ECONOMIC AND CONSTITUTIONAL INFLUENCES

ON COPYRIGHT LAW IN THE UNITED STATES

 

By

Pamela Samuelson*

 

 

I.                    INTRODUCTION

 

In the aftermath of the accession of the United States to the Berne Convention for Artistic and Literary Works,[1] European copyright professionals have had the pleasure of watching the law of this once renegade nation move toward greater conformity with the longstanding norms of authors’ rights jurisdictions.[2]  One example is the ruling of the United States Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co.[3]  By holding that the white pages listings of telephone directories lacked sufficient originality to warrant copyright protection, U.S. courts reached the same legal conclusion  as authors’ rights jurisdictions.[4]  With officials of the European Union and the United States working together in international forums to establish ever higher minimum standards for intellectual property rights[5] and with the increasingly global trade in intellectual property products and services,[6] European copyright professionals may think that U.S. and European copyright laws will become ever more harmonious.[7]  Who knows?  Perhaps the United States will finally embrace the moral rights of authors, as it is obliged to do under Article 6bis of the Berne Convention.[8] 

 

Despite the many signs of convergence of European and U.S. copyright laws, this article contends that copyright law in the United States will continue to differ in two significant respects from authors’ rights laws of member states of the European Union.  One difference is that economic reasoning sometimes exerts a powerful influence on the contours of U.S. copyright law.[9]  A second is that the U.S. Constitution exerts a strong, if somewhat erratic, influence on the understanding of the bounds of U.S. copyright law.[10]   Economic and constitutional influences sometimes intermix,[11] in part because of certain historical experiences underpinning the Constitution.[12]  This essay will consider these differences between the traditions of U.S. copyright law and those of authors’ rights jurisdictions. 

 

II.                 ECONOMIC INFLUENCES IN AMERICAN COPYRIGHT LAW

 

An extensive literature in the United States discusses the economic underpinnings of copyright law.[13]  This literature justifies not only the grant of exclusive rights to authors,[14] but also certain limitations on authors’ rights that differentiate American copyright law from European authors’ rights law.[15]  Utilitarian considerations underlie, for example, the U.S. “work made for hire” rule that confers authorship status on employers for works prepared by employees in the scope of their employment.[16]  This rule starkly contrasts with rules in Continental Europe where, in deference to the cultural importance of authorship, employees are treated as “authors” and therefore as the initial owners of exclusive rights in works they produce.[17] 

 

A far starker contrast between U.S. and European laws lies in their stances on the moral rights of authors.  U.S. law is concerned with providing economic incentives to authors to induce them to invest in creative work; a grant of moral rights seems unnecessary to induce such investment.[18]  Major copyright industries in the U.S. strongly object to moral rights because they may interfere with certain economic arrangements that these industries wish to make.[19]  Utilitarian reasons also explain why American firms and policymakers have sought to persuade moral rights jurisdictions to make these rights waivable by contract.[20]

 

Concerns about economic consequences of protection also underlie the “useful article” rule of U.S. copyright law that denies copyright protection to pictorial, sculptural and graphic works if they have a utility beyond merely conveying information or displaying an appearance.[21]  This too contrasts with some European jurisdictions that provide copyright protection to artistic designs for toasters, teapots, and the like.[22] 

 

Still another U.S. rule commonly justified on economic grounds that starkly contrasts with European law is the fair use defense of American copyright law.[23]  European intellectual property specialists surely know that the U.S. Supreme Court held that home taping of television programs was fair use in its decision Sony of America v. Universal City Studios.[24]  What Europeans may not know is how deeply economic is a prevalent rationale for this decision.  The Supreme Court in Sony did not express its views on fair use in market failure terms, but in the aftermath of this decision, commentators have pointed out that the Court’s ruling was justified, in economic terms, because the costs of having each individual with a VCR negotiate with all pertinent copyright owners for rights to make home copies from television broadcasts of their copyrighted programs far outweighed the returns likely to be obtained.[25]  Because a market for home taping rights could not operate in an efficient way, fair use was, in the view of these commentators, a reasonable resolution to this dispute. 

 

Economically minded American commentators also regard parody cases such as Campbell v. Acuff-Rose Music, Inc.[26] (in which fair use was raised in defense to a copyright claim based on Campbell’s rap music parody of Roy Orbison’s popular song “Pretty Woman”) as instances of market failure.  Few copyright owners, the theory goes, will set a reasonable market price to license parody or critical commentary.  This will thwart the operation of an efficient market in parodies.[27]  Fair use can cure this market failure.  Although parody exceptions exist in some national European authors’ rights laws,[28] the existence of such exceptions in Europe is unlikely to be based on an economic rationale.  Thus, even when U.S. and European law would reach the same result, they may do so for different reasons.

 

            Nowhere has economic reasoning played a more substantial role in shaping the contours of the law than in cases attempting to define the proper scope of copyright protection for computer programs.  In four major U.S. software copyright decisions discussed below, economic analysis played a particularly key role in the interpretation of copyright law.  U.S. commentators have, for the most part, expressed approval for the use of economic analysis as an aid to interpretation of copyright rules, especially when, as in these cases, courts have been confronted with questions for which the copyright case law provided essentially no meaningful precedent.[29] 

 

            The trend of relying on economic reasoning in software copyright cases has not been without its critics, some of whom suggest that such an approach is inappropriate.[30]  It is certainly true that reliance on economic reasoning can sometimes lead courts astray, as proved true in the Whelan case.  Most commentators believe the errors in Whelan have been corrected by subsequent cases, such as Altai, Sega, and Borland.[31]  While European courts might reach the same conclusions as American courts in some of these cases, they might reach different conclusions in others. Even when reaching the same conclusion, European courts might well use different reasoning than the American courts.  In particular, judges in European software copyright cases are far less likely than American judges to employ economic reasoning to justify their rulings in a particular case.

 

            Whelan Associates v. Jaslow Dental Labs., Inc. was the first American appellate decision to consider whether the “structure, sequence, and organization” (“SSO”) of computer programs could be protected by copyright law.[32]  Because this decision was much discussed at the time the European Commission was working on the Directive on the Legal Protection of Computer Programs,[33] it became a model U.S. software copyright decision that American officials hoped European law would emulate.[34]  European policymakers were quite receptive to the idea of protecting structural design elements of programs, and the European Directive embodies this principle.[35]

 

            The Third Circuit Court of Appeals in Whelan decided that “SSO” was protectable under U.S. copyright law on both doctrinal and economic grounds.  The doctrinal analysis relied on this syllogism:  computer programs are literary works under U.S. copyright law, and since the structure, sequence, and organization of literary works are generally protectable by copyright law, the structure, sequence, and organization of programs should be protected by copyright law as well.[36]  This aspect of the Whelan analysis would likely resonate with European intellectual property specialists.[37] 

 

            Complementing this doctrinal analysis, however, was an economic argument that focused on the need for software developers to have sufficient protection to recoup development costs.  A second economic concern was the locus of value in computer programs.  Consider, for example, this excerpt from the Whelan decision:

 

By far the larger portion of the expense and difficulty in creating computer programs is attributable to the development of the structure and logic of the program, and to debugging, documentation and maintenance, rather than to the coding.  See Frank, Critical Issues in Software 22 (1983) (only 20% of the cost of program development goes into coding); Zelkowitz, Perspective on Software Engineering, 10 Computing Surveys 197‑216 (June, 1978).  See also InfoWorld, Nov. 11, 1985 at 13 ("the 'look and feel' of a computer software product often involves much more creativity and often is of greater commercial value than the program code which implements the product . . .").  The evidence in this case is that Ms. Whelan spent a tremendous amount of time studying Jaslow Labs, organizing the modules and subroutines for the Dentalab program, and working out the data arrangements, and a comparatively small amount of time actually coding the Dentalab program.[38] 

 

            The Third Circuit seems to have been persuaded to this position by a friend-of-the-court brief submitted by a software industry organization which argued that if copyright protection did not extend to the structure, sequence, and organization of a program, the software industry would be jeopardized because the law would provide too little protection to induce an optimal level of investment in development of computer programs.[39]  The Third Circuit directly responded to this plea:  “The rule proposed here, which allows copyright protection beyond the literal computer code, would provide the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold over the development of new computer devices that accomplish the same end.”[40] 

 

            Between 1986 and 1992, the Whelan decision was influential in subsequent U.S. cases, both in its doctrinal and economic reasoning.[41]  The first decision to seriously challenge Whelan’s hegemony was Computer Associates v. Altai, Inc. in 1992.[42]  On at least one important point, the Second Circuit Court of Appeals agreed with Whelan:  the structure, sequence and organization of a program could, in an appropriate case, be protected by copyright law.[43]  Unlike Whelan, which regarded program structure as exempt from infringement only when there was essentially no other way to structure the program,[44] the court in Altai reasoned that similarities in the structure of two programs might be due, for example, to functional constraints such as the need to develop a program that would interoperate with another program, efficiency considerations, or use of the same standard programming techniques, none of which was protected by copyright law.[45]  The court in Altai directed that these and other unprotectable elements of programs be “filtered out” before infringement analysis began[46] to ensure compliance with the directive of section 102(b) of the U.S. copyright statute which states that “[i]n no case shall copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”[47]  The court ultimately ruled that some structural similarities in Altai were attributable to the fact that both Computer Associates (CA) and Altai were developing programs to interoperate with the same three IBM operating system programs, and other structural similarities were to be expected in programs of that kind.[48]  Hence, it affirmed the lower court’s finding of noninfringement.

