Main Index : Writings of Marie A. D'Amico, Esq.

Digital Copyrights in an Analog World

You’ve authored a CD-ROM. You go to the nearest Computer SuperStore and see a copycat product. Imitation may be the sincerest form of flattery, but this time it’s theft. What do you do? You’re an American, you have rights, you can sue. What legal hoops will you need to tumble through to win? If your CD-ROM were an analog artistic work, like a painting or a play, the hoops would be cast of concrete and relatively unmoveable. As the author of a digital artistic work,however, be prepared to face a different set of legal rings, made of rubber and bouncing all the time.

For more than two centuries copyright law, with periodic checkups to scrape off legalistic tartar, has provided protection for a myriad of works of authorship. Congress’ broad authority, derived from the Constitution, "to promote the Progress of Science and useful Arts" has been sufficient to guard intellectual property when it moved from the mechanical world of Gutenberg’s printing press to the analog world of radio, movies, television, audiocassette players, videocassette recorders, and the like. Yet the digital world of computer programs, a binary universe of 0’s and 1’s, has stumped Congress, courts, and commentators.

Thomas Jefferson , first head of the United States Patent Office , stated "institutions must advance also to keep pace with the times" or "we might as well require a man to wear still the coat which fitted him when a boy." For the past ten years, the courts have patched here and extended there the often ill-fitting coat of analog copyright law. The result is a patchwork quilt which has bright snippets protecting products against copyright pirates but dark parcels permitting imitators to run roughshod over titles. The coat obviously needs a bit more tailoring to fit the digital world.

The Long and Winding Digital Road

The first federal copyright act was passed on May 31, 1790 to protect maps, charts, and books. If you’re thinking about plagiarizing John Grisham ’s latest legal thriller, in any form, remember he’s got over two hundred years’ of precedent in which to clothe himself and burn you like a cheap, flammable rayon suit. Major revisions to the copyright laws occurred in 1831, 1870, and 1909 safeguarding paintings, statues, prints, movies, periodicals, phonorecords, and more. The current Copyright Act , enacted in 1976, filled some of the cavities in the 1909 Act but didn’t specifically mention computer programs. In 1974, Congress starting watching reruns of Star Trek and became concerned about computers and, you guessed it, created a commission called the National Commission on New Technological Uses of Copyrighted Works (CONTU) to formally "study and report on problems of new technology and copyright." Or, to informally explain what the heck were those computer thangs. In the late 70’s, Congress, like the rest of the world, used analog secretaries, not digital computers. On July 31, 1978, CONTU delivered its final report to the President recommending, among other slight modifications, the Copyright Act be amended to include a definition of "computer programs" which would explicitly make them proper subject matter for copyright. They are now defined as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result."

Expressway to Your Program’s Protection

You’ve got a computer program or a title. You ask, "how can I protect it?" As soon as it’s finished, it’s copyrighted. That’s it. Copyright protection subsists "in original works of authorship fixed in any tangible medium of expression, now known or later developed. " While this definition sounds simple, almost every word of it has been litigated to purgatory. For example, in the 80’s, courts couldn’t decide whether programs embedded in ROM or RAM were sufficiently "fixed" to be protectible or whether operating systems programs in object code were as copyrightable as applications programs in source code. In 1983 (Apple Computer v. Franklin, 714 F.2d 1240 (3rd Cir. 1983).) Apple initially lost the argument that operating systems programs, whether on diskette or ROM, were copyrightable. Apple finally prevailed upon appeal in the case against Franklin Computer Corporation . Franklin was an Apple II ROM cloner; they now publish handheld electronic books, ( see Digital Media , vol. 4, no. 3, p. 5) including Biblical ones, after Apple made them find God. Digital Research Inc . and Microsoft Corp . (later publishers of the Gee-It-Looks-Like-Finder GEM and Windows GUIs) submitted briefs in support of Apple’s position, demonstrating why 1983 wouldn’t be like 1993.

