777.6 Defendant also contended that plaintiff wrote only the “pseudocode” (a relatively undetailed program-like representation of the program), which defendant’s employee then converted into the actual program code, and that this made defendant at least a joint owner of the program. Plaintiff contended that such a conversion is a rote clerical task, and not a “copyrightable contribution.” The district court rejected defendant’s contention, and the court of appeals made no holding on this point.
777.7 The opinion contains no discussion of why the defendant did not possess a license to embody the programs in the scales and sell the scales.
777.10 It would appear from this that the copyright in the COBOL version—the version at issue—should either have listed both plaintiff and another employee of defendant as joint authors, or should have listed only the other employee depending on whether any of plaintiff’s COBOL code was used).
777.11 Plaintiff was director of information systems, in which position he supervised all of defendant’s software development; computer programming per se was not among his duties.
777.12 This, even though he created the program at home, outside regular hours, on his own initiative and using his own equipment. The job often required long hours.
777.13 The fact that an employee’s predominant motive might be to benefit himself or a third person does not prevent the conduct from being within the scope of employment.
779 Plaintiff argued that this doctrine is applied only in worker’s compensation cases and is inapplicable in a copyright infringement action. But the court found contrary authority and saw no reason to confine the doctrine to such an application.
780 The court saw no need to analyze the
Reid factors because they served only to distinguish employee from independent contractor, and neither party claimed plaintiff was an independent contractor. The court gave no rationale for its summary conclusion that plaintiff was an employee of defendant.
781 Restatement Second of Agency § 228.
782 The court found immaterial plaintiff’s argument that at all times his job title was “data entry operator.”
784 17 U.S.C. § 204(a) provides: “[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”
788 Id. Emphasis in original.
795 Q-CO Industries, Inc. v. Hoffman (S.D.N.Y. 1985).
797 There were unique permutations and inversions of public domain material, a specially derived correlation table, and a modification to a standard matrix.
Id. at 1499.
806 The court seemed to equate “derivative version” with “derivative work.”
815 In a broad condemnations, the court stated: “To grant a copyright to a mere rearrangement of binary digits would effectively eliminate any authorship or originality requirement from the copyright laws.”
Id. Since the early part of this century, the patent owner bold enough to seek judicial enforcement of its right to exclude has been subject to the defense of “patent misuse.”
1 In a suit for patent infringement, a holding of patent misuse renders the patent unenforceable. In its classical form, the patent misuse defense is quite comprehensive. It is not limited to a specific number of well-defined varieties but, rather, is present wherever a court perceives an “abuse” of the patent “monopoly.”
To succeed in this defense an infringer generally need not show that the patent owner’s conduct gave rise to an antitrust violation, or was directed against the infringer, or resulted in any injury to any person. In this regard, patent misuse has been said to exist “in the air.” Metaphysicians have asked whether there is noise when a tree falls in a forest where no one can hear it. In the forest of patent misuse, there is noise.
Although the misuse defense has been raised in trade secret and copyright litigation, trade secret defendants have been uniformly unsuccessful and copyright defendants generally unsuccessful. It is said that life is full of little ironies. One of the latest Intellectual Property ironies is that, at the same time that the scope of the misuse defense is being whittled back in the patent field,
2 the defense is taking on new life in the copyright arena.
In 1990 two courts held that in appropriate circumstances copyright misuse constitutes a defense to a copyright infringement action.
Lasercomb America Inc. v. Reynolds3 and
Broadcast Music Inc. v. Hearst4 Moreover, both cases held that the nature of the copyright misuse defense is as general as that of the patent misuse defense.
A bit of background in the copyright misuse area may be helpful. In
M. Witmark & Sons v. Jensen,5 plaintiffs owned copyrights in musical compositions and claimed that defendants infringed by showing in defendants’ theaters motion pictures incorporating those compositions in their sound tracks. Plaintiffs were members of an association of authors, etc., whose purpose was to license the copyright-protected works of its members. The court found that this association had obtained a monopoly on music incorporated into motion picture sound tracks. Defendants contended that by this monopolistic method of exploitation plaintiffs extended their copyrights beyond the limits permitted by copyright law. The court agreed and, relying by analogy on patent precedent, refused to enforce the copyrights.
Similarly, in
F.E.L. Publications, Ltd. v. Catholic Bishop of Chicago6 the court dismissed claims of copyright infringement because it found misuse of copyrights in plaintiff’s hymnals and songbooks. Nevertheless, defendants who succeeded with the copyright misuse defense were few.
But in 1990 two defendants have succeeded. The parties in Lasercomb were competitors in the manufacture of steel rule dies for cutting cardboard. Plaintiff had developed a computer program that simplified the design and fabrication of these dies. Plaintiff licensed to defendant several copies of this program, and defendant proceeded to make several unauthorized copies (circumventing plaintiff’s protective devices in the process). Defendant then marketed a slightly revised copy in competition with plaintiff.
Plaintiff sued for copyright infringement and a number of other causes.
7 Defendant alleged misuse by virtue of plaintiff’s use of “standard” licensing agreement clauses that precluded licensees for 99 years from developing or marketing competitive software.
8 Defendant did not execute such an agreement, but at least one licensee of plaintiff’s did.
9 The district court rejected the defense because defendants had not explicitly agreed to the clause; because the clause was reasonable in light of the sensitive nature of the software; and because it was questionable whether the defense of copyright misuse existed.
The court of appeals admitted to uncertainty on whether the defense exists, but ultimately held that it does. That court based its rationale on the patent analogy and the court’s view that the policy of copyright law was parallel to that of patent law.
10 Further, the court followed the patent analogy in holding that no antitrust violation need be shown for misuse to exist.
11 Rather, the question was simply whether the copyright was being used in a manner violative of the public policy embodied in the grant of a copyright. Conceding that plaintiff had a right to protect against copying of its program code, the court found that plaintiff had gone beyond that and had attempted to suppress any independent implementation by licensees of the ideas expressed in the program.
12 Further, again following the patent analogy the court held that, because the conduct violated public policy, it was irrelevant that defendant itself was not party to any such agreement.
Broadcast Music dealt with alleged improprieties in plaintiff’s exploitation of the copyrights of its affiliates. This court also dealt with the issue of whether the defense of copyright misuse existed. Although noting that some courts had flatly rejected the doctrine,
Broadcast Music came to a conclusion similar to that of
Lasercomb, and recognized both the defense, and its identity (in terms of elements) with the patent misuse defense.
13 In short, these two courts have engrafted in gross the patent misuse defense onto the copyright tree. Their rationale was based on the parallel public policies underlying the creation of these two regimes of protection, and the court’s belief that this parallelism requires an analogous result in regard of an abuse of the respective exclusive rights. The underlying assumption seems to be that an Intellectual Property right, be it of the patent or copyright variety, is a monopoly whose abuse should not be tolerated. As applied to software, the copyright scope has expanded beyond its traditional bounds. In that sense, the copyright vehicle is increasingly perceived as more potent, courts are apparently more receptive to arguments that copyright can be abused.
In DSC Communications Corp. v. DGI Technologies, Inc.,
13.1 an appellate court espoused the notion that defendant may well have made out a case of copyright misuse. Plaintiff DSC manufactured telephone switches, and defendant DGI manufactured microprocessor cards used in those switches. When a microprocessor card is inserted into a switch, the microprocessor must “boot up,”
i.e., it must read into its RAM DSC’s copyrighted operating system program (the “program”), stored in ROM in the switch. DSC did not sell the program, but rather licensed it to its customers; one such customer was NTS Communications Corp. The license agreement between DSC and NTS permitted NTS to use the program only in connection with the DSC switch. DGI attempted to develop a card that would be used, instead of a card manufactured by DSC, in DSC switches. DSC alleged that in this attempt DGI made unauthorized copies of the program, and therefore infringed.
The microprocessor had to be compatible with the program. To obtain access to the program, DGI gained access to a switch owned by NTS, made copies of the program, and removed the copies from NTS’ premises.
13.2DSC sued for misappropriation of trade secrets and copyright infringement. The district court granted a preliminary injunction restraining DGI from making any copies of the program that could be removed from NTS’ premises. That injunction did not preclude DGI from downloading the program into RAM on a microprocessor card, to the extent that was incidental to the testing or operating of a compatible card, so long as the copy could not be removed from the customer location. Accordingly, DSC could no longer take copies back to its lab for study, but could test its card on NTS’ phone switch, even though the program would be on the card.
13.3 DSC appealed, claiming that the injunction was too narrow.
The parties agreed that DSC owned the copyright in the program, but disagreed on whether loading the DGI microprocessor card’s RAM constituted impermissible copying. Because the DSC license agreement with NTS permitted the software to be booted up only on DSC equipment, the court found the copying to be unauthorized. However, DGI argued the defense of copyright misuse. In its decision on the motion for preliminary injunction, the district court found that plaintiff did not have a substantial likelihood of prevailing on the merits, because DGI might well prevail on this defense.
The court of appeals held that the district court did not err in so concluding. The Fifth Circuit agreed with the
Lasercomb characterization of the copyright misuse defense. The Fifth Circuit was concerned that DSC might be attempting to use its copyright to obtain “a patent-like monopoly over unpatented microprocessor cards.”
13.4 Any competitive card had to be compatible with the program. To ensure compatibility, a competitor had to test the card on a DSC switch. Such a test necessarily required making a copy of the program by downloading it into the card’s memory when the card was booted up. Permitting DSC to preclude such copying would prevent the development of any competing card—even though the card was not patented. Such an “exclusive right or limited monopoly” was not within the copyright grant.
The court affirmed, noting, however, that upon remand the lower court might ultimately determine that there had been no misuse, or that DGI had unclean hands and should not be permitted to assert the defense.
In a software case decided prior to the Fourth Circuit’s
Lasercomb opinion,
Data Gen. v. Grumman,14 the defendant third party maintenance company defended a copyright infringement suit with an allegation of copyright misuse. Defendant claimed that plaintiff hardware/software manufacturer unlawfully tied the sale of replacement parts for its hardware to the purchase of hardware maintenance services, and sought by virtue of its copyright on diagnostic software to keep defendant from providing certain services. In granting plaintiff’s motion for a preliminary injunction, the court noted that in the past 40 years only one case had credited the defense of copyright misuse, and stated that it was unlikely the “yet not fully developed” concept would resolved in this case in favor of defendant.
Trial resulted in judgment for plaintiff on the issues of copyright infringement and misappropriation of trade secrets.
15 One basis for defendant’s post-trial motion for a new trial or judgment as a matter of law was invalidity of the copyright certificate because of certain differences between the deposit supporting its issue and the object code of the program.
16At trial defendant showed differences between the deposit and the program. In its rebuttal case, plaintiff conceded that it made innocent clerical errors in filing the deposit, and had discovered that fact only during trial. The court saw no reason to view the errors or omissions as intentional.
17 “Grumman’s [defendant’s] claim that the deposit errors invalidate the copyright registrations is unsupported by the facts and unwarranted by the law:
Only the “knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action … or denying enforcement on the ground of unclean hands … .”
18On appeal (decided after the Fourth Circuit’s
Lasercomb decision), Grumman argued the copyright was misused by virtue of its importance in certain alleged antitrust violations of Data General.
19 Data General argued that there was no such thing as a copyright misuse defense. The court held that there was no need for it to decide that issue because the only misuse alleged was by virtue of the alleged antitrust violations, and the court granted summary judgment dismissing those antitrust claims. The court also noted that, even if conduct spelling out misuse had been found, Grumman might not be allowed to use the defense. “If copyright misuse is an equitable defense, a defendant that has itself acted inequitably may not be entitled to raise such a defense… . Here, the jury specifically found that Grumman violated the district court’s 1988 injunction against use of [the software in question].”
20On the other hand, neither the Lasercomb nor the Broadcast Music court considered the inherent differences in the scope of exclusivity between these two different types of Intellectual Property. At least arguably there is a conceptual difference between precluding the practice of a patented invention, and precluding copying of a copyright-protected work. In general the scope of exclusivity is broader in the former situation. Some observers believe this difference in the nature of the exclusive right should be reflected in different judicial attitudes on the existence, and attributes, of a misuse defense. Those who subscribe to that school of thought argue that, at the very least, this difference should be considered by a court before it denies to a copyright owner relief against an infringer.
In
Assessment Technologies v. Wiredata20.1 the Seventh Circuit dealt with the issue of just what about a database might be protected by copyright
20.2 and along the way had some interesting comments regarding copyright misuse. The data in question pertained to real property and comprised such information as owner’s name, and property address, age, assessed valuation, etc. Municipalities used this data for purposes of property taxation. It was collected for them by tax assessors who visited the property, spoke with owners, and made other inquiries. Municipalities generally made this data available to any person who would pay the cost of copying it, and were required by a state open records law to do so, except for “copyrighted materials.” Plaintiff developed a “Market Drive” computer program for compiling this data; it was the copyright in that program that plaintiff asserted.
20.3 When the data was entered, this program, in conjunction with a Microsoft Access database, allocated the data to 456 fields grouped into 34 master categories. However, defendant was not interested in obtaining the data in that format, as its interests were different from the taxing authorities’.
The appellate court held that use of the program to extract the data for defendant would not infringe the copyright, since it was only the organization of the data that was protected by the copyright, and defendant wanted a different organization. Moreover, the court held that, even if use of the program to extract the data would have presented a prima facie case of infringement, such use would have been fair use under the doctrine of Sega v. Accolade because it would have involved necessary intermediate copying to sell a non-infringing product. The license restrictions were not applicable against defendant, as it was not a party to the contract.
The court also had some comments to make about plaintiff’s assertion of its copyright in this context. Compilation copyright here gave plaintiff rights in an “empty database,” i.e., a “bin that tax assessors filled with the data… . To try by contract or otherwise to prevent the municipalities from revealing their own data, especially when, as we have seen, the complete data are unavailable anywhere else, might constitute copyright misuse.” The court characterized the copyright misuse defense as one of preventing “copyright holders from leveraging their limited monopoly to allow them to control areas outside the monopoly.” In the Seventh Circuit it had not been decided whether copyright misuse could exist in the absence of an antitrust violation, and defendant in the instant case had introduced no evidence of the market power plaintiff had acquired solely by virtue of its having the copyright. The court went on to discuss different theories of copyright misuse, noting that the data in these tax assessment databases was beyond the scope of plaintiff’s copyright. Nevertheless, since it found no infringement, the court had no need to, and did not, decide whether copyright misuse could be shown absent a finding of an antitrust violation.
