Digital Intellectual Property Handbook

Updates, as of September 12, 2014:
Chapter 1 --
 Page 35, first paragraph: On January 15, 2003, the Supreme Court upheld the
Copyright Term Extension Act. See Eldred v. Ashcroft.
 Page 44-45. In addition to contributory infringement and vicarious infringement,
there is another form of indirect infringement: inducement of infringement. This was
more commonly seen in patent law, because it is specifically indicated in the patent
statutes (17 U.S.C. 271(b)), but as I noted in my paper "Sony Revisited: A new look
at contributory copyright infringement," is also applicable to copyright. This was
confirmed in the Supreme Court’s unanimous opinion in MGM v. Grokster, 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, the inducement rule, too, is a sensible one
for copyright. We adopt it here, holding that one who distributes a device with the
object of promoting its use to infringe copyright, as shown by clear expression or
other affirmative steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties.
While cases in patent law provide some guidance regarding what might be
inducement of infringement, the metes-and-bounds of copyright inducement won’t
be known until a few cases are litigated.
 Page 51, add the following:
In 2005, Congress added another form of criminal copyright infringement to

Section 506, as part of criminalizing the videotaping of a motion picture playing in a
theater and then distributing it on the Internet, which had become a significant
problem. {FN88: “Artists' Rights and Theft Prevention Act of 2005, or the “ART Act,”
part of “Family Entertainment and Copyright Act of 2005,” Pub. L. 109-9, 119 Stat.
220}
Any person who willfully infringes a copyright shall be punished as provided under
section 2319 of title 18, if the infringement was committed-- . . . (C) by the
distribution of a work being prepared for commercial distribution, by making it
available on a computer network accessible to members of the public, if such person
knew or should have known that the work was intended for commercial distribution.
{FN89: 17 U.S.C. 506(a)(1)}
There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a,

the public distribution right covers only the distribution of material objects. And
making something “available on a computer network accessible to members of the
public,” without more, most certainly doesn’t distribute a material copy anywhere.
It is interesting that this approach was suggested by some of us in 1997 as an

alternative to the “No Electronic Theft” Act {FN90: Pub. L. No. 105-147, 111 Stat.
2678, among other things adding subsection (a)(2) to 17 U.S.C. 506} in response to
the LaMacchia decision. {FN91: United States v. LaMacchia, 871 F.Supp. 535, 33
USPQ2d 1978 (D. Mass. 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, and it made little sense to wait until enough copies had gone out to stop the
infringement. But we also wanted to amend the distribution right to include making
the work available to the public, as discussed in Chapter 3, Section I.B.1.f.]
Chapter 2 --
Chapter 3 --
 Page 217, replace the two paragraphs starting with "During the first review ..." with:
In July 2010, 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, 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;
(ii) Documentary filmmaking;
(iii) Noncommercial videos.
(2) Computer programs that enable wireless telephone handsets to execute software
applications, where circumvention is accomplished for the sole purpose of enabling
interoperability of such applications, when they have been lawfully obtained, with computer
programs on the telephone handset.
(3) Computer programs, in the form of firmware or software, that enable used wireless
telephone handsets to connect to a wireless telecommunications network, 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.
(4) Video games accessible on personal computers and protected by technological

protection measures that control access to lawfully obtained works, when circumvention is
accomplished solely for the purpose of good faith testing for, investigating, or correcting
security flaws or vulnerabilities, if:
(i) The information derived from the security testing is used primarily to promote the
security of the owner or operator of a computer, computer system, or computer network;
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.
(5) Computer programs protected by dongles that prevent access due to malfunction or
damage and which are obsolete. 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
(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.
It must be remembered that the exemptions are only for the circumvention of an access
control mechanism covered by section 1201(a)(1). It does not provide an exemption for the
provision of a tool used for such circumvention, which could be a violation of section
1201(a)(2), nor for circumvention that results in infringement, which would be a violation of
section 1201(b).
For more information about these exemptions, and the proceedings leading up to them,
see:
http://www.copyright.gov/1201/
The online version contains this change.
 The treatise does not discuss the special subpoena provisions of the DMCA that a
content owner can used to obtain the name and address of a user from an Internet
Service Provider. In particular, 17 U.S.C. 512(h) provides that a subpoena could be
requested from the clerk of any United States District Court, without the requirement
of filing a copyright infringement suit:
(1) Request. — A copyright owner or a person authorized to act on the owner's behalf may
request the clerk of any United States district court to issue a subpoena to a service
provider for identification of an alleged infringer in accordance with this subsection.
(2) Contents of request — The request may be made by filing with the clerk—
(A) a copy of a notification described in subsection (c)(3)(A);
(B) a proposed subpoena; and
(C) a sworn declaration to the effect that the purpose for which the subpoena is sought is
to obtain the identity of an alleged infringer and that such information will only be used for
the purpose of protecting rights under this title.
Congress included this provision so that it would not be necessary for a copyright owner to
file a "John Doe" lawsuit to obtain the name of a user, which might then have to be
dismissed and refiled in the proper venue after the location of the user was determined,
thereby lowering litigation costs that might eventually have to be paid by the user. Critics
have said that it would allow stalkers to pretend to be a copyright owner in order to get the
name and address of a user, because there is no effective review of the subpoena request
by the court clerk.
On December 19, 2003, the Court of Appeals for the DC Circuit, in RIAA v. Verizon, held
that the subpoena provisions were not applicable to service providers acting as "mere
conduits," since the notice provision makes no sense in that context. It is likely that the
RIAA will seek remedial legislation by Congress, which will be discussed here when it is
introduced.
Chapter 4 --
 Section 4.V. (pages 266-276) discusses "Novelty" and what constitutes "prior
art." The Leahy-Smith America Invents Act (AIA, Public Law No: 112-29)
substantially that, effective March 16, 2013, although the past definitions remain in
effect for patents whose applications were filed before then. The new definitions for
prior art are discussed in "Prior art under the new patent reform act."
 Page 289, replace the paragraph starting "The patent statute ..." and the paragraph
that follows it on page 290 with:
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. Further changes were made in 2002 to
give the requestor the same appeals rights as the patent owner. Previously, while either
party could appeal the examiner’s decision to the Board of Patent Appeals and
Interferences, only patent owner could further appeal the decision of the Board to the Court
of Appeals for the Federal Circuit.
Another change in 2002 allowed the reexamination to be based on prior art already
considered by the examiner, as long as a “substantial new question of patentability” is
shown. But Congress made it clear that this is not a way to second-guess the examiner.
However, this bill is not a license to abuse patentees and waste the life of a patent. The
point must be stressed that the past requirement of ‘a substantial new question of
patentability’ has not been diminished. The issue raised must be more that just questioning
the judgment of the examiner. There should be substantial evidence that the examiner did
not properly understand the reference, or did not consider a portion of the reference in
making his decision. That substantial new question must be put forward clearly in the
request for reexamination. The bill preserves the necessary safeguard in the Patent Act
against harassment of patentees with the safety-valve of a ‘substantial new question of
patentability’ standard, not merely ‘any sort of question.’ The agency has discretion in this
determination to permit reexamination, but it is not absolute. While the bill clarifies the
basis for a reexamination determination and removes the overly-strict bar established by
the court, which renders the available process useless in many obvious instances such as
with previously considered prior art, the courts should judiciously interpret the ‘substantial
new question’ standard to prevent cases of abusive tactics and harassment of patentees
through reexamination.
The reexamination provision prevents you from using anything that you could have
brought up at the time of the reexamination in later litigation. Because of uncertainty about
the scope of this bar, reexamination may be undesirable unless you have prior art that you
are sure will invalidate the patent, or at least cause new claims that will not concern you.
Though each revision to reexamination makes an important improvement, there are

still problems that keep people from taking advantage of reexamination as an alternative to
litigation. Perhaps Congress will see this as reason to institute a simplified early
reexamination, 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.
Chapter 5 --
 Page 292, replace the last sentence of the first paragraph with:
The recent Bilski and Alice decisions by the Supreme Court has reopened the
question of when a software-based invention is patentable, with uncertainly that may
last for a decade or more.
 Page 321, after the top paragraph, add:
On June 28, 2010, the Supreme Court issued its long-awaited Bilski decision, holding
that a claim to a commodities hedging strategy was unpatentable because it was
“abstract.” But while four justices would find business methods unpatentable, the
Court did not go that far, saying that “Section 101 similarly precludes the broad
contention that the term ‘process’ categorically excludes business methods.” It also
rejected the “particular machine or transformation” test that the Federal Circuit had
stated in the case as not the exclusive test, although it is a good clue to
patentability.
And on June 19, 2014, the Supreme Court added to the confusion in its Alice opinion,
finding another business method to be an unpatentable “abstract idea,” even when it
was claimed as a tangible machine. It appears that for business methods, the Court
is has returned to the past where, as Justice Jackson noted, “the only patent that is
valid is one which this Court has not been able to get its hands on.”
 Page 323, after the block quote, add:
On June 19, 2014, the Supreme Court added to the confusion in its Alice opinion,
finding another business method to be an unpatentable “abstract idea,” even when it
was claimed as a tangible machine. It could be a decade or more before it is clear
when claiming a software-based invention as a machine results in a patentable
invention.
 Page 335, replace "If so, how far have we stretched the patentability boundary and
what will be the consequences?" with "In early 2008, the Federal Circuit answered
this question, holding that a claim to a signal did not fall into any of the four
statutory categories: process, machine, composition of matter, or manufacture. The
majority felt that an article of manufacture had to be something tangible. See In re
Nuijten."
 Page 338, replace all the material starting with "The first, and broadest, claim" to the
end of the treatise with:
While treatise originally proposed using a method claim for computer software,
followed by simple dependent claims to a computer system and an article of
manufacture, with the Supreme Court’s recent opinions in Bilski and Alice, there may
be a problem if such a method claim is considered “abstract.” Until the the courts or
Congress clarify what the patentability line is, it is unclear when a software-
implemented technique is patentable and when it isn't.

Foreword
The Digital Age has added layers of complexity to copyright law and raised the stakes of
copyright protection to levels never before imagined. While intellectual property lawyers,
computer and software lawyers, and corporate counsel strive to understand the subtleties and
hard realities of this “New Age,” we need to remember that copyright law is no longer just for
lawyers and big media companies. It's the subject of newspaper articles, and has even made it
into the comic strips. It affects every user of the Internet. But there is a great deal of
misinformation about the copyright laws. The exclusive rights of a copyright owner go well
beyond the right to make copies of a work. And yet it may be legal to make copies of a work
without the permission of a copyright owner. Because the copyright statutes contain many
special provisions, you can't simply assume that if an action is permitted with one type of work,
the same action is also permitted with another type of work. For example, you can rent
videocassettes that you own without restriction, but there are severe restrictions on the rental of
records and software.
Other examples of imprecise thinking about copyright law may be found among the many
articles written criticizing the Digital Millennium Copyright Act (DMCA) since it became law in
1998. Many of the critics seem to be recycling the comments of others and haven't looked at the
legislative history (or, it seems in some cases, the law itself). Indeed, when the DMCA was being
considered, many opponents were ineffective in lobbying Congress because they were against a
caricature of the legislation, and not the bill itself.
Just as the Internet has made knowledge of copyright law important to a greater number of
people, patents on business methods and software have made it important for most corporate
counsels to now have an understanding of patents. And again, to be effective the critics of
software and business method patents first need to know what patents are, how they work, and
the cases that define the scope of what can be patented. This book provides that information.
Unlike other treatises that try to comment on every case, it concentrates on the key cases that
provide important interpretations of the copyright and patent statutes. But because there are only
a handful of cases interpreting the changes to the law to address digital material, such as the
DMCA, this book also highlights the important sections of the legislative history to give insight
into the thoughts of those who framed the law.
The material is presented in a clear, straightforward way so that it can be understood not only by
the intellectual property law specialist, but also the business lawyer or corporate counsel, the
layperson wanting to understand the key concepts in patent and copyright law for digital
information, and the judge trying to apply patent and copyright laws to new technology. But
unlike most introductory books, it doesn't just present simple summaries of the law, but
extensively quotes from, and comments on, the statutes and the key cases.
For the readers who want to go beyond the material presented in the book, Professor Hollaar has
set up a Web site with the full text of the material quoted and cited in the book. He'll also be
updating the material as new court cases come down, to keep the material up-to-date. His Web
site will become an important resource for those interested in digital intellectual property law.
I've known Lee Hollaar since I joined the Senate Judiciary Committee as its Chief Intellectual
Property Counsel. Committee staff and its former chairman, Senator Orrin Hatch, have benefited
from his advice for a number of years. During his sabbatical in 1996-97, he worked with me on
Internet, copyright, and patent issues as a Committee Fellow.
It's unlikely that there is anybody else with his qualifications for writing this book. He has been
programming digital computers since 1964, has a Ph.D. in computer science, and has designed
and implemented computer software, computer hardware, and data communications networks.
He understands the law both from his studies, as a patent agent, and as a key technical advisor in
a number of important court cases. He has an insider's view from his work with Congress and the
courts. And he is able to pull this diverse background together to bring about an understanding of
the important issues in computer law today.
I've always enjoyed and learned from my discussions with Lee and now, with this book and his
Web site, you can too.
Edward J. Damich
Chief Judge
United States Court of Federal Claims

Preface (to the printed version)
This book started out not as something for lawyers, but as course notes for an introductory
course in computer law for computer science undergraduates that I started teaching at the
University of Utah in 1984.
I’ve never liked courses where the important material is presented only in the lecture, rather than
in a textbook or lecture notes. That’s probably because I’m not good at taking notes during a
lecture, preferring instead to listen to the instructor.
But when I first taught the course, there was no suitable textbook available. At first I passed out
copies of the pertinent statutes but that was far from satisfactory. Important concepts in the
protection of computer software, such as what is patentable and what is the extent of copyright
protection for non-literal elements of a computer program, are not directly addressed by any
statutory provision. And to properly understand the statute, you need to look at its legislative
history and the court cases interpreting it. So I was back to presenting the important material in a
lecture again.
The obvious thing to try next was to pass out copies of the important cases and legislative
histories to the students. But it didn’t make sense having them read a long case just to find the
paragraph or two discussing the particular point of interest. And many intellectual property cases
cover more than a single form of protection. For example, one of the most important cases on the
reverse engineering of computer software, Sega v. Accolade (977 F.2d 1510, 24 USPQ2d 1561
(9th Cir. 1992)), also deals with a peripheral issue of trademarks being used in a particularly
tricky way to protect the interface between a video game and the game console.
For the 1995 class, I tried something different. For the class on software patents I wrote lecture
notes that quoted the important statutory provisions, legislative history, and court cases along
with my discussion of the topic. Those lecture notes, updated with new cases, are now Chapter 5
in this book. This approach worked out quite well, giving the students the important material,
and exposing them to the actual language in the statutes and cases, without overwhelming them
with extraneous material.
In January 2000, I was expecting to spend the next few months at the trial of Caldera’s antitrust
suit against Microsoft as Caldera’s technical expert. About a week before the trial was to start,
the parties settled and I found myself with unanticipated free time. Since I was scheduled to
teach my computer law course in the fall, this was a perfect opportunity to expand the notes to
cover the whole course. This book is the result.
But my efforts have gone well beyond this book. Rather than just publish the lecture notes, I
decided that I would put all the backup material – cases, legislative history, and everything else
that I referenced – on a Web site (www.digital-law-online.info) along with the lecture notes. This
information would be available to everybody, at no charge. Summit Law Group, which was one
of the legal counsels to Caldera, and Lineo, which is a spin-off of Caldera, provided grants to the
University of Utah so that I could hire research assistants to help me put together the material for
the class and the Web site.
The new class notes were used in the Fall 2000 offering of the class. To see whether the notes
were understandable and conveyed the necessary information, there were no lectures in the class.
Instead, I gave a reading assignment from the class notes every week. In class I answered student
questions on the reading and then gave them a short quiz based on what they had read, which
strongly encouraged them to do the reading and ask questions if they didn’t understand the
material. My research assistants and I then considered the questions that were asked and the
problems revealed by the quizzes and determined what changes should be made to the next
version of the notes.
The notes on copyright and patent were in the best shape and are the basis for this first edition. I
asked a number of friends who are experts in those areas to review the chapters and further
revisions were made based on their valuable comments. Finally, the editors at BNA Books made
suggestions that improved the presentation and did the final proofreading. The result is this book.
As I write this in August 2002, I’ve just started teaching my class again. I’ll be taking the
questions and comments of the students to further improve the current chapters. I’m also revising
the preliminary notes from the last class on trade secrets, trademarks, databases, and software
licenses, and these will form the basis for the treatment of those topics in the second edition.
I’m also collecting and formatting the cases and other cited material for inclusion on the Web
site, which should be online about the time this book is published. Look for it at www.digital-
law-online.info.
Audiences
This book was originally written for a non-lawyer audience and it continues to be a useful
introduction for a software developer on what types of protection can be used, what they protect
and don’t protect, and why.
Because it presents the key material from the statutes and cases, it is also suitable for attorneys
and law students wanting to gain a familiarity with copyrights and patents in general, and in
particular with how current law protects software and other digital works. It provides a good
introduction as well as pointers to the key cases and Congressional reports (which are available
on the book’s Web site). When I conducted a CLE course for non-copyright attorneys on
copyright law in 1995, it became clear that there were a great many misunderstandings about this
important subject. This book should help clear up those misunderstandings.
For those already knowledgeable in computer law and intellectual property, this book looks at
some situations that have not been litigated or widely discussed, giving my views about how they
should be treated under the law. You may disagree, but it should make you think.
Quoted Material
There is extensive use of quoted material in the book: statutes, legislative history, and court
cases. This gives the reader the language of the actual statutes and the spirit of the cases. I’ve
done some editing to make the quotations more readable, such as removing internal citations. If
you are interested in the citations that I’ve removed, the context of the quotation, or anything else
that has been edited out, the full text of the case is available on the Web site for this treatise:
www.digital-law-online.info.
Some quotes are longer than one normally finds in a book like this, but they are the key thoughts
in the seminal cases on digital intellectual property law, and rather than just paraphrase them I
think it is important to hear the concepts in the court’s or Congress’s own words. But what I’ve
quoted is just a small portion of each case or Congressional report, so you aren’t reading as much
as you would find in a casebook but are still getting the courts’ and Congress’s own words on the
key concepts.
Thanks
There are a number of people that deserve special thanks for their help to me in writing this
book. First, my research assistants, Michelle Smith and Peter Donaldson, suggested a number of
improvements to the text and recorded the comments of the students as we were trying out the
material. They also did the initial editing for many of the cases and other material on the Web
site. My son, Mark Hollaar, is now helping me edit the Web site material when he isn’t playing
video games.
Ed Damich not only contributed the foreword to the book, but read and discussed the material on
copyright with me. Ralph Oman also helped me with the copyright material, and Jeff Kushan
helped with the patent material. The improvements to the original material are due to their help;
any problems that remain are solely mine.
Many of my thoughts were refined through discussions with Ed, Ralph, and Jeff, as well as
Randy Rader, Mike Fleming, Jon Band, Andy Greenberg, Hal Wegner, Chris Kelly, Bill Patry,
Lloyd Sadler, Dan McCarthy, John Ogilvie, and many others who I apologize to for not
mentioning by name. Special recognition goes to the students in my classes, who served as the
guinea pigs for the early drafts of the book.
Jim Fattibene and Joe Dundin at BNA Books supported the idea of this book to accompany the
Web site and were able to keep the pressure on me to get a finished manuscript to them. Their
editing, forcing me to put in more footnotes than I would have and improve the use of
quotations, has resulted in a better work.
Finally, Summit Law Group and Lineo provided important support for the development of this
book and its Web site. Matt Harris and Ralph Palumbo recognized the importance of having this
material widely available and made it possible. Lee A. Hollaar Salt
Lake City, Utah August 2002
Chapter 1: An Overview of Copyright
II. Current Copyright Law

