**This is important information for the Intellectual Property Community in Seattle and around the world. This is the first opinion of its kind.

Bernardo Burstein, Burstein & Associates PA, Jesus Sanchelima, Sanchelima & Associates, Miami, FL, for Plaintiff.

Timothy B. McCormack, McCormack Intellectual Property Law Business Law P.S., Seattle, WA, Tom John Manos, Tom J. Manos PA, Miami, FL, for Defendant.

Opinion

*1 This matter is before the Court on Plaintiff Olem Shoe Corp.’s Motion for the Issuance of Request to Register of Copyrights Pursuant to 17 U.S.C. § 411(b)(2) (D.E.# 76). Defendant Washington Shoe has accused Olem Shoe of infringing two of its copyrights. Olem Shoe alleges that Washington Shoe’s copyrights are invalid because Washington Shoe submitted inaccurate information to the Copyright Office when registering the copyrights. In the present motion, Olem Shoe asks the Court to submit a series of questions to the Copyright Office for an advisory opinion as to whether the Register of Copyrights would have refused registration if it had known of the allegedly inaccurate information. The parties have submitted numerous briefs regarding Olem Shoe’s questions, and the Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. For the reasons stated during the hearings and below, the Court grants in part and denies in part Olem Shoe’s motion.

I. Background

Olem Shoe and Washington Shoe both sell women’s boots. This case is about two of Washington Shoe’s boot designs called “Ditsy Dots” and “Zebra Supreme.” As the names suggest, Ditsy Dots boots are polka-dotted, and Zebra Supreme boots have a patterned design like a zebra’s black and white striped skin. Washington Shoe sent Olem Shoe cease-and-desist letters accusing Olem Shoe of selling “knock-off” versions of the boots and infringing Washington Shoe’s intellectual property rights. Olem Shoe brought this suit for a declaratory judgment that its boots do not infringe Washington Shoe’s intellectual property rights. Washington Shoe answered and counterclaimed for, among other things, infringement of its federally registered copyrights covering the two-dimensional patterned designs on the faces of the Ditsy Dots boots (Registration No. VAu000756950, registered August 9, 2007) and the Zebra Supreme boots (Registration No. VAu001007893, registered January 8, 2010).

Washington Shoe moved for summary judgment on its copyright infringement counterclaims. In its opposition to the motion for summary judgment, Olem Shoe asserted, among other things, that the copyright registrations are invalid under 17 U.S.C. § 411 because Washington Shoe submitted inaccurate information to the Copyright Office with the registrations.

Subject to certain exceptions, 17 U.S.C. § 411 requires copyright holders to register their works in accordance with the requirements of the Copyright Act before bringing a claim for copyright infringement. See id. § 411(a).1 Thus, a party ordinarily must have a valid copyright registration in order to bring a claim for copyright infringement. See Reed Elsevier, Inc. v. Muchnick, — U.S. —-, —-, 130 S.Ct. 1237, 1242, 176 L.Ed.2d 17 (2010).2 Parties accused of copyright infringement often argue that inaccurate information submitted in an application for registration invalidates the copyright registration. In 2008, as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO IP Act), however, Congress amended § 411 to provide that a certificate of registration satisfies the section’s requirements, “regardless of whether the certificate contains any inaccurate information, unless” the following two requirements are met:

*2 (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. § 411(b)(1). The PRO IP Act also created a procedure for district courts to seek the advice of the Register of Copyrights as to the effect of allegedly inaccurate information on the validity of a copyright registration. Section 411(b)(2) provides:

In the present motion, Olem Shoe has asked the Court to seek the advice of the Register of Copyrights under § 411(b)(2) regarding the effect of the inaccurate information that Olem Shoe alleges Washington Shoe submitted with its copyright registrations. Olem Shoe’s motion included a series of questions for the Court to submit to the Register of Copyrights. The Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. As the Court discussed at the hearings, Olem Shoe’s original questions were unclear and suffered from several problems. The Court asked Olem Shoe to submit revised questions. After a couple of iterations, Olem Shoe submitted its latest set of questions on August 19, 2010. (See D.E. # 141-4).

