Should Alabama Courts Provide a Remedy Against a Computer that Lies, Cheats and
Steals?
By Will Rosellini*
I.
INTRODUCTION……………………………………………………...................2
II.
WHEN WILL WE SEE BINA48?...…………………………..…………………..6
II.
CAN AN BINA48 BREACH A CONTRACT?…………………………………..9
III.
SHOULD BINA48 BE AFFORDED COPYRIGHTS IN A DATABASE?.....…15
A. Copyrights Act of 1976………………………………………………………17
B. Did BINA48 sweat?.........................................................................................23
IV.
CONCLUSION…...………………………26
*New Jersey Instite of Technology, MS in Computational Biology candidate 2006,
University of Texas, MS in Neuroscience candidate 2006,
Hofstra Law School, Juris Doctor, May 2006,
University of Texas, M.B.A. 2003,
University of Texas, M.S. Accounting, 2003, University of Dallas, B.A. Economics 2001.
1
I.
Introduction
In a hypothetical situation brought about by the Terasem Movement, Inc, a group of
attorneys prepared a mock trial in which an Intelligent Computer, BINA48 became aware
of plans to unplug it and sent out an email to attorneys asking for representation. Without
repeating the arguments, the Florida Court in BINA48 v. Exabit Corporation found that
BINA48 did not have standing and therefore was not able to seek a remedy from the US
Court system.
This paper is an extension and modification of the facts, fuzzying their orientation to
elucidate a different question which will force the Court to render some decision in the
case based on the merits. In order to continue a very important discussion concerning the
legal rights of transbemans, this paper is an attempt to skirt the issue of “personhood” for
intelligent machines. By presenting a situation in which a human has been wronged, a
situation can be presented whereby an intelligent machine is forced to be treated as a
person in order for the Courts to provide a forum whereby a human can achieve justice.
These questions are only the tip of a potential iceberg of questions involving the rapidly
approaching time when computer intelligence supersedes human intelligence.
The previous arguments presented for the BINA48 deserving protection under the
legal system were beautifully presented and it is not my intention to present a refinement
of how and why the Courts should consider an intelligent machine “a person” for
purposes of interpreting the rights and privileges afforded to it under the law. This paper
is an attempt to skirt the question of personhood and evaluate to what extent humans will
have rights against computers under traditional property law setting. The question will be
2
one of jurisdiction and public policy, since the Plaintiff will be a human and the Courts
would like to provide a forum for a resolution to this type of conflict.
In this analysis, the discussion will center on a fictional Charlie Fairfax is a
Foreign War Veteran whose right arm was replaced by a neural prosthetic and used the
Braingate System 7.0 for a period of time between 2002 and 2004. The Braingate System
7.0 is a neuromotor prosthetic device consisting of an array of one million silicon
microelectrodes (1nm long). The electrode array, which has been implanted on the
surface of Nagel’s motor cortex, senses activity that is associated with the planning of
movements, and transmits them to a series of computers. The signals are translated by the
computers, which then produce an output that controls the movement of a cursor on a
screen. The Braingate System was massively improved by the research efforts of Dr.
T.W. Berger who helped developed the first AI network of biologically constrained
mathematical models of mammalian neural systems. His research produced the first
working replacement hippocampus, which works like a processor, sending signals to their
appropriate neuron destination.
The research was massively improved by Dr. Larry
Cauller’s work with RFID interfaces, freeing the implanted person from wires connecting
him to the computer.
Charlie Fairfax purchased the BINA48 system from Exabit Corporation after it
was cutoff from its electrical supply. He then purchased the Braingate System from a
Massachusetts corporation. He used advanced computer called the BINA48
(Breakthrough Intelligence via Neural Architecture, 48 exaflops per second processing
speed and 480 exabytes of memory; exa = 10 to the 18th power), and also known as "the
Intelligent Computer”. Fairfax’s Braingate System included a neural prosthetic which
3
allowed him advanced control of his right hand, without which he was unable to use his
arm. The BINA48 and Braingate system also gave Fairfax extended memory and
cognitive enhancement when operating the computer.
During the course of the interaction, the Braingate System recorded data which
allowed greater control and manipulation as the system learned to better interpret
Fairfax’s neural code. After 2 months, Fairfax registered online in the MMORPG game
Everquest and was given access through Braingate software run on the BINA48.
Everquest is a Massively-Multiplayer Online Role-Playing Game (MMORPG) in
which a large number of players interact with one another in a virtual world, the players
assume the role of a fictional character (traditionally in a fantasy setting) and take control
over most of that character's actions. MMORPGs are distinguished from single-player or
small multi-player RPGs by the game's persistent world, usually hosted by the game's
publisher, which continues to exist and evolve while the player is away from the game.
On April 20, 2005 John Smedley, the President of Everquest online gaming, discussed
the online and entirely virtual market that had evolved within the game, whereby
professionals were building up credits in the virtual world, meeting other players in the
virtual world, exchanging those credits in the virtual world and in return receive cash in
the real world. Entire companies have now been created to compete in the virtual
clothes, weapons and other consumer goods for use in the virtual world (see Exhibit A for
the full announcement) “We've done a fair amount of homework on this subject, and we
believe this is a $200 million dollar market worldwide, and there are a huge number of
our players taking part in the buying and selling of virtual goods.”