Atari Games Corp. v. Nintendo of America, Inc.21 centered around the Nintendo Entertainment System (“NES”), a game machine that accepts certain videogame cartridges to display videogames. The NES employed a security system, through a microprocessor in the NES and another in the cartridge, permitting only games authorized by Nintendo to be used with the NES. In Nintendo’s agreements with third party software developers, the developers agreed for a two year period not to provide to other game systems, games licensed for NES. Nintendo claimed copyright in the programs comprising the security system, and also claimed patent protection of the system. Atari sought (1) summary judgment that Nintendo engaged in copyright and patent misuse precluding the copyright and patent claims asserted by Nintendo, (2) partial summary judgment on Nintendo’s patent infringement claim by virtue of implied license; and (3) a preliminary injunction precluding Nintendo from coercing retailers from doing business with Atari.
22 The court denied the first two motions because it saw no patent misuse or implied license, and denied the third because it held that Atari had not met the conditions for preliminary relief.
The patent misuse alleged was the two-year exclusivity requirement in the developer agreements. Looking to
35 U.S.C. Sec. 271(d),
23 the court held that a patentee has a right to exclude others from selling non-staples used substantially only with its invention. The court saw
35 U.S.C. Sec. 271(c)24 as providing the dividing line between contributory infringement and patent misuse. The court saw the cartridges for use with the NES as non-staple items. While the Ninth Circuit had found patent misuse where a licensee was prohibited from manufacture of any equipment of the type licensed except that manufactured under the patent, here licensee was precluded only as to specific games, and only for two years. There was no evidence this thwarted the creativity of licensees.
On the copyright misuse issue, the court noted that the Ninth Circuit had not determined whether copyright misuse constituted a defense. The court also saw the two-year restriction here as different from the 99-year restriction in
Lasercomb,25 a case relied on by Atari.
On the implied license issue, Atari argued it could not contributorily infringe because the consumer had an implied license.
26 The court disagreed with the assertion that the user was licensed. The patent covered the combination of the NES and the cartridge, with neither item itself being subject to the patent. Since the court saw the cartridge as contributory infringement.
On the preliminary injunction issue, the court held that Atari did not show a probability of success, or that the balance of hardship tipped sharply in its favor. Accordingly, the motion was denied.
In
qad v. ALN27 plaintiff qad sued for a number of causes, including infringement of the copyright in plaintiff’s software. Defendant moved for summary judgment that this claim be dismissed because plaintiff had misused its copyright. Plaintiff designed its software to supersede a Hewlett-Packard (“H-P”) package to whose source code some of plaintiff’s employees had access before plaintiff’s software was developed. qad copied in its package much of the selection, order, arrangement and definitions of fields from the H-P software. Plaintiff’s copyright registration did not mention that its software was based on any pre-existing H-P work.
Specifically, defendant alleged that plaintiff’s failure to identify plaintiff’s software as derivative, and plaintiff’s assertion of originality in prosecuting this lawsuit for three years, comprised misuse
28 rendering the copyright unenforceable. While the court did not rule on whether a misleading statement on the registration itself comprised misuse, it did hold that an attempt to enforce the copyright claimed in such a registration would be misuse. The court noted language from
Lasercomb29 to the effect that because patent and copyright law serve parallel public interests, a misuse defense should apply to an infringement action based on either; the grant of “monopoly power” should not extend to property not covered.
The court saw the misuse here as “even more egregious” than the one found in
Lasercomb, for it saw here an abuse not only of the copyright laws, but also of the judicial process. The court had earlier granted qad a preliminary injunction based on its copyright claim, relying on qad’s assertions that its software was original, and that ALN must have copied from qad because its software was so similar. But in the instant opinion the court found that qad had used materials it copied from H-P “to induce this Court to grant it an injunction and thus misused its copyright.”
30 The court specifically declined to rule on whether plaintiff’s copyright was valid, whether plaintiff committed fraud on the Copyright Office, whether there was a valid H-P copyright, and which parts of plaintiff’s program were copied.
A 1991 decision,
Engineering Dynamics v. Structural,
31 also dealt with alleged copyright misuse. Plaintiff originally offered a structural engineering mainframe software package (“SACS”), and defendant offered a structural engineering personal computer package (“StruCAD”). Plaintiff claimed defendant infringed the copyrights in its SACS manual, and in its “user interface.”
Defendant alleged copyright invalidity because plaintiff, in registering its copyright in the manual, failed to state that the predecessor of its program had been found in earlier litigation to infringe the copyright of a third party (Synercom). The court, however, characterized the incident as an innocent misstatement, which did not control whether plaintiff’s program was original. Plaintiff had subsequently revised its program, and Synercom had agreed that the Synercom copyright was not infringed by the revised program. It was the copyright in that revised program that was in issue here.
In
Autoskill v. National Educational Support32 the defendant attacked the validity of plaintiff’s copyright in its software with arguments that could well have been cast in the mold of misuse allegations. Specifically, defendant claimed that the copyright application stated that the contributions of all the authors were works made for hire, even though some of the authors were independent contractors. The court found the defense to be without merit because at the time of the application the Section 101 definition of “work made for hire” was construed as embracing the relationship in which these independent contractors found themselves. Only after
Reid33 was it clear that such relationships did not qualify.
34In the early 1990’s there arose a genre of case wherein independent organizations (“ISOs”) that serviced computer hardware manufactured by others sued the manufacturer, alleging antitrust violations. In
Advanced Computer Services v. MAI,35 in the wake of
MAI v. Peak,
36 some seven independent service organizations (“ISOs”) brought an antitrust action against MAI, which counterclaimed for copyright infringement and other unlawful acts. MAI manufactured the hardware and owned copyright in the system software and in some programs used for diagnostic purposes on that hardware. Plaintiffs alleged that MAI engaged in illegal tying and monopolization in violation of sections 1 and 2 of the Sherman Act. Purchasing one of these computers required a substantial financial investment, and with proper maintenance such a computer has a useful service life of at least five years. Special training was required to maintain the hardware. MAI had sent each of the plaintiff’s a cease and desist order directing it to stop any activity that involved copying the system software. The license agreements in question precluded use by any person not an employee of a licensee. In the case of each plaintiff, one of its technicians used MAI’s system software and diagnostic software in servicing the MAI computers of ISO customers.
Plaintiffs alleged that MAI was unlawfully tying the sale of its copyrighted system software and diagnostic software to the sale of maintenance services for the hardware. They further alleged MAI exploited its market power over the sale of copyrighted software to preclude competition in the maintenance of the hardware. They alleged this conduct was both a per se and a rule of reason violation of section 1, as well as an abuse of market power constituting monopolization under section 2 of the Sherman Act.
One of MAI’s defenses was that, rather than engaging in an antitrust violation, it was merely exercising its rights under copyright. In response, plaintiffs alleged two forms of copyright misuse: by using copyrights to violate the antitrust laws, and by using copyrights to prevent plaintiffs from performing normal maintenance which, in plaintiffs’ view, violated public policy. The court rejected the first assertion because it found that there was no violation of the antitrust laws.
36.1 The court also found no violation of public policy. The licenses condemned in
Lasercomb precluded development of competitive software; the license here is in sharp contrast. Nor did the court believe it contrary to public policy for MAI to charge higher maintenance fees than plaintiffs’. MAI made an investment in developing the software “which it may legitimately seek to recoup through licensing fees.”
36.2Triad v. Southeastern36.3 also involved use by defendant ISO (Southeastern) of system software whose copyright was owned by plaintiff hardware manufacturer (Triad). Triad sued for infringement, and Southeastern asserted an antitrust counterclaim as well as fair use and misuse defenses. Triad serviced the computers it sold and the software necessary to operate them. The license agreements in question prohibited any person other than the licensees from using the software. Looking to
Peak, the court held that where Southeastern uses its customers’ copies licensed under these agreements to make a copy in RAM, it creates an unauthorized copy.
Southeastern alleged misuse in Triad’s use of its intellectual property to leverage Triad’s position in the Triad computer maintenance market. The court gave short shrift to this: “Not only has Southeastern failed to demonstrate that Triad’s practices are anticompetitive … , it cannot dispute that copyright owners like Triad are within their rights in using and enforcing restrictive license agreements.”
In a case not dealing with software,
Whimsicality v. Rubie’s Costume,36.4 the Second Circuit had held the copyright unenforceable because plaintiff copyright owner engaged in inequitable conduct by describing the works (costumes) as “soft sculptures” in obtaining registration, by not sending to the Office pictures of the costumes being worn, and by not limiting its registration to separable elements. On a motion to vacate judgment, the district court considered whether the newly submitted affidavit of a Copyright Office Examining Section Head could be considered in determining whether the plaintiff had engaged in inequitable conduct.
Plaintiff then moved to vacate, submitting to the district court the affidavit of the Section Head of the Visual Arts Section of the Copyright Office (who had in fact been the Examiner who issued the registrations). Affiant averred that on examination of the submitted photos he knew the works were costumes; that use of the term “soft sculpture” was within the practice routinely allowed by the Office; that he found artistic content in issuing the registrations; that an application need not identify uncopyrightable elements; and that the Office does not normally expect applicants to state that works are costumes and that registration is sought only for features considered separable.
The court treated this as new evidence that, for a number of reasons, plaintiff could not earlier have expected to be available. Moreover, the court held that an element of inequitable conduct was that the behavior would objectively be likely to mislead the Examiner, so that the affidavit was relevant. The affidavit was the only thing in the record that showed that the Office was unlikely to be misled by the term “soft sculpture.” Accordingly, the court found that no reasonable Examiner would have been misled by the applications and deposits, that there was no fraud on the Copyright Office, and that the “registrations are enforceable.”
Service v. Data General37 was an antitrust suit wherein plaintiff third party maintenance company alleged that the refusal of defendant hardware/software manufacturer to license diagnostic software to plaintiff violated Section 1 of the Sherman Act. It was defendant’s policy to make this software available only to its remote access service subscribers, and to customers who maintained their equipment themselves. Specifically, plaintiff alleged that defendant’s policy amounted to unlawful tying; one element of the antitrust claim was that there be two products. In response to defendant’s counterclaim for copyright infringement, plaintiff asserted that the conduct complained of in the antitrust claim constituted copyright misuse. The district court granted summary judgment to defendant on the antitrust claim, holding there was no genuine issue on this point (there was but a single product—computer servicing), and preliminarily enjoined plaintiff from using the software.
The Fourth Circuit reversed on this issue, holding that the district court used an incorrect standard for determining whether there were two products.
38 However, it affirmed the summary judgment because plaintiff failed to raise a genuine issue regarding the existence of a tying arrangement. It also held that plaintiff failed to show copyright misuse. The court held that defendant had done nothing more than restrict use of its software to the maintenance of specific hardware, and that such was the exclusive right of a copyright owner.
Nor did STI do any better with its misuse allegation that DG tied its maintenance to its copyright-protected software. Even though misuse need not be a violation of the antitrust law, there was no misuse here. The antitrust claims were dismissed, and STI offered no evidence that DG “did anything beyond limiting the use of the software to … maintenance …, activity that is protected as an exclusive right of a copyright owner.”
38.1Plaintiff also argued that defendant’s failure to disclose the derivative nature of its software to the Copyright Office in seeking registration invalidated the copyright. But the court held that the presence of some 1200 files in the software (as compared with 200 in its predecessor), was sufficient to establish it as an original, and not a derivative, work. In addition, the court held that defendant’s substantial reworking of the initial 200 files added to the originality. Further, there was no evidence that defendant had intentionally failed to inform the Copyright Office of the software’s derivative nature, and accordingly, even had the software been a derivative work, there would be no basis for invalidation.
Two years after its
Lasercomb decision, the Fourth Circuit reiterated its view of copyright misuse in
PRC Realty v. National Ass’n.39 Plaintiff marketed software for realtors. As originally developed, the software lacked the capability for printing. The plaintiff granted to defendant realtors’ association an exclusive five-year license to use and sublicense the software, along with the right to offer defendant’s customers an opportunity to acquire a hard copy version of the listings. The parties agreed that the association would modify the software, to create “RCS/MLS” software.
After the agreements were terminated, the association was granted a non-exclusive right to use, lease, modify, enhance, adapt and sublicense the RCS/MLS software, but not to sublicense the MLS software. The association would own the modifications, but plaintiff continued to own the underlying software. Further, plaintiff was granted exclusive access to the MLS data generated for the publishing contracts. The termination embodied a provision requiring the association to use its best efforts to see that plaintiff received all contracts left by its members for production of hard copy books printed from the information in the software.
Defendant then produced “Book Plus” software for desktop publishing, contending that the Book Plus software was a modification of the RCS/MLS software. Plaintiff contended that the Book Plus software was an off-line version of the on-line system that competed with CASH and with plaintiff’s publishing operation, such that defendant was in violation of its best efforts obligation. Defendant subsequently agreed to use its best efforts to promote the publishing operation of another publisher.
In 1990, plaintiff obtained two copyright registrations on aspects of the CASH software. Plaintiff alleged infringement of copyright in the CASH software. Defendant asserted copyright misuse. Although the district court held that the copyright was infringed, the Fourth Circuit saw no need to determine the issue. Defendant had argued at trial that the copyright infringement claim was made in furtherance of a predatory scheme to eliminate plaintiff’s book publishing competition.
The Fourth Circuit held that the restriction here was even more anticompetitive than that in
Lasercomb. The best efforts requirement here would preclude production of any system that would undercut plaintiff’s publishing business. This would not only preclude the incorporation of the Book Plus system into on-line publishing software, but disallow development of
any on-line publishing system by defendant.
40The court held further that the misuse did not require reversal of the district court’s ruling that defendant had breached its contract. The court engaged in some unusual reasoning in reaching this conclusion.
41 The court remanded for a recalculation of damages and for an order that would include no monetary or injunctive relief for copyright infringement.
Thus, the court declined to extend the copyright misuse prior to copyright registration, surely an unusual result. Pursuant to
17 U.S.C. § 102, copyright subsists, from the moment of fixation, in original works of authorship fixed in a tangible medium. There is no requirement that the copyright be registered in order for copyright protection to attach. Registration is permissive under
17 U.S.C. § 410(a). Thus, the agreement in question embodied
ab initio a grant of rights under copyright and, if there was misuse, it commenced at the time the agreement was executed, if not before.
