Intellectual property, contracts, and reverse engineering after PROCD: A proposed compromise for computer software

Fordham Law Review

Volumn 67, Issue 6, 1999, Pages 3297-3334

  Mahajan, Anthony J ^a  

^a NONE

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EID: 0033457445     PISSN: 0015704X     EISSN: None     Source Type: Journal    
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References (348)

1. Peter Schwartz & Peter Leyden, The Long Boom, Wired, July 1997, at 115, 121 (noting the transition from an industrial to an information society).
2. See Harold Seneker & Jayne A. Pearl, Software to Go, Forbes, June 20, 1983, at 93, 93.
3. See Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 Duke L.J. 663, 680-81 (noting that computers are "chameleon-like" machines, and that the program determines what type of machine the computer will be).
4. See Steven Levy, Code Warriors, Newsweek, Jan. 18, 1999, at 60, 60 [hereinafter Levy, Code Warriors].
5. See infra note 53 and accompanying text.
6. See Steven Levy, Hackers: Heroes of the Computer Revolution 27-28 (1984).
7. See id.
8. See id. at 30-32.
9. See Paul Freiberger & Michael Swaine, Fire in the Valley: The Making of the Personal Computer 153-54 (1984); Levy, Code Warriors, supra note 4, at 60. Program code became a corporation's crown jewel, the gem to be locked away, safeguarded from prying eyes and hands. See id.
10. See Paul Freiberger & Michael Swaine, Fire in the Valley: The Making of the Personal Computer 153-54 (1984); Levy, Code Warriors, supra note 4, at 60. Program code became a corporation's crown jewel, the gem to be locked away, safeguarded from prying eyes and hands. See id.
11. See Paul Freiberger & Michael Swaine, Fire in the Valley: The Making of the Personal Computer 153-54 (1984); Levy, Code Warriors, supra note 4, at 60. Program code became a corporation's crown jewel, the gem to be locked away, safeguarded from prying eyes and hands. See id.
12. See United States v. Microsoft Corp., 980 F. Supp. 537 (D.D.C. 1997); United States v. Microsoft Corp., 159 F.R.D. 318 (D.D.C.), rev'd, 56 F.3d 1448 (D.C. Cir. 1995).
13. See Thomas A. Piraino, Jr., An Antitrust Remedy or Monopoly Leveraging by Electronic Networks, 93 Nw. U. L. Rev. 1, 3-5 (1998).
14. See id. at 3.
15. See Mark A. Lemley & David McGowan, Could Java Change Everything?: The Competitive Propriety of a Proprietary Standard, in Second Annual Internet Law Institute 453, 456 (PLI Pats., Copyrights, Trademarks, & Literary Prop. Course Handbook Series No. 520, 1998) [hereinafter Lemley & McGowan, Competitive Propriety].
16. See infra Part I.
17. See, e.g., Anthony L. Clapes, Confessions of an Amicus Curiae: Technophobia, Law, and Creativity in the Digital Arts, 19 U. Dayton L. Rev. 903, 906 (1994) (objecting to a reduced level of intellectual property protection for computer software); Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 988 (1993) (concluding that there is no reason to believe that courts are overprotecting software proprietors).
18. See, e.g., Anthony L. Clapes, Confessions of an Amicus Curiae: Technophobia, Law, and Creativity in the Digital Arts, 19 U. Dayton L. Rev. 903, 906 (1994) (objecting to a reduced level of intellectual property protection for computer software); Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 988 (1993) (concluding that there is no reason to believe that courts are overprotecting so6tware proprietors).
19. See, e.g., Michael J. Madison, Legal-Ware: Contract and Copyright in the Digital Age, 67 Fordham L. Rev. 1025, 1029 n.14, 1031 (1998) (arguing that the public domain cannot consist only of materials that information providers unilaterally choose to provide); Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308, 2365-71 (1994) (advocating a market-based approach to computer software protection).
20. See, e.g., Michael J. Madison, Legal-Ware: Contract and Copyright in the Digital Age, 67 Fordham L. Rev. 1025, 1029 n.14, 1031 (1998) (arguing that the public domain cannot consist only of materials that information providers unilaterally choose to provide); Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308, 2365-71 (1994) (advocating a market-based approach to computer software protection).
21. The underpinnings of the federal copyright and patent statutes are rooted in Article I of the United States Constitution, which provides that "Congress shall have Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const, art. I, § 8, cl. 8. The Supreme Court has observed that the objective of the federal intellectual property statutes is to strike a balance between private and public rights of access to information, and "to motivate the creative activity of authors . . . and to allow the public access to the products of their genius after the limited period of exclusive control has expired." Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984); see also Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974) (proclaiming that the limited monopoly fostered by the federal intellectual property laws "will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens").
22. See infra Part I.C-D.
23. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
24. See 17 U.S.C.A. § 302(a) (West Supp. 1999).
25. See 17 U.S.C. § 106 (1994).
26. See Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 n.2 (2d Cir. 1977).
27. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81 (1974).
28. See 35 U.S.C. § 112 (1994).
29. See 17 U.S.C. § 301.
30. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985).
31. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 350 (1991).
32. See id.
33. 101 U.S. 99 (1879).
34. See id. at 99-100.
35. See id.
36. See id. at 103.
37. See id.
38. See id. at 107.
39. See id. at 105. "Letters-patent" is a reference to the patent law. See Edward C. Walterscheid, Patents and Manufacturing in the Early Republic, 80 J. Pat. & Trademark Off. Soc'y 855, 857 (1998).
40. See id. at 105. "Letters-patent" is a reference to the patent law. See Edward C. Walterscheid, Patents and Manufacturing in the Early Republic, 80 J. Pat. & Trademark Off. Soc'y 855, 857 (1998).
41. See 17 U.S.C. § 102(b) (1994).
42. Id.
43. See H.R. Rep. No. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670.
44. See id., reprinted in 1976 U.S.C.C.A.N. 5659, 5670.
45. Conversely, the original expression of an idea, even if not readily perceptible by the human eye, is protected. See id. at 52, reprinted in 1976 U.S.C.C.A.N. 5659, 5665. Similarly, even though a program may be in such a form that it may only be "perceived" by a machine, the program nonetheless may be entitled to copyright protection. See, e.g., Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1248-51 (3d Cir. 1983) (rejecting contention that copyright is limited to works designed to be read by a human reader); Williams Elecs., Inc. v. Artic Int'l, Inc., 685 F.2d 870, 876-77 (3d Cir. 1982) (determining that object code represented on a Read Only Memory chip may be copyrighted).
46. See Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991).
47. See Bellsouth Adver. & Publ'g Corp. v. Donnelley Info. Publ'g, Inc., 999 F.2d 1436, 1442 (11th Cir. 1993).
48. See 5 Copyright, Congress & Technology: The Public Record 40 (Nicholas Henry ed., Oryx Press 1980) [hereinafter CONTU Final Report]; see also Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 66 (D. Mass. 1990) (noting that the merger doctrine will deny copyright protection to certain aspects of computer programs). Regarding the application of merger to computer programs, one commentator noted that the "line [for determining when merger occurs] is a pragmatic one, drawn not on the basis of some metaphysical property of 'ideas,' but by balancing the need to protect the labors of authors with the desire to assure free access to ideas." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[F][1], at 13-125 (1998).
49. See Atari, Inc. v. North Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982).
50. See Softel, Inc. v. Dragon Med. & Scientific Communications, Inc., 118 F.3d 955, 963 (2d Cir. 1997).
51. Computer programs are purely functional in that they cause a computer to perform a particular task or set of tasks. See Dennis S. Karjala, The Relative Roles of Patent and Copyright in the Protection of Computer Programs, 17 J. Marshall J. Computer & Info. L. 41, 42 (1998) [hereinafter Karjala, Relative Roles]. Because separating the functional aspects from the nonfunctional aspects of program code would leave little to protect, however, the protection of computer programs under copyright is an exception to the useful article doctrine. See Dennis S. Karjala, Copyright Protection of Computer Documents, Reverse Engineering, and Professor Miller, 19 U. Dayton L. Rev. 975, 986 (1994) [hereinafter Karjala, Copyright Protection].
52. Computer programs are purely functional in that they cause a computer to perform a particular task or set of tasks. See Dennis S. Karjala, The Relative Roles of Patent and Copyright in the Protection of Computer Programs, 17 J. Marshall J. Computer & Info. L. 41, 42 (1998) [hereinafter Karjala, Relative Roles]. Because separating the functional aspects from the nonfunctional aspects of program code would leave little to protect, however, the protection of computer programs under copyright is an exception to the useful article doctrine. See Dennis S. Karjala, Copyright Protection of Computer Documents, Reverse Engineering, and Professor Miller, 19 U. Dayton L. Rev. 975, 986 (1994) [hereinafter Karjala, Copyright Protection].