II. Legal Analysis
A. Seeking the Advice of the Register of Copyrights Under 17 U .S.C. § 411(b)(2)

Before reaching the merits of Olem Shoe’s proposed questions, a discussion of 17 U.S.C. § 411(b)(2) is necessary. The interpretation of § 411(b)(2) appears to be an issue of first impression in the Eleventh Circuit. In fact, the parties (and the Court in its own research) have only been able to find one instance in which a court-the District of Puerto Rico-issued a request to the Register of Copyrights under § 411(b)(2). See Velazquez-Gonzalez v. Pina, No. 07-1512CCC (D.P.R. June 1, 2009); see also 5 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 17:125.50 (2010) (“Few litigants or courts have been aware of the provision, and as a result it has been used, I believe only once.”). Nevertheless, the language of § 411(b)(2) is rather straightforward. A party must allege (1) that inaccurate information was included on an application for copyright registration with knowledge that it was inaccurate, and (2) that the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. If a party makes these allegations, the statute requires the Court to seek the advice of the Register of Copyrights.

Washington Shoe has advanced several arguments why the Court should not request the advice of the Register of Copyrights. In its opposition brief (D.E. # 90), in addition to arguing about the merits of Olem Shoe’s questions, Washington Shoe argues (1) that a request to the Register of Copyrights under § 411(b)(2) is an “extremely unusual” measure that only one court has taken; (2) that the issues raised by Olem Shoe have already been fully briefed in connection with Washington Shoe’s motion for summary judgment and are ripe for adjudication by this Court; and (3) that a request would only result in undue delay and increased expense. The Court disagrees. For one thing, just because a request under § 411(b)(2) may be “extremely unusual” does not obviate the Court’s duty to comply with the statute. And because the statute was enacted in 2008, it is not surprising that only one court has submitted a request under § 411(b)(2). More fundamentally, the statutory language-“shall request”-is mandatory. Simply because the parties have already briefed the issues raised by Olem Shoe does not permit the Court to disregard the compulsory language of the statute.

*3 In its sur-reply (D.E.# 106), Washington Shoe argues that the Court’s duty to request an opinion from the Register of Copyrights is only triggered if Olem Shoe proves the two requirements in § 411(b)(1). In other words, Olem Shoe must “show” that Washington Shoe included information on its applications that it knew was inaccurate, and that the inaccurate information was “so material” that, if known, it would have caused the Register of Copyrights to refuse registration. But that is not what the statute says. Rather, the Court’s duty is triggered where “information described under paragraph (1) is alleged.” 17 U.S.C. § 411(b)(2) (emphasis added).3

Olem Shoe alleges that Washington Shoe inaccurately characterized the Ditsy Dots and Zebra Supreme designs as unpublished when it filed the copyright registrations. According to Olem Shoe, Washington Shoe published the boots by displaying them at a public trade show in Las Vegas from July 30, 2007 to August 1, 2007, and in the case of Zebra Supreme, by selling the boots in retail stores. However, when Washington Shoe filed the Ditsy Dots registration on August 9, 2007, and the Zebra Supreme registration on January 8, 2010, it did not say that the boots had been published. Olem Shoe asks the Court to submit the following questions regarding publication:

1. Whether the Copyright Register would have refused registration No. VAu 756-950 for the two-dimensional unpublished work entitled Ditsy Dots had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?
….

6. Whether the Copyright Register would have refused the registration No. VAu001007893 for a two-dimensional unpublished work entitled Zebra Supreme-Olem had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?

(D.E. # 141-4 at 2.)

The Court views the topic of these questions to be appropriate under § 411(b)(2). Even Washington Shoe’s counsel conceded during the August 11 hearing that Washington Shoe appears to have published the boots before it filed the copyright registrations. (See D.E. # 140, Hr’g Tr. at 8, Aug. 11, 2010.) Therefore, the Court will seek the advice of the Register of Copyrights on this subject. However, even after the Court has provided Olem Shoe multiple opportunities to revise its questions so that they are understandable to a person who is not familiar with this case, the Court is not satisfied that Olem Shoe has done so. Accordingly, it will re-phrase the questions as follows:

*4 1. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show before filing the registration?

2. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu001007893 for 2-dimensional artwork applied to 3-dimensional rain boots (“Zebra Supreme-Olem,” filed January 8, 2010) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show and sold the boots in retail stores before filing the registration?

ii. Questions 2 and 7 Regarding Alleged Creation by a Third Party

Olem Shoe also alleges that Washington Shoe’s copyright registrations are invalid because the patterned fabric used to create Washington Shoe’s boots was created by a third party manufacturer not known to Washington Shoe. Olem Shoe asks the Court to submit the following questions:

2. Whether the Copyright Register would have refused the [Ditsy Dots] copyright application had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?
….
7. Whether the Copyright Register would have refused [the Zebra Supreme] registration had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?

(D.E. # 141-4 at 2.)

As best the Court can tell, Olem Shoe’s theory is as follows:

1. Washington Shoe employees created the Ditsy Dots and Zebra Supreme patterned designs on computers.
2. Washington Shoe then sent electronic files with the designs to China.
3. A manufacturer unknown to Washington Shoe, and not under Washington Shoe’s control, affixed the designs to the fabric that Washington Shoe’s boot supplier used to manufacture the boots.
4. The act of affixing Washington Shoe’s designs to the fabric is a separate copyrightable event.
5. Thus, the unknown manufacturer that affixed the designs to the fabric-and not Washington Shoe-owns the copyrights on the boots depicted in the photographs Washington Shoe submitted to the Copyright Office.

Olem Shoe’s theory seems to reflect a fundamental misunderstanding of copyright law. Under Olem Shoe’s theory, artists would lose the rights to their works unless they utilized their own manufacturing facilities to turn their works into end-use products. For example, a book printer, not the author, might own the copyright to a book. The Court expressed doubt about Olem Shoe’s theory during the hearings and asked Olem Shoe to submit cases to support its theory. In a supplemental brief, Olem Shoe cites just two cases, neither of which is relevant here. Olem Shoe cites Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), for the unremarkable proposition that copyright law protects only the expression of an idea, not the idea itself. See id. at 217. This would be relevant if Washington Shoe had simply asked a manufacturer to design fabric with, for example, zebra stripes, and the manufacturer created the designs itself. Obviously, Washington Shoe could not then copyright the idea of boots with zebra stripes. Here, however, Washington Shoe created specific designs, complete with dimensions, to be physically applied by others to its boots. Washington Shoe’s copyrights cover those designs. The Chinese manufacturer’s act of manufacturing fabric with those designs was not a separate copyrightable event.

*5 The other case Olem Shoe cites, MGB Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir.1990), is similarly irrelevant. In MGB Homes, the Eleventh Circuit denied a homebuilder’s claim of coauthorship of a copyrighted advertising flyer depicting the floorplan of a home. The homebuilder was the “author of the concept” for the home depicted in the flyer. Id. at 1487 n. 2. However, the homebuilder’s only contributions to the final drawings were a “thumbnail sketch of the floor plan he desired … and approval authority thereafter.” Id. at 1493. Someone else actually created the flyer and the floorplan depicted in the flyer. Just as with Mazer above, MGB Homes might be relevant if Washington Shoe had asked someone else to create the designs for its boots based on an idea or a rough sketch. But that is not the case. Washington Shoe created the final patterned design for its boots.

Because Olem Shoe’s questions are based on a flawed theory, it has failed to allege that Washington Shoe submitted inaccurate information to the Copyright Office. Accordingly, because they are irrelevant, the Court will not submit Questions 2 and 7 to the Register of Copyrights.

iii. Question 3 Regarding Derivation of Ditsy Dots

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Ditsy Dots copyright registration because it failed to disclose that the boots depicted in the photographs submitted the Copyright Office were derived from a pre-existing drawing. Olem Shoe asks the Court to submit the following question:

Olem Shoe’s theory here seems to be that the 3-dimensional boots were derived from Washington Shoe’s previous 2-dimensional drawing, and that Washington Shoe should have disclosed the existence of the 2-dimensional drawing when it filed its Ditsy Dots registration. Perhaps this theory would have merit if the Ditsy Dots copyright registration at issue here were for a 3-dimensional work. However, the copyright registration is for the 2-dimensional artwork on the boots. Accordingly, Olem Shoe fails to allege any inaccurate information Question 3, and the Court will not submit it to the Register of Copyrights.