II.A. How Copyright Comes Into Being
The current copyright law in the United States, the Copyright Act of 1976 (which became
effective on January 1, 1978), represents a substantial change in the way copyright protection
comes into being. Before that Act, a work had to be published with a copyright notice UK
PROCEDURES, and the claim to copyright registered in the U.S. Copyright Office, for the
work to be fully protected SWISS PROCEDURES: AICHA. But now, US COPYRIGHTS
NOW RESEMBLE EUROPEAN COPYRIGHTS, according to Section 102(a) of the
Copyright Act:
Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of
expression, now known or later developed, from which they can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device. {FN14: 17
U.S.C. §102(a)}
Copyright protection “subsists,” which means that it comes into being, whenever something
original is fixed in a medium of expression – in other words, at the moment of its creation. We’ll
use the term “copyrighted” to mean “protected by copyright,” although “copyrighted” incorrectly
implies that some action other than the fixing of the work in a medium of expression was
required.
Before the Copyright Act of 1976, an unpublished work was not protected by federal law.
Instead, any protection would have to come from state law, either some type of state copyright
or a misappropriation action. The Copyright Act of 1976 included unpublished works within
its scope, and explicitly preempted any state laws that might provide a similar protection. {FN15:
17 U.S.C. §301}
II.A.1. Fixation of a Work
Section 101 defines when something has been fixed:
A work is “fixed” in a tangible medium of expression when its embodiment in a copy or

phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit
it to be perceived, reproduced, or otherwise communicated for a period of more than transitory
duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for
purposes of this title if a fixation of the work is being made simultaneously with its transmission.
{FN16: 17 U.S.C. §101}
Fixation can be the writing of a work on a piece of paper, the typing of a work into a computer
(assuming it is then stored on a disk or even in RAM), or any other act that will enable the work
to be perceived later by somebody else. It doesn’t include the speaking of a work, unless that
work was previously written down or is recorded at the time it is spoken, or having the work in
your head. Works that are not fixed are protected by a state statute or a common law theory, if at
all.
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. In a report that accompanied the passage
of the Copyright Act of 1976, its drafters said:
This broad language is intended to avoid the artificial and largely unjustifiable distinctions . . .
under which statutory copyrightability in certain cases has been made to depend upon the form
or medium in which the work is fixed. Under the bill it makes no difference what the form,
manner, or medium of fixation may be – whether it is in words, numbers, notes, sounds, pictures,
or any other graphic or symbolic indicia, whether embodied in a physical object in written,
printed, photographic, sculptural, punched, magnetic, or any other stable form, and whether it is
capable of perception directly or by means of any machine or device “now known or later
developed.” {FN17: H.R. Rep. No. 94-1476 at 52}
Works can be fixed in either “copies” or “phonorecords,” which are defined in Section 101:
“Copies” are material objects, other than phonorecords, in which a work is fixed by any method
now known or later developed, and from which the work can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device. The term
“copies” includes the material object, other than a phonorecord, in which the work is first fixed.
“Phonorecords” are material objects in which sounds, other than those accompanying a motion
picture or other audiovisual work, are fixed by any method now known or later developed, and
from which the sounds can be perceived, reproduced, or otherwise communicated, either directly
or with the aid of a machine or device. The term “phonorecords” includes the material object in
which the sounds are first fixed. {FN18: 17 U.S.C. §101}
As noted by the Act’s drafters, “‘copies’ and ‘phonorecords’ together comprise all of the
material objects in which copyrightable works are capable of being fixed.” {FN19: H.R. Rep.
No. 94-1476 at 53} If it’s not a phonorecord, it’s a copy. While the distinction between
phonorecords and copies may be important in some aspects of the copyright law, and reflects a
historically different way of treating them, in most cases discussed here it will make no
difference.
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, together with their usage in section 102 and
throughout the bill, reflect a fundamental distinction between the “original work” which is the
product of “authorship” and the multitude of material objects in which it can be embodied. Thus,
in the sense of the bill, a “book” is not a work of authorship, but is a particular kind of “copy.”
Instead, the author may write a “literary work,” which in turn can be embodied in a wide range
of “copies” and “phonorecords,” including books, periodicals, computer punch cards, microfilm,
tape recordings, and so forth. It is possible to have an “original work of authorship” without
having a “copy” or “phonorecord” embodying it, and it is also possible to have a “copy” or
“phonorecord” embodying something that does not qualify as an “original work of authorship.”
The two essential elements – original work and tangible object – must merge through fixation in
order to produce subject matter copyrightable under the statute. {FN20: H.R. Rep. No. 94-1476
at 53}
Section 101 also discusses when a work is created:
A work is “created” when it is fixed in a copy or phonorecord for the first time; where a work is
prepared over a period of time, the portion of it that has been fixed at any particular time
constitutes the work as of that time, and where the work has been prepared in different versions,
each version constitutes a separate work. {FN21: 17 U.S.C. §101}
So, if you are writing a book or a computer program or anything else, when you have written part
of it and take a break, you have created a work protected by copyright. When you write a little
more, you create another work protected by its own copyright, although it includes the first
copyrighted work.
II.A.2. 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;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works. {FN22: 17 U.S.C. §102(a)}
Of most interest to us, as we consider copyright protection of digital information such as

computer programs or Web pages, are literary works, which Section 101 defines as
works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical
symbols or indicia, regardless of the nature of the material objects, such as books, periodicals,
manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied. {FN23: 17
U.S.C. §101}
Computer programs, for example, are literary works. But programmers shouldn’t start comparing
themselves to Shakespeare as authors of literary works, because the drafters of the Copyright Act
noted that
The term “literary works” does not connote any criterion of literary merit or qualitative value: it
includes catalogs, directories, and similar factual, reference, or instructional works and
compilations of data. It also includes computer data bases, and computer programs to the extent
that they incorporate authorship in the programmer’s expression of original ideas, as
distinguished from the ideas themselves. {FN24: H.R. Rep. No. 94-1476 at 54}
They make the same observation about other works. Section 101 also defines “pictorial, graphic,
and sculptural works,” “motion pictures,” and “architectural works.” Of possible interest to the
protection of digital information are “audiovisual works” and “sound recordings,” because digital
information may fall into these definitions, rather than the general “literary works”:
“Audiovisual 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, viewers, or electronic
equipment, together with accompanying sounds, if any, regardless of the nature of the material
objects, such as films or tapes, in which the works are embodied.
“Sound recordings” are works that result from the fixation of a series of musical, spoken, or
other sounds, but not including the sounds accompanying a motion picture or other audiovisual
work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords,
in which they are embodied. {FN25: 17 U.S.C. §101}
If a work is both an audiovisual work and a computer program (which is a literary work), the
Copyright Office will accept a single registration that covers both aspects of the work. 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.
While the Act specifies eight different categories for copyrighted works, 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.
But the classification of a work will determine which of the protections available under copyright
will be available for the work. For example, the public performance right only applies to sound
recordings that are in digital form. {FN26: See 17 U.S.C. §106} Furthermore, the copyright laws
contain a variety of special exceptions that apply to one type of work, or use of a work, and not
another. {FN27: See 17 U.S.C. §§108-122} The copyright laws are a series of compromises,
some general, some very specific, between the broad rights of the copyright owners and the
public’s use of the work. 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, or in other
situations.
II.A.3. Originality Is Required
Besides fixation, the law requires originality for copyright protection. But the standard for
originality is very low. The Supreme Court discussed that standard in one of its major copyright
cases, Feist Publications v. Rural Telephone Service: {FN28: 499 U.S. 340, 18 USPQ2d 1275
(1991)}
To qualify for copyright protection, a work must be original to the author. Original, as the term is
used in copyright, means only that the work was independently created by the author (as opposed
to copied from other works), and that it possesses at least some minimal degree of creativity. To
be sure, the requisite 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 345-346, 18 USPQ2d at 1278 (citations omitted)}
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 “compilation” 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 “compilation” includes collective works.
A “collective 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 “derivative 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 “derivative
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 “compilations” and “derivative 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 “compilation” 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
“derivative work,” on the other hand, requires a process of recasting, transforming, or adapting
“one or more preexisting works”; the “preexisting 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 “substantially 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 hard-
and-fast rules in intellectual property law.) But the touchstone for a derivative work is the
“recasting, 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
“new 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 “any 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 “unlawful,” even though the consent of the copyright owner
had not been obtained. For instance, the unauthorized reproduction of a work might be “lawful”
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.
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 “Copyright”, or the abbreviation
“Copr.”; 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.
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 “work 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 “public domain.”
Public domain works have no copyright owner, and anyone can use the work as they see fit
without infringement. Besides federal government works, public domain works include those
works so old that their copyright has expired, works that fell into the public domain because of a
failure to comply with a requirement like notice or registration, and works whose authors have
dedicated them to the public.
The 1976 Act is silent on whether the works of state or local governmental agencies can be
copyrighted, but there are cases holding that works published by state or local governments are
eligible for copyright protection.
II.D.2. Government Contract Works
The prohibition against copyrights for United States Government publications does not apply to
the works produced under government contracts. 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.S. Government contract or grant. As the bill is
written, the Government agency concerned could determine in each case whether to allow an
independent contractor or grantee, to secure copyright in works prepared in whole or in part with
the use of Government funds. The argument that has been made against allowing copyright in
this situation is that the public should not be required to pay a “double 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.
Those arguing in favor of potential copyright protection have stressed the importance of
copyright as an incentive to creation and dissemination in this situation, and the basically
different policy considerations, applicable to works written by Government employees and those
applicable to works prepared by private organizations with the use of Federal funds.
The bill deliberately avoids making any sort of outright, unqualified prohibition against
copyright in works prepared under Government contract or grant. 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; it can be assumed that, 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, the right to secure a private copyright would be withheld. However, 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. Where, under the particular
circumstances, 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, the problem can be dealt
with by specific legislation, agency regulations, or contractual restrictions. {FN40: H.R. Rep.
No. 94-1476 at 59}
A reasonable test of whether a government contractor should be allowed to copyright a work

produced under the contract, either for its own benefit or for transfer to the government, should
include whether the information is necessary in the normal functioning of government. If the
government contracts to have its laws or regulations written, or for something that is
incorporated by reference in a law or regulation, that work should not be protected by copyright.
Although when such a law or regulation is written, it will automatically be copyrighted, the
contractor should be required to dedicate the copyright to the public, or agree to distribute it to
anybody, charging only for the cost of copying.
II.E. Ideas Versus Expression

Through both court decisions and specific language in the Copyright Act of 1976, the scope of
copyright has been limited to particular expression of an idea, not the idea that underlies that
expression. We will discuss this in more detail when we look at copyright protection for
computer programs. The specific provision is in Section 102(b):
In no case does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such work. {FN41: 17
U.S.C. §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. It pertains to the literary, musical, graphic, or artistic form in which the author
expressed intellectual concepts. Section 102(b) makes clear that copyright protection does not
extend to any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or embodied in
such work.
Some concern has been expressed lest copyright in computer programs should extend
protection to the methodology or processes adopted by the programmer, rather than merely to the
“writing” expressing his ideas. Section 102(b) is intended, among other things, to make clear that
the expression adopted by the programmer is the copyrightable element in a computer program,
and that the actual processes or methods embodied in the program are not within the scope of the
copyright law.
Section 102(b) in no way enlarges or contracts the scope of copyright protection under the
present law. Its purpose is to restate, in the context of the new single Federal system of
copyright, that the basic dichotomy between expression and idea remains unchanged. {FN42:
H.R. Rep. No. 94-1476 at 56-57}
II.E.1. 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, comes
primarily from two Supreme Court cases. In 1879, the Supreme Court decided in Baker v. Selden
{FN43: 101 U.S. 99 (1879)} that the copyright of a book that described a particular bookkeeping
technique did not protect the forms necessary to use the technique.
There is no doubt that a work on the subject of book-keeping, though only explanatory of
well-known systems, may be the subject of a copyright; but, then, it is claimed only as a book.
Such a book may be explanatory either of old systems, or of an entirely new system; and,
considered as a book, as the work of an author, conveying information on the subject of
book-keeping, and containing detailed explanations of the art, it may be a very valuable
acquisition to the practical knowledge of the community. But there is a clear distinction between
the book, as such, and the art which it is intended to illustrate. The mere statement of the
proposition is so evident, that it requires hardly any argument to support it. The same distinction
may be predicated of every other art as well as that of book-keeping. A treatise on the
composition and use of medicines, be they old or new; on the construction and use of ploughs, or
watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the
mode of drawing lines to produce the effect of perspective, 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. {FN44: 101 U.S. at 101-102}
In 1954, the Supreme Court restated the principle that copyright protects expression, but not
function. In Mazer v. Stein, {FN45: 347 U.S. 201, 100 USPQ 325 (1954)} the Court addressed
the scope of copyright protection for a sculpture that formed the base of a lamp. They found that
the artistic aspects of the sculpture were protected by copyright, but not the functional aspects
associated with being a lamp base:
Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given
only to the expression of the idea – not the idea itself. Thus, in Baker v. Selden, 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. The distinction is illustrated in Fred
Fisher, Inc. v. Dillingham, when the court speaks of two men, each a perfectionist, independently
making maps of the same territory. Though the maps are identical, each may obtain the exclusive
right to make copies of his own particular map, and yet neither will infringe the other's
copyright. Likewise a copyrighted directory is not infringed by a similar directory which is the
product of independent work. {FN46: 347 U.S. at 217-218, 100 USPQ at 333 (citations
omitted)}
The test of whether something is an unprotectable idea or protectable expression is inherently ad

hoc, and bodies of law have been developed through court cases for different types of
copyrighted works. But there are a number of themes that run through most idea-expression
analyses.
II.E.2. Idea-Expression Merger and Scènes À Faire
When there are only a limited number of ways that a concept or idea can be expressed, there is
little difference between the idea and its expression, and it is therefore said that the two have
“merged.” When this happens, the limited number of ways of expressing the idea are not entitled
to copyright protection because, in essence, that would be protecting the idea, something outside
the scope of copyright. The merger doctrine means that even if things are substantially similar, or
even identical, there might not be a copyright infringement.
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. For example, scenes of soldiers marching
would be common in many war movies. Such common elements are called scènes à faire, or
stock incidents. In a copyright case regarding computer displays, the use of overlapping windows
was found to be a stock aspect of windowed displays and therefore not protectable by copyright.
II.F. Copyright Ownership

Not too surprisingly, since copyright automatically comes into being when an author fixes a
work in a medium, the copyright is initially owned by that author. This is stated in Section 201:
(a) Initial Ownership.– Copyright in a work protected under this title vests initially in the
author or authors of the work. The authors of a joint work are coowners of copyright in the work.
{FN47: 17 U.S.C. §201}
II.F.1. Joint Works
Section 101 defines a “joint work” as “a work prepared by two or more authors with the
intention that their contributions be merged into inseparable or interdependent parts of a unitary
whole.” {FN48: 17 U.S.C. §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, and that, in the case of a “joint
work,” the coauthors of the work are likewise coowners of the copyright. Under the definition of
section 101, a work is “joint” if the authors collaborated with each other, 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 “inseparable or interdependent parts of a unitary whole.”
The touchstone here is the intention, at the time the writing is done, that the parts be absorbed or
combined into an integrated unit, although the parts themselves may be either “inseparable” (as
the case of a novel or painting) or “interdependent” (as in the case of a motion picture, opera, or
the words and music of a song). The definition of “joint work” is to be contrasted with the
definition of “collective work,” also in section 101, in which the elements of merger and unity
are lacking; there the key elements are assemblage or gathering of “separate and independent
works * * * into a collective whole.” {FN49: H.R. Rep. No. 94-1476 at 120}
Since each coauthor of a joint work is an owner of the copyright of that work, each can license,
copy, distribute, or do anything else permitted of a copyright owner with sole rights to a work,
without the permission of any other co-owner, including assigning the copyright to another. But
each co-owner is responsible to the other co-owners for any royalties or other payments received
for the co-owned work. It is best to have an agreement regarding the ownership of a joint work,
or any other copyrighted work for which there may be more than one author, before starting on
the work, perhaps making one author the owner of the copyright with an agreement to pay
royalties to the other authors.
II.F.2. Works Made For Hire
When the work is made as part of the creator’s regular employment, or under contract in certain
circumstances, the work is a “work made for hire”, and Section 201(b) states a special rule:
In the case of a work made for hire, the employer or other person for whom the work was
prepared is considered the author for purposes of this title, and, unless the parties have expressly
agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the
copyright. {FN50: 17 U.S.C. §201(b)}
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. Ownership of the copyright by the employer is the
default, absent some other agreement, and that agreement must be in writing and must be signed
by both the employer and the employee. A statement in an employment manual, saying that an
employee owns the copyright on certain works that would otherwise be works made for hire is
not enough.
So what is a work made for hire? Section 101 defines two different types of works made for
hire – ones prepared by an employee, and ones specially ordered or commissioned:
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a
part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a
compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the
parties expressly agree in a written instrument signed by them that the work shall be considered a
work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a
work prepared for publication as a secondary adjunct to a work by another author for the purpose
of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in
the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts,
tables, editorial notes, musical arrangements, answer material for tests, bibliographies,
appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work
prepared for publication and with the purpose of use in systematic instructional activities.
{FN51: 17 U.S.C. §101}
A number of factors must be considered in determining whether somebody is an employee, as

that term is used in (1), or a contractor, in which case (2) applies. 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. If you are receiving a regular paycheck, you are
likely an employee.
The second factor in (1) is that the work must be prepared “within the scope of his or her
employment.” That does not mean that the work needs to be specifically requested. 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. If there is some
question over whether something is within the scope of your employment, you should have that
clarified before starting on the creation of the work, as some companies take a broad view of
what is within the scope of employment.
It is important to note that in (2), only certain commissioned works are works made for hire. If
somebody commissioning any other type of work wants to have the copyright to that work, the
agreement that commissions the work must include a clause transferring the copyright to the
person commissioning the work. Simply paying for it is not enough.
For a short period of time, Congress added sound recordings to the types of commissioned works
that can be works made for hire. The change had been included in a bill having to do with a
number of intellectual property topics, with little discussion. When singers and musicians
objected after the change became law, Congress removed sound recordings from the list of
commissioned works that may be works made for hire, and included a provision saying that
nothing should be read into the insertion and subsequent removal of sound recordings from the
list.
Why should the recording artists be concerned that something is a work made for hire, when they
routinely sign contracts agreeing that the recording is a work made for hire, 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.
The difference can be found in Section 203 {FN52: 17 U.S.C. §203} ,which allows the author of
a work to terminate any assignment or license after 35 years. This allows an author to renegotiate
a license or assignment if the value of the work turns out to be much greater than expected. That
right is not available if the work is a work made for hire.
II.F.3. 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, and vests initially in the author of the contribution. In the absence of
an express transfer of the copyright or of any rights under it, 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, any revision of that collective work,
and any later collective work in the same series. {FN53: 17 U.S.C. §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 of any of the exclusive rights under a copyright, is distinct from
ownership of any material object in which the work is embodied. Transfer of ownership of any
material object, including the copy or phonorecord in which the work is first fixed, does not of
itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an
agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright
convey property rights in any material object. {FN54: 17 U.S.C. §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. Thus, transfer of a material object does not of itself carry any rights
under the copyright, and this includes transfer of the copy or phonorecord – the original
manuscript, the photographic negative, the unique painting or statue, the master tape recording,
etc. – in which the work was first fixed. Conversely, transfer of a copyright does not necessarily
require the conveyance of any material object. {FN55: H.R. Rep. No. 94-1476 at 124}
II.G. Copyright Duration

The term of protection has been progressively expanded from 14 years, with a 14-year renewal,
to the life of the author plus 70 years (or 95 years after first publication for some works). The
term for a work created on or after January 1, 1978, is given in Section 302:
(a) In General.– Copyright in a work created on or after January 1, 1978, subsists from its
creation and, except as provided by the following subsections, endures for a term consisting of
the life of the author and 70 years after the author’s death.
(b) Joint Works.– 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.
(c) Anonymous Works, Pseudonymous Works, and Works Made for Hire.– In the case of an
anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a
term of 95 years from the year of its first publication, or a term of 120 years from the year of its
creation, whichever expires first. . . .
(d) Records relating to death of authors.– 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, or a statement that the author is still living on a particular date. The statement
shall identify the person filing it, the nature of that person’s interest, and the source of the
information recorded, and shall comply in form and content with requirements that the Register
of Copyrights shall prescribe by regulation. The Register shall maintain current records of
information relating to the death of authors of copyrighted works, based on such recorded
statements and, to the extent the Register considers practicable, on data contained in any of the
records of the Copyright Office or in other reference sources.
(e) Presumption as to author’s death.– After a period of 95 years from the year of first
publication of a work, or a period of 120 years from the year of its creation, whichever expires
first, 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, or
died less than 70 years before, is entitled to the benefit of a presumption that the author has been
dead for at least 70 years. Reliance in good faith upon this presumption shall be a complete
defense to any action for infringement under this title. {FN56: 17 U.S.C. §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, and that an author is presumed to have died 50
years after a work is created or 25 years after it is published, whichever comes first. The
Copyright Office can be informed of the actual date of death of the author, or that the author is
still alive, for authors that are people, but not for authors that are companies (as is the case for a
work made for hire) or for unidentified authors.
So that one need not quibble about the exact date of the death of an author, Section 305 provides
that “All terms of copyright . . . run to the end of the calendar year in which they would
otherwise expire.” It doesn’t indicate a particular time zone for determining when the year ends.
II.G.1. Why So Long?
How long a copyright should last is a very controversial subject. In the report that accompanied
the passage of the Copyright Act of 1976, the drafters gave a number of reasons why they went
from a term of 28 years, with the possibility of renewing for another 28 years, to a term of the
life of the author plus 50 years: {FN57: H.R. Rep. No. 94-1476 at 134-135}
1. The present 56-year term is not long enough to insure an author and his dependents the fair
economic benefits from his works. . . .
2. The tremendous growth in communications media has substantially lengthened the