42In
LucasArts v. Humongous,43 plaintiff had developed a software tool, SCUMM, for creating computer video games. Of necessity, any video game developed with the tool included part of the code of the tool. Plaintiff granted to Humongous a license to use the software; the license agreement included a three-year restriction precluding defendant from selling any video game developed by use of the software tool to distributors in North America for less than 75% of the price to retailers. Within the three-year period, Humongous sold one of the video games it developed with the software tool to defendant Electronic Arts at less than the stated price.
Plaintiff alleged copyright infringement by virtue of Humongous’ failure to adhere to the price restriction. Defendants counterclaimed for violation of federal and state antitrust laws and for certain common law violations. Electronic Arts moved for partial summary judgment on the antitrust claim on the grounds that the price restriction was a per se illegal price fixing arrangement and a per se illegal boycott. Based on a 1926 antitrust case wherein a patentee was permitted to fix the price of patented items sold by its licensee, the court denied defendant’s motion for partial summary judgment that the provision constituted unlawful price fixing.
Defendant also claimed that it was copyright misuse for plaintiff to use its copyright in the embedded SCUMM program code in order to control defendant’s price. Electronic Arts argued that in controlling the price of Electronic Arts’ program, LucasArts attempted to extend its copyright beyond the software tool, and that this constituted copyright misuse. The court held that there was no misuse, as the restriction was simply an attempt by LucasArts to retain control over its own copyrighted work; there was no attempt to control materials in which it had no copyright.
LucasArts only seeks to control rights over its SCUMM System; it does not seek control over materials in which it does not own a copyright. What makes things difficult for Electronic Arts and Humongous is that part of the [tool] code happens to be embedded in [Humongous’ software], and it is difficult, if not impossible, for LucasArts to retain control over its copyrighted work without also asserting some control over Humongous’ work.
Thus, where the plaintiff’s and defendant’s programs are inseparable, it is not improper for plaintiff, by virtue of copyright, to control defendant’s program. It is uncertain whether the court would have found misuse had the code from plaintiff’s program not been embedded in defendant’s program.
Gates v. Bando American44 was a somewhat confusing opinion dealing largely with copyright substantial similarity, but also speaking to certain aspects of the copyright misuse, and the “fraud on the Copyright Office” defenses. Plaintiff manufactured industrial belts, and its software was used to identify appropriate replacement belts for customers. Its advantage lay in the fact that it could be used by sales persons in the field, without a need to consult the engineering staff. Plaintiff alleged that defendant’s program infringed its copyright.
One defense asserted by defendant was fraud on the Copyright Office, in that defendant failed in its “duty of candor” to the Copyright Office by intentionally withholding material information. The issues to which this charge related were whether the work had been published, and whether it was a derivative work. On this first issue, the court noted that publication occurs when copies of the work are made available to the general public with consent of the owner. The court found that a large number of plaintiff’s customers had seen the program running, but it held that even if this were a public performance, it would not amount to publication. Moreover, in its discussions with customers and distributors plaintiff took the position that the program was proprietary. Accordingly, the court found that the program was not published, and therefore plaintiff was not bound by the notice provision of
17 U.S.C. § 405.
45Defendant also apparently argued inequitable conduct or copyright misuse based on failure to note in the application that the program was a derivative work. The court saw no basis for vacating registration on the ground that plaintiff failed in the application to disclose previous unpublished works.
In
Data General v. Grumman,45.1 the First Circuit decided a number of interesting points. Data General (“DG”) alleged that Grumman had misappropriated its trade secrets and infringed its copyright in a diagnostic program
45.2 called “ADEX” used in maintaining DG minicomputers. Grumman counterclaimed that DG violated the antitrust laws by refusing to license that program to Grumman and other third party maintainers of DG computers.
45.3At trial, Grumman claimed that certain errors made in registering the copyright to the program invalidated the registration, a claim rejected by the district judge.
45.4 On appeal, Grumman challenged the jury instruction that minor inadvertent errors in a deposit for a copyright registration do not affect the registration’s validity.
45.5 The appellate court affirmed.
45.6 Grumman observed that most of the precedent on this point involved defects in the application, rather than the deposit, but the court saw no reason why the result should be different. However, the court assumed for the sake of argument that inadvertent material error would destroy the presumption of validity.
Grumman also alleged that DG misused its intellectual property rights and was, therefore, barred by unclean hands from enforcing them. The court found it unnecessary to decide whether there was such a defense as copyright misuse or whether Massachusetts law recognized an unclean hands defense to trade secret misappropriation. The sole misuse/unclean hands act alleged was violation of the Sherman Act and the court found that those claims presented no genuine issue of material fact.
In
EDS v. Computer Associates,46 EDS alleged,
inter alia, that Computer Associates engaged in copyright misuse by restraining competition, imposing improper restrictions on use of its software, and tying its software to other products or services. EDS asserted these allegations as an affirmative antitrust claim for damages, and to have the copyrights ruled invalid and unenforceable. Acknowledging that copyright misuse has been recognized as a defense, Computer Associates moved to dismiss the claim, arguing that there is no cause of action for affirmative relief for copyright misuse.
Inasmuch as Computer Associates alleged that EDS infringed its copyrights, the court permitted EDS to assert the claim for a declaratory judgment of misuse. Moreover, inasmuch as EDS alleged that Computer Associates tied licenses under certain programs to licenses under other programs, the court held there was sufficient allegation of an antitrust violation (of Section 2 of the Sherman Act).
In
Videotronics II,47 when registering its copyright for a computer program, plaintiff left blank the space for date of first publication. Defendant in an infringement action alleged that plaintiff thereby knowingly failed to inform the Copyright Office of facts that might have occasioned rejection of the application. Without passing on whether the work had been published, the court held that while plaintiff’s counsel may have been negligent in not obtaining expert counsel regarding the issue, there was no fraud. In the absence of fraud, there was no basis for invalidating the registration.
A similar finding resulted in
S.O.S. v. Payday,48 where plaintiff’s application to register the copyright in its program listed plaintiff as the sole author. In fact, the program included the work of another author, and plaintiff subsequently filed a supplemental registration so stating. Defendant alleged that plaintiff’s omission in the original application constituted fraud on the Copyright Office. The court rejected this defense on two bases: there was no showing that the omission was intentional, and there was no showing defendant had been prejudiced by the omission. The court held that under Ninth Circuit law, both of these elements were necessary to bar enforcement of a copyright.
Electronic Data Systems v. Computer Associates49 was an action wherein there was no copyright infringement claim. However, licensee EDS alleged against licensor CA (1) a claim seeking a declaration that EDS had not infringed because there was copyright misuse, and (2) a claim for violation of Section 2 of the Sherman Act for tying the marketing of particular software packages to that of other software or services.
The court acknowledged that copyright misuse had been recognized as a defense (although not in the Fifth Circuit). The court permitted assertion of the declaratory judgment claim, seeming to view this claim as in the nature of a defense. With regard to affirmative assertion, the court concluded that CA had not shown that the allegation of a tie-in did not constitute a violation of Section 2 of the Sherman Act. Accordingly, the court denied the motion to dismiss the antitrust claim.
The issue in
Johnson v. Automotive Ventures49.1 was posed in a somewhat different posture. Plaintiff had a copyright registration for his automotive promotional materials and claimed infringement of that copyright. Plaintiff had permitted these same promotional materials to be printed in a newspaper prior to registration, but had made no mention of a prior publication in his application for copyright registration. Defendants alleged this omission was a “fundamental registration error” that deprived the court of jurisdiction.
The court held the registration valid. Only a knowing failure to inform the Copyright Office of facts that might occasion a rejection of the application would be a reason for holding it invalid. An innocent or inadvertent omission does not invalidate a registration. Moreover, a misstatement which does not affect validity is immaterial if no prejudice results. On the summary judgment motion, the court held there was at least a genuine issue as to whether the omission was innocent, and there was no evidence of prejudice. Accordingly, the court denied defendants’ motion for summary judgment based on the court’s alleged lack of jurisdiction.
* * *
One matter on which both proponents and opponents of this defense agree is that the cat is now out of the bag; the purported defense of copyright misuse will now be asserted with more regularity, and will henceforth be pursued with more vigor by copyright defendants. Rule 11 of the Federal Rules of Civil Procedure provides, among other things, that an attorney signing a pleading thereby certifies that to the best of the signer’s information, knowledge and belief, formed after reasonable inquiry, the pleading is well grounded in fact and warranted by existing law or a good faith argument for its extension, modification or reversal. Rule 11, along with analogous provisions in the procedural rules of the various states, should help to curb abuses. Nevertheless, creative defendant’s lawyers will doubtless find ways to assert and pursue the defense. As a practical matter, where the defense can be colorably asserted and is asserted, it may materially change the balance of power and leverage, to the defendant’s benefit, in negotiating a settlement.
In an attempt to avoid a holding of fraud on the Copyright Office, or of copyright misuse, some copyright owners have sought to rectify possible defects in their copyright registrations. The vehicle for accomplishing this is a supplementary registration. The copyright statute expressly permits supplementary registrations.
50 Copyright Office regulations specify the persons entitled to file for a supplementary registration, the grounds, form and content for an application, and the effect of a supplementary registration.
51 Supplementary registration is accomplished through the use of a Copyright Office Form CA.
37 C.F.R. § 201.5, comprising the Copyright Office Regulations for filing a supplementary registration, is reprinted as Appendix 4A [45] of this Treatise. A reproduction of Form CA and the instructions for completing it appear as Appendix 4A [46] of this Treatise.
In November of 1993 legislation was introduced in the House that would amend
17 U.S.C. § 409 (which deals with application to register copyright) to state that the copyright application must contain: “(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is substantially based on or substantially incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered… . “Amendment in the Nature of a Substitute to H.R. 897, Nov. 3, 1993.
Footnotes — § 4.04A:
2 See, e.g.,
35 U.S.C. Sec. 271(d)(5), enacted in 1988, which provides that, absent “market power,” it is not patent misuse for a patent owner to engage in compulsory package licensing or to condition a patent license on the purchase of separate products.
7 Interestingly, the district court dismissed plaintiff’s claim for misappropriation of trade secrets as preempted by the Copyright Act.
8 It is perhaps not coincidental that the defense was raised in a program copyright case. Since copyright has been increasingly adopted as a vehicle for protecting rights in computer programs, copyright has in a number respects come to take on attributes formerly associated with patents, most especially in the manner in which it can in practical effect preclude the implementation of processes (despite the dictates to the contrary of
17 U.S.C. Sec. 102 (b)).
9 Apparently this provision was negotiable, and several of plaintiff’s licensees had negotiated its elimination or modification.
10 The court focused on the parallel rationales for establishing and maintaining these two types of property interests.
11 In light of the narrower exclusivity associated with copyright, this analogy to patent seems questionable.
12 The court of appeals opinion does not discuss trade secret issues. Provisions of the type
sub judice are not infrequently found in agreements designed to protect trade secrets (although they rarely specify a term of 99 years).
13 The court rejected, however, the notion that copyright misuse could be “a vehicle for affirmative relief.”
13.2 DGI used two methods to make these copies. First, it downloaded the program into the memory of a DSC microprocessor card, and then into a laptop computer. In addition, it modified a DSC microprocessor card by adding chips designed to capture communications between cards containing the program, and a chip designed to store information on the downloading function when the card was removed.
13.3 It is not clear why the district court imposed this distinction.
14 Data Gen. Corp. v. Grumman Sys. Support Corp., 1989 CCH Copr. L. Dec. ¶ 26,399 (D. Mass. 1988).
17 “There was absolutely no evidence that Data General knowingly misrepresented the details to the Copyright Office, obtained any benefit by making these errors, or acted with bad faith, either at the time of making the deposits or during trial. To the contrary, the evidence showed that Data General made several innocent, inadvertent errors in its copyright deposits and promptly informed this court as soon as those errors became known. There is no evidence that Data General realized the errors at any point before the issue emerged during trial.” Slip op. at 34.
18 Eckes v. Card Prices Update, 736 F.2d 859, 861–62 (2d Cir. 1984). The court also interpreted
Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452 (2d Cir. 1989), to hold that the registration creates a rebuttable presumption of copyrightability, which is generally not overcome by an innocent misrepresentation in the application for copyright registration. The court further interpreted
Dynamic Solutions, Inc. v. Planning & Control, Inc., 646 F. Supp. 1329, 1341 (S.D.N.Y. 1986), as holding that errors on the registration application do not affect the right to sue for infringement “unless they are knowing and might have caused the Copyright Office to reject the application.”
20.2 For a discussion of the database protection aspects of the case. See
section 4.10[4] infra.
20.3 Defendant challenged the originality (and therefore copyrightability) of that program, but the court held that it satisfied the modest originality requirement of copyright law because no other program arranged the data into these 456 fields and 34 categories, and because this structure “is not so obvious or inevitable as to lack the minimal originality required.” (slip. opin. p. 4)
22 “The basis issue in Atari’s three motions is essentially the same: whether Nintendo has a right to restrict which games are played in its NES game console, and whether it has the right to restrict where else those games are played (via the two-year exclusive licensing provision).” 18 U.S.P.Q.2d.
23 That section provides:
No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement … .
24 35 U.S.C. Sec. 271(c) provides: “Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
26 There can be no contributory infringement absent direct infringement. Thus, if the user was licensed (and therefore did not infringe), Atari could not be a contributory infringer.
28 The specific misuses alleged were failure to state in the registration the existence of the H-P software, and attempt to use the copyright to assert control over matters beyond its scope.
30 The court noted that qad’s attempts to prove that the material it copied from H-P was functionally necessary was directly contrary to qad’s position in seeking (and getting) a preliminary injunction.
34 “Because in 1986 Autoskill could not have anticipated that the case law would subsequently change the interpretation of the statute to require that a hiring party show employment in the regular course of business… such an interpretation cannot retroactively be applied to invalidate Autoskill’s copyright.” Slip op. at 17.
38 Nevertheless, the court affirmed summary judgment on the antitrust claim because plaintiff failed to present a convincing case that defendant would “sell” the software only to buyers who purchase its repair services.
39 PRC Realty Sys., Inc. v. National Ass’n of Realtors, Inc., CCH Computer Cases ¶¶ 60394, 81290 (4th Cir. 1992).
40 “The combination of the original ‘best efforts’ obligation not involving copyrighted material, with the subsequent 1990 copyright filings, served to violate the public policy embodied in the grant of a copyright… by serving to suppress any independent expression of the idea at issue here, namely, the development of the useful and efficient on-line publishing feature, so long as the development would serve substantially to harm [plaintiff’s] publishing interests… . In the present case, [plaintiff] would have every right to insure that its Book Plus soft1are was not exploited without compensation for the use, but [plaintiff] is not allowed in addition to use its copyright as a hammer to crush all future development of an independent idea by [defendant], or any other licensee.” CCH
Computer Cases para. 60,394 at 81,298.
