Although the Copyright Act of 1976, 17 U.S.C. §§ 101-803, ("the Act") has its roots in 16th Century English law, many of the traditional doctrines which have been developed by the courts to respond to the competing goals of copyright administration, namely authorial control versus public access, remain relevant in our digital age. While the digital media and the Internet can pose challenges to the application of the law of copyright, the federal courts are displaying creativity to tease out methods for transporting some of the fundamental doctrines into the 21st Century.
There is precedent showing the courts' abilities to move with the times and adjust to the then developing technology be it the printing press, photography, motion pictures, or sound recordings. Because of the nature of the judicial process, frequently courts are responding to technological developments that affect copyrighted subject matter well after the technology has taken hold in the culture, i.e., piano rolls, photography, VCRs. However, that time delay may not be a bad thing. During the period while cases are winding their way through the legal system, premature court action has not thwarted the development of the new technology and the courts have had a chance to see how the technology really fits into the overall copyright framework.
Certain copyright doctrines, such as originality, idea/expression dichotomy, merger, fair use, and first sale, were developed by the courts because of Constitutional imperatives. Other doctrines, such as contributory and vicarious infringement, enable the enforcement of the copyright protections to have appropriate reach. Given that these doctrines remain useful, the courts have continued to apply them, with adjustments where necessary, when cases arise relating to works fixed in digital formats or transmitted via the Internet.
The Doctrine of Originality--
As is set out inFeist Publications, Inc. v. Rural Telephone Service Company, Inc . 499 U.S. 340 (1991), one of the essential elements of a work for which copyright is claimed is "originality." The Supreme Court stated that originality is constitutionally mandated. The term, as used in the copyright legal framework, means that the work being protected was independently created by the author and that there was at least a modest amount of creativity involved. Regardless of what technology is used to create the work, it must possess some spark of originality. Just because a song, poem, or picture can be viewed or experienced in a digital medium like a CD-ROM, E-book, or be transmitted by the Internet, these works must possess the required originality to obtain copyright protection.
Software has been found to be protected under Section 102 (1) of the Act as a literary work.Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983),cert. dismissed , 464 U.S. 1033 (1984). Therefore, despite the obstacles to human comprehension of software in its machine readable form, at its core, the work must have been independently created by its author and possess at least a modest quantum of creativity.
As with other kinds of works, if the level of creativity is very modest, then the concomitant level of copyright protection afforded will also be modest. Thissine qua non standard remains valid for analog and digital materials.
The Idea/Expression Dichotomy and the Merger Doctrines.
It is an often stated principal of copyright law that "ideas" are not covered by its protection but rather the expression of those ideas is the protected subject matter. Section 102(b) of the Act memorializes that principal and helpfully expands on the concept by referring not only to the unprotected idea but also to the "procedure, process, system, method of operation, concept, principle or discovery." Regardless of the form these intellectual manifestations appear in a work, they are not covered by the copyright law's protection. The underlying rationale for this disparate treatment is to foster the spread of ideas and not let them be bottled up by the initiator unless they meet the more rigid standards required under patent law.
The seminal case addressing this distinction between the treatment of an idea verses the expression of an idea and how these may merge isBaker v Selden , 101 U.S. 99 (1880). In that case the plaintiff sought to have accounting forms he created covered by the copyright protection he obtained for a book he wrote in which he explained a method of book-keeping that he had developed. The Supreme Court concluded that the protection the plaintiff was afforded for his book, which described the accounting system idea, would not cover the forms, which proved to be the tangible manifestation of his idea. The Court's rationale has come to be known as the merger doctrine.
The Supreme Court explained its conclusion in a number of ways. It saw that Mr. Selden had developed a system of book-keeping. One issue the Court addressed was whether in obtaining the copyright for his book he also secured the exclusive right to the use of the system. It concluded "there is a clear distinction between the book, as such, and the art which. . . it is intended to illustrate." This premise applies to "every other art as well as that of book-keeping." By way of example, the Court suggested that treatises on medicine, uses of ploughs or mixing and application of colors of paint, while protected by copyright law, do not give their authors the exclusive right "to the art or manufacture described therein." The basis for this distinct treatment is that in developing an idea, the author gives it to the public, unless is it sufficiently novel that the inventor can obtain patent protection.
The teachings ofBaker have ebbed and flowed in their prominence in copyright analysis. Some authorities have taken a narrow reading of it and concluded that only if there is one method for expressing the underlying idea, would another be permitted to make use of that method of expression without being accused of infringement. Other authorities were and are more lenient and in the case of software development would permit copying if the expression of the idea is possible in only a few ways.
