357 Plaintiff also claimed copyright in its implementation of the protocol. The court held this could not be the subject of copyright protection, as it fell within the area proscribed by
17 U.S.C. § 102(a) as an idea or procedure.
359 IBM required any customer undertaking a split to pay an “arbitrage” fee of several hundred thousand dollars, representing the difference in price between the large system and the two smaller ones.
360 The 3090 computer system is made in numerous models. A “reconfiguration” is the modification of a 3090 computer system into another model of the 3090. A “split” is the division of a single system into two smaller ones.
361 The court held it was irrelevant whether AMI, as an economic matter, could have written its own microcode.
363 The court did not adjudicate whether the repair doctrine applied to copyright.
364 The court found it unnecessary to decide whether AMI stood in the posture of an “owner” of a copy of the program. Section 117 applies only to the conduct of owners.
365 United States v. IBM, 1956
CCH Tr. Cas. ¶ 68,245 (S.D.N.Y. 1956).
366 The court did not find, however, that IBM could not charge for reconfigured code, or that IBM could not assert its copyright if it did not price reconfigured code as it does. Further, the court expressed no opinion whether the decree required IBM to maintain the systems for which AMI had provided reconfigured code, or whether the decree required IBM to sell (as opposed to license) code for reconfiguration. The court also stated that IBM could properly charge hundreds of thousands of dollars for reconfigured code, but could not thereafter enforce its copyright.
367 Consent Decree, par. VII(d)(3).
368 The court offered no opinion on whether there would be estoppel if such a recovery was necessary.
369 The court expressly found it unnecessary to determine whether violation of the antitrust laws constitutes a defense to copyright infringement.
372 The court allowed that identical copying in these circumstances might be infringement.
373 The court gave as examples the sound of hoof beats, crowds and commentators.
374 As examples here, the court cited use of the Los Alamitos race course, use of same names for the horses, and use of a similar organization of races.
375 Although this is what the court said, as indicated below, this is apparently not what the court meant.
376 Because it was an uncopyrightable pre-existing name.
377 Because a title generally cannot be copyrighted.
378 Because they are not copyrightable.
379 This is true at least as to the three reasons stated in the three immediately preceding footnotes. It is uncertain whether the court meant the statement to extend beyond that.
381 Id. The court seems to state that given the
scenes a faire common to videogames regarding quarter horse racing, any such videogame would be substantially similar to plaintiff’s, regardless of the other elements. Given the plethora of other types of elements that might be injected into such a theme, this may not be quite accurate.
382 Trade dress is distinctive when it identifies a particular source for the product, or distinguishes it from other products.
383 Trade dress has acquired secondary meaning when purchasers associate that dress with a single source rather than with the product itself.
388 The totality of evidence on this point was the testimony of plaintiff’s vice president that he had compared the first 50 lines of code and noted three similarities: the nature of the “dimension” statements (used to allocate memory to variables); the placement of “GOTO” statements (used to jump ahead or back), and location of the main menu.
389 For example, one of plaintiff’s programs was “engineered standards-based” (as opposed to hospital comparison-based), and used multivariable sets (as opposed to single variable or unlimited variables).
392 Defendant also challenged the special master’s consideration of materials submitted by plaintiff under seal (to which defendant had no access). The court rejected this challenge by stating that defendant had acquiesced and stipulated to the procedure.
395 The court defined microcode as “a series of instructions that tell a microprocessor which of its thousands of transistors to actuate in order to perform the tasks directed by a macroinstruction set.”
10 U.S.P.Q.2d at 1178.
397 In pertinent part,
17 U.S.C. § 101 provides: “A ‘computer program’ is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”
398 It so chose both because it believed the Ninth Circuit had so ruled, and because the limitation on expression should not be the basis for denying copyright, since the Register of Copyrights would not be aware of such facts.
399 In doing so the court implicitly adopted the notion that either of two types of substantial similarity would suffice for infringement: “comprehensive nonliteral similarity” or “fragmented literal similarity.” See
Nimmer on Copyright § 13.03[A].
400 A patch is a small section of object code written quickly in an informal fashion to correct a software error (i.e., a “bug”), and often intended to be only a temporary remedy. The error in question, however, was a design error in the microprocessor (hardware), rather than in any software, which makes this an unusual use of the term “bug.”
401 A register is a small very fast memory.
402 This, according to the court, would pose a difficult question as to whether what was taken was an idea or expression.
403 A “bus” is an internal electronic communications channel.
404 Software created by a second party through a “clean room” process is created as follows: The second party forms two teams of programmers. The first team has access to the first party’s source code and writes a functional description of the program (i.e., describes input, output and constraints such as size of available memory) without disclosing in any way the method for accomplishing the results. The written functional description (and nothing else) is transmitted to the second team, which then creates software from that functional description. There is no other communication between the two teams and no member of the second team has been exposed to the first party’s software. Many contend that developing software from no more than a functional description does not infringe the software’s copyright, a properly implemented clean room technique is regarded by most observers in the software industry as a lawful means of creating competing software.
405 The court also speculated that after creating its initial draft (wherein seven of the thirteen were the same), NEC used the Intel groupings as a “check list” to gain additional
ideas; the court did not see this as infringement.
413 This reflects an extremely broad and non-detailed concept of what constitutes the “idea” in the copyright sense.
414 The court seemed here to use “purpose” as synonymous with “idea.”
436 The court thus found it unnecessary to treat defendant’s argument that computer programming languages are not copyrightable.
438 The court saw plaintiff’s allegations as to copying of function not as an independent basis for alleging infringement, but as an evidentiary statement supporting plaintiff’s argument that the structure of the program was copied.
443 Dynamic Solution, Inc. v. Planning & Control, Inc., 1987 Copyr. L. Rep. ¶ 26,062 (S.D.N.Y. 1987).
452 The first three phases, according to the court, are: flowchart; source program; and “assembly program” (“a translation of the programming language into machine language, i.e., mechanically readable computer language”).
203 U.S.P.Q. at 738. The court may have confused the assembly language program with the object program. See
§ 2.06[3][c] supra. 453 The court here makes a number of ambiguous and not quite accurate statements which should be clarified:
“[An object program is] a conversion of the machine language into a device commanding a series of electrical impulses… .”—An object program is not a conversion of machine language; it
is the machine language. That is, it is a program written in machine language,
i.e., the strings of binary 0’s and 1’s which the machine’s circuits have been constructed to accept directly as instructions. See
§§ 2.05[5][b] supra.“Object programs … enter into the mechanical process itself… .”—Object programs interact directly with the hardware, and, in that sense, interact with—and indeed control—the electronic process. See
§§ 2.03[1],
2.03[1],
2.05[5][b] supra.“Object programs … cannot be read without the aid of special equipment… .”—Whether a program can be perceived directly by a human does not depend on whether it is in source, assembly or object form. Rather, it depends on the form of the particular representation with which the human happens to be confronted. If, e.g., the representation is on magnetic tape, then the program is not directly perceptible, whether it happens to be written on the tape in source or object form. Alternatively, if the form of representation is a printout, then the program is directly perceptible, be it in source or object form.
“Object programs … cannot be understood by even the most highly trained programmers.”—Source code is easier for a programmer to understand than is object code, and there are far more persons capable of reading source code programs than object code programs. But object code programs are comprehensible to programmers trained to read them. See
§ 2.06[3][c] supra. 454 A programming device is the tangible object embodying the program. It may,
e.g., be a ROM, magnetic tape, magnetic disc, paper tape, deck of paper punched cards, or even the internal semiconductor or core memory. While the representation of the program embodied on the programming device is often in object form, it need not be—although in a ROM, generally it will be.
457 This Act generally became effective January 1, 1978.
458 As originally promulgated in the 1976 Act, and as it existed at the time of this decision.
459 In
dictum the court noted that if the 1976 Act did apply, copying a ROM would not constitute infringement because, while a ROM is a “copy” under the 1976 Act, the court did not believe that Act applied to programs “in their object phase, i.e., the ROM.” The reasons for this conclusion were (1) that “in its object phase, the computer program is a mechanical device which is engaged in the computer to become an essential part of the mechanical process,” and that mechanical devices which cannot qualify as pictorial, graphic or sculptural works are not writings and may not obtain copyright protection; and (2) that in the Copyright Office’s then proposed (and later adopted) regulations on affixing notice (pursuant to
17 U.S.C. § 401(c) (1976)) the language and examples used seemed to the court not to contemplate ROMs.
37 C.F.R. § 201.20(g).
460 The parties assumed a ROM is a copy and neither briefed nor argued the issue.
461 “… at common law a copy of a computer program is another computer program in its flow chart or source phase because these are comparable technical writings. While the ROM is the mechanical embodiment of the source program, it is not a ‘copy’ of it.”
Id. at 741. The court found persuasive the analogy that under common law a building is not a copy of the architect’s plans.