44 Gates Rubber Co. v. Bando Am., Inc., C.C.H. Computer Cases ¶ 46,765 (D. Colo. 1992).
45 The conduct complained of apparently took place prior to March 1, 1989, in an era when the copyright statute generally required notice on published works.
See § 4.05 infra. 45.2 Diagnostic programs are used to identify hardware failures, so as to isolate particular components responsible for problems.
45.3 “The antitrust claims are intriguing because they present a curious conflict, namely, whether (and to what extent) the antitrust laws, in the absence of any statutory exemption, must tolerate short-term harm to the competitive process when such harm is caused by the otherwise lawful exercise of an economically potent ‘monopoly’ in a copyrighted work.”
36 F.3d at 1152, 32 U.S.P.Q.2d at 1386.
45.4 There were inadvertent errors in the deposit that did not affect the operation of the program.
45.5 Most of the few errors dealt with the copyright notice, rather than the program itself; plaintiff’s expert testified that the errors would have no bearing on the operation of the program.
45.6 That court also noted that an error in a deposit is immaterial if its discovery would not likely have led the Copyright Office to deny the application.
50 17 U.S.C. § 408(d) provides:
Corrections and Amplifications. —The Register may also establish, by regulation, formal procedures for the filing of an application for supplementary registration, to correct an error in a copyright registration or to amplify the information given in a registration. Such application shall be accompanied by the fee provided in Section 708, and shall clearly identify the registration to be corrected or amplified. The information contained in a supplementary registration augments but does not supersede that contained in the earlier registration.
The 1976 Act requires copyright notice on all copies published with the authority of the copyright owner from which the work can be perceived. The manner and location must give “reasonable notice” of the claim. Publication without notice is not necessarily fatal, although an innocent infringer, misled by lack of notice, is not liable. A program may be registered by completing Form TX, and mailing it to the Copyright Office with a $10 application fee and the appropriate deposit. Registration before or within five years after first publication of the work is prima facie evidence of the validity of the copyright, and no action may be commenced prior to registration. Generally, the “best edition” of registered works must be deposited with the Copyright Office, and become government property. However, no deposit is necessary if a program is published only in machine readable form, under § 407, and § 408 permits deposit of identifying materials instead of copies.
As indicated by some of the preceding cases, notice, registration, and deposit are important “formalities,” with which compliance may be necessary. The pertinent provisions of the 1976 Act differ in some significant aspects from those of the 1909 Act.
Notice. The general notice statute is
17 U.S.C. § 401.
2 On any work protected by copyright and published with the copyright owner’s authorization, section 401 requires notice on all public copies “from which the work can be visually perceived, either directly or with the aid of a machine or device.” The manner and location of notice on the copies must give “reasonable notice” of the claim, and the statute authorizes the Register of Copyrights to promulgate non-exhaustive regulations prescribing manner and location for various types of works. The Register has done so in
37 C.F.R. § 201.20.
3 That section contains at least three subsections of particular interest with regard to programs. Subsection (d) (pertaining to works published in book form), and subsection (e) (pertaining to works in “leaf” form)
4 may apply to programs in human-readable form (whether in source, assembly, or object code). Subsection (g), adopted in December 1981, is specifically directed to machine-readable copies.
5 Given the attempt to secure indirect program protection in the videogame industry, subsection (h) is also of interest.
6 Subsection (g) was persuasive to the court in
Drikschneider, supra,7 which held that notice affixed to the cabinet near the screen, notice on the screen prior to play, and notice on the screen at commencement of play sufficed. The court held that the then-proposed regulation comported “with the spirit of the Act since the regulation would place the notice where it would be most likely to be observed by those viewing the work.”
In Data Cash, supra, (where the source program itself was copyrighted) the Court of Appeals for the Seventh Circuit held that the program had entered the public domain because of publication without notice. The court did not indicate what would have constituted proper notice, but noted that there was no notice on the printout from the ROM, on the game, or in the instructions.
Under the 1976 Act, publication without notice is not necessarily fatal,
8 although an innocent infringer misled by the omission is not liable for actual or statutory damages.
9There are two decisions of interest on whether distribution of software under a confidentiality agreement absent required copyright notice constitutes publication so as to divest copyright, pursuant to the notice provision of the original 1976 Copyright Act. In a 1993 ruling denying a motion for a preliminary injunction, it was held in
UNIX System v. Berkeley Software10 that plaintiff had likely forfeited copyright in a version of one of the most valuable computer programs ever created. Plaintiff was an AT&T subsidiary and the assignee of AT&T’s rights in the allegedly proprietary UNIX operating system, version 32V.
Plaintiff sued,
inter alia, for copyright infringement and trade secret misappropriation, and moved for a preliminary injunction on both of those claims. In analyzing the likelihood that plaintiff would prevail on its copyright claim, the court focused on the issue of publication. Published in 1978, the 32V software was therefore subject to the copyright notice provision originally embodied in the Copyright Act of 1976. Publication constituted “the distribution of copies … of a work to the public by sale or other transfer of ownership, or by rental, lease or lending … .”
11In its ruling of March 3, 1993, the court found that version 32V source code had been distributed by plaintiff without copyright notice to thousands of licensees.
12 The applicable statutory savings provision listed three alternative bases for preserving copyright in the event of publication absent copyright notice: that a relatively small number of copies lacked notice; registration within 5 years of publication plus reasonable effort to add notice to copies already distributed; or proof that the omission was due to the failure of a third party who thereby violated an express written agreement. Because plaintiff’s conduct fit within none of these, plaintiff would have been deemed to lose its copyright if it had published.
The court turned to the common law doctrine of limited publication, which provided that where an author “ ‘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 … .’ ”
13 there is no publication so as to divest copyright. The court held that this doctrine survived the Copyright Act of 1976. On the instant facts, the most important of these criteria was that of communication to only a “selected group.”
The court held that a “selected group” had to be more restrictive than simply customers who desired to use the work; otherwise all publications would be limited. Conceding that courts had expanded this concept in applying it to software, the court held the expansion applied only to ancillary software that supported the sale of hardware. The court further held that the 32V software did not qualify as such.
The final question on the publication issue was whether plaintiff would license all comers. Plaintiff argued it offered licenses only to educational institutions, governmental agencies and carefully screened corporations. But the court found that the plaintiff’s screening
14 filtered out few potential licensees, and that the group to which the software was offered was not “selected.” Plaintiff sought essentially what any lessor of property sought—someone who would take good care of the property and pay the bills.
15 Accordingly, the court denied plaintiff’s motion for a preliminary injunction based on copyright infringement.
On March 30, 1993, the court modified somewhat its earlier ruling. The court held that its earlier ruling, to the effect that source code without copyright notice had been distributed to thousands of licensees, was without adequate support in the record. Instead, it ruled that the evidence indicated there were about 65 commercial licensees, 220 educational licensees, and an unknown number of government licensees, who had received source code without notice. Also, as of 1986 there were over 1,400 licensees “eligible” to receive source code.
Nevertheless, the court held on rehearing that this lower number of licensees nevertheless resulted in a general publication because it was the criteria by which plaintiff selected licensees that were critical, rather than the number of copies distributed without notice.
16In another case dealing with publication,
D.C.I. Computer Systems, Inc. v. Pardini,17 in a terse, not-for-publication opinion, the Ninth Circuit affirmed the district court’s dismissal of a copyright infringement claim because the work was “published more than five years prior to the date of its copyright registration.”
18 The court recognized the doctrine of limited publication where (1) the work is distributed to only a definitely selected group of people; and (2) only for a limited purpose, without right to reproduce, distribute or sell. However, plaintiff had not selected a particular group and offered to distribute the work to them. Instead, plaintiff licensed its program to “any automobile or recreational vehicle dealership in the country that would agree to enter into a [trade secret license] contract, and so fails the select group test… . Moreover, it did not meet the limited purpose prong, since its purpose in distribution was pecuniary gain.”
19 Because the work was published, without copyright notice on any copies, more than five years before registration, it passed into the public domain.
17 U.S.C. § 405(a).
Another pertinent issue is whether copyright protection can be saved in the case of international publication without notice. Section 405(a)(2) states that the omission of notice from copies publicly distributed by authority of the copyright owner does not invalidate copyright if “(2) registration for the work has been made or is made within five years after publication without notice, and a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered.”
The question is: When is omission “discovered” in the case of intentional publication? On the one hand, Professor Nimmer argues that to say discovery occurs only when the issue of copyright rears its head (and therefore that protection is available in the case of intentional omission) negates the statutory language requiring reasonable effort.
20 On the other hand, the legislative history states that “a work published without any copyright notice will still be subject to statutory protection for at least 5 years, whether the omission was partial or total, unintentional or
deliberate.”
21Three cases have decided this question—two of them holding that deliberate omission is included in the saving clause, and one that it is not. Moreover, on the question of just what constitutes unintentional omission, two cases split on whether a mistake of law qualifies, and one case ruled that a mistake of fact does not qualify.
There are four pertinent cases. In
O’Neill,22 defendant condominium developer copied plaintiff competitor’s brochure, distributed without copyright notice because plaintiff “had [no] reason to believe that any other person would attempt to copy… .”
23 After discovery of the infringement, plaintiff placed a notice on all future distributions, registered (within five years of first publication), and sued. On plaintiff’s motion for a preliminary injunction, the court stated in dictum that, based solely on the statutory language, the better view would be that discovery occurred on first publication. However, the court found that statutory language ambiguous, and relied on the legislative history.
24 Accordingly, the court found that plaintiff cured its deliberate omission of notice by complying with the statute.
In
Beacon,25 plaintiff sued in unfair competition, and for a declaratory judgment of copyright invalidity. Defendant was the exclusive U.S. distributor for the firm which created the design. Although aware generally that copyright was available for design patterns, defendant acted on its understanding that this design was not subject to copyright protection. After selling a million copies without copyright notice over a two-year period, defendant learned that copyright was available, and was authorized by the licensor to apply for copyright registration. This was almost a year after defendant became aware of unauthorized copies, and a month after defendant became aware of plaintiff’s unauthorized copies. Within a month of receiving this authorization, defendant sent labels bearing his copyright notice to all customers, asking that they affix them; defendant also began printing the notice in conjunction with fabric not yet shipped. Defendant further applied for and received a copyright registration. Plaintiff had orders for 149,000 panels, had manufactured 105,000, and had shipped 77,000.
Defendant argued that, pursuant to § 405(a), it had cured the omission. In deciding whether that section applied to an intentional omission, the court noted that so to find would (1) place an intentional omitter in a better position than one whose omission was inadvertent, and (2) effectively read the “reasonable effort” requirement out of the law, for without “discovery” no interval could be calculated. The court expressly found that the
O’Neill construction lacked support in the statute or legislative history.
26 The court thus held that only unintentional omissions could be cured.
Equally unavailing was defendant’s argument that, because it was unaware copyright was available, omission was unintentional. The court ruled that a deliberate omission resulting from factual mistakes as to matters wholly unrelated to notice, was intentional. Moreover, if the failure of the design’s creator to apprise defendant of the claims to copyright, and to require affixation of notice was deliberate, there was unauthorized publication with deliberate omission of notice, incapable of cure.
27The court went on to state that, even if the statute permitted a cure, defendant did not employ “reasonable efforts,” because it was not sufficiently diligent in sending enough labels to its customers, and in encouraging its customers to affix labels to fabric on display. Moreover, the court looked to § 405(b), which provides that where a party relies on omission of notice from an authorized copy, the court may deny an injunction.
Accordingly, the court granted plaintiff’s motion for a preliminary injunction restraining defendant from asserting that plaintiff was infringing the copyright.
In
Shapiro v. Royal Mills28 plaintiff’s bedspreads, from first distribution in October 1978 until May 19, 1983 carried the designation “Design Copyrighted.” In 1983, after 500,000 units had been sold, plaintiff became aware that defendant was selling a similar product, and plaintiff registered the copyright. The notice was changed to “Copyright by Everware.” Although this case dealt with defective notice (rather than omission), in treating plaintiff’s motion for a preliminary injunction, the court ruled that § 405(a)(2) nevertheless applied. The district court characterized plaintiff’s mistake as one of law, ruling that such mistakes were intended to be treated as unintentional pursuant to § 405(a).
29 However, the trial court held that plaintiff failed to show it made any effort to add notice to copies distributed, but still in the hands of its dealers. This omission was viewed as incurable, resulting in forfeiture. Thereafter, the district court granted defendant’s motion for summary judgment.
On appeal,
30 the court of appeals stated that if no effort is made to add proper notice there is no cure; when effort is made the question is whether it was “reasonable.” The language covers all copies distributed to the public after the defect is discovered.
31 The district court held that no action to affix the required notice was taken. But the district court overlooked the fact that plaintiff took the prompt steps to correct notice on the bedspreads still in its inventory and to ship none until proper notice was affixed. Accordingly, the finding that no action was taken is not supported and the question is whether efforts undertaken were unreasonable as a matter of law. They were not. Plaintiff concedes it took no steps to add proper notice to items already shipped to retailers but not yet sold to consumers, because bedspreads were typically sold in small quantities to numerous retailers whose turnover was rapid; plaintiff believed that efforts to add notice would have been unavailing because the defective inventory would already been sold. Moreover, attempts by retailers properly to affix would render the bedspreads unsaleable. Defendant relies on
Beacon Looms, supra, in arguing that plaintiff’s efforts were not reasonable. But that case is distinguishable on three bases. There was no evidence of turnover rate there; no notice at all had been affixed there; and plaintiffs there themselves believed that the number of labels they sent out was insufficient to cover the number of units remaining with retailers.
The issue of reasonableness embraces the question of efforts to add notice to units no longer in claimant’s possession. However, such an effort is not a statutory requirement. The fundamental inquiry is “whether the efforts undertaken in a given case, viewed as whole, were ‘reasonable.’ ”
32 Here some of the items with defective notice not yet distributed were properly relabeled; there remains an issue of fact as to how many were relabeled compared to those not relabeled. Moreover, there is a further issue as to whether plaintiff’s efforts to relabel product already shipped would have been unavailing. Accordingly, the court of appeals reversed the grant of summary judgment.