Computer Associates International, Inc. v. Altai, Inc. , 982 F.2d 693 (1992), is an example of the of the latter judicial interpretation. InAltai, the 2nd Circuit examined to what extent the non-literal aspects of a computer program may be protected by copyright. Computer Associates had a sub-program called "Adapter" which allowed its scheduling software to be compatible with several operating systems. Altai developed a software to do the same thing. It was called "Oscar." However, when first written, the programmer used the code of Adapter. When Altai realized this problem, it rewrote the program and eliminated the literal duplication of the Oscar code. Computer Associates claimed nonetheless that Altai's code remained substantially similar to the "structure" of its program, i.e., its nonliteral components such as the organization of inter-modular relationships, and the list of services both programs obtain from their respective operating systems. To decide whether these components were protected, the 2nd Circuit turned toBaker v. Selden , and the idea-expression dichotomy.
The 2nd Circuit concluded that the prohibition against the protection of ideas applies to computer programs. It is only how a programmer expresses an idea that can get protection. The Court pointed out that computer programs are essentially of a utilitarian nature making the extraction of the idea from its expression difficult.Baker was the Court's starting point for analyzing utilitarian works. It concluded that just as the accounting form needed to be used if the idea of the book-keeping system was to be employed, so too those elements of a computer program that are incidental to its function merge and are not protected. Thus,Bake r helped define the special task at hand. However, it was not able to provide the guidance for doing the necessary analysis in the case of the computer programs.
Ultimately, the 2nd Circuit developed a three step test to separate ideas from expression. The steps were called abstraction, filtration and comparison. Based on applications of its test, the 2nd Circuit concluded that Computer Associates' program had no protected expression. Along the way, it allowed that, given the highly technical nature of the subject matter, it found expert testimony appropriate in aiding the trier of fact to understand the intricacies of the computer program at issue. This shows the flexibility that a court can employ so that the basic copyright doctrines can be applied and not be artificially confined.
The First Sale Doctrine
A major exception to the exclusive distribution right provided to the copyright owner by Section 106(3) of the Act is the first sale doctrine which has now been memorialized in Section 109(a) of the Act. Control over the distribution of works by copyright owner is limited to the first sale or transfer of ownership. Once a transfer has occurred, the copyright owner's interest in the material object comes to an end. However, this does not cut off the copyright owner's rights to prevent unauthorized copying or production of derivative works, examples of other exclusive rights accorded by Section 106 of the Act.. So the first sale doctrine allows the proper balance of interests between users and creators. Further, the distribution right is limited topublic distributions. So that distributions of digital material over the Internet in a non-public way, would be permissible, i.e., private e-mails to family members. Of course, there is the issue of improper copying. Because the reproduction right is not limited like the distribution right, and even the production of one unauthorized copy is enough to find infringement, it would seem that if the distribution/transmission of copyrighted digital materials via the Internet results in unreasonable copying of the work, the prohibition against unauthorized copying will be there to counter balance the bad effect.
Contributory and Vicarious Copyright Infringement
The concept of vicarious copyright infringement was developed by the 2nd Circuit inShapiro, Bernstein and Co. v. H. L. Green , 316 F.2d 304, in 1963. It is an outgrowth of the agency principles ofrespondeat superior . The needed elements are the right or power to supervise the actions of the direct infringer and a financial stake in the infringing acts. InShapiro , the owner of a chain of department stores was held indirectly liable for the sale by its concessionaire of pirated recordings even though it was unaware of the infringing activity.
Contributory copyright infringement grows out of tort law. Its elements are that the party has knowledge of the direct infringing activity and induces, causes or materially contributes to the infringing conduct.
InFonovisa, Inc. v. Cherry Auction, Inc. , 76 F.3d 259 (9th Cir. 1996), the auction operator was found liable under both theories. Based on it right to terminate vendors for any reason and its financial benefit from the admission fees, concession stand sales and parking fees, these rather passive activities were enough to find vicarious liability. Cherry Auction's knowledge was shown by seizures of merchandise and a notification letter from a sheriff. Contributing to the bad conduct was found in simply providing the venue. Passive action proved no defense against either charge.
The Cherry Auction passive involvement for indirect infringers has been transported to the digital world. InA&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (2001), the 9th Circuit found enough involvement, knowledge, control and financial benefit on the part of Napster in promoting the peer-to-peer music sharing, which was found not to be a fair use, to find it indirectly liable.
The Fair Use Doctrine
For those being charged with contributory or vicarious infringement liability under the Act, the fair use doctrine, now codified in Section 107, can play an important role. These charges in the past have been brought against developing technology, such as VCRs. They now appear in the realm of digital technology and the Internet.
