Footnotes

[1] Information Infrastructure Task Force, National Telecommunications and Information Administration, The National Information Infrastructure: Agenda for Action (Sept. 15, 1993).

[2] The "National Information Infrastructure," as it is discussed in this Report, is intended to encompass the digital, interactive services now available, such as the Internet, as well as those contemplated for the future. To make our analysis more concrete, however, we have, in many instances, evaluated the intellectual property implications of activity on the Internet, the superstructure whose protocols and rules effectively create (or permit the creation of) a "network of networks." This reflects neither an endorsement of the Internet nor a derogation of any other existing or proposed network or service that may be available via the NII, but, rather, an acknowledgment that a currently functioning structure lends itself more readily to legal analysis than a hypothetical construct.

[3] For instance, the current debate over whether or to what extent certain aspects of computer programs are or should be protected under copyright law is not covered by this Report. Likewise, certain patent issues, such as pre-grant publication and reexamination, are not addressed.

[4] Supreme Court Justice Story found that copyright and patent cases come "nearer than any other class of cases belonging to forensic discussions, to what may be called the metaphysics of the law where the distinctions are, or at least may be, very subtile [sic] and refined, and, sometimes, almost evanescent." See> Folsom v. Marsh, 9 F. Cas. 342, 344 (C.C.D. Mass. 1841) (No. 4,901).

[5] These devices will be linked not only to each other (computer to computer, for example) but will also be cross-linked (computer to television).

[6] The United States and other countries are working toward the development of a Global Information Infrastructure (GII) that "will allow us to share information, to connect, and to communicate as a global community." And as that information moves through international channels, "[p]rotecting intellectual property is absolutely essential." See Remarks Prepared for Delivery by Vice President Al Gore at the International Telecommunications Union in Buenos Aires, Argentina (March 21, 1994).

[7] See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 430-31 nn. 11-12 (1984) (hereinafter "Sony") (significance of changes in technology and their effect on copyright law).

[8] The Commission on New Technological Uses of Copyrighted Works (hereinafter "CONTU") reported about the issues raised by photocopiers and computers back in 1978, using language that is applicable again today:

The ownership and control of information and the means of disseminating it are emerging as national and international policy issues. Concerns about the impact on individual freedom posed by the control of the flow of information are at the forefront of public debate. The adequacy of the legal structure to cope with the pace and rate of technological change frequently has been called into question.

Final Report of the National Commission on New Technological Uses of Copyrighted Works (hereinafter "CONTU Final Report") at 3 (citations omitted).

[9] See 17 U.S.C. [[section]] 1001 et seq. (Supp. V 1993). The Audio Home Recording Act requires a serial copy management system in all digital audio recording devices and digital audio interface devices imported, manufactured or distributed in the United States. Such a system allows unlimited first generation digital copying of sound recordings, but prevents the making of digital copies from copies. The Act prohibits the importation, manufacture or distribution of any device, or the offering or performance of any service, the primary purpose of which is to circumvent any program or circuit which implements a serial copy management system. The Act also establishes a royalty system through which importers and manufacturers of digital audio recording devices and digital audio recording media make royalty payments on each device or medium they distribute. Such payments are collected by the Copyright Office and distributed annually to record companies, performers, music publishers and songwriters.

[10] See Inscription at the Jefferson Memorial. As Secretary of State, Thomas Jefferson was the first head of the U.S. Patent Office.

[11] Congress' authority to grant certain intellectual property rights is derived from Article I, Section 8, Clause 8 of the U.S. Constitution: "The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

[12] See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 47 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 (hereinafter "House Report") ("During the past half century a wide range of new techniques for capturing and communicating printed matter, visual images, and recorded sounds have come into use, and the increasing use of information storage and retrieval devices, communications satellites, and laser technology promises even greater changes in the near future.").

[13] See House Report at 47, reprinted in 1976 U.S.C.C.A.N. 5660.

[14] It has even been suggested that intellectual property law is an antiquated system which has no place in the NII environment.

[15] The Copyright Act of 1976, as amended, is codified at 17 U.S.C. [[section]] 101 et seq. (1988 & Supp. V 1993). Hereinafter, the Act is cited as "17 U.S.C. [[section]] ." The Copyright Act preempts any grant of equivalents rights for works of authorship within the specified subject matter. Section 301 provides:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. [[section]] 301(a) (1988).

[16] 17 U.S.C. [[section]] 102(a) (1988 & Supp. V 1993). The Copyright Act specifically excludes from protectible subject matter any "idea, procedure, process, system, method of operation, concept, principle or discovery" even if it meets the criteria for protection. See 17 U.S.C. [[section]] 102(b) (1988).

[17] See 17 U.S.C. [[section]] 102(a) (1988 & Supp. V 1993). The statutory qualification is derived from Congress' limited Constitutional authority to grant copyright protection to "authors" for their "writings." See U.S. CONST., art. I, [[section]] 8, cl. 8.

[18] Feist Publications, Inc. v. Rural Tele. Serv. Co., 499 U.S. 340, 345 (1991) ("vast majority of works make the grade quite easily, as they possess some creative spark").

[19] Formal requirements for obtaining or enjoying copyright protection--such as registration or a copyright notice--have been abolished.

[20] See 17 U.S.C. [[section]] 102(a) (1988 & Supp. V 1993).

[21] 17 U.S.C. [[section]] 101 (1988) (definition of "copies").

[22] 17 U.S.C. [[section]] 101 (1988) (definition of "phonorecords").

[23] House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

[24] House Report at 52, reprinted in 1976 U.S.C.C.A.N. 5665-66.

[25] See id.

[26] See, e.g., Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 855 (2d Cir. 1982) (putting work in "memory devices" of a computer "satisf[ies] the statutory requirement of a 'copy' in which the work is 'fixed'").

[27] See, e.g., Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989).

[28] Unfixed broadcasts are not within the subject matter of Federal copyright law. Therefore, protection of such works is not preempted and may be provided in state statutory or common law. See 17 U.S.C. [[section]] 301 (1988 & Supp. V 1993).

[29] See 17 U.S.C. [[section]] 101 (1988) (definition of "fixed"); see also Baltimore Orioles, Inc. v. Major League Baseball Players Assoc., 805 F.2d 663, 668 (7th Cir. 1986) (telecasts that are videotaped at the same time that they are broadcast are fixed in tangible form), cert. denied, 480 U.S. 941 (1987). It is understood that the "fixation" must be made or authorized by the author.

[30] 17 U.S.C. [[section]] 101 (1988) (definition of "fixed").

[31] House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

[32] See Advanced Computer Services of Michigan Inc. v. MAI Systems Corp., 845 F. Supp. 356, 363 (E.D. Va. 1994) (conclusion that program stored only in RAM is sufficiently fixed is confirmed, not refuted, by argument that it "disappears from RAM the instant the computer is turned off"; if power remains on (and work remain in RAM) for only seconds or fractions of a second, "the resulting RAM representation of the program arguably would be too ephemeral to be considered 'fixed'"). There may be too much of a delay between transmission and "fixation" (if any) on the receiving computer's screen or RAM to qualify as a "simultaneous" fixation.

[33] See 17 U.S.C. [[section]] 104 (1988 & Supp. V 1993). Prior to 1978, certain unpublished works, particularly dramatic works and musical compositions, could obtain copyright protection through registration with the Copyright Office. Since 1978, all otherwise eligible unpublished works are protected. See 17 U.S.C. [[section]] 104(a) (1988 & Supp. V 1993).

[34] 17 U.S.C. [[section]] 101 (1988) (definition of "publication").

[35] See House Report at 138, reprinted in 1976 U.S.C.C.A.N. 5754. See also discussion of transmissions and the "distribution" of copies infra pp. 38-42.

[36] See House Report at 138.

[37] A bulletin board system is a computer system to which subscribers have telecommunications access for many purposes, including sending and receiving electronic mail, and obtaining and delivering files (which may consist of software, text, graphic images, or anything else that may be placed in a digital format). A BBS may be (1) commercial, as in the examples of CompuServe, Prodigy, and the like, (2) institutional, as in the case of a university BBS, or (3) individually owned and operated.

[38] 17 U.S.C. [[section]] 407 (1988). "[T]he owner of copyright or of the exclusive right of publication in a work published in the United States shall deposit, within three months after the date of publication--(1) two complete copies of the best edition; or (2) if the work is a sound recording, two complete phonorecords of the best edition, together with any printed or other visually perceptible material published with such phonorecords." 17 U.S.C. [[section]] 407(a) (1988). The deposit requirements are not conditions of copyright protection, but failure to deposit copies of a published work may subject the copyright owner to significant fines. See 17 U.S.C. [[section]] 407(a), (d) (1988).

[39] 17 U.S.C. [[section]] 104(a) (1988 & Supp. V 1993); see also 17 U.S.C. [[section]] 104(b) (1988 & Supp. V 1993) (national origin requirements for published works).

[40] 17 U.S.C. [[section]] 405 (1988). For such works, failure to include a copyright notice risks total loss of copyright protection. See id. Works published after March 1, 1989 (the effective date of the Berne Implementation Act) may (but are not required to) bear a copyright notice identifying the year of publication and the name of the copyright owner. See 17 U.S.C. [[section]] 401 (1988).

[41] See generally 17 U.S.C. [[section]][[section]] 107 - 120 (1988 & Supp. V 1993). See, e.g., 17 U.S.C. [[section]] 118 (1988 & Supp. V 1993) (compulsory license is available for the use of certain published works in connection with noncommercial broadcasting). Whether a work is considered published or unpublished is also relevant in a fair use analysis. See discussion of fair use infra notes 145, 147 and accompanying text.

[42] See 17 U.S.C. [[section]] 408(b) (1988) ("the material deposited for registration shall include--(1) in the case of an unpublished work, one complete copy or phonorecord; (2) in the case of a published work, two complete copies or phonorecords of the best edition; (3) in the case of a work first published outside the United States, one complete copy or phonorecord as so published; (4) in the case of a contribution to a collective work, one complete copy or phonorecord of the best edition of the collective work").