iv. Question 9 Regarding Derivation of Zebra Supreme

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Zebra Supreme copyright registration because it failed to disclose that the design was derived from another similar design. Washington Shoe’s art director first created a design called “Rose Zebra Supreme” that had roses superimposed on zebra stripes with a silver lining. He then used the Rose Zebra Supreme design to create the Zebra Supreme design by removing the silver lining from the stripes and by removing the roses. (D.E. 79-1, Affidavit of Roel Salonga ¶ 3.) Washington Shoe registered the Rose Zebra Supreme design with the Copyright Office on May 21, 2009 (Reg. No. VAu000988278). When Washington Shoe registered the Zebra Supreme design in January 2010, however, it did identify Zebra Supreme as a derivative work, and it did not list Rose Zebra Supreme as preexisting material. Olem Shoe asks the Court to submit the following question:

*6 9. Whether the Copyright Register would have refused the application had the Copyright Register known that the claimant created the pre-existing work (Rose[ ] Zebra Supreme) Reg. No. VAu 988-27[8] for the same design except the roses and from which the work (Zebra Supreme-Olem) subject of Reg. No. VAu001007893 was derived?

(D.E. # 141-4 at 3.)

The Court views the topic of this question to be proper under § 411(b)(2). Accordingly, the Court will submit it to the Register of Copyrights, but it will rephrase the question as follows:

3. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe did not identify the work as being a derivative work, Washington Shoe created the artwork by altering its previously registered copyright Registration No. VAu000988278 (“Rose Zebra Supreme,” filed May 21, 2009)?

v. Questions 4 and 5 Regarding “Reconstruction” of Ditsy Dots

Finally, Olem Shoe makes much of the fact that Washington Shoe apparently re-filed photographs for the Ditsy Dots copyright registration in 2009. According to Washington Shoe, the Copyright Office lost the original photographs submitted in 2007 and asked Washington Shoe to submit new photographs. Olem Shoe characterizes this procedure as “unorthodox” and alleges that Washington Shoe’s submission in 2009 was an improper “reconstruction” of the registration. Olem Shoe asks the Court to submit the following two questions:

4. Whether claimant’s filing of two “new” photographs in 2009 for the 2007 copyright registration (Ditsy Dots) would have been refused by the Copyright Register as an improper reconstruction?

5. Whether claimant’s filing of two “new” photographs in 2009 would have been refused by the Copyright Register even if it were to clarify or amplify the registration filed on August 9, 2007?

(D.E. # 141-4 at 2.)

Completely lacking from these questions is any allegation of inaccurate information. Olem Shoe does not allege that Washington Shoe submitted inaccurate information when it responded to the Copyright Office’s request. Moreover, the questions do not even make senseOlem Shoe wants the Court to ask the Copyright Office if it would have accepted photographs that it has already accepted. The Court will not entertain such nonsense. Accordingly, the Court will not submit Questions 4 and 5 to the Register of Copyrights.

III. Conclusion

For the foregoing reasons, it is hereby ORDERED that Olem Shoe’s motion is GRANTED IN PART, DENIED IN PART. Subsequent to this Order, the Court will issue a request under 17 U.S.C. § 411(b)(2) for the Register of Copyrights.

DONE and ORDERED.
Parallel Citations
2010 Copr.L.Dec. P 29,968

The Register notes the court’s concern regarding the structure of 17 U.S.C. § 41l(b)(2) and the potential that the provision might be abused by litigants. See, Footnote 4 of the Order on Motion for Issuance of Request to Register of Copyrights. Since the Office played an instrumental role in the amendment of 17 U.S.C. § 411(b)(2) as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008, the Register takes this opportunity to relay its insight regarding the provision. The amendment to 17 U.S.C. § 41l(b)(2) was adopted in order to address situations in which courts of appeals have misunderstood Copyright Office registration practices and came to erroneous conclusions about alleged misstatements on applications for registration. See Raquel v. Education Management. Corp., 196 F.3d 171, 177 (3d Cir. Pa. 1999), vacated and remanded, 531 U.S. 952 (2000)(1). See also Greenberg V. National Geographic Society, 244 F.3d 1267. 1273 (11th Cir. Fla. 2001)(2). As a result of these decisions, 17 U.S.C. §411(b)(2) was amended to ensure that no court holds that a certificate is invalid due to what it considers to be a misstatement on an application without first obtaining the input of the Register as to whether the application was properly filed or, in the words of § 411(b)(2), “whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” The Register readily admits that in many, and perhaps even most, cases in which it is alleged that there is a misstatement on an application that might lead a court to conclude that the registration cannot be relied upon as satisfying the statutory prerequisite for an infringement suit, there may be little need for the assistance of the Register because the answer will be apparent. However, 17 U.S.C. § 411(b)(2) was enacted because a court will not always know what information would or would not make a difference in the Register’s determination whether to register a copyright.