463 203 U.S.P.Q. at 741. The court found persuasive the analogy that under the 1909 Act, a building is not a copy of the architect’s plans.
465 Indeed, on appeal neither party defended the district court’s reasoning.
466 Moreover, the court attached no import to the fact that plaintiff’s program listings, used internally, bore copyright notice, as this failed to put the public on notice.
468 A “limited publication which communicates the contents of a manuscript to a definitely selected group and for a limited purpose, and without the right of diffusion, reproduction, distribution or sale, is considered a ‘limited publication,’ which does not result in loss of the author’s common-law right to his manuscript… .”
Id. 469 “Even if we were to agree with plaintiff that the erroneous belief that the program could not be copied directly from the ROM was the sort of ‘mistake’ contemplated by section 21, we cannot agree that the omission of notice was from a ‘particular copy or copies’ of the program.”
Id. at 201.
470 Sec. 26, Copyright Act of 1909, Act. of March 4, 1909, ch. 320,
35 Stat. 1077. (Emphasis supplied.)
472 The motion was denied because it was unclear how defendant’s ROM was created.
473 Apple Computer, Inc. v. Franklin Computer Corp., 545 F. Supp. 812, 215 U.S.P.Q. 935 (E.D. Pa. 1982),
rev’d, 714 F.2d 1240, 219 U.S.P.Q. 113 (3d Cir. 1983) pet. dismissed, 104 S. Ct. 690 (1984). This action was settled before the Supreme Court acted on defendant’s petition for a writ of certiorari. See Wall St. J., Jan. 5, 1984, p. 10.
474 The form of the copyright registrations is not clear from the opinion.
475 These programs, embodied in ROMs and floppy discs, were sold with the Apple II personal computer.
476 And presumably in a floppy disc.
477 In its commendable attempt to come to grips with the pertinent technology, the district court may have labored under certain misapprehensions. The most persistent, which permeated the opinion and caused the court much unnecessary effort and even anguish, arose from confusion between protection of the physical structure and configuration of the chip on the one hand, and protection of the information embodied in it on the other. See
215 U.S.P.Q. at 941, 942, 943, 945, 946. The court also seemed to believe that those video game cases where copyright registration was secured only on the display (by means of video tapes) “held that a ROM-based object program used to create visual displays in arcade games is properly copyright protected.”
Id. at 942, n.8. Of no import was the confusion between source code and assembly code (
Id. at 945, n.15), the confusion between a bit and a byte (
Id. at 937), and the statement that a RAM loses its information when power is withdrawn.
Id. at 937.
480 The architectural structure of the ROM is unrelated to the issue of whether the information residing in the ROM may be protected. See N. 40
supra. 483 Copyrightable “original works of authorship,” versus noncopyrightable “ideas,” etc.
484 The court believed that plaintiff did not distinguish form from function here.
487 This statement is apparently meant to extend to all programs in object form.
489 Id. at 946. The court quoted the views of CONTU members Nimmer and Hersey on this point.
491 Id. It is not entirely clear just what the court meant here.
492 Id. Emphasis by the court.
493 A program for a video game exemplifies the former situation, while an operating system program exemplifies the latter. Nevertheless, it may be argued that a system program may, in certain respects, be designed to communicate directly with humans, e.g., by displaying or printing out status information.
494 “[I]t may prove desirable to limit copyright protection for software to those computer programs which produce works which themselves qualify for copyright protection. * * * A program designed for a computer game would be copyrightable because the output would itself constitute an audio-visual work. On the other hand, programs which control the heating and air conditioning … do not result in copyrightable works.” CONTU,
Final Report at 27. See also the dissent of Commissioner Hersey.
Id. at 27–30.
495 Defendant seems to be saying it was not feasible for defendant to rewrite the system software so as to be compatible with plaintiff’s application programs. The espoused reason was that there were too many “entry points” in relationship to the number of instructions in the program. Entry points are those locations in the system program which can be used to mesh the application programs with the system program. Defendant also alleged that “identical signals” were necessary to ensure 100% compatibility. The evidence was mixed on whether in fact the system programs could have been rewritten so as to be compatible.
496 Literary works are “works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, discs, or cards, in which they are embodied.”
17 U.S.C. § 101.
498 The district court also expressed uncertainty as to whether a program in object code could be a “literary work.” The Court of Appeals noted that the “literary work” is not confined to literature, as can be seen from its definition in section 101. “Thus a computer program, whether in object code or source code, is a ‘literary work’ and is protected from unauthorized copying, whether from its object or source code version.”
Id. at 120–121.
500 Although some of the software at issue in
Williams v. Artic was system software, in that case this issue was neither raised nor considered by the court.
501 219 U.S.P.Q. at 122. “Both types of programs instruct the computer to do something. Therefore, it should make no difference for purposes of section 102(b) whether these instructions tell the computer to help prepare an income tax return (the task of an application program) or to translate a high level language program from source code into its binary language object code form (the task of an operating system program… .”
504 CONTU Report at 21. “That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.”
507 Mazer v. Stein, 347 U.S. 201, 218 (1954). The court noted that the CONTU majority agreed: “that the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” CONTU Report at 21. “The copyright status of the written rules for a game or a system for the operation of a machine is unaffected by the fact that those rules direct the actions of those who play the game or carry out the process.”
Id. The court considered “the CONTU Report as accepted by Congress since Congress wrote into the law the majority’s recommendations almost verbatim.”
219 U.S.P.Q. at 123.
509 H.R. Rep. No. 1476, reprinted in 1976 U.S. Code Cong. & Ad. News at 5670.
512 The appellate court also reversed the district court finding that plaintiff had not made the requisite showing for irreparable harm, because the lower court failed to recognize that a copyright plaintiff who makes a prima facie case of infringement is entitled to a preliminary injunction without a detailed showing of irreparable harm. Aside from that, the appellate court found substantial evidence of the considerable effort and investment by plaintiff in developing the programs in suit. Thus, even without the presumption of irreparable harm, plaintiff showed irreparable harm.
514 The court succinctly set forth the genesis of a program and its ROM or diskette embodiment (
562 F. Supp. 775, 218 U.S.P.Q. 47):
“… one must write out the program in graphic form (e.g., flow charts) or in ‘source code’… . The graphic rendition or source code is itself copyrightable… . Then the source code … is finally translated to what is called ‘object code’ which is machine language useable by the machine. Then, as a final step, the object code is imprinted onto the silicon chip or diskette by photochemical process or electrically.”
515 17 U.S.C. § 102(b) provides:
“In no case does copyright protection for an original work of authorship extend to any idea, procedure, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
516 This category would seem to include system programs and some application programs. The programs in question fell into this category.
517 The new section 117 “inserted some new language not relevant to the present problem… .”
218 U.S.P.Q. at 50.
519 According to the court, CONTU recommended that algorithms, “fixed in any method and performing any function,” be copyrightable, and Congress embodied that recommendation in the 1980 amendments. The court traced through some of the positions espoused in the CONTU Final Report, and noted that Congress wrote the CONTU majority position almost verbatim into law. The court concluded that CONTU did not intend any distinction between programs used in the production of further copyrightable works, and those which embody a system for the operation of the machine.
In reaching its conclusion, the court may have confused three different distinctions: (1) That between system programs and application programs, as basically suggested by defendants. See
§§ 2.06[2],
[3] supra for a description of this difference, which turns on whether the program is directed to solve a user’s particular need, or to aid the computer generally in its functioning; (2) That between programs producing works themselves copyrightable, and programs which do not, a distinction suggested by CONTU Vice-Chairman Nimmer. CONTU Final Report § III C.1.(g); and (3) That between those program forms primarily comprehensible to humans (e.g., source code), and those forms primarily comprehensible to machines (object code), a distinction suggested by CONTU Commissioner Hersey. CONTU Final Report, III C.1. (h). These first two distinctions depend on the function of the program, or the use to which it is put, and are largely independent of the program form (e.g., source code, listing, object code) for which protection is sought.
521 But the court noted that if there were only one or two ways to write a program for a particular function, then affording copyright protection might in effect give patent protection on practicing idea.
Id. at 53.
523 Defendants in
Williams contended that ROMs generally were not the subject of copyright protection.
524 Other reasons why the court declined to follow the
Franklin district court opinion were: the preliminary injunction standard is more onerous in the Third Circuit than the Ninth; in balancing injury likely to result from such an injunction, Franklin had no business other than that at issue, whereas most of Formula’s business was unrelated to computers;
Franklin was on appeal to the Third Circuit;
Franklin made no
holding on copyrightability; and the court believed the
Franklin opinion did not accurately characterize the CONTU majority view.
525 Although these are two separate arguments, the court intertwines them.
526 The Act does not distinguish between copyrightability of programs directly interacting with the user, and those which do not, and it includes works which can be perceived “with the aid of a machine or device.”
527 Congress enacted the statutory language proposed by CONTU; in its Report, CONTU expressly rejected such a distinction. “That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” CONTU Report at 21.