53. See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1247-48 (3d Cir. 1983).
54. 17 U.S.C. § 102(b) (1994); Jack E. Brown, "Analytical Dissection" of Copyrighted Computer Software-Complicating the Simple and Confounding the Complex, 25 Ariz. St. L.J. 801, 831-32 (1993). If conceptualized in this fashion, computer programs would be denied protection under copyright law by the express terms of § 102(b). See Samuelson et al., supra note 16, at 2351.
55. 17 U.S.C. § 102(b) (1994); Jack E. Brown, "Analytical Dissection" of Copyrighted Computer Software-Complicating the Simple and Confounding the Complex, 25 Ariz. St. L.J. 801, 831-32 (1993). If conceptualized in this fashion, computer programs would be denied protection under copyright law by the express terms of § 102(b). See Samuelson et al., supra note 16, at 2351.
56. 17 U.S.C. § 102(b) (1994); Jack E. Brown, "Analytical Dissection" of Copyrighted Computer Software-Complicating the Simple and Confounding the Complex, 25 Ariz. St. L.J. 801, 831-32 (1993). If conceptualized in this fashion, computer programs would be denied protection under copyright law by the express terms of § 102(b). See Samuelson et al., supra note 16, at 2351.
57. See CONTU Final Report, supra note 43, at 21-27. CONTU was charged by the 93rd Congress with determining the extent of copyright protection for computer programs. See Pub. L. No. 93-573, tit. II, 88 Stat. 1873, 1873-74 (1974). CONTU, rejecting trade secret and patent protection as viable alternatives, found that copyright was the intellectual property protection best suited for computer programs. See Jack M. Haynes, Computer Software: Intellectual Property Protection in the United States and Japan, 13 J. Marshall J. Computer & Info. L. 245, 254 (1995).
58. See CONTU Final Report, supra note 43, at 21-27. CONTU was charged by the 93rd Congress with determining the extent of copyright protection for computer programs. See Pub. L. No. 93-573, tit. II, 88 Stat. 1873, 1873-74 (1974). CONTU, rejecting trade secret and patent protection as viable alternatives, found that copyright was the intellectual property protection best suited for computer programs. See Jack M. Haynes, Computer Software: Intellectual Property Protection in the United States and Japan, 13 J. Marshall J. Computer & Info. L. 245, 254 (1995).
59. See CONTU Final Report, supra note 43, at 21-27. CONTU was charged by the 93rd Congress with determining the extent of copyright protection for computer programs. See Pub. L. No. 93-573, tit. II, 88 Stat. 1873, 1873-74 (1974). CONTU, rejecting trade secret and patent protection as viable alternatives, found that copyright was the intellectual property protection best suited for computer programs. See Jack M. Haynes, Computer Software: Intellectual Property Protection in the United States and Japan, 13 J. Marshall J. Computer & Info. L. 245, 254 (1995).
60. See Computer Software Copyright Act of 1980, Pub. L. No. 96-517, 94 Stat. 3015, 3028 (codified at 17 U.S.C. §§ 101, 117 (1994)). Computer programs are defined as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. § 101. "Statements or instructions" refers to program source code and object code. See infra note 53 and accompanying text. The Act was further amended to exempt from liability owners of computer programs who make or authorize the making of copies of, or adaptations to, computer programs when necessary to operate the program. See 94 Stat. at 3028.
61. 17 U.S.C. § 101.
62. See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 706-12 (2d Cir. 1992). Virtually all courts addressing software copyright cases after 1992 have followed Altai. See Mark A. Lemley, Convergence in the Law of Software Copyright?, 10 High Tech. L.J. 1, 14-15 (1995). But see Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 814-15 (1st Cir. 1995) (refusing to adopt the abstraction-nitration-comparison test set forth in Altai), aff'd per curiam, 516 U.S. 233 (1996).
63. See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 706-12 (2d Cir. 1992). Virtually all courts addressing software copyright cases after 1992 have followed Altai. See Mark A. Lemley, Convergence in the Law of Software Copyright?, 10 High Tech. L.J. 1, 14-15 (1995). But see Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 814-15 (1st Cir. 1995) (refusing to adopt the abstraction-nitration-comparison test set forth in Altai), aff'd per curiam, 516 U.S. 233 (1996).
64. See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 706-12 (2d Cir. 1992). Virtually all courts addressing software copyright cases after 1992 have followed Altai. See Mark A. Lemley, Convergence in the Law of Software Copyright?, 10 High Tech. L.J. 1, 14-15 (1995). But see Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 814-15 (1st Cir. 1995) (refusing to adopt the abstraction-nitration-comparison test set forth in Altai), aff'd per curiam, 516 U.S. 233 (1996).
65. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
66. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
67. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
68. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
69. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
70. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
71. This Note undertakes to address only a program's literal aspects, its source and object code, even though there are additional nonliteral elements of a computer program that may be afforded protection, such as the program's graphical display. After a program's basic structure and design has been determined, it must be reflected in language the computer can comprehend. See Altai, 982 F.2d at 698. First, the programmer must write source code that reflects the program's structure in a programming language such as COBOL or FORTRAN. See id. For the programmer, this drafting process is comparable to a "novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Id. (quoting Mark T. Kretschmer, Note, Copyright Protection for Software Architecture: Just Say No!, 1988 Colum. Bus. L. Rev. 823, 826). Source code is the textual form of a computer program and is comprised of two elements: the quasi-mathematical form of instructions that will instruct the computer, and instructive comments inserted by the computer programmer to help other readers understand the source code. See Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843, 851 n.17 (1994). Because the source code cannot be executed by a computer, the second step is to translate or "compile" the source code into machine-readable object code. See Altai, 982 F.2d at 698. Object code cannot be understood by humans; it is a binary language consisting of ones and zeros which instructs the computer. See id. Typically, only the program in object code form is distributed to the public in an effort to preserve trade secret protection because humans cannot understand object code, therefore, the trade secrets embodied therein cannot be discovered. See infra Part I.C.
72. See supra note 17.
73. See David A. Rice, Public Goods, Private Contract and Public Policy: Federal Preemption of Software License Prohibitions Against Reverse Engineering, 53 U. Pitt. L. Rev. 543, 567-68 (1992).
74. See A. Samuel Oddi, An Uneasier Case for Copyright than for Patent Protection of Computer Programs, 72 Neb. L. Rev. 351, 384 (1993).
75. 35 U.S.C. § 101 (1994).
76. See id. §§ 102, 103.
77. See Vincent Chiappetta, Patentability of Computer Software Instruction as an "Article of Manufacture:" Software as Such as the Right Stuff, 17 J. Marshall J. Computer & Info. L. 89, 100 (1998).
78. See In re Alappat, 33 F.3d 1526, 1542 (Fed. Cir. 1994).
79. See supra Part I.A.
80. See Allen B. Wagner, Patenting Computer Science: Are Computer Instruction Writings Patentable?, 17 J. Marshall J. Computer & Info. L. 5, 33 (1998).
81. See Karjala, Relative Roles, supra note 46, at 41-42.
82. One who, without authority, "makes, uses or sells any patented invention" infringes a patent. 35 U.S.C. § 271(a) (1994).
83. See David Bender & Anthony R. Barkume, Patents for Software-Related Inventions, 5 Software L.J. 279, 287 (1992).
84. See 17 U.S.C.A. § 302(a) (West Supp. 1999).
85. See 35 U.S.C. § 154(a)(2).
86. See John G. Mills, Possible Defenses to Complaints for Copyright Infringement and Reverse Engineering of Computer Software: Implications for Antitrust and I.P. Law, 80 J. Pat. & Trademark Off. Soc'y 101, 130 (1998).
87. See id.
88. See 37 C.F.R. § 202.3 (1998).
89. See Mark A. Lemley & David W. O'Brien, Encouraging Software Reuse, 49 Stan. L. Rev. 255, 259 (1997).
90. See Karjala, Relative Roles, supra note 46, at 41-42.
91. See supra note 46; see also Chiappetta, supra note 59, at 156 n.285 (noting the distinction between patent and copyright protection of computer software).
92. See Wagner, supra note 62, at 6. The Patent and Trademark Office ("PTO") historically had viewed software components as unpatentable mathematical formulations existing independently of functional structures or processes. See Lemley & O'Brien, supra note 71, at 280-81. Thus, patent claims routinely were rejected by the courts and the PTO unless the claim included an accompanying physical structure or embodiment. See, e.g., In re Pardo, 684 F.2d 912, 915 (C.C.P.A. 1982) (describing the two-part test for patentability as involving a determination first whether a mathematical algorithm is recited, and secondly, whether the algorithm is applied to physical elements).