 

            As in Whelan, the plaintiff and its amici predicted dire economic consequences for the software industry if courts did not provide strong protection to program structure.  However, the Second Circuit took a different view than had the court in Whelan: 

 

[The Supreme Court’s decision in] Feist teaches that substantial effort alone cannot confer copyright status on an otherwise uncopyrightable work.  *** [D]espite the fact that significant labor and expense often goes into computer program flow‑charting and debugging, that process does not always result in inherently protectable expression.  Thus, Feist implicitly undercuts the Whelan rationale, "which allow[ed] copyright protection beyond the literal computer code . . . [in order to] provide the proper incentive for programmers by protecting their most valuable efforts...."  [citation omitted].  We note that Whelan was decided prior to Feist when the "sweat of the brow" doctrine still had vitality.  In view of the Supreme Court's recent holding, however, we must reject the legal basis of CA's disincentive argument.[49]

 

            The Second Circuit went on to offer some economic counterarguments to those made by CA and its amici:

 

[W]e are unpersuaded that the test we approve today will lead to the dire consequences for the computer program industry that plaintiff and some amici predict.  To the contrary, serious students of the industry have been highly critical of the sweeping scope of copyright protection engendered by the Whelan rule, in that it "enables first comers to 'lock up' basic programming techniques as implemented in programs to perform particular tasks."[50]

 

            The Second Circuit warned that if courts heeded purely economic arguments for broadening the scope of copyright protection for computer programs, this would impair the integrity of copyright law: 

 

While incentive based arguments in favor of broad copyright protection are perhaps attractive from a pure policy perspective, *** ultimately, they have a corrosive effect on certain fundamental tenets of copyright doctrine.  If the test we have outlined results in narrowing the scope of protection, as we expect it will, that result flows from applying, in accordance with Congressional intent, long‑standing principles of copyright law to computer programs.[51]

 

The Second Circuit pointed out that patent protection might be a more suitable way to protecting some program innovations than copyright.[52]  If copyright proved to be too “thin” to provide proper incentives to program developers, this was a matter for Congress, not the courts, to consider.[53] 

 

A few months after the Altai decision, the Ninth Circuit Court of Appeals in the well-known decision, Sega Enterprises, Ltd. v. Accolade, Inc., endorsed the Altai ruling and its approach to analyzing infringement in software copyright cases, thereby implicitly repudiating its earlier endorsement of Whelan.[54]   Both Altai and Sega are significant developments in part because they were the products of a judicial decisionmaking process that reached essentially the same legal conclusions on compatibility and decompilation issues as the European Commission and Council had reached in promulgating the software directive. 

 

Altai and the European software directive both adopt the view that copyright protection is unavailable to elements of programs necessary for interoperation with other programs (that is, program interfaces).[55]  Judged purely in terms of the creativity and judgment required to design them, program interfaces might initially seem to be “original” enough to be protectable expression as a matter of copyright law.[56]  However, once developed, program interfaces unquestionably constrain the design choices of subsequent programmers seeking to develop software capable of successfully interacting with an existing program.[57]  The competition policy significance of protecting interfaces was recognized in Europe in part because the Competition Policy Directorate of the European Commission had taken action against IBM arising from its practice of changing interfaces in a manner that had exclusionary impacts on European developers of computer peripherals.[58]  If European software developers were going to have a fair chance to compete with U.S. software in the European as well as the world market, these developers would need to be able to use interface information from American programs.  The intervention of the Competition Policy Directorate in negotiations surrounding the drafting of the software directive resulted in these economic considerations being brought to bear on the contours of copyright protection for software in Europe.[59] 

 

It is, of course, one thing for a legislative body to decide that competition policy considerations should narrow the scope of copyright protection for an original work of authorship.  It may seem quite another thing for courts to use economic considerations in interpreting copyright law so as to narrow the scope of protection.  However, this is not as aberrational in U.S. law as it would be in European law because of the judicially created “merger” doctrine of U.S. copyright law.[60]  If an idea is capable of being expressed in only one or a very limited number of ways, American judges will tend to regard the “idea” and “expression” in a work as having “merged,” and in order not to give an author a monopoly on that idea, judges will tend to give no or only the thinnest scope of protection to what would otherwise be protectable expression.[61]  Other American cases have recognized that the existence of significant constraints on the design choices faced by subsequent authors may narrow the scope of copyright protection because authors in a constrained design space will tend to produce similar expression.[62]  The merger and significant constraints doctrines are consistent with the utilitarian rationale for copyright protection in the U.S. that seeks to promote, as Professor Goldstein has put it, “abundant” rather than “efficient” expression, that is, a wide variety of new literary and artistic works.[63]

 

            The unprotectability of program interfaces was not the only difficult interoperability-related issue that legal decisionmakers have had to confront.  An equally, if not more difficult, question was whether to allow programmers to decompile or disassemble other firms’ programs if necessary to get access to information needed to develop an interoperable program.  This was a dicey issue for copyright law because the decompilation and disassembly process inevitably requires the making of a number of intermediate copies of the target program.[64]  Such copies would seem to run afoul of the exclusive right that copyright law confers on authors to control the reproduction of their works in copies.  Yet unless copyright law recognized at least a limited right to decompile or disassemble programs, the decision not to protect interface information would be significantly undermined.  The plain fact is that although some software developers openly publish APIs (application programming interfaces) for their programs, many do not.[65]  The willingness of program developers to license APIs to other firms varies considerably, and some firms only license APIs on terms that some developers regard as unacceptable (e.g., giving up the right to make a version of the same program for other platforms).[66] 

 

As with the interface issue, U.S. and European legal decisionmakers reached very similar results by very different means.  Once again, the European decision was legislative, and the U.S. decision was the product of judicial interpretation of copyright law in the kind of case-by-case decisionmaking process that typifies the American common law tradition.  As European readers will surely know, the European software directive mandates that member states provide a limited exception to the reproduction right to enable decompilation of computer programs when necessary for interoperability purposes.[67]  Sega v. Accolade and companion U.S. decisions rely upon the U.S. fair use doctrine to reach the conclusion that no infringement occurs when a firm makes intermediate copies of programs for a legitimate reason such as to get access to information necessary to create an interoperable program.[68]  Economic considerations undergird both decisions. 

 

            Because American fair use law is so foreign to the European intellectual property tradition, it may be instructive for European readers to see how economic reasoning can influence scope-of-copyright analysis in American caselaw, as it did in Sega v. Accolade.[69]  To set the stage for this discussion, a brief overview of fair use law may be helpful. 

 

            The U.S. copyright statute now codifies the judicially created fair use doctrine.  The fair use provision directs courts to consider four factors when determining whether a use is fair and therefore noninfringing:  (1) the purpose and character of the defendant’s use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the defendant’s appropriation; and (4) the harm, if any, to the actual or potential market for the copyrighted work if the use is determined to be fair.[70]  All factors must be weighed together, and in a typical fair use case, some factors will weigh in favor of fair use and some against.  European commentators sometimes criticize American fair use law because this balancing of factors can make fair use determinations somewhat unpredictable.[71]  However, fair use decisions often fall into predictable patterns of analysis so that a well-informed person can judge whether a fair use defense has a reasonable chance of success in any particular case.  Fair use also has the advantage of providing American copyright law with a flexible mechanism with which to adapt to unforeseen circumstances in an era of rapid technological change, as the Sega v. Accolade case itself demonstrates.[72]

 

            With this background, let us consider the fair use defense in Sega v. Accolade.  Sega persuaded the trial court that Accolade’s disassembly of Sega’s programs was not fair use because Accolade had a commercial purpose in performing it, namely, to develop videogames that would compete in the market with Sega games.[73]  Sega pointed out that the U.S. Supreme Court decision in Sony Corp. of America v. Universal City Studios, Inc. had said that courts should presume uses to be unfair if done for commercial purposes.[74]  Although the U.S. Supreme Court later repudiated the presumption of unfairness when uses were commercial,[75] the Ninth Circuit decided that Accolade’s commercial intent was not the only purpose-of-use consideration.  On balance, the court decided that the purpose-of-the-use factor weighed in Accolade’s favor, as this excerpt from the decision makes clear:

 

The declarations of Accolade's employees indicate, and the district court found, that Accolade copied Sega's software solely in order to discover the functional requirements for compatibility with the Genesis console -‑ aspects of Sega's programs that are not protected by copyright.  17 U.S.C. § 102(b).  With respect to the video game programs contained in Accolade's game cartridges, there is no evidence in the record that Accolade sought to avoid performing its own creative work.  Indeed, most of the games that Accolade released for use with the Genesis console were originally developed for other hardware systems.  Moreover, with respect to the interface procedures for the Genesis console, Accolade did not seek to avoid paying a customarily charged fee for use of those procedures, nor did it simply copy Sega's code; rather, it wrote its own procedures based on what it had learned through disassembly.  Taken together, these facts indicate that although Accolade's ultimate purpose was the release of Genesis‑compatible games for sale, its direct purpose in copying Sega's code, and thus its direct use of the copyrighted material, was simply to study the functional requirements for Genesis compatibility so that it could modify existing games and make them usable with the Genesis console.  Moreover, as we discuss below, no other method of studying those requirements was available to Accolade.  On these facts, we conclude that Accolade copied Sega's code for a legitimate, essentially non‑exploitative purpose, and that the commercial aspect of its use can best be described as of minimal significance.[76]

 

Thus did economic considerations, particularly the absence of evidence of unfair free-riding, come into play in the purpose-of-the-use analysis in Sega v. Accolade. 