528 The court quoted from the CONTU Report (p. 20): “In the computer context this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to an infringement.”
529 Apple Computer Inc. v. Computer Edge Pty. Ltd., [1984] F.S.R. 246,
rev’d, [1984] F.S.R. 481 (Aust. F. C.).
530 Plaintiff had certificates of copyright registration from the U.S. Copyright Office; in registering, plaintiff had deposited copies in hexadecimal form (see
§ 2.03[3] supra), and a reconstructed version of one program in assembly language (see
§ 2.06[3][c] supra), in which it was originally written.
531 While the term “source version” is often interpreted to mean the high order form (see
§ 2.06[3][c] supra), its fundamental meaning is the form in which the program was originally coded. This is generally the high order form where such exists, but sometimes, as here, the program was not coded in a high order language.
533 Id. at 22–23. The court found support for the proposition that the Act was not meant to embrace programs in the legislature’s extension of copyright protection, at a time when computers were “well known,” to films, sound recording, etc. The court saw this as a legislative intent to “leave such matters to be dealt with by other legislation dealing with patents and industrial designs.”
Id. at 23. Support was also found in another Australian case. Edwards Hot Water Systems v. S.W. Hart & Co. Pty. Ltd. (unrep. Oct. 12, 1983 at pp. 7, 8, 10, 11, 34).
535 For the present status of Australian software protection law, including a discussion of pertinent copyright legislation enacted subsequent to the reversal, see
§ 3B.04 supra. 537 Plaintiff also alleged unfair competition pursuant to
15 U.S.C. § 1125; unfair competition pursuant to California law; assumpsit; and interference with prospective advantage (unjust enrichment).
539 Plaintiff alleged that defendants changed certain items in the program which specifically identified it as “Radio Shack” or “Tandy.”
540 There was no claim that the Computer Software Act of 1980 (i.e., the new Section 117) applied in this case, and the court assumed it did not.
Id. 541 There was no dispute on this point.
543 The court noted
dicta in the opinion of the district court in
Data Cash, supra, stating that under the 1976 Act, copying a ROM was not an infringing act.
544 The court did not have to, and did not, reach this last point.
545 For this conclusion, the court relied on the legislative history, and the subsequent revision of Section 117.
“[Original section 117 of the 1976 Act] was not intended to provide a loophole by which someone could duplicate a computer program fixed on a silicon chip. It did not refer to the unauthorized duplication of a silicon chip upon which a properly copyrighted computer program is imprinted. Such a duplication of a chip is not the use of a copyrighted program ‘in conjunction with’ a computer; it is simply the copying of a chip. Moreover, any other interpretation would render the theoretical ability to copyright computer programs virtually meaningless.”
546 The court also noted that the Seventh Circuit arguably had implicitly rejected the lower court’s ruling on whether, under the 1909 Act, ROM embodying a program constituted a copy.
548 A diagnostic system is a program or set of programs used to check the functioning of the computer and to report (via printout, CRT display, etc.) malfunctions discovered.
550 There was insufficient evidence of copying as to the diagnostic programs.
551 Hubco Data Products Corp. v. Management Assistance, Inc., Complaint filed Aug. 26, 1981; Memorandum and Order entered May 17, 1982 (denying defendant’s motion for prelim. injunc.);
219 U.S.P.Q. 450 (U.S.D.C. D. Idaho 1983) (granting prelim. injunc.).
552 Memorandum and Order entered May 17, 1982.
553 The only pertinent differences between such printouts is in the governors.
554 Both opinions are permeated by a lack of distinction between the procedures embodied in the code, and the expression of those procedures, viz., the code itself.
555 It is unclear from the opinions just what acts allegedly infringed.
556 The opinion does not state what constituted plaintiff’s “copy” of defendant’s expression, or what the degree of similarity was. Rather, the copyright discussion in the opinion follows the trade secret discussion, which seems to concern the procedure, i.e. the concept, embodied in the code, as opposed to its expression.
557 The court was not explicit as to just what was the copyrighted work as to which it considered infringement. Apparently only one version of BOSS was the subject of a copyright registration.
219 U.S.P.Q. at 453. But the various versions of BOSS, differing by capacity, were identical except for serial numbers and the governors. Memorandum and Order entered May 17, 1982 at 3. The court accorded
prima facie status as to the version registered, but placed on defendant the burden of proving that the object code of the other versions was an “original work of authorship.” The court characterized these other versions as “uncopyrighted” (by which it presumably meant unregistered), and considered whether they were original works of authorship. The pertinence of that question is unclear, inasmuch as suit for infringement of copyright in those works would seem inappropriate prior to registration of the copyright claim in those works.
17 U.S.C. § 411(a).
558 It is unclear whether plaintiff directed this argument to object code generally, or solely to operating system object code. The court treats the argument as the former.
559 Plaintiff also argued that there was publication of two earlier versions than the ones dealt with by the court. The court accepted this as a factual dispute, and refused to include those versions within the scope of the injunction. Plaintiff further argued that the earlier versions were so similar to those treated in the court’s opinion that their publication would taint the later versions. The court held there was a reasonable probability that the later versions embodied major changes.
560 Presumably, the court meant there was a reasonable probability defendant would show this.
561 The court held that plaintiff could not take advantage of the § 117 exception applicable to loading a computer because plaintiff was not the “owner” of the copy.
219 U.S.P.Q. at 456.
The court granted a preliminary injunction as to the later versions of BOSS, but set down a further hearing on three issues: (1) whether defendant in fact originated its object code; (2) whether earlier versions had been published by defendant; and (3) if so, whether that impacted the status of the later versions.
563 Plaintiff sought relief predicated on its audiovisual work registrations, as well as its program registrations, and succeeding as to the latter, but not the former. For a discussion of the audiovisual work aspects, see
§ 4.04[2] infra. 564 The court stated that in
Williams v. Artic, supra, the Third Circuit tacitly recognized that in connection with copyright protection as to video games, a program is protectable separately from the audiovisual display.
566 The court noted the possibility, using a microcomputer development lab, of printing out information stored in ROM. At the hearing plaintiff showed that of the 16,000 bytes in its ROMs, 89 percent were identically reproduced in the corresponding ROMs of defendant. Moreover, as to the 3,382 bytes containing actual sequencing instructions (as distinct from data that appeared directly on the screen), 97 percent was identical. There was one string of 3,984 bytes which was identical. The uncontradicted expert testimony was that there is “virtually an infinite number of ways to write a set of program instructions that will produce the PAC-MAN game sequencing.”
219 U.S.P.Q. at 52. It is therefore not necessary that the program which drives a maze-chase game track the PAC-MAN program.
567 The court noted that while § 117 permitted owners of copies to adapt them, this was “to permit owners of copies to make the programs compatible with their computer hardware or systems,” and that such adaptations could be transferred only with authorization of the copyright owner.
219 U.S.P.Q. at 45.
569 17 U.S.C. § 201(b) provides:
‘Works Made for Hire—In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”
“A ‘work made for hire’ is—
“(1) a work prepared by an employee within the scope of his or her employment; or
“(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, … if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire … .”
That section also defines a collective work as
“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.”
“Contributions to Collective Works—Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”
570 “This work was performed at Defendant’s place of business on his own computers. He was paid per program and no social security or income tax was deducted from his pay. Although Plaintiff could accept or reject the final product, it had no right to control the manner of the work performed by Defendant. To aid him in the project, Plaintiff supplied him with certain internal, confidential documents which were not available to the public. * * * Defendant was not an employee of Plaintiff acting within the scope of his employment. The work he did was specially ordered and commissioned but there was no written agreement that the work was ‘work made for hire.’ ”
Id. at 210.
570.2 The court found it unnecessary to determine whether the 1976 Act, absent the 1980 Amendment, permitted copyright protection for programs.
572 The court viewed defendant’s distinction, which would proscribe copying of “computer program text,” but not duplication of a chip, as a “loophole.”
581 Berkeley attempted to have plaintiff review the Berkeley software before release (as plaintiff had done for others), but plaintiff allegedly declined.
582 The Net2 software had some ten times the number of instructions of the 32V (UNIX) software, and the alleged overlap amounted to less than 1% “of the total.” Slip op. at 8.
585 D.C.I. Computer Systems, Inc. v. Pardini, Andrews Comp. Ind. Lit. Rep. 16,075 (Dec. 17, 1992) (Ninth Cir. op. filed Nov. 5, 1992).
589 “Defendant contends that the expression, originality, modular composition, and functionality of MV/ADEX must be examined to determine which elements are copyrightable and whether those elements were copied by Grumman.” Slip op. at 29.
590 Some would doubtless argue that, in the case of a program with over a million instructions (as was the case here), copying all the object code must involve copying copyright-protected aspects.