93. See In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995) (noting that the Commissioner of Patents and Trademarks had conceded that computer software on computer-readable media is patentable subject matter); In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (holding that the application of the printed matter doctrine was inappropriate where the information in question was to be processed by a machine rather than by the human mind).
94. See Jeffrey R. Kuester et al., A New Frontier in Patents: Patent Claims to Propagated Signals, 17 J. Marshall J. Computer & Info. L. 75, 77 (1998).
95. See also State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373-74 (Fed. Cir. 1998) (refusing to apply the mathematical algorithm exception to computer software where it produces "a useful, concrete and tangible result"), cert. denied, 119 S. Ct. 851 (1999).
96. See Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7482, 7487 n.1 (1996) [hereinafter Examination Guidelines]; see also Patent and Trademark Office: Software Embodied on Diskette Is Patentable Subject Matter, PTO Declares, 50 Pat. Trademark & Copyright J. (BNA) 3, 3 (1995) (observing that the PTO "declared that computer programs embodied in a tangible medium, such as a floppy diskette, are patentable subject matter").
97. See Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7482, 7487 n.1 (1996) [hereinafter Examination Guidelines]; see also Patent and Trademark Office: Software Embodied on Diskette Is Patentable Subject Matter, PTO Declares, 50 Pat. Trademark & Copyright J. (BNA) 3, 3 (1995) (observing that the PTO "declared that computer programs embodied in a tangible medium, such as a floppy diskette, are patentable subject matter").
98. Examination Guidelines, supra note 78, at 7482.
99. See id. at 7481.
100. See id.
101. See Julie E. Cohen, Reverse Engineering and the Rise of Electronic Vigilantism: Intellectual Property Implication of "Lock-Out" Programs, 68 S. Cal. L. Rev. 1091, 1112 (1995) [hereinafter Cohen, Electronic Vigilantism].
102. See Examination Guidelines, supra note 78, at 7481.
103. The Examination Guidelines state that "[w]hen functional descriptive material [such as computer code] is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases." Id.
104. See Mills, supra note 68, at 129. A discussion of whether the recent decisions and PTO Guidelines impermissibly intrude into the sphere of copyright is beyond the scope of this Note. Compare Mazer v. Stein, 347 U.S. 201, 217 (1954) ("Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted."), with Wagner, supra note 62, at 36 (arguing that patent protection for computer programs is inconsistent with copyright fundamentals).
105. See Robert C. Haldiman, Ephemeral Infringement by Customizable Software: Liability Structures to Promote New Technology and Protect the Old, 80 J. Pat. & Trademark Off. Soc'y 651, 674 n.13 (1998).
106. See, e.g., Softel, Inc. v. Dragon Med. & Scientific Communications, Inc., 118 F.3d 955, 968 (2d Cir. 1997) (finding that the lower court's conclusion that the individual software elements of plaintiff's computer program were not protectable did not address plaintiff's claim that the combination of the elements was a trade secret); Rivendell Forest Prod., Ltd. v. Georgia-Pacific Corp., 28 F.3d 1042, 1045 (10th Cir. 1994) (recognizing that a "trade secret can exist in a combination of characteristics and components, each of which, by itself, is in the public domain, but the unified process, design and operation of which, in unique combination, affords a competitive advantage and is a protectable secret" (quoting Imperial Chem. Indus., Ltd. v. Nat'l Distillers & Chem. Corp., 342 F.2d 737, 742 (2d Cir. 1965)); Harbor Software, Inc. v. Applied Sys., Inc., 887 F. Supp. 86, 90 (S.D.N.Y. 1995) (noting that "the overall design of a software program may be protectable as a trade secret, even if the individual components of that program are common knowledge in the programming industry" (emphasis in original)). Although state trade secret law does not create true intellectual property rights, as do the copyright and patent laws, it does establish standards of conduct that protect against unethical or unfair methods of gaining access to industrial technology and knowledge. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 475-76 (1974).
107. Unif. Trade Secrets Act (amended 1985), 14 U.L.A. 433 (1990). Over forty states have adopted some version of the Act. See Arthur J. Schwab & David J. Porter, Federal Protection of Trade Secrets: Understanding the Economic Espionage Act of 1996, J. Proprietary Rights, Apr. 1998, at 2, 2.
108. Unif. Trade Secrets Act (amended 1985), 14 U.L.A. 433 (1990). Over forty states have adopted some version of the Act. See Arthur J. Schwab & David J. Porter, Federal Protection of Trade Secrets: Understanding the Economic Espionage Act of 1996, J. Proprietary Rights, Apr. 1998, at 2, 2.
109. Unif. Trade Secrets Act § 1, 14 U.L.A. at 438. States that have not adopted the Uniform Trade Secrets Act, including New York, generally look to the first Restatement of Torts when defining a trade secret. See Softel, 118 F.3d at 968. The Restatement defines a trade secret as "any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it." Restatement of Torts § 757 cmt. b. (1939)
110. See Rockwell Graphic Sys., Inc. v. DEV Indus., Inc., 925 F.2d 174, 177 (7th Cir. 1991); Anacomp, Inc. v. Shell Knob Servs., Inc., No. 93 Civ. 4003, 1994 U.S. Dist. LEXIS 223, at *27 (S.D.N.Y. Jan. 7, 1994), aff'd, 29 F.3d 621 (2d Cir. 1994).
111. See Restatement of Torts § 757 cmt. b. Trade secrets may theoretically be protected in perpetuity.
112. See Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 848 (10th Cir. 1993).
113. For example, the recipe for Coca-Cola is one of the best-kept trade secrets in the world. See Coca-Cola Bottling Co. v. Coca-Cola Co., 107 F.R.D. 288, 289 (D. Del. 1985).
114. See, e.g., Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 663-64 (4th Cir. 1993) (concluding that distribution of disks containing object code did not destroy the secrecy of the source code); Data Gen. Corp. v. Grumman Sys. Support Corp., 825 F. Supp. 340, 359 (D. Mass. 1993) (holding that the contents of a computer program distributed only in object code format were protectable trade secrets), aff'd, 36 F.3d 1147 (1st Cir. 1994); Barr-Mullin, Inc. v. Browning, 424 S.E.2d 226, 230 (N.C. Ct. App. 1993) (finding that source code was not "readily ascertainable" from object code, and therefore could be considered a trade secret); cf. Foreign Sale of MS-DOS Is Contributory Infringement, 48 Pat. Trademark & Copyright J. (BNA) 165, 166 (1994) (reporting that the court in Stac Elecs. v. Microsoft Corp., CV-93-413-ER (C.D. Cal. 5/13/94 and 6/8/94), held that trade secret protection had been lost by distribution of copies of software to customers who could have reverse engineered it and discovered the trade secrets).
115. See, e.g., Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 663-64 (4th Cir. 1993) (concluding that distribution of disks containing object code did not destroy the secrecy of the source code); Data Gen. Corp. v. Grumman Sys. Support Corp., 825 F. Supp. 340, 359 (D. Mass. 1993) (holding that the contents of a computer program distributed only in object code format were protectable trade secrets), aff'd, 36 F.3d 1147 (1st Cir. 1994); Barr-Mullin, Inc. v. Browning, 424 S.E.2d 226, 230 (N.C. Ct. App. 1993) (finding that source code was not "readily ascertainable" from object code, and therefore could be considered a trade secret); cf. Foreign Sale of MS-DOS Is Contributory Infringement, 48 Pat. Trademark & Copyright J. (BNA) 165, 166 (1994) (reporting that the court in Stac Elecs. v. Microsoft Corp., CV-93-413-ER (C.D. Cal. 5/13/94 and 6/8/94), held that trade secret protection had been lost by distribution of copies of software to customers who could have reverse engineered it and discovered the trade secrets).
116. See, e.g., Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 663-64 (4th Cir. 1993) (concluding that distribution of disks containing object code did not destroy the secrecy of the source code); Data Gen. Corp. v. Grumman Sys. Support Corp., 825 F. Supp. 340, 359 (D. Mass. 1993) (holding that the contents of a computer program distributed only in object code format were protectable trade secrets), aff'd, 36 F.3d 1147 (1st Cir. 1994); Barr-Mullin, Inc. v. Browning, 424 S.E.2d 226, 230 (N.C. Ct. App. 1993) (finding that source code was not "readily ascertainable" from object code, and therefore could be considered a trade secret); cf. Foreign Sale of MS-DOS Is Contributory Infringement, 48 Pat. Trademark & Copyright J. (BNA) 165, 166 (1994) (reporting that the court in Stac Elecs. v. Microsoft Corp., CV-93-413-ER (C.D. Cal. 5/13/94 and 6/8/94), held that trade secret protection had been lost by distribution of copies of software to customers who could have reverse engineered it and discovered the trade secrets).
