TUTORIAL ON
INTELLECTUAL PROPERTY
LAW
Pamela Samuelson & David Post
Computers Freedom & Privacy
April 4, 2000
1
OVERVIEW
• Samuelson will do:
– Overview on intellectual property & its purposes
– Basics of copyright, emphasizing digital copyright
issues
– Basics of trade secrecy and DeCSS case
• Post will do:
– Trademark & domain name disputes
– Patents for software & business methods
2
WHAT IS “IP”?
• Intangible rights in commercially valuable
information permitting owner to control market
for products embodying the information
• Copyrights for artistic & literary works
• Patents for technological inventions
• Trade secrets for commercially valuable secrets
(e.g., source code, Coke formula)
• Trademarks (e.g., Coke) to protect consumers
against confusion
3
ELEMENTS OF IP LAW
• Subject matter to be protected
• Qualifications for protection
– Who can claim
– Procedure for claiming
– Substantive criteria
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Set of exclusive rights
Limitations on exclusive rights
Infringement standard
Set of remedies
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DIFFERENT THEORIES
• Utilitarian: grant rights to create incentives
for beneficial investments
• Natural rights: persons have natural rights
in their creations if valuable
• Personality-based: my creation is an
extension of myself
• Unjust enrichment: appropriating someone
else’s work may be unfair
5
ELEMENTS OF COPYRIGHT
• Subject matter: works of authorship
(e.g., literary works, musical works, pictorial works; NB:
software is a “literary work”)
• Qualifications:
– Who: the author (but in US, work for hire rule)
– Procedure: rights attach automatically (but US authors
must register to sue; remedies depend on regis.)
– Criteria: “originality” (some creativity); in US, works
must also be “fixed” in some tangible medium
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COPYRIGHT ELEMENTS (2)
• Set of exclusive rights (right to exclude others)
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to reproduce work in copies,
to prepare derivative works,
to distribute copies to the public,
to publicly perform or display the work, or
communicate it to the public
– “moral rights” of integrity & attribution (US visual art)
– some rights to control acts of those who facilitate or
contribute to others’ infringement (e.g., ISPs, agents)
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COPYRIGHT ELEMENTS (3)
• Limitations on exclusive rights:
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Fair use (e.g., Sony Betamax, Acuff-Rose) in US
Fair dealing in UK and Canada
First sale (e.g., libraries, bookstores)
Library-archival copying (e.g., ILL, course reserves)
Classroom performances
Special inter-industry compulsory licenses (e.g., cablenetwork TV)
– Other (e.g., playing radio in fast food joint)
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COPYRIGHT ELEMENTS (4)
• Limitations on exclusive rights: duration
– Berne standard: life + 50 years
– EU & US: life + 70 years; 95 yrs from publication
• Infringement standard: violating exclusive right
(often copying of “expression” from protected
work based on substantial similarity)
• Remedies: injunctions, lost profits, infringers’
profits, “statutory damages,” costs, & sometimes
attorney fees
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“UNCOPYRIGHTABLE”
STUFF
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Ledger sheets and blank forms
Rules and recipes (“merger”)
White pages listings of telephone directories
Facts and theories
Ideas and principles
Methods of operation/processes
Bicycles and bicycle racks (too functional)
10
COMPILATIONS AND
DERIVATIVE WORKS
• Creativity in selection and arrangement of data or
other elements = protectable compilation
• Original expression added to preexisting work =
protectable d/w (e.g., novel based on movie)
• Compilation or derivative work copyright doesn’t
extend to preexisting material (e.g., data or public
domain play)
• Use of infringing materials may invalidate
copyright in compilation or derivative work
11
INTERNATIONAL TREATIES
• Berne Convention for Protection of Literary
& Artistic Works
• Basic rule: “national treatment” (treat
foreign nationals no worse than do own)
• Berne has some minimum standards
(duration, exclusive rights, no formalities)
• WIPO administers treaties, hosts meetings
to update, revise, or adopt new treaties
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INTERNATIONAL TREATIES
(2)
• TRIPS (Trade-Related Aspects of Intellectual
Property Rights) Agreement
• Sets minimum standards for seven classes of IPR,
including copyright, that binds WTO members
• Must have substantively adequate laws, as well as
adequate remedies and procedures and must