 

            Sega’s main argument concerning the nature-of-the-copyrighted-work factor was that Accolade had unfairly sought access to Sega’s unpublished work, that is, to the source code form of Sega’s program where interface information was to be found.[77]  Here too, Sega relied upon an earlier U.S. Supreme Court decision for a presumption of unfairness.  In Harper & Row Pub. v. The Nation Enterprises, Inc., the Court had rejected The Nation’s fair use defense mainly because the magazine had published excerpts from Gerald Ford’s as yet unpublished memoirs, thereby unfairly “scooping” the right of first publication.[78]  The Ninth Circuit contrasted the widespread availability of Sega programs with the unavailability of the Ford memoirs, no copy of which had been distributed to the general public at the time of the Nation’s publication of the excerpts.[79]  The Ninth Circuit’s analysis of the nature-of-the-work factor focused on the fact that decompilation or disassembly of a program was sometimes the only way to get access to information contained in the text of this kind of copyrighted work:

 

If disassembly of copyrighted object code is per se an unfair use, the owner of the copyright gains a de facto monopoly over the functional aspects of his work -‑ aspects that were expressly denied copyright protection by Congress.  17 U.S.C. § 102(b).  In order to enjoy a lawful monopoly over the idea or functional principle underlying a work, the creator of the work must satisfy the more stringent standards imposed by the patent laws.  [citation omitted]  Sega does not hold a patent on the Genesis console.  Because Sega's video game programs contain unprotected aspects that cannot be examined without copying, we afford them a lower degree of protection than more traditional literary works.[80] 

 

Here too is evidence that the court considered the economic impact of a ruling in Sega’s favor when analyzing the nature-of-the-copyrighted-work factor of fair use.   

 

            Sega met with more success in its argument on the third fair use factor.  Making a copy of the whole of a copyrighted work, as typically occurs in the process of decompiling or disassembling a program, unquestionably weighs against fair use.  Moreover, decompilation and disassembly typically involves making numerous copies of the program being studied.  However, as the Ninth Circuit pointed out, the amount and substantiality of the taking is only one factor in the fair use determination and does not by itself dictate a finding that a use is unfair.[81]  Moreover, the substantiality of the copying was undercut to some degree by the intermediate nature of the copies.  That is, the copies were made in order to study the text of the program, not in order to extract expression from the Sega program for reuse in a competing work.  The economic significance of these intermediate copies was minimal.[82]

 

            The harm-to-the-market factor is often said to be the most important of the fair use factors.[83]  Unsurprisingly, analysis of this factor is where economic reasoning tends to be most visible in fair use analysis.  While harm to the market has sometimes been presumed in cases involving commercial uses of copyrighted works,[84] Sega did not rely on presumptions alone to argue that the fourth factor weighed against a finding of fair use.  Rather, it insisted that the directly competitive nature of Accolade’s programs would harm the actual or potential market for Sega’s own games.[85]  However, the Ninth Circuit took a different view of the harm factor.

 

By facilitating the entry of a new competitor, the first lawful one that is not a Sega licensee, Accolade's disassembly of Sega's software undoubtedly "affected" the market for Genesis‑compatible games in an indirect fashion.  ***  [But] there is no basis for assuming that Accolade's "Ishido" has significantly affected the market for Sega's "Altered Beast", since a consumer might easily purchase both; nor does it seem unlikely that a consumer particularly interested in sports might purchase both Accolade's "Mike Ditka Power Football" and Sega's "Joe Montana Football", particularly if the games are, as Accolade contends, not substantially similar.  In any event, an attempt to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression and cannot constitute a strong equitable basis for resisting the invocation of the fair use doctrine.[86] 

 

If Accolade’s programs did harm the market for some Sega games because the consuming public found them to be more enjoyable than the Sega games, the court regarded this as the very kind of economic competition among noninfringing works that copyright law sought to promote.[87]

 

In Sega the Ninth Circuit considered more than the four statutory fair use factors in determining that decompilation or disassembly was fair use.  The fair use provision makes clear that other factors can be considered in an appropriate case.[88]  This excerpt reveals other factors on the court’s mind:

 

In determining whether a challenged use of copyrighted material is fair, a court must keep in mind the public policy underlying the Copyright Act.  "'The immediate effect of our copyright law is to secure a fair return for an "author's" creative labor.  But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.'"  Sony Corp., 464 U.S. at 432 (quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975)).  When technological change has rendered an aspect or application of the Copyright Act ambiguous, "'the Copyright Act must be construed in light of this basic purpose.'"  Id.  As discussed above, the fact that computer programs are distributed for public use in object code form often precludes public access to the ideas and functional concepts contained in those programs, and thus confers on the copyright owner a de facto monopoly over those ideas and functional concepts.  That result defeats the fundamental purpose of the Copyright Act -‑ to encourage the production of original works by protecting the expressive elements of those works while leaving the ideas, facts, and functional concepts in the public domain for others to build on.[89]

 

Neither Congress nor the National Commission on New Technological Uses of Copyrighted Works (CONTU) that recommended the use of copyright law to protect computer programs[90] had considered whether decompilation should be lawful for interoperability or other purposes, but the fair use doctrine provided a framework within which this question could be dealt with in a manner consistent with the underlying purposes of copyright law.[91]  Sega v. Accolade is, in fact, one of several new technology cases to employ fair use as an adaptive mechanism for copyright law.[92] 

 

Concerns about the monopolistic effects of an overbroad scope of copyright protection for computer programs also influenced the First Circuit Court of Appeals decision in Lotus Dev. Corp. v. Borland Int’l, Inc.[93]  Lotus sued Borland because the latter’s Quattro Pro (QP) program provided users with an “emulation” interface allowing those accustomed to Lotus 1-2-3 to invoke the same commands to perform the same functions.  Borland asserted that its incorporation of the Lotus command hierarchy into the QP emulation interface was necessary to enable users who had invested in constructing macros in the 1-2-3 macro command language to be able to continue to make use of these macros to perform previously specified sequences of spreadsheet functions.  Reproducing the same commands in the same order was, as the trial judge had indicated in a previous ruling, “a fundamental part of the functionality of the Lotus macro system.”[94]  Borland argued that the Lotus macro system was the kind of “system” that Congress had meant to make unprotectable when enacting section 102(b).  Although the First Circuit agreed that users should be able to make use of macros constructed through use of Lotus 1-2-3, the First Circuit rejected Borland’s “system” argument, deciding instead that the Lotus command hierarchy was an unprotectable “method of operation” under section 102(b).[95]  Judge Stahl’s majority opinion pointed out that users operate spreadsheet programs by invoking commands presented by the programs’ user interface in much the same way as users operate VCRs by pushing buttons presented by that machine’s user interface.[96] 

 

Judge Boudin’s concurring opinion in Lotus v. Borland made explicit some economic considerations that were implicit in Judge Stahl’s opinion.  Particularly of concern to him were the societal costs of “mistakes” as to the scope of copyright protection in different kinds of cases.

 

Most of the law of copyright and the "tools" of analysis have developed in the context of literary works such as novels, plays, and films. In this milieu, the principal problem—simply stated, if difficult to resolve—is to stimulate creative expression without unduly limiting access by others to the broader themes and concepts deployed by the author. The middle of the spectrum presents close cases; but a "mistake" in providing too much protection involves a small cost:  subsequent authors treating the same themes must take a few more steps away from the original expression.

 

The problem presented by computer programs is fundamentally different in one respect. The computer program is a means for causing something to happen; it has a mechanical utility, an instrumental role, in accomplishing the world's work. Granting protection, in other words, can have some of the consequences of patent protection in limiting other people's ability to perform a task in the most efficient manner. Utility does not bar copyright (dictionaries may be copyrighted), but it alters the calculus.[97]

 

Judge Boudin thought that “the ‘cost’ side of the equation may be different where one places a very high value on public access to a useful innovation that may be the most efficient means of performing a given task.”[98]  

 

This thought led Judge Boudin to consider whether legal protection for the Lotus command hierarchy might better be provided by the patent system. 

 

Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs--macros--in reliance upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use. [citation omitted]  The QWERTY keyboard is nothing other than a menu of letters.

 

Thus, to assume that computer programs are just one more new means of expression, like a filmed play, may be quite wrong. The "form"--the written source code or the menu structure depicted on the screen--look hauntingly like the familiar stuff of copyright; but the "substance" probably has more to do with problems presented in patent law or, as already noted, in those rare cases where copyright law has confronted industrially useful expressions. Applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces do not quite fit.

 

***

 

If Lotus is granted a monopoly on this pattern, users who have learned the command structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a typist who has learned the QWERTY keyboard would be the captive of anyone who had a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3 has had such sway in the market that it has represented the de facto standard for electronic spreadsheet commands.[99]

 

Although Judge Boudin does not use the term “network effects” to describe the “lock-in” to a single product that can occur when users have invested a great deal in learning and using a particular command hierarchy, commentators on the Borland decision have used this term to explain the economic effects that broad copyright protection for program innovations such as command hierarchies may have.[100]   

 

            As long as the Lotus product was superior in design and functionality, Judge Boudin did not find it objectionable that Lotus should enjoy the benefits of these network effects.  However, the Borland program had won numerous awards for its innovations.  This caused the judge to think that “if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus. Lotus has already reaped a substantial reward for being first; assuming that the Borland program is now better, good reasons exist for freeing it to attract old Lotus customers: to enable the old customers to take advantage of a new advance, and to reward Borland in turn for making a better product.”[101]  For Judge Boudin, the question was not whether Borland should win the lawsuit, but on what basis.  He considered whether the court should create a new privilege to allow significant improvements on existing software products, the nearest analog to which was the fair use doctrine.[102]  However, Judge Boudin realized that creating a new privilege would produce problems of its own,[103] and ultimately concluded that the majority opinion had found a plausible way to achieve the desired result.[104] 

 

            It is difficult to know how a European court would rule on claims such as those presented by Lotus against Borland.  The European software directive does not really address user interface issues.[105]  Because Continental European nations tend to have a relatively high originality standard,[106] courts in these countries might conclude that a command hierarchy, particularly one that used many terms common to spreadsheet programs, would not qualify for protection.  However, some creativity and judgment went into the design of the command hierarchy, perhaps enough to qualify for protection.  Whether a macro compatibility defense based on the unprotectability of program elements necessary for interoperability would succeed is also difficult to predict. 

