Reverse Engineering and the Rise of Electronic Vigilantism: Intellectual Property Implications of "Lock-Out" Programs

Notes

1. Pub. L. No. 94-553, 90 Stat. 2541 (1976) (codified as amended at 17 U.S.C. 101, 102 & 117 (1988 & Supp. 1994)).

2. Diamond v. Diehr, 450 U.S. 175 (1981).

3. For an exhaustive chronicle of this debate, see Pamela Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer-Related Inventions, 39 Emory L.J. 1025, 1032-99 (1990) [hereinafter Samuelson, Benson Revisited].

4. See H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 51 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5664 ("Computer programs, for example - could be regarded as an extension of copyrightable subject matter Congress had already intended to protect, and were thus considered copyrightable from the outset without the need of new legislation."); Final Report of the Nat'l Comm'n on New Technological Uses of Copyrighted Works 12, 15-16 (1978) [hereinafter CONTU, Final Report].

5. See 17 U.S.C. 101 (1988) (defining "computer program" as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result"); Diehr, 450 U.S. at 185-87 (describing program invention as a process in which "a mathematical formula" and "a digital computer" are used).

6. See Dennis S. Karjala, Copyright Protection of Computer Documents, Reverse Engineering, and Professor Miller, 19 U. Dayton L. Rev. 975, 990 (1994) [hereinafter Karjala, Computer Documents]; Dennis S. Karjala, Copyright, Computer Software, and the New Protectionism, 28 Jurimetrics J. 33, 63-64 (1987) [hereinafter Karjala, New Protectionism]; Timothy S. Teter, Note, Merger and the Machines: An Analysis of the Pro-Compatibility Trend in Computer Software Copyright Cases, 45 Stan. L. Rev. 1061, 1063-66 (1993).

7. The first court before which issues of compatibility were raised termed the defendant's desire to achieve compatibility "a commercial and competitive objective" irrelevant to the intellectual property analysis. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983). That conclusion is discussed and rejected infra part III.B.

8. See, e.g., Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 Stan. L. Rev. 1329, 1357-58, 1361-63 (1987) [hereinafter Menell, Tailoring Legal Protection].

9. Apple Computer and Microsoft Corporation fall within this category. Both companies also compete with third-party developers to create applications programs compatible with their respective operating systems. However, third-party developers have raised recurrent concerns about whether the shared information is complete. See, e.g., Kathy Rebello et al., Is Microsoft Too Powerful?, Bus. Wk., Mar. 1, 1993, at 82.

10. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1514 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993); Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q. 2d (BNA) 1401, 1403 (N.D. Cal. 1993); infra text accompanying notes 26-27.

11. See, e.g., MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (relating to a dispute over access to a completely proprietary system).

12. The process of reverse engineering through decompilation is described in detail in Andrew Johnson-Laird, Software Reverse Engineering in the Real World, 19 U. Dayton L. Rev. 843 (1994).

13. For a discussion of this technological one-upmanship, see Marshall Leaffer, Engineering Competitive Policy and Copyright Misuse, 19 U. Dayton L. Rev. 1087, 1096-97 (1994).

14. See Sega, 977 F.2d at 1515; Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 836 (Fed. Cir. 1992).

15. See, e.g., Johnson-Laird, supra note 12, at 853-56 (describing the problems that confront those seeking to reverse engineer a lock-out program).

16. Regarding copyright protection, see, for example, Anthony L. Clapes et al., Silicon Epics and Binary Bards: Determining the Proper Scope of Copyright Protection for Computer Programs, 34 UCLA L. Rev. 1493 (1987); Karjala, Computer Documents, supra note 6; Karjala, New Protectionism, supra note 6; Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 Stan. L. Rev. 1045 (1989) [hereinafter Menell, Application Programs]; Menell, Tailoring Legal Protection, supra note 8; Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977 (1993); David A. Rice, Sega and Beyond: A Beacon for Fair Use Analysis ... At Least As Far As It Goes, 19 U. Dayton L. Rev. 1131 (1994) [hereinafter Rice, Sega and Beyond]; Pamela Samuelson, Computer Programs, User Interfaces, and Section 102(b) of the Copyright Act of 1976: A Critique of Lotus v. Paperback, 6 High Tech. L.J. 209 (1992) [hereinafter Samuelson, Critique of Paperback]; Pamela Samuelson, Creating a New Kind of Intellectual Property: Applying the Lessons of the Chip Law to Computer Programs, 70 Minn. L. Rev. 471 (1985) [hereinafter Samuelson, Chip Law]; Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 Duke L.J. 663 [hereinafter Samuelson, CONTU Revisited]. Regarding patent protection, see, for example, Donald S. Chisum, The Patentability of Algorithms, 47 U. Pitt. L. Rev. 959 (1986); A. Samuel Oddi, An Uneasier Case for Copyright Than for Patent Protection of Computer Programs, 72 Neb. L. Rev. 351 (1993); Samuelson, Benson Revisited, supra note 3; Richard H. Stern, Tales From the Algorithm War: Benson to Iwahashi, It's Deja Vu All Over Again, 18 AIPLA Q.J. 371 (1991).

17. See, e.g., Screen Test, The Economist, Sept. 17, 1994, at 17.

18. Among the leading contenders for development of a viable set-top box are none other than the video game giants Sega and Nintendo, whose attempts to enforce lock-out protection for their video game consoles are discussed below. See, e.g., George Gilder, Telecosm: The Bandwidth Tidal Wave, Forbes, Dec. 5, 1994, at 162 ("If the personal computer cannot handle these [data] streams, [TCI chief executive] John Malone's set-top boxes, Sega or Nintendo game machines or [Microsoft chief executive] Bill Gates' new communications technology will."); Ken Yamada, Standards Time: New Set-Top-Box Technology Key to Interactive TV, Computer Reseller News, Dec. 5, 1994, at 55.

19. See, e.g., Menell, Tailoring Legal Protection, supra note 8, at 1371-72; Samuelson, CONTU Revisited, supra note 16, at 762-69; Samuelson, Benson Revisited, supra note 3, at 1148-53; Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308, 2342-64 (1994) [hereinafter Samuelson et al., Manifesto].

20. See, e.g., Samuelson et al., Manifesto, supra note 19, at 2313 & nn.7-8 (summarizing recent international developments).

21. 785 F. Supp. 1392 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

22. 18 U.S.P.Q.2d (BNA) 1935 (N.D. Cal. 1991) (granting preliminary injunction), aff'd, 975 F.2d 832 (Fed. Cir. 1992), after remand, 30 U.S.P.Q.2d (BNA) 1401 (N.D. Cal. 1993); 30 U.S.P.Q.2d (BNA) 1420 (N.D. Cal. 1993).

23. Sega, 977 F.2d at 1514.

24. Atari, 975 F.2d at 835-36.

25. In 1994, they each controlled approximately 50% of the U.S. home video game market. See, e.g., Merrill Goozner, Rivals Nose in on Nintendo, Chi. Trib., June 12, 1994, 7 at 1.

26. Sega, 977 F.2d at 1514; Atari, 30 U.S.P.Q.2d (BNA) at 1403.

27. Sega, 977 F.2d at 1526; Atari, 30 U.S.P.Q.2d (BNA) at 1401-02.

28. Sega, 977 F.2d at 1514.

29. Id. at 1514-15. Initially, computer programs are written in human-readable form known as source code. In order to be functional, however, a computer program must be translated from source code into machine-readable form, or object code. See Johnson-Laird, supra note 12, at 856-59. Object code cannot be translated back into source code, but can be translated into a lower-level human-readable form, known as assembly language, by decompilation. See id. at 872-79, 896-97.

30. Sega, 977 F.2d at 1515.

31. According to Sega, the TMSS was adopted solely as a response to software pirates who had discovered a way to produce copies of Sega's video game cartridges without the initial screen display of Sega's trademark. The TMSS was designed both to "lock out" unauthorized cartridges and to "lock in" an initial screen display of Sega's trademark, thereby protecting Sega's ability to prosecute pirates for trademark infringement. Id.

32. Id.

33. Id.

34. Id.

35. Id. at 1516. Unbeknownst to Accolade, the "standard header file" that rendered its games compatible with Sega's new console also triggered a screen display that stated "PRODUCED BY OR UNDER LICENSE FROM SEGA ENTERPRISES LTD." Id. at 1515.

36. Sega also asserted claims for trademark infringement and false designation of origin in violation of the Lanham Act, 15 U.S.C. 1114(1)(a), 1125(a) (1988). Arguing that the TMSS enabled Sega to falsely pass off Accolade's games as its own, Accolade counterclaimed for false designation of origin. The district court found Accolade, not Sega, responsible for the misleading screen display of the Sega trademark message. Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1400 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

37. Sega, 785 F. Supp. at 1396-97. Section 106 of the Copyright Act reserves to the copyright owner the exclusive right to make or authorize copies or derivative works. 17 U.S.C. 106(1), (3).

38. Sega, 785 F. Supp. at 1398. Section 107 of the Copyright Act, 17 U.S.C. 107, provides that otherwise infringing conduct may be considered a fair use of the copyrighted material, depending on the circumstances of the use. See infra note 81.

39. Id. at 1402.

40. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

41. Id. at 1518-20.

42. Id. at 1523-28. The court relied on section 102(b) of the Act, which provides that copyright protection does not extend "to any idea, procedure, process, system, method of operation, concept, principle, or discovery." 17 U.S.C. 102(b).

43. Id. at 1525-26.

44. Id. at 1526-27. The Ninth Circuit also rejected the district court's resolution of the trademark issues. It held that Sega, not Accolade, bore primary responsibility for the confusing Sega trademark message display because Sega had intended the TMSS to produce a misleading screen display in some circumstances. Id. at 1528-30.

45. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 836 (Fed. Cir. 1992).

46. Id.

47. Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1401, 1403 (N.D. Cal. 1993).

48. Id. at 1410-11.

49. Atari Games Corp. v. Nintendo of Am., Inc., 18 U.S.P.Q.2d (BNA) 1935, 1936 (N.D. Cal. 1991). "Peeling" is a process by which successive layers of the circuitry embedded in a microchip are removed and studied. Because successful peeling reveals, at most, an object-coded version of the program under study, it cannot substitute for decompilation. See Johnson-Laird, supra note 12, at 863-64.

50. Atari, 18 U.S.P.Q.2d (BNA) at 1936.

51. Id. at 1937.

52. U.S. Patent No. 4,799,635 (1989).

53. Atari, 18 U.S.P.Q.2d (BNA) at 1936.

54. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 836 (Fed. Cir. 1992).

55. Id.

56. Atari Games Corp. v. Nintendo of Am., Inc., 897 F.2d 1572, 1574-75 (Fed. Cir. 1990). First, Nintendo sent letters to Atari's retailers threatening suit if sales of the unauthorized games continued, and Atari sued Nintendo for antitrust violations and unfair competition. Nintendo's subsequent copyright and patent infringement lawsuit was consolidated with Atari's. Id. at 1575. Atari requested, and the district court granted, a preliminary injunction barring Nintendo from suing retailers of Atari's NES-compatible games. However, the Court of Appeals for the Federal Circuit reversed, ruling that Atari had not adduced sufficient facts on the issue of Nintendo's allegedly anticompetitive conduct. Id. at 1577-78. Atari's antitrust counterclaims and its related copyright and patent misuse defenses were subsequently severed for separate trial following trial of Nintendo's infringement claims. See Rex Bossert, Nintendo Is Victorious in Patent Claim Against Foe, S.F. Daily J., July 30, 1993, at 1, 7.

57. Atari, 18 U.S.P.Q.2d (BNA) at 1938.

58. Id.

59. Id. at 1938-39. Under the doctrine of merger, "when there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression." Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir. 1988); see also Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (holding that protecting expression that is inseparable from an idea would confer an impermissible monopoly on the idea).

60. Atari, 18 U.S.P.Q.2d (BNA) at 1939.

61. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832 (Fed. Cir. 1992).

62. Id. at 841-42.

63. Id. at 843. In a lengthy dictum, however, the court opined that absent fraud, reverse engineering based on copies of the copyrighted work would constitute a fair use. Id. at 843-44. The Ninth Circuit's opinion in Sega was released two months later.

64. Id. at 845.

65. Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1420, 1423 (N.D. Cal. 1993).

66. See id.; Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1401, 1406-08 (N.D. Cal. 1993). A future lock-out could be accomplished by reprogramming the master 10NES chip (in the console) to search for a different subset of functions in the slave 10NES chip, unless the Rabbit chip also performed those functions. See id. at 1406-07; infra text accompanying note 279.

67. Atari, 30 U.S.P.Q.2d (BNA) at 1408.

68. Id. at 1407 n.14; Atari, 30 U.S.P.Q. 2d (BNA) at 1423. However, the court ruled that Nintendo was not entitled to claim copyright protection for the signal stream generated by the 10NES program. Atari, 30 U.S.P.Q. 2d (BNA) at 1403-06.