[43] See 17 U.S.C. [[section]] 302(c) (1988).

[44] 17 U.S.C. [[section]] 102(b) (1988).

[45] This is usually referred to as the "idea/expression dichotomy." The ideas are not protected; the expression is. The line between idea and expression is not easy to draw. The distinction is not that one is fixed and the other is not --they are both fixed in the copyrighted work of authorship. At some point, the idea becomes detailed enough to constitute expression. Judge Learned Hand explained:

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.

Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

[46] 17 U.S.C. [[section]] 105 (1988). While Section 105 leaves works created by the U.S. Government unprotected under U.S. copyright laws, Congress did not intend for the section to have any effect on the protection of U.S. government works abroad. See House Report at 59, reprinted in 1976 U.S.C.C.A.N. 5672. Further, while works created by the U.S. Government are not protected by the Copyright Act, copyright interests transferred to the U.S. Government by assignment, bequest or otherwise may be held and enforced by it. See 17 U.S.C. [[section]] 105 (1988).

[47] A work of the U.S. Government is a work "prepared by an officer or employee of the United States Government as part of that person's official duties." 17 U.S.C. [[section]] 101 (definition of "work of the United States Government"). Although the wording of this definition is not identical to that of a "work made for hire," the concepts "are intended to be construed in the same way." House Report at 58, reprinted in 1976 U.S.C.C.A.N. 5672. See discussion of works made for hire infra notes 84-86 and accompanying text.

[48] See, e.g., Takeall v. Pepsico Inc., 29 U.S.P.Q.2d 1913 (4th Cir. 1993) (unpublished) (holding phrase "You got the right one, uh-huh" is not copyrightable and, thus, was not infringed by commercial using phrase "You got the right one baby, uh-huh"). While short phrases are not copyrightable standing alone, they may be protected as part of a larger, copyrighted work. See e.g. Dawn Assoc. v. Links, 203 U.S.P.Q. 831 (N.D. Ill. 1978) (holding phrase "When there is no room in hell . . . the dead will walk the earth" to be an integral part of a copyrighted advertisement, and defendant's unauthorized use of it was therefore infringing); Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182, 183-85 (S.D.N.Y. 1991) (finding lyric "alone again" to be protected as part of a copyrighted work and infringed by defendant rap artist's "sampling").

[49] Other material ineligible for copyright protection includes the utilitarian elements of industrial designs; familiar symbols or designs; simple geometrical shapes; mere variations of typographic ornamentation, lettering or coloring; common works considered public property, such as standard calendars, height and weight charts, and tape measures and rulers.

[50] 17 U.S.C. [[section]] 102(a) (1988 & Supp. V 1993).

[51] 17 U.S.C. [[section]] 101 (1988) (definition of "literary works").

[52] Following the recommendation of CONTU, Congress amended the Copyright Act in 1980 to explicitly recognize that computer programs were protected as literary works. See Act of December 12, 1980, Pub. L. 96-517, 1980 U.S.C.C.A.N. (94 Stat.) 3015. "Computer programs" are 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." See 17 U.S.C. [[section]] 101 (1988 & Supp. V 1993).

[53] See House Report at 54, reprinted in 1976 U.S.C.C.A.N. 5667.

[54] Congress did not define the term "musical work" in the statute based on the assumption that the term had a "fairly settled" meaning. See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

[55] A phonorecord generally embodies two works--a musical work or, in the case of spoken word recordings, a literary work, and a sound recording. Musical works available through services on the NII may also be the subject of Musical Instrument Digital Interface ("MIDI") recordings. A MIDI is a data stream between a musical unit in a computer and a music-producing instrument. The data stream instructs the instrument, such as a synthesizer, on what notes to play.

[56] See H. Abrams, The Law of Copyright [[section]] 204[C][3][b][iv] (1993). The term "dramatic works" is not defined in the Act. See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

[57] Congress also declined to define the terms "pantomimes" and "choreographic works," again relying on "fairly settled meanings." See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

[58] 17 U.S.C. [[section]] 101 (1988) (definition of "pictorial, graphic, and sculptural works").

[59] 17 U.S.C. [[section]] 101 (1988) (definition of "audiovisual works").

[60] 17 U.S.C. [[section]] 101 (1988) (definition of "motion pictures").

[61] See House Report at 56, reprinted in 1976 U.S.C.C.A.N. 5669.

[62] 17 U.S.C. [[section]] 101 (Supp. V 1993) (definition of "architectural work"). The category of architectural works was added in 1990 by the Architectural Works Copyright Protection Act, Public Law 101-650, 1990 U.S.C.C.A.N. (104 Stat.) 5089, 5133.

[63] Id.

[64] The embodiment of two or more different types of works in one medium is not a new concept. For instance, a book may contain both a literary work and pictorial works. A compact disc may contain a musical work, a sound recording and a computer program.

[65] A true "multimedia" work would be one in which several material objects, such as a book, a videocassette and an audiocassette, are bundled into one product.

[66] See discussion of compilations infra pp. 27-28.

[67] While expressly protected under the Copyright Act, the category of "compilations" is not a particularly useful subject matter category. Works in any of the eight enumerated categories of protectible subject matter outlined above may take the form of a compilation, and a compilation may fit into one or more of the subject matter categories.

[68] House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666. Indeed, Congress amended the Copyright Act in 1990 to add "architectural works" as a category of protectible works. See supra note 62.

[69] It should be noted that the Copyright Office classifies works into four broad categories for purposes of registration: nondramatic literary works, works of performing arts, works of visual arts, and sound recordings. See 37 C.F.R. [[section]] 202.3(b)(i)-(iv). The Copyright Office notes that in cases "where a work contains elements of authorship in which copyright is claimed which fall into two or more classes, the application should be submitted in the class most appropriate to the type of authorship that predominates in the work as a whole." See 37 C.F.R. [[section]] 202.3(b)(2). However, the Copyright Act makes clear that the Copyright Office classification of works for purposes of registration "has no significance with respect to the subject matter of copyright or the exclusive rights provided." See 17 U.S.C. [[section]] 408(c)(1) (1988); see also House Report at 153, reprinted in 1976 U.S.C.C.A.N. 5769 ("It is important that the statutory provisions setting forth the subject matter of copyright be kept entirely separate from any classification of copyrightable works for practical administrative purposes.").

[70] See 17 U.S.C. [[section]] 106(4),(5) (1988). The public performance right is limited to literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works. The public display right is limited to 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. Id.

[71] See, e.g., 17 U.S.C. [[section]] 108(h) (1988) (limitation not applicable to musical works, pictorial, graphic or sculptural works, or motion pictures or other audiovisual works other than audiovisual works dealing with news); 17 U.S.C. [[section]] 109(b) (Supp. V 1993) (certain limitations not applicable to sound recordings or computer programs); 17 U.S.C. [[section]] 110(4) (1988) (limitation applicable only to nondramatic literary or musical works); 17 U.S.C [[section]] 110(8) (1988) (limitation applicable only to nondramatic literary works); 17 U.S.C. [[section]] 110(9) (1988) (limitation applicable only to dramatic literary works); 17 U.S.C. [[section]] 112(a) (1988) (limitation not applicable to motion pictures or other audiovisual works); 17 U.S.C. [[section]] 113 (1988 & Supp. V 1993) (limitation applicable only to pictorial, graphic, or sculptural works); 17 U.S.C. [[section]] 114 (1988) (limitation applicable only to sound recordings); 17 U.S.C. [[section]] 115 (1988) (limitation applicable only to nondramatic musical works); and 17 U.S.C. [[section]] 120 (Supp. V 1993) (limitation applicable only to architectural works).

[72] See 17 U.S.C. [[section]] 101 (1988) (definition of "literary works") (emphasis added).

[73] The definition of "sound recordings" explicitly excludes from the category of sound recordings musical, spoken or other sounds "accompanying a motion picture or other audiovisual work . . . ." See 17 U.S.C. [[section]] 101 (1988) (definition of "sound recordings"). The definition of "audiovisual works" also expressly includes any "accompanying sounds." See 17 U.S.C. [[section]] 101 (1988) (definition of "audiovisual works").

[74] 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 . . . ." 17 U.S.C. [[section]] 101 (1988) (definition of "audiovisual works").

[75] See discussion infra note 122 and accompanying text.

[76] 17 U.S.C. [[section]] 101 (1988) (definition of "compilation"). A "collective work," which is one kind of "compilation," 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." 17 U.S.C. [[section]] 101 (1988) (definition of "collective work").

[77] 17 U.S.C. [[section]] 101 (1988) (definition of "derivative work").

[78] See id.

[79] See 17 U.S.C. [[section]] 103(a) (1988).

[80] 17 U.S.C. [[section]] 103(b) (1988).

[81] Id.

[82] 17 U.S.C. [[section]] 201(a) (1988).

[83] Id. A "joint work" is 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." 17 U.S.C. [[section]] 101 (1988) (definition of "joint work").

[84] See 17 U.S.C. [[section]] 201(b) (1988). This legal conclusion may only be altered by the parties in a written instrument signed by them expressly agreeing otherwise. Id.

[85] The Copyright Act does not define "employee." In 1989, the Supreme Court held that an employment relationship determination for copyright purposes should be made by reference to the "general common law of agency." See Community for Creative Non-Violence v. Reid, 490 U.S. 730, 740-41 (1989). The central question in an agency law inquiry is whether the hiring party has the "right to control the matter and means by which the product is accomplished." Id. at 751. The factors to be considered include the skill required, the source of the instrumentalities and tools used in creating the work, where the work was created, the duration of the relationship between the parties, whether the hiring party has the right to assign additional projects to the hired party, the method of payment, the extent of the hired party's discretion over when and how long to work, the hired party's role in hiring and paying assistants, whether the hiring party is in business and whether the work is part of the regular business of the hiring party, the provision of employee benefits, and the tax treatment of the hired party. Id. at 751-52. The Court did not specify any factors that should be weighed more heavily than others, but made clear that an "employee" under the Copyright Act is not limited to a formal, salaried employee.

