by Alan H. Blankenheimer , partner at Brown & Bain, P.A., e-mail at blanken@brownbain.com

I. OVERVIEW OF SELECTED COPYRIGHT LAW FUNDAMENTALS

A. Originality; Fixation

1. Copyright protection extends to original works of authorship fixed in a tangible medium of expression from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. 102.

2. To be protectible, the work must be original and bear some indicia of "authorship." The requirements of originality and authorship are satisfied when an author exercises some minimum level of creativity in arranging the elements or facts at hand. Mere compilation without such an element of creativity is insufficient. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

3. Illustratively, a basketball game is not copyrightable, though a recorded broadcast of the game is. National Basketball Assn v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) (reproduction of facts from broadcasts, not expression or description of game constituting the broadcast, held no infringement).

B. Rights

1. Copyright consists of a bundle of exclusive rights, including the rights to reproduce, distribute, display, create derivative works, and perform. 17 U.S.C. 106.

2. One does not infringe a work, but rather the copyright in a work. By definition, therefore, one cannot infringe by reproducing, etc., merely the unprotectible aspects of a copyrighted work.

C. Limiting Doctrines

1. Copyright protection does not extend to any idea, procedure, process, system, method of operation, system, concept, principle or discovery. See,e.g., Lotus Dev. Corp. v. Borland Internatl, Inc., 49 F.3d 807 (1st Cir. 1995) (menu command hierarchy was unprotectible as method of operation), affd by an evenly divided court, 116 S. Ct. 804 (1996).

2. Copyright does not protect expression to the extent the expression "merges" with the idea of a work or, as in "scenes a faire," is necessarily incidental to the idea.

3. In the computer context, copyright may be held not to protect expression dictated by compatibility requirements, considerations of logic or efficiency, or standard industry practice.

II. INFRINGEMENT

A. Elements

1. To prove infringement, a plaintiff must prove both ownership of a valid copyright (a matter as to which a copyright registration is prima facie evidence) and the exercise by another of one of the 106 exclusive rights.

2. To prove infringement, a plaintiff is required to prove both that defendant actually copied the work and that the copying is illegal because there is a substantial similarity between defendants work and the protected elements of plaintiffs work. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994), cert. denied, 513 U.S. 1184 (1995).

3. Actual copying can rarely be proven directly, but it may be inferred from a showing of (a) access thereto by defendant and (b) substantial similarity between the works. "Copying" and "substantial similarity" are really used in two different senses: one to indicate that copying took place, the other to demonstrate it was actionable in that protected material was copied.

4. In assessing substantial similarity, the Ninth Circuit applies an "Inverse Ratio Rule." There is an inverse ratio between the degree of similarity necessary relative to the degree of access. A strong showing of access requires less similarity. Smith v. Jackson, 84 F.3d 1213 (9th Cir. 1996); Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990).

5. The Ninth Circuit analysis entails both an extrinsic and an intrinsic test. The extrinsic test objectively considers whether there are substantial similarities in both ideas and expression between the two works based on external, objective criteria. Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). Analytic dissection (focus on isolated elements of each work to the exclusion of other elements) and expert testimony are appropriate for the extrinsic test. A plaintiff that can satisfy the extrinsic test creates a triable issue of fact in a copyright case involving a literary work. Shaw v. Lindheim, 919 F.2d at 1359. There is continuing controversy whether the latter Ninth Circuit rule is inconsistent with Feist, which held the absence of similarity as to original protected expression fatal to plaintiffs claim, notwithstanding that overall the two works (telephone directories) were substantially similar.

6. The intrinsic test, by contrast, measures similarities of expression on a subjective basis, asking whether an "ordinary reasonable person" would find protected expression had been taken.

7. The intrinsic test measures expression from the standpoint of the ordinary reasonable observer, without expert assistance and without "analytical dissection."

B. Computer Programs

1. It makes little sense to subject computer programs to the audience test to determine similarity. Lay observers typically cannot read code, let alone limit their comparison unaided to protectible elements. Moreover, computer programs have functional aspects that a traditional work of literature does not.

2. These differences, among others, have been the impetus to develop ways to ensure that any judgment of similarity of computer programs is limited to elements that are original and expressive and not dictated by external constraints, and expert testimony (based on a comparison of source code) typically is permitted.