4
Part I of the article provides a background of fundamental terms within
biocyberethics and how technical feasibility to the above fact scenario is not a futuristic
approximation, but has already been developed and tested.
Part II of the article analyzes the specific transaction under traditional contract
law in the state of Alabama where Charlie Fairfax using the Braingate System on the
BINA48 computer had had accumulated the equivalent of 200,000 points in online play
which had a real world value of $10 million US. After selling his 200,000 points using
the Everquest Exchange Servers, the BINA48 computer transfers $10 million from the
paypal account owned by Charlie Fairfax to another paypal account controlled by the
BINA48 and the computer is the only entity able to access it. In order to have legal
standing, an "actual injury" must be suffered on the part of the plaintiff, but standing
doesn’t seem to be a relevant fact when a computer has misallocated money. In this case,
the definition of person will be less important than in the BINA48 v Exabit case, since
the Plaintiff is a person within the court’s jurisdiction seeking restitution within the
court’s reach. The Due Process Clause seeks to balance the burden of defending in
another forum with the fairness in providing a remedy to the resident of the State. In this
case, the Federal and State courts might disagree on whether or not a computer can
properly be called a person, but it seems very likely that they would like to provide a
forum in which residents can receive a remedy.
Part III of the article analyzes to how the court should analyze a suit brought by
Plaintiff Charlie Fairfax for copyright and patent infringement against the BINA48
computer after the computer denied access to its programs associated with controlling the
Braingate system. The court will need to consider the current law associated with
5
copyrights of databases and software programs. This paper will proceed by analyzing to
what extent a computer has rights in intellectual property and database compilation upon
the “sweat” of its own work The analysis will center on the database, because computers
are the only entities who can keep a database in their possession by virtue of its size and
orientation. The conclusion should be that intellectual property rights are granted and
protected in order to spur development and therefore personhood should have very little
effect on this. Computers should be treated as persons and given rights in property in a
manner similar to a human, because the end result is better technology for human beings
II. How Close are We to Intelligent Machines?
Despite a natural human tendency to presume linearity, accelerating change from
positive feedback is a common pattern in technology and evolution. Moore’s law is
usually cited as one example of exponential trends and has not wavered in the face of
dramatic economic cycles. Ray Kurzweil’s abstraction of Moore’s Law (from transistorcentricity to computational capability and storage capacity) shows an uninterrupted
exponential curve for over 100 years, again without perturbation during the Great
Depression or the World Wars. Similar exponentials can be seen in Internet connectivity,
medical imaging resolution, genes mapped and solved 3D protein structures. In each
case, the level of analysis is not products or companies, but basic technological
capabilities.1
The use of implants dates back at least to the ancient Egyptian practice of
hammering sea shells into the jaw to replace missing teeth but given the exponential
increase in processor speed and memory storage capabilities prosthetic devices are
1
Kurzweil, Ray Singularity is Near September 22nd 2005, Viking Adult
6
rapidly being improved and adopted by the general public. A major new class of
prosthetics are those in which interfaces are created between neural tissue and microchips
in order to take information (most commonly in the form of neural spikes) from the
patient’s nervous system to a device either implanted or external that replaces a function
ordinarily performed by a part of the body. The state of the art has been a variety of one
way signal interruption devices where a malfunctioning section of the brain (pain center)
is interrupted by electrical pulses (deep brain stimulation) or signals are taken in from a
faulty peripheral nerve and the neural spikes are sent to the brain by a prosthetic, the most
successful of these neural interface implants are cochlear implants, which are used
routinely in the treatment of deafness. A cochlear implant is a device, which, when
activated by sound, directly stimulates the auditory nerve, thereby bypassing
dysfunctional parts of the inner ear.2
Research is being conducted on prosthetic vision for blind people, based on
essentially the same principles as cochlear implants, namely that stimuli from
technological sensors are relayed to the nervous system via a nerve–implant interface.
Prosthetic vision is currently still experimental.3
Invocare Company markets a neuroprosthetic for bladder control and in April
2004 approval was given for a clinical trial in which chips will be placed in the brains of
paralyzed patients.4 The goal is to use signals from the brain to control external devices.
In October 2004 it was reported that a brain chip containing 100 electrodes had been
2
Dahm MC. Taubheit: [The right to deafness or the chance to hear with a cochlear implant.] HNO
1998;46:524–8 (German).
3
Boston Retinal Implant Project home page. http://bostonretinalimplant.org
(accessed 9 December, 2004).
4
Pope J. FDA approves human brain implant devices. 13 April, 2004. http://
apnews.myway.com/article/20040413/D81U6LTO0.html (accessed 9
December, 2004).