Rights to a coin-operated hockey game were at issue in
Innovative Concepts.33 Plaintiff introduced its game in January 1983, but was unaware of the possibility of copyright protection
34 until June 1983,
35 at which time it mailed notice stickers to its distributors, and began applying stickers itself. In deciding plaintiff’s motion for a preliminary injunction, the court ruled that omission resulted from a mistake of law. The court was unaware of any case encompassing an omission resulting entirely from a mistake of law,
36 but characterized it as deliberate. The court followed
O’Neill for the conclusion (based on legislative history) that the § 405(a) saving clause embraced unintentional omission.
37 The court distinguished
Beacon as a case where the party alleging copyright was “generally aware of the availability of copyrights” for designs, but believed his design was already in the public domain.
38Accordingly, the court found that plaintiff’s conduct fell within the statute. It found further that plaintiff had made a reasonable effort to add notice, and issued a preliminary injunction.
Thus, at this writing, the majority rule appears to be that deliberate omission is excusable pursuant to § 405(a). In accordance with such a rule, a purveyor of software need not mark its wares with notice until aware of infringement. Nor would it be necessary to register until suit is imminent (or until the fifth anniversary of the software’s publication approaches, whichever date is earlier). Note, however, that use of such a procedure will reduce the spectrum of remedies to which plaintiff might otherwise be entitled.
39Registration. Registration of a computer program may be effected by completing a Form TX,
40 and mailing it, along with the $10 application fee
41 and the appropriate deposit, to the Copyright Office.
42 One effect of registration is set forth in
17 U.S.C. 410(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 registration made thereafter shall be within the discretion of the court.” Further, generally no action for infringement may be instituted prior to registration.
43 Moreover, there are limitations, on the ability to recover statutory damages and attorney’s fees, for failure to register in timely fashion.
44 Atari v. Oman45 questioned the propriety of the Copyright Office’s refusal to register “Breakout,” one of the earliest video games, as an audio-visual work. The game simulates the motion of a ping-pong ball hit by a “paddle” (controlled by the player) against a brick wall. Each time a brick is hit, it disappears, and the object is to remove all the bricks. The basis for the agency’s decision was lack of originality in that few items appeared on the screen and that all of them were functionally dictated.
46 The district court found no abuse of discretion.
In reversing, the court of appeals first noted that the agency was incorrect in viewing the work in component-by-component form, even though the statute defines an audio-visual work as series of related images. Next, the court questioned the standard used to judge originality, finding that the standard employed was too high. Further, the court questioned the agency’s denial of registration because the gam’s images were the product of the player rather than its author.
47 The court next questioned the agency’s ruling of non-copyrightability based on merger of idea and expression, noting that the existence of a variety of ways to perform a function qualifies a work as expression. The court found that a variety of designs might have been chosen. Finally, the court criticized the Copyright Office for relying on the scenes a faire doctrine in denying registration, noting that the doctrine applies to scope, not copyrightability.
In a district court case,
48 a software developer had entered into a marketing agreement with a distributor wherein the developer owned copyright of the software products, and the right to control their content. The developer subsequently obtained a copyright registration on the product, and sued the distributor for copyright infringement. The distributor claimed that it had written certain security codes embodied in the product, and that the registration covered those codes. The security code was used to restrict access and monitor use, and required the user to input a password. The distributor sought a preliminary injunction requiring withdrawal of the registration because it disclosed the security code, permitting users to circumvent it and escape paying charges. The distributor defended, claiming that the agreement gave it ownership of the copyright in the security code.
The court denied the motion, finding that, some 17 months after disclosure, the distributor was unable to show any customer loss or diminishment of royalties, and that damages would in any event be an appropriate remedy. The court believed the practicalities attendant to third party capitalization of the availability of the code at the Copyright Office rendered abuse difficult and in most cases not worth the effort.
49In
Fonar Corp. v. Magnetic Resonance Plus, Inc.,
50 the issue attracting the court’s attention was plaintiff’s asserted failure to describe sufficiently the software whose copyright was allegedly infringed. Plaintiff manufactured magnetic resonance imaging systems used for medical diagnosis. To maintain these systems, plaintiff developed “Maintenance Software,” which it defined as “software used in or with the system to aid in its installation, maintenance or repair, including all software other than operational software. Maintenance Software includes but is not limited to ‘diagnostic and maintenance software,’ ‘field engineering utilities software,’ and ‘editors and utilities software.’ ”
51 No definition was provided for “operational software.” Shortly before trial, defendant moved for summary judgment on the ground that plaintiff failed to define the subject of the copyright with sufficient particularity to sustain the claim.
In its attempt to define the software, plaintiff provided several directories of the programs constituting it. The court found these directories to be cryptic and meaningless to the lay eye. Plaintiff also supplied print screens purporting to show that defendant used the software, but the court noted that this material showed “only line after line of computer language text mixed with clusters of meaningless terms.”
52 Further, there was some confusion regarding two maintenance programs not included in the copyright registration. The court found that at the summary judgment stage plaintiff must raise a genuine issue of material fact, which in turn required plaintiff to set forth “the specific portions of its work that it claims are entitled to copyright protection and the extent to which defendants engaged in copying those portions.”
53In holding that plaintiff had not sufficiently described the software, the court relied in part on
Fonar Corp. v. Deccaid Services, Inc.,
54 where the same plaintiff had sued for infringement of copyright in the same software. In that case, the district court had granted a TRO and executed a protective order. Plaintiff claimed that defendant had violated the TRO, and obtained a contempt order. The Second Circuit determined, however, that the TRO had not sufficiently described the software that defendant was enjoined from using, and that therefore the district court order could not stand. In that case, plaintiff adhered to elusive definitions and repeatedly refused to provide documents that would clarify the issue.
The court found that plaintiff had done the same thing in this case.
55 The court seemed concerned that although the software was “2,000 pages long,” “the copyright registration contains only a small fraction of the work, … the first 29 and the last 34 pages of the entire work.”
56 Plaintiff registered the work as a collection pursuant to
17 U.S.C. § 408(c) and
37 C.F.R. § 202.3(c)(3). Defendant challenged the propriety of so registering the work.
Further, defendants asserted it was impossible to determine from the registration the content of the work because, in accordance with
37 C.F.R. § 202.20(c)(2)(vii)(A), which permits a deposit of the first and last 25 pages, “plaintiff only registered the first group of pages of the first ‘module’ … . Defendants correctly point out that plaintiff’s mass filing of the source code as a single collection without sufficient identifying materials failed to identify the works that are the subject of the copyright.”
57 Because of this, enough doubt had been cast so that the validity of the copyright would not be assumed. Moreover, the court determined that plaintiff had not shown that the collection was assembled in an orderly form, which was a pre-requisite for registration as a collection.
58 “Accordingly, when such deep doubt is cast on the validity of the copyright … plaintiff loses the benefit of prima facie validity … and must prove the ‘multitude of facts’ necessary to prove the validity of its copyright … .”
59The court further found that a claimant may not obtain a valid certificate as a collection where the work is represented to be part of a single collection, embracing some documents not copyrightable, mixed in and listed indiscriminately with copyrightable documents, and where the application provides no workable means for determining what documents in fact constitute the “single unpublished collection.”
60… [T]he court finds as a matter of law that the cryptic definition of the Maintenance Software upon which plaintiff relies, which fails to indicate that the work is copyrightable in any way, is insufficient to serve as a basis for the instant copyright action. Plaintiff simply asserts that defendant copied the entire work. Nowhere does plaintiff set forth with any particularity the elements of the work or the originality or uniqueness of its functioning. Without introducing a genuine issue of material fact on the issue of copyrightability, plaintiff cannot establish the first element of a copyright case:
i.e., ownership of a valid copyright.
61The court also held that plaintiff was unable to prove the second element of copyright infringement,
viz., the copying of protectable elements. “Here, plaintiff has failed to raise a genuine issue of material fact … because it has failed to identify the constituent elements of the subject work.”
62The court rejected plaintiff’s reliance on two other cases. The court viewed
Triad63 as not having reached the issue of whether protectable elements had to be copied. The
Triad court simply assumed that plaintiff’s assertion that the entire work was copied sufficed to establish a prima facie case of infringement. “Given the procedural posture of the instant matter, however, the court will not make the same assumption.”
64 The court further found that in
Peak,
65 the issue of whether protectable elements were copied was not dealt with.
Here, the vague and at times internally inconsistent definition proffered by plaintiff failed to differentiate between the uncopyrighted and the copyrighted elements of the software; moreover, the definition failed to describe the copyrightable elements of the work. The particular facts of this case … warrant inquiry into the superficial description of the purportedly copyrighted work in order to determine if plaintiff can establish a case of copyright infringement … . Plaintiff’s failure to [raise a genuine issue of material fact] warrants dismissal of its case.
Deposit. Deposit of copies is treated in
17 U.S.C. § 407,
66 and in
37 C.F.R. §§ 202.19,
202.20 and
202.21.
67 With respect to deposit under section 407, regulation § 202.19(c) sets forth exemptions from the requirement to deposit; exemption (5) deals with programs and data bases:
“Literary works, including computer programs and automated data bases, published in the United States 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 visually perceived except with the aid of a machine or device… .”
Accordingly, if a program is published in the United States only in machine-readable form, no deposit is necessary.
68Alternatively, if a program is registered pursuant to section 408,
69 there is no exemption from the requirement to deposit, regardless of the form of the published copies. However, § 408(c) prescribes that for particular classes of works, the regulations may require or permit the deposit of identifying materials instead of copies. Regulation section 220.20(c)(2)(vii) implements that prescription for programs and automated data bases.
70 Moreover, Regulation section 202.20(d) permits the Register to afford “special relief” regarding the deposit requirement.
71Finally, section 407, and (in part) section 408 speak of the “best edition.” The regulation concerning that issue essentially leaves the determination of what constitutes the best edition to the Copyright Office.
72 In addition, in July 1981 the Office issued Letter GL R-70, “Deposit is Computer Program in Non-Source Code Format.”
73The Copyright Office has adopted a regulation covering the deposit of databases in CD-ROM format.
37 C.F.R. § 202.10(c)(xix) provides:
Works fixed in a CD-ROM format.
(A) Where a work is fixed in a CD-ROM format, the deposit must consist of one complete copy of the entire CD-ROM package, including a complete copy of any accompanying operating software and instructional manual, and a printed version of the work embodied in the CD-ROM, if the work is fixed in print as well as a CD-ROM. A complete copy of a published CD-ROM package includes all of the elements comprising the applicable unit of publication, including elements that if considered separately would not be copyrightable subject matter or could be the subject of a separate registration.
(B) In any case where the work fixed in a CD-ROM package cannot be viewed on equipment available in the Examining Division of the Copyright Office, the Office will seek an appropriate deposit in accordance with paragraph (d) of this section, in addition to the deposit of the CD-ROM package.
Because of fears expressed by copyright owners of works containing trade secrets, the Copyright office published a Notice of Inquiry to determine the appropriateness of modifying the deposit regulations for such works.
74Copies and identifying material deposited with the Copyright Office become Government property pursuant to § 704.
75 In implementing its duty to promulgate regulations on retention of deposited materials for the full term of the copyright, the Register has adopted
37 C.F.R. § 202.23.
76 Copyright Office record maintenance and inspection are in accordance with §§ 705, 706.
77 The public’s right to access to deposited material and Copyright Office records is further set forth in
37 C.F.R. § 201.2 (b):
“Inspection and copying of records. (1) Inspection and copying of completed records and indexes relating to a registration or a recorded document, and inspection of copies or identifying material deposited in connection with a completed copyright registration may be undertaken in the Certifications and Documents section. Since some of these materials are not stored on the immediate premises of the Copyright Office, it is advisable to consult the Certifications and Documents Section to determine the length of time necessary to produce the requested materials.
A “plain-English” discussion of the deposit requirements is found in Copyright Office Circular 7d, reproduced in Appendix 4A.
The Copyright Office has noticed an inquiry regarding registration and deposit of data bases.
78Footnotes — § 4.05:
1 Many of the Copyright Office publications and forms attendant to these so-called “statutory formalities” are reproduced in Appendix 4A
infra.This section deals with requirements for computer programs. For Copyright Office regulations on registration and deposit for databases, see Appendix 4A[32] infra.
2 Section 401 provides:
Ҥ 401. Notice of copyright: Visually perceptible copies
“(a) General Requirements.-Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner, a notice of copyright as provided by this section shall be placed on all publicly distributed copies from which the work can be visually perceived, either directly or with the aid of a machine or device.
“(b) Form of Notice.-The notice appearing on the copies shall consist of the following three elements:
“(1) the symbol © (the letter C in a circle), or the word ‘Copyright’. or the abbreviation ‘Copr.’; and
“(2) the year of the first publication of the work; in the case of compilations or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient. The year date may be omitted where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, post-cards, stationery, jewelry, dolls, toys, or any useful articles; and
“(3) The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or generally known alternative designation of the owner.
“(c) Position of Notice.-The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright. The register of copyrights shall prescribe by regulation, as examples, specific methods of affixiation and positions of the notice on various types of works that will satisfy this requirement, but these specifications shall not be considered exhaustive.”
3 This section provides:
Ҥ 201.20 Methods of affixation and positions of the copyright notice on various types of works.
‘
(a) General. (1) This section specifies examples of methods of affixation and positions of the copyright notice on various types of works that will satisfy the notice requirement of
section 401(c) of title 17 of the United States Code, as amended by
Pub. L. 94-553. A notice considered ‘acceptable’ under this regulation shall be considered to satisfy the requirement of that section that it be ‘affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.’ As provided by that section, the examples specified in this regulation shall not be considered exhaustive of methods of affixation and positions giving reasonable notice of the claim of copyright.
“(2) The provisions of this section are applicable to copies publicly distributed on or after December 1, 1981. This section does not establish any rules concerning the form of the notice or the legal sufficiency of particular notices, except with respect to methods of affixation and positions of notice. The adequacy or legal sufficiency of a copyright notice is determined by the law in effect at the time of the first publication of the work.
“(b) Definitions. For the purposes of this section:
“(1) The terms ‘audiovisual works,’ ‘collective works,’ ‘copies,’ ‘device,’ ‘fixed,’ ‘machine,’ ‘motion picture,’ ‘pictorial, graphic, and sculptural works,’ and their variant forms, have the meanings given to them in section 101 of title 17.
“(2) ‘Title 17’ means title 17 of the United States Code, as amended by Pub. L. 94–553.
“(3) In the case of a work consisting preponderantly of leaves on which the work is printed or otherwise reproduced on both sides, a ‘page’ is one side of a leaf; where the preponderance of the leaves are printed on one side only, the terms ‘page’ and ‘leaf’ mean the same.
