improperly enlarge the scope of the patent.S. even when the special exceptions are considered. Reynolds¶ s use went far beyond the license it had from Lasercomb. but essentially nothing regarding copyright misuse. The court found that Lasercomb was trying to effectively extend the term and scope of its copyright beyond what copyright law permitted. Reynolds. is liable for the resulting acts of infringement by third parties. a licensee had to agree not to develop a competitive computer-aided design program for 99 years. 271(b)). the Fourth Circuit explicitly recognized copyright misuse as analogous to patent misuse inLasercomb America v. But sometimes copyright owners may try to use their exclusive rights to gain even more protection than is granted under the copyright laws. 75 years. The copyright misuse doctrine is similar to the better-developed patent misuse doctrine. holding that one who distributes a device with the object of promoting its use to infringe copyright. adaptation. We adopt it here. is a sensible one for copyright. too. distribution. which stated: For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule. well beyond the period of protection given Lasercomb¶s program by the copyright laws at that time. and that would prevent people from legitimately developing competitive software. the inducement rule. But in that year. As part of the Lasercomb agreement." is also applicable to copyright. The misuse does not have to be against the alleged infringer ± any misuse can be used to defend against the infringement suit. Lasercomb sued for copyright infringement. 1990)} Lasercomb produced a computer-aided design program that Reynolds and his company licensed.

The copyright misuse defense is similar to an antitrust claim. infringes the copyright in the work. Related to copyright misuse is ³fraud on the Copyright Office. distribution. However. the infringement is of a continuing nature. public display. its consequences should be considered by anyone who is trying to use his or her copyright to go beyond the protection of the copyright laws. {FN82: 17 U. 24 USPQ2d 1015 (Fed. that order can be issued even before the trial. adaptation. the Lasercombdecision made it clear that the copyright misuse defense is available even when the misuse does not reach the level of an antitrust violation. Cir. An example would be somebody claiming and registering the copyright in a work that is not his. But that made no difference ± Lasercomb had misused its copyright in getting others to sign the agreement.An interesting aspect of the case is that Reynolds and his company had never signed the license agreement.S. but in most of those cases copyright misuse was not found. While the exact dimensions of the copyright misuse defense will be known only after considerably more cases are decided. The Lasercomb case has been cited with approval in a number of cases since it was handed down. and if there is sufficient evidence of copyright infringement.S. Chapter 1: An Overview of Copyright II. {FN78: 975 F. Under Section 502 the court can order that the infringing acts cease.1. Time Limits For Filing Suit Any infringement action must be brought within three years after the infringement occurs. such as a work prepared as an employee within the scope of that employment (a work made for hire).C. Nintendo. and the court said that it could not bring any infringement suits until it had purged its past misuse and its effects.L. because the defendant had misled the Copyright Office to get a copy of the program source code and therefore came to court with unclean hands.C. §507(b)} But in many instances. The penalty for copyright misuse ± unenforceability of the copyright in court until the misuse has been purged and its effects no longer exist ± is tantamount to losing the copyright.C. Even though it found that the use would otherwise be fair. {FN81: 17 U.2d 832. or not within one of the exceptions in Sections 107 through 121. §502} Under Section 503 the court can also order the impoundment of infringing works and the things used to make them. §509} II. the Federal Circuit used copyright misuse not to prevent the enforcement of a copyright but to refuse a fair use defense. such as distributing copies or performing the work. where a copyright owner has misused the limited monopoly granted by the copyright. As with copyright misuse. Remedies For Copyright Infringement Exercising any of the exclusive rights of the copyright owner ± reproduction. the defendant could not use the equitable fair use defense. the result of copyright fraud is that the courts will not enforce the copyright covered by the registration.S.C. In Atari v. and after the trial can order them destroyed. §503} And under Section 509 the court can order the seizure and destruction of infringing works after the trial.{FN80: 17 U. 1992)} a case decided shortly after Lasercomb.L. {FN79:17 U. There are a variety of remedies provided in the Copyright Act. consider the making of a .´ where somebody has registered a copyright by providing false information or concealing important information.S. For example. or public performance ± without the permission of the copyright owner.

then the statutory damages can go up to $150. while if the infringer shows that the infringement was innocent. even though registration is not required until just before filing an infringement suit.L.2. meaning that the copyright owner is suing the alleged infringer. The determination is very fact-intensive. This. allowing the remission of statutory damages. where each side is responsible for its own costs no matter who wins. II. meaning that the United States Government brings the alleged infringer into court.C. There is nothing that prevents an alleged infringer from being both prosecuted criminally and sued civilly for infringement. Section 504 indicates that owners can receive the actual damages suffered by them plus any profits that the infringer made as the result of the infringement that go beyond the actual damages to the copyright owner. If it is over three years since the copies were made. making civil suit an ineffective remedy for the infringement. it provided an alternative called ³statutory damages´ that is available to copyright owners who have registered their copyright within three months of the publication of a work. However. {FN84: 17 U. essentially tipping the scale only slightly toward finding infringement in a civil action.000 for each work that was infringed.L.3. the amount of delay. If the infringement was found to be willful. II. if the copyright owner acts in such a way as to lead people to believe that he or she will not bring an infringement suit. Criminal Infringement While copyright infringement is normally a civil action. Attorney Fees and Costs Under Section 505. along with statutory damages.L.C. §504} But since Congress recognized that in many instances it will be difficult to compute the actual damages.large number of infringing copies and distributing them until all the copies have been sold. II. Statutory damages allow the court to set the damages in a amount between $750 and $30. A special provision applies to innocent infringers connected with educational institutions. the prevailing party in a copyright infringement suit may ask the court to award him his attorney fees and other costs of the suit. Damages The most common remedy for copyright infringement is awarding damages to the copyright owner. such as ignoring open infringement for a long time. or public broadcasters.S. the copyright owner can¶t sue for infringement of the reproduction right but can sue for infringement of the distribution right if any copies were sold within the previous three years. The copyright owner needs to prove infringement only by a preponderance of the evidence. it can also be a criminal act. they must have registered their copyright within three months of the first publication of the work. the same as in any other criminal prosecution ± than for civil copyright infringement. with no other reason preventing him from bringing suit.000. provides a strong incentive for prompt registration. although criminal prosecution is often used in cases when the alleged infringer has few assets relative to the damages that have been caused. they can be reduced to $200.S. a legal principle called ³laches´ may prevent a later suit. libraries. §504}This is in contrast to the normal rule in American law. . based on the actions (or lack of action) of the copyright owner. {FN83: 17 U.4. and the prejudice worked against the infringer by the delay. For copyright owners to ask for attorney fees and costs. And it is important to note that a higher burden of proof is required for criminal copyright infringement ± beyond a reasonable doubt.

by making it available on a computer network accessible to members of the public. §506} But it primarily criminalizes copyright infringement when it is done ³willfully´ and either ³for purposes of commercial advantage or private financial gain´ or when the infringement exceeds a total retail value of $1.C. of anything of value.´ the term has been given meaning in a number of past court decisions on copyright and other law. according to my understanding. ..´ Pub. {FN88: ³Artists' Rights and Theft Prevention Act of 2005. If the total retail value exceeds $2. and making false statements in a copyright registration application. Otherwise. 506(a)(1)} . President. which had become a significant problem. Finally. 119 Stat. As Chairman of the Judiciary Committee.000 within any 180-day period. then. Rec. if ³anything of value´ would be so broadly read as to include enhancement of reputation or value remote from the criminal act. I would like to point out two areas that are susceptible to interpretation mischief. The Supreme Court has given the term ³willful´ that construction in numerous cases in the past 25 years . Congress added another form of criminal copyright infringement to Section 506.S. . Senator Orrin Hatch. . the Chairman of the Senate Committee on the Judiciary.S. fraudulent removal of copyright notices. including receipt of other copyrighted works. as part of criminalizing the videotaping of a motion picture playing in a theater and then distributing it on the Internet. Although there is on-going debate about what precisely is the ³willfulness´ standard in the Copyright Act ± as the House Report records ± I submit that in the LaMacchia context ³willful´ ought to mean the intent to violate a known legal duty. {FN85: 17 U. Mr.´ The intent of the change is to hold criminally liable those who do not receive or expect to receive money but who receive tangible value.C. .500 for any prison time. S12689-S12690} [In 2005.S. L. (C) by the distribution of a work being prepared for commercial distribution. or expectation of receipt. . the crime becomes a felony with the possibility of a $250. the bill amends the term ³financial gain´ as used in the Copyright Act to include ³receipt. discussed the importance of the willfulness requirement: I place great store by the ³willfulness´ requirement in the bill. Although the copyright statutes do not contain a definition for ³willfully. {FN87: 143 Cong. {FN89: 17 U. §2319} although the sentencing guidelines require that the retail value be substantially above $2. It would be contrary to the intent of the provision. such as a job promotion.Section 506 makes a number of things criminal offenses.´ part of ³Family Entertainment and Copyright Act of 2005. First. 109-9.500 and ten copies. if the infringement was committed-.000 fine and five years in prison (ten years on a second offense). if such person knew or should have known that the work was intended for commercial distribution.C. . {FN86: 18 U. that is the interpretation that I give to this term. 220} Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18. I would have objected and not allowed this bill to pass by unanimous consent. . an educator who in good faith believes that he or she is engaging in a fair use of copyrighted material could not be prosecuted under the bill. Under this standard. and in the millions to reach the maximum penalty. At the passage of the latest amendment to the criminal provision. including fraudulent copyright notices. or the ³ART Act.

as discussed in Chapter 3. It is interesting that this approach was suggested by some of us in 1997 as an alternative to the ³No Electronic Theft´ Act {FN90: Pub. 111 Stat. in the early days of computer programs that was far less clear. Congress implicitly recognized the copyrightability of piano rolls and other musical recordings by giving the copyright owner for a musical work the exclusive right ³to make any .S. 105-147.1.S. it was the responsibility of Congress to amend the copyright law to cover them. Section I. I.C. the Supreme Court looked at the copyrightability of piano rolls in the case of White-Smith Music v. Instead.Supp. either directly or with the aid of a machine or device´ are copyrightable. 1 (1908)} In a unanimous decision finding that piano rolls were not copies of the musical work under the copyright law as it existed at that time. reproduced. 871 F. Section I. but not by directly stating that works that can be perceived only through the use of a machine are protected by copyright. the public distribution right covers only the distribution of material objects. 2678. whose Section 102 {FN3: 17 U. 535. and therefore not an infringement. But we cannot think that they are copies within the meaning of the copyright act. produce musical tones in harmonious combination.There is a problem with this provision. §102(a)} makes it clear that ³original works of authorship fixed in any tangible medium of expression. No.´ without more.S. Mass. Congress made such a revision in the Copyright Act of 1909.B. In 1908. Early ³Software´: The Piano Roll Before the advent of digital computers controlled by computer programs.S. most certainly doesn¶t distribute a material copy anywhere. there was another device whose particular function was controlled by an encoded sequence of instructions ± the player piano. or otherwise communicated. from which they can be perceived. But we also wanted to amend the distribution right to include making the work available to the public. 33 USPQ2d 1978 (D. {FN2: 209 U. {FN91: United States v. when duly applied and properly operated in connection with the mechanism to which they are adapted. Apollo. L.A. 506} in response to the LaMacchia decision.f. {FN1: 209 U. The History Of Software Copyright Although today it is uncontroversial that computer programs can be protected by copyright. at 18} The Court concluded that if piano rolls and similar things were to be copies under the Copyright Act. the Supreme Court stated: These perforated rolls are parts of a machine which.] Chapter 2: Copyright of Computer Programs I.1.a. 1994)} The concern was that it would be difficult to show when the required dollar amount of copies had been made before charging the crime. now known or later developed. And making something ³available on a computer network accessible to members of the public. As I discuss in Chapter 3. among other things adding subsection (a)(2) to 17 U. LaMacchia. and it made little sense to wait until enough copies had gone out to stop the infringement.C. That would have to wait for the Copyright Act of 1976.B. It is largely through convenient timing and creative decisions that computer programs enjoy copyright protection today.

It wasn¶t until the early 1960s that computer programs were being actively marketed by a software industry besides the computer manufacturers. {FN5: 17 U. This compulsory license was carried over to the Copyright Act of 1976 as Section 115.) According to the Copyright Office. a primary medium for computer programs at the time.´ {FN4: 35 Stat. could be read by somebody familiar with the code used to represent characters on the cards.arrangement or record in which the thought of an author may be recorded and from which it may be read or reproduced. it was easy to protect by a contract or license agreement any computer program that was being marketed.S. 1964. while the other was on magnetic tape. the first deposit of a computer program for registration was on November 30. (The problem went away when the publishing requirement was eliminated by the Copyright Act of 1976. provided that the composer had permitted at least one recording of the work. or could be printed to get a computer program listing intelligible to a person. particularly limiting their further distribution of the software. the Copyright Office did not seem to think that the Supreme Court¶s WhiteSmith v. and therefore protectable by copyright just like that book. if: (1) The elements of assembling. Congress provided a compulsory license for anyone wishing to make his or her own recording of a musical work. Apollo decision prevented the copyrighting of computer programs. and most software was custom-developed for in-house applications. While the Copyright Office was trying to determine whether such a deposit could be registered. Under the Copyright Act of 1909. That caused a problem for early computer programs because they weren¶t generally published like books or other copyrightable works. The copyrights for both student computer programs were registered in May 1964. arranging. §115} I. and North American Aviation¶s computer program was registered in June 1964. provides protection for a computer program even when no contract exists. One computer program was submitted as a printout published in the Columbia Law School News on April 20. selecting. . Copyright law.C. copyright protection required registration of the copyright at the time of first publication. 1961. This is essentially a threshold question whether the ³de minimis´ maxim [that there has to be a minimum amount of originality for copyright protection] applies. on the other hand. presumably. Surprisingly. and literary expression that went into the compilation of the program [meaning the creation of the program. §1(e)} To balance this new exclusive right. two short computer programs were submitted by a Columbia University law student to determine how a computer program might be registered. editing. The Copyright Office concluded that a computer program was like a ³how to´ book. The First Software Copyrights There was little need for copyright (or patent) protection for early computer programs. Magnetic tapes. While a contract restricted what people receiving the software could do with it.B. North American Aviation submitted a tape containing a computer program. were just like a whole bunch of punch cards on a more convenient medium. Before widely-marketed software. not converting it from source code to object code] are sufficient to constitute original authorship. There were few computers. it could not bind people who were not parties to the contract. A person finding a computer program on the street could do anything he or she wanted with it. 1. It believed that punched cards.

manuscripts. in . §101} Furthermore.e.(2) The program has been published. retrieving. If the only publication was in a form that cannot be perceived visually or read [say.C. processing. made it clear that Congress intended software to be copyrightable. film. (3) The copies deposited for registration consist of or include reproductions in a language intelligible to human beings [source code. 1978. or process. such as books.C. Software Under the 1976 Act The Copyright Act of 1976. in which they are embodied.S. 94-1476 at 54} Yet what was not clear was how much protection Congress intended to give computer programs. {FN7: 17 U. and it became common for computer programs to contain a copyright notice. 1964 version} Since then. this title does not afford the owner of copyright in a work any greater or lesser rights with respect to the use of the work in conjunction with automatic systems capable of storing. This happened more because software developers copied what others had previously done rather than because of a great understanding of copyright law and its relationship to computer software. numbers. other than audiovisual works. Because Congress didn¶t want to further delay the passage of the Act (which had been in the works for about two decades). Notwithstanding the provisions of sections 106 through 116 and 118. reference. it appointed the National Commission on New Technological Uses of Copyrighted Works (referred to as CONTU) to report back about computer programs and other new technologies and put a placeholder provision in the Act: §117. directories. regardless of the nature of the material objects. on magnetic tape]. whether title 17 or the common law or statutes of a State. something more (e. 61. that is. No. or instructional works and compilations of data. and similar factual. and computer programs to the extent that they incorporate authorship in the programmer¶s expression of original ideas. or transferring information. which became effective on January 1. {FN8: H. periodicals. and whether there should be special exceptions to the exclusive rights of the copyright owners. phonorecords. machine. the House Report discussing the Act states: The term ³literary works´ does not connote any criterion of literary merit or qualitative value: it includes catalogs. as was the case for some other types of works. The definition of literary works in Section 101 states that they are: works. than those afforded to works under the law. ³copies´ (i. Scope of exclusive rights: use in conjunction with computers and similar information systems. a print-out of the entire program) would also have to be deposited. with the required notice [which was a requirement for copyright at the time]. the copyright of computer programs has been generally accepted. rather than object code]. or other verbal or numerical symbols or indicia. reproductions of the program in a form perceptible or capable of being made perceptible to the human eye) bearing the notice have been distributed or made available to the public. tapes. {FN6: Copyright Office Circular No. Rep. disks. expressed in words. It also includes computer data bases. even if they were not formally registered.R. or in conjunction with any similar device. I. as distinguished from the ideas themselves. or cards.g.

L. a situation in which the copyright owner might desire. sale. thus creating a . sold. It is easy to imagine. Along with other recommendations. for good reason or none at all. {FN9: Pub. No. {FN10: Final Report of the National Commission on the New Technological Uses of Copyrighted Works (CONTU Rep. the law should provide that persons in rightful possession of copies of programs be able to use them freely without fear of exposure to copyright liability. or other transfer of all rights in the program. for example. First. to force a lawful owner or possessor of a copy to stop using a particular program. creators. {FN11: CONTU Rep.effect on December 31. But this permission would not extend to other copies of the program. Thus. it transmitted its final report to the President and Congress. On July 31. 1977. §117} I. one could not. lessors.). therefore. or (2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful. it is not an infringement for the rightful possessor of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided: (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner. it recommended a new definition be added to Section 101: A ³computer program´ is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. The CONTU Recommendations CONTU held extensive hearings not only on protection of computer software but also photocopying and computer databases. This would include the right to load it into a computer and to prepare archival copies of it to guard against destruction or damage by mechanical or electrical failure. Adaptations so prepared may be transferred only with the authorization of the copyright owner. 2541. Any exact copies prepared in accordance with the provisions of this section may be leased.D. along with the copy from which such copies were prepared. 90 Stat. 94-553. and vendors of copies of programs intend that they be used by their customers. ISBN 0-8444-0312-1 (1978) at 12} It also recommended that Section 117 be replaced with: Notwithstanding the provisions of section 106. The sale of a copy of a program by a rightful possessor to another must be of all rights in the program. Obviously. should be provided with a legal right to copy it to that extent which will permit its use by that possessor. licensers. make archival copies of a program and later sell some while retaining some for use. CONTU recommended making two changes to the copyright laws to address computer programs. only as part of the lease. however. at 12} CONTU explained its recommendations: Because the placement of a work into a computer is the preparation of a copy. or otherwise transferred. One who rightfully possesses a copy of a program. as held applicable and construed by a court in an action brought under this title. so that rightful users would but rarely need a legal shield against potential copyright problems. 1978.

1980. nor could it be sold as the original without the author¶s permission. under the proposed revision of the new law.E. The adaptor could not vend the adapted program. These rights would necessarily be more private in nature than the right to load a program by copying it and could only be exercised so long as they did not harm the interests of the copyright proprietor. It would be strange if somebody were not a . the copyright owner is unlikely to be very concerned. of course.1. Perhaps the best explanation is that Congress was concerned that people would make copies of software they had rented or borrowed from a public library. Congressional Action I. make such desires a contractual matter. as would the right to add features to the program that were not present at the time of rightful acquisition. it is likely that many transactions involving copies of programs are entered into with full awareness that users will modify their copies to suit their own needs. The copyright law. Adoption of the CONTU Recommendations. Should proprietors feel strongly that they do not want rightful possessors of copies of their programs to prepare such adaptations. and this should be reflected in the law. Again. they of course. but unless the note-taker tries to copy and vend that work. should no more prevent such use than it should prevent rightful possessors from loading programs into their computers. and then not delete the copies when they return the software to the rental place or library. with an Unexplained Change Congress adopted these recommendations as part of a bill ³to amend the patent and trademark laws´ that became Public Law 96-517 on December 12. there was one change made to CONTU¶s proposed Section 117 ± the term ³rightful possessor of a copy´ was replaced by ³owner of a copy.E. this right of adaptation could not be conveyed to others along with the licensed or owned program without the express authorization of the owner of the copyright in the original work. The comparison of this practice to extensive marginal note-taking in a book is appropriate: note-taking is arguably the creation of a derivative work. This is in accord with the intent of that portion of the law which provides that owners of authorized copies of a copyrighted work may sell those copies without leave of the copyright proprietor. and adaptations of their work. a right to make those changes necessary to enable the use for which it was both sold and purchased should be provided. Unlike the exact copies authorized as described above.new rightful possessor and destroying that status as regards the seller. The conversion of a program from one higher-level language to another to facilitate use would fall within this right. transformations. one who rightfully acquires a copy of a program frequently cannot use it without adapting it to that limited extent which will allow its use in the possessor¶s computer. deprive the original proprietor of copyright in the underlying work. Because of a lack of complete standardization among programming languages and hardware in the computer industry. Thus. where they were rightful possessors during the time they had the software. However. which grants to copyright proprietors the exclusive right to prepare translations. at 13} I.´ There is nothing in the legislative history of the bill that indicates why this change was made. Preparation of adaptations could not. {FN12: CONTU Rep.

The transfer of possession of a lawfully made copy of a computer program by a nonprofit educational institution to another nonprofit educational institution or to faculty. 1996)} the Seventh Circuit found that a license injects an additional element (the license itself) into the relationship between the copyright owner and the user.) But in ProCD v. such concerns were unnecessary because Congress later passed the Computer Software Rental Amendments Act of 1990. v. lease. Nothing in the preceding sentence shall apply to the rental. 1993)} the Ninth Circuit Court of Appeals noted that licensees of software ³do not qualify as µowners¶ of the software and are not eligible for protection under §117. and so isn¶t equivalent to copyright and is not preempted. or other medium embodying such program). While the software licenses permitted the customers to run the diagnostic programs and the operating system. Zeidenberg. neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program (including any tape. dispose of. . such as a limit on the warranties provided. or lending of a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution.3d 1447. In general. or lending for direct or indirect commercial purposes under this subsection. Peak Computer. it allows a copyright owner to ³double-dip´ by using copyright protection when it is desirable which negates the balances in the copyright act by claiming that the software is licensed. or other medium embodying such program). the possession of that phonorecord or computer program (including any tape. 26 USPQ2d 1458 (9th Cir. and in the case of a sound recording in the musical works embodied therein.copyright infringer when he or she made the copy but became one when he or she didn¶t take an action ± deleting the copy after returning the rental software. for the purposes of direct or indirect commercial advantage. are separate from copyright considerations and clearly not preempted by Section 301. disk. lease.2d 511. or lending. Section 301 of the Copyright Act preempts any state law that ³come[s] within the subject matter of copyright. I. 39 USPQ2d 1161 (7th Cir. disk. 5} Peak was an independent service company that had used MAI¶s diagnostic programs when it serviced customers¶ computers. (Other terms of a license. It is questionable whether a license should be allowed to preempt the rights granted to software users under Section 117.{FN17: 86 F.S.´ {FN16: 17 U.´ {FN15: 991 F. or authorize the disposal of.2. staff. The 1990 Software Rental Prohibition In any case. or lending. §301(a)} which the copying of a computer program to use it clearly does. or other medium embodying such program) by rental.E. §109(b)(1)(A)} Although there are few cases that discuss the implications of Congress¶s adopting ³owner of a copy´ rather than ³rightful possessor of a copy.C.´ in MAI Systems Corp. and students does not constitute rental.C. {FN13: 17 U. they did not permit third parties like Peak to load the software. disk. or by any other act or practice in the nature of rental. This view is not universally held.S. lease. 26 USPQ2d at 1464 n. {FN14: 991 F. may.2d at 518 n. lease. which limited the ³first sale´ provisions of Section 109 for computer software: Unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program (including any tape. 5.

Section 117 addresses only ³computer programs.± For purposes of this section: (1) the ³maintenance´ of a machine is the servicing of the machine in order to make it work in accordance with its original specifications and any changes to those specifications authorized for that machine. even though configuration files or sample computer programs or clip art regularly accompany computer programs and are often necessary for their operation. Congress reacted to the concerns raised by this decision by amending Section 117 to address third-party maintenance of computers (c) Machine Maintenance or Repair. Section 117 still does not recognize the reality of how backups of computer data are done.´ It is difficult. Instead.I. and (2) with respect to any computer program or part thereof that is not necessary for that machine to be activated. for purposes only of maintenance or repair of that machine. Archival copies of particular programs are not made. The Scope Of Software Copyright .3. (d) Definitions. particularly on machines shared by a number of users.´ which are ³set[s] of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. not just computer programs as permitted by Section 117. Also. if± (1) such new copy is used in no other manner and is destroyed immediately after the maintenance or repair is completed. a copy of the entire file system. §117(c)} It is not clear whether these added provisions really solve the problem or are just a Band-Aid. to go to all the backup tapes and delete the specific files associated with a computer program when the license for that computer program expires. if not impossible. Chapter 2: Copyright of Computer Programs II.´ It does not provide special treatment for computer data. but also computer data not addressed by Section 117. it is not an infringement for the owner or lessee of a machine to make or authorize the making of a copy of a computer program if such copy is made solely by virtue of the activation of a machine that lawfully contains an authorized copy of the computer program.) But more problematic is the requirement of Section 117 that ³all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.± Notwithstanding the provisions of section 106.E. as part of the Digital Millennium Copyright Act. The 1998 Addition to Section 117 In 1998. is written with little regard for what is being copied. such program or part thereof is not accessed or used other than to make such new copy by virtue of the activation of the machine.S. or those files that have changed since the last backup was made.C. It would have been far better if Congress had recognized that most software is distributed under a license ± generally a non-negotiable shrink-wrap license ± that arguably makes Section 117 a nullity if consumers are really just licensees and not owners of their copies of a computer program. and (2) the ³repair´ of a machine is the restoring of the machine to the state of working in accordance with its original specifications and any changes to those specifications authorized for that machine. {FN18: 17 U. Finally. (Most backup procedures make a copy of everything on the disk being archived.

Certain mixtures are found to be of great value in the healing art. Had he used words of description instead of diagrams (which merely stand in the place of words). or such as are similar to them. he gains no exclusive right to the manufacture and sale of the medicine. or embodied in such work. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains.A. but for the purpose of practical application. {FN20: 101 U. By publishing the book. concept. principle. gives no exclusive right to the modes of drawing described.II. If the discoverer writes and publishes a book on the subject (as regular physicians generally do). or to the diagrams which he employs to explain them. 99 (1879)} stated: The difference between the two things. at 102-103} . and patents. regardless of the form in which it is described. The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds. So of all other inventions or discoveries. and which he thus described by words in his book. without getting a patent for the art. Take the case of medicines. process.S. so as to prevent an engineer from using them whenever occasion requires. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. the latter is given to the public. or discovery. Copyrights or Patents? Although it is now clear that software can be protected by copyright. may be illustrated by reference to the subjects just enumerated. no matter how many drawings and illustrations it may contain. in the 1879 case Baker v. applying the art to practical use. there could not be the slightest doubt that others. He may copyright his book.C. {FN21: 101 U. if he pleases.S. manufacture. not given for the purpose of publication in other works explanatory of the art. or composition of matter. The Supreme Court. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book. The copyright of a book on perspective. though they may never have been known or used before. something that has traditionally been protected by patents. §102(b)} This recognizes the complementary nature of copyright. Section 102(b) of the Copyright Act of 1976 restates this principle: In no case does copyright protection for an original work of authorship extend to any idea. makes no difference. {FN19: 17 U. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art. Selden. the real question is what does that copyright protect? This question is complicated by the inherently-functional nature of computer software. which protect useful procedures or machines. If he desires to acquire such exclusive right. he must obtain a patent for the mixture as a new art. Those illustrations are the mere language employed by the author to convey his ideas more clearly. method of operation. illustrated. which protects expression. and given therewith to the public. system. he gives that to the public.S. procedure. explained. letters-patent and copyright. such methods and diagrams are to be considered as necessary incidents to the art. but that only secures to him the exclusive right of printing and publishing his book. might lawfully draw the lines and diagrams which were in the author¶s mind.

would be a surprise and a fraud upon the public.R. process. on the construction and use of ploughs. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. procedure. or on the mixture and application of colors for painting or dyeing. It pertains to the literary. commented on the provision in Section 102(b): Copyright does not preclude others from using the ideas or information revealed by the author¶s work. Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer. of its subject-matter. To give to the author of the book an exclusive property in the art described therein. to make clear that the expression adopted by the programmer is the copyrightable element in a computer program. be they old or new. {FN23: H. especially when stored in ROM. But does that also protect the object code that actually runs on the computer? Object code. Section 102(b) makes clear that copyright protection does not extend to any idea.Furthermore. or on the mode of drawing lines to produce the effect of perspective.±-would be the subject of copyright. 94-1476 at 56} Chapter 2: Copyright of Computer Programs II. regardless of the form in which it is described. not of copyright. That is the province of letters-patent. in its report accompanying the Copyright Act of 1976. or watches. would be valid without regard to the novelty. Rep. principle. rather than merely to the ³writing´ expressing his ideas. among other things. to the extent that it is original expression. graphic. if not pirated from other works. or artistic form in which the author expressed intellectual concepts. or discovery. at 102} The House Committee on the Judiciary. and that the actual processes or methods embodied in the program are not within the scope of the copyright law. No. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained. {FN22: 101 U. might be regarded as just part of a machine. explained. The copyright of the book. the Court noted that the criteria for copyright and patent protection are quite different: A treatise on the composition and use of medicines. illustrated. when no examination of its novelty has ever been officially made. is protectable by copyright. musical. concept. or want of novelty.B. . but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. and it can only be secured by a patent from the government.S. Object Code Clearly the source code for a computer program. or embodied in such work. method of operation. system. or churns. not protectable by copyright. Section 102(b) is intended.

which it views as part of a machine. Franklin The Third Circuit expanded on this in Apple v. But Franklin¶s main contention was that the Apple operating system programs were not protectable under copyright law: Franklin argues that an operating system program is either a ³process. {FN24: 685 F.2d at 876877.II.2. is a utilitarian one not within the scope of the Copyright Act. Its theory is that a ³copy´ must be intelligible to human beings and must be intended as medium of communication to human beings. That use. Defendant makes the further point that when the issue is the copyright on a computer program.B. Franklin correctly notes that underlying section 102(b) and many of the statements for which Baker v. We have already rejected defendant¶s similar argument in the context of the copyrights for the audiovisual works. We reject any contention that this broad language should nonetheless be interpreted in a manner which would severely limit the copyrightability of computer programs which Congress clearly intended to protect. {FN26: 714 F. or otherwise communicated. 1982)} the Third Circuit addressed this question in the context of a video game controlled by a computer program in ROM: Defendant argues that the basic question presented is whether the ROMs. Williams Electronics v. It argued that it could not produce a clone of the Apple II without copying the programs. Apple v.´ By this broad language. We cannot accept defendant¶s suggestion that would afford an unlimited loophole by which infringement of a computer program is limited to copying of the computer program text but not to duplication of a computer program fixed on a silicon chip. either directly or with the aid of a machine or device . A ³copy´ is defined to include a material object in which a work is fixed ³by anymethod now known or later developed. The answer to defendant¶s contention is in the words of the statute itself. {FN25: 685 F.2d 1240. Congress opted for an expansive interpretation of the terms ³fixation´ and ³copy´ which encompass technological advances such as those represented by the electronic devices in this case.2d 870. can be considered a ³copy´ of a copyrighted work within the meaning of the Copyright Act.1. Franklin. it claims. a distinction must be drawn between the ³source code´ version of a computer program. Artic International In Williams Electronics v. 219 USPQ 113 (3d Cir.´ ³system. which it would hold can be afforded copyright protection. 215 USPQ at 410-411 (citations omitted)} II. although Apple introduced evidence that Franklin could have rewritten the programs and that there were in existence operating systems written by third parties that were compatible with the Apple II.´ or ³method of operation´ and hence uncopyrightable. reproduced. and the ³object code´ stage. and from which the work can be perceived. 215 USPQ 405 (3d Cir. Artic International. Defendant argues that a copyright for a computer program is not infringed when the program is loaded into electronic memory devices (ROMs) and used to control the activity of machines. 1983)} Franklin Computer was producing a clone of the Apple II computer and had copied both the Apple ROM and a number of computer programs from Apple. which it contends cannot be so protected.B. Selden is cited is the distinction which must be made between property subject to .

the patent law. Apple does not seek to copyright the method which instructs the computer to perform its operating functions but only the instructions themselves. no reason to afford any less copyright protection to the instructions in an operating system program than to the instructions in an application program. a ³process´ is no more involved because the instructions in an operating system program may be used to activate the operation of the computer than it would be if instructions were written in ordinary English in a manual which described the necessary steps to activate an intricate complicated machine. We do not read such a limitation . {FN28: 714 F.2d at 1251. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. which protects the writings describing such discoveries. which protects discoveries. Methods that are truly novel can be protected by patent provided they produce a useful result. Franklin contended that the Apple operating system could not be copyrighted because it was utilitarian. not given for the purpose of publication in other works explanatory of the art. it should make no difference for purposes of section 102(b) whether these instructions tell the computer to help prepare an income tax return (the task of an application program) or to translate a high level language program from source code into its binary language object code form (the task of an operating system program such as ³Applesoft´). {FN27: 714 F. the Court stated: ³We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. Both types of programs instruct the computer to do something. The method would be protected. This argument stems from the following dictum in Baker v. There is.2d at 1250-1251. Selden: The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. Franklin¶s argument misapplies that distinction in this case. Therefore. and given therewith to the public. and that subject to copyright law. 219 USPQ at 122} In the alternative. but for the purpose of practical application. that interpretation has been rejected by a later Supreme Court decision. by the patent law. Stein. or such as are similar to them. 219 USPQ at 122 (citations omitted)} The question of the patentability of computer programs has subsequently been resolved. Franklin also contented that the software in question was not protectable under copyright because it was an operating system and not an applications program. In Mazer v. an issue as yet unresolved. such methods and diagrams are to be considered as necessary incidents to the art. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book. Franklin¶s attack on operating system programs as ³methods´ or ³processes´ seems inconsistent with its concession that application programs are an appropriate subject of copyright. However. if at all. therefore. Since it is only the instructions which are protected. Although a literal construction of this language could support Franklin¶s reading that precludes copyrightability if the copyright work is put to a utilitarian use. We cannot accept the expansive reading given to this language by some courts.

This claim has no pertinence to either the idea/expression dichotomy or merger. . . a plurality of copyrights may result.2d at 12511252. this inquiry is no different than that made to determine whether the expression and idea have merged. In essence. the line must be a pragmatic one. and no infringement will exist. Franklin can point to no decision which adopts the distinction it seeks to make. if the same idea can be expressed in a plurality of totally different manners. there are a limited ³number of ways to arrange operating systems to enable a computer to run the vast body of Apple-compatible software. Selden. Perhaps the most convincing item leading us to reject Franklin¶s argument is that the statutory definition of a computer program as a set of instructions to be used in a computer in order to bring about a certain result makes no distinction between application programs and operating programs.´ It referred to ³copyright practice past and present. for example. ³Unlike a patent. ³That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability. we quoted approvingly the following passage from Dymow v. The idea which may merge with the expression.´ The CONTU majority also rejected the expansive view some courts have given Baker v. we can consider the CONTU Report as accepted by Congress since Congress wrote into the law the majority¶s recommendations almost verbatim. thus making the copyright unavailable. Many of the courts which have sought to draw the line between an idea and expression have found difficulty in articulating where it falls. Bolton: Just as a patent affords protection only to the means of reducing an inventive idea to practice. {FN29: 714 F.´. 219 USPQ at 122-123 (citations omitted)} Finally. which has been stated to occur where there are no or few other ways of expressing a particular idea. We believe that in the context before us. and it is as near the whole truth as generalization can usually reach that. Franklin contended that operating systems were more like ideas than expression. The idea of one of the operating system programs is.into the copyright law. which recognizes copyright protection for a work of authorship regardless of the uses to which it may be put. As we previously noted.´ In that opinion. a copyright protects originality rather than novelty or invention. and stated. If other methods of . Franklin claims that whether or not the programs can be rewritten. how to translate source code into object code.´ (emphasis added). is the idea which is the subject of the expression.´ The Commission continued: ³The copyright status of the written rules for a game or a system for the operation of a machine is unaffected by the fact that those rules direct the actions of those who play the gameor carry out the process. so the copyright law protects the means of expressing an idea. which also keeps in consideration ³the preservation of the balance between competition and protection reflected in the patent and copyright laws´. a program for an operating system. . We adopt the suggestion in the above language and thus focus on whether the idea is capable of various modes of expression. then that program is an expression of the idea and hence copyrightable. If other programs can be written or created which perform the same function as an Apple¶s operating system program. because they could be expressed in only limited number of ways.

1993)} Peak argues that this loading of copyrighted software does not constitute a copyright violation because the ³copy´ created in RAM is not ³fixed. is sufficiently permanent or stable to permit it to be perceived. MAI has adequately shown that the representation created in the RAM is ³sufficiently permanent or stable to permit it to be perceived. {FN30: 714 F. Peak: Fixed Reproductions But if the contents of a RAM disappear when power is removed from the RAM. {FN31: 17 U. we find no specific facts (and Peak points to none) which indicate that the copy created in the RAM is not fixed. {FN32: 991 F. Inc.S. In Apple Computer.C. Franklin may wish to achieve total compatibility with independently developed application programs written for the Apple II. 26 USPQ2d 1458 (9th Cir. 219 USPQ at 124 (citations omitted)} Chapter 2: Copyright of Computer Programs II. . or otherwise communicated for a period of more than transitory duration. or otherwise communicated for a period of more than transitory duration.expressing that idea are not foreclosed as a practical matter. v. The law also supports the conclusion that Peak¶s loading of copyrighted software into RAM creates a ³copy´ of that software in violation of the Copyright Act. the first of the exclusive rights in copyright. Formula Int¶l.´ One of the grounds for finding that 117 did not apply was the court¶s conclusion that the permanent copying of the software onto the silicon chips was . then there is no merger. §101} II.2d 511. by or under the authority of the author. reproduced. Section 117 allows ³the µowner¶ of a copy of a computer program to make or authorize the making of another copy´ without infringing copyright law. Peak.2d at 1253. Section 101 states: A work is ³fixed´ in a tangible medium of expression when its embodiment in a copy or phonorecord. if it ³is an essential step in the utilization of the computer program´ or if the new copy is ³for archival purposes only. by showing that Peak loads the software into the RAM and is then able to view the system error log and diagnose the problem with the computer. RAM Copies One remaining question is whether the copying of a program from a disk drive into RAM for its execution is the making of a reproduction of that work. Although the answer seems obvious.C. it is complicated by the fact that the exclusive right is to ³reproduce the copyrighted work in copies´ and copies require that the work be fixed. is the work fixed in the RAM so that it can be considered a copy? The Ninth Circuit considered this question in MAI v. .. but that is a commercial and competitive objective which does not enter into the somewhat metaphysical issue of whether particular ideas and expressions have merged.C. MAI v. Inc.´ After reviewing the record.1.´ However. . the district court held that the copying of copyrighted software onto silicon chips and subsequent sale of those chips is not protected by Section 117 of the Copyright Act. reproduced.

and therefore is not fixed.S.000. it is generally accepted that the loading of software into a computer constitutes the creation of a copy under the Copyright Act. although it is the logical consequence of combining the NET Act¶s language with the decision in MAI v. It is a property of RAM that when the computer is turned off.not an ³essential step´ in the utilization of the software because the software could be used through RAM without making a permanent copy. 105-147. This would only be a temporary fixation. While we recognize that this language is not dispositive. and you run it 11 times.´ we hold that the loading of software into the RAM creates a copy under the Copyright Act. or otherwise communicated. Clearly. this was not the intent of Congress. by reproducing the disk copy to RAM. it is possible to read the work as long as it hasn¶t been overwritten or the power hasn¶t been removed. (Although in a dynamic RAM the individual bits also fade away. We affirm the district court¶s grant of summary judgment as well as the permanent injunction as it relates to this issue.C.2. you have made 11 copies of the program. {FN34: 17 U. The criminal infringement provision. However. §506} was amended in 1997 by the No Electronic Theft (NET) Act {FN35: Pub. Section 506. reproduced. the memory system has a refreshing component that extends their life. We have found no case which specifically holds that the copying of software into RAM creates a ³copy´ under the Copyright Act. since we find that the copy created in the RAM can be ³perceived. there is a problem. the hard disk or the read only memory (³ROM´). In the case of RAM. but also if there has been the reproduction or distribution during any 180-day period of copies having a total retail value of more than $1. Concerned about this . 2678} so that criminal infringement occurs not only when the infringement was willful and for purposes of commercial advantage or private financial gain. so that the image can no longer be perceived.100. the image of a movie on a screen or a television show on a cathode ray tube or bits being transmitted on a wire fade away ³automatically´ at a predictable time. In contrast. {FN33: 991 F. A Better Way to Look at RAM Copies Perhaps a better way of looking at whether something is fixed is whether it can be read or copied at some arbitrary later time. No. so when the entire memory system is considered. Peak. with a total value of $1. the copy of the program recorded in RAM is lost.) But when one considers the loading of a program into RAM from the disk making of a copy. In the case of a videotape.2d at 518-519. the purchaser of software desiring to utilize all of the programs on the diskette could arrange to copy the software into RAM. the bits are fixed unless there is some external event such as the removal of power that causes the refreshing to stop. Thus. We recognize that these authorities are somewhat troubling since they do not specify that a copy is created regardless of whether the software is loaded into the RAM. it can be viewed unless it is erased or otherwise destroyed. However. 111 Stat. 26 USPQ2d at 1463-1464 (citations omitted)} II. The court stated: RAM can be simply defined as a computer component in which data and computer programs can be temporarily recorded. L. absent some external event that destroys the work.C. it supports the view that the copy made in RAM is ³fixed´ and qualifies as a copy under the Copyright Act. So if you have a program with a retail value of $100.

Senator Orrin Hatch. Programs or data must be transferred from a floppy disk to a hard disk or from a hard disk into RAM as a necessary step in their use. Rec. Given its purpose. Sometimes we even remember that a copyright can be infringed by publicly performing or displaying a work without permission. that may be sufficient in most instances.problem. 117. Rec. at S12690} He was also concerned about the effect of the bill on making archival copies of computer programs: Because most shrink-wrap licenses purport to make the purchaser of computer software a licensee and not an owner of his or her copy of the software. the chairman of the Senate Committee on the Judiciary. at S12690} II. allowing the ³owner´ of a copy to reproduce the work in order to use it in his or her computer. the ordinary purchaser of computer software who loaded the software enough times in the 180-day period to reach the more-than-$1. made the following floor statement when the Senate was considering the NET Act: Congress has long recognized that it is necessary to make incidental copies of digital works in order to use them on computers. Copies are made whenever the program is transferred from floppy disk to hard disk or is read into the computer¶s memory for execution. of course. the ordinary purchaser of software may not be able to take advantage of the exemption provided by sec. we think of somebody duplicating a work. when we think of copyright infringement. Modern operating systems swap data between RAM and hard disk to use the computer memory more efficiently. Beyond Mere Copying of a Computer Program Generally. Most. Chapter 2: Copyright of Computer Programs III. and so there is little difficulty in finding that they are copyright infringement.D. whether they are in readable source code form or are an executable program that is intended to be understood only by a computer. Clearly.000 threshold may be a criminal! This is. under a literal reading of the bill. the preloading of the program onto the hard disk of a computer being sold. {FN36: 143 Cong. . not the intent of the bill. and those copies will infringe the copyright of the computer program if they are not permitted by the copyright owner or by copyright law. or the distributing of the program over the Internet without authorization. {FN37: 143 Cong. Summary It is now well-accepted that copyright protects computer programs and other digital information. Thus. copyright infringement of today¶s operating systems or applications programs consists of the complete copying of that program onto a compact disc or other distribution medium. either all of it or at least enough of it as to appropriate much of its value. These acts are obviously wrong. this kind of copying was not intended to be criminalized. or by translating the work into another language or another form. if not virtually all. Many shrink-wrap licenses limit the purchaser to making only a single backup copy of his or her software. it is not the intent of this bill to have the incidental copies made by the user of digital work be counted more than once in computing the total retail value of the infringing reproductions. As computer programs have become more complicated.

¶ Decisions must therefore inevitably be ad hoc. 274 F. He continued selling both versions and advertised his as a new version for the personal computer. The Second Circuit. 7 USPQ 84. Judge Learned Hand. Unlike the software for the Series One. 230 USPQ at 484} III. The Third Circuit¶s Whelan Decision The Third Circuit began by stating: . or even a major part. Jaslow¶s program was not a mere copy of Whelan¶s ± they were written in different programming languages for different machines.´ {FN43: 797 F. Jaslow Dental Laboratory.´ {FN40: Nichols v. an IBM programming system for the Series One). 797 F. However. 1930)} Thirty years later he concluded. 23 USPQ2d 1241 (2d Cir. Whelan was not pleased and filed suit for.A. For example. {FN42: Whelan Associates v. Universal Pictures. Sequence. else a plagiarist would escape by immaterial variations.´ {FN39: 982 F. and end of month procedure ± performed almost identically in both programs. 1992)} has noted that: as a general matter. of a work. which was written in EDL (Event Driven Language.2d 1222. in the case of Whelan Associates v. he implemented a similar program on the IBM personal computer. whether something is a fair use depends on many factors and how they are weighted.2d at 1228. Altai. Jaslow¶s personal computer implementation was written in Basic. Moreover. and to varying degrees. the programs were structurally similar. After two years. differences in the programming techniques commonly used with the two languages caused significant differences in the two programs. copyright infringement. without copying the actual dialogue.2d at 701. It was agreed that Jaslow and Whelan would jointly market the program to other dental laboratories. {FN38: 982 F.2d 487. that the right cannot be limited literally to the text.´ {FN41: Peter Pan Fabrics v. copyright protection extends beyond a literary work¶s strictly textual form to its non-literal components.¶ and has borrowed its µexpression.2d 693. ³five particularly important µsubroutines¶ within both programs ± order entry. as Jaslow had become more familiar with computers and programming. As we have said. with most of the file structures and the screen outputs virtually identical. 1986)} Rand Jaslow had hired Elaine Whelan to design a dental laboratory management system to handle his administrative and bookkeeping tasks on an IBM Series One minicomputer. no principle can be stated as to when an imitator has gone beyond copying the µidea. among other things. Structure. . 155 (2d Cir. invoicing. Martin Werner.2d 119. in its decision in Computer Associates v. Sometimes a play or movie takes too much of the plot or characterization of a copyrighted work. so it is difficult to draw bright lines on what is infringement and what isn¶t. 1960)} III. 124 USPQ 154. . 23 USPQ2d at 1248} Such cases are very fact-intensive.But it is possible to infringe a copyright without copying all. accounts receivable. and Organization The first appeals court to confront what copyright protects for a computer program beyond direct copying was the Third Circuit. 230 USPQ 481 (3d Cir. ³Obviously. Clearly.1. end of day procedure. ³it is of course essential to any protection of literary property . Also. who wrote many copyright decisions during his time on the Second Circuit. 489. noted that ³nobody has ever been able to fix that boundary. and nobody ever can. Jaslow Dental Laboratory. 86 (2d Cir. 45 F.A. 121.

a competitor of Computer Associates.S. limits what might otherwise be found infringing. the line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. character Chapter 2: Copyright of Computer Programs III. {FN53: 982 F. then the particular means chosen is not necessary to the purpose. which it used with its other programs to handle the differences in operating system calls and services between the various IBM mainframe operating systems.S. and therefore that the structure cannot be protected by the program copyright. Where there are various means of achieving the desired purpose. Consideration of copyright doctrines related to scènes à faire and factintensive works supports our formulation. Selden {FN47: 101 U.2d 693.2d at 1234. 1992)} Computer Associates had developed a computer program named Adapter. which he called Oscar. Altai. he thought of how Adapter simplified that for Computer Associates. §102(a)(1) extends copyright protection to ³literary works. 99 (1879)} in the context of this case: The Court¶s test in Baker v. the Second Circuit examined the scope of software copyrights in Computer Associates International v. 230 USPQ at 489} The Third Circuit then summarized Baker v. Just as Baker v. there is expression. he put together a program similar to Adapter. by definition. Filtration.C. it would thus appear that the copyrights of computer programs can be infringed even absent copying of the literal elements of the program. When he saw the overhead Altai had maintaining different versions of its programs for the different IBM operating systems. Selden suggests a way to distinguish idea from expression. for Altai. hence. for they reflect the same underlying principle. 23 USPQ2d 1241 (2d Cir. he had kept a listing of Adapter. the Third Circuit attempted to devise a ³rule for distinguishing idea from expression in the context of computer programs. Jaslow argued that ³the structure of a computer program is. codified in Section 102(b) of the Copyright Act of 1976. Selden focused on the end sought to be achieved by Selden¶s book. not idea.Title 17 U. About 30 percent of the first version of Oscar came from Adapter. 230 USPQ at 489} Not accepting that broad limitation. In other words. A former employee of Computer Associates had gone to work for Altai.´ {FN45: 797 F. One can violate the copyright of a play or book by copying its plot or plot devices. Comparison A few years after Whelan. Scènes à faire are ³incidents.the purpose or function of a utilitarian work would be the work¶s idea.´ {FN46: 797 F.B. and everything that is not necessary to that purpose or function would be part of the expression of the idea. the idea and not the expression of the idea. 230 USPQ at 488-489 (citations omitted)} But the Third Circuit recognized that the dichotomy between idea and expression. . Abstraction. The copyrights of other literary works can be infringed even when there is no substantial similarity between the works¶ literal elements. By analogy to other literary works. Working from that listing.2d at 1235.2d at 1235. Though he was supposed to have returned all program listings when he left Computer Associates.´ and computer programs are classified as literary works for the purposes of copyright. {FN44: 797 F.

The Second Circuit¶s Altai Decision Declining to adopt the broad Whelan test of the Third Circuit. the new version had a structure quite similar to the infringing version. our opinion. and public domain. we are cognizant that computer technology is a dynamic field which can quickly outpace judicial decisionmaking. the case was tried before Second Circuit Judge Pratt. a court would then be able to sift out all non-protectable material. In taking this approach.1. which includes Hollywood in its jurisdiction) as a copyright court. of creative expression after following this process of elimination. sitting by designation. who had been provided with an independent expert (Randall Davis. it registered its copyright in Adapter and filed suit for both copyright infringement and misappropriation of trade secrets. The case was one well-situated to make new law. and drama. Not surprisingly. we think that district courts would be well-advised to undertake a three-step procedure. in order to determine whether the non-literal elements of two or more computer programs are substantially similar. has long been regarded (along with the Ninth Circuit. the Second Circuit said: We think that Whelan¶s approach to separating idea from expression in computer programs relies too heavily on metaphysical distinctions and does not place enough emphasis on practical considerations. by examining each of these parts for such things as incorporated ideas. As the cases that we shall discuss demonstrate. {FN54: 982 F. it draws on such familiar copyright doctrines as merger. In ascertaining substantial similarity under this approach. The Second Circuit. Altai conceded the copyright infringement and began an effort to reimplement Oscar using programmers who had not seen the Adapter program based on the functional specifications of Oscar. should not be read to foreclose the district courts of our circuit from utilizing a modified version. Thus. It will be helpful to elaborate a bit further. 23 USPQ2d at 12521253 (citations omitted)} .When Computer Associates learned that Oscar was similar to Adapter and had been developed at Altai by one of its own former programmers. a satisfactory answer to this problem cannot be reached by resorting. Then. a court would first break down the allegedly infringed program into its constituent structural parts. This approach breaks no new ground. scènes à faire. or possibly kernels. however. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement. based on the abstractions test utilized by the district court.B. music. the court¶s last step would be to compare this material with the structure of an allegedly infringing program. His decision formed the basis for the Second Circuit¶s decision. with decisions of Learned Hand and others still defining the bounds of copyright. expression that is necessarily incidental to those ideas. rather. because it hears appeals from the New York center of publishing.2d at 706. As discussed herein. a priori. At the district court level. III. Left with a kernel. to philosophical first principals [sic. in cases where the technology in question does not allow for a literal application of the procedure we outline below.]. a professor of computer science from MIT) to help him understand the technical aspects of computer software. The issue before the Second Circuit was whether the new version of Oscar infringed the copyright for Adapter. and elements that are taken from the public domain.

