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

VI. CONCLUSION: REFLECTIONS ON THE MODELS FOR INTELLECTUAL PROPERTY PROTECTION OF COMPUTER PROGRAMS

Where does this exploration of the intellectual property issues surrounding lock-out programs leave us? As I indicated at the outset, I believe that it enables a systematic and concrete assessment of whether copyright and patent protection for computer programs, as currently understood and applied, serves the purpose of "promoting the progress of science and the useful arts." ⁿ⁵¹¹ Those questions are important because they affect the competitive structure of an entire industry, and, ultimately, each of us as consumers, whether of home entertainment systems, "set-top boxes," or some other product yet to be conceived. If closed proprietary platforms and lock-out programs become more common, competition and innovation cannot continue to thrive without systematic rethinking of the way that intellectual property protection for computer programs is conceived and enforced.

As this Article has explained, a computer program, such as the 10NES, that satisfies the PTO's standard for novelty is currently protected under both patent and copyright law - that is, both as a useful invention and as a creative work. That result was largely fortuitous; the debates over copyright and patent protection for computer software, though roughly contemporaneous, were conducted by separate groups. The result was dual protection for computer programs, with virtually no attention paid to the potential consequences of the overlap. ⁿ⁵¹²

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It has been argued that the overlap between patent and copyright protection for computer programs represents "a failure of consideration for the original patent grant" or "a form of "double patenting,' " because the protection afforded by copyright extends beyond the term of the patent. ⁿ⁵¹³ That is true only if, as in Atari, copyright and patent are construed to protect the same program features. There is no reason that an individual cannot be both inventor and author, and that a computer program cannot constitute both a useful invention and a creative work. However, both designations cannot apply to the same element, and in particular, copyright protection cannot be invoked to bar duplication of functional program features that are protectable, if at all, only under the patent system. ⁿ⁵¹⁴ For the copyright/patent overlap not to result in an unconstitutional failure of consideration, all functional program features of a patented computer program must enter the public domain when the term of the patent expires. ⁿ⁵¹⁵ Put differently, under the current scheme of intellectual property protection for computer programs, the overlap between copyright and patent requires that the respective spheres of protection be clearly defined so that they are mutually exclusive, and so that neither sphere protects unpatentable, uncopyrightable ideas or mathematical principles.

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The status of intellectual property protection for computer programs is shifting. In computer copyright cases, the trend is increasingly toward recognizing that copyright affords only "thin" protection. ⁿ⁵¹⁶ In contrast, although some structural changes are underway at the PTO that will affect the initial processing of computer program-related applications, the Federal Circuit commitment to an expansive approach to patentability has grown more entrenched. Among commentators and legal scholars, the past decade has seen a groundswell of criticism for both legal frameworks, but, so far, little consensus on the appropriate solution. Some favor sui generis protection, ⁿ⁵¹⁷ others advocate a copyright-based system, ⁿ⁵¹⁸ and still others argue that a patent-based system is preferable. ⁿ⁵¹⁹ From a political perspective, the likelihood of systemic or paradigmatic change in the mode of intellectual property protection of computer programs is small, because international accords regarding the source of protection for computer programs have taken shape based on the existing copyright and patent models. ⁿ⁵²⁰ As a practical matter, then, the options have been narrowed. The question, at least for the immediate future, is not whether a sui generis scheme of protection will be adopted, but whether and how to fine-tune the models we have.

Based on analysis of the interoperability and lock-out problems, I have attempted to set forth a blueprint for appropriate and desirable changes. I have argued that computer programs should be identified within the existing framework of the Copyright Act as a sui generis category of copyrightable works, and that the fair use doctrine should be reconceived to include intermediate copying solely to gain knowledge and understanding as a protected, "enabling" use. I have argued, as well, that section 102(b) functionality, rather than limited and inapposite doctrines such as scenes a faire or inherently slippery concepts of current and future use, should be the touchstone by which duplication of nonliteral program elements is evaluated. On the patent side, I have advocated adoption of an "innovative programmer" standard for judging the novelty and nonobviousness of computer program-related inventions, to preclude patentability for unprotectable [p*1201] mathematical and physical principles implemented via general purpose computing equipment. Finally, I have recommended that use of a patented lock-out program to exclude competing software developers from unpatented computer systems be deemed a misuse of the patent. Taken together, these changes are designed to ensure that intellectual property protection for lock-out programs in particular, and computer programs in general, will not protect what is unprotectable under copyright law, patent law, or both.

The preliminary report released by the Working Group on Intellectual Property Rights, an arm of the Clinton administration's Information Infrastructure Task Force, sets forth a very different vision of the future of computer program-related intellectual property rights. ⁿ⁵²¹ Among other things, the Working Group has proposed changes to the copyright laws that would ban and criminalize the manufacture or importation of technology designed to defeat "anti-copying" devices installed in computer software. ⁿ⁵²² Unmentioned in the report is the fact that the proposed changes would effectively eliminate the reverse engineering right recognized by the courts, and so render wholly academic the right to develop interoperable programs that follows from the language of section 102(b) of the Copyright Act. ⁿ⁵²³ As an initial matter, if the intellectual property laws are to be changed in a way that would deprive the public of rights it currently has, that fact should be admitted. More fundamentally, the Working Group's proposal to make copyright protection for computer programs virtually ironclad ignores the role of the patent system and the constitutional significance of the two-tiered patent/copyright model of protection for intellectual property rights.

Rarely in the development of any body of law have the lines of conflict been so clearly and acrimoniously drawn. Fearing the effect on nuanced, carefully developed bodies of law, some of the leading copyright and patent scholars have strenuously opposed any changes in copyright or patent doctrines premised on acknowledgment that computer programs are different from other covered works. Professor Miller envisions the gradual erosion of the idea-expression distinction [p*1202] as a result of according "thin" copyright protection to computer programs; Professor Chisum and Judge Rich resist the exclusion of obviously artificial "processes" from the class of potentially patentable works, and foresee the disintegration of patent protection as claims are parsed ever more narrowly. ⁿ⁵²⁴ On the other side of the debate, opponents of copyright or patent protection for computer programs are increasingly adamant about the current systems' inability to adapt to this particular technological change. One eminent computer scientist, responding to Professor Chisum's call for sanity and a return to time-honored first principles of patent law, answered as follows: "The Models Are Broken!" ⁿ⁵²⁵

Both sides are right to fear the consequences of expanding intellectual property doctrines to encompass computer programs, but, I believe, wrong about what will avoid the apocalypse. All models are by nature imperfect, but (as Sega, Altai, and Flook demonstrate) the core doctrines governing copyrightability, patentability, and the scope of copyright and patent protection remain vital and resilient. In order to avoid doing violence to these basic models, which have proved so well-suited to the other "sciences" and "useful arts," new rules and new exceptions for computer programs must be incorporated into the models. The law must adjust to accommodate computer programs, so that the models will not break. As I have argued throughout this Article, the adjustments required are not wrenching, and are themselves based on fundamental precepts of copyright and patent protection that require excluding functional principles from the ambit of copyright and keeping mathematical algorithms in the public domain. The adjustments suggested are to secondary copyright and patent doctrines developed to effectuate those purposes. It would be surprising, given the faith placed in the models by their self-appointed guardians, if the models were not strong enough to bear the weight of these changes.