69. Id. at 1414-15. See infra note 310.

70. Id. at 1416-19. See 35 U.S.C. 102, 103 (establishing requirements of novelty and nonobviousness for patentability).

71. Id. at 1418-19.

72. Bossert, supra note 56, at 1.

73. See supra note 56.

74. See infra part V.A.3.

75. See Nintendo, Atari Games Reach Settlement, L.A. Times, Mar. 25, 1994, at D2; Atari and Nintendo End Court Battle, Begin Media Battle Fracas, Computer Law., May 1994, at 28.

76. Accolade also argued that section 117 of the Copyright Act, which allows copying of a computer program as an essential step in the utilization of the program, permits decompilation. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993). The Ninth Circuit rejected that argument, in my view correctly, on the ground that section 117 encompasses only the right to load a copy of a program into a computer in order to use it. Id.; see 17 U.S.C. 117(1); CONTU, Final Report, supra note 4, at 13. Nonetheless, at least one commentator has suggested that section 117 might be interpreted to allow decompilation. 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, 94-95 (1993) (discussing Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255 (5th Cir. 1988)). Discussion of that position is beyond the scope of this Article.

77. See, e.g., Karjala, Computer Documents, supra note 6, at 993-94, 1015-16; McManis, supra note 76, at 55-74; Rice, Sega and Beyond, supra note 16; Pamela Samuelson, Fair Use for Computer Programs and Other Copyrightable Works in Digital Form: The Implications of Sony, Galoob, and Sega, 1 J. Intell. Prop. L. 49, 86-102 (1993); S. Carran Daughtrey, Note, Reverse Engineering of Software for Interoperability and Analysis, 47 Vand. L. Rev. 145, 172-81 (1994). Even prior to Sega, many copyright scholars had advocated a fair use solution to the decompilation problem. See Donald S. Chisum et al., LaST Frontier Conference Report on Copyright Protection of Computer Software, 30 Jurimetrics J. 15, 24-25 (1989) [hereinafter Chisum et al., LaST Frontier Conference Report]; Jessica Litman, Copyright and Information Policy, Law & Contemp. Probs., Spring 1992, at 185, 196-201; J.H. Reichman, Computer Programs As Applied Scientific Know-How: Implications of Copyright Protection for Commercialized University Research, 42 Vand. L. Rev. 639, 694 n.288, 702 n.324 (1989). In Sega, eleven professors of copyright law submitted a brief amicus curiae in support of Accolade. See Brief Amicus Curiae of Eleven Copyright Law Professors in Sega Enterprises, Ltd. v. Accolade, Inc., 33 Jurimetrics J. 147 (1992).

78. Miller, supra note 16, at 1020. Professor Miller was a signatory to an amicus brief filed by the Computer and Business Equipment Manufacturers Association ("CBEMA") on behalf of Sega.

79. Teter, supra note 6, at 1087.

80. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

81. See id. at 1522-27. Section 107 of the Copyright Act lists four nonexclusive factors for courts to consider in determining whether a particular use of a copyrighted work is fair:

(1) the purpose and character of the use, including whether 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.

17 U.S.C. 107.

82. Sega, 977 F.2d at 1525-26. This unique characteristic of computer programs has been documented by many scholars, including a number who are familiar with the technical aspects of computer programming. See, e.g., Gary R. Ignatin, Comment, Let the Hackers Hack: Allowing the Reverse Engineering of Copyrighted Computer Programs to Achieve Compatibility, 140 U. Pa. L. Rev. 1999, 2001 n.6 (1992); Johnson-Laird, supra note 12, at 890-95; see also Karjala, New Protectionism, supra note 6, at 37; Menell, Tailoring Legal Protection, supra note 8, at 1347 n.75. That humans cannot decipher object code unaided is not seriously disputed. The district court in Sega focused on this issue, but missed the point. It concluded that since reverse engineers can decipher object code by hand, without resort to an electronic decompiler, Accolade's time-saving decision to use a decompiler precluded a finding of fair use. See Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1399 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993). The Ninth Circuit recognized that what is relevant for purposes of copyright is not the means of decompilation used, but the fact that decompilation is not possible at all without making some fixed record of one's progress. Sega, 977 F.2d at 1525-27.

83. Sega, 977 F.2d at 1526; see 17 U.S.C. 102(b).

84. Miller, supra note 16, at 1022.

85. See infra text accompanying notes 147-55.

86. See 17 U.S.C. 101.

87. 17 U.S.C. 101.

88. See, e.g., Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 349 (1991) (holding that "the copyright in a factual compilation is thin"); Karjala, Computer Documents, supra note 6, at 1005-06; Rice, Sega and Beyond, supra note 16, at 1169-70.

89. In my opinion, they are not. See infra text accompanying notes 94-105.

90. Miller, supra note 16, at 1022.

91. Id. at 1020. Thus, Professor Miller argues that a proposal that intermediate copying be considered fair use "would not be taken seriously if the copyrighted works were Steinbeck's ... , Hemingway's ... , or Miller's ...." Id. But of course, they are not; they are computer programs, and there is a world of difference.

92. See Karjala, New Protectionism, supra note 6, at 38; Samuelson, CONTU Revisited, supra note 16, at 672-82. Indeed, the definition of "computer program" in the Copyright Act recognizes as much. See 17 U.S.C. 101 (defining "computer program" as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result").

93. See Miller, supra note 16, at 989, 1021.

94. Professor Miller implies that copying the program in the course of decompilation is no different, and therefore no less infringing, than unauthorized copying of a book in the course of translating it. Id. at 1029. Miller's argument ignores the fact that translation from one language to another need not entail the preparation of written, printed, or otherwise recorded copies. To access the ideas or functional principles contained in Vaclav Havel's essays or a cookbook published in Braille, one need only find a person fluent in the language to read the work aloud. No physical copies of either work, or portions of them, need be made. In contrast, to access the ideas contained in the "text" of the 10NES program or MS-DOS 5.0 requires pencil and paper. See supra note 82.

95. Because comparison and analogy are the essence of legal reasoning, it would be futile to suggest dispensing with them entirely where computer programs are concerned. However, as the Sega court recognized, reconciling existing legal categories with new technologies requires great care to "avoid the temptation of trying to force "the proverbial square peg into a round hole.' " Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527 (9th Cir. 1992) (quoting Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 712 (2d Cir. 1992)), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

96. Although this Article argues that the statutory classification of computer programs should be changed, the Sega court's approach did not do violence to the current language. As explained above at text accompanying notes 91-92, the broadly defined category of "literary works" includes works that are distinctly utilitarian. See, e.g., Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (1991) (telephone white pages); Baker v. Selden, 101 U. S. 99 (1879) (blank accounting forms); Sega, 977 F.2d at 1524 (citing Feist and Baker).

97. The National Commission on New Technological Uses of Copyrighted Works ("CONTU") was established by Congress in 1974 to study, among other things, the applicability of copyright to computer programs. See Act of Dec. 31, 1974, Pub. L. No. 93-573, 88 Stat. 1873 (codified as amended at 17 U.S.C. 104 (1988)).

98. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667; CONTU, Final Report, supra note 4. Significantly, Congress did state that "the term "literary works' does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories, and similar factual, reference, or instructional works and compilations of data." H.R. Rep. No. 1476 at 54.

99. U.S. Const. art. I, 8, cl. 8 (authorizing Congress "to 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").

100. See 17 U.S.C. 101.

101. 17 U.S.C. 102(a)(3).

102. See 17 U.S.C. 101, 102(a)(5).

103. See Samuelson, CONTU Revisited, supra note 16, at 727-36.

104. See Karjala, Computer Documents, supra note 6, at 986 (discussing "separability" test for "pictorial, graphic and sculptural works"); Samuelson, CONTU Revisited, supra note 16, at 727-36 (analyzing computer programs as "utilitarian" sculptural works).

105. See, e.g., Menell, Tailoring Legal Protection, supra note 8, at 1364-71; Samuelson, CONTU Revisited, supra note 16, at 762-69; Samuelson, Chip Law, supra note 16, at 530; Samuelson et al., Manifesto, supra note 19, at 2315-56.

106. See, e.g., Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 564 (1985); Salinger v. Random House, Inc., 811 F.2d 90, 95-96 (2d Cir.), cert. denied, 484 U.S. 890 (1987). In Professor Weinreb's view, publication status should properly be considered a separate, fifth fair use factor. Lloyd L. Weinreb, Comment, Fair's Fair: A Comment on the Fair Use Doctrine, 103 Harv. L. Rev. 1137, 1156 n. 74 (1990). That view has some merit.

107. After the Supreme Court's decision in Harper & Row, Congress amended section 107 to specify that a work's publication status is relevant, but not necessarily dispositive, in fair use decisions. See 17 U.S.C. 107 (Supp. 1992). Judge Pierre Leval, in contrast, has argued against the publication factor and in favor of judging all uses of copyrighted material according to one criterion: whether the use of the material is in some way "transformative." Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105, 1111-16 (1990). Judge Leval's approach to fair use is discussed at greater length infra at text accompanying notes 217-219.

108. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 n.9 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993). The court relied on its recent, equally summary, decision on this point in Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 970 (9th Cir. 1992), aff'g 780 F. Supp. 1238, 1293 (N.D. Cal. 1991).

109. Sega, 977 F.2d at 1526 n.9 (citing Lewis Galoob Toys, 780 F. Supp. at 1293).

110. See 17 U.S.C. 101 (defining "publication" to include the distribution of "copies or phonorecords of a work"). For this reason alone, Professor Litman concludes that the question whether computer programs distributed in object code form are published is easily resolved. See Litman, supra note 77, at 200-01.

111. Miller, supra note 16, at 1017 n.187.

112. See 137 Cong. Rec. S5648 (daily ed. May 9, 1991); 137 Cong. Rec. S13,925 (daily ed. Sept. 27, 1991) (statements of Sen. Simon), quoted in Miller, supra note 16, at 1017 n.187.

113. See H.R. Rep. No. 836, 102d Cong., 2nd Sess. 9-10 (1992), reprinted in 1992 U.S.C.C.A.N. 2553; see also H.R. Rep. No. 1476, 94th Cong., 2d Sess. 66, reprinted in 1976 U.S.C.C.A.N. 5659, 5680 ("There is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change.... The courts must be free to adapt the doctrine to particular situations on a case-by-case basis.").

114. Upon introducing the bill Senator Simon indicated only that it was not intended to provide access to "certain unpublished scientific works ... such as computer source codes." 136 Cong. Rec. S3550 (daily ed. Mar. 29, 1990) (statement of Sen. Simon) (emphasis added).

115. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 551-52, 555 (1985); William W. Fisher III, Reconstructing the Fair Use Doctrine, 101 Harv. L. Rev. 1659, 1675 (1988).

116. Fisher, supra note 115, at 1674-75.

117. Harper & Row, 471 U.S. at 555.

118. See Apple Computer, Inc. v. Formula Int'l Inc., 725 F.2d 521, 524-25 (9th Cir. 1984); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1246-48 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984).

119. See CONTU, Final Report, supra note 4, at 21-22.

120. 964 F.2d 965 (9th Cir. 1992).

121. Distributors of such programs have attempted to characterize these transactions as licenses rather than outright sales, by imposing so-called "shrink-wrap licenses." The prevailing view has been that such "licenses" are unenforceable, but that may be changing. See Mark A. Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. Cal. L. Rev. 1239 (1995).

122. In this respect, the Sega decision is much narrower than its critics acknowledge.

123. Professor Rice concurs in this conclusion. Rice, Sega and Beyond, supra note 16, at 1200.

124. See, e.g., MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (involving licensing of proprietary operating system software).

125. See Wendy J. Gordon, An Inquiry Into the Merits of Copyright: The Challenges of Consistency, Consent, and Encouragement Theory, 41 Stan. L. Rev. 1343, 1354-77, 1446-68 (1989) [hereinafter Gordon, The Merits of Copyright].

126. See, e.g., Lemley, supra note 121, at 1279-83; McManis, supra note 76, at 88-99; 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 (1992); Rice, Sega and Beyond, supra note 16, at 1195-1201; Pamela Samuelson, Comparing U.S. and E.C. Copyright Protection for Computer Programs: Are They More Different Than They Seem?, 13 J.L. & Commerce 279, 288 (1994).

127. 17 U.S.C. 107(1).

128. Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1398 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

129. See Sega, 977 F.2d at 1522 ("[The district court's] analysis is far too simple and ignores a number of important considerations. We must consider other aspects of "the purpose and character of the use' as well.").

130. Id. at 1522-23.

131. 114 S. Ct. 1164 (1994).

132. Id. at 1174 (citing, inter alia, Sega, 977 F.2d at 1522).

133. Sega, 977 F.2d at 1523.

134. 464 U.S. 417 (1984).

135. 471 U.S. 539 (1985).

136. 464 U.S. at 451.