Bando Chemical.2. 1930)} The Second Circuit felt that this provided the framework it needed for computer programs: As applied to computer programs.Well. that sounds simple enough. a computer program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules. Defining Computer Program Parts Under Learned Hand¶s Abstractions Test in Software Copyright Infringement Cases. {FN56: 982 F. at the highest level it is trivial.´ to which. {FN57: 9 F. Rev.2d 119. 91 Mich. A program has structure at every level of abstraction at which it is viewed. Altai. taking much of its description of the possible levels of abstraction from a law review article written by a computer scientist and law student: {FN58: John W. we decline to set forth any strict methodology for the . as more and more of the incident is left out. it is necessary essentially to retrace and map each of the designer¶s steps ± in the opposite order in which they were taken during the program¶s creation. 23 USPQ2d at 1253} III. the functions of higher-level modules conceptually replace the implementations of those modules in terms of lowerlevel modules and instructions. a great number of patterns of increasing generality will fit equally well. The Tenth Circuit¶s Elaboration On Altai In Gates Rubber v. 86 (2d Cir. This idea originally came from a Second Circuit decision written by Judge Learned Hand. a court should dissect the allegedly copied program¶s structure and isolate each level of abstraction contained within it.L.3d 823. At a higher level of abstraction. At low levels of abstraction. The first step is to abstract the elements of the computer program at different levels. in a manner that resembles reverse engineering on a theoretical plane. his property is never extended. 1993)} a case decided following Computer Associates v. and it certainly doesn¶t have the single-idea problem of Whelan. This process begins with the code and ends with an articulation of the program¶s ultimate function. the instructions in the lowest-level modules may be replaced conceptually by the functions of those modules. Along the way. . since otherwise the author could prevent the use of his ³ideas. . 7 USPQ 84. . 28 USPQ2d 1503 (10th Cir. {FN55: Nichols v. the following description is helpful: At the lowest level of abstraction. and at times might consist only of its title. the abstractions test will comprise the first step in the examination for substantial similarity.2d at 707. Initially. but there is a point in this series of abstractions where they are no longer protected. Given the complexity and ever-changing nature of computer technology. L. a program¶s structure may be quite complex. . The last may perhaps be no more than the most general statement of what the work is about. As an anatomical guide to this procedure. Universal Pictures.B. the Tenth Circuit added a little meat to the sparse description from the Second Circuit on how to abstract a computer program. apart from their expression. one is left with nothing but the ultimate function of the program. 45 F. At progressively higher levels of abstraction. 121. until finally. Ogilvie. . 526 (1992)} Application of the abstractions test will necessarily vary from case-to-case and program-to-program. in which he stated: Upon any work .

(v) source code. but it is only a tool that facilitates the critical next step of filtering out unprotectable elements of the program. (ii) values. (iv) arrays or groupings of the same data type. Data structure is a precise representation or specification of a data type that consists of (i) basic data type groupings such as integers or characters. as pointed out earlier. Ordinarily. a computer program can often be parsed into at least six levels of generally declining abstraction: (i) the main purpose. The computer program is written first in a programming language. and (vi) pointers or connections between records that set aside space to hold the record¶s values. expert testimony will be helpful to organize a particular program into various levels of abstraction. (ii) the program structure or architecture. the organization of a program into abstraction levels is not an end in itself. The program¶s architecture or structure is a description of how the program operates in terms of its various functions. fit all computer codes. A data type defines the type of item that an operator acts upon such as a student record or a daily balance.3d at 834-836. and (vi) object code. The main purpose of a program is a description of the program¶s function or what it is intended to do. For example. An algorithm is a specific series of steps that accomplish a particular operation. and substructure or nesting. the court must take care to describe the program¶s function as specifically as possible without reference to the technical aspects of the program. {FN59: 9 F. Source code is the literal text of a programs¶ instructions written in a particular programming language. which are performed by discrete modules. Data flow describes the movement of information through the program and the sequence with which it is operated on by the modules. Algorithms and data structures are more specific manifestations of operations and data types. When defining a program¶s main purpose. in most cases we foresee that the use of experts will provide substantial guidance to the court in applying an abstractions test. operations in a calculator program might include adding or printing data. Indeed. Substructure or nesting describes the inner structure of a module whereby one module is subsumed within another and performs part of the second module¶s task. The next level of abstraction consists of the modules.abstraction of computer programs. which a programmer uses visually to depict the inner workings of a program. A module typically consists of two components: operations and data types. (iii) modules. and how each of these modules interact with each other. These generalized levels of abstraction will not. (iv) algorithms and data structures. (v) records or groupings of different data types. (iii) variables. In any event. and then in a binary language consisting of zeros and ones. Control flow is the sequence in which the modules perform their respective tasks. respectively. Structure exists at nearly every level of a program and can be conceived of as including control flow. 28 USPQ2d at 1509-1510(citations omitted)} . Object code is the literal text of a computer program written in a binary language through which the computer directly receives its instructions. However. The architecture or structure of a program is often reduced to a flowchart. of course. such as Pascal or Fortran. data flow. An operation identifies a particular result or set of actions that may be performed.

Filtration There are a number of reasons why something might be filtered. discussed earlier. the concept of efficiency is akin to deriving the most concise logical proof or formulating the most succinct mathematical computation. In the context of computer program design. not all program structure is informed by efficiency concerns. 23 USPQ2d at 1254 (citations omitted)} . the idea and its expression are inseparable and copyright is no bar to copying that expression. Furthermore. The doctrine¶s underlying principle is that ³when there is essentially only one way to express an idea. and whether something is filtered may depend on the particular level of abstraction being considered. This procedure sounds good in theory but is very difficult to apply in practice.B. there might be a myriad of ways in which a programmer may effectuate certain functions within a program. when one considers the fact that programmers generally strive to create programs ³that meet the user¶s needs in the most efficient manner.B. which denies copyright protection to expression necessarily incidental to the idea being expressed.e. such expression should not be protected. express the idea embodied in a given subroutine:efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options. Efficiency The first of these is that the element is dictated by efficiency considerations: The portion of Baker v. then the expression represented by the programmer¶s choice of a specific module or group of modules has merged with their underlying idea and is unprotected. If the answer is yes. While.2d at 707-708. . III. ± i. the more efficient a set of modules are.. hypothetically. It follows that in order to determine whether the merger doctrine precludes copyright protection to an aspect of a program¶s structure that is so oriented.Once the abstraction has been performed. It is at the mid-levels where the filtering is generally performed. those abstracted elements need to be filtered to separate out those things that are not protectable by copyright. {FN60: 982 F. the highest level of abstraction ± the purpose of the program ± is not protectable and would be filtered out. there are going to be a lot of abstracted elements at every level. Selden. At the lowest levels ± the source and object code ± total or even substantial copying is likely to be an infringement. a court must inquire ³whether the use of this particular set of modules is necessary efficiently to implement that part of the program¶s process´ being implemented.a. the expression is said to have ³merged´ with the idea itself. An observation here: for a program of any complexity. Thus. We will discuss this later.´ the applicability of the merger doctrine to computer programs becomes compelling. In order not to confer a monopoly of the idea upon the copyright owner.3. Clearly. appears to be the cornerstone for what has developed into the doctrine of merger. . Of course. . the more closely they approximate the idea or process embodied in that particular aspect of the program¶s structure.3.´ Under these circumstances. III.

This is known as thescènes à faire doctrine. .3.B. For example. Professor Nimmer points out that ³in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques. the Fifth Circuit refused to reverse the district court¶s denial of a preliminary injunction against an alleged program infringer because. So.´ it has its analogous application to computer programs.c. The first was processes: . Material in the Public Domain The Second Circuit also filtered out elements taken from the public domain.3. since they are not protectable by copyright.´ or the singing of certain German songs would not lead to a finding of infringement because they were ³indispensable. If one is to use the routine or function. and like ³merger. (4) demands of the industry being serviced. (2) compatibility requirements of other programs with which a program is designated to operate in conjunction.III. (3) computer manufacturers¶ design standards. the Hoehling case was an infringement suit stemming from several works on the Hindenberg disaster. it must be called in a particular way. But that does not mean that you will never look at routine or function calls when determining whether there is a substantial similarity between two programs. In Gates v. In the Plains Cottoncase. scenes depicting German greetings such as ³Heil Hitler. . the selection and arrangement of library routine or operating system function calls may be precisely the expression that is being considered. External Factors Next. so that any expressive aspects of the calling sequence have essentially merged with its utilitarian function.´ such expression is not copyrightable. while you can call the same routines and functions using the same calling sequences without infringing. an element may be excluded from copyright protection because its use is dictated by external factors: We have stated that where ³it is virtually impossible to write about a particular historical era or fictional theme without employing certain µstock¶ or standard literary devices. or at least standard. Courts have already considered some of these factors in denying copyright protection to various elements of computer programs. Bando. in the treatment of´ life in Nazi Germany. ³many of the similarities between the . programs were dictated by the externalities of the cotton market.B.´ This is a result of the fact that a programmer¶s freedom of design choice is often circumscribed by extrinsic considerations such as (1) the mechanical specifications of the computer on which a particular program is intended to run.2d at 709-710.´ {FN61: 982 F. There we concluded that similarities in representations of German beer halls. At the abstraction level looking at the overall organization of the programs. you may not be able to copy the structure of the program as evidenced by how those routines and functions are used.b. and (5) widely accepted programming practices within the computer industry. the Tenth Circuit added two filters to be used. III. in part. 23 USPQ2d at 1255 (citations omitted)} An example of an element dictated by external factors is the calling sequence for a library routine or operating system function.

as operations within modules. facts themselves are not protectable. Returning then to our levels of abstraction framework. we note that processes can be found at any level. except perhaps the main purpose level of abstraction.´ In . The Court distinguished the ³art´ or process from the author¶s explanation thereof and found the former unprotectable.´ and instead concluded that protection only extends to the original components of an author¶s work.3d at 836-837. the Court considered whether the author of a book describing an accounting system could obtain protection over the system itself through copyright of the book.d.B. Section 102(b) is intended. Although processes themselves are not copyrightable. As to facts. and that the actual processes or methods embodied in the program are not within the scope of the copyright law. however. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact. processes.When considering utilitarian works such as computer programs one of the most important of these elements is process. The discoverer merely finds and records. Other courts have similarly found processes unprotectable. processes will be found as part of the system architecture. The Court rejected the notion that copyright law was meant to reward authors for the ³sweat of the brow. the Court considered the copyrightability of a telephone directory comprised merely of names. v. Selden. the Court found that No one may claim originality as to facts. and phone numbers organized in alphabetical order. or as algorithms. to make clear that the expression adopted by the programmer is the copyrightable element in a computer program. Most commonly. Inc. The Supreme Court addressed the copyrightability of a utilitarian process in Baker v. . This is because facts do not owe their origin to an act of authorship. ³the copyright is limited to the particular selection or arrangement. However. among other things. Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer. . Like ideas and processes. 28 USPQ2d at 1511 (citations omitted)} III. . an author¶s original compilation. The Supreme Court squarely addressed the issue of the protectability of facts in its recent opinion in Feist Publications. In no event may copyright extend to the facts themselves. Facts The Tenth Circuit also added filtering out facts: The Copyright Act also denies protection to discoveries. Section 102(b) denies protection to procedures. Certain processes may be the subject of patent law protection under Title 35 of the United States Code. The legislative history of the Copyright Act clarifies any ambiguity about the status of processes. systems and methods of operation. rather than merely to the ³writing´ expressing his ideas. In Feist. may be protectable. he or she has merely discovered its existence. One who discovers a fact is not its maker or originator. so long as it incorporates some originality. There. an author¶s description of that process. arrangement or selection of facts can be protected by copyright. Rural Telephone Services Co. {FN62: 9 F.3. addresses.

23 USPQ2d at 1256 (citations omitted)} Most circuits have adopted the abstraction-filtration-comparison test for determining if there is copyright infringement when an exact copy has not been made. Fortunately. the court¶s substantial similarity inquiry focuses on whether the defendant copied any aspect of this protected expression. Methods of Operation The First Circuit got its chance to visit the question of the extent of copyright protection for computer software in Lotus Development v. or taken from the public domain.B. as we will discuss later. after all the unprotectable abstracted elements have been removed by the filtering. At this point. So.4. the test can be very cumbersome. the comparison is made to see if what is left is substantially similar: The third and final step of the test for substantial similarity that we believe appropriate for non-literal program components entails a comparison. because of the complexity of today¶s commercial software packages compared with those in Whelan v. rather than just copy a protected portion of the copyrighted software. Altai. this is the golden nugget.2d at 710. {FN64: 982 F. will most often be found as part of data structures or literally expressed in the source or object codes. 28 USPQ2d at 1511 (citations omitted)} Of course. in many instances. Borland International.3d at 837. In terms of a work¶s copyright value. it may be necessary to look at the overall similarity before considering things at the various levels of abstraction. This is one of the problems with the abstraction-filtration-comparison test ± key information may be filtered before it can be considered. the complex abstraction-filtrationcomparison test will not be necessary. For that reason. III. Once a court has sifted out all elements of the allegedly infringed program which are ³ideas´ or are dictated by efficiency or external factors. But if you filter out all the facts before you look to see if there is sufficient originality in a selection or arrangement of facts. while it is reasonable to say that facts are not entitled to copyright protection and should be filtered out. 34 . a particular selection of facts or arrangement of facts may have sufficient originality to warrant copyright protection. Chapter 2: Copyright of Computer Programs III.3d 807. {FN63: 9 F. but. Comparison Finally. you have nothing left to consider. {FN65: 49 F. and will be violating their duty to that vendor in their design and implementation of a competing product.C. But for complex software.computer programs facts may be found at a number of levels of abstraction. most likely will have had access to the source code for that program as an employee of the software vendor or under a trade secret agreement. as mentioned above. the test may filter out important information to be considered and then find that there is little similarity because there is nothing meaningful left to compare. it is far more likely that an infringer will simply copy the commercial program onto a machine he is selling or a CD-ROM to sell on the black market. Also. Jaslow and Computer Associates v. or its processing techniques. Those who do copy the structure of a program. as well as an assessment of the copied portion¶s relative importance with respect to the plaintiff¶s overall program. there may remain a core of protectable expression.

having identified elements of expression not essential to every expression of the idea. 1995)} Before going after Borland.Supp.´ {FN67: 740 F. Judge Keeton found that the labeling of rows and columns in a spreadsheet was essential. the decisionmaker must focus upon whether an alleged expression of the idea is limited to elements essential to expression of that idea (or is one of only a few ways of expressing the idea) or instead includes identifiable elements of expression not essential to every expression of that idea. Judge Keeton rightfully rejected both these arguments. with Lotus filing an infringement suit in Massachusetts. to be protected by copyright because there are a number of alternative structures that could have been used and.1.S. . While commentators had discussed ³look and feel´ copyrights for computer software. Lotus claimed that the companies had copied its screen displays and menus. because there were only a few characters on the keyboard that could be used. .2. since it was present not only in 1-2-3 and VP-Planner. and its Quattro spreadsheet. and choose some formulation . Borland. But he found the menu structure of 1-2-3. because by the end of the case the defendants had left the spreadsheet market. There was no claim by Lotus that the companies had copied any of Lotus¶s source code during the development of VP-Planner. {FN66: 740 F. VP-Planner. 15 USPQ2d 1577 (D. but in other spreadsheets with considerablydifferent user interfaces like Microsoft Excel.Supp. Borland at the District Court The decision against Paperback was not appealed. III.´ FIRST. which provided the same capabilities as 1-2-3 but at a fraction of the price. Lotus had sued two small companies over another spreadsheet program. . in making the determination of ³copyrightability. along the scale from the most generalized conception to the most particularized. Mass. There was a race to the courthouse. THIRD. Instead.C. III. were used in Microsoft Excel. he found that the use of the ³/´ character to indicate the start of a macro was not protected.´ or unprotected as ³idea. But Lotus had its sights on another company. SECOND. the decisionmaker must focus on whether those elements are a substantial part of the allegedly copyrightable ³work.´ since such an expansive defense could read all software out of the copyright laws. at 6061.some conception or definition of the ³idea´. Instead.for the purpose of distinguishing between the idea and its expression. . Similarly. in fact. District Court in Massachusetts. and Paperback Software had distributed it. nor was Paperback¶s argument that the user interface was ³functional. Judge Keeton developed a three-step process for determining whether something was protected by copyright as ³expression. and the words used in those menus for the options. The Paperback Decision Lotus claimed copyright infringement because Paperback had copied the ³look and feel´ of 12-3. 37.C. 15 USPQ2d at 1593-1594} The heart of this three-step test is whether something is ³essential´ to the computer software or not. in the U. while Paperback said that there could be no copyright infringement because the 1-2-3 user interface was ³functional´ and outside the scope of copyright. the judge found that it was not helpful in determining whether there was an infringement.´ the decisionmaker must focus upon alternatives that counsel may suggest. or the court may conceive. 1990)} Stephenson Software had adapted an existing spreadsheet system so that it could use 1-2-3 commands and execute 1-2-3 macros.USPQ2d 1014 (1st Cir.

While Quattro originally had its own command structure. That is because the 1-2-3 macro language is based on the 1-2-3 command hierarchy. the letter F. Key Reader interprets macros on-the-fly. such as conditional statements.1 does. defendants could have instead added a macro conversion capability as the creators of Excel have successfully done (the Microsoft Excel Macro Translation Assistant). which meant ³Format´ in the ³Range´ submenu. then the ³Format´ submenu. 15 USPQ2d at 1600} Key Reader. Rather. by reference to ³phantom´ . Borland then removed the emulation interface from Quattro but kept a feature called ³Key Reader. Judge Keeton did not seem to understand that this information was needed in some form by any program that interpreted 1-2-3 macros and felt that it was simply a different form of the same menu structure ± what he referred to as the ³phantom menus. For example.Supp. The reason that a data structure describing the command hierarchy of 1-2-3 is needed by any program that interprets 1-2-3 macros is that a particular letter may have different meanings depending on what letters preceded it in the macro. The data structure used by Key Reader did not contain the full menu entry from 1-2-3 but simply the first letter of each entry required to interpret the macro. among other things. {FN68: 740 F. and any other program that interpreted 1-2-3 macros. hoping to get a finding of noninfringement. since Judge Keeton. requires a data structure that describes the command hierarchy of 1-2-3. Borland had added an emulation extension to a subsequent release of Quattro. The screen appearance of Quattro was substantially different from that of 1-2-3. The emulation feature allowed the users to configure the menus as they desired.where it could use the Paperback decision as precedent. Borland supplied two menus: the original Quattro menus and the 1-2-3 menus. Judge Keeton held that Borland¶s emulation interface infringed the copyright in Lotus¶s 1-2-3 menus. to allow people to easily move from 1-2-3. As in Paperback. it claimed that the Borland facility that allowed Quattro to execute 1-2-3 macros contained tables that reproduced the menu hierarchy and commands of 1-2-3. and so forth until a final menu entry is reached. it had the menus displayed in different locations and in a different style. enhanced to add commands that were in Quattro but not in 1-2-3. It felt safe in doing this. and Borland filing a declaratory judgment suit in California. at 69. The infringement suit prevailed. However. Instead. again using Microsoft as an example of a spreadsheet program that did not have an optional menu structure for emulating the 1-2-3 menus.´ which allowed it to run 1-2-3 macros. It is also necessary to know what letters are valid in each submenu to determine whether a macro is valid. and the case was assigned to Judge Keeton because of his experience with the Paperback case. (Macros can also contain things in addition to 1-2-3 commands. For example. Applying his Paperback test. in Paperback. then the ³Currency´ subsubmenu. since first letters mean different things in different submenus. it didn¶t even contend that the structure of its 1-2-3 spreadsheet had been copied in Borland¶s Quattro. seemed to indicate that such a feature would not infringe Lotus¶s copyright when he wrote copying the menu structure was not the only way to achieve aspects of this desired compatibility. the corresponding macro would be ³/RFC´. means ³File´ in the ³Print´ submenu.´ He apparently thought information about the 1-2-3 menu hierarchy was unnecessary to interpret a macro in some instances: Borland¶s Key Reader does not perform one-time translation such as Excel 2. Lotus did not claim that Borland had copied any part of its source code. A macro consists of a starting ³/´ followed by the first letter of a 1-2-3 menu entry. if one formatted a block by first selecting the ³Range´ menu. then the first letter of an entry in the selected submenu.) So.

other people would still be free to employ or describe that method.´ The Lotus menu command hierarchy provides the means by which users control and operate Lotus 1-2-3.Supp. or a computer. we find it to be of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement. In its decision of that appeal. Borland at the First Circuit Unlike Paperback. whether it be a car. as both the Altai and the district court tests require.3d at 815. 30 USPQ2d 1081. refers to the means by which a person operates something. The initial inquiry should not be whether individual components of a menu command hierarchy are expressive. in instructing courts to abstract the various levels. but rather whether the menu command hierarchy as a whole can be copyrighted. If users wish to print material. Altai. If users wish to copy material.menus that contain a copy of the Lotus menu tree. 223. does not affect the fact that both need some data structure that contains the first letters of each 1-2-3 command as well as information about where they occur in the menu hierarchy. In fact. for example. We hold that the Lotus menu command hierarchy is an uncopyrightable ³method of operation. It is unfortunate that the two parties did not provide Judge Keeton with an independent computer science expert who could help him understand the technical aspects of the case. Corp.´ as that term is used in Section 102(b). Thus a text describing how to operate something would not extend copyright protection to the method of operation itself.. Borland had the resources for an appeal. they use . if literally copied.D. Similarly.Y. while Key Reader interprets the macro each time it is encountered. if a new method of operation is used rather than described. {FN70: Computer Associates v. {FN69: Lotus Dev. {FN71: 49 F.3. didn¶t qualify for copyright protection because they were a ³method of operation´: We think that ³method of operation. we think that the Altai test in this context may actually be misleading because. While that base (or literal) level would not be at issue in a nonliteral-copying case like Altai. would make the copier liable for copyright infringement.Supp. Altai. 230.C. they use the ³Copy´ command. obscures the more fundamental question of whether a menu command hierarchy can be copyrighted at all. We think that abstracting menu command hierarchies down to their individual word and menu levels and then filtering idea from expression at that stage.N. a food processor. 544. 20 USPQ2d 1641 (E. . 1993)} The fact that Excel performs a one-time interpretation of a macro while it is translating it to the Excel macro language. it is precisely what is at issue in this appeal. Inc. 1099(D. it seems to encourage them to find a base level that includes copyrightable subject matter that. 1991)} III. and that the tests previously developed would not work here: While the Altai test may provide a useful framework for assessing the alleged nonliteral copying of computer code. 831 F. 775 F. and the hierarchy that was part of the macro commands. Judge Keeton¶s decision is based on a lack of understanding of how command interpreters work and what information is necessary for their operation. as was done for Judge Pratt in Computer Associates v. the First Circuit observed that this was a very different question than in past software copyright cases. v. Borland Int¶l. other people would be free to employ that method and to describe it in their own words. 34 USPQ2d at 1020-1021} The First Circuit decided that the commands in the menu. Mass.

Why are the menus a ³method of operation. Users must use the command terms to tell the computer what to do. Thus the Lotus 1-2-3 code is not a uncopyrightable ³method of operation. users would not be able to access and control. in the common use of those words. because the way the screens look has little bearing on how users control the program. Lotus 1-2-3¶s functional capabilities. process. Borland had to copy the Lotus menu command hierarchy. {FN73: 49 F. users could operate Lotus 1-2-3 even if there were no long prompts. So it looked to Section 102(b)¶s listing of things that are not protectable by copyright and decided that ³method of operation´ was a better fit than ³idea. No solution is perfect and no intermediate appellate court can make the final choice. for the long prompts are not necessary to the operation of the program. the screen displays are not part of Lotus 1-2-3¶s ³method of operation. a defensible position. The Lotus menu command hierarchy is also different from the Lotus screen displays. The Lotus menu command hierarchy is different from the Lotus long prompts. Without the menu command hierarchy.´ In other words.´ Concluding.´ but a computer program that directs how a computer operates is not? There is some concern that the Lotus menu contains original expression in the selection of the names for the commands and how they have been placed in the hierarchy.´ {FN72: 49 F. but the main choices are between holding that the menu is not protectable by copyright and devising a new doctrine that Borland¶s use is privileged. its precise formulation is not. But the First Circuit did not think that was sufficient to give the menu copyright protection: The fact that Lotus developers could have designed the Lotus menu command hierarchy differently is immaterial to the question of whether it is a ³method of operation.the ³Print´ command. because while code is necessary for the program to work. system´ or ³concept. it also serves as the method by which the program is operated and controlled. In other words. procedure. for users need not ³use´ any expressive aspects of the screen displays in order to operate Lotus 1-2-3. 34 USPQ2d at 1026} But the difficulty is that the court gives no guidance on where to draw the line. Rather. Borland did not have to copy Lotus¶s underlying code (and indeed it did not). or indeed make use of.3d at 821. in a concurrence. indicated: Thus. To call the menu a ³method of operation´ is. to allow users to operate its programs in substantially the same way. as we do. 34 USPQ2d at 1021} It appears that the court thought that there must be some reason why the menu command hierarchy ± at least as used by Borland¶s Key Reader. where it is not displayed to the user and is stored in a very different form ± should not be protectable by copyright.3d at 815-816. principle. Various avenues might be traveled. however. our initial inquiry is whether the Lotus menu command hierarchy is a ³method of operation. and that the entire Lotus menu command hierarchy is essential .´ One of the judges on the panel. to offer the same capabilities as Lotus 1-2-3. our initial inquiry is not whether the Lotus menu command hierarchy incorporates any expression. that users operate Lotus 1-2-3 by using the Lotus menu command hierarchy. for me the question is not whether Borland should prevail but on what basis.´ The Lotus menu command hierarchy is also different from the underlying computer code. or discovery. The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3¶s functional capabilities to the user.

presumably because of a potential conflict of interest due to stock ownership). Undoubtedly. which agreed to hear it. 44 USPQ2d 1172 (10th Cir. Iqtel {FN75: 124 F.´ {FN76: 124 F. that element may nevertheless contain expression that is eligible for copyright protection. sections 102(a) & (b) interact to secure ideas for public domain and to set apart an author¶s particular expression for further scrutiny to ensure that copyright protection will ³promote the . the portions of a work to which a court applies abstraction analysis frequently contain a level of abstraction which reveals expression that does not fall within the excluded categories of section 102(b). We are mindful of the concern expressed by the Lotus court that. the procedural posture of the suit. 1997)} whether it should adopt the First Circuit¶s Lotus approach: We conclude that although an element of a work may be characterized as a method of operation. III. otherwise unoriginal. Thus. we decline to adopt the Lotus court¶s approach to section 102(b).3d at 816.4. would make the copier liable for infringement. Tenth Circuit Criticism of Borland The Tenth Circuit. or subject to the doctrines of merger and scènes à faire. useful Arts. Rather. .´ Our abstraction-filtration-comparison approach is directed to achieving this balance. but did not extend it nationwide. 44 USPQ2d at 1177-1178 (citations omitted)} When one understands that the data structure reflecting the Lotus 1-2-3 command hierarchy is something that is required by any program that interprets 1-2-3 macros. That left the First Circuit¶s decision ³good law´ in that circuit. . Notwithstanding our endorsement of abstraction-filtration-comparison analysis.to operating Lotus 1-2-3. 34 USPQ2d at 1022} Lotus appealed the decision of the First Circuit to the Supreme Court. ³the appropriate test to be applied and the order in which its various components are to be applied . Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation at a higher level of abstraction. by its very nature. But after oral arguments. The ³expressive´ choices of what to name the command terms and how to arrange them do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter. then it is clear that the data structure would be filtered during the abstraction-filtration-comparison test of the Second and . which had elaborated on Computer Associates v.C. . {FN74: 49 F. we do not inquire further whether that method of operation could have been designed differently. .3d at 1372. the Court deadlocked 4-4 (with one justice not voting. Although this core of expression is eligible for copyright protection. Bando considered in their decision in Mitel v. Not every case requires an extensive abstraction-filtrationcomparison analysis. it is subject to the rigors of filtration analysis which excludes from protection expression that is in the public domain.3d 1366. and the nature of the [works] at issue. we emphasize that the approach is valuable only insofar as it aids the court in distinguishing protectable elements of a work from those that are unprotectable. Altai in its decision in Gates v. and continue to adhere to our abstraction-filtrationcomparison approach. the abstraction-filtration-comparison approach tends to produce a core of copyrightable protectable expression that. if literally copied. may vary depending upon the claims involved. Rather.

if at all. with today¶s large. and at those times the abstraction-filtration-comparison test must be used to determine whether too much was taken and a copying of the non-literal elements has resulted in a copyright infringement. is an unprotectable process and not protectable expression. Qualified Technical Experts Should Play an Important Role in the Abstraction Process. Any protection for elements dictated by efficiency or external factors or processes must come from patents or trade secrets. No. is unnecessary. The First Circuit¶s ³method of operation´ test. this filtering makes little difference. such as using an existing file format or interoperating with another program. including: y The element¶s expression was dictated by reasons of efficiency.2d 693. and not from copyright. Altai {FN77: 982 F. IV.Tenth Circuits. y The element¶s expression was dictated by external factors. at the particular level of abstraction. Harbor Software v. Applied Systems. we suggested how the AFC test should be performed. because it is dictated by external factors. Five computer scientists (including the author of this text and the court-appointed expert in Computer Associates v. 1992)} )discussed the complexity inherent in abstraction-filtration-comparison (AFC) test in a friend of the court brief {FN78: Amicus Brief of Computer Scientists. 23 USPQ2d 1241 (2d Cir. The abstraction can result in the comparing of hundreds or thousands of different aspects of a computer program if one is not careful. most copyright infringement consists of the verbatim copying or unauthorized distribution of a computer program. Elements are filtered out of consideration on the basis of broad criteria. 977197 (2d Cir. Applying The AFC Test While it seems simple to describe the abstraction-filtration-comparison analysis. or takes features from another program. For most alleged copyright infringements.A. Chapter 2: Copyright of Computer Programs IV. It is important to recognize that. 1998)} to the Second Circuit in a case that settled before that court made its decision. But sometimes a program is based on another program. and no question over whether any similarities are protected expression or unprotected function need be considered. first discussing what can be done to refine the magnitude of the task: 1. y The element. complex programs. such as when it is the best way of performing a particular function. . which is not clear in its application. In one portion. y The element¶s expression is a conventional way of writing something in the particular programming language or machine running the program. the devil is in the details. A Suggested Approach The application of the abstraction-filtration-comparison test is complicated because the test is not described in language that is familiar to the computer scientists who would be the technical experts helping the court. y The element is taken from the public domain or is an unprotectable fact.

Given the difficulty and complexity of creating a technically accurate set of abstractions. one case that eventually involved claims of extensive code theft (both literal and non-literal) as well as a variety of other serious charges began when a software developer noticed that a competing program built by former employees of his company displayed the same misbehavior that he knew to be present in his own code. But we believe some form of difficulty is unavoidable. resulting in an impractical ± and wasteful ± amount of work for both the plaintiff and the court. the plaintiff¶s exhibits are likely to be incomplete and require augmentation after it has had the opportunity to examine the defendant¶s code. of the exact contours of the protectable expression in the plaintiff¶s program. suggesting the possibility of copying. Thus. The court would likely be overwhelmed with paper and with the filtration effort of determining protectability for every element of the plaintiff¶s program. If. where . When possible. the plaintiff abstracts only those parts of its code that it suspects at the outset were copied by the defendant. When this initial evidence of copying is sufficient to support a complaint. the abstraction process should be carried out on a well-focused body of software. the plaintiff will need access to the defendant¶s code in order to determine the full extent ± if any ± of the problem. this Court should clarify that this is properly a task for a qualified expert in the field. In any event. 3. it may be practical to abstract the entire thing. Refining the Task Will Reduce Technical Complexity. and most judges (myself included). In many instances. are less than completely comfortable with the concepts and terminology of computer programs and need extensive education in order to make intelligent decisions. thereby distorting the inquiry. The Plaintiff Must have Access to the Defendant¶s Code in Order to Focus the Inquiry. If plaintiff instead must perform the abstraction and filtration before seeing the defendant¶s code.S. Given the large size of most commercial programs. the plaintiff may ³mine´ the defendant¶s code for potential foci of alleged copying. in which case the possibility of ³mining´ reappears. even if only a small part of that program is at issue in the claim of infringement. In the interests of efficiency and manageability. however. If the program is small. As U. Court of Appeals Judge John Walker.´ 2. the initial evidence of copying is a relatively insignificant incident that turns out to be only the tip of the iceberg. this is advantageous because the abstraction and filtration processes can be carried out on the plaintiff¶s code prior to discovery of the defendant¶s code. yielding a clear picture. As a piece of misbehavior. in the interests of economy. the behavior could not be motivated by the task. the obvious subset of code for analysis is that portion of the software that the plaintiff alleges the defendant copied. author of the Altai decision. early in the process. ³Most juries. has noted. the effort involved in abstracting and filtering the entire program is enormous and would yield a daunting number of exhibits. we believe that manufactured claims of copying become evident at the filtration stage. it may feel that the only way to protect the claim is to abstract the entire program. For example. We recognize the difficulty this access to code presents: if the plaintiff is permitted to examine the defendant¶s code before abstracting his own code.

If the exhibits contain no protectable material. This must include access to the plaintiff¶s entire program. in order to test for errors of omission. the court should require the plaintiff to augment its exhibits with specific references to the defendant¶s code. proceeding with the filtration test. The court will now have before it a set of exhibits describing a carefully selected portion of the plaintiff¶s code. having the defendant¶s expert prepare abstraction exhibits of the defendant¶s code. {FN79: Amicus Brief. involving as it does many judgment calls. even though the abstractions may deal with only a small part of the program. the plaintiff may perform more careful analysis before filing infringement cases. particularly against smaller companies. demonstrates once again a level of uncertainty as to the technical limitations of the AFC process. indicating the exact lines of the defendant¶s code that it alleges are copied from the plaintiff¶s software. The defendant is spared unnecessary expense. The fact that the district court in the present case apparently permitted the plaintiff to prepare the abstraction exhibits for both parties. This set of exhibits is the plaintiff¶s initial contribution to the AFC process. independent of any court consideration of the defendant¶s code. if any. there is no need for the court to examine or display the defendant¶s code at this point. An additional advantage arises from the reduced workload presented to the court: by focusing the filtration purely on the plaintiff¶s exhibits. which the plaintiff claims is both protectedand infringed. and we suggest it do so. The inherent flexibility of the abstraction process. (Even where the plaintiff alleges non-literal copying. of which there are many in the software world. the defendant must have access to the plaintiff¶s code in order to make an independent judgment as to whether the abstractions are accurate. this may be a significant virtue in a world where litigation may be used as an economic weapon. if the plaintiff understands that infringement claims will be required to pass the filtration test relatively early in the litigation process.) Plaintiff¶s specific allegations will further focus the court¶s task and enable the defendant better to perform the next step. the plaintiff should be able to cite specific lines of the defendant¶s program that embody the non-literal element(s) allegedly copied. After the filtration is complete.the court¶s expert can raise such observations and the court can deal appropriately with them at that time. At this point. requires that the court permit each side to abstract its own code and to prepare its own abstraction exhibits embodying that analysis. the plaintiff¶s technical expert can then prepare a well-focused set of exhibits describing the relevant portions of the plaintiff¶s code at multiple levels of abstraction. As a matter of practicality. It is now in a position to evaluate the first of these claims independent of the second. subject to defense objections. yet the plaintiff has had a full opportunity to find copying in the defendant¶s program. Finally. the case is over. . at 8-9 (citations omitted)} We then suggested how the AFC evaluation can be performed: Having performed a thorough examination of the defendant¶s code to evaluate the extent of copying. This approach has several significant advantages.

even if relatively modest. The trier of fact will now have before it a set of exhibits characterizing specific elements from plaintiff¶s program that are subject to copyright protection. Indeed. be disagreement over the abstraction exhibits. given the extensive time.g. it is instead a framework within which the parties may carry out a discussion. The data structures indicate the way in which individual elements of information are stored in the program. the court is now ready to begin the comparison process. along with corresponding elements from the defendant¶s program that the plaintiff alleges are infringing. this process is a worthwhile way of minimizing the undesirable economic costs of unnecessary litigation. Routine Abstractions Include Control Structure.The AFC process is not a magic wand that will eliminate disagreement. and complete description of the code in question. We further suggest that this Court encourage trial courts to have the plaintiff meet this minimal burden through the independent evaluation of the plaintiff¶s claim by a court-appointed expert or by support from disinterested third parties. Data Structure. data structures are used to store the sorts of information found in a check register (e. how the information for a check flows from the register where it is entered. often indicated with a well-established graphical language of boxes and arrows called a flowchart . a complete set of control abstractions may have many levels of detail. concerning the technical substance of the initial evidence for infringement.. The information architecture of a . that is. Control is frequently the most complex aspect of a program. For this reason. amount). check number. to interrupt the business of a competitor).. The data flow is a description of how information flows through a program. We believe that our approach is consistent with federal procedure for the evaluation of cases before trial. that is. Even so. we suggested some guidelines for the production of the abstractions: 1. effort. Information Architecture and Textual Organization of the Code. in the earlier checkbook hypothetical. . With these agreed-upon exhibits in place. and expense of fighting a lawsuit. . at 9-10 (citations omitted)} Finally. date. to the check itself. we anticipate that there will. in fact. the plaintiff should be required to establish at this early stage of litigation some minimal technical evidence of infringement in order to proceed with its claim. would set some threshold level of technical substance to deter the filing of cases for little more than economic reasons (i. these arguments may hold the key to the remainder of the case. this Court should advise the district courts to consider seriously the appointment of a neutral expert of its own in order to assist in arriving at a consensus as to what constitutes an accurate. for example. We suggest some form of early technical evaluation of the plaintiff¶s initial copyright infringement claims. We believe that. Such a barrier. {FN80: Amicus Brief. payee. the court should require the parties to offer technical grounds both in defense of their choices and when challenging the choices made by the opposing party. The program¶s control structure is the sequence of operations that it carries out.e. Data Flow. if the parties cannot reach agreement on the challenged exhibits. specific. As experts in the field. particularly in the form of motions for summary judgment.

at 12-13} IV. . All of these abstractions concern the behavior of the program. 17 Cardozo Arts & Ent L. For example.{FN81: Amicus Brief. often in the form of the organization of databases. If the parties cannot agree on a set of conventions. Because programs can be viewed in terms of both their behavior and their text (treating the source code as a body of text). to files containing multiple routines. Thus. Parties Should Adopt Explicit and Consistent Graphical Conventions for All Exhibits. Abstractions Should be Specific and Precise. I might move away from referring to source code as the . and (b) that each component of an abstraction exhibit refer clearly either to more detailed exhibits or to literal code. to ask whether it is the written expression of an idea embodied at some higher level of abstraction within the computer program. there should be no ambiguity about what behavior is being described and what body of literal code is being abstracted. . from individual routines. ranging for example. This enables evaluation of the accuracy and completeness of the abstractions. we can also describe the organization of the textual code itself at several levels of abstraction. some of the graphical organization of the abstraction exhibits is informative. to directories containing multiple files. while other elements are accidental (e. I think we might be better off to recognize that.program indicates the overall organization of the data used by the program.´ a somewhat different vocabulary might assist us in properly balancing the ultimate values we seek to advance. Newman.J. although we need to separate protectable ³expression´ from unprotectable ³ideas. Abstractions at Any Given Level Should Be Complete. A Judge¶s Comments on the Suggested Approach In a subsequent law review article. New Lyrics For An Old Melody: The Idea/Expression Dichotomy In The Computer Age. The abstraction effort can be focused on the code relevant to the case at hand by cutting off the abstraction process below a certain level for the irrelevant parts of the code. .g. . I do not consider it helpful. I would rather begin the process of labeling the protectable and unprotectable elements of computer programs with terms peculiar to the realm of software. 691 (1999)} one of the judges on the panel that received the amicus brief commented on it favorably and then suggested that we should move away from the general language of copyright law and describe things in terms more appropriate to the subject being considered: In the area of computer programs. 4. {FN82: Jon O. The adoption of consistent graphical conventions will permit the trier of fact to make sensible comparisons of the exhibits. To a trained eye.B. Courts should thus require: (a) that labels on abstraction exhibits clearly specify the program behavior at issue. 2. in considering the protection accorded source code. 3. As one indicator of such precision. the court¶s expert should assist the parties and the court in reaching a uniform set of standards for the exhibits. the left-to-right order of certain of the boxes). . .. Such completeness will ensure that the exhibits present an entire and accurate picture of the program at any chosen level of detail.

or. 1992)} both of the alleged infringers had access to the original source code through a prior business relationship. there are no characters in software. as Altai indicates. Jaslow {FN85: 797 F. Reverse Engineering Of Software In Whelan v. what might be called ³incidents. but. For me. I suppose. it is the cogency and persuasive force of the reasons they give for their respective positions.´ a phrasing that all too readily enlists the doctrines and case law developed in cases involving written texts. as with all opinions.´ which again evokes the written text cases. or variations of such triviality as to be disregarded. But the holdings in those cases also provide guidance on what . There are.´ but we ought not blithely equate the sequence of incidents that combine to form the plot of a play with the sequence of steps that the computer program instructs the computer to perform on data. These reasons had better relate to the specifics of the computer software field. even with its overly structured mode of analysis. I could consider which source codes or which portions of source codes were protectable. at least not literary characters. 1986)} and Computer Associates v. Their opinions are relevant. . but instead call them something like ³program purposes´ or ³program objectives. and instead call these arcane writings what they are called in cyberspace ± namely. on the other hand. I might not call the unprotectable aspects of a computer program ³ideas. Then. is a function capable of execution with very few variations in source code. you don¶t see many cases involving copyrights in musical works talking about the ³expression´ of some musical ³idea. {FN86: 982 F.2d 1222. source code. characters and the sequence of incidents were especially important. Altai. By using terms appropriate to the subject matter. For example. I might begin to realize that what is relevant in applying the idea-expression dichotomy to computer programs is not necessarily the same as what is relevant in other areas. it will be very important for me to know whether the essential function being performed by the copyrighted program is a function that can be accomplished with a wide variety of source codes. which will strengthen the case for protection. . what renders them persuasive is not the vehemence of their assertion and not even the credentials of those asserting them. this mode of analysis is essentially what in other contexts we call the merger doctrine ± the expression is said to have merged with the idea because the idea can be expressed in such limited ways that protection of the plaintiff¶s expression unduly risks protecting the idea itself. and used that as the basis of a competing product. 23 USPQ2d 1241 (2d Cir. at 702} Chapter 2: Copyright of Computer Programs V.³expression´ of an ³idea. Well.´ After all. Also.2d 693. at 699-700} He then indicates what he needs from expert witnesses in a trial or in the briefs on appeal: These professionals would be well advised not to tell me simply that the source code is or is not protectable expression. in which event protection will be unlikely. {FN83: Newman. Judge Hand observed that with plays.´ Why should we force upon copyright cases involving computer programs the same vocabulary we use for cases involving written texts? . {FN84: Newman. 230 USPQ 481 (3d Cir.

computer programs are different from all other copyrighted works. in a decision by Circuit Judge Rader. . processes. They also involved the interface between a video game console and the game cartridges that run on it. . 24 USPQ2d 1015 (Fed. the Ninth Circuit. comment. comment . since video game console manufacturers attempt to lock out games from suppliers not paying them licensee fees. Nintendo. The Federal Circuit. the Act exempts from copyright protection reproductions for ³criticism. . The legislative history of section 107 suggests that courts should adapt the fair use exception to accommodate new technological innovations. news reporting. This permission appears in the fair use exception to copyright exclusivity. they have studied how the original product operates in order to develop their product. The key decisions on the legality of reverse engineering have dealt with disassembly: taking the publicly-available object code and attempting to reconstruct the original source code to learn how the program works. or methods of operation in a copyrighted work. and how that would be frustrated if others could not somehow examine the protected expression to aid them in producing new works.2d 832. That court. the creators of a competing product have not had access to the source code for the original product. In most instances. In this regard. a creator must look to patent laws. scholarship or research´ is not infringement. This is not surprising. Under the Act. Cir. V. . including such use by reproduction in copies . process. ideas. The Federal Circuit looked to the purpose of copyright protection. 1992)} the Court of Appeals for the Federal Circuit heard the appeal because a portion of Atari¶s suit alleged patent infringement.can be copied from an existing computer program without infringing its copyright. {FN87: 975 F. But when hearing a case with aspects outside its normal subject matter jurisdiction. Instead. This is particularly true when the competing product must duplicate the file formats or other external features of the original product. or research. the Federal Circuit tries to follow the law of the appeals court in which the district court is located. processes. Section 107 of the Copyright Act states that ³fair use of a copyrighted work. found: The author does not acquire exclusive rights to a literary work in its entirety. . and the Federal Circuit hears all appeals of cases involving patent infringement. and methods of operation in a work: . and methods of operation. The Federal Circuit¶s Atari Decision In Atari Games v. looking at the program or even running it does not reveal the expression protected by copyright. An author cannot acquire patent-like protection by putting an idea. something very important when you are trying to write a program similar to one already in the market.A. or method of operation. and information about those file formats or features is not provided by the developer of the original product. . society is free to exploit facts. process. for purposes such as criticism. The Copyright Act permits an individual in rightful possession of a copy of a work to undertake necessary efforts to understand the work¶s ideas. Thus.´ These activities permit public understanding and dissemination of the ideas. or method of operation in an unintelligible format and asserting copyright infringement against those who try to understand that idea. had not yet ruled on copyright infringement and reverse engineering. processes. teaching . To protect processes or methods of operation. because even though a program may be published and widely distributed.

and the district court found. Where the infringement is small in relation to the new work created. Section 107 also requires examination of the nature of the work when determining if a reproduction is a fair use. That analysis is far too simple and ignores a number of important considerations. reverse engineering object code to discern the unprotectable ideas in a computer program is a fair use.B. We must consider other aspects of ³the purpose and character of the use´ as well. the use at issue was an intermediate one only and thus any commercial ³exploitation´ was indirect or derivative. As we have noted. . {FN89: 977 F.´ Sega argues that because Accolade copied its object code in order to produce a competing product. V. or building upon. and (4) the effect of the use upon the potential market for or value of the copyrighted work.B. his advances. Further ³ the commercial nature of a use is a matter of degree. (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole. the Ninth Circuit ruled in an almost-identical case. When the nature of a work requires intermediate copying to understand the ideas and processes in a copyrighted work. not an absolute. However. {FN88: 975 F. the Ninth Circuit found that the intermediate copying of the object code of a copyrighted computer program as necessary to disassemble the program to view its expression was a fair use under Section 107 of the copyright laws. the Harper & Row presumption applies and precludes a finding of fair use.The copyright holder has a property interest in preventing others from reaping the fruits of his labor. 1992)} Like the Federal Circuit. The First Fair Use Factor Section 107 lists the four factors that must be considered in determining whether a particular use is a fair one: ³(1) the purpose and character of the use. 24 USPQ2d at 1022 (citations omitted)} V. not in preventing the authors and thinkers of the future from making use of.´ The Ninth Circuit started by considering the first factor: With respect to the first statutory factor. . that nature supports a fair use for intermediate copying. Thus. (2) the nature of the copyrighted work. The process of creation is often an incremental one. 24 USPQ2d 1561 (9th Cir.2d at 842-843. the presumption of unfairness that arises in such cases can be rebutted by the characteristics of a particular commercial use.1. the fair user is profiting largely from his own creative efforts rather than free-riding on another¶s work. The Ninth Circuit¶s Sega Decision A little more than a month after the Federal Circuit issued its decision. A prohibition on all copying whatsoever would stifle the free flow of ideas without serving any legitimate interest of the copyright holder. we observe initially that the fact that copying is for a commercial purpose weighs against a finding of fair use. Accolade. .2d 1510. including whether such use is of a commercial nature or is for nonprofit educational purposes. The declarations of Accolade¶s employees indicate. and advances building on past developments are far more common than radical new concepts. that Accolade copied Sega¶s software solely in order to discover the functional requirements for compatibility with the Genesis console ± aspects of . Sega v.

Moreover. rather. nor did it simply copy Sega¶s code. as we discuss below. but may arise because the challenged use serves a public interest. its direct purpose in copying Sega¶s code. no other method of studying those requirements was available to Accolade.2d at 1522-1523. To the extent that a work is functional or factual. The Second Fair Use Factor Although the court next considered the fourth factor. Works of fiction receive greater protection than works that have strong factual elements. the presumption of unfairness has been overcome and the first statutory factor weighs in favor of Accolade. such as historical or biographical works. or works that have strong .B. as may those expressive elements of the work that ³must necessarily be used as incident to´ expression of the underlying ideas. and that the commercial aspect of its use can best be described as of minimal significance. based on the dissemination of other creative works and the unprotected ideas contained in those works. because it felt that it was closely related to the first. does not alter our judgment in this regard. it may be copied. with respect to the interface procedures for the Genesis console. The fact that Genesis-compatible video games are not scholarly works. was simply to study the functional requirements for Genesis compatibility so that it could modify existing games and make them usable with the Genesis console. It is precisely this growth in creative expression. On these facts. Taken together. we¶ll consider the factors here in order: The second statutory factor. reflects the fact that not all copyrighted works are entitled to the same level of protection. functional concepts. and thus its direct use of the copyrighted material. We further note that we are free to consider the public benefit resulting from a particular use notwithstanding the fact that the alleged infringer may gain commercially. Accolade¶s identification of the functional requirements for Genesis compatibility has led to an increase in the number of independently designed video game programs offered for use with the Genesis console. we conclude that Accolade copied Sega¶s code for a legitimate. but works offered for sale on the market. 24 USPQ2d at 1569-1570 (citations omitted)} V. With respect to the video game programs contained in Accolade¶s game cartridges. Accolade did not seek to avoid paying a customarily charged fee for use of those procedures. {FN90: 977 F. Public benefit need not be direct or tangible. Moreover. essentially non-exploitative purpose. The protection established by the Copyright Act for original works of authorship does not extend to the ideas underlying a work or to the functional or factual aspects of the work. there is no evidence in the record that Accolade sought to avoid performing its own creative work. these facts indicate that although Accolade¶s ultimate purpose was the release of Genesis-compatible games for sale. Indeed.Sega¶s programs that are not protected by copyright. most of the games that Accolade released for use with the Genesis console were originally developed for other hardware systems. We conclude that given the purpose and character of Accolade¶s use of Sega¶s video game programs. the nature of the copyrighted work.2. it wrote its own procedures based on what it had learned through disassembly. or facts. In the case before us. that the Copyright Act was intended to promote .

