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