137. 17 U.S.C. 107; Harper & Row, 471 U.S. at 592 (Brennan, J., dissenting) ("Many uses 107 lists as paradigmatic examples of fair use, including criticism, comment, and news reporting, are generally conducted for profit in this country, a fact of which Congress was obviously aware when it enacted 107." (emphasis omitted)).

138. 471 U.S. at 562. The Court further observed, delphically, that "the crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price." Id. Self-evidently, of course, "the customary price" (whatever it may be) will not be paid if a use is deemed fair; nonpayment is a consequence of fair use, not its determinant. Cf. Fisher, supra note 115, at 1674 n.66 (observing that "the existence of a customary price ... cannot determine whether the use violates the Act"). But see American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (2d Cir. 1994) ("It is not unsound to conclude that the right to seek payment for a particular use tends to become legally cognizable under the fourth fair use factor when the means for paying for such a use is made easier."). Id. at 898. In any event, the existence of a "customary price" has more to do with the fourth fair use factor, the effect on the market for the copyrighted work, than with the purpose and character of the use made of the work.

139. Some courts unquestioningly invoked the "presumption" of unfairness. See, e.g., United Tel. Co. of Missouri v. Johnson Publishing Co., Inc., 855 F.2d 604, 609 (8th Cir. 1988); Telerate Sys., Inc. v. Caro, 689 F. Supp. 221, 229 (S.D.N.Y. 1988); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1034-35 (N.D. Ga. 1986). Others devised elaborate rationales to "rebut" it. See, e.g., Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1152 (9th Cir. 1986).

140. See, e.g., Fisher, supra note 115, at 1673-74; Leval, supra note 107, at 1111-16; William F. Patry & Shira Perlmutter, Fair Use Misconstrued: Profit, Presumptions, and Parody, 11 Cardozo Arts & Ent. L.J. 667, 676-87 (1993). Among other things, these commentators observe that "commercial" may be defined in several different ways.

141. Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1174 (1994). Justice Souter noted that "Sony itself ... emphasized the need for a "sensitive balancing of interests.' " Id.

142. Id.

143. Id. at 1171 (citing Leval, supra note 107, at 1111). This is true to the intent of copyright protection, but does not go far enough. See infra text accompanying notes 156-58.

144. See, e.g., Tom Foremski, Eye on the Future, S.F. Examiner, Mar. 13, 1994, at C5 (discussing the Xerox Palo Alto Research Center's development of graphical user interface technology). As federal and state research budgets decline, that trend may be expected to continue. As one industry commentator recently noted: "Innovative new products don't usually come out of government research projects. Just look at the most successful companies in the PC business.... If we had waited for a government-funded think tank to come up with the idea for the first personal computer, we would still be waiting." Ed Foster, Clinton High-Tech Plan Walks Dangerous Protectionist Line, Infoworld, Mar. 8, 1993, at 41.

145. See, e.g., Hugh Aldersey-Williams, Inventors With Time To Think - A Look at the Potential of Independent Projects, Fin. Times, July 21, 1994, at 18; Foremski, supra note 144; John Markoff, Will Video Game Machines Turn Into PC Killers?, N.Y. Times, Jan. 8, 1995, 3, at 7.

146. Similarly, the Second Circuit's recent decision in American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (2d Cir. 1994), acknowledges that the user's status as a for-profit company will not necessarily dispose of the question of whether the particular use is commercial. Id. at 889.

147. Sega Enters. Ltd v. Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

148. Id.

149. See Walker v. University Books, Inc., 602 F.2d 859 (9th Cir. 1979). No fair use defense was raised in Walker.

150. Sega, 977 F.2d at 1522-23.

151. See Miller, supra note 16, at 1018-19 & n.193. According to Professor Miller, Sega threatens to "consume the rule against intermediate copying." Id. at 1019 n.193. Properly speaking, there is no "rule against intermediate copying," per se. There is a rule against copying; in some cases, fair use carves out exceptions to that rule.

152. 17 U.S.C. 107.

153. Id.

154. 17 U.S.C. 107.

155. Cf. Weinreb, supra note 106, at 1143 (arguing that a nontransformative use that makes copied material available may be fair). Thus, contrary to the conclusion reached in American Geophysical Union v. Texaco, Inc., 37 F.3d 881, 888 n.7 (2d Cir. 1994), copying done to assist with future research would meet that standard.

156. "Creative," as used here, is a term of art that refers to original expression protected by copyright under section 102(a) of the Copyright Act. While Sega's system interface might have been "creative" in the sense that a management information system is creative or a mathematical proof elegant, the creativity of systems or procedures is not the sort of creativity that the Copyright Act encompasses. See 17 U.S.C. 102(b); infra part III.B.

157. See Walker v. University Books, Inc., 602 F.2d 859, 863-64 (9th Cir. 1979); 17 U.S.C. 106, 501.

158. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 65 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5679.

159. Miller, supra note 16, at 1022.

160. Id. at 1029.

161. See Karjala, Computer Documents, supra note 6, at 1007-09.

162. See, e.g., Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

163. See Samuelson, CONTU Revisited, supra note 16, at 706-12; Daughtrey, supra note 77, at 177-79. Thus, Professor Rice correctly notes that the Sega court's treatment of this issue does not go far enough, because the court required that the copying be both necessary and for a legitimate purpose. Rice, Sega and Beyond, supra note 16, at 1183-92. The constitutional requirement of access to public domain principles dictates that this precautionary language be read broadly. Anthony Clapes suggests that, at most, there is a right of access only to the ideas and expression "sought to be imparted," which in the case of computer programs would include only those features visible to the user during operation. Anthony L. Clapes, Confessions of an Amicus Curiae: Technophobia, Law, and Creativity in the Digital Arts. 19 U. Dayton L. Rev. 903, 943 (1994) (emphasis omitted). There is nothing in the language of the Copyright Act to support such a distinction, and it is flatly inconsistent with a purpose of promoting the continuing creation of new programs.

164. See Samuelson, CONTU Revisited, supra note 16, at 676; supra text accompanying notes 106-11 (discussing the unique difficulties posed by machine-readable object code for access to the ideas and principles expressed in copyrighted computer programs).

165. See 17 U.S.C. 102(b); Samuelson, CONTU Revisited, supra note 16, at 670 (arguing that access to the contents of a copyrighted work is of constitutional significance).

166. Miller, supra note 16, at 1026.

167. Reverse engineering is not a substitute for hard work. See Michael A. Jacobs, Copyright and Compatibility, 30 Jurimetrics J. 91, 102 (1989); Johnson-Laird, supra note 12, at 895-901; Daughtrey, supra note 77, at 151-52.

168. See infra part III.A.

169. See, e.g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951).

170. See 17 U.S.C. 102(b); CONTU, Final Report, supra note 4, at 20 (noting that "programmers are free to read copyrighted programs and use the ideas embodied in them in preparing their own works").

171. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

172. Id. at 1522.

173. Sega, 977 F.2d at 1526-27.

174. Id.

175. See, e.g., Sony Corp. v. Universal City Studios, 464 U.S. 417, 449-50 (1984); Williams & Wilkins Co. v. United States, 487 F.2d 1345, 1353 (Ct. Cl. 1973), aff'd without opinion by an equally divided Court, 420 U.S. 376 (1975).

176. See Miller, supra note 16, at 1018.

177. Sega, 977 F.2d at 1526.

178. See Johnson-Laird, supra note 12, at 875-78.

179. See id.

180. See Leval, supra note 107, at 1122-24; Weinreb, supra note 106, at 1146.

181. See 17 U.S.C. 107(4).

182. Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1398 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

183. Sega, 977 F.2d at 1523.

184. Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1177 (1994).

185. Sega, 785 F. Supp. at 1398 (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566-67 (1985)).

186. See, e.g., New Era Publications Int'l v. Henry Holt & Co., 873 F.2d 576, 583 (2d Cir. 1989); Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir.), cert. denied, 484 U.S. 890 (1987); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1035 (N.D. Ga. 1986).

187. See 17 U.S.C. 107.

188. Acuff-Rose, 114 S. Ct. at 1177.

189. Id. at 1178.

190. Id. at 1174, 1177.

191. See generally Wendy J. Gordon, Fair Use as Market Failure: A Structure and Economic Analysis of the Betamax Case and its Predecessors, 82 Colum. L. Rev. 1600 (1982) (advocating a market approach to fair use that includes consideration of "antidissemination motives" on the part of the copyright owner).

192. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1523 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

193. See Miller, supra note 16, at 1026-27.

194. See supra text accompanying notes 147-58 (discussing intermediate uses).

195. Sega, 977 F.2d at 1523.

196. The decompilation privilege established in Sega does not leave the copyright owner without a means of protecting its name and reputation. If, after decompiling a copyrighted computer program, the copier appropriates the copyright owner's good name for purposes of marketing its program, the trademark and unfair competition laws afford a remedy. Conversely, if those laws do not reach the copier's conduct, as in both Sega and Atari, no misappropriation or unfairness has occurred. See Sega, 977 F.2d at 1528-30; Atari Games Corp. v. Nintendo of Am., Inc., Nos. C-88-4805, C-89-0027, slip op. at 9-20 (N.D. Cal. May 5, 1993). If that is the case, the copyright laws should not be stretched to reach conduct that the trademark laws do not.

197. It is worth repeating that the Sega court did not hold that Sega's games had lost their copyright protection; far from it. The court emphasized that Sega might still prevail if it could establish that Accolade's final product infringed. Sega, 977 F.2d at 1528. The court held only that as a matter of law Sega's copyright could not be allowed to bar access to the principles on which the unpatented Genesis operates. Id. at 1527-28.

198. Miller, supra note 16, at 1019.

199. Teter, supra note 6, at 1062 & n.13. It is for this reason that proposed federal legislation regarding the so-called Clipper Chip standard for communications encryption required federal contractors to use the new standard. Otherwise, purveyors of communications technologies would have been free to develop their own competing encryption standards that competed with the government's standard.

200. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 819-21 (1st Cir. 1995) (Boudin, J., concurring); Karjala, Computer Documents, supra note 6, at 1016-18; Daughtrey, supra note 77, at 173-74, 180.

201. See supra notes 23-27 and accompanying text.

202. In fact, there is evidence that it did not so intend. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670:

Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the "writing" expressing his ideas. Section 102(b) is intended, among other things, to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.

See also CONTU, Final Report, supra note 4, at 20 (observing that "in the absence of a patent" a programmer "is always free to make a machine perform any conceivable process").

203. Fisher, supra note 115, at 1668-69.

204. Section 107 provides: "Notwithstanding the provisions of section 106, the fair use of a copyrighted work ... is not an infringement of copyright." 17 U.S.C. 107.

Professor Patterson has argued that as originally conceived by Justice Story, the fair use doctrine worked an expansion of copyright protection from the original, very limited grant to publishers to a broader, natural rights-based concept. L. Ray Patterson, Understanding Fair Use, Law & Contemp. Probs., Spring 1992, at 249. However, the modern conception of fair use is as a tool for limiting author's rights when the larger public interest, however defined, requires it. See Leval, supra note 107, at 1110; Weinreb, supra note 106, at 1141-42.

205. Although Article 6 bis of the Berne Convention for the Protection of Literary and Artistic Works, to which the United States is a signatory, accords authors such rights, United States law generally has not recognized a moral rights basis for copyright. But see Note, An Author's Artistic Reputation Under the Copyright Act of 1976, 92 Harv. L. Rev. 1490 (1979) (arguing that the 1976 act creates a limited right of artistic reputation).

206. Such theories are, of course, concerned with social utility in the indirect sense that more of it may result from strong protection for individuals. See, e.g., Gordon, The Merits of Copyright, supra note 125, at 1388-93.

207. Cf. Leval, supra note 107, at 1111 (observing that the justification for finding fair use "must overcome factors favoring the copyright owner").

208. See supra text accompanying notes 157-58.

209. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 65-66 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5679.

210. Weinreb, supra note 106, at 1152-53.

211. See, e.g., Graeme Browning, Code Breakers, 26 Nat'l J. 594 (1994); James Evans, Intellectual Property Bar Protests Letter on Software, S.F. Daily J., Nov. 23, 1993, at 1; T.R. Reid & Peter Behr, A Software Fight's Blurred Battle Lines, Wash. Post, Jan. 11, 1994, at D1. Another area in which subcommunities with radically different notions of fairness are fighting for control over the copyright law concerns some musicians' practice of "sampling" other recorded works in the process of creating their own compositions. See, e.g., Richard Harrington, U2's Obscure Distraction, Wash. Post, Feb. 10, 1993, at B7.

212. In Sega, the American Committee for Interoperable Systems, an association composed mostly of smaller and mid-sized computer companies, filed an amicus brief on behalf of Accolade, while the Computer and Business Equipment Manufacturers' Association, which includes among its members large computer manufacturers such as IBM and Apple, weighed in on behalf of Sega. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1513 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

213. Sony, for example, involved a conflict between community notions of fairness and the letter of the law. See Weinreb, supra note 106, at 1154-55.