[86] To qualify as a work made for hire under the second prong, the work must be specially ordered or commissioned for use as (1) a contribution to a collective work; (2) part of an audiovisual work; (3) a translation; (4) a supplementary work; (5) a compilation; (6) an instructional text; (7) a test; (8) answer material for a test; or (9) an atlas. 17 U.S.C. [[section]] 101 (1988) (definition of "work made for hire").

[87] 17 U.S.C. [[section]] 204(a) (1988). An exclusive license is considered a transfer of copyright, and therefore must be in writing. Although an exclusive license may be limited in time or place or scope, it nevertheless extends the benefits of copyright ownership with respect to the rights granted to the licensee for the duration of the license. The rights of a copyright owner may also be licensed on a nonexclusive basis to one or more licensees. The Copyright Act does not require nonexclusive licenses to be in writing.

[88] See 17 U.S.C. [[section]] 202 (1988).

[89] Id.

[90] See 17 U.S.C. [[section]] 201(d)(1) (1988) ("The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.").

[91] 17 U.S.C. [[section]] 101 (1988) (definition of "transfer of copyright ownership"). With the exception of transfers by operation of law, all transfers of copyright ownership must be in writing. 17 U.S.C. [[section]] 204(a) (1988) ("A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.").

[92] See 17 U.S.C. [[section]] 204(a) (1988).

[93] See discussion of the exclusive rights of a copyright owner infra pp. 34-44.

[94] See 17 U.S.C. [[section]] 201(d)(2) (1988); 17 U.S.C. [[section]] 101 (1988) (definition of "copyright owner").

[95] See 17 U.S.C. [[section]] 203(a) (1988). See also 17 U.S.C. [[section]] 304(c) (1988 & Supp. V 1993).

[96] 17 U.S.C. [[section]] 203(a)(5) (1988) ("Termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.").

[97] See 17 U.S.C. [[section]] 203(a) (1988).

[98] See 17 U.S.C. [[section]] 501(b) (1988) ("The legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it."). In certain circumstances, television broadcast stations and others are treated as legal or beneficial owners and may bring actions for infringement by cable systems and satellite carriers. See 17 U.S.C. [[section]] 501(c), (d), (e) (1988).

[99] However, like exclusive licenses, nonexclusive licenses are subject to termination after 35 years. See 17 U.S.C. [[section]][[section]] 203(a) (1988), 304(c) (1988 & Supp. V 1993).

[100] See, e.g., Harper Bros. v. Klaw, 232 F. 609 (S.D.N.Y. 1916) (license to dramatize "Ben Hur" in a play did not include right to produce a movie, but licensor enjoined from producing movie because licensee's right to produce a play would be harmed by licensor's production of a movie); L.C. Page & Co. v. Fox Film Corp., 83 F.2d 196 (2d Cir. 1936) (grant of exclusive "moving picture" rights embraced technical improvements in movies that might be developed during the term of the license, thus license held to cover "talkies"); Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir.), cert. denied, 393 U.S. 826 (1968) (1930 license of film rights in a play, when television was a known technology but its full impact not yet realized, included television rights; as experienced businessman, licensor had reason to know of new technology's potential and had burden of negotiating exception).

[101] See 17 U.S.C. [[section]] 302(a) (1988). The terms of protection for works created before January 1, 1978 (the effective date of the 1976 revisions to the Copyright Act) are set forth in Sections 303 and 304 of the Act. See 17 U.S.C. [[section]][[section]] 303, 304 (1988 & Supp. V 1993).

[102] 17 U.S.C. [[section]] 302(b) (1988).

[103] 17 U.S.C. [[section]] 302(c) (1988). The term for anonymous or pseudonymous works differs if the identity of one or more of the authors is revealed before the end of the term of protection. See id.

[104] 17 U.S.C. [[section]] 106 (1988 & Supp. V 1993). Section 106(A) grants additional rights for certain works of visual art in single copies or limited editions. The development of the NII does not raise unique issues with respect to those rights. See 17 U.S.C. [[section]] 106(A) (Supp. V 1993).

[105] See definitions of "copies" and "phonorecords" supra pp. 12-13.

[106] This Report uses the term "copy" or "copies" to refer to copies and phonorecords except in those instances where the distinction is relevant.

[107] One of the important aspects of defining a transaction as a "reproduction" rather than something else is that the potentially relevant exceptions to the reproduction right are substantially fewer in number than those that apply to certain other rights, particularly "distribution" and "public performance." A detailed discussion of fair use and other statutory exemptions appears in later sections of this Report.

[108] In some instances, the locus of the infringement and/or the identification of the infringing party or parties may require analysis not required with respect to "traditional" infringements, but this would not appear to be a sufficient reason to reject the application of "reproduction" analysis (coupled, where appropriate, with creative examination of locus/party issues, and, perhaps, clarification of the "contributory infringement" doctrine. Contributory liability for copyright infringement may be imposed on persons not themselves performing the proscribed acts, but either deriving direct benefits from them or providing equipment or materials that may only be used in furtherance of an infringement. See discussion of contributory infringement and vicarious liability infra pp. 73-82.

[109] For example, if a PTO employee transfers a file (such as a hearing announcement) to another person with an Internet account, copies will typically, at a minimum, be made (a) in the PTO's Internet server, (b) in the recipient's Internet server, and (c) in the recipient's microcomputer.

[110] See 17 U.S.C. [[section]] 106(2) (1988). "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.'" 17 U.S.C. [[section]] 101 (1988) (definition of "derivative work").

[111] 17 U.S.C. [[section]] 109(a) (1988).

[112] "Conventional" analysis would entitle the user to dispose of his or her copy by conventional means, such as giving it or selling it to a third party, so that the user had no copy at the end of the transaction. If, however, one characterizes as a "distribution" the transaction that begins with a digitized copy in a host's computer, and concludes with a digitized copy in the host's computer and a digitized copy in the user's computer, then the user would appear privileged to serve as a host for another user under the umbrella of the first sale doctrine.

[113] Furthermore, with respect to international distributions, Section 602 of the law makes unauthorized importations a violation of the distribution right. However, it also contains three exceptions to the right, and courts are divided as to whether the first sale doctrine limits the ability of copyright owners to enforce the importation right (as it does with respect to the domestic distribution right). See 17 U.S.C. [[section]] 602(a) (1988) (subsection does not apply to "(1) importation of copies or phonorecords under the authority or for the use of the Government of the United States or of any State or political subdivision of a State, but not including copies or phonorecords for use in schools, or copies of any audiovisual work imported for purposes other than archival use; (2) importation, for the private use of the importer and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States with respect to copies or phonorecords forming part of such person's personal baggage; or (3) importation by or for an organization operated for scholarly, educational, or religious purposes and not for private gain, with respect to no more than one copy of an audiovisual work solely for its archival purposes, and no more than five copies or phonorecords of any other work for its library lending or archival purposes, unless the importation of such copies or phonorecords is part of an activity consisting of systematic reproduction or distribution, engaged in by such organization in violation of the provisions of section 108(g)(2)"); compare BMG Music v. Perez, 952 F.2d 318 (9th Cir. 1991) (first sale doctrine does not apply to importation rights under Section 602) with Sebastian Int'l, Inc. v. Consumer Contacts (PTY) Ltd., 847 F.2d 1093 (3d Cir. 1988) (contra).

[114] The court elsewhere in its opinion uses "implicate" to mean "infringe."

[115] 839 F. Supp. 1552 (M.D. Fla. 1993).

[116] Id. at 1556.

[117] Owners of copyrights in computer programs and sound recordings have the right to control post-first-sale rentals of copies of their works; owners of copyrights in works fixed in other media do not. See 17 U.S.C. [[section]] 109 (1988 & Supp. V 1993). This inconsistency may be important in the NII context, particularly with respect to "multimedia works" that are not expressly or self-evidently in any particular category of copyrighted work (and whose treatment under various exemptions and special provisions may be unclear). See discussion of multimedia works supra pp. 24-27.

[118] See discussion of contributory infringement and vicarious liability infra pp. 73-82.

119 No. C 93-4262 CW, 1994 U.S. Dist. LEXIS 5266 (N.D. Cal. Mar. 28, 1994).

[120] Id. at *8-9.

[121] The court stated that Sega had established that unauthorized copies of its games are made when they are uploaded to the bulletin board and when they are downloaded. Id. at *17.

[122] See 17 U.S.C. [[section]] 106(4) (1988).

[123] "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." 17 U.S.C. [[section]] 101 (1988) (definition of "perform").

[124] 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.

17 U.S.C. [[section]] 101 (1988) (definition of "publicly").

[125] See 17 U.S.C. [[section]] 110 (1988).

[126] See, e.g., Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984) (video store operator liable for public performance violation where he rented tapes to customers and provided semi-private screening rooms where the tapes could be viewed); Columbia Pictures Indus. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986) (same result where customers also rented rooms for viewing); and On Command Video Corp. v. Columbia Pictures Indus., 777 F. Supp. 787 (N.D. Cal. 1991) (infringement found where hotel guests in rooms selected tapes to be played on remote control console in hotel basement with signal then sent to rooms).

[127] 17 U.S.C. [[section]] 101 (1988 & Supp. V 1993) (definition of "display").

[128] See discussion of Playboy case supra pp. 40-41.

[129] Of course, to the extent that such lists or menus are protectible under the Copyright Act, the authors of such lists would have the exclusive right to publicly display them.

[130] Although sometimes referred to as "rights" of the users of copyrighted works, "fair use" and other exemptions from copyright infringement are actually limitations on the rights of the copyright owners. Users are not granted any affirmative "rights" under the Copyright Act; rather, copyright owners' rights are limited by certain exemptions from user liability. It has been argued, however, that the Copyright Act would be unconstitutional if such limitations did not exist, as they provide some alleviation of First Amendment and other concerns.

[131] See 17 U.S.C. [[section]] 107 (1988 & Supp. V 1993). The judicially created doctrine, although now codified in the Copyright Act, has been described as "so flexible as virtually to defy definition." See Time Inc. v. Bernard Geis Assoc., 293 F. Supp. 130, 144 (S.D.N.Y. 1968).