 

Even if European courts reached the same result in Lotus v. Borland, they would be unlikely to do so for reasons given in either the Stahl or Boudin opinions.  Some subsequent cases have followed the Borland ruling,[107] while others have questioned it.[108]  What is noteworthy is that Borland, along with Altai and Sega, has validated drawing upon economic reasoning to consider how broad or narrow the scope of copyright should be for computer programs.  Some American commentators suggest that economic analysis should more frequently be used in resolving a wide range of copyright matters.[109]  Although economic analysis is unlikely to displace traditional doctrinal analysis in American copyright cases, increasing reliance on economic reasoning is likely to supplement traditional doctrinal analysis.  Most American commentators would regard this to be a healthy and positive development.[110] 

 

III.               CONSTITUTIONAL INFLUENCES IN AMERICAN COPYRIGHT LAW

 

Another respect in which American copyright law is distinguishable from European authors’ rights laws is in the grounding of American copyright law in that nation’s constitution.  The influence of the U.S. Constitution on American copyright law mainly comes from Article I, section 8, clause 8, which grants power to the Congress to enact legislation “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right in their respective writings and discoveries.”   However, the First Amendment’s free speech and free expression guarantees also have implications for the contours of copyright law in the United States.[111]  At least two other constitutional provisions occasionally manifest themselves in copyright and other intellectual property disputes, namely, the Supremacy Clause of the U.S. Constitution, which U.S. courts sometimes invoke to strike down state laws that conflict with federal law or policy,[112] and the Eleventh Amendment, which the Supreme Court recently decided limited the power of federal courts to order state governments to pay damages for infringement of federal intellectual property rights, such as copyright.[113] 

 

              The Constitution not only grants power to Congress enabling it to enact intellectual property legislation, but it also limits that power.[114]  Rights, for example, can only be granted “for limited times.”[115]  Another check on constitutional power arguably lies in the purpose for which Congress can pass such legislation:  to promote the progress of science and useful arts.[116]  Courts have also perceived the Constitution limiting the class of persons eligible to qualify for exclusive rights.  The U.S. Supreme Court in Graham v. John Deere Co. construed the Constitution as enabling Congress to grant exclusive rights only to “inventors” of new technologies, not to mere incremental innovators.[117]  More recently, the Supreme Court in Feist Pub., Inc. v. Rural Telephone Service Co. stated that Congress did not have constitutional power to protect unoriginal works under copyright law.[118]  This decision has fueled much of the ongoing debate about whether the U.S. Congress can constitutionally enact legislation to create a sui generis form of protection to databases akin to that adopted by the European Union in its 1996 directive on the legal protection of databases.[119] 

 

            When European authors’ rights specialists ruminate on the Supreme Court’s Feist opinion, they may view the decision as an affirmation of the Continental European standard of originality and as a repudiation of the utilitarian “sweat of the brow” rationale that had long been used to justify copyright in fact-intensive works in the U.S. and U.K.[120]  The Supreme Court did, of course, reject “sweat of the brow” copyrights when deciding that the white pages listings of telephone directories lacked sufficient creativity and judgment to qualify for copyright protection, thereby endorsing a creativity-based standard of originality.  However, there were both statutory and constitutional reasons for the Court’s decision that distinguish this American ruling from Continental European authors’ rights concepts.[121]  Not just once, but thirteen times, did the Court invoke the U.S. Constitution as a grounding of its decision.[122]  The Court regarded the Constitution as requiring a creativity-based standard for originality; that is, in order for a compilation to be considered a “writing,” and for its compiler to be considered an “author,” under the Constitution, that work must evidence a modicum of human creativity or judgment.[123] 

 

The Court also invoked the constitutional purposes of copyright law in explaining its rationale for rejecting “sweat of the brow” copyrights:

 

It may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation.  As Justice Brennan has correctly observed, however, this is not ‘some unforeseen byproduct of a statutory scheme.’  [citation omitted]  It is, rather, ‘the essence of copyright,’ ibid., and a constitutional requirement.  The primary objective of copyright is not to reward the labor of authors, but to ‘promote the Progress of Science and useful Arts.’ Art. I, sec. 8, cl. 8.  *** To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.[124]

 

Although saying that “raw facts can be copied at will,”[125] the Court nevertheless opined that unfair competition law was an appropriate way to protect fact compilers against certain market-destructive appropriations.  It cited approvingly to an earlier unfair competition ruling in International News Service v. Associated Press that had enjoined INS’s misappropriation of news from early editions of AP newspapers that INS republished without permission or compensation in competing newspapers.[126] 

 

            The implications of the constitutional analysis in Feist for sui generis legislation to protect the contents of databases are obvious.[127]  If the U.S. Congress lacks power under Article I, section 8, clause 8, to extend copyright protection to “sweat of the brow” compilations, it presumably cannot achieve essentially the same result by creating a sui generis intellectual property regime to protect these compilations under that clause.[128]  The Constitution, after all, does not mention copyright as the kind of law Congress can enact.  Rather, it speaks of giving Congress power to confer exclusive rights on “authors,” and Feist has made clear that this term does not include compilers of “sweat of the brow” works.  The century-old Trademark Cases, which the Supreme Court cited approvingly in Feist, suggest that if Congress lacks power under Article I, section 8, clause 8, to enact legislation creating an intellectual property right as to a subject matter that cannot meet the substantive criteria of Article I, section 8, clause 8, it cannot circumvent the substantive restrictions of that clause simply by invoking a different clause of the Constitution, such as the commerce clause.[129]  An unfair competition-based legal regime could easily be justified under the commerce clause.  However, there is some disagreement among American scholars over whether the commerce clause enables Congress to enact an intellectual property statute.[130] 

 

            The constitutional analysis in Feist helps to explain why the U.S. has struggled so much over legislative proposals to provide a new form of legal protection for the contents of databases akin to the sui generis right of the European database directive.[131]  Shortly after the E.U. adopted this directive in 1996, a bill closely modeled on the sui generis right in that directive, H.R. 3531, was introduced in the House.[132]  This bill would have been vulnerable to constitutional challenge based not only on Article I, section 8, clause 8, but also on the First Amendment.[133]   To grant an exclusive right in the data in databases raises, for some American commentators, free speech and free expression concerns.

 

 In response to these constitutional concerns, subsequent legislative proposals, including the currently pending H.R. 354, have sought to characterize themselves as unfair competition bills.[134]  H.R. 354 is, for instance, known as “The Collections of Information Anti-piracy Act.”  Instead of setting forth a set of exclusive rights along with certain limitations or exceptions to these rights, as intellectual property statutes would do, H.R. 354 states two “prohibitions” (extracting all or a substantial part of another’s compilation and making extracted information available to others) along with certain “permitted acts” (e.g., extracting information for news reporting purposes).[135]  It is, however, simple to restate the basic prohibitions and permitted acts of H.R. 354 in intellectual property terms, that is, as a grant of two exclusive rights, one to control the extraction of all or a substantial part of a database and the other to control making publicly available all or a substantial part of another’s compilation, plus certain exceptions to these rights, such as that for news reporting.  For this and other reasons, some American scholars regard H.R. 354 as an intellectual property law masquerading as an unfair competition law.[136]  The principal alternative bill, H.R. 1858, would outlaw only the duplication of another person’s database that the duplicator then sold or distributed in competition with the person who initially compiled that database.[137] H.R. 1858 would more clearly be constitutional as a regulation of unfair competition because it more closely resembles the INS decision the Supreme Court cited approvingly in Feist.[138] 

 

            Database protection is only one of a number of issues attracting constitutional analysis from American copyright scholars.  Some years ago, when the Third Circuit’s Whelan v. Jaslow decision was influential, a copyright scholar warned that the broad scope of copyright protection envisioned there would chill free expression in the field of computer programming.[139]    A number of scholars have warned that a broad interpretation of the derivative work right in American copyright law would have deleterious effects on free expression and free speech interests embodied in both the First Amendment and in Article I, section 8, clause 8.[140] 

 

In addition, some scholars offer a constitutionally-based explanation for much of fair use law because it enables reuse of portions of copyrighted works to promote free speech and free expression values.[141]  Subsequent authors, the theory goes, need to be able to reproduce portions of earlier works in order to engage in critical commentary on those works, sometimes even to poke fun at other authors.  Free speech/free expression values also explain why the moral rights provision in American copyright law for certain “works of visual art” is subject to a fair use limitation.[142]   Some American copyright scholars worry that a broad moral rights law would interfere with free speech and free expression values.[143]  Some American scholars believe that the First Amendment’s strong policy against prior restraints on speech should be respected more frequently in copyright cases, particularly at the preliminary injunction stage.[144]  Too often, these authors argue, irreparable harm is assumed in copyright cases when it should be proven.  Some American scholars also view constitutionally-based free speech/free expression values as grounds for overriding provisions of shrinkwrap or clickthrough licenses for digital information insofar as they purport to waive fair use rights, forbid disclosure of flaws in the product, or bind the user not to criticize the product or service.[145] 

 

Free speech/free expression values were also significant in Congressional repudiation of the Clinton Administration’s proposal to make online service providers strictly liable for user infringement.[146]  Congress heeded these concerns in structuring a set of “safe harbor” rules for OSPs in the Digital Millennium Copyright Act (DMCA).[147]  To a lesser degree, it heeded expressions of concern about threats to First Amendment values arising from DMCA provisions that outlawed the circumvention of technical protection systems used by copyright owners to protect their works.[148]  At least one American scholar believes that the DMCA’s anti-circumvention regulations are constitutionally deficient.[149] 

 

             Constitutional analysis may also be important in establishing boundaries between copyright and patent protection.  This boundary is particularly vexing and unclear in respect of computer program innovations.[150]  Economic reasons certainly exist for finding separate roles for patents and copyrights in the protection of computer program innovations.[151]  Given the substantial disparity in the costs and difficulty in obtaining patents as compared with copyrights, the higher standards and shorter term of patents as compared with copyrights, the disclosure that patent law requires that copyright does not, and economic reasons for these and other distinctions between the copyright and patent systems, it is reasonable to conclude that if a programmer decides not to seek a patent on, for example, a new algorithm or functional design for a program—either because he does not think it is inventive enough to qualify or he wants to keep it secret—he should not be able to get copyright protection for it merely by claiming it is part of the expressive structure of his program. 