214. See Leval, supra note 107, at 1110; Rice, Sega and Beyond, supra note 16, at 1178. Indeed, most of the scholarly literature dealing with the fair use doctrine can be viewed as addressing this question.

215. See U.S. Const. art. I, 8, cl. 8.

216. See supra text accompanying notes 161-67.

217. See supra text accompanying notes 140-43.

218. See Leval, supra note 107, at 1126-28.

219. As Professor Weinreb trenchantly observes, there is no compelling need to restrict fair use to uses that satisfy the "transformative" standard. Weinreb, supra note 106, at 1141. Similarly, in those cases where a broad consensus as to fairness exists, that should suffice to support a finding of fair use. Id. at 1158-61.

220. Cf. Fisher, supra note 115, at 1744-83 (adumbrating a vision of fair use as promoting a societal vision of the good life).

221. See Fisher, supra note 115, at 1700; Leval, supra note 107, at 1107-08.

222. There is an important distinction, however, between notions of commercial fair play - definable, loosely, as consensus regarding how much creative expression may fairly be taken - and notions of morality and decency - definable as opinion about the genre or substantive content of new creative works in which that expression "should" be used. As in the case of the parody in Acuff-Rose, such uses may have pronounced First Amendment implications, and the fair use doctrine has a crucial role to play in shielding them. See Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1172 (1994). Discussion of those implications is beyond the scope of this Article.

223. Fisher, supra note 115, at 1669.

224. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993); supra text accompanying notes 42-44.

225. Recognizing the logical connection between the two, Professor Miller concludes that Sega could presage the disintegration of copyright protection for computer works. See Miller, supra note 16, at 1026-27. In fact, as this part demonstrates, the right to create a compatible program, like the decompilation privilege recognized in Sega, follows from the literal language of the Copyright Act.

226. See, e.g., Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 703-06 (2d Cir. 1992); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). Copyright does not protect ideas, but only original expression. See 17 U.S.C. 102; Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345-46 (1991).

227. A too-expansive conception of copyright protection jeopardizes future creative efforts by removing from the public domain material on which those works might otherwise be based. See Feist, 499 U.S. at 345-50. The recognition that copyright seeks a middle ground has deep roots in Anglo-American law. More than two hundred years ago, Lord Manfield observed that "we must take care to guard against two extremes equally prejudicial; the one, that men of ability ... may not be deprived of their just merits, and the reward for their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded." Sayre v. Moore, 102 Eng. Rep. 138, 140 n.6 (1785).

228. 17 U.S.C. 102(b); see Baker v. Selden, 101 U.S. 99 (1879); Samuelson, Critique of Paperback, supra note 16; Pamela Samuelson, The Nature of Copyright Analysis for Computer Programs: Copyright Law Professors' Brief Amicus Curiae in Lotus v. Borland, 16 Hastings Comm. & Ent. L.J. 657 (1994) [hereinafter Samuelson, Nature of Copyright].

229. 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).

230. Id. at 1236 ("The purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea." (emphasis omitted)). But see Plains Cotton Coop. Assn. of Lubbock v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1262 (5th Cir.) (holding that program elements dictated by external constraints imposed by "market factors" may "constitute "ideas' in a computer context"), cert. denied, 484 U.S. 821 (1987). Although later Fifth Circuit decisions have declined to read Plains Cotton broadly enough to deny copyright protection to all "nonliteral" aspects of computer programs, they have reaffirmed its rejection of Whelan as to program elements dictated by external constraints. See Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 536 n.20 (5th Cir.), cert. denied, 115 S. Ct. 82 (1994); Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1346-47 (5th Cir. 1994) (remanding, pursuant to Plains Cotton, for consideration of whether industry standards dictated program input and output formats), modified, 46 F.3d 408 (5th Cir. 1995).

231. See, e.g., Karjala, New Protectionism, supra note 6, at 64-66; Menell, Tailoring Legal Protection, supra note 8, at 1361-63; Chisum et al., LaST Frontier Conference Report, supra note 77, at 20-21.

232. In Plains Cotton, the Fifth Circuit recognized that conventions followed within an industry can significantly constrain a programmer's creative options, but did not address interoperability-related issues. Plains Cotton, 807 F.2d at 1262. The Ninth Circuit and two district courts acknowledged existence and effect of interoperability constraints, but did not address other limitations. See Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988); Manufacturers Technologies, Inc. v. Cams, Inc., 706 F. Supp. 984 (D. Conn. 1989); Q-Co Indus., Inc. v. Hoffman, 625 F. Supp. 608 (S.D.N.Y. 1985).

233. The Ninth and Fifth Circuits, which never adopted Whelan, also never made any attempts to develop a more compelling paradigm that might persuade other circuits to abandon it. See infra text accompanying notes 252-55.

234. 982 F.2d 693 (2d Cir. 1992).

235. See id. at 707-10. Drawing on Professor Nimmer's treatise, the Altai court set forth a three-part "abstraction-filtration-comparison" test for the analysis of allegedly infringing computer programs. Id. at 706-11 (citing, inter alia, 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 13.03 (1991)). As the first step, the structure of the program is analyzed at different levels of abstraction. Altai, 982 F.2d at 706-07. "Once the program's abstraction levels have been discovered, the substantial similarity inquiry moves from the conceptual to the concrete." Id. at 707. At each level of abstraction, unprotectable material - that is, material dictated by efficiency, industry demands, or interoperability requirements - is filtered out, leaving an identifiable " "core of protectable material.' " Id. (quoting Nimmer & Nimmer, supra, 13.03[F][5], at 13-72). Finally, the challenged program and the copyrighted program are compared to determine whether any of this protectable core has been copied. Altai, 982 F.2d at 710-11.

236. Based on surveys of programmers, Anthony Clapes has argued that the "functional constraints" argument is a myth. See, e.g., Clapes, supra note 163, at 926-28 & n.100; Symposium, Copyright Protection: Has Look and Feel Crashed?, 11 Cardozo Arts & Ent. L.J. 721, 746-50 (1993) (remarks of Mr. Clapes). I suspect that, like the blind men who disagreed about the elephant's shape, the programmers who emphasize creativity and those who emphasize constraint are focusing on different program features. Certainly it is no myth that the chosen operating environment for a program imposes constraints that must be met if the program is to function at all.

237. See Miller, supra note 16, at 1001-02, 1006-10. In the narrowest sense, this is true. The defendant in Whelan essentially translated many aspects of the copyrighted program into a different programming language. Whelan, 797 F.2d at 1226. Thus, even applying the Altai "abstraction-filtration-comparison" test, the result in Whelan might have been the same. But it was not the result in Whelan that software experts and legal scholars found untenable so much as the broad rule that a program could have only one "idea" or unprotected aspect.

238. See infra text accompanying notes 273-77.

239. Whelan, 797 F.2d at 1243.

240. Altai, 982 F.2d at 707, 710.

241. See Clapes, supra note 163, at 920-21 (criticizing Altai for this reason).

242. Miller, supra note 16, at 1004-05.

243. Altai, 982 F.2d at 708-09.

244. See generally Stern, supra note 16, at 382 (discussing the value of lookup tables for performing complex calculations).

245. See, e.g., Yael Li-Ron & John Montgomery, Double-Duty Databases, PC Computing, Mar. 1995, at 146; Kim S. Nash, Informix Fights Also-Ran Image, Computerworld, Mar. 20, 1995, at 1.

246. See 17 U.S.C. 102(a) ("Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression.").

247. This is exactly the scenario proposed, and rejected, in Baker v. Selden, 101 U.S. 99 (1879). The description of a system or procedure may be protected if sufficiently original, but the system or procedure itself may not be.

248. See 17 U.S.C. 102(b); Karjala, Computer Documents, supra note 6, at 997-98 & nn.66, 67. Thus, the argument that programmers view their creations as "creative" misses the point. See Clapes et al., supra note 16, at 1510-11.

249. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 356-57 (1991) (holding that the telephone white pages lack the constitutionally required minimum originality).

250. As the Court explained in Feist, free riding may not be used to bootstrap an infringement claim. Id. at 349-50, 357.

251. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992) (citing Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992)), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

252. See Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir.), cert. denied, 113 S. Ct. 198 (1992); Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988); Sid & Marty Krofft Television Prod., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977).

253. 960 F.2d 1465.

254. Id. at 1475-76.

255. Altai, 982 F.2d at 707, 710.

256. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir. 1994); Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341-43 (5th Cir. 1994), modified, 46 F.3d 408, 409 (5th Cir. 1995); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th Cir.), cert. denied, 115 S. Ct. 82 (1994); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993); Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476 (10th Cir.), cert. denied, 114 S. Ct. 307 (1993); Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993); MiTek Holdings, Inc. v. Arce Eng'g Co., Inc., 864 F. Supp. 1568, 1577-79 (S.D. Fla. 1994); Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203, 211-17 (D. Mass. 1992).

257. 798 F. Supp. 1499 (D. Colo. 1992), aff'd in part and rev'd in part sub nom. Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993).

258. Id. at 1514-16.

259. Id. at 1516-18.

260. Johnson-Laird suggests that common errors should not necessarily be read to denote theft of protectable expression. Johnson-Laird, supra note 12, at 900. Certainly, the question whether a reverse engineer has duplicated an error of logical function should be separated from whether the engineer has taken protected expression. The prevalence and significance of common errors may, however, be relevant to that determination.

261. Gates Rubber, 798 F. Supp. at 1518.

262. Id. at 1518 (citing Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1229 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987)).

263. 17 U.S.C. 102(b).

264. Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993).

265. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).

266. Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1420, 1422-23 (N.D. Cal. 1993) (citing Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993), and Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992)).

267. Id. at 1423-24. See supra text accompanying notes 66-67.

268. See 17 U.S.C. 102(b); Baker v. Selden, 101 U.S. 99, 101 (1879); Karjala, Computer Documents, supra note 6, at 976-83.

269. 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984).

270. Id. at 1253; see supra note 59.

271. Franklin Computer, 714 F.2d at 1253; see also Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 69 (D. Mass. 1990) ("The desire to achieve "compatability' ... cannot override the rights of authors to a limited monopoly in the expression in their intellectual "work.' "). However, a district court in the Fourth Circuit held, without citing Franklin Computer, that copyright could not be invoked to protect the protocols that governed access to a secure facsimile machine system developed under contract to the Department of Defense. Secure Servs. Technology, Inc. v. Time & Space Processing, Inc., 722 F. Supp. 1354, 1354-55 (E.D. Va. 1989).

272. The Altai court did not cite the Franklin Computer dictum, Paperback, or Secure Services in its discussion of compatibility. Franklin Computer involved verbatim copying and so may be distinguishable on its facts. See infra text accompanying notes 280-81.

273. See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 709-10 (2d Cir. 1992).

274. See, e.g., Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.) (holding that scenes a faire are uncopyrightable as a matter of law), cert. denied, 449 U.S. 841 (1980).

275. Altai, 982 F.2d at 709-10.

276. Thus, among the literary elements determined to be scenes a faire by the Hoehling court were representations of beer halls in Nazi Germany and the use of particular Nazi-era songs to convey, presumably, Germanness. Hoehling, 618 F.2d at 979.

277. See 17 U.S.C. 102(b); Karjala, Computer Documents, supra note 6, at 976-83.

278. 347 U.S. 201 (1954) (upholding expressive features of statuettes intended for functional use as lamp bases copyrightable).

279. Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1420, 1423 (N.D. Cal. 1993).

280. Altai's scenes a faire approach lends further weight to the argument that the interoperability dilemma is best resolved by abandoning the "literary work" classification altogether, and treating computer programs simply as a sui generis category of utilitarian work containing copyrightable elements.

281. The interesting question raised by the Franklin Computer situation is whether Franklin would be permitted to duplicate the systems and procedures necessary to support interoperable applications even if verbatim copying were the only way to achieve that result. If so, the necessary implication would be that operating systems contain insufficient original expression to qualify for copyright protection. The Franklin Computer court held that operating systems did merit copyright protection, but it did not consider this test; it merely observed that neither CONTU nor Congress had drawn a distinction between operating systems and other types of programs. Franklin Computer, 714 F.2d at 1252. Because originality of expression is the sine qua non of copyright protection, that analysis was misdirected. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). However, the Franklin Computer opinion suggests that verbatim copying was not the only way to achieve interoperability. Franklin Computer argued that it had explored the possibility of writing its own routines, but had concluded that it would be too much work. Under the copyright laws as currently written, "too much work" is not a sufficient excuse.

282. Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir. 1988); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971). Both the merger doctrine and the seeds of its confusion with copyrightability originate in the Supreme Court's decision in Baker v. Selden, 101 U.S. 99 (1879). As Professors Reichman and Samuelson have demonstrated, although in recent years Baker has been read narrowly to address only the merger question, its larger holding addresses, and rejects, the copyrightability of systems and processes. Reichman, supra note 77, at 693 n.288; Samuelson, Critique of Paperback, supra note 16, at 228-34 & nn.81-82.

283. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 707-09 (2d Cir. 1992).

284. Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 535-37 (5th Cir.), cert. denied, 115 S. Ct. 82 (1994); Autoskill Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476, 1494 (10th Cir.), cert. denied, 114 S. Ct. 307 (1993).

285. See Karjala, Computer Documents, supra note 6, at 988 ("The systems and processes described in a copyright-protected work are unprotected no matter how many other possible systems or processes may exist to accomplish the same result and regardless of whether they accomplish that result less, equally, or more efficiently.").

286. 831 F. Supp. 223 (D. Mass. 1993), rev'd, 49 F.3d 807 (1st Cir. 1995).

287. Id. at 226-27.

288. Id. at 231.

289. Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D. Mass. 1992); Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F. Supp. 78 (D. Mass. 1992).

290. 740 F. Supp. 37 (D. Mass. 1990).

291. Borland, 831 F. Supp. at 231.

292. Id.

293. See also Miller, supra note 16, at 1030 n.244 (suggesting that Shakespeare may be characterized as "useful").

294. As in Paperback, Judge Keeton did not discuss the history of section 102(b) or cite Baker v. Selden and its progeny. Borland, 799 F. Supp. at 230-34. This omission is all the more egregious in light of the thorough and well-supported criticism that followed the Paperback decision. See Samuelson, Critique of Paperback, supra note 16, at 232-42.

295. Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 816-17 (1st Cir. 1995); see H.R. Rep. No. 1475, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (explaining that section 102(b) is intended to exclude "processes or methods embodied in the [computer] program" from the scope of copyright).

296. Baker v. Selden, 101 U.S. 99, 104-05 (1879). Thus, Professor Rice's suggestion that section 102(b) simply codifies the merger doctrine appears to be ill-considered. Rice, Sega and Beyond, supra note 16, at 1139.

297. 446 F.2d 738 (9th Cir. 1971).

298. See, e.g., Teter, supra note 6, at 1072-87.

299. For this reason, although he argues that nonliteral program elements are wholly unprotectable by copyright, Professor Karjala believes that copyright protection for computer software should extend to literal code. See Karjala, Computer Documents, supra note 6, at 984-86; see also Samuelson, CONTU Revisited, supra note 16, at 769 (arguing against copyright protection for computer programs but recommending that courts apply misappropriation, unfair competition, or trade secret law to pirates).

300. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1515 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

301. Id. at 1526.

302. Id. at 1524 n.7.

303. Id.

304. See Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1420, 1422 n.6 (N.D. Cal. 1993); Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1401, 1404 (N.D. Cal. 1993).

305. Atari, 30 U.S.P.Q.2d (BNA) at 1403.

306. Id.

307. See, e.g., Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971). In this respect, the Franklin Computer court was right - merger is a "somewhat metaphysical issue." Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984).

308. See Karjala, Computer Documents, supra note 6, at 976-83; Samuelson, Critique of Paperback, supra note 16, at 235-42. Using the products of decompilation to generate clean room specifications is the simplest and most satisfactory way to ensure that no original expression is taken during that process. See supra text accompanying notes 171-72.

309. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 707-09 (2d Cir. 1992).

310. The doctrine of equivalents prevents competitors from appropriating the substance of a patented invention by designing around the literal language of the patent claims. Under the doctrine, a process or apparatus that performs substantially the same function in substantially the same way to accomplish substantially the same result as that claimed in a patent infringes the patent. See Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605 (1950). See generally 4 Donald S. Chisum, Patents 18.04 (1994) (discussing the doctrine's rationale and scope). Judge Smith relied on the doctrine of equivalents in granting Nintendo's motion for summary judgment of infringement of certain claims of the patent and denying Atari's summary judgment motion with respect to other claims. Atari Games Corp. v. Nintendo of Am., Inc., 1993 U.S. Dist. LEXIS 8864, *3-*6 (N.D. Cal. June 30, 1993); Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1401, 1414 (N.D. Cal. 1993).

311. The question whether such a patent, if valid, is enforceable against the bona fide reverse engineer is addressed in Part V, infra.

312. See 35 U.S.C. 282 (1988); Atari, 30 U.S.P.Q.2d (BNA) at 1409.

313. See Samuelson, Benson Revisited, supra note 3, at 1032-99.

314. See Simson L. Garfinkel, Patently Absurd, Wired, July 1994, at 104, 106 (stating that over 12,000 software patents have been issued); John T. Soma & B.F. Smith, Software Trends: Who's Getting How Many of What? 1978 to 1987, 71 J. Pat. & Trademark Off. Soc'y 415, 419-21, 428-32 (1989).

315. See, e.g., Chisum, supra note 16, at 977-92; Allen Newell, Response: The Models Are Broken, The Models Are Broken!, 47 U. Pitt. L. Rev. 1023 (1986); Oddi, supra note 16, at 410-22; Samuelson, Benson Revisited, supra note 3, at 1103-32; Stern, supra note 16, at 387-89; Garfinkel, supra note 314. This Article argues that debate over whether computer programs are patentable or "no more than" expressions of unpatentable mathematical principles is best approached via the requirements of novelty and nonobviousness. See infra Part IV.B.

316. See 35 U.S.C. 101 (1988).

317. See, e.g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) ("Patents cannot issue for the discovery of the phenomena of nature.... [These] are part of the storehouse of knowledge of all men." (citation omitted)); In re Shao Wen Yuan, 188 F.2d 377 (C.C.P.A. 1951); Halliburton Oil Well Cementing Co. v. Walker, 146 F.2d 817, 821 (9th Cir. 1944), rev'd on other grounds, 329 U.S. 1 (1946); Don Lee, Inc. v. Walker, 61 F.2d 58 (9th Cir. 1932). See generally 1 Chisum, supra note 310, 1.03 (discussing the scope and boundaries of the statutory class of processes). The Patent Clause of the Constitution authorizes the grant of exclusive rights "to promote the progress of ... useful Arts." U.S. Const. art. I, 8, cl. 8. The term "useful arts" has been construed to encompass "the realm of technological and industrial improvements." Samuelson, Benson Revisited, supra note 3, at 1033 n.24; see also id. at 1112; 1 Chisum, supra note 310, 1.01. As Professor Samuelson details, however, no coherent, satisfactory explanation or model has been offered for the exclusion of mathematical formulae and mental processes. Samuelson, Benson Revisited, supra note 3, at 1036 n.34.

318. See, e.g., Newell, supra note 315, at 1028-31; Samuelson, Benson Revisited, supra note 3, at 1063, 1122-24.

319. See, e.g., Chisum, supra note 16, at 980-81; Irah H. Donner & J. Randall Beckers, Throwing out Baby Benson With the Bath Water: Proposing a New Test for Determining Statutory Subject Matter, 33 Jurimetrics J. 247 (1993); cf. Oddi, supra note 16, at 416-20 (criticizing analogy of computer programs to "mental steps"). This view has gained ascendancy in recent cases. See infra text accompanying notes 346-58.

320. 409 U.S. 63 (1972).

321. Id. at 71-72.

322. 437 U.S. 584 (1978).

323. Id. at 589-91. The Court reasoned that if it ignored the mathematical algorithm the applicant had developed for updating the alarm limit, the claimed invention contained nothing new or inventive. For further discussion of this aspect of the Court's reasoning, see part IV.B, infra.

324. Flook, 437 U.S. at 595 ("Neither the dearth of precedent, nor this decision, should therefore be interpreted as reflecting a judgment that patent protection of certain novel and useful computer programs will not promote the progress of science and the useful arts, or that such protection is undesirable as a matter of policy."); Benson, 409 U.S. at 71 ("We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.").

325. Benson, 409 U.S. at 72-73.

326. 450 U.S. 175 (1981).

327. Id. at 187.

328. In re Freeman, 573 F.2d 1237, 1245 (C.C.P.A. 1977); In re Walter, 618 F.2d 758 (C.C.P.A. 1980); In re Abele, 684 F.2d 902 (C.C.P.A. 1982).

329. Abele, 684 F.2d at 905.

330. Id. at 905-07.

331. Id.

332. See supra text accompanying note 317.

333. See infra text accompanying notes 346-58. Richard Stern has termed this the "nominal hardware" limitation. See Stern, supra note 16, at 379-87.

334. See infra text accompanying notes 369-81.

335. 888 F.2d 1370 (Fed. Cir. 1989).

336. Id. at 1373. A ROM is a memory device, such as a semiconductor chip, in which information is stored to be read by the computer as needed. See Samuelson, CONTU Revisited, supra note 16, at 673 n.32. The ROM in Iwahashi was a "look-up ROM," a device for storing a list of data representing mathematical correlates of possible input from the program. See Stern, supra note 16, at 379 & n.16. The patent application contained only one claim. Iwahashi, 888 F.2d at 1371.

337. Relying on Freeman-Walter-Abele, the court reasoned:

The claim as a whole certainly defines apparatus in the form of a combination of interrelated means and we cannot discern any logical reason why it should not be deemed statutory subject matter as either a machine or a manufacture as specified in 101. The fact that the apparatus operates according to an algorithm does not make it nonstatutory.

Id. at 1375.

338. Stern, supra note 16, at 381-84. Realizing this, the PTO immediately sought to minimize Iwahashi's impact by issuing a notice limiting Iwahashi to its facts and promising a case-by-case approach to future applications. See Notice Interpreting In re Iwahashi (Fed. Cir. 1989), 1112 Off. Gaz. Pat. Office 16 (Mar. 13, 1990). For discussion of the PTO's initial resistance to the Federal Circuit's expansive approach to the patentability of computer program-related inventions in the post-Benson era, see Samuelson, Benson Revisited, supra note 3, at 1062-94. According to Professor Samuelson, after Diehr, the PTO capitulated and fell in line with the Federal Circuit. Id. at 1093-94 & n.256. In fact, the PTO's actions regarding Iwahashi and In re Alappat, 23 U.S.P.Q.2d (BNA) 1340 (Bd. Pat. App. 1992), rev'd, 33 F.3d 126 (Fed. Cir. 1994), discussed infra at text accompanying notes 346-53, indicate that a spark of resistance remained. However, the new guidelines recently proposed for evaluating software patents represent the PTO's unconditional surrender. See 60 Fed. Reg. 28,778 (June 2, 1995), discussed infra note 369.

339. Iwahashi, 888 F.2d at 1374-75.

340. 958 F.2d 1053 (Fed. Cir. 1992).

341. Id. at 1059.

342. Id.

343. Nonetheless, Professor Oddi argues that regarding analog-to-digital or digital-to-digital transformation as a sufficient "useful arts" limitation is consistent with the Supreme Court's definition of patentable subject matter, in a non-computer-program-related case, as "anything under the sun that is made by man." Oddi, supra note 16, at 415-16 (quoting Diamond v. Chakrabarty, 447 U.S. 305, 309 (1980)). Even so, because both analog-to-digital and digital-to-digital transformations are well-known prior art, the mere idea of computerizing a particular task, whether analog or digital input is required, cannot satisfy the threshold requirements that a patented invention be novel and nonobvious as well as manmade. See infra part IV.B.

344. In re Trovato, 42 F.3d 1376, 1380-81 (Fed. Cir. 1994); In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994). The claims in Schrader, for a method for calculating competitive bids, and in Trovato, for a method for calculating the shortest, or "least cost," path between two points, were disallowed.

345. Trovato, 42 F.3d at 1380; Schrader, 22 F.3d at 294.

346. 33 F.3d 1526 (Fed. Cir. 1994) (en banc).

347. Id. at 1541.

348. Id. at 1540-41.

349. See id. at 1537-39.

350. See id. at 1539-40.

351. See id. at 1541, 1543-44.

352. See id. at 1545. Of course, that is nonsense. As the dissent explained, "whether or not subject matter is a "new machine' within 101 is precisely the same question as whether or not the subject matter satisfies the 101 analysis.... [A] player piano playing Chopin's scales does not become a "new machine' when it spins a roll to play Brahms' lullaby." Id. at 1566-67 (Archer, C.J., concurring in part and dissenting in part).

353. See id. at 1542-45.

354. 33 F.3d 1354 (Fed. Cir. 1994).

355. 32 F.3d 1579 (Fed. Cir. 1994).

356. Warmerdam, 33 F.3d at 1358-60.

357. Id. at 1360-61.

358. But see In re Trovato, 42 F.3d 1376, 1382-83 (Fed. Cir. 1994) (rejecting computer program-related claims drafted in apparatus form where the claims merely recited a series of means that were "simply software instructions" and did not disclose "a specific hardware embodiment"). The lesson of Trovato, apparently, is that maintaining the fiction of "specific hardware" is all-important.