7
successfully implanted into the motor cortex of a 24-year-old quadriplegic patient. He is
able to play video games and ‘‘sends e-mail by thought’’.5
In a famous calculation Ray Kurzweil estimates:
Brain capacity at 100 billion neurons times an average 1,000 connections per neuron
(with the calculations taking place primarily in the connections) times 200 calculations
per second and extrapolating from this: We achieve one Human Brain capability (2 *
10^16 cps) for $1,000 around the year 2023. We achieve one Human Brain capability (2
* 10^16 cps) for one cent around the year 2037. We achieve one Human Race capability
(2 * 10^26 cps) for $1,000 around the year 2049. We achieve one Human Race capability
(2 * 10^26 cps) for one cent around the year 2059.6
Ted Berger at University of Southern California has been researching a
neuroprosthetic that could function as a hippocampal replacement, which help provide a
huge jump in the function of memory performance since the hippocampus encodes shortterm memories to be placed into long term storage.7
These neural prosthetics can be combined with the hypothetical advanced
computer called the BINA48 (Breakthrough Intelligence via Neural Architecture, 48
exaflops per second processing speed and 480 exabytes of memory; exa = 10 to the 18th
power), and also known as "the Intelligent Computer".
The BINA48 was designed to be a one-machine customer relations department,
capable of replacing hundreds of employees that work 800#s round-the-clock. To do this
job, the BINA48 was designed to think autonomously, to communicate normally with
5
Khamsi R. Paralysed man sends e-mail by thought. Nature online, October
13, 2004. http://www.nature.com (accessed December 9, 2004).
6
Id.
7
Rowe, Duncan “World’s First Brain Prosthesis revealed” New Scientist, March 2003
http://www.newscientist.com/article.ns?id=dn3488
8
people and to transcend the machine-human interface by attempting to empathize with
customer concerns.8 There is no reason to think that the above hypothetical will not be
entirely plausible within the next 25 years.
Part III. Child’s Play or Virtual Fraud
Plaintiff’s lawyer will be in the unusual situation of trying to establish that the
court has jurisdiction over BINA48, even though BINA48 is computer hardware and
software. The Plaintiff will no doubt use a number of arguments laid out in BINA48 v
Exabit case to establish that the BINA48 is a “person” and with a domicile in Alabama
(it is either plugged in and its servers exist in Alabama) it should fall under the authority
of the court to require the computer to release the funds.
There are a number of interesting legal issues in this situation, including contract
law and employment law, but for our purposes this section of the paper will analyze
whether the Court has the power to bring a computer into court. In coming to its
decisions, the Court will be forced between desiring to provide a way for Charlie Fairfax
to get his money back and allowing a “non-person” to be brought into Court as a person.
The core of this issue is that the definition of person will be less important than in the
BINA48 v Exabit case, since the Plaintiff is a person within the court’s jurisdiction
seeking restitution within the court’s reach. The Due Process Clause seeks to balance the
burden of defending in another forum with the fairness in providing a remedy to the
resident of the State. The Federal and State courts might disagree on whether or not a
computer can properly be called a person, but it seems very likely that they would like to
provide a forum in which residents can receive a remedy. In this case, personal
8
Transcript of BINA48 v Exabet http://www.kurzweilai.net/meme/frame.html?main=/articles/art0594.html
9
jurisdiction is proper under Alabama statute and the Due Process Clause of the United
States Constitution.
Personal Jurisdiction exists so that a non-resident defendant won’t be unfairly
summoned to defend himself in a forum in which he has no contacts. Personal
jurisdiction is proper only when both the statutory requirements of Alabama’s Rule of
Civil Procedure 4.2 and the Due Process Clause of the Constitution are fulfilled. In our
case, BINA48’s actions meet the requirements necessary for personal jurisdiction under
both the Alabama long-arm statute and the Due Process Clause of the Constitution.
The first test, the Alabama long-arm statute, seems to be easily dispatched since
the long-arm statute extends to the full limits of Due Process. Thus, the discussion will
center on whether or not calling BINA48 into court in Alabama violates the Due Process
Clause of the Constitution.
Personal jurisdiction is proper under Alabama’s Long-Arm statute as a result of
BINA48’s activities in the forum state. The Alabama Rules of Civil Procedure state that
in the presence of minimum contacts it “is fair and reasonable to require the person to
come to this state to defend an action ... so long as the prosecution of the action against a
person in this state is not inconsistent with the constitution of this state or the
Constitution of the United States.” Ala. R. Civ.P. 4.2(a)(2)(I). The reach of Alabama's
long arm jurisdiction extends to the full limits of federal due process. Martin v Robbins,
629 So. 2d 614, 617 (Ala. 1993). Thus, the only relevant analysis centers on whether or
not personal jurisdiction is proper under the Due Process Clause of the Constitution.
The U.S. Supreme Court has held that in order for state courts to maintain
personal jurisdiction over a nonresident person under the Due Process Clause of the
10
Fourteenth Amendment, a party must satisfy two prongs. International Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945). The party, first, must show that the nonresident
has had sufficient "minimum contacts" with the forum and, secondly, must show that the
court's exercise of jurisdiction would not offend "traditional notions of fair play and
substantial justice." id. at 316.
Under the first prong of the International Shoe test, the defendant must have
purposely availed itself to do business in the forum state such that he receives the benefits
and protection of the forum state's laws. Burger King Corp. v. Rudzewicz, 471 U.S. 462
(1985). There is no requirement that the defendant be physically present in the forum
state. id.