594 Section 101 of the Copyright Act sets out two pertinent definitions:
“Copies” are “material objects … in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
“A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy … by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”
595.5 A buffer is a storage device, generally rather small, for data, and is a form of RAM.
595.6 In rejecting the latter argument, the district court noted that the “aggregate effect of the buffering” was to copy all of defendant’s programming, which “can hardly be called
de minimis.”
595.7 The Second Circuit set forth no basis for this assumption.
595.10 This resolution rendered it unnecessary to determine whether any copies produced by buffering data would be
de minimis.
597.2 A truss is a group of beams that support a roof.
597.3 Plaintiff’s expert testified that 2% of the code was similar; defendant’s expert testified 1% of the code was similar. The opinion contains no discussion of whether there may have been non-literal similarity of code.
597.4 This court denominated the user interface as embodying some of the “non-literal” aspects of the program (as opposed to the literal aspects embodied in the code). Some courts appear to limit the term “non-literal aspects” to characteristics of the code other than actual content (i.e., to the structure, sequence and organization of the code). Such courts would likely consider the characteristics of the user interface to be part of the “look and feel” of the program, as opposed to the non-literal aspects.
597.5 The court put at the high end of this spectrum the “distinctive garb of the computer-generated Ninja,” and at the low end “a simple computer prompt asking the user to fill in the blank.”
597.9 It appears, however, that what the court considered to be a compilation was the interface, and not the program.
597.11 The court discussed the difference between literal or nonliteral
copying, on the one hand, and literal or The court discussed the difference between literal or nonliteral
copying, on the one hand, and literal or nonliteral
elements, on the other. The court believed “courts unfortunately often fail to distinguish between the two… .”
39 U.S.P.Q.2d at 1615, n. 16. The court further criticized the First Circuit’s characterization in
Borland of the
Altai test as providing a useful framework for nonliteral copying of code (a literal element). The MiTek court viewed the
Altai test as designed for nonliteral copying of a nonliteral element, not nonliteral copying of a literal element. In this regard, the MiTek court erred;
Altai involved nonliteral copying of a literal element (code). The MiTek court characterized its own case as dealing with alleged nonliteral copying of nonliteral elements; in this it was correct.
597.12 The court appeared to adopt the district court’s definition of a “menu” as “a graphical user interface employed to store information or functions of the computers in a place that is convenient to reach, but saves screen space for other images.”
Id., n. 17.
597.13 The court defined a command tree structure as something that “informs the user, in a hierarchical fashion, of the options available and also interacts with the user in requesting information from the user in order to utilize the program.”
Id., n. 18.
597.13a “The terms ‘virtual identicality’ and ‘bodily appropriation of expression’ have been used synonymously, although we prefer the former to the latter. Both terms convey a level of similarity greater than the ‘substantial similarity’ standard of the
Altai abstraction-filtration-comparison test.”
MiTek, 39 U.S.P.Q.2d at 1617.
597.13d I.e., the “words and abbreviations used to describe the files contained within the data structure… .”
597.13e Defendant had used plaintiff’s documentation in producing its own translator, and then referred to its translator in developing the translator for defendant.
597.13f The court also held that these elements constituted neither a substantial portion nor a significant aspect of the whole copyright-protected work.
597.15 Whereas development of plaintiff’s machine require almost ten months, defendants’ produced theirs in one and one half weeks.
597.16 In pertinent part,
17 U.S.C. § 101 provides:
… the design of a useful article … shall be considered a pictorial, graphic or sculptural work only if, and to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
597.17 Section 101 defines a useful article as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”
597.21 Defendant explained that if the customer obtained the card upon taking the copy, the customer could make an additional copy, register with the vendor, and appear to be a bona fide purchaser, entitled to support.
597.22 If the copy was not returned within the two day period, charges continued to accrue for an additional seven days, at which time the customer was charged a discounted purchase price.
597.23 Copies held prior to that date were not subject to the Amendment.
597.24 The statute does not define this language, and the court was unable to find any decision that did so.
597.25 S. Rep. No. 265, 101st Cong., 2d Sess. 2, 7 (1990).
597.26 S. Rep. No. 987, 98th Cong., 2d Sess. 4 (1984), 1984 U.S.C.C.A.N. 2898, 2901. This report dealt with the Record Rental Amendment of 1984, which served as a model for the Software Rental Amendment.
597.28 Defendant’s reliance on the fact that Intuit used a similar marketing plan was totally discounted by the court, inasmuch as Intuit owned the copyright in the software it marketed. Accordingly, it was free to rent without violating the Amendment.
606 “A video game machine consists of a cabinet containing,
inter alia, a cathode ray tube (CRT), a sound system, hand controls for the player, and electronic circuit boards. The electronic circuitry includes a microprocessor and memory devices, called ROMs (
R ead
O nly
M emory), which are tiny computer ‘chips’ containing thousands of data locations which store the instructions and data of a computer program. The microprocessor executes the computer program to cause the game to operate… . The [ROM] stores the instructions and data from a computer program in such a way that when electric current passes through the circuitry, the interaction of the program stored in the [ROM] with the other components of the game produces the sights and sounds of the audiovisual display that the player sees and hears. The memory devices determine not only the appearance and movement of the [game] images but also the variations in movement in response to the player’s operation of the hand controls.
Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 854 (2d Cir. 1982).”
610 Id. at 639. The statutory definition (§ 102(a)(6)): “ ‘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, receivers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.”
612 “The electronic circuitry includes memory storage devices called PROMs, an acronym for “programmable read only memory.” The PROM stores the instructions and data from a computer program in such a way that when electric current passes through the circuitry, the interaction of the program stored in the PROM with the other components of the game produces the sights and sounds of the audiovisual display that the player sees and hears. The memory devices determine not only the appearance and movement of the images but also the variations in movement in response to the player’s operation of the hand control.”
613 17 U.S.C. § 408 (“Copyright Registration in General”) provides in part:
“(b) Deposit for Copyright Registration:—Except as provided by subsection (c), the material deposited for registration shall include—
* * *
“(3) in the case of a work first published outside the United States, one complete copy or phonorecord as so published … .”
614 The court noted:
“While that approach would have afforded some degree of protection, it would not have prevented a determined competitor from manufacturing a ‘knockoff’ of ‘Scramble’ that replicates precisely the sights and sounds of the game’s audiovisual display. This could be done by writing a new computer program that would interact with the hardware components of a video game to produce on the screen the same images seen in ‘Scramble,’ accompanied by the same sounds. Such replication is possible because many different computer programs can produce the same ‘results,’ whether those results are an analysis of financial records or a sequence of images and sounds. A program is simply ‘a set of statements [
i.e., data] or instructions to be used directly or indirectly in a computer in order to bring about a certain result,’
Publ. L. No. 96-517, § 10(a),
94 Stat. 3015, 3028 (1980) (amending
17 U.S.C.App. § 101 (1976)). To take an elementary example, the result of displaying a ‘4’ can be achieved by an instruction to add 2 and 2, subtract 3 from 7, or in a variety of other ways. Obviously, writing a new program to replicate the play of ‘Scramble’ requires a sophisticated effort, but it is a manageable task.”
615 Pursuant to § 102(a)(6), audiovisual works are
“works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.”
617 The court noted in passing:
“In arguing that the permanent ‘imprinting’ of the computer program in the game’s memory devices satisfies the requirement of fixation in a tangible medium, appellees direct our attention to the PROM, which contains, in electronically usable form, the computer program for the game. While the PROM device contains the program specifically written for the ‘Scramble’ game, there are undoubtedly some items of program stored in memory devices located in other components of the game. Whether located in the PROM prepared for this particular game or elsewhere in the total assembly, all portions of the program, once stored in memory devices anywhere in the game, are fixed in a tangible medium within the meaning of the Act.”
Id. at 855, n. 4. The court earlier indicated a recognition of the difference between ROM (generally used for video games) and RAM. “RAM, used in most sophisticated computers, is a memory device in which stored information can be changed simply by writing in new information that replaces old information.”
Id. at 854, n.1. The court’s statement in note 4 quoted above suggests it would find that a RAM, no less than a ROM, would constitute a “copy” in which the work was “fixed.”
618 “It is true, as appellants contend, that some of these sights and sounds will not be seen and heard during each play of the game in the event that the player’s spaceship is destroyed before the entire course is traversed. But the images remain fixed, capable of being seen and heard each time a player succeeds in keeping his spaceship aloft long enough to permit the appearances of all the images and sounds of a complete play of the game. The repetitive sequence of a substantial portion of the sights and sounds of the game qualifies for copyright protection as an audiovisual work.
* * *
“We need not decide at what point the repeating sequence of images would form too insubstantial a portion of an entire display to warrant a copyright, nor the somewhat related issue of whether a sequence of images (e.g., a spaceship shooting down an attacking plane) might contain so little in the way of particularized form of expression as to be only an abstract idea portrayed in noncopyrightable form, Assessing the entire effect of the game as it appears and sounds, we conclude that its repetitive sequence of images is copyrightable as an audiovisual display.”