While 17 U.S.C. § 41 l(b)(2) requires the court to seek the Register’s advice when there is an allegation that an application contains inaccurate information, the Register observes that the statute says nothing about the timing of the request. The Register suggests that, at a minimum, the court retains the power to delay the request until a factual record has been developed, e.g., through affidavits or discovery. The Register believes that if a court concludes that the bare allegations are unsupported by any facts, the court would be free to refrain from issuing requests to the Register. The court could, for example, entertain a motion for partial summary judgment prior to referring certain questions to the Register. If the court concludes that there is no factual basis for certain allegations, such as an allegation that the plaintiff is not the author or copyright owner of the work in question, the court might come to a conclusion on such issues as a matter of law, in which case there may be no need to refer the question to the Register. In other words, before asking the Register whether she would have refused to register a copyright if she had known about a particular alleged misstatement of fact on an application, a court should feel free to determine whether there is in fact a misstatement of fact.(3) In addition, the Register agrees with the Court’s conclusion that a court will not be bound by the Register’s response to a request made pursuant to § 411(b). However, since the issue is whether the inaccuracy of the misstatement on the application would have caused the Register to refuse registration, the Register respectfully submits that it would be appropriate for the court to give deference to the Register’s response in such matters, since the Register is in the best position to state what the Register would or would not do under the stated circumstances.

Dated: October 14, 2010

_____________________________
MARYBETH PETERS
Register of Copyrights

(1) In Raquel, the Supreme Court vacated the Third Circuit’s decision that concluded that a statement regarding the “nature of this work’” on an application was inaccurate and would have occasioned the rejection by the Register of Copyrights of Raquel’s application for copyright registration if the Register had realized it was inaccurate. The case was remanded for further consideration in light of the position asserted by the Solicitor General in his brief for the United States, as amicus curiae, filed September 20, 2000, and the Copyright Office’s July 5, 2000, Statement of Policy, 65 Fed. Reg. 41508, both of which identified the Third Circuit’s misunderstanding of longstanding Copyright Office registration practices.
(2) In that case, the Eleventh Circuit misunderstood the Copyright Office’s longstanding registration
practices regarding identification of authorship identified in an application for registration.
(3) The Register cautions, however, that if that issue depends even in part on interpretation or understanding of the Copyright Office’s registration practices, the more prudent practice – and the practice anticipated in §
41 l(b) – would be to refer the question to the Register. For example, in Raquel, supra, the court
misunderstood the purpose of the “Nature of this Work” space on the copyright registration application and concluded that the copyright claimant had made a false statement of fact in completing that part of the application. The court’s conclusion was based on an misunderstanding of the function of the “Nature of this Work” space on the application, a misunderstanding that could have been corrected if the court had sought the guidance of the Register.

The following computer programming elements are not likely to be copyrighted and thus can be copied without obtaining authorization.

Computer Languages

No court in the United States has ruled on whether high-level computer languages like C++ or Java can themselves be protected by copyright. The Copyright Office, however, refuses to register a work consisting solely of a computer language.(51)

Algorithms

An algorithm in the most general sense is an uncopyrightable idea. As used below, the term “algorithm” refers to a “finite sequence of instructions, each of which has a clear meaning and can be performed with a finite amount of effort in a finite length of time.”(52) For example, an algorithm for Christmas shopping could be: (1) find appropriate gift, (2) purchase gift, (3) wrap gift, and (4) present gift to recipient. “When viewed from the highest level, algorithms represent the very essence of abstract ideas; as such, algorithms are ineligible for copyright or patent protection. . . . [and] always remain in the public domain.”(53)

Other Non-Protected Elements

i. Command Structures of Menus in Computer Applications

The command structure of menus such as pull-down menus in computer applications are not protected under copyright law. (The analogy that courts have accepted in not recognizing copyrights for pull-down menus is based on their “button-like” nature). One court specifically compared pull-down menus to the buttons on a VCR. An example of the type of pull down menu that is not protected under copyright law is shown below.