In our view. many of the decisions in this area reflect the courts¶ attempt to fit the proverbial square peg in a round hole. In some circumstances. computer programs are. structural. such as the test recently adopted by the Second Circuit in Altai. and visual display elements that are dictated by the function to be performed. many aspects of the program are not protected by copyright. Sega is correct. their later use by another will not amount to infringement. ³a computer program¶s ultimate function or purpose is the composite result of interacting subroutines. Works that are merely compilations of fact are copyrightable. are the only and essential means of accomplishing a given task.´ For example. or by external factors such as compatibility requirements and industry demands. contains at least two such subroutines ± the subroutine that allows the user to interact with the video game and the subroutine that allows the game cartridge to interact with the console. . the Second Circuit¶s approach is an appropriate one. As such. the programmer¶s choice of program structure and design may be highly creative and idiosyncratic. ³ When specific instructions. however. may be said to have its own µidea.¶ Whelan¶s general formulation .´ Because of the hybrid nature of computer programs.´ Computer programs pose unique problems for the application of the ³idea/expression distinction´ that determines the extent of copyright protection. the computer program at issue in the case before us. they contain many logical. there is no settled standard for identifying what is protected expression and what is unprotected idea in a case involving the alleged infringement of a copyright in computer software. the Third Circuit attempted to resolve the dilemma by suggesting that the idea or function of a computer program is the idea of the program as a whole. such as accounting textbooks. is descriptively inadequate. even though previously copyrighted. utilitarian articles ± articles that accomplish tasks. Under a test that breaks down a computer program into its component subroutines and sub-subroutines and then identifies the idea or core functional element of each. We are in wholehearted agreement with the Second Circuit¶s recent observation that ³thus far. and ³everything that is not necessary to that purpose or function is part of the expression of that idea. Sega argues that even if many elements of its video game programs are properly characterized as functional and therefore not protected by copyright. however.´ In 1986. The record makes clear that disassembly is wholesale copying. in essence. However. . but the copyright in such a work is ³thin. Accolade copied protected expression. . Because computer programs are also unique among copyrighted works in the form in which they are distributed for public use. in light of the essentially utilitarian nature of computer programs. a video game program. To the extent that there are many possible ways of accomplishing a given task or fulfilling a particular market demand. by considerations of efficiency.´ The Whelan rule. even the exact set of commands used by the programmer is deemed functional rather than creative for purposes of copyright.functional elements. and thus. Since each subroutine is itself a program. In reality. Sega¶s observation does not bring us much closer to a resolution of the dispute. has been widely ± and soundly ± criticized as simplistic and overbroad.

the fourth statutory factor. {FN91: 977 F. are typically distributed for public use in object code form.e. too. interfering with marketability.{FN92: 977 F. Accordingly.B. humans often cannot gain access to the unprotected ideas and functional concepts contained in object code without disassembling that code ± i. The fact that an entire work was copied does not. embedded in a silicon chip or on a floppy disk. to give two examples. By facilitating the entry of a new competitor. accommodates the distinction between the copying of works in order to make independent creative expression possible and the simple exploitation of another¶s creative efforts.. of course. making copies. if the challenged use should become widespread. that while no consumer except the most avid devotee of President Ford¶s regime might be expected to buy more than one version of the President¶s memoirs. We note. The Third and Fourth Fair Use Factors The court had this to say about the third factor: Accolade disassembled entire programs written by Sega. The Harper & Row Court found a use that effectively usurped the market for the copyrighted work by supplanting that work to be dispositive. effect on the potential market for the copyrighted work. the same consequences do not and could not attach to a use which simply enables the copier to enter the market for works of the same type as the copied work. Accolade did not attempt to ³scoop´ Sega¶s release of any particular game or games. the fourth factor: As applied. or usurping the market. but sought only to become a legitimate competitor in the field of Genesis-compatible video games.3. the factor is of very little weight. Unlike the defendant in Harper & Row.The unprotected aspects of most functional works are readily accessible to the human eye. there is nothing in the record that suggests that Accolade copied any of those elements. all other considerations might be irrelevant. preclude a finding of fair use. 24 USPQ2d at 1571-1572 (citations omitted)} V. In fact.2d at 1526-1527. If the copying resulted in the latter effect. can be easily copied without also copying any of the protected. We must. As we have noted. 24 USPQ2d at 1573 (citations omitted)} And finally. inquire whether. however. There is no basis for assuming .2d at 1524-1525. For that reason. video game users typically purchase more than one game. which printed excerpts from President Ford¶s memoirs verbatim with the stated purpose of ³scooping´ a Timemagazine review of the book. it is the characteristics of the game program as experienced by the user that determine the program¶s commercial success. however. Accolade¶s disassembly of Sega¶s software undoubtedly ³affected´ the market for Genesis-compatible games in an indirect fashion. where the ultimate (as opposed to direct) use is as limited as it was here. it would adversely affect the potential market for the copyrighted work. expressive aspects of the original works. Within that market. Computer programs. The systems described in accounting textbooks or the basic structural concepts embodied in architectural plans. however. However. the first lawful one that is not a Sega licensee. by diminishing potential sales. the third factor weighs against Accolade. bears a close relationship to the ³purpose and character´ inquiry in that it.

and fourth statutory fair use factors weigh in favor of Accolade.that Accolade¶s ³Ishido´ has significantly affected the market for Sega¶s ³Altered Beast´. favor. it must be disassembled. notwithstanding the minor economic loss Sega may suffer. not Sega¶s. The interface procedures for the Genesis console are distributed for public use only in object code form.B. Because object code cannot be read by humans. second. we afford them a lower degree of protection than more traditional literary works. Accolade clearly has by far the better case on the fair use issue. and even then only slightly. the nature of the computer programs involved.{FN94: 977 F.4. the creator of the work must satisfy the more stringent standards imposed by the patent laws. 24 USPQ2d at 1570-1571 (citations omitted)} V. Summarizing The Four Factors The Ninth Circuit summarized its analysis of the four factors and found that they weighed in Accolade¶s favor: In summary. . nor does it seem unlikely that a consumer particularly interested in sports might purchase both Accolade¶s ³Mike Ditka Power Football´ and Sega¶s ³Joe Montana Football´. the owner of the copyright gains a de facto monopoly over the functional aspects of his work: aspects that were expressly denied copyright protection by Congress. If disassembly of copyrighted object code is per se an unfair use. while only the third weighs in favor of Sega. particularly if the games are. Those facts dictate our analysis of the second statutory fair use factor. We conclude that where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access. we conclude that the fourth statutory factor weighs in Accolade¶s. as Accolade contends. Because Sega¶s video game programs contain unprotected aspects that cannot be examined without copying. In light of all the considerations discussed above. . disassembly is a fair use . careful analysis of the purpose and characteristics of Accolade¶s use of Sega¶s video game programs. and are not visible to the user during operation of the video game program. we conclude that the second statutory factor also weighs in favor of Accolade. Sega does not hold a patent on the Genesis console. an attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression and cannot constitute a strong equitable basis for resisting the invocation of the fair use doctrine.2d at 1523-1524. Disassembly of object code necessarily entails copying. either by hand or by machine. not substantially similar. In any event. and the nature of the market for video game cartridges yields the conclusion that the first. Thus. 24 USPQ2d at 1573} The court concluded: The record clearly establishes that disassembly of the object code in Sega¶s video game cartridges was necessary in order to understand the functional requirements for Genesis compatibility.2d at 1527. Accordingly. In order to enjoy a lawful monopoly over the idea or functional principle underlying a work. . since a consumer might easily purchase both. {FN93: 977 F.

These are ³aspects that were expressly denied copyright protection by Congress. not the necessity of the number of times that method was applied. an engineer would pursue it. and it may do so on remand. insulate Accolade from a claim of copyright infringement with respect to its finished products. our application of the copyright law would not turn on such a distinction.e.) This is precisely the kind of ³wasted effort that the proscription against the copyright of ideas and facts .C. . it must satisfy the more stringent standards of the patent laws. In the Digital . Revising Sega in Sony v. In any event. as a matter of law. i. the interpretation advanced by Sony would be a poor criterion for fair use.3d 596. Connectix The Ninth Circuit had a chance to revisit reverse engineering in Sony v. 53 USPQ2d 1705 (9th Cir. the rule urged by Sony would require that a software engineer. The ³necessity´ we addressed in Sega was the necessity of the method. 2000)} where again the issue was whether intermediate copying was infringement or fair use. disassembly. [is] designed to prevent. More important. But if Connectix engineers had left their computers turned on throughout the period during which they were observing the Sony BIOS in an emulated environment. Sony contends that Connectix¶s reverse engineering of the Sony BIOS should be considered unnecessary on the rationale that Connectix¶s decision to observe the Sony BIOS in an emulated environment required Connectix to make more intermediate copies of the Sony BIOS than if Connectix had performed a complete disassembly of the program. . of course. often follow the least efficient solution. {FN96: 203 F. 53 USPQ2d at 1711-1712 (citations omitted)} It is clear that. Even if we were inclined to supervise the engineering solutions of software companies in minute detail.of the copyrighted work. they would have made far fewer intermediate copies of the Sony BIOS (perhaps as few as one per computer). even if many intermediate copies are made.2d at 1526-1528. Such a rule could be easily manipulated. This construction stretches Sega too far. If Sony wishes to obtain a lawful monopoly on the functional concepts in its software. Under this logic. faced with two engineering solutions that each require intermediate copying of protected and unprotected material..´ We decline to erect such a barrier in this case. 24 USPQ2d at 1572-1574 (citations omitted)} V. {FN97: 203 F. Congress appears to agree. legitimate reverse engineering to learn how to interoperate with another computer program is a fair use. {FN95: 977 F. Our conclusion does not. at least some of the intermediate copies were not necessary within the meaning of Sega. at least in the Ninth Circuit. Sega has reserved the right to raise such a claim.´ Such an approach would erect an artificial hurdle in the way of the public¶s access to the ideas contained within copyrighted software programs.3d at 605. Connectix. (In cases in which the solution that required the fewest number of intermediate copies was also the most efficient. presumably. Most of the intermediate copies of the Sony BIOS were made by Connectix engineers when they booted up their computers and the Sony BIOS was copied into RAM. and we are not. without our urging.

under the Copyright Act of 1976. represent an original work of authorship´ are derivative works. the Senate Committee on the Judiciary specifically cited Sega v. {FN98: 17 U. annotations. magnetic tape. 105-190 at 12} Chapter 2: Copyright of Computer Programs VI. . Just as a copyright came into being when the original lines of source code were written by the programmer. as part of the anticircumvention provisions added as Section 1201 of the Copyright Act. §101} defines a derivative work as ³a work based upon one or more preexisting works´ and states that ³editorial revisions. §1201(f)} In its Committee Report explaining the Digital Millennium Copyright Act.Millennium Copyright Act. those additions or corrections are a ³derivative work´ based on the original computer program. a computer program generally is protected not by a single copyright but by a series of copyrights starting when it is first written and continuing through the last modification.C. or corrections are made to the computer program. in original works of authorship fixed in any tangible medium of expression. ³Copyright protection subsists . to the extent any such acts of identification and analysis do not constitute infringement under this title. Section 101 {FN101: 17 U. No.´ {FN100: 17 U.C. As Section 102(a) states. as a whole. Accolade and indicated: ³The purpose of this section is to foster competition and innovation in the computer and software industry. If the computer program is not a work made for hire. or other modifications which. . then all the copyrights will expire at the same time ± 70 years after the death of the last surviving author. hard or floppy disks. When additional source statements are added to the computer program. §102(a)} such as keypunch cards. Because of this. there is little practical significance in viewing the source code copyrights as a series of separate copyrights rather than a single copyright.S. and that have not previously been readily available to the person engaging in the circumvention. Source Code and Derivative Works Copyright for a computer program.´ {FN99: Sen. The copyright on the original program will expire first. Other Software Copyright Issues There are a number of aspects of software copyright that have not been considered by the courts but may play a role in future litigation. allowing it (but not its .S. the copyrights will expire in the order in which they came into being.A. comes into being as the source code for the computer program is being written by the programmer. or even the RAM of the computer. However. so another copyright comes into being for each addition or modification to the source code that shows sufficient originality.S. Rep.C. VI. elaborations. For works made for hire. The program does not need to be complete or even functional for copyright protection to come into being. Congress specifically recognized reverse engineering needed for interoperability as an exception to the anticircumvention rules: A person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs.

It not only produces complex series of object code instructions for each source line but may actually rearrange the statements of the program to produce a more efficient program. if there have been only minor changes since registration. The compiler for the higher-level language performs a much more complicated translation than was the case for an assembler. Unless ownership and distribution rules are resolved at the time the work is being developed. it is the object code ± the actual instructions that control the computer when the program is being executed ± that copyright generally protects. While the copyright owner can sue for infringement of the copyright only on the material that has been registered. that is less the case. The source code was written in assembly language. and the inclusion of comments to annotate the program ± which the assembly process removed or replaced as it produced the object code. makes it more difficult to reverse engineer (for example. The copyright on each modification will expire at some later time. the use of symbolic labels for storage or program locations. It may also be important to look at a computer program as a series of derivative works is when the original author has not written the modifications.B. the source code is never revealed to the public. it makes no difference because the author under the law for such a work made for hire is the employer. with each line of the source code corresponding to a single machine instruction (or. the copied version will be substantially similar to the registered one ± sufficient for a finding of copyright infringement. In most instances. This. However. a small predefined series of machine instructions). it is unlikely that the fact that part of an outdated. where it can be copied freely. One situation in which this series of copyrights may be significant when the copyright in the computer program is registered. along with their size. Every computer program copyright case treats the copyright in the source code and the object code as equivalent. and thus remains protected as a trade secret even though millions and millions of copies of the program are distributed as object code. but not when there has been only a minor change. That is likely because they were decided at a time when there was essentially a one-to-one correspondence between the source code and the object code. until all the copyrights have expired and the complete computer program enters the public domain. to learn how the program works either by testing or by trying to convert the object code back to source code) a . With the advent of higher-level programming languages. if it remains unpublished). 95-yearold computer program has entered the public domain while a part remains copyrighted will be of any significance. It is common to register the copyright whenever a major release of the computer program occurs. Source Code and Object Code Although copyright comes into being with the writing of the source code. if a macro facility existed as part of the assembler. The source code contained information that made it easier for a programmer to write or understand the program ± mnemonics like ³ADD´ instead of a bit pattern of ³01000011´ for the addition instruction. But if there are different authors. because the copyright for the original source code will not expire for 95 years after it is first published (and 120 years after it is first written. There is no longer the one-to-one correspondence between the source code and the object code. For a program written by company employees. then the copyright owner in any work has to authorize the making of any further derivative works and must approve of any distribution of the work that contains his material.later modifications) to enter the public domain. there could be problems at a later time. VI.

Even though source code and object code are distinct. §101} Video games. which in turn makes it more likely that any copying will be a literal copying of the entire program. The Copyright Office has recognized that computer programs may be both literary works and audiovisual works.modern computer program. it is still useful to maintain the concept that the source code and the object code are just different forms of the same copyrighted work. are particularly suitable to regard as audiovisual works. Copyright protection for computer screen displays. including videogames. {FN104: Copyright Office Circular 61 at 3} Chapter 2: Copyright of Computer Programs . such as ³entire work´ or ³computer program. there is little reason to treat the two aspects of some programs separately. These would be considered ³audiovisual works´ under the Copyright Act. in which the works are embodied. regardless of whether identifying material for the screen is deposited. Source Code and Displays The source code copyright that protects the object code may also cover any screen displays produced by the computer program. Courts have differed in their opinions regarding whether screen displays may be registered separately. Where an applicant is unable or unwilling to deposit source code. it generally requires a deposit of at least a portion of the source code (generally the first and last 25 pages ± see their Circular 61) and questionsany registration that includes only object code. has been an issue in the courts for some time. defined in Section 101 as works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors. consisting of a series of displays controlled by the computer program. But because Section 106 grants no exclusive right to copyright owners of audiovisual works that it does not also grant to copyright owners of literary works like computer programs and audiovisual works. The Copyright Office regards the source code and object code as equivalent for purposes of registration. In fact. viewers. An application may give a general description in the ³nature of authorship´ space. The Copyright Office has consistently believed that a single registration is sufficient to protect the copyright in a computer program and related screen displays. without a separate registration for the screen displays or a specific reference to them on the application for the computer program.´ at 2} VI.S.´ This description will cover any copyrightable authorship contained in the computer program and screen displays. or electronic equipment. including videogames. and it requires only a single registration for both aspects.C. he/she must state in writing that the work as deposited in object code contains copyrightable authorship. together with accompanying sounds. {FN102: Copyright Office Circular 61: ³Copyright Registration for Computer Programs. if any. such as films or tapes. The Office will send a letter stating that registration has been made under its rule of doubt and warning that it has not determined the existence of copyrightable authorship. regardless of the nature of the material objects. {FN103: 17 U.C.

Linux reimplementing Unix) or new programs influenced by an existing program (the first spreadsheet program. only the expression in the program that creates that functionality.2d 988. influenced Lotus 1-2-3. The first team determines how the original program works. {FN105: 722 F. They could be new implementations of existing programs (for instance. These programmers have not seen the source code of the original program. New Software from Old Most computer programs are based to some degree on other computer programs. 221 USPQ 490 (2d Cir. metaphorically in a ³clean room´ uncontaminated by the original program. an intellectual property attorney will review the functional specification to assure that it does not contain any protected expression from the original program. In a clean room procedure. . Altai {FN106: 982 F.2d 693. 23 USPQ2d 1241 (2d Cir. Using a Clean Room It is not necessary to be looking at an existing program while writing a new program for the new program to infringe the reproduction right in the existing program. Such a specification is not an infringement. Harrisongs Music. since the copyright in the original program doesn¶t protect its functionality. Obviously.´ If you have had access to the source of a computer program. VI.¶´ a song that he had heard years before. it is best if they have never seen any aspect of the original program. they cannot be copying it. or they could use a preexisting library as part of the final computer program. Although Computer Associates v. Given the functional specification. 1992)} does not spend much time on the clean room aspects of Altai¶s new implementation. In ABKCO Music v. Because they haven¶t seen the original program. there are two separate teams working on the development of the new program. by examining its source code if it is available (IBM published the source code for its BIOS in a technical manual). This is what was done when companies cloned the BIOS of the IBM personal computer to produce compatible systems. it does suggest that such a procedure results in a program that does not infringe as long as the portions that are similar are dictated by function. The copying could be unconscious. when he wrote ³My Sweet Lord.D.1. a second team of programmers. getting all their knowledge of it from the functional specification. by reverse engineering the program (by converting its object code back to source code and attempting to understand it or by testing it to see how it behaves). A limited clean room was used by programmers at Altai when they discovered that one of their employees had written a program that included portions of a program he had worked on at a competitor. or by studying available user manuals and other descriptions of the program¶s function. implements the new program.VI. there are a number of copyright considerations when creating a new computer program based on an existing one. even unconsciously. In fact. One way to avoid infringement when writing a program that is similar to another program is through the use of a ³clean room´ procedure. VisiCalc. 1983)} George Harrison was found to have infringed the copyright of ³He¶s So Fine. you need to be particularly concerned that you aren¶t unconsciously copying the original program when you write a similar program. Generally. This first team puts together a complete technical specification that describes the functioning of the original program. which influenced Microsoft Excel).D.

Section 117 Adaptations Most computer programs are covered by a series of copyrights. in reality such an adaptation even with access to the source code would be impractical for an individual user.S. The copyright on each nontrivial modification is as a derivative work of some preexistent program.D. or an original program and a series of derivative works comprising each modification to that program. When the first segment of code is rewritten.´ {FN107: 17 U. So Section 117¶s adaptation right is personal to each owner of a copy of a computer program and does not allow the sharing of such adaptations. it would seem that the only way to break the chain of infringing works is by some extraordinary act. There is a special exception in Section 117 that permits the owner of a copy of a computer program ³to make or authorize the making of another copy or adaptation of that computer program provided that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner. consider the translation of a novel to a different language. Although there is no case law on this point. So when you have completed the piecewise reimplementation. While in theory this adaptation exception would allow somebody to redo Microsoft Access to run on a Macintosh. each of whose creation infringes the exclusive rights of the owner of the copyright of the original program. so generally only somebody with the permission of the copyright owner can modify a computer program. Even if you completely replace the program with new code. you have a set of works. The resulting translation is still an infringing derivative work.2. . particularly if the reimplementer had access to the source code of the original program. each coming into being when a portion of the program is written or modified. VI. Piecewise Reimplementation Many people have reimplemented computer programs by rewriting them to replace the source code with code of their own writing. Derivative Works and Compilations Until now. or may be an infringing derivative work if it is a reimplementation in a different programming language.3. There is no reason to believe that this would not be a copyright infringement. we have been discussing computer programs as if they were a single work. §117} This exception recognizes that it is sometimes necessary to configure or otherwise modify a computer program as part of its installation or to run it. nonliteral elements also protected by the original program¶s copyright are likely to remain and infringe ± elements like the overall program structure or architecture and data structures that are not dictated by external or efficiency considerations. That reimplemented first segment is combined with the remaining parts of the original program to form an intermediate version. It makes little difference that none of the original words remain. Note that Section 117 also requires the permission of the computer program¶s copyright owner to transfer the adaptations you have made. or that the translation was done a little at a time.D. the new code will be an infringing work if it is substantially similar to the original code. As an analogy.D. Subsequent modifications produce another work.C.VI. something that would clearly be a derivative work. even if none of the original source code remains. One of the exclusive rights of a copyright owner is the right to control the preparation of any derivative works. VI.4. such as a clean room implementation.

of course. Most programs do not run stand-alone on a machine but use the services of an operating system ± a special type of preexisting library. Such a position is misplaced. fictionalization. coordinated. Some have claimed that an application program that needs a library for its operation is a derivative work of that library.´ The copyright in the resulting overall computer program comprises the copyrights in the preexisting component computer programs and a new copyright in the compilation. it actually is common for today¶s software. dramatization. Even though the definition of a derivative work contained in Section 101 seems to support such a reading when it talks about a derivative work¶s being ³based upon one or more preexisting works. as distinguished from the preexisting material employed in the work. now it is more common for a program to include preexisting libraries. any copyright protection in the preexisting material. and those libraries are supplied at a later time by the user of the application program. A work consisting of editorial revisions. duration. and does not imply any exclusive right in the preexisting material. or plug-ins that work with a preexisting browser. no permission is needed from the copyright owner of the library for the distribution to users. Because the library is not being distributed with the application program. ³library´ indicates a preexisting program used by a new ³applications program.´ because that is one of the most common instances of what is being discussed. {FN108: 17 U. the application program being distributed is no longer a compilation that includes the library. or adapted. They take that position because the application program is ³based on´ the library because it was written to use the subroutines and other aspects of the library. ownership. in copyright law that work is called a ³compilation´ ± ³a work formed by the collection and assembling of preexisting materials or of data that are selected.´ the examples all illustrate derivative works where the original work is somehow incorporated or recast in the derivative work: A ³derivative work´ is a work based upon one or more preexisting works. However. and similar components. The copyright in such work is independent of. It is important before distributing a program using a library that the license that accompanied that library allow the redistribution of the library in the way intended. or subsistence of. condensation. the discussion is just as applicable to libraries that work with a preexisting operating system. themselves copyrighted computer programs. there must be permission from the copyright owners of all the component computer programs. But that compilation copyright is very limited. Most operating systems also provide dynamic linking to a library. be authorized to use the library. motion picture version. With dynamically-linked libraries. or other modifications . and does not affect or enlarge the scope. While this may initially seem like a strange procedure. In this discussion. but if they are owners of a copy of the library. such as a translation.C.S. The copyright in a compilation or derivative work extends only to the material contributed by the author of such work. §103(b)} This means that to distribute the overall computer program.While that was the case for early computer programs. or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. An interesting situation arises when an application program is distributed without the libraries it needs. abridgment. Users must. musical arrangement. transformed. elaborations. annotations. sound recording. so that the library can be shared by all the programs that are using it. or any other form in which a work may be recast. under Section 117 they can make any adaptations of the library necessary to use it with the application program. When two or more preexisting works are combined to form a new work. or else the distribution right for that library will be infringed. art reproduction.

or even the parameter lists themselves. sound recording. Copyright provides protection for computer programs that is both easy to obtain (it occurs automatically as the computer program is written) and effective against someone who is making or distributing copies of the program. {FN109: 17 U. is a ³derivative work´. the preloading of the program onto the hard disk of a computer being sold. just its expression. the infringing work must incorporate a portion of the copyrighted work in some form. Summary It is now well-accepted that copyright protects computer programs and other digital information. Rep. or adapted. much more than any other copyrighted work. §101} This need to use a portion of the original work in the derivative work is stated in the legislative history of the Copyright Act of 1976. dramatization. condensation. But elements dictated by external considerations are filtered out when trying to determine whether there is copyright infringement. since a computer program combines expression and functionality much. It also does not protect the functional aspects of the program. copyright infringement of today¶s operating systems or applications programs consists of the complete copying of that program onto a compact disc or other distribution medium.´ Thus. The most- . represent an original work of authorship. then any program using the applications program interfaces (APIs) of an operating system could be considered a derivative work of that operating system. abridgment. whether they are in human-readable source code or are an executable program that is intended to be understood only by a computer. motion picture version. just its expression.R. if not virtually all. to constitute a violation of section 106(2). transformed. No.C. 94-1476 at 62} It could be argued that the component program really does include portions of the library that it uses ± data structures that are passed as parameters. where the drafters discussed when the derivative work exclusive right is infringed: To be an infringement the ³derivative work´ must be ³based upon the copyrighted work. {FN110: H. fictionalization. the scope of copyright protection is quite limited. It does not protect the functional aspects of the program.which. that protection may be sufficient in most instances. as would be the case with bootleg copies of commercial software packages such as Microsoft Windows or WordPerfect. Most. or any other form in which a work may be recast. the copyright owner of an operating system such as Microsoft Windows could control who was allowed to write programs for that operating system. art reproduction. There is little difficulty in finding that such acts are copyright infringements. If it were not the case. for example. But as computer programs have become more complicated. or the distributing of the program over the Internet without authorization.S. musical arrangement. a detailed commentary on a work or a programmatic musical composition inspired by a novel would not normally constitute infringements under this clause. Beyond the verbatim copying of a computer program. as a whole.´ and the definition in section 101 refers to ³a translation. under the exclusive right to prepare derivative works. But it is much easier to state that rule than determine how to apply it. No other conclusion makes sense. Chapter 2: Copyright of Computer Programs VII. And.

and even though the entire program was copied.2d 1510. after determining a number of parts of the program to consider (abstraction). and elements that may be filtered out at one level may be of primary importance at another. In the three major cases that have considered reverse engineering of computer programs. Remember. Chapter 3: Copyright of Digital Information I. 24 USPQ2d 1561 (9th Cir. y The element is taken from the public domain. which.2d 832. Why Digital Works are Different .3d 596. that was necessary to locate those unprotected expressions. 1992)} and Sony v. at the particular level of abstraction. abstraction is done before any filtration of elements at a particular level of abstraction. y The element. you can copy any element of that program that would be filtered without infringing the copyright of the existing program. is an unprotectable process and not protectable expression. It could be that the selection or arrangement of a large number of filtered elements could itself have sufficient originality to warrant copyright protection. {FN112: 977 F. such as when it is the best way of performing a particular function. Cir. When writing a program similar to an existing program. y The element¶s expression is a conventional way of writing something in the particular programming language or machine running the program. Atari v. {FN111: 975 F. 24 USPQ2d 1015 (Fed. But you have to worry if you are using too many of the filtered elements. y The element¶s expression was dictated by external factors. 53 USPQ2d 1705 (9th Cir. in the abstraction-filtration-comparison test. such copying would likely be trade secret misappropriation even if it is not copyright infringement. filters out elements not protectable by copyright. Accolade. 1992)}Sega v. However. Nintendo. Connectix. 2000)} the appellate courts found that the intermediate copies produced during reverse engineering were a fair use and therefore did not infringe the copyright of the computer program being disassembled. And you must always remember that if you have had access to the source code of the existing program under a confidentiality agreement. Elements are filtered because: y The element¶s expression was dictated by reasons of efficiency. the more care you need to take when writing a similar program. {FN113: 203 F. Because it may be difficult to determine whether something should be filtered or not.accepted way of determining whether something is unprotectable function or protectable expression is the abstraction-filtration-comparison test. such as using an existing file format or interoperating with another program. the fact that it is not copyright infringement to produce the intermediate copies necessary in reverse engineering doesn¶t mean that it will not be a copyright infringement to use protected expression that was learned through reverse engineering in the final computer program. the more exposure you have to an existing computer program. or is an unprotectable fact. and because unconscious copying can constitute infringement just as if you were looking at the program when you wrote yours. The intermediate copies were necessary to see and understand the unprotected functional aspects of the computer program. and then compares the remaining elements to determine if they are similar.

S. 1994)} a college student set up a system for distributing popular software programs such as WordPerfect and Excel on a college machine available to him at no cost.S. especially when you can¶t go after the millions and millions of people who are breaking the law. An infringer puts that time and money at risk.6 percent . and the result is a lower quality than the printed-and-bound original. the U.Supp. there are some instances where digital works present substantial new problems for copyright. A few hand-made copies of a book would have little effect on the worldwide sale of a printed book. If the infringer invested in duplicating facilities or for a distribution network. According to International Intellectual Property Alliance statistics. The market for copyrighted works is a substantial part of our economy. As noted by the Senate Judiciary Committee: The copyright industries are one of America¶s largest and fastest growing economic assets.S. 535. Between 1977 and 1996. that investment would also likely be lost. In United States v.5 percent vs. there is no difference with respect to copyright law between digital information (including music. As Napster and other file-sharing systems (and Prohibition and the 55 mph speed limit) have shown. In contrast. 33 USPQ2d 1978 (D. at 536-537.A. videos.6 percent. Between 1977 and 1996 U.Supp. (File-sharing using Napster was stopped only because it had a central directory that could be shut down by court order. Mass.5 million workers ± 2. In the last 20 years (1977-1996). LaMacchia.8 percent of total U. the U.´ {FN2: 871 F. copyright industries more than doubled to 3.65 percent of the U. copyright industries¶ share of GDP grew more than twice as fast as the remainder of the economy ± 5. the infringement had to involve a large number of copies and a distribution network to deliver and sell the works.S. copyright industry employment grew nearly three times as fast as the annual rate of the economy as a whole ± 4. Even using a modern photocopier.4 billion. it takes time and money to make duplicates of a book. and certainly not as worldwide distributors of illegal copies. To substantially affect the market for a popular novel. The users feel that they were just sharing music that they liked with others who also like the songs. the money spent printing the infringing copies is lost because those copies will be destroyed. It was alleged that his ³scheme caused losses of more than one million dollars to software copyright holders.S. I. creative industries accounted for 3. However. gross domestic product (GDP) ± $278. and computer software) and traditional works. 33 USPQ2d at 1979} The economic harm to a copyright owner that can be caused by an infringer in today¶s digital world is not limited by the cost of creating and distributing duplicates of the original work nor by the quality of the duplicates since they are identical to the original work. it is difficult for the law to deter behavior that doesn¶t seem illegal. employment. in 1996 (when the last full set of figures was available). employment in the U. And the ease of doing it (and the many people involved) makes it seem acceptable.In many instances. a perfect copy of a digital work can be made and sent anywhere in the world with a few mouse-clicks or keystrokes on a personal computer and an Internet account provided by a school or costing only a few dollars a month. {FN1: 871 F. and millions of people who just infringe a little can have a definite effect. the economic harm done by a copyright infringement was dependent on the cost of carrying out the infringement. The Ease of Copying and Distributing Digital Works Until digital works. If the infringement is stopped by a court.) File-sharing system users don¶t think of themselves as copyright infringers.S. 2.

dramatic. No.B. notes.S. File Sharing Consider the case where somebody places a digital work on a computer so that the public can access it. food processing. so it is reasonable for copyright law to give some protection. On the other hand. This could be done by putting it in a file transfer directory. photographic. automobiles and auto parts. and the aircraft industry. Instead. and motion pictures and other audiovisual works. the copyright industries contribute more to the U. in 1996 U. or having it in a location that can be accessed by a file-sharing program like Napster. Now consider whether he infringed any of the copyright owner¶s six exclusive rights: (1) to reproduce the copyrighted work in copies or phonorecords. punched. I. manner. and . and choreographic works.R. or any other stable form. stating: Under the bill it makes no difference what the form. the copyright laws may overprotect digital works by effectively giving the copyright owners the right to control any access or use of the digital work by controlling the intermediate copies that are made as a work is accessed. numbers. 105-190 at 10} Chapter 3: Copyright of Digital Information I. since when Congress drafted the Copyright Act of 1976. 94-1476 at 52} But there are times when the copyright laws are a bad fit for digital works.18 billion. Copyright Laws are a Bad Fit The copyright laws work as well for digital works like compact discs (CDs) and digital video discs (DVDs) as they do for phonograph records and movie films or videocassettes. or by rental. No. pictures. It is not clear which. it intended to end the different treatment for works depending on the form or medium in which the work was fixed. (2) to prepare derivative works based upon the copyrighted work. (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership.´ {FN4: H.1. to perform the copyrighted work publicly.vs. pantomimes. of the exclusive rights is infringed when a person makes information available to the world using a file-sharing system like Napster.S. In fact. or lending. More significantly for the WIPO treaties. including agriculture. including it as a Web page. (4) in the case of literary. electronics. economy and employ more workers than any single manufacturing sector. magnetic. musical. whether embodied in a physical object in written. printed. and whether it is capable of perception directly or by means of any machine or device ³now known or later developed. sculptural. This is not surprising. if any. lease.6 percent. and aircraft. including chemicals. {FN3: Sen. industrial equipment. And assume that the digital work is something like a new movie or popular song and the number of downloads is affecting the market value for the original copyrighted work. 1. or any other graphic or symbolic indicia. Congress treated any work of authorship fixed in a tangible medium of expression as protected by copyright. Rep. sounds. or medium of fixation may be ± whether it is in words. for the first time leading all major industry sectors. copyright industries achieved foreign sales and exports of $60. Rep.B. textiles and apparel.

pantomimes. ³copies are material objects´ and he certainly didn¶t give any material objects to the public. §106} I. so ³copy´ doesn¶t mean a duplication of an existing copy but instead a physical object containing the copyrighted work. are fixed by any method now known or later developed. {FN8: 118 F. other than phonorecords. and from which the work can be perceived.S. ³Phonorecords´ are material objects in which sounds.´ It¶s also useful to note that the term ³copy´ refers not only to reproductions of an original. either directly or with the aid of a machine or device. The definitions in Section 101 makes this tie to physical objects clear: ³Copies´ are material objects. including the individual images of a motion picture or other audiovisual work.S. The Public Distribution Right Since he is essentially distributing the work to anybody accessing his computer system. like its predecessors.a. and choreographic works. or anyone else for that matter. While this strong tie to physical objects works well for traditional distributions. 1997)} the court held that actual distribution of work was not necessary: When a public library adds a work to its collection. dramatic. {FN7: 118 F.1. it¶s logical to first look at the distribution right. graphic. reproduced. or otherwise communicated. either directly or with the aid of a machine or device. is strongly tied to copies that are fixed in some medium of expression.3d at 203. At that point. The term ³phonorecords´ includes the material object in which the sounds are first fixed. Were this not to be considered distribution within the meaning of Section 106(3). Another problem with looking to the distribution right for any finding of infringement is that it appears to require that somebody else actually get the work off the server before there is any infringement. or otherwise communicated. The term ³copies´ includes the material object. reproduced. or sculptural works. {FN5: 17 U. 43 USPQ2d 1299 (4th Cir. and the library would unjustly profit by its own omission. other than a phonorecord. and pictorial. Church of Jesus Christ of Latter-Day Saints. but also to the original itself. in which a work is fixed by any method now known or later developed.B. lists the work in its index or catalog system. Copyright comes into being the instant that the first copy of an original expression is made. Hotaling v.C. musical.3d 199. it doesn¶t encompass digital works that are electronically transmitted from place to place. §101} For this discussion. 43 USPQ2d at 1302} . other than those accompanying a motion picture or other audiovisual work. to display the copyrighted work publicly and (6) in the case of sound recordings. {FN6: 17 U. it has completed all the steps necessary for distribution to the public. Considering our example.(5) in the case of literary.C. to perform the copyrighted work publicly by means of a digital audio transmission. a copyright holder would be prejudiced by a library that does not keep records of public use. according to the definitions in Section 101. and makes the work available to the borrowing or browsing public. members of the public can visit the library and use the work. But in one case. there is no significant difference between copies and phonorecords and we¶ll refer to them both as ³copies. The Copyright Act of 1976. in which the work is first fixed. and from which the sounds can be perceived.

dramatization. but it is always unappealing to have to resort to an indirect infringement theory.C. rather than works ³based on´ the copyrighted work. I.B.´ {FN9: 17 U. he might be a contributory infringer if somehow the person who accesses the work on the server later recites. abridgment. The Adaptation Right It would clearly be a stretch to say that he has infringed the adaptation right by preparing a derivative work. or acts out the work. renders.1. transformed. motion picture version.B.S. or act´ the digital work. There is an appeal to finding infringement of either the reproduction or the distribution rights. The Public Performance Rights It would also be a stretch to consider his action as infringing the right ³to perform the copyrighted work publicly. or adapted. play. §101} In this case. play. rather than for the act of another.d. He just put it on his hard disk and allowed other people access to it. {FN10: 17 U. fictionalization. He clearly made a copy of the work when he put it on his hard disk for others to access. elaborations. and so they are not derivative works. He may. as a whole. dances. Contributory infringement results when somebody knows of the direct infringement of another and substantially participates in that infringement. be a contributory infringer if he was aware of the infringing copies being made by others through his making the software accessible to the world. either directly or by means of any device or process or. But he has not distributed a physical copy to anybody.B. And that copy might not even be an infringement if he was authorized to install the digital work on his computer and simply allowed the world to access that installed copy.c. it would be far better if any liability for infringement came from something he did directly. As defined in Section 101: A ³derivative work´ is a work based upon one or more preexisting works. and then distributed them to anybody wanting them. or materially contributing to the infringing conduct. plays.C. The Reproduction Right Perhaps the reproduction right is the one being infringed in the example. or other modifications which. or any other form in which a work may be recast. such as a translation. because those are the rights that would have been infringed if he had made physical copies for everybody receiving the work from him. dance.1. not making the single copy when he put it on his hard disk.b. And it is likely that a copy was made by the person receiving the copyrighted work. causing.1. such as inducing. dance. of course.I. I. But the act we are really trying to proscribe is his making the work available to the world. any copies made were exact copies of the copyrighted work. art reproduction. render. But while courts have used this approach to find liability. represent an original work of authorship. Again. render. to show its images in any sequence or to make the sounds accompanying it audible. sound recording. condensation. and any reproductions beyond the one he put in the file-sharing directory were made by others. or act it. A work consisting of editorial revisions. is a ³derivative work.S.´ Section 101 says: To ³perform´ a work means to recite. in the case of a motion picture or other audiovisual work. annotations. . §101} He didn¶t ³recite. musical arrangement.

§110(5)(A)} .C. {FN11: 17 U. The provisions were really intended to cover the display of a work of art to the public by showing an image of it on a telecast or similar transmission. then there is an argument that the person displayed the work when he put a copy of it in a place where anybody could ³look´ at it by accessing it. or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public. In this case. or any other device or process or. either directly or by means of a film. And if the principle that a distribution takes place when all steps necessary for a distribution have been completed is also applied to the display of a work. §101} and: To ³transmit´ a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.1.C. the following are not infringements of copyright: . {FN14: 17 U.I. not an image of the work. or at least to members of the public one at a time. by means of any device or process. .C. The problem with that argument is that what has been transmitted is the work itself. television image. slide. he may not have infringed the display right because of an exception found in Section 110: Notwithstanding the provisions of section 106. communication of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes.´ Section 101 says: To ³display´ a work means to show a copy of it.C. or (ii) the transmission thus received is further transmitted to the public. to show individual images nonsequentially. The Public Display Right With a little creative reading what he may have infringed is the right ³to display the copyrighted work publicly. . (5)(A) . in the case of a motion picture or other audiovisual work.S.S. the work can be transmitted to the public. unless ± (i) a direct charge is made to see or hear the transmission.B. §101} Clearly. . §101} The display right doesn¶t seem to have been infringed by placing a digital work on a machine where it is available to the public.S. One also has to be careful using a creative argument to try to find infringement of one of the six exclusive rights because there may be an equally-creative argument that there is not infringement found in the special exceptions in the copyright laws. not the one who made the work available on the file-sharing system.S. whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.e. . {FN12: 17 U. And any transmission is likely the result of the actions of the user receiving the work. but Section 101 also provides two other important definitions: To perform or display a work ³publicly´ means± (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. after the work has been placed in a publicly-accessible directory on a computer. {FN13: 17 U.

C. What Can Be Done For the file-sharing example. A possible approach for such an amendment is suggested by the WIPO Copyright Treaty¶s new ³Right of Communication to the Public´: . While this may make sense for publishers or distributors of recordings or paper copies.S. The intent or knowledge of the infringer is considered only in determining whether an infringement is also a criminal violation (under Section 506. Intermediate copies are made when the work is read from a disk into the computer¶s memory so that it can be executed or be used as data by an executing program.The personal computer used to received the digital work using the file-sharing system is certainly ³a single receiving apparatus of a kind commonly used in private homes. Yet it seems that there should be a direct copyright infringement.B. or used. {FN16:17 U.S. including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them. since then any existing licenses permitting the distribution of a work would cover both physical and electronic distributions. Intermediate Copies There are reproductions of a digital work being made when that work is used on a computer or when it is transmitted through a network. It would be best if Congress amended the copyright laws to directly address infringement by those placing copyrighted works on file-sharing systems. since there is little difference in the effect to the copyright owner between distributing a work worldwide through a file-sharing system and distributing the same work by making and distributing physical copies. authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works.1. . §504} statutory damages are increased for willful infringement and reduced if the ³infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright´). since copyright infringement is generally a ³strict liability´ civil offense.f.2. . or could enhance one of the existing exclusive rights such as public distribution. by wire or wireless means. I. This can be particularly troublesome for Internet service providers that operate servers and routers where copies are being made.B. . heard. {FN17: 17 U. 8} Congress could either add a seventh exclusive right to Section 106. and in the memory of the routers that are used to pass the information along the network. The latter may be preferable. if not most. The world of digital works encompasses countless intermediate copies as the works are being seen. none of the six exclusive rights really fit the situation and most likely a contributory infringement argument would have to be made.C. {FN15: WIPO Copyright Treaty. And it¶s not much more of a stretch to say that what he is doing is a ³communication of a transmission´ as it is that he is showing a copy of the work as required to infringe the display right. Art. I. it is essentially impossible for a service provider to monitor all the bits that are being copied at its installation and to know whether a copy is infringing or was permitted by the copyright owner or by law. Other intermediate copies are made in buffers as the work is being sent and received on a network.´ Many. where they can see what is passing through their control as it was being distributed. §506} all criminal infringements must be ³willful´) or in determining damages (under Section 504. file-sharing system users download the digital works to their home computers.

is entitled.C.B.b. (Of course. either. §109(a)} Unfortunately for permitting the making of intermediate digital copies.C.B.2d 511. except for a limited one for computer programs in Section 117. to sell or otherwise dispose of the possession of that copy or phonorecord. without the authority of the copyright owner. the language is tied to physical copies and affects only the distribution right. but the Ninth Circuit found that . the patent or copyright owner¶s further rights are exhausted with respect to the item sold. But copyright owners are concerned that if you say that works stored in computer memory aren¶t fixed. §101} This seems particularly reasonable for the copies made in data communications routers as a message is passed from network to network and for the memory copy made when a computer program is loaded from disk. because its contents are lost when the computer is turned off. then. For copyright.2. the owner of a particular copy or phonorecord lawfully made under this title. then people can download songs from a pirate music site and no copies have been made and therefore there is no infringement unless they are later written to a disk. the so-called ³first sale´ provision: Notwithstanding the provisions of section 106(3) [the distribution right]. or use of. {FN19: 17 U.C.a. In MAI v. What. 26 USPQ2d 1458(9th Cir. {FN20: 17 U. §117} .I. or any person authorized by such owner. from a disk drive into the computer¶s memory met the fixation requirement of the reproduction right. such as requiring the payment of a fee for each time a book is read or a painting is viewed. is sufficiently permanent or stable to permit it to be perceived. A work is ³fixed´ in a tangible medium of expression when its embodiment in a copy or phonorecord. by or under the authority of the author. was sufficiently permanent to be considered fixed. There was some question whether the computer¶s memory. there is an exhaustion doctrine in intellectual property law that says that once there has been an authorized sale without restriction. {FN18: 17 U.S. Peak. Transitory Duration? Perhaps a solution would be to consider the intermediate copies created during the use of a digital work as of transitory duration. I. then there would be a direct infringement by the pirate music site. this doctrine is codified in as Section 109. {FN21: 991 F. Yet. United States copyright has never given the copyright owner the right to control the personal use an owner of a copyrighted work. that could be the result if you require permission of the copyright owner for every reproduction of a digital work. And none of the other statutory exceptions to the exclusive rights of a copyright owner are applicable.) But the leading case addressing whether intermediate copies are of transitory duration found that they weren¶t. according to Section 101. if the distribution right is extended to cover transmissions or making a work available to the public. A New Right to Control Access and Use? Since in most instances. Then. a digital work. and that item can be used or resold by its purchaser without permission of the patent or copyright owner. or other digital work. they would not be considered fixed and would not come under the reproduction right.S. or otherwise communicated for a period of more than transitory duration. a strict reading of the reproduction right can turn into a right to control the access to.S. gives the person who lawfully has a digital work the right to make the intermediate copies necessary to use the work? Generally. 1993)} the Ninth Circuit ruled that the copying of a computer program.2. intermediate copies need to be made to use a digital work. reproduced.

it asks.S. whether the new work merely ³supersedes the objects´ of the original creation. 569. that may weigh against a finding of fair use. being an exact copy. are fixed for purposes of copyright. When we look at the four factors for intermediate copies.C. Such works thus lie at the heart of the fair use doctrine¶s guarantee of breathing space within the confines of copyright. at 578-579. 29 USPQ2d at 1965} But the Supreme Court also found. But not every use that somebody would like to make is a fair use. like commercialism. altering the first with new expression.2.S. the goal of copyright. would the argument finding time-shifting a fair use still hold. Although the Court mentioned that the VCR could also be used for building a library of past television shows. and the more transformative the new work. Acuff-Rose Music. we get: 1. as codified in Section 107. or news reporting. it applies equally to all digital works. Although the ³transitory duration´ argument may have been a way to allow the intermediate copies created when digital works are accessed. or comment. {FN24: Sony v. looking to whether the use is for criticism.´ Although such transformative use is not absolutely necessary for a finding of fair use. Purpose and character of the use: The use is generally not transformative in any way. or instead adds something new. The Supreme Court. in its five-to-four Betamax decision. or would time-shifting merely be a way of superseding the copyright owner¶s on-demand service? Fair use. or whether a timeshifting device that removes the commercials or otherwise alters the show as broadcast is still a fair use. Peakmeans that some other approach must be found. the decision in MAI v. to promote science and the arts. But for intermediate copies.S. And because there was nothing particular to computer programs in their reasoning. and the like.B. {FN22: 510 U. in other words. in Campbell v.c. commercials and all. The central purpose of this investigation is to see. in Justice Story¶s words. 417. Universal City Studios. the less will be the significance of other factors. It¶s not clear whether the idea that time-shifting is a fair use is based on the user¶s simply viewing the broadcast show at some later time. the use is necessary for the expected use of the work. . or message. I. meaning. whether and to what extent the new work is ³transformative. 29 USPQ2d 1961 (1994)}said: The enquiry here may be guided by the examples given in the preamble to Section 107. it didn¶t rule on whether that went beyond simple time-shifting or was a fair use in its own right. Fair Use? It appears that we are left with that old standby that allows a court to find that something that appears to be an infringement should be allowed anyway to benefit society: fair use. {FN23: 510 U. when read into memory.computer programs. 464 U.S. {FN25: 17 U. 220 USPQ 665 (1984)} that recording a broadcast television program on a video cassette recorder (VCR) for playback at a later time (³time-shifting´) is a fair use because of its noncommercial nature and lack of real harm to the market of something that is essentially provided to viewers for free. is generally furthered by the creation of transformative works. with a further purpose or different character. And if the television show were available on demand from the copyright owner. §107} requires us to consider four separate factors in determining whether a use is not an infringement.

2. the Betamax decision holds that such recording is a fair use. But now. and perhaps no.C. However. For computer programs. §117} There is some question about whether a person who gets a packaged computer program from a store is the ³owner of a copy´ (which is what one expects to be after buying a program) or just a ³licensee´ of the program (as the software vendor generally claims in a ³shrink-wrap license´). so this factor likely goes against the user.´ {FN29: 17 U.Nature of the work: Many digital works. in their report on first sale. In addition to the special treatment for 2.S. . Section 117 provides special permissions: It is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided: (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner.C. music. What Can Be Done Congress has already provided an example of what should be done to address intermediate copies. But Section 117 is limited to computer programs. then intermediate copies might be a fair use. §109} get to sell it. and under Section 109 {FN27: 17 U. which is often what is done. If I record a TV movie for time-shifting. But relying on fair use may cause other problems.C. rather than having a specific exception.B. the whole work or a substantial part of the work is being copied. {FN26: United States Copyright Office. http://www. are primarily expressive rather than factual. Section 117 indicates Congress¶s recognition that intermediate copies need to be made to use a computer program. I. but it shows the problem of relying on fair use to justify acceptable behavior. This is clearly not the result intended. If more weight is given to the effect on the market and the purpose of the use. document) can be considered instructions that bring about a certain result in a computer. and that such reproductions are not infringing copies. 4. I¶m the owner of a particular lawful copy. 3. Digital Millennium Copyright Act Section 104 Report. The Copyright Office noted. such an expansive reading would read out any limitation in the definition and so isn¶t reasonable. effect if the use is necessary for the personal use of something that the user already legally has.gov/reports/studies/dmca/dmca_study. It would be far better for Congress to provide a specific exception to the copyright owner¶s exclusive rights for uses of digital works that virtually everybody believe are legitimate (except for those copyright owners trying to bootstrap a level of control because the access and use of digital works require the making of intermediate copies). which are defined in Section 101 as ³a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. or (2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.d. so this goes against the user.html} that there is an unanticipated interaction between first sale and fair use. {FN28: 17 U. Amount of the work copied: Generally.S. §101} While an argument can be made that any digital information (data.copyright. Effect on the market: There is little. such as showing a picture or playing a song.S. and in particular songs and movies. as is the case with intermediate copies.

importation.C. Chapter 3: Copyright of Digital Information II.C. In the CD copying neither an analog recording device nor an analog recording medium is used. including computer programs and databases. making a digital audio copied recording for private use. . Congress has provided special treatment for noncommercial copying of musical recordings{FN30: 17 U. allow teaching people what they should or shouldn¶t do. or distribution of a digital audio recording device. §1008} Because of the exceptions given the computer industry.S. §1002} The Serial Copy Management System allows the making of unlimited copies from an original digital recording but prevents any copies being made from those copies. allow fair use to return to its original purpose of protecting productive and transformational uses.S.S. To compensate copyright owners and featured performers. a royalty is required for every digital audio recording device and digital audio recording medium sold.S.C. a digital audio recording medium.C. and avoid unintended consequences caused by the interaction of fair use determinations with other provisions of the copyright laws.´ which limits the provision to an act where ³a digital audio recording device. As with most copyright legislation. a digital audio recording medium. although the user provision of Section 1008 certainly isn¶t a model of clarity: No action may be brought under this title alleging infringement of copyright based on the manufacture. §1003} The computer industry got left alone. The Audio Home Recording Act Congress first addressed copyright and digital information in the 1992 Audio Home Recording Act (AHRA). §1001(3)} and digital audio recording medium excluded any medium primarily marketed or used ³for the purpose of making copies of nonmusical literary works.S. §§108-122} Having clear rules for digital works would help conscientious users avoid copyright infringement. §1001(4)} Consumers got a statement regarding their rights to make copies of musical recordings. the result was a grand compromise. Section 1008 does not apply to most copying on a personal computer (PC) of a music compact disc (CD). an analog recording device. {FN31: See 17 U. or an analog recording medium´ is employed.S. The definition of a digital audio recording device requires that it be ³designed and marketed for the primary purpose of . {FN37: 17 U. which could provide the perfect copies feared by the record companies. . {FN32: 17 U. with Congress trying to address the legitimate concerns of every party in the negotiations.S. or based on the noncommercial use by a consumer of such a device or medium for making digital musical recordings or analog musical recordings.C.S. an analog recording device. What the copyright owners got was a mandatory copy management system that had to be included on every digital audio recording device or digital audio interface device.} The AHRA was the result of years of discussions and hearings on how to address digital copies of sound recordings.C. §1008} as well as a variety of other uses of copyrighted works.{FN33: 17 U.´ {FN36: 17 U. . or an analog recording medium.intermediate copies of computer programs in Section 117.{FN34: 17 U.´ {FN35: 17 U.A.C.C. The user provision applies only to copying using ³such a device or medium. §1001 et seq. Protecting Digital Information II.