117. See, e.g., Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 663-64 (4th Cir. 1993) (concluding that distribution of disks containing object code did not destroy the secrecy of the source code); Data Gen. Corp. v. Grumman Sys. Support Corp., 825 F. Supp. 340, 359 (D. Mass. 1993) (holding that the contents of a computer program distributed only in object code format were protectable trade secrets), aff'd, 36 F.3d 1147 (1st Cir. 1994); Barr-Mullin, Inc. v. Browning, 424 S.E.2d 226, 230 (N.C. Ct. App. 1993) (finding that source code was not "readily ascertainable" from object code, and therefore could be considered a trade secret); cf. Foreign Sale of MS-DOS Is Contributory Infringement, 48 Pat. Trademark & Copyright J. (BNA) 165, 166 (1994) (reporting that the court in Stac Elecs. v. Microsoft Corp., CV-93-413-ER (C.D. Cal. 5/13/94 and 6/8/94), held that trade secret protection had been lost by distribution of copies of software to customers who could have reverse engineered it and discovered the trade secrets).
118. See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992). Section 301 provides, in pertinent part, that "[n]othing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to . . . activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106." 17 U.S.C. § 301(b) (1994). The patent laws do not contain an express preemption section and state trade secret laws may coexist with the federal patent laws. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478-79 (1974).
119. See Altai, 982 F.2d at 716-17.
120. See Trandes, 996 F.2d at 659.
121. See Altai, 982 F.2d at 716.
122. See id. at 717.
123. A trade secret is appropriated improperly by "theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means." Unif. Trade Secrets Act § 1 (amended 1985), 14 U.L.A. 433, 437 (1990). The Restatement's definition is virtually identical. See Restatement (Third) of Unfair Competition § 43 (1995) ("'Improper' means of acquiring another's trade secret . . . include theft, fraud, unauthorized interception of communications, inducement of or knowing participation in a breach of confidence, and other means either wrongful in themselves or wrongful under the circumstances of the case.").
124. See 5 Nimmer & Nimmer, supra note 43, § 27.02[B], at 27-14. "Click here" licenses, also referred to as "clickwrap" licenses, are the electronic equivalent of shrinkwrap licenses. See Charles R. McManis, The Privatization (or "Shrink-Wrapping") of American Copyright Law, 87 Cal. L. Rev. 173, 173 (1999) [hereinafter McManis, Privatization]. This type of license appears on a user's computer screen when the user first loads a computer program, and requires the user to "click" his acceptance of the terms of the license before he uses the software. See Madison, supra note 16, at 1058. Both types of licenses will be referred to herein as shrinkwrap licenses.
125. See 5 Nimmer & Nimmer, supra note 43, § 27.02[B], at 27-14. "Click here" licenses, also referred to as "clickwrap" licenses, are the electronic equivalent of shrinkwrap licenses. See Charles R. McManis, The Privatization (or "Shrink-Wrapping") of American Copyright Law, 87 Cal. L. Rev. 173, 173 (1999) [hereinafter McManis, Privatization]. This type of license appears on a user's computer screen when the user first loads a computer program, and requires the user to "click" his acceptance of the terms of the license before he uses the software. See Madison, supra note 16, at 1058. Both types of licenses will be referred to herein as shrinkwrap licenses.
126. See 5 Nimmer & Nimmer, supra note 43, § 27.02[B], at 27-14. "Click here" licenses, also referred to as "clickwrap" licenses, are the electronic equivalent of shrinkwrap licenses. See Charles R. McManis, The Privatization (or "Shrink-Wrapping") of American Copyright Law, 87 Cal. L. Rev. 173, 173 (1999) [hereinafter McManis, Privatization]. This type of license appears on a user's computer screen when the user first loads a computer program, and requires the user to "click" his acceptance of the terms of the license before he uses the software. See Madison, supra note 16, at 1058. Both types of licenses will be referred to herein as shrinkwrap licenses.
127. See Mark Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. Cal. L. Rev. 1239, 1246 (1995) [hereinafter Lemley, Intellectual Property]. For an example of a typical shrinkwrap license, see Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 257 n.2 (5th Cir. 1988).
128. See Mark Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. Cal. L. Rev. 1239, 1246 (1995) [hereinafter Lemley, Intellectual Property]. For an example of a typical shrinkwrap license, see Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 257 n.2 (5th Cir. 1988).
129. See Madison, supra note 16, at 1029 n.11. Both patent and copyright laws protect only those ideas that are either functionally or expressively embodied in a work. See supra Part I.A-B.
130. The contractual breach of promise may also be referred to as a breach of trust or confidential relationship. See Maureen A. O'Rourke, Drawing the Boundary Between Copyright and Contract: Copyright Preemption of Software License Terms, 45 Duke L.J. 479, 523 (1995) [hereinafter O'Rourke, Drawing the Boundary].
131. See Frontline Test Equip., Inc. v. Greenleaf Software, Inc., 10 F. Supp. 2d 583, 592 (W.D. Va. 1998).
132. See supra notes 90-91 and accompanying text.
133. See 1 Nimmer & Nimmer, supra note 43, § 1.01[B][1], at 1-10 to -17.
134. See Stephen Fraser, Canada-United States Trade Issues: Back from Purgatory? Why Computer Software "Shrink-Wrap" Licenses Should Be Laid to Rest, 6 Tul. J. Int'l & Comp. L. 183, 189 (1998).
135. See supra note 50 and accompanying text.
136. See In re Alappat, 33 F.3d 1526, 1542-45 (Fed. Cir. 1994) (holding that patentability is not precluded even though computer program contains mathematical subject matter).
137. See Thomas M.S. Hemnes, Restraints on Alienation, Equitable Servitudes, and the Feudal Nature of Computer Software Licensing, 71 Denv. U. L. Rev. 577, 578-80 (1994).
138. See, e.g., Step-Saver Data Sys., Inc. v. Wyse Tech., 939 F.2d 91, 105-06 (3d Cir. 1991) (rejecting the defendant's argument that, under the U.C.C., shrinkwrap licenses were binding modifications); Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 269-70 (5th Cir. 1988) (affirming lower court's holding that shrinkwrap license at issue was an unenforceable contract of adhesion); Lemley, Intellectual Property, supra note 102, at 1248-53 (observing that before ProCD, shrinkwrap licenses were not enforced).
139. 86 F.3d 1447 (7th Cir. 1996).
140. See ProCD, Inc. v. Zeidenberg, 908 F. Supp. 640, 644-45 (W.D. Wis.), rev'd, 86 F.3d 1447 (7th Cir. 1996).
141. Id. at 645.
142. See id.
143. See id. at 644.
144. See id. at 649-50. Section 117 provides, in pertinent part: [I]t is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided: (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner . . . . 17 U.S.C. § 117 (1994).
145. See ProCD, 908 F. Supp. at 656-57. The Supreme Court, in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), reiterated that copyright will only be afforded those works that satisfy the constitutionally mandated standard of originality. See id. at 347-48. The Court further stated that it is a well-established proposition that facts, such as the phone and address listings in ProCD, and ideas are not copyrightable. See id. at 344.
146. See ProCD, 908 F. Supp. at 644.
147. Id.
148. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1449 (7th Cir. 1996).
149. See id. at 1452-53.
150. See id. at 1454-55.
151. See id.
152. The Seventh Circuit stated that a "copyright is a right against the world. Contracts, by contrast, generally affect only their parties; strangers may do as they please, so contracts do not create 'exclusive rights.'" See id. at 1454.
153. See id. at 1455.
154. See, e.g., Expediters Int'l of Wash., Inc. v. Direct Line Cargo Management Servs., Inc., 995 F. Supp. 468, 483 (D.N.J. 1998) (noting that a contract claim is not equivalent to rights under copyright law because a promise is required); Lattie v. Murdach, 42 U.S.P.Q.2d (BNA) 1240, 1244 (N.D. Cal. 1997) (concluding that a contract claim is not equivalent to exclusive copyright rights); Architectronics, Inc. v. Control Sys., Inc., 935 F. Supp. 425, 438-41 (S.D.N.Y. 1996) (recognizing that the consensus among courts and commentators is that breach of contract claims are not preempted by the Copyright Act); Madison, supra note 16, at 1053 & n.104 (citing commentators).