EDIT
Undo Typing
Repeat Typing
Cut
Copy
Paste

ii. Overlapping Windows on a Computer Display

In Apple Computer, Inc. v. Microsoft Corp., 24 U.S.P.Q.2d 1081 (N.D. Cal. 1992), aff’d, 35 F.3d 1435 (1994), the court held that the look-and-feel of the Macintosh GUI (Graphical User Interface) was given only limited copyright protection because: (1) the desktop metaphor was found to be functional (rather than artistic); (2) the GUI was primarily designed to facilitate use of the computer; and (3) many of the GUI features (e.g., overlapping windows, use of manipulatable icons, etc.) were found to be standardized across competing products for functional considerations and thus unprotectable ideas rather than protectable expression.(55)

Expired Copyrights and Works in the Public Domain

Copyrights that have expired or works that are otherwise in the public domain are not protected by copyright. A detailed discussion of when a work expires or otherwise enters the public domain appears below, under “Copyright Defenses.”

(51)1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.47 [C][11] (1998); U.S. Copyright Office, COPENDIUM OF COPYRIGHT OFFICE PRACTICES II, at 300-26 (1984).
(52)A. Aho, J. Hopcraft & D. Ullman, Data Structures and Algorithms 2 (1983).
(53)4 Melville B. Nimmer et al., NIMMER ON COPYRIGHT § 13.03[f][1] (1998).
(54)See Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 116 S. Ct. 804 (1996).
(55)See also Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 116 S. Ct. 804 (1996) (addressing interoperability concerns); see also 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.47 [C][1] (1998).

The Idea/Expression Dichotomy is an important concept in copyright law. It helps to explain why a particular computer program is subject to copyright while the underlying idea of the program is not. The merger doctrine provides a possible defense to copyright infringement when the ways of expressing a particular idea are limited. Moreover, independent creation of a work (such as via a clean room) can avoid copyright infringement for the copied work because only the ideas are copied.

Proving copyright infringement during litigation can be very complex. An easy case might involve a “smoking gun” where direct proof of copying exists. A more complex case might involve a detailed three-part analysis, known as the abstraction-filtration-comparison test. When trying to figure out what can be copied and what cannot, it is best to err on the side of caution and ask an attorney.

Not all elements of a computer program are subject to copyright. This is because various defenses exist such as merger, fair use, and copyright expiration. All defenses should be considered when determining whether a particular work is protected by copyright and whether you may copy all or part of the work in question.

The most widely used defense is the “fair use” defense. The fair use defense involves the following factors: (1) the purpose and character of the use (e.g., commercial versus nonprofit or educational purposes),(74) (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use on the potential market for or value of the copyrighted work. Unfortunately, the case law is scant on how courts will apply the four fair use factors
mentioned above in the realm of software development.(76)

An example of the fair-use defense applied in a non-software context is Harper & Row Publishers, Inc. v. Motion Nation Enterprises.(77) In Harper & Row, the Supreme Court held that using 300 words excerpted from an unpublished manuscript written by President Gerald R. Ford as his autobiography was not a fair use. The Supreme Court found that all four fair use factors weighed against a finding of fair use. The court found that the purpose and character of the infringing use was commercial in nature. The “scooped” material from the President’s autobiography, for example, was intended to sell magazines and conversely was not for a nonprofit or educational purpose.(78) The court also found that the nature of copyrighted manuscript (i.e., that it was unpublished) weighed against finding fair use. Specifically, the court reasoned that the infringing use interfered with the author’s interest in confidentiality and creative control of his own, yet unpublished, work.
Regarding the amount and substantiality of the copyrighted work used, although only 300 words were taken from an entire manuscript, the 300 words taken were among the “most interesting and moving parts of the manuscript.” Lastly, the court found that use of the infringing excerpt would directly compete for a market share of the President’s autobiography. The court noted that the last fair use factor is undoubtedly the single most important consideration when determining if a particular use is fair.