[132] As an affirmative defense, the burdens of persuasion and coming forward with evidence both must be carried by defendants in order to avoid liability, i.e., a copyright owner need not prove an accused use not fair, but a defendant must prove its fairness.

133 In the recent case of Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164 (1994), the Supreme Court expressly accepted the proposition that such "transformative" uses are more favored in fair use analyses than uses that amount to little more than verbatim copying.

[134] 17 U.S.C. [[section]] 107 (1988 & Supp. V 1993).

[135] Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 561 (1985).

[136] Justice Story stated that courts should "look to the nature and the objects of the selections made, the quantity and value of the material used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work." Folsom v. Marsh, 9. F. Cas. 342, 348 (C.C.D. Mass. 1841)(No. 4,901).

[137] See Sony, supra note 7, at 456 (videotaping by individuals at home of off-the-air television broadcast programming for purpose of "time-shifting"--as distinguished from "librarying"--held fair use).

[138] See Stewart v. Abend, 495 U.S. 207, 216 (1990) (theatrical and television distribution of motion picture over objection of owner of renewal term in underlying short story held infringing); Harper & Row, supra note 135, at 569 ("Nation" magazine's scoop of "Time" magazine's first serial rights in President Ford's memoirs held infringing, notwithstanding newsworthiness of the account of the Nixon pardon set out therein).

[139] See Campbell, supra note 133, at 1177-79 (parodic lyrics of popular song not per se unfair by virtue of commercial purpose of parody; case remanded for further factual determination).

[140] Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983).

[141] Encyclopaedia Britannica Educational Corp. v. Crooks, 558 F. Supp. 1247 (W.D.N.Y. 1983).

[142] Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).

[143] See House Report at 68-74, reprinted in 1976 U.S.C.C.A.N. 5681-88. The guidelines generally permit the copying, for classroom purposes, of short extracts of works, provided that the copying is spontaneously done or requested by the instructor (and the copies are neither used nor re-made repeatedly over time).

[144] See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1376 (2d Cir. 1993).

[145] See New Era Publications Int'l, ApS v. Henry Holt & Co., 684 F. Supp. 808 (S.D.N.Y. 1988), cert. denied, 493 U.S. 1094 (1990). The 1992 amendment to Section 107, clarifying that the "fact that a work is unpublished shall not itself bar a finding of fair use if such finding is based upon consideration of all the above factors," was intended, however, to "overrule the overly restrictive language of Salinger [Salinger v. Random House, 811 F.2d 90 (2d Cir.), cert. denied, 484 U.S. 890 (1987)] and New Era with respect to the use of unpublished materials . . . ." See S. Rep. No. 102-141, 102d Cong., 1st Sess., at 5. According to some members of Congress, those two cases "threatened to establish a virtual per se rule against the fair use of any published materials, such as letters or diaries." See 138 Cong. Rec. S17,358 (daily ed. Oct. 7, 1992) (Statement by Senators Simon, Leahy, Kennedy, Grassley, Metzenbaum, and Kohl).

[146] See National Rifle Ass'n v. Handgun Control Fed'n, 15 F.3d 559, 562 (6th Cir. 1994).

[147] See New Era Publications Int'l, ApS v. Carol Publishing Group, 904 F.2d 152, 157 (2d Cir. 1990).

[148] See Harper & Row, supra note 135, at 569 (taking of some 300 words held infringing).

[149] 3 Melville B. & David Nimmer, Nimmer on Copyright [[section]] 13.05[A] (1993) (hereinafter Nimmer on Copyright).

[150] See Stewart v. Abend, supra note 138, at 238.

[151] See Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir.), cert. denied, 484 U.S. 890 (1987) (protecting potential market for author's letters notwithstanding his profound disinclination ever to publish them).

[152] See Sony, supra note 7, at 443-47.

[153] See Harper & Row, supra note 135, at 562.

[154] See Stewart, supra note 138, at 238.

[155] See Campbell, supra note 133, at 1173.

[156] The inability of our common law system always to provide guidance covering every possible permutation of behavior is not necessarily a weakness. By permitting courts to reach decisions on a case-by-case basis, our system permits both necessary gap-filling and jurisprudential evolution without having to return to Congress for additional elaboration on a frequent basis.

[157] See supra notes 114-18 and accompanying text (discussing Playboy decision).

[158] Playboy, 839 F. Supp. at 1558.

159 Supra note 119.

[160] Id. at *16-17.

[161] Id. at *22.

162 802 F. Supp. 1 (S.D.N.Y. 1992).

[163] See T.B. Harms Co. v. Jem Records, Inc., 655 F. Supp. 1575, 1582 (D.N.J. 1987); Columbia Pictures Indus., Inc. v. Aveco, Inc., 612 F. Supp. 315, 319-20 (M.D. Pa. 1985), aff'd, 800 F.2d 59 (3d Cir. 1986).

[164] 17 U.S.C. [[section]] 109(a) (1988).

[165] The reproduction right is not affected by the first sale doctrine; the owner of a particular copy of a copyrighted work may distribute it freely, but may not reproduce it.

[166] See discussion of the distribution right supra pp. 38-42.

[167] See 17 U.S.C. [[section]] 109(b)(1)(A) (Supp. V 1993). The prohibition with respect to record rental does not apply to nonprofit libraries or nonprofit educational institutions for nonprofit purposes. Id. Nonprofit libraries may also lend a computer program for nonprofit purposes if each copy has a copyright warning affixed to the package. 17 U.S.C. [[section]] 109(b)(2)(A) (Supp. V 1993). The prohibition with respect to computer program rental does not apply to a computer program "which is embodied in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product" or "a computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes." 17 U.S.C. [[section]] 109(b)(1)(B) (Supp. V 1993).

[168] Kenneth R. Corsello, Note, The Computer Software Rental Amendments Act of 1990: Another Bend in the First Sale Doctrine, 41 Cath. U. L. Rev. 177, 192 (1991).

[169] See H.R. Rep. No. 98-987, 98th Cong., 2d Sess. 2 (1984), reprinted in 1984 U.S.C.C.A.N. 2898, 2899 (justifying the Record Rental Amendment of 1984).

[170] 17 U.S.C. [[section]] 109(c) (1988).

[171] Section 109(e) reversed the decision in Red Baron-Franklin Park, Inc. v. Taito Corp., 883 F.2d 275 (4th Cir. 1989), cert. denied, 110 S.Ct. 869 (1990), which held that video games could not be operated in an arcade without the permission of the copyright owner because such operation entailed violation of the copyright owner's exclusive rights to perform and display the work publicly. Section 109(e), however, does not allow the public display or performance of any other work of authorship embodied in the audiovisual game if the copyright owner of the game is not also the copyright owner of the other work. See 17 U.S.C. [[section]] 109(e) (Supp. V 1993).

[172] Hereinafter, the term "library" will be used to refer to a library or archives, or any of its employees acting within the scope of their employment.

[173] See 17 U.S.C. [[section]] 108(a) (1988). Section 108 limitations are additional exemptions provided specifically for libraries. Libraries, of course, may also take advantage of the fair use or any other exemptions of the Copyright Act. See 17 U.S.C. [[section]] 108(f)(4) (1988).

[174] See 17 U.S.C. [[section]] 108(a) (1988).

[175] See 17 U.S.C. [[section]] 108(b) (1988).

[176] House Report at 75, reprinted in 1976 U.S.C.C.A.N. 5689.

[177] 17 U.S.C. [[section]] 108(c) (1988); see House Report at 75, reprinted in 1976 U.S.C.C.A.N. 5689.

[178] 17 U.S.C. [[section]] 108(d) (1988). First, the copy or phonorecord must become the property of the user, and the library or archives must have no notice that the copy or phonorecord will be used for any purpose other than private study, scholarship, or research. Second, the library or archives must prominently display a warning of copyright at the place where orders are accepted and on its order form. Id.

[179] 17 U.S.C. [[section]] 108(e) (1988). First, the copy or phonorecord must become the property of the user, and the library or archives must have no notice that the copy or phonorecord will be used for any purpose other than private study, scholarship, or research. Second, the library or archives must prominently display a warning of copyright at the place where orders are accepted and on its order form. Id.

[180] See 17 U.S.C. [[section]] 108(f)(3) (1988).

[181] 17 U.S.C. [[section]] 108(g)(2) (1988).

[182] See House Report at 68-79, reprinted in 1976 U.S.C.C.A.N. 5659, 5681-92; H.R. Conf. Rep. No. 1733, 94th Cong., 2d Sess. 72-73 (1976), reprinted in 1976 U.S.C.C.A.N. 5810, 5813-14 (hereinafter "Conference Report").

[183] Id. at 72, reprinted in 1976 U.S.C.C.A.N. 5813.

[184] See 17 U.S.C. [[section]] 108(g) (1988).

[185] 17 U.S.C. [[section]] 108(h) (1988).

[186] See discussion of the scope of the exclusive right to reproduce a work supra pp. 35-37.

[187] See 17 U.S.C. [[section]] 110(1) (1988).

[188] See 17 U.S.C. [[section]] 110(2) (1988).

[189] Section 117 of the Copyright Act provides:

Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:

(1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, 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.

17 U.S.C. [[section]] 117 (1988 & Supp. V 1993). Any identical copies made in accordance with Section 117 "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 made may be transferred only with the authorization of the owner of the copyright in the original program. Id.

[190] See 17 U.S.C. [[section]] 110(3) (1988).

[191] See 17 U.S.C. [[section]] 110(6) (1988).

[192] See 17 U.S.C. [[section]] 110(7) (1988).

[193] See 17 U.S.C. [[section]] 110(8), (9) (1988).

[194] See 17 U.S.C. [[section]] 110(10) (1988).

[195] See 17 U.S.C. [[section]] 110(5) (1988).

[196] See, e.g., the decision in Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975), which was essentially codified in Section 110(5) (owner of a small food establishment exempt from infringement liability for the performance of copyrighted works via a radio and four small ceiling speakers). See also Sailor Music v. The Gap Stores, Inc., 516 F. Supp. 923 (S.D.N.Y.), aff'd, 668 F.2d 84 (2d Cir. 1981), cert. denied, 456 U.S. 945 (1982); Rodgers v. Eighty Four Lumber Co., 617 F. Supp. 1021 (W.D.Pa. 1985); Springsteen v. Plaza Roller Dome, Inc., 602 F. Supp. 1113 (M.D.N.C. 1985).