155. See National Conference of Comm'rs on Unif. State Laws, Uniform Commercial Code Article 2B: Software Contracts and Licenses of Information § 2B-208 ("Mass-Market Licenses") (visited Apr. 11, 1999) 〈http://www.law.uh.edu/ucc2b/ 080198/080198.html〉 (Aug. 1, 1998 draft) [hereinafter Uniform Computer Act]. The former Article 2B for Licenses, when finalized, will no longer supplement the UCC with provision for electronic contracts and software licensing agreements, but instead will be promulgated as the Uniform Computer Information Transactions Act. See National Conference of Comm'rs on Unif. State Laws & Am. Law Inst., NCCUSL to Promulgate Freestanding Uniform Computer Information Transactions Act: ALI and NCCUSL Announce That Legal Rules for Computer Information Will Not Be Part of UCC (visited Apr. 16, 1999) 〈http://www.ali.org/ali/pr040799.htm〉.
156. See National Conference of Comm'rs on Unif. State Laws, Uniform Commercial Code Article 2B: Software Contracts and Licenses of Information § 2B-208 ("Mass-Market Licenses") (visited Apr. 11, 1999) 〈http://www.law.uh.edu/ucc2b/ 080198/080198.html〉 (Aug. 1, 1998 draft) [hereinafter Uniform Computer Act]. The former Article 2B for Licenses, when finalized, will no longer supplement the UCC with provision for electronic contracts and software licensing agreements, but instead will be promulgated as the Uniform Computer Information Transactions Act. See National Conference of Comm'rs on Unif. State Laws & Am. Law Inst., NCCUSL to Promulgate Freestanding Uniform Computer Information Transactions Act: ALI and NCCUSL Announce That Legal Rules for Computer Information Will Not Be Part of UCC (visited Apr. 16, 1999) 〈http://www.ali.org/ali/pr040799.htm〉.
157. See Uniform Computer Act, supra note 129, § 2B-208.
158. See Madison, supra note 16, at 1029-31; McManis, Privatization, supra note 101, at 173.
159. See Tom W. Bell, Fair Use v. Fared Use: The Impact of Automated Rights Management on Copyright's Fair Use Doctrine, 76 N.C. L. Rev. 557, 616-17 (1998) (arguing that a system of private contract and "fared use" may offer greater access to proprietary works).
160. See Madison, supra note 16, at 1031-32.
161. See Mark A. Lemley, Beyond Preemption: The Law and Policy of Intellectual Property Licensing, 87 Cal. L. Rev. 111, 148 (1999) [hereinafter Lemley, Beyond Preemption].
162. See supra notes 97-107 and accompanying text.
163. See Lemley & O'Brien, supra note 71, at 276.
164. See J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms, 94 Colum. L. Rev. 2432, 2436-42 (1994).
165. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 476 (1974).
166. See Johnson-Laird, supra note 53, at 843.
167. For a detailed technical discussion regarding the complexities of reverse engineering, see id.
168. Reverse engineering is necessary for users and developers who desire to examine the structure and technical parameters of a computer program because object code is not intelligible to humans. See Charles R. McManis, Intellectual Property Protection and Reverse Engineering of Computer Programs in the United States and the European Community, 8 High Tech. L.J. 25, 29 (1993) [hereinafter McManis, Intellectual Property].
169. See G. Gervaise Davis III, Scope of Protection of Computer-Based Works: Reverse Engineering, Clean Rooms and Decompilation, in 15th Annual Computer Law Institute 115, 142-45 (PLI Pats., Copyrights, Trademarks, & Literary Prop. Course Handbook Series No. 370, 1993). Reverse engineering for educational purposes likely is a "fair use" under 17 U.S.C. § 107. See id. at 142-43. Indeed, program source code is a valuable tool used to teach computer programming. See Clayton Walnum, Windows 98 Programming Secrets (1998) (enclosing on compact disk the source code for all programs in tutorial book).
170. See G. Gervaise Davis III, Scope of Protection of Computer-Based Works: Reverse Engineering, Clean Rooms and Decompilation, in 15th Annual Computer Law Institute 115, 142-45 (PLI Pats., Copyrights, Trademarks, & Literary Prop. Course Handbook Series No. 370, 1993). Reverse engineering for educational purposes likely is a "fair use" under 17 U.S.C. § 107. See id. at 142-43. Indeed, program source code is a valuable tool used to teach computer programming. See Clayton Walnum, Windows 98 Programming Secrets (1998) (enclosing on compact disk the source code for all programs in tutorial book).
171. See McManis, Intellectual Property, supra note 141, at 29-30.
172. See id. at 30-31.
173. See id. at 31.
174. Computer program code is especially vulnerable to fast, precise, and inexpensive copying. See Dennis S. Karjala, Copyright Protection of Computer Program Structure, 64 Brook. L. Rev. 519, 532-33 (1998) [hereinafter Karjala, Program Structure]. Therefore, allowing unauthorized users to appropriate the benefits of a producer's investment implicates the classic "public goods" problem. See Robert Cooter & Thomas Ulen, Law and Economics 108-12 (1988). This occurs when producers, worried that they will not be able to recoup their investment in a good before its value is appropriated by free riders, undersupply the market for the good. See id.; see also Samuelson et al., supra note 16, at 2337-41 (discussing the public goods problem and market failure associated with computer software).
175. Computer program code is especially vulnerable to fast, precise, and inexpensive copying. See Dennis S. Karjala, Copyright Protection of Computer Program Structure, 64 Brook. L. Rev. 519, 532-33 (1998) [hereinafter Karjala, Program Structure]. Therefore, allowing unauthorized users to appropriate the benefits of a producer's investment implicates the classic "public goods" problem. See Robert Cooter & Thomas Ulen, Law and Economics 108-12 (1988). This occurs when producers, worried that they will not be able to recoup their investment in a good before its value is appropriated by free riders, undersupply the market for the good. See id.; see also Samuelson et al., supra note 16, at 2337-41 (discussing the public goods problem and market failure associated with computer software).
176. Computer program code is especially vulnerable to fast, precise, and inexpensive copying. See Dennis S. Karjala, Copyright Protection of Computer Program Structure, 64 Brook. L. Rev. 519, 532-33 (1998) [hereinafter Karjala, Program Structure]. Therefore, allowing unauthorized users to appropriate the benefits of a producer's investment implicates the classic "public goods" problem. See Robert Cooter & Thomas Ulen, Law and Economics 108-12 (1988). This occurs when producers, worried that they will not be able to recoup their investment in a good before its value is appropriated by free riders, undersupply the market for the good. See id.; see also Samuelson et al., supra note 16, at 2337-41 (discussing the public goods problem and market failure associated with computer software).
177. Computer program code is especially vulnerable to fast, precise, and inexpensive copying. See Dennis S. Karjala, Copyright Protection of Computer Program Structure, 64 Brook. L. Rev. 519, 532-33 (1998) [hereinafter Karjala, Program Structure]. Therefore, allowing unauthorized users to appropriate the benefits of a producer's investment implicates the classic "public goods" problem. See Robert Cooter & Thomas Ulen, Law and Economics 108-12 (1988). This occurs when producers, worried that they will not be able to recoup their investment in a good before its value is appropriated by free riders, undersupply the market for the good. See id.; see also Samuelson et al., supra note 16, at 2337-41 (discussing the public goods problem and market failure associated with computer software).
178. See Madison, supra note 16, at 1097 (questioning how to conceive of the public domain in a fashion that allows private restrictions on access to a socially acceptable degree).
179. See infra Part II.B.1-2.
180. See infra Part II.B.3.
181. See infra Part II.B.4.
182. See David A. Rice, Digital Information as Property & Product: U.C.C. Article 2B, 22 U. Dayton L. Rev. 621, 636-38 (1997) (arguing that object code must be reverse engineered in order to free up the unprotected ideas embedded therein).
183. For the statutory foundation of the fair use doctrine, see 17 U.S.C. § 107 (1994). The statute requires a consideration of four factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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 upon the potential market for or value of the copyrighted work. Id.
184. See Mark A. Lemley & David McGowan, Legal Implications of Network Economic Effects, 86 Calif. L. Rev. 479, 524-25 (1998) [hereinafter Lemley & McGowan, Legal Implications].
185. See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983); Digital Communications Assocs., Inc. v. Softklone Distrib. Corp., 659 F. Supp. 449, 460 (N.D. Ga. 1987).
186. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1539 n.18 (11th Cir. 1996) (holding that reverse engineering a computer program to reveal the unprotectable ideas embedded in the object code is a fair use); Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 843 (Fed. Cir. 1992) (same); DSC Communications Corp. v. Pulse Communications Inc., 976 F. Supp. 359, 364 (E.D. Va. 1997) (same).
187. 977 F.2d 1510 (9th Cir. 1992).