3. A leading test to isolate protectible expression is the abstraction/filtration/comparison test developed by David Nimmer and others, and adopted by the Second Circuit in Computer Assocs. Intl, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). This approach continues to gain support, at least for nonliteral copying. See, e.g., MiTek Holdings, Inc. v. Arce Engg Co., 89 F.3d 1548 (11th Cir. 1996); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d at 1445 ("same process of analytical dissection" albeit "articulated differently" from Altai).

a. This involves analyzing the copyrighted program on several different levels, and excluding at each level material that is unprotectible from the substantial similarity comparison.

b. The development process for computer programs -- formulation of the general idea of the program, its specific properties, the development of flowcharts, then organizing modules or subroutines, the coding-- can provide natural divisions that may correspond to the various levels of abstraction the court seeks to identify and analyze. This forces the court to consider all the ideas that might underlie a computer program, and to judge the point at which they become sufficient to be protectible expression.

c. Program elements dictated by logic, efficiency, or other external considerations (such as hardware standards or software compatibility) also are filtered out.

4. Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th Cir. 1996), extends the "abstraction/filtration/comparison" test of Altai to literal as well as non-literal elements. The court held that an instruction limiting the filtration analysis to non-literal elements was error and likely resulted in the jury not adequately considering the extent to which any of defendants copying was permissible under the fair use or "scenes a faire" doctrines.

5. MiTek Holdings, Inc. v. Arce Engineering Co., 89 F.3d 1548 (11th Cir. 1996), involved the protectability of non-literal elements of a computer program, including the menu and sub-menu command tree structure and other elements of the user interface in a computer program. While the particular method the program followed constituted an uncopyrightable process under 17 U.S.C. 102(b), the user interface may be copyrightable as a compilation. As to the standard for analyzing claims with respect to compilations of non-literal elements, the Eleventh Circuit adopted the Ninth Circuits standard set forth in Apple Computer v. Microsoft Corp. The court ruled that there could be no infringement unless the accused infringer has engaged in "bodily appropriation" of expression of non-literal elements (a "virtual identicality" standard).

III. FAIR USE

A. Basic Principles

1. Section 107 lists factors to be considered in determining whether a particular use is fair. These include the purpose and character of the use, including whether it is commercial or non-profit, the nature of the copyrighted work, the amount and substantiality of the portion used relative to the copyrighted work, and the market effect of the use.

2. The statute, like the doctrine it recognizes, provides no bright-line rules but calls for case-by-case analysis.

3. The focus of the first fair use factor is to determine whether the accused work is transformative, i.e., whether the new work adds something new with another purpose or different character, or merely supersedes the original. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

4. The second factor refers to the nature of the copyrighted work -- e.g., whether it is more creative, in which case it should be accorded more protection from copying, or more informational, when the scope of the fair use defense should be broader.

5. The third factor refers to both quantitative and qualitative substantiality of the use.

6. The fourth factor requires striking a balance between the public benefit from use of the copyrighted work and the adverse effect of copying on the potential value of the original work to its owner. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (regarding 2 Live Crews rap parody of classic Roy Orbison song, "Oh, Pretty Woman," it was error to presume likely market harm because 2 Live Crews use was transformative, albeit commercial, and the parody did not necessarily diminish the market for a non-rap, non-parody version of the original). A leading commentator has argued that a useful and predictive expansion of the fourth factor is to ask whether there is a different functional use of the copyrighted work, which weighs in favor of fair use. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 13.05[B] (1997).

B. Facts and News

1. Los Angeles News Serv. v. KCAL-TV Channel 9, 108 F.3d 1119 (9th Cir. 1997), raised the question whether the broadcast without permission of the copyright owner of a videotape of the Reginald Denny beating made by a news service was a fair use. The district court granted summary judgment for defendant based on fair use, but the Ninth Circuit reversed. As to the purpose or character of the use, the court held that although the videotape of the beating was itself a news item, the television station did not run the tape as a news story or attribute the tape to plaintiff, but rather broadcast it (after a request for a license was rejected) as though it were owned by the television station. While the informational nature of the work weighed in favor of fair use, that the station used the most valuable part of the footage weighed against. Finally, given that plaintiff and defendant were both in the news business, that the stations use of the work was commercial, and that the use was not transformative but could detract from the market value of the original, there was at least a triable issue.

2. Oasis Publishing Co. v. West Publishing Co., 924 F. Supp. 918 (D. Minn. 1996), held that Wests copyrighted arrangement of cases protects page numbering and that unauthorized copying of Wests internal pagination by another legal publisher did not constitute fair use because it was a purely commercial, non-transformative use. The district judge relied on West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986), which enjoined the use of Wests internal citations in its LEXIS star pagination computer research product on the ground that Wests internal pagination is part of its copyrighted arrangement of cases. The holdings in both Mead and Oasisare inconsistent with Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), and to the thin protection afforded factual compilations under the fair use doctrine.

