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special to the national law journal Robert W. Gomulkiewicz is a research associate professor of law and director of the Intellectual Property Law and Policy Program at the University of Washington School of Law. He was previously an associate general counsel at Microsoft Corp. and chairman of the UCITA working group of the Business Software Alliance. Nearly 30 years ago, Congress established the National Commission on New Technological Uses of Copyrighted Works (CONTU) to study whether the Copyright Act should apply to software. Today the basic issue of whether copyright law should protect software seems rather quaint-not only copyright, but patent, trade secret, trademark and contract law can all protect software. Yet, the debate about the scope of legal protection for software is just as noisy, vigorous and important today as it was 30 years ago. The debate has two conflicting sides. On one side are those who say that the current collection of laws provides too little protection for software. They point out that the software industry loses billions of dollars every year to software piracy. They lament that renegade programmers corrupt software with viruses, break into computer systems and shut down computer networks for fun. On the other side are those who believe that legal protection for software is too strong already. They worry that software patents stifle innovation. They object to Congress’ extension of the copyright term and to the Digital Millennium Copyright Act’s anti-circumvention provisions, which they believe hinder fair use. They think that licensing software under standard-form contracts unfairly extends intellectual property protection. Source code and object code Programmers develop software by writing instructions in a computer language such as Basic or C++. These human-written instructions are known as source code. The programmer then uses a software tool called a compiler to convert source code into object code. Object code is often called machine-readable code because it tells the computer what to do. One of the early questions facing software developers was whether source code and object code were copyrightable. Congress established CONTU to study the matter. Act of Dec. 31, 1974, Pub. L. No. 93-573, § 201, 88 Stat. 1873-75. CONTU decided that software was copyrightable in both its source- and object-code forms, and Congress passed several amendments to the Copyright Act in response to CONTU’s recommendations. See http://home.nyu.edu/~gmp216/ documents/contu/contu-finalreport.txt; see also 117 U.S.C. 101, 117. However, that did not quite settle the matter. A computer company called Franklin Computer copied Apple Computer’s operating system software onto Franklin’s computers, arguing that Apple’s permission was not required because Apple’s software was not copyrightable. The 3d U.S. Circuit Court of Appeals, citing CONTU’s report and congressional amendments to the Copyright Act, disagreed with Franklin and held that both source and object code qualified for copyright protection. Apple Computer Corp. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983). Perhaps buoyed by the Apple v. Franklin decision, software developers began to seek copyright protection for the nonliteral aspects of software. The literal aspects of software are the source and object code, as well as the visual displays generated by the software. The nonliteral aspects are the structure, sequence and organization of the code and displays. A high-water mark for copyright protection came in the Whelan Associates v. Jaslow Dental Laboratory Inc. case, in which the 3d Circuit applied copyright to the nonliteral aspects of software. 797 F.2d 1222 (3d Cir. 1986). In separating the noncopyrightable idea from the copyrightable expression, the court held that the primary idea was automating a dental office and that everything else was copyrightable expression. The result was very broad copyright protection. After Whelan, courts were less exuberant in granting broad copyright protection for the nonliteral aspects of software. Courts agreed that the nonliteral aspects of software could be protected, but carefully filtered out unprotectable ideas, often concluding that the scope of copyright protection was narrow. See, e.g., Computer Assocs. Int’l v. Altai Inc., 982 F.2d 693, 696-717 (2d Cir. 1992); Apple Computer v. Microsoft, 35 F.2d 1435 (9th Cir. 1994). The 1st Circuit in Lotus v. Borland offered the most skeptical view of copyright protection for the nonliteral aspects of software, deciding that many of the nonliteral elements of Lotus’ 1-2-3 spreadsheet were methods of operation and thus not copyrightable at all. 49 F.3d 897 (1st Cir. 1995), affirmed by an equally divided high court, 516 U.S. 233 (1996). During this same period of time, courts wrestled with other copyright-related issues. Courts were eager to allow programmers to protect their software, but became wary when programmers tried to push protection too far. For example, the 9th Circuit in Lewis Galoob Toys Inc. v. Nintendo of America Inc., 964 F.2d 965 (9th Cir. 1992), ruled that Nintendo could not use copyright law to thwart the development of add-on software, and in Sega Enterprises Ltd. v. Accolade Inc., 977 F.2d 1510 (9th Cir. 1992), it ruled that Sega could not use copyright law to thwart interoperability. In Lasercomb v. Reynolds, 911 F.2d 970 (4th Cir. 1990), the 4th Circuit ruled that a programmer’s use of a license agreement to extend the copyright period amounted to copyright misuse. Other forms of protection Copyright was not the only legal protection used by software developers. Many developers held their source code, product designs and marketing strategies to be trade secrets. Software developers also used trademarks. For example, Microsoft created the “Windows compatible” logo to help users know which applications software and hardware worked with the Windows operating system. Some companies attempted to use trademarks to prevent other companies from creating compatible software, although these attempts were largely unsuccessful. See Sega Enterprises Ltd. Most software developers did not patent software in the 1970s and 1980s. The reasons for ignoring patents varied. Some software developers concluded that patents were probably not obtainable. Others believed that the expense and hassle of obtaining patents were not worth the payback. Still others opposed the patenting of software on philosophical grounds. As