188. See id. at 1514-15.
189. See id. at 1514-16.
190. See id. at 1516.
191. See Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1396-99 (N.D. Cal.), aff'd in part, rev'd in part, 977 F.2d 1510 (9th Cir. 1992).
192. See Sega, 977 F.2d at 1527.
193. See id. at 1522-23.
194. See supra note 155 and accompanying text.
195. See Lemley & McGowan, Legal Implications, supra note 153, at 525.
196. See id. at 524.
197. See 35 U.S.C. § 271(a) (1994).
198. See id. § 112.
199. See id.
200. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457 (Fed. Cir. 1991).
201. See Lemley & O'Brien, supra note 71, at 295 n.259.
202. See Robotic Vision Sys., Inc. v. View Eng'g, Inc., 112 F.3d 1163, 1166 (Fed. Cir. 1997); Lawrence D. Graham & Richard O. Zerbe, Jr., Economically Efficient Treatment of Computer Software: Reverse Engineering, Protection, and Disclosure, 22 Rutgers Computer & Tech. L.J. 61, 96-97 (1996).
203. See Robotic Vision Sys., Inc. v. View Eng'g, Inc., 112 F.3d 1163, 1166 (Fed. Cir. 1997); Lawrence D. Graham & Richard O. Zerbe, Jr., Economically Efficient Treatment of Computer Software: Reverse Engineering, Protection, and Disclosure, 22 Rutgers Computer & Tech. L.J. 61, 96-97 (1996).
204. See Lemley & McGowan, Legal Implications, supra note 153, at 524 n.195.
205. See Graham & Zerbe, supra note 171, at 99.
206. See 35 U.S.C. § 271(a) (1994).
207. See, e.g., Cataphote Corp. v. Hudson, 422 F.2d 1290, 1293 (5th Cir. 1970) (holding that it is not a misappropriation to discover a trade secret by reverse engineering); Restatement (Third) of Unfair Competition § 43 (1995) ("Independent discovery and analysis of publicly available products or information are not improper means of acquisition.").
208. See Maureen A. O'Rourke, Fencing Cyberspace: Drawing Borders in a Virtual World, 82 Minn. L. Rev. 609, 612-13 (1998) [hereinafter O'Rourke, Fencing Cyberspace].
209. See Madison, supra note 16, at 1130. If reverse engineering is forbidden by contract, software developers may be granted de facto monopolies over ideas, processes, and systems that have not met the standards for copyright or patent protection. See DSC Communications Corp. v. Pulse Communications Inc., 976 F. Supp. 359, 364 (E.D. Va. 1997); Samuelson et al., supra note 16, at 2390 n.329.
210. See supra Part II.B.1.
211. See supra Part II.B.1-3.
212. See McManis, Privatization, supra note 101, at 176.
213. See Madison, supra note 16, at 1137-38.
214. See Julie E. Cohen, Copyright and the Jurisprudence of Self-Help, 13 Berkeley Tech. L.J. 1089, 1130-31 (1998) [hereinafter Cohen, Self-Help].
215. See Maureen A. O'Rourke, Copyright Preemption After the ProCD Case: A Market-Based Approach, 12 Berkeley Tech. L.J. 53, 80 (1997) [hereinafter O'Rourke, Copyright Preemption].
216. See supra notes 128-30 and accompanying text.
217. No. C-97-20367-JF, 1998 WL 740798 (N.D. Cal. June 9, 1998).
218. See id. at *4-*5.
219. The Supremacy Clause provides, in pertinent part, that the "Constitution, and the Laws of the United States which shall be made in Pursuance thereof . . . shall be the supreme Law of the Land." U.S. Const, art. VI, § 2.
220. See H.R. Rep. No. 94-1476, at 131 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5747.
221. Indeed, Congress, when enacting § 301, did not consider the possibility of intervening state contractual rights that would permit the displacement of copyright. See Cohen, Self-Help, supra note 182, at 1130. Additionally, the ProCD court may have failed to consider preemption under the Supremacy Clause. See D.C. Toedt III, COUNTERPOINT: Shrinkwrap License Enforceability Issues, Computer Law., Sept. 1996, at 7, 8-9.
222. Indeed, Congress, when enacting § 301, did not consider the possibility of intervening state contractual rights that would permit the displacement of copyright. See Cohen, Self-Help, supra note 182, at 1130. Additionally, the ProCD court may have failed to consider preemption under the Supremacy Clause. See D.C. Toedt III, COUNTERPOINT: Shrinkwrap License Enforceability Issues, Computer Law., Sept. 1996, at 7, 8-9.
223. See California Fed. Sav. & Loan Ass'n v. Guerra, 479 U.S. 272, 280-81 (1987).
224. See id.
225. See id. at 281.
226. See Cohen, Self-Help, supra note 182, at 1130-31.
227. See supra note 17.
228. See supra note 17.
229. ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1455 (7th Cir. 1996) (citation omitted). But see McManis, Privatization, supra note 101, at 182-84 (contending that such provisions should be preempted). The court presumably would analogize prohibitions against reverse engineering to encryption devices, which similarly hinder comprehension of a program's source code.
230. See Lemley, Beyond Preemption, supra note 134, at 144-51.
231. See id. at 145.
232. Id.; see also Apik Minassian, Comment, The Death of Copyright: Enforceability of Shrinkwrap Licensing Agreements, 45 UCLA L. Rev. 569, 601-07 (1997) (urging a more nuanced approach to preemption under § 301).
233. Id.; see also Apik Minassian, Comment, The Death of Copyright: Enforceability of Shrinkwrap Licensing Agreements, 45 UCLA L. Rev. 569, 601-07 (1997) (urging a more nuanced approach to preemption under § 301).
234. See Lemley, Beyond Preemption, supra note 134, at 146.
235. See id.
236. 25 F. Supp. 2d 1218 (D. Utah 1997).
237. See id. at 1222.
238. See id.
239. See id.
240. See id. at 1229.
241. See id. The "first sale" doctrine provides that "the owner of a particular copy . . . lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy . . . ." 17 U.S.C. § 109(a) (1994).
242. See Novell, 25 F. Supp. 2d at 1230.
243. See id.
244. See supra notes 128-29 and accompanying text.
245. See Raymond T. Nimmer, Breaking Barriers: The Relation Between Contract and Intellectual Property Law, 13 Berkeley Tech. L.J. 827, 883 (1998) [hereinafter Nimmer, Breaking Barriers].
246. See id. at 831 ("The claim that first sale rights control is . . . a matter of turning the relationship between contract and copyright on its head.").
247. The misuse doctrine gives courts a means by which to prevent over-reaching to achieve anti-competitive ends. See id. at 870-71.
248. See Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977 (4th Cir. 1990).
249. See Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 491-92 (1942).
250. 911 F.2d 970 (4th Cir. 1990).
251. See id. at 971.
252. See id.
253. See id. at 972.
254. See Lasercomb Am., Inc. v. Holiday Steel Rule Die Corp., 656 F. Supp. 612, 616 (M.D.N.C. 1987) rev'd, 911 F.2d 970 (1990).
255. See Lasercomb, 911 F.2d at 978.
256. Id. (footnote omitted).
257. See id. at 977.
258. See id. at 978.
259. See P.C. Films Corp. v. MGM/UA Home Video, Inc., 138 F.3d 453, 457-58 (2d Cir.) (holding that a "perpetual" license is enforceable, at least for the term of the copyright), cert. denied, 119 S. Ct. 542 (1998). Moreover, section 2B-308 ("Duration of Contract") provides a default rule of a perpetual license in certain instances. See Uniform Computer Act, supra note 129, § 2B-308(2)(b).
260. See Cohen, Electronic Vigilantism, supra note 82, at 1194-98.
261. See William E. Thomson, Jr. & Margaret Y. Chu, Overstepping the Bounds: Copyright Misuse, Computer Law., Nov. 1998, at 1, 5.
262. See id.
263. See id.
264. See Madison, supra note 16, at 1116 n.382.
265. Cf. id. at 1139 (advocating an express delegation of authority from Congress to federal courts in order to preserve the public domain). Allowing a court to strike contractual provisions based on its view of what proper policy should be, however, arguably undermines societal benefits produced by the commercialization of information. See Nimmer, Breaking Barriers, supra note 211, at 872.
266. See supra note 49 and accompanying text.
267. See Haynes, supra note 49, at 254.
268. Most courts refuse to recognize an independent good faith cause of action under Article 2 of the UCC. See Steven H. Hilfinger, Note, K.M.C. Co. v. Irving Trust Co.: Discretionary Financing and the Implied Duty of Good Faith, 81 Nw. U. L. Rev. 539, 550 (1987).