[197] See e.g., Cass County Music Co. v. Muedini, 1993 U.S. Dist. LEXIS 4562 (E.D. Wisc. 1993) ("To say that [the defendant] is liable because it has nine speakers and the shops in [another case] had two (or four in Aiken) would be silly," taking note of the multiple speakers in many home systems today).

[198] See 17 U.S.C. [[section]] 112(a) (1988). This limitation of the copyright owner's reproduction right is applicable only if:

(1) the copy or phonorecord is retained and used solely by the transmitting organization that made it, and no further copies or phonorecords are reproduced from it; and

(2) the copy or phonorecord is used solely for the transmitting organization's own transmissions within its local service area, or for purposes of archival preservation or security; and

(3) unless preserved exclusively for archival purposes, the copy or phonorecord is destroyed within six months from the date the transmission program was first transmitted to the public. Id.

[199] See 17 U.S.C. [[section]][[section]] 111, 119 (1988 & Supp. V 1993). These provisions are referred to as "compulsory licenses" because under such provisions, copyright owners are compelled to grant the licenses. No license agreements are signed and the terms of such licenses are set forth in the statute; the copyright owner cannot object to the use of the work and must be satisfied with the license fees collected under the statute, which are distributed among all of the affected copyright owners by arbitrators impaneled by the Librarian of Congress.

[200] See 17 U.S.C. [[section]] 111(f) (1988).

[201] See 17 U.S.C. [[section]] 116 (Supp. V 1993). This compulsory license may only be invoked if private negotiations fail to produce a consensual license.

[202] See 17 U.S.C. [[section]] 118 (1988 & Supp. V 1993).

[203] See 17 U.S.C. [[section]] 115 (1988).

[204] See 17 U.S.C. [[section]] 501(a) (Supp. V 1993). Anyone who "trespasses into [the copyright owner's] exclusive domain by using or authorizing the use of the copyrighted work in one of the five ways set forth in the statute" is an infringer of the copyright. Sony, supra note 7, at 433. For purposes of this discussion on infringement, the lack of authorization by the copyright owner and the absence of a valid defense are presumed.

[205] See discussion of the scope of the exclusive rights supra at pp. 34-64. For instance, activities such as loading a work into a computer, scanning a printed work into a digital file, uploading or downloading a work between a user's computer and a BBS or other server, and transmitting a work from one computer to another may be infringements (in those cases, of the reproduction right). See, e.g., MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (the turning on of the computer, thereby causing the operating system to be copied into RAM, constituted an infringing reproduction of the copyrighted software); Advanced Computer Services v. MAI Systems Corp., 845 F. Supp. 356 (E.D. Va. 1994) (loading software into computer's random access memory constituted infringing reproduction); see also 2 Nimmer on Copyright [[section]] 8.08 at 8-103 (1993) ("The input of a work into a computer results in the making of a copy, and hence . . . such unauthorized input infringes the copyright owner's reproduction right.").

[206] The innocence or willfulness of the infringing activity may be relevant with regard to the award of statutory damages. See 17 U.S.C. [[section]] 504(c) (1988).

[207] See 17 U.S.C. [[section]] 106 (1988 & Supp. V 1993).

[208] See House Report at 61, reprinted in 1976 U.S.C.C.A.N. 5674. Further evidence of the intent of Congress to make even a single act of unauthorized reproduction an infringement is found in specific exemptions created for certain single-copy uses. See, e.g., 17 U.S.C. [[section]][[section]] 108(a), 108(f)(2), 112(a) (1988); see also Texaco, supra note 162, at 17.

[209] Various remedies are available to copyright owners in an infringement action. In a civil case, a copyright owner may seek a preliminary or permanent injunction to prevent or restrain infringement. See 17 U.S.C. [[section]] 502 (1988). Courts may also order the impounding of all copies or phonorecords at any time an action is pending. See 17 U.S.C. [[section]] 503(a) (1988). As part of a final judgment, the court may order the destruction (or any other "reasonable disposition") of the infringing copies or phonorecords. See 17 U.S.C. [[section]]503(b) (1988). Actual damages may be awarded in the amount of the copyright owner's losses plus any profits of the infringer attributable to the infringement (that are not taken into account in the calculation of the losses). See 17 U.S.C. [[section]] 504(b) (1988). Or, at the election of the copyright owner, statutory damages may be awarded in the amount of $500 to $20,000 per copyrighted work infringed. See 17 U.S.C. [[section]] 504(c)(1) (1988). The court may reduce the statutory damage award (to a minimum of $200) if it finds the infringement was "innocent" (i.e., the defendant was not aware of and had no reason to believe that its acts constituted an infringement of copyright) or increase the award (to a maximum of $100,000) if it finds the infringement was committed willfully. See 17 U.S.C. [[section]] 504(c)(2) (1988). Criminal sanctions may also be levied against infringers if the infringement was willful and for purposes of commercial advantage or private financial gain. See 17 U.S.C. [[section]] 506 (a), (b) (1988).

[210] See, e.g., Rockford Map Publishers, Inc. v. Directory Serv. Co., 224 U.S.P.Q. 851 (C.D. Ill. 1984), aff'd, 768 F.2d 145 (7th Cir. 1985), cert. denied, 474 U.S. 1061 (1986); Sub-Contractors Register, Inc. v. McGovern's Contractors & Builders Manual, Inc., 69 F. Supp. 507, 509 (S.D.N.Y. 1946). It is common for publishers of directories and other compilations to deliberately insert mistakes into the work (such as periodically adding a fictitious name, address and phone number in a telephone directory) to detect and help establish copying. See 2 Howard B. Abrams, The Law of Copyright [[section]] 14.02[B][3][c], at 14-19 to 20 (1993).

[211] This should be implied in the requirement that there be copying of the copyrighted work. Ideas and facts, of course, are not copyrighted. In the case of compilations, such as databases, if enough facts are copied, the copyrighted expression (the selection, arrangement or coordination of the facts) may be copied and infringement may be found. See CONTU Final Report, supra note 8, at 42 ("The use of one item retrieved from such a work--be it an address, a chemical formula, or a citation to an article--would not . . . conceivably constitute infringement of copyright. The retrieval and reduplication of any substantial portion of a data base, whether or not the individual data are in the public domain, would likely constitute a duplication of the copyrighted element of a data base and would be an infringement.").

[212] See Donald v. Zack Meyer's T.V. Sales & Service, 426 F.2d 1027, 1030 (5th Cir. 1970) ("paraphrasing is equivalent to outright copying"), cert. denied, 400 U.S. 992 (1971); Davis v. E.I. DuPont de Nemours & Co., 240 F. Supp. 612, 621 (S.D.N.Y. 1965) ("paraphrasing is tantamount to copying in copyright law"); see generally 3 Nimmer on Copyright [[section]] 13.03[A], at 13-28 to 13-58 (1993). Nimmer identifies two bases upon which courts impose liability for less than 100 percent verbatim copying: (1) "fragmented literal similarity" (where words, lines or paragraphs are copied virtually word-for-word, although not necessarily verbatim) and (2) "comprehensive nonliteral similarity" (where the "fundamental essence or structure" of a work is copied); see also II Paul Goldstein, Copyright [[section]] 7.2.1, at 13-17 (1989). Goldstein identifies three types of similarity: (1) where the infringing work "tracks" the original work "in every detail," (2) "striking similarity" (where a brief portion of both works is "so idiosyncratic in its treatment as to preclude coincidence,") and (3) similarities that "lie beneath the surface" of the works ("[i]ncident and characterization in literature, composition and form in art, and rhythm, harmony and musical phrases in musical composition"). Id. at 13 (citations omitted).

[213] For a detailed analysis of the various tests that have been used, see 3 Nimmer on Copyright [[section]] 13.03[A] at 13-28 to 13-58 (1993).

[214] See Nichols v. Universal Pictures, Corp., 45 F.2d 119, 121 (2d Cir. 1930).

[215] See Peter Pan Fabrics Inc. v. Martin Weiner, Corp., 274 F.2d 487 (2d Cir. 1960).

[216] See Zechariah Chaffee, Reflections on the Law of Copyright: I, 45 Columbia Law Review 503, 513 (1945).

[217] See Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 908-09 (3d Cir.), cert. denied, 423 U.S. 863 (1975) (subtracting all but the "stick figures" from chart as non-protectible subject matter); Alexander v. Haley, 460 F. Supp 40, 46 (S.D.N.Y. 1978) (finding "alleged infringements display no similarity at all in terms of expression or language, but show at most some similarity of theme or setting. These items, the skeleton of creative work rather than the flesh, are not protected by the copyright laws.").

[218] See 429 F.2d 1106 (9th Cir. 1970).

[219] See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977); McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).

[220] See, e.g., Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir. 1976); Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir.), cert. denied, 459 U.S. 880 (1982); Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 877 (1987).

221 562 F.2d 1157 (9th Cir. 1977).

[222] See Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991).

[223] See Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir. 1992).

[224] Krofft, supra note 221, at 1164.

225 862 F.2d 204 (9th Cir. 1988).

226 982 F.2d 693 (2d Cir. 1992); see Sega Enters. Ltd. v. Accolade, Inc., (9th Cir. 1993); Autoskill Inc. v. National Educational Support Systems, Inc. (10th Cir. 1993).

227 154 F.2d 464 (2d Cir. 1946).

[228] See, e.g., Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960); Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021 (2d Cir. 1966); Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982).

[229] Ideal Toy Corp. at 1023 n.2

[230] 905 F.2d 731 (4th Cir. 1990).

[231] See Aliotti v. R. Dakin & Co., 831 F.2d 898, 902 (9th Cir. 1987) (holding that perceptions of children must be considered in substantial similarity analysis because they are intended market for product); Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 619 (7th Cir.), cert. denied, 459 U.S. 880 (1982) (holding that "[v]ideo games, unlike an artist's painting, . . . appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression").