enforce effectively
• Dispute resolution process now available (e.g., EU
challenge to US music licensing exception)
13
DIGITAL COMPLICATIONS
• Digitized photographs of public domain works
(e.g., Microsoft claims ownership in some)
• Very easy to reselect and rearrange the data in
databases; uncreative databases may be very
valuable; EU has created a new form of IP right in
contents of databases to deal with this
• New ways to appropriate information (e.g., NBA
sued Motorola for “stealing” data from NBA
games for sports pager device)
• Digital environment lacks geographic boundaries
14
DIGITAL COMPLICATIONS
(2)
• Can’t access or use digital information without
making copies
• Very cheap and easy to make multiple copies and
disseminate via networks
• Very easy to digitally manipulate w/o detection
• People expect digital information to be free or
nearly so
• Many people think that private copying doesn’t
infringe copyright; much of industry disagrees
15
DIGITAL COPYRIGHT
CONTROVERSIES
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Linking, framing, & filtering
iCraveTV case
Cyberpatrol case
RIAA v. Diamond (Rio player case)
UMG Recordings v. MP3.com
Napster case
DeCSS cases
16
US WHITE PAPER ON
IP & THE NII (1995)
• Full potential of NII won’t be realized
unless IP/copyright owners are adequately
protected
• Many are withholding works from the ‘net
because of threat of piracy
• Copyright can be adapted to digital
environment, need a few changes
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WHITE PAPER POSITIONS
• Authors have right to control temporary copies in
RAM (reading or browsing as infringement?)
• Fair use should recede (if work can be licensed, it
must be licensed)
• No more first sale/sharing rights (first sale only
permits redistributing same copy, not making new
ones)
• ISPs should be held strictly liable for user
infringements
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WHITE PAPER POSITIONS
• Need for new rules to make it illegal to
remove or alter copyright management
information (CMI)
• Need to outlaw technologies useful for
bypassing technical protection systems
• Get international treaty to universalize these
new norms
19
WIPO COPYRIGHT TREATY
(1996)
• Reproduction right applies to digital works
(but no agreement on temporary copies)
• Exclusive right to communicate digital
works to the public by interactive service
• Fair use and other exceptions can apply as
appropriate; new exceptions OK
• Merely providing facilities for
communication not basis for liability
20
WIPO TREATY (2)
• Tampering with copyright management
information to enable or conceal infringement
should be illegal
• Need for “adequate protection” and “effective
remedies” for circumvention of technical
protection systems
• Treaty not yet in effect, but US has ratified; EU in
process of implementing; Canada has signed
21
DMCA
• Digital Millennium Copyright Act (1998)
• “Safe harbor” provisions for ISPs
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Transitory network communication
System caching
User-stored information
Information location tools
• Section 1201: anti-circumvention rules
• Section 1202: false CMI/removal of CMI
22
DMCA ANTICIRCUMVENTION RULES
• Treaty very vague; unclear what’s required
• Campbell-Boucher bill in US: proposed to outlaw
circumvention of TPS to enable copyright
infringement
• MPAA: wanted all circumvention outlawed
• Compromise in DMCA: illegal to circumvent an
access control, 17 U.S.C. s. 1201(a)(1)
• But 2 year moratorium; LOC study; 7 exceptions
23
EXCEPTIONS TO
CIRCUMVENTION RULE
• Legitimate law enforcement & national
security purposes
• Reverse engineering for interoperability
• Encryption research and computer security
testing
• Privacy protection & parental control
• Nonprofit “shopping privilege”
24
ANTI-DEVICE PROVISIONS
• Illegal to “manufacture, import, offer to
public, provide or otherwise traffic” in
• Any “technology, product, service, device,
[or] component”
• If primarily designed or produced to
circumvent TPS, if only limited commercial
purpose other than to circumvent TPS, or if
marketed for circumvention uses
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MORE ON DEVICE RULES
• 1201(a)(2)--devices to circumvent effective
access controls
• 1201(b)(1)--devices to circumvent effective
controls protecting right of cop. owners
• Actual & statutory damages + injunctions
• Felony provisions if willful & for profit
• MPAA v. Reimerdes 1st civil case
26
CURIOUS THINGS ABOUT
1201
• Only 3 exceptions to 1201(a)(1) explicitly
allow building tools
• Only interoperability exception limits both
anti-device rules
• Did Congress mean to allow circumvention
to make fair use, yet make it illegal to make
tools needed to accomplish? (Ha! Ha!)