 

This principle was thoughtfully explored in the famous 19th century Baker v. Selden case that, as will become evident, has constitutional underpinnings.[152]  Selden published a series of books about a new bookkeeping system he had devised.  After Baker published a work containing very similar ledger sheets to those in Selden’s books, Selden sued for copyright infringement and won at the trial court level.  Selden claimed that “the ruled lines and headings, given to illustrate the system, are part of the book and, as such, are secured by the copyright; and that no one can make or use similar ruled lines and headings, or ruled lines and headings made and arranged on substantially the same system, without violating the copyright.”[153]  The Court found this contention difficult to accept:

 

There is no doubt that a work on the subject of book-keeping, though only explanatory of well-known systems, may be the subject of copyright; but then it is claimed only as a book.  Such a book may be explanatory either of old systems, or of an entirely new system; and considered as a book, as the work of an author, conveying information on the subject of book-keeping, and containing detailed explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community.  But there is a clear distinction between the book, as such, and the art which it is intended to illustrate. *** A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. ***  To give the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever officially been made, would be a surprise and fraud upon the public.  That is the province of letters-patent, not of copyright.[154] 

 

The Court’s concern about separate domains for patent and copyright law was apt in Baker v. Selden because Selden had, in fact, sought to patent his book-keeping system.  Baker’s lawyer argued that this demonstrated that the book-keeping system was a contribution to the “useful arts,” and hence was properly protected by patent law, not by copyright.[155]  This argument evidently resonated with the Court.

 

The Supreme Court’s decision in Baker v. Selden implicitly embodies a constitutionally based rationale for keeping the domains of copyright and patent separate.  Recall that Article I, section 8, clause 8, empowers Congress to enact laws “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right in their respective writings and discoveries.”  One common interpretation of this clause holds that it conveniently embodies two separate rules:  one granting Congress power to give exclusive rights to  “authors” in their “writings” in order to promote “science” (that is, knowledge), and the other giving Congress power to confer exclusive rights on “inventors” as to their “discoveries” in order to promote “useful arts” (that is, technology).[156]  The word “respective” in the constitutional clause strongly supports the view that an author’s writings and an inventor’s useful discoveries are separate classes of innovations.  This bifurcated understanding of the constitutional realms of patent and copyright law is evident in Baker v. Selden.  Under the Supreme Court’s analysis in Baker v. Selden, it is doubtful, for example, that Congress would have constitutional power to extend copyright protection to medicines, ploughs, or book-keeping systems, even if these innovations were embodied in writings, because the Court conceptualized them as “useful arts” that the Constitution had consigned to the patent domain.[157] 

 

Conflicts about the domain of patents and copyrights generally do not arise in the U.S. because the subject matter provisions of patent and copyright law are quite distinct.  Mechanical devices, for example, do not qualify for copyright protection in the U.S. because even if original in a copyright sense, they have functions beyond the conveying of information or displaying of an appearance that render them ineligible for copyright protection as useful articles.[158]  Consistent with Baker v. Selden, a special provision of U.S. copyright law makes clear that the copyright in a drawing of a useful article does not confer rights to control manufacture of the useful article depicted therein.[159]  Mechanical devices do, however, qualify as “machines” under the subject matter provision of U.S. patent law.[160] 

 

If patent and copyright laws have separate domains in the legal protection of other innovations, it would seem they should also have separate domains in the protection of computer program innovations.  The text of a computer program may be an “original work of authorship” that qualifies for copyright protection.[161]  However, algorithms and other functional designs embodied in program texts should be protectable, if at all, through the patent system, even though they can be described as components of the structure, sequence, and organization of programs.[162]  Such a conclusion is especially appropriate under U.S. law because of section 102(b) directs that courts exclude “processes, procedures, systems, [and] methods of operation” from the scope of copyright protection.[163]  But even before this exclusion was made part of the U.S. copyright statute, the constitutional backdrop of the American copyright and patent traditions and the analysis in Baker v. Selden provided courts with ample reason to exclude processes and systems from the scope of copyright protection.[164]

 

              Although the constitutional analysis discussed in this section may seem quite strange to Europeans, it is characteristic of American discourse on intellectual property matters.  American scholars pay attention to the Constitution in part because they perceive the founders to have imposed certain limits on Congressional power—for example, limiting Article I, section 8, clause 8, to “authors” and “inventors”—to ward off possible repetition of historical experiences preceding the Constitution in which copyright and patent powers had been abused.  At one time, monopolistic publishers claimed perpetual rights to control over the printing of ancient as well as new works, and monopolistic patent holders claimed exclusive rights to control the manufacture of well-known items.  The Statute of Anne in 1710 repudiated the unwarranted copyright claims, conferring a short period of rights only on writers of new works,[165] just as the Statute of Monopolies in 1623 repudiated the unwarranted patent claims, limiting the power of the sovereign to confer patents only for inventions in the useful arts.[166]  By speaking of “authors” and “inventors” in the Constitution, the founders wanted to ensure that the economic problems that had once beset the patent and copyright systems in England did not recur in the U.S..  There is a strong resonance between the utilitarian tradition discussed in the first section of this essay and the constitutional tradition discussed in this second section.  This should not be surprising given that the U.S. Constitution is a profoundly economic document.[167] 

 

IV.              CONCLUSION

 

European intellectual property specialists may perceive that American copyright law is moving towards convergence with European authors’ rights laws in some significant respects.  Formalities, such as requiring copyright notices on all published copies of protected works, although not entirely eradicated from U.S. copyright law, are nevertheless on the wane.[168]  The U.S. Congress has amended copyright law in ways that conform to rules in authors’ rights jurisdictions, for example, restoring copyrights to foreign nationals who had lost their rights because of a failure to comply with U.S. formalities, extending copyright protection to architectural works, and adopting moral rights protection for works of visual art.[169]  Certain judicial decisions, such as the U.S. Supreme Court’s decision in Feist, have also reached conclusions in accord with European precepts. 

 

However, it may be inaccurate to interpret these signs of convergence as presenting an unwavering trajectory toward authors’ rights law.  The utilitarian rationale for American copyright law remains strong in American copyright law, and manifests itself in many domains, such as the work for hire doctrine, the fair use doctrine, and the narrow scope of moral rights law.  Because they are grounded in economic thinking, these doctrines are among the features of American copyright law that are quite unlikely to change toward the European authors’ rights model.  Courts in the U.S. are also employing economic reasoning in interpreting the proper scope of copyright protection for computer programs.  This may prefigure a wider use of economic reasoning in American copyright cases. 

 

In addition, the U.S. Constitution imposes an intellectual framework on the thinking of American intellectual property specialists that differs profoundly from the conceptual framework of authors’ rights laws.  The main constitutional provision that influences American copyright law is Article I, section 8, clause 8, which grants power to the U.S. Congress to enact legislation to give exclusive rights to authors and inventors.  However, the First Amendment and certain other constitutional provisions affect copyright rulings in some circumstances.  Because the Constitution is such a seminal document in the United States’ legal tradition, constitutional influences on American copyright law seem likely to abide over time. 

 

The principal goal of this essay has been to acquaint European intellectual property specialists with two interrelated influences—economics and the Constitution—that affect the formation and interpretation of American copyright law.  Even if European readers do not agree or sympathize with American thinking, perhaps they will, after reading this essay, be somewhat less mystified about the American mindset about copyright law.  If our laws do not converge completely, perhaps we can try to understand one another’s perspectives better.


* Professor of Law and Information Management, University of California at Berkeley.  The author wishes to thank Jason Schultz and Leah Theriault for their research work on this article.  Research support for this article was provided by NSF Grant No. SES 9979852. 

[1] See Berne Convention for the Protection of Literary and Artistic Works, September 9, 1886, as last revised at Paris, July 24, 1971, and amended in 1979, 828 U.N.T.S. 221 [hereinafter Berne Convention]; The U.S. acceded to the Paris revision of the Berne Convention on March 1, 1989.

[2] See Berne Implementation Act, Pub.L. No. 100‑568, 102 Stat. 2853 (1988); Visual Artists Rights Act of 1990, Pub.L. No. 101‑650, tit. VI, 104 Stat. 5128 (codified as 17 U.S.C. § 106A (Supp. II 1990)) [hereinafter VARA]; Architectural Works Copyright Protection Act, Pub.L. No. 101-650, tit. VII, 104 Stat. 5133.  Foreign copyrights that had fallen into the public domain in the U.S. because of a failure to comply with formalities were restored by two acts: the North American Free Trade Agreement Implementation Act, Pub. L. No. 103-182, Sec. 334(a), 107 Stat. 2115 (gave protection to public domain motion pictures of NAFTA signatories); and the Uruguay Round Agreements Act, Pub. L. No. 103-465, Sec. 514, 108 Stat. 4976 (restored the copyright in all works which had entered the public domain due to a failure to comply with formalities, treating them as if they had never entered the public domain for the purposes of calculating their term of protection).

[3] 499 U.S. 340 (1991).

[4] See, e.g., George Metaxas, Protection of Databases: Quietly Steering in the Wrong Direction?, 7 Eur. Intell. Prop. Rev. 227, 228, 233 (1990) (electronic databases not sufficiently protected by the copyright law of most European Union members because they do not meet the originality requirement); accord, Jean Hughes & Elizabeth Weightman, EC Database Protection: Fine Tuning the Commission's Proposal, 5 Eur. Intell. Prop. Rev. 147 (1992).

[5] See Agreement on Trade‑Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments‑‑Results of the Uruguay Round vol. 31, 33 I.L.M. 81 (1994); WIPO Copyright Treaty, adopted Dec. 20, 1996, WIPO Doc. CRNR/DC/94; WIPO Performances and Phonograms Treaty, adopted Dec. 20, 1996, WIPO Doc. CRNR/DC/95; Agreed Statements Concerning the WIPO Copyright Treaty, adopted Dec. 20, 1996, WIPO Doc. CRNR/DC/96.