“(4) A work is published in ‘book form’ if the copies embodying it consist of multiple leaves bound, fastened, or assembled in a predetermined order, as, for example, a volume, booklet, pamphlet, or multipage folder. For the purpose of this section, a work need not consist of textual matter in order to be considered published in ‘book form.’
“(5) A ‘title page’ is a page, or two consecutive pages facing each other, appearing at or near the front of the copies of a work published in book form, on which the complete title of the work is prominently stated and on which the names of the author or authors, the name of the publisher, the place of publication, or some combination of them, are given.
“(6) The meaning of the terms ‘front,’ ‘back,’ ‘first,’ ‘last,’ and ‘following,’ when used in connection with works published in book form, will vary in relation to the physical form of the copies, depending upon the particular language in which the work is written.
“(7) In the case of a work published in book form with a hard or soft cover, the ‘front page’ and ‘back page’ of the copies are the outsides of the front and back covers; where there is no cover, the ‘front page,’ and ‘back page’ are the pages visible at the front and back of the copies before they are opened.
“(8) A ‘masthead’ is a body of information appearing in approximately the same location in most issues of a newspaper, magazine, journal, review, or other periodical or serial, typically containing the title of the periodical or serial, information about the staff, periodicity of issues, operation, and subscription and editorial policies, of the publication.
“(9) A ‘single-leaf work’ is a work published in copies consisting of a single leaf, including copies on which the work is printed or otherwise reproduced on either one side or on both sides of the leaf, and also folders which, without cutting or tearing the copies, can be opened out to form a single leaf. For the purpose of this section, a work need not consist of textual matter in order to be considered a ‘single-leaf work.’
“(c) Manner of Affixation and Position Generally. (1) In all cases dealt with in this section, the acceptability of a notice depends upon its being permanently legible to an ordinary user of the work under normal conditions of use, and affixed to the copies in such manner and position that, when affixed, it is not concealed from view upon reasonable examination.
“(2) Where, in a particular case, a notice does not appear in one of the precise locations prescribed in this section but a person looking in one of those locations would be reasonably certain to find a notice in another somewhat different location, that notice will be acceptable under this section.
“(d) Works Published in Book Form. In the case of works published in book form, a notice reproduced on the copies in any of the following positions is acceptable:
“(1) The title page, if any;
“(2) The page immediately following the title page, if any;
“(3) Either side of the front cover, if any; or, if there is no front cover, either side of the front leaf of the copies;
“(4) Either side of the back cover, if any; or, if there is no back cover, either side of the back leaf of the copies;
“(5) The first page of the main body of the work;
“(6) The last page of the main body of the work;
“(7) Any page between the front page and the first page of the main body of the work, if: (i) There are no more than ten pages between the front page and the first page of the main body of the work; and (ii) the notice is reproduced prominently and is set apart from other matter on the page where it appears;
“(8) Any page between the last page of the main body of the work and back page, if: (i) There are no more than ten pages between the last page of the main body of the work and the back page; and (ii) The notice is reproduced prominently and is set apart from the other matter on the page where it appears.
“(9) In the case of a work published as an issue of a periodical or serial, in addition to any of the locations listed in paragraphs (d)(1) through (8) of this section, a notice is acceptable, if it is located: (i) As a part of, or adjacent to, the masthead; (ii) on the page containing the masthead if the notice is reproduced prominently and is set apart from the other matter appearing on the page; or (iii) adjacent to a prominent heading, appearing at or near the front of the issue, containing the title of the periodical or serial and any combination of the volume and issue number and date of the issue.
“(10) In the case of a musical work, in addition to any of the locations listed in paragraphs (d)(1) through (9) of this section, a notice is acceptable if it is located on the first page of music.
“(e) Single-Leaf Works. In the case of single-leaf works, a notice reproduced on the copies anywhere on the front or back of the leaf is acceptable.
“(f)
Contributions to Collective Works. For a separate contribution to a collective work to be considered to ‘bear its own notice of copyright,’ as provided by
17 U.S.C. 404, a notice reproduced on the copies in any of the following positions is acceptable:
“(1) Where the separate contribution is reproduced on a single page, a notice is acceptable if it appears: (i) Under the title of the contribution on that page; (ii) adjacent to the contribution; or (iii) on the same page if, through format, wording, or both, the application of the notice to the particular contribution is made clear;
“(2) Where the separate contribution is reproduced on more than one page of the collective work, a notice is acceptable if it appears: (i) Under a title appearing at or near the beginning of the contribution; (ii) on the first page of the main body of the contribution; (iii) immediately following the end of the contribution; or (iv) on any of the pages where the contribution appears, if: (A) The contribution is reproduced on no more than twenty pages of the collective work; (B) the notice is reproduced prominently and is set apart from other matter on the page where it appears; and (C) through format, wording, or both, the application of the notice to the particular contribution is made clear;
“(3) Where the separate contribution is a musical work, in addition to any of the locations listed in paragraphs (f)(1) and (2) of this section, a notice is acceptable if it is located on the first page of music of the contribution;
“(4) As an alternative to placing the notice on one of the pages where a separate contribution itself appears, the contribution is considered to ‘bear its own notice’ if the notice appears clearly in juxtaposition with a separate listing of the contribution by title, or if the contribution is untitled, by a description reasonably identifying the contribution: (i) on the page bearing the copyright notice for the collective work as a whole, if any; or (ii) in a clearly identified and readily-accessible table of contents or listing of acknowledgements appearing near the front or back of the collective work as a whole.
“(g) Works Reproduced in Machine-Readable Copies. For works reproduced in machine-readable copies (such as magnetic tapes or disks, punched cards, or the like, from which the work cannot ordinarily be visually perceived except with the aid of a machine or device, [Ed. Note. The following definition appears as a footnote to the preceding word: “Works published in a form requiring the use of a machine or device for purposes of optical enlargement (such as film, filmstrips, slide films, and works published in any variety of microform) and works published in visually perceptible form but used in connection with optical scanning devices, are not within this category.] each of the following constitute examples of acceptable methods of affixation and position of notice:
“(1) A notice emodied in the copies in machine-readable form in such a manner that on visually perceptible printouts it appears either with or near the title, or at the end of the work;
“(2) A notice that is displayed at the user’s terminal at sign on;
“(3) A notice that is continuously on terminal display; or
“(4) A legible notice reproduced durably, so as to withstand normal use, on a gummed or other label securely affixed to the copies or to a box, reel, cartridge, cassette, or other container used as a permanent receptacle for the copies.
“(h) Motion Pictures and Other Audiovisual Works. (1) The following constitute examples of acceptable methods of affixation and positions of the copyright notice on motion pictures and other audiovisual works: A notice that is embodied in the copies by a photomechanical or electronic process, in such a position that it ordinarily would appear whenever the work is performed in its entirety, and that is located: (i) with or near the title; (ii) with the cast, credits, and similar information; (iii) at or immediately following the beginning of the work; or (iv) at or immediately preceding the end of the work.
“(2) In the case of an untitled motion picture or other audiovisual work whose duration is sixty seconds or less, in addition to any of the locations listed in paragraph (h)(1) of this section, a notice that is embodied in the copies by a photomechanical or electronic process, in such a position that it ordinarily would appear to the projectionist or broadcaster when preparing the work for performance, is acceptable if it is located on the leader of the film or tape immediately preceding the beginning of the work.
“(3) In the case of a motion picture or other audiovisual work that is distributed to the public for private use, the notice may be affixed, in addition to the locations specified in paragraph (h)(1) of this section, on the housing or container, if it is a permanent receptacle for the work.
“(i) Pictorial, Graphic, and Sculptural Works. The following constitute examples of acceptable methods of affixation and positions of the copyright notice on various forms of pictorial, graphic, and sculptural works:
“(1) Where a work is reproduced in two-dimensional copies, a notice affixed directly or by means of a label cemented, sewn, or otherwise attached durably, so as to withstand normal use, of the front or back of the copies, or to any backing, mounting, matting, framing, or other material to which the copies are durably attached, so as to withstand normal use, or in which they are permanently housed, is acceptable.
“(2) Where a work is reproduced in three-dimensional copies, a notice affixed directly or by means of a label cemented, sewn, or otherwise attached durably, so as to withstand normal use, to any visible portion of the work, or to any base, mounting, framing, or other material on which the copies are durably attached, so as to withstand normal use, or in which they are permanently housed, is acceptable.
“(3) Where, because of the size or physical characteristics of the material in which the work is reproduced in copies, it is impossible or extremely impracticable to affix a notice to the copies directly or by means of a durable label, a notice is acceptable if it appears on a tag that is of durable material, so as to withstand normal use, and that is attached to the copy with sufficient durability that it will remain with the copy while it is passing through its normal channels of commerce.
“(4) Where a work is reproduced in copies consisting of sheet-like or strip material bearing multiple or continuous reproductions of the work, the notice may be applied: (i) To the reproduction itself; (ii) to the margin, selvage, or reverse side of the material at frequent and regular intervals; or (iii) if the material contains neither a selvage nor a reverse side, to tags or labels, attached to the copies and to any spools, reels, or containers housing them in such a way that a notice is visible while the copies are passing through their normal channels of commerce.
“(5) If the work is permanently housed in a container, such as a game or puzzle box, a notice reproduced on the permanent container is acceptable.
“[Added 46 FR 58307 (12/1/81), effective 12/1/81. ]”
4 These terms are defined in subsection (a).
5 In a comment on the regulation, the Copyright Office had this to say about subsection (g) (46 Fed. Reg. 58307, Dec. 1, 1981):
“Paragraph (g) of the proposed regulation identifies four examples of acceptable methods of affixation and position of the copyright notice for works reproduced in machine-readable copies. One comment submitted on behalf of a computer manufacturer noted that the basic 48 character print matrix for computer mechanical printers does not include the symbol ©. Accordingly, the comment urged that the final regulation provide that an affixation consisting of a ‘(c)’ would constitute an acceptable substitute for the symbol ©.
“Section 401(b)(1) of the Act specifies that one of the elements contained in the notice shall be ‘the symbol © (the letter c in a circle), or the word “Copyright,” or the abbreviation “Copr.” ’ The Copyright Office has no authority to alter this requirement. We have therefore not adopted the suggestion of the computer manufacturer. Furthermore, although the print matrices may not presently be equipped to print the symbol ©, they can presumably print either of the alternative indicia, © or the abbreviation ‘Copr.’ ”
6 In commenting on the regulation before it was adopted, the Copyright Office had this to say (46 Fed. Reg. 48307, Dec. 1, 1981):
“Other examples proposed in the comments would have permitted the notice to be affixed on the cassette housing of the film or tape or on the film or tape itself in such position that, when broadcast, the notice would appear in an area known as “TV Safe” zone, located outside the normal picture zone, of the television tube. The Copyright Office does not believe that either proposal adequately assures giving “reasonable notice of the claim of copyright” in the case of works that reach the public through television, theatrical or other exhibition.
“Upon reconsideration, however, the Office has decided to specify the permanent container of a film or tape as an appropriate position for the notice on audiovisual works marketed in copies to the general public for private use. Such audiovisual works are distributed to the public in a manner that is analogous to the distribution of sound recordings. Notice on the permanent container therefore seems reasonable for such audiovisual works by analogy to the positions prescribed by statute for sound recordings.”
7 At the time, the regulation was a proposed regulation.
8 17 U.S.C. § 405 provides:
Ҥ 405. Notice of copyright: Omission of notice
“(a) Effect of Omission on Copyright.— The omission of the copyright notice described by sections 401 through 403 from copies or phonorecords publicly distributed by authority of the copyright owner does not invalidate the copyright in a work if—
“(1) the notice has been omitted from no more than a relatively small number of copies or phonorecords distributed to the public; or
“(2) registration for the work has been made before or is made within five years after the publication without notice, and a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered; or
“(3) the notice has been omitted in violation of an express requirement in writing that, as a condition of the copyright owner’s authorization of the public distribution of copies or phonorecords, they bear the prescribed notice.
“(b) Effect of Omission on Innocent Infringers.— Any person who innocently infringes a copyright, in reliance upon an authorized copy or phonorecord from which the copyright notice has been omitted, incurs no liability for actual or statutory damages under section 504 for any infringing acts committed before receiving actual notice that registration for the work has been made under section 408, if such person proves that he or she was misled by the omission of notice. In a suit for infringement in such a case the court may allow or disallow recovery of any of the infringer’s profits attributable to the infringement, and may enjoin the continuation of the infringing undertaking or may require, as a condition for permitting the continuation of the infringing undertaking, that the infringer pay the copyright owner a reasonable license fee in an amount and on terms fixed by the court.
“(c) Removal of Notice.— Protection under this title is not affected by the removal, destruction, or obligation of the notice, without the authorization of the copyright owner, from any publicly distributed copies or phonorecords.”
9 17 U.S.C. § 504 provides:
Ҥ 504. Remedies for infringement: Damages and profits
“(a) In General.— Except as otherwise provided by this title, an infringer of copyright is liable for either—
“(1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b); or
“(2) statutory damages, as provided by subsection (c).
“(b) Actual Damages and Profits.— The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’ s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.
“(c) Statutory Damages.—
“(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $250 or more than $10,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
“(2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $50,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $100. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords; or (ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit activities of a public broadcasting entity (as defined in subsection (g) of section 118) infringed by performing a published nondramatic literary work or by reproducing a transmission program embodying a performance of such a work.”
12 In its ruling of March 3, 1993, the court found that version 32V object code had likewise been distributed by plaintiff to thousands of licensees, but with copyright notice.
14 Plaintiff first identified the type of code a potential licensee sought, and then acquired detailed information about the customer’s business, ability to pay, and whether the customer was in a country offering trade secret protection.
15 The court believed that under such a definition almost all lessees would belong to a “selected group.”
16 The court did state, however, that the number of licensees was not irrelevant. A small number might indicate a stringent selection process.
17 D.C.I. Computer Sys., Inc. v. Pardini, Andrews Comp. Ind. Lit. Rep. 16,075 (Dec. 19, 1992)(9th Cir. Slip op. filed Nov. 5, 1992).
21 H.R. Rep. No. 1476, 94 Congr., 2d Sess. 146, reprinted in 1976 U.S. Code Congr. & Admin. News 5659, 5762 (emphasis added).
24 The court stated that it could look to the legislative history even if it did not find the statute ambiguous.
26 The court noted that under the
O’Neill construction, defendant here would still forfeit, because it learned facts indicating the existence of a controversy a year before it took steps to affix notice. Defendant’s “excuse”—lack of direct competition from the other user—was found lacking. The court also distinguished
O’Neill in that there, plaintiff did not anticipate copying, whereas here, “knock-offs” were a prevalent industry practice.