[232] Dawson, supra note 230, at 736.

[233] An infringer is anyone who violates "any of the exclusive rights" of the copyright owner. 17 U.S.C. [[section]] 501(a) (Supp. V 1993). One of the exclusive rights is "to prepare derivative works based upon the copyrighted work." 17 U.S.C. [[section]] 106(2) (1988). A "derivative work" is a work "based upon one or more preexisting works, such as a . . . condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. [[section]] 101 (1988) (definition of "derivative work"). The Ninth Circuit has suggested that "a work is not derivative unless it has been substantially copied from the prior work." See Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984) (emphasis added). It is unclear, however, whether the court is suggesting that a derivative work must be substantially similar to the prior work or that it simply must incorporate in some form a portion of the prior work, as noted in the legislative history. See House Report at 62, reprinted in 1976 U.S.C.C.A.N. 5675. The court noted that there is "little available authority" on infringement of the derivative works right. See id.

[234] 17 U.S.C. [[section]] 602(a) (1988).

[235] House Report at 169, reprinted in 1976 U.S.C.C.A.N. 5785.

[236] U.S. copyright law differs from trademark law in this respect. Trademark law does not prohibit the parallel importation into the United States of genuine trademarked products, i.e., products legally produced overseas for foreign distribution and imported into the United States by other than the authorized U.S. manufacturer, distributor or licensee. The quality or specifications of the product produced for foreign distribution may differ from those of the product manufactured for distribution in the U.S. market. Additionally, warranties offered by the U.S. manufacturer, distributor or licensee may not apply. However, the sale of the "gray market" trademarked product in the United States does not generally constitute trademark infringement or unfair competition.

[237] See discussion of transmissions and the distribution right supra pp. 38-42.

[238] The Customs Service would be ill-equipped to deal with such infringing transmissions if they did fall within Section 602.

[239] See House Report at 61, reprinted in 1976 U.S.C.C.A.N. 5674. There must be a direct infringement upon which contributory infringement or vicarious liability to be based.

[240] The concepts of contributory and vicarious liability are well-established in tort law. Contributory infringement of intellectual property rights was first codified in patent law. See 35 U.S.C. [[section]] 271(c) (1988).

[241] Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963) (holding that company that leased floor space to phonograph record department was liable for record department's sales of "bootleg" records despite absence of actual knowledge of infringement, because of company's beneficial relationship to the sales).

[242] See, e.g., Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36 F.2d 354 (7th Cir. 1929); Famous Music Corp. v. Bay State Harness Horse Racing & Breeding Ass'n, Inc., 554 F.2d 1213 (1st Cir. 1977); KECA Music, Inc. v. Dingus McGee's Co., 432 F. Supp. 72 (W.D. Mo. 1977). Indeed, the "cases are legion which hold the dance hall proprietor liable for the infringement of copyright resulting from the performance of a musical composition by a band or orchestra whose activities provide the proprietor with a source of customers and enhanced income. He is liable whether the bandleader is considered, as a technical matter, an employee or an independent contractor, and whether or not the proprietor has knowledge of the compositions to be played or any control over their selection." Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307(2d Cir. 1963)(citing some 10 cases).

[243] Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971) ( holding management firm's authorization of clients' performances of copyrighted compositions to be contributory infringement).

[244] A library is exempted from liability for the unsupervised use of reproducing equipment located on its premises provided that the equipment displays a copyright law notice. 17 U.S.C. [[section]] 108(f)(1). This exemption does not apply to the user of such equipment, see 17 U.S.C. [[section]] 108(f)(2), and no other provider of equipment enjoys any statutory immunity.

[245] See Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 366 (9th Cir. 1947) (rejecting defendant's argument that as an employee, he was not responsible for his employer's decision to use infringing material, in light of defendant's personal selection and appropriation of the protected material).

[246] See Boz Scaggs Music v. KND Corp., 491 F. Supp. 908, 913 (D. Conn. 1980) (finding defendant liable based on own admission of responsibility and control over radio performances of protected works).

247 Supra note 115.

248 Supra note 119.

[249] Sega, supra note 119, at *18. The court found a prima facie case for both direct infringement, based on the BBS operator's permitting of the uploading of the copyrighted games onto the BBS, and contributory infringement, based on the operator's "role in copying" the games. Id. at *17-18.

[250] Sega, supra note 119, at *7. A class action against another BBS operator was recently filed which seems to allege both direct and contributory infringement. See Frank Music Corp. v. Compuserve Inc., Civil Action No. 93 Civ. 8153 (JFK) (S.D.N.Y.) (complaint filed Nov. 29, 1993). The Complaint alleges that defendant, by providing access to its BBS by subscribers, engaged in: (1) "permitting, facilitating and participating in the recording of performances of the [Plaintiffs' works] into, and storing such recordings in, Compuserve's computer database by permitting and enabling its paying subscribers to upload such performances thereto"; (2) "maintaining a storage of unauthorized recordings of [the Plaintiffs' works] (uploaded by its subscribers) in and as part of Compuserve's computer database"; and (3) "permitting, facilitating and participating in the recording (i.e. re-recording) of the performances of [the Plaintiffs' works] (theretofore stored in its computer database) by permitting and enabling its paying subscribers to download such recorded performances therefrom." Complaint at 6-7. In addition, the Plaintiffs allege that Compuserve had "control over the nature and content of materials stored in its Bulletin Board and downloaded therefrom"; that Compuserve "had actual knowledge of, or in the exercise of reasonable diligence could have determined, the nature and content of materials stored in its Bulletin Board and downloaded therefrom"; and that Compuserve "had actual notice, or in the exercise of reasonable diligence could have determined, that recordings of [the Plaintiffs' works] were uploaded (recorded) to, stored in, and downloaded (re-recorded) from its computer database." See Complaint at 7.

[251] Defamation cases may be distinguished, however, based on the knowledge requirement, which is absent in copyright infringement cases.

[252] 800 F. Supp. 928 (E.D. Wash. 1992).

[253] Id. at 931. The state common law in this case holds a person who "republishes" defamatory statements made by another liable. Given the broadness with which the jurisdiction had interpreted republication, the court assumed, for purposes of disposition of the affiliate defendants' motion for summary judgment that the affiliates did republish the defamation.

[254] Id.

255 Id. at 931-32 (quoting Dworkin v. Hustler Magazine, Inc., 634 F. Supp. 727, 729 (D. Wyo. 1986) (quoting Restatement (Second) of Torts [[section]] 581).

[256] Id. at 932.

257 776 F. Supp. 135 (S.D.N.Y. 1991).

[258] Id. at 141.

[259] 464 U.S. 417 (1984).

[260] Id. at 440.

[261] Id. at 442. The Court cited two principles of patent law, but used only one as the appropriate analogy for copyright law:

The Copyright Act does not expressly render anyone liable for infringement committed by another. In contrast, the Patent Act expressly brands anyone who "actively induces infringement of a patent" as an infringer, 35 U.S.C. [[section]] 271(b), and further imposes liability on certain individuals labeled "contributory" infringers, [[section]] 271(c).

Id. at 434-35. Section 271(b) of the Patent Act provides, "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. [[section]] 271(b) (1988). Section 271(c) provides, "Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer." 35 U.S.C. [[section]] 271(c) (1988).

[262] Id. at 442. "In order to resolve that question, we need not explore all the different potential uses of the machine and determine whether or not they would constitute infringement. Rather, we need only consider whether on the basis of the facts as found by the District Court a significant number of them would be noninfringing." Id. The Court declined to "give precise content" to the issue of how much use is needed to rise to the level of "commercially significant." See id.

[263] Id. at 446.

[264] Of the four dissenting Justices, two remain on the Court today (now-Chief Justice Rehnquist and Justice Blackmun, who recently announced his impending retirement from the Court). Two of the Justices in the majority remain on the Court (Justice Stevens, who delivered the opinion of the Court, and Justice O'Connor).

[265] See Sony, supra note 7, at 490 n41 (Blackmun, J., dissenting) ("The doctrine of contributory patent infringement has been the subject of attention by the courts and by Congress . . . and has been codified since 1952, . . . but was never mentioned during the copyright law revision process as having any relevance to contributory copyright infringement."); see also id. at 491 (disagreeing that "this technical judge-made doctrine of patent law, based in part on considerations irrelevant to the field of copyright . . . should be imported wholesale into copyright law. Despite their common constitutional source, . . . patent and copyright protections have not developed in a parallel fashion, and this Court in copyright cases in the past has borrowed patent concepts only sparingly.")

[266] See Sony, supra note 7, at 491. Examples of such products would be typewriters, computers, cameras, and fax machines.

[267] Sony, supra note 7, at 491-92.

[268] See, e.g., Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988) (seller of computer programs that defeat anti-copying protection is not liable as contributory infringer because programs can be used to enable user to make legal archival copies of copyrighted computer programs under Section 117, which the court found to be a substantial noninfringing use). But see RCA Records v. All-Fast Sys., Inc., 594 F. Supp. 335 (S.D.N.Y. 1984) (operator is liable for contributory infringement based on its provision of sound recording facilities where public could make unauthorized phonorecords).

[269] Supra note 119.

[270] See Sega, supra note 119, at *13.

[271] See Sega, supra note 119, at *19. The court found that there was "no need to make archival copies of [Sega's] ROM game cartridges" because the "ROM cartridge format is not susceptible to breakdown" and Sega would replace defective cartridges. See id. at *13. The court also found that it was unlikely that customers would buy the copiers, at a cost of $350, for the purpose of backing up Sega's video game programs, which sold for $30 to $70 each. Id.

[272] "Neighboring rights" are discussed infra pp. 89, 92.

[273] See Stephen E. Siwek & Harold W. Furchtgott-Roth, International Intellectual Property Alliance, Copyright Industries in the U.S. Economy (1993).