[6] See, e.g., INTERNATIONAL INTELLECTUAL PROPERTY ALLIANCE, COPYRIGHT INDUSTRIES IN THE U.S. ECONOMY: THE 1998 REPORT (Exports of copyright-related products and services are increasing at an impressive rate - in 1996 their value surpassed that of every other export sector in the United States.)

[7] Alain Strowel, Droit d’auteur and Copyright: Between History and Nature, in, OF AUTHORS AND ORIGINS: ESSAYS ON COPYRIGHT LAW 235 (Brad Sherman & Alain Strowel, eds., 1994) (discussing the historical development of commonalities between droit d’auteur and utilitarian copyright regimes); Jane C. Ginsburg, A Tale of Two Copyrights: Literary Property in Revolutionary France and America, in, OF AUTHORS AND ORIGINS: ESSAYS ON COPYRIGHT LAW 131, 137-38 (Brad Sherman & Alain Strowel, eds., 1994) (noting that historical origin of American copyright law contains both natural rights and utilitarian impulses).

[8] Berne Convention, supra note 1, Art. 6bis.  Don’t hold your breath. 

[9] See infra notes 13-110 and accompanying text.

[10] See infra notes 111-157 and accompanying text.

[11] See infra notes 165-167 and accompanying text.

[12] See, e.g., L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 VAND. L. REV. 1 (1987); MARK ROSE, AUTHORS AND OWNERS--THE INVENTION OF COPYRIGHT (1993).

[13] See, e.g., Wendy J. Gordon, Asymmetric Market Failure and Prisoner's Dilemma in Intellectual Property, 17 U. Dayton L. Rev. 853 (1992); Peter S. Menell, Intellectual Property: General Theories, in ENCYCLOPEDIA OF LAW & ECONOMICS  (forthcoming); Robert P. Merges, The End of Friction? Property Rights and Contract in the "Newtonian” World of On-Line Commerce, 12 Berkeley Tech. L.J. 115 (1997); J.H. Reichman, Legal Hybrids Between The Patent and Copyright Paradigms, 94 COLUM. L. REV. 2432 (1994).

[14] See, e.g., Gordon, supra note 13 at 854-5.

[15] See, e.g., Menell, supra note 13.

[16] 17 U.S.C. sec. 201.  See, e.g., Rochelle C. Dreyfuss, The Creative Employee and the Copyright Act of 1976, 54 U. CHI. L. REV. 590, 594-7 (1987).

[17] In France, for example, the only exception to this rule arises in the case of collective works.  See PAUL GELLER & MELVILLE NIMMER, INTERNATIONAL COPYRIGHT LAW & PRACTICE § 4[1] (1988) [hereinafter Geller & Nimmer].  However, the widespread practice in Europe of employees assigning rights to employers may, as a practical matter, lessen the practical differences.

[18] See, e.g., Roberta R. Kwall, Copyright And The Moral Right: Is An American Marriage Possible?, 38 Vand. L. Rev. 1, 27-28 (1985) (discussing why U.S. law has resisted moral rights).  VARA, supra note 2, which provides moral rights to creators of certain types of visual art, is an exception to the general absence of explicit moral rights in U.S. copyright law.

[19] American movie executives, for example, would certainly regard the fate of colorized movies in French courts as an impediment to their legitimate business arrangements.  See Huston v. Societe de l'Exploitation de la Cinquieme Chaine, 1991 Cass. le civ., 149 REVUE INTERNATIONALE DU DROIT D'AUTEUR 197 (1991) (granting injunction barring the broadcast of colorized John Huston movie because it impaired author’s right of integrity - even though the author no longer owned the copyright in the film).

[20] See, e.g., INFORMATION INFRASTRUCTURE TASK FORCE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, INTELLECTUAL PROPERTY RIGHTS AND THE NATIONAL INFORMATION INFRASTRUCTURE, 133-4, 145-7  (Sept. 1995) available at <http://www.uspto.gov/web/offices/com/doc/ipnii/> [hereinafter White Paper] (discussing the difficulty of reconciling moral rights with the business practices of American entertainment and publishing industries).

[21] 17 U.S.C. sec. 101, 113.  For an explanation, see, e.g., Jerome H. Reichman, Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976, 1983 DUKE L.J. 1143 (1983).

[22] In France, for example, this aspect of copyright law arises from the ‘unity of art’ principle, which eschews dividing works of art into categories based on use.  See Geller & Nimmer, supra note 17 at § 2[1][b][i][D].

[23] 17 U.S.C. sec. 107.  See, e.g., Wendy J. Gordon, Fair Use as Market Failure: A Structural and Economic Analysis of the Betamax Case and Its Predecessors, 82 Colum. L. Rev. 1600 (1982); Merges, Friction, supra note 13 at 133.

[24] 464 U.S. 417 (1984).

[25] See, e.g., Gordon, supra note 23, at 1618.

[26] 510 U.S. 569 (1994).

[27]  See e.g., Robert P. Merges, Are You Making Fun of Me? Notes on Market Failure and the Parody Defense in Copyright, 21 AIPLA Q.J. 305 (1993).

[28] France, for example, has a codified parody exception, but it is often difficult to invoke because it requires a comic intent.  See Geller & Nimmer, supra note 17 at § 8[2][a][iii].   

[29] See, e.g., Mark A. Lemley, Convergence in the Law of Software Copyright?, 10 HIGH TECH. L.J. 1 (1995) [hereinafter Convergence]; Peter S. Menell, An Analysis of the Scope of Copyright Protection for  Application Programs, 41 Stan. L. Rev. 1045 (1989); Glynn S. Lunney, Jr., Essay Lotus v. Borland: Copyright and Computer Programs, 70 Tul. L. Rev. 2397 (1996).

[30] See, e.g., Jane C. Ginsburg, Comment:  Four Reasons and a Paradox: The Manifest Superiority of Copyright Over Sui Generis Protection of Computer Software, 94 COLUM. L. REV. 2559 (1994); Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer- Generated Works: Is Anything New Since CONTU?, 106 HARV. L. REV. 977 (1993).

[31] See, e.g., Dennis S. Karjala, A Coherent Theory for the Copyright Protection of Computer Software and Recent Judicial Interpretations, 66 U. CIN. L. REV. 53 (1997); Lemley, Convergence, supra note 29; Pamela Samuelson, Fair Use for Computer Programs and Other Copyrightable Works in Digital Form: The Implications of Sony, Galoob and Sega, 1 J. Intell. Prop. L. 49, 91-5 (1993).

[32] 797 F.2d 1222 (3rd Cir. 1986).

[33] See Council Directive 91/250 on the Legal Protection of Computer Programs, 1991 O.J. (L 122) 42 [hereinafter European Software Directive].

[34] See, e.g., Pamela Samuelson, Comparing U.S. and EC Copyright Protection for Computer Programs: Are They More Different Than They Seem?, 13 J.L. & COM. 279, 290-1 (1994).

[35] See, e.g., BRIDGET CZARNOTA AND ROBERT J. HART, LEGAL PROTECTION OF COMPUTER PROGRAMS IN EUROPE--A GUIDE TO THE EC DIRECTIVE 35-6 (1991) (explaining that the protection of computer programs goes beyond the literal code and encompasses the “structure, sequence and organization of the work as a whole”).

[36] 797 F.2d at 1239-40.

[37] See, e.g., Czarnota and Hart, supra note 35 at 36: “This is entirely in keeping with the jurisprudence, not only in the field of computer programs, but also of literary works more generally, where courts have found that protection of originality lies not only in the words used to express an idea, but in other elements which demonstrate the personal choice of the author, such as the detailed story line or plot.”

[38] 797 F.2d at 1231.

[39] See Brief Amicus Curiae of ADAPSO, The Computer Software and Services Industry Association, Inc., Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc. (Civ. A. No. 85-1358) (1986).

[40] 797 F.2d at 1237.

[41] See, e.g., Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173 (9th Cir. 1989); Lotus Development Corp. v. Paperback Software Int’l, 740 F.Supp 37 (D. Mass 1990).

[42] 982 F.2d 693 (2nd Cir. 1992).

[43] See id. at 702-3.

[44] 797 F.2d at 1240.

[45] 982 F.2d at 708-711.

[46] Id. at 707.

[47] 17 U.S.C. sec. 102(b).

[48] 982 F.2d at 710.

[49] Id. at 711-712.

[50] Id. at 712  (citation omitted).

[51] Id.

[52] Id.

[53] See id.

[54] 977 F.2d 1510 (9th Cir. 1992).  The Ninth Circuit had endorsed Whelan in Johnson Controls.  It repudiated its analysis in Sega, id. at 1524-25.

[55] 977 F.2d at 1527-28; European Software Directive, supra note 33 at 1.2.  Note, however, that the exact status of interfaces under the Directive is not without uncertainty: see, e.g., Alan K. Palmer & Thomas C. Vinje, The EC Directive On The Legal Protection Of Computer Software: New Law Governing Software Development, 2 Duke J. Comp. & Int'l L. 65, 85 (1992) “In general, as long as only the rules and methods of interoperability established by the interface are used and implemented independently in the program code, the program should be held to be noninfringing under the Software Directive. There is, however, one further twist: to make an interface work, meaning to make a product interoperable, it is sometimes necessary to use small portions of a program code that are very similar or identical to expressions found in the program code of existing copyrighted products. The Software Directive does not explicitly address this issue, and there is room for divergence among the member states' laws on this point. However, while the precise legal theory employed may vary from country to country, it seems likely that such similarities in expression will be deemed noninfringing.”

[56] See, e.g., Miller, supra note 30.

[57] Altai, F.2d at 710.