• LOC to study only act, not device rules
27
PROBLEMS WITH A/C REGS
• Legitimate purpose circumventions
– existing exceptions overly narrow
– need for general purpose exception
– clarify that fair use circumvention is OK
• “Dual use” technologies
– tools to enable legitimate uses
– how device rules could be narrowed
• Copyright-centric regulations
28
EXCEPTIONS TOO NARROW
• Interoperability: not just programs; other
reverse engineering may be legitimate
• Encryption and computer security research:
– no authorization and expert requirements
– OK to make tools
– less onerous rules on disseminating results
• Privacy exception: Windows 2000
hypothetical
29
A GENERAL PURPOSE
EXCEPTION?
• Need for “or other legitimate purpose”
exception to access control rule
• Examples of other legitimate acts:
– if reasonable grounds to believe infringing copy
or computer virus inside TPS
– illegitimate invocation of “technical self-help”
• Courts able to tell difference between
legitimate & illegitimate acts
30
DUAL USE TECHNOLOGIES
• Circumvention tools are not burglars’ tools
• Ways to narrow rules:
– substantial noninfringing use standard
– intent/knowledge/injury/infringement requirement
– commercially significant cf. apparent legitimate
purpose (freeware should not be vulnerable)
– technology-specific (e.g., circumvention of SCMS)
• Think through relation between range of
legitimate circumventions and availability of tools
(if X is lawful, tool to do X should be OK)
31
COPYRIGHT-CENTRICITY
• Encryption protects more than commercial
copyrighted products (e.g., private personal
communications, trade secret/confidential business
information, e-cash)
• Circumvention of encrypted information is a more
general problem (sometimes legitimate, sometimes
not)
• So is the availability of circumvention technology
• Would suggest the need for a general law
32
UNINTENDED
CONSEQUENCES?
• X makes software that circumvents Y’s encryption
system
• Z is a copyright owner who decides to use Y’s
encryption system to protect digital pictures
• Does X’s tool then become illegal?
• Can Y sue X? Can Z sue X? What harm has X’s
software done to Y or Z?
• 1201 (a)(2) and (b)(1) does not require any
underlying infringement; mere potential is enough
33
MPAA v. REIMERDES
• Injunction vs. posting of DeCSS on websites or
otherwise making it available
• CSS is effective access control for DVDs
• DeCSS circumvents it & has no other
commercially significant purpose
• Lack of evidence for Linux compatibility
argument
• Besides, 1201(f) only protects interoperation with
“programs,” not “data” on DVD
34
ELEMENTS OF TRADE
SECRECY
• Information that can be used in business that is
sufficiently valuable & secret as to afford an
economic advantage to the holder
• Outgrowth of unfair competition law
• No “exclusive rights” as such, but protected vs.
use of improper means & breach of confidence
• Independent development & reverse engineering
are legitimate ways to acquire a trade secret
• Relief generally limited to period in which
independent development would have occurred
35
DVD-CCA v. McLAUGHLIN
• Trade secret misappropriation case
• CSS = proprietary information; DVD-CCA took
reasonable steps to maintain secret
• Inference: someone must have violated clickwrap
license forbidding reverse engineering
• Breach of agreement was improper means
• Even though DeCSS on web for 4 months, not to
enjoin would encourage posting TS on Web
• Judge upset by “boasting” about disrespect for law
36
IMPLICATIONS OF DVD-CCA
• Anti-reverse engineering clauses are common in
software licenses; enforceability much debated
• Judge’s willingness to enforce and treat
information obtained through reverse engineering
as trade secret worrisome
• Judge’s willingness to enjoin information that had
been public for several months may be error
• “Fruit of poisonous tree” rationale (judge knows
Johansen didn’t reverse engineer, nor did many
posters, yet held as trade secret misappropriators)
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CONCLUSION TO PART I
• Digital technology has posed many difficult
questions and problems for copyright law
• Much remains in controversy; how current cases
are resolved matters a lot
• Possible to build balance into law, but US
“selling” broad anti-circumvention rules
• Gap in perception about law as between copyright
industry and the public; enforceability & respect
for law contribute to difficulties
• Easier to see the risks than the opportunities
38