622 “The ‘attract mode’ refers to the audiovisual effects displayed before a coin is inserted into the game. It repeatedly shows the name of the game, the game symbols in typical motion and interaction patterns, and the initials of previous players who have achieved high scores.”
“The ‘play mode’ refers to the audiovisual effects displayed during the actual play of the game, when the game symbols move and interact on the screen, and the player controls the movement of one of the symbols (e.g., a spaceship).”
Id. n.3.
623 Defendant had sold circuit boards manufactured by others and containing a microprocessor and ROMs. The program incorporated in defendant’s ROM was “virtually identical” to plaintiff’s, producing the audiovisual effects of plaintiff’s game. Defendant’s ROM circuit boards were similar to plaintiff’s, right down to an error present in the early versions of plaintiff’s game, and the initials of plaintiff’s officers. Defendant’s ROMs were physically identical to plaintiff’s, and over 85 percent of the program instructions were identical to plaintiff’s; indeed, defendant’s program listing included plaintiff’s copyright notices.
625 17 U.S.C. § 102(a) provides: “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.”
Pursuant to
17 U.S.C. § 101, a work is “fixed” in a tangible medium “when its embodiment in a copy … , by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”
“Copies” are “material objects … in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. The term ‘copies’ includes the material object … in which the work is first fixed.”
627 37 C.F.R. § 202.20(c)(2) provides:
“(2) In the case of certain works, the special provisions set forth in this clause shall apply. In any case where this clause specifies that one copy or phonorecord may be submitted, that copy or phonorecord shall represent the best edition, or the work as first published, as set forth in paragraph (c)(1) of this section.
“(i) General. In the following cases the deposit of one complete copy or phonorecord will suffice in lieu of two copies or phonorecords: (A) Published three-dimensional cartographic representations of area, such as globes and relief models; (B) published diagrams illustrating scientific or technical works or formulating scientific or technical information in linear or other two-dimensional form, such as an architectural or engineering blueprint, or a mechanical drawing; (C) published greeting cards, picture postcards, and stationery; (D) lectures, sermons, speeches, and addresses published individually and not as a collection of the works of one or more authors; (E) published contributions to a collective work; (F) musical compositions published in copies only, or in both copies and phonorecords, if the only publication of copies took place by rental, lease, or lending; (G) published multimedia kits that are prepared for use in systematic instructional activities and that include literary works, audiovisual works, sound recordings, or any combination of such works; and (H) works exempted from the requirement of depositing identifying material under § 202.20(c)(2)(ix)(B)(5) of these regulations.
“(ii) Motion pictures. In the case of published motion pictures, the deposit of one complete copy will suffice in lieu of two copies. The deposit of a copy or copies for any published or unpublished motion picture must be accompanied by a separate description of its contents, such as a continuity, pressbook, or synopsis. The Library of Congress may, at its sole discretion, enter into an agreement permitting the return of copies of published motion pictures to the depositor under certain conditions and establishing certain rights and obligations of the Library of Congress with respect to such copies. In the event of termination of such an agreement by the Library, it shall not be subject to reinstatement, nor shall the depositor or any successor in interest of the depositor be entitled to any similar or subsequent agreement with the Library, unless at the sole discretion of the Library it would be in the best interests of the Library to reinstate the agreement or enter into a new agreement. In the case of unpublished motion pictures (including television transmission programs that have been fixed and transmitted to the public, but have not been published), the deposit of identifying material in compliance with § 202.21 of these regulations may be made and will suffice in lieu of an actual copy.
“(iii) Holograms. In the case of any work deposited in the form of a hologram, the copy or copies shall be accompanied by: (A) Precise instructions for displaying the image fixed in the hologram; and (B) photographs or other identifying material complying with § 202.21 of these regulations and clearly showing the displayed image. The number of sets of instructions and identifying material shall be the same as the number of copies required.
“(iv) Certain pictorial and graphic works. In the case of any unpublished pictorial or graphic work, deposit of identifying material in compliance with § 202.21 of these regulations may be made and will suffice in lieu of deposit of an actual copy. In the case of a published pictorial or graphic work, deposit of one complete copy, or of identifying material in compliance with § 202.21 of these regulations, may be made and will suffice in lieu of deposit of two actual copies where an individual author is the owner of copyright, and either: (A) Less than five copies of the work have been published; or (B) the work has been published and sold or offered for sale in a limited edition consisting of no more than 300 numbered copies.
“(v) Commercial prints and labels. In the case of prints, labels, and other advertising matter published in connection with the rental, lease, lending, licensing, or sale of articles of merchandise, works of authorship, or services, the deposit of one complete copy will suffice in lieu of two copies. Where the print or label is published in a larger work, such as a newspaper or other periodical, one copy of the entire page or pages upon which it appears may be submitted in lieu of the entire larger work. In the case of prints or labels physically inseparable from a three-dimensional object, identifying material complying with § 202.21 of these regulations must be submitted rather than an actual copy or copies except under the conditions of paragraph (c)(2)(ix)(B)(6) of this section.
“(vi) Tests. In the case of tests, and answer material for tests, published separately from other literary works, the deposit of one complete copy will suffice in lieu of two copies. In the case of any secure test the Copyright Office will return the deposit to the applicant promptly after examination: Provided, That sufficient portions, description, or the like are retained so as to constitute a sufficient archival record of the deposit.
“(vii) Machine-readable works. In cases where an unpublished literary work is fixed, or a published literary work is published only in the form of machine-readable copies (such as magnetic tape or disks, punched cards, or the like) from which the work cannot ordinarily be perceived except with the aid of a machine or device, the deposit shall consist of:
“(A) For published or unpublished computer programs, one copy of identifying portions of the program, reproduced in a form visually perceptible without the aid of a machine or device, either on paper or in microform. For these purposes, “identifying portions” shall mean either the first and last 25 pages or equivalent units of the program if reproduced on paper, or at least the first and last 25 pages or equivalent units of the program if reproduced in microform, together with the page or equivalent unit containing the copyright notice, if any,
“(B) For published and unpublished automated data bases, compilations, statistical compendia, and other literary works so fixed or published, one copy of identifying portions of the work, reproduced in a form visually perceptible without the aid of a machine or device, either on paper or in microform. For these purposes: (1) “Identifying portions” shall mean either the first and last 25 pages or equivalent units of the work if reproduced on paper, or at least the first and last 25 pages or equivalent units of work if reproduced on microform, or, in the case of automated data bases comprising separate and distinct data files, representative portions of each separate data file consisting of either 50 complete data records from each file or the entire file, whichever is less; and (2) “data file” and “file” mean a group of data records pertaining to a common subject matter, regardless of the physical size of the records or the number of data items included in them. (In the case of revised versions of such data bases, the portions deposited must contain representative data records which have been added or modified.) In any case where the deposit comprises representative portions of each separate file of an automated data base as indicated above, it shall be accompanied by a typed or printed descriptive statement containing: The title of the data base; the name and address of the copyright claimant; the name and content of each separate file within the data base, including the subject matter involved, the origin(s) of the data, and the approximate number of individual records within the file; and a description of the exact contents of any machine-readable copyright notice employed in or with the work and the manner and frequency with which it is displayed (e.g., at user’s terminal only at sign-on, or continuously on terminal display, or on printouts, etc.). If a visually perceptible copyright notice is placed on any copies of the work (such as magnetic tape reels) or their container, a sample of such notice must also accompany the statement.
“(viii) Works reproduced in or on sheetlike materials. In the case of any unpublished work that is fixed, or any published work that is published, only in the form of a two-dimensional reproduction on sheetlike materials such as textile and other fabrics, wallpaper and similar commercial wall coverings, carpeting, floor tile, and similar commercial floor coverings, and wrapping paper and similar packaging material, the deposit shall consist of one copy in the form of an actual swatch or piece of such material sufficient to show all elements of the work in which copyright is claimed and the copyright notice appearing on the work, if any. If the work consists of a repeated pictorial or graphic design, the complete design and at least part of one repetition must be shown. If the sheetlike material in or on which a published work has been reproduced has been embodied in or attached to a three-dimensional object, such as wearing apparel, furniture, or any other three-dimensional manufactured article, and the work has been published only in that form, the deposit must consist of identifying material complying with § 202.21 of these regulations instead of a copy.
“(ix) Works reproduced in or on three-dimensional objects. (A) In the following cases the deposit must consist of identifying material complying with § 202.21 of these regulations instead of a copy or copies: (1) Any three-dimensional sculptural work, including any illustration or formulation of artistic expression or information in three-dimensional form. Examples of such works include statues, carvings, ceramics, moldings, constructions, models, and maquettes; and (2) any two-dimensional or three-dimensional work that, if unpublished, has been fixed, or, if published, has been published only in or on jewelry, dolls, toys, games, or any three-dimensional useful article.
