Researchers and engineers have long increased the speed of scientific and technological development by borrowing ideas from others. [1] The ideas contained in a work are often learned when the work is publicly sold or used. [2] Legitimate use of other’s ideas for the benefit of broader society has its underpinnings in the U.S. Constitution and a long history of support in the judicial interpretation of the Patent and Copyright Acts. [3] This knowledge borrowing is legal so long as the property rights of the original innovator or artist are not violated. However, courts face a continuing challenge as technological developments create new claims of property rights violations. [4] The challenge is increased because technology frequently pushes beyond the direct reach of existing statutes. [5] Thus, courts ultimately find solutions for these new situations by applying the policy on which the law was based. [6]

The intent of the Copyright Act is to encourage the development of creative works to benefit the general public. [7] Copyright protection extends to the creative and expressive portion of the work. [8] However, copyright does not protect the facts, ideas or functional aspects contained in the work. [9] The grant of the copyright monopoly encourages development of additional creative works by encouraging the author of a work to share it with the public without the risk of the work’s creative content being stolen. The creation of additional works is further promoted when the original work is published because others may use the ideas and factual information contained in the work to develop their own creative works. The publication of these new works provides a similar benefit to the general public. [10]

The tension surrounding copyrights on computer programs stems from their nature. Computer codes in their final form are designed to be read by computers. Thus, they are in a digital machine language, “object code”, that is not easily understood by humans, even software designers. [11] This is unlike literary works that are presented in alphanumeric characters that make up the language of the human reader. The copyright granted these works will act to protect the facts and ideas contained therein unless others are allowed to decompile the programs into an intelligible programming language, “source code.” The process of decompiling the object code and using the source code to develop a compatible product is referred to as reverse engineering and may involve repeated copying of the copyrighted computer program. [12] These copies are referred to as intermediate copies because the protected expression contained therein does not appear in the finished product. [13]

Software developers have successfully applied the affirmative defense of fair use to defeat claims that this intermediate copying violated the owner’s copyright in the computer programmer. [14] Courts have found the equitable nature of the fair use defense useful in analyzing claims of computer program copyright infringement because the functional elements are unintelligible unless the object code is decompiled. [15] In Sony v. Connectix, 203 F.3d 596 (9^th Cir. 2000), the Ninth Circuit applied the fair use doctrine to further expand the ability of computer software developers to legally make intermediate copies of computer software for the purpose of developing non-infringing products. The issue is vitally important to software developers because the reverse engineering of copyrighted material is used extensively in the industry. [16] It is just as important to companies who own copyrights in popular software and systems and view the intermediate copying as theft of their copyrighted work. The result of the copier’s efforts adds insult to injury because it generally leads to the development of a product that takes market share from the owner of the original work. [17]

This memo analyzes the recent Connectix decision and the Sega decision to try and determine the boundaries of the fair use doctrine when applied to the intermediate copying of computer software for the purposes of reverse engineering. The memo concludes that Ninth Circuit’s reasoning supports intermediate copying as fair use where it is necessary and results in a final product that is transformative.

Robert V. Donahoe

Starting in the early 1980s, and ending in the very beginning of the 1990s, a number of scholarly commentators proposed that biotechnology works are proper subject matter for copyright protection. [2] Typically, these commentators focused on the idea that DNA sequences may be copyrightable works of authorship. Many commentators argued that copyrighting biotechnology might be a good idea because it would allow protection of works that would not qualify for patent protection. The idea of copyrighting biotechnology arose in the early 1980s at the time when patent protection of biotechnology seemed doubtful. Analogies of computer programs and DNA sequences were often made. The argument was that because DNA sequences are a type of biological computer program, and computer programs are copyrightable, then DNA sequences should also be copyrightable. Thus, to a number of commentators, the concept of copyrighting DNA sequences was an untapped and powerful alternative to patent protection.