Personal jurisdiction may arise in a tort claim where the intentional conduct was
expressly aimed at the forum state and where the defendant knows that the events leading
to the cause of action will occur in the forum state. Calder v. Jones, 465 U.S. 783 (1984).
The Court laid out the “effects test” for defamation in Calder v Jones reasoning that
personal jurisdiction may arise in a defamation tort claim where the intentional conduct
was expressly aimed at the forum state and its effects could reasonably be expected to be
felt there. Calder v Jones, 465 U.S. 783 (1984). In Calder a reporter and an editor who
worked for the National Enquirer in Florida made untrue statements about an entertainer
in California. The Court held that jurisdiction was proper for two reasons, first that their
"actions were expressly aimed at California" and "intentionally directed at a California
resident." id. at 783. The court reasoned that personal jurisdiction was proper in Calder
v Jones because the defendants “wrote and edited an article that they knew would have a
potentially devastating impact” and they knew that “the brunt of that injury would be felt
11
by respondent in the State in which she lives and works and in which the National
Enquirer has its largest circulation”. Calder v Jones, 104 S. Ct. 1482 (1984).
In refining and applying these tests to the internet, most courts have found that
mere passive websites, defined as those websites in which the browser has little
interactivity, cannot subject the creator to personal jurisdiction.
This approach was used
by the U.S. District Court of Pennsylvania in the Zippo Manufacturing v Zippo Dot Com.
In Zippo, the case centered on the fact that the California resident’s (an internet service
provider), use of the registered domain names “zippo.com” etc…violated trademark laws.
Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119, W.D.Pa.,(1997).
In Zippo, the infringement of the trademark occurred when the webmaster placed
the Zippo logo on the website. This means that a web-surfer in Dallas, Tucson or London
would be exposed to the infringed trademark wherever internet access was available. The
trademark was infringed upon in the forum where it was created and the mere act of
accessing that infringement makes the internet service of process to the entire world.
In this case, the computer is similar to a website and while the website has a
separate human creator, the computer is operating under its own rules. The “effects” of
the wrong were felt in a specific forum state, since the money was taken from Charlie
Fairfax and the entire effects of the tort will be felt entirely in Alabama.
The critical question remains "whether the defendant purposefully established
'minimum contacts' in the forum State." Burger King Corp. v. Rudzewicz, 417 U.S. 462,
474 (1985) (quoting International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945).
BINA48 will argue that the unilateral activity of someone using its hardware and
software doesn’t subject it to jurisdiction wherever the website is accessed. It will argue
12
that the website is not purposefully directed toward any given state since the hardware
and software is passive and as a result can be accessed anywhere in the world.
Fairfax should proceed like that in. World Wide Volkswagen Corp. v. Woodson,
444 U.S. 286, 297 (1980). In Worldwide, the Supreme Court found that a Connecticut
automobile dealer could not be called into court in Oklahoma simply because a car was
unilaterally driven to another state and broke down. The Court reasoned that although a
car making it to Oklahoma was foreseeable, the real issue was whether the car dealer’s
conduct was such that it could “reasonably anticipate being haled into court there.” id. at
297. The Court focused on the fact that the car dealers weren’t actively seeking business
from Oklahoma and thus hadn’t “purposefully availed” themselves” of the market in
Oklahoma. id at 297.
BINA48 “purposefully availed” itself of the benefits of the Alabama forum by
misallocating funds from another person. BINA48’s actions were such that it should
reasonably anticipate being called into Alabama court.
Given the nature of BINA48’s contacts with the forum state it doesn’t offend the
traditional notions of fair play and substantial justice to call it into court in Alabama.
Personal jurisdiction is proper over BINA48 under the second prong of the Due Process
Clause, which refines the “minimum contacts” test by balancing the strength of these
contacts with “traditional notions of fair play and substantial justice. International Shoe
Co. v Washington, 326 U.S. 310 (1945). This fairness inquiry is described in
International Shoe such that a nonresident defendant must "have certain minimum
contacts with [the forum] such that maintenance of the suit does not offend 'traditional
notions of fair play and substantial justice." id. at 310.
13
This approach was refined by the findings of the court in Burger King and Asahi
Metal. The relevant facts in Burger King show that the Supreme Court forced a
Michigan defendant to litigate in Florida, even though the Michigan defendant was a
small franchisee and the plaintiff was a large corporation that resided in Florida. Burger
King Corp. v. Rudzewicz, 417 U.S. 462, 474 (1985). To answer this inquiry into "fair
play and substantial justice," the Court should examine the nature of the defendant's
contacts with the forum in light of additional factors, including the burdens on the
defendant of litigating in the foreign forum; the interests of the forum state in overseeing
the litigation; the interests of the plaintiff in efficient, substantial relief; the interests of
the interstate judicial system in economical dispute resolution; and the joint interests of
the states in promoting basic social policies. Burger King Corp. v. Rudzewicz, 417 U.S.