[58] See Palmer & Vinje, supra note 55, n. 34.

[59] Id. at 71-8.

[60] See, e.g., Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879); Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967) (discussing “merger doctrine”).

[61] See, e.g., Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971).

[62] See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).

[63] Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. PITT. L. REV. 1119, 1123 (1986).

[64] See, e.g., Andrew Johnson-Laird, Software Reverse Engineering In The Real World, 19 U. DAYTON L. REV. 843 (1994).

[65] See, e.g., Court’s Findings of Fact, U.S. v. Microsoft, 65 F.Supp.2d 1 (D.D.C. 1999) (No. Civ. 98-1232 (TPJ), Civ. 98-1233 (TPJ)) available at <http://www.microsoft.com/presspass/trial/c-fof/> (detailing various instances in which Microsoft did not make its API’s publicly available).

[66] See, e.g., Sony Computer Entertainment, Inc. v. Connectix Corp, 53 U.S.P.Q.2d 1705 (9th Cir. 2000).

[67] European Software Directive, supra note 33, art. 6.

[68] See, e.g., Sega, 977 F.2d 1510, 1527-8; Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, 843 (Fed.Cir.1992); Connectix, 53 U.S.P.Q.2d 1705.

[69] See also Julie E. Cohen, Reverse Engineering and The Rise Of Electronic Vigilantism: Intellectual Property Implications of "Lock-Out" Programs, 68 S. Cal. L. Rev. 1091 (1995).

[70] 17 U.S.C. sec. 107.  See generally, WILLIAM F. PATRY, THE FAIR USE PRIVILEGE IN COPYRIGHT LAW 413-569 (2d ed. 1995).

[71] See, e.g., Herman Cohen Jehoram, Remarks at the ALAI Study Days (Sep. 14-17 1998).

[72] See, e.g., Samuelson, Fair Use, supra note 31 at 55.

[73] See 785 F. Supp. 1392, 1398, rev’d on appeal, 977 F.2d 1510 (9th Cir. 1992).

[74] 464 U.S. 417, 451, 104 S.Ct. 774, 793, 78 L.Ed.2d 574 (1984).

[75] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994).

[76] 977 F.2d at 1522-23.  The court went on to say:

We further note that we are free to consider the public benefit resulting from a particular use notwithstanding the fact that the alleged infringer may gain commercially.  See Hustler, 796 F.2d at 1153 (quoting MCA, Inc. v. Wilson, 677 F.2d 180, 182 (2d Cir. 1981)).  Public benefit need not be direct or tangible, but may arise because the challenged use serves a public interest.  Id.  In the case before us, Accolade's identification of the functional requirements for Genesis compatibility has led to an increase in the number of independently designed video game programs offered for use with the Genesis console.  It is precisely this growth in creative expression, based on the dissemination of other creative works and the unprotected ideas contained in those works, that the Copyright Act was intended to promote.  See Feist Publications, Inc. v. Rural Tel. Serv. Co., ___ U.S. ___, 111 S. Ct. 1282, 1290, 113 L. Ed. 2d 358 (1991) (citing Harper & Row, 471 U.S. at 556‑57).  The fact that Genesis‑compatible video games are not scholarly works, but works offered for sale on the market, does not alter our judgment in this regard.  We conclude that given the purpose and character of Accolade's use of Sega's video game programs, the presumption of unfairness has been overcome and the first statutory factor weighs in favor of Accolade. 

Id. at 1523.

[77] Id. at 1526 n. 9.

[78] 471 U.S. at 553-55, 105 S.Ct. at 2226-28.

[79] 977 F.2d at 1526 n. 9.

[80] Id. at 1526.

[81] Id. at 1526-27.

[82] Id. at 1527.

[83] See Harper & Row, 471 U.S. at 566.

[84] See supra notes 73-78 and accompanying text.

[85] See Sega, 977 F.2d at 1523-24.

[86] Id.

[87] Id. at 1524.

[88] 17 U.S.C. sec. 107.

[89] Sega, 977 F.2d at 1527.

[90] See NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS, FINAL REPORT (1978).

[91] The Ninth Circuit also rejected Sega’s “sweat of the brow” argument as inconsistent with Feist: 

Sega argues that the considerable time, effort, and money that went into development of the Genesis and Genesis‑compatible video games militate against a finding of fair use. Borrowing from antitrust principles, Sega attempts to label Accolade a "free rider" on its product development efforts.  In Feist Publications, however, the Court unequivocally rejected the "sweat of the brow" rationale for copyright protection. 111 S. Ct. at 1290‑95.  Under the Copyright Act, if a work is largely functional, it receives only weak protection.  "This result is neither unfair nor unfortunate.  It is the means by which copyright advances the progress of science and art."  Id. at 1290; see also id. at 1292 ("In truth, 'it is just such wasted effort that the proscription against the copyright of ideas and facts . . . [is] designed to prevent.'") (quoting Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 310 (2d Cir. 1966), cert. denied 385 U.S. 1009, 87 S. Ct. 714, 17 L. Ed. 2d 546 (1967)); CAI, 23 U.S.P.Q. 2d at 1257.  Here, while the work may not be largely functional, it incorporates functional elements which do not merit protection.  The equitable considerations involved weigh on the side of public access.  Accordingly, we reject Sega's argument. 

Sega, 977 F.2d at 1527.

[92] See also Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F.Supp 1361 (N.D. Cal. 1995); Kelly v. Arriba Soft Corp, 77 F. Supp.2d 1116 (C.D. Cal. 1999); and cases cited in Samuelson, Fair Use, supra note 31.

[93] 49 F.3d 807 (1st Cir.1995), aff'd by an equally divided court, 516 U.S. 233, 116 S.Ct. 804 (1996).

[94] Lotus v. Borland, 799 F.Supp. 203, 213 (D. Mass 1992) (quoting Lotus v. Paperback, 740 F.Supp. 37, 65 (D. Mass. 1990)).  Once the court recognized the functionality of this command hierarchy, it became unprotected as a matter of American copyright law: see, e.g., Pamela Samuelson, Computer Programs, User Interfaces, and Section 102(B) of The Copyright Act of 1976: A Critique of Lotus v. Paperback, 55- LAW & CONTEMP. PROBS. 311, 333-4 (Spring 1992) (“This statement demonstrates that the court recognized that the structure of the commands was part of the Lotus macro system, which, if one was taking section 102(b) seriously, would need to be regarded as outside the bounds of copyright protection.”).

[95] 49 F.3d at 816.

[96] Id. at 817.

[97] Id. at 819.

[98] Id.

[99] Id. at 821.

[100] See, e.g., Mark Lemley and David McGowan, Legal Implications of Network Economic Effects, 86 CALIF. L. REV. 479 (1998).

[101] Borland, 49 F.3d at 821.

[102] Id.

[103] Id.

[104] Id. at 822.

[105] See, e.g., Czarnota and Hart, supra note 35 at 39-43 (explaining that the explicit reference to interfaces that was included in article 1.3 of the Commission’s Proposed Software Directive was removed from the final text of the European Software Directive, supra note 33, art. 1.3).  Although user interfaces are mentioned in art. 1.2 of the Directive, they are referred to only as regards the general idea/expression distinction, which governs the eligibility for protection of all aspects of computer programs.  See European Software Directive, supra note 33, art. 1.2.

[106] See, e.g., Metaxas supra note 4; Hughes & Weightman, supra note 4.

[107] See, e.g., MiTek Holdings, Inc. v. Acre Engineering Co., Inc., 89 F.3d 1548, 1554 (11th Cir. 1996).

[108] See, e.g., Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997).

[109] See, e.g., Glynn S. Lunney, Jr., Reexamining Copyright's Incentives-Access Paradigm, 49 VAND. L. REV. 483 (1996).

[110] See, e.g., Stephen Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, and Computer Programs, 84 HARV. L. REV. 281 (1970) (economic arguments should be employed to circumscribe the scope of and role for copyright in many industries); William W. Fisher, Reconstructing The Fair Use Doctrine, 101 Harv. L. Rev. 1659 (1988) (advocating the use of economics to determine the contours of the fair use defense).

[111] U.S. Const., 1st A.  See, e.g., Harper and Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) (considering 1st Amendment defense to claim of copyright infringement).

[112] See, e.g., Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988) (refusing to enforce shrinkwrap license statute because it conflicted with federal copyright policy).

[113] Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 119 S.Ct. 2199 (1999).

[114] See, e.g., Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966) (“The clause is both a grant of power and a limitation.”)

[115] U.S. CONST. art I, § 8, cl. 8.  Eldred Press is relying on this provision as a basis for its challenge to the constitutionality of the Sonny Bono Copyright Term Extension Act.  See Eldred v. Reno, 74 F.Supp.2d 1 (D.D.C. 1999) (rejecting challenge).

[116] This provision could be useful in challenging overbroad intellectual property legislation that would defeat the constitutional purpose.  See, e.g., Thomas B. Richards, The Value of the Copyright Clause in Construction of Copyright Law, 2 Hastings Const. L.Q. 221, 226 (1975) (copyright statutes should be interpreted to effectuate constitutional purpose of promoting science and the useful arts); Malla Pollack, Unconstitutional Incontestability? The Intersection Of The Intellectual Property And Commerce Clauses Of The Constitution: Beyond A Critique Of Shakespeare Co. v. Silstar Corp, 18 Seattle U. L. Rev. 259, 280 (1995) (“[In Feist] [t]he Court's dicta on time limitations reflects its insistence that the Intellectual Property Clause be interpreted in harmony with the stated purpose of the clause… [t]o promote the Progress of Science and useful Arts.”)(internal quotations omitted). But see Kenneth J. Burchfiel, The Constitutional Intellectual Property Power:  Progress of Useful Arts and the Legal Protection of Semiconductor Technology, 28 Santa Clara L. Rev. 473, 518-24 (1988) (Congress is not limited by statements of purpose in the Constitution).