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

The copyright owner gets what is often termed a “bundle of rights,” including the right to control
reproduction of the copyrighted work that we normally associate with copyright. But it is
important to understand that there are rights in addition to reproduction that are given the
copyright owner. And these rights can be separated out and granted to different people as the
copyright owner sees fit.
II.H.1. Reproduction
Section 106 states the six exclusive rights of a copyright owner. The first is “to reproduce the
copyrighted work in copies or phonorecords.” The difference between “copies” and
“phonorecords” is primarily historical. The reproduction does not have to be exact, but in the
case of a sound recording, it must be an actual copy. A sound-alike imitation of a sound
recording is not an infringement of the copyright in the sound recording, although it likely
infringes the separate copyright in the music. It just has to be substantially similar to the
copyrighted work. Nor do you have to be looking at the original work when you make the copy.
In a 1983 case, ABKCO Music v. Harrisongs Music, {FN60: 722 F.2d 988, 221 USPQ 490 (2d
Cir., 1983)} the Beatles’ George Harrison was found to have copied the song “He’s So Fine”
when he wrote “My Sweet Lord.” In the infringement suit, it was shown that he had heard “He’s
So Fine” many years before, and that the tune of “My Sweet Lord” was substantially similar.
The drafters of the Copyright Act of 1976 discussed the reproduction right:
Read together with the relevant definitions in section 101, the right “to reproduce the
copyrighted work in copies or phonorecords” means the right to produce a material object in
which the work is duplicated, transcribed, imitated, or simulated in a fixed form from which it
can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device.” As under the present law, a copyrighted work would be infringed by
reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or
simulation. Wide departures or variations from the copyrighted work would still be an
infringement as long as the author’s “expression” rather than merely the author’s “ideas” are
taken. An exception to this general principle, applicable to the reproduction of copyrighted sound
recordings, is specified in section 114.
“Reproduction” under clause (1) of section 106 is to be distinguished from “display” under
clause (5). For a work to be “reproduced,” its fixation in tangible form must be “sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a
period of more than transitory duration.” Thus, the showing of images on a screen or tube would
not be a violation of clause (1), although it might come within the scope of clause (5). {FN61:
H.R. Rep. No. 94-1476 at 61-62}
There are a variety of exceptions to the reproduction right, including a number of special
privileges for libraries contained in Section 108. We will look at the reproduction right in more
detail when we discuss software copyrights and Internet copyrights.
II.H.2. Derivative Works
The second exclusive right listed in Section 106 is “to prepare derivative works based upon the
copyrighted work.” As defined in Section 101:
work.” {FN62: 17 U.S.C. §101}
The right to control the preparation of derivative works is a broadening of the adaptation right in
the Copyright Act of 1909, which specified particular adaptations for different types of works
(“To translate the copyrighted work into other languages or dialects, . . . if it be a literary work”).
However, it is sometimes convenient to talk about the right to control the preparation of
derivative works as the “adaptation right,” much like we talk about the “reproduction right,” the
“distribution right,” the “performance right,” and the “display right” as shorthand for the other
exclusive rights. It also reminds us that we are taking an existing work and modifying it in some
way to produce a new copyrightable work, rather than just making a reproduction of an existing
work. As the drafters commented:
The exclusive right to prepare derivative works, specified separately in clause (2) of section
106, overlaps the exclusive right of reproduction to some extent. It is broader than that right,
however, in the sense that reproduction requires fixation in copies or phonorecords, whereas the
preparation of a derivative work, such as a ballet, pantomime, or improvised performance, may
be an infringement even though nothing is ever fixed in tangible form.
To be an infringement the “derivative work” must be “based upon the copyrighted work,” and
the definition in section 101 refers to “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.” Thus,
to constitute a violation of section 106(2), the infringing work must incorporate a portion of the
copyrighted work in some form; for example, a detailed commentary on a work or a
programmatic musical composition inspired by a novel would not normally constitute
infringements under this clause. {FN63: H.R. Rep. No. 94-1476 at 62}
II.H.3. Public Distribution and First Sale
The third exclusive right is “to distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership, or by rental, lease, or lending.” It is infringed even
if the infringer did not have to reproduce the work in order to make the distribution. But the
distribution right is limited in many instances by Section 109, which codifies what is called the
“first-sale doctrine” – that copyright owners receive their just reward when they first sell a
copyrighted work, and they should not receive an additional benefit when that purchaser disposes
of the work in some way. As Section 109 says:
the owner of a particular copy or phonorecord lawfully made under this title, or any person
authorized by such owner, is entitled, without the authority of the copyright owner, to sell or
otherwise dispose of the possession of that copy or phonorecord. {FN64: 17 U.S.C. §109}
The drafters provided some examples:
Thus, for example, 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. A library that has
acquired ownership of a copy is entitled to lend it under any conditions it chooses to impose.
This does not mean that conditions on future disposition of copies or phonorecords, imposed by a
contract between their buyer and seller, would be unenforceable between the parties as a breach
of contract, but it does mean that they could not be enforced by an action for infringement of
copyright. Under section 202 however, the owner of the physical copy or phonorecord cannot
reproduce or perform the copyrighted work publicly without the copyright owner's consent.
To come within the scope of section 109(a), a copy or phonorecord must have been “lawfully
made under this title,” though not necessarily with the copyright owner’s authorization. For
example, any resale of an illegally “pirated” phonorecord would be an infringement, . . . {FN65:
H.R. Rep. No. 94-1476 at 79}
There are two significant exceptions to the first-sale doctrine given in Section 109. 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.
There is no similar prohibition against renting movies on videotape or videodisc.
It is possible to infringe one or more of these exclusive rights by a single act, as the drafters
noted:
The first three clauses of section 106, which cover all rights under a copyright except those of
performance and display, extend to every kind of copyrighted work. The exclusive rights
encompassed by these clauses, though closely related, are independent; they can generally be
characterized as rights of copying, recording, adaptation, and publishing. A single act of
infringement may violate all of these rights at once, as where a publisher reproduces, adapts, and
sells copies of a person’s copyrighted work as part of a publishing venture. Infringement takes
place when any one of the rights is violated: where, for example, a printer reproduces copies
without selling them or a retailer sells copies without having anything to do with their
reproduction. The references to “copies or phonorecords,” although in the plural, are intended
here and throughout the bill to include the singular. {FN66: H.R. Rep. No. 94-1476 at 61}
II.H.4. 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, musical, dramatic, and choreographic works, pantomimes, and
motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and
pictorial, graphic, or sculptural works, including the individual images of a motion picture or
other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a
digital audio transmission. {FN67: 17 U.S.C. §106}
Section 101 provides a number of important definitions:
To “display” a work means to show a copy of it, either directly or by means of a film, slide,
television image, or any other device or process or, in the case of a motion picture or other
audiovisual work, to show individual images nonsequentially.
To “perform” a work means to recite, render, play, dance, or act it, either directly or by means
of any device or process or, in the case of a motion picture or other audiovisual work, to show its
images in any sequence or to make the sounds accompanying it audible.
To perform or display a work “publicly” 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
(2) to transmit or otherwise communicate a performance or display of the work to a place

specified by clause (1) or to the public, by means of any device or process, 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.
To “transmit” 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. {FN68: 17 U.S.C.
§101}
There are a variety of special exceptions to the public display and performance rights detailed in
Sections 109-121. {FN69: 17 U.S.C. §§109-121} And, if the use has few or no economic
consequences on the market for the work, fair use under Section 107 {FN70: 17 U.S.C. §107}
may permit a public performance or display.
II.H.5. Rights In Different Types of Works

It is important to note that the copyright laws treat different types of works differently, and there
is a series of special exceptions that may apply to one type of work, or use of a work, and not
another. The copyright laws are a series of compromises, some general, some very specific,
between the broad rights of the copyright owners and the public’s use of the work. 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, or in other situations. There are few general rules in copyright
law.
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:
 For literary works, musical works, dramatic works, pantomimes and choreographic
works: reproduction, adaptation, distribution, public performance, and public display.
 For pictorial, graphic, and sculptural works, including individual images of a motion
picture or other audiovisual work: reproduction, derivative works, and public display.
 For motion pictures and other audiovisual works: reproduction, derivative works,
distribution, and public performance.
 For sound recordings: reproduction, derivative works, distribution, and public

performance by digital audio transmission.
 For architectural works: reproduction, derivative works, and distribution.
II.H.6. Assignments and Licensing
The copyright owner has a “bundle of rights” that can be assigned or licensed as desired. An
assignment occurs when all the rights are transferred to another person, much like the sale of a
house. A license is like a lease, under which the licensor retains ownership of the copyright but
gives certain rights to the licensee. When a license does not permit any further licensing in a
particular field of use or geographic area, it is called an exclusive license for that field of use or
geographic area. An exclusive license can also be for all the rights under the copyright. 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. Any licenses granted before the exclusive license remain valid, but no
licenses can be granted after the exclusive license.
The owner of the copyright can license or assign any or all of these rights to others, such as
licensing a book publisher for a novel, permitting a playwright to adapt the novel for a play, and
licensing the individual performances of the play (in cooperation with the playwright, who owns
the copyright in the portions of the play that are a derivative work of the novel).
II.I. Fair Use

Probably one of the most misunderstood concepts in copyright law is fair use. This is a doctrine
that provides a defense to copyright infringement for some acts. But determination of whether or
not something is a fair use is fact-intensive. No particular act is automatically fair use, and all
four factors listed in Section 107 must be considered:
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work,
including such use by reproduction in copies or phonorecords or by any other means specified by
that section, for purposes such as criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.
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, including whether such use is of a commercial nature
or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
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. {FN71: 17 U.S.C. §107}
II.I.1. Consider All Factors
It is important to note that while the statute lists a number of purposes for fair use copying
(“criticism, comment, news reporting, teaching, scholarship, or research”), it does not say that
any of those are automatically a fair use. Instead, it says that a fair use for such purposes is not an
infringement, with the four factors determining whether or not the particular use is fair.
Each of the four factors listed above must be considered in determining fair use, but all four
factors need not be met, nor must all four factors be weighted equally by the court. Often, the
first two factors color the consideration of the others. In Harper & Row v. Nation Enterprises,
{FN72: 471 U.S. 539, 225 USPQ 1073 (1985)} the Supreme Court found that the copying of
about 300 words from a book as not a fair use, 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, although
the Supreme Court has made it clear in the “2 Live Crew” case, {FN73: Campbell v. Acuff-Rose
Music, 510 U.S. 569, 29 USPQ2d 1961 (1994)} which considered whether a commercial parody
of a song was a fair use, that there are no shortcuts and all four factors must be considered.
But the Supreme Court has stated that special consideration should be given to works that are
“transformative.”
The enquiry here may be guided by the examples given in the preamble to Section 107, looking
to whether the use is for criticism, or comment, or news reporting, and the like. The central
purpose of this investigation is to see, in Justice Story's words, whether the new work merely
“supersedes the objects” of the original creation, or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or message; it
asks, in other words, whether and to what extent the new work is “transformative.” Although
such transformative use is not absolutely necessary for a finding of fair use, the goal of
copyright, to promote science and the arts, is generally furthered by the creation of
transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of
breathing space within the confines of copyright, and the more transformative the new work, the
less will be the significance of other factors, like commercialism, that may weigh against a
finding of fair use. {FN74: 510 U.S. at 578-579, 29 USPQ2d at 1965 (citations omitted)}
II.I.2. Fair Use as a Safety Valve
Fair use provides a safety valve for the copyright law. As we have seen, the law gives broad
exclusive rights to the copyright owner (reproduction, adaptation, distribution, and public display
and performance), tempered by a number of specific exemptions. 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. Within the limits imposed by Congress, the court can balance
the harm to the copyright owner with the public benefit of what would otherwise be an
infringement. It is in part through the fair use doctrine that the copyright laws are not a restriction
on free speech.
The fair use safety valve is most important for uses that are technically infringements, but where
there is little or no economic harm to the market for a work by the use. A person singing a song
as he or she walks down the street may be performing it publicly, but it would be unreasonable to
treat that the same as performance of the song in a concert with thousands paying to attend. Most
uses of digital works require the creation of intermediate copies, and it would be nonsensical to
say that a purchaser of a digital work can’t use it.
But it is necessary to really understand “the effect of the use upon the potential market for or
value of the copyrighted work” when considering whether a use is fair. 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. A
person making a copy of that same CD for a friend will have a limited effect on the market, since
a potential sale for the CD is lost, 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, in competition with the copyright owner, with substantial effect on the potential market for
that work.
II.J. Indirect Infringement

Even if you do not directly infringe any of the exclusive rights in copyright, you may be guilty of
indirect copyright infringement as either a “contributory infringer” or a “vicarious infringer” if
you help somebody else infringe. The two concepts are somewhat similar, and often someone
can be both a contributory infringer and a vicarious infringer. Although these concepts are not
part of the Copyright Act of 1976, the Supreme Court has borrowed contributory infringement
from the patent statute and noted that vicarious liability is common in the law.
II.J.1. Contributory Infringement
Contributory infringement results when somebody knows of the direct infringement of another
and substantially participates in that infringement, such as inducing, causing, or materially
contributing to the infringing conduct. 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. In the classic case on contributory infringement, the
Supreme Court’s 1984 “Betamax” decision, {FN75: Sony v. Universal City Studios, 464 U.S.
417, 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.
II.J.2. 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. In a 1996 Ninth Circuit case, {FN76: Fonovisa Inc. v. Cherry Auction, 76 F.3d
259, 37 USPQ2d 1590 (9th Cir. 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, and he made money from that booth
rental as well as from admission fees from the people attending the flea market. The court
believed that many of the people who paid those admission fees did so to gain access to the
counterfeit recordings. The court also found that the flea market operator was guilty of
contributory infringement.
Contributory or vicarious infringement has been a major consideration in cases regarding the use
of digital information on the Internet.
[In addition to contributory infringement and vicarious infringement, there is another form of
indirect infringement: inducement of infringement. This was more commonly seen in patent law,
because it is specifically indicated in the patent statutes (17 U.S.C. 271(b)), but as I noted in my
paper "Sony Revisited: A new look at contributory copyright infringement," is also applicable to
copyright. This was confirmed in the Supreme Court’s unanimous opinion in MGM v. Grokster,
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, the inducement rule, too, is a sensible one for copyright. We adopt it
here, holding that one who distributes a device with the object of promoting its use to infringe
copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is
liable for the resulting acts of infringement by third parties.
While cases in patent law provide some guidance regarding what might be inducement of
infringement, the metes-and-bounds of copyright inducement won’t be known until a few cases
are litigated.]
II.K. Misuse Of Copyright

The exclusive rights given to the copyright owner – reproduction, adaptation, distribution, and
public performance and display – are quite broad, even when the special exceptions are
considered. But sometimes copyright owners may try to use their exclusive rights to gain even
more protection than is granted under the copyright laws. This is considered copyright misuse.
The copyright misuse doctrine is similar to the better-developed patent misuse doctrine. 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. The courts have found that such an action attempts to improperly enlarge the scope of the
patent, and therefore when the patent owner comes to court, it is with “unclean hands” and the
court will refuse to enforce the patent until the misuse ends and its effects no longer exist. The
misuse does not have to be against the alleged infringer – any misuse can be used to defend
against the infringement suit.
Before 1990 there were many cases regarding patent misuse, but essentially nothing regarding
copyright misuse. But in that year, the Fourth Circuit explicitly recognized copyright misuse as
analogous to patent misuse inLasercomb America v. Reynolds. {FN77: 911 F.2d 970, 15
USPQ2d 1846 (4th Cir. 1990)} Lasercomb produced a computer-aided design program that
Reynolds and his company licensed. Reynolds’ s use went far beyond the license it had from
Lasercomb, since it found a way to circumvent the system that limited the number of active
copies. Lasercomb sued for copyright infringement.
Reynolds asserted that even though it had infringed Lasercomb’s copyright, it should not be
found liable because Lasercomb had misused its copyright in the license agreement for the
software, and the court agreed. As part of the Lasercomb agreement, a licensee had to agree not
to develop a competitive computer-aided design program for 99 years, well beyond the period of
protection given Lasercomb’s program by the copyright laws at that time, 75 years. The court
found that Lasercomb was trying to effectively extend the term and scope of its copyright
beyond what copyright law permitted, and that would prevent people from legitimately
developing competitive software. That was a misuse by Lasercomb and the court refused to
enforce their copyright against Reynolds.
An interesting aspect of the case is that Reynolds and his company had never signed the license
agreement. But that made no difference – Lasercomb had misused its copyright in getting others
to sign the agreement, and the court said that it could not bring any infringement suits until it had
purged its past misuse and its effects.
The copyright misuse defense is similar to an antitrust claim, where a copyright owner has
misused the limited monopoly granted by the copyright. However, the Lasercomb decision made
it clear that the copyright misuse defense is available even when the misuse does not reach the
level of an antitrust violation.
Related to copyright misuse is “fraud on the Copyright Office,” where somebody has registered a
copyright by providing false information or concealing important information. An example
would be somebody claiming and registering the copyright in a work that is not his, such as a
work prepared as an employee within the scope of that employment (a work made for hire). As
with copyright misuse, the result of copyright fraud is that the courts will not enforce the
copyright covered by the registration.
The Lasercomb case has been cited with approval in a number of cases since it was handed
down, but in most of those cases copyright misuse was not found. In Atari v. Nintendo, {FN78:
975 F.2d 832, 24 USPQ2d 1015 (Fed. Cir. 1992)} a case decided shortly after Lasercomb, the
Federal Circuit used copyright misuse not to prevent the enforcement of a copyright but to refuse
a fair use defense. Even though it found that the use would otherwise be fair, 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, the defendant could not use the equitable fair use
defense.
While the exact dimensions of the copyright misuse defense will be known only after
considerably more cases are decided, 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. 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.
II.L. Remedies For Copyright Infringement

Exercising any of the exclusive rights of the copyright owner – reproduction, adaptation,
distribution, public display, or public performance – without the permission of the copyright
owner, or not within one of the exceptions in Sections 107 through 121, infringes the copyright
in the work. There are a variety of remedies provided in the Copyright Act. Under Section 502
the court can order that the infringing acts cease, and if there is sufficient evidence of copyright
infringement, that order can be issued even before the trial. {FN79: 17 U.S.C. §502} Under
Section 503 the court can also order the impoundment of infringing works and the things used to
make them, and after the trial can order them destroyed. {FN80: 17 U.S.C. §503} And under
Section 509 the court can order the seizure and destruction of infringing works after the trial.
{FN81: 17 U.S.C. §509}
II.L.1. Time Limits For Filing Suit
Any infringement action must be brought within three years after the infringement occurs.
{FN82: 17 U.S.C. §507(b)} But in many instances, the infringement is of a continuing nature,
such as distributing copies or performing the work. For example, consider the making of a large
number of infringing copies and distributing them until all the copies have been sold. If it is over
three years since the copies were made, 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.
However, 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, such as ignoring open infringement for a long time, with no
other reason preventing him from bringing suit, a legal principle called “laches” may prevent a
later suit. The determination is very fact-intensive, based on the actions (or lack of action) of the
copyright owner, the amount of delay, and the prejudice worked against the infringer by the
delay.
II.L.2. Damages
The most common remedy for copyright infringement is awarding damages to the copyright
owner. 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. {FN83: 17 U.S.C. §504} But since Congress recognized that in
many instances it will be difficult to compute the actual damages, it provided an alternative
called “statutory damages” that is available to copyright owners who have registered their
copyright within three months of the publication of a work. Statutory damages allow the court to
set the damages in a amount between $750 and $30,000 for each work that was infringed. If the
infringement was found to be willful, then the statutory damages can go up to $150,000, while if
the infringer shows that the infringement was innocent, they can be reduced to $200. A special
provision applies to innocent infringers connected with educational institutions, libraries, or
public broadcasters, allowing the remission of statutory damages.
II.L.3. Attorney Fees and Costs
Under Section 505, the prevailing party in a copyright infringement suit may ask the court to
award him his attorney fees and other costs of the suit. {FN84: 17 U.S.C. §504} This is in
contrast to the normal rule in American law, where each side is responsible for its own costs no
matter who wins. For copyright owners to ask for attorney fees and costs, they must have
registered their copyright within three months of the first publication of the work. This, along
with statutory damages, provides a strong incentive for prompt registration, even though
registration is not required until just before filing an infringement suit.
II.L.4. Criminal Infringement
While copyright infringement is normally a civil action, meaning that the copyright owner is
suing the alleged infringer, it can also be a criminal act, meaning that the United States
Government brings the alleged infringer into court. There is nothing that prevents an alleged
infringer from being both prosecuted criminally and sued civilly for infringement, although
criminal prosecution is often used in cases when the alleged infringer has few assets relative to
the damages that have been caused, making civil suit an ineffective remedy for the infringement.
And it is important to note that a higher burden of proof is required for criminal copyright
infringement – beyond a reasonable doubt, the same as in any other criminal prosecution – than
for civil copyright infringement. The copyright owner needs to prove infringement only by a
preponderance of the evidence, essentially tipping the scale only slightly toward finding
infringement in a civil action.
Section 506 makes a number of things criminal offenses, including fraudulent copyright notices,
fraudulent removal of copyright notices, and making false statements in a copyright registration
application. {FN85: 17 U.S.C. §506} But it primarily criminalizes copyright infringement when
it is done “willfully” and either “for purposes of commercial advantage or private financial gain”
or when the infringement exceeds a total retail value of $1,000 within any 180-day period. If the
total retail value exceeds $2,500 and ten copies, the crime becomes a felony with the possibility
of a $250,000 fine and five years in prison (ten years on a second offense), {FN86: 18 U.S.C.
§2319} although the sentencing guidelines require that the retail value be substantially above
$2,500 for any prison time, and in the millions to reach the maximum penalty.
Although the copyright statutes do not contain a definition for “willfully,” the term has been
given meaning in a number of past court decisions on copyright and other law. At the passage of
the latest amendment to the criminal provision, Senator Orrin Hatch, the Chairman of the Senate
Committee on the Judiciary, discussed the importance of the willfulness requirement:
I place great store by the “willfulness” requirement in the bill. Although there is on-going
debate about what precisely is the “willfulness” standard in the Copyright Act – as the House
Report records – I submit that in the LaMacchia context “willful” ought to mean the intent to
violate a known legal duty. The Supreme Court has given the term “willful” that construction in
numerous cases in the past 25 years . . . As Chairman of the Judiciary Committee, that is the
interpretation that I give to this term. Otherwise, I would have objected and not allowed this bill
to pass by unanimous consent. Under this standard, then, 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. . . .
Finally, Mr. President, I would like to point out two areas that are susceptible to interpretation
mischief.
First, the bill amends the term “financial gain” as used in the Copyright Act to include “receipt,
or expectation of receipt, of anything of value, including receipt of other copyrighted works.”
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. It would be contrary to the intent of the provision,
according to my understanding, if “anything of value” would be so broadly read as to include
enhancement of reputation or value remote from the criminal act, such as a job promotion.
{FN87: 143 Cong. Rec. S12689-S12690}
[In 2005, Congress added another form of criminal copyright infringement to Section 506, as
part of criminalizing the videotaping of a motion picture playing in a theater and then
distributing it on the Internet, which had become a significant problem. {FN88: “Artists' Rights
and Theft Prevention Act of 2005, or the “ART Act,” part of “Family Entertainment and
Copyright Act of 2005,” Pub. L. 109-9, 119 Stat. 220}
Any person who willfully infringes a copyright shall be punished as provided under section 2319
of title 18, if the infringement was committed-- . . . (C) by the distribution of a work being
prepared for commercial distribution, by making it available on a computer network accessible
to members of the public, if such person knew or should have known that the work was intended
for commercial distribution. {FN89: 17 U.S.C. 506(a)(1)}
There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a, the public
distribution right covers only the distribution of material objects. And making something
“available on a computer network accessible to members of the public,” without more, most
certainly doesn’t distribute a material copy anywhere.
It is interesting that this approach was suggested by some of us in 1997 as an alternative to the
“No Electronic Theft” Act {FN90: Pub. L. No. 105-147, 111 Stat. 2678, among other things
adding subsection (a)(2) to 17 U.S.C. 506} in response to the LaMacchia decision. {FN91:
United States v. LaMacchia, 871 F.Supp. 535, 33 USPQ2d 1978 (D. Mass. 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, and it made little sense to wait until enough copies had gone out to
stop the infringement. But we also wanted to amend the distribution right to include making the
work available to the public, as discussed in Chapter 3, Section I.B.1.f.]
Chapter 2: Copyright of Computer Programs
I. The History Of Software Copyright