Section 106(3). 1995)} that expressed concerned that the current copyright law did not adequately protect valuable digital works from infringement over computer networks and that more works would become available in digital form if proper protection existed.´ Neither is the output CD.uspto. the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks and a key adviser to President Clinton on intellectual property. §106(3)} to read: to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership.S. Diamond Multimedia. . The Serial Copy Management System is a part of every digital audio tape (DAT) drive. chaired by Bruce Lehman.Section 1001 gives some non-intuitive definitions. Appendix 2 at 1} . (In reality. {FN41: NII White Paper. §101} To µtransmit¶ a reproduction is to distribute it by any device or process whereby a copy or phonorecord of the work is fixed beyond the place from which it was sent.´ There are blank CD media sold for making digital audio recordings. since a PC is not ³designed or marketed for the primary purpose of . by rental.´ {FN38: See Recording Industry Association of America v. Appendix 2 at 1} and to add to the definition of ³transmission´ in Section 101: {FN42: 17 U. II. 51 USPQ2d 1115 (9th Cir. and their use would bring a user within the protection against an infringement suit if the copy that is made is for noncommercial use.C. where the required royalty has been paid. Early in his administration. {FN43: NII White Paper. the privatization of the National Science Foundation¶s NSFnet to become the Internet had a far greater influence than any government direction. They suggested amendments to the copyright law to accommodate digital works. . although it did clarify that analog copies of musical recordings made for a noncommercial use were not copyright infringements. but it is clear that a ³digital audio recording device´ is not a PC.gov/web/offices/com/doc/ipnii/ (Sept. lease. Lehman had worked on the Copyright Act of 1976 as the principal legal adviser to the House Committee on the Judiciary. or lending. for the purpose of making copies of nonmusical literary works. .S. {FN40: 17 U. President Clinton formed the Information Infrastructure Task Force to determine what a National Information Infrastructure should look like. or by transmission. In particular.´ Intellectual Property and the National Information Infrastructure. the Working Group released a ³white paper. In September 1995. making a digital audio copied recording for private use.B. {FN39: Intellectual Property and the National Information Infrastructure (³NII White Paper´). 1999)} The original CD is not a ³digital audio recording medium´ because it ³embodies a sound recording at the time it is first distributed by the importer or manufacturer. including computer programs or data bases. http://www. .) One of the components of the Task Force was the Working Group on Intellectual Property. the Audio Home Recording Act didn¶t meet the expectations of the copyright owners.C. The White Paper While the Audio Home Recording Act addressed physical devices and media for making copies of musical works. they proposed amending the distribution right. and also any CD writer that is not part of a computer system. 180 F. if it is one of the normal ones you buy at a computer or office supply store because it is ³primarily marketed and most commonly used by consumers .3d 1072. the advent of the Internet required a new look at the copyright laws to determine whether changes were necessary. But because neither of those devices achieved any consumer popularity.

if the bits are not fixed at the receiving end but are instead converted to an audio or video signal without storing them for more than a transitory duration. such as playing a record to crowd. Early in the negotiations for an amendment to the copyright laws to address digital material. .S. tapes. since they transmit packets from one router to another but do not have the ability to determine whether the packets contain infringing information. that means that whether a particular sending is an infringement depends not on what the sender does but on what the receiver does ± something that is generally beyond the control of the sender. The White Paper¶s proposal also did not address the problem of the intermediate copies made by a user as a necessary part of using a work. there is a transmission and the proposed distribution right is infringed. at the same time the White Paper was being developed. since copyright infringement is a strict liability offense that does not require willfulness. which routinely transmitted information from one machine to another for their users.C. No other type of public performance of a sound recording. regardless of the nature of the material objects. whether it is a transmission or not depends on what occurs at the receiving machine. the public performance right did not apply to sound recordings. II. If the bits are written to a disk or otherwise fixed in some medium for more than a transitory duration. although it could be an infringement of the copyright in the musical work being performed. However.C.´ which are defined in Section 101 as: works that result from the fixation of a series of musical. Digital Sound Recordings In 1995.C. Congress¶ concern was about services that would transmit sound recordings to a user on demand. And the new right pertains only to public performances by means of digital transmissions. such as disks. Although the White Paper¶s proposed amendments were introduced as a bill in Congress. or other phonorecords. §101} So even if there is music in a movie on a DVD. And for digital information that can be either stored or immediately reproduced without storage. or even knowledge. as would be the case with streaming audio or video.1. Congress took a small step toward addressing digital copyrights when it extended the public performance right to digital audio transmissions of sound recordings by adding a new exclusive right to Section 106. Internet backbone carriers were particularly concerned. although it did apply to any underlying musical composition or lyrics. they were never passed into law. spoken. §106} Prior to that time.S. the service providers made it clear that they would fight any change that could make them liable for copyright infringement that is without their direct knowledge. in which they are embodied. of the infringement. Internet service providers. then. no transmission. is covered.C.There was a fundamental difficulty with this proposal. The New Exclusive Right It is important to note that the new right pertains only to ³sound recordings. but not including the sounds accompanying a motion picture or other audiovisual work. While the act that causes the transmission clearly occurs at the sending machine. and no infringement of the proposed distribution right. II. or other sounds. according to the proposed amendment. that DVD is not a sound recording. were concerned that they would end up being the ³defendant of last resort´ for any infringing transmissions made by their users. {FN44: 17 U. {FN45: 17 U. then there is no fixation.

songwriters. {FN46: Sen. record companies. 104-128 at 14} Although many had wanted Congress to adopt a general transmission right. applicable only to certain digital transmissions of sound recordings. and changed by an amendment included in the Digital Millennium Copyright Act. These exclusions were tightened. restructured.Even more recently. Rep. file-sharing systems like Napster. as well as the telecommunications and information services industries. on request. No. the work is being reproduced on users machines through an electronic distribution but is not being publicly performed. Notwithstanding the views of the Copyright Office and the Patent and Trademark Office that it is appropriate to create a comprehensive performance right for sound recordings. a small number of services have begun to make digital transmissions of recordings to subscribers.¶¶ µµpay-per-listen¶¶ or µµaudio-ondemand¶¶ services. such as proposed in the White Paper. 112 Stat. will be interactive services that enable a member of the public to receive. {FN47: Sen. 336} in a way that excluded virtually every digital transmission of a sound recording at that time. Trends within the music industry. {FN50: Pub. Congress expressed further concerns: However. 2860} . Accordingly. the Committee has sought to address the concerns of record producers and performers regarding the effects that new digital technology and distribution systems might have on their core business without upsetting the longstanding business and contractual relationships among record producers and performers. 105-304. the Committee has chosen to create a carefully crafted and narrow performance right. to protect the livelihoods of the recording artists. 109 Stat. 104-128 at 14} This certainly hasn¶t happened as Congress expected. With such systems. Rep. No. {FN48: Sen. thus. L. music composers and publishers and broadcasters that have served all of these industries well for decades. Exceptions At the same time that it added the sixth exclusive right of public performance by digital transmission of sound recordings. suggest that digital transmission of sound recordings is likely to become a very important outlet for the performance of recorded music in the near future. 104-39. in the absence of appropriate copyright protection in the digital environment. became immensely popular. In place of subscription services providing a rich inventory of recorded music to consumers at their request. Congress was much more cautious. 104-128 at 13} II. ultimately denying the public some of the potential benefits of the new digital transmission technologies. Some digital transmission services. music publishers and others who depend upon revenues derived from traditional record sales. where individuals converted analog or digital recordings to the standard MP3 format and made them available to anyone in the world. Congress amended Section 114 {FN49: See Pub. L. The Committee believes that current copyright law is inadequate to address all of the issues raised by these new technologies dealing with the digital transmission of sound recordings and musical works and.C. No. a digital transmission of the particular recording that person wants to hear. Rep. so the new digital sound recording public performance right does not address this problem. such as so-called µµcelestial jukebox.2. the creation of new sound recordings and musical works could be discouraged.

The Librarian of Congress. many content providers feel that the royalty is too low. so if 10 songs are sent to 100 listeners. In addition. {FN55: 37 C.C.´ A subscription service is one in which the users pay for the privilege of receiving the performance.´ However. there are particular tests that must be met for each of these rules to apply. II. 261} In particular.C. the Copyright Office determined {FN59: 65 Fed. a number of transmissions are exempted from the exclusive public performance by digital transmission right. a statutory licensing scheme is established for non-interactive services that are not otherwise exempt. In an interactive service the user requests that a particular sound record be performed.S.copyright. there is a minimum yearly royalty of $500.S. In Section 114(d)(2). Reg. {FN54: 17 U.C. 77292 (Dec. 109 Stat. Not surprisingly. such as requests made to a radio station to play a favorite song.C. the material being webcast consists of recordings of musical works. as would be the case for digital cable television or satellite. §112} and 114. many webcasters claim that they will not be able to continue operation if they have to pay the royalty.S. {FN56: See http://www.S. 336} was being drafted because they were using analog transmissions (AM or FM) and felt that if they did go digital. §114(d)(1)(A)} as ³a nonsubscription broadcast transmission. they would be exempted under 114(d)(1)(A) {FN58: 17 U. Although it appears to listeners as if they are tuning into a broadcast. including nonsubscription broadcast transmissions and broadcast retransmissions within 150 miles of the broadcast transmitter. L. much to their chagrin. although Congress specifically excepted the playing of requests made by individuals if they are performed for the public at large. In the language of the statute. so the public performance involves the copyrights in both the sound recording of the performance and the musical work being performed. Radio stations were not overly concerned when the Digital Performance Rights in Sound Recordings Act {FN57: Pub. under his authority under Sections 112 {FN53: 17 U. In most instances. set forth in the same mind-numbing detail that one expects in the tax code. including limitations on exclusive licenses.C. Section 114 {FN51: 17 U. Webcasting Webcasting is the delivery of programming via the Internet that is similar to what would be found on a broadcast radio station. §114} has recently set the royalties for a statutory license for webcasting and other uses.´ {FN52: 17 U. for technical reasons having to do with how the Internet actually transfers digital information. but a royalty must be paid through a system administered by the Copyright Office. That means that the owner of a copyright in a sound recording cannot stop the public performance of that sound recording by the non-interactive service. As with most recent additions to the copyright laws. an interactive service is one that ³enables a member of the public to receive a transmission of a program specially created for the recipient. Section 114(d)(3) sets requirements for any licenses for interactive services. §114} differentiates public performances by digital transmission primarily by whether they are ³subscription´ and whether they are ³interactive. 2000)} that the simultaneous streaming of a radio station¶s programming over the Internet .F. Finally.S.R. §114(j)(7)} In Section 114(d)(1).As presently constituted.3.html} While this is a reduction by half from the royalty that was proposed by a Copyright Arbitration Royalty Panel (CARP).C.gov/carp/webcasting_rates. there is generally a separate digital pathway from the webcaster to each listener. a royalty of 70 cents is due. because they don¶t have sufficient income. a webcaster must pay 7/100 of a cent for each song sent to each listener. 104-39. 11.

not just Erlich. but also the operators of the server computers or network communications used by those infringers. Dennis Erlich. When Erlich would not remove his postings. Peters. who had relayed Erlich¶s postings to the Internet. not just those infringing Scientology¶s copyrights.Supp. Netcom countered by asking for summary judgment (in which . These were then relayed to the world through Netcom¶s system. The Court Decisions In a number of cases. What Not to Protect As important as what is protected by copyright is what isn¶t protected. Penn. Scientology.2d 763.was not a ³broadcast transmission´ and was subject to royalty payments to the performers and copyright owners of the sound recording. through making unauthorized copies. publishing arms of the Scientology religion. 59 USPQ2d 1622 (E.A. 37 USPQ2d 1545 (N. had posted copies of works used by Scientologists in their religion to the Usenet discussion group alt.Supp.A. claiming that would result in disconnecting all of Klemesrud¶s users. Scientology wrote to Netcom. an all-encompassing reproduction right could effectively give the copyright owner the right to control all uses of the digital work. (Klemesrud clearly could have blocked Erlich¶s postings by terminating his account.D. something the radio stations never had to pay before.D. III. Since the use of a digital work generally involves the making of many intermediate copies. The question before the court was whether Netcom should be enjoined because its actions might also infringe Scientology¶s copyrights. 2001)} Chapter 3: Copyright of Digital Information III. 1995)} This decision by the United Stated District Court for the Northern District of California ruled on a request by the plaintiffs. through its Religious Technology Center and Bridge Publication.scientology using Klemesrud¶s bulletin board service. later codified by Congress in the Digital Millennium Copyright Act. Netcom¶s argument that it would have to disconnect all of Klemesrud¶s users is a stretch. Cal. such as from disk to computer memory or from router to router. A former minister and now vocal critic of Scientology. It refused to act on Scientology¶s request. claimed that it held copyrights to the material Erlich posted and that its copyrights were being infringed. since it could have developed a filter program that blocked the retransmission of any posting by Erlich. These cases led to an understanding of when a service provider might be liable for a copyright infringement caused by a user. But either of those actions would have blocked all of his postings. It could also make a network service provider an infringer when there is no practical way for that service provider to know of the infringement or control it. Netcom {FN61: 907 F.) Scientology then went to court and received a preliminary injunction against Erlich. Netcom Probably the most notable of these cases is Religious Technology Center v. The authority of the Copyright Office to make this determination was confirmed in Bonneville International v. III. a major Internet service provider. {FN60: 153 F. for a preliminary injunction against Netcom.1. who ran a small bulletin board service connected to the Internet through Netcom.religion. and Tom Klemesrud. copyright owners sued not only people who were clear copyright infringers. 1361.

Peak. were clearly different. where knowledge is irrelevant. 37 USPQ2d at 1553} In essence. it set forth a framework for determining whether a service provider has infringed a copyright through the actions of its users. Netcom. it might be a contributory or vicarious infringer. But in doing so. The court is not persuaded by plaintiff¶s argument that Netcom is directly liable for the copies that are made and stored on its computer. The court first addressed the question of direct infringement by Netcom. The court does not find workable a theory of infringement that would hold the entire Internet liable for activities that cannot reasonably be deterred. it is not clear whether such reasoning is legally sound. 26 USPQ2d 1458 (9th Cir. and Netcom. Netcom took no action regarding particular messages other than to forward them as specified by their originator. The operators of the individual servers are not liable because there are so many of them involved in the infringement.) And because Netcom had played a role in Erlich¶s infringement.2d 511.the judge decides the case on the basis of the law because there are no material facts in dispute) that it was not liable for copyright infringement. it does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet. The court had found that it was likely that Erlich infringed Scientology¶s copyrights. the court found that the entire Usenet system was like a copy machine being controlled by the user making the posting. who has posted the material. 1993)} the court noted that the process created fixed copies. while not a direct infringer. Such a result is unnecessary as there is already a party directly liable for causing the copies to be made. However.Supp. it provided a connection to content on other machines and stored and forwarded Usenet discussion group postings as required by the protocol for internet news. where the evidentiary requirement is a demonstration that the party asking for the injunction will likely prevail on its infringement claim. on Netcom¶s machines. (This was at the preliminary injunction state. {FN63: 907 F. such liability cannot be based on a theory of direct infringement. {FN62: 991 F. unlike some large online service providers. Instead. the court finds that Netcom cannot be held liable for direct infringement. The district court denied both the request for the preliminary injunction and the motions for summary judgment. Citing the Ninth Circuit decision in MAI v. did not create or control the content available to its subscribers. who had clearly made copies of the material as it was being relayed to the Internet. Because the court cannot see any meaningful distinction (without regard to knowledge) between what Netcom did and what every other Usenet server does. Where the infringing subscriber is clearly directly liable for the same act. and there is always a user who can be held liable. . it is difficult for them to police their systems. at 1372-1373. But while this is a good public policy decision (and one later made by Congress). Billions of bits of data flow through the Internet and are necessarily stored on servers throughout the network and it is thus practically impossible to screen out infringing bits from noninfringing bits. The court found that it was not. The question was whether Netcom should be liable for any copyright infringement from those copies fixed on Netcom¶s computers. either on disk or in RAM. But that did not end the discussion. Plaintiffs occasionally claim that they only seek to hold liable a party that refuses to delete infringing files after they have been warned. The court noted that the roles of Erlich.

On one hand. such as inducing. unlike a landlord. it is fair. It also said that it could not determine whether Erlich¶s postings were a fair use of the works and therefore noninfringing. assuming Netcom is able to take simple measures to prevent further damage to plaintiffs¶ copyrighted works. at 1375.Supp. Contributory infringement results when somebody knows of the direct infringement of another and substantially participates in that infringement. Netcom allows Erlich¶s infringing messages to remain on its system and be further distributed to other Usenet servers worldwide. The court found that there was a genuine issue whether Netcom had substantially participated in Erlich¶s infringement. It was undisputed that Netcom did not know of the infringement before it received the notice from Scientology. it would be clearly difficult for Netcom to selectively block Erlich¶s postings. since Scientology had not included copies of valid copyright registrations along with its notice. or materially contributing to the infringing conduct. Given the context of a dispute between a former minister and a church he is criticizing. the court considered two different time spans ± before Netcom was notified of the infringement by Scientology and after it had received the notice. Since Netcom was given notice of an infringement claim before Erlich had completed his infringing activity. and that it had blocked users over a thousand times in the past. But had Netcom benefited financially from Erlich¶s infringement. However.scientology could read it without having to subscribe to Netcom or pay the company an access fee. Netcom admits that it did not even look at the postings .Vicarious infringement results when there has been a direct infringement and the vicarious infringer is in a position to control the direct infringer and benefits financially from the infringement. It is more akin to the radio stations that were found liable for rebroadcasting an infringing broadcast. Scientology showed that Netcom did have the right to block Erlich under its acceptable use policy had it wanted to. nor was it able to charge a higher price because the material was there. given the vast number of messages processed by Netcom. goes well beyond renting a premises to an infringer. Providing a service that allows for the automatic distribution of all Usenet postings. It does not completely relinquish control over how its system is used. there may be a question of fact as to whether Netcom knew or should have known that such activities were infringing. 37 USPQ2d at 15551556 (citations omitted)} As for knowledge of the infringing activity. but those fees remained the same whether infringing or noninfringing material passed through Netcom. to hold Netcom liable for contributory infringement where Netcom has knowledge of Erlich¶s infringing postings yet continues to aid in the accomplishment of Erlich¶s purpose of publicly distributing the postings. where the subscriber of any service provider that carried alt. Netcom argued that it did not have sufficient knowledge even after receiving the notice. Netcom may be able to show that its lack of knowledge that Erlich was infringing was reasonable. causing. the second prong of the test for vicarious infringement? Netcom certainly received fees for connecting its subscriber (Klemesrud) to the Internet. While the court found that there was clearly not vicarious infringement by Netcom. infringing and noninfringing. {FN64: 907 F. Thus.religion. There was no evidence that Netcom benefited in any way because of the infringing material ± it received no new subscribers attributable to the material. The court found that there was evidence either way regarding whether Netcom could have controlled Erlich¶s infringement. since Netcom just forwarded the material to thousands of other machines on the Internet. it was less certain regarding contributory infringement. However. That should not be surprising.

at 1374-1375. hardware. Sherman admits that users were allowed to upload and download Sega games from his MAPHIA BBS. even under an alternative and higher standard of ³substantial participation. and yet substantially participated by inducing. However. it may be a contributory or vicarious infringer if it does nothing to stop the infringement. the court considered the extent of Sherman¶s participation in his users¶ activities: The Ninth Circuit has recently stated that ³providing the site and facilities for known infringing activity is sufficient to establish contributory liability. and is satisfied where the defendant knows or has reason to know of the infringing activity. But it did make two important points.once given notice and that had it looked at the copyright notice and statements regarding authorship.D. He provided the facilities for copying the games by providing. Cal. and operating the BBS software. After finding that there was direct copyright infringement by the bulletin board users. Under this standard.´ at least in a swap meet context. and phone lines necessary for the users to upload and download games.Supp.2. 1996)} the defendant. Sherman. encouraged users to upload Sega games to the bulletin board and provided free downloads to people who had purchased a game copier from him. and contributory infringement or vicarious infringement is appropriately found.A.Supp. the operator of the Maphia bulletin board system. In this case. One way to stop the infringement is to remove the material from the system until it can be determined whether it infringes.{FN66: 948 F. These facts are sufficient to raise a question as to Netcom¶s knowledge once it received a letter from plaintiffs on December 29. This is often referred to as a ³notice and takedown´ procedure. Sherman provided the BBS as a central depository site for the unauthorized copies of games. it is undisputed that Sherman had knowledge that his users were copying the games. noting that copies of Sega¶s games had been made by someone. and allowed subsequent distribution of the games by user downloads. and also considered contributory or vicarious infringement. 37 USPQ2d at 1555 (citations omitted)} The holding in the Netcom case didn¶t fully address the issues because it was deciding motions on preliminary matters ± summary judgment and a preliminary injunction. causing or materially contributing to the users¶ infringing conduct. In Sega v. there is no direct infringement if a service provider can¶t reasonably determine whether such infringement is taking place on its systems.{FN65: 907 F.Supp. In this . First. III. Second. 923. 41 USPQ2d at 1712-1713 (citations omitted)} Finally. Sherman is only liable if he knew of the users¶ infringing actions. evidence of a screen printout of user uploading and downloading statistics from the MAPHIA BBS shows that Sherman tracked. Here. it would have triggered an investigation into whether there was infringement. {FN67: 948 F. monitoring. 1994. Moreover. The court first addressed the issue of direct infringement. When a Service Provider Will Be Liable Sometimes the participation of the service provider does cross the line. It never went to a full trial on the merits. Maphia. 41 USPQ2d 1705 (N. once a service provider is made aware of the infringement. user uploads and downloads. Thus. the court addressed the bulletin board operator¶s knowledge of his users¶ activities: The standard for the knowledge requirement is objective. at 933. or at least had the ability to track. and it was never reviewed by an appellate court. Sega has established that Sherman knew of the infringing conduct by MAPHIA BBS users.´ Sherman is liable.

For example. Chapter 3: Copyright of Digital Information III. the DMCA ensures that the efficiency of the Internet will continue to improve and that .B. 2860} In the report that accompanied the Senate version of the bill. Sherman¶s role in the copying. Parsec Trading. Congress updated the copyright laws by passing the Digital Millennium Copyright Act (DMCA). the Committee on the Judiciary stated the reasons why Congress needed to act: Due to the ease with which digital works can be copied and distributed worldwide virtually instantaneously. . It will facilitate making available quickly and conveniently via the Internet the movies. and furthermore that the defendant¶s defense of fair use did not apply in this case. 41 USPQ2d at 1713 (citations omitted)} The court found that Sega had established a case of contributory copyright infringement. and seeking profit. Additionally. {FN68: 948 F. Sherman did more than provide the site and facilities for the known infringing conduct. Congress Codifies the Decisions In 1998. and provided a road map on his BBS for easy identification of Sega games available for downloading. The court also found that the defendant¶s infringement was willful and granted Sega an injunction against further infringement and awarded statutory damages. amounts to a prima facie case of contributory copyright infringement. In the ordinary course of their operations service providers must engage in all kinds of acts that expose them to potential copyright infringement liability. L. through the same MAPHIA BBS medium. In short. {FN69: Pub. at 933. .case. music. direction. Legislation implementing the treaties provides this protection and creates the legal platform for launching the global digital on-line marketplace for copyrighted works. and literary works that are the fruit of American creative genius. 112 Stat. It will also encourage the continued growth of the existing off-line global marketplace for copyrighted works in digital format by setting strong international copyright standards. Certain electronic copies are made to speed up the delivery of information to users. 105-304. software. Other electronic copies are made in order to host World Wide Web sites. knowledge. including providing facilities. by limiting the liability of service providers. . Sherman¶s business. Moreover. At the same time. copyright owners will hesitate to make their works readily available on the Internet without reasonable assurance that they will be protected against massive piracy. He actively solicited users to upload unauthorized games. he offered copiers for sale to facilitate playing the downloaded games. had a policy of providing limited free downloading of games and hereafter selling downloading privileges to customers who had purchased copiers. service providers may hesitate to make the necessary investment in the expansion of the speed and capacity of the Internet. Some of these sites might contain infringing material.Supp. Many service providers engage in directing users to sites in response to inquiries by users or they volunteer sites that users may find attractive. without clarification of their liability. service providers must make innumerable electronic copies by simply transmitting information over the Internet. Thus. encouragement.

The Four Safe Harbors In the DMCA. Cal. {FN70: Sen. 1361. And even if you don¶t meet the requirements of one of the safe harbors. When the bills implementing the White Paper recommendations went nowhere after they were introduced in Congress. indicating a place where a ship will be safe from stormy weather. That would eventually lead to the codification of a number of safe harbors and the ratification of the WIPO Copyright Treaty. nor is conduct outside the safe harbors an indication that the service provider must be infringing. 105-190 at 8} Content providers had pushed for a bill to better protect their copyrights in the digital world. Rep.1. Because the general acceptance of the Netcom {FN71: 907 F. such as fair use. the Clinton Administration and the content providers worked hard for the adoption of a new treaty extending the Berne Convention to address digital works.C. all of which must be met to enjoy the protection of that safe harbor. the content providers were willing to discuss a compromise. Other defenses. even if the same act would not meet the requirements of another safe harbor. Just because a service provider does not qualify for any of the safe harbors does not mean that it might not have a defense to a charge of copyright infringement. §512} are: (a) Transitory digital network communications (b) System caching (c) Information residing on systems or networks at the direction of users (d) Information location tools Each of these safe harbors represent a particular aspect of the normal operation of the Internet that Congress wanted to protect and promote. 37 USPQ2d 1545 (N. . albeit with some limitations.Supp. along the lines of the recommendations of the White Paper. You don¶t get to pick and choose from the different safe harbors to create a new one.B.the variety and quality of services on the Internet will continue to expand. 1995)} decision made it clear that service providers should not be the deep pockets to compensate the copyright owners when one of their users infringed a copyright. in the following subsections of Section 512. Each is separate. But as in the case of a ship. that is not an indication that you are infringing a copyright. The four safe harbors provided by Congress. particularly in the areas of rights management information (digital copyright notices) and technological protection measures. Congress provided a series of safe harbors for network service providers. and if you fall within any one. It just means that your safety is not assured. still remain available.D. Subsection (l) makes it clear that the safe harbors are not intended to list all defenses. Each DMCA safe harbor substantially limits the liability for copyright infringement. But because that treaty required changes to the copyright act before it could be ratified. since the White Paper proposed strong measures protecting the technology that prevents copying of digital information while not providing exceptions for normal and necessary copying. But there were many substantial objections from users and service providers that the White Paper proposals tipped the balance too much in favor of the content providers. the ball was back in Congress¶s court.S. and meeting the conditions of any one is sufficient to receive protection for the acts included in that safe harbor. III. being outside a safe harbor does not mean that you are in danger. your liability is limited. Each safe harbor addresses a different aspect of potential copyright liability. The term ³safe harbor´ is a nautical metaphor. No. {FN72: 17 U. Each has a set of particular conditions.

The failure of a service provider¶s conduct to qualify for limitation of liability under this section shall not bear adversely upon the consideration of a defense by the service provider that the service provider¶s conduct is not infringing under this title or any other defense. {FN73: 17 U.S.C. §512(l)} Even though the DMCA became law in 1998, there have been very few court cases that interpret its language. Until there are more cases, the best guidance can be found in the congressional reports that accompanied its passage.
III.B.2. Benefits of Being in the Safe Harbor

Each of the safe harbors begins the same way: A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of [the particular act covered by the safe harbor]. The safe harbors don¶t say that an act by a service provider is not an infringement, like the many exceptions to the exclusive rights of a copyright owner that are detailed starting with Section 107 {FN74: 17 U.S.C. §§107-122} in Chapter 1 of the Copyright Act. Instead, they go to the penalties against a service provider for any infringement. A service provider can still be found to have infringed a copyright, even within the safe harbor. Congress was concerned that it might be difficult to get an injunction against a service provider when that service provider was not an infringer. Congress felt that it was important for a court to be able to order a service provider to help in stopping an ongoing infringement. But the scope of such an injunction is limited by subsection (j). When a service provider is acting as a ³mere conduit´ carrying the communications of others, and meets all the conditions of Subsection (a), {FN75: 17 U.S.C. §512(a)} a court can grant injunctions only in one or both of the following forms: (i) An order restraining the service provider from providing access to a subscriber or account holder of the service provider¶s system or network who is using the provider¶s service to engage in infringing activity and is identified in the order, by terminating the accounts of the subscriber or account holder that are specified in the order. (ii) An order restraining the service provider from providing access, by taking reasonable steps specified in the order to block access, to a specific, identified, online location outside the United States. {FN76: 17 U.S.C. §512(j)(1)(B)} For all the other safe harbors, the following injunctive relief is available: (i) An order restraining the service provider from providing access to infringing material or activity residing at a particular online site on the provider¶s system or network. (ii) An order restraining the service provider from providing access to a subscriber or account holder of the service provider¶s system or network who is engaging in infringing activity and is identified in the order, by terminating the accounts of the subscriber or account holder that are specified in the order. (iii) Such other injunctive relief as the court may consider necessary to prevent or restrain infringement of copyrighted material specified in the order of the court at a particular online location, if such relief is the least burdensome to the service provider among the forms of relief comparably effective for that purpose.{FN77: 17 U.S.C. §512(j)(1)(A)}

Congress was concerned that injunctions not become burdensome for service providers, and it indicated a number of factors to be considered by a court when deciding whether to grant an injunction and in determining its scope: (A) whether such an injunction, either alone or in combination with other such injunctions issued against the same service provider under this subsection, would significantly burden either the provider or the operation of the provider¶s system or network; (B) the magnitude of the harm likely to be suffered by the copyright owner in the digital network environment if steps are not taken to prevent or restrain the infringement; (C) whether implementation of such an injunction would be technically feasible and effective, and would not interfere with access to noninfringing material at other online locations; and (D) whether other less burdensome and comparably effective means of preventing or restraining access to the infringing material are available. {FN78: 17 U.S.C. §512(j)(2)} Finally, Congress made it clear that injunctions were not to be granted without proper notice to a service provider, so that the service provider can determine the true nature of any alleged infringement and contest the issuance of an injunction, except under very exceptional circumstances. Injunctive relief under this subsection shall be available only after notice to the service provider and an opportunity for the service provider to appear are provided, except for orders ensuring the preservation of evidence or other orders having no material adverse effect on the operation of the service provider¶s communications network.

Chapter 3: Copyright of Digital Information
III.B.3. Notice-and-Takedown Procedures

III.B.3.a. Notice To balance the safe harbor protections given service providers, Congress developed noticeand-takedown procedures, detailed in Subsections 512(c)(3), {FN79: 17 U.S.C. §512(c)(3)} 512(f), {FN80: 17 U.S.C. §512(f)} and 512(g). {FN81: 17 U.S.C. §512(g)} These procedures provide an alternative to a copyright owner going to court to get a temporary order requiring a service provider to remove allegedly-infringing material from that service provider¶s system. When an infringing digital work is available on the Internet, time is of the essence in blocking public access to it. If it is not blocked quickly, additional copies can be made at Internet sites all over the world. Even an expedited request for a temporary order blocking the work may take far too long. One thing discussed during the formulation of Section 512 was the idea of a specialized tribunal ± ³cyber magistrates´ ± that could quickly determine if material on the Internet was infringing and order its removal. While that could be done by having administrative law judges in the Copyright Office, since the Copyright Office is under the Library of Congress (which is part of the legislative branch), it was felt that it would be too much of a distortion of the Constitution¶s

separation of powers to have a judicial function performed by an administrative agency within the legislature. Instead, Congress instituted a ³voluntary´ notice-and-takedown system (perhaps less than voluntary, because a service provider has to participate in it in order to take advantage of all the safe harbors except for ³mere conduit´) so that allegedly-infringing material is removed quickly, and then any infringement can be adjudicated in a copyright infringement suit. The notice-and-takedown system starts with a service provider designating an agent to receive notices. The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its Web site in a location accessible to the public, and by providing to the Copyright Office, substantially the following information: (A) the name, address, phone number, and electronic mail address of the agent. (B) other contact information which the Register of Copyrights may deem appropriate. The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory. {FN82: 17 U.S.C. §512(c)(2)} This is done by filing a simple form with the Copyright Office. Once that is done, copyright owners who believe that their works are available on a service provider¶s system can send a notice to that service provider at the address available in an online database on the Copyright Office¶s Web site. Not just any allegation of infringement is a proper notice. Congress spelled out particular information that the notice must contain. To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. {FN83: 17 U.S.C. §512(c)(3)} It is important that the copyright owner clearly identify the copyrighted work that is alleged to be infringing, so that the service provider¶s subscriber can determine whether it is infringing or not, as required in clause (ii). It is equally important that the copyright owner particularly point out where the service provider can find the alleged infringing material. General allegations of infringement are not sufficient, nor does the service provider have to hunt for the material if it has not been properly identified. Congress specified that the notice has to substantially comply with the notice requirements above. Minor errors or omissions do not make the notice defective. The important question is whether the notice is sufficient so that the service provider can locate the information to be taken down without undue effort and without taking down substantially more than is alleged to infringe. The Fourth Circuit, in ALS Scan v. RemarQ Communities, {FN84: 239 F.3d 619, 57 USPQ2d 1996 (4th Cir. 2001)} considered the adequacy of a notice that simply indicated that two newsgroups consisting of many different articles infringed ALS Scan¶s copyrights. In this case, ALS Scan provided RemarQ with information that (1) identified two sites created for the sole purpose of publishing ALS Scan¶s copyrighted works, (2) asserted that virtually all the images at the two sites were its copyrighted material, and (3) referred RemarQ to two web addresses where RemarQ could find pictures of ALS Scan¶s models and obtain ALS Scan¶s copyright information. In addition, it noted that material at the site could be identified as ALS Scan¶s material because the material included ALS Scan¶s ³name and/or copyright symbol next to it.´ We believe that with this information, ALS Scan substantially complied with the notification requirement of providing a representative list of infringing material as well as information reasonably sufficient to enable RemarQ to locate the infringing material. {FN85: 239 F.3d at 625, 57 USPQ2d at 2002} The notice provided by ALS Scan is most likely at the outer limits of meeting the substantial notice requirements, meeting them only because of the particular circumstances of the alleged infringement. The allegedly-infringing material was in two newsgroups ± ³alt.als´ and ³alt.binaries.pictures.erotica.als´ ± whose names themselves indicate that they were related to ALS Scan¶s works. Had a copyright owner made an allegation of infringing material in a more general newsgroup ± say, ³misc.int-property´ ± the substantial identification of the allegedly-infringing works would have to specify the particular postings in the newsgroup. Also, because ALS Scan indicated that the allegedly-infringing images contained its name and copyright notice and furnished the service provider with a way to confirm that an image was one of ALS Scan¶s, the Fourth Circuit felt that the spirit of the requirement of clause (ii) to identify a particular work or give a list of representative works was substantially met. That would not be the case, for example, if the allegedly-infringing works, such as MP3 files on a music-sharing system, had not contained a copyright notice. Clause (v) requires the person giving notice to have ³a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law´ and to state that in the notice. Included within ³not authorized by . . . the law´ includes uses that are permitted by the various sections of the Copyright Act, including fair use.

Sometimes. shall be liable for any damages. or (2) that material or activity was removed or disabled by mistake or misidentification. no matter how insubstantial.C. §1008} In addition. that service provider must expeditiously remove or block access to the allegedly-infringing material. service providers. A notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent. and Internet users. or 512(d) (information location tools) knows that its system has infringing material. including costs and attorneys¶ fees. incurred by the alleged infringer.3. {FN87: 17 U. or by a service provider.C.´ The second part of the statement must be made ³under penalty of perjury. Rep. That knowledge can come from a proper notice from the copyright owner.Finally. 105-190 at 49} III. §512(f)} The subscriber and the service provider can both sue the content owner making the notice that misrepresents that the material was infringing. However. and recover not only their damages but also all costs of their suit including their attorneys¶ fees. would provide knowledge to the service provider of the alleged infringement and require takedown to remain in the safe harbor. Section 512(f) establishes a civil liability when there is any misrepresentation in a notice. a notice from a copyright owner falls short of the requirements for a proper notice. Congress made it clear why this provision was included in Section 512: This subsection is intended to deter knowingly false allegations to service providers in recognition that such misrepresentations are detrimental to rights holders. .S. a service provider cannot just ignore a faulty notice. or guess that something may be an infringement. or in replacing the removed material or ceasing to disable access to it.S.S. clause (vi) requires that a statement must be included ³that the information in the notification is accurate´ and ³that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.B. {FN89: 17 U. Takedown Once a service provider wanting to avail itself of the safe harbors of 512(b) (system caching). §512(c)(3)(B)(i)} If that were not the rule. That notice does not give the service provider either actual knowledge of the infringement or awareness of facts or circumstances that suggest infringement. No. thereby gutting the notice requirements.b. Any person who knowingly materially misrepresents under this section² (1) that material or activity is infringing. 512(c) (information residing on systems or networks at the direction of users).´ {FN86: See 18 U.C. It is not necessary for a service provider to police its users. by any copyright owner or copyright owner¶s authorized licensee. {FN88: Sen. as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing. who is injured by such misrepresentation. or when the service provider is aware of facts or circumstances from which infringing activity is apparent. then it could be argued that any notification.

§512(g)(2)(C)} In other words. A service provider shall not be liable to any person for any claim based on the service provider¶s good faith disabling of access to.B. {FN92: 17 U.´ Then the service provider replaces the removed material and ceases disabling access to it not less than 10. clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A). and if the subscriber contests the takedown.S. {FN91: 17 U.S. a service provider is not liable to its subscribers because of the removal or accessblocking when it is done in good faith because it has received a proper notice or knows on its own that the material is infringing. That provides the copyright owner time to file an infringement suit and get a temporary injunction ordering the continued removal of. or remove.3. the allegedly-infringing material. or removal of. {FN90: 17 U. it is necessary that it ³takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material´ and respond to a counter notification from the subscriber whose material was taken down by sending the copyright owner who originally filed the notice a copy of the counter notification. business days following receipt of the counter notice. the alleged infringing material. Rep. but insufficient protections for third parties whose material would be taken down.c. The put back procedures were added as an amendment to this title in order to address the concerns of several members of the Committee that other provisions of this title established strong incentives for service providers to take down material. and (iv) of subparagraph (A). or removal of.S. §512(c)(3)(B)(ii)} III. §512(g)(1)} Note that the liability exclusion covers only the ³disability of access to. must restore the material within 14 business days. informing him that the service provider ³will replace the removed material or cease disabling access to it in 10 business days. (iii). Put-back In general. regardless of whether the material or activity is ultimately determined to be infringing. or blockage of access to. particularly material that does not infringe.C.C. unless that is necessary to disable access to.C. material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent.´ It does not sanction a wholesale removal of a subscriber¶s material. No. nor more than 14. 105-190 at 50} . unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider¶s system or network. For a service provider to benefit from that provision. material or activity claimed to be infringing. the service provider must notify the subscriber of any takedown.In a case in which the notification that is provided to the service provider¶s designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii). {FN93: Sen.

While the service provider has to make a reasonable effort to notify the user of any material taken down. {FN96: 17 U. The Committee intends that ³reasonable steps´ include. by any copyright owner or copyright owner¶s authorized licensee. Nor does the Committee intend to create any right on the part of subscribers who submit falsified information in their postings or subscriptions to complain if a service provider relies upon the information submitted by the subscriber. or in replacing the removed material or ceasing to disable access to it. and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located. Section 512(f) establishes a civil liability when there is any misrepresentation in a notice: Any person who knowingly materially misrepresents under this section² (1) that material or activity is infringing. for any judicial district in which the service provider may be found. and telephone number. or if only the subscriber¶s name is identified in the posting. there are specific requirements for the counter notification: To be effective under this subsection. for example.S. (C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled. sending an e-mail notice to an e-mail address associated with a posting. shall be liable for any damages. (B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled. (D) The subscriber¶s name. §512(f)} Chapter 3: Copyright of Digital Information .C. 105-190 at 50} Similar to the specific requirements for a copyright owner¶s notice. extraordinary effort is not required. including costs and attorneys¶ fees.C. or by a service provider. or if the subscriber¶s address is outside of the United States. as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing. §512(g)(3)} Again. incurred by the alleged infringer. sending an e-mail to an e-mail address that the subscriber submitted with its subscription. {FN94: Sen. and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.S. who is injured by such misrepresentation. Rep. {FN95: 17 U. a counter notification must be a written communication provided to the service provider¶s designated agent that includes substantially the following: (A) A physical or electronic signature of the subscriber. or (2) that material or activity was removed or disabled by mistake or misidentification. No. The Committee does not intend that this subsection impose any obligation on service providers to search beyond the four corners of a subscriber¶s posting or their own records for that subscriber in order to obtain contact information. address.

§512(a)} . routing. but also providers of ³of online services or network access. For example. routing. They are simply serving as conduits for carrying the communications of others. and (5) the material is transmitted through the system or network without modification of its content.S. (1) the transmission of the material was initiated by or at the direction of a person other than the service provider. {FN97: 17 U. or providing connections for material. routing. These requirements make it clear that the service provider is simply carrying material for another and is not exercising any control over the material other than trying to get it to its final destination. No. routing. Mere Conduits for Others¶ Communications Subsection (a). (2) the transmission. routing. not the originators or recipients of the communications. (4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients. Rep. and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission. routing. §512(k)(1)(A)} In contrast. (3) the service provider does not select the recipients of the material except as an automatic response to the request of another person. or providing connections´ and when five specific requirements that describe the nature of a mere conduit are met.C. many intermediate and transient copies of the information may be made in routers and servers along the way. alter.III. in the course of moving packets of information across digital online networks. 105-190 at 41} This safe harbor applies when a service provider is ³transmitting. {FN99: Sen.S. of material of the user¶s choosing. Congress provided a restricted definition for mere conduit service providers: an entity offering the transmission. or the operator of facilities therefore.C.B. not a copy made or stored at the points where the transmission is initiated or received. service providers for all the other safe harbor provisions include not only the mere conduit service providers. or by reason of the intermediate and transient storage of that material in the course of such transmitting. or providing connections for.4. {FN100: 17 U. provision of connections. material through a system or network controlled or operated by or for the service provider. Such copies are created as an automatic consequence of the transmission process. In this context. or providing of connections for digital online communications.C.S. covers copies that must necessarily be made during digital communications. this safe harbor applies to service providers transmitting. ³intermediate and transient´ refers to such a copy made and/or stored in the course of a transmission. the ³mere conduit´ provision. or storage is carried out through an automatic technical process without selection of the material by the service provider. or provision of connections. or save the material in the communications.´ {FN98: 17 U. between or among points specified by a user. without modification to the content of the material as sent or received. and covers only intermediate carriers of the communications. §512(k)(1)(B)} As the Senate Judiciary Committee explained. They must not select. and some forms of intermediate and transient storage of material in the course of performing these functions.

so the only reasonable relief is the blocking of future transmissions by the actual infringer. and other transient copies that occur en route. or provision of connections. by terminating the accounts of the subscriber or account holder that are specified in the order.´ However. The term ³automatic response to the request of another´ is intended to encompass a service provider¶s actions in responding to requests by a user or other networks. such as requests to forward e-mail traffic or to route messages to a mailing list agent (such as a Listserv) or other discussion group. service provider caching. an Internet location tool. Instead the . routing.The Senate Judiciary Committee elaborated on these provisions: The Committee intends the term ³selection of the material´ in subsection (a)(2) to reflect an editorial function of determining what material to send. {FN101: Sen. Such copying is addressed in subsection (b). the term does not include copies made by a service provider for the purpose of making the material available to other users. Rep. storage of a web page in the course of transmission to a specific user. (ii) An order restraining the service provider from providing access. identified. recognizing the requirement of the safe harbor that any copies not be available ³for a longer period than is reasonably necessary for the transmission. 105-190 at 42} Unlike the other safe harbors. such as copies made on a router or mail server.S.5. Service Provider Caching Subsection (b). the fact that an illegal intruder might be able to obtain access to the material would not make it ordinarily accessible to third parties. a radio station). Neither. exempts service providers¶ making local copies of Web pages so that the pages don¶t have to be fetched repeatedly over the Internet. store and forward functions. For example. {FN102: 17 U.B.C. any injunction directed at a ³mere conduit´ service provider is limited by subsection (j) to one or both of the following forms: (i) An order restraining the service provider from providing access to a subscriber or account holder of the service provider¶s system or network who is using the provider¶s service to engage in infringing activity and is identified in the order. or another network. or the specific sources of material to place online (e. would occasional access in the course of maintenance by service provider personnel. Chapter 3: Copyright of Digital Information III. §512(j)(1)(B)} Again. this represents Congress¶s understanding that the infringing material passing along the conduit remains only for a limited time and is not generally accessible by others. online location outside the United States. to a specific. The term ³ordinarily accessible´ is intended to encompass stored material that is routinely accessible to third parties. nor access by law enforcement officials pursuant to subpoena make the material ³ordinarily accessible. No. The Committee intends subsection (a)(4) to cover copies made of material while it is en route to its destination. rather than ³an automatic technical process´ of responding to a command or request. such as one from a user.. for example. this subsection contains no provision for giving notice to the communications provider that leads to the removal of allegedly-infringing material. by taking reasonable steps specified in the order to block access.´ In addition.g.

C. The safe harbor applies when a service provider is providing ³intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider´ and: (A) the material is made available online by a person other than the service provider. It is important to note that this safe harbor applies only to the caching done by a service provider and not to that done by an end user.C. and (C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who. {FN103: 17 U. . No. §512(b)(2)(B)} This means that a service provider must comply with any standard cache control protocols. But the caching safe harbor imposes some conditions on the caching system: The material described in paragraph (1) is transmitted to the subsequent users described in paragraph (1)(C) without modification to its content from the manner in which the material was transmitted from the person described in paragraph (1)(A) {FN104: 17 U. Rep. Any cached Web pages or pictures on a user¶s machine would be addressed by fair use. must not prevent the returning of information to the page creator about page usage. must honor password or other access controls. if the conditions set forth in paragraph (2) are met. Service providers must honor any cache control requests provided by the communications protocol being used so that pages are not cached longer than desired by their creators. request access to the material from the person described in subparagraph (A). reloading.S. so that a service provider who caches material from another site does not change the advertising associated with the cached material on the originating site without authorization from the originating site. except that this subparagraph applies only if those rules are not used by the person described in paragraph (1)(A) to prevent or unreasonably impair the intermediate storage to which this subsection applies {FN106: 17 U. and then only when the alleged infringing material is not supplied or used by the service provider or its employees.S. §512(b)(2)(A)} Congress recognized that a true cache holds just a temporary copy of the material so that it can be supplied to a user requesting it without having to fetch a new copy over the network. if at all. Section 512 provides safe harbors only to service providers.C. or other updating of the material when specified by the person making the material available online in accordance with a generally accepted industry standard data communications protocol for the system or network through which that person makes the material available. and must remove allegedly-infringing material if the material has been removed from its originating site. such as those specified in the HyperText Transfer Protocol (HTTP) that handles Web pages. that is a straightforward description of how a cache operated by a service provider functions. for example.S.cached copy is sent to their users. 105-190 at 43} The second requirement under the system caching safe harbor is that the service provider described in paragraph (1) complies with rules concerning the refreshing. The Committee intends that this restriction apply. §512(b)(1)} Again. (B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person. {FN105: Sen. after the material is transmitted as described in subparagraph (B).

S. . The technology must: (i) not significantly interfere with the performance of the storing provider¶s system or network or with intermediate storage of the material. 105-190 at 43} The fourth requirement for the safe harbor is that the person receiving the cached information must be entitled to receive it directly. (ii) be consistent with generally accepted industry standard communications protocols applicable to Internet and online communications. .C. . But a content provider can¶t use the cache controls in an unreasonable fashion. {FN107: 17 U.C. and (iii) not extract information beyond that which would have been obtained had the subsequent users obtained access to the material directly on the originating site. such as user ³hit´ counts. or to say that information should not be cached. . Rep. such as a condition based on payment of a fee or provision of a password or other information. A cache should not provide a way of bypassing an access control system for the material. The Senate Judiciary Committee indicated that this requirement provides that the service provider shall not interfere with the ability of certain technology that is associated with the work by the operator of the originating site to return to the originating site information. that would have been available to the site had it not been cached. No. the service provider permits access to the stored material in significant part only to users of its system or network that have met those conditions and only in accordance with those conditions. the only hits that would be recorded would be those that read the page in a service provider¶s cache. {FN109: 17 U. §512(b)(2)(C)} This requirement recognizes that some Web pages may contain advertising and the content provider is reimbursed by the advertiser based on the number of ³hits´ (accesses by users) to the page. {FN108: Sen. such as those approved by the Internet Engineering Task Force and the World Wide Web Consortium. If the cache simply returned the page to the user. (ii) is consistent with generally accepted industry standard communications protocols.Content providers use these rules to assure that outdated versions of a Web page are not supplied to a user from a cache. and (iii) does not extract information from the provider¶s system or network other than the information that would have been available to the person described in paragraph (1)(A) if the subsequent users had gained access to the material directly from that person. §512(b)(2)(D)} Finally. The third safe harbor requirement is that: the service provider does not interfere with the ability of technology associated with the material to return to the person described in paragraph (1)(A) the information that would have been available to that person if the material had been obtained by the subsequent users described in paragraph (1)(C) directly from that person. the safe harbor imposes its own notice-and-takedown requirement. If the person described in paragraph (1)(A) has in effect a condition that a person must meet prior to having access to the material.S. except that this subparagraph applies only if that technology² (i) does not significantly interfere with the performance of the provider¶s system or network or with the intermediate storage of the material. The provision encourages groups that set the standards for the Internet to come up with some way of accurately returning information about the usage of cached information to the content provider.

users would not be able to find the information they need. This safe harbor is not available to vicarious infringers. It is precisely the human judgment and editorial discretion exercised by these cataloguers which makes directories valuable. the material that is claimed to be infringing upon notification of claimed infringement as described in subsection (c)(3). {FN111: Sen. Congress noted the importance to the operation of the Internet of information locating tools: Information location tools are essential to the operation of the Internet. If a court has told you to remove information from your Web site because it likely infringes somebody¶s copyright. §512(b)(2)(E)} Congress recognized that the notice-and-takedown for a cached copy should be tied to the notice-and-takedown of the copy that was cached. or a court has ordered that the material be removed from the originating site or that access to the material on the originating site be disabled. and Internet directories such as Yahoo!¶s in particular.If the person described in paragraph (1)(A) makes that material available online without the authorization of the copyright owner of the material. No. or the party submitting the notification has obtained a court order for it to be removed from the originating site and notifies the service provider¶s designated agent of that order. by . Directories and Links Subsection (d) covers directories and other ways of locating information on the World Wide Web. This proviso has been added to subsection (b)(5) because storage under subsection (b) occurs automatically and unless infringing material has been removed from the originating site. this take down obligation does not apply unless the material has previously been removed from the originating site. However.7. This provision is intended to promote the development of information location tools generally. without them. The Yahoo! directory. Directories such as Yahoo!¶s usually are created by people visiting sites to categorize them.B. the service provider responds expeditiously to remove. or disable access to. And you can¶t remain in the safe harbor if you link to information that you know or reasonably suspect is infringing. currently categorizes over 800.000 different users visit each month. {FN110: 17 U.000 online locations and serves as a ³card catalogue´ to the World Wide Web. the infringing material would ordinarily simply be re-cached.S. for example.000. Rep. you can¶t replace it with a pointer to the information stored on another Web site and expect to remain in this safe harbor. Directories are particularly helpful in conducting effective searches by filtering out irrelevant and offensive material. which over 35. 105-190 at 43} Chapter 3: Copyright of Digital Information III. except that this subparagraph applies only if± (i) the material has previously been removed from the originating site or access to it has been disabled.C. and (ii) the party giving the notification includes in the notification a statement confirming that the material has been removed from the originating site or access to it has been disabled or that a court has ordered that the material be removed from the originating site or that access to the material on the originating site be disabled.

a reference to other online material such as a list of recommended sites. The term information location tools includes. responds expeditiously to remove.S. in a case in which the service provider has the right and ability to control such activity. {FN115: Sen. (B) in the absence of such actual knowledge. the material that is claimed to be infringing or to be the subject of infringing activity. and not simply because the provider viewed an infringing site during the course of assembling the directory. without regard to whether copyright infringement is technically deemed to occur at that location or at the location where the material is received. or (C) upon obtaining such knowledge or awareness. {FN116: 17 U. the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link. Rep. for purposes of this paragraph. a pointer that stands for an Internet location or address. or disable access to. acts expeditiously to remove. that is to be removed or access to which is to be disabled.establishing a safe-harbor from copyright infringement liability for information location tool providers if they comply with the notice and takedown procedures and other requirements of subsection (d). or a hypertext link which allows users to access material without entering its address. No. and (3) upon notification of claimed infringement as described in subsection (c)(3). Absent actual knowledge. or disable access to. except that. and is not aware of facts or circumstances from which infringing activity in that location is apparent. to material or activity claimed to be infringing. awareness of infringement as provided in subsection (d) should typically be imputed to a directory provider only with respect to pirate sites or in similarly obvious and conspicuous circumstances. and information reasonably sufficient to permit the service provider to locate that reference or link. A service provider is entitled to the liability limitations of subsection (d) if it: (1) lacks actual knowledge of infringement on the other site. 105-190 at 49} The requirements for the safe harbor are met if the service provider: (1)(A) does not have actual knowledge that the material or activity is infringing. the material. §512(d)} The Senate Judiciary Committee discussed these requirements: Subsection (d) applies to referring or linking users to an online location containing infringing material or infringing activity using information location tools. (2) does not receive a financial benefit directly attributable to the infringing activity. is not aware of facts or circumstances from which infringing activity is apparent. (2) does not receive a financial benefit directly attributable to the infringing activity . The reference to ³infringing activity´ is intended to refer to wrongful activity that is occurring at the location to which the link or reference refers. for example: a directory or index of online sites or material such as a search engine that identifies pages by specified criteria.C. Subsection (d) incorporates the notification and take down structure of subsection (c) and applies it to the provision of references and links to infringing sites. The knowledge or awareness standard should not be applied in a manner which would create a disincentive to the development of directories which involve human intervention.

a ³pirate´ site of the type described below. the copyright owner could show that the provider was aware of facts from which infringing activity was apparent if the copyright owner could prove that the location was clearly. public performance or public display. where the service provider has the right and ability to control the infringing activity. books. software. among other requirements.´ Under this standard. if the photograph was still protected by copyright. and if the use was not licensed. Such pirate directories refer Internet users to sites that are obviously infringing because they typically use words such as ³pirate. the information submitted by the complaining party under subsection (c)(3)(A)(iii) is identification of the reference or link to infringing material or activity. A question has been raised as to whether a service provider would be disqualified from the safe harbor based solely on evidence that it had viewed the infringing Internet site. Like the information storage safe harbor in section 512(c). whether the use was licensed. there is concern that online directories prepared by human editors and reviewers. where sound recordings. a directory provider would not be similarly aware merely because it saw one or more well known photographs of a celebrity at a site devoted to that person. at the time the directory provider viewed it. This is an important concern because such online directories play a valuable role in assisting Internet users to identify and locate the information they seek on the decentralized and dynamic networks of the Internet. The important intended objective of this standard is to exclude sophisticated ³pirate´ directories ± which refer Internet users to other selected Internet sites where pirate software. If so.on the site. in the absence of such actual knowledge. to determine whether the photograph was still protected by copyright or was in the public domain. Absent such ³red flags´ or actual knowledge.´ ³bootleg. but it would not qualify for the safe harbor if it had turned a blind eye to ³red flags´ of obvious infringement. movies. movies or books ere available for unauthorized downloading. and information reasonably sufficient to permit the service provider to locate that reference or link.´ or slang terms in their uniform resource locator (URL) and header information to make their illegal purpose obvious to the pirate directories . whether it was permitted under the fair use doctrine. The provider could not be expected. Section 512(d) provides a safe harbor that would limit the liability of a service provider that refers or links users to an online location containing infringing material or activity by using ³information location tools. it is ³not aware of facts or circumstances from which infringing activity is apparent. However.´ such as hyperlink directories and indexes. it ³does not have actual knowledge that the material or activity is infringing´ or. The notification procedures under subsection (d) follow those set forth in subsection (c). and music can be downloaded or transmitted--from the safe harbor. in an unintended number of cases and circumstances. who view and classify various Internet sites. during the course of its brief cataloguing visit. a service provider would qualify for this safe harbor if. a service provider would have no obligation to seek out copyright infringement. For instance. and (3) responds expeditiously to remove or disable the reference or link upon receiving a notification of claimed infringement as described in subsection (c)(3). would be denied eligibility to the information location tools safe harbor.