In a different case, the Supreme Court found that recording copyrighted television shows for home viewing on a video tape recorder was fair use.(79) The court reasoned that most people use their video recorders to record television programs for viewing at a later time (i.e., “timeshifting”). Considering the fair use factors: (1) the timeshifting use is not commercial in nature; (2) the copyrighted television shows are broadcast free of charge; (3) the entire program is recorded, including the commercials; and (4) the timeshifting use increases the value of the copyrighted work because it actually increases the viewing audience.

Because the courts have decided issues of fair use on a case-by-case basis, and because the cases addressing fair use in the context of computer programs are few, specific questions regarding the use of the fair use defense should probably be addressed to a knowledgeable attorney.

(75)See 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.28 [B][3] n.543.2 (1998) citing Marcus v. Rowley, 695 F.2d 1171, 1176 (9th Cir. 1983) (“wholesale copying of copyrighted material precludes application of the fair use doctrine”). As discussed earlier in this memorandum, appropriating only a small amount of copyrighted material or making unauthorized copies for a short duration of time or just making a “few” copies of a particular word does not necessarily alleviate one from liability for copyright infringement. See SAS Inst., Inc. v. S&H Computer Sys., Inc., 605 F. Supp. 816 (M.D. Tenn. 1985) (finding copyright infringement when only 14 lines of source code were copied out of a total of 186,000 lines of code).
(76) One case applying the fair use factors to the question of video game copyrights held that making temporary alterations to certain characteristics of copyrighted Nintendo video games was a fair use. Lewis Galoob v. Nintendo of America, 780 F. Supp. 1283 (N.D. Cal. 1991). See also 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.28 [B][3] (1998). In the realm of computer programs, the fair use defense has perhaps been addressed most widely in the context of reverse engineering.
(77)Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).
(78)The commercial nature of a work is not always dispositive but weighs in favor of finding a particular use was not fair. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (commercial use can still be fair use).
(79)Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

A copyright can be abandoned, forfeited, or both, and a copyright owner can sometimes be prevented from asserting their rights. Abandoning a copyright requires some manifestation of an intent to abandon. Mere inaction will not constitute such a manifestation.(73)

Forfeiture is usually associated with the publication of a work without the proper notice (required under prior Copyright laws) or can occur when a copyright owner decides to dedicate a work to the public domain.

(73)See, e.g., Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 456 F. Supp. 531 (S.D.N.Y.), aff’d, 592 F.2d 651 (2d Cir. 1978).

Two computer programs can be identical and yet there will be no copyright infringement if both were created independently of each other. One common way of doing this is by creating a “clean room.”

One may independently develop a competing program by having a first team produce design documentation of inputs and desired outputs after lawfully analyzing a first program from which the competing program is to be developed. A second team then writes code for the competing program based on the created design documentation. The competing program, even if substantially similar to the first program will not likely infringe any copyrights because of its independent creation.

Once the copyright in a work has expired or the copyright has been abandoned, the work is in the public domain and may be freely copied. The Copyright Act has been revised over the years, and thus determining which works are in the public domain can be difficult. A basic explanation of the two main copyright law revisions follows.

(68)Copyright notice is discussed in this memorandum in the section addressing copyright formalities.
(69)The current Copyright Act became effective on January 1, 1978.
(70)17 U.S.C. § 302; 1998, Sonny Bono Copyright Term Extension Act, Public Law 105-298.
(71)Id.
(72)1 Melville B. Nimmer, NIMMER ON COPYRIGHT § 401 (1998).

Even if one establishes ownership in a copyrighted work and that an accused infringer copied the work, the accused infringer may escape liability under one of several defenses set forth in the Copyright Act. Note, however, that although a defense to copyright infringement may exist, one may still be prohibited from copying a work. Some defenses are absolute, and thus one can copy with impunity (assuming of course that the defense can be proven at trial). Other defenses can shield one from the legal consequences of copying another work, however, they are sometimes difficult to prove.

Works of authorship by the United States Government are not subject to copyright.(66) A “work of the United States Government” is defined as “a work prepared by an officer or employee of the United States Government as part of their official duties.” (67)

(66)NIMMER ON COPYRIGHT § 5.06[B][2] (noting that “this same principle was recognized prior to the current [Copyright] Act.”).
(67)17 U.S.C. § 101 (defining governmental works).