359. Lowry, 32 F.3d at 1582-83.

360. Id. at 1583 (quoting In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969)).

361. Id.

362. Id. at 1582; see 35 U.S.C. 103.

363. Lowry, 32 F.3d at 1582; see 35 U.S.C. 101.

364. See Lowry, 32 F.3d at 1582-83; Samuelson, Benson Revisited, supra note 3, at 1033-41, 1106-07 (describing the "mental steps" doctrine and the CCPA's eventual repudiation of it as a tool for evaluating computer program-related claims).

365. In full the first claim of the 10NES patent reads as follows:

A system for determining whether a videographics software program is authorized for use in an information processing apparatus, comprising:

a main data processor unit for executing a videographics software program;

an external memory for storing the videographics software program and for removable connection to said main processor unit, said external memory and main processor unit together constituting the information processing apparatus for executing the videographics software program;

a first authenticating processor device associated with said external memory for executing a first predetermined authenticating program to determine the authenticity of said external memory;

a second authenticating processor device which is installed in said main data processor unit for executing a second predetermined authenticating program to determine the authenticity of said external memory; and

control means for resetting said main data processor unit unless the execution of said first authenticating program by said first processor device exhibits a predetermined relationship to the execution of said second authenticating program by said second processor device.

U.S. Patent No. 4,799,635, col. 11, ll. 8-33 (1989).

366. U.S. Patent No. 4,799,635, col. 11, ll. 44-55 (1989).

367. Stern, supra note 16, at 382.

368. U.S. Patent No. 4,799,635, col. 11, ll. 37-50 (1989).

369. After opposing the applications in all three cases, the PTO recently withdrew its opposition to an application that claimed a computer program embodied in a floppy disk. In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). Shortly thereafter, it proposed new guidelines for the examination of computer program-related patent applications. See 60 Fed. Reg. 28,778 (June 2, 1995). In essence, the proposed guidelines restate the holdings of Alappat (as to apparatus), Lowry (as to computer memory devices), and Arrhythmia (as to "otherwise statutory" processes). They recite:

(i) A computer or other programmable apparatus whose actions are directed by a computer program or other form of "software" is a statutory "machine."

(ii) A computer-readable memory [defined to include compact discs and floppy disks] that can be used to direct a computer to function in a particular manner when used by the computer is a statutory "article of manufacture."

(iii) A series of specific operational steps to be performed on or with the aid of a computer is a statutory "process."

Id. at 28,778-79 (endnote omitted); see id. at 28,780 (endnote defining computer-readable memory to include compact discs and floppy disks). The proposed guidelines exclude data structures "independent of any physical element," id. at 28,779, but this limitation is less a restriction on patentability than a reminder of the importance of proper claim drafting. Also excluded are "processes that do[ ] nothing more than manipulate abstract ideas or concepts ...." Id. In light of Arrhythmia's holding that the manipulation of ECG signals corresponded to physical steps, however, this language excludes only the most facially abstract claims. See supra text accompanying notes 341-45. Moreover, the proposed guidelines make clear that even an algorithm for manipulating abstract concepts may be saved by the recitation of "computer implemented steps." 60 Fed. Reg. at 28,780. (The PTO cautions that in some cases "a claim classified as a statutory machine or article of manufacture may define nonstatutory subject matter," but notes that these situations will be "rare." Id. at 28,779.) In short, the proposed guidelines, like the Federal Circuit case law that they follow, fail to provide a meaningful rule for excluding nonstatutory claims.

It is worth noting that the PTO views its actions as a response to Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995), and other recent cases (discussed in Part III, supra) that have restricted the scope of copyright protection for computer programs. See James Evans, Patent Office Works on New Rules for Software Protection, S.F. Daily J., April 6, 1995, at 6 (" "We are focused on how best to serve our customers, and our customers are sending us the message that they need more protection for computer-related inventions.' " (quoting PTO solicitor Nancy Linck)). Current PTO Commissioner Bruce Lehman, a former lawyer and lobbyist for Lotus, is presumably well-acquainted with the issues raised in the Borland litigation. See Teresa Riordan, Controversial Pick for Patent Chief: Clinton's Selection Called "Political Debt,' S.F. Chron., May 8, 1993, at A16. Nonetheless, the scope of copyright protection for computer programs is not within the PTO's purview, and the trend toward "thin" copyright protection for nonliteral program aspects cannot, standing alone, constitute justification for changes in the PTO's position on the proper patent treatment of computer programs. Nor may the PTO interpret the patent laws solely to satisfy its "customers."

370. Stern, supra note 16, at 392-93. The patent bar has been quick to respond to the Federal Circuit's move away from Benson and Flook. See, e.g., David S. Benyacar, Mathematical Algorithm Patentability: Understanding the Confusion, 19 Rutgers Computer & Tech. L.J. 129, 196-97 (1993) (offering a primer on claim drafting to satisfy the standards set forth in Iwahashi and Arrhythmia).

371. Chisum, supra note 16, at 1009-10.

372. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) ("Einstein could not patent his celebrated law that E=mc[su'2']; nor could Newton have patented the law of gravity. Such discoveries are "manifestations of ... nature, free to all men and reserved exclusively to none.' " (quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948))); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939).

373. See Chisum, supra note 16, at 1006.

374. The argument that computerized algorithms are merely expressions that "approximate" laws of nature, see Donner & Beckers, supra note 319, is unpersuasive, for it begs the question how such laws may ever be expressed "exactly" by humans.

375. U.S. Const. art. I, 8, cl. 8.

376. See In re Alappat, 33 F.3d 1526, 1551 (Fed. Cir. 1994) (Archer, C.J., concurring in part and dissenting in part) (quoting George Curtis, A Treatise on the Law of Patents for Useful Inventions xxiii-xxv (4th ed. 1873)):

In this inquiry it is necessary to commence with the process of exclusion; for although, in their widest acceptation, the terms "invention" and "discovery" include the whole vast variety of objects on which the human intellect may be exercised, so that in poetry, in painting, in music, in astronomy, in metaphysics, and in every department of human thought, men constantly invent or discover, in the highest and the strictest sense, their inventions and discoveries in these departments are not the subject of the patent law.

See also Samuelson, Benson Revisited, supra note 3, at 1112 (noting that " "discoveries ... in nontechnological arts, such as ... theoretical mathematics ...' are not patentable" (quoting 1 Chisum, supra note 310, 1.01)).

377. See Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966):

The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain .... Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must "promote the Progress of ... useful Arts." This is the standard expressed in the Constitution and it may not be ignored.

See also Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980); Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1853). Thus, the applied science requirement for patent protection is analogous to the idea-expression distinction in copyright law, and serves the same purpose. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346-47 (1991).

378. Erwin Schrodinger developed a wave equation for describing quantum mechanics and solving for "characteristics of atomic behavior." See Daniel J. Kevles, The Physicists: The History of a Scientific Community in Modern America 164 (1977). Robert Millikan devised a method for measuring the precise charge of the electron. Id. at 89-90.

379. Professor Chisum argues that "there is every reason to believe that algorithm patents will be extensively licensed at reasonable royalty rates." Chisum, supra note 16, at 1017. In the context of closed proprietary computer systems such as the NES, that conclusion seems dubious. But even assuming that a license is offered, the cost to small software development companies (such as Accolade), especially those needing to license technology under more than one patent, may be prohibitive. See Garfinkel, supra note 314, at 106. The implications for the increasingly cash-strapped public sector, which includes many university research programs, are even worse. A university can license its own patents to fund its licenses of someone else's patents. The result, however, will be universities that "behave more and more like corporations," Reichman, supra note 77, at 718, and an atmosphere that "diverts attention away from the teaching function and retards the free and open exchange of knowledge that is a tenet of scientific progress," id. at 719.

380. Reichman, supra note 77, at 708-10; supra text accompanying notes 144-45.

381. Reichman, supra note 77, at 719. Professor Reichman suggests that patent and trade secret protection for computer programs may end cooperative "academic" research as we know it. Id. at 715. Professor Chisum observes that the judicially developed "experimental use" exception to patent infringement may be expanded to protect research uses of algorithm patents. Chisum, supra note 16, at 1017-19. However, he admits that the exception may not apply to "research usage that has an ultimate commercial objective." Id. at 1018. It is unclear whether that would include research conducted pursuant to a university-sponsored joint venture or technology transfer program.

382. Samuelson, Benson Revisited, supra note 3, at 1148-49. Samuelson does not argue that computer program-related developments should go completely unprotected, but advocates adoption of a sui generis system for protecting and encouraging such innovation. See id. at 1148-53; Samuelson et al., Manifesto, supra note 19, at 2406-13.

383. See, e.g., U.S. Patent No. 4,500,919 (Schreiber, assigned to Massachusetts Institute of Technology); U.S. Patent No. 5,126,739 (Whiting, assigned to Stac Electronics).

384. In re Alappat, 33 F.3d 1526, 1542-45 (Fed. Cir. 1994) (Rich, J.); Chisum, supra note 16.

385. U.S. Const. art. I, 8, cl. 8.

386. Professor Oddi, for example, has argued that the most important function of the patent system is the inducement of "revolutionary-type" inventions, and that the market may play a greater role in inducing other types of inventions. Oddi, supra note 16, at 375-78 (discussing the taxonomy of inventions developed in F.M. Scherer, Industrial Market Structure and Economic Performance 444-54 (2d ed. 1980)).

387. Garfinkel, supra note 314, at 106; Soma & Smith, supra note 314, at 419-21.

388. Alappat, 33 F.3d at 1543; In re Abele, 684 F.2d 902, 907 (C.C.P.A. 1982).

389. 35 U.S.C. 112 (1988); see, e.g., Charles E. Bruzga, The Benson Court's Approach to Computer Software - or Other - Patent Claims Reciting a Mathematical Algorithm, 74 J. Pat. & Trademark Off. Soc'y 135 (1992).

390. 35 U.S.C. 112.

391. Bruzga, supra note 389, at 142.

392. See Alappat, 33 F.3d at 1564 (Archer, C.J., concurring in part and dissenting in part) ("What is going on here is a charade.").

393. See 35 U.S.C. 102, 103.

394. See supra text accompanying notes 335-52.

395. Stern, supra note 16, at 395.

396. 188 F.2d 165 (C.C.P.A. 1951).

397. Id. at 166.

398. Id.

399. 431 F.2d 882 (C.C.P.A. 1970).

400. Id. at 889.

401. Id. at 889-90. That remains the rule under Freeman-Walter-Abele. See, e.g., In re Abele, 684 F.2d 902, 907 (" "In the final analysis under 101, the claimed invention, as a whole, must be evaluated for what it is.' " (quoting In re Sarkar, 588 F.2d 1330, 1333 (C.C.P.A. 1978))).

402. 437 U.S. 584 (1978).

403. Id. at 591-92.

404. Id. at 594. This reasoning was sharply criticized by the CCPA, thinly disguised as a criticism of the brief of the party that suggested it. In re Bergy, 596 F.2d 952, 962-63 (C.C.P.A.), vacated sub nom. Diamond v. Bergy, 444 U.S. 1028 (1980); see also David A. Blumenthal & Bruce D. Riter, Statutory or Nonstatutory?: An Analysis of the Patentability of Computer Related Inventions, 62 J. Pat. & Trademark Off. Soc'y 454, 484-87 (1980) (criticizing confusion of section 101 and section 103 requirements in Flook).

405. Cf. Alan P. Klein, Reinventing the Examination Process for Patent Applications Covering Software-Related Inventions, 13 John Marshall J. Computer & Info. L. 231 (1995) (proposing that new mathematical algorithms be deemed abandoned into the prior art under 102(c) because they cannot be claimed separately as inventions in their own right).

406. 450 U.S. 175 (1981).

407. Id. at 188-89.

408. Id. at 188 n.12.

409. See Dan L. Burk, Biotechnology and Patent Law: Fitting Innovation to the Procrustean Bed, 17 Rutgers Computer & Tech. L.J. 1, 26-33 (1991).

410. 333 U.S. 127 (1948); see Burk, supra note 409, at 27.

411. 333 U.S. at 129-32.

412. Id. at 135 (Frankfurter, J., concurring).

413. 447 U.S. 303 (1980); see Diamond v. Diehr, 450 U.S. 175, 181-82 (1981) (citing Chakrabarty).

414. See 35 U.S.C. 101; 1 Chisum, supra note 310, 4.02 (1994); supra part IV.A.2.

415. See supra part IV.A.1.

416. Professor Burk's support for Diehr's rejection of Flook is based on this reasoning. Burk, supra note 409, at 26-33, 42-43.

417. For one view on where that boundary lies, see Irah H. Donner, Two Decades of Gottschalk v. Benson: Putting the "Rithm" Back Into the Patenting of Mathematical Algorithms, 5 Software L.J. 418, 448-59 (1992). But see Newell, supra note 315, at 1024-38 (arguing that in computer science, no such boundary exists).