552 F. Supp. at 1311.
27 In that case there would be authorized publication with deliberate omission. The court also doubted as a policy matter whether protection should be afforded to a licensee and licensor who gave such slight consideration to copyright protection. Also deemed relevant was licensor’s sales activity prior to the agreement.
31 In passing, the court stated that where a defective copyright notice has been used, “discovery” of the omission of proper notice takes places “when the claimant is apprised that the notice is for some reason insufficient for its intended purpose.”
Id. at 73, n. 5.
34 Plaintiff’s original counsel was likewise unaware.
35 It consulted different counsel at that time.
36 This case was decided four and a half months after
Shapiro, supra. 37 The court noted that the
O’Neill omission spanned fifteen months, whereas the omission here occurred for four months.
38 The court also viewed the five-year curative period as evidence that Congress intended to be more solicitous of authors’ intent than innocent infringers’ reliance.
39 Section 412 provides:
“Registration as prerequisite to certain remedies for infringement
“In any action under this title, other than an action instituted under section 411(b), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for—
“(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or
“(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”
40 This is the form used for nondramatic literary works. See
37 C.F.R. § 202.3(b)(1)(i). The form can be obtained from the Public Information Office, U.S. Copyright Office, Library of Congress, Washington, D.C. 20559.
37 C.F.R. § 202.3(b)(2).
A copy of Form TX, and of Copyright Office instructions for completing it, are included in
Appendix 4A, infra. Similarly, a copy of Form PA (generally used for works of the Performing Arts, and specifically used for videotapes of video game displays), and instructions for completing it, are included in
Appendix 4A, infra, as is Copyright Office Circular R45, “Copyright Registration for Motion Pictures Including Video Recordings.”
Also included in Appendix 4A are Copyright Office Circulars R1c (“Copyright Registration Procedures”), R1e (“The Certification Space of the Application Form”), and R61 (“Copyright Registration for Computer Programs”).
Ҥ 408. Copyright registration in general
“(a) Registration Permissive.—At any time during the subsistence of copyright in any published or unpublished work, the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim by delivering to the Copyright Office the deposit specified by this section, together with the application and fee specified by sections 409 and 708. Subject to the provisions of section 405(a), such registration is not a condition of copyright protection.
“(b) Deposit for Copyright Registration.—Except as provided by subsection (c) the material deposited for registration shall include—
“(1) in the case of an unpublished work, one complete copy or phonorecord;
“(2) in the case of a published work, two complete copies or phonorecords of the best edition;
“(3) in the case of a work first published outside the United States, one complete copy or phonorecord as so published;
“(4) in the case of a contribution to a collective work, one complete copy or phonorecord of the best edition of the collective work.
Copies or phonorecords deposited for the Library of Congress under section 407 may be used to satisfy the deposit provisions of this section, if they are accompanied by the prescribed application and fee, and by any additional identifying material that the Register may, by regulation, require. The Register shall also prescribe regulations establishing requirements under which copies or phonorecords acquired for the Library of Congress under subsection (e) of section 407, otherwise than by deposit, may be used to satisfy the deposit provisions of this section.
“(c) Administrative Classification and Optional Deposit.—
“(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.
“(2) Without prejudice to the general authority provided under clause (1), the Register of Copyrights shall establish regulations specifically permitting a single registration for a group of works by the same individual author, all first published as contributions to periodicals, including newspapers, within a twelve-month period, on the basis of a single deposit application, and registration fee, under all of the following conditions—
“(A) if each of the works as first published bore a separate copyright notice, and the name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner was the same and
“(B) if the deposit consists of one copy of the entire issue of the periodical, or of the entire section in the case of a newspaper, in which each contribution was first published; and
“(C) if the application identifies each work separately, including the periodical containing it and its date of first publication.
“(3) As an alternative to separate renewal registrations under subsection (a) of section 304, a single renewal registration may be made for a group of works by the same individual author, all first published as contributions to periodicals, including newspapers, upon the filing of a single application and fee, under all of the following conditions:
“(A) the renewal claimant or claimants, and the basis of claim or claims under section 304(a), is the same for each of the works; and
“(B) the works were all copyrighted upon their first publication, either through separate copyright notice and registration or by virtue of a general copyright notice in the periodical issue as a whole; and
“(C) the renewal application and fee are received not more than twenty-eight or less than twenty-seven years after the thirty-first day of December of the calendar year in which all of the works were first published; and
“(D) the renewal application identifies each work separately, including the periodical containing it and its date of first publication.
“(d) Corrections and Amplifications.—The Register may also establish, by regulation, formal procedures for the filing of an application for supplementary registration, to correct an error in a copyright registration or to amplify the information given in a registration. Such application shall be accompanied by the fee provided by section 708, and shall clearly identify the registration to be corrected or amplified. The information contained in a supplementary registration augments but does not supersede that contained in the earlier registration.
“(e) Published Edition of Previously Registered Work.—Registration for the first published edition of a work previously registered in unpublished form may be made even though the work was published is substantially the same as the unpublished version.”
41 PL 100-318 amends
17 U.S.C. § 708(a) by increasing the application fee from $10 to $20. The effective date of the application fee increase is Jan. 3, 1991. BNA’s Patent, Trademark & Copyright Journal, Vol. 40, No. 988, p. 219, July 12, 1990.
42 The procedures established by the Copyright Office for examining records, including those pertaining to pending applications are set forth in
37 C.F.R. §§ 203,
204. These sections, along with some Copyright Office Commentary on them, are reproduced in
Appendix 4A, infra, as is Copyright Office Circular R6, “Obtaining Copies of Copyright Office Records and Deposits.”
43 17 U.S.C. § 411(b)provides:
Ҥ 411. Registration as prerequisite to infringement suit
—(b), no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.”
44 17 U.S.C. § 412 provides:
Ҥ 412. Registration as prerequisite to certain remedies for infringement
“In any action under this title,—no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for—
“(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or
“(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”
46 The Copyright Office specifically noted that the applicant was free to seek a copyright registration for the underlying computer program.
49 To the extent widespread use of the information were made, the court believed it would come to the distributor’s attention, so that it could seek a remedy against any wrongdoer.
55 “The supplemental evidence offered by plaintiff … reiterates that there are three ‘modules’ to the program … and purportedly introduces lists of the programs under these elements, although this information is undecipherable.”
920 F. Supp 508, 516.
56 Id. at 516 n.10. “Moreover, as with the print screens annexed to plaintiff’s supplemental submissions, the pages annexed to the copyright registration contain the text of unintelligible computer programs that fail to clarify the issue in question.”
Id. 58 Plaintiff asserted that “the three modules are packaged together and considered a single work not only because they are used for the same purposes … but also because there are several service functions which require interaction between modules.”
Id. at 518 n.15. The court did not indicate what it would consider sufficient evidence on this point.
60 The court dismissed plaintiff’s reference to
Altai’s endorsement of registering “a single program without registering separately each of the sub-and sub-sub-programs in order to obtain copyright for the entire work.”
Id. at 518 n.18. According to the court, that was distinguishable from registering dozens of programs as a collection which, by implication, had been done here.
61 Id. at 518–519. The court continued: “This definition fails in any way to identify and distinguish the elements of the work that would not otherwise fall outside the protections offered under the copyright laws under well-established doctrines… . Identifying the ways in which a copyrighted work—especially one concerning functional computer software—does not fall under these basic doctrines is an elementary obligation of a litigant in this type of action.”
Id. at 519 n.19.
66 In pertinent part these statutes prescribe:
Ҥ 407. Deposit of copies or phonorecords for Library of Congress
“(a) Except as provided by subsection (c), and subject to the provisions of subsection (e), the owner of copyright or of the exclusive right of publication in a work published with notice of copyright in the United States shall deposit, within three months after the date of such publication—
“(1) two complete copies of the best edition; or
“(2) if the work is a sound recording, two complete phonorecords of the best edition, together with any printed or other visually perceptible material published with such phonorecords. Neither the deposit requirements of this subsection nor the acquisition provisions of subsection (e) are conditions of copyright protection.
“(b) The required copies or phonorecords shall be deposited in the Copyright Office for the use or disposition of the Library of Congress. The Register of Copyrights shall, when requested by the depositor and upon payment of the fee prescribed by section 708, issue a receipt for the deposit.
“(c) The Register of Copyrights may by regulation exempt any categories of material from the deposit requirements of this section, or require deposit of only one copy or phonorecord with respect to any categories. Such regulations shall provide either for complete exemption from the deposit requirements of this section, or for alternative forms of deposit aimed at providing a satisfactory archival record of a work without imposing practical or financial hardships on the depositor, where the individual author is the owner of copyright in a pictorial, graphic, or sculptural work and (i) less than five copies of the work have been published, or (ii) the work has been published in a limited edition consisting of numbered copies, the monetary value of which would make the mandatory deposit of two copies of the best edition of the work burdensome, unfair, or unreasonable.
“(d) At any time after publication of a work as provided by subsection (a), the Register of Copyrights may make written demand for the required deposit on any of the persons obligated to make the deposit under subsection (a). Unless deposit is made within three months after the demand is received, the person or persons on whom the demand was made are liable—
“(1) to a fine of not more than $250 for each work; and
“(2) to pay into a specially designated fund in the Library of Congress the total retail price of the copies or phonorecords demanded, or, if no retail price has been fixed, the reasonable cost of the Library of Congress of acquiring them; and
“(3) to pay a fine of $2,500, in addition to any fine or liability imposed under clauses (1) and (2), if such person willfully or repeatedly fails or refuses to comply with such a demand.
“[Subsection (e) deals with certain transmitted material.]”
[Section 405(a) is reproduced in N. 8 supra.]
67 Databases have been accorded special treatment in connection with the requirement, pursuant to
17 U.S.C. § 407, to deposit in the Copyright Office copies of published works. As amended October 16,
1989,
37 C.F.R. § 202.19(c)(5) provides:
“(c) Exemptions from deposit requirements. The following categories of material are exempt from the deposit requirements of Section 407(a) of title 17: … . (5) Automated databases available only online in the United States but not including automated databases distributed only in the form of machine-readable copies (such as magnetic tape or disk, punch cards, or the like) from which the work cannot ordinarily be visually perceived except with the aid of a machine or device and computerized information works in the nature of statistical compendia, serials and reference works … .”
And where a deposit is required in the case of a database, there is a special provision governing it.
37 C.F.R. § 220.19(2)(d) provides:
“(d) Nature of required deposit. … . (2) In the case of certain published works not exempt from the deposit requirements under paragraph (c) of this section the following special provisions shall apply: … . (vii) In the case of published computer programs and published computerized information works, such as statistical compendia, serials, and reference works that are not copy-protected, the deposit of one complete copy of the best edition as will suffice in lieu of the two copies required by paragraph (d)(1) of this section. If the works are copy-protected, two copies of the best edition are required.”
The nature of the “best edition” is specified in App. B to Part 202, 37 C.F.R. Section VIII of App. B is entitled “Machine-Readable Copies,” and provides:
“A. Computer Programs1. With documents and other accompanying material rather than without.
2. Not copy-protected rather than copy-protected (if copy-protected thin with a backup copy of the disk(s)).
3. Format:
a. PC-DOS or MS-DOS (or other IBM-compatible formats, such as XENIX):
(i) 5¼ ‘’ Diskette(s).
(ii) 3½ ‘’ Diskette(s).
(iii) Optical media, such as CD-ROM, best edition should adhere to prevailing NISO standards.
b. Apple MacIntosh
(i) 3½ ‘’ Diskette(s).
(ii) Optical media, such as CD-ROM, best edition should adhere to prevailing NISO standards.
B. Computerized Information Works, Including Statistical Compendia, Serials or Reference Works:
1. With documentation and other accompanying material rather than without.
2. With best edition of accompanying program rather than without.
3. Not copy-protected rather than copy-protected (if copy-protected then with a back-up copy of the disks).
4. Format:
a. PC-DOS or MS-DOS (or other IBM-compatible formats, such as XENIX):
(i) Optical media, such as CD-ROM, best edition should adhere to prevailing NISO standards.
(ii) 5¼ ‘’ Diskette(s).
(iii) 3½ ‘’ Diskette(s).
b. Apple MacIntosh
(i) Optical media, such as CD-ROM, best edition should adhere to prevailing NISO standards.
Copyright L. Rep. (CCH)
The provisions above apply to the deposit of published works under
17 U.S.C. § 407, and not to the deposit requirements for registration. The Copyright Office in 1986 adopted changes to
37 CFR Sections 202.19,
202.20,
202.21. In pertinent part, the new regulations follow:
§ 202.19 Deposit of published copies or phonorecords for the Library of Congress.
* * *
(c) Exemptions from deposit requirements. The following categories of material are exempt from the deposit requirements of section 407(a) of title 17:
* * *
(e) Special relief. (1) In the case of any published work not exempt from deposit under paragraph (c) of this section, the Register of Copyrights may, after consultation with other appropriate officials of the Library of Congress and upon such conditions as the Register may determine after such consultation: (i) Grant an exemption from the deposit requirements of section 407(a) of title 17 on an individual basis for single works or series or groups of works; or (ii) permit the deposit of one copy or phonorecord, or alternative identifying material, in lieu of the two copies or phonorecords required by paragraph (d)(1) of this section; or (iii) permit the deposit of incomplete copies or phonorecords, or copies or phonorecords other than those normally comprising the best edition; or (iv) permit the deposit of identifying material which does not comply with section 202.21 of these regulations.
(2) Any decision as to whether to grant such special relief, and the conditions under which special relief is to be granted, shall be made by the Register of Copyrights after consultation with other appropriate officials of the Library of Congress, and shall be based upon the acquisition policies of the Library of Congress then in force.
(3) Requests for special relief under this paragraph shall be made in writing to the Chief, Deposits and Acquisitions Division of the Copyright Office, shall be signed by or on behalf of the owner of copyright or of the exclusive right of publication in the work, and shall set forth specific reasons why the request should be granted.
(4) The Register of Copyrights may, after consultation with other appropriate officials of the Library of Congress, terminate any ongoing or continuous grant of special relief. Notice of termination shall be given in writing and shall be sent to the individual person or organization to whom the grant of special relief had been given, at the last address shown in the records of the Copyright Office. A notice of termination may be given at any time, but it shall state a specific date of termination that is at least 30 days later than the date the notice is mailed. Termination shall not affect the validity of any deposit made earlier under the grant of special relief.