[274] See generally Stephen M. Stewart, International Copyright and Neighbouring Rights, (2d ed. 1989) (hereinafter "Stewart"). Stewart presents a summary of international copyright principles and summaries of the copyright laws of a number of countries. Stewart also identifies socialist copyright laws as a category. However, since the demise of the USSR, the former socialist countries have moved rapidly to enact Western-type copyright legislation. The recently enacted copyright law of the People's Republic of China also follows the civil law model.

[275] Stewart at 6.

[276] There are 143 members of the Convention Establishing the World Intellectual Property Organization (WIPO) as of January 1, 1994. Done at Stockholm on July 14, 1967; entered into force for the United States on August 25, 1970. 21 UST 1749; TIAS 6932; 828 UNTS 3.

[277] Berne Convention (with Appendix) for the Protection of Literary and Artistic Works of September 9, 1886, completed at Paris on May 4, 1896, revised at Berlin on November 13, 1908, completed at Berne on March 20, 1914, revised at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on July 14, 1967, and at Paris on July 24, 1971, amended at Paris on July 24, 1979. Done at Paris on July 24, 1971; entered into force for the United States on March 1, 1989. There are 105 members of the Convention.

[278] International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations. There are 45 members of the convention, but the United States is not a member. The Rome Convention is jointly administered by WIPO, the International Labor Organization (ILO) and the United Nations Educational, Scientific and Cultural Organization (UNESCO).

[279] Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms. Done at Geneva on October 29, 1971; entered into force on April 18, 1973; for the United States on March 10, 1974. 25 UST 309; TIAS 7808; 888 UNTS 67. There are 50 members of the Convention as of January 1, 1994.

[280] UNESCO is the United Nations Educational, Scientific and Cultural Organization.

[281] Universal Copyright Convention, as revised, with two protocols annexed thereto. Done at Paris on July 24, 1971, entered into force on July 10, 1974. 25 UST 1341; TIAS 7868.

[282] Article 5 provides:

(1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.

(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

(3) Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors.

(4) The country of origin shall be considered to be:

(a) in the case of works first published in a country of the Union, that country; in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection;

(b) in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country;

(c) in the case of unpublished works or of works first published in a country outside the Union, without simultaneous publication in a country of the Union, the country of the Union of which the author is a national, provided that:

(i) when these are cinematographic works the maker of which has his headquarters or his habitual residence in a country of the Union, the country of origin shall be that country, and

(ii) when these are works of architecture erected in a country of the Union or other artistic works incorporated in a building or other structure located in a country of the Union, the country of origin shall be that country.

[283] See World Intellectual Property Organization, BCP/CE/III/3, Report of the Committee of Experts on a Possible Protocol to the Berne Convention, Third Session, June 21 to 25, 1993, 20-21 (June 25, 1993).

[284] Id. at 21

[285] See Trade-Related Aspects of Intellectual Property, Final Act Embodying the Results of the Uruguay Round of the Multilateral Trade Negotiations, Office of the U.S. Trade Representative, Dec. 15, 1993.

[286] Id.

[287] Article 3 (National Treatment) provides:

1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention and paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade-Related Aspects of Intellectual Property Rights.

2. Members may avail themselves of the exceptions permitted under paragraph 1 above in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.

[288] Article 4 (Most-Favoured-Nation Treatment) provides:

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member:

(a) deriving from international agreements on judicial assistance and law enforcement of a general nature and not particularly confined to the protection of intellectual property;

(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention authorizing that the treatment accorded be a function not of national treatment but of the treatment accorded in another country;

(c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;

(d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the Agreement Establishing the MTO, provided that such agreements are notified to the Council for Trade-Related Aspects of Intellectual Property Rights and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.

[289] See North American Free Trade Agreement (hereinafter NAFTA), H.R. Doc. No. 159, 103d Cong., 1st Sess. (1993); 32 I.L.M. 289-456, 605-799 (1993).

[290] Article 6bis provides:

(1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

(2) The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained.

(3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.

[291] See "Exposure '94: A proposal for the new rule of intellectual property for multimedia," Institute of Intellectual Property 18 (Feb. 1994).

[292] See 35 U.S.C. [[section]] 101 (1988). This language has been interpreted broadly by the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), wherein the Court held:

The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the progress of science and the useful arts." Congress employed broad language in drafting Section 101 precisely because such inventions are often unforeseeable.

Judicial precedent does exist denying patentability under Section 101 for claims directed to laws of nature and methods of doing business. See Donald S. Chisum, Patents [[section]] 1.01 (1992).

[293] See discussion of 35 U.S.C. [[section]]102 infra notes 297-99 and accompanying text.

[294] To be eligible for patent protection, an invention must be either a process, an article of manufacture, a composition or a machine. Discoveries, laws of nature, mathematical algorithms, methods of doing business and the like are not eligible for patent protection. See 35 U.S.C. [[section]] 101 (1988).

295 See discussion of 35 U.S.C. [[section]] 103 infra note 300 and accompanying text.

296 See 35 U.S.C. [[section]] 112 (1988).

[297] Specifically, "prior art" is defined in 35 U.S.C. [[section]] 102 (1988):

A person shall be entitled to a patent unless--

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or . . . .

* * *

(f) he did not himself invent the subject matter sought to be patented, or

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

[298] Under U.S. law, an inventor has a one-year "grace period" to file a patent application. This grace period is invoked by inventors to avoid being barred from obtaining a U.S. patent when the invention has been publicly disclosed by another during the one year period before the inventor has filed a patent application. This grace period is not available in all countries. As a result, applicants must exercise care before disclosing their invention to avoid forfeiting patent rights in countries without a one year grace period.

[299] For example, if a patent application is filed after an article is published in a technical journal which completely discloses the invention claimed in the patent application, the application will be rejected by the PTO on the grounds that the claimed invention lacks novelty.

[300] Section 103 sets forth the nonobviousness requirement, in pertinent part, as follows:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

35 U.S.C. [[section]] 103 (1988).

[301] The definition of prior art information in Section 102 also governs what information can be used in Section 103 non-obviousness determinations.

[302] The specific requirements of these patent-defeating publications and public disclosures are set forth in detail in 35 U.S.C. [[section]] 102, discussed infra pp. 99-100.

[303] See 35 U.S.C. [[section]] 154 (1988) ("Every patent shall contain . . . a grant to the patentee . . . for the term of seventeen years . . . of the right to exclude others from making, using, or selling the invention throughout the United States and, if the invention is a process, of the rights to exclude others from using or selling throughout the United States, products made by that process, referring to the specification for the particulars thereof.")

[304] See 35 U.S.C. [[section]] 271(a) (1988) ("Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.")

[305] The claims of a patent define the metes and bounds of the invention by specifically defining the features of an invention which are protected.

[306] Literal infringement is established when the accused product or process contains each and every element set forth in the patent claims. However, in certain circumstances, a patent owner can establish infringement even if the accused product or process does not have each of the elements set forth in the claims. This type of infringement is known as infringement under the doctrine of equivalents, an equitable remedy designed to prevent misappropriation of the essence of the patented invention. Under the doctrine of equivalents, infringement is established by proving that the accused product or process "performs substantially the same function in substantially the same way to obtain the same result as the patented invention." See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950).

[307] See 35 U.S.C. [[section]] 282 (1988):

A patent shall be presumed valid. Each claim of a patent (whether in dependent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

[308] A party can also challenge the validity of a patent in a reexamination proceeding before the PTO. In such a proceeding, however, the basis for challenge is limited to novelty and obviousness in view of only certain types of prior art, namely, printed publications and patents.

[309] Priority may also be established by the filing date of a Federal registration based upon an intent to use a mark (15 U.S.C. [[section]] 1051(b) (1988)) or a foreign filing (15 U.S.C. [[section]] 1126 (1988)).

[310] 15 U.S.C. [[section]] 1051 et seq. (1988 & Supp. V 1993). The Lanham Act, as amended, forms Chapter 22 of Title 15 of the U.S. Code.

[311] The first Federal trademark law in the United States was found unconstitutional because it was premised on the patent clause of the Constitution.

[312] Certain foreign-based applications may register without a showing of use in commerce. 15 U.S.C. [[section]] 1126(e) (1988).

[313] 15 U.S.C. [[section]] 1127 (1988 & Supp. V 1993). "The word 'commerce' means all commerce which may lawfully be regulated by Congress." This includes interstate commerce, commerce between the United States and a foreign country, and territorial commerce.

[314] P.L. 100-667, 1988 U.S.C.C.A.N. (102 Stat.) 3935.

[315] 15 U.S.C. [[section]] 1051(b) (1988).

[316] See 15 U.S.C. [[section]][[section]] 1114 - 1121, 1125(a) (1988 & Supp. V 1993) for relevant Federal law provisions. State and common law unfair competition provisions include such torts as passing off and dilution.

[317] 15 U.S.C. [[section]] 1057(b) (1988).

[318] 15 U.S.C. [[section]] 1124 (1988).

[319] 15 U.S.C. [[section]] 1116(d) (1988); 18 U.S.C. [[section]] 2320 (1988).

[320] 15 U.S.C. [[section]] 1065 (1988).

[321] 15 U.S.C. [[section]] 1064 (1988).

[322] See In re Metriplex Inc., 23 U.S.P.Q.2d 1315 (TTAB 1992), where the PTO's Trademark Trial and Appeal Board authorized registration of a mark identifying "data transmission services accessed via computer terminal" and accepted, as evidence of use of the mark, a print-out of the mark as it appeared on the computer screen during transmission.

[323] In the recent case Playboy Enters. v. Frena, supra note 115, the operator of a subscription computer bulletin board system (Frena) transmitted as part of its bulletin board system photographs owned by Playboy Enterprises Inc. (PEI). PEI's trademarks were obliterated on some photographs transmitted by Frena and PEI's "Playboy" and "Playmate" marks appeared on other photographs transmitted by Frena. These transmissions were without authorization from PEI. The court found, in part, that Frena infringed PEI's registered trademarks when it used PEI's "Playboy" and "Playmate" marks in unauthorized transmissions of PEI's photographs as part of its computer bulletin board system. The court also found Frena to have committed acts of unfair competition, in violation of Section 43(a) of the Lanham Act (15 U.S.C. [[section]] 1125(a) (Supp. V 1993)), both by obliterating PEI trademarks from photographs and by placing its own advertisement on PEI photographs. Such acts made it appear as if PEI authorized Frena's use of the images on the bulletin board; see also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), in which the court found that interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of Section 43(a) of the Lanham Act (15 U.S.C. [[section]] 1125(a) (Supp. V 1993)).