Although today it is uncontroversial that computer programs can be protected by copyright, in
the early days of computer programs that was far less clear. It is largely through convenient
timing and creative decisions that computer programs enjoy copyright protection today.
I.A. Early “Software”: The Piano Roll

Before the advent of digital computers controlled by computer programs, there was another
device whose particular function was controlled by an encoded sequence of instructions – the
player piano. In 1908, the Supreme Court looked at the copyrightability of piano rolls in the case
of White-Smith Music v. Apollo. {FN1: 209 U.S. 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,
and therefore not an infringement, the Supreme Court stated:
These perforated rolls are parts of a machine which, when duly applied and properly operated
in connection with the mechanism to which they are adapted, produce musical tones in
harmonious combination. But we cannot think that they are copies within the meaning of the
copyright act. {FN2: 209 U.S. at 18}
The Court concluded that if piano rolls and similar things were to be copies under the Copyright
Act, it was the responsibility of Congress to amend the copyright law to cover them.
Congress made such a revision in the Copyright Act of 1909, but not by directly stating that
works that can be perceived only through the use of a machine are protected by copyright. That
would have to wait for the Copyright Act of 1976, whose Section 102 {FN3: 17 U.S.C. §102(a)}
makes it clear that “original works of authorship fixed in any tangible medium of expression,
now known or later developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device” are copyrightable.
Instead, Congress implicitly recognized the copyrightability of piano rolls and other musical
recordings by giving the copyright owner for a musical work the exclusive right “to make any
arrangement or record in which the thought of an author may be recorded and from which it may
be read or reproduced.” {FN4: 35 Stat. 1, §1(e)} To balance this new exclusive right, Congress
provided a compulsory license for anyone wishing to make his or her own recording of a musical
work, provided that the composer had permitted at least one recording of the work. This
compulsory license was carried over to the Copyright Act of 1976 as Section 115. {FN5: 17
U.S.C. §115}
I.B. The First Software Copyrights

There was little need for copyright (or patent) protection for early computer programs. There
were few computers, and most software was custom-developed for in-house applications. It
wasn’t until the early 1960s that computer programs were being actively marketed by a software
industry besides the computer manufacturers. Before widely-marketed software, it was easy to
protect by a contract or license agreement any computer program that was being marketed.
While a contract restricted what people receiving the software could do with it, particularly
limiting their further distribution of the software, 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. Copyright law, on the other hand, provides protection for a computer program
even when no contract exists.
Under the Copyright Act of 1909, copyright protection required registration of the copyright at
the time of first publication. That caused a problem for early computer programs because they
weren’t generally published like books or other copyrightable works. (The problem went away
when the publishing requirement was eliminated by the Copyright Act of 1976.) According to
the Copyright Office, the first deposit of a computer program for registration was on November
30, 1961. North American Aviation submitted a tape containing a computer program. While the
Copyright Office was trying to determine whether such a deposit could be registered, two short
computer programs were submitted by a Columbia University law student to determine how a
computer program might be registered. One computer program was submitted as a printout
published in the Columbia Law School News on April 20, 1964, while the other was on magnetic
tape. The copyrights for both student computer programs were registered in May 1964, and
North American Aviation’s computer program was registered in June 1964.
[Author's note: It's been brought to my attention that there were at least three computer
programs registered before the ones mentioned above. The first of those was a FORTRAN
program entitled "Gaze-2, A One-Dimensional, Multigroup, Neutron Diffusion Theory Code for
the IBM-7090," written by the General Atomic Division of General Dynamics, registered on
February 1, 1963 (registration number A607663). In early 1964, General Dynamics registered
two other computer programs (A677198 and A678350).]
Surprisingly, the Copyright Office did not seem to think that the Supreme Court’s White-Smith v.
Apollo decision prevented the copyrighting of computer programs. It believed that punched
cards, a primary medium for computer programs at the time, could be read by somebody familiar
with the code used to represent characters on the cards, or could be printed to get a computer
program listing intelligible to a person. Magnetic tapes, presumably, were just like a whole
bunch of punch cards on a more convenient medium.
The Copyright Office concluded that a computer program was like a “how to” book, and
therefore protectable by copyright just like that book, if:
(1) The elements of assembling, selecting, arranging, editing, and literary expression that went
into the compilation of the program [meaning the creation of the program, not converting it from
source code to object code] are sufficient to constitute original authorship. This is essentially a
threshold question whether the “de minimis” maxim [that there has to be a minimum amount of
originality for copyright protection] applies.
(2) The program has been published, with the required notice [which was a requirement for
copyright at the time]; that is, “copies” (i.e. 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.
(3) The copies deposited for registration consist of or include reproductions in a language
intelligible to human beings [source code, rather than object code]. If the only publication was in
a form that cannot be perceived visually or read [say, on magnetic tape], something more (e.g. a
print-out of the entire program) would also have to be deposited. {FN6: Copyright Office
Circular No. 61, 1964 version}
Since then, the copyright of computer programs has been generally accepted, and it became
common for computer programs to contain a copyright notice, even if they were not formally
registered. 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.
I.C. Software Under the 1976 Act

The Copyright Act of 1976, which became effective on January 1, 1978, made it clear that
Congress intended software to be copyrightable. The definition of literary works in Section 101
states that they are:
works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical
symbols or indicia, regardless of the nature of the material objects, such as books, periodicals,
manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied. {FN7: 17
U.S.C. §101}
Furthermore, the House Report discussing the Act states:
The term “literary works” does not connote any criterion of literary merit or qualitative value: it
includes catalogs, directories, and similar factual, reference, or instructional works and
compilations of data. It also includes computer data bases, and computer programs to the extent
that they incorporate authorship in the programmer’s expression of original ideas, as
distinguished from the ideas themselves. {FN8: H.R. Rep. No. 94-1476 at 54}
Yet what was not clear was how much protection Congress intended to give computer programs,
and whether there should be special exceptions to the exclusive rights of the copyright owners, as
was the case for some other types of works. Because Congress didn’t want to further delay the
passage of the Act (which had been in the works for about two decades), 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. Scope of exclusive rights: use in conjunction with computers and similar information
systems. Notwithstanding the provisions of sections 106 through 116 and 118, 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, processing, retrieving, or
transferring information, or in conjunction with any similar device, machine, or process, than
those afforded to works under the law, whether title 17 or the common law or statutes of a State,
in effect on December 31, 1977, as held applicable and construed by a court in an action brought
under this title. {FN9: Pub. L. No. 94-553, 90 Stat. 2541, §117}
I.D. The CONTU Recommendations

CONTU held extensive hearings not only on protection of computer software but also
photocopying and computer databases. On July 31, 1978, it transmitted its final report to the
President and Congress. Along with other recommendations, CONTU recommended making two
changes to the copyright laws to address computer programs.
First, it recommended a new definition be added to Section 101:
A “computer 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. {FN10: Final Report of the National
Commission on the New Technological Uses of Copyrighted Works (CONTU Rep.), ISBN 0-
8444-0312-1 (1978) at 12}
It also recommended that Section 117 be replaced with:
Notwithstanding the provisions of section 106, 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, 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.
Any exact copies prepared in accordance with the provisions of this section may be leased,
sold, or otherwise transferred, along with the copy from which such copies were prepared, only
as part of the lease, sale, or other transfer of all rights in the program. Adaptations so prepared
may be transferred only with the authorization of the copyright owner. {FN11: CONTU Rep. at
12}
CONTU explained its recommendations:
Because the placement of a work into a computer is the preparation of a copy, 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. Obviously, creators, lessors, licensers, and
vendors of copies of programs intend that they be used by their customers, so that rightful users
would but rarely need a legal shield against potential copyright problems. It is easy to imagine,
however, a situation in which the copyright owner might desire, for good reason or none at all, to
force a lawful owner or possessor of a copy to stop using a particular program. One who
rightfully possesses a copy of a program, therefore, should be provided with a legal right to copy
it to that extent which will permit its use by that possessor. 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. But this permission would not extend to other copies of the
program. Thus, one could not, for example, make archival copies of a program and later sell
some while retaining some for use. The sale of a copy of a program by a rightful possessor to
another must be of all rights in the program, thus creating a new rightful possessor and
destroying that status as regards the seller. 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.
Because of a lack of complete standardization among programming languages and hardware in

the computer industry, 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.
The copyright law, which grants to copyright proprietors the exclusive right to prepare
translations, transformations, and adaptations of their work, should no more prevent such use
than it should prevent rightful possessors from loading programs into their computers. Thus, a
right to make those changes necessary to enable the use for which it was both sold and purchased
should be provided. The conversion of a program from one higher-level language to another to
facilitate use would fall within this right, as would the right to add features to the program that
were not present at the time of rightful acquisition. 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. Unlike the exact copies
authorized as described above, 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. Preparation of adaptations could not, of course, deprive the
original proprietor of copyright in the underlying work. The adaptor could not vend the adapted
program, under the proposed revision of the new law, nor could it be sold as the original without
the author’s permission. Again, 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,
and this should be reflected in the law. 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,
but unless the note-taker tries to copy and vend that work, the copyright owner is unlikely to be
very concerned. Should proprietors feel strongly that they do not want rightful possessors of
copies of their programs to prepare such adaptations, they of course, make such desires a
contractual matter. {FN12: CONTU Rep. at 13}
I.E. Congressional Action

I.E.1. Adoption of the CONTU Recommendations, with an Unexplained Change
Congress adopted these recommendations as part of a bill “to amend the patent and trademark
laws” that became Public Law 96-517 on December 12, 1980. However, there was one change
made to CONTU’s proposed Section 117 – the term “rightful possessor of a copy” was replaced
by “owner of a copy.” There is nothing in the legislative history of the bill that indicates why this
change was made. 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, where they
were rightful possessors during the time they had the software, and then not delete the copies
when they return the software to the rental place or library. It would be strange if somebody were
not a 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.
I.E.2. The 1990 Software Rental Prohibition
In any case, such concerns were unnecessary because Congress later passed the Computer
Software Rental Amendments Act of 1990, which limited the “first 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, disk, or other medium embodying such program), and
in the case of a sound recording in the musical works embodied therein, neither the owner of a
particular phonorecord nor any person in possession of a particular copy of a computer program
(including any tape, disk, or other medium embodying such program), may, for the purposes of
direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession
of that phonorecord or computer program (including any tape, disk, or other medium embodying
such program) by rental, lease, or lending, or by any other act or practice in the nature of rental,
lease, or lending. Nothing in the preceding sentence shall apply to the rental, lease, or lending of
a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution.
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, staff, and
students does not constitute rental, lease, or lending for direct or indirect commercial purposes
under this subsection. {FN13: 17 U.S.C. §109(b)(1)(A)}
Although there are few cases that discuss the implications of Congress’s adopting “owner of a
copy” rather than “rightful possessor of a copy,” in MAI Systems Corp. v. Peak Computer,
{FN14: 991 F.2d 511, 26 USPQ2d 1458 (9th Cir. 1993)} the Ninth Circuit Court of Appeals
noted that licensees of software “do not qualify as ‘owners’ of the software and are not eligible
for protection under §117.” {FN15: 991 F.2d at 518 n. 5, 26 USPQ2d at 1464 n. 5} Peak was an
independent service company that had used MAI’s diagnostic programs when it serviced
customers’ computers. While the software licenses permitted the customers to run the diagnostic
programs and the operating system, they did not permit third parties like Peak to load the
software.
It is questionable whether a license should be allowed to preempt the rights granted to software
users under Section 117. In general, Section 301 of the Copyright Act preempts any state law
that “come[s] within the subject matter of copyright,” {FN16: 17 U.S.C. §301(a)} which the
copying of a computer program to use it clearly does. (Other terms of a license, such as a limit
on the warranties provided, are separate from copyright considerations and clearly not preempted
by Section 301.) But in ProCD v. Zeidenberg, {FN17: 86 F.3d 1447, 39 USPQ2d 1161 (7th Cir.
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, and so isn’t equivalent to
copyright and is not preempted. This view is not universally held; it allows a copyright owner to
“double-dip” by using copyright protection when it is desirable which negates the balances in the
copyright act by claiming that the software is licensed.
I.E.3. The 1998 Addition to Section 117
In 1998, as part of the Digital Millennium Copyright Act, 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.– Notwithstanding the provisions of section 106, 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, for purposes only of maintenance
or repair of that machine, if–
(1) such new copy is used in no other manner and is destroyed immediately after the
maintenance or repair is completed; and
(2) with respect to any computer program or part thereof that is not necessary for that machine
to be activated, 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.
(d) Definitions.– For purposes of this section:
(1) the “maintenance” 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; and
(2) the “repair” 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.S.C. §117(c)}
It is not clear whether these added provisions really solve the problem or are just a Band-Aid. 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. Also, Section 117 addresses only “computer programs,” which are “set[s] of statements
or instructions to be used directly or indirectly in a computer in order to bring about a certain
result.” It does not provide special treatment for computer data, even though configuration files
or sample computer programs or clip art regularly accompany computer programs and are often
necessary for their operation.
Finally, Section 117 still does not recognize the reality of how backups of computer data are
done, particularly on machines shared by a number of users. Archival copies of particular
programs are not made. Instead, a copy of the entire file system, or those files that have changed
since the last backup was made, is written with little regard for what is being copied. (Most
backup procedures make a copy of everything on the disk being archived, not just computer
programs as permitted by Section 117, but also computer data not addressed by Section 117.)
But more problematic is the requirement of Section 117 that “all archival copies are destroyed in
the event that continued possession of the computer program should cease to be rightful.” It is
difficult, if not impossible, 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.
II. The Scope Of Software Copyright

II.A. Copyrights or Patents?
Although it is now clear that software can be protected by copyright, the real question is what
does that copyright protect? This question is complicated by the inherently-functional nature of
computer software, something that has traditionally been protected by patents. 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,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such work. {FN19: 17
U.S.C. §102(b)}
This recognizes the complementary nature of copyright, which protects expression, and patents,
which protect useful procedures or machines. The Supreme Court, in the 1879 case Baker v.
Selden, {FN20: 101 U.S. 99 (1879)} stated:
The difference between the two things, letters-patent and copyright, may be illustrated by
reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found
to be of great value in the healing art. If the discoverer writes and publishes a book on the subject
(as regular physicians generally do), he gains no exclusive right to the manufacture and sale of
the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must
obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may
copyright his book, if he pleases; but that only secures to him the exclusive right of printing and
publishing his book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may
contain, gives no exclusive right to the modes of drawing described, though they may never have
been known or used before. By publishing the book, without getting a patent for the art, the latter
is given to the public. 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, makes no difference. Those
illustrations are the mere language employed by the author to convey his ideas more clearly. Had
he used words of description instead of diagrams (which merely stand in the place of words),
there could not be the slightest doubt that others, applying the art to practical use, might lawfully
draw the lines and diagrams which were in the author’s mind, and which he thus described by
words in his book.
The copyright of a work on mathematical science cannot give to the author an exclusive right
to the methods of operation which he propounds, or to the diagrams which he employs to explain
them, so as to prevent an engineer from using them whenever occasion requires. 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. But this object would be frustrated if the knowledge could not be
used without incurring the guilt of piracy of the book. And where the art it teaches cannot be
used without employing the methods and diagrams used to illustrate the book, or such as are
similar to them, such methods and diagrams are to be considered as necessary incidents to the
art, and given therewith to the public; not given for the purpose of publication in other works
explanatory of the art, but for the purpose of practical application. {FN21: 101 U.S. at 102-103}
Furthermore, the Court noted that the criteria for copyright and patent protection are quite
different:
A treatise on the composition and use of medicines, be they old or new; on the construction
and use of ploughs, or watches, or churns; or on the mixture and application of colors for
painting or dyeing; or on the mode of drawing lines to produce the effect of perspective,–-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. The copyright of the book, if
not pirated from other works, would be valid without regard to the novelty, or want of novelty, of
its subject-matter. The novelty of the art or thing described or explained has nothing to do with
the validity of the copyright. To give to the author of the book an exclusive property in the art
described therein, when no examination of its novelty has ever been officially made, would be a
surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. 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; and it can only be secured
by a patent from the government. {FN22: 101 U.S. at 102}
The House Committee on the Judiciary, in its report accompanying the Copyright Act of 1976,
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. It pertains to the literary, musical, graphic, or artistic form in which the author
expressed intellectual concepts. Section 102(b) makes clear that copyright protection does not
extend to any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or embodied in
such work.
Some concern has been expressed lest copyright in computer programs should extend
protection to the methodology or processes adopted by the programmer, rather than merely to the
“writing” expressing his ideas. Section 102(b) is intended, among other things, to make clear that
the expression adopted by the programmer is the copyrightable element in a computer program,
and that the actual processes or methods embodied in the program are not within the scope of the
copyright law. {FN23: H.R. Rep. No. 94-1476 at 56}
II.B. Object Code

Clearly the source code for a computer program, to the extent that it is original expression, is
protectable by copyright. But does that also protect the object code that actually runs on the
computer? Object code, especially when stored in ROM, might be regarded as just part of a
machine, not protectable by copyright.
II.B.1. Williams Electronics v. Artic International
In Williams Electronics v. Artic International, {FN24: 685 F.2d 870, 215 USPQ 405 (3d Cir.
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, which it views as
part of a machine, can be considered a “copy” of a copyrighted work within the meaning of the
Copyright Act. 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. That use, it claims, is a utilitarian one not within the scope of the Copyright Act. We
have already rejected defendant’s similar argument in the context of the copyrights for the
audiovisual works. Defendant makes the further point that when the issue is the copyright on a
computer program, a distinction must be drawn between the “source code” version of a computer
program, which it would hold can be afforded copyright protection, and the “object code” stage,
which it contends cannot be so protected. Its theory is that a “copy” must be intelligible to human
beings and must be intended as medium of communication to human beings.
The answer to defendant’s contention is in the words of the statute itself. A “copy” is defined
to include a material object in which a work is fixed “by any method now known or later
developed, and from which the work can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device .” By this broad language, Congress opted
for an expansive interpretation of the terms “fixation” and “copy” which encompass
technological advances such as those represented by the electronic devices in this case. 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. 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. {FN25: 685 F.2d at 876-
877, 215 USPQ at 410-411 (citations omitted)}
II.B.2. Apple v. Franklin
The Third Circuit expanded on this in Apple v. Franklin. {FN26: 714 F.2d 1240, 219 USPQ 113
(3d Cir. 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. It argued that it
could not produce a clone of the Apple II without copying the programs, 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.
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 “process,” “system,” or “method
of operation” and hence uncopyrightable. Franklin correctly notes that underlying section 102(b)
and many of the statements for which Baker v. Selden is cited is the distinction which must be
made between property subject to the patent law, which protects discoveries, and that subject to
copyright law, which protects the writings describing such discoveries. However, Franklin’s
argument misapplies that distinction in this case. Apple does not seek to copyright the method
which instructs the computer to perform its operating functions but only the instructions
themselves. The method would be protected, if at all, by the patent law, an issue as yet
unresolved. {FN27: 714 F.2d at 1250-1251, 219 USPQ at 122 (citations omitted)}
The question of the patentability of computer programs has subsequently been resolved. Methods
that are truly novel can be protected by patent provided they produce a useful result. Franklin
also contented that the software in question was not protectable under copyright because it was
an operating system and not an applications program.
Franklin’s attack on operating system programs as “methods” or “processes” seems

inconsistent with its concession that application programs are an appropriate subject of
copyright. Both types of programs instruct the computer to do something. Therefore, 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 “Applesoft”). Since it is only the instructions which are
protected, a “process” 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. There is, therefore, no reason to afford any less copyright
protection to the instructions in an operating system program than to the instructions in an
application program. {FN28: 714 F.2d at 1251, 219 USPQ at 122}
In the alternative, Franklin contended that the Apple operating system could not be copyrighted
because it was utilitarian.
This argument stems from the following dictum in Baker v. 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. But this object would be frustrated if the knowledge
could not be used without incurring the guilt of piracy of the book. And where the art it teaches
cannot be used without employing the methods and diagrams used to illustrate the book, or such
as are similar to them, such methods and diagrams are to be considered as necessary incidents to
the art, and given therewith to the public; not given for the purpose of publication in other works
explanatory of the art, but for the purpose of practical application.
We cannot accept the expansive reading given to this language by some courts.
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, that interpretation has been
rejected by a later Supreme Court decision. In Mazer v. Stein, the Court stated: “We 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. We do not read such a limitation
into the copyright law.” The CONTU majority also rejected the expansive view some courts
have given Baker v. Selden, and stated, “That the words of a program are used ultimately in the
implementation of a process should in no way affect their copyrightability.” It referred to
“copyright practice past and present, which recognizes copyright protection for a work of
authorship regardless of the uses to which it may be put.” The Commission continued: “The
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 game or carry out
the process.” (emphasis added). As we previously noted, we can consider the CONTU Report as
accepted by Congress since Congress wrote into the law the majority’s recommendations almost
verbatim.
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. Franklin can point to no decision which adopts the distinction it seeks to make.
{FN29: 714 F.2d at 1251-1252, 219 USPQ at 122-123 (citations omitted)}
Finally, Franklin contended that operating systems were more like ideas than expression, because
they could be expressed in only limited number of ways.
Many of the courts which have sought to draw the line between an idea and expression have
found difficulty in articulating where it falls. We believe that in the context before us, a program
for an operating system, the line must be a pragmatic one, which also keeps in consideration “the
preservation of the balance between competition and protection reflected in the patent and
copyright laws”. “Unlike a patent, a copyright protects originality rather than novelty or
invention.” In that opinion, we quoted approvingly the following passage from Dymow v. Bolton:
Just as a patent affords protection only to the means of reducing an inventive idea to practice, so
the copyright law protects the means of expressing an idea; and it is as near the whole truth as
generalization can usually reach that, if the same idea can be expressed in a plurality of totally
different manners, a plurality of copyrights may result, and no infringement will exist.
We adopt the suggestion in the above language and thus focus on whether the idea is capable
of various modes of expression. If other programs can be written or created which perform the
same function as an Apple’s operating system program, then that program is an expression of the
idea and hence copyrightable. In essence, this inquiry is no different than that made to determine
whether the expression and idea have merged, which has been stated to occur where there are no
or few other ways of expressing a particular idea. . . .
Franklin claims that whether or not the programs can be rewritten, there are a limited “number
of ways to arrange operating systems to enable a computer to run the vast body of Apple-
compatible software,”. This claim has no pertinence to either the idea/expression dichotomy or
merger. The idea which may merge with the expression, thus making the copyright unavailable,
is the idea which is the subject of the expression. The idea of one of the operating system
programs is, for example, how to translate source code into object code. If other methods of
expressing that idea are not foreclosed as a practical matter, then there is no merger. Franklin
may wish to achieve total compatibility with independently developed application programs
written for the Apple II, 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.
{FN30: 714 F.2d at 1253, 219 USPQ at 124 (citations omitted)}
II.C. 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, the first of the exclusive rights in
copyright. Although the answer seems obvious, it is complicated by the fact that the exclusive
right is to “reproduce the copyrighted work in copies” and copies require that the work be fixed.
Section 101 states:
A work is “fixed” in a tangible medium of expression when its embodiment in a copy or

phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit
it to be perceived, reproduced, or otherwise communicated for a period of more than transitory
duration. {FN31: 17 U.S.C. §101}
II.C.1. MAI v. Peak: Fixed Reproductions
But if the contents of a RAM disappear when power is removed from the RAM, is the work
fixed in the RAM so that it can be considered a copy? The Ninth Circuit considered this question
in MAI v. Peak. {FN32: 991 F.2d 511, 26 USPQ2d 1458 (9th Cir. 1993)}
Peak argues that this loading of copyrighted software does not constitute a copyright violation
because the “copy” created in RAM is not “fixed.” However, 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, MAI has adequately shown that the representation created in the RAM is
“sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration.”
After reviewing the record, we find no specific facts (and Peak points to none) which indicate
that the copy created in the RAM is not fixed. . . .
The law also supports the conclusion that Peak’s loading of copyrighted software into RAM
creates a “copy” of that software in violation of the Copyright Act. In Apple Computer, Inc. v.
Formula Int’l, Inc., 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.
Section 117 allows “the ‘owner’ of a copy of a computer program to make or authorize the
making of another copy” without infringing copyright law, if it “is an essential step in the
utilization of the computer program” or if the new copy is “for archival purposes only.” 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 not an “essential step” in the utilization of the
software because the software could be used through RAM without making a permanent copy.
The court stated:
RAM can be simply defined as a computer component in which data and computer programs can
be temporarily recorded. Thus, the purchaser of software desiring to utilize all of the programs
on the diskette could arrange to copy the software into RAM. This would only be a temporary
fixation. It is a property of RAM that when the computer is turned off, the copy of the program
recorded in RAM is lost.
While we recognize that this language is not dispositive, it supports the view that the copy
made in RAM is “fixed” and qualifies as a copy under the Copyright Act.
We have found no case which specifically holds that the copying of software into RAM creates
a “copy” under the Copyright Act. However, it is generally accepted that the loading of software
into a computer constitutes the creation of a copy under the Copyright Act. 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, the hard disk or the read only
memory (“ROM”). However, since we find that the copy created in the RAM can be “perceived,
reproduced, or otherwise communicated,” we hold that the loading of software into the RAM
creates a copy under the Copyright Act. We affirm the district court’s grant of summary
judgment as well as the permanent injunction as it relates to this issue. {FN33: 991 F.2d at 518-
519, 26 USPQ2d at 1463-1464 (citations omitted)}
II.C.2. 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, absent some external event that destroys the work. In the case of
RAM, it is possible to read the work as long as it hasn’t been overwritten or the power hasn’t
been removed. In the case of a videotape, it can be viewed unless it is erased or otherwise
destroyed. In contrast, 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 “automatically” at a predictable time, so that
the image can no longer be perceived, and therefore is not fixed. (Although in a dynamic RAM
the individual bits also fade away, the memory system has a refreshing component that extends
their life, so when the entire memory system is considered, the bits are fixed unless there is some
external event such as the removal of power that causes the refreshing to stop.)
But when one considers the loading of a program into RAM from the disk making of a copy,
there is a problem. The criminal infringement provision, Section 506, {FN34: 17 U.S.C. §506}
was amended in 1997 by the No Electronic Theft (NET) Act {FN35: Pub. L. No. 105-147, 111
Stat. 2678} so that criminal infringement occurs not only when the infringement was willful and
for purposes of commercial advantage or private financial gain, 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 $1,000. So if you have a program with a retail value of $100, and you run it 11 times,
you have made 11 copies of the program, with a total value of $1,100, by reproducing the disk
copy to RAM.
Clearly, this was not the intent of Congress, although it is the logical consequence of combining
the NET Act’s language with the decision in MAI v. Peak. Concerned about this problem, the
chairman of the Senate Committee on the Judiciary, Senator Orrin Hatch, 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. 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. Modern operating
systems swap data between RAM and hard disk to use the computer memory more efficiently.
Given its purpose, 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. {FN36: 143 Cong. 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 ordinary purchaser of software
may not be able to take advantage of the exemption provided by sec. 117, allowing the “owner”
of a copy to reproduce the work in order to use it in his or her computer.
Many shrink-wrap licenses limit the purchaser to making only a single backup copy of his or
her software. Thus, under a literal reading of the bill, the ordinary purchaser of computer
software who loaded the software enough times in the 180-day period to reach the more-than-
$1,000 threshold may be a criminal! This is, of course, not the intent of the bill. Clearly, this kind
of copying was not intended to be criminalized. {FN37: 143 Cong. Rec. at S12690}
II.D. Summary
It is now well-accepted that copyright protects computer programs and other digital information,
whether they are in readable source code form or are an executable program that is intended to
be understood only by a computer. Copies are made whenever the program is transferred from
floppy disk to hard disk or is read into the computer’s memory for execution, and those copies
will infringe the copyright of the computer program if they are not permitted by the copyright
owner or by copyright law.
As computer programs have become more complicated, that may be sufficient in most instances.
Most, if not virtually all, 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, the preloading of the program onto the hard disk of a computer being sold,
or the distributing of the program over the Internet without authorization. These acts are
obviously wrong, and so there is little difficulty in finding that they are copyright infringement.
III. Beyond Mere Copying of a Computer

Program
Generally, when we think of copyright infringement, we think of somebody duplicating a work,
either all of it or at least enough of it as to appropriate much of its value. Sometimes we even
remember that a copyright can be infringed by publicly performing or displaying a work without
permission, or by translating the work into another language or another form.
But it is possible to infringe a copyright without copying all, or even a major part, of a work.
Sometimes a play or movie takes too much of the plot or characterization of a copyrighted work,
without copying the actual dialogue. The Second Circuit, in its decision in Computer Associates
v. Altai, {FN38: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} has noted that:
as a general matter, and to varying degrees, copyright protection extends beyond a literary
work’s strictly textual form to its non-literal components. As we have said, “it is of course
essential to any protection of literary property . . . that the right cannot be limited literally to the
text, else a plagiarist would escape by immaterial variations.” {FN39: 982 F.2d at 701, 23
USPQ2d at 1248}
Such cases are very fact-intensive, so it is difficult to draw bright lines on what is infringement
and what isn’t. For example, whether something is a fair use depends on many factors and how
they are weighted. Judge Learned Hand, who wrote many copyright decisions during his time on
the Second Circuit, noted that “nobody has ever been able to fix that boundary, and nobody ever
can.” {FN40: Nichols v. Universal Pictures, 45 F.2d 119, 121, 7 USPQ 84, 86 (2d Cir. 1930)}
Thirty years later he concluded, “Obviously, no principle can be stated as to when an imitator has
gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore
inevitably be ad hoc.” {FN41: Peter Pan Fabrics v. Martin Werner, 274 F.2d 487, 489, 124
USPQ 154, 155 (2d Cir. 1960)}
III.A. Structure, Sequence, and Organization

The first appeals court to confront what copyright protects for a computer program beyond direct
copying was the Third Circuit, in the case of Whelan Associates v. Jaslow Dental Laboratory.
{FN42: Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 230 USPQ 481 (3d Cir.
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. It was
agreed that Jaslow and Whelan would jointly market the program to other dental laboratories.
After two years, as Jaslow had become more familiar with computers and programming, he
implemented a similar program on the IBM personal computer. Unlike the software for the
Series One, which was written in EDL (Event Driven Language, an IBM programming system
for the Series One), Jaslow’s personal computer implementation was written in Basic. He
continued selling both versions and advertised his as a new version for the personal computer.
Whelan was not pleased and filed suit for, among other things, copyright infringement.
Clearly, Jaslow’s program was not a mere copy of Whelan’s – they were written in different
programming languages for different machines. Moreover, differences in the programming
techniques commonly used with the two languages caused significant differences in the two
programs. However, the programs were structurally similar, with most of the file structures and
the screen outputs virtually identical. Also, “five particularly important ‘subroutines’ within both
programs – order entry, invoicing, accounts receivable, end of day procedure, and end of month
procedure – performed almost identically in both programs.” {FN43: 797 F.2d at 1228, 230
USPQ at 484}
III.A.1. The Third Circuit’s Whelan Decision
The Third Circuit began by stating:
Title 17 U.S.C. §102(a)(1) extends copyright protection to “literary works,” and computer
programs are classified as literary works for the purposes of copyright. The copyrights of other
literary works can be infringed even when there is no substantial similarity between the works’
literal elements. One can violate the copyright of a play or book by copying its plot or plot
devices. By analogy to other literary works, it would thus appear that the copyrights of computer
programs can be infringed even absent copying of the literal elements of the program. {FN44:
797 F.2d at 1234, 230 USPQ at 488-489 (citations omitted)}
But the Third Circuit recognized that the dichotomy between idea and expression, codified in
Section 102(b) of the Copyright Act of 1976, limits what might otherwise be found infringing.
Jaslow argued that “the structure of a computer program is, by definition, the idea and not the
expression of the idea, and therefore that the structure cannot be protected by the program
copyright.” {FN45: 797 F.2d at 1235, 230 USPQ at 489} Not accepting that broad limitation, the
Third Circuit attempted to devise a “rule for distinguishing idea from expression in the context of
computer programs.” {FN46: 797 F.2d at 1235, 230 USPQ at 489}
The Third Circuit then summarized Baker v. Selden {FN47: 101 U.S. 99 (1879)} in the context
of this case:
The Court’s test in Baker v. Selden suggests a way to distinguish idea from expression. Just as
Baker v. Selden focused on the end sought to be achieved by Selden’s book, the line between
idea and expression may be drawn with reference to the end sought to be achieved by the work in
question. In other words, the purpose or function of a utilitarian work would be the work’s idea,
and everything that is not necessary to that purpose or function would be part of the expression
of the idea. Where there are various means of achieving the desired purpose, then the particular
means chosen is not necessary to the purpose; hence, there is expression, not idea.
Consideration of copyright doctrines related to scènes à faire and fact-intensive works supports
our formulation, for they reflect the same underlying principle. Scènes à faire are “incidents,
characters or settings which are as a practical matter indispensable . . . in the treatment of a given
topic. It is well-settled doctrine that scènes à faire are afforded no copyright protection.
Scènes à faire are afforded no protection because the subject matter represented can be
expressed in no other way than through the particular scene a faire. Therefore, granting a
copyright “would give the first author a monopoly on the commonplace ideas behind the scènes
à faire. This is merely a restatement of the hypothesis advanced above, that the purpose or
function of a work or literary device is part of that device’s “idea” (unprotectible portion). It
follows that anything necessary to effecting that function is also, necessarily, part of the idea,
too.
Fact intensive works are given similarly limited copyright coverage. Once again, the reason
appears to be that there are only a limited number of ways to express factual material, and
therefore the purpose of the literary work – telling a truthful story – can be accomplished only by
employing one of a limited number of devices. Those devices therefore belong to the idea, not
the expression, of the historical or factual work.
Although the economic implications of this rule are necessarily somewhat speculative, we
nevertheless believe that the rule would advance the basic purpose underlying the
idea/expression distinction, “the preservation of the balance between competition and protection
reflected in the patent and copyright laws.” As we stated above, among the more significant costs
in computer programming are those attributable to developing the structure and logic of the
program. The rule proposed here, which allows copyright protection beyond the literal computer
code, would provide the proper incentive for programmers by protecting their most valuable
efforts, while not giving them a stranglehold over the development of new computer devices that
accomplish the same end. {FN48: 797 F.2d at 1236-1237, 230 USPQ at 490-491 (citations
omitted)}
They then applied their rule to the facts of the case:
The rule proposed here is certainly not problem-free. The rule has its greatest force in the
analysis of utilitarian or “functional” works, for the purpose of such works is easily stated and
identified. By contrast, in cases involving works of literature or “non-functional” visual
representations, defining the purpose of the work may be difficult. Since it may be impossible to
discuss the purpose or function of a novel, poem, sculpture or painting, the rule may have little or
no application to cases involving such works. The present case presents no such difficulties, for
it is clear that the purpose of the utilitarian Dentalab program was to aid in the business
operations of a dental laboratory. It is equally clear that the structure of the program was not
essential to that task: there are other programs on the market, competitors of Dentalab and
Dentcom, that perform the same functions but have different structures and designs.
This fact seems to have been dispositive for the district court:
The mere idea or concept of a computerized program for operating a dental laboratory would not
in and of itself be subject to copyright. Copyright law protects the manner in which the author
expresses an idea or concept, but not the idea itself. Copyrights do not protect ideas – only
expressions of ideas. There are many ways that the same data may be organized, assembled,
held, retrieved and utilized by a computer. Different computer systems may functionally serve
similar purposes without being copies of each other. There is evidence in the record that there
are other software programs for the business management of dental laboratories in competition
with plaintiff’s program. There is no contention that any of them infringe although they may
incorporate many of the same ideas and functions. The ‘expression of the idea’ in a software
computer program is the manner in which the program operates, controls and regulates the
computer in receiving, assembling, calculating, retaining, correlating, and producing information
either on a screen, print-out or by audio communication. (emphasis added.)
We agree. The conclusion is thus inescapable that the detailed structure of the Dentalab
program is part of the expression, not the idea, of that program. {FN49: 797 F.2d at 1238-1239,
230 USPQ at 492-493 (citations omitted)}
III.A.2. Criticism Of Whelan
Almost immediately, the Whelan decision was heavily criticized by commentators for the broad,
almost patent-like, protection it gave to computer software. The next appeals court to face the
question of the scope of copyright protection for computer programs, the Second Circuit, in
Computer Associates v. Altai, {FN50: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} said this
about Whelan:
Whelan has fared even more poorly in the academic community, where its standard for
distinguishing idea from expression has been widely criticized for being conceptually overbroad.
The leading commentator in the field [Professor Nimmer] has stated that, “the crucial flaw in
Whelan’s reasoning is that it assumes that only one ‘idea,’ in copyright law terms, underlies any
computer program, and that once a separable idea can be identified, everything else must be
expression.” This criticism focuses not upon the program’s ultimate purpose but upon the reality
of its structural design. As we have already noted, a computer program’s ultimate function or
purpose is the composite result of interacting subroutines. Since each subroutine is itself a
program, and thus, may be said to have its own “idea,” Whelan’s general formulation that a
program’s overall purpose equates with the program’s idea is descriptively inadequate. . . .
In addition to noting the weakness in the Whelan definition of “program-idea,” mentioned

above, . . . Whelan’s synonymous use of the terms “structure, sequence, and organization”
demonstrated a flawed understanding of a computer program’s method of operation. Rightly, the
district court found Whelan’s rationale suspect because it is so closely tied to what can now be
seen – with the passage of time – as the opinion’s somewhat outdated appreciation of computer
science. {FN51: 982 F.2d at 705-706, 23 USPQ2d at 1252 (citations omitted)}
By limiting the idea of a computer program to its highest-level purpose and considering
everything else expression, the Third Circuit extended copyright protection to virtually every
aspect of a computer program beyond its intended use. Data structures, program structures, ways
of doing calculations, screen displays, output formats, and programming styles all could be
protected.
This is far broader protection than can be afforded new computer techniques under the patent
laws. Yet copyright law does not require the disclosure of the underlying techniques, the quid
pro quo of patent protection, or the demonstration that the technique is novel and nonobvious. It
requires only the use of the technique in a program. But Whelan was decided at a time when
patent protection for software techniques was still in question. Perhaps then copyright needed to
play the role now associated with patents.
A good argument could have been made that Jaslow’s program was a derivative work of
Whelan’s – “a work based upon one or more preexisting works, such as a translation, musical
arrangement, motion picture version, sound recording, art reproduction, abridgment,
condensation, or any other form in which a work may be recast, transformed, or adapted.”
{FN52: 17 U.S.C. §101} However, the Third Circuit’s decision didn’t consider the
implementation of an existing program on a new machine in a new programming language as a
derivative work. But this would have recognized that much of what Jaslow did was
reimplementing Whelan’s programs – in particular, the file structures, screen images, and at least
five key subroutines.
The Third Circuit could have also decided the case on grounds other than copyright, since there
was a close business relationship between Whelan and Jaslow. Jaslow had agreed to use its best
efforts to market Whelan’s software, and that clearly wasn’t the case when they started
marketing their own implementation.
III.B. Abstraction, Filtration, Comparison