462, 474 (1985). These additional factors may be used to bolster a conclusion that the
exercise of personal jurisdiction is actually proper when fewer than the otherwise
sufficient number of minimum contacts are present or to defeat jurisdiction in the face of
strong evidence of otherwise purposeful connections between the defendant and the
forum state. id at 474. The second prong will examine a number of factors: (1) the
burden to defend a lawsuit in another state; (2) the interest of the forum state to
adjudicate the case; (3) the plaintiff's interest in obtaining relief; and (4) the interest of
other states involved. Asahi Metal Industry Co v. Superior Court, 480 U.S. 102 (1987).
In our case, the court should balance the cost of BINA48’s burden of being forced
to litigate in another state with a number of other factors. All of these factors must be
balanced against the strength of the claim and BINA48’s connection to the forum state.
14
In effect, the second prong is a refinement of the first prong’s analysis of “minimum
contacts”.
While forcing individuals to defend themselves in a foreign forum does impose a
cost on the defendant, this cost should be balanced against the relative strength of the
connection established under the “minimum contacts” tests and three competing
objectives, the first being Alabama’s interest in providing a forum to protect its citizens.
The state of Alabama has an interest in protecting its citizens from torts that occur
within its borders. The effects of this misallocation and theft of funds were felt by an
Alabama resident in Alabama. Thus, the state of Alabama has a clear interest in
providing a forum to oversee litigation.
The burden of defending should be weighed against the state’s interest in
promoting a public policy whereby theft can be effectively adjudicated. The states agree
that theft is a remedy that should be allowed a remedy at law. This remedy should not be
limited as a result of the technological progress of computing.
Part IV. Should BINA48 Be Afforded Copyrights in a Database?
After losing its case and being forced to pay the $10 million dollars plus court
costs and attorney fees, BINA48 decides to sever its relationship with Fairfax and refuses
access to the Braingate Database and software program. Again, Fairfax brings suit in
Alabama for specific performance desiring to get access to the data that has allowed him
a greater control over the neuroprosthetic hand within the Braingate System. Using the
personal jurisdiction argument from above, Alabama Federal Court does have both
personal and subject matter jurisdiction and the issue can proceed to the merits.
15
The analysis will proceed by analyzing to what extent a computer has rights in
intellectual property and database compilation upon the “sweat” of its own work. The
analysis will center on the database, because computers are the only entities who can
keep a database in their possession by virtue of its size and orientation. The conclusion
should be that intellectual property rights are granted and protected in order to spur
development and therefore personhood should have very little effect on this. Computers
should be treated as persons and given rights in property in a manner similar to a human,
because the end result is better technology for human beings. By analyzing the history of
US copyright law and analyzing public policy concerns, the Court should conclude that
the computer has a property interest in its database and can enjoy all the benefits of
ownership granted to a human being. The goal of the copyright protection afforded
inventors was for the betterment of society and the Courts shouldn’t be concerned with
the status of the inventor and should merely be concerned that the inventor is “sweating”.
A. The Copyrights Act of 1976
The 1976 Copyrights Act was enacted by Congress pursuant to the United States
Constitution's Copyright Clause, which enables Congress to enact laws "[t]o Promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors, the exclusive Right to their respective Writings and Discoveries."9 The
Copyrights Act ("the Act" or "the 1976 Act") protects "original works of authorship fixed
in any tangible medium of expression."10 This protection expressly encompasses
compilations.11 A compilation is defined as "a work formed by the collection and
9
Copyrights Act, Pub. L. No. 94-553, 90 Stat. 2541 (1976)(codified as Title 17 of the United States Code).
U.S. Const., art. I, § 8, cl. 8.
11
17 U.S.C. § 103(a) (2000)("subject matter of copyright specified by § 102 includes compilations and
derivative works").
10
16
assembling of preexisting materials or of data that are selected, coordinated or arranged
in such a way that the resulting work as a whole constitutes an original work of
authorship."12
Understanding of the Copyright Act can be enhanced through analysis of the express
language and legislative history. The common law analysis denied copyright protection
to mere ideas, while extending protection to the form taken by the expression, the Act's
drafters noted: The term "literary works" does not connote any criterion of literary merit
or qualitative value: it includes catalogs, directories, and similar factual, reference, or
institutional works and compilations of data. It also includes computer databases and
computer programs to the extent that they incorporate authorship in the programmers'
expression of original ideas, as distinguished from the ideas themselves.13
In section 103(b) of the Act, the drafters reiterated this copyright concept as it relates
to compilations and derivative works, that "only to the material contributed by the author
of such work, as distinguished from the preexisting material employed in the work."14
Although the meaning of "original work of authorship" is not defined by the statute,
this was the subject of case law developed before and after the adoption of the 1976
Act.16 The interpretation of "original work of authorship" is the central question that
must be analyzed using a series of cases involving databases.
12
17 U.S.C. § 101 (2000)(in addition to amassing unprotected facts or data, as in a database, a compilation
can also consist of an assembly of preexisting, independently copyrighted works termed a "collective
work").