Rep. monitor its service. employees who . {FN118:17 U. the ³red flag´ test in section 512(d) strikes the right balance. for the purposes of section 512. however. a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider¶s system or network who are repeat infringers. {FN119: Sen. §512(i)(1)(A)} As explained by the Senate Judiciary Committee: First.and other Internet users. then seeing it may be all that is needed for the service provider to encounter a ³red flag. First. and informs subscribers and account holders of the service provider¶s system or network of. 105-190 at 47-49} Chapter 3: Copyright of Digital Information III.´ A provider proceeding in the face of such a red flag must do so without the benefit of a safe harbor.C. and thus evidence that they have viewed the infringing site may be all that is available for copyright owners to rebut their claim to a safe harbor. In addition. the service provider is expected to adopt and reasonably implement a policy for the termination in appropriate circumstances of the accounts of subscribers of the provider¶s service who are repeat online infringers of copyright. Pirate directories do not follow the routine business practices of legitimate service providers preparing directories. an Internet site is obviously pirate. These are detailed in subsection (i). The common-sense result of this ³red flag´ test is that on-line editors and catalogers would not be required to make discriminating judgments about potential copyright infringement. or make difficult judgments as to whether conduct is or is not infringing. 105-190 at 52} By ³subscribers. {FN117: Sen.S. The Committee recognizes that there are different degrees of online copyright infringement. from the inadvertent to the noncommercial.8. No. Examples include students who are granted access to a university¶s system or network for digital online communications. Other Safe Harbor Requirements In addition to the specific requirements of each safe harbor. Because the infringing nature of such sites would be apparent from even a brief and casual viewing. there are some general requirements that a service provider must meet to qualify for any of the safe harbors. However. If. a service provider must have adopted and reasonably implemented. No. those who repeatedly or flagrantly abuse their access to the Internet through disrespect for the intellectual property rights of others should know that there is a realistic threat of losing that access. the Committee does not intend this provision to undermine the principles of [the protection of privacy of subsection (m)] or the knowledge standard of [notice-and-takedown] subsection (c) by suggesting that a provider must investigate possible infringements. In this way. even if no formal subscription agreement exists. to the willful and commercial.B.´ the Committee intends to include account holders who are parties with a business relationship to the service provider that justifies treating them as subscribers. safe harbor status for a provider that views such a site and then establishes a link to it would not be appropriate. Rep.

and (C) do not impose substantial costs on service providers or substantial burdens on their systems or networks. removing. §512(i)(1)(B)} A standard technical measure means technical measures that are used by copyright owners to identify or protect copyrighted works and² (A) have been developed pursuant to a broad consensus of copyright owners and service providers in an open. {FN120: Sen. interindustry discussions to agree upon and implement the best technological solutions available to achieve these goals. The Committee believes that technology is likely to be the solution to many of the issues facing copyright owners and service providers in this digital age. (B) are available to any person on reasonable and nondiscriminatory terms. we have included [the subsection]. and multi-industry and the measures developed otherwise conform to the requirements of the definition of standard technical measures. or (2) a service provider gaining access to.S. or household members with access to a consumer online service by virtue of a subscription agreement between the service provider and another member of that household. 105-190 at 52} Chapter 3: Copyright of Digital Information . multi-industry standards process. voluntary. A number of recognized open standards bodies have substantial experience with Internet issues. The Committee anticipates that these provisions could be developed both in recognized open standards bodies or in ad hoc groups. §512(m)} The second requirement is that the service provider ³accommodates and does not interfere with standard technical measures. No. 105-190 at 52 n. The Committee strongly urges all of the affected parties expeditiously to commence voluntary. as long as the process used is open. fair. which is intended to encourage appropriate technological solutions to protect copyrighted works. Rep. fair. fair. Congress was aware of the efforts toward the development of effective access control and rights management systems.C. [The subsection] is explicitly limited to ³standard technical measures´ that have been developed pursuant to a broad consensus of both copyright owners and service providers in an open. {FN121: 17 U. multi-industry standards process. and supported them legislatively in another portion of the DMCA.have access to their employer¶s system or network. except to the extent consistent with a standard technical measure complying with the provisions of subsection (i). 24} The privacy requirements of Subsection (m) are as follows: Nothing in this section shall be construed to condition the applicability of subsections (a) through (d) on² (1) a service provider monitoring its service or affirmatively seeking facts indicating infringing activity. voluntary.S. No. voluntary. or disabling access to material in cases in which such conduct is prohibited by law. For that reason.C. {FN123: Sen.´ {FN122: 17 U. Rep. It would seem paradoxical to support technological measures for copyright infringement control in one section of the law while allowing service providers who interfere with the same technological measures to benefit from the safe harbor provisions.

word and action²is at the core of academic freedom. may or may not be liable for acts of copyright infringement by faculty members or graduate students in certain circumstances.S. the limitations on injunctive relief contained in subsections (j)(2) and (j)(3). Ordinarily. if² (A) such faculty member¶s or graduate student¶s infringing activities do not involve the provision of online access to instructional materials that are or were required or recommended. a service provider may fail to qualify for the liability limitations in Title II simply because the knowledge or actions of one of its employees may be imputed to it under basic principles of respondeat superior and agency law. (B) the institution has not. which occur when they are ³performing a teaching or research function. received more than 2 notifications described in subsection (c)(3) of claimed infringement by such faculty member or graduate student.9. and (C) the institution provides to all users of its system or network informational materials that accurately describe. which provides special rules for determining whether universities. §512(e)} This provision was not part of the DMCA as passed by either the House or the Senate but was added by the conference committee as it was considering the final form of the bill. This special consideration is embodied in new subsection (e). (2) For the purposes of this subsection. for the purposes of subsections (a) and (b) such faculty member or graduate student shall be considered to be a person other than the institution. and promote compliance with. the actions of university faculty and graduate student teachers and researchers warrant special consideration in the context of this legislation. However. in their capacity as a service provider. When a public or other nonprofit institution of higher education is a service provider.III. Special Rules for Schools Subsection (e) provides special protection for schools if their faculty or student employees are infringing. if certain conditions are met. such . the conferees recognize that the university environment is unique. by not attributing that infringement to the school in many instances. Subsection (e)(1) provides that the online infringing actions of faculty members or graduate student employees. within the preceding 3-year period.B.{FN124: 17 U. For the purposes of subsections (a) and (b) of section 512. Since independence²freedom of thought.C. and such notifications of claimed infringement were not actionable under subsection (f). and when a faculty member or graduate student who is an employee of such institution is performing a teaching or research function.´ will not be attributed to an institution of higher education in its capacity as their employer for purposes of section 512. The special relationship which exists between universities and their faculty members (and their graduate student employees) when they are engaged in teaching or research is different from the ordinary employer-employee relationship. shall apply. and for the purposes of subsections (c) and (d) such faculty member¶s or graduate student¶s knowledge or awareness of his or her infringing activities shall not be attributed to the institution. the laws of the United States relating to copyright. for a course taught at the institution by such faculty member or graduate student. within the preceding 3-year period. but not those in (j)(1).

and for the purposes of subsections (c) and (d) of section 512 the faculty member¶s or graduate student¶s knowledge or awareness of his or her infringing activities will not be attributed to the institution. under paragraph (B) the institution must not have received more than two notifications of claimed infringement with respect to the particular faculty member or particular graduate student within the last three years. The reference to ³providing online access´ to instructional materials includes the use of e-mail for that purpose. paragraph (A) requires that the infringing activities must not involve providing online access to instructional materials that are ³required or recommended´ for a course taught by the infringing faculty member and/or the infringing graduate student within the last three years. First. however. Second. a legitimate scholarly or scientific investigation or inquiry²rather than an activity which is claimed to be research but is undertaken as a pretext for engaging in infringing activity. Third. from time to time. paragraph (C) states that the institution must provide to the users of its system or network ± whether they are administrative employees. or . the additional liability protections contained in subsection (e)(1) do not apply unless the conditions in paragraphs (A) through (C) are satisfied. The phrase ³required or recommended´ is intended to refer to instructional materials that have been formally and specifically identified in a list of course materials that is provided to all students enrolled in the course for credit. Any notification of infringement that gives rise to a cause of action for misrepresentation under subsection (f) does not count for purposes of paragraph (B). the institution will only become potentially liable for the infringing actions of that faculty member or that graduate student.e. the institution may be considered to be on notice of a pattern of infringing conduct by the faculty member or graduate student. this subsection provides no protection against liability for the institution if infringement occurs. If more than two such notifications have been received. Where more than two notifications have previously been received with regard to a particular faculty member or graduate student. the faculty member or graduate student may incidentally and informally bring to the attention of students for their consideration during the course of instruction. for the exemption to apply on the basis of research activity. When the faculty member or the graduate student employee is performing a function other than teaching or research. In addition to the ³teaching or research function´ test. the research must be a genuine academic exercise²i. it is not intended. and the limitation of subsection (e) does not apply with respect to the subsequent infringing actions of that faculty member or that graduate student. faculty. to refer to the other materials which.faculty member or graduate student shall be considered to be a person other than the institution. a faculty member or graduate student is performing a function other than teaching or research when the faculty member or graduate student is exercising institutional administrative responsibilities. Further. or is carrying out operational responsibilities that relate to the institution¶s function as a service provider. For example. when they are performing a teaching or research function and the conditions in paragraphs (A) (C) are met.

A. something that cannot be determined by a mechanism that allows or disallows copying or access. 24 USPQ2d 1561 (9th Cir. whether copying can be done easily with standard hardware and software will seem to many as reasonable guidance. Past Technological Protections The idea that Congress can protect copyrighted works through technology is not new. But copy and access controls can successfully stop some illegal copying and make other copying appear just shady enough so that most people will avoid doing it. Why Laws? Since it is impossible to sue every copyright infringer because of the cost of such suits (and the resentment and backlash they can generate). unless specifically authorized to do so by a cable operator or as may otherwise be specifically authorized by law. . if such a technology-based mechanism could work properly. {FN126: 471 U. Nation Enterprises. in Harper & Row v. 539. This would also avoid messy questions like whether a copy would be permitted as a fair use or not since.S. Congress enacted a general ban on equipment to intercept cable communications: (1) No person shall intercept or receive or assist in intercepting or receiving any communications service offered over a cable system. Why Technology. the dream of entertainment content owners is for the device that can stop any possible infringement using a technology-based access or copy control mechanism. no matter how sophisticated.B. and less intrusive. 1992)} found that the copying of an entire computer program was. Copyright Office in satisfying the condition imposed by paragraph (C). Though the perfect technology-based protection mechanism would be able to protect any work without the need for copyright or other laws. Rep. Such a device will always remain a dream because permissible copying under fair use can¶t possibly be determined by a machine. IV. The Supreme Court. less expensive. {FN125: H. Accolade. 225 USPQ 1073 (1985)} found that the copying of approximately 300 words from a full-length book was not a fair use. No. the institutions to use relevant informational materials published by the U. Protection Through Technology IV. 105796 at 74-75} Chapter 3: Copyright of Digital Information IV.students ± materials that accurately describe and promote compliance with copyright law.S. and anything not permissible would be blocked by the copy control mechanism. The seeming inconsistency between these two decisions stems from how the copy was eventually used. anything permitted by the copy control mechanism would be permissible.R. the addition of a limited law to keep people from distributing devices that circumvent the protection means that the protection mechanism can be simpler. In 1984. In the absence of clear rules in the copyright laws as to what is permissible and what is not for digital works.2d 1510. in Sega v. {FN127: 977 F. concerned about the theft of cable television services. The legislation allows. but does not require. the Ninth Circuit.

or distribute any digital audio recording device or digital audio interface device that does not conform to² (1) the Serial Copy Management System. and acted upon between devices using the system¶s method of serial copying regulation and devices using the Serial Copy Management System. §553(a)} At about the same time. and therefore from wide usage by the public. the term ³assist in intercepting or receiving´ shall include the manufacture or distribution of equipment intended by the manufacturer or distributor (as the case may be) for unauthorized reception of any communications service offered over a cable system in violation of subparagraph (1). bypass. or direct-to-home satellite services. Moreover. or offer or perform any service. or distribute any device. or otherwise circumvent any program or circuit which implements. and most people don¶t do it. §605(e)(4)} Though one can find illegal cable and satellite boxes advertised on the Internet and other places. manufacture. imports. assembles.C. the amount of damage a box manufacturer can do is limited. sells. knowing or having reason to know that the device or equipment is primarily of assistance in the unauthorized decryption of satellite cable programming. In 1992. received. IV. or (3) any other system certified by the Secretary of Commerce as prohibiting unauthorized serial copying. Congress provided similar protection for satellite systems: Any person who manufactures. {FN132: Pub. the provisions have been substantially effective. 4237} had been successful).S. For purposes of all penalties and remedies established for violations of this paragraph. remove. the technology that was driving the Audio Home Recording Act. or other device or equipment. the prohibitions keep such circumvention devices or services out of the mainstream. {FN131: 17 U.C.C. {FN130: 17 U. in whole or in part. shall be fined not more than $500. modifies. or imprisoned for not more than 5 years for each violation.(2) For the purpose of this section. or both. it also becomes visible to law enforcement and will likely be shut down.C. exports. manufacture.000 for each violation. {FN128: 47 U. 106 Stat. because if it becomes too large. {FN129: 47 U. or is intended for any other activity prohibited by subsection (a) of this section.S. 102-563. Because the boxes are not available through mainstream electronics stores but must be purchased in a way that seems shady. Congress mandated for digital recorders: No person shall import. or distributes any electronic. The White Paper . §1002(c)} Again. mechanical. §1002(a)} Congress also prohibited tampering with the mandated copy control mechanism: No person shall import. L.C. the prohibited activity established herein as it applies to each such device shall be deemed a separate violation. (2) a system that has the same functional characteristics as the Serial Copy Management System and requires that copyright and generation status information be accurately sent. deactivate. people are generally aware that purchasing and using them is wrong.S. while there will undoubtedly be people who produce devices that circumvent the mandated copy control mechanism (or would have if digital audio tapes. a system described in subsection (a). the primary purpose or effect of which is to avoid.S.

The tool allows its user to ³avoid. As long as the movie studios are the only ones using CSS. he is arguably not violating the provision. product. as later renamed. http://www. deactivate. the primary purpose or effect of which is to avoid. home movies of a demonstration against copy controls) and protects it using CSS. would actually make the provision worse. having it forbid the distribution of any device that circumvents the access control to another¶s work. But if a person who feels that movies should not have access controls produces a DVD of his own copyrighted material (say. and there was immediate criticism that the anticircumvention provision would allow a content provider to lock up works that were not protected by copyright and prevent fair use. but it is with the authority of the copyright owner.± No person shall. and any DVD player that decodes CSS is an unauthorized circumventor of his access control. or component incorporated into a device or product. For example. Versatile) Disk (DVD). It assumes that a particular access control mechanism is being used only by content providers working together to protect a particular type of content.± No person shall knowingly provide copyright management information that is false. saying that he permits the access to his copyrighted content by using his circumvention program.{FN134: NII White Paper. there is a problem. they can also use it to circumvent CSS¶s protection of movies from the studios. the White Paper {FN133: Intellectual Property and the National Information Infrastructure (³NII White Paper´). The White Paper also proposed protection for rights management systems: (a) False Copyright Management Information. If he also distributes a tool that allows the reading of a CSS-protected DVD with his DVD. non-copyrighted material within the envelope protected by the access control mechanism. without authority of the copyright owner or the law. the non-copyrighted material would be protected by the technology. or otherwise circumvent. The obvious fix to the proposal. bypass. manufacture or distribute any device. remove. there is no problem. or offer or perform any service.gov/web/offices/com/doc/ipnii/ (September 1995)} proposed legislation to address the circumvention of technology protection measures on personal computers and other digital devices: No person shall import. or knowingly publicly distribute or import for public distribution copyright management information that is false. bypass. without the authority of the copyright owner or the law. at least when it is being used to view the home movie. But after users have the tool. (b) Removal or Alteration of Copyright Management Information.In addition to suggesting that the distribution right be extended to include transmissions. mechanism or system which prevents or inhibits the violation of any of the exclusive rights of the copyright owner under section 106. the movie studios protect their works using the Content Scrambling System (CSS) of the Digital Video (or. Appendix 2 at 3} There were no exceptions provided in the White Paper¶s recommendation. or otherwise circumvent´ CSS. (ii) knowingly distribute or import for . any process.uspto. remove. The provision didn¶t prevent a content provider from putting other. Then our hypothetical home movie creator who is using CSS could block the distribution of all DVD players. and since there would be no tools legally available to penetrate that envelope. (i) knowingly remove or alter any copyright management information. But the proposed language also has a conceptual flaw. along with any copyrighted material attached to it to justify the use of the access control mechanism. deactivate. treatment.

they can be used as part of an access control system. The WIPO Copyright Treaty To help pressure Congress to enact legislation protecting access control and rights management systems. (c) Definition. or (iii) knowingly distribute or import for distribution copies or phonorecords from which copyright management information has been removed without authority of the copyright owner or the law. treating works with different notice information differently and thereby allowing a copyright owner to permit copying of the work in certain circumstances. and you want to include it in a criticism of the work.± As used in this chapter. IV. and paste it into your writing. (A ³first-generation´ bit tells the system whether this is an original or a duplicate. the name and other identifying information of the copyright owner. there is a problem regarding the prohibition against the removal of the management information. ³Obligations concerning Technological Measures. primarily because of the lack of exceptions for legitimate behavior. But is there any real difference between deleting the rights management information from a digital work.) So you highlight. no matter how short the quotation? The proposed language doesn¶t recognize that cutting and pasting to quote information is a common thing that writers using word processors do. The resulting WIPO Copyright Treaty was adopted by the Diplomatic Conference responsible for its development on December 20.) While the proposed language seems reasonable. {FN135: NII White Paper. A simple form of rights management information is the ³copyrighted´ bit in the Audio Home Recording Act¶s Serial Copy Management System. ³copyright management information´ means the name and other identifying information of the author of a work. (Or there is something that is exceedingly dumb. But rights management systems can go beyond a simple notice function. Though the legislation proposed by the White Paper was introduced in Congress. copy. the Clinton Administration and the content industry worked for an extension to the Berne Convention. Consider a text document that has associated with it rights management information. 1996. Have you removed the rights management information? It¶s not as if you went to the rights management information and deleted that information from the original work. and such other information as the Register of Copyrights may prescribe by regulation. which indicates whether any copy can be made. Because they can be understood by computer programs. Article 11 of that treaty.distribution copyright management information that has been altered without authority of the copyright owner or the law. terms and conditions for uses of the work. There is one particular paragraph that you think is exceptionally well written and you want to quote it in something you are writing. You bring the document into a word processor or Web browser or whatever is necessary to view it.´ required: Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or . Appendix 2 at 3} A rights management system is essentially an electronic notice that the work is protected by copyright. or only copies from an original copy. it was not adopted.D. and copying all of a digital work except for the rights management information into a new information file? Should any copying from a work with rights management information have to drag along that rights management information. such as this treatise.

± Any person who. places on any article a notice of copyright or words of the same purport that such . which are not authorized by the authors concerned or permitted by law. and all its exceptions including fair use. 11} Clearly. A minimal change to the copyright laws to address Article 11 would have been to simply treat any circumvention of a copy control mechanism as if a copy had been made. ³rights management information´ means information which identifies the work. {FN136: WIPO Copyright Treaty. that it will induce. 12} Again. or with respect to civil remedies having reasonable grounds to know. enable. Then the criminal provisions of Section 506 would apply if the acts were for ³purposes of commercial advantage or private financial gain´ or exceeded the value threshold of $1. or information about the terms and conditions of use of the work. could be applied to see if the circumvention should be treated as an infringement.C. that act could create a rebuttable presumption of willfulness. Art. §106} and therefore is ³permitted by law´ because there is no prohibition against it.000 over 180 days. when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public.S. in respect of their works. Then the developed law of the reproduction right.the Berne Convention and that restrict acts. ³Obligations concerning Rights Management Information. That would cover instances where there might be a question if a fixed intermediate copy has been made. the author of the work. It does not require the banning of circumvention technology or having the distribution of such technology be a violation. {FN138: WIPO Copyright Treaty. import for distribution. The language of the WIPO Copyright Treaty does not require that any implementing language go beyond providing remedies against those who actually circumvent protection mechanisms. such as when the information is decrypted ³on the fly´ and shown on the user¶s television. (ii) to distribute. To bring circumvention better within criminal copyright infringement. with fraudulent intent. The language also does not require that the implementing language address circumvention to access a work when such circumvention is not an infringement. the owner of any right in the work.´ which requires: (1) Contracting Parties shall provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing. the United States copyright laws had to be revised to comply with the WIPO Copyright Treaty. works or copies of works knowing that electronic rights management information has been removed or altered without authority. The only provision of the Copyright Act that was at all related to rights management were two subsections of Section 506. without authority. broadcast or communicate to the public. United States copyright law does not meet the requirements of Article 11 because it provides no protection against circumvention of a technological measure except for any copyright infringement that results during the circumvention. the criminal infringement provision: (c) Fraudulent Copyright Notice. since control of access to a work is not one of the exclusive rights of a copyright owner under Section 106 {FN137: 17 U. (2) As used in this Article. The WIPO Copyright Treaty also contains Article 12. and any numbers or codes that represent such information. Art. facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention: (i) to remove or alter any electronic rights management information without authority.

They outlaw the use and distribution of tools that can get around such protection techniques. The result was the safe harbor limitations to copyright infringement suits against service providers. with the maximum only for the most egregious violations causing millions of dollars in damages. Even the name for the improper act is different ± you ³infringe´ a copyright. (d) Fraudulent Removal of Copyright Notice. codified in Section 512. §506} One approach would be to expand the copyright notice provisions to better address the removal or alteration of rights management information. These provisions are related to. {FN140: 17 U. because the content providers really wanted the WIPO Copyright Treaty. but separate from. it was under the banner of having to ratify and implement the WIPO Copyright Treaty.500. the focus again shifted to having Congress pass legislation to protect copy control and rights management systems.000 and imprisonment of up to ten years for repeat offenses.C. to provide an example to the other countries in the world.person knows to be false. if you circumvent a protection system. The penalties for circumventing a protection measure are much like copyright infringement: civil actions yielding injunctions and monetary damages (either actual or statutory) and criminal penalties with fines up to $1. publicly distributes or imports for public distribution any article bearing such notice or words that such person knows to be false. removes or alters any notice of copyright appearing on a copy of a copyrighted work shall be fined not more than $2. in reality the federal sentencing guidelines limit the penalties. §512} The anticircumvention and rights management provisions are an attempt to support in law reasonable techniques for protecting a copyrighted work. with fraudulent intent. Chapter 3: Copyright of Digital Information IV. with fraudulent intent. But the Clinton Administration and the content owners. shall be fined not more than $2. or who.S.E. Congress added a number of specific exceptions to the DMCA addressing important aspects of the Internet. But this time. copyright. Technological Protections and the DMCA After the adoption of the WIPO Copyright Treaty. because the vast majority of people will not have easy access to the tools that could circumvent the protection. who proposed the language in the White Paper.000.500.´ The penalties for removing such a notice could be expanded to better match the penalties for criminal copyright infringement.± Any person who.S. but you ³violate´ the anticircumvention or rights management provisions. {FN139: 17 U. It would be simple to indicate that any rights management information is a ³notice of copyright appearing on a copy of a copyrighted work. But while that seems draconian. also developed the proposed language for implementing the treaty and did not favor such a minimalist approach.C. you violate the anticircumvention provisions even if your eventual use of the copyrighted work is not an infringement because it is a fair use or falls within another exception. While the Clinton Administration and the content providers proposed anticircumvention and rights management provisions without exceptions for conduct that should not be violations. . It is not necessary for the technique to be invulnerable to all attacks. The Internet service providers were also in a better position. Therefore.

component. deactivate. Section 1201(a)(2) deals with trafficking in things that circumvent any ³technological measure that effectively controls access to a work´ protected by copyright. The Trafficking Provisions Perhaps the most important of the anticircumvention provisions in terms of their actual effect are those outlawing trafficking in circumvention technology. or part thereof. {FN142: 17 U. or (C) is marketed by that person or another acting in concert with that person with that person¶s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title. which addresses only actual circumventions. import. bypass. requires the application of information. and (B) a technological measure ³effectively controls access to a work´ if the measure.While the DMCA was being considered by Congress. to decrypt an encrypted work.´ rather than ³effectively controls access to a work. with the authority of the copyright owner. or part thereof. that² . that: (A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title. provide.C. or a process or a treatment. device.1. to gain access to the work. Chapter 3: Copyright of Digital Information IV. in the ordinary course of its operation. (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title. except for circumvention of a measure that ³effectively protects a right of a copyright owner. device.S. there have been only a few cases brought under it. While future cases will give a clearer interpretation of the DMCA¶s provisions. §1201(a)(3)} Subsection (b) provides prohibition similar to that of Section 1201(a)(2). offer to the public. service. right now the best guidance to understanding them comes from the congressional reports that accompanied the DMCA¶s passage.E. {FN141: 17 U. or otherwise traffic in any technology. product. provide.S. and most of those in instances of high-profile anticircumvention activities. offer to the public. beginning in 1997 and ending with it becoming law in October 1998. While not required by the WIPO Copyright Treaty. or impair a technological measure.C. or otherwise to avoid. §1201(a)(2)} There are a number of terms with special meanings: (A) to ³circumvent a technological measure´ means to descramble a scrambled work. service. But in the over-three-years since its enactment. without the authority of the copyright owner.´ No person shall manufacture. these provisions may be more effective at stopping most unlawful circumventions by limiting the tools available to people than suing a large number of circumventors. product. or otherwise traffic in any technology. No person shall manufacture. remove. many opponents predicted that it would have dire consequences. import. component.

most people get by with an inexpensive lock. and the prohibitions of the statute are applicable. This test. Instead. For example.S. . if unauthorized access to a copyrighted work is effectively prevented through use of a password.S. because there is a law against ³circumventing´ a locked door. and (B) a technological measure ³effectively protects a right of a copyright owner under this title´ if the measure. Rep. restricts. which uses only two bits of control information (one to indicate it is a work to be protected. provides a sufficient basis for clear interpretation. public performance. 105-190 at 11} In fact. in the ordinary course of its operation.(A) is primarily designed or produced for the purpose of circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof. which focuses on the function performed by the technology. or the exercise of other exclusive rights in a work. removing. then the ³effectiveness´ test is met. or otherwise impairing a technological measure. {FN146: Sen. §1201(b)(1)} And again. Instead. bypassing. It applies equally to technologies used to protect access to works whether in analog or digital formats. §1201(b)(2)} The technological measure does not need to be flawless in its protection in order to be protected. as long as the primary purpose of the means was to perform this kind of act. Print 105-6 at 10} Congress indicated that even a simple password control could be an effective technological measure. common-sense approach taken by H. the other indicating that it is an original copy) but is effective since there are no legal digital audio recording devices that don¶t honor the system. deactivating. No. even though an expert could open it with little difficulty. or otherwise limits the exercise of a right of a copyright owner under this title. Judiciary Comm. imagine what your home doors would look like if there were no laws against burglary and you had to use only technology to protect your new. similar definitions for the special terms: (A) to ³circumvent protection afforded by a technological measure´ means avoiding. prevents. like the Audio Home Recording Act¶s Serial Copy Management System. Instead. it would be a violation of this section to defeat or bypass the password and to make the means to do so.R. or (C) is marketed by that person or another acting in concert with that person with that person¶s knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof. the provisions are intended to protect mechanisms that are simple. you want to use the law to allow technological measures that are simple and inexpensive.C. there is no need to protect a technological measure that is so good that it cannot be circumvented. in the ordinary course of its operation. distribution. a technology actually works in the defined ways to control access to a work. The practical. {FN145: H. (B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof. {FN144: 17 U. big-screen television.R. 2281 is that if. As an analogy. or to control copying. {FN143: 17 U.C.

S. §1201(a)(2)} This mean that. Then.S.Not requiring perfect access controls also eliminates a problem that could hurt the adoption of new technologies such as DVDs.S. at 439. all that is necessary is the selling of a component of the patented invention that is ³not a staple article or commodity of commerce suitable for substantial noninfringing use. it is more likely that people would simply not buy a DVD player if they thought that it would play only past releases and not new movies. (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title.C. product. 220 USPQ 665 (1984)} In that case. The ³technology. Just because somebody constructs or distributes something that could circumvent a protection method does not mean that he or she has violated the trafficking provisions. at some later time. a way to crack the protection mechanism is discovered. service. since they are protected with a different mechanism. §271(c)} For contributory infringement. 220 USPQ at 677} The patent act specifically recognizes inducement of infringement {FN150: 35 U. it must rest on the fact that they have sold equipment with constructive knowledge of the fact that their customers may use that equipment to make authorized copies of copyrighted material. 417. component. or (C) is marketed by that person or another acting in concert with that person with that person¶s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.C.S. If there is no law against trafficking in the circumvention method. {FN147: 17 U. {FN149: 464 U. for example. (A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title. Assume that the original DVDs used a protection mechanism that was uncrackable at the time they were introduced. There is no precedent in the law of the copyright for the imposition of vicarious liability on such a theory. Although this continual obsolescence might seem wonderful for DVD player manufacturers. The closest analogy is provided by the patent law cases to which it is appropriate to refer because of the historic kinship between patent law and copyright law. The ³primarily designed or produced´ and ³only limited commercially significant purpose or use´ tests are different from the ³substantial noninfringing use´ that the Supreme Court stated in its 1984 Sony v. But if somebody starts selling the disk block editor by saying how it can be used to circumvent a protection mechanism.S. the Supreme Court imported the ones from the patent statute.C. a disk block editor that can change any bits stored on a hard disk would not normally be a circumvention device because it was written to help with disk administration and repair and not primarily for circumvention. that would run afoul of (C). They would have to purchase a new player (or pay for an upgrade to their existing player) to play the new works.´ This . device. But that means that people who bought original DVD players will not be able to play the new works. {FN151: 35 U. {FN148: 464 U. Universal City Studios decision. because there were no statutory contributory or vicarious infringement provisions in the Copyright Act. the only way for content producers to continue to protect their works is to go to a new protection mechanism for the works sold in the future. or part thereof´ must fall into one of three categories before there is a violation. If vicarious liability is to be imposed on petitioners in this case. §271(b)} and contributory infringement.

Chapter 3: Copyright of Digital Information IV. so it is not necessary to import tests from the patent laws that may be questionable for determining whether something that can be used to circumvent a protection measure has other uses that should allow its distribution. The prohibition against trafficking in a device to circumvent an access control seemed to Congress necessary to prevent a huge loophole in the anticircumvention provisions that would allow the distribution of circumvention devices that contained a warning against using them for copyright infringement.S. 220 USPQ at 678} The problem with using this standard for the trafficking provisions is that there is almost always a substantial noninfringing use because fair use generally permits the quotation of limited portions of a copyrighted work in a new work. Section 1201(a)(2){FN154: 17 U. Indeed. {FN155: 17 U. {FN152: 464 U. Instead. One could access the information in a book by reading it without infringing the copyright on that book. But in both areas the contributory infringement doctrine is grounded on the recognition that adequate protection of a monopoly may require the courts to look beyond actual duplication of a device or publication to the products or activities that make such duplication possible. and it would be strange to prohibit the distribution of a device that doesn¶t perform an illegal activity. But since there was no prohibition against such access. Any effectiveness of the anticircumvention provisions comes from preventing circumvention devices or programs from . does not constitute contributory infringement if the product is widely used for legitimate. §1201(a)(2)} is directed at trafficking in devices used to access a work protected by a technological measure. for example.C. it had not been illegal to access a copyrighted work as long as there was not an infringement associated with that access. Accordingly.S.C. the sale of copying equipment.C. at 442.E.S. Patent law does not have a comparable fair use provision. so its criteria for contributory infringement don¶t have the loophole that exists when the same criteria is applied to copyrighted works. like the sale of other articles of commerce.S. Congress created a new violation as Section 1201(a)(1): No person shall circumvent a technological measure that effectively controls access to a work protected under this title. §1201(b)} which forbids trafficking in devices used to infringe one of the copyright owner¶s exclusive rights.would include. {FN153: 17 U. We recognize there are substantial differences between the patent and copyright laws. Congress explicitly stated the criteria to be considered when deciding whether a person is trafficking in a circumvention device or is promoting a legitimate product. The staple article of commerce doctrine must strike a balance between a copyright holder¶s legitimate demand for effective ± not merely symbolic ± protection of the statutory monopoly. and the rights of others freely to engage in substantially unrelated areas of commerce. §1201(a)(1)(A)} Until then.2. the standard electronic parts that might be used to construct a patented device. Accessing Through Circumvention Unlike Section 1201(b). even though that would be the likely result. unobjectionable purposes. it need merely be capable of substantial noninfringing uses.

news reporting. for limited time periods. Congress addressed this in two ways. who makes a recommendation to the Librarian of Congress after consultation with the Assistant Secretary for Communications and Information of the Department of Commerce. it provided a number of exceptions to the provisions against access and trafficking to address particular circumstances where it felt that the public good would be served. (iv) the effect of circumvention of technological measures on the market for or value of copyrighted works. The ban on using circumvention devices (but not their distribution) was delayed for two years (until October 28. First. and educational purposes.S. and (v) such other factors as the Librarian considers appropriate. Digital works are different from traditional copyrighted works in that intermediate copies are often required to see or hear the work. not from stopping every circumvention device. {FN160: 17 U. teaching. Given the threat of a diminution of otherwise lawful access to works and information. Second. comment. . {FN159: H.being readily available to non-technical people in a way that seems to legitimize them. But Congress was also concerned that people might take advantage of the inability to access material that is protected by a technological measure to improperly protect material.C. detailed in Section 1201(a). and there is a new review every three years. then it is likely that an intermediate plain-text copy of the protected work will be created. the Committee on Commerce believes that a ³fail-safe´ mechanism is required.S. 1993)} if it is without the authorization of the copyright owner and not permitted by law. by which the Librarian of Congress could exempt certain classes of works from the circumvention ban. 105-551 part 2 at 36} The factors to be considered by the Register of Copyrights. This mechanism would monitor developments in the marketplace for copyrighted materials. or research. Any access would be a violation of Section 1201[a][1](A). The creation of what is essentially a new right of copyright owners to control access to technology-protected works is not completely divorced from existing copyright law. (iii) the impact that the prohibition on the circumvention of technological measures applied to copyrighted works has on criticism. No. 2000). preservation. (ii) the availability for use of works for nonprofit archival.S. And that intermediate copy stored in the memory of the computer used to access the work infringes the reproduction right {FN156: See MAI v. 26 USPQ2d 1458 (9th Cir. §1201(a)(1)(A)} and would also be technologically impossible for most people because the trafficking provision of Section 1201(a)(2) {FN158: 17 U. scholarship. such as a capsule description to a court decision. are (i) the availability for use of copyrighted works. If a work is encrypted as part of a technological protection mechanism. §1201(a)(2)} means that there would be no ready source of tools to get around such a technological measure. it provided for a procedure. and protect the whole thing with an access control system. §1201(a)(1)(C)} Classes of works are exempted by the Librarian of Congress for a three-year period.2d 511. {FN157: 17 U. Rep. For example. if necessary to prevent a diminution in the availability to individual users of a particular category of copyrighted materials.C. and allow the enforceability of the prohibition against the act of circumvention to be selectively waived.R. to allow for the first review. a content provider might add a small copyrighted portion to a work in the public domain. Peak. 991 F.C.

if: (i) The information derived from the security testing is used primarily to promote the security of the owner or operator of a computer. or computer network. which would be a violation of section 1201(b). For more information about these exemptions.copyright. when circumvention is accomplished solely for the purpose of good faith testing for. (iii) Noncommercial videos. and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances: (i) Educational uses by college and university professors and by college and university film and media studies students. that enable used wireless telephone handsets to connect to a wireless telecommunications network. in the form of firmware or software. and (6) Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book¶s read-aloud function or of screen readers that render the text into a specialized format. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace. and (ii) The information derived from the security testing is used or maintained in a manner that does not facilitate copyright infringement or a violation of applicable law. (4) Video games accessible on personal computers and protected by technological protection measures that control access to lawfully obtained works. see: http://www. (5) Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. the fourth cycle completed with the following exemptions: (1) Motion pictures on DVDs that are lawfully made and acquired and that are protected by the Content Scrambling System when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment. where circumvention is accomplished for the sole purpose of enabling interoperability of such applications. It does not provide an exemption for the provision of a tool used for such circumvention. (2) Computer programs that enable wireless telephone handsets to execute software applications. when they have been lawfully obtained. It must be remembered that the exemptions are only for the circumvention of an access control mechanism covered by section 1201(a)(1). (ii) Documentary filmmaking. when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network. (3) Computer programs. nor for circumvention that results in infringement. which could be a violation of section 1201(a)(2). computer system. with computer programs on the telephone handset.In July 2010. and the proceedings leading up to them. or correcting security flaws or vulnerabilities. investigating.gov/1201/ .

Chapter 3: Copyright of Digital Information
IV.E.3. Distinction From Copyright

It is important to understand that although the anticircumvention and rights management provisions of the DMCA are closely related to copyright, in that they apply to works protected by copyright, but they are separate from copyright law (except for being codified in the same title of the United States Code). Even the words used to characterize the unlawful acts are different ± you ³infringe´ a copyright, but ³violate´ the anticircumvention or rights management provisions. Congress made it clear that it didn¶t intend these provisions, and the case law that develops from them, to affect the copyright statutes and their case law. (1) Nothing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title. (2) Nothing in this section shall enlarge or diminish vicarious or contributory liability for copyright infringement in connection with any technology, product, service, device, component, or part thereof. {FN162: 17 U.S.C. §1201(c)}
IV.E.4. Fair Use

At the time the anticircumvention provisions were being debated, there was concern that they would negate fair use of a copyrighted work, because if you cannot access the underlying copyrighted work without violating the anticircumvention provisions, you can¶t make a fair use of the work. But if you allow circumvention when the use is fair, there is no way to block the distribution of circumvention devices, since everybody selling them would say that they are to be used only for noninfringing activities (and wink when they say it). The anticircumvention provision does not negate fair use of material that is protected by an access control mechanism. While it may stop a creator of a new work from copying from the protected work with a couple of clicks of a mouse, it can¶t stop that creator from retyping the passage. The Second Circuit, in Universal City Studios v. Corley, {FN163:273 F.3d 429, 60 USPQ2d 1953 (2d Cir. 2001)} stated: The Appellants have provided no support for their premise that fair use of DVD movies is constitutionally required to be made by copying the original work in its original format. Their examples of the fair uses that they believe others will be prevented from making all involve copying in a digital format those portions of a DVD movie amenable to fair use, a copying that would enable the fair user to manipulate the digitally copied portions. One example is that of a school child who wishes to copy images from a DVD movie to insert into the student¶s documentary film. We know of no authority for the proposition that fair use, as protected by the Copyright Act, much less the Constitution, guarantees copying by the optimum method or in the identical format of the original. Although the Appellants insisted at oral argument that they should not be relegated to a ³horse and buggy´ technique in making fair use of DVD movies, the DMCA does not impose even an arguable limitation on the opportunity to make a variety of traditional fair uses of DVD movies, such as commenting on their content, quoting excerpts from their screenplays, and even recording portions of the video images and sounds on film or tape by pointing a camera, a camcorder, or a microphone at a monitor as it displays

the DVD movie. The fact that the resulting copy will not be as perfect or as manipulable as a digital copy obtained by having direct access to the DVD movie in its digital form, provides no basis for a claim of unconstitutional limitation of fair use. A film critic making fair use of a movie by quoting selected lines of dialogue has no constitutionally valid claim that the review (in print or on television) would be technologically superior if the reviewer had not been prevented from using a movie camera in the theater, nor has an art student a valid constitutional claim to fair use of a painting by photographing it in a museum. Fair use has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user¶s preferred technique or in the format of the original. {FN164:273 F.3d at 459, 60 USPQ2d at 1973-1974} In United States. v. Elcom, {FN165: 203 F.Supp.2d 1111, 62 USPQ2d 1736 (N.D. Cal. 2002)} a recent district court decision regarding the criminal liability of a Russian company that was distributing a program for circumventing the protection mechanism for Adobe electronic books, the trial judge (who had also written the decision in the landmarkNetcom case {FN166: 907 F.Supp. 1361, 37 USPQ2d 1545 (N.D. Cal. 1995)} as well as a number of other computertechnology-related cases) reached the same conclusion as the Second Circuit: that the DMCA does not eliminate fair use, although it might make it less convenient. He also upheld the DMCA against a number of constitutional and other challenges. Any restrictions imposed by technological measures supported by the DMCA are unlikely to prevent the creation of works for ³criticism, comment, news reporting, teaching, scholarship, or research´ {FN167: See 17 U.S.C. §107} that are transformative rather than simply copies, held to be a touchstone for fair use by the Supreme Court in Campbell v. Acuff-Rose Music. {FN168: 510 U.S. 569, 29 USPQ2d 1961 (1994)} The creation of a transformative work that is truly a fair use is not an infringement of copyright, and therefore does not run afoul of Section 1201(b) {FN169: 17 U.S.C. §1201(b)} even if a protection mechanism is circumvented. And, since ³to invoke the fair use exception, an individual must possess an authorized copy of a literary work,´ {FN170: Atari v. Nintendo, 975 F.2d 832, 843, 24 USPQ2d 1015, 1024 (Fed. Cir. 1992)} the creator of the transformative work can simply look at that copy while creating his transformative work, which should not require circumvention in violation of Section 1201(a)(1). {FN171: 17 U.S.C. §1201(a)(1)}
IV.E.5. What Anticircumvention Isn¶t

Congress also added two other subsections saying what the anticircumvention provisions were not, just for good measure. (3) Nothing in this section shall require that the design of, or design and selection of parts and components for, a consumer electronics, telecommunications, or computing product provide for a response to any particular technological measure, so long as such part or component, or the product in which such part or component is integrated, does not otherwise fall within the prohibitions of subsection (a)(2) or (b)(1). (4) Nothing in this section shall enlarge or diminish any rights of free speech or the press for activities using consumer electronics, telecommunications, or computing products. {FN172: 17 U.S.C. §1201(c)} Paragraph (3) is particularly important, since it makes it clear that there is no design mandate in the anticircumvention provisions except not to produce a circumvention device. The mere fact

that a technological measure has been developed does not require manufacturers of existing equipment or developers of new equipment to include that technological measure in their product, as long as they avoid acts that would be considered trafficking in a circumvention device. Some content providers, unhappy with the compromises made in the DMCA, are now supporting legislation that would mandate a protection mechanism for every digital device that can reproduce copyrighted works (which is just about every device that contains a microprocessor that can load a program or data into its memory). {FN173: See, for example, the Consumer Broadband and Digital Television Promotion Act, S. 2048, introduced in the 107th Congress} It is unlikely that such a protection mechanism would be any more effective than the anticircumvention provisions of the DMCA as long as there were still computers that did not have the mandated protection mechanism. And it is economically unfeasible to replace each of the hundreds of millions of personal computers in the world. Paragraph (4) is just window dressing, since Congress can¶t pass a law that diminishes the rights of free speech or a free press and have it upheld in court, much as it sometimes may want to.

Chapter 3: Copyright of Digital Information
IV.E.6. Rights Management Information

The second aspect of the WIPO Copyright Treaty addressed in the DMCA is the protection of rights management information. The corresponding provision in the DMCA is codified as Section 1202: No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement: (1) provide copyright management information that is false, or (2) distribute or import for distribution copyright management information that is false. (b) Removal or Alteration of Copyright Management Information.± No person shall, without the authority of the copyright owner or the law: (1) intentionally remove or alter any copyright management information, (2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or (3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title. {FN174: 17 U.S.C. §1202(a)} It defines ³copyright management information´ as any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such term does not include any personally identifying information about a user of a work or of a copy, phonorecord, performance, or display of a work: (1) The title and other information identifying the work, including the information set forth on a notice of copyright.

(2) The name of, and other identifying information about, the author of a work. (3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright. (4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work. (5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work. (6) Terms and conditions for use of the work. (7) Identifying numbers or symbols referring to such information or links to such information. (8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of Copyrights may not require the provision of any information concerning the user of a copyrighted work. {FN175: 17 U.S.C. §1202(c)} At the present time, there are few, if any, rights management systems. Perhaps the most interesting use for rights management information today is as a trigger for an access control mechanism, such that the copyright owner can specify the types of accesses that are to be allowed or blocked. As such, rights management is closely related to access control.

Chapter 3: Copyright of Digital Information
IV.E.7. Permitted Circumventions

A number of specific exceptions to the anticircumvention provisions are given in Subsections (d) through (j), including exceptions for libraries and educational institutions, law enforcement, reverse engineering, encryption research, and security testing. As with the DMCA safe harbor provisions, these are very specific exceptions and to fall within that exception, a work must meet all of its requirements. IV.E.7.a. Law Enforcement, Content Filters, and Privacy When the Administration first proposed the anticircumvention and rights management provisions, there were no exceptions. Opponents to the legislation seized on this, pointing out that the provisions would cripple law enforcement, since it would become illegal, for example, to access digital information kept by organized crime or a terrorist if it were protected by an access control mechanism. The opponents likely felt that this would cause the proponents to drop the legislation, propose a substantially different approach, or change the legislation to allow any lawful access. Instead, the Administration simply added an exception, both to anticircumvention (Section 1201(e)) and to rights management (Section 1202(d)), directed specifically at law enforcement: This section does not prohibit any lawfully authorized investigative, protective, information security, or intelligence activity of an officer, agent, or employee of the United States, a State, or a political subdivision of a State, or a person acting

pursuant to a contract with the United States, a State, or a political subdivision of a State. For purposes of this subsection, the term ³information security´ means activities carried out in order to identify and address the vulnerabilities of a government computer, computer system, or computer network. {FN176: 17 U.S.C. §1201(e), §1202(d)} Another fear that was raised by the opponents is that the anticircumvention provision would somehow prevent blocking of harmful information to minors. That was then addressed by Section 1201(h): In applying subsection (a) to a component or part, the court may consider the necessity for its intended and actual incorporation in a technology, product, service, or device, which² (1) does not itself violate the provisions of this title; and (2) has the sole purpose to prevent the access of minors to material on the Internet. {FN177: 17 U.S.C. §1201(h)} Yet another horror raised by the opponents was that the anticircumvention provision would make it impossible to protect personal information. And again, an exemption addressing the problem was added, in this case Section 1201(i): (1) Circumvention Permitted.² Notwithstanding the provisions of subsection (a)(1)(A), it is not a violation of that subsection for a person to circumvent a technological measure that effectively controls access to a work protected under this title, if² (A) the technological measure, or the work it protects, contains the capability of collecting or disseminating personally identifying information reflecting the online activities of a natural person who seeks to gain access to the work protected; (B) in the normal course of its operation, the technological measure, or the work it protects, collects or disseminates personally identifying information about the person who seeks to gain access to the work protected, without providing conspicuous notice of such collection or dissemination to such person, and without providing such person with the capability to prevent or restrict such collection or dissemination; (C) the act of circumvention has the sole effect of identifying and disabling the capability described in subparagraph (A), and has no other effect on the ability of any person to gain access to any work; and (D) the act of circumvention is carried out solely for the purpose of preventing the collection or dissemination of personally identifying information about a natural person who seeks to gain access to the work protected, and is not in violation of any other law. (2) Inapplicability to Certain Technological Measures.² This subsection does not apply to a technological measure, or a work it protects, that does not collect or disseminate personally identifying information and that is disclosed to a user as not having or using such capability. {FN178: 17 U.S.C. §1201(i)}

for repeated or subsequent offenses. for the first offense. All-in-all. component. forfeit the exemption provided under paragraph (1). import. (3) A nonprofit library. or educational institution that willfully for the purpose of commercial advantage or financial gain violates paragraph (1)² (A) shall.S. or educational institution which gains access to a commercially exploited copyrighted work solely in order to make a good faith determination of whether to acquire a copy of that work for the sole purpose of engaging in conduct permitted under this title shall not be in violation of subsection (a)(1)(A).IV. and educational institutions in Section 1201(d). so that . It allows them to circumvent an access control mechanism only to determine whether they want to acquire the protected work. be subject to the civil remedies under section 1203.b. and (B) may not be used for any other purpose. or otherwise traffic in any technology. and one less useful to libraries. Libraries and Educational Institutions Perhaps the least useful exception to the anticircumvention provisions is the one provided to nonprofit libraries. or at least limit. as well as suggesting approaches that would help libraries so that the overall effect of the DMCA on libraries would be positive. or part thereof. (1) A nonprofit library. they could have worked for a provision that an unprotected copy of any work protected by an access control mechanism had to be deposited in the Library of Congress. which circumvents a technological measure. (4) This subsection may not be used as a defense to a claim under subsection (a)(2) or (b). archives. offer to the public. And they can¶t help another library do a similar circumvention.C. in addition to the civil remedies under section 1203. nor may this subsection permit a nonprofit library. service. archives.E. A copy of a work to which access has been gained under this paragraph² (A) may not be retained longer than necessary to make such good faith determination. They can circumvent the control mechanism only to get access to the work and not to infringe any of the exclusive rights of the copyright owner. archives. or educational institution to manufacture. provide. or (B) available not only to researchers affiliated with the library or archives or with the institution of which it is a part. but also to other persons doing research in a specialized field.7. the problems that they perceived. This is probably because the library community concentrated on opposing the passage of the DMCA. rather than working to improve it with provisions that would overcome. They have to do the circumvention all on their own. and (B) shall. product. archives. For example. a pretty useless exception. {FN179: 17 U. §1201(d)} It is hard to imagine a narrower provision. (2) The exemption made available under paragraph (1) shall only apply with respect to a work when an identical copy of that work is not reasonably available in another form. because there are no legal circumvention devices under Sections 1201(a)(2) and 1201(b). (5) In order for a library or archives to qualify for the exemption under this subsection. since the exception applies only to Section 1201(a)(1)(A). the collections of that library or archives shall be² (A) open to the public.

the term ³interoperability´ means the ability of computer programs to exchange information. They already had their court decisions that. they didn¶t need an exception to Section 1202. There had been some controversy over whether Sega v. if properly done.2d 1510. and got it.2d 832. In Sega v. reverse engineering was a fair use and so wouldn¶t violate any rights protected by a control mechanism under 1201(b). §1201(f)} While this provision applies only to circumventing an access control. was the people who were concerned that technological controls could block access to a computer program that was being reverse engineered to find out how it worked. and not working in conjunction with an access control mechanism. 24 USPQ2d 1561 (9th Cir. Chapter 3: Copyright of Digital Information IV. in order to enable the identification and analysis under paragraph (1). Atari v. and allow it to interoperate with other computer programs. And because a rights management system on its own.E. No. Reverse Engineering A group that did know what they wanted as an exception. to the extent any such acts of identification and analysis do not constitute infringement under this title. a person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs. and that have not previously been readily available to the person engaging in the circumvention. Rep. They also got an exception to the trafficking provisions.c. 1992)} the Ninth Circuit had found that such reverse engineering was a fair use. that is all that was needed by the reverse engineers. even though verbatim copies of the entire code for a game or game console were made as intermediate steps in the reverse engineering. a person may develop and employ technological means to circumvent a technological measure. 105-190 at 32} (1) Notwithstanding the provisions of subsection (a)(1)(A). While such a deposit cannot be required for copyright protection under the non-formalities Berne Convention. 1992)} were correctly decided. and the right to share the information they learned: (2) Notwithstanding the provisions of subsections (a)(2) and (b). but Congress endorsed their holdings in the DMCA¶s legislative history. still allowed the viewing of the program being reverse engineered. Nintendo. and not circumventing a protection system to infringe one of the exclusive rights.{FN182: Sen.S. or to circumvent protection afforded by a technological measure. Cir. and of such programs mutually to use the information which has been exchanged.7. Congress made it clear that the anticircumvention and rights management provisions of the DMCA were only related to copyright. {FN180: 977 F.the information would not be lost in the future if there were no longer devices that supported the access control mechanism. Accolade. {FN181: 975 F. {FN183: 17 U.C. (4) For purposes of this subsection. or for the purpose of enabling interoperability of an independently created computer program with other . 24 USPQ2d 1015 (Fed. and not to copyright protection itself. Accolade and a similar decision from the Federal Circuit.

the testing of specific encryption algorithms would not fall within the scope of 1201. §1201(f)} Chapter 3: Copyright of Digital Information IV. testing of an encryption algorithm or program that has multiple uses. The purpose of the Committee in proposing enactment of section 1201 is to improve the ability of copyright owners to prevent the theft of their works. Each of those tools has a legitimate and substantial commercial purpose ± testing security and effectiveness ± and are not prohibited by Section 1201. including by applying technological protection measures. including a use as a technical protection measure for copyrighted works.C. including encryption-based technological protection measures. ongoing research and testing activities by scientists of existing encryption methods. {FN185: Sen. would not fall within the prohibition of section 1201(a) when that testing is performed on the encryption when it is in a form not implemented as a technical protection measure. Encryption Research The Senate Judiciary Committee felt strongly that the provisions of the DMCA should not be used to stifle the very encryption research that led to the technological measures the DMCA would now protect. (3) The information acquired through the acts permitted under paragraph (1). and the means permitted under paragraph (2). {FN184: 17 U. since mathematical formulas as such are not protected by copyright.7. Rep. In addition. and to the extent that doing so does not constitute infringement under this title or violate applicable law other than this section. thus promoting and advancing encryption technology generally. No. 105190 at 15} . provides such information or means solely for the purpose of enabling interoperability of an independently created computer program with other programs. in order to build on those advances. The effectiveness of such measures depends in large part on the rapid and dynamic development of better technologies. It is the view of the Committee that generally available encryption testing tools would not be made illegal by this Act. It is the view of the Committee. Finally. to the extent that doing so does not constitute infringement under this title. and having examined a number of hypothetical situations. The development of encryption sciences requires. Similarly. would not violate section 1201 since copyright does not subsist in such subject matter.programs. after having conducted extensive consultations. the testing of encryption technologies developed by or on behalf of the government of the United States. Thus.S. there are many situations in which encryption research will be undertaken with the consent or at the direction of the copyright owner and therefore will not give rise to any action under section 1201. if such means are necessary to achieve such interoperability. may be made available to others if the person referred to in paragraph (1) or (2).d. as the case may be. in part. The goals of section 1201 would be poorly served if these provisions had the undesirable and unintended consequence of chilling legitimate research activities in the area of encryption.E. that Section 1201 should not have such an unintended negative effect.

and (D) such act does not constitute infringement under this title or a violation of applicable law other than this section. whether it was disseminated in a manner reasonably calculated to advance the state of knowledge or development of encryption technology. (3) Factors in Determining Exemption. and the time when such notice is provided. the factors to be considered shall include² (A) whether the information derived from the encryption research was disseminated.Notwithstanding the provisions of subsection (a)(2).-For purposes of this subsection² (A) the term ³encryption research´ means activities necessary to identify and analyze flaws and vulnerabilities of encryption technologies applied to copyrighted works. phonorecord.² In determining whether a person qualifies for the exemption under paragraph (2). it is not a violation of that subsection for a person to² (A) develop and employ technological means to circumvent a technological measure for the sole purpose of that person performing the acts of good faith encryption research described in paragraph (2). performance. or display of a published work in the course of an act of good faith encryption research if² (A) the person lawfully obtained the encrypted copy. it is not a violation of that subsection for a person to circumvent a technological measure as applied to a copy. (C) the person made a good faith effort to obtain authorization before the circumvention. (B) such act is necessary to conduct such encryption research. and if so. including section 1030 of title 18 and those provisions of title 18 amended by the Computer Fraud and Abuse Act of 1986. and (B) the term ³encryption technology´ means the scrambling and descrambling of information using mathematical formulas or algorithms. and the reasons why. (4) Use of Technological Means for Research Activities. as discussions progressed on the DMCA it was felt that a specific exception for encryption research should be included. versus whether it was disseminated in a manner that facilitates infringement under this title or a violation of applicable law other than this section.² Notwithstanding the provisions of subsection (a)(1)(A). including a violation of privacy or breach of security. if these activities are conducted to advance the state of knowledge in the field of encryption technology or to assist in the development of encryption products. or is appropriately trained or experienced. is employed. or display of the published work. (2) Permissible Acts of Encryption Research.. and (C) whether the person provides the copyright owner of the work to which the technological measure is applied with notice of the findings and documentation of the research. performance. (B) whether the person is engaged in a legitimate course of study. phonorecord. and . (1) Definitions. in the field of encryption technology.While the Senate Judiciary Committee goes on to provide illustrations of encryption research that it believes would not be violations.