You’ve got your copyrighted product and you want to sue nefarious Illegal Copiers Korporation (or, ICK) for infringing your program. First, you need to register it with the Copyright Office . You fill out an easy form (Form TX), attach some source code and object code, a check for $20, and send everything to D.C. I recommend registration shortly after publication (first sale or offer to sell), because if you wait too long, anyone who knows how to print a hex dump of your program will be employed by a competitive startup. If you register it within five years of publication, the registration certificate is prima facie evidence (legally sufficient) of ownership and the facts stated in the document. This is especially helpful because ICK would need to rebut your registration certificate with evidence and that’s quite difficult to do.

One of the rare cases to involve a dispute over a copyright registration certificate was Xerox ’s suit against Apple, filed in December ’89. Xerox did not allege copyright infringement of the Smalltalk or Star GUIs by Macintosh as most press articles reported. They alleged the Macintosh Finder copyright registrations were invalid because they had failed to list Xerox Star as a prior work. The court dismissed the complaint in April 1990 stating that courts can’t cancel a copyright. The court also ruled Xerox was basically complaining they weren’t as successful in marketing Star as Apple had been with Macintosh. "Federal laws . . . offer copyright holders no relief for commercial disappointment," the court stated. It’s your party, and you can cry if you want, you just can’t sue over it.

Going to the Chapel of Law

You’ve got your copyright registration. You and Atticus Finch march into federal court to sue ICK for copyright infringement. To succeed on your claim, you’ll need to prove: (1) you own a valid copyright in your program and (2) ICK copied it. That handy registration I admonished you to get will be proof of No. 1. However, rarely does anyone have direct evidence of copying (No. 2) because nosy neighbors with camcorders don’t hang around hacker’s hideouts. Therefore, you’ll need circumstantial evidence of copying. A bloody glove with a diskette or a trail of source code to ICK’s door would be great. Barring that, you’ll need to demonstrate: (1) ICK had access to your program and (2) ICK’s program is substantially similar to yours. Access is usually easy to prove and many defendants concede it. Substantial similarity, on the other hand, is like pornography. The courts can’t seem to agree on what it is, but they think they’ll know it when they see it.

In any incarnation of the substantial similarity test, you’ll first need to prove the ideas behind the two products are substantially similar. For example, if the idea underlying both programs can be described as "the efficient management of a dental office," you’ve likely met your burden. Usually, this is a no-brainer. Next, you’ll need to prove the expression of that idea in both products is substantially similar because copyright protects only expression, not ideas. In the analog world, courts use the Mom Eyeball Test. If, by a eyeball comparison, your Mom would think Monet’s Sunflowers looks substantially similar to Manet’s earlier work, The Garden , then Sunflowers is an infringing copy. This test should apply to computer programs. If Mom looks at Microsoft Windows and says (as many Price Club shoppers do), "Macintosh, dÈjý vu! ", Windows is an infringing copy. But instead, in the digital world, courts use the Reductio Absurd Test. The court analyzes each element of your product and the allegedly infringing program, often at the pixel level, to determine first, if the elements are protectible by copyright and second, if the elements are substantially similar. If alive today, Manet would rejoice in his analog-ness because no pointilist painting, or any work, could withstand this cockamamie level of scrutiny. After all, the court would rule, "It’s just a bunch of dots."

Which elements of your product are protectible by copyright? Most courts agree the source and object code are protectible and some aspects of the screen displays, user interface, and "structure, sequence, and organization" of the program are protectible. For example, in the Lotus/Paperback battle ( Lotus Dev. Corp. v. Paperback Software Int'l., 740 F.Supp. 37 (D. Mass. 1990) , the court held the user interface of Lotus 1-2-3 was protectible, and infringed, by Paperback’s product, VP-Planner . Although digital, these spreadsheets passed the analog Mom Eyeball Test — VP-Planner was a cheapo 1-2-3 clone to anyone not legally blind. But, in the Apple/Microsoft epic, the court ruled the Macintosh user interface was mostly unprotectible because "the actual arrangement of displays on a computer monitor running any interactive program is largely the product of the user’s efforts, negating any claim of the programmer to original authorship." No originality? The Myst brothers will be stunned to hear that.