418. Diamond v. Diehr, 450 U.S. 175, 177 (1981). See supra text accompanying note 327.

419. Parker v. Flook, 437 U.S. 584, 592 (1978).

420. Stern, supra note 16, at 395.

421. The price of patent protection is disclosure; a patent must provide sufficient information to enable one ordinarily skilled in the field to practice the invention once it has passed into the public domain. 35 U.S.C. 112. If certain facts or principles are already well-known in the art, the inventor need not provide them. See, e.g., Loom Co. v. Higgins, 105 U.S. 580, 587 (1881); Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).

422. See, e.g., Doug Bailey, CD-ROM Multimedia Patent Draws Fire, Boston Globe, Nov. 17, 1993, at 49, 51; Steve Hamm, Patented Problems, 11 PC Wk., Jan. 24, 1994, at A1; John Markoff, A High-Technology Outcry Against the U.S. Patent System, N.Y. Times, Jan. 3, 1994, at C1; Michael Schrage, Too-Broad Patenting of High Tech Points Up Patent Flaws In System, L.A. Times, Nov. 18, 1993, at D1; Gina Smith, Lines Drawn In Patent Battle, S.F. Examiner, Nov. 28, 1993, at E1.

423. See Sabra Chartrand, Patents, N.Y. Times, July 4, 1994, 1, at 36; James W. Morando & Christian H. Nadan, Silent Enemies, The Recorder, May 4, 1994, at 10.

424. See 35 U.S.C. 282 (1988 & Supp. 1993).

425. See, e.g., Quad Envtl. Tech. Corp. v. Union Sanitary Dist., 946 F.2d 870, 872 (Fed. Cir. 1991).

426. U.S. Dept. of Commerce, Patent Office, Manual of Classification (Rev. No. 3 1994).

427. See Chartrand, supra note 423; Morando & Nadan, supra note 423.

428. 37 C.F.R. 1.56, 1.104(a), 1.107, 1.98 (1994); U.S. Dept. of Commerce, Patent Office, Manual of Patent Examining Procedure 706.03 (5th ed. 1983 & Supp. 1993) ("The primary object of the examination of an application is to determine whether or not the claims define a patentable advance over the prior art.").

429. See D. Lee Antton & Theodore A. Feitshans, Is the United States Automating A Patent Registration System for Software? A Critical Review of Information Management in the U.S.P.T.O., 72 J. Pat. & Trademark Off. Soc'y 894 (1990); Garfinkel, supra note 314, at 109.

430. See Antton & Feitshans, supra note 429; U.S. Cong., Office of Technology Assessment, Computer Software and Intellectual Property - Background Paper 8-9 (1990); Garfinkel, supra note 314, at 109.

431. As Richard Stern explains, unless a rejection is based on official prior art or generally accepted principles, the examiner must file an affidavit stating the basis for the rejection and citing personal expert knowledge. See 37 C.F.R. 1.107(b) (1994); Stern, supra note 16, at 385-86 & n.30.

432. See, e.g., Morando & Nadan, supra note 423, at 10.

433. See, e.g., Quad Envtl. Tech. Corp. v. Union Sanitary Dist., 946 F.2d 870, 872 (Fed. Cir. 1991).

434. Atari Games Corp. v. Nintendo of Am., Inc., 30 U.S.P.Q.2d (BNA) 1401, 1416 (N.D. Cal. 1993). See supra text accompanying note 70.

435. Id. at 1418.

436. Garfinkel, supra note 314, at 142.

437. Id. Garfinkel notes, however, that some publishers have been reluctant to authorize the inclusion of their works because they fear lost sales. Id.

438. See 17 U.S.C. 407, 408 (1988 & Supp. 1993).

439. 37 C.F.R. 202.19, 202.20 (1994).

440. S. 1854, 103d Cong., 2d Sess (1994). Other terms of this bill, including patent term harmonization provisions, were subsequently enacted as part of the legislation implementing the Uruguay Round of the Global Agreement on Tariffs and Trade (GATT). See Pub. L. No. 103-465, 108 Stat. 4809 (1994).

441. H.R. 1733, 104th Cong., 1st Sess. (1995). A different proposed bill would provide for publication after 60 months. See H.R. 359, 104th Cong., 1st Sess. (1995). In light of the short product lifespan and rapid pace of development in the computer software industry, see Karjala, New Protectionism, supra note 6, at 39-41, a 60-month lag before publication will do little, if anything, to cure the problem of "submarine" patents like the Compton's patent, which surface after a lengthy examining period and take the industry by surprise. See, e.g., Garfinkel, supra note 314, at 142. The proposed regulations regarding reexamination suffer from the same defect; a patent cannot be reexamined until it has been issued.

442. H.R. 1732, 104th Cong., 1st Sess. (1995). The PTO has also proposed regulations to this effect. See 60 Fed. Reg. 23,201 (May 8, 1995).

443. This argument was raised in opposition to the proposed Patent Term and Publication Reform Act. For testimony addressing it and arguing that the perceived threat to trade secret protection is not significant, see Patent Office Oversight: Hearings on S.1854 Before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary, 103d Cong., 2d Sess. (1994) (statement of Gary L. Newton, President, American Intellectual Property Law Association).

444. Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1399 (N.D. Cal.), aff'd in part and rev'd in part, 977 F.2d 1510 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993). See supra note 56 (discussing misuse and antitrust allegations in Atari). In Sega, of course, there was no need to reach the issue of Sega's alleged misuse. Atari's misuse defenses were severed for later trial with Atari's antitrust claims against Nintendo, and the case settled before that second phase could occur. See supra text accompanying notes 73-75.

445. 35 U.S.C. 101.

446. See, e.g., Mark A. Lemley, The Economic Irrationality of the Patent Misuse Doctrine, 78 Cal. L. Rev. 1599 (1990) [hereinafter Lemley, Economic Irrationality]; see also Note, Clarifying the Copyright Misuse Defense: The Role of Antitrust Standards and First Amendment Values, 104 Harv. L. Rev. 1289 (1991).

447. See generally 5 Chisum, supra note 310, 19.04 (summarizing the law of patent misuse).

448. See, e.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917).

449. See 35 U.S.C. 271(d)(5) (Supp. 1992).

450. See infra part V.A.2.

451. See infra text accompanying notes 478-83.

452. See Jefferson Parish Hosp. Dist. No. 2 v. Hyde, 466 U.S. 2, 12 (1984) ("The essential characteristic of an invalid tying arrangement lies in the seller's exploitation of its control over the tying product to force the buyer into the purchase of a tied product that the buyer either did not want at all, or might have preferred to purchase elsewhere on different terms.").

453. See Paul A. Durdik, Reverse Engineering as a Fair Use Defense to Software Copyright Infringement, 34 Jurimetrics J. 451, 453 (1994).

454. See Morton Salt v. G.S. Suppiger, Co., 314 U.S. 488, 492 (1942) ("The privilege of a patent monopoly ... excludes from it all that is not embraced in the invention.").

455. Pub. L. 100-703, 102 Stat. 4674 (1988) (codified as amended at 35 U.S.C. 271(d)(4) & (5) (Supp. 1992)).

456. 35 U.S.C. 271(d)(5).

457. 112 S. Ct. 2072 (1992).

458. Id. at 2090.

459. Id. at 2080.

460. Id. at 2083-87.

461. See id. at 2085-87 (discussing the costs associated with photocopier purchases). Because both Nintendo and Sega license the rights to develop games interoperable with their consoles to third-party vendors under certain conditions, it might be argued that whether Nintendo or Sega has market power for antitrust purposes depends on whether the existence of third-party licenses outweighs their restrictive terms. However, that argument ignores the fact that Nintendo also reaps a profit from its licensees. As a matter of antitrust tying law, Nintendo need not sell all of the tied product itself; all that is necessary is that it have a financial interest in sales of the tied product. See Peter J. Klarfeld, Tying Arrangements and Exclusive Dealing, in 34th Annual Antitrust Law Institute 853, 908-10 (PLI 1993) (collecting cases).

462. 35 U.S.C. 271(d).

463. See Durdik, supra note 453, at 466.

464. For cases involving "technological tying," at least one commentator has distinguished between "accidental" coercion as a result of technological development and interoperability requirements, and "actual" coercion "motivated by a desire to compel the purchase of two products." Klarfeld, supra note 461, at 883-34 (citing cases). Plainly, the coercion accomplished by lock-out programs is of the latter type.

465. See supra note 196.

466. The other theory of antitrust liability advanced in the interoperability context is monopolization of an essential facility. See, e.g., Jeff Barge, High-Tech Firms Face Scrutiny, A.B.A. J. July 1994, at 36, 37. Application of the essential facility doctrine in the context of lock-out is problematic, however, because its combination with a Kodak-type market power analysis is inherently circular. A variant on the classic essential facility fact pattern illustrates this circularity. Instead of a river with one bridge over it, see United States v. Terminal R.R. Ass'n, 224 U.S. 383 (1912), imagine three bridges. One, operated by the Nintendo Bridge Company, is a railroad trestle. Another, owned by the Sega Bridge Corporation, carries truck traffic. The third, operated by an upstart competitor of Nintendo and Sega called 3DO, is a monorail bridge. Once a freight company needing to transport goods across the river has purchased or leased its desired modes of transportation, the costs of switching are high. Under Kodak, each company has market power in the market for traffic over its bridge, but it does not follow that any one company's bridge is an essential facility for crossing the river. Arguably, anyone denied access to the bridge of his or her choice can simply switch modes of transportation. If all three bridge proprietors deny access, there is no principled basis, other than assessment of each proprietor's market power in the larger market for traffic across the river, for deciding whose bridge is truly "essential."

467. 35 U.S.C. 101.

468. See 35 U.S.C. 112 (requiring disclosure of "the manner and process of making and using [the invention] ... [and] the best mode contemplated by the inventor of carrying out [the] invention").

469. U.S. Patent No. 4,799,635, abstract, p. 1 (1989).

470. See, e.g., Phillips Petroleum Co. v. U.S. Steel Corp., 673 F. Supp. 1278, 1325 (D. Del. 1987).

471. Lowell v. Lewis, 15 F. Cas. 1018 (C.C.D. Mass. 1817); see generally 1 Chisum, supra note 310, 4.03[1] (discussing public policy aspect of utility requirement).

472. See, e.g, Brewer v. Lichtenstein, 278 F. 512 (7th Cir. 1922); Schultze v. Holtz, 82 F. 448 (N.D. Cal. 1897).

473. See, e.g., Callison v. Dean, 70 F.2d 55, 58 (10th Cir. 1934); Fuller v. Berger, 120 F. 274 (7th Cir. 1903), cert. denied, 193 U.S. 668 (1904); 1 Chisum, supra note 310, 4.03[1][b].

474. See, e.g., Whistler Corp. v. Autotronics Inc., 14 U.S.P.Q.2d (BNA) 1885, 1886 (N.D. Tex. 1990); Phillips Petroleum, 673 F. Supp. at 1325.

475. See supra text accompanying notes 447-48.

476. See supra note 448 and accompanying text.

477. See Fuller, 120 F. 274; Ex parte Murphy, 200 U.S.P.Q. (BNA) 801 (P.T.O. Bd. App. 1977) (adopting the Fuller rule).

478. See supra text accompanying notes 53-55.

479. There is no question that the 10NES has this effect. Evidence in the Atari case showed that Atari's inability to decipher Nintendo's microcode was the stumbling block that led to its ill-fated decision to obtain a copy of the 10NES code from the Copyright Office under false pretenses. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 836 (Fed. Cir. 1992).

intendo also might argue, as Sega did with respect to its lock-out routine, that the device was intended primarily as a means of quality control, to protect consumers from counterfeit or otherwise inferior products. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1515 (9th Cir. 1992), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993). As discussed above, however, the law provides other mechanisms - specifically, the trademark and unfair competition laws - for controlling the quality of products associated with one's name. See supra note 196.

480. See Atari, 975 F.2d at 846 (holding that Atari was precluded from invoking the copyright misuse defense by its own unclean hands).

481. The elaborateness of the patented-device-as-decoy tactic would undermine any real-life argument by Nintendo that it conceived of the 10NES solely as an anti-counterfeiting measure. Nonetheless, Sega raised such an argument. Sega, 977 F.2d at 1515, 1530.

482. See U.S. Patent No. 4,799,635, col. 12, ll. 61-63 (1989). If, as I have suggested, this limitation represents an attempt to comply with the physical limitation rule derived from Benson and Iwahashi, the idea that the patent might be too narrow to satisfy the utility requirement is not without irony. See supra section IV.A.

483. See U.S. Const. art. I, 8, cl. 8; supra part IV.A.2. Use of an external key device to unlock a secure system, such as a bank system, might be less desirable than a password system because the key device could be stolen. However, the question of an invention's market viability forms no part of the patent analysis. Forecasting economic viability requires a degree of prescience that neither courts nor patent examiners can reasonably be expected to attain. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1573 (Fed. Cir.) ("Under our economic and patent systems, valuation of the worth of an inventor's contribution is left to the public, not to the judiciary in determining patentability."), cert. denied, 481 U.S. 1052 (1987).