S. One hopes that the courts will look at Congress¶ stated desire to protect legitimate encryption research and not find a violation of any of the DMCA provisions when such research clearly meets the encryption research test. Not later than 1 year after the date of the enactment of this chapter. {FN187: 17 U. the less it falls within the encryption research exception. not one identified a current. Congress also asked the Copyright Office and the Commerce Department to determine whether these provisions were adequate to protect encryption research. in most cases it will not be difficult for a court. the Register of Copyrights and the Assistant Secretary for Communications and Information of the Department of Commerce shall jointly report to the Congress on the effect this subsection has had on² (A) encryption research and the development of encryption technology. §1201(g)} The test attempts to differentiate between people performing legitimate encryption research and those claiming that they are promoting encryption research when they are simply distributing a circumvention program. and (C) protection of copyright owners against the unauthorized access to their encrypted copyrighted works. (B) the adequacy and effectiveness of technological measures designed to protect copyrighted works. which can be a problem when a computer program resulting from the research is distributed. if any.gov/copyright/reports/studies/ The study¶s conclusions were as follows: Of the 13 comments received in response to the Copyright Office¶s and NTIA¶s solicitation. However. §1201(g)(5)} The results of this joint study can be found at: http://www. or protection of copyright owners against the unauthorized access to their encrypted copyrighted . At one end of the spectrum is the scientific paper that indicates that a particular mechanism has been cracked and indicates the general approach used such that another encryption researcher can understand the technique.C. The report shall include legislative recommendations. Note that the encryption research exception applies only to circumventing an access control mechanism in violation of Section 1201(a)(1)(A). or Section 1202. discernable impact on encryption research and the development of encryption technology.S. The easier it is for non-technical person to take the distributed result and use it for circumvention. It is impossible to draw a bright line here. the encryption research exception does not provide an exception to the trafficking provisions of Sections 1201(a)(2) or 1201(b). which could be violated by encryption research aimed at removing a digital watermark used for rights management.C. {FN186: 17 U. and any attempt may simply provide a road map for those wanting to distribute circumvention technology to find a loophole they can exploit. viewing all the evidence. to determine whether the activity is legitimate. unlike the reverse engineering exception. At the other end is a circumvention program distributed with little or no commentary on how it works.loc. However. Just to be on the safe side. as is the case for the reverse engineering exception.(B) provide the technological means to another person with whom he or she is working collaboratively for the purpose of conducting the acts of good faith encryption research described in paragraph (2) or for the purpose of having that other person verify his or her acts of good faith encryption research described in paragraph (2). the adequacy and effectiveness of technological protection for copyrighted works.

like patents and copyrights. There is no similar risk to somebody who . although the possibility of a DMCA violation is also mentioned. Every concern expressed.eff. and the paper was presented at another conference. Already. dated April 9.gov/reports/studies/dmca_report. 2001. that is limited to suits brought claiming a violation of the anticircumvention or rights management provisions. Of course.html (May 2000)} It is likely that there were no actual problems that could be identified in the one-year time frame for the report that Congress established.http://www.org/Legal/Cases/Felten_v_RIAA/20010409_riaa_sdmi_letter. or even when he writes a threatening letter that leads to a declaratory judgment action. {FN188: United States Copyright Office. It will be up to the courts to determine where particular activities fall. Though Congress provided in Section 1203(b) for the award of attorney¶s fees and costs to a prevailing party. an owner places his intellectual property at risk when he litigates an alleged infringement. or measure of support articulated. http://www. and might not be available in a declaratory judgment action where a researcher who has received a threatening letter seeks to clarify that his work is not a violation. was prospective in nature. With traditional intellectual property.eff. both to clarify and extend the encryption research exception and to provide sanctions against those who misuse the DMCA to scare legitimate researchers who will withdraw a paper or stop their research rather than face legal expenses in defending their activities. Congress needs to monitor whether legitimate encryption research is being chilled. The RIAA later said that it didn¶t mean to threaten him. Given the forward-looking nature of the comments and the anticipated effective date of the section at issue. 2000. it will be clear from the context of the activity. but such acts can certainly chill legitimate encryption research.org/Legal/Cases/Felten_v_RIAA/} There was no acknowledgment in the RIAA¶s letter of the special exception provided by Congress for encryption researchers. we conclude that it is premature to suggest alternative language or legislative recommendations with regard to Section 1201(g) of the DMCA at this time. A paper to be presented at a scientific conference that doesn¶t give step-by-step instructions on how to circumvent an access control mechanism is just what Congress intended to protect by the encryption research exception. and make it clear that there will be remedial legislation.html} to a university professor who was about to publish a paper discussing his cryptographic research in removing digital watermarks from musical recordings. primarily because the prohibition and its attendant exceptions will not become operative until October 28. because there were few access control mechanisms in use and too little time for problems to surface. because the patent might be found invalid or the copyright unenforceable in the litigation. any conclusion would be entirely speculative. In fact. ³Here¶s a program that you can run to circumvent this access control mechanism´ should fall outside the encryption research exception. but in many cases. it was more concerned about the perceived violation of the agreement for the contest to remove the digital watermarks than for a specific violation of the DMCA.works. As such. {FN190: An archive of information about the case can be found at http://www. engendered by Section 1201(g). Report to Congress: Joint Study of Section 1201(g) of The Digital Millennium Copyright Act. the fact that somebody claims to be an encryption researcher doesn¶t necessarily mean that the exception applies. causing him to withdraw his paper from the conference. the Recording Industry Association of America (RIAA) has sent a threatening letter {FN189: Letter from Matthew Oppenheim. A paper that basically says.copyright.

programs may give instructions either to perform a task or series of tasks when initiated by a single (or double) click of a mouse or. Code as Speech Restrictions on the dissemination of encryption research results raise the question of whether a computer program is protected speech. Whether computer code that gives a computer instructions is ³speech´ within the meaning of the First Amendment requires consideration of the scope of the Constitution¶s protection of speech. the ease with which a work is comprehended is irrelevant to the constitutional inquiry. to manipulate data that the user enters into the computer. the resulting work would be no different for constitutional purposes than if it had been written in English.3d at 445-446.´ i. 2001)} the Second Circuit addressed the ³code as speech´ question: Communication does not lose constitutional protection as ³speech´ simply because it is expressed in the language of computer code.3d 429. 60 USPQ2d at 19631964 (citations omitted)} The court. Perhaps there should be. The question is complicated because the same code conveys valuable information to those familiar with computer programming and controls the function of a machine. A recipe is no less ³speech´ because it calls for the use of an oven. to discourage misuse of the DMCA in threatening letters. {FN192: 273 F. but it would be no more incomprehensible than a work written in Sanskrit for those unversed in that language. and yet both are covered by the First Amendment. These programs are essentially instructions to a computer. goes on: Computer programs are not exempted from the category of First Amendment speech simply because their instructions require use of a computer. Instead. Corley. particularly for scientific writings. read and understood by experienced programmers. If computer code is distinguishable from conventional speech for First Amendment purposes. it is primarily the language for programs executable by a computer. Mathematical formulae and musical scores are written in ³code. Chapter 3: Copyright of Digital Information IV. after discussing the scope of the First Amendment¶s protection for speech. computer code is not likely to be the language in which a work of literature is written. Of course. and often is. 60 USPQ2d 1953 (2nd Cir. And source code (in any of its various levels of complexity) can be read by many more.e. In the first appellate decision interpreting provisions of the DMCA. however.7. Arguably . The ³object code´ version would be incomprehensible to readers outside the programming community (and tedious to read even for most within the community). once a program is operational (³launched´).E.symbolic notations not comprehensible to the uninitiated. In general.. it is not because it is written in an obscure language.misrepresents that a legal act is a violation of the DMCA. and a musical score is no less ³speech´ because it specifies performance on an electric guitar. The undisputed evidence reveals that even pure object code can be. {FN191: 273 F. If someone chose to write a novel entirely in computer object code by using strings of 1¶s and 0¶s for each letter of each word. and what protection it deserves. Universal City Studios v. Ultimately.e.

. Even though the First Amendment to the Constitution says that ³Congress shall make no law . such as forbidding a company from providing fraudulent financial information to prospective investors. Moreover. the operator of a Web site had posted a copy of a program called DeCSS that circumvented the Content Scrambling System (CSS) used to protect movies on a DVD: The initial issue is whether the posting prohibition is content-neutral.´ We disagree. A content-neutral restriction is permissible if it serves a substantial governmental interest. 60 USPQ2d at 19641965} But having determined that code is speech does not answer the question of what protection it enjoys. and the regulation is narrowly tailored. which are intended to be executable by a computer. since. Content-based restrictions are permissible only if they serve compelling state interests and do so by the least restrictive means available. . scientific expression based on the particular topic addressed by that expression ± namely. Congress has passed many laws that restrict speech. much as musicians use notes. just as limiting protection for musicians to descriptions of musical scores (but not sequences of notes) would impede their exchange of ideas and expression.3d at 447-448.´ the reality is not so absolute. abridging the freedom of speech. programmers communicating ideas to one another almost inevitably communicate in code. the interest is unrelated to the suppression of free expression. The Appellants contend that the anti-trafficking provisions of the DMCA and their application by means of the posting prohibition of the injunction are content-based. techniques for circumventing CSS. But the fact that a program has the capacity to direct the functioning of a computer does not mean that it lacks the additional capacity to convey information. A programmer reading a program learns information about instructing a computer. which in this context requires that the means chosen do not burden substantially more speech than is necessary to further the government¶s legitimate interests.3d at 450. Instructions such as computer code. .´ {FN194: 273 F. The Appellants¶ argument fails to recognize that the target of the posting provisions of the injunction ±DeCSS ± . will often convey information capable of comprehension and assessment by a human being. and might use this information to improve personal programming skills and perhaps the craft of programming. {FN193: 273 F. 60 USPQ2d at 1966 (citations omitted)} In the case before the Second Circuit. and it is the conveying of information that renders instructions ³speech´ for purposes of the First Amendment. The information conveyed by most ³instructions´ is how to perform a task. Limiting First Amendment protection of programmers to descriptions of computer code (but not the code itself) would impede discourse among computer scholars. this classification determines the applicable constitutional standard. As the court noted: the scope of protection for speech generally depends on whether the restriction is imposed because of the content of the speech. .distinguishing computer programs from conventional language instructions is the fact that programs are executable on a computer. as we have explained. Instructions that communicate information comprehensible to a human qualify as speech whether the instructions are designed for execution by a computer or a human (or both). They argue that the provisions ³specifically target .

It need only avoid burdening ³substantially more speech than is necessary to further the government¶s legitimate interests. As a content-neutral regulation with an incidental effect on a speech component. Moreover. {FN195: 273 F. and the regulation of DeCSS by the posting prohibition plainly serves that interest. Posting DeCSS on the Appellants¶ web site makes it instantly available at the click of a mouse to any person in the world with access to the Internet.³without reference to the content of the regulated speech. The Government seeks to justify both the application of the DMCA and the posting prohibition to the Appellants solely on the basis of the functional capability of DeCSS to instruct a computer to decrypt CSS. it can create criminal and civil liability for those who gain unauthorized access. the regulation must serve a substantial governmental interest.´ The prohibition on the Defendants¶ posting of DeCSS satisfies that standard. any technique for barring them from making this instantaneous worldwide distribution of a decryption code that makes a lesser restriction on the code¶s speech component. That functional capability is not speech within the meaning of the First Amendment. Whether the incidental regulation on speech burdens substantially more speech than is necessary to further the interest in preventing unauthorized access to copyrighted materials requires some elaboration.has both a nonspeech and a speech component. It is true that the Government has alternative means of prohibiting unauthorized access to copyrighted materials. The DMCA and the posting prohibition are applied to DeCSS solely because of its capacity to instruct a computer to decrypt CSS. and such person can then instantly transmit DeCSS to anyone else with Internet access. 60 USPQ2d at 1969-1970 (citations omitted)} . Neither the DMCA nor the posting prohibition is concerned with whatever capacity DeCSS might have for conveying information to a human being. and the posting prohibition of the injunction target only the nonspeech component. Although the prohibition on posting prevents the Appellants from conveying to others the speech component of DeCSS.3d at 453-455. i. and thus it can be argued that the restriction on posting DeCSS is not absolutely necessary to preventing unauthorized access to copyrighted materials. that interest is unrelated to the suppression of free expression. regardless of whether DeCSS code contains any information comprehensible by human beings that would qualify as speech.´ This type of regulation is therefore contentneutral.e. the interest must be unrelated to the suppression of free expression. and the incidental restriction on speech must not burden substantially more speech than is necessary to further that interest. much less shown. and that the DMCA. even though some of the keys happened to bear a slogan or other legend that qualified as a speech component. The Government¶s interest in preventing unauthorized access to encrypted copyrighted material is unquestionably substantial. as previously explained. But a content-neutral regulation need not employ the least restrictive means of accomplishing the governmental objective. the Appellants have not suggested. and that capacity. just as would be a restriction on trafficking in skeleton keys identified because of their capacity to unlock jail cells. as applied to the Appellants. For example.. is what arguably creates a speech component of the decryption code. The injunction regulates the posting of DeCSS.

105796 at 66-67} The provision is limited to authorized testing. or may purchase the lock and test it at home in any manner that he or she sees fit²for example. Cal. Moreover. is test the lock once it has been installed on someone else¶s door. First. Thus.2d 1111. but rather to ascertain the effectiveness of that particular security technology. computer systems or networks from testing the security value and effectiveness of the technological measures they employ.S.f. or the techniques used to crack a system. the conferees were concerned that Section 1201(g)¶s exclusive focus on encryption-related research does not encompass the entire range of legitimate information security activities. by installing the lock on the front door and seeing if it can be picked. an individual who is legitimately testing a security technology may be doing so not to advance the state of encryption research or to develop encryption products. Rep. after they saw that the encryption research exception might be too narrow to allow some legitimate security testing: The conferees recognize that technological measures may also be used to protect the integrity and security of computers. The provision was added in the conference between the Senate and House that developed the final language for the DMCA. in addition to the exception for good faith encryption research contained in Section 1201(g). v.D. Elcom. without the consent of the person whose property is protected by the lock. Security Testing The final exception addresses security testing of computer systems. In this respect.R. No. The conferees were also concerned that the anti-circumvention provision of Section 1201(a) could be construed to inhibit legitimate forms of security testing. or does so to the exclusion of other methods. Nor is it unlawful for a person who has implemented a security measure to test its effectiveness. or from contracting with companies that specialize in such security testing.E. {FN197:H. . It is not the intent of this act to prevent persons utilizing technological measures in respect of computers. It is not an excuse to post the results. however. Chapter 3: Copyright of Digital Information IV. to the public.7. {FN196: 203 F. and the results of the testing should be conveyed to the system operator to assist in making the system more secure. What that person may not do. and is much like the reverse engineering and encryption research exceptions in that it applies only to the circumvention of an access control mechanism. Not every technological means that is used to provide security relies on encryption technology. computer systems or computer networks. the conferees have adopted Section 1201(j) to resolve additional issues related to the effect of the anti-circumvention provision on legitimate information security activities.A similar finding that the DMCA did not unconstitutionally restrict free speech was reached in a preliminary ruling in U. It is not unlawful to test the effectiveness of a security measure before it is implemented to protect the work covered under title 17. 2002)} the criminal trial of a Russian software company that distributed a program capable of circumventing the protection for Adobe electronic books. 62 USPQ2d 1736 (N. the scope of permissible security testing under the Act should be the same as permissible testing of a simple door lock: a prospective buyer may test the lock at the store with the store¶s consent.Supp.

or hurt of trade. distribute or employ technological means for the sole purpose of performing the acts of security testing described in subsection (2). including a violation of privacy or breach of security. computer system. Const. (4) Use of Technological Means for Security Testing. if such act does not constitute infringement under this title or a violation of applicable law other than this section.. and the ³useful arts´ are what we now call technology.´ As the terms were used at that time. §1201(j)} Chapter 4: An Overview of Patents I. or computer network.´ With the new Constitution.S.² Notwithstanding the provisions of subsection (a)(2). ³science´ referred to knowledge. by securing. §8} the ³Patent and Copyright Clause.S.C. computer system. the exclusive Right to their respective Writings and Discoveries. History Patents as a way for government to promote innovation by rewarding an inventor with a monopoly on his or her invention for a limited term predate the founding of the United States.(1) Definition.² Notwithstanding the provisions of subsection (a)(1)(A). . or correcting. for limited Times. or computer network. solely for the purpose of good faith testing. produce. the Congress was given the power ³to promote the Progress of Science and the useful Arts. to Authors and Inventors. One can see that there are two parallel themes running through the clause: science-authors-writings and useful arts-inventors-discoveries. the factors to be considered shall include² (A) whether the information derived from the security testing was used solely to promote the security of the owner or operator of such computer. (2) Permissible Acts of Security Testing. provided such technological means does not otherwise violate section (a)(2). it is not a violation of that subsection for a person to engage in an act of security testing. or shared directly with the developer of such computer. or generally inconvenient. it is not a violation of that subsection for a person to develop. or computer network. (3) Factors in Determining Exemption. and (B) whether the information derived from the security testing was used or maintained in a manner that does not facilitate infringement under this title or a violation of applicable law other than this section. {FN198: 17 U. The English Statute of Monopolies of 1623 provided an exception to its general condemnation of monopolies by providing the ³true and first inventor´ of a new manufacture up to fourteen years of exclusivity as long as ³they be not contrary to the law nor mischievous to the state by raising prices of commodities at home. with the authorization of the owner or operator of such computer. computer system or computer network. a security flaw or vulnerability.² For purposes of this subsection. including section 1030 of title 18 and those provisions of title 18 amended by the Computer Fraud and Abuse Act of 1986. investigating. the term ³security testing´ means accessing a computer.´ {FN1: U. Article I.² In determining whether a person qualifies for the exemption under paragraph (2). computer system.

I.) While the requirement that the patented invention had to be useful continued. and the Solicitor of the Treasury would decide if an extension would be granted and the length of any extension. collectively referred to as the Commissioners for the Promotion of the Useful Arts. the Secretary of War (Henry Knox). The Patent Act of 1836 The Patent Act of 1836 restored examination of applications before a patent was granted. or any improvement therein not before known or used. the Commissioner of the Patent Office.´ The term for a patent was fourteen years. following the lead of the English Statute of Monopolies. and President Washington signed it into law on April 10. manufacture or composition of matter. It required that the invention not be on sale or in public use at the time of the application. but include claim language to determine the scope of the patent. 1790 (49 days before Rhode Island ratified the Constitution and became the thirteenth state). manufacture or composition of matter.´ a difficult thing to decide at the time when something has just been invented. Instead of examining a patent application to determine whether the invention met the requirements of the Act. The patent term of fourteen years could also be extended up to seven more years upon application to the Commissioner of the Patent Office. it was up to the courts to declare a patent invalid if it lacked novelty or was not properly described in the application.´ The invention also had to be ³sufficiently useful and important. manufacture. This was changed in 1861 to a fixed term of seventeen years. The first patent.C. Congress passed a new patent law that went to the other extreme ± no examination of an application was performed before a patent was issued. Later Recodifications . it was no longer necessary that it be ³important. for a method for producing potash. or device. or any new and useful improvement on any art. It authorized the granting of a patent for ³any useful art.D.A. It required that the applicant not only describe his or her invention.B.S. The decision to grant a patent resided with three cabinet members: the Secretary of State (Thomas Jefferson). §101} with the more contemporary term ³process´ replacing ³art´ in a 1952 recodification. The Patent Act of 1793 It was difficult for the three cabinet members to find time in their busy schedules to decide whether a patent should be issued. Patents were limited to ³any new and useful art. machine. a board consisting of the Secretary of State. and the Attorney General (Edmund Randolph). The Patent Act of 1790 The First Congress passed the first United States patent law during its second session. but this time placed the responsibility with a Patent Office that was not charged with other responsibilities. That does not mean that all requirements for a patent were abolished. As more patents were issued. machine. 1790. If there were objections to an extension. was issued on July 31. although in 1839 Congress amended the law to provide a two-year grace period before filing an application (shortened to the current one year in 1939). engine.I. {FN2: 35 U. I. machine.´ (The same language continues today as Section 101. I.C. In 1793. this became a burden on the courts.

Plant patents cover asexually-reproduced plants. this generally provided for an increased patent term. altered) the various court decisions regarding the patentability of an invention and the requirements for receiving a patent. In 1995. or sell) the invention. There are really three types of patents ± utility. readily visible or intelligible. In 1999. which are protected because information is kept private. the patent term was changed from seventeen years from the issuance of the patent to twenty years from the filing date of the first application leading to the patent. there are also. anybody can practice (make. which are the most common type. Congress enacted the American Inventors Protection Act {FN3: Pub. resulting in a patent term of less than seventeen years. delays caused by the Patent Office could increase the pendency of an application to more than three years. and if you wanted such a copier you could get it only from Xerox. Congress recodified the patent laws. copies had to be made using expensive and messy systems like photography. Because the patent attorney was the first to invent the technique. heat-sensitive paper. the Xerox company was formed to build and market the patented copier. plant.´ and what we call a patent is really short for ³letters patent´ ± an open government letter granting a privilege. 1501A-552} which guaranteed a patent term of seventeen years for diligent applicants. patents that convey land from the government to an individual or group.) During the patent¶s term. the requirement for copyright. Even the word ³patent´ means ³open to the public. so that people can learn how to make and use it and possibly develop improvements. Our discussion will be limited to utility patents. he received a patent giving him the exclusive right to practice the invention for 17 years. and are therefore sort of a super-copyright for designs that are truly new and nonobvious. Xerox was an established company. and companies like IBM and Canon joined Xerox in building and marketing plain-paper copiers. Design patents protect the ornamental design of an article and not its functions. Besides patents protecting inventions. Since the average pendency of a patent application at that time was under two years. rather than just not copied. 113 Stat. In trade for describing the invention in a publicly-available document. extended if there are delays caused by the patent office. (The duration of a patent has changed somewhat since. it is now 20 years from the date the patent application is filed. the patentee is given the exclusive right to make and use the invention for a period of time. use. Why Patents? A patent is a way to get an inventor of a new device or method to reveal that device or method to the public. That changed when a patent attorney came up with an electrostatic copying method. in some cases. By the time the patent expired. But after the patent expires.In 1870 and again in 1952. However. and design. 106-113. or mimeographs and ditto machines. L. Chapter 4: An Overview of Patents II. information about how to make and use a patented invention is made available to the public in trade for legal protection. for example. These recodifications did not make major changes to the patent system established by the Patent Act of 1836 but clarified many of the Patent Office procedures (such as establishing a formal interference procedure when two applications attempt to claim the same invention) and incorporated (or. Unlike trade secrets. Perhaps the best illustration of how a patent benefits the public by encouraging disclosure in return for a period of exclusivity is the plain-paper copier (the ³Xerox machine´). Before the invention of that copier. .

art or method.S. or material. manufacture. And in cases where it is clear that a person was employed specifically to invent the invention claimed in the patent. The Patent Office examines the application and. Of course. machine. where legal protection comes into being when original expression is fixed in a tangible medium of expression. even though ³discovers´ makes it seem as though a person can get a patent on some naturally-occurring substance if he or she was the first person to find it. except for replacing the word ³art´ with the more up-to-date term ³process. (Presumably. or composition of matter. There is no automatic ³work for hire´ provision in the Patent Act.´ {FN5: 35 U. and includes a new use of a known process. The invention must also be ³useful. {FN4: 35 U. in contrast to the Copyright Act. a patent would be granted. although under common law the employer may have a ³shop right´ to use an invention that was developed using its resources. §100(b)}) ³Whoever invents´ means that patents are granted to inventors. grants the patent. But courts have consistently held that one cannot get a patent on laws of nature or natural phenomena. Basic Requirements The requirements for a patent are given in Section 101 of the Patent Act: Whoever invents or discovers any new and useful process. or any new and useful improvement thereof. composition of matter. not to the companies that employ them. although the invention is generally assigned by the inventor to the employer. Because the genetic meaning of the sequences was not known at the . The Patent Office invariably rejects applications for inventions that appear to be perpetual motion machines. A perpetual motion machine is one of the few inventions for which the Patent Office requires an operative model for the examiner to review. a process is defined as a ³process.) A more common example of an application that is rejected because the invention lacks utility is an application for a composition of matter with no known use other than the investigation of the properties of the composition. if it is satisfactory. What Can Be Patented III. or ³utility. may obtain a patent therefor. manufacture.´ (In Section 100. subject to the conditions and requirements of this title. which exist as long as they are kept secrets. §101} This language remains essentially unchanged from the Patent Act of 1793.S. an agency in the Department of Commerce. machine. a court may find that there is an implied contract to assign the rights to the invention to the employer. but simply means that the invention does something desirable. also called the PTO or Patent Office).C. even if nobody else has identified them before. since any new invention has to follow the laws of nature. Chapter 4: An Overview of Patents III.C. one can get a patent on a new use for a law of nature or natural phenomenon.A. ³Invents or discovers´ requires that the patentee be the actual creator and not just the first person to come upon something that already exists. or trade secrets. patent protection requires the submission of an application to the United States Patent and Trademark Office (USPTO.Unlike copyright. The same reason was used recently in rejecting an application filed by the National Institutes of Health for a collection of DNA sequences that had been isolated and identified by its investigators.´ is not a hard test. if the model does in fact run forever without additional energy.´ Usefulness.

machines. or composition of matter that is based on a law of nature. An alternative explanation of why first discoverers of naturally-occurring products. The same language has served for over 200 years. and is prevented by the broad sweep of the statute. even though it happens naturally.C. it must not be ³obvious´ in light of what is known at the time of its invention. All machines must obey the laws of physics in their operation. or discovery which is used solely in the utilization of special nuclear material or atomic energy in an atomic weapon.´ or mechanical device. H. Essentially. No.´ or method of doing something.´ The concept of a new invention has two different aspects.´ or chemical composition or other substance. there was no utility shown for the invention and the application was rejected. or compositions of matter. and naturally-occurring products are not patentable. despite dramatic changes in technology.B. First. No. 82-1979 at 5.1. natural phenomena. anything technological is patentable subject matter. It is not necessary to state what category the invention falls into. A statutory exception prohibits patenting ³any invention. III. Newton could not have received a patent on gravity nor Einstein on E=MC2. 82-1923 at 6 (1952)} Patents can also be granted on an improvement to something in one of these categories.time of the application. the invention must be ³novel. laws of nature.´ {FN7: 42 U.R. That is because neither was the ³inventor´ of the law or product of nature. or a ³manufacture. It would remove the product from the public domain.´ which is a catch-all category described in the congressional report that accompanied the passage of the Patent Act in 1952 as ³anything under the sun that is made by man. Laws of Nature Laws of nature. manufactures.´ many court decisions have held that a naturally-occurring product cannot be patented. Even though the Patent Act uses the phrase ³invents or discovers. Statutory subject matter must. These concepts are key to determining whether a patent will be issued or is valid and will be discussed in detail later. a ³composition of matter. manufacture. Because patents are granted for new technology. since their field would be added by Congress only after it was recognized. To allow such a patent would allow the discoverer to control the making of the product. One can receive a patent on a machine. be expressed in broad terms. This would clearly be an unfair and undesirable result. Rep. They may not have been known.B. or natural phenomena cannot receive a patent on their discoveries is that the discoveries are not new processes.´ {FN6: Sen. (The question of whether these naturally-occurring sequences were an invention was not addressed.´ there are a number of exceptions that are created by other statutes or by court decisions interpreting the language. it is not possible for Congress to enumerate specific categories (such as software-based inventions) in the patent statutes. but they existed before their first discovery.´ which means that it has never existed before. a ³process. But beyond that.S. of necessity. Exceptions To The Broad Classes Though the broad language of Section 101 does seem to cover ³anything under the sun that is made by man. although it is generally obvious. Rep. §2181(a)} III. compositions of . Such enumeration would necessarily mean that truly pioneering inventions that define a new field could not be patented. even by the person who first discovers it. contrary to the principles of patent law.) Section 101 requires that the invention also be ³new. Patents can be granted for a ³machine.

This is not because the process is somehow any less of a process as that term is used in Section 101. such as In re Abrams. One might even receive a patent on a naturally-occurring product that is changed to a substantially-different form. although AT&T v.3.S. much like a composition of matter whose uses are unknown. {FN8: 188 F. transforming or reducing an article to a different state or thing). Such applications of abstract ideas can be patentable if they are novel and nonobvious. {FN10: 94 U.3d 1352. If judgments. 50 USPQ2d at 1452 (citations omitted)} A better way of viewing mental steps is that a process that involves steps that require a subjective or aesthetic judgment on the part of the person performing the process is not patentable.S. Abstract Ideas Abstract ideas. manufacture. In the classic case of Cochrane v. As the Supreme Court itself noted. machine. it would seem that the answer is clearly yes because the four categories of statutory subject matter specifically include processes. 89 USPQ 266 (1951)} have raised the question of whether a mental process is statutory subject matter. They are neither a process. This question has not been completely resolved. then the claim satisfies the requirements of Section 101.2.. rather than procedures that can be taught. {FN12: 172 F.´ The ³e. Cir. such mathematical formulas. but because the disclosure requirement of Section 112 {FN13: 35 U. saying that there may be other types of processes in addition to those that transform something. In the first place. are necessary to carry out the process.´ signal denotes an example. ³when [a claimed invention] is performing a function which the patent laws were designed to protect (e.matter must follow the laws of chemistry. or composition of matter) based on the abstract idea or a process that employs the abstract idea to achieve a desired result. 50 USPQ2d 1447 (Fed. but merely one example of how a mathematical algorithm may bring about a useful application. are not patentable. The application of an abstract idea toward the solution of a problem results in something that is no longer an abstract idea.B. or an inclusive definition. 1999)} indicates that the definition is inclusive: The notion of ³physical transformation´ can be misunderstood. {FN9: 94 U.B. Excel Communications {FN11: 172 F. 1} has not been met. since they have no particular use.g. At first reading of Section 101.3d at 1358-1359. although that patent would protect only the use and not the product itself. Deener. such as a biologically-pure strain of a microorganism. performed upon the subject matter to be transformed and reduced to a different state or thing. it is not an invariable requirement. or series of acts. They lack utility. the Supreme Court stated: A process is a mode of treatment of certain materials to produce a given result.S.g. nor composition of matter. It is an act.2d 165.C. One can certainly receive a patent on a new use for a naturally-occurring product. Mental Processes A number of cases. The matter is not so simple. §112. It could be a product (machine. not an exclusive requirement. saying that only acts that transform something are processes. at 788} The question is whether this is an exclusive definition of a process. manufacture. . III. All patent applications must teach how to make and use the claimed invention. such as transforming a composition of matter to another form. then there hasn t been the required disclosure and the application is faulty. III. 780 (1876)} decided in 1876.

But as we will later see. and obsolete. A better approach is to recognize that something that includes stored information. but no longer applicable legal principle. 1998)} cites her remarks with strong approval: We take this opportunity to lay this ill-conceived exception to rest. redundant.3d 1368.. Cir. 47 USPQ2d 1596 (Fed. What constitutes a method of doing business is a fuzzy concept. 149 F. 30 USPQ2d 1455 (Fed. the ³business method´ exception has merely represented the application of some general. 47 USPQ2d at 1602} Business method patents are generally just a particular type of software patent. today virtually any technique that can be embodied in a computer program that produces a useful result is patentable if properly described and claimed. Cir.B. 1983)} held that printed matter is not patentable because it is not a proper manufacture.2d 1392. The results of this rule are good. 30 USPQ2d at 1461-1462 (Newman. business methods have been.3d at 298. is a manufacture. While the book is a manufacture.6.3d at 1375. since the business method often relies on involved calculations that require the use of a computer in any . III. such as printed matter. Methods of Doing Business A number of older cases have held that methods of doing business are not patentable.3d 290. and should have been.´ {FN17: 22 F. and most of the cases where it is discussed could have reached the same conclusion on patentability by using clearer concepts such as obviousness in light of the prior art. Signature Financial. Though a computer program per se is generally not considered patentable. subject to the same legal requirements for patentability as applied to any other process or method. but to consider only the differences of the substrate carrying the printed matter and the prior art substrates when determining whether the invention is novel and nonobvious.III. Judge Newman.B. since it prevents patents from protecting writings more properly within the scope of copyright. {FN16: 22 F. unless there is some interplay between the substrate and the printed matter. J. perhaps arising out of the ³requirement for invention´ ± which was eliminated by § 103. Since its inception. consider Mark Twain¶s ³invention´ of Tom Sawyer. Printed Matter In re Miller {FN14: 418 F. Since the 1952 Patent Act. It merits retirement from the glossary of Section 101. the Federal Circuit¶s 1998 decision in State Street Bank {FN18: State Street Bank v.2d 1381. 1994)} described a method-of-doing-business exception as ³an unwarranted encumbrance to the definition of statutory subject matter´ that should be ³discarded as error-prone. dissenting)} But while Judge Newman¶s remarks were in dissent to the opinion of the court. that manufacture differs from prior art books only in the writing in the book.4. III. discussed in the next chapter. The book would be statutory subject matter but would not be novel or nonobvious in light of other books.B. {FN19: 149 F. Computer Software There is quite a history regarding the patentability of computer software. For example. this approach is complicated by the requirement of Section 103 that claims be considered ³as a whole´ when determining whether an invention is obvious. Cir. 164 USPQ 46 (CCPA 1969)} and In re Gulack {FN15: 703 F.5. 217 USPQ 401 (Fed. in her dissent in In re Schrader.

´ as opposed to the ³actual reduction to practice´ that occurs when a prototype of the invention is constructed and tested to determine that it works as intended. The bargain in the granting of the patent is that the public receive a complete description of how to make and use the invention. Section 112. and shall set forth the best mode contemplated by the inventor of carrying out his invention. to make and use the same. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. so . in such full. Getting A Utility Patent Unlike copyright or trade secrets. and of the manner and process of making and using it. {FN22: 35 U. the submission of a model was required. Now. and the issuance of a patent. for software-based inventions it is often possible to determine that the invention will function properly and describe it in detail without doing a complete implementation of the software. clear.C.C.C. and exact terms as to enable any person skilled in the art to which it pertains. As stated in Section 114: The Commissioner may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention. While this is seldom the case for a mechanical or chemical invention. This is referred to as a ³constructive reduction to practice.S.S. When the invention relates to a composition of matter. it is not even necessary to have a working model for the invention if the invention can be described in the application in such full and complete terms that somebody skilled in the art of the invention can make and use it from the application description. it is generally not necessary to submit a working model. {FN21: 35 U. patent protection exists only after the filing of an application. §111} Although a written application must be submitted. The Description The first paragraph is the description requirement. or with which it is most nearly connected. or involves doing something that enhances electronic commerce on the Internet. concise. such as when it appears to be a perpetual motion machine. drawings (unless there is no meaningful drawing possible for the invention. the Commissioner may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment. first and second paragraphs.S. Section 111 requires that the patent application consist of three parts ± a specification. its examination to determine compliance with the statutory requirements. §112} IV.A. At one time. Chapter 4: An Overview of Patents IV.practical application of the method. states the requirements for the specification: The specification shall contain a written description of the invention. about the only time a model is required is when there is some question whether the invention will actually work. but space considerations and the desirability of publishing the granted patents led to the dropping of the model requirement. The description of the invention teaches how to make and use it and includes a brief abstract of the invention. and an oath by the applicant stating that he believes that he is ³the original and first inventor´ of the invention. which is unlikely in most cases). §114} In fact. {FN20: 35 U.

´ These definitions should be clearly stated. or can understand it so they can develop improvements.´ if you have previously indicated that the pencil has a large end. and particularly in both the description and the claims. then you must always make it clear which one you are discussing.B. It is never proper for a claim to be more than one sentence. This is often stated as ³A patentee can act as his own lexicographer. because the court may see the patent covering only the single embodiment that was described. rather than a more general invention. make sure that wherever it is mentioned in the description it is also called a ³left-handed framus. abstract. a claim starts with a ³preamble´ that introduces the nature of the claimed invention and its environment.´ even though most people in the art of the invention use the terms interchangeably.´ and one or more or ³limitations´ or ³claim elements. Another special word in a claim is ³plurality. Sometimes an applicant includes only a description of the preferred embodiment in the specification.´ It means two or more and is used when it is necessary to differentiate the invention in the claim from prior art that has only a single instance of . It is important that the same name be used for something throughout the patent. an applicant should indicate alternative embodiments for components of the invention. must be clearly recited before it can be used in a following claim limitation. IV. such as a part of the claimed device. especially if the term has a generally-accepted meaning that differs from the usage in the patent.´ not just a framus or a similar term like a ³sinister framus. Because patents are often the first description of a new technology. A special word that is commonly used in claims is ³said. and there may not be accepted terms for key aspects of an invention. This is not the place for using synonyms or shortened descriptions. lest there be confusion about the meaning of a term in the claims when they are being interpreted in litigation. even if these embodiments are not as good as the primary one being described. a ³transitional term. by using language such as ³said eraser at said large end of said pencil.´ Proper claim drafting requires that each aspect of a claim. Claims The claims define those aspects of the invention that are protected by the patent.´ If there are two different erasers that are aspects of the claim. more traditionally. Almost without exception. or description. You must read the claims. The description must detail the best way that the inventor knows at the time of the application for making and using the invention (often called the ³best mode´ or ³preferred embodiment´ of the invention).´ A claim is always in a form that completes a sentence starting with ³I claim´ or ³We claim´ or ³What is claimed is´ or some similar phrase. perhaps believing that other ways of practicing the invention are inferior and that their description should be unnecessary as long as the best mode has been described. ³said eraser. This can cause a problem if the patent is litigated. you must recite ³a pencil comprising an eraser at one end´ before you can talk about ³the pencil¶s eraser. or ³said second eraser. If you call something a ³left-handed framus´ in the claims. For example.´ After introducing ³an eraser. an applicant is allowed to use his or her own terms for aspects of the invention as long as they are defined in the specification. To avoid this. But to properly interpret the claims.´ you refer to it as ³the eraser´ or.´ if you have designated each eraser by an ordinal.they can practice the invention without undo experimentation after the patent expires. you must read them in light of the description and any statements made during the prosecution or examination of the patent application. It is not possible to determine what is protected by the patent from the title.

or C in the prior art even if something with A. B.´ If a thing has components in addition to those of the claim limitations.´) That means that the claim limitation ³comprising A.something. B. ³comprising. and C or a thing with A. when the transition term ³comprising´ is used. A claim also reads on a description of an object or process when all elements of the claim are described in the publication. that claim does not read on a thing with just an A. The claim ³consisting essentially of A and B´ reads on things that have A. B. such as noncritical impurities in a composition of matter. B. so ³a plurality´ or ³at least two´ is a better choice. It is perhaps the most important concept in all of patent law. In other words. process. One has to be careful when using the conjunction ³or´ with two claim elements. and absolutely nothing else. and some other inconsequential components. and C. As we will see. as appropriate. or description of an object or process. The claim must still distinctly describe what is claimed. they are uncommon except in chemical claims where it is necessary to limit the claim to a particular compound. or a B combined with anything that is not an A. Because transition terms severely limit the scope of their claims. it is necessary to consider the transitional term to determine if the claim reads on the thing. a claim must not read on . claim elements are often also called ³claim limitations.) Because the presence of an element in a claim limits the scope of that claim to things having that element as a component. There are two more restrictive transitional terms. regardless of what other components may be present in the thing. a claim like ³A. an A combined with anything that is not a B. B. (Sometimes ³including´ or ³having´ is used instead of ³comprising.´ since a system with three or more processors clearly contains a system with two processors. where the thing can be a physical object. just a B. but not those with a single processor. B. If a claim contains elements A and B. A claim to a new type of screw using ³comprising´ as its transition term would read on a complete automobile if that screw were present anywhere as part of the car. (For simplicity. Similarly. the patent office frowns on such claims. and C´ reads on every thing that has A. B. not what is not claimed. but not C´ might raise questions if C were not something that is a part of A and B. we¶ll talk about a claim reading on a thing. The most common transition term. or D was novel.´ the claim will cover systems with two or more processors. but it is possible that the claim could be misconstrued in litigation as covering only two-processor systems.B. B. That would make the claim invalid if there were something with A. and C or D´ it would read on either a thing with A. And unless there is a strong relationship between C and D.1. It is important that you fully understand the concept of a claim reading on something. The claim ³consists of A and B´ reads on things that have only A and B as their components. a claim reads on any thing whose components are a superset (or are identical) to the elements of the claim. or D. even if the thing also has D through Z. IV. if you claim ³a plurality of computer processors.´ means that the claim reads on the thing if all the elements of the claim are components of the thing. If a claim were written as ³comprising A. For example. One could achieve the same coverage by claiming a system with ³two computer processors. A claim reads on a physical object or a process when all the elements of the claim are components of that object or process. When a Claim ³Reads On´ Something The most important concept in understanding a claim is whether the claim ³reads on´ something. so that its exclusion (presumably because the only prior art with A and B also always includes C). B.

For example. If only one embodiment of the claimed invention is described. If other orders are possible. B. if the nature of the case admits.´ will make that intention clear.B. Dependent and Independent Claims There are two types of claims ± independent claims and dependent claims. since claims are not a description of how to implement the method. if you are claiming a computer method for manipulating a data structure on a disk. Subject to the following paragraph. you can introduce the disk in the preamble (³a method operating on a disk´) so that you can use it later when describing a step of the method (³storing information on said disk´). there is the possibility that the claim may be construed as requiring that particular order. However. or if all the embodiments show particular steps always being performed in a certain order. The Steps of a Method It is not necessary to include every step of the method in the claims. in dependent or multiple dependent form. then those steps must be executed in the specified order. The Preamble There has been a great deal of debate on whether the preamble of a claim adds limitations to a claim or simply provides the background for the claim. All that is required is that. examples should be briefly mentioned in the description. the infringing act must perform every step in the claim. either explicitly (by using a connective like ³and then´ between two steps) or implicitly (as when one step requires information produced by another step).3. and whether it was treated as a limitation during the examination of the patent application. Does the claim ³a widget. since it might be read as a limitation. IV. But the claims should include all the steps necessary to describe the claimed method.´ rather than simply ³comprising. just say ³a method´ or ³an article of manufacture´ or some similar phrase that cannot possibly be interpreted as a limitation. where an order is specified. a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the . Generally. B. This is not a good idea. These are described in the third and fourth paragraphs of Section 112: A claim may be written in independent or. comprising A.B.2. Many claim drafters include in the preamble a short description of the purpose of the invention (³a method for secure communications´) or the name of what is being patented (³a widget´). Similarly. Instead. in any order. that something infringes the patent. and C? It depends on whether the preamble is necessary to give meaning to the claim. but which is not a part of the invention as being formally claimed. there is no requirement that the steps of the claimed method be executed in the order specified in the claim for infringement to occur. saying ³comprising the following steps. if there is no particular ordering of the steps of a method desired. The best thing to do when writing a claim is to include in a preamble only what is necessary to provide an antecedent basis for a term used later in the claim. at some time. And if a claim reads on something that is not prior art. IV.4.B. and C´ read on a non-widget that nevertheless has A. IV.the prior art or that claim is invalid.

§112} A dependent claim can be recognized because it starts with something like ³a widget as in claim 1. then the dependent claim survives and is treated as if it were written in full independent form. which replaces the introductory phrase with all the text of the claim on which it depends. Another special claim form is the ³Jepson claim. but the dependent claim doesn¶t. and D´ or similar language. C. C. Because of this. further comprising X. For example. An exception to this is a ³Markush claim. B. B. the Patent Office charges considerably less for examining a dependent claim.´ If claim 1 were for ³a widget.´ then that dependent claim would be identical to an independent claim reading ³a widget.´ (Think of a dependent claim as a macro. and C.´ then a dependent claim may state ³where said computer network is an Ethernet´ and another dependent claim may state ³where said computer network is a token ring. would both be invalid. if the prior art does not have widgets with A. if it were obvious how to apply the teaching of a token ring network to an Ethernet. For that reason. and D.´ Such dependent claims are often worthless as a backup position. For example.S. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. IV. B. this type of claim is used primarily in chemical patents.) All the examiner needs to do is make sure they are in the proper form.) Sometimes claim drafters will use dependent claims to indicate particular species of a general term. If the independent claim reads on prior art. Not surprisingly. just for the limitation to be included. A Markush claim contains a limitation like ³an R. {FN23: 35 U. But so would the dependent claim of an Ethernet. the Patent Office charges a surcharge for examining such a claim. For example. they are not commonly used. because it makes it clear what the . further comprising D. There must be some property that unites the alternatives in a Markush claim. Other Claim Forms It is generally improper to have a claim limitation that states alternatives.C. then the parent claim for a network in general. comprising A. The fifth paragraph of Section 112 describes the special rules for multiple dependent claims. if it would be obvious how to take a prior art teaching showing one species and implement the other species. the improvement comprising D and E. B.´ named after the applicant who first received approval to use such a claim. Dependent claims provide a fallback position in case a claim is later found invalid by a court. B. and D.´ where the preamble describes the old parts of the invention. consider the independent and dependent claims above.subject matter claimed. and the limitations are drawn only to the improvement over the prior art. such as being metals or rare earths.´ Because of the difficulty in checking that a multiple dependent claim. (In the example above. and the dependent claim for a token ring network. wherein R is selected from the group consisting of A. comprising A. if a patent had claims like those described in this paragraph and prior art was discovered showing a token ring network (along with all the other elements of the claim). (It doesn¶t depend on the parent claim for its validity. B. where the alternatives are chemical elements or compounds that share a necessary property. if the parent claim has as an element ³a computer network. it certainly doesn¶t have widgets with A. C. and C.B. That is because they always contain more limitations than their parent claim and can¶t read on prior art if their parent claim doesn¶t. A multiple dependent claim is something like ³a widget as in claim 5 or claim 10.) The Patent Office likes dependent claims because they do not have to be separately examined for validity if the claim on which they are based is valid. It is generally written like ³a widget having A.5. and C.´ The Patent Office prefers all claims to be written in Jepson format. however.