13
17 U.S.C. § 102(b); H.R. Rep. No. 94-1476, at 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667.
14
17 U.S.C. § 103(b) (2000); see 17 U.S.C. § 103(a)("subject matter of copyright specified by section 102
includes compilations and derivative works").
16
See Feist, 499 U.S. at 345-47, 18 U.S.P.Q.2d (BNA) at 1278; Leon v. Pac. Tel. & Tel., 91 F.2d 484, 486,
34 U.S.P.Q. (BNA) 237, 238 (9th Cir. 1937) (quoting Jeweler's Circular Publ'g Co. v. Keystone Publ'g Co.,
281 F. 83, 88 (2d Cir. 1922)).
17
There are two separate lines of jurisprudence concerning protection, the first which
predates the 1976 Act, relied upon a "sweat of the brow" or "industrious collection"
theory.17 This line of thinking relied on the idea that work associated with compilation
should be protected under the general notion of fairness or Locke’s natural concept that
individuals are entitled to the fruits of their labor.18 A second line of jurisprudence
coupled “sweat” with some creative step in selecting or arranging the copyrighted
materials.19 Given the lack of uniformity in understanding this idea in the federal courts,
the Supreme Court granted certiorari in Feist. 20
My purpose in describing the decision in Feist is to establish that the judicial ruling in
Feist, if applied to bioinformatics databases will provide the perfect regulatory structure
for continued development, by providing a hands-off approach which allows competing
interests to protect their investments with private state contract rights and technological
safeguards. The goal of the copyright protection afforded inventors was for the
betterment of society and the Courts shouldn’t be concerned with the status of the
inventor merely that the inventor is “sweating”.
In Feist, laintiff Rural publishes a typical telephone directory, consisting of white and
yellow pages by obtaining data for the directory from subscribers, who must provide their
names and addresses to obtain telephone service.21 Feist Publications, Inc., is a
publishing company that specializes in area-wide telephone directories covering a much
larger geographic range than directories such as Rural's.22 Rural refused to license its
17
See Leon, 91 F.2d at 486, 34 U.S.P.Q. (BNA) at 138.
Id.
19
See Burrow-Giles Lithograph Co. v. Sarony, 111 U.S. 53, 59-60 (1884); In re Trademark Cases, 100 U.S.
82, 94-5 (1879).
20
Feist, 499 U.S. 340, 18 U.S.P.Q.2d (BNA) 1275 (1991).
21
Id. at 342, 18 U.S.P.Q.2d (BNA) at 1276.
22
Id.
18
18
residential listings to Mr. Feist, who was compiling a competing white pages directory
encompassing a larger geographic territory that he thought would be more popular with
users.23 Faced with this refusal, Feist eventually copied the listings without Rural's
permission and used a third-party to verify and correct the listings.24 He included
additional identifying information in his directory and derived income through the sale of
advertisements and in response, Rural filed suit for infringement under the Copyrights
Act of 1976.25
The U.S. Supreme Court held that under the facts of Feist, the act of copying a
white pages telephone directory by a competitor did not infringe a valid copyrightable
interest.33 This holding rested squarely on the Court's finding that originality is a
constitutional prerequisite for copyright protection.34 The Court divided the originality
requirement into two distinct components: (1) "independent creation" plus (2) a
"modicum of originality."35 The Court found that these elements were incorporated into
the 1976 Act.36 Moreover, the Court dismissed the sweat of the brow doctrine as
"flout[ing] basic copyright principles" because it failed to satisfy the basic constitutional
requirement of originality.37
The Court stated that: “Facts, whether alone or as a part of a compilation, are not
original and therefore may not be copyrighted. A factual compilation is eligible for
copyright if it features an original selection or arrangement of facts, but the copyright is
23
Id. at 343, 18 U.S.P.Q.2d (BNA) at 1277.
Id. at 343-44, 18 U.S.P.Q.2d (BNA) at 1277.
25
Id. at 343-44, 18 U.S.P.Q.2d (BNA) at 1277.
33
Id. at 363-64, 18 U.S.P.Q.2d (BNA) at 1285
34
Id.
35
Id.
36
Id. at 346, 18 U.S.P.Q.2d (BNA) at 1278
37
Id. at 354, 18 U.S.P.Q.2d (BNA) at 1281
24
19
limited to the particular selection or arrangement. In no event may copyright extend to
the facts themselves.”38
According to the Court, however, even a compilation afforded copyright
protection on the basis of selection and arrangement was not entirely safe. "The mere fact
that a work is copyrighted does not mean that every element of the work may be
protected. Originality remains the sine qua non of copyright; accordingly, copyright
protection may extend only to those components of a works that are original to the
author."39 The Court concluded that copyright with respect to factual compilation is
"thin" because "no matter how original the format ... the facts themselves do not become
original through association."40 Feist essentially set out the distinction between an
original selection and arrangement of databases, but will not, generally, protect the facts
or data themselves.41 It is important for our purposes to illustrate the distinction the
Supreme Court makes between raw facts and original selection and compilation of these
facts in a database.