269. See Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification, 86 Cal. L. Rev. 241, 296 (1998).
270. The common theme that joins the approaches previously discussed is that prohibitions against reverse engineering represent an improper extension of intellectual property rights. See Nimmer, Breaking Barriers, supra note 211, at 867. Whether prohibitions against reverse engineering improperly extend, or merely buttress, preexisting intellectual property rights hinges upon diametrically opposed constructions of the intellectual property laws. See infra notes 237-41 and accompanying text.
271. See supra note 17.
272. See supra note 146.
273. See Madison, supra note 16, at 1124.
274. See O'Rourke, Copyright Preemption, supra note 183, at 78.
275. See id.
276. See id.
277. See Madison, supra note 16, at 1124; O'Rourke, Copyright Preemption, supra note 183, at 81.
278. See supra note 146.
279. See Clapes, supra note 15, at 961.
280. See Kathryn D. Piele, Three Years After Campbell v. Acuff-Rose Music, Inc.: What Is Fair Game for Parodists?, 18 Loy. L.A. Ent. L.J. 75, 99 (1997).
281. See Clapes, supra note 15, at 947-48.
282. See id. at 947.
283. See id. at 962.
284. See id. at 963; Miller, supra note 15, at 1026-27.
285. See Miller, supra note 15, at 1031.
286. See, e.g., Amy Harmon, Open-Source Software Takes Surprise Leap in Popularity, San Diego Union-Trib., Feb. 9, 1999, at 3 (stating that open source software was one of the year's most striking developments); Mark Leibovich, The Spreading Grass- Roots Threat to Microsoft: Eric Raymond Crusades for "Open-Source" Software, Wash. Post, Dec. 3, 1998, at A1 (noting that open source software has recently "forged dramatic mainstream inroads").
287. See, e.g., Amy Harmon, Open-Source Software Takes Surprise Leap in Popularity, San Diego Union-Trib., Feb. 9, 1999, at 3 (stating that open source software was one of the year's most striking developments); Mark Leibovich, The Spreading Grass-Roots Threat to Microsoft: Eric Raymond Crusades for "Open-Source" Software, Wash. Post, Dec. 3, 1998, at A1 (noting that open source software has recently "forged dramatic mainstream inroads").
288. See Harvey Blume, If You Love Your Online Business Set Your Code Free, New Media, Jan. 1999, at 26, 26.
289. See Kevin Tolly, A Reality Check on "Open Source", Network World, Feb. 8, 1999, at 22, 22.
290. See, e.g., Leander Kahney & Polly Sprenger, Apple's Open-Source Movement, (Mar. 15, 1999) 〈http://www.wired.com/news/technology/story/18488.html?wnpgl〉 (discussing the difference between free software and open source software); Malcolm Maclachlan, Jini: Start of "Semi-Open" Source Movement, (Jan. 28, 1999) 〈http:// www.techweb.com/printableArticle?doc_idB19990128S0001〉 (noting that the Sun Community Source License is a combination of open source and proprietary models); Peter G. Neumann, Robust Open-Source Software, Comm. of the ACM, Feb. 1998, at 128, 128 (providing examples of open, but proprietary, software). The licenses typically allow users to alter the original source code, but all modifications must be sent back to the right holder. See Deborah Gage, Should Java Go Open Source? (Feb. 12, 1999) 〈http://www.zdnet.com/zdnn/stories/news/0,4586,2208772,00.html〉.
291. See, e.g., Leander Kahney & Polly Sprenger, Apple's Open-Source Movement, (Mar. 15, 1999) 〈http://www.wired.com/news/technology/story/18488.html?wnpgl〉 (discussing the difference between free software and open source software); Malcolm Maclachlan, Jini: Start of "Semi-Open" Source Movement, (Jan. 28, 1999) 〈http:// www.techweb.com/printableArticle?doc_idB19990128S0001〉 (noting that the Sun Community Source License is a combination of open source and proprietary models); Peter G. Neumann, Robust Open-Source Software, Comm. of the ACM, Feb. 1998, at 128, 128 (providing examples of open, but proprietary, software). The licenses typically allow users to alter the original source code, but all modifications must be sent back to the right holder. See Deborah Gage, Should Java Go Open Source? (Feb. 12, 1999) 〈http://www.zdnet.com/zdnn/stories/news/0,4586,2208772,00.html〉.
292. See, e.g., Leander Kahney & Polly Sprenger, Apple's Open-Source Movement, (Mar. 15, 1999) 〈http://www.wired.com/news/technology/story/18488.html?wnpgl〉 (discussing the difference between free software and open source software); Malcolm Maclachlan, Jini: Start of "Semi-Open" Source Movement, (Jan. 28, 1999) 〈http:// www.techweb.com/printableArticle?doc_idB19990128S0001〉 (noting that the Sun Community Source License is a combination of open source and proprietary models); Peter G. Neumann, Robust Open-Source Software, Comm. of the ACM, Feb. 1998, at 128, 128 (providing examples of open, but proprietary, software). The licenses typically allow users to alter the original source code, but all modifications must be sent back to the right holder. See Deborah Gage, Should Java Go Open Source? (Feb. 12, 1999) 〈http://www.zdnet.com/zdnn/stories/news/0,4586,2208772,00.html〉.
293. See, e.g., Leander Kahney & Polly Sprenger, Apple's Open-Source Movement, (Mar. 15, 1999) 〈http://www.wired.com/news/technology/story/18488.html?wnpgl〉 (discussing the difference between free software and open source software); Malcolm Maclachlan, Jini: Start of "Semi-Open" Source Movement, (Jan. 28, 1999) 〈http:// www.techweb.com/printableArticle?doc_idB19990128S0001〉 (noting that the Sun Community Source License is a combination of open source and proprietary models); Peter G. Neumann, Robust Open-Source Software, Comm. of the ACM, Feb. 1998, at 128, 128 (providing examples of open, but proprietary, software). The licenses typically allow users to alter the original source code, but all modifications must be sent back to the right holder. See Deborah Gage, Should Java Go Open Source? (Feb. 12, 1999) 〈http://www.zdnet.com/zdnn/stories/news/0,4586,2208772,00.html〉.
294. See Blume, supra note 253, at 29.
295. See Charles C. Mann, Programs to the People, Tech. Rev., Jan.-Feb. 1999, at 36, 41.
296. See id. at 38.
297. See Blume, supra note 253, at 29.
298. See Haldiman, supra note 86, at 654. Object-orientated programming will make portions of computer code easily reusable. See id. at 653. Additionally, automated rights management technologies will provide manufacturers with the ability to police the use of their code, and allow users to make provision with the proprietary right holder for the use of that code so that they are not considered infringers. See Bell, supra note 132, at 564-67.
299. See, e.g., Josh McHugh, For the Love of Hacking, Forbes, Aug. 10, 1998, at 94, 100 (noting that open source software is an alternative to closed commercial software and arguing that perhaps Microsoft does not truly have a monopoly in the software industry); Levy, Code Warriors, supra note 4, at 60 (documenting shift towards open source software); Leibovich, supra note 252 (stating that open source software poses a significant threat to Microsoft's continued domination of the software industry); John Markoff, Apple Adopts "Open Source" Code Strategy, N.Y. Times, Mar. 17, 1999, at C1 (noting that Apple has embraced open source software).
300. See, e.g., Josh McHugh, For the Love of Hacking, Forbes, Aug. 10, 1998, at 94, 100 (noting that open source software is an alternative to closed commercial software and arguing that perhaps Microsoft does not truly have a monopoly in the software industry); Levy, Code Warriors, supra note 4, at 60 (documenting shift towards open source software); Leibovich, supra note 252 (stating that open source software poses a significant threat to Microsoft's continued domination of the software industry); John Markoff, Apple Adopts "Open Source" Code Strategy, N.Y. Times, Mar. 17, 1999, at C1 (noting that Apple has embraced open source software).
301. See, e.g., Josh McHugh, For the Love of Hacking, Forbes, Aug. 10, 1998, at 94, 100 (noting that open source software is an alternative to closed commercial software and arguing that perhaps Microsoft does not truly have a monopoly in the software industry); Levy, Code Warriors, supra note 4, at 60 (documenting shift towards open source software); Leibovich, supra note 252 (stating that open source software poses a significant threat to Microsoft's continued domination of the software industry); John Markoff, Apple Adopts "Open Source" Code Strategy, N.Y. Times, Mar. 17, 1999, at C1 (noting that Apple has embraced open source software).