Nearly 20 years after the first proposal, this concept has seen little development. A review of the literature reveals neither cases nor statutes dealing with the issue, and the Copyright Office has unofficially stated that it will not grant copyright registration to gene sequences or DNA molecules because they are not copyrightable subject matter. [3]

This article explains the legal reasons why copyright protection for biotechnology works is either impermissible or of severely limited scope. In particular, this article will present the illustrative issue of copyright protection for DNA sequences engineered by scientists.

James G. Silva, Esq. [1]

“If you can’t protect what you own–you don’t own anything.” [2] Motion Picture Association of America

“To promote the progress of knowledge on the Internet, those who are building the Net itself need fair and predictable ground rules” [3] U.S. Telephone Association

INTRODUCTION:

The above quotes, the first from a member of the content community and the second from an association representing telephone companies and Internet Service Provider (ISP), highlight the tension that exists between copyright holders and Internet Service Providers concerning the issue of on-line copyright infringement liability. As the Internet has grown, the problem of on-line copyright infringement has developed into an economically significant issue. [4] According to the Motion Picture Association of America, U.S. companies are losing millions per year to on-line copyright pirates, and with the current growth of the Internet, the content community fears that the amount lost to pirates will only increase. [5] The ISP industry, however, while acknowledging its unique position in terms of the Internet, does not want to become a “deep-pocket”, third-party defendant in every on-line copyright infringement lawsuit. The Internet Service Providers have argued that the law’s lack of predictability in this area and its standards for ISP copyright liability over the past few years have caused real concerns for this new and growing industry. [6] ISPs have argued that due to the nature of the Internet and the unique role of the ISP industry, a narrow limitation on copyright infringement liability should be established for Internet Service Providers so that those who are building the Internet will have a clearer sense of how and when they might be held liable for on-line copyright infringement. [7] In turn, they argue that a heightened level of certainty about this issue will help speed the growth of the Internet by encouraging more entrepreneurs to enter the ISP industry. [8]

How fast has the Internet grown? At the end of the Reagan-Bush era, just six years ago, the world of cyberspace consisted of fewer than 50 World Wide Web sites, most of them used by computer scientists and physicists. [9] Today the Internet is no longer just for researchers, and it is expected that within five years international commerce on the Internet could reach $3.2 trillion. [10] The fact is that in the past 72 months the number of Internet users has risen from hundreds to millions of users, and is estimated by some experts to reach perhaps a billion users by the year 2008. [11] In terms of copyright infringement, the commercialization and exponential growth of the Internet create an entirely new set of problems for copyright holders. [12]

In this context, it is understandable why writers, publishers, and researchers often look upon using the Internet as “riding the Tiger.” While the Internet has allowed researchers, educators, artists and publishers to expand their markets at an unprecedented rate, the same technology allows any anonymous and invisible copyright pirate to copy and disseminate instantaneously anything that is displayed on the Internet. Understanding how easy it is to duplicate copyrighted material from the Internet today, the content community has valid concerns about how much easier pirating could be five or ten years from now, and they argue that something must be done now to address this problem. [13]

Recognizing the inherent difficulty of enforcing copyrights against individual Internet users world-wide, some experts have argued that the answer to this problem is placing legal liability for copyright infringement on those who allow and enable Internet copyright pirates to exist, namely the ISPs. [14] It is argued that ISPs profit from the pirates’ use of the Internet, and in comparison to an independent publisher or author, an ISP is in a much better position to police how its subscribers use the Internet. [15] On the other side of the argument, ISPs claim that they are passive carriers similar to telecommunications companies and therefore should be granted some limitation from copyright infringement liability. [16] In addition, they argue that to make ISPs liable could stifle the growth of the Internet. [17]

Others argue that the answers to this problem will come from technological innovations, such as the use of “digital watermarking”, rather than through legal reforms. [18] In addition, the argument has been made that cooperation between ISPs and the content community is what is truly needed to solve this problem. [19] ISPs share the content community’s desire to see the Internet grow, and some believe that the threat of holding ISPs liable for copyright infringement may not be the best way to encourage ISPs to help minimize Internet copyright piracy. [20]

The issue of on-line copyright infringement has been around since the use of the Internet started to expand rapidly in the early 1990′s and has been the subject of extensive federal executive branch activities, court cases, and Congressional action. In the closing days of the 105th Congress, President Clinton signed into law a bill that addressed this issue; Title II of the Digital Millennium Copyright Act, the Online Copyright Infringement Liability Limitation Act of 1998. [21]

This paper will analyze the policy arguments, the court cases, and the legislative process that produced this law.