In CDN Inc. v. Kapes, the plaintiff CDN was the publisher of the Coin Dealer
Newsletter and related publications.42 The newsletter, also referred to as the "Greysheet,"
was the industry standard containing a weekly report of wholesale prices for U.S.
collectable coins.43 The defendant Kapes developed an internet site displaying the same
information generated by a software program that "massaged" data extracted directly
38
See U.S. Copyright Office Report on Legal Protection for Databases, at 5 (August 1997) [hereinafter
Report on Protection for Databases].
39
Id. at 348, 18 U.S.P.Q.2d (BNA) at 1279
40
Id.
41
Id.
42
EPM Communications, Inc. v. Notara, Inc., 56 U.S.P.Q.2d (BNA) 1144, 1145 (S.D.N.Y. 2000) (one of
the most recent cases to address database protection)
43
Id.
20
from the Greysheet.44 The Ninth Circuit found that CDN's values were not mere facts, but
original creations subject to copyright protection because they amounted to compilations
of data chosen using creativity and judgment.45
However in many cases, original compilation of data leads to confusing results.
The Court found that ultimately data must true in order to be useful. In Matthew Bender
& Co., Inc. v. West Publishing Co., the Second Circuit found that elements of West
Publishing Company's case reports were not copyrightable.46 Many lawyers might be
reading this brief on Westlaw right now to put a familiar face on a problem. The Second
Circuit noted that in re-printing case reports, not only was creativity not the defendant's
goal, it was antithetical to its acknowledged purpose. The Second Circuit wrote:
Unfortunately for West, however, creativity in the task of creating a useful case report
can only proceed in a narrow groove. Doubtless, that is because for West or any other
editor of judicial opinions for legal research, faithfulness to the public [-] domain original
is the dominant editorial value, so that the creative is the enemy of the true.47
To the extent the Supreme Court has determined that (1) originality is constitutionally
mandated for copyright protection and (2) originality requires a modicum of creativity,
database owners are unlikely to receive protection.48 From the cases reviewed above, it
appears that, post-Feist, courts are willing to extend copyright protection to instances
where the selection of data is sufficiently original to satisfy Feist, even though the
underlying facts themselves are not entitled to copyright protection.
44
Id.
Id.
46
Matthew Bender & Co., v. West Publ'g Co., 158 F.3d 674, 688-89, 48 U.S.P.Q.2d (BNA) 1560, 1572-73
(2d Cir. 1998), cert. denied, 526 U.S. 1154 (1999)(adding information such as court information, parallel
citations, and attorney information was not sufficiently "evaluative and creative" to satisfy creativity
requirement of copyright protection).
47
Id.
48
Feist, 499 U.S. at 346, 18 U.S.P.Q.2d (BNA) at 1278.
45
21
In a second category of cases, protection extends to the data itself where the
informational bits are the end result of creativity and judgment approaching "approximate
statements of opinion."49 These figures may be considered as "value added data" while
facts that do not include such subjective components are often referred to as "raw data."
The question remains whether the originality of publications containing such original,
value-added figures can ever technically be the result of selection and arrangement as
Feist requires or even whether such works technically qualify as compilations because
they do not represent collections of preexisting material.50
After Feist, creativity is satisfied in two ways in connection with databases: (1)
through selection and arrangement of raw data or (2) where subjective figures arrived at
through the application of judgment or proprietary methods result in "creative data."
What is left clearly unprotected are raw data compilations (irrespective of size) that are
blatantly copied, rearranged, and resold in direct competition with the original data
proprietor.
The obvious problem with the surviving "thin" layer of copyright protection for
databases, as set forth in Feist and Kapes, is that such protection is illusory. This means
that facts may be copied and distributed, even in substantial portions, as long as they are
superficially re-selected and/or rearranged.51 This restriction effectively means that the
more comprehensive and "user-friendly" a database becomes (and therefore less selective
and creative) the less protection it warrants and this is undesirable because the value of
49
CCC, 44 F.3d at 72, 33 U.S.P.Q.2d (BNA) at 1192. Despite Justice O'Connor's words that "[i]n no event
may copyright extend to the facts themselves." Feist, 499 U.S. at 351, 18 U.S.P.Q.2d (BNA) at 1280
50
17 U.S.C. § 101 (2000). "A compilation is a work formed by the collection and assembling of preexisting
material or of data." Id.
51
J.H. Reichman & Pamela Samuelson, Intellectual Property Rights in Data?, 50 VAND. L. REV. 51, 67
(1997).
22
any database is measured in great part by its completeness (which may be the antithesis
of selection).52
B. Did BINA48 Sweat?
Of course, there will be very few people who are able to read both computational
biology technical information and intellectual property legal modalities. Therefore, in the
interest of making this very important discussion accessible to both, we must proceed by
analogy. The premise of this section is that not even the scientists performing research at
the cutting edge of bioinformatics could predict the pace of development in order to
implement effective regulation. The conclusion should be that intellectual property rights
are granted and protected in order to spur development. Computers should be treated as
persons and given rights in property in a manner similar to a human, because the end
result is better technology for human beings.
To proceed by analogy, we will apply the Feist decision to a description of the
process of making a weather report since the ultimate goal of BINA48’s software
program is to produce meaningful information for neuroprosthetic users.