A few years after Whelan, the Second Circuit examined the scope of software copyrights in
Computer Associates International v. Altai. {FN53: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir.
1992)} Computer Associates had developed a computer program named Adapter, which it used
with its other programs to handle the differences in operating system calls and services between
the various IBM mainframe operating systems. A former employee of Computer Associates had
gone to work for Altai, a competitor of Computer Associates. When he saw the overhead Altai
had maintaining different versions of its programs for the different IBM operating systems, he
thought of how Adapter simplified that for Computer Associates. Though he was supposed to
have returned all program listings when he left Computer Associates, he had kept a listing of
Adapter. Working from that listing, he put together a program similar to Adapter, which he
called Oscar, for Altai. About 30 percent of the first version of Oscar came from Adapter.
When Computer Associates learned that Oscar was similar to Adapter and had been developed at
Altai by one of its own former programmers, it registered its copyright in Adapter and filed suit
for both copyright infringement and misappropriation of trade secrets. 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. Not surprisingly,
the new version had a structure quite similar to the infringing version. The issue before the
Second Circuit was whether the new version of Oscar infringed the copyright for Adapter.
The case was one well-situated to make new law. The Second Circuit, because it hears appeals
from the New York center of publishing, music, and drama, has long been regarded (along with
the Ninth Circuit, which includes Hollywood in its jurisdiction) as a copyright court, with
decisions of Learned Hand and others still defining the bounds of copyright. At the district court
level, the case was tried before Second Circuit Judge Pratt, sitting by designation, who had been
provided with an independent expert (Randall Davis, a professor of computer science from MIT)
to help him understand the technical aspects of computer software. His decision formed the basis
for the Second Circuit’s decision.
III.B.1. The Second Circuit’s Altai Decision
Declining to adopt the broad Whelan test of the Third 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. As the cases that we shall discuss demonstrate, a satisfactory answer to this
problem cannot be reached by resorting, a priori, to philosophical first principals [sic.].
As discussed herein, we think that district courts would be well-advised to undertake a three-
step procedure, based on the abstractions test utilized by the district court, in order to determine
whether the non-literal elements of two or more computer programs are substantially similar.
This approach breaks no new ground; rather, it draws on such familiar copyright doctrines as
merger, scènes à faire, and public domain. In taking this approach, however, we are cognizant
that computer technology is a dynamic field which can quickly outpace judicial decisionmaking.
Thus, in cases where the technology in question does not allow for a literal application of the
procedure we outline below, our opinion, should not be read to foreclose the district courts of our
circuit from utilizing a modified version.
In ascertaining substantial similarity under this approach, a court would first break down the
allegedly infringed program into its constituent structural parts. Then, by examining each of
these parts for such things as incorporated ideas, expression that is necessarily incidental to those
ideas, and elements that are taken from the public domain, a court would then be able to sift out
all non-protectable material. Left with a kernel, or possibly kernels, of creative expression after
following this process of elimination, the court’s last step would be to compare this material with
the structure of an allegedly infringing program. 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. It will be helpful to elaborate a bit further. {FN54: 982 F.2d at
Well, that sounds simple enough, and it certainly doesn’t have the single-idea problem of
Whelan. The first step is to abstract the elements of the computer program at different levels.
This idea originally came from a Second Circuit decision written by Judge Learned Hand, in
which he stated:
Upon any work . . . a great number of patterns of increasing generality will fit equally well, as
more and more of the incident is left out. The last may perhaps be no more than the most general
statement of what the work is about, and at times might consist only of its title; but there is a
point in this series of abstractions where they are no longer protected, since otherwise the author
could prevent the use of his “ideas,” to which, apart from their expression, his property is never
extended. {FN55: Nichols v. Universal Pictures, 45 F.2d 119, 121, 7 USPQ 84, 86 (2d Cir.
1930)}
The Second Circuit felt that this provided the framework it needed for computer programs:
As applied to computer programs, the abstractions test will comprise the first step in the
examination for substantial similarity. Initially, in a manner that resembles reverse engineering
on a theoretical plane, a court should dissect the allegedly copied program’s structure and isolate
each level of abstraction contained within it. This process begins with the code and ends with an
articulation of the program’s ultimate function. Along the way, 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.
As an anatomical guide to this procedure, the following description is helpful:
At the lowest level of abstraction, a computer program may be thought of in its entirety as a set
of individual instructions organized into a hierarchy of modules. At a higher level of abstraction,
the instructions in the lowest-level modules may be replaced conceptually by the functions of
those modules. At progressively higher levels of abstraction, the functions of higher-level
modules conceptually replace the implementations of those modules in terms of lower-level
modules and instructions, until finally, one is left with nothing but the ultimate function of the
program. . . . A program has structure at every level of abstraction at which it is viewed. At low
levels of abstraction, a program’s structure may be quite complex; at the highest level it is trivial.
{FN56: 982 F.2d at 707, 23 USPQ2d at 1253}
III.B.2. The Tenth Circuit’s Elaboration On Altai
In Gates Rubber v. Bando Chemical, {FN57: 9 F.3d 823, 28 USPQ2d 1503 (10th Cir. 1993)} a
case decided following Computer Associates v. Altai, the Tenth Circuit added a little meat to the
sparse description from the Second Circuit on how to abstract a computer program, 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.L. Ogilvie, Defining Computer Program
Parts Under Learned Hand’s Abstractions Test in Software Copyright Infringement Cases, 91
Mich. L. Rev. 526 (1992)}
Application of the abstractions test will necessarily vary from case-to-case and program-to-
program. Given the complexity and ever-changing nature of computer technology, we decline to
set forth any strict methodology for the abstraction of computer programs. Indeed, in most cases
we foresee that the use of experts will provide substantial guidance to the court in applying an
abstractions test. However, a computer program can often be parsed into at least six levels of
generally declining abstraction: (i) the main purpose, (ii) the program structure or architecture,
(iii) modules, (iv) algorithms and data structures, (v) source code, 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. When defining a program’s main purpose, the court must take care to describe the
program’s function as specifically as possible without reference to the technical aspects of the
program.
The program’s architecture or structure is a description of how the program operates in terms
of its various functions, which are performed by discrete modules, and how each of these
modules interact with each other. The architecture or structure of a program is often reduced to a
flowchart, which a programmer uses visually to depict the inner workings of a program.
Structure exists at nearly every level of a program and can be conceived of as including control
flow, data flow, and substructure or nesting. Control flow is the sequence in which the modules
perform their respective tasks. Data flow describes the movement of information through the
program and the sequence with which it is operated on by the modules. 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. A module typically consists of two
components: operations and data types. An operation identifies a particular result or set of
actions that may be performed. For example, operations in a calculator program might include
adding or printing data. A data type defines the type of item that an operator acts upon such as a
student record or a daily balance.
Algorithms and data structures are more specific manifestations of operations and data types,
respectively. An algorithm is a specific series of steps that accomplish a particular operation.
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, (ii) values, (iii) variables, (iv) arrays or
groupings of the same data type, (v) records or groupings of different data types, and (vi)
pointers or connections between records that set aside space to hold the record’s values.
The computer program is written first in a programming language, such as Pascal or Fortran,
and then in a binary language consisting of zeros and ones. Source code is the literal text of a
programs’ instructions written in a particular programming language. Object code is the literal
text of a computer program written in a binary language through which the computer directly
receives its instructions.
These generalized levels of abstraction will not, of course, fit all computer codes. Ordinarily,
expert testimony will be helpful to organize a particular program into various levels of
abstraction. In any event, as pointed out earlier, the organization of a program into abstraction
levels is not an end in itself, but it is only a tool that facilitates the critical next step of filtering
out unprotectable elements of the program. {FN59: 9 F.3d at 834-836, 28 USPQ2d at 1509-1510
(citations omitted)}
Once the abstraction has been performed, those abstracted elements need to be filtered to
separate out those things that are not protectable by copyright. Clearly, the highest level of
abstraction – the purpose of the program – is not protectable and would be filtered out. At the
lowest levels – the source and object code – total or even substantial copying is likely to be an
infringement. It is at the mid-levels where the filtering is generally performed.
An observation here: for a program of any complexity, there are going to be a lot of abstracted
elements at every level. This procedure sounds good in theory but is very difficult to apply in
practice. We will discuss this later.
III.B.3. Filtration
There are a number of reasons why something might be filtered, and whether something is
filtered may depend on the particular level of abstraction being considered.
III.B.3.a. Efficiency
The first of these is that the element is dictated by efficiency considerations:
The portion of Baker v. Selden, discussed earlier, which denies copyright protection to
expression necessarily incidental to the idea being expressed, appears to be the cornerstone for
what has developed into the doctrine of merger. The doctrine’s underlying principle is that
“when there is essentially only one way to express an idea, the idea and its expression are
inseparable and copyright is no bar to copying that expression.” Under these circumstances, the
expression is said to have “merged” with the idea itself. In order not to confer a monopoly of the
idea upon the copyright owner, such expression should not be protected. . . .
Furthermore, when one considers the fact that programmers generally strive to create programs
“that meet the user’s needs in the most efficient manner,” the applicability of the merger doctrine
to computer programs becomes compelling. In the context of computer program design, the
concept of efficiency is akin to deriving the most concise logical proof or formulating the most
succinct mathematical computation. Thus, the more efficient a set of modules are, the more
closely they approximate the idea or process embodied in that particular aspect of the program’s
structure.
While, hypothetically, there might be a myriad of ways in which a programmer may effectuate
certain functions within a program, – i.e., 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. Of course, not all program structure is informed by
efficiency concerns. 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, a court must inquire
“whether the use of this particular set of modules is necessary efficiently to implement that part
of the program’s process” being implemented. If the answer is yes, 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. {FN60: 982 F.2d at 707-708, 23 USPQ2d at 1254
III.B.3.b. External Factors
Next, an element may be excluded from copyright protection because its use is dictated by
external factors:
We have stated that where “it is virtually impossible to write about a particular historical era or
fictional theme without employing certain ‘stock’ or standard literary devices,” such expression
is not copyrightable. For example, the Hoehling case was an infringement suit stemming from
several works on the Hindenberg disaster. There we concluded that similarities in representations
of German beer halls, scenes depicting German greetings such as “Heil Hitler,” or the singing of
certain German songs would not lead to a finding of infringement because they were
“indispensable, or at least standard, in the treatment of” life in Nazi Germany. This is known as
thescènes à faire doctrine, and like “merger,” it has its analogous application to computer
programs.
Professor Nimmer points out that “in many instances it is virtually impossible to write a
program to perform particular functions in a specific computing environment without employing
standard techniques.” 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; (2) compatibility requirements of
other programs with which a program is designated to operate in conjunction; (3) computer
manufacturers’ design standards; (4) demands of the industry being serviced; and (5) widely
accepted programming practices within the computer industry.
Courts have already considered some of these factors in denying copyright protection to
various elements of computer programs. In the Plains Cotton case, the Fifth Circuit refused to
reverse the district court’s denial of a preliminary injunction against an alleged program infringer
because, in part, “many of the similarities between the . . . programs were dictated by the
externalities of the cotton market.” {FN61: 982 F.2d at 709-710, 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. If one is to use the routine or function, it must be called in a
particular way, so that any expressive aspects of the calling sequence have essentially merged
with its utilitarian function. 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. At the
abstraction level looking at the overall organization of the programs, the selection and
arrangement of library routine or operating system function calls may be precisely the expression
that is being considered. So, while you can call the same routines and functions using the same
calling sequences without infringing, you may not be able to copy the structure of the program as
evidenced by how those routines and functions are used.
III.B.3.c. Material in the Public Domain
The Second Circuit also filtered out elements taken from the public domain, since they are not
protectable by copyright. In Gates v. Bando, the Tenth Circuit added two filters to be used. The
first was processes:
When considering utilitarian works such as computer programs one of the most important of
these elements is process. Section 102(b) denies protection to procedures, processes, systems and
methods of operation. The legislative history of the Copyright Act clarifies any ambiguity about
the status of processes.
Some concern has been expressed lest copyright in computer programs should extend protection
to the methodology or processes adopted by the programmer, rather than merely to the “writing”
expressing his ideas. Section 102(b) is intended, among other things, to make clear that the
expression adopted by the programmer is the copyrightable element in a computer program, and
that the actual processes or methods embodied in the program are not within the scope of the
copyright law.
The Supreme Court addressed the copyrightability of a utilitarian process in Baker v. Selden.
There, 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. The Court distinguished
the “art” or process from the author’s explanation thereof and found the former unprotectable.
Other courts have similarly found processes unprotectable. Certain processes may be the subject
of patent law protection under Title 35 of the United States Code. Although processes
themselves are not copyrightable, an author’s description of that process, so long as it
incorporates some originality, may be 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. Most commonly, processes will
be found as part of the system architecture, as operations within modules, or as algorithms.
{FN62: 9 F.3d at 836-837, 28 USPQ2d at 1511 (citations omitted)}
III.B.3.d. Facts
The Tenth Circuit also added filtering out facts:
The Copyright Act also denies protection to discoveries. The Supreme Court squarely
addressed the issue of the protectability of facts in its recent opinion in Feist Publications, Inc. v.
Rural Telephone Services Co. In Feist, the Court considered the copyrightability of a telephone
directory comprised merely of names, addresses, and phone numbers organized in alphabetical
order. The Court rejected the notion that copyright law was meant to reward authors for the
“sweat of the brow,” and instead concluded that protection only extends to the original
components of an author’s work. As to facts, the Court found that
No one may claim originality as to facts. This is because facts do not owe their origin to an act of
authorship. The distinction is one between creation and discovery: the first person to find and
report a particular fact has not created the fact; he or she has merely discovered its existence. . . .
One who discovers a fact is not its maker or originator. The discoverer merely finds and records.
Like ideas and processes, facts themselves are not protectable; however, an author’s original
compilation, arrangement or selection of facts can be protected by copyright. However, “the
copyright is limited to the particular selection or arrangement. In no event may copyright extend
to the facts themselves.” In computer programs facts may be found at a number of levels of
abstraction, but, will most often be found as part of data structures or literally expressed in the
source or object codes. {FN63: 9 F.3d at 837, 28 USPQ2d at 1511 (citations omitted)}
Of course, while it is reasonable to say that facts are not entitled to copyright protection and
should be filtered out, a particular selection of facts or arrangement of facts may have sufficient
originality to warrant copyright protection. 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, you have nothing left to
consider. This is one of the problems with the abstraction-filtration-comparison test – key
information may be filtered before it can be considered. For that reason, it may be necessary to
look at the overall similarity before considering things at the various levels of abstraction.
III.B.4. Comparison
Finally, after all the unprotectable abstracted elements have been removed by the filtering, 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. Once a court has sifted out all elements of the
allegedly infringed program which are “ideas” or are dictated by efficiency or external factors, or
taken from the public domain, there may remain a core of protectable expression. In terms of a
work’s copyright value, this is the golden nugget. At this point, the court’s substantial similarity
inquiry focuses on whether the defendant copied any aspect of this protected expression, as well
as an assessment of the copied portion’s relative importance with respect to the plaintiff’s overall
program. {FN64: 982 F.2d at 710, 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. But for complex software, the
test can be very cumbersome, as we will discuss later. Also, 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.
Fortunately, because of the complexity of today’s commercial software packages compared with
those in Whelan v. Jaslow and Computer Associates v. Altai, 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, rather than just copy a protected portion of the copyrighted software. Those
who do copy the structure of a program, or its processing techniques, 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, and will be violating their duty to that vendor in their design and
implementation of a competing product. So, in many instances, the complex abstraction-
filtration-comparison test will not be necessary.
III.C. 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. Borland International. {FN65: 49 F.3d 807, 34
USPQ2d 1014 (1st Cir. 1995)} Before going after Borland, Lotus had sued two small companies
over another spreadsheet program, VP-Planner, in the U.S. District Court in Massachusetts.
{FN66: 740 F.Supp. 37, 15 USPQ2d 1577 (D. Mass. 1990)} Stephenson Software had adapted
an existing spreadsheet system so that it could use 1-2-3 commands and execute 1-2-3 macros,
and Paperback Software had distributed it. There was no claim by Lotus that the companies had
copied any of Lotus’s source code during the development of VP-Planner. Instead, Lotus
claimed that the companies had copied its screen displays and menus.
III.C.1. The Paperback Decision
Lotus claimed copyright infringement because Paperback had copied the “look and feel” of 1-2-
3, while Paperback said that there could be no copyright infringement because the 1-2-3 user
interface was “functional” and outside the scope of copyright. Judge Keeton rightfully rejected
both these arguments. While commentators had discussed “look and feel” copyrights for
computer software, the judge found that it was not helpful in determining whether there was an
infringement, nor was Paperback’s argument that the user interface was “functional,” since such
an expansive defense could read all software out of the copyright laws.
Instead, Judge Keeton developed a three-step process for determining whether something was
protected by copyright as “expression,” or unprotected as “idea.”
FIRST, in making the determination of “copyrightability,” the decisionmaker must focus upon
alternatives that counsel may suggest, or the court may conceive, along the scale from the most
generalized conception to the most particularized, and choose some formulation - some
conception or definition of the “idea”- for the purpose of distinguishing between the idea and its
expression. . . .
SECOND, 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.
THIRD, having identified elements of expression not essential to every expression of the idea,
the decisionmaker must focus on whether those elements are a substantial part of the allegedly
copyrightable “work.” {FN67: 740 F.Supp. at 60-61, 15 USPQ2d at 1593-1594}
The heart of this three-step test is whether something is “essential” to the computer software or
not. Judge Keeton found that the labeling of rows and columns in a spreadsheet was essential,
since it was present not only in 1-2-3 and VP-Planner, but in other spreadsheets with
considerably-different user interfaces like Microsoft Excel. Similarly, he found that the use of
the “/” character to indicate the start of a macro was not protected, because there were only a few
characters on the keyboard that could be used. But he found the menu structure of 1-2-3, and the
words used in those menus for the options, to be protected by copyright because there are a
number of alternative structures that could have been used and, in fact, were used in Microsoft
Excel.
III.C.2. Borland at the District Court
The decision against Paperback was not appealed, because by the end of the case the defendants
had left the spreadsheet market. But Lotus had its sights on another company, Borland, and its
Quattro spreadsheet, which provided the same capabilities as 1-2-3 but at a fraction of the price.
There was a race to the courthouse, with Lotus filing an infringement suit in Massachusetts,
where it could use the Paperback decision as precedent, and Borland filing a declaratory
judgment suit in California, hoping to get a finding of noninfringement. The infringement suit
prevailed, and the case was assigned to Judge Keeton because of his experience with the
Paperback case.
As in Paperback, Lotus did not claim that Borland had copied any part of its source code; it
didn’t even contend that the structure of its 1-2-3 spreadsheet had been copied in Borland’s
Quattro. Instead, 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.
While Quattro originally had its own command structure, to allow people to easily move from 1-
2-3, Borland had added an emulation extension to a subsequent release of Quattro. The
emulation feature allowed the users to configure the menus as they desired. Borland supplied two
menus: the original Quattro menus and the 1-2-3 menus, enhanced to add commands that were in
Quattro but not in 1-2-3. The screen appearance of Quattro was substantially different from that
of 1-2-3; among other things, it had the menus displayed in different locations and in a different
style.
Applying his Paperback test, 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, Judge Keeton held that
Borland’s emulation interface infringed the copyright in Lotus’s 1-2-3 menus. Borland then
removed the emulation interface from Quattro but kept a feature called “Key Reader,” which
allowed it to run 1-2-3 macros. It felt safe in doing this, since Judge Keeton, in Paperback,
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.
For example, defendants could have instead added a macro conversion capability as the creators
of Excel have successfully done (the Microsoft Excel Macro Translation Assistant). {FN68: 740
F.Supp. at 69, 15 USPQ2d at 1600}
Key Reader, and any other program that interpreted 1-2-3 macros, requires a data structure that
describes the command hierarchy of 1-2-3. That is because the 1-2-3 macro language is based on
the 1-2-3 command hierarchy. A macro consists of a starting “/” followed by the first letter of a
1-2-3 menu entry, then the first letter of an entry in the selected submenu, and so forth until a
final menu entry is reached. (Macros can also contain things in addition to 1-2-3 commands,
such as conditional statements.) So, if one formatted a block by first selecting the “Range” menu,
then the “Format” submenu, then the “Currency” subsubmenu, the corresponding macro would
be “/RFC”.
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, since first letters mean different things in
different submenus. For example, the letter F, which meant “Format” in the “Range” submenu,
means “File” in the “Print” submenu. It is also necessary to know what letters are valid in each
submenu to determine whether a macro is valid.
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. However, 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 “phantom menus.” 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 2.1 does. Rather, Key
Reader interprets macros on-the-fly, by reference to “phantom” menus that contain a copy of the
Lotus menu tree. {FN69: Lotus Dev. Corp. v. Borland Int’l, Inc., 831 F.Supp. 223, 230, 30
USPQ2d 1081, 1099 (D. Mass. 1993)}
The fact that Excel performs a one-time interpretation of a macro while it is translating it to the
Excel macro language, while Key Reader interprets the macro each time it is encountered, 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. Judge Keeton’s
decision is based on a lack of understanding of how command interpreters work and what
information is necessary for their 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, as was done for Judge Pratt in Computer Associates v. Altai.
{FN70: Computer Associates v. Altai, , 775 F.Supp. 544, 20 USPQ2d 1641 (E.D.N.Y. 1991)}
III.C.3. Borland at the First Circuit
Unlike Paperback, Borland had the resources for an appeal. In its decision of that appeal, the
First Circuit observed that this was a very different question than in past software copyright
cases, 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, we find it to be of little help in assessing whether the literal copying
of a menu command hierarchy constitutes copyright infringement. In fact, we think that the Altai
test in this context may actually be misleading because, in instructing courts to abstract the
various levels, it seems to encourage them to find a base level that includes copyrightable subject
matter that, if literally copied, would make the copier liable for copyright infringement. While
that base (or literal) level would not be at issue in a nonliteral-copying case like Altai, it is
precisely what is at issue in this appeal. We think that abstracting menu command hierarchies
down to their individual word and menu levels and then filtering idea from expression at that
stage, as both the Altai and the district court tests require, obscures the more fundamental
question of whether a menu command hierarchy can be copyrighted at all. The initial inquiry
should not be whether individual components of a menu command hierarchy are expressive, but
rather whether the menu command hierarchy as a whole can be copyrighted. {FN71: 49 F.3d at
815, 34 USPQ2d at 1020-1021}
The First Circuit decided that the commands in the menu, and the hierarchy that was part of the
macro commands, didn’t qualify for copyright protection because they were a “method of
operation”:
We think that “method of operation,” as that term is used in Section 102(b), refers to the means
by which a person operates something, whether it be a car, a food processor, or a computer. Thus
a text describing how to operate something would not extend copyright protection to the method
of operation itself; other people would be free to employ that method and to describe it in their
own words. Similarly, if a new method of operation is used rather than described, other people
would still be free to employ or describe that method.
We hold that the Lotus menu command hierarchy is an uncopyrightable “method of operation.”
The Lotus menu command hierarchy provides the means by which users control and operate
Lotus 1-2-3. If users wish to copy material, for example, they use the “Copy” command. If users
wish to print material, they use the “Print” command. Users must use the command terms to tell
the computer what to do. Without the menu command hierarchy, users would not be able to
access and control, or indeed make use of, Lotus 1-2-3’s functional capabilities.
The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3’s
functional capabilities to the user; it also serves as the method by which the program is operated
and controlled. The Lotus menu command hierarchy is different from the Lotus long prompts,
for the long prompts are not necessary to the operation of the program; users could operate Lotus
1-2-3 even if there were no long prompts. The Lotus menu command hierarchy is also different
from the Lotus screen displays, for users need not “use” any expressive aspects of the screen
displays in order to operate Lotus 1-2-3; because the way the screens look has little bearing on
how users control the program, the screen displays are not part of Lotus 1-2-3’s “method of
operation.” The Lotus menu command hierarchy is also different from the underlying computer
code, because while code is necessary for the program to work, its precise formulation is not. In
other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus’s
underlying code (and indeed it did not); to allow users to operate its programs in substantially the
same way, however, Borland had to copy the Lotus menu command hierarchy. Thus the Lotus 1-
2-3 code is not a uncopyrightable “method of operation.” {FN72: 49 F.3d at 815-816, 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. So it looked to Section
102(b)’s listing of things that are not protectable by copyright and decided that “method of
operation” was a better fit than “idea, procedure, process, system” or “concept, principle, or
discovery.” One of the judges on the panel, in a concurrence, indicated:
Thus, for me the question is not whether Borland should prevail but on what basis. Various
avenues might be traveled, 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. No
solution is perfect and no intermediate appellate court can make the final choice.
To call the menu a “method of operation” is, in the common use of those words, a defensible
position. {FN73: 49 F.3d at 821, 34 USPQ2d at 1026}
But the difficulty is that the court gives no guidance on where to draw the line. Why are the
menus a “method of operation,” 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. 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 “method of operation.” In other words,
our initial inquiry is not whether the Lotus menu command hierarchy incorporates any
expression. Rather, our initial inquiry is whether the Lotus menu command hierarchy is a
“method of operation.” Concluding, as we do, that users operate Lotus 1-2-3 by using the Lotus
menu command hierarchy, and that the entire Lotus menu command hierarchy is essential to
operating Lotus 1-2-3, we do not inquire further whether that method of operation could have
been designed differently. The “expressive” 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. {FN74: 49 F.3d at 816, 34 USPQ2d at 1022}
Lotus appealed the decision of the First Circuit to the Supreme Court, which agreed to hear it.
But after oral arguments, the Court deadlocked 4-4 (with one justice not voting, presumably
because of a potential conflict of interest due to stock ownership). That left the First Circuit’s
decision “good law” in that circuit, but did not extend it nationwide.
III.C.4. Tenth Circuit Criticism of Borland
The Tenth Circuit, which had elaborated on Computer Associates v. Altai in its decision in Gates
v. Bando considered in their decision in Mitel v. Iqtel {FN75: 124 F.3d 1366, 44 USPQ2d 1172
(10th Cir. 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, that element may nevertheless contain expression that is eligible for copyright
protection. 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. Rather, 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 “promote the . . . useful Arts.” Our abstraction-filtration-comparison approach is directed to
achieving this balance. Thus, we decline to adopt the Lotus court’s approach to section 102(b),
and continue to adhere to our abstraction-filtration-comparison approach.
We are mindful of the concern expressed by the Lotus court that, by its very nature, the
abstraction-filtration-comparison approach tends to produce a core of copyrightable protectable
expression that, if literally copied, would make the copier liable for infringement. Undoubtedly,
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). Although this core of expression is eligible for copyright protection, it is subject to the
rigors of filtration analysis which excludes from protection expression that is in the public
domain, otherwise unoriginal, or subject to the doctrines of merger and scènes à faire.
Notwithstanding our endorsement of abstraction-filtration-comparison analysis, 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. Not every case requires an extensive
abstraction-filtration-comparison analysis. Rather, “the appropriate test to be applied and the
order in which its various components are to be applied . . . may vary depending upon the claims
involved, the procedural posture of the suit, and the nature of the [works] at issue.” {FN76: 124
F.3d at 1372, 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, then it is clear that the
data structure would be filtered during the abstraction-filtration-comparison test of the Second
and Tenth Circuits, because it is dictated by external factors. The First Circuit’s “method of
operation” test, which is not clear in its application, is unnecessary.
IV. Applying The AFC Test