Which elements of your product aren’t protectible? Any element in the public domain, i.e. , "commonplace in the industry", isn’t protectible. For example, in Computer Associates/Altai, Computer Associates Int'l v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), the court held macros which perform common, everyday functions were in the public domain. Any element which is scËnes ý faire , i.e., a stock scene, isn’t protectible. For an analog movie about Germany, a court held scenes depicting beer halls to be "scËnes ý faire." Digitally, in Apple/Microsoft, the court ruled overlapping windows and icons were scËnes ý faire in any GUI. Any element which "mergers" with the idea, i.e,. is "the only and essential means of accomplishing a given task," isn’t protectible. In Apple/Microsoft , the court stated the appearance of the overlapping windows, icons, gray window moving/sizing outline, menus, and more "merged" with the idea of a GUI. Any element which isn’t "unoriginal" isn’t protectible. In the analog universe, elements are very rarely found unoriginal. In Apple/Microsoft, the court held many elements of the Macintosh GUI, including icons, lacked "originality." I’m sure this astounds the graphic artists who labored 90 hours a week drawing thousands of icon variations for careful selection by the aesthetic sheriff, Steve Jobs . And finally, if your product is merely "useful," the entire program will be granted only limited copyright protection. Many courts have declared computer programs to be merely "utilitarian or functional works" as opposed to "creative compositions." The application of these wishy-washy and dangerous defenses in the binary world to eviscerate copyright protection for digital works that involve years of design, millions of dollars, and the interaction of programmers, artists, and cognitive scientists demonstrate the courts’ complete lack of understanding of our increasingly non-analog world.

School’s Not Out For Summer

Yves Saint Laurent recently won a judgment in Paris against Ralph Lauren for copying YSL’s slinky tuxedo dress. If it had been digitally reproduced fashion, a U.S. court would have labeled the frock an unprotectible "useful" article, like a drill, nothing more than some buttons and bows. What’s to be done with this dichotomous analog/digital copyright world? The solution to the problem of differing standards for copyright protection for analog works versus digital works lies in learning. Congress and the courts require education about the creative and artistic nature of the digital world in which we all must live. Anyone who has seen Just Grandma and M e knows it’s useful (it helps kids to read), but it’s also a work of admirable aesthetic value. It’s not a tool; it’s a ’toon. Maybe when Julia Roberts stars in a CD-ROM game the courts will finally comprehend that computer programs are about beauty and art, not drill bits.

Questions? Send me email .

Sidebar:

We’re Just the Members of the Copyright Band]

As we reported last month ( vol. 4, no. 3, p. 20 ), new changes to the 1976 Copyright Act were proposed in July ’94 to address illegal electronic distribution and transmission of computer programs.

Some politicos behind the digital recommendations appear to be attempting to yank the cuspids from copyright law. Ralph Oman, the Register of Copyrights, resigned shortly into the Clinton administration supposedly trying to save the Copyright Office from the clutches of the dynamic digital duo of Bruce Lehman , the Commissioner of Patents, and Congressman Barney Frank , who had introduced a bill to reduce it to a library of voluntary deposit. Maybe Atari forced Oman out after he refused to register copyright in their game "Breakout" because he didn’t think it was creative. Did he ask any teenage boy? Interestingly, Lehman, the author of the copyright recommendations and a longtime intellectual property Beltwayian, is the Commissioner of Patents, not copyrights, and appears to have written the m with no input from the Copyright Office.

Other politicos appear to be aspiring to sharpen copyright’s incisors. Al Gore, Jr . wants to build a Global Information Infrastructure (GII) that "will allow us to share information, to connect, and to communicate as a global community". As that information moves through international channels, he has stated that "protecting intellectual property is absolutely essential." The GII will permit Gore to leave a legacy of a "digital highway" comparable to the interstate highway system for which his father, Al Gore, Sr., took credit.

Other high-techie sensitive government officials like Anne Bingaman and Mickey Kantor generate at least an impression of awareness of the importance of digital copyright protection in their trade and economic positions. While Bingaman only used baby teeth in the consent decree against Microsoft, I’m sure she’s got wisdom teeth in her arsenal.