“(B) In the following cases, the requirements of paragraph (A) of this § 202.20(c)(2)(ix) for the deposit of identifying material shall not apply: (1) Works that are reproduced by intaglio or relief printing methods on two-dimensional materials such as paper or fabrics; (2) three-dimensional cartographic representations of area, such as globes and relief models; (3) works that have been fixed or published in or on a useful article that comprises one of the elements of the unit of publication of an educational or instructional kit which also includes a literary or audiovisual work, a sound recording, or any combination of such works; (4) published works exempt from the deposit of copies under section 407 of Title 17 and § 202.19(c) of these regulations, where the “complete” copy of the work within the meaning of paragraph (b)(2) of this section consists of a reproduction of the work on two-dimensional materials such as paper or fabrics; (5) published works consisting of multiple parts that are packaged and published in a box or similar container with flat sides and with dimensions of no more than 12 × 24 × 6 inches, and that include among the copyrightable elements of the work, in addition to any copyrightable element on the box or other container, three or more three-dimensional, physically separable parts; and (6) works reproduced on three-dimensional containers or holders such as boxes, cases, and cartons, where the container or holder can be readily opened out, unfolded, slit at the corners, or in some other way made adaptable for flat storage, and the copy, when flattened, does not exceed 96 inches in any dimension.
“(x) Soundtracks. For separate registration of an unpublished work that is fixed, or a published work that is published, only as embodied in a soundtrack that is an integral part of a motion picture, the deposit of identifying material in compliance with § 202.21 of these regulations will suffice in lieu of an actual copy or copies of the motion picture.
“(xi) Oversize deposits. In any case where the deposit otherwise required by this section exceeds ninety-six inches in any dimension, identifying material complying with § 202.21 of these regulations must be submitted instead of an actual copy or copies.”
629 See
Stern v. Kaufman, supra. The court also noted
Amusement World and
Drikschneider, infra. 631 Wherein multiple patterns of increasing generality reach a point where copyright protection is no longer appropriate for fear of restraining use of ideas.
632 Where the two are indistinguishable, copyright will protect only against identical copying.
633 Incidents, characters or settings indispensable to the idea, and similarity of expression necessarily resulting from the fact that the idea can be expressed in a stereotyped form, preclude a finding of actionable similarity.
634 The court described the similar features.
635 The references made by retailers and sales clerks who described defendant’s game by referring to plaintiff’s, was also additional extrinsic evidence of similarity.
640 § 411(a) requires registration prior to instituting suit.
641 § 401(a) requires that “[w]henever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner, a notice of copyright as provided by this section shall be placed in all publicly distributed copies from which a work can be visually perceived, either directly or with the aid of a machine or device.”
645 “[I]f the similarity between the works is so striking that the possibility of independent creation is precluded, a court may find that copying occurred without direct proof of access,” citing
Ferguson v. NBC Co., 584 F.2d 111, 113;
Testa v. Janssen, 492 F. Supp. 198, 202–04;
Knickerbocker Toy Co. v. Genie Toys, Inc., 491 F. Supp. 526, 528 (E.D. Mo. 1980). “The burden on the plaintiff of proving that two works are strikingly similar is a heavy one. To prove similarities are striking, [the plaintiff] must demonstrate that ‘such similarities are of a kind that can only be explained by copying rather than by coincidence, independent creation or prior common source … .’ ”
214 U.S.P.Q. at 429, quoting from
Testa at 203.
646 Defendant did not reproduce copies, but rather sold “games which housed copies of the plaintiff’s work. The copies of the work were the printed circuit boards which contained the plaintiff’s work and which were manufactured by” one of the defendants.
648 Section 106(2) provides an exclusive right to prepare derivative works; section 106(4) sets forth an exclusive right to perform an audiovisual work publicly. Section 101 defines a derivative work as one “based upon one or more pre-existing works, such as * * * any * * * form in which a work may be recast, transformed, or adapted.”
649 Defendant did not copy, or induce others to copy, those tapes.
651 The court analogized this to copyrighting a game board, and quoted Nimmer for the proposition that a game board is copyrightable.
211 U.S.P.Q. at 1158.
654 Id. at 1160. As a second reason why technological breakthroughs of general utility do not constitute infringement, the court relied on the
Betamax district court decision holding that sale of an uncopyrighted staple article does not result in liability for infringement.
Universal Studios v. Sony Corp. of America, 480 F. Supp 429, 203 U.S.P.Q. 656 (C.D. Cal. 1979), aff’d in part, reversed in part en banc, 659 F.2d 963, 221 U.S.P.Q. 761, 773–774 (9th Cir. 1981), rev’d, (1984).
656 The Office confirmed in mid-1981 that deposit requirements for videogames would continue to be a tape of attract and play mode, a synopsis, and identifying material showing position of the notice.
657 Indeed, defendant’s contained an error embodied in plaintiff’s.
658 17 U.S.C. § 408(b) provides: “Deposit for Copyright Registration.—Except as provided in subsection (c), the material deposited for registration shall include—* * * (3) in the case of a work first published outside the United States, one complete copy or phonorecord as so published … .”
659 Section 408(c) provides in pertinent part:
“(1) The Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration, and the nature of the copies or phonorecords to be deposited in the various classes specified. The regulations may require or permit, for particular classes, the deposit of identifying material instead of copies or phonorecords, the deposit of only one copy or phonorecord where two would normally be required, or a single registration for a group of related works. This administrative classification of works has no significance with respect to the subject matter of copyright or the exclusive rights provided by this title.”
660 Defined as “photographic prints, transparencies, photostats, drawings, or similar two-dimensional reproductions or renderings of the work, in a form visually perceivable without the aid of a machine or device.”
37 C.F.R. § 202.21.
662 17 U.S.C. § 101 states in part that “copies” are “material objects … in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”
665 “Rather, the ROMs contain a number of symbols or patterns which are combined in various ways by the microprocessor to make up the images seen on the screen.”
216 U.S.P.Q. at 419.
666 Looking to the legislative history, defendant noted that the House Judiciary Comm. had reported:
“[T]he definition of ‘fixation’ would exclude from the concept purely evanescent or transient reproductions such as those projected briefly on a screen, shown electronically on a television or other cathode ray tube, or captured momentarily in the ‘memory’ of a computer.”
But the court held that Congress was speaking of live telecasts nowhere recorded, which would preclude any identical reproduction, clearly distinguishing that from the material recorded in the ROMs.
668 This display was held to be the copyrighted work.
672 § 101 defines a derivative work as “a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.”
674 Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., No. C-90-1586-RHS (N.D. Cal. 25 June 1990).
675 Galoob recited other defenses to copyright infringement as well: the same effect could be obtained by appropriately manipulating buttons on the NES or with hardware marketed by Nintendo (so that the resulting works are not derivative); Nintendo encouraged creation of the type of displays resulting here by publishing source code (so that there was no infringement). Nintendo asserted that Galoob did not use the features of the game, but rather used other methods of altering the work; and that Galoob’s conduct was not authorized by Nintendo.
677 See
§ 4.04[1] supra for a discussion of the computer program aspects of this case. Defendant argued that the visual display and the program were so “intertwined” as to preclude separate consideration.
678 The court noted that after substitution of defendant’s five ROMs, if plaintiff’s second character ROM were left in place, defendant’s game was substantially similar to PAC-MAN. That would make the creator a direct infringer; if defendant sold his kit with directions or encouragement to leave that ROM in place, defendant would be a contributory infringer. The plaintiff contended that even if defendant marketed a kit which instructed users to remove that ROM, defendant would be liable for infringement if these instructions were not followed. The court declined to rule, noting there was no evidence as to what purchasers of the kit would likely do.
The court distinguished the Ninth Circuit “Betamax” decision (subsequently reversed) by noting that contributory infringement was found there because reproduction of copyrighted materials was “the most conspicuous use” of defendant’s product.
Universal City Studios, Inc. v. Sony Corp. of America, 659 F.2d 963, 975, 211 U.S.P.Q. 761, 773 (9th Cir. 1982),
rev’d,
464 U.S. 417, 220 U.S.P.Q. 665 (1984). Here, however, there was no evidence that defendant expected or encouraged its customers to infringe. Rather, defendant instructed its purchasers to install the kit so as not to infringe. In light of this statement, the court’s footnote 4 is surprising (
219 U.S.P.Q. at 48):
“We note that the [defendant’s] modification kit installation instructions in the record as plaintiff’s exhibit 6 do not in fact direct purchasers to remove [plaintiff’s second character ROM]. It was represented to us that this was the result of oversight merely. The [defendant’s] modification kit demonstrated at the hearing did not have [plaintiff’s second character ROM] in place and we naturally assumed that if [defendant’s kit] were marketed, proper instruction on its installation would be provided which would direct removal of [plaintiff’s second character ROM].”