While it seems simple to describe the abstraction-filtration-comparison analysis, the devil is in
the details. The abstraction can result in the comparing of hundreds or thousands of different
aspects of a computer program if one is not careful. Elements are filtered out of consideration on
the basis of broad criteria, including:
 The element’s expression was dictated by reasons of efficiency, such as when it is

the best way of performing a particular function.
 The element’s expression was dictated by external factors, such as using an existing
file format or interoperating with another program.
 The element’s expression is a conventional way of writing something in the

particular programming language or machine running the program.
 The element, at the particular level of abstraction, is an unprotectable process and not
protectable expression.
 The element is taken from the public domain or is an unprotectable fact.
Any protection for elements dictated by efficiency or external factors or processes must come
from patents or trade secrets, if at all, and not from copyright.
For most alleged copyright infringements, this filtering makes little difference. It is important to
recognize that, with today’s large, complex programs, most copyright infringement consists of
the verbatim copying or unauthorized distribution of a computer program, and no question over
whether any similarities are protected expression or unprotected function need be considered.
But sometimes a program is based on another program, or takes features from another program,
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.
IV.A. 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.
Five computer scientists (including the author of this text and the court-appointed expert in
Computer Associates v. Altai {FN77: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} )discussed
the complexity inherent in abstraction-filtration-comparison (AFC) test in a friend of the court
brief {FN78: Amicus Brief of Computer Scientists, Harbor Software v. Applied Systems, No.
97-7197 (2d Cir. 1998)} to the Second Circuit in a case that settled before that court made its
decision. In one portion, we suggested how the AFC test should be performed, first discussing
what can be done to refine the magnitude of the task:
1. Qualified Technical Experts Should Play an Important Role in the Abstraction Process.
Given the difficulty and complexity of creating a technically accurate set of abstractions, this
Court should clarify that this is properly a task for a qualified expert in the field. As U.S. Court
of Appeals Judge John Walker, author of the Altai decision, has noted, “Most juries, and most
judges (myself included), are less than completely comfortable with the concepts and
terminology of computer programs and need extensive education in order to make intelligent
decisions.”
2. Refining the Task Will Reduce Technical Complexity.
In the interests of efficiency and manageability, the abstraction process should be carried out
on a well-focused body of software. If the program is small, it may be practical to abstract the
entire thing. When possible, 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, early in the process, of the exact contours of the protectable expression in the
plaintiff’s program.
Given the large size of most commercial programs, however, the effort involved in abstracting
and filtering the entire program is enormous and would yield a daunting number of exhibits. The
court would likely be overwhelmed with paper and with the filtration effort of determining
protectability for every element of the plaintiff’s program, even if only a small part of that
program is at issue in the claim of infringement. Thus, the obvious subset of code for analysis is
that portion of the software that the plaintiff alleges the defendant copied.
3. The Plaintiff Must have Access to the Defendant’s Code in Order to Focus the Inquiry.
In many instances, the initial evidence of copying is a relatively insignificant incident that turns
out to be only the tip of the iceberg. For example, 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. As a
piece of misbehavior, the behavior could not be motivated by the task, suggesting the possibility
of copying. When this initial evidence of copying is sufficient to support a complaint, the
plaintiff will need access to the defendant’s code in order to determine the full extent – if any –
of the problem.
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, the plaintiff may “mine” the defendant’s
code for potential foci of alleged copying, thereby distorting the inquiry. But we believe some
form of difficulty is unavoidable. If plaintiff instead must perform the abstraction and filtration
before seeing the defendant’s code, it may feel that the only way to protect the claim is to
abstract the entire program, resulting in an impractical – and wasteful – amount of work for both
the plaintiff and the court. If, in the interests of economy, the plaintiff abstracts only those parts
of its code that it suspects at the outset were copied by the defendant, the plaintiff’s exhibits are
likely to be incomplete and require augmentation after it has had the opportunity to examine the
defendant’s code, in which case the possibility of “mining” reappears. In any event, we believe
that manufactured claims of copying become evident at the filtration stage, where the court’s
expert can raise such observations and the court can deal appropriately with them at that time.
{FN79: Amicus Brief, 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, if any, 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. This set
of exhibits is the plaintiff’s initial contribution to the AFC process.
At this point, 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 must include access to
the plaintiff’s entire program, even though the abstractions may deal with only a small part of the
program, in order to test for errors of omission.
The court will now have before it a set of exhibits describing a carefully selected portion of the
plaintiff’s code, which the plaintiff claims is both protected and infringed. It is now in a position
to evaluate the first of these claims independent of the second, and we suggest it do so,
proceeding with the filtration test.
This approach has several significant advantages. If the exhibits contain no protectable
material, the case is over. The defendant is spared unnecessary expense, yet the plaintiff has had
a full opportunity to find copying in the defendant’s program. As a matter of practicality, this
may be a significant virtue in a world where litigation may be used as an economic weapon,
particularly against smaller companies, of which there are many in the software world.
An additional advantage arises from the reduced workload presented to the court: by focusing
the filtration purely on the plaintiff’s exhibits, there is no need for the court to examine or display
the defendant’s code at this point. Finally, if the plaintiff understands that infringement claims
will be required to pass the filtration test relatively early in the litigation process, independent of
any court consideration of the defendant’s code, the plaintiff may perform more careful analysis
before filing infringement cases.
After the filtration is complete, the court should require the plaintiff to augment its exhibits
with specific references to the defendant’s code, indicating the exact lines of the defendant’s
code that it alleges are copied from the plaintiff’s software. (Even where the plaintiff alleges
non-literal copying, the plaintiff should be able to cite specific lines of the defendant’s program
that embody the non-literal element(s) allegedly copied.) Plaintiff’s specific allegations will
further focus the court’s task and enable the defendant better to perform the next step, having the
defendant’s expert prepare abstraction exhibits of the defendant’s code.
The inherent flexibility of the abstraction process, involving as it does many judgment calls,
requires that the court permit each side to abstract its own code and to prepare its own
abstraction exhibits embodying that analysis. The fact that the district court in the present case
apparently permitted the plaintiff to prepare the abstraction exhibits for both parties, subject to
defense objections, demonstrates once again a level of uncertainty as to the technical limitations
of the AFC process.
The AFC process is not a magic wand that will eliminate disagreement; it is instead a
framework within which the parties may carry out a discussion. As experts in the field, we
anticipate that there will, in fact, be disagreement over the abstraction exhibits. Indeed, these
arguments may hold the key to the remainder of the case. For this reason, 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. Even so, if the parties cannot reach
agreement on the challenged exhibits, 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, specific, and complete description of the code in
question.
With these agreed-upon exhibits in place, the court is now ready to begin the comparison
process. 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, along with corresponding
elements from the defendant’s program that the plaintiff alleges are infringing.
We suggest some form of early technical evaluation of the plaintiff’s initial copyright
infringement claims; that is, 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.
We believe that our approach is consistent with federal procedure for the evaluation of cases
before trial, particularly in the form of motions for summary judgment.
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, concerning the technical substance of the initial
evidence for infringement. Such a barrier, even if relatively modest, would set some threshold
level of technical substance to deter the filing of cases for little more than economic reasons (i.e.,
to interrupt the business of a competitor). We believe that, given the extensive time, effort, and
expense of fighting a lawsuit, this process is a worthwhile way of minimizing the undesirable
economic costs of unnecessary litigation. {FN80: Amicus Brief, at 9-10 (citations omitted)}
Finally, we suggested some guidelines for the production of the abstractions:
1. Routine Abstractions Include Control Structure, Data Structure, Data Flow, Information
Architecture and Textual Organization of the Code.
The program’s control structure is the sequence of operations that it carries out, often indicated
with a well-established graphical language of boxes and arrows called a flowchart . . . Control is
frequently the most complex aspect of a program; a complete set of control abstractions may
have many levels of detail. The data structures indicate the way in which individual elements of
information are stored in the program; in the earlier checkbook hypothetical, for example, data
structures are used to store the sorts of information found in a check register (e.g., check number,
date, payee, amount). The data flow is a description of how information flows through a
program; that is, how the information for a check flows from the register where it is entered, to
the check itself. The information architecture of a program indicates the overall organization of
the data used by the program, often in the form of the organization of databases.
All of these abstractions concern the behavior of the program. Because programs can be
viewed in terms of both their behavior and their text (treating the source code as a body of text),
we can also describe the organization of the textual code itself at several levels of abstraction,
ranging for example, from individual routines, to files containing multiple routines, to directories
containing multiple files.
2. Abstractions Should be Specific and Precise.
As one indicator of such precision, there should be no ambiguity about what behavior is being
described and what body of literal code is being abstracted. This enables evaluation of the
accuracy and completeness of the abstractions. Courts should thus require: (a) that labels on
abstraction exhibits clearly specify the program behavior at issue; and (b) that each component of
an abstraction exhibit refer clearly either to more detailed exhibits or to literal code. . . .
3. Abstractions at Any Given Level Should Be Complete.
Such completeness will ensure that the exhibits present an entire and accurate picture of the
program at any chosen level of detail. 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.
4. Parties Should Adopt Explicit and Consistent Graphical Conventions for All Exhibits.
The adoption of consistent graphical conventions will permit the trier of fact to make sensible
comparisons of the exhibits. . . . To a trained eye, some of the graphical organization of the
abstraction exhibits is informative, while other elements are accidental (e.g., the left-to-right
order of certain of the boxes). If the parties cannot agree on a set of conventions, the court’s
expert should assist the parties and the court in reaching a uniform set of standards for the
exhibits. {FN81: Amicus Brief, at 12-13}
IV.B. A Judge’s Comments on the Suggested Approach

In a subsequent law review article, {FN82: Jon O. Newman, New Lyrics For An Old Melody:
The Idea/Expression Dichotomy In The Computer Age, 17 Cardozo Arts & Ent L.J. 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, I think we might be better off to recognize that, although we
need to separate protectable “expression” from unprotectable “ideas,” a somewhat different
vocabulary might assist us in properly balancing the ultimate values we seek to advance. Thus, I
do not consider it helpful, in considering the protection accorded source code, to ask whether it is
the written expression of an idea embodied at some higher level of abstraction within the
computer program. I would rather begin the process of labeling the protectable and unprotectable
elements of computer programs with terms peculiar to the realm of software. For example, I
might move away from referring to source code as the “expression” of an “idea,” a phrasing that
all too readily enlists the doctrines and case law developed in cases involving written texts, and
instead call these arcane writings what they are called in cyberspace – namely, source code.
Then, I could consider which source codes or which portions of source codes were protectable.
Also, I might not call the unprotectable aspects of a computer program “ideas,” which again
evokes the written text cases, but instead call them something like “program purposes” or
“program objectives.” After all, you don’t see many cases involving copyrights in musical works
talking about the “expression” of some musical “idea.” Why should we force upon copyright
cases involving computer programs the same vocabulary we use for cases involving written
texts? . . .
By using terms appropriate to the subject matter, 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. Judge Hand observed that with plays, characters and the sequence
of incidents were especially important. Well, there are no characters in software, at least not
literary characters. There are, I suppose, what might be called “incidents,” 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. {FN83:
Newman, 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. Their opinions are relevant, but, as with all opinions, what renders
them persuasive is not the vehemence of their assertion and not even the credentials of those
asserting them; it is the cogency and persuasive force of the reasons they give for their respective
positions. These reasons had better relate to the specifics of the computer software field. For
example, as Altai indicates, even with its overly structured mode of analysis, 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, or, on the other hand, is a function capable of execution with
very few variations in source code, or variations of such triviality as to be disregarded, in which
event protection will be unlikely. For me, 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. {FN84: Newman, at 702}
V. Reverse Engineering Of Software

In Whelan v. Jaslow {FN85: 797 F.2d 1222, 230 USPQ 481 (3d Cir. 1986)} and Computer
Associates v. Altai, {FN86: 982 F.2d 693, 23 USPQ2d 1241 (2d Cir. 1992)} both of the alleged
infringers had access to the original source code through a prior business relationship, and used
that as the basis of a competing product. But the holdings in those cases also provide guidance on
what can be copied from an existing computer program without infringing its copyright,
something very important when you are trying to write a program similar to one already in the
market.
In most instances, the creators of a competing product have not had access to the source code for
the original product. Instead, they have studied how the original product operates in order to
develop their product. This is particularly true when the competing product must duplicate the
file formats or other external features of the original product, and information about those file
formats or features is not provided by the developer of the original 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. They also involved the interface between a video game console and the
game cartridges that run on it. This is not surprising, since video game console manufacturers
attempt to lock out games from suppliers not paying them licensee fees.
V.A. The Federal Circuit’s Atari Decision

In Atari Games v. Nintendo, {FN87: 975 F.2d 832, 24 USPQ2d 1015 (Fed. Cir. 1992)} the Court
of Appeals for the Federal Circuit heard the appeal because a portion of Atari’s suit alleged
patent infringement, and the Federal Circuit hears all appeals of cases involving patent
infringement. But when hearing a case with aspects outside its normal subject matter jurisdiction,
the Federal Circuit tries to follow the law of the appeals court in which the district court is
located. That court, the Ninth Circuit, had not yet ruled on copyright infringement and reverse
engineering.
The Federal Circuit looked to the purpose of copyright protection, and how that would be
frustrated if others could not somehow examine the protected expression to aid them in
producing new works. In this regard, computer programs are different from all other copyrighted
works, because even though a program may be published and widely distributed, looking at the
program or even running it does not reveal the expression protected by copyright. The Federal
Circuit, in a decision by Circuit Judge Rader, found:
The author does not acquire exclusive rights to a literary work in its entirety. Under the Act,
society is free to exploit facts, ideas, processes, or methods of operation in a copyrighted work.
To protect processes or methods of operation, a creator must look to patent laws. An author
cannot acquire patent-like protection by putting an idea, process, or method of operation in an
unintelligible format and asserting copyright infringement against those who try to understand
that idea, process, or method of operation. 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,
processes, and methods of operation. This permission appears in the fair use exception to
copyright exclusivity. Section 107 of the Copyright Act states that “fair use of a copyrighted
work, including such use by reproduction in copies . . . for purposes such as criticism, comment,
news reporting, teaching . . . scholarship or research” is not infringement. The legislative history
of section 107 suggests that courts should adapt the fair use exception to accommodate new
technological innovations.
Thus, the Act exempts from copyright protection reproductions for “criticism, comment . . . or
research.” These activities permit public understanding and dissemination of the ideas, processes,
and methods of operation in a work:
The copyright holder has a property interest in preventing others from reaping the fruits of
his labor, not in preventing the authors and thinkers of the future from making use of, or building
upon, his advances. The process of creation is often an incremental one, and advances building
on past developments are far more common than radical new concepts. Where the infringement
is small in relation to the new work created, the fair user is profiting largely from his own
creative efforts rather than free-riding on another’s work. A prohibition on all copying
whatsoever would stifle the free flow of ideas without serving any legitimate interest of the
copyright holder.
Section 107 also requires examination of the nature of the work when determining if a
reproduction is a fair use. When the nature of a work requires intermediate copying to understand
the ideas and processes in a copyrighted work, that nature supports a fair use for intermediate
copying. Thus, reverse engineering object code to discern the unprotectable ideas in a computer
program is a fair use. {FN88: 975 F.2d at 842-843, 24 USPQ2d at 1022 (citations omitted)}
V.B. The Ninth Circuit’s Sega Decision

A little more than a month after the Federal Circuit issued its decision, the Ninth Circuit ruled in
an almost-identical case, Sega v. Accolade. {FN89: 977 F.2d 1510, 24 USPQ2d 1561 (9th Cir.
1992)} Like the Federal Circuit, 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.
V.B.1. 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: “(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted
work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted
work.” The Ninth Circuit started by considering the first factor:
With respect to the first statutory factor, we observe initially that the fact that copying is for a
commercial purpose weighs against a finding of fair use. However, the presumption of
unfairness that arises in such cases can be rebutted by the characteristics of a particular
commercial use. Further “ the commercial nature of a use is a matter of degree, not an
absolute. . . .”
Sega argues that because Accolade copied its object code in order to produce a competing
product, the Harper & Row presumption applies and precludes a finding of fair use. That
analysis is far too simple and ignores a number of important considerations. We must consider
other aspects of “the purpose and character of the use” as well. As we have noted, the use at
issue was an intermediate one only and thus any commercial “exploitation” was indirect or
derivative.
The declarations of Accolade’s employees indicate, and the district court found, that Accolade
copied Sega’s software solely in order to discover the functional requirements for compatibility
with the Genesis console – aspects of Sega’s programs that are not protected by copyright. With
respect to the video game programs contained in Accolade’s game cartridges, there is no
evidence in the record that Accolade sought to avoid performing its own creative work. Indeed,
most of the games that Accolade released for use with the Genesis console were originally
developed for other hardware systems. Moreover, with respect to the interface procedures for the
Genesis console, Accolade did not seek to avoid paying a customarily charged fee for use of
those procedures, nor did it simply copy Sega’s code; rather, it wrote its own procedures based
on what it had learned through disassembly. Taken together, these facts indicate that although
Accolade’s ultimate purpose was the release of Genesis-compatible games for sale, its direct
purpose in copying Sega’s code, and thus its direct use of the copyrighted material, 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. Moreover, as we discuss below, no other
method of studying those requirements was available to Accolade. On these facts, we conclude
that Accolade copied Sega’s code for a legitimate, essentially non-exploitative purpose, and that
the commercial aspect of its use can best be described as of minimal significance.
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. Public benefit need
not be direct or tangible, but may arise because the challenged use serves a public interest. In the
case before us, 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. It is precisely this growth in creative expression, based on the
dissemination of other creative works and the unprotected ideas contained in those works, that
the Copyright Act was intended to promote . The fact that Genesis-compatible video games are
not scholarly works, but works offered for sale on the market, does not alter our judgment in this
regard. We conclude that given the purpose and character of Accolade’s use of Sega’s video
game programs, the presumption of unfairness has been overcome and the first statutory factor
weighs in favor of Accolade. {FN90: 977 F.2d at 1522-1523, 24 USPQ2d at 1569-1570
V.B.2. The Second Fair Use Factor

Although the court next considered the fourth factor, because it felt that it was closely related to
the first, we’ll consider the factors here in order:
The second statutory factor, the nature of the copyrighted work, reflects the fact that not all
copyrighted works are entitled to the same level of protection. 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. To the extent that a work is functional or factual,
it may be copied, as may those expressive elements of the work that “must necessarily be used as
incident to” expression of the underlying ideas, functional concepts, or facts. Works of fiction
receive greater protection than works that have strong factual elements, such as historical or
biographical works, or works that have strong functional elements, such as accounting textbooks.
Works that are merely compilations of fact are copyrightable, but the copyright in such a work is
“thin.”
Computer programs pose unique problems for the application of the “idea/expression
distinction” that determines the extent of copyright protection. To the extent that there are many
possible ways of accomplishing a given task or fulfilling a particular market demand, the
programmer’s choice of program structure and design may be highly creative and idiosyncratic.
However, computer programs are, in essence, utilitarian articles – articles that accomplish tasks.
As such, they contain many logical, structural, and visual display elements that are dictated by
the function to be performed, by considerations of efficiency, or by external factors such as
compatibility requirements and industry demands. In some circumstances, even the exact set of
commands used by the programmer is deemed functional rather than creative for purposes of
copyright. “ When specific instructions, even though previously copyrighted, are the only and
essential means of accomplishing a given task, their later use by another will not amount to
infringement.”
Because of the hybrid nature of computer programs, 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. We are in wholehearted agreement with the
Second Circuit’s recent observation that “thus far, many of the decisions in this area reflect the
courts’ attempt to fit the proverbial square peg in a round hole.” In 1986, 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, and “everything that is not necessary to that purpose or
function is part of the expression of that idea.” The Whelan rule, however, has been widely – and
soundly – criticized as simplistic and overbroad. In reality, “a computer program’s ultimate
function or purpose is the composite result of interacting subroutines. Since each subroutine is
itself a program, and thus, may be said to have its own ‘idea,’ Whelan’s general formulation . . .
is descriptively inadequate.” For example, the computer program at issue in the case before us, a
video game program, 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. 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, such as the
test recently adopted by the Second Circuit in Altai, many aspects of the program are not
protected by copyright. In our view, in light of the essentially utilitarian nature of computer
programs, the Second Circuit’s approach is an appropriate one.
Sega argues that even if many elements of its video game programs are properly characterized
as functional and therefore not protected by copyright, Accolade copied protected expression.
Sega is correct. The record makes clear that disassembly is wholesale copying. Because
computer programs are also unique among copyrighted works in the form in which they are
distributed for public use, however, Sega’s observation does not bring us much closer to a
resolution of the dispute.
The unprotected aspects of most functional works are readily accessible to the human eye. The
systems described in accounting textbooks or the basic structural concepts embodied in
architectural plans, to give two examples, can be easily copied without also copying any of the
protected, expressive aspects of the original works. Computer programs, however, are typically
distributed for public use in object code form, embedded in a silicon chip or on a floppy disk. For
that reason, humans often cannot gain access to the unprotected ideas and functional concepts
contained in object code without disassembling that code – i.e., making copies. {FN91: 977 F.2d
at 1524-1525, 24 USPQ2d at 1571-1572 (citations omitted)}
V.B.3. The Third and Fourth Fair Use Factors
The court had this to say about the third factor:
Accolade disassembled entire programs written by Sega. Accordingly, the third factor weighs
against Accolade. The fact that an entire work was copied does not, however, preclude a finding
of fair use. In fact, where the ultimate (as opposed to direct) use is as limited as it was here, the
factor is of very little weight. {FN92: 977 F.2d at 1526-1527, 24 USPQ2d at 1573 (citations
omitted)}
And finally, the fourth factor:
As applied, the fourth statutory factor, effect on the potential market for the copyrighted work,
bears a close relationship to the “purpose and character” inquiry in that it, too, 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. We must, of course, inquire
whether, if the challenged use should become widespread, it would adversely affect the potential
market for the copyrighted work, by diminishing potential sales, interfering with marketability,
or usurping the market. If the copying resulted in the latter effect, all other considerations might
be irrelevant. The Harper & Row Court found a use that effectively usurped the market for the
copyrighted work by supplanting that work to be dispositive. However, 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.
Unlike the defendant in Harper & Row, which printed excerpts from President Ford’s memoirs
verbatim with the stated purpose of “scooping” a Time magazine review of the book, Accolade
did not attempt to “scoop” Sega’s release of any particular game or games, but sought only to
become a legitimate competitor in the field of Genesis-compatible video games. Within that
market, it is the characteristics of the game program as experienced by the user that determine
the program’s commercial success. As we have noted, there is nothing in the record that suggests
that Accolade copied any of those elements.
By facilitating the entry of a new competitor, the first lawful one that is not a Sega licensee,
Accolade’s disassembly of Sega’s software undoubtedly “affected” the market for Genesis-
compatible games in an indirect fashion. We note, however, 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, video game users typically purchase more than one game. There is no
basis for assuming that Accolade’s “Ishido” has significantly affected the market for Sega’s
“Altered Beast”, since a consumer might easily purchase both; nor does it seem unlikely that a
consumer particularly interested in sports might purchase both Accolade’s “Mike Ditka Power
Football” and Sega’s “Joe Montana Football”, particularly if the games are, as Accolade
contends, not substantially similar. In any event, 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. Thus, we conclude that the fourth statutory factor weighs in Accolade’s, not Sega’s,
favor, notwithstanding the minor economic loss Sega may suffer. {FN93: 977 F.2d at 1523-
V.B.4. 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, careful analysis of the purpose and characteristics of Accolade’s use of Sega’s
video game programs, the nature of the computer programs involved, and the nature of the
market for video game cartridges yields the conclusion that the first, second, and fourth statutory
fair use factors weigh in favor of Accolade, while only the third weighs in favor of Sega, and
even then only slightly. Accordingly, Accolade clearly has by far the better case on the fair use
issue. {FN94: 977 F.2d at 1527, 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. The interface procedures for the Genesis console are distributed for public use
only in object code form, and are not visible to the user during operation of the video game
program. Because object code cannot be read by humans, it must be disassembled, either by hand
or by machine. Disassembly of object code necessarily entails copying. Those facts dictate our
analysis of the second statutory fair use factor. If disassembly of copyrighted object code is per
se an unfair use, 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. In
order to enjoy a lawful monopoly over the idea or functional principle underlying a work, the
creator of the work must satisfy the more stringent standards imposed by the patent laws. Sega
does not hold a patent on the Genesis console.
Because Sega’s video game programs contain unprotected aspects that cannot be examined
without copying, we afford them a lower degree of protection than more traditional literary
works. In light of all the considerations discussed above, we conclude that the second statutory
factor also weighs in favor of Accolade. . . .
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, disassembly is a fair use of the copyrighted work, as a matter of law. Our
conclusion does not, of course, insulate Accolade from a claim of copyright infringement with
respect to its finished products. Sega has reserved the right to raise such a claim, and it may do
so on remand. {FN95: 977 F.2d at 1526-1528, 24 USPQ2d at 1572-1574 (citations omitted)}
V.C. Revising Sega in Sony v. Connectix