As for the structure of the paper, the first section will discuss the Clinton Administration’s activities concerning this issue. The second section will briefly address statutory copyright law in general and will put the specific issue of on-line copyright infringement liability in context by analyzing the five leading court cases in this area of law. The third section will address the policy arguments for and against the establishment of a limitation on copyright infringement liability for Internet Service Providers. Lastly, this paper will analyze the final version of the legislation that has been signed into law, and discuss why enacting this bill into law is a step in the right direction for the Internet.

Mark E. Harrington [1]

Despite the cries of some commentators that copyright law is dead (or at least that they wish it was), [1] copyright law is fully capable of responding to the challenges posed by the new technologies of the digital revolution. Copyright law initially developed in response to the invention of the printing press, [2] and has a long history of addressing changes in technology. [3] Where Congress has not explicitly made provisions for the new technology, the courts have stretched statutory interpretation and common law doctrines to do so. The courts’ express goal in fitting existing copyright law to new technologies has been to strike a balance between stimulating artistic creativity through the limited monopoly provided by copyright and providing “broad public availability of literature, music and the other arts.” [4]

To this end, the common law, [5] and eventually Congress, provided a safe harbor to those who use another’s work for the purposes of “criticism, comment, news reporting, teaching … scholarship, or research”. [6] When someone reproduces a copyrighted work for one of the enumerated purposes, the courts may find that there was no infringement under the fair use doctrine. Congress specified that the courts were to apply a four-factor test in determining whether any specific use is a fair use. [7] The four parts of the test are:

(1) the purpose and character of the use, including whether such use is of a commercial nature of 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. [8]

The U.S. Supreme Court has said that the fair use doctrine should be applied when a rigid application of the copyright statute would “stifle the very creativity which that law is designed to foster.” [9]

The new technologies of the digital revolution, in particular multimedia development, seem to cry out for the application of the fair use doctrine. As of this time, however, none of the federal appellate courts have considered the application of fair use doctrine to the new technologies of the digital revolution. The Supreme Court considered the application of the fair use doctrine to a predecessor of digital technology, the Betamax Video Cassette Recorder (“VCR”). However, the focus of the Supreme Court’s opinion in Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417, 430 (1984) was the issue of contributory copyright infringement of television programs’ copyrights. [10] Although the Court clarified the fair use doctrine, emphasizing that it is an “equitable rule of reason” and that all four statutory factors must be balanced against one another, [11] fair use was a small part of the Court’s analysis. It was the central issue of a subsequent case, Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164 (1994), but this case involved musical parody rather than technology. [12] Notably, however, Acuff-Rose reversed the trend among the lower courts to over-emphasize the commercial nature of the use such that commercial uses were presumptively barred from employing the fair use doctrine as a defense. [13] This reversal clearly has important ramifications for multimedia technology, much of which is purely commercial in nature. [14]

Although neither Sony nor Acuff-Rose directly addressed the application of the fair use doctrine to digital technology, these cases laid important groundwork. The Circuit Courts have built upon this groundwork, and although they have not yet applied fair use to digital technology, either, at least one court has applied the doctrine to the analogous technology of photocopying. [15] In American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (1994), the Second Circuit held that copying of eight articles from the Journal of Catalysis by one of Texaco’s researchers was not fair use. [16] The Texaco opinion is particularly instructive as it builds on the Acuff-Rose opinion and carefully balances the four factors of the fair use doctrine. [17]