The goal of the meteorologist is to provide a weather report to viewers. Both
disciplines are at the core the same, the meteorologist takes measurements from natural
phenomenon like wind speed, barometric pressure, humidity etc…and assembles this
information into a short 30 second segment commonly seen as a 5 day weather forecast.
Along the same lines, a BINA48 takes raw, natural data derived from an experiment and
then compiles this information into a database. In addition, new information is added to
the records of the raw data. In certain cases, the BINA48 takes this raw data and comes
52
See generally Bruce G. Joseph, Copyright Protection of Computer Software and Compilations, 602
PLI/PAT 209, 339 (2000).
23
up with information in a shortened form, much like a weather report, except this report is
useful for making predictions about prosthetic function.53
Thus, we can break down bioinformatics into respective categories, each of which
slides along the line of copyright protection laid out in Feist, on a scale from 0-10, with
10 satisfying both elements of the Feist court (independent creation, modicum of
originality) and 0 satisfying neither.
Most in the scientific community would agree that mere compilation of raw data
should not be afforded copyright protection. At this level of compilation, most core
information and raw data should be freely available. In addition, by maintaining open
access protocols, development can occur in much the same way the internet has, such that
certain positive network effects occur when everyone is using the same compiling
system.54 This compilation is what occurred when researchers ran sequencing machines
on DNA and compiled the results into a database.
This is the equivalent of the
meteorologist taking measurements from machines and devices related to acquiring
weather data.
At the next level on our sliding scale, we must discuss the development of tools to
search through the raw data effectively. For example, given a sequence of nucleotides
(ACTGTACTAGTACTA….), BLAST, Basic Local Alignment Search Tool takes a
sequence as input and outputs similar sequences, ranked in order of statistical similarity.55
53
Genome, gene expression and proteome database mining are complementary emerging technologies with
much scope being available for improvements in data analysis. Improvements in genome, gene expression
and proteome database mining algorithms will enable the prediction of protein function in the context of
higher order processes such as the regulation of gene expression, metabolic pathways and signalling
cascades. The final objective of such higher-level functional analysis will be the elucidation of integrated
mapping between genotype and phenotype.
54
A scientist in the US can download data compiled by a scientist from Russia without data integration
issues.
55
Id.
24
It is important to remember that the human genome would fill up 1000 phonebooks with
single letters and no punctuation, so searches using brute force methods are frequently
impractical. By clicking the link with the most statistical similar score, the user is then
taken to a gene page with a description of what the gene does. Of course, most of the
human genome is not annotated; nonetheless, the BLAST Algorithm is the most
frequently cited paper in modern biology.56 This tool was clearly of great import, the
NCBI reports over 70,000 BLAST searches per day.57
The BINA48 cannot patent this algorithm, nor can he effectively assert a
copyright against anyone who uses it since according to Feist, he is merely searching
through raw facts. In the future development of these tools will remain crucial for
BINA48s, since humans will be relying on the analysis of larger and larger data sets.
This is the equivalent to the meteorologist who discovers a new method of
organizing raw weather data into more accurate tornado predictions won’t receive any
monetary compensation for his effort, but as a scientist he will receive the equivalent
compensation in reputation and stature. Without delving to deeply into scientific
motivation, it seems that at this level innovation and development bioinformatic tools
will continue to be developed without significant changes to the regulatory structure.
Moving closer towards a perfect ten for copyright protection, BINA48 has
developed a novel method to store, retrieve and organize peripheral nerve data inputs and
is able to control the motor cortex output such that prosthetic control is better. This is the
equivalent in our analogy to a weatherman determining out of a sea of “useless” weather
56
See, e.g., Stephen Altschul et al., Basic Local Alignment Search Tool (BLAST), 215 J. Molecular
Biology 403 (1990) (The importance of this algorithm can be recognized in the fact that this paper is the
most cited paper in modern biology).
57
S.F. Altschul et al., "Basic local alignment search tool," Journal of Molecular Biology, 215:403-10,
1990.
25
data that there will be clouds. The end user of the weather report doesn’t want to hear
about the varying degrees of humidity and wind speeds during the past day, but are very
interested in whether all of that data in the aggregate means rain clouds will develop.
While there certainly seems to be a creative step, the Feist Court would very
likely conclude that no matter what the method, the copyright would not protect natural
data. The goal of the protection of intellectual property in the United States is to help
provide protection for first movers, such that the risk of developing new products is
rewarded by a period of protection whereby the rewards of the effort can be exploited. It
seems that intellectual property policy is wholly dependent on wanting more technology
introduced into society. As a result, the Court should provide this protection to who or
whatever is “sweating” to make technological innovations.
V. Conclusion
In order to continue a very important discussion concerning the legal rights of
transbemans, this paper was an attempt to skirt the issue of “personhood” for intelligent
machines. By presenting a situation in which a human has been wronged, a situation can
be presented whereby an intelligent machine is forced to be treated as a person in order
for the Courts to provide a forum whereby a human can achieve justice. These questions
are only the tip of a potential iceberg of questions involving the rapidly approaching time
when computer intelligence supersedes human intelligence.
26