679 The court did restrain defendant’s sale of the kit, however, based on infringement of the copyright in the computer program itself. See
§ 4.04[1] supra. 681 Of particular interest is the court’s discussion of Third Circuit law on copying: access plus substantial similarity suffice to prove copying; dissection, as well as expert testimony, is permitted on the similarity issue. To be actionable, the copying must be shown to have gone so far as to constitute improper appropriation. In making this latter determination, the test is the impression of a layman viewing both works and concentrating on their gross features; in this determination, dissection and expert testimony are irrelevant.
Id. at 820.
682 17 U.S.C. § 410(a) provides:
“(a) When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office. The certificate shall contain the information given in the application, together with the number and effective date of the registration.”
683 The court noted that, even though a work is based on a prior work, an author who contributes a distinguishable variation may secure copyright protection as to his variation.
686 For example, the symbols appearing on the display screen, the ways they move around, and the sounds of the game.
687 “Given the bulkiness and cost of the actual video game, a video tape of the audiovisual presentation in the game is a reasonable ‘alternative identifying material.’ ” In support of this statement, the court cited
Drikschneider, supra (Findings 15, 20, and 25), and
Stern, supra at 8.
688 There was no direct evidence of copying.
692 Id. The court listed some of these.
694 19 U.S.C. §§ 1337 provides in part:
“Unfair practices in import trade. (a) Unfair methods of competition declared unlawful. Unfair methods of competition and unfair acts in the importation of articles into the United States, or in their sale … the effect or tendency of which is to destroy or substantially injure an industry, efficiently and economically operated, in the United States, or to prevent the establishment of such an industry, or to restrain or monopolize trade and commerce in the United States, are declared unlawful, and when found by the [United States International Trade] Commission to exist shall be dealt with, in addition to any other provisions of law, as provided in this section. * * *”
696 This subsection provides:
“(c) In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.”
697 As to the remainder of the play mode, the ITC saw an additional issue which was unnecessary to treat in this investigation: Whether the player’s participation makes the player a co-author.
698 The Commission espoused three reasons for declining to rule as to the play mode:
“First, for statistical reasons, it is virtually impossible for a performance of Galaxian ever to duplicate that performance fixed in the video tape. If we were to hold that such performances could infringe a copyright in the play mode, we might be protecting the game itself or its mode of play, items which are specifically not subject to copyright protection. Second, each performance of the Galaxian play mode depends, in part, on the player. It is therefore possible that the player may be considered a ‘coauthor’ of each performance of the play mode. Our research has indicated no legislative history or case law on whether coauthored works of this sort are subject of copyright, and we decline to rule on this issue. Third, in view of the remedy we are granting in this investigation, a ruling on either copyrightability or infringement of the play mode is unnecessary. We are ordering the exclusion of those games and cabinetry which infringe complainant’s trademark rights and copyright in the attract mode and in the first few moments of the play mode.”
214 U.S.P.Q. at 227.
699 “1. Whether an audiovisual work is an original work of authorship or whether it is derived from another original work? 2. Whether the videotapes are a fixation of the original work of authorship or whether they are a photograph of a fixed copy of the original work? 3. For purposes of determining the proper form of deposit and registration, whether the work was first published in Japan or the United States.”
214 U.S.P.Q. at 225, n.25.
701 The test for preliminary relief was whether there was reason to believe there was a violation of section 1337.
19 U.S.C. § 1337(e).
702 Its reasoning was that copyright subsists in original works of authorship fixed in any tangible medium, including audiovisual. Fixation requires an embodiment sufficiently stable to permit it to be perceived or reproduced for a period of more than transitory duration. The Commission also relied on the holdings of
Stern, supra and
Drikschneider, supra. 703 “The images which appear on the screen during the play mode appear to be of transient duration. It is true that such images are fixed in the computer software, as are all portions of the audiovisual works. However, the images which appear and the sequence in which they appear are controlled by the player. Thus, it is unlikely that any specific image or sequence of images in the play mode can be reproduced at will, even by an expert player. Therefore, even though the complainant argues that the protection of the audiovisual work extends to the play mode, I have reservations. Moreover, it seems to me that in seeking to protect the play mode, complainant could be seeking to protect the underlying software which embodies the machine’s responses to the player’s stimuli. This case is based on the audiovisual displays, not on the software, and the Commission must be careful not to extend unwarranted protection.”
216 U.S.P.Q. at 1115, n.20.
This appears to raise a number of points. First, does the sequence of images on the CRT meet the fixation requirement of
17 U.S.C. § 102(a):
“Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device … .”
Secondly, if one seeks to protect the sequence of images on the CRT, is it necessary to copyright the underlying software? Commissioner Stern asserts it is unclear whether the Copyright Office was informed it was dealing with audiovisual displays of a videogame. And thirdly, is the player a co-author?
704 She notes that the Administrative Law Judge recognized that the works as originally published were not identical to those deposited, but found no copyrightable differences, a conclusion which Commissioner Stern believes is not clearly established by the record.
705 Commissioner Stern concluded that complainant should have requested special relief from the deposit requirement, pursuant to
37 C.F.R. § 202.20(d), but she did not state whether this failure vitiated the copyright.
709 The chain of rights under which plaintiff made its claim was found to be unclear.
Id. at 747–48.
710 At the time of the hearing for a preliminary injunction, or for a temporary restraining order (it is unclear which), defendant was marketing his product, and plaintiff’s had not yet developed his—a circumstance which the court took into account in balancing hardships.
712 Nintendo of America v. Bay Coin Distributors, 1982 Copy L. Dec. ¶ 25,409 (U.S.D.C. E.D.N.Y. 1982).
714 U.S.D.C., D. Ariz., Civ. 81—328 PHX—VAC.
715 Order entered April 17, 1981.
716 Cinematronics, Inc. v. K. Noma Enterprises Co., Ltd., U.S.D.C. D. Ariz., Civ. 81–439 PHX—EHC. The same individual defendant was apparently also a party to a consent judgment in Midway Mfg. Co. v. Sutra Import Corp. et al, U.S.D.C. D. Ariz., Civ. No. 81–438 PHX–CLH. See order filed Jan. 12, 1982.
717 Atari, Inc. v. Armenia, Ltd., 1981 Copy. L. Dec. ¶ 25,328 (U.S.D.C., N.D. Ill., 11/3/81).
718 H.R. 94-1476, 94th Congr. 2d Sess. p. 120 (1976).
723 P. Goldstein,
Copyright: Principles, Law and Practice, ¶ 4.2.1. at p. 379 (1989).
729 Id. “It was [plaintiff’s] expertise and creativeness that designed the methods by which the raw information would be stored, held in memory, collated, assembled, updated, incorporated, and added to the visual screens or included in print-outs, subject to recall. [Plaintiff] designed the flow of the system, establishing communication and coordination among the various functions, and in general, made the system operate as a successful and useful business tool … it was [plaintiff] alone that was the author of the source and object codes and the designer of the system.”
Id.
730 Id. at 1318–1319. Curiously enough, the court also found no evidence that the parties intended that defendant’s contribution should merge into the final system.
730.2 They “provided the layout and graphic design of the screens and reports to be generated, selected all of the data that was to be included, and designed the layout and presentation of that data.”
Id. at 1056.
730.3 Sears’ contribution included: providing to plaintiff all reports, text and screen mock-ups produced by the incomplete Sears system; giving plaintiff full access to the incomplete Sears system; selection and arrangement of all data to be included; numerous conferences with plaintiff regarding development; and selection and introduction of new items necessary for mechanizing Sears’ business. The court noted that the Seventh Circuit had not ruled on whether the contribution of each joint author must itself by copyrightable subject matter. The court also viewed some of Sears’ contributions as arguably coyrightable.
730.6 Sears had demonstrated it designed all the reports and screens, selected all the data and designed the data arrangement, determined and provided all the formulas for Sears’ business processes for inclusion, and developed new terminology for use with the system.
730.7 Napoli v. Sears, Roebuck & Co., Comp. Ind. Lit. Rep. ¶ 17,929 (16 Dec. 1994).
730.8 Napoli v. Sears, Roebuck & Co., No. 93 C 0619 (N.D. Ill. 14 July 1994).
730.92 The court noted that the Copyright Office would not even accept a separate application to register the screens.
730.11 In pertinent part,
17 U.S.C. § 101 provides: “A ‘joint work’ is a work prepared by two or more authors … .”
730.12 In pertinent part,
17 U.S.C. § 302(b) provides: “In the case of a joint work prepared by two or more authors … .”
730.13 Aymes v. Bonelli, 4 CCH Computer Cases ¶ 47,034 (S.D.N.Y. 1994).
731 Section 106 provides:
§ 106. Exclusive rights in copyrighted worksSubject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly.
732 The right “to prepare derivative works based upon the copyrighted work,”
17 U.S.C. § 106(2) (Supp. 1992), may also be pertinent. However, the discussion herein applies generally with equal vigor to that right.