In his article on multimedia and fair use, Goldberg argues persuasively that Texaco leads the way for multimedia developers to find a safe harbor in the fair use doctrine. [18] However, Goldberg defines multimedia too tightly to give comfort to many developers or lay users of the new digital technology. Following Michael D. Scott, [19] Goldberg defines multimedia as having five essential characteristics: it 1) involves more than one media, 2) is adaptable for a variety of uses, 3) is delivered through CD-ROM, computer networks, or HDTV, 4) is stored in digital form, and 5) is interactive. [20] This definition excludes multimedia presentations which abound in the corporate world and in daily personal use. For example, presentations made by competing law firms in “beauty-pageant” competitions for a corporation’s business might use graphic images and text (multiple media), might be delivered through digitally projecting a computer screen on which the presentation “played,” and might be stored in digital form (saved on the firm’s computer network). However, under Mr. Goldberg’s definition, this would not be a multimedia production because the presentation had a single use (education of the audience) [21] and was not interactive (the presentation advanced from screen to screen automatically). Similarly, a “Seinfeld” screen saver made by a lay consumer out of sound clips from the popular television program and images of the shows downloaded from the Seinfeld web-page would not be a multimedia presentation because it has a single use (entertainment) and is not interactive. Although a broader definition does risk the “slippery slope of over-inclusion” against which Mr. Goldberg warns, [22] defining multimedia too narrowly risks excluding broad applications of the new digital technologies from this general discussion.

However, such broad considerations might be best left to the legislature. The courts will address the problem of the new technologies, if at all, through discrete facts. Furthermore, the courts are careful to consider applications of the fair use doctrine on a “case-by-case” basis. [23] Therefore, it may be instructive to describe a hypothetical use (which would not qualify as multimedia under Mr. Goldberg’s definition) and then apply the fair use doctrine to this use.

Pamela R. O’Brien*

Fashion apparel is a multi-billion dollar industry that has no national boundaries. Designers, [1] retailers and consumers follow the game of international fashion. Within the last decade, consumer knowledge of specific designers has increased dramatically. Magazines and newspapers now cover the fashion industry as part of their national news coverage, focusing on the ever-changing world of creative designer expressions. [2] The general public has a ready command of the names and faces of fashion models and the designers for which they model. Countless television shows and feature films [3] exploit the fashion industry world. Consumers can now recognize the distinct style of their favorite designers: Chanel, jersey-knit double-breasted suits in contrast colors with trademarked brass buttons, and quilted leather accessories; Gianni Versace, colorful handprinted silks with reproduced 17th and 18th century illustrations; Issey Miyake, sparse deconstructed gender neutral garments in natural fabrics or highly unnatural polymers, which redefine both form and movement. [4]

In 1977, former Register of Copyrights Barbara Ringer stated that the issue of design protection is “one of the most significant and pressing items of unfinished business” of copyright revision. [5] This issue remains unaddressed today, even though the need for revision is even more significant, because garment designs lie along the fringe area of creative expressions that exhibit the same qualities as protected matter. This paper suggests that the traditional reasoning which denied certain articles copyright protection is no longer reasonable, and that protection should now be extended to garment designs. Further, this paper proposes solutions to the problems of implementing copyright for fashion and what effect copyright will have on the garment industry and consumers.

Jennifer Mencken*

Intelligent agents, sophisticated computer programs that act on behalf of their users and adjust themselves to users’ behaviors and preferences, may answer the prayers of people who are increasingly overwhelmed by the sheer volume of information available to them on the Internet. [2] Instead of spending frustrating hours “surfing the ‘Net” in search of elusive information, users may soon employ intelligent software agents that gather information efficiently and without need for further human assistance, thereby freeing the user to spend time on more productive, or more leisurely, activities. [3] Still in its infancy, agent software “launches” itself into a computer system, a local-area-network, or the Internet, in order to perform a task or set of tasks requested by the user, such as retrieving information on a particular company or purchasing plane tickets at the lowest price. [4] If sufficiently sophisticated, intelligent agents may be able to “negotiate” with software agents resident in other computer systems, to coordinate, for example, a teleconference between two executives which does not conflict with the schedule of either person. [5]