C. Computer Software: Reverse Engineering

1. Reverse engineering of object code by decompilation or disassembly to reconstruct source creates an additional copy and a derivative work of the original. Fixation in RAM or storage on a hard drive suffices to infringe. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (copying in RAM through execution of plaintiffs operating system and diagnostic software by third party service organization created infringing copy), cert. dismissed, 510 U.S. 1033 (1994).

2. Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), held that intermediate copying for purposes of reverse engineering in order to study the functional requirements of plaintiffs code was fair use where defendant had no viable alternative to achieve compatibility between defendants cartridges and plaintiffs console.

D. Entertainment

1. Castle Rock Entertainment v. Carol Publ. Group, Inc., 955 F. Supp. 260 (S.D.N.Y. 1997). The district court held that defendant had infringed plaintiffs copyrights in the television program "Seinfeld" by publishing a book of trivia questions concerning the program. The court rejected defendants fair use argument that the trivia book merely quizzed readers as to the shows underlying "facts and ideas." The court held that "facts"in a "Seinfeld" episode are unlike facts depicted in a historical text or news article because the underlying work is fictional. The trivia book, while it may not reduce interest in the show, potentially harms plaintiffs in derivative markets they might one day enter.

2. Monster Communications, Inc. v. Turner Broadcasting Sys., Inc., 935 F.Supp. 490 (S.D.N.Y. 1996). The district court, in denying plaintiffs motion for preliminary injunction, concluded that there was a fair use when TBSs documentary, "Ali -- The Whole Story," included without authorization 41 seconds to two minutes of plaintiffs film "When We Were Kings," a documentary about the fight between Mohammed Ali and George Foreman in Zaire. The court reasoned that the footage was largely historical and the use of such brief material on cable television is unlikely to harm the theatrical market for the film.

E. Parody

1. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). The Ninth Circuit rejected the fair use defense asserted by the publisher of "The Cat NOT in the Hat! A Parody by Dr. Juice," a rhyming summary of the O.J. Simpson murder trial. The court held that the work infringed plaintiffs copyright in the Dr. Seuss work because it appropriated the Cats image and hat, and that the work was not a parody fair use because the copied work was not an object of the parody. The work was not "transformative" in that it did not alter the original work with new expression, meaning or message, but merely used the Cats image as a vehicle to target the Simpson trial. In short, it was not a parody, though it may have been a "satire," which is not protected by the fair use doctrine.

2. Leibovitz v. Paramount Pictures Corp., 948 F.Supp. 1214 (S.D.N.Y. 1996). Plaintiff photographer had taken a nude photograph of Demi Moore when she was eight months pregnant; the photo appeared on the cover of Vanity Fair. Defendant developed advertising for its film, "Naked Gun: The Final Insult," superimposing Leslie Neilsons face on the body of a naked, pregnant woman. In the photographers suit for copyright infringement, the district court granted summary judgment for defendant based on fair use because the photograph was a parody that was highly transformative of the original. Although a parodist may legitimately aim at destroying the original not only artistically but commercially, to the extent it is a transformative use a parody is unlikely to serve as a market substitute for the original.

IV. COPYRIGHT IN CYBERSPACE

A. Copying and Caching on the Internet

1. Computers generally and the internet in particular function through copying. Turning on a computer creates a copy of data from the BIOS and the hard (or floppy) disk in RAM. Transmission through the internet creates copies of information on webpages and Usenet groups in various servers throughout the internet until such information arrives at the computer whose user requested that information. Although copies of information often disappear when the computer is turned off, computers and servers often make more permanent copies of downloaded information when the computer caches information for quicker access. All of these copies are potentially infringing.

2. Some commentators believed that copying in RAM did not create an infringing copy under the Copyright Act, because of the generally transitory and non-permanent nature of RAM. The Ninth Circuit, however, concluded that copying in RAM creates a potentially infringing fixed copy. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993), cert. dismissed, 510 U.S. 1033 (1994).

3. Browsing in cyberspace creates a protectible copy under MAI. See Religious Tech. Ctr. v. Netcom On-Line Communication Servs., 907 F. Supp. 1361, 1368 (N.D. Cal. 1995).

B. Piracy Online

1. Playboy Enters. Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993). Defendant liable for copying plaintiff's photographs and posting them on a BBS for others to browse or copy.

2. Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996) (granting permanent injunction); 857 F. Supp. 679 (N.D. Cal. 1994) (granting preliminary injunction). Defendant was found liable for willful contributory infringement of copyright for posting plaintiff's video games on the internet for others to copy.