Walker. for example. IV. Cir. in which case the claim element covers only that disclosed structure and its equivalents. It is important to note that the sixth paragraph makes it clear that the claim element does not cover all ways of performing the function. the specification may not disclose sufficient structure. may disclose only one structure for performing the function. material. {FN24: 35 U. §112} This was added to the patent laws to overturn a Supreme Court decision {FN25: Halliburton Oil Well Cementing v. although it would be limited to the means described in the specification.6.S. 1994)} that the sixth paragraph¶s requirement for the scope of the means-plus-function claim element had to be . 71 USPQ 175 (1946)} that said that elements couldn¶t be described by the function they perform. During claim interpretation during litigation of a patent. During the examination of a patent application.S. To aid the court (and to make sure its determination matches your intentions). It may be. More important. but that may not be the case. but it is seldom used in practice. This saved it from locating the descriptions in the specification. 29 USPQ2d 1845 (Fed. or acts described in the specification and equivalents thereof. very narrow. Sometimes this is not easy. {FN26: 16 F. then a bolt-and-nut combination would not be a means for fastening A to B. Such a claim attempts to claim all ways of doing the specified operation. they will still be treated as prior art because the claim stated that they were. 1. The specification. or acts in support thereof. in which case the claim is invalid because it does not provide a definite indication of what is being claimed. That is because if A. Because the sixth paragraph talks about ³an element in a claim for a combination.´ it is improper to have a single-element claim with that element written in means-for form. 329 U.C. instead. paragraph of Section 112: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure. including any alternative means that you have briefly described. Many people mistakenly think that a means-for claim element is very broad.3d 1189. since the description of the means is spread throughout the description and is not clearly indicated. which could be a problem if it wasn¶t clear where something was being described (for example. This is addressed by the sixth. clearly indicate in the description what you consider the means for performing a particular function. Means Plus Function Elements Sometimes there is not a collective term for describing a particular limitation. but only those described in the specification and their equivalents. and such claim shall be construed to cover the corresponding structure. material. but a contact adhesive might be if it performs the same function as a nail or a screw. B. if the limitation is ³means for fastening A to B´ and the specification discloses that it is important that the fastening occur when the side of B opposite A is inaccessible and discloses nails and screws. For example. the Patent Office used to consider the element as covering all reasonable means for performing the function rather than just those disclosed in the specification. Because such claim elements are generally written as ³means for <some function>. and C of the example are not really in the prior art. in In re Donaldson. That practice came to an end when the Court of Appeals for the Federal Circuit made it clear. and last.applicant feels is novel about the invention. depending on what was disclosed in the specification. one of the jobs for the court will be to determine the structure that corresponds to the ³means for´ in a claim. if it was described in multiple places).´ they are generally referred to as ³means-plus-function´ or ³meansfor´ claim elements.B.

or .´ which would cover the ways of computing a checksum for a packet detailed in the description and their equivalents. v. There are few court decisions regarding ³step-plus-function´ claim elements. There. or on an international application by another who has fulfilled the requirements of paragraphs (1). he draws the distinction between a claim element that recites an act. but to limit its scope when the applicant points out that a particular implementation isn¶t within the scope of the means-plusfunction claim element. the step ³computing a checksum for the packet using a table-lookup technique´ specifies the act to be performed and therefore isn¶t in step-plus-function form. which would be in step-plus-function form. . 1999)} provides the best discussion. There is still a tendency. before the invention thereof by the applicant for patent. Novelty The Patent Act requires that an invention be ³new´ in order for a patent to be granted.A.S. Means-plus-function claim elements are frequently used with claims for software-based inventions.3d 836. Chapter 4: An Overview of Patents V. in that they are based on what was done or known by others before the invention by the applicant: A person shall be entitled to a patent unless ± (a) the invention was known or used by others in this country. That way. Judge Rader¶s concurrence in Seal-Flex Inc. In contrast. An example of such a functional step limitation might be ³computing a checksum for the packet. §102} . Prior Art Subsections (a) and (e) define true prior art. 50 USPQ2d 1225 (Fed. {FN28: 35 U. although such claim language is common in process patents and particularly in patents on software-based processes. V. the fact that the claim doesn¶t cover that particular implementation is on the record and the applicant can¶t later say that it is within the scope of the claim. A less-clear concept also found in the sixth paragraph of Section 112 is that of a functional step. since the claim covers the hardware that implements a particular function.C.followed even during patent examination. The distinction is subtle. To be new. which would not be in step-plus-function form. or patented or described in a printed publication in this or a foreign country. (2). Section 102 states the requirement for novelty and defines what constitutes prior art. Cir. But again. for examiners to read the means-plus-function limitation as covering all reasonable means. whether it is special-purpose logic or a general-purpose digital computer programmed to perform the specified function. the invention must be both novel and non-obvious when compared with the prior art at the time of its invention. and (4) of section 371(c) of this title before the invention thereof by the applicant for patent. it covers only the means described in the specification and their equivalents. Athletic Track and Court Construction {FN27: 172 F. and one that recited a function to be performed. (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent. however. . Its seven subsections include definitions both for prior art and for other things that will bar getting a patent.

you can get a patent on it yourself.³Printed publication´ has been interpreted to mean any written information that is accessible to the people who are most involved with the technology of the invention. knowledge or use of a previouslyinvented version is a bar only when it occurs in the United States. employers generally require that employees who may invent something as part of their employment sign an agreement assigning any inventions to the employer. This prior art is often unknown to the applicant or the examiner. and not as a courtesy as is often the case with papers in scientific journals. If the invention was developed using the resources of an employer. It can include a typed manuscript that is cataloged and available in a library. it remains prior art forever. such a search can never determine with finality whether there is prior art out there.S. Inventorship Note that while a printed publication anywhere in the world (and in any language) that occurs before the invention by the applicant is a bar to patentability.´ {FN29: 37 C. patents can be issued only to natural persons.R. But that does not mean that if you find something in a foreign country that is unknown in the United States. but is likely to be discovered by somebody being sued for patent infringement and wanting to invalidate the patent. such as Multics. It does not include information that is distributed on a confidential basis. Such searches are by their nature much more exhaustive than the one performed by the patent examiner. an operating system technique may seem new because it is not used in current operating systems. Once something is prior art. Section 116 gives the special rules when there are more than one inventor: . not businesses. but not as a specific job assignment. in-depth search for prior art may be a small expense when the cost of patent litigation or having to abandon a product alleged to infringe a patent is considered. §102} Because of Subsection (f). or was generally hired to develop patentable things. who may not be familiar with such historical systems. An applicant must bring to the attention of the examiner any prior art that is ³material to patentability. allowing one to develop claims that have a better chance of being allowed with little or no amendment.C. For example. It is important that only the true inventors be named on the patent application. Supervisors should be named only if they contributed to the invention. But it will prevent writing claims that read on the prior art that is discovered. but may actually be something that was implemented in an operating system no longer used. an employer may own the invention if the employee was specifically ³employed to invent´ the particular invention.F. the employer may have a shop right to use the invention in its business. nor consider every printed publication in the whole world. In the absence of such an agreement. {FN30: 35 U. There is no requirement that an applicant conduct any search of the prior art before filing a patent application.B. so there is no work-for-hire doctrine as in copyright law. because the examiner¶s search time is limited because he or she has to handle a number of applications in a timely fashion. However. V. Subsection (f) limits patents to the true inventors: A person shall be entitled to a patent unless ± (f) he did not himself invent the subject matter sought to be patented. §1. and because doing a worldwide. such as a paper under review by a scientific journal or a proposal to the National Science Foundation. There is no requirement that prior art be something that is still in use.56} Because any search cannot include patent applications that are pending but have not been published.

The omitted inventor may subsequently join in the application. may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage. Whenever through error a person is named in an application for patent as the inventor. the Commissioner may permit the application to be amended accordingly. The lesson is that only true inventors should be named in the application. Section 118 addresses that situation: Whenever an inventor refuses to execute an application for patent. in that it addresses art that may exist after the date of invention. a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action. even if the invention was not known or obvious before it was invented. perhaps because he has left his job and is now working for a competitor. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time. Statutory Bars There are a number of subsections of Section 102 that are statutory bars to receiving a patent. It may be that an inventor has assigned his inventions to his employer but then refuses to cooperate in applying for a patent. or through error an inventor is not named in an application. on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes. §118} V.C.C.When an invention is made by two or more persons jointly. (2) each did not make the same type or amount of contribution. except as otherwise provided in this title. And that may lead to the patent being declared invalid and unenforceable. and on compliance with such regulations as he prescribes. {FN31: 35 U. that may constitute deceptive intent and it may be impossible to remove the supervisor¶s name when it is discovered in litigation. and such error arose without any deceptive intention on his part. the application may be made by the other inventor on behalf of himself and the omitted inventor. or (3) each did not make a contribution to the subject matter of every claim of the patent. under such terms as he prescribes. If the intent was to include a supervisor so that it seemed that he contributed when he really didn¶t. or cannot be found or reached after diligent effort. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort. {FN32: 35 U. §116} Note that the last paragraph provides that inventorship can be corrected only if there was no deceptive intent. they shall apply for patent jointly and each make the required oath.S. Subsection (b) is a composite of prior art and statutory bar.S. may grant a patent to the inventor making the application. but before filing a patent application: A person shall be entitled to a patent unless ± . and the Commissioner may grant a patent to such inventor upon such notice to him as the Commissioner deems sufficient. subject to the same rights which the omitted inventor would have had if he had been joined. The Commissioner.C.

{FN33: 35 U. American Nicholson Paving. because the paving was part of a test of the surfacing during a testing period controlled by the inventor.S. It is sometimes difficult to determine whether an invention is in public use. has applied for a patent in a foreign country more than a year before filing an application in the United States. 55. So.C. even though the public was driving over the road every day.S. or portions of the invention have been tested and it is clear that there will be no difficulty combining them to produce a complete working embodiment.S.S. 48 USPQ2d at 1647} Even if an invention is not in its final form. for example. or (d) the invention was first patented or caused to be patented. An interesting question is whether the clock starts if the offer is for an invention that has not yet been completed. or was the subject of an inventor's certificate. If an inventor were allowed to postpone filing an application indefinitely.´ not when it is first sold. 48 USPQ2d 1641 (1998)} that the on-sale bar applies when (1) the product of the invention is the subject of a commercial offer for sale. even though the corset was not on public display. or did not actually invent the claimed invention: A person shall be entitled to a patent unless ± (c) he has abandoned the invention. effectively extending the time until the patent expired. Along with Subsection (f). {FN34: City of Elizabeth v. he could wait until someone else was producing the invention and then file the application. it still may be ready for patenting if a prototype works and the prototype contains all the claimed elements. Most other countries do not provide this one-year grace period before filing an application. at about the same time the Supreme Court found that the wearing of a corset designed for a woman by her boyfriend was a public use. more than one year prior to the date of the application for patent in the United States. in a classic case the Supreme Court found that the paving of a road with a new surfacing was not a public use. Subsections (c) and (d) are statutory bars to getting a patent if the inventor has abandoned the invention before applying for a patent. Lippmann. Court decisions have equated public use with commercial use. 126 (1877)} On the other hand. and (2) the invention must be so complete that it is ³ready for patenting.´ even if it is written to handle only one or two users at a time and may crash occasionally because it does not contain code to handle exceptional situations. 104 U.´ {FN37: 525 U. 333 (1881)} Also note that the one-year clock is started when the invention is ³on sale. by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an . §102} The purpose of Subsection (b) is to force the timely filing of a patent application after the completion of an invention. so it is important if you want foreign patents to file an application before publishing an enabling description (one that is sufficiently detailed to allow somebody to re-create the invention) or offering the invention for sale. or use without an obligation of secrecy to the inventor.S. 97 U. That means that an offer to sell the invention starts the clock. a proof-of-concept prototype of a software method would be ³ready for patenting. Wells Electronics Inc {FN36: 525 U.´ either because the invention has been completed or because there are ³drawings or other descriptions of the invention that [are] sufficiently specific to enable a person skilled in the art to practice the invention. because he placed no special restrictions on her use. In 1998. For example. {FN35: Egbert v.(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. the Supreme Court held in Pfaff v. at 67-68.

if a patent issues before the premature filing has been determined. it seems as though every patent agent or attorney has had a client who didn¶t realize that he or she needed to file a patent application until eleven months after the clock started running with a publication or offer for sale. V. if you don¶t know what you are going to claim. §111(b)} A provisional application consists of a description of the invention (a specification).) To the extent that the paper would be prior art in its description of the invention. . If you have published a paper and the one-year clock is about to expire. obviously. can provide a more understandable description of the invention and how to use it.D. industrial design. There is no requirement that the provisional application contain any claims.C.S.S. {FN38: 35 U. it is also an enabling disclosure of the invention. which must be filed within a year of the provisional application.S. And while you don¶t have to file claims with the provisional application. no claims are necessary. such that a person can make and use the invention. Filing the paper removes it from the prior art that can be considered against the actual application. or model in respect of an invention made in this country. A copy of the source code can be filed. An actual application. The rules for provisional applications are found in Section 111(b). §185} is refusing to grant a United States patent on the invention or. {FN40: 35 U.C.S. You still have to have a proper disclosure of the invention. A difficulty with filing such a source-code provisional application is that it discloses not only the invention that may later be claimed but any trade secrets unrelated to the claimed invention that are also in the source code. completely describes how the software invention works. the invalidation of that patent. given in Section 185. {FN39: 35 U. albeit in a less-than-convenient form. §184} The penalty for premature filing in a foreign country. A recent revision in the patent statute. along with a brief description of the invention. (Remember. filed within a year. it is very hard to know what to describe. however. you can file that paper itself as a provisional application. Generally. {FN41: 35 U. there is little to be gained by filing a provisional application rather than a regular application.C. There are. providing for a provisional application.application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States. §102} Applicants filing both in the United States and in foreign countries must be careful if they file first in the United States. accompanied by any necessary drawings. The source code. The provisional application gives the applicant a ³right of priority´ with respect to prior art as of its filing date. A similar trick can be used when a software invention has been offered for sale and the oneyear clock is about to expire. Section 184 states: Except when authorized by a license obtained from the Commissioner a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model.C. In other words. the clock is stopped with respect to prior art as of the time of the filing of the provisional application for those aspects of the invention that are described in the provisional application. offers a way to get another year to file the actual patent application. two special circumstances where filing a provisional application may provide a substantial benefit. Provisional Applications Even though the United States provides a one-year grace period from the time an invention is described in a printed publication or offered for sale until a patent application is filed.

It must be so complete that it is clear that it can be brought into existence and will work. because conception is in the mind of the inventor. either by having a working prototype or by filing a patent application that enables the invention by describing how to make and use it so completely that a person with ordinary skills can reproduce the invention without undo experimentation.C. .´ as opposed to an ³actual reduction to practice´ when a prototype is constructed. Because an inventor¶s testimony is likely to be self-serving. and occurs when the complete invention. a hearing where both applicants present their evidence of their dates of conception and reduction to practice to administrative patent judges who determine which one should get the patent.S. it is difficult to prove precisely when it occurs.But that may be a reasonable price for getting patent protection when it would otherwise be lost because of the statutory time bar. such as the specific method for solving a problem or the overall structure of the device. {FN42: 35 U. strong opposition from small inventors has blocked the change. Subsection (g) is an exception to the United States rule that the patent goes to the first person to invent: A person shall be entitled to a patent unless ± (g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned. or concealed it. But because documentation proving the date of conception is necessary to prevail in an interference. which simplifies determining who is entitled to the patent and promotes the prompt filing of a patent application. is clear in the inventor¶s mind. from a time prior to conception by the other. Under Subsection (g). This is determined in an ³interference´ proceeding in the Patent Office. then he is entitled to the patent for the invention. most interferences result in the first applicant receiving the patent. All other countries give the patent to the first inventor to apply for it. objective evidence of the date of conception is generally necessary. Obviously. If an inventor has not been diligent in reducing the invention to practice. but also the reasonable diligence of one who was first to conceive and last to reduce to practice. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention. Although the United States has considered going to a true first-to-file system.E. Interferences Finally. if a person who isn¶t the first applicant for an invention can show that he conceived the invention before the first applicant and has been diligent in completing the invention. V. suppressed. rather than his date of conception. §102} There are two important times during the creation of an invention: when it is conceived and when it is reduced to practice. The best evidence is an inventor¶s notebook describing the invention. Reduction to practice by means of filing an enabling patent application is called ³constructive reduction to practice. and many inventors do not keep the detailed notebooks required to prove their date of conception and continuing progress. dated and witnessed by somebody who understands the invention. ³Conception´ marks the beginning of the inventive process. An invention is not completed until it is reduced topractice. his date in the interference will be the date when he started his diligent reduction to practice. rather than its current first-to-invent system.

y Failure of others to develop a similar invention. however. Anticipation And Obviousness If a claim reads on a single item of prior art ± a printed publication or a product ± then that item of prior art ³anticipates´ the claim must be rejected under Section 102. there must be some teaching or other motivation in the prior art that would direct someone to combine the references to get the claimed invention if he or she were aware of them. VI. the examiner will reject the claim. §103(a)} Section 103 bars a claim if it is obvious based on a combination of two or more items of prior art. 148 USPQ 459 (1966)} has stated a number of things that can be considered when determining whether something was obvious at the time of its invention. In that case. An examiner. 1. using the claim as a roadmap of what to combine. although it is preferable to cite to one or more references. y Long-felt need for something to solve the problem addressed by the invention.A. {FN43: 35 U. The Supreme Court. in Graham v. a claim does not read on a single item of prior art. the claim may be ³obvious´ under Section 103: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title. or lack of commercial success of prior art references. in the area he or she is examining).B. stating the particular prior art references that anticipate the claim or the multiple references that make the claim obvious. but instead reads on a combination of two or more items. And the independent development of the invention by others is an indication that the invention is obvious to those in its area. VI. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. These include: y Commercial success caused by the invention. y Unexpected results. The references that the examiner has considered are listed on the first page of the patent. or differs in an obvious way from an item of prior art. y Copying of the invention by competitors. John Deere. as well as a reason why those references would be combined by somebody .Chapter 4: An Overview of Patents VI. To prevent the hindsight combination of prior art. the success can¶t be due to superior marketing or similar considerations.S. Rejection of a Claim If the examiner finds that a claim is obvious or anticipated. even a Ph.S. who generally has a degree in science or engineering (and in some cases.C. such as an efficiency beyond what was felt possible. particularly when many people come up with the same invention.D. {FN44: 383 U. There must be a connection between the success of the product using the invention and the invention itself. Secondary Considerations Sometimes an examiner feels something is obvious from the references when it really isn¶t. Sometimes. can also take notice that something is generally known in the field.

Chapter 4: An Overview of Patents VII. or selling the invention throughout the United States or importing the invention into the United States. Patent Term . and you later get a patent on color television. offering for sale. If the applicant does not agree with the examiner. or when determining whether a claim that is not infringed literally is infringed under the doctrine of equivalents. of the right to exclude others from using. Generally.S.with ordinary skills in the art of the invention. he can appeal to the Court of Appeals for the Federal Circuit or can sue in the District of Columbia federal court to order the Patent Office to grant the patent. or importing into the United States. of the right to exclude others from making. if the invention is a process. although there was considerable support for their addition.C. an administrative review body within the Patent Office. he or she can respond with an explanation of why the examiner is mistaken and ask the examiner to reconsider the rejection. {FN45:35 U. you can¶t practice color television (or television in general) as long as my patent hasn¶t expired.´. products made by that process. §154(a)(1)} Originally. When my patent expires. the applicant can pay an additional fee to have the examiner consider further amendments or arguments for patentability. It is important to note that the rights are stated in a negative fashion ± the patent owner can ³exclude others. the rights granted were to exclude others from ³making. giving each the ability to practice their patents. while that second patent blocks practicing the first patent. and. That is because his practicing of the invention may infringe on the rights to exclude held by another patent owner.A. As an example. if I hold the patent on television in general. but I still can¶t practice color television. using. Nature Of A Patent The rights granted by the United States government to a patentee are: a grant to the patentee. Sometimes one patent blocks practicing (making or using) a second patent. or selling´ the invention. neither patent owner can practice his invention until the other patent expires. his heirs or assigns. offering for sale or selling throughout the United States. Admissions made during the prosecution of a patent application will be held against the applicant when interpreting the claims during infringement litigation. In that case. VII. and so it is likely that the two patent owners will cross-license their patents. using. you can practice color television (and anybody else can also practice television). such as by adding additional elements to the claim. but I can¶t practice color television as long as your patent is in force. It does not say that the patent owner can himself practice the invention. an examiner will consider the application twice before making the rejection final. If the applicant agrees with the examiner¶s rejection but can claim the invention in a way that does not read on the prior art. Offering for sale and importing the invention were added to comply with an international trade treaty. After a final rejection. If the decision of the Board is unfavorable to the applicant. or can appeal the final rejection by the examiner to the Board of Patent Appeals and Interferences. referring to the specification for the particulars thereof. the applicant can amend the claims and ask the examiner to consider the amended claims.

F. §154} Most important. That is because the dependent claims don¶t depend on the parent claim for their validity but simply for some of their language.56} And if it is found that an applicant hasn¶t been forthcoming with prior art. A claim reads on something when all the elements of the claim are present in that something. Chapter 4: An Overview of Patents VIII. he or she will receive a full 17-year patent term. or has misled the examiner.C. dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. §282} The presumption of validity means that courts will not substitute their judgment for the examiner¶s unless there is clear and convincing evidence that the examiner was wrong.´ and some applications were kept pending for two decades or more. Presumption of Validity One of the benefits of a patent is the deference given by the courts to the judgment of the examiner: A patent shall be presumed valid. Infringement A claim is infringed when it reads on the alleged-infringing article or process.C. or multiple dependent form) shall be presumed valid independently of the validity of other claims. and the invalidity of a parent claim does not make its dependent claims invalid. whoever without authority makes. to prevent people from keeping a patent pending by delaying tactics until the technology had matured and people were using the invention.S. Each claim of a patent (whether in independent. within the United States or imports into the United States any patented invention during the term of the patent therefor. if an applicant does not delay the examination of the application.S.C. it is to the benefit of a patent applicant to supply the examiner with all prior art that will have a bearing on the patentability of the invention. These are detailed in Section 154. then having the patent issue and collecting royalties from those who had independently developed the invention. dependent.{FN48: 35 U. or sells any patented invention. Because of that.{FN49: 37 C.B.C. {FN46: 35 U. That means that it is difficult to find a patent invalid on the basis of prior art that was considered by the examiner. infringes the patent. These are referred to as ³submarine patents.R. but less difficult when there is newly-discovered prior art. {FN47: 35 U. It is also a Patent Office rule. uses. §1.The term of a patent used to be 17 years from the time the patent issued. the patent can be declared invalid for ³fraud on the Patent Office´ (the old term) or ³inequitable conduct´ (the term in current favor).S. {FN50: 35 U. §271(a)} Subsection (b) also extends infringement beyond direct infringement: .S. There are a number of instances where delays in the prosecution of the patent application don¶t count against the 20-year term. That was recently changed to 20 years from the date of the first application leading to the patent. offers to sell. Note that claims are individually valid. §154(b)(1)(B)} VII. Section 271(a) indicates that infringement occurs when one of the rights to exclude is violated: Except as otherwise provided in this title. It is only necessary to infringe one claim of a patent for the patent to be infringed.

For example. Service. then there may be infringement under the doctrine of equivalents. {FN55: Sage Products v.´ and ³plate¶). manufacture. §271(c)} In patent litigation. {FN51: 35 U. For example. If there is any element that does not have a corresponding aspect in the alleged-infringing device or method.S. Cir. and not a staple article or commodity of commerce suitable for substantial noninfringing use. __. It may not be possible to assert the doctrine of equivalents to cover disclosed but unclaimed embodiments. 1997)} That is because it was foreseeable that the amended claim limitation did not include slots in positions other than the top of the container.C. then a circuit that performs the same function in the same way to get the same result but is implemented using transistors might be covered by the doctrine of equivalents. 62 USPQ2d 1225 (Fed. since it would have been impossible at the time the claims were written or amended to use the corresponding terms that describe the parts of a transistor.´ ³grid.S. However. B. The extension of a claim under the doctrine of equivalents is limited by ³prosecution history estoppel´ (sometimes called ³file wrapper estoppel´) ± if during the prosecution of the patent application the applicant has limited a claim to avoid prior art. 44 USPQ2d 1103 (Fed. it is common to make a claims chart that shows each element of each claim that is being infringed.´ the doctrine of equivalents would not reach a container with its slot on the side near the top. 62 USPQ2d 1705 (2002)} the doctrine of equivalents likely does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and could have been included in the claims. __ U. 285 F. Nonliteral Infringement A claim may be under the ³doctrine of equivalents´ infringed even if it does not literally read on a thing..3d 1420. if the claim is to A.S. knowing the same to be especially made or especially adapted for use in an infringement of such patent. 126 F. R. Cir. §271(b)} Subsection (c) covers contributory infringement: Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine. even though it performed the equivalent function. {FN54: Festo v. to avoid prior art. However. shall be liable as a contributory infringer. B. there is no literal infringement. and the alleged-infringing thing has A. if an application originally claimed a container with a slot and then. if an application filed before the invention of the transistor had its claims amended to include the terms used to describe parts of vacuum tubes (such as ³cathode.Whoever actively induces infringement of a patent shall be liable as an infringer. and D.3d 1046. Two recent decisions dramatically limit the scope of the doctrine of equivalents. The applicant could not have foreseen a limitation as to after- . 2002)} And in light of the Supreme Court¶s decision in Festo. Shoketsu Kinzoku Kogyo Kabushiki Co. then the claim with that element is not literally infringed. {FN52: 35 U. and then indicate which aspect of the infringing device or method corresponds to each element in the claims chart. VIII.A. Devon Industries. or a material or apparatus for use in practicing a patented process. it cannot be extended to what was previously disclaimed.C. combination or composition. and C. the claim was modified to ³a slot at the top of the container. constituting a material part of the invention.E. {FN53: Johnson & Johnston v. if D performs substantially the same function in substantially the same way to get substantially the same result as C.

Patentees. or selling within the United States any patented article for or under them. or by seeing a product covered by the patent marked as patented. Use of the rights under the patent to extend it to cover things not within the scope of a patent. {FN57: 35 U. in view of the circumstances. in which event damages may be recovered only for infringement occurring after such notice.C.C. together with the number of the patent. unless. either by fixing thereon the word ''patent'' or the abbreviation ''pat. or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product.S.B. Filing of an action for infringement shall constitute such notice. may give notice to the public that the same is patented. Section 287(a) provides that an infringer will not be liable for damages unless he has received notification of the patent. this can not be done. or importing any patented article into the United States. Marking Even though patents are publicly available. VIII. can be an antitrust violation and make the patent unenforceable until the antitrust violation ends. {FN56: 35 U.''. by fixing to it. offering for sale. In the event of failure so to mark. it is not reasonable for a person to know what is covered by every patent. §287(a)} . (3) sought to enforce his patent rights against infringement or contributory infringement. or when. by a letter informing you of the patent. except on proof that the infringer was notified of the infringement and continued to infringe thereafter. a label containing a like notice. from the character of the article. and persons making. so that it will cover future infringements only.C. was not disclaiming that technology. and should not be held to such a disclaimer under prosecution history estoppel. the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned. (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent. Patent Misuse Subsection (d) indicates that a number of acts that might otherwise be an antitrust violation are not when a patent is involved: No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent.S. VIII. (4) refused to license or use any rights to the patent. But that notice can come with the filing of an infringement suit. §271(d)} But that is not to say that a patent owner can do anything he wants without concern for violating the antitrust law. or to the package wherein one or more of them is contained.invented technology. no damages shall be recovered by the patentee in any action for infringement. such as licensing a patent only if you will buy the raw materials needed to practice the invention.

the words ''patent applied for. or imported by the person into the United States.VIII. and still may be if the applicant requests and has not filed a foreign patent application. offered for sale. offered for sale. but no patent has issued. or affixes to. Damages Recoverable As with copyright infringement. §284} . and that at that time people who are making unauthorized copies of the product can be forced to stop.'' ''patentee. or of deceiving the public and inducing them to believe that the thing was made. the court shall assess them. it was impossible to know what the pending application claimed. or affixes to. when no application for patent has been made. Section 292 covers false marking: (a) Whoever. or uses in advertising in connection with any article.D. §292} Any person. ³Patent Pending´ Often you see a product marked ³patent pending´ instead of being marked with a patent number. not just the patent owner. can sue for false marking.C.C. the word ''patent'' or any word or number importing that the same is patented for the purpose of deceiving the public. or Whoever marks upon. and so a patent pending mark would create sufficient uncertainty to discourage the investment in producing unauthorized copies of the product. sold. VIII. This means that a patent application has been filed and is being examined by the Patent Office. or uses in advertising in connection with anything made.1. The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.'' or the like. or if made. without the consent of the patentee. {FN58: 35 U.D. The Patent Act provides penalties for falsely marking a product as patented or as having a patent pending. with the intent of counterfeiting or imitating the mark of the patentee. In either event the court may increase the damages up to three times the amount found or assessed. there are a variety of penalties for infringing a patent. together with interest and costs as fixed by the court.C.S. When the damages are not found by a jury.1. the name or any imitation of the name of the patentee. Penalties for Infringement VIII. or affixes to. is not pending. or uses in advertising in connection with any unpatented article. but in no event less than a reasonable royalty for the use made of the invention by the infringer. the patent number. The patent pending marking is simply a warning that a patent may issue that covers some aspect of the product.S. The recoverable damages are described in Section 284: Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement. in which case half the penalty goes to the person suing and half goes to the federal government. Because patent applications used to be kept secret by the Patent Office.'' ''patent pending. {FN59: 35 U. or sold by such person within the United States. or Whoever marks upon. for the purpose of deceiving the public ± Shall be fined not more than $500 for every such offense. used.'' or any word importing that an application for patent has been made. marks upon. or imported into the United States by or with the consent of the patentee. or the words ''patent.

But a recent change in the Patent Act. including studying patents as they are issued.C. Damages are generally tripled when the infringement is found to be willful ± the infringer was aware of the patent but infringed it anyway. such as when the invention is being sold. {FN62: 35 U. they are not available to an applicant until the patent based on the application is issued. then there will be no provisional rights even though the application has been published.The reason for the treble damages is to prevent people from infringing when they don¶t want to pay royalties and then when they are found to have infringed. which often takes two years or more after an application is filed.C. In that case. as provided for in Section 122(b). Other penalties for infringing a patent include injunctions to stop future infringement {FN60: 35 U. Provisional Rights There can be no infringement until a patent is issued. That generally means that the patent applicant must send a copy of the published patent application to the person violating the provisional right. to simplify proving that the violator has actual notice. as part of the early publication of patent applications.S. and it is reasonably clear what such a patent might claim. no patent issues from the application. for some reason.D. IX. unless an applicant requests that the application not be published and that application is not filed in a foreign county. If a claim is substantially changed. In order to collect those royalties. Because claims are often amended during the examination of a patent application. the person who is violating the provisional right must have actual notice of the published patent application. so that provisional rights will be immediately available.2. {FN63: 35 U. Note that there is no equivalent to the Copyright Act¶s statutory damages in the Patent Act. If. marked as patent pending. an applicant should request publication as soon as the patent application is filed. This can be useful when there is no concern about the early disclosure of a patent application. But it also allows for publication earlier than 18 months at the request of the applicant. having to pay only the royalties that they were avoiding.S. §154(d)} and are available between the time of the early publication of the patent application. when there would be no punishment if they had made no effort at all. §122(b)} and the issuance of the patent. §285} Note that unlike willful copyright infringement. it will be necessary to have the application republished and new notice provided to a person thought to be violating the provisional rights.C. What To Do If You Are Told You Are Infringing a Patent . A troubling aspect of the tripling of damages for willful infringement is that it seems to punish a person who tries to be aware of the patents that are being issued and reward those who ignore patents until they receive actual notice that they may be infringing a particular patent. But it is hard to see a court punishing an infringer for making a good-faith effort to avoid infringing patents. provisional rights are available only when a published claim is substantially identical to a claim in the issued patent.S. But even though the provisional rights begin at the time the application is published.C. VIII. §283} and attorney fees in exceptional cases. The early-publication provision calls for the publication after 18 months of any application. These ³provisional rights´ are detailed in Section 154(d). allows a patent owner to collect a royalty for acts that would infringe the patent when it has issued. {FN61: 35 U. patent infringement carries no criminal penalties.S.

it is actually encouraged by the patent laws because it results in new ways of doing things. So trying to invalidate a patent generally results in a search for prior art not considered by the examiner and clearly different from the prior art that was considered.A. to provide a written opinion of why each claim of the patent is not infringed. The give-and-take of the reexamination was entirely between the patent owner and the examiner. is to review the claims of the patent in light of its prosecution history (which may give particular meaning to claim terms or otherwise limit the claims) to see if all the elements in the claims are components of the alleged infringing product. And any prior art supplied as part of the . (Many companies get patents not for stopping their competitors but as bargaining chips in negotiating cross-license agreements.) Finally.B. or to have the Patent Office reexamine the patent in light of the newly-discovered prior art. The examiner¶s decision that the claimed invention is not anticipated or made obvious in light of the prior art considered (and listed on the first page of the patent) is also given high deference. A patent attorney should be consulted to interpret the claims and. To have the Patent Office order a reexamination. you can try to invalidate the patent.C. (That will make it difficult to show willful infringement if you continue making or selling the product and a court later determines that your interpretation of the claims is incorrect. But you have to worry about continued infringement under the doctrine of equivalents if your change is minor. IX. Reexamination Any prior art discovered in such a search can be used as a defense in an infringement suit against you. Until a recent change in the patent statute. You can try to negotiate a license with the patent owner. and in particular could not point out misconceptions on the part of the reexamination examiner. most people avoided reexamination since they could play no role in it beyond their original request. or suspect that that might be the case.IX. (This is called ³inventing around´ the patent.) IX. you have three choices (besides ceasing to make and sell your product). This is difficult because the presumption of validity of a patent means that your evidence must meet a high standard. and while it sounds like a sneaky thing to do. as the basis for filing a declaratory judgment action to find the patent invalid if you have received a letter from the patent owner sufficiently threatening of an infringement suit. Three Choices If a claim of the patent does read on your product. as indicated by the lack of a rejection for that reason. if infringement is not found. But prior art not known to the examiner cannot receive the same deference because it clearly did not form a part of the examiner¶s decision to grant the patent.) You can read the claims carefully to determine if there is some change you can make to your product such that the claims no longer read on your product because one element is missing or different in your product. you have to raise a new issue of patentability. Reviewing the Claims The first thing you should do when you are notified that you may be infringing a patent. For example. you can¶t just say that the disclosure isn¶t enabling because deference is given to the examiner¶s determination that it is enabling. which generally means that you have found new prior art and are not just saying that the examiner misapplied the prior art that he considered. possibly cross-licensing a patent that you own that may be useful to the patent owner.

there are still problems that keep people from taking advantage of reexamination as an alternative to litigation. 7478 (1996)} for examiners that clarify when a softwarebased invention is statutory subject matter. Recent decisions by the Court of Appeals for the Federal Circuit make it clear that software-based inventions and methods of doing business are . which renders the available process useless in many obvious instances such as with previously considered prior art. as long as a ³substantial new question of patentability´ is shown. However. Rep. or did not consider a portion of the reference in making his decision. this bill is not a license to abuse patentees and waste the life of a patent. software-based inventions can be patented. While the bill clarifies the basis for a reexamination determination and removes the overly-strict bar established by the court. reexamination may be undesirable unless you have prior art that you are sure will invalidate the patent. Perhaps Congress will see this as reason to institute a simplified early reexamination. only patent owner could further appeal the decision of the Board to the Court of Appeals for the Federal Circuit. The point must be stressed that the past requirement of µa substantial new question of patentability¶ has not been diminished. such as an opposition period for a short time after the issuance of a patent to weed out patents where the best prior art was unavailable to the examiner. There should be substantial evidence that the examiner did not properly understand the reference. the courts should judiciously interpret the µsubstantial new question¶ standard to prevent cases of abusive tactics and harassment of patentees through reexamination. The issue raised must be more that just questioning the judgment of the examiner. Reg.¶ The agency has discretion in this determination to permit reexamination. if any. 107-120 at 3} Though each revision to reexamination makes an important improvement. Further changes were made in 2002 to give the requestor the same appeals rights as the patent owner. Another change allowed the reexamination to be based on prior art already considered by the examiner. The Patent Office has issued guidelines {FN1: 61 Fed. while either party could appeal the examiner¶s decision to the Board of Patent Appeals and Interferences. Previously. {FN64: H. not merely `any sort of question. No. That substantial new question must be put forward clearly in the request for reexamination. but it is not absolute. But recent developments have gone a long way toward clarifying when a software-based invention will be statutory subject matter. The reexamination provision prevents you from using anything that you could have brought up at the time of the reexamination in later litigation. The bill preserves the necessary safeguard in the Patent Act against harassment of patentees with the safety-valve of a µsubstantial new question of patentability' standard. Because of uncertainty about the scope of this bar.R. But Congress made it clear that this is not a way to second-guess the examiner. Chapter 5: Software-Based Inventions Probably no aspect of patent law has been more uncertain than the issue of what. since the presumption of validity now applies to that prior art as well as the prior art considered during the original patent examination. or at least cause new claims that will not concern you.reexamination request became essentially useless in later patent litigation. The patent statute was changed in 1999 to permit the reexamination requestor to participate in the reexamination by providing written commentary on the actions of the examiner and the responses of the patent owner.

while for other patent applications. Report of the President¶s Commission on the Patent System. §112. but no patent could issue because the claimed invention is not novel. whether software should be protected by patents. {FN6: To Promote the Progress of Useful Arts. The invention must also be novel {FN3: 35 U. §101}which states what may be patented. it would clearly be claiming statutory subject matter.C. Even if these were available. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. In many instances. at 13 (1966)} The view that steady growth in the software industry since 1966 somehow obviates the need for patent protection is myopic. an appeals court recognizing the broad range of what should be patentable. Without this search. There were . the question hasn¶t even been raised.S. either by patent or by copyright.indeed patentable. although some uncertainty remains regarding the various forms for claiming such inventions. rather than as a program itself. there was little need for statutory protection of computer software. I. In 1966. §103} and the application must fully disclose how to make and use the invention. Indirect attempts to obtain patents and avoid the rejection. The past lack of clarity came not from the statute itself. or a machine or components thereof programmed in a given manner. the President¶s Commission on the Patent System issued a report that discussed.C. regardless of its novelty or nonobviousness. Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. §102} and nonobvious. by drafting claims as a process. Reluctance at the Beginning The history of the patentability of software-based inventions has been marked by a reluctance of the Patent Office to enter this new field of technology.C. among other things.S. On the other hand. The cases are difficult to reconcile and are often based on distinctions that don¶t stand up to technical (rather than legal) analysis. most of the examiner¶s time has been spent on the question of whether the invention contained statutory subject matter. it would be rejected because a writing is not statutory subject matter.S.C. first paragraph} As an example. The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. an invention has been considered nonstatutory not because of the nature of the invention but because of the way it was claimed. but from the court decisions that have attempted to interpret Section 101of the patent laws. if an application today were to claim an ordinary pencil. the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent. {FN2: 35 U. In the early days of digital computers (before 1970). It is important to remember that whether a claimed invention recites statutory subject matter is just the first hurdle that must be conquered before one receives a patent. {FN5: 35 U. {FN4: 35 U. It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available. In the prosecution of some patent applications for software-based inventions. reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated.S. have confused the issue further and should not be permitted. and a confusing decision by the Supreme Court when it first considered patents of software-based inventions. if an application were to claim this text.

(5) shifting the signals to the left by two positions. At the time there were only two claims remaining: Claim 8. In any inventive area where the Patent Office discourages applications. beginning with the least significant binary digit position. A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of (1) testing each binary digit position i.A. Benson and Talbot. (4) adding a binary µ1¶ to the first position of said register. (6) adding a µ1¶ to said first position. (3) masking out said binary µ1¶ in said second position of said register. repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation. The Patent Office rejected many of these applications. and the company appealed. Bell Telephone Laboratories) filed patent applications. In 1963. Claim 13. The method of converting signals from binary coded decimal form into binary which comprises the steps of (1) storing the binary coded decimal signals in a reentrant shiftregister. Some applications claimed the invention in terms of an apparatus built from special-purpose hardware as well as implemented using a conventional digital computer. (2) shifting the signals to the right by at least three places. a number of companies (for example. since it was usually expensive and sold to a small market. entitled ³Conversion of Numerical Information. The Patent Office Board of Patent Appeals and Interferences had affirmed the examiner¶s rejection of the application.´ It was for a method for converting from binary-code decimal (BCD) numbers to pure binary numbers. Trying to Patent a Computer Algorithm To test the waters of patenting software-based inventions. This is a detriment not only to the Patent Office but to the country as a whole. not a reason to refuse applications for software-based inventions. (2) if a binary µ0¶ is detected. Software marketed to others could be protected by contract and trade secret. (3) if a binary µ1¶ is detected.few computers. the necessary search library will never develop. adding a binary µ1¶ at the (i+1)th and (i+3)th least significant binary digit positions of the next lesser significant decimal digit . Chapter 5: Software-Based Inventions I. of the most significant decimal digit representation for a binary µ0¶ or a binary µ1¶. and most software was written by programmers at the company using the computer. The argument that something should not be protected by patents because of the inability of the Patent Office to amass the proper search library should be viewed as a condemnation of the Patent Office for not doing its job. most of which were at large companies. until there is a binary µ1¶ in the second position of said register. Bell Labs filed an application on behalf of its employees. since important techniques will remain trade secrets rather than being disclosed in patents. and a few were appealed to the Court of Customs and Patent Appeals (CCPA) with mixed results. and (7) shifting the signals to the right by at least three positions in preparation for a succeeding binary µ1¶ in the second position of said register.

and (5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed. 169 USPQ at 553} The decision of the Board was reversed by the CCPA. (4) upon exhausting the binary digit positions of said most significant decimal digit representation.´ regardless of the uses to which their users may put them. since cash registers and other patentable machines also work on numbers and that has never been a reason for taking them out of the category of machines. but a key limitation of claim 8.2d at 688. unlike processes with mental steps that require a subjective judgment to be made. so we have a process that can be implemented only on a machine. They were not rejected because of a lack of novelty or nonobviousness. are a part of one of our best-known technologies. Claim 13 was more problematical. repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3). {FN7: 441 F. although those factors may indeed have been absent.2d 682.B. or even with ³red and blue poker chips and a surface to put them on or slots to put them in so that O¶s and 1¶s can be represented. and are in the ³useful arts´ rather than the ³liberal arts. The court did not find that argument persuasive.´ In his decision. The Supreme Court¶s Benson Decision . the examiner thought the claims set forth ³mental processes´ or ³mathematical steps. The examiner rejected the claims because they did not recite statutory subject matter. I.) More important. It seems beyond question that the machines ± the computers ± are in the technological field. Judge Rich correctly pointed out that it is not a mere phrase. with paper and pencil. the claimed process could be carried out without any human intervention. since it did not recite any hardware. It could be done with any hardware. Instead. the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. and the Patent Office appealed to the Supreme Court. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? {FN8:441 F. not by a human mind. That is a hardware element. and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation. The CCPA reversed the examiner in In re Benson.representation. not even the reentrant shift register.´ as are all other types of ³business machines.´ While the court conceded that the method of claim 13 could be performed by a person. The Patent Office urged that the method was not a process within the meaning of Section 101. the answer clearly is no. it thought it was improbable that anyone would ever do it by hand in actual use: Realistically. being referred to in most of the elements. the CCPA first asked ³would a reasonableinterpretation of the claims include coverage of the process implemented by the human mind?´ Because of the reciting of a ³reentrant shift register´ as an element of the claim. which are mathematical abstractions. (The lawyer for the Patent Office referred to the inclusion of the hardware device in the claim as a ³most embarrassing phrase. 169 USPQ 548 (1971)} Considering claim 8. because the method worked on numbers.´ neither of which he believed were statutory subject matter.

36(1949)} Justice Douglas. {FN11: 409 U. a novel and useful structure created with the aid of knowledge of scientific truth may be. the opinion states ³While a scientific truth. 572.´ But an algorithm. who wrote the opinion in Gottschalk. but it is still a patentable manufacture. We do not so hold. which means that if the judgment below is affirmed. While many algorithms solve mathematical problems (such as . furniture. Here the ³process´ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure-binary conversion.S. 335 U. is not a patentable invention. Ostby. Justice Douglas then revisited Cochrane v. {FN13: 409 U.{FN14: 409 U. the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.S.S. {FN10: 409 U. 175 USPQ at 676} So we now know what Benson does not mean: that computer programs as a broad class are unpatentable. 175 USPQ at 673} This is a strange argument. 175 USPQ at 676} Previously in the decision. Because the claimed technique for converting from BCD to binary has great utility.S.S. at 71-72.´ But then he states: It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ³different state or thing. in that it can be used in a wide variety of applications. it isn¶t entitled to patent protection! Many things have a variety of uses ± a novel fastener can be used to hold together parts of airplanes. But how do we tell if a software-based invention is patentable or unpatentable? Justice Douglas states ³in a nutshell´ the reason why the claims are unpatentable: It is conceded that one may not patent an idea.´ {FN9: Jungersen v.´ That statement followed the long-standing rule that an idea of itself is not patentable. 63. viewing them as a monopoly that should not be extended any more than necessary. In 1949. as the term is normally used. or the mathematical expression of it. It is said that the decision precludes a patent for any program servicing a computer. which he notes as a ³clue to the patentability of a process claim that does not include particular machines. Benson. Deener.´ We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.The Supreme Court has gone through phases where it is hostile to patents. 560. Justice Jackson wrote that ³the only patent that is valid is one which this Court has not been able to get its hands on. at 71. 175 USPQ 673 (1972)} was certainly not an advocate of expanding the scope of patents. an algorithm was described as ³a procedure for solving a given type of mathematical problem. Commissioner of Patents v. The mathematical formula involved here has no substantial practical application except in connection with a digital computer. {FN12: 94 U. presumably because of conflicts of interest). But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. 780 (1876)} an 1876 Supreme Court patent decision. is simply an orderly procedure for solving a problem. Citing past Supreme Court decisions. 80 USPQ 32. In a unanimous decision (with three justices not taking part in the decision. the Court reversed the decision of the CCPA. at 68. for its definition of a process as something that transforms its subject matter to a different state or thing.S. or even broken human bones. The end use may (1) vary from the operation of a train to verification of drivers¶ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.

We do not so hold. I.finding a square root) or involve the manipulation of numbers (such as Benson¶s invention). and unobvious. Other. Neither the examiner nor the board questioned that appellant¶s invention. If that rubric be law. it should be Congress and not the courts that should extend that protection. 197 USPQ 464 (1978)} the CCPA was asked to decide whether a technique for computer-based typesetting was statutory subject matter. the board merely stated that the coverage sought ³in practical effect would be a patent on the algorithm itself. its approach would appear to be that every implementation with a programmed computer equals ³algorithm´ in the Benson sense.C.´ Though the board gave no clear reasons for so concluding. the claimed algorithm isn¶t the only way to convert BCD numbers to pure binary. but the Board reversed the examiner¶s rejection and instead rejected the claims as nonstatutory subject matter as described in Benson: The board construed the claims ³to cover a known program loaded display typesetting device wherein the novelty resides in the program. was new. With no reference to the nature of the algorithm involved. as claimed. Freeman had invented a system that made it easier to typeset mathematical formulas. at 71. But since Congress had described statutory subject matter using essentially the same language for almost 180 years at the time of the Benson decision.´ {FN15: 409 U.197 USPQ at 469} The CCPA pointed out the problem with the Board¶s reasoning: The fundamental flaw in the board¶s analysis in this case lies in a superficial treatment of the claims. other algorithms solve purely nonmathematical problems (such as finding a character string matching a pattern) or problems where numbers represent properties of items (such as the width of a line and the width of characters when trying to justify lines of type). and any valid claims by Benson cannot read on that prior art.´ In applyingBenson. it apparently did not think that a special category of statutory subject matter was required for each new technology.2d 1237.2d at 1242-1243.S. the board said the improvement covered by the claims appeared to have no substantial practical application except in connection with a digital computer and that the coverage sought ³in practical effect would be a patent on the algorithm itself. The opinion then repeats the comments of the President¶s Commission on the Patent System discussed above. The decision does not recognize these differences. In In re Freeman.175 USPQ at 676} But we also know that Benson¶s claimed invention was not patentable.´ That claims 1-7 were apparatus claims was dismissed on the view that appellant should not be allowed to claim indirectly what he cannot claim directly with method language. every claimed method that can be so implemented would equal nonstatutory . We do know that the Court did not think all computer programs were unpatentable because it specifically stated ³It is said that the decision precludes a patent for any program servicing a computer. presumably less efficient algorithms had been used before Benson¶s invention. Of course. {FN16: 573 F. Trying to Make Sense of Benson It is difficult to know where the Supreme Court drew the patentability line for computer algorithms in Benson. {FN17: 573 F. The examiner had rejected the claims as involving mental steps. useful. and indicates that if patent protection for software-based inventions is desirable.

197 USPQ at 471} The dictionary definition for an algorithm is ³a step-by-step procedure for solving a problem or accomplishing some end. Hopefully. the claim must be further analyzed to ascertain whether in its entirety it wholly preempts that algorithm. {FN18: 573 F.2d at 1245. A claim which substitutes. When considered as a whole. a mathematical algorithm but instead an orderly procedure for specifying where the characters of a formula should be placed on a screen or phototypesetter. {FN20: 573 F. it must be determined whether the claim directly or indirectly recites an ³algorithm´ in the Benson sense of that term.´ This broad meaning for an algorithm is essentially the same as for a process. recite in prose a formula for converting binary coded decimal numbers into binary numbers. each of the claims in Benson did. the CCPA reversed a decision of the Board that the claims of Dale Flook to a method of updating alarm limits in a chemical process recited nonstatutory subject matter under the Benson decision. for a mathematical formula in algebraic form. and processes are specifically included in Section 101 as a class of statutory subject matter. and the two-part test can be paraphrased as follows: Determine whether the claim directly or indirectly recites a mathematical algorithm. 197 USPQ at 470} The CCPA proposed a two-part test for determining whether a claim recites statutory subject matter: First. In particular. directly or indirectly. The CCPA cautioned that there were many ways a mathematical algorithm could appear in a claim. 195 USPQ 9 (1977)} The only independent claim was . the Supreme Court in Benson was not trying to remove processes from Section 101.2d at 1245. Indeed. so it must have been considering algorithms in a more restricted sense.subject matter under 35 USC 101. That reasoning sweeps too wide and is without basis in law. If it does and the claim wholly preempts that algorithm. however. {FN21: In re Flook. a formula or equation may be expressed in traditional mathematical symbols so as to be immediately recognizable as a mathematical algorithm. it defined algorithms as a ³procedure for solving a given type of mathematical problem´ (emphasis added) and appeared to use the terms ³algorithm´ and ³mathematical algorithm´ interchangeably. the claims at issue inBenson did not contain a formula or equation expressed in mathematical symbols. {FN19: 573 F. The CCPA determined that ³an algorithm in the Benson sense of that term´ is a mathematical algorithm.´ nonetheless recites an algorithm in the Benson sense. the first part of the twopart test was not satisfied and the claims were not drawn to nonstatutory subject matter. Chapter 5: Software-Based Inventions I.197 USPQ at 471 (citations omitted)} Because the claims to Freeman¶s computer-based typesetting system did not recite.D. In some claims.2d 21. ³words which mean the same thing. The Supreme Court¶s Flook Decision About the same time as Freeman. the claim is nonstatutory. for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm. 559 F. Second. Other claims may use prose to express a mathematical computation or to indirectly recite a mathematical equation or formula by means of a prose equivalent therefor.2d at 1246.

{FN24: 437 U. in Parker v. The Court there stated that Flook¶s claims did . Remember. Thus.2d 758. though. The Patent Office appealed to the Supreme Court. The CCPA framed the issue as whether a processes that uses a mathematical algorithm in an otherwise statutory process (in this case. is statutory. Flook.0-F)+PVL(F) where F is a predetermined number greater than zero and less than 1. that Flook does not require literal preemption of a mathematical algorithm found in a patent claim. (3) Determining an updated alarm limit which is defined as B1+K. B1. it does not preempt the mathematical algorithm and is therefore statutory subject matter. Whether the algorithm was in fact known or unknown at the time of the claimed invention. because solution of the algorithm.´ But the Court said that the proper approach to be used is to look at the process in general: The process itself. the CCPA revised its two-step Freeman test in In re Walter. and. rather than is wholly a mathematical algorithm. using the following equation: B1 = Bo(1. 198 USPQ at 198 (citations omitted)} Because the chemical process. absent Flook¶s particular alarm limits formula. {FN23: 437 U.0. In light of Flook.´ it is treated as though it were a familiar part of the prior art. said present value being defined as PVL. It observed that ³the claims cover a broad range of potential uses of the method´ but noted that they do not ³cover every conceivable application of the formula. (2) Determining a new alarm base.´ The present claims do not preempt the formula or algorithm contained therein. Benson¶s proscription was limited by its words to claims which involve a ³mathematical formula´ and which ³would wholly pre-empt the mathematical formula. at 591-592. 195 USPQ at 11 (citations omitted)} The CCPA stated that if a mathematical algorithm is claimed for a particular use but not all possible uses.A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of Bo+K wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises: (1) Determining the present value of said process variable. Indeed. thereafter (4) Adjusting said alarm limit to said updated alarm limit value. Flook still does not provide the clear view of what. 205 USPQ 397 (1980)} The second step of the Freeman test is stated in terms of preemption. if any. Benson¶s holding does not render the claims before us unpatentable. per se. the Court ruled that the claims did not recite statutory subject matter.S. a chemical conversion process). the novelty of the mathematical algorithm is not a determining factor at all. We note. must be new and useful. 198 USPQ 193 (1978)} held that the claim was nonstatutory. not whether Section 102¶s novelty or Section 103¶s nonobviousness requirements are met. as one of the ³basic tools of scientific and technological work. {FN25: 618 F.2d at 23. that we are trying to determine only whether Section 101 is satisfied. The Supreme Court. however. 584. The Court has imported novelty considerations into statutory subject matter. would not infringe the claims.S. not merely the mathematical algorithm. was wellknown. software-based processes are statutory subject matter under Section 101. {FN22: 559 F.

we have consistently applied it in the spirit of the foregoing principles. In order to determine whether a mathematical algorithm is ³preempted´ by a claim under Freeman. the claim as a whole must be further analyzed. i. The Board upheld the examiner¶s decision. drawn to the algorithm itself. the claim passes muster under Section 101. Chakrabarty¶s Bacteria Two years after the Supreme Court decided Flook. however. as applied. . In Benson and Flook.. in each case. and the CCPA reversed. but that ³the application of the law of nature to a new and useful end. the mathematical algorithm is merely presented and solved by the claimed invention. the claim being otherwise statutory.´ and that. a motive.2d at 767.´ would be. is a fundamental truth. ³a hitherto unknown phenomenon of nature´ if claimed would not be statutory. genetically-engineered bacteria capable of breaking down crude oil and having significant value in the treatment of oil spills. While we have stated the test in terms of preemption.e. Once a mathematical algorithm has been found. and is not applied in any manner to physical elements or process steps. it has viewed it as requiring that the claim be examined to determine the significance of the mathematical algorithm. no amount of post-solution activity will render the claim statutory. When this court has heretofore applied its Freeman test. . 205 USPQ at 407 (citations omitted)} Chapter 5: Software-Based Inventions I. Since we have noted thatFlook does not require literal preemption of a mathematical algorithm by a claim for a finding that the claim is nonstatutory. it decided Diamond v. Chakrabarty. in the abstract. If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims). no such relationship could be found. as was the case in Benson and Flook. 206 USPQ 193 (1980)} another statutory subject matter case. they were not statutory subject matter under Section 101. {FN27: 447 U. The examiner found that as living things. does the claim implement the algorithm in a specific manner to define structural relationships between the elements of the claim in the case of apparatus claims. . but it rejected claims for the new bacteria itself. we believe that the Freeman test. is in no way in conflict with Flook. {FN26: 618 F. nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm. or limit or refine physical process steps in the case of process or method claims? The point of the analysis is the recognition that ³A principle. 303.not ³cover every conceivable application of the formula. the claim is analyzed to establish the relationship between the algorithm and the physical steps or elements of the claim.´ Nevertheless. The Patent Office allowed method claims for producing the bacteria and for a combination of a floating carrier and the bacteria. If. but dealing with man-made.E. the entire claim was. we thus deem it appropriate to restate the second step of the Freeman test in terms other than preemption. an original cause.S. these cannot be patented. .