Although agent technology is neither ubiquitous nor yet fully realized, it is nearly certain to play a major role in the way consumers and businesspeople deal with information in the years to come. [6] Indeed, agent software may cause people to rethink their entire approach to receiving information, creating distinctions between mere data and true information. [7] Don Norman, a research fellow at Apple Computer Inc., goes even further, arguing that we do not want data or information – we want knowledge. [8] Norman and others believe that intelligent agents will perform the tedious, time-intensive tasks of data collection and information retrieval, ultimately providing the user with readily-applicable knowledge and perhaps rendering obsolete presently “state-of-the-art” search paradigms, such as the unwieldy World Wide Web. [9]

Not surprisingly, any technology that promises to change fundamentally the way information is gathered will raise the eyebrows of the artistically or intellectually creative individuals (and their lawyers) who possess legally granted ownership rights in expressions of this information. [10] To be specific, intelligent agents may retrieve for users, via the Internet, documents, images, video or sound files that are the copyrighted material of another, thus subjecting the user, and/or the user’s employer, to potential legal liability. [11] This seemingly inevitable clash between copyright holders and the users of the Internet, compounded by the injection of intelligent agent technology, presents several novel copyright issues.

The core issue, and the issue in which the federal government, industry, academia, and individual computer users are all keenly interested at present, is when, or perhaps whether, the viewing, retrieval, transmission, or transfer of copyrighted files, data or images by users of the Internet constitutes copyright infringement. [12] This issue, until definitively resolved by the courts or legislature, will almost surely lie at the crux of numerous Internet-related copyright lawsuits that will be filed in the months and years to come. [13] Therefore, this paper must, at the outset, explore in depth copyright protection for files on the Internet.

Only after addressing this fundamental issue can we delve into our more creative investigation; that is, whether the retrieval of copyrighted computer files via the Internet by an intelligent software agent can be considered infringement by its owner, operator or initiator. Several ancillary issues will also be explored. For example, would the user’s employer, whether a corporation or academic institution, also be exposed to liability for copyright violations, under theories of contributory or vicarious liability? Additionally, would the company who designed, programmed, or owns the copyright to the source and object code for the intelligent agent software face potential liability when its software agents infringe upon copyrights?

Michael B. Sapherstein*

In the opinion of the United States federal courts, digital software embodied in a computer’s Random Access Memory (RAM) is sufficiently fixed to constitute a “reproduction” under the Copyright Act. [1] As a reproduction, the creation of the RAM embodiment, or the loading of software into RAM, is a potential copyright infringement. However, a close reading of the Act and its legislative history reveals that a digital work embodied in RAM should not be considered a reproduction of the work. Furthermore, including digital works embodied in RAM as reproductions is a poor fit in light of the policy behind the Copyright Act. This would mean that every time a person opens a computer program, he or she might be infringing a copyright. The courts’ widely criticized finding can be explained, at least in part, by early law makers’ confusion about computer memory and inability to fit RAM into previous constructs. Courts and law makers have built on each others’ flawed or non-existent analysis of RAM embodiments as reproductions since the 1976 Act was being drafted. These approaches ignored the purpose behind the fixation requirement when interpreting it. Since digital embodiments in RAM do little harm to a copyright holder, their categorization as reproductions is not consistent with the policy behind the fixation requirement for reproductions. [2]

In response to the intuitive incorrectness of the current law and its contradiction with the policy behind copyright law, critics have made several arguments against finding an embodiment in RAM to be an infringement. [3] Critics argue that RAM embodiments should be afforded one of the defenses of fair use, copyright misuse, or per section 117(1), that the copying is an essential step in the program’s utilization. This paper, however, focuses on another argument born of the same policy considerations: That a RAM embodiment is not sufficiently fixed to be a reproduction under the Copyright Act’s definitions.

E J. Mathews*