C. Linking, Framing & Copyright

1. A hypertext link on the web is an embedded electronic address that when activated in one location, transports the user to another location, usually another website. Some links, called outlinks, simply take the user out of the first web location to the second web location. Other links, called in-line links, pull content from the second web location into the first.

2. Outlinking may be unauthorized and unwanted by the second web page. It may create an unauthorized reproduction when the material is downloaded to the user. Alternatively, outlinking may be viewed as entirely innocuous, like cross-referencing, except that the work itself, not merely the citation, is provided. It may be fair use or impliedly licensed by the owner of the second website.

3. In The Washington Post Co. v. TotalNews, Inc., Case No. 97 Civ. 1190 (PKL) (S.D.N.Y. Complaint filed Feb. 20, 1997), the Washington Post Co. and others sued TotalNews for copyright infringement and other causes of action. TotalNews' web site used a framing technique to permit its viewers to access a number of different news sites from a single "control panel," much like selecting channels on a television. When the user called up a news site, it was displayed inside the TotalNews Inc. frame, which displayed advertisements sold by TotalNews Inc. Plaintiffs objected that framing caused plaintiff's websites to appear not in the form that plaintiffs intended, but in an altered form designed by defendants for their own economic advantage. The case was recently settled.

4. A considerable controversy has raged whether a simple outlink on one webpage connecting a user to another website might give rise to a copyright claim by the owner of the second website against the owner of the first website. One answer lies in whether such unwanted linking is a violation of the license on the second website.

D. Website Licenses and Copyright Infringement

1. Copying in violation of or outside a license may be infringing. See MAI Sys. Inc. v. Peak Computer, Inc., 991 F.2d at 517. A website license could limit the user's copying to noncommercial purposes or limit access to the website by prohibiting "unauthorized" links. Some websites simply do not want referrals from other particular sites, e.g., a link from a site offering pornography to a website for a religious organization. Cf. Ticketmaster Corp. v. Microsoft Corp., No. CV97-3055 RAP (ANx) (C.D. Cal. First Amended Complaint filed May 9, 1997) (Ticketmaster sued Microsoft over unwanted linking from the SeattleSidewalk website to Ticketmaster's website).

2. Some commentators believe that, because of the nature of computers and their reliance on copying in order to function, much of the copying that takes place on the internet carries an implied license. Website linking is also permissible under the implied license theory because, the argument goes, the Web cannot reach its potential as an information source unless free and efficient linking is permitted. Limited website licenses, however, probably would trump any implied license in court. A concise statement of the implied public access doctrine can be found at www.benedict.com.

V. COPYRIGHT PREEMPTION

A. Section 301

1. No one may claim rights under state or common law equivalent to the exclusive rights in 17 U.S.C. 106. See 17 U.S.C. 301(a). The elements of 301 thus may be divided between the nature of the rights granted under state law (the "general scope" requirement), and the nature of the work in which such rights may be claimed (the "subject matter" requirement). See1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright1.01[B] at 1-11 (1997).

2. To determine whether a state-law right lies within the general scope of copyright, Nimmer advocates the "extra-element" test: if an extra element is required instead of or in addition to the acts of reproduction, performance, distribution or display under 106, the state-law right will not lie within the general scope of copyright and there will be no preemption. 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 1.01[B] at 1-15 to 1-16.

3. As commercial disputes arise on the internet, lawyers may often turn to non-copyright theories to justify certain practices or seek recovery for perceived harms. Preemption can sometimes be an effective affirmative defense for warding off causes of action that might overlap with copyright, where Congress arguably intended to occupy the field yet deliberately did not always provide a cause of action, thus permitting some works to remain in the public domain.

4. National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997). The Second Circuit recently limited application of the common law doctrine of misappropriation -- distinguishing International News Serv. v. Associated Press, 248 U.S. 215 (1918) to its facts -- based on a federal preemption analysis. Applying the extra-element test, the court found that common law misappropriation survives preemption where it is based upon (1) the time-sensitive value of factual information; (2) defendant's "free-riding"; and (3) the threat to the very existence of the product or service provided by the plaintiff. 105 F.3d at 853. Under the newly-narrowed common-law doctrine of misappropriation, the court held that Motorola did not engage in misappropriation by providing a service in which it sent NBA game updates to subscribers through a pager service.

5. Pro CD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996). The Seventh Circuit affirmed the validity of consumer-oriented software shrink-wrap licenses. The court held that an agreement for the sale of intellectual property is not preempted because such an agreement is not a right equivalent to any of the exclusive rights in 106. xxransactions.