(f) Submission and receipt of copies and phonorecords. (1) All copies and phonorecords deposited in the Copyright Office will be considered to be deposited only in compliance with section 407 of title 17 unless they are accompanied by an application for registration of claim to copyright in the work represented by the deposit, and either a registration fee or a deposit account number on the application. Copies or phonorecords deposited without such an accompanying application and either a fee or a deposit account notation will not be connected with or held for receipt of separate applications, and will not satisfy the deposit provisions of section 408 of title 17 or § 202.20 of these regulations.
(2) All copies and phonorecords deposited in the Copyright Office under section 407 of title 17, unless accompanied by written instructions to the contrary, will be considered to be deposited by the person or persons named in the copyright notice on the work.
(3) Upon request by the depositor made at the time of the deposit, the Copyright Office will issue a certificate of receipt for the deposit of copies or phonorecords of a work under this section. Certificates of receipts will be issued in response to requests made after the date of deposit only if the requesting party is identified in the records of the Copyright Office as having made the deposit. In either case, requests for a certificate of receipt must be in writing and accompanied by a fee of $2. A certificate or receipt will include identification of the depositor, the work deposited, and the nature and format of the copy or phonorecord deposited, together with the date of receipt.
§ 202.20 Deposit of copies and phonorecords for copyright registration.
(a)
General. This section prescribes rules pertaining to the deposit of copies and phonorecords of published and unpublished works for the purpose of copyright registration under
section 408 of title 17 of the United States Code, as amended by
Pub. L. 94-553. The provisions of this section are not applicable to the deposit of copies and phonorecords for the Library of Congress under section 407 of title 17, except as expressly adopted in § 202.19 of these regulations.
* * *
(c) Nature of required deposit. (1) Subject to the provision of paragraph (c)(2) of this section, the deposit required to accompany an application for registration of claim to copyright under section 408 of title 17 shall consist of:
(i) In the case of unpublished works, one complete copy or phonorecord.
(ii) In the case of works first published in the United States before January 1, 1978, two complete copies or phonorecords of the work as first published.
(iii) In the case of works first published in the United States on or after January 1, 1978, two complete copies or phonorecords of the best edition.
(iv) In the case of works first published outside of the United States, whenever published, one complete copy or phonorecord of the work as first published. For the purposes of this section, any works simultaneously first published within and outside of the United States shall be considered to be first published in the United States.
(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.
* * *
(vii) Computer programs and data bases embodied in machine-readable copies. In cases where a computer program, data base, compilation, statistical compendium or the like, if unpublished is fixed, or if published is published only in the form of machine-readable copies (such as magnetic tape or disks, punched cards, semiconductor chip products, 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. If the program is 50 pages or less, the required deposit will be the entire work. In the case of revised versions of such works, if the revisions occur throughout the entire computer program, the deposit of the first and last 25 pages will suffice; if the revisions are not contained in the first and last 25 pages, the deposit should consist of any 50 pages representative of the revised material.
(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) Machine-readable copies of works other than computer programs and data bases. Where a literary, musical, pictorial, graphic, or audiovisual work, or a sound recording, except for literary works which are computer programs, data bases, compilations, statistical compendia or the like, if unpublished has been fixed or, if published, has been published only in machine-readable form, the deposit must consist of identifying material. The type of identifying material submitted should generally be appropriate to the type of work embodied in machine-readable form, but in all cases should be that which best represents the copyrightable content of the work. In all cases the identifying material must include the title of the work. A synopsis may also be requested in addition to the other deposit materials as appropriate, in the discretion of the Copyright Office. In the case of any published work subject to this section, the identifying material must include a representation of the copyright notice, if one exists. Identifying material requirements for certain types of works are specified below. In the case of the types of works listed below, the requirements specified shall apply except that, in any case where the specific requirements are not appropriate for a given work the form of the identifying material required will be determined by the Copyright Office in consultation with the applicant, but the Copyright Office will make the final determination of the acceptability of the identifying material.
(A) For pictorial or graphic works, the deposit shall consist of identifying material in compliance with section 202.21 of these regulations.
(B) For audiovisual works, the deposit shall consist of either a videotape of the work depicting representative portions of the copyrightable content, or a series of photographs or drawings, depicting representative portions of the work, plus in all cases a separate synopsis of the work;
(C) For musical compositions, the deposit shall consist of a transcription of the entire work such as a score, or a reproduction of the entire work on an audiocassette or other phonorecord;
(D) For sound recordings, the deposit shall consist of a reproduction of the entire work on an audiocassette or other phonorecord;
(E) For literary works, the deposit shall consist of a transcription of representative portions of the work including the first and last 25 pages or equivalent units, and five or more pages indicative of the remainder.
(ix) Copies containing both visually-perceptible and machine-readable material. Where a published literary work is embodied in copies containing both visually-perceptible and machine-readable material, the deposit shall consist of the visually-perceptible material and identifying portions of the machine-readable material.
* * *
(xv) Contributions to collective works. In the case of published contributions to collective works, the deposit of either one complete copy of the best edition of the entire collective work, the complete section containing the contribution if published in a newspaper, the entire page containing the contribution, the contribution cut from the paper in which it appeared, or a photocopy of the contribution itself as it was published in the collective work will suffice in lieu of two complete copies of the entire collective work.
* * *
(d) Special relief. (1) in any case the Register of Copyrights may, after consultation with other appropriate officials of the Library of Congress and upon such conditions as the Register may determine after such consultation: (i) Permit the deposit of one copy or phonorecord, or alternative identifying material, in lieu of the one or two copies or phonorecords otherwise required by paragraph (c)(1) of this section; (ii) permit the deposit of incomplete copies or phonorecords, or copies or phonorecords other than those normally comprising the best edition; or (iii) permit the deposit of an actual copy or copies, in lieu of the identifying material otherwise required by this section; or (iv) permit the deposit of identifying material which does not comply with § 202.21 of these regulations.
(2) Any decision as to whether to grant such special relief, and the conditions under which special relief is to be granted, shall be made by the Register of Copyrights after consultation with other appropriate officials of the Library of Congress, and shall be based upon the acquisition policies of the Library of Congress then in force and the archival and examining requirements of the Copyright Office.
(3) Requests for special relief under this paragraph may be combined with requests for special relief under § 202.19(e) of these regulations. Whether so combined or made solely under this paragraph, such requests shall be made in writing to the Chief, Examining Division of the Copyright Office, shall be signed by or on behalf of the person signing the application for registration, and shall set forth specific reasons why the request should be granted.
(4) The Register of Copyrights may, after consultation with other appropriate officials of the Library of Congress, terminate any ongoing or continuous grant of special relief. Notice of termination shall be given in writing and shall be sent to the individual person or organization to whom the grant of special relief had been given, at the last address shown in the records of the Copyright Office. A notice of termination may be given at any time, but it shall state a specific date of termination that is at least 30 days later than the date the notice is mailed. Termination shall not affect the validity of any deposit or registration earlier made under the grant of special relief.
(e) Use of copies and phonorecords deposited for the Library of Congress. Copies and phonorecords deposited for the Library of Congress under section 407 of title 17 and § 202.19 of these regulations may be used to satisfy the deposit provisions of this section if they are accompanied by an application for registration of claim to copyright in the work represented by the deposit, and either a registration fee or a deposit account number on the application.
§ 202.21 Deposit of identifying material instead of copies.
(a) General. Subject to the specific provisions of paragraphs (f) and (g) of this section, and to §§ 202.19(e)(1)(iv) and 202.20(d)(1)(iv), in any case where the deposit of identifying material is permitted or required under § 202.19 or § 202.20 of these regulations for published or unpublished works, the material shall consist of 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. In the case of pictorial or graphic works, such material should reproduce the actual colors employed in the work. In all other cases, such material may be in black and white or may consist of a reproduction of the actual colors.
(b) Completeness; number of sets. As many pieces of identifying material as are necessary to show the entire copyrightable content in the ordinary case, but in no case less than an adequate representation of such content, of the work for which deposit is being made, or for which registration is being sought shall be submitted. Except in cases falling under the provisions of § 202.19(d)(2)(iii) or § 202.20(c)(2)(iii) with respect to holograms, only one set of such complete identifying material is required.
(e) Copyright notice. In the case of works published with notice of copyright, the notice and its position on the work must be clearly shown on at least one piece of identifying material. Where necessary because of the size or position of the notice, a separate drawing or similar reproduction shall be submitted. Such reproduction shall be no smaller than 3 x 3 inches and no larger than 9 x 12 inches, and shall show the exact appearance and content of the notice, and its specific position on the work.
68 Note that “machine-readable form” is not synonymous with “object form.” See
§ 2.06[3][c] supra for a description of object code. Machine-readable form is any form which is directly perceivable to a machine.
69 Set forth
supra at N. 27.
72 37 C.F.R. § 220.19(b)(1) provides:
“(1)(i) The ‘best edition’ of a work is the edition, published in the United States at any time before the date of deposit, that the Library of Congress determines to be most suitable for its purposes.
“(ii) Criteria for selection of the ‘best edition’ from among two or more published editions of the same version of the same work are set forth in the statement entitled ‘Best Edition of Published Copyrighted Works for the Collections of the Library of Congress’ (hereafter referred to as the ‘Best Edition Statement’) in effect at the time of deposit. Copies of the Best Edition Statement are available upon request made to the Acquisitions and Processing Division of the Copyright Office.
“(iii) Where no specific criteria for the selection of the ‘best edition’ are established in the Best Edition Statement, that edition which, in the judgment of the Library of Congress, represents the highest quality for its purposes shall be considered the ‘best edition.’ In such cases: (A) When the Copyright Office is aware that two or more editions of a work have been published it will consult with other appropriate officials of the Library of Congress to obtain instructions as to the ‘best edition’ and (except in cases for which special relief is granted) will require deposit of that edition; and (B) when a potential depositor is uncertain which of two or more published editions comprises the ‘best edition’, inquiry should be made to the Deposits and Acquisitions Division of the Copyright Office.
“(iv) Where differences between two or more ‘editions’ of a work represent variations in copyrightable content, each edition is considered a separate version, and hence a different work, for the purpose of this section, and criteria of ‘best edition’ based on such differences do not apply.”
73 That letter is as follows:
ATTN:
RE:
Dear
We are delaying registration of the claim to copyright in this work because the deposit consists of a printout of the computer program in object code or other non-source code format.
The Copyright Office generally requires the best representation of the authorship for which copyright is being claimed. Because copyright examiners are not skilled computer programmers, they have extreme difficulty in examining computer programs in other than source code format to determine whether the deposit contains copyrightable authorship. Deposit copies of works registered for copyright are available only for inspection in the Copyright Office by members of the public and may not be “copied.”
The Office believes that the best representation of the authorship in a computer program is a printout of the program in source code format. Where, however, the applicant is unable or unwilling to deposit a printout in source format, we will proceed with registration under our “rule of doubt,” upon receipt of a letter from the applicant assuring us that the work as deposited contains copyrightable authorship.
Please, therefore, forward either a copy of the entire computer program or the first 25 and last 25 pages in source code format to be used along with the object code format as the deposit. On the other hand, if you wish to pursue registration without depositing the source code format, please forward the letter mentioned above.
In your reply, please return the enclosed carbon referring to our CONTROL NUMBER
Enclosures:
Cir. R7c | |
| cc: this letter | Sincerely yours,
Nancy H. Lawrence
Head, Literary Section
Examining Division |
GL R-70
Deposit is computer
program in non-source
code format | By: |
74 This Notice is included in Appendix 4A.
75 This section provides:
Ҥ 704. Retention and disposition of articles deposited in Copyright Office
“(a) Upon their deposit in the Copyright Office under sections 407 and 408, all copies, phonorecords, and identifying material, including those deposited in connection with claims that have been refused registration, are the property of the United States Government.
“(b) In the case of published works, all copies, phonorecords, and identifying material deposited are available to the Library of Congress for its collections, or for exchange or transfer to any other library. In the case of unpublished works, the Library is entitled, under regulations that the Register of Copyrights shall prescribe, to select any deposits for its collections or for transfer to the National Archives of the United States or to a Federal records center, as defined in section 2901 of title 44.
“(c) The Register of Copyrights is authorized, for specific or general categories of works, to make a facsimile reproduction of all or any part of the material deposited under section 408, and to make such reproduction a part of the Copyright Office records of the registration, before transferring such material to the Library of Congress as provided by subsection (b), or before destroying or otherwise disposing of such material as provided by subsection (d).
“(d) Deposits not selected by the Library under subsection (b), or identifying portions or reproductions of them, shall be retained under the control of the Copyright Office, including retention in Government storage facilities, for the longest period considered practicable and desirable by the Register of Copyrights and the Librarian of Congress. After that period it is within the joint discretion of the Register and the Librarian to order their destruction or other disposition; but, in the case of unpublished works, no deposit shall be knowingly or intentionally destroyed or otherwise disposed of during its term of copyright unless a facsimile reproduction of the entire deposit has been made a part of the Copyright Office records as provided by subsection (c).
“(e) The depositor of copies, phonorecords, or identifying material under section 408, or the copyright owner of record, may request retention, under the control of the Copyright Office, of one or more of such articles for the full term of copyright in the work. The Register of Copyrights shall prescribe, by regulation, the conditions under which such requests are to be made and granted, and shall fix the fee to be charged under section 708(a)(11) if the request is granted.”
76 This subsection, with the Copyright Office’s discussion of it, is set forth in Appendix 4A.
77 Those sections provide:
Ҥ 705. Copyright Office records: Preparation, maintenance, public inspection, and searching
“(a) The Register of Copyrights shall provide and keep in the Copyright Office records of all deposits, registrations, recordations, and other actions taken under this title, and shall prepare indexes of all such records.
“(b) Such records and indexes, as well as the articles deposited in connection with completed copyright registrations and retained under the control of the Copyright Office, shall be open to public inspection.
“(c) Upon request and payment of the fee specified by section 708, the Copyright Office shall make a search of its public records, indexes, and deposits, and shall furnish a report of the information they disclose with respect to any particular deposits, registrations, or recorded documents.
Ҥ 706. Copies of Copyright Office records
“(a) Copies may be made of any public records or indexes of the Copyright Office; additional certificates of copyright registration and copies of any public records or indexes may be furnished upon request and payment of the fees specified by section 708.
“(b) Copies or reproductions of deposited articles retained under the control of the Copyright Office shall be authorized or furnished only under the conditions specified by the Copyright Office regulations.”