the 1990s dawned, however, software developers, commercial and noncommercial alike, began to realize the importance of obtaining patents, and courts began to rule that the patent laws covered software. See In re Alappat, 33 F.3d 1540 (Fed. Cir. 1994). As software became a mass-market consumer item, developers began to license their software under standard-form licenses. These mass-market licenses described what the end user could do with the software. Many commentators frowned on the usefulness and enforceability of mass-market licenses, and the earliest cases seemed to cast doubt on the issue. See Step-Saver Data Sys. v. Wyse Tech., 939 F.2d 91 (3d Cir. 1991). However, software developers continued to use mass-market licenses, and in the mid-1990s courts began to enforce them regularly. See, e.g., ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996); M.A. Mortensen Co. v. Timberline Software Corp., 998 P.2d 305 (Wash. 2000) (en banc). By the late 1990s, the “open source” software revolution burst onto the scene, a revolution that relies heavily on the practice of mass-market licensing. Today’s debates Commercial software publishers now understand that having copyright laws on the books is not enough; enforcing the laws vigorously is critical. They organized many years ago to bring civil actions against software pirates, and those efforts continue. Recently, the federal government has been prosecuting software pirates on criminal charges and confiscating pirated software at the border. However, the deterrent effects of copyright law and the gains from enforcement have only made a small dent in illegal copying. The success of the copyright holders in A&M Records Inc. v. Napster Inc., 284 F.3d 1091 (9th Cir. 2002), should have given software companies comfort that the system is working. Instead, the unabashed copying that gave rise to the case reinforced the perception that traditional IP laws alone are too weak to combat illegal copying. To back up legal protection, therefore, many commercial software developers began to deploy technological devices to prevent unauthorized use. Examples include devices that meter usage, digital rights management code, product-activation code and copy protection. Software companies have decidedly mixed emotions about using these devices, however, because they know that clever programmers can figure out how to get around them and that using the devices degrades user friendliness and impedes interoperability. Congress passed the Digital Millennium Copyright Act (DMCA) in 2000, bolstering use of technological devices by making it illegal to circumvent or help circumvent technological devices in most instances. Many commercial software companies supported the DMCA but were instrumental in making sure the legislation allowed encryption research and the discovery of information for creating interoperable software. Most noncommercial software developers, however, saw the DMCA as a sinister law that gets in the way of legitimate software engineering practices. The DMCA may help solve the illegal copying problem for software companies, but other problems are just as significant. Many software companies now sell the services that are produced by software rather than license the code on disks. Software companies sometimes use the catch phrase “software as a service” to describe this shift in perspective. To be attractive to customers, the services must be secure and reliable. This is particularly true when the software company obtains and retains a customer’s personal information. However, at a time when security and reliability have become increasingly important, computer hackers are regularly breaking into computer networks, either to steal personal information or just for sport. In this environment, software companies turned for help to the Computer Fraud and Abuse Act and other “computer crimes” legislation, which make it illegal to break into computer systems without authorization. While commercial software developers cheered these additional legal protections, other people had a very different reaction. Librarians worried that the DMCA’s anti-circumvention provisions would impair library fair-use rights, and computer scientists protested that it might impair research. Software end users chaffed at the technological measures deployed by software companies, saying that the measures reveal personal information or get in the way of legitimate uses. Programmers, particularly those from the open-source movement, expressed concern that software patents stifle, rather than stimulate, innovation. Some scholars looked at the panoply of legal protections for software and began to argue that, in the aggregate, the laws add up to too much protection. The concern about “too much protection” spilled over into the National Conference of Commissioners on Uniform State Law’s efforts to create a contract code for software licensing known as the Uniform Computer Information Transactions Act (UCITA). Licensing has been around for a long time and is arguably the most important legal mechanism for creating and distributing software. Yetwhen contract law is applied to intellectual property, it raises old debates about the proper balance between exclusive rights and the public domain, freedom of contract versus consumer protection and interoperability in an increasingly connected world. The UCITA drafting and enactment process has become a forum for debating these important issues. Balancing act Is there too much or too little legal protection for software? Legislatures and courts have worked hard for 30 years since CONTU to make sure that the fit is right. After the Altai, Apple v. Microsoft and Lotus v. Borland cases, the scope of copyright protection is often reasonably narrow, and the same could be said of patent protection after the Amazon.com v. BarnesAndNoble.com case. 239 F.3d 1343 (Fed. Cir. 2001). Despite fears to the contrary, software companies, unlike entertainment companies, have been reluctant to enforce the DMCA’s anti-circumvention provisions, especially after Adobe’s legal and public relations nightmares in its cases against a Russian programmer. Perhaps the level of dissatisfaction on each side of the debate indicates that the level of protection is really about right. Courts and legislatures must remain vigilant to make sure that that remains true-at stake is the continued success of one of the most important industries in the U.S. economy.

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