[117] See Graham v. John Deere, 383 U.S. at 11. This may help to explain why the U.S. does not have an industrial design law as such.  Cf. J.H. Reichman, Design Protection and the New Technologies: The United States Experience in a Transnational Perspective, 19 U. Balt. L. Rev. 6, 13 (1991) (“[T]he Sears-Compco decisions of 1964 had ruled that neither state nor federal laws appealing to the misappropriation rationale could protect unpatented, non-copyrightable industrial designs against slavish imitation.”) (internal citations omitted).

[118] 499 U.S. 340 (1991).

[119] See, e.g., Mark Powell, The European Union's Database Directive: An International Antidote to The Side Effects of Feist?, 20 Fordham Int'l L.J. 1215 (1997); European Parliament and Council Directive 96/9/EC of 11 March 1996 on the Legal Protection of Databases, 1996 O.J. (L 77) 20 [hereinafter “Database Directive”].

[120] Several European countries, such as the United Kingdom, Ireland, and the Netherlands, traditionally applied the "sweat of the brow" doctrine. For example, in BBC v. Magill, it was held that the BBC’s weekly programming schedules could not be reproduced by Magill because the work, skill and judgment required to produce the schedules was sufficient to qualify them for copyright protection.  See BBC v. Magill, [1990] I.L.R.M. 534.  However, this was before adoption of the European database directive that standardizes E.U. copyright/authors’ rights law on an intellectual creation standard.  See Database Directive, supra note 119, art. 3.1.

[121] Three provisions of U.S. copyright law influenced the Court’s decision in Feist.  First, the Copyright Act of 1976 had defined the term “compilation” in such a way that the only sensible interpretation was that Congress had intended to require creativity in selection or arrangement of data before a compilation could qualify for copyright protection.  See 17 U.S.C. sec. 101 (definition of “compilation”).  Thus, it is not fair to construe the Feist opinion as deriving a creativity-based originality standard from natural law or the influence of authors’ rights law more generally.  Second, the Court relied significantly on 17 U.S.C. 102(b)’s exclusion of “discoveries” from the scope of copyright protection to justify its assertion that facts—even a compilation of many of them—could not be protected by copyright law.  Facts, the Court opined, are not “original” to authors; rather they are “discovered” and hence fall within section 102(b)’s prohibition.  However questionable the Court’s epistemology, it is unquestionably true that there is a unique American strain to this analysis.  Third, 17 U.S.C. 103(a) states that copyright protection for a compilation does not confer in the author of a compilation any rights in the preexisting data contained therein. 

[122] See Paul Goldstein, Copyright, 55 Law & Contemp. Probs. 79 (Spring 1992).

[123] 499 U.S. at 345.

[124] Id. at 349-50.

[125] Id. at 350.

[126] 248 U.S. 215 (1918).

[127] See, e.g., Yochai Benkler, Constitutional Bounds of Database Protection: The Role of

Judicial Review in the Creation and Definition of Private Rights in Information, 14 Berkeley Tech L. J. (forthcoming 2000) (draft on file with author); Malla Pollack, The Right To Know?: Delimiting Database Protection At The Juncture of The Commerce Clause, The Intellectual Property Clause, and The First Amendment, 17 Cardozo Arts & Ent. L.J. 47 (1999); J.H. Reichman and Pamela Samuelson, Intellectual Property Rights In Data?, 50 Vand. L. Rev. 51 (1997).

[128] See Benkler, supra note 127.

[129] 100 U.S. 82 (1879).

[130] Cf. Benkler, supra note 127 (taking a narrow view of constitutional power); Jane C. Ginsburg, No "Sweat"? Copyright And Other Protection Of Works Of Information After Feist V. Rural Telephone, 92 Colum. L. Rev. 338 (1992) (arguing that Congress does have power to enact database legislation).

[131] See, e.g., Jonathan Band & Laura F.H. McDonald, The Proposed EC Database Directive: The 'Reversal' of Feist v. Rural Telephone, 9 Computer Law. 19 (June 1992); William S. Strong, Database Protection After Feist v. Rural Telephone Co., 42 J. Copyright Soc'y U.S.A. 39 (1994); Paul T. Sheils & Robert Penchina, What's All The Fuss About Feist? The Sky Is Not Falling on The Intellectual Property Rights of Online Database Proprietors, 17 U. Dayton L. Rev. 563 (1992).

[132] See Database Investment and Intellectual Property Antipiracy Act of 1996, H. R. 3531, 104th  Cong., 2nd  Sess..

[133] See e.g., Reichman & Samuelson, supra note 127 at 56.

[134] See Collections of Information Antipiracy Act, 106th Cong., 1st Sess. [hereinafter H.R. 354].  There was also a bill with the same title put forward in the previous Congress.  See Collections of Information Antipiracy Act, H. R. 2652, 105th Cong., 2nd Sess.

[135] See H.R. 354, supra note 133, sections 1402 (prohibitions) and 1403 (permitted acts).

[136] See Benkler, supra note 127.

[137] Consumer and Investor Access to Information Act of 1999, H. R. 1858, 106th Cong., 1st Sess.

[138] Benkler, supra note 127.

[139] See Alfred C. Yen, A First Amendment Perspective On The Idea/Expression Dichotomy And Copyright In A Work's 'Total Concept And Feel', 38 Emory L.J. 393 (1989).

[140] See, e.g., Neil Weinstock Netanel, Copyright And A Democratic Civil Society, 106 Yale L.J. 283, 301-303 (1996); Peter Jaszi, Toward A Theory Of Copyright: The Metamorphoses Of "Authorship", 1991 Duke L.J. 455, 459-61 (1991).

[141] See, e.g., Kwall, supra note 18 at 65-6.

[142] See 17 U.S.C. sec. 106A.

[143] See, e.g., Lawrence Adam Beyer, Intentionalism, Art, and The Suppression of Innovation: Film Colorization and The Philosophy of Moral Rights, 82 NW. U. L. REV. 1011, 1070-71 (1988).

[144] See, e.g., Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions In Intellectual Property Cases, 48 Duke L.J. 147 (1998).

[145] See, e.g., Charles R. McManis, The Privatization (Or “Shrink-Wrapping”) of American Copyright Law, 87 CALIF. L. REV. 173 (1999).

[146] See White Paper, supra note 20 at 120-24 (proposing strict liability).  See also WIPO Copyright Treaties Implementation Act; and Online Copyright Liability Limitation Act: Hearing on H.R. 2281 and H.R. 2280 Before the Subcomm. on Courts and Intellectual Property of the House Comm. on the Judiciary 105th Cong. (1997); Niva Elkin-Koren, Copyright Law and Social Dialogue on The Information Superhighway: The Case Against Copyright Liability of Bulletin Board Operators, 13 Cardozo Arts & Ent. L.J. 345 (1995) (arguing that a strict liability rule for operators of online services would chill free speech on the Internet); Pamela Samuelson, The Copyright Grab, WIRED, Jan. 1996, at 134 (raising free speech concerns about strict liability for online service providers). 

[147] 17 U.S.C. sec. 512.

[148] 17 U.S.C. sec. 1201(c)(4). 

[149] See Yochai Benkler, Free as The Air To Common Use: First Amendment Constraints on Enclosure of The Public Domain, 74 N.Y.U. L. Rev. 354 (1999).

[150] See, e.g., Pamela Samuelson, Survey on the Patent/Copyright Interface for Computer Programs, 17 AIPLA Q. J. 256 (1989) (discussing divergent views); Brief Amicus Curiae Of Copyright Law Professors In Lotus Development Corp. v. Borland International, Inc., 3 J. Intell. Prop. L. 103 (1995). (discussing the need for separate domains for patent and copyright protection for computer program innovations) available at <http://www.lawsch.uga.edu/~jipl/vol3/brief.html> [hereinafter Copyright Professors’ Brief].

[151] See, e.g., Dennis S. Karjala & Peter S. Menell, Brief Amicus Curiae Applying Fundamental Copyright Principles To Lotus Development Corp. v. Borland International, Inc., 10 High Tech. L.J. 177, 182-6 (1995).

[152] 101 U.S. 99 (1879). 

[153] Id. at 101.

[154] Id. at 101-102.

[155] See John Shepard Wiley, Jr., Copyright At The School of Patent, 8 U. Chi. L. Rev. 119, 168 (1991). 

[156] See, e.g., Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884).

[157] See Taylor Instrument v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943) (rejecting copyright claim in chart because patent on it had expired). 

[158] See 17 U.S.C. sec. 101 (definitions of “pictorial, sculptural, and graphic works” and of  “useful article”). 

[159] 17 U.S.C. sec. 113(b).

[160] 35 U.S.C. sec. 101.

[161] 17 U.S.C. sec. 102(a). 

[162] See, e.g., Copyright Professors’ Brief, supra note 150 (patentability of algorithms and other functional program designs may make copyright protection for them inappropriate).

[163] 17 U.S.C. sec. 102(b).  See also Copyright Professors’ Brief, supra note 150 (discussing Baker v. Selden and section 102(b)). 

[164] See, e.g., id.

[165] See, e.g., Patterson, Free Speech, supra note 12 at 25.

[166] See, e.g., E. Wyndham Hulme, The History of the Patent System Under the Prerogative and at Common Law, 12 L.Q.R 141 (1896) cited in ROBERT MERGES, PATENT LAW & POLICY 6 (2 ed., 1997).

[167] See, e.g., Charles A. Beard, An Economic Interpretation of the Constitution of the United States (1935 ed.).

[168] Registration is no longer required for non-U.S. works, but failure to register affects the remedies available in an infringement suit.  See 17 U.S.C. secs. 411 (U.S. works must be registered to bring an infringement suit), 412 (only registered works qualify for attorney’s fees and statutory damages). 

[169] See, e.g., 17 U.S.C. secs. 104A (restored copyrights); 101, 102(a)(8) (architectural works); 106A (moral rights for certain works).