733 Section 101 of the Copyright Act,
17 U.S.C. § 101 (Supp. 1992), defines “copies” as:
material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.
734 Section 101 of the Copyright Act,
17 U.S.C. § 101 (Supp. 1992) provides in pertinent part:
A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.
735 See Williams Elecs., Inc. v. Artic Int’l, Inc., 685 F.2d 870, 215 U.S.P.Q. 405 (3d Cir. 1982);
Apple Computer, Inc. v. Franklin Computer, 714 F.2d 1240, 219 U.S.P.Q. 113 (3d Cir. 1983),
petition dismissed, 464 U.S. 1033 (1984);
Apple Computer Inc. v. Formula Int’l Inc., 725 F.2d 521, 221 U.S.P.Q. 762 (9th Cir. 1984);
Tandy Corp. v. Personal Microcomputers, Inc., 524 F. Supp. 171, 214 U.S.P.Q. 178 (N.D. Cal. 1981);
Hubco Data Prods. Corp. v. Management Assistance, Inc., 219 U.S.P.Q. 450 (N.D. Idaho 1983);
Midway Mfg. Co. v. Strohon, 564 F. Supp. 741, 219 U.S.P.Q. 42 (N.D. Ill. 1983).
736 Indeed, permanent representation of a program in RAM would totally disable a typical computer from performing any tasks other than those performed by that program, an obviously unacceptable and unworkable situation for a general purpose computer. For a discussion of RAM, see
Apple Computer, Inc. v. Franklin Computer Corp., 545 F. Supp. 812, 813, 215 U.S.P.Q. 935, 937 (E.D. Pa. 1982),
rev’d on other grounds, 714 F.2d 1240, 1243, 219 U.S.P.Q. 113, 116 (3d Cir. 1983);
Stern Elec., Inc. v. Kaufman, 669 F.2d 852, 854 (2d Cir. 1982).
737 A microsecond is one millionth of a second.
738 H.R. Rep. No. 94-1476, 94th Congr., 2d Sess. (1976).
739 The “Commission On New Technological Uses of Copyrighted Works.”
741 H.R.
Rep. No. 94-1476, at 53 (1976) [hereinafter “House Report”].
741.1 Specifically, the bill would add the following at the end of § 117:
“(c) Machine Maintenance or Repair.—Notwithstanding the provisions of Section 106, it is not an infringement for the owner or lessee of a machine to make or authorize the making of a copy of a computer program if such copy is made solely by virtue of the activation of a machine that lawfully contains an authorized copy of the computer program, for purposes only of maintenance or repair of that machine, provided that—
(1) such new copy is used in no other manner and is destroyed immediately after the maintenance or repair is completed, and
(2) with respect to any computer program or part thereof that is not necessary for that machine to be activated, such program or part thereof is not accessed or used other than to make such new copy by virtue of the activation of the machine.
“(d) Definitions.—For purposes of this section—
(1) the term “maintenance” of a machine means servicing the machine in order to make it work in accordance with its original specifications and any changes to those specifications authorized for that machine; and
(2) the term “repair” of a machine means restoring it to the state of working in accordance with its original specifications and any changes to those specifications authorized for that machine.”
744.1d A buffer is a storage device, generally rather small, for data, and is a form of RAM.
744.1e In rejecting the latter argument, the district court noted that the “aggregate effect of the buffering” was to copy all of defendant’s programming, which “can hardly be called
de minimis.”
744.1f The Second Circuit set forth no basis for this assumption.
744.1i This resolution rendered it unnecessary to determine whether any copies produced by buffering data would be
de minimis.
744.2 The customers of Triad computers were primarily auto parts dealers.
744.3 Quoting from
Peak, 991 F.2d at 519. The
Triad court also rejected Southeastern’s argument that the entire program never resided at one time in RAM, noting that infringement does not require copying of the entire work.
744.5 The court viewed the thrust of this criterion as determining whether the challenged use, if it became widespread, would adversely affect the market for the copyrighted work.
744.6 The court viewed the thrust of this criterion as distinguishing between copying that is simple exploitation of another’s creative efforts, and copying incident to a legitimate use of the copyrighted work.
744.7 “The loading of customers’ operating system software into RAM is merely an incidental step in accessing the computer hardware or other software applications that need servicing. Similarly, making archival copies on disk and tape is necessary to proper maintenance.” Slip op. at 33–34.
744.8 This criterion, according to the court, reflected the dichotomy between protectable expression and unprotectable idea.
744.9 The extrinsic considerations present here included the hardware specifications, the application software compatibility requirements, and the industry demands.
744.11 “Triad has published many copies of its software and makes it available to anyone willing to pay the license fee or, before 1986, willing to purchase it outright.” Slip op. at 40. The opinion does not state whether this “publication” constituted more than making copies of object code available to purchaser or licensees; whether purchasers or licensees executed confidentiality agreements regarding the software; and whether source code was made available.
744.14 In so doing, the court focused on the requirements for a protectable work, rather than the requirements for a copy.
744.16 The four statutory factors set out in section 107 of the Copyright Act are: purpose and character of the use; nature of the copyright-protected work; amount and substantiality of the portion used in relation to the copyright-protected work as a whole; and effect of the use on the potential market for or value of the copyright-protected work.
744.17 The antitrust aspects of this case are discussed at
§ 4B.13 infra. 750 Id. at 35,
quoting, Final Report of the National Commission on New Technological Uses of Copyrighted Works (the CONTU Report) at 31 (emphasis added by the court).
753 “In this printed form, the programs are susceptible only to physical dangers, such as accidental shredding.
592 F. Supp. at 35.
754 The court found it unnecessary to decide whether the purchaser of a program on disk would be permitted to make an archival copy.
756.1 H.R. 533, introduced by Rep. Knollenberg (R-Mich.) on 17 Jan. 1995. According to Rep. Knollenberg’s staff, this legislation was a response to the Ninth Circuit’s ruling in
MAI v. Peak. 756.2 See Bill Would Permit “Rightful Possessor” of Program to Authorize Copying, 49 Pat. Trademark & Copyright J. (BNA) 303 (26 Jan. 1995).
757 17 U.S.C. § 101 provides in pertinent part:
A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
758 The nine types of works are: a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, and an atlas.
17 U.S.C. § 101 defines a compilation as: “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”
That same section defines a collective work as: “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.”
759 See § 4.10 infra for a discussion of protection of databases.
763 Thus, the conclusion does not depend on the particular locale in which the work was done.
767.1 Aymes v. Bonelli, 4 CCH Computer Cases ¶ 47,034 (S.D.N.Y. 1994).
767.4 Report of the National Commission on New Technological Uses of Copyrighted Works 13–14, 30 (1978).
772 “Mr. MacLean worked with his own software on his own computer at his own facility to complete Mercer’s obligation under its contract with NYSE. Although Mr. MacLean was a principal of Mercer for almost five years, the duration of his relationship as a consultant for Mercer on the NYSE project was fairly short. Mercer did not have the right to assign additional projects to Mr. MacLean. Mr. MacLean had absolute discretion over when and how long to work. Mercer paid Mr. MacLean for the delivery of his services as a consultant, instead of paying him a regular periodic salary. It is obvious that Mercer’s regular business is compensation consulting. It was not a part of Mercer’s regular business … to provide software for its clients’ use on personal computers; instead, prior to Mr. MacLean’s creation of the JEMSystem software, Mercer took raw data its clients provided and produced for its clients computerized reports that evaluated and synthesized the data. Mercer did not pay any payroll or social security taxes on behalf of Mr. MacLean after he ceased to be one of Mercer’s principals, nor did it thereafter provide him with workers’ compensation coverage or contribute to unemployment insurance or workers’ compensation funds. It is not known how Mercer treated its payments to Mr. MacLean for its own corporate tax purposes.”
Id. at 777.
774 The district court found that the attractiveness of the demonstration software lay in its advanced user interface.
775 Marketing subsequently generated revenues of almost $200,000.
776 The district court noted:
The majority of his work on the [software] occurred in furtherance of his personal hobby, and not to satisfy specific work obligations for Avtec. In addition, while Peiffer allowed earlier versions of the [software] to be used by Avtec for various client demonstrations, Avtec did not produce sufficient evidence to persuade the court that Peiffer’s development of the [software] was actuated by his desire to serve Avtec.
805 F. Supp. at 1319.
777.1 Neither party contended that the individual author was an independent contractor who had executed an agreement governing copyright ownership.
777.2 The court held that the employer must prove each of these three elements to succeed.
777.3 The court acknowledged that some cases have found that a work created at home during off-hours was a work made for hire.
777.4 In inquiring into purpose, the court relied on Restatement of Agency § 235 (the act of an employee is not within the scope if done with no intention to perform it as part of or incident to a service on account of which he is employed), and § 236 (conduct done in part to serve the purposes of the employee or a third person may be within the scope).