In California, a U.S. District Court has entered a preliminary injunction against the owner of a computer bulletin board system based upon claims of copyright and trademark infringement and unfair competition. In Sega Enters. Ltd. v. MAPHIA, supra note 119, Sega demonstrated that the bulletin board system knowingly solicited the uploading and downloading of unauthorized copies of Sega's video games, and that whenever such a copy is played, Sega's trademark appears on the screen. Further, Sega's trademark appeared, with the BBS operator's knowledge, on file descriptors on the bulletin board. With regard to the trademark and unfair competition claims, the court concluded that there is support for the conclusion that the transferred games are counterfeit under the Lanham Act, and that confusion, if not on the part of the bulletin board users, is inevitable on the part of third parties who may see the copied games after they enter the stream of commerce.

[324] To send and receive information on the Internet, various organizations connected to the Internet must register their domains, networks and autonomous systems numbers ("site names") with the Internet National Information Center (InterNIC). InterNIC performs this function under a cooperative agreement with the National Science Foundation. Within the context of a prescribed format, the Internet user may register any site name as long as the identical site name has not been previously registered with InterNIC by another party. According to InterNIC, there is no state or Federal statutory or regulatory authority under which InterNIC performs this registration function. Thus, InterNIC has no authority to refuse to register site names for a reason such as likelihood of confusion with a trademark. Furthermore, InterNIC does not conduct an examination of trademark or other records before registering a site name.

[325] "A trade secret is commonly defined as any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it." Restatement of Torts [[section]] 757, Comment b (1939).

[326] Id. The trade secret owner may communicate the trade secret to others provided that those who the trade secret is communicated to pledge not to reveal the trade secret to others. Id.

[327] See discussion of methods of protection for material distributed through the NII infra pp. 108-113.

[328] See CONTU Final Report at 127.

[329] For a detailed discussion of these and other applications of technology that may be used to provide protection for copyrighted works, see Symposium, Technological Strategies for Protecting Intellectual Property in the Networked Multimedia Environment, cosponsored by the Coalition for Networked Information, Harvard University, Interactive Multimedia Association, and the Massachusetts Institute of Technology (April 2-3, 1993); see also Morton D. Goldberg, Copyright and Technology: The Analog, the Digital, and the Analogy, Symposium, WIPO Worldwide Symposium on the Impact of Digital Technology on Copyright and Neighboring Rights, 37 (March 31 - April 2, 1993).

[330] Protection of works by means of access control mechanisms assumes that the system is not vulnerable to external means to circumvent access control. Existing systems may be vulnerable, for example, through passive monitoring during the exchange of unencrypted passwords. As a consequence, much current effort is directed to improving security at the access control level.

[331] For example, the software may deny access to a work if the electronic file containing the work has been altered or information stored in the file does not match data supplied by a user necessary to open and use the file. See discussion of digital signatures infra pp. 113-14.

[332] Rendering or viewing software may integrate encryption and file manipulation into a single software package. In other words, the rendering software, after getting a password, will decode the file and permit the user to manipulate the work (e.g., view it or listen to it), but only with the provided rendering software.

[333] An algorithm is a set of logical rules or mathematical specification of a process which may be implemented in a computer.

[334] A widely publicized encryption technique is referred to as "public key" encryption. Public key encryption transforms the work using an algorithm requiring two particular keys--a "public" key and a "private" key. The keys have complementary roles. Data encrypted using a public key can only be decrypted using a secret, private key. For instance, a copyright owner could encrypt a work using the public key of the intended recipient; then, only the intended recipient could decrypt a copy of the work with his private key. No secret (private) keys need to be exchanged in this transaction. Without the private key of the intended recipient, the work cannot be read, manipulated or otherwise deciphered by other parties. Of course, if a decrypted copy is made and shared, then others could manipulate the work unless other means are used to protect it.

[335] See 17 U.S.C. [[section]] 1002 (Supp. V 1993).

[336] See H.R. Rep. No. 102-873(I), 102d Cong., 2d Sess., reprinted in 1992 U.S.C.C.A.N. 3578, 3579-80, 3583 n15.

[337] A "header" is a section of a digital work where information, data, codes and instructions may be embedded. Such information may actually be embedded anywhere in the work, but for ease of reference, this Report refers to such information as embedded in a header. Terms such as "label" and "wrapper" are also used to refer to what this Report refers to as a "header."

[338] The signature is generated using the binary digits of the work plus the value of the private key as inputs to the computation defined by the algorithm. Thus, the digital signature for an information object is a unique sequence of digits for that work. Specifically, a signature is not the same for different works using the same private key.

[339] Anyone who has access to an information object, also has access to the digital signature for the object and the public key of the rightsholder. Consequently, the digital signature for the object may be recomputed and used to independently confirm the integrity of the object by comparing it to the digital signature appended to the object.

[340] "Shrink wrapped" is a term used to describe licenses and contracts which are enclosed with prepackaged software and which contain a notice whose operative message is: "Opening this package constitutes agreement to the terms and conditions of a legally binding agreement stated below. If you do not agree to these terms and conditions, then do not open the package."

[341] The IITF Committee on Applications and Technology is addressing electronic commerce issues, including the electronic transfer of funds through the NII.

[342] See R.E. Kahn, "Deposit, Registration and Recordation in an Electronic Copyright Management System," Proceedings of Technical Strategies for Protecting Intellectual Property in the Networked Multimedia Environment, Interactive Multimedia Assoc., Annapolis, MD, 21401-1933, Jan. 1994. The registration and recordation system will be operated by the Library of Congress and will enable electronic filing of documents, automated registration and recordation of transfers of ownership and other copyright-related documents. The digital library system will be composed of a set of distributed repositories for copyrighted works, and will support search and retrieval based upon an electronic bibliographic record. The rights management system will be a distributed system which will permit use of selected copyrighted materials on the Internet, and will have some on-line rights-granting services. Electronic mail will be used to license nonexclusive rights, with or without recordation of the transactions.

[343] H.R. Rep. No. 101-735, 101st Cong., 2d Sess. 7 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6938 (report accompanying legislation granting copyright owners of computer software an exclusive rental right).

[344] See supra p. 9.

[345] In contrast to "standard" distributions, in the case of a distribution by transmission, the distributor also retains a copy of the work.

[346] Any language added by a proposed amendment is underscored. Proposed deletions are indicated by strike-throughs.

[347] See 17 U.S.C. [[section]] 101 (1988) (definition of transmissions of performances or displays, not of all transmissions).

[348] See House Report at 138 (emphasis added), reprinted in 1976 U.S.C.C.A.N. 5754.

[349] See discussion supra notes 34-35 and accompanying text.

[350] The second sentence of the definition --adopted originally to ensure that theatrically distributed movies were "published" and thus eligible for copyright protection under prior law--would appear to apply often to works made available by display on bulletin board systems or similar services.

[351] See discussion of rental rights with regard to phonorecords and copies of computer programs supra notes 167-69 and accompanying text.

[352] This number does not include the use of the term in Chapters 9 and 10, which have separate definitions of the term for the purposes of those chapters. It also does not include the 30 some times the Act refers to the distribution of royalties collected under the compulsory licensing systems.

[353] These limitations include the limitation with regard to distribution by libraries ([[section]] 108), the limitation with regard to ephemeral recordings ([[section]] 112(c)), and the mechanical compulsory license ([[section]] 115).

[354] 17 U.S.C. [[section]] 1002(c) (Supp. V 1993).

[355] 47 U.S.C. [[section]] 605(e)(4) (1988).

[356] See NAFTA, supra note 289, at art. 1707(a). The NAFTA also requires parties to make it a civil offense to "receive, in connection with commercial activities, or further distribute, an encrypted program-carrying satellite signal that has been decoded without the authorization of the lawful distributor of the signal or to engage in any activity prohibited under [the criminal provisions]." See NAFTA, supra note 289, at art. 1707(b).

[357] See Copyright, Designs and Patents Act of 1988, Part VII, [[section]] 296.

[358] Legislation of a similar type has been introduced with respect to technological protection of audiovisual works. See, e.g., S. 1096, 102d Cong., 1st Sess., 137 Cong. Rec. S. 6034 (1991); H.R. 3568, 101st Cong., 1st Sess., 135 Cong. Rec. H. 7924 (1989).

[359] Some transmissions that clearly constitute public performances may, in effect, substitute for distributions in the future. If consumers are offered a service through which they can receive a performance of any sound recording at any time, they may stop buying phonorecords. The market for distributed phonorecords may shrink to include only the providers of that service to consumers.

[360] See House Report at 68-79, reprinted in 1976 U.S.C.C.A.N. 5659, 5681-92; Conference Report at 72-73, reprinted in 1976 U.S.C.C.A.N. 5810, 5813-14.

[361] See, e.g., 17 U.S.C. [[section]] 111 (1988 & Supp. V 1993). The cable compulsory license was enacted to reduce the need for negotiations among thousands of program copyright owners and hundreds of cable systems for the right to retransmit the copyrighted works programs that are included in the broadcast signals retransmitted by cable systems.

[362] Article 20 states:

The Governments of the countries of the Union reserve the right to enter into special agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary to this Convention. The provisions of existing agreements which satisfy these conditions shall remain applicable.

[363] This reference to fixations includes the subject matter of neighboring rights related to works and their performance.

[364] The IITF Committee on Applications and Technology has responsibility for addressing the issue of standards.

[365] Recently, the FCC adopted technical standards that define a patented system as the A.M. radio stereophonic transmitting standard in the United States. See 58 Fed. Reg. 66300 (daily ed. Dec. 20, 1993). The FCC conditioned the selection of the patented system as the standard on the agreement of the patent owner to license its patents to other parties "under fair and reasonable terms." Id. at 66301.

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