Fair use is defined as a privilege of third parties to make use of copyrighted material in a reasonable manner without the owner's consent. It could be said that Sections 108 through 122 of the Act cover specific "carve outs" that Congress has identified to the exclusive uses reserved to copyright owners. Section 107 then acts as a laboratory for further exploration in the field. Fair use helps maintain the balance between the impetus for creation and the public good of disseminating information. When evaluating a fair use defense, the courts consider the four factors identified in Section 107.
Factor 1 focuses on the purpose and character of the use being made of the copyrighted work and whether it is of a commercial or nonprofit educational purpose. If there is a commercial purpose that merely supersedes the original work, then there is a presumption against fair use. However, if the new work results in a transformed use for the work, if it adds something new and results in a work of a different character, then the commercialism of the work will not be as strong a negative factor. For example, a parody may be found to be such a transformed work.
Factor 2 looks at the nature of the copyrighted work. Some kinds of works lend themselves more readily to public access to increase the dissemination of information than others. Factual and historical works may result in greater amounts of approved copying than purely entertaining or artistic works.
Factor 3 considers the amount and substantiality of the material taken in relation to the copyrighted work as a whole. Excessive copying of the use not in accord with the stated need, can cause a finding of no fair use. There are qualitative and quantitative factors to consider. In the case ofHarper Row, Publishers, Inc. v. Nation Enterprise , 471 U.S. 548 (1985).The Nation magazine took only 300 words from a 200,000 word yet to be published book co-written by President Gerald Ford. But those words, dealing with the pardon of Richard Nixon, were considered the "heart" of the protected work and therefore an excessive taking.
Factor 4 deals with the effect of the use on potential markets for the protected work or on the value of the protected work. Courts look at whether the infringing work will tend to diminish potential sales or exploitations of the copyrighted work, i.e., derivative works, or will it supplant the original in the market place. However, if the new work is "transformative"/ in nature, then it is less likely to be found to serve as a replacement for the original work.
In the digital age, fair use does have its place. InSega Enterprises Ltd. v. Accolade, Inc. , 977 F.2d 1510 (1993), the 9th Circuit held that for purposes of studying or examining the unprotected aspects of a copyrighted software program, copying of the protected work for purposes of disassembling it to identify the unprotected idea was a fair use. The Court considered the 4 factors and found that 1, 2 and 4 fell in favor of Accolade. The key rationale for the 4th factor was that unless others are able to disassemble the protected work so that they are able to develop a competing work, the owner will have effectively monopolized the market. This is not a strong equitable basis for resisting a finding of fair use. This evolution in honing in on ways to extract the unprotected ideas lodged in software continues in the more recent case. InSony Computer Entertainment, Inc. v. Connectix Corp. , 203 F.3d 596 (2000), the 9th Circuit found fair use in Connectix's making of multiple intermediate copies of Sony's code as part of its reverse engineering process to reach the unprotected ideas.
The courts have recognized that computer software programs are hybrid creatures. Their design may contain highly creative and idiosyncratic features. But they also are developed to accomplish tasks, so they have a utilitarian nature as well. Trying to get to the core to distinguish the ideas from the expression of the ideas, from the point of view of a court is not easy. Because the very medium appears in a non-human readable form, courts in the 2nd and 9th Circuits believe that leeway must be given to allow those who can analyze the product do so. In such cases, disassembly, and the related copying of the subject matter, are the only viable ways to achieve this end.
What this shows is that the fair use doctrine is alive and relevant. When a controversy presents itself as to whether a digital work has been infringed, the plaintiff's claim, like any other plaintiff, to copyright protection for its work must withstand the rigor as to what about the work can actually be protected. Plaintiffs are not likely on their own to acknowledge that much of their work relied on borrowed matter or that it represents the embodiment of an idea rather than merely its expression. The fair use doctrine at least gives the challenger a chance to show that its work is truly original to it and that what it used was the idea of the plaintiff's work, not its expression.
In conclusion, as may be seen from this discussion, the scope of protection afforded by copyright law may not prove to be as broad as the software developers would like. However, that is not the fault of the traditional doctrines but rather the nature of what protection copyright offers. Because of the highly technical nature of the arts involved in software development and the transmission and distribution of material on the Internet, applying copyright doctrines has posed a challenge to the judiciary not necessarily familiar with the digital technology. However, based on the sample cases summarized here, the judges have reached a certain comfort level absorbing and synthesizing much arcane information and seeking to adapt it to the principals of copyright law. Since the disputing parties seek the benefits offered by the copyright law, then the forum which best acts as the crucible for resolving the disputes are the courts applying the traditional doctrines. Since its inception, copyright law has developed in response to technological developments. Nothing really has changed.
© 2001 Barbara I. Berschler