And ³unless otherwise defined.´ {FN28: 447 U.In contrast to its decisions in Benson and Flook.´ We have also cautioned that courts ³should not read into the patent laws limitations and conditions which the legislature has not expressed. the activation energy constant (C) unique to each batch of said compound being molded.in Chakrabarty the Supreme Court (by a fiveto-four majority) took a broader view of Section 101: In cases of statutory construction we begin. at 308.´ The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to ³include anything under the sun that is made by man. of course. physical phenomena. with the language of the statute. and abstract ideas. and abstract ideas have been held not patentable. ³Congress plainly contemplated that the patent laws would be given wide scope. natural logarithm conversion data (ln). James Diehr and Theodore Lutton had invented a method for operating the molding presses used in the manufacture of rubber articles such as tires. contemporary. It did this by continually monitoring the actual temperature in the mold and repeatedly calculating the cure time using a well-known formula. comprising: providing said computer with a data base for said press including at least. physical phenomena. initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure.S. and a constant (x) dependent upon the geometry of the particular mold of the press. the Court ruled that the bacterium was either a manufacture or composition of matter and was statutory subject matter. the Arrhenius equation. . 206 USPQ at 196 (citations omitted)} It then went on to consider whether the bacterium was a manufacture or composition of matter. Their method produced properly cured rubber articles by ensuring that the articles remained in the press for the proper time so they were not either overprocessed or underprocessed. They claimed A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer. at 309. it¶s not surprising that a year later the next (and last) software patent case before the Supreme Court produced a different result from Benson and Flook.´ was patentable. I. words will be interpreted as taking their ordinary.F.S. constantly providing the computer with the temperature (Z). Diehr¶s Rubber Molding Given that Chakrabarty apparently held that ³anything under the sun that is made by man. {FN29: 447 U.´ This is not to suggest that Section 101 has no limits or that it embraces every discovery. constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding. and noted that Congress has purposely chosen broad and expansive terms to indicate what was statutory subject matter. common meaning. 206 USPQ at 197 (citations omitted)} Finding that the bacterium did not occur naturally.´ with the exception of ³laws of nature. The laws of nature.

209 USPQ 1 (1981)} decision. Until the Court directs us otherwise. 203 USPQ at 50} Not surprisingly. {FN31: 602 F. The Court. This Court has undoubtedly recognized limits to Section 101 and every discovery is not embraced within the statutory terms. The examiner rejected the claims because he felt Diehr and Lutton were claiming a computer program.2d at 986-987. 175. This.2d at 985. Were it not for the presence of a formula. 602 F. . In Diehr. Therefore. {FN30: In re Diehr and Lutton. Our conclusion regarding respondents¶ claims is not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer are used. mathematical algorithm. The CCPA reversed. the respondents here do not seek to patent a mathematical formula.both of which are computer-related. claims may be rejected under Section 101 because they attempt to embrace only a mathematical formula.repetitively calculating in the computer. physical phenomena and abstract ideas. . the Arrhenius equation for reaction time during the cure. stand for no more than these long established principles. as we perceive it. at frequent intervals during each cure. it does not become nonstatutory merely because a computer is involved in its execution. . Diehr {FN33: 450 U. the Patent Office appealed again to the Supreme Court. is the direction which has been given us by the Supreme Court. or method of calculation. As far as we are concerned. one that transforms rubber to a different state of thing. . Instead. affirmed the decision of the CCPA. .2d 982. The Court then addressed this aspect of the claimed invention. but not merely because they define inventions having something to do with a computer. Our recent holdings in Benson and Flook. . in its five-to-four Diamond v. which is ln v = CZ + x where v is the total required cure time. Excluded from such patent protection are laws of nature. If the claim is drawn to subject matter. repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time. 203 USPQ at 48-49 (citations omitted)} . and opening the press automatically when a said comparison indicates equivalence. the Court viewed the claimed invention as a conventional process. {FN32: 602 F. any rejection which is based solely on the determination that a computer or computer program is involved is insupportable because it is overly broad and must be reversed as being without basis in the law. . but this time the outcome was different. the claims would clearly be statutory. In contrast. ³subject matter to which the Supreme Court has declined to extend patent protection absent a considered action by Congress´ and the Board agreed with the examiner. they seek patent protection for a process of curing synthetic . 203 USPQ 44 (1979)} A claim drawn to a process or method does not depend for its validity under 35 USC 101 on whether a computer is involved. we continue to disagree with the notion that a claim may be rejected as nonstatutory merely because it involves a computer program or is computer related.S. . or implementation using a computer. . which is otherwise statutory. . .

´ We think this statement . Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula. but if the computer use incorporated in the process patent significantly lessens the possibility of ³overcuring´ or ³undercuring. Arrhenius¶ equation is not patentable in isolation. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. in Flook we stated. mathematical formula. particularly one involving a change in state or composition of a physical object. etc. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. Section 101.´ {FN34: 450 U. computer program or digital computer. is not a patentable invention. that process is at the very least not barred at the threshold by Section 101.´ Similarly. is statutory subject matter even though it involves a law of nature. one does not need a ³computer´ to cure natural or synthetic rubber. but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation. It has been urged that novelty is an appropriate consideration under Section 101. this argument results from the language in Section 101 referring to any ³new and useful´ process. however. . they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. In determining the eligibility of respondents¶ claimed process for patent protection under Section 101. We do not so hold. ³A process is not unpatentable simply because it contains a law of nature or a mathematical algorithm. Rather. Their process admittedly employs a well known mathematical equation. As Mr. at 185-190. . or even of the process itself. 209 USPQ at 7-9 (citations omitted)} Diehr clearly answers a number of questions but leaves many unanswered. The ³novelty´ of any element or steps in a process. their claims must be considered as a whole. But is a process that does not change a physical object also statutory subject matter? . but they do not seek to pre-empt the use of that equation.rubber. Obviously. . or the mathematical expression of it.´ Specific conditions for patentability follow and Section 102 covers in detail the conditions relating to novelty. . is of no relevance in determining whether the subject matter of a claim falls within the Section 101 categories of possibly patentable subject matter. a novel and useful structure created with the aid of knowledge of scientific truth may be.´ the process as a whole does not thereby become unpatentable subject matter. An otherwise statutory process.S. is a general statement of the type of subject matter that is eligible for patent protection ³subject to the conditions and requirements of this title. In Benson we noted ³It is said that the decision precludes a patent for any program servicing a computer. . The question therefore of whether a particular invention is novel is ³fully apart from whether the invention falls into a category of statutory subject matter. Presumably. or digital computer. machine. takes us a long way toward the correct answer in this case. Justice Stone explained four decades ago: ³While a scientific truth.´ It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.

it is next determined whether the claimed invention as a whole is no more than the algorithm itself.´ Were we to view the claim absent the algorithm. Claim 5.discussed above.´ What about hardware implementing an algorithm? Is that a machine. Trying To Draw the Line II. Such claims are nonstatutory. Claim 6. . . Cir.2d 902.Laws of nature. or one or more elements of an otherwise statutory apparatus claim.It used the two-step test first proposed in Freeman and modified in Walter. But are there other things that are excluded. {FN36: Arrhythmia Research v. Chapter 5: Software-Based Inventions II. 1037 (Fed. If so. that is. when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim. 1992)} Abele had invented a technique for enhancing images such as would be produced using a CAT scanner. the CCPA decided In re Abele and Marshall {FN35: 684 F. Corazonix. 22 USPQ2d 1033. A method of displaying data in a field comprising the steps of calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field. As described in a later decision: It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner. and displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.´ But we do know that there is at least one patent application for a computer-based invention that the Supreme Court believes claims statutory subject matter.2d 1053. 1058. After Diehr Shortly after Diehr. the production. production and detection cannot be considered mere antecedent steps to obtain values for solving the algorithm. the requirements of Section 101 are met. 214 USPQ 682 (1982)} . . That is because it requires ³X-ray attenuation data. the Court has indicated that one ³should not read into the patent laws limitations and conditions which the legislature has not expressed. The CCPA ruled that claim 5 did not recite statutory subject matter because it was ³directed solely to the mathematical algorithm portion of appellants¶ invention´ but found that claim 6 did. physical phenomena.958 F. detection and display steps would still be present and would result in a conventional CATscan process. programmed to implement the algorithm? The Court cautioned against allowing ³a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. as that term is used in Section 101? What if the hardware is a general-purpose digital computer. whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. and abstract ideas are excluded from patent protection. or are those three the complete list? In Chakrabarty. Of particular interest are claims 5 and 6. Accordingly. . However.A.

31 USPQ2d 1545 (1994)} was complicated by a question of the court¶s jurisdiction because the Commissioner of Patents had stacked the panel of the Board of Patent Appeals and Interferences after the original panel had produced a decision he thought went against the policies of the Patent Office. 200 USPQ 199 (1978)} stated that the exception ³applies equally whether an invention is claimed as an apparatus or process.3d at 1543. Given the foregoing. namely. The decision of the Board had also stated that one of Alappat¶s claims was unpatentable merely because it ³reads on a general purpose digital computer µmeans¶ to perform the various . After disposing of these two matters. . 200 USPQ at 206} To determine the scope of the ³mathematical algorithm´ exception. fourth category of subject matter excluded from Section 101.´ {FN40: 589 F. that certain types of mathematical subject matter.´ ³natural phenomenon.´ If so. There was no question that the machine was otherwise statutory subject matter. A past court decision. .2d at 908-909. the Court of Appeals for the Federal Circuit (the successor to the CCPA) decided en banc (all the judges of the court hearing the matter. the proper inquiry in dealing with the so called mathematical subject matter exception to Section 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept. which in essence represents nothing more than a ³law of nature. Flook.2d at 1077. entitled to patent protection. 1994. and Benson reveals that the Supreme Court never intended to create an overly broad.{FN37: 684 F. and thus that subject matter is not.B. at the core of the Court¶s analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept. because of the ³mathematical algorithm´ exception to statutory subject matter created by the Supreme Court. It also involved how means-plus-function claim elements should be interpreted during a patent examination. mathematical equation. A New Clarity: The Alappat Decision On July 29. or the like. {FN41: 33 F. because the form of the claim is often an exercise in drafting. 31 USPQ2d at 15561557} The court concluded that this was not the case in Alappat¶s claimed invention.2d 1070. the Federal Circuit noted that what was being claimed was a machine. in and of itself. {FN39: 589 F. However.3d 1526. In re Johnson.´ or ³abstract idea. represent nothing more than abstract ideas until reduced to some type of practical application. 214 USPQ at 687-688 (citations omitted)} II. Diehrprecludes the patenting of that subject matter.We are faced simply with an improved CAT-scan process comparable to the improved process for curing synthetic rubber in Diehr. In re Alappat {FN38: 33 F. standing alone. Judge Rich examined the three Supreme Court cases on the patentability of software-related inventions: A close analysis of Diehr. whether categorized as a mathematical formula.The improvement in either case resides in the application of a mathematical formula within the context of a process which encompasses significantly more than the algorithm alone. albeit one that implemented an algorithm. . mathematical algorithm. simply classifying the claimed invention as a machine did not end the analysis. rather than the more-common threejudge panel) on whether a rasterizer for graphical images was statutory subject matter. and so the ³mathematical algorithm´ exception for statutory subject matter did not apply. Rather.

like a rasterizer. Alappat restricts the Patent Office from treating software-related inventions more strictly under Section 101 than other inventions. The court found no basis for software-based inventions running on programmed general purpose computers to be per se unpatentable. because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. are patentable. Although the Supreme Court eventually held that Benson did not claim statutory subject matter.´ regardless of the uses to which their users may put them. This reasoning is without basis in the law. 31 USPQ2d at 1558 (citations omitted)} Alappat allowed the Federal Circuit to restate and clarify its past decisions on whether software-related inventions are patentable. In any case. There were over 10. of course. is apparatus not mathematics. In particular. even though they carry out mathematical operations. are a part of one of our best-known technologies.´ as are all other types of ³business machines. it is clear that a programmed general purpose computer must be regarded as a specialized piece of hardware both for determining whether a claim is drawn to statutory subject matter and when determining whether the invention is novel and nonobvious. provided.000 patents that could be considered software-related at the time of Alappat.2d 682. decided in 1971 and the first of the cases we¶ve discussed here. Machines. Realistically. it could be treated as a method claim rather than an apparatus claim. a programmed general purpose computer could never be viewed as patentable subject matter under Section 101. Indeed. not mathematics applied to a practical application. the CCPA thought differently. 553 (1971)} . {FN42: 33 F. a computer.´ Consequently. that the claimed subject matter meets all of the other requirements of Title 35.3d at 1545.steps under program control. Under the Board majority¶s reasoning. 688. It is interesting to compare the Federal Circuit decision inAlappat with the CCPA decision in Benson. It is also clear that the ³mathematical algorithm´ exception to statutory subject matter first discussed by the Supreme Court in Bensonis limited to abstract mathematical concepts. We have held that such programming creates a new machine. a computer operating pursuant to software may represent patentable subject matter.´ The Board decided that because the claim read on a programmed digital computer. The time was long past when the Office rejected an application just because it was a software-related invention. theBenson court specifically stated that its decision therein did not preclude ³a patent for any program servicing a computer. 169 USPQ 548. The Supreme Court has never held that a programmed computer may never be entitled to patent protection.But the Office position had swung back and forth on the patentability of software-related inventions. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?{FN43: 441 F. the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines ± the computers ± are in the technological field. This really did not differ substantially from the Patent Office¶s practice. and are in the ³useful arts´ rather than the ³liberal arts.

The Patent Office¶s Guidelines On June 2. Reg. the claim for an applied concept was patentable.C.3d at 1359. The Guidelines are the Patent Office¶s understanding of the various court decisions discussed previously and established procedures to be followed by patent examiners in the handling of patent applications for software-based inventions. 1996. An alternative to creating these arbitrary definitional terms which deviate from those used in the statute may lie simply in returning to the language of the statute and the Supreme Court¶s basic principles as enunciated in Diehr. The positions of objects were determined by measuring the locations of artificial circular boundaries. and eschewing efforts to describe nonstatutory subject matter in other terms. The decision refers to the two-part Freeman-Walter-Abele test discussed above but points out a difficulty with the test: The difficulty is that there is no clear agreement as to what is a ³mathematical algorithm´. 31 USPQ2d 1754 (1994)} the invention was a method and apparatus for controlling the motion of objects and machines. II. This can be done by treating the object as if it were a circle or sphere (called a bubble) of sufficient size to enclose the object. . After Alappat In In re Warmerdam. II. following hearings on whether. and how. Following public comments. but a claim for an abstract concept wasn¶t. 7478 (1996)} became effective on February 28. Reg. and the court found that claim recited statutory subject matter. but the measurement process did not end if the technique determined that the circular boundary would be violated in a potential collision. and by assuming that any motion that impinges upon the bubble would produce a collision. software-based inventions should be protected by patents.3d 1354. {FN44: 33 F. The invention was a refinement of prior art bubble systems.Both decisions were written by Judge Giles Rich. were simply data gathering for the algorithm. the Patent Office issued proposed guidelines {FN46: 60 Fed. The technique required determining the shape and position of the edges of the objects to be avoided. 1995. after serving on a federal court longer than any other judge. and that had been held in a prior case insufficient to make a claim patentable. {FN45: 33 F. saw his position in Benson become the accepted law regarding the patentability of software-based inventions and other methods used with computers. One of Warmderdam¶s claims was for a machine implementing the method. The prior art taught that collision avoidance can be simplified by assuming that the objects are larger and more regularly shaped than they actually are.D. 28778 (1995)} for its examiners on how to determine whether a claimed software-based invention was statutory subject matter. In other words. which makes rather dicey the determination of whether the claim as a whole is no more than that. Whether something has a particular use in the technological arts (has ³utility´) is what now separates patentable methods from abstract and unpatentable mathematical algorithms. if a potential collision was detected. to avoid collision with other moving or fixed objects. 31 USPQ2d at 1758 (citations omitted)} The court then determined that Warmerdam¶s claimed method merely ³involves no more than the manipulation of abstract ideas. such as measuring positions. who. such as robotic machines.´ Any physical steps. Instead. the determination of the boundary position was further refined by replacing the bubbles with smaller bubbles. final guidelines {FN47: 61 Fed.

The utility of an invention must be within the ³technological´ arts. Reg. not because it would preempt the idea. i. a law of nature or a natural phenomenon has proven to be challenging.e. A computer-related invention is within the technological arts.e. A statutory subject matter rejection now results in additional work for the examiner and is not a quick way to dispose of the application. Reg. While this is easily stated. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of ³real world´ value. at 7480} . determining whether an applicant is seeking to patent an abstract idea. The theme of the Guidelines is that statutory subject matter for software-based inventions is based on the utility of the claimed invention. at 7481} The Guidelines give examples showing how the test of utility arguably reconciles all the past court decisions on when a software-based invention is statutory subject matter. it must have a practical application. the Federal Circuit made one of its clearest statements on the patentability of software-based inventions in its State Street Bank {FN50: State Street Bank & Trust v. a claim to an ³abstract idea´ is non-statutory because it does not represent a practical application of the idea. The subject matter sought to be patented must be a ³useful´ process. {FN49: 61 Fed.These Guidelines do not have the force of a Patent Office regulation. i. why the applicant believes the claimed invention is useful. laws of nature or natural phenomena. This requirement can be discerned from the variously phrased prohibitions against the patenting of abstract ideas. as opposed to subject matter that represents nothing more than an idea or concept. or is simply a starting point for future investigation or research. They also make a procedural change that may substantially lower the number of statutory subject matter rejections ± they require the examiner to address the novelty and nonobviousness of a claim even if it has been rejected as nonstatutory subject matter. These three exclusions recognize that subject matter that is not a practical application or use of an idea. Thus. Business Methods and State Street Bank On July 23. Courts have expressed a concern over ³preemption´ of ideas. because Congress has given the Patent Office regulatory authority limited to the way proceedings are conducted in the Patent Office. An invention that has a practical application in the technological arts satisfies the utility requirement. Chapter 5: Software-Based Inventions III. a law of nature or a natural phenomenon is not patentable. The subject matter courts have found to be outside the four statutory categories of invention is limited to abstract ideas. . such concerns are only relevant to claiming a scientific truth or principle. manufacture or composition of matter.. a complete disclosure should contain some indication of the practical application for the claimed invention. Accordingly. A practical application of a computer-related invention is statutory subject matter. 1998.. {FN48: 61 Fed. laws of nature and natural phenomena. The concern over preemption serves to bolster and justify the prohibition against the patenting of such subject matter. machine. In fact. Signature . laws of nature or natural phenomena. .

1998)} decision.Financial Group. 47 USPQ2d 1596 (Fed. with the bracketed language indicating what the written description discloses as structure for the ³mean for´ limitations. 149 F. and after negotiations for a license to practice Signature¶s patent broke down. This was truly a long-awaited decision. The original patent application had 12 claims ± six method claims and six corresponding machine claims. allocate the results on a percentage basis and store the output in a separate file] for processing data regarding daily incremental income. allocate the results on a percentage basis. (f) fourth means [an arithmetic logic circuit configured to retrieve information from a specific file. since it wasn¶t released until about 16 months after oral arguments were heard in the case. But following Alappat. [sic. and store the output in a separate file] for processing data regarding assets in the portfolio and each of the funds from a previous day and data regarding increases or decreases in each of the funds. 1. albeit one implemented using a conventional digital computer. comprising: (a) computer processor means [a personal computer including a CPU] for processing data. . (b) storage means [a data disk] for storing data on a storage medium. Cir. calculate incremental increases and decreases based on specific input. Signature Financial had received a patent on ³a data processing system for implementing an investment structure which was developed for use in Signature¶s business as an administrator and accounting agent for mutual funds.the programming of a general-purpose machine produces a special-purpose machine that performs the desired function. That does not end the analysis. State Street Bank asked the district court to declare the patent invalid. Signature dropped them. and net realized gain or loss for the portfolio and for allocating such data among each fund. expenses. Claim 1 is representative of the machine claims. the claim is to a specific machine. (c) first means [an arithmetic logic circuit configured to prepare the data disk to magnetically store selected data] for initializing the storage medium. A data processing system for managing a financial services configuration of a portfolio established as a partnership. (d) second means [an arithmetic logic circuit configured to retrieve information from a specific file. and (g) fifth means [an arithmetic logic circuit configured to retrieve information from specific files. and capital gain or loss for the portfolio and each of the funds.´ State Street Bank used a similar system. expenses. The examiner then allowed the patent for the remaining machine claims. The district court found the patent invalid because it did not claim statutory subject matter. calculate incremental increases and decreases based on specific input. funds¶] assets and for allocating the percentage share that each fund holds in the portfolio.3d 1368. allocate the results on a percentage basis and store the output in a separate file] for processing data regarding daily net unrealized gain or loss for the portfolio and for allocating such data among each fund. calculate that information on an aggregate basis and store the output in a separate file] for processing data regarding aggregate year-end income. calculate incremental increases or decreases based on specific input. (e) third means [an arithmetic logic circuit configured to retrieve information from a specific file. each partner being one of a plurality of funds. Clearly. though. When the examiner contemplated a statutory subject matter rejection of the method claims.

47 USPQ2d at 1601-1602 (citations omitted)} The court then discussed the business method exception. in and of itself. Today. or composition of matter employing a law of nature.´ From a practical standpoint. {FN53:22 F. we held that the transformation of electrocardiograph signals from a patient¶s heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm. In doing this.3d at 1374. As we pointed out in Alappat. formula. the Freeman-Walter-Abele test has little. 30 USPQ2d 1455. The court then addressed the viability of the Freeman-Walter-Abele test: After Diehr and Chakrabarty. dissenting)} . concrete and tangible result. constituted a practical application of an abstract idea (a mathematical algorithm. constitutes a practical application of a mathematical algorithm. or abstract idea would not. 298. natural phenomenon.because the district court found that the machine fell into either the ³mathematical algorithm´ or ³business method´ exceptions to statutory subject matter. representing discrete dollar amounts. of course. calculating numbers. and storing numbers. after Diehr and Alappat. for example. because it corresponded to a useful.3d 290. The court first addressed the mathematical algorithm exception: Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not ³useful. 1994) (Newman.{FN51: 149 F. application of the test could be misleading. 47 USPQ2d at 1601 (citations omitted)} This reinforces the Guidelines¶ theme of utility as the way to determine whether a claim is to statutory subject matter.this may have been a sufficient indicium of nonstatutory subject matter. Cir. concrete and tangible result´²the smooth waveform. we hold that the transformation of data. or calculation).´ {FN52: 149 F. the court adopted the arguments first put forward by Judge Newman in her dissent in In re Schrader. applicability to determining the presence of statutory subject matter. be entitled to such protection. as long as the numbers being crunched have some meaning in the real world. manufacture.3d at 1373. would not render it nonstatutory subject matter.. 1462 (Fed. unless. in Arrythmia Research. this means that to be patentable an algorithm must be applied in a ³useful´ way.we held that data. formula. In Alappat. taking ³this opportunity to lay this ill-conceived exception to rest. The test determines the presence of. transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor. because it produced ³a useful. concrete and tangible result´ ± a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. outputting numbers. its operation does not produce a ³useful. because it produces ³a useful. formula. by a machine through a series of mathematical calculations into a final share price. J. by itself. because a process. the claimed invention is useful and statutory subject matter. or calculation.´ The decision of the district court was reversed and the case remanded to that court for further proceedings. Clearly. if any. the mere fact that a claimed invention involves inputting numbers. machine. natural phenomenon. or calculation). However. concrete or tangible thing²the condition of a patient¶s heart. an algorithm. Under Benson. or abstract idea is patentable subject matter even though a law of nature. Similarly.

When the State Street Bank decision was announced. but others were business methods like Signature¶s. {FN55: 33 F. a software process is often interchangeable with a hardware circuit. 564 F. the analysis under Section 101 does not depend on whether the invention is classified as a machine or a process. But claiming a software-based invention as a machine seems artificial when what is really being protected is a method or process. patent 4. Del. In a concurring opinion in Alappat. In 1982. In this field. concurring)} Judge Rader clarified that although Alappat¶s invention was claimed as a machine. including mathematical symbols and algorithms. the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. 1983)} held that it was statutory subject matter. trashed again by the Supreme Court).3d at 1583. the Supreme Court issued its long-awaited Bilski decision. On June 28. many people (and the press) reported it as permitting a new type of patent ± the business method patent. 1358. J. even though that machine is a general-purpose computer. the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Other Ways of Claiming Alappat and State Street Bank make it clear that a software-based invention claimed as a machine. The claim . Where the line for patenting business methods is much less clear than it was before the Supreme Court¶s Bilski opinion.´ But while four justices would find business methods unpatentable. So not only were business method patents possible before State Street Bank. Some were for business machines. 31 USPQ2d at 1590-1591} This is an important observation. 218 USPQ 212 (D. Inventors may express their inventions in any manner they see fit. Whether an inventor calls the invention a machine or a process is not nearly as important as the invention itself. But the Patent Office had been granting patents of business techniques for many years. saying that ³Section 101 similarly precludes the broad contention that the term µprocess¶ categorically excludes business methods.346. Merrill Lynch. like Herman Hollerith¶s punch-card handling machines (which formed the basis for IBM) and cash registers.´ Although another brokerage sued to have the patent declared invalid because it was for a business method. Thus. and won¶t be until new case law is developed by the Federal Circuit (and not. Indeed. Webber v.3d 1526.442 was issued to the brokerage firm Merrill Lynch. but one had been granted so long before State Street Bank that it was near its expiration at the time of that decision. 2010.. 31 USPQ2d 1545 (1994) (Rader. the Court did not go that far. hopefully. is statutory subject matter as long as it performs a useful and specific act. although it is a good clue to patentability.Supp.´ It also rejected the ³particular machine or transformation´ test that the Federal Circuit had stated in the case as not the exclusive test. Thus. because often the most direct way to claim a softwarerelated invention is as a process or method running on a general-purpose computer. the Board¶s insistence on reconstruing Alappat¶s machine claims as processes is misguided when the technology recognizes no difference and the Patent Act treats both as patentable subject matter. the district court{FN54: Paine. holding that a claim to a commodities hedging strategy was unpatentable because it was ³abstract. Chapter 5: Software-Based Inventions IV. {FN56: 33 F. covering a ³Securities Brokerage²Cash Management System.

3d at 1373. the fact that a software-based invention runs on a computer does not give it the utility to make it statutory subject matter. examined the patentability of a software method for deciding the routing of long distance telephone calls. and including.3d 1352. in said message record.´ But it went on to observe: Since the process of manipulation of numbers is a fundamental part of computer technology. But now that the patentability of software-based inventions has been clearly established. Recently. The elements of the claim are then the specific steps of the method. to method claims: Whether stated implicitly or explicitly. 50 USPQ2d 1447 (1999)} Judge Plauger.3d at 1356. viewed in the abstract.recites a general-purpose computer in its preamble. the invention sets an indicator bit in the message based on the boolean AND of two pieces of information. Furthermore. . {FN58: 172 F. the answer appeared to be no. Such a claim does not read on a person performing the method using paper and pencil and. . including any special components necessary for the invention (such as disk storage or a network interface). have provided and . the same judge who had written the decision inWarmerdam. a primary interexchange carrier (PIC) indicator having a value which is a function of whether or not the interexchange carrier associated with said terminating subscriber is a predetermined one of said interexchange carriers. However. is not mathematics standing alone. The claim at issue was: A method for use in a telecommunications system in which interexchange calls initiated by each subscriber are automatically routed over the facilities of a particular one of a plurality of interexchange carriers associated with that subscriber. while remaining true to basic principles. said method comprising the steps of: generating a message record for an interexchange call between an originating subscriber and a terminating subscriber. But should patents be issued only for data processing techniques that have limited purposes. process) claims. Excel Communications. we consider the scope of Section 101 to be the same regardless of the form ± machine or process ± in which a particular claim is drafted. 47 USPQ2d at 1601} It then extended the decisions in Alappat and State Street Bank. as we saw in Warmerdam. we have had to reexamine the rules that govern the patentability of such technology.e.´ {FN59: 149 F. . and Flook. when considered as a whole. in AT&T v. 50 USPQ2d at 1450} The court then summarized the key cases we have just examined. noting that State Street Bank had ³reassessed the µmathematical algorithm¶ exception´ by finding that: unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not ³useful.. the Supreme Court¶s decisions in Diehr. or should techniques that have a wide range of applicability also be protectable? For example. can a method for sorting numbers that has better performance than previous sorting techniques be patented? In light ofBenson and Warmerdam. The court first pointed out that ³a mathematical formula alone. where the inventions were claimed as machines. the Federal Circuit is beginning to take a closer look at when a method is a statutory process. Essentially. Benson. all of which involved method (i. sometimes referred to as a mathematical algorithm. In those cases. The sea-changes in both law and technology stand as a testament to the ability of law to adapt to new and innovative concepts. is considered unpatentable subject matter. the invention was not directed to a specific purpose. {FN57: 172 F.

the inclusion of the ambiguous concept of an ³algorithm´ within the ³law of nature´ category of unpatentable subject matter has given rise to the concern that almost any process might be so described and therefore held unpatentable. Excel argues that method claims containing mathematical algorithms are patentable subject matter only if there is a ³physical transformation´ or conversion of subject matter from one state into another. Justice Stevens¶s concerns can be addressed within that framework. and has been echoed by this court in Schrader. {FN62: 172 F. The notion of ³physical transformation´ can be misunderstood.3d at 1358-1359. Because the claimed process applies the Boolean principle to produce a useful. that the ambiguous concept of ³algorithm´ could be used to make any . ³when [a claimed invention] is performing a function which the patent laws were designed to protect (e. His first concern. on its face the claimed process comfortably falls within the scope of Section 101. should be less of a concern today in light of the refocusing of the Section 101 issue that Alappat and State Street have provided. Despite the almost twenty years since Justice Stevens wrote.3d at 1358. it is now clear that computer-based programming constitutes patentable subject matter so long as the basic requirements of Section 101 are met. Second. His solution was to declare all computer-based programming unpatentable. if any. the court examined the argument that AT&T was using something based on simple boolean algebra. these concerns remain important.´ signal denotes an example. transforming or reducing an article to a different state or thing). in his view. Thus. and to which. 50 USPQ2d at 1452} Finally. Justice Stevens noted two concerns regarding the Section 101 issue.g. program-related inventions will be patentable. 50 USPQ2d at 1452} The court then addressed whether methods are limited to things that alter something physical. federal judges have a duty to respond: First. tangible result without pre-empting other uses of the mathematical principle.supported the principles which we apply to both machine. Rather. then the claim satisfies the requirements of Section 101.and process-type claims. . we are comfortable in applying our reasoning in Alappatand State Street to the method claims at issue in this case. His second concern. concrete. That has not been the course the law has taken. the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which. that the rules are not sufficiently clear to enable reasonable prediction of outcomes. {FN60: 172 F. and the effect of that on whether the invention was statutory: But that is not determinative because AT&T does not claim the Boolean principle as such or attempt to forestall its use in any other application .. the court commented on the concerns about the patentability of software-based inventions: In his dissent in Diehr. As the Supreme Court itself noted. In the first place. not an exclusive requirement. 50 USPQ2d at 1451} Next. but merely one example of how a mathematical algorithm may bring about a useful application.g. . it is not an invariable requirement.´ The ³e.3d at 1357-1358. {FN61: 172 F. The physical transformation language appears in Diehr.

each of said attribute data objects containing different information from said database.´ As noted in the decision. 50 USPQ2d at 1453 (citations omitted)} On June 28.process unpatentable. concrete and tangible´ result was patentable. and attribute data objects for which there also exist referent attribute data objects being called relation data objects. said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects. as a whole. thereby establishing a hierarchy of said plurality of attribute data objects. however.´ Claim 1 is representative. 2010. flexible method of organizing stored data in a computer memory.3d at 1360-1361. the Court revitalized its past Benson-Flook-Diehr holdings as saying that ³abstract´ methods are not patentable. Printed Matter and Computer Software In re Lowry {FN64: 32 F. but on whether the algorithmcontaining invention. a being-held relationship existing between each attribute data object and its holder attribute data object. and an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects. attribute data objects for which there exist only holder attribute data objects being called element data objects.3d 1579. It also criticized State Street Bank to the extent that it was read by some as saying that anything producing a ³useful. 32 USPQ2d 1031 (1994)} is about how a software invention whose novelty is in the way that it stores data can be claimed. The invention in Lowry was a ³Data Processing System Having a Data Structure with a Single. The Board reversed the examiner¶s rejection under Section 101 but affirmed the rejection under . but instead about a business method not limited to being performed on a digital computer. While not about a software-based invention. a single holder attribute data object for each of said attribute data objects. a referent attribute data object for at least one of said attribute data objects. at least one of said attribute data objects having a being-held relationship with said apex data object. each of said holder attribute data objects being one of said plurality of attribute data objects. {FN63: 172 F. Chapter 5: Software-Based Inventions V. A memory for storing data for access by an application program being executed on a data processing system. the Supreme Court¶s Bilski decision re-opened the question of when a software-based invention can be claimed as a method. result. useful. ³The invention provides an efficient. said data structure including information resident in a database used by said application program and including: a plurality of attribute data objects stored in said memory. The examiner rejected this claim as nonstatutory under Section 101 and obvious under Section 103 in light of a prior art patent showing a different data structure stored in a computer memory. comprising: a data structure stored in said memory. Simple Primitive. and each of said attribute data objects having a beingheld relationship with only a single other attribute data object. can be laid to rest once the focus is understood to be not on whether there is a mathematical algorithm at work. produces a tangible.

. and gave no weight to the nature of the data structures in the claims. .Section 103 under the printed matter doctrine of not giving weight to the printed matter when considering whether an invention is novel and nonobvious. the particular musical composition will define an arrangement of minute pits in the surface of the compact . {FN66: 32 F. Since the prior art patent disclosed a computer with memory containing data structures (although of a different form). As expressed in In re Gulack: Where the printed matter is not functionally related to the substrate. even when information is recorded in a way that can be perceived only by a machine. According to Lowry. More than mere abstraction. they are not accessible other than through sophisticated software systems. Lowry¶s data structures are physical entities that provide increased efficiency in computer operation. The printed matter cases have no factual relevance here.´ Lowry¶s data structures. This case. . Lowry appealed to the Federal Circuit. 32 USPQ2d at 1034-1035 (citations omitted)} Since the elements of the claims limited to particular data structures could not be ignored. moreover. the computer. 1385. the data structures are specific electrical or magnetic structural elements in a memory. the court first noted that ³Gulack cautioned against a liberal use of µprinted matter rejections¶ under section 103´ because it ³stands on questionable legal and logical footing´ and felt that it should not be extended to a new field. They are not analogous to printed matter. which according to Lowry greatly facilitate data management by data processing systems. 404 (1983)} The Board held that Lowry had not shown that there was a functional relationship between the data structures and the memory containing them. and erased. disregarding the nature of Lowry¶s data structures makes his invention obvious in light of that patent. 217 USPQ 401. {FN65: 703 F. In such case.3d at 1583-1584. In short. But now suppose the new melody is recorded on a compact disc. Lowry further notes that. stored.´ The printed matter cases have no factual relevance where ³the invention as defined by the claims requires that the information be processed not by the mind but by a machine. unlike prior art data structures. a composer cannot obtain exclusive patent rights for the original creation of a musical composition. Lowry¶s data structures simultaneously represent complex data accurately and enable powerful nested operations.2d 1381. useful and intelligible only to the human mind. is distinguishable from the printed matter cases. such as information stored in a computer memory. But one should be careful about abolishing the printed matter doctrine too quickly. The Board is not at liberty to ignore such limitations. and the decision on the Board affirming the examiner was reversed. The printed matter cases ³dealt with claims defining as the invention certain novel arrangements of printed lines or characters. the claims were not obvious in light of prior art cited by the examiner. a new song. As Chief Judge Archer warned in his dissent in Alappat: Consider for example the discovery or creation of music. Music of course is not patentable subject matter. the printed matter will not distinguish the invention from the prior art in terms of patentability. Indeed. are processed by a machine. In its decision. the data structures provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed.

employees of IBM. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure. A competitor could be sued as a contributory infringer.{FN67: 33 F.´ the Patent and Trademark Office could not make a showing of obviousness under Section 103. As is common for software-based inventions. 1553. (Because the Patent Office agreed to Beauregard¶s arguments. had already received a patent (4. it claimed the invention as what it called a ³computer program product´ ± a computer-readable medium having a program implementing the technique of the invention.J. And if there is a substantial noninfringing use for the programs being sold. IBM argued that a computer . Through the expedient of putting his music on known structure.. but that generally means also suing a direct infringer (often a current or potential customer) and requires that the competitor using the patented method have actual knowledge of the patent. Beauregard¶s Floppy Disks In re Beauregard was an appeal by IBM of a decision of the Board of Patent Appeals that a floppy disk or other computer storage medium containing a novel and nonobvious computer program is not proper subject matter for a patent. Because the patent law cannot examine music for ³nonobviousness. The result would well be the award of a patent for the discovery of music. there is no decision by the Federal Circuit. 1565 (1994) (Archer. Since most software is distributed on a storage medium such as a floppy disk or CD-ROM. 31 USPQ2d 1545. not when they made and sold floppy disks containing programs using the patented method.) Beauregard and his co-inventors. there may not be contributory infringement. IBM figured that if it could get a patent on the storage medium containing the novel and nonobvious technique. and therefore will define its specific structure. Alternatively suppose the music is recorded on the rolls of a player piano or a music box.disc material.3d 1526. In proceedings in the Patent Office. The composer admittedly has invented or discovered nothing but music. C.962.A. Competitors would directly infringe the patent only when they ran the patented method. simply an order vacating the case and remanding it to the Patent Office. The system could be either a general-purpose digital computer programmed to perform the method (the preferred embodiment) or a special-purpose graphics processor. And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a ³manufacture´ and within Section 101 simply because of the specific physical structure of the compact disc. dissenting) (citations omitted)} V. the precise structure of the disc or roll would be novel under Section 102. In a continuing application. because it is only when the method is actually performed or when it configures a general-purpose computer that direct infringement occurs. the ³practical effect´ would be the granting of a patent for a discovery in music. Where the music is new. the patent claimed both methods for performing the filling technique and a system for performing the technique. IBM was concerned that the primary people who would directly infringe these claims would be the end-users of graphics software. it could sue the competitor as a direct infringer for making or selling the patented invention. can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no.468) on a technique for filling the interior of a polygon displayed on a computer graphics device.

disks storing a program. The proposed guidelines stated that ³a computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer is a statutory µarticle of manufacture¶. 28778. since IBM had developed this case as a vehicle for the Federal Circuit to state whether computer program products were patentable subject matter. 28778 (1995)} In fact. The same floppy disk. Although the proposed guidelines included floppy disks and compact discs in the examples of a computer-readable medium that are statutory subject matter. They relied on a series of court decisions regarding ³printed matter´ which said that if the information stored on a medium was not related to that medium. Yet. in contrast to a computer¶s RAM. the invention was not statutory or. The program data on a disk must be first read and processed by a loader program to be placed in executable memory. The Federal Circuit found that there was no longer a dispute between the parties. and distinctions be drawn only where they actually exist. Reg. depending of what data on the floppy disk you consider. Since there was nothing special about how the program was written on the floppy disk or other media. containing both a program and data operated on by a computer (such as text or digitally-encoded music or pictures) would be both an article of manufacture and not an article of manufacture. This was not surprising. alternatively. The patent examiner and the Board of Patent Appeals rejected the claims as not being proper subject matter for a patent.program product was an article of manufacture or a component of a machine. The bits stored in the program repository do not cause a computer to operate in a particular manner any more than any other data bits do. Furthermore. both patentable subject matter. In contrast. stressing the importance of protecting computer software. according to the guidelines. the ³a general-purpose computer when . whether its contents can direct the functioning of a computer or not. one is a statutory article of manufacture and the other isn¶t. Patent Office Guidelines: Stored Information Under the guidelines.´ {FN68: 60 Fed. that the printed matter doctrine did not apply to computer-readable programs. IBM was supported in its appeal by ten amicus briefs from industry and bar associations. not thenature of the possible article of manufacture. the Patent Office reversed its stand and declared that a computer program product was proper subject matter for a patent. any memory device is an article of manufacture. the Patent Office will accept Beauregard-type claims to a computer program product. V. The ³mathematical algorithm´ distinction did not work well because there was no similar distinction in computer science. IBM appealed the Patent Office¶s decision to the Federal Circuit. It is important that law be anchored in reality. the novelty of the information could be disregarded when considering the novelty of a claim. The decision is based on the intended use of the data. do not seem to fit the guideline¶s own test. It is only programs in RAM or ROM that cause a computer to perform the desired functions. After seeing that there was virtually no popular support for its position. there is no difference in a floppy disk or compact disc itself if its stored information is a computer program that can be loaded into execution memory or data that can be converted to audio.B. and it remanded the application to the Patent Office for further prosecution in light of the Patent Office¶s new position. the Patent Office found the claims nonstatutory and obvious in light of other programs written on floppy disks. and that it was preparing appropriate guidelines on software patents for its examiners.

e.. When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases. and will treat any media storing such an invention as a patentable article of manufacture. A practical application of a computer-related invention is statutory subject matter. This requirement can be discerned from the variously phrased prohibitions against the patenting of abstract ideas. it must have a practical application.´ In this context. Thus. Such a result would exalt form over substance. They try say that a storage medium. In response to public comments. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of ³real world´ value. or the bits it holds. ³functional descriptive material´ consists of data structures and computer programs which impart functionality when encoded on a computer-readable medium. it is not structurally and functionally interrelated to the medium but is merely carried by the medium. {FN70: 61 Fed. i. why the applicant believes the claimed invention is useful. literary works and a compilation or mere arrangement of data. An invention that has a practical application in the technological arts satisfies the utility requirement. machine. Both types of ³descriptive material´ are non-statutory when claimed as descriptive material per se. ³Nonfunctional descriptive material´ includes but is not limited to music. Merely claiming non-functional descriptive material stored in a computer-readable medium does not make it statutory.. 7479 (1996)} The final guidelines then drew a distinction between function and nonfunctional descriptive material: Descriptive material can be characterized as either ³functional descriptive material´ or ³non-functional descriptive material. When nonfunctional descriptive material is recorded on some computer-readable medium. The proposed guidelines made a distinction not well-anchored in computer science. a complete disclosure should contain some indication of the practical application for the claimed invention. as opposed to subject matter that represents nothing more than an idea or concept. The utility of an invention must be within the ³technological´ arts. By adding a qualification about its ultimate use. manufacture or composition of matter. the final guidelines took a different approach to drawing a line between patentable CD-ROMs holding computer programs and regular CDs holding music. The Patent Office now appears to allow any novel software-based invention that has any practical use. non-statutory music does not become statutory by merely recording it on a compact disk.e. laws of nature or natural phenomena. {FN69: 61 Fed. is somehow different because of the intended use of a bit. at 7481} It is likely that the validity of computer program product claims will not be tested in court until a software distributor is sued for infringement.programmed becomes a new machine´ concept works well because the idea matches almost exactly the concept of virtual machines as discussed in operating systems. It first noted that the statute requires an invention to be ³useful´: The subject matter sought to be patented must be a ³useful´ process. Reg. Reg. . or is simply a starting point for future investigation or research. Accordingly. 7478. the guidelines depart from the intuitive concept that an article of manufacture is any tangible object made by man. A computer-related invention is within the technological arts. i.

Finally. As a result. §117} which permits copying of a computer program if it is a necessary step in its use.C. Anyone copying a program that includes a method that is the subject of a ³program stored in memory´ patent would infringe that patent.C.D. another instance of the patented stored program is made when the program is copied from the floppy disk onto a hard disk. copyright law not only provides protection to the author but also provides rights to users. no matter how minor the method is to the entire computer program. For most inventions. Because programs are works of authorship stored in a tangible medium of expression. In addition. If a memory storing a particular program is patented. they are already protected by copyright. This would be similar to the situation where an automobile containing a patented screw infringes the patent on that screw. By their nature. particularly Section 117. such consideration was clearly outside the permissible scope of the PTO guidelines. For a program stored in memory. For example. Another instance is made whenever an archive copy of the hard disk is made. such patents will be infringed as part of the normal and expected usage of the programs. there are many cases that try to resolve whether an apparatus is being repaired (not making the invention) or rebuilt (making the invention and infringing the patent). V. The Effect on Copyright Although consideration should be given to the effect on copyright of patents for articles of manufacture that are programs stored in repository memories. instead of the end user.V. if the program was originally stored on a floppy disk. §107} It might be argued that the patent exhaustion doctrine. Whenever the program is copied. {FN72: 17 U. Patents on computer programs residing in memory devices could preempt many of the user rights provided under the Copyright Act. the copy command on the computer system is such a replicator.C.S. as would be the case when it is received from the software developer.S. each time the program is run it must be copied from the hard disk into the RAM of the computer. a new instance of the program stored in a memory is made. any copying results in a new instance of the program stored in memory that infringes the patent. The patent laws do not contain an equivalent to Section 117 of the Copyright Act. a replicator capable of taking one instance of a machine or manufacture and directly producing a new instance would be something out of science fiction. such patents distort both the patent and copyright systems simply to provide an avenue for suing the producer. Nevertheless. which allows the rightful owner of a patented device to use or sell that device. patent law does not provide an equitable balance between the legitimate rights of the patent owner and the rights of users such as provided by ³fair use´ under Section 107 of the Copyright Act. {FN71: 17 U. Further. Beyond Beauregard . It is an infringement of a patent to make the patented invention. even if the screw is an inconsequential part of the automobile. On the contrary. making yet another instance of the patented program stored in memory. permits the making of new instances of patented stored programs if such copies are necessary for the use of the software. of a program that infringes a patented method. the patent exhaustion doctrine has never allowed the owner of one instance of a patented article of manufacture to make another instance without the permission of the patent owner. It is uncertain whether a court would extend the patent exclusion doctrine to include the making of new instances of stored programs.

it is the end user of the program who is the actual infringer. machine. more and more software is being distributed not by floppy disk or CD-ROM but over the Internet.{FN74a: In re Nuijten. In training materials for the Guidelines. This claim was: A computer data signal embodied in a carrier wave comprising: a. the claim is infringed only when the method is actually used. {FN73: ³Examination Guidelines For Computer-Related Inventions. it is highly unlikely that somebody is selling software infringing a patented method without testing it and thereby using the patented method. the whole purpose ofBeauregard was to avoid having to look to the end user for any infringement. such claims cause problems because end users infringe the patent whenever they copy or use the program. or manufacture. the Patent Office suggested a possible claim to a propagated signal carrying a program. the program both compressed and encrypted data. If the invention is claimed as a method. 37. and no clever way to claim the invention to reach the real infringer. §101} In early 2008. However. such an accusation presents a number of problems. While there is an article of manufacture produced on the end user¶s machine from the download. the Federal Circuit answered this question. But the true infringer of the patent on the software-based invention is the competitor who included the patented method in its software and sold it to the end user. an encryption source code segment comprising [the code]. Cir. the claim is infringed only when the program is actually loaded into the computer. 85 USPQ2d 1927 (Fed. Cir. The majority felt that an article of manufacture had to be something tangible. 793 F. But more important. a compression source code segment comprising [the code]. But as discussed above.Unfortunately for the people who promoted Beauregard as a way of reaching the producer of infringing software without having to go through an end user. It is a red herring to say that it is more difficult to prove inducement of infringement or contributory infringement because some end user must be dragged into the case to show a direct infringement. that storees a novel and nonobvious computer program is that the conventional ways of claiming a software-based invention did not provide proper protection against the true infringer. 813 (Fed. they must have actual knowledge of the patent. the competitor must know that what it is producing will lead to an infringement. like a floppy disk. and who may not be aware that use of the software infringes a patent. 515 F. 2008)} One justification for a Beauregard-type patent on a memory device. Circumstantial evidence of infringement.2d 1261. {FN75: Moleculon Research v. In both cases. 1272. The competitor could be accused of inducing or contributing to the infringement of the patent. {FN74: 35 U. First.S. and because such claims base the patentability of a memory device on the intended use of its contents. 229 USPQ 805. machine. In its example.3d 1361. direct evidence of infringement by an end user is not required to prove inducement of infringement. is sufficient.´ United States Patent and Trademark Office. Beauregard-type claims attempt to get around these problems by claiming any memory device containing the patented software method. Claim 13 (1996)} But is a data signal a ³process.C. And that means there is no ³article of manufacture´ that stores the program being distributed. so such a software marketer is likely to be a direct infringer. 1986)} . such as evidence of extensive sales.´ as required by Section 101. and b. holding that a claim to a signal did not fall into any of the four statutory categories: process. composition of matter. If the invention is claimed as a machine running the program. manufacture. or composition of matter. For example. CBS. to be a contributory infringer.

62 USPQ2d 1705 (2002)} the doctrine of equivalents likely does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims.E. Cir. Although it is not required by law. books. The online collection of patents and pending applications offered by the patent office should also be searched. R. {FN78: Johnson & Johnston v. there may be a problem if such a method claim is considered . __. The results of the search will let you know how broadly you can claim the invention. conference proceedings.S. 62 USPQ2d 1225 (Fed. Then write the specification describing what is done at each step and how to do it.S.3d 1046. often an experienced patent attorney or patent agent can draft claims that may have broader or better coverage. This search starts with a literature review (journal and magazine articles.´ as required by Section 112) {FN77: 35 U.. Additional diagrams can be prepared to show more details for particular steps. Always describe both the best way to perform the step (the ³best mode. __ U.S. rather than trying to make data signals an article of manufacture or to make floppy disks magically either an article of manufacture or not. Applying for a Software Patent Software-based inventions can be claimed in a straightforward manner using method claims. and give you an idea of the language used to describe similar inventions. This can be done either by looking for keywords in the text. {FN79: Festo v. 2002)} In light of the Supreme Court¶s decision in Festo. as well as specific claims for important embodiments. or congressional amendment of Section 271 to state it explicitly. Shoketsu Kinzoku Kogyo Kabushiki Co. While treatise originally proposed using a method claim for computer software. This can be solved by having a generic claim that encompasses all of the described embodiments. The first step after identifying the innovative technique and determining its potential scope is to prepare a simple diagram or flowchart showing its major steps and what causes a transition from one step to the next. Describing a variety of implementations lessens the possibility that a particular step in the claims will be read as covering only the preferred embodiment. If a separate patent application is filed for each innovative technique used in a computer program. with the Supreme Court¶s recent opinion in Bilski. But it is equally important that you don¶t describe something that you don¶t claim. or by the classification numbers assigned to each patent. §112} and all the possible alternative implementations that you can think of. where the elements of the claims are the steps of the method performed by the new software technique. But while it is possible for a competent computer programmer to draft a patent application. depending on the intended use of the information on that floppy disk. Service. Chapter 5: Software-Based Inventions VI. the drafting of the patent application can be quite straightforward. followed by simple dependent claims to a computer system and an article of manufacture.´ or ³preferred embodiment.It would be better to concentrate on getting court interpretations of Section 271 {FN76: 35 U. §271} clearly holding that the distribution of a computer program whose use infringes a machine or process patent is inducing infringement or is contributory infringement. It may not be possible to assert the doctrine of equivalents to cover the disclosed but unclaimed embodiments.C.C. once you have identified an innovative technique you should conduct a search of the prior art. and a programmer should definitely take an active role in the preparation of the application. and research reports) to find the material closest to the technique. 285 F.

³abstract. it may be best to claim general data processing techniques as machines or systems. .´ Until the Federal Circuit can clarify what the patentability line is. rather than methods.

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