The Ninth Circuit had a chance to revisit reverse engineering in Sony v. Connectix, {FN96: 203
F.3d 596, 53 USPQ2d 1705 (9th Cir. 2000)} where again the issue was whether intermediate
copying was infringement or fair use, even if many intermediate copies are made.
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. Under this logic, at least some
of the intermediate copies were not necessary within the meaning of Sega. This construction
stretches Sega too far. The “necessity” we addressed in Sega was the necessity of the method,
i.e., disassembly, not the necessity of the number of times that method was applied. In any event,
the interpretation advanced by Sony would be a poor criterion for fair use. 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. 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, they would have made far fewer intermediate copies of the
Sony BIOS (perhaps as few as one per computer). Even if we were inclined to supervise the
engineering solutions of software companies in minute detail, and we are not, our application of
the copyright law would not turn on such a distinction. Such a rule could be easily manipulated.
More important, the rule urged by Sony would require that a software engineer, faced with two
engineering solutions that each require intermediate copying of protected and unprotected
material, often follow the least efficient solution. (In cases in which the solution that required the
fewest number of intermediate copies was also the most efficient, an engineer would pursue it,
presumably, without our urging.) This is precisely the kind of “wasted effort that the proscription
against the copyright of ideas and facts . . . [is] designed to prevent.” Such an approach would
erect an artificial hurdle in the way of the public’s access to the ideas contained within
copyrighted software programs. These are “aspects that were expressly denied copyright
protection by Congress.” We decline to erect such a barrier in this case. If Sony wishes to obtain
a lawful monopoly on the functional concepts in its software, it must satisfy the more stringent
standards of the patent laws. {FN97: 203 F.3d at 605, 53 USPQ2d at 1711-1712 (citations
omitted)}
It is clear that, at least in the Ninth Circuit, legitimate reverse engineering to learn how to
interoperate with another computer program is a fair use. Congress appears to agree. In the
Digital Millennium Copyright Act, as part of the anticircumvention provisions added as Section
1201 of the Copyright Act, 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, and that have not previously been readily available to the person engaging in the
circumvention, to the extent any such acts of identification and analysis do not constitute
infringement under this title. {FN98: 17 U.S.C. §1201(f)}
In its Committee Report explaining the Digital Millennium Copyright Act, the Senate Committee
on the Judiciary specifically cited Sega v. Accolade and indicated: “The purpose of this section is
to foster competition and innovation in the computer and software industry.” {FN99: Sen. Rep.
No. 105-190 at 12}
VI. 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.
VI.A. Source Code and Derivative Works

Copyright for a computer program, under the Copyright Act of 1976, comes into being as the
source code for the computer program is being written by the programmer. As Section 102(a)
states, “Copyright protection subsists . . . in original works of authorship fixed in any tangible
medium of expression,” {FN100: 17 U.S.C. §102(a)} such as keypunch cards, magnetic tape,
hard or floppy disks, or even the RAM of the computer. The program does not need to be
complete or even functional for copyright protection to come into being.
When additional source statements are added to the computer program, or corrections are made
to the computer program, those additions or corrections are a “derivative work” based on the
original computer program. Section 101 {FN101: 17 U.S.C. §101} defines a derivative work as
“a work based upon one or more preexisting works” and states that “editorial revisions,
annotations, elaborations, or other modifications which, as a whole, represent an original work of
authorship” are derivative works.
Just as a copyright came into being when the original lines of source code were written by the
programmer, so another copyright comes into being for each addition or modification to the
source code that shows sufficient originality. Because of this, 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.
However, there is little practical significance in viewing the source code copyrights as a series of
separate copyrights rather than a single copyright. If the computer program is not a work made
for hire, then all the copyrights will expire at the same time – 70 years after the death of the last
surviving author. For works made for hire, the copyrights will expire in the order in which they
came into being. The copyright on the original program will expire first, allowing it (but not its
later modifications) to enter the public domain, where it can be copied freely. The copyright on
each modification will expire at some later time, until all the copyrights have expired and the
complete computer program enters the public domain. However, 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, if it remains unpublished), it is unlikely that the fact that part of an outdated, 95-
year-old computer program has entered the public domain while a part remains copyrighted will
be of any significance.
One situation in which this series of copyrights may be significant when the copyright in the
computer program is registered. It is common to register the copyright whenever a major release
of the computer program occurs, but not when there has been only a minor change. While the
copyright owner can sue for infringement of the copyright only on the material that has been
registered, if there have been only minor changes since registration, the copied version will be
substantially similar to the registered one – sufficient for a finding of copyright infringement.
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. For a program written by company
employees, it makes no difference because the author under the law for such a work made for
hire is the employer. But if there are different authors, 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. Unless ownership and distribution rules are resolved at the
time the work is being developed, there could be problems at a later time.
VI.B. Source Code and Object Code

Although copyright comes into being with the writing of the source code, it is the object code –
the actual instructions that control the computer when the program is being executed – that
copyright generally protects. In most instances, the source code is never revealed to the public,
and thus remains protected as a trade secret even though millions and millions of copies of the
program are distributed as object code.
Every computer program copyright case treats the copyright in the source code and the object
code as equivalent. 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. The source code was
written in assembly language, with each line of the source code corresponding to a single
machine instruction (or, if a macro facility existed as part of the assembler, a small predefined
series of machine instructions). The source code contained information that made it easier for a
programmer to write or understand the program – mnemonics like “ADD” instead of a bit pattern
of “01000011” for the addition instruction, the use of symbolic labels for storage or program
locations, and the inclusion of comments to annotate the program – which the assembly process
removed or replaced as it produced the object code.
With the advent of higher-level programming languages, that is less the case. The compiler for
the higher-level language performs a much more complicated translation than was the case for an
assembler. 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.
There is no longer the one-to-one correspondence between the source code and the object code.
This, along with their size, makes it more difficult to reverse engineer (for example, to learn how
the program works either by testing or by trying to convert the object code back to source code) a
modern computer program, which in turn makes it more likely that any copying will be a literal
copying of the entire program.
Even though source code and object code are distinct, 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.
The Copyright Office regards the source code and object code as equivalent for purposes of
registration. In fact, 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.
Where an applicant is unable or unwilling to deposit source code, he/she must state in writing
that the work as deposited in object code contains copyrightable authorship. 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. {FN102: Copyright Office Circular 61:
“Copyright Registration for Computer Programs,” at 2}
VI.C. Source Code and Displays

The source code copyright that protects the object code may also cover any screen displays
produced by the computer program. These would be considered “audiovisual works” under the
Copyright Act, 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, viewers, or electronic equipment, together
with accompanying sounds, if any, regardless of the nature of the material objects, such as films
or tapes, in which the works are embodied. {FN103: 17 U.S.C. §101}
Video games, consisting of a series of displays controlled by the computer program, are
particularly suitable to regard as audiovisual works. 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, there is little reason to treat the
two aspects of some programs separately. The Copyright Office has recognized that computer
programs may be both literary works and audiovisual works, and it requires only a single
registration for both aspects.
Copyright protection for computer screen displays, including videogames, has been an issue in
the courts for some time. Courts have differed in their opinions regarding whether screen
displays may be registered separately.
The Copyright Office has consistently believed that a single registration is sufficient to protect
the copyright in a computer program and related screen displays, including videogames, without
a separate registration for the screen displays or a specific reference to them on the application
for the computer program. An application may give a general description in the “nature of
authorship” space, such as “entire work” or “computer program.” This description will cover any
copyrightable authorship contained in the computer program and screen displays, regardless of
whether identifying material for the screen is deposited. {FN104: Copyright Office Circular 61 at
3}
VI.D. New Software from Old

Most computer programs are based to some degree on other computer programs. They could be
new implementations of existing programs (for instance, Linux reimplementing Unix) or new
programs influenced by an existing program (the first spreadsheet program, VisiCalc, influenced
Lotus 1-2-3, which influenced Microsoft Excel), or they could use a preexisting library as part of
the final computer program.
Obviously, there are a number of copyright considerations when creating a new computer
program based on an existing one.
VI.D.1. 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. The copying could be
unconscious. In ABKCO Music v. Harrisongs Music, {FN105: 722 F.2d 988, 221 USPQ 490 (2d
Cir. 1983)} George Harrison was found to have infringed the copyright of “He’s So Fine,’” a
song that he had heard years before, when he wrote “My Sweet Lord.” If you have had access to
the source of a computer program, you need to be particularly concerned that you aren’t
unconsciously copying the original program when you write a similar program.
One way to avoid infringement when writing a program that is similar to another program is
through the use of a “clean room” procedure. This is what was done when companies cloned the
BIOS of the IBM personal computer to produce compatible systems. In a clean room procedure,
there are two separate teams working on the development of the new program.
The first team determines how the original program works, by examining its source code if it is
available (IBM published the source code for its BIOS in a technical manual), 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), or by studying available user manuals and
other descriptions of the program’s function. This first team puts together a complete technical
specification that describes the functioning of the original program. Such a specification is not an
infringement, since the copyright in the original program doesn’t protect its functionality, only
the expression in the program that creates that functionality. Generally, an intellectual property
attorney will review the functional specification to assure that it does not contain any protected
expression from the original program.
Given the functional specification, a second team of programmers, metaphorically in a “clean

room” uncontaminated by the original program, implements the new program. These
programmers have not seen the source code of the original program. In fact, it is best if they have
never seen any aspect of the original program, getting all their knowledge of it from the
functional specification. Because they haven’t seen the original program, they cannot be copying
it, even unconsciously.
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. Although Computer Associates v. Altai {FN106: 982 F.2d 693, 23 USPQ2d 1241 (2d
Cir. 1992)} does not spend much time on the clean room aspects of Altai’s new implementation,
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.
VI.D.2. Piecewise Reimplementation
Many people have reimplemented computer programs by rewriting them to replace the source
code with code of their own writing. There is no reason to believe that this would not be a
copyright infringement, particularly if the reimplementer had access to the source code of the
original program, even if none of the original source code remains.
When the first segment of code is rewritten, the new code will be an infringing work if it is
substantially similar to the original code, or may be an infringing derivative work if it is a
reimplementation in a different programming language. That reimplemented first segment is
combined with the remaining parts of the original program to form an intermediate version.
Subsequent modifications produce another work. So when you have completed the piecewise
reimplementation, you have a set of works, each of whose creation infringes the exclusive rights
of the owner of the copyright of the original program.
As an analogy, consider the translation of a novel to a different language, something that would
clearly be a derivative work. It makes little difference that none of the original words remain, or
that the translation was done a little at a time. The resulting translation is still an infringing
derivative work.
Even if you completely replace the program with new code, 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. Although there is no case law on this point, it would seem that the only
way to break the chain of infringing works is by some extraordinary act, such as a clean room
implementation.
VI.D.3. Section 117 Adaptations
Most computer programs are covered by a series of copyrights, each coming into being when a
portion of the program is written or modified. The copyright on each nontrivial modification is as
a derivative work of some preexistent program. One of the exclusive rights of a copyright owner
is the right to control the preparation of any derivative works, so generally only somebody with
the permission of the copyright owner can modify a computer program.
There is a special exception in Section 117 that permits 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 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.” {FN107: 17 U.S.C. §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. While in
theory this adaptation exception would allow somebody to redo Microsoft Access to run on a
Macintosh, in reality such an adaptation even with access to the source code would be
impractical for an individual user.
Note that Section 117 also requires the permission of the computer program’s copyright owner to
transfer the adaptations you have made. 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.
VI.D.4. Derivative Works and Compilations
Until now, we have been discussing computer programs as if they were a single work, or an
original program and a series of derivative works comprising each modification to that program.
While that was the case for early computer programs, now it is more common for a program to
include preexisting libraries, themselves copyrighted computer programs, and similar
components.
When two or more preexisting works are combined to form a new work, in copyright law that
work is called a “compilation” – “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 copyright in the resulting
overall computer program comprises the copyrights in the preexisting component computer
programs and a new copyright in the compilation. But that compilation copyright is very limited.
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. {FN108: 17 U.S.C. §103(b)}
This means that to distribute the overall computer program, there must be permission from the
copyright owners of all the component computer programs. 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 else the distribution right for that library will be infringed.
An interesting situation arises when an application program is distributed without the libraries it
needs, and those libraries are supplied at a later time by the user of the application program.
While this may initially seem like a strange procedure, it actually is common for today’s
software. Most programs do not run stand-alone on a machine but use the services of an
operating system – a special type of preexisting library. Most operating systems also provide
dynamic linking to a library, so that the library can be shared by all the programs that are using
it.
In this discussion, “library” indicates a preexisting program used by a new “applications

program,” because that is one of the most common instances of what is being discussed.
However, the discussion is just as applicable to libraries that work with a preexisting operating
system, or plug-ins that work with a preexisting browser.
With dynamically-linked libraries, the application program being distributed is no longer a

compilation that includes the library. Because the library is not being distributed with the
application program, no permission is needed from the copyright owner of the library for the
distribution to users. Users must, of course, be authorized to use the library, but if they are
owners of a copy of the library, under Section 117 they can make any adaptations of the library
necessary to use it with the application program.
Some have claimed that an application program that needs a library for its operation is a
derivative work of that library. They take that position because the application program is “based
on” the library because it was written to use the subroutines and other aspects of the library.
Such a position is misplaced. 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 “based
upon one or more preexisting works,” the examples all illustrate derivative works where the
original work is somehow incorporated or recast in the derivative work:
work”. {FN109: 17 U.S.C. §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, where the drafters discussed when the derivative work
exclusive right is infringed:
To be an infringement the “derivative work” must be “based upon the copyrighted work,” and
the definition in section 101 refers to “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.” Thus,
to constitute a violation of section 106(2), the infringing work must incorporate a portion of the
copyrighted work in some form; for example, a detailed commentary on a work or a
programmatic musical composition inspired by a novel would not normally constitute
infringements under this clause. {FN110: H.R. Rep. No. 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, or even the parameter lists themselves. But
elements dictated by external considerations are filtered out when trying to determine whether
there is copyright infringement.
No other conclusion makes sense. If it were not the case, then any program using the applications
program interfaces (APIs) of an operating system could be considered a derivative work of that
operating system. And, under the exclusive right to prepare derivative works, the copyright
owner of an operating system such as Microsoft Windows could control who was allowed to
write programs for that operating system.
VII. Summary
It is now well-accepted that copyright protects computer programs and other digital information,
whether they are in human-readable source code or are an executable program that is intended to
be understood only by a computer. 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, as would be the case with
bootleg copies of commercial software packages such as Microsoft Windows or WordPerfect.
Beyond the verbatim copying of a computer program, the scope of copyright protection is quite
limited. It does not protect the functional aspects of the program, just its expression. But as
computer programs have become more complicated, that protection may be sufficient in most
instances. Most, if not virtually all, 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, the preloading of the program onto the hard disk of a computer being
sold, or the distributing of the program over the Internet without authorization. There is little
difficulty in finding that such acts are copyright infringements.
It also does not protect the functional aspects of the program, just its expression. But it is much
easier to state that rule than determine how to apply it, since a computer program combines
expression and functionality much, much more than any other copyrighted work. The most-
accepted way of determining whether something is unprotectable function or protectable
expression is the abstraction-filtration-comparison test, which, after determining a number of
parts of the program to consider (abstraction), filters out elements not protectable by copyright,
and then compares the remaining elements to determine if they are similar.
Elements are filtered because:
 The element’s expression was dictated by reasons of efficiency, such as when it is

the best way of performing a particular function.
 The element’s expression was dictated by external factors, such as using an existing
file format or interoperating with another program.
 The element’s expression is a conventional way of writing something in the

particular programming language or machine running the program.
 The element, at the particular level of abstraction, is an unprotectable process and not
protectable expression.
 The element is taken from the public domain, or is an unprotectable fact.

When writing a program similar to an existing program, you can copy any element of that
program that would be filtered without infringing the copyright of the existing program. But you
have to worry if you are using too many of the filtered elements. It could be that the selection or
arrangement of a large number of filtered elements could itself have sufficient originality to
warrant copyright protection. Remember, in the abstraction-filtration-comparison test,
abstraction is done before any filtration of elements at a particular level of abstraction, and
elements that may be filtered out at one level may be of primary importance at another.
And you must always remember that if you have had access to the source code of the existing
program under a confidentiality agreement, such copying would likely be trade secret
misappropriation even if it is not copyright infringement. Because it may be difficult to
determine whether something should be filtered or not, and because unconscious copying can
constitute infringement just as if you were looking at the program when you wrote yours, the
more exposure you have to an existing computer program, the more care you need to take when
writing a similar program.
In the three major cases that have considered reverse engineering of computer programs, Atari v.
Nintendo, {FN111: 975 F.2d 832, 24 USPQ2d 1015 (Fed. Cir. 1992)} Sega v. Accolade,
{FN112: 977 F.2d 1510, 24 USPQ2d 1561 (9th Cir. 1992)} and Sony v. Connectix, {FN113: 203
F.3d 596, 53 USPQ2d 1705 (9th Cir. 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. The intermediate copies were necessary
to see and understand the unprotected functional aspects of the computer program, and even
though the entire program was copied, that was necessary to locate those unprotected
expressions.
However, 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.
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Updates, as of September 12, 2014:

 Page 51, add the following:

In 2005, Congress added another form of criminal copyright infringement to

There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a,

It is interesting that this approach was suggested by some of us in 1997 as an

(4) Video games accessible on personal computers and protected by technological

The online version contains this change.

Though each revision to reexamination makes an important improvement, there are

The online version contains this change.

The online version contains this change.

 Page 321, after the top paragraph, add:

The online version contains this change.

 Page 323, after the block quote, add:

The online version contains this change.

The online version contains this change.

United States Court of Federal Claims

II. Current Copyright Law

II.A.1. Fixation of a Work

Section 101 defines when something has been fixed:

A work is “fixed” in a tangible medium of expression when its embodiment in a copy or

Section 101 also discusses when a work is created:

II.A.2. Types of Works

Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works. {FN22: 17 U.S.C. §102(a)}

Of most interest to us, as we consider copyright protection of digital information such as

II.B. Compilations, Collections, And Derivative Works

A “compilation” is a work formed by the collection and assembling of preexisting materials or of

A “collective work” is a work, such as a periodical issue, anthology, or encyclopedia, in which a

II.B.1. Reproductions or Derivative Works?

II.B.2. Special Provisions

In the legislative history, the drafters explained those provisions:

II.C. Copyright Notice And Registration

II.C.1. Form of the Notice

Section 401 gives the requirements for a proper notice:

II.C.2. Registration of Copyright

II.D. Federal Government Works

Section 101 clarifies what this includes:

II.D.2. Government Contract Works

A reasonable test of whether a government contractor should be allowed to copyright a work

II.E. Ideas Versus Expression

This provision was described by the drafters:

II.E.1. Two Key Supreme Court Cases

The test of whether something is an unprotectable idea or protectable expression is inherently ad

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

A number of factors must be considered in determining whether somebody is an employee, as

II.F.3. Collective Works

The drafters discussed this:

II.G. Copyright Duration

II.G.1. Why So Long?