484. See, e.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 490 (1942); Transitron Elec. Corp. v. Hughes Aircraft Co., 487 F. Supp. 885, 892-93 (D. Mass. 1980), aff'd, 649 F.2d 871 (1st Cir. 1981).

485. Morton Salt, 314 U.S. at 492.

486. See, e.g., B.B. Chem. Co. v. Ellis, 314 U.S. 495, 498 (1942).

487. See 3 Chisum, supra note 310, 19.04, at 19-38 (discussing Morton Salt).

488. Advocates of an antitrust approach to patent misuse argue that allowing the misuse defense to exist separately from the antitrust laws affords the infringer a dual recovery. Not only is the patent declared unenforceable, but the infringer also may recover antitrust damages where applicable. See Lemley, Economic Irrationality, supra note 446, at 1617-18. In this way, they maintain, the patent misuse doctrine overrewards even its deserving beneficiaries. In a sense, this view is based wholly on wishful thinking: If the criteria for invoking the misuse doctrine were tightened to require antitrust injury for a finding of misuse, then the misuse doctrine would be redundant. Otherwise, the misuse doctrine will often be invoked by those to whom no antitrust recovery is available.

Moreover, a declaration of nonenforcement due to misuse is an equitable remedy, in essence an injunction. See, e.g., Robert P. Merges, Reflections on Current Legislation Affecting Patent Misuse, 70 J. Pat. & Trademark Off. Soc'y 793, 796-98 (1988). Injunctions barring certain future conduct may be, and often are, awarded together with damages for past harm. Indeed, injunctive relief has long been available under the antitrust statutes, where it coexists peacefully with provisions authorizing recovery of damages. See 15 U.S.C. 26 (1988). Professor Lemley argues that a declaration of misuse is not equivalent to an injunction because there is no express requirement that courts find irreparable harm and an inadequate remedy at law. Lemley, Economic Irrationality, supra note 446, at 1618 n.121. Arguably, however, both findings are implicit in a determination that the patent grant has been improperly extended - the converse of the principle that a finding of infringement creates a presumption of irreparable harm and an inadequate remedy at law on behalf of the patentee.

489. See Lemley, Economic Irrationality, supra note 446, at 1615-17; cf. Note, supra note 446, at 1297-1303 (advocating an antitrust-based standard for copyright misuse).

490. Ramsey Hanna, Note, Misusing Antitrust: The Search for Functional Copyright Misuse Standards, 46 Stan. L. Rev. 401 (1994). For a systematic critique of this "static" approach to antitrust theory, and an argument that antitrust law should be reconceived to protect "dynamic" competition and innovation, see Antitrust, Innovation, and Competitiveness (Thomas M. Jorde & David J. Teece eds., 1992).

491. Hanna, supra note 490, at 422-27.

492. Cf. Robert P. Merges & Richard P. Nelson, Market Structure and Technical Advance: The Role of Patent Scope Decisions, in Antitrust, Innovation, and Competitiveness, supra note 490, at 185, 213-15 (arguing that patents in science-based industries should be given a narrow scope in order to prevent them from blocking future innovation).

493. Cf. Durdik, supra note 453, at 464-66 (discussing social costs of broad copyright monopoly).

494. Cf. Merges, supra note 488, at 797-98 ("Patent misuse ... helps maintain patent law's equitable symmetry, in a way that antitrust critics, unschooled in the structure and balance of patent law, have overlooked.").

495. See, e.g., Bellsouth Advertising & Publishing Corp. v. Donnelly Info. Publishing, Inc., 933 F.2d 952, 961 (11th Cir. 1991) (adopting an antitrust standard), vacated on other grounds, 977 F.2d 1435 (11th Cir. 1992), on reh'g, 999 F.2d 1436 (11th Cir. 1993) (seven-judge panel), cert. denied, 114 S. Ct. 943 (1994); Supermarket of Homes v. San Fernando Valley Bd. of Realtors, 786 F.2d 1400, 1408 (9th Cir. 1986). But see Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 979 (9th Cir. 1990) (rejecting the notion that some nexus should be required).

496. The Sixth Circuit has attempted to import notions of standing into the doctrine of patent misuse. See Kolene Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77, 85 (6th Cir.), cert. denied, 404 U.S. 886 (1971).

497. See 35 U.S.C. 101. Literal copying may be an equitable factor militating against application of the misuse doctrine in certain cases, such as scenario B discussed at text accompanying notes 479-81, 484-87, supra.

498. See 17 U.S.C. 106(1); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1246-48 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984).

499. See supra part III.

500. The doctrine of copyright misuse has been defined largely by negative implication. Many courts have conceded that under some circumstances a copyright misuse defense might apply, but only two have ever applied it. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 976-77 (4th Cir. 1990); M. Witmark & Sons v. Jensen, 80 F. Supp. 843, 850 (D. Minn. 1948); see also Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 846 (Fed. Cir. 1992) (Atari could not invoke copyright misuse defense because of unclean hands) (applying Ninth Circuit law); qad inc. v. ALN Assocs., Inc., 974 F.2d 836 (7th Cir. 1992) (no jurisdiction to review lower court dismissal of copyright misuse defense); Bellsouth Advertising & Publishing Corp. v. Donnelly Info. Publishing, Inc., 933 F.2d 952, 961 (11th Cir. 1991) (refusing to find copyright misuse absent an antitrust violation), vacated on other grounds, 977 F.2d 1435 (11th Cir. 1992), on reh'g 999 F.2d 1436 (11th Cir. 1993), cert. denied, 114 S. Ct. 943 (1994); United Tel. Co. of Mo. v. Johnson Publishing Co., 855 F.2d 604, 610-12 (8th Cir. 1988) (copyright misuse defense available, but not supported by the facts in this case); Supermarket of Homes, Inc. v. San Fernando Valley Bd. of Realtors, 786 F.2d 1400, 1408 (9th Cir. 1986) (no evidence of required fraud or misconduct that might support a copyright misuse defense); CBS, Inc. v. ASCAP, 607 F.2d 543, 544-45 (2d Cir. 1979) (remanding for reconsideration of music licensing practices as misuse), cert. denied, 450 U.S. 970 (1981); Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852, 865 (5th Cir. 1979) (copyright misuse defense may apply in some cases, but not this one), cert. denied, 445 U.S. 917 (1980). Consequently, academic commentators continue to debate whether the copyright misuse defense exists. See, e.g., Hanna, supra note 490; Philip Abromats, Note, Copyright Misuse and Anticompetitive Software Licensing Restrictions: Lasercomb America, Inc. v. Reynolds, 52 U. Pitt. L. Rev. 629 (1991). This Article takes the Second, Fourth, Fifth, Seventh, Eighth, Ninth, Eleventh, and Federal Circuits at their word and assumes that the defense exists in some form. There is considerable disagreement among the courts as to the nature and scope of the copyright misuse defense. Compare Bellsouth, 933 F.2d at 961 (requiring antitrust violation) and Supermarket of Homes, 786 F.2d at 1408 (requiring some nexus between the conduct alleged to be a misuse and the infringing conduct) with Lasercomb, 911 F.2d at 979 (no antitrust violation or nexus required). Because this Article concludes that installation of a lock-out program is not copyright misuse per se, it takes no position on that question.

501. Under the approach to copyright adopted by the Atari court, the concept of misuse plays a more central role. If copyright does not allow functional duplication, enforcement of the 10NES copyright has the same effect as enforcement of the 10NES patent - it denies would-be competitors in the market for NES-compatible games access to the unpatented console. In that case, the analysis of the scope of the copyright misuse defense parallels that set forth in Part V.A, supra.

502. See supra text accompanying note 15.

503. See supra text accompanying notes 26-27 (discussing Sega's and Nintendo's licensing practices).

504. Given the powerful market incentives for the development of lock-out programs, it is quite possible that such programs fall within the class of non-copyright-induced works and that no additional incentives need be provided by copyright law to encourage their creation. However, it is impossible to determine with certainty whether a particular computer program is primarily copyright-induced or market-induced, and there is a strong countervailing argument. Lock-out programs are important to their owners in large part because copyright protection can be invoked against copiers. It is likely, then, that the availability of copyright protection at least contributes to the inducement of lock-out programs. See Oddi, supra note 16, at 378-83.

505. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992) (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 159-64 (1989)), as amended, 1993 U.S. App. LEXIS 78 (9th Cir. 1993).

506. See Johnson-Laird, supra note 12, at 864-81.

507. See Hanna, supra note 490, at 430-31; Karjala, Computer Documents, supra note 6, at 984-85; Samuelson et al., Manifesto, supra note 19, at 2337-42. Professor Leaffer has argued that holding "anti-reverse engineering measures" to constitute copyright misuse would harm industry competitiveness by forcing disclosure of trade secret information. Leaffer, supra note 13, at 1104-06. However, the copyright laws should not be used to protect trade secrets, which are unprotectable "know-how" that may lawfully be reverse engineered. See Samuelson et al., Manifesto, supra note 19, at 2355-56 & n.191. For discussion of the ways in which copyright protection for computer programs and Copyright Office registration and deposit practices currently serve a trade secrecy function, see McManis, supra note 76, at 67-69; Rice, Sega and Beyond, supra note 16, at 1156-57, 1163-64; and Samuelson, CONTU Revisited, supra note 16, at 715-19.

508. See, e.g., Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990); Supermarket of Homes, Inc. v. San Fernando Valley Bd. of Realtors, 786 F.2d 1400, 1408 (9th Cir. 1986). The right to create interoperable programs also leaves untouched the defense of fraud on the Copyright Office, which played such a critical role in favor of the copyright holder in Atari.

509. See Hanna, supra note 490, at 432-35.

510. See William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal Stud. 325, 348 (1989).

511. U.S. Const. art. I, 8, cl. 8.

512. Indeed, CONTU recommended copyright protection for computer programs in part because it doubted whether computer programs would be held patentable. CONTU, Final Report, supra note 4, at 17.

513. Michael J. Kline, Requiring An Election of Protection for Patentable/Copyrightable Computer Programs (pt. II), 67 J. Pat. & Trademark Off. Soc'y 339, 340-51 (1985).

514. See Karjala, Computer Documents, supra note 6, at 983-87. The Federal Circuit's opinion in Atari recognized this principle of complementarity. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 839-40 (Fed. Cir. 1992). Unfortunately the district court ignored its guidance in evaluating Nintendo's copyright infringement claim. See supra text accompanying notes 279-80.

515. This conclusion also disposes of the related argument that the disparity between the statutory terms of patent and copyright protection is itself illegal. See Kline, supra note 513, at 341. If copyright and patent protect different aspects - as they must - whether one type of protection outlasts the other is irrelevant from a constitutional perspective. It may be that the terms of protection granted - the same that apply to other copyrightable works or patentable inventions - overreward when considered in light of the relatively short commercial life of most computer programs and the rapid and cumulative nature of advances within the industry. Menell, Application Programs, supra note 16, at 1057-61. Historically, both the Copyright Act and the Patent Act have specified that all covered works receive terms of equal length. See 17 U.S.C. 302 (1988) (copyright extends for life of the author plus 50 years, or 75 years for works that are anonymous, pseudonymous, or for hire); 35 U.S.C. 154 (1988) (patent term is 17 years). In neither case does the Constitution mandate that result. The terms of protection for computer program-related works or inventions could easily be shortened.

It also may be that dual protection for computer programs confers more protection than necessary to induce their creation and distribution. If true, this would be a strong argument for a sui generis scheme of protection for these intellectual property rights. See Samuelson et al., Manifesto, supra note 19, at 2356-65.

516. See supra part III.A.

517. See, e.g., Samuelson et al., Manifesto, supra note 19, at 2356-65.

518. See, e.g., Symposium, supra note 236, at 758-63 (comments of Prof. Rochelle Cooper Dreyfuss).

519. See, e.g., Oddi, supra note 16.

520. See Samuelson et al., Manifesto, supra note 19, at 2313 nn.7-8 (summarizing international accords).

521. Information Infrastructure Task Force, Information Policy Committee, Working Group on Intellectual Property Rights, Intellectual Property and the Information Infrastructure, The Preliminary Draft of the Working Group on Intellectual Property Rights (1994).

522. Id. at 100-04.

523. For a thorough critique of this and other aspects of the report, see Pamela Samuelson, Legally Speaking: The NII Intellectual Property Report, Comm. of the ACM, Dec. 1994, at 21.

524. Rounding out the picture, and contributing substantially to the acrimony, are the Working Group on Intellectual Property Rights and various industry lobbying associations, which for the most part appear to view strong intellectual property protection for computer programs as a pure trade issue devoid of constitutional or philosophical significance. See sources cited in note 211, supra. The intellectual property laws cannot be so easily divorced from their constitutional and philosophical foundations. The debate over the proper application of copyright and patent doctrines to computer programs cannot be resolved without resort to first principles.

525. Newell, supra note 315.