302. See, e.g., Josh McHugh, For the Love of Hacking, Forbes, Aug. 10, 1998, at 94, 100 (noting that open source software is an alternative to closed commercial software and arguing that perhaps Microsoft does not truly have a monopoly in the software industry); Levy, Code Warriors, supra note 4, at 60 (documenting shift towards open source software); Leibovich, supra note 252 (stating that open source software poses a significant threat to Microsoft's continued domination of the software industry); John Markoff, Apple Adopts "Open Source" Code Strategy, N.Y. Times, Mar. 17, 1999, at C1 (noting that Apple has embraced open source software).
303. Tim O'Reilly, The Open-Source Revolution, Release 1.0, Nov. 1998, at 3, 8-16.
304. See McHugh, supra note 261, at 100.
305. See supra note 256 and accompanying text.
306. See Lemley & McGowan, Legal Implications, supra note 153, at 523-30.
307. See Troy Paredes, Copyright Misuse and Tying: Will Courts Stop Misusing Misuse?, 9 High Tech. L.J. 271, 309-15 (1994).
308. See Karjala, Program Structure, supra note 146, at 535.
309. See id.
310. See Craig Menefee, PC Briefs (July 2, 1998) 〈http://www.newsbytes.com/news/ 98/114070.html〉 Godfrey Nolan, Java: Easy Target for Illegal Re-Engineers (Mar. 3, 1997) 〈http://www.computerwire.com/cbr/1997/2206_29a.htm〉.
311. See Craig Menefee, PC Briefs (July 2, 1998) 〈http://www.newsbytes.com/news/ 98/114070.html〉 Godfrey Nolan, Java: Easy Target for Illegal Re-Engineers (Mar. 3, 1997) 〈http://www.computerwire.com/cbr/1997/2206_29a.htm〉.
312. See Lemley & McGowan, Competitive Proprietary, supra note 13, at 485.
313. See Nolan, supra note 269.
314. Moreover, U.S. policy regarding the legality of reverse engineering computer programs is ambiguous. When Japan considered expressly incorporating a reverse engineering exception into its copyright laws, the United States vigorously opposed the proposal, fearing that the exception would allow American software to be unduly appropriated by Japanese firms. See Graham & Zerbe, supra note 171, at 69. Further, while certain federal intellectual property statutes expressly recognize a right to reverse engineer, the copyright and patent statutes contain no similar exception. In the Semiconductor Chip Protection Act of 1984, see Pub. L. No. 98-620, tit. III, 98 Stat. 3347 (codified at 17 U.S.C. §§ 901-914 (1994)), Congress expressly recognized the right to reverse engineer. See 17 U.S.C. § 906(a); see also Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1565-67 (Fed. Cir. 1992) (discussing the Act). Thus, the negative implication arising from the absence of specific allowance for reverse engineering under the copyright and patent statutes is that such a right was never intended by Congress, but was read into the law by courts addressing particularized market conditions. Evidence that supports this argument is that recently proposed legislation, if enacted, may have the impact of making reverse engineering a federal felony. See Mills, supra note 68, at 127-28. Additionally, the recently enacted Digital Millennium Copyright Act prohibits circumvention of "technological measures" that control access to copyrighted works. See Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (1998). Query whether compiling source code into object code is a technological measure that controls access to a copyrighted program. If it is, one may argue that reverse engineering circumvents this process, and is, therefore, prohibited by the Act.
315. See supra notes 177-80 and accompanying text.
316. See Cohen, Self-Help, supra note 182, at 1090.
317. See supra note 255 and accompanying text.
318. See supra notes 97-107 and accompanying text.
319. See supra Part I.A-B.
320. See supra Part I.C-D.
321. See supra note 225. As a practical matter, however, the software is likely to be obsolete long before the expiration of the license.
322. See supra notes 131-33 and accompanying text.
323. See supra note 17.
324. Lawrence Lessig, Intellectual Property and Code, 11 St. John's J. Legal Comment. 635, 638 (1996).
325. See Lemley, Beyond Preemption, supra note 134, at 125; see also Lemley & McGowan, Legal Implications, supra note 153, at 526 ("[I]t does not make economic sense to give complete control over information to owners of intellectual property.").
326. See Lemley, Beyond Preemption, supra note 134, at 124.
327. Id. at 125.
328. See supra notes 142-44 and accompanying text.
329. See supra notes 145-46 and accompanying text.
330. See supra notes 145-46 and accompanying text.
331. See Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 Stan. L. Rev. 1329, 1371 (1987); Samuelson et al., supra note 16, at 2414-15.
332. See Samuelson et al., supra note 16, at 2414.
333. See id. at 2392-93 ("[A] complete ban [on reverse engineering] is contrary to basic norms of competition law.").
334. See Madison, supra note 16, at 1135.
335. See supra note 17.
336. If a program can be reverse engineered by competitors, the rights holder necessarily does not have exclusive control over his work. Further, as the intellectual property laws do not create monopolies, see Clapes, supra note 15, at 948-49, contracts necessary to help establish a period of true exclusive control.
337. Giving producers the ability to protect their software under copyright, patent, trade secret, and contract laws will provide them with the ability to preserve their natural lead-time in the market, which lead-time is necessary to prevent market failure. See Samuelson et al., supra note 16, at 2413.
338. Indeed, there is considerable value in familiarizing consumers with particular software. See id. at 2375. Second-comers will find it difficult to lure consumers away from software with which they are familiar and have spent time to learn. See id.
339. If producers are permitted to prevent the reverse engineering of their software, this will lessen the need for the producer to monitor the market for reverse engineering technologies, and expend resources on thwarting attempts at reverse engineering and on monitoring legislative efforts to address reverse engineering. See O'Rourke, Drawing the Boundary, supra note 104, at 499.
340. Microsoft's dominance undeniably has produced numerous societal benefits, such as standardization. Professor Mark Patterson notes that, even if competition is eliminated, a standard-enhancing move may increase efficiency overall because consumers will benefit from the increased adoption of the standard. See Mark R. Patterson, Coercion, Deception, and Other Demand-Increasing Practices in Antitrust Law, 66 Antitrust L.J. 1, 74 n.323 (1997).
341. After the expiration of the standard-setting time period, the government, by requiring disclosure, would open the standard in order to encourage competition. See Lemley & McGowan, Competitive Propriety, supra note 13, at 506 (arguing that the law should encourage open standards); supra note 1 and accompanying text (contending that "openness" is good). The time at which disclosure must occur may be based on the date of the first commercial distribution of the software, see 17 U.S.C. §§ 904(a), 908(a) (1994), and should vary depending on the nature of the software program. For example, Congress could require that the source code to operating systems be disclosed after a shorter time period than application programs. For a discussion of the differences between operating systems and application programs, see Samuelson, supra note 3, at 676-82.
342. Nevertheless, this approach would be less intrusive upon the rights of software producers than a "public distribution equals publication" rule, which would deny trade secret protection to a program's source code even if the program was publicly distributed in object code format. Cohen, Electronic Vigilantism, supra note 82, at 1113-14.
343. Trade secrets are only protectible as long as no one discovers them. See supra note 91 and accompanying text.
344. In fact, state law protection may provide more effective protection than federal intellectual property statutes in certain circumstances. See Jane C. Ginsburg, Copyright, Common Law, and Sui Generis Protection of Databases in the United States and Abroad, 66 U. Cin. L. Rev. 151, 151 (1997). At least one commentator has advocated an opt out approach to federal intellectual property. See Bell, supra note 132, at 615-16; see also Lemley, Beyond Preemption, supra note 134, at 150 (agreeing that an opt out scheme may be quite attractive to intellectual property owners).
345. The Copyright Office registration requirements mandate only that very small portions of a copyrighted program's source code be placed on file. See 37 C.F.R. § 202.20(c)(2)(vii) (1998). The Patent Office does not require that a program's source code be disclosed. See supra note 171 and accompanying text.
346. A plaintiff alleging copyright infringement must prove two elements: (1) ownership of a valid copyright and (2) copying of original elements of the work. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Copying may be established through indirect evidence, including evidence that the alleged infringer had access to the copyrighted work. See Castle Rock Entertainment, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998).
347. This Note does not go so far as to propose a system of compulsory licensing, for the success of the product in the marketplace in the phase in which both federal and state law rights are available may vary, and to cut off all control over the use of one's code after disclosure may not allow producers to recoup their investments in their software. Moreover, a recent study of the economics of information concluded that, provided competitors write their own source code, imitative competition in the software industry should be encouraged. See Karjala, Program Structure, supra note 146, at 536-38.
348. Right owners will object that their program code can be appropriated easily by second-comers who make minor changes and claim the disguised code as their own. See Miller, supra note 15, at 1026. The response is that simply changing another's code to hide all traces of illicit copying is not an easy task. See Cohen, Electronic Vigilantism, supra note 82, at 1123. In any case, this author is confident that courts are capable of determining whether one program so closely resembles another that it is infringing.