Assignment #11

I. Software -- Infringement Claims Resting Not So Much on What the Software Contains as How B Built It and Forum Shopping

As we continue our exploration of copyrighted software, I want us to shift our focus to process issues and related interface matters.

Firm B has done focus groups with potential users of the software he hopes to create and market. Through them he has discovered that certain types of compatibility appear critical to market success.

One level of compatibility is the ability to run or convert address book files built with A's software. As one focus group participant explained: "I have trouble-enough managing my address book on my desktop machine. I don't want to have to build and coordinate a separate address book on my handheld." I need a way to move entries back and forth between one and the other and, indeed, I'd like to be able to link the two machines and have the address books automatically synchronize with one another."

As already noted, to achieve these and its more general aim of software that does everything A's does plus some, B has acquired (licensed) several copies of A's software. The "shrinkwrap" terms on the packages B acquired contained the standard language framing the transaction as a license not a sale, setting out a list of permitted and forbidden uses. The latter included: "You may not reverse engineer, decompile, or disassemble the Software."

B wants to have programmers test A's software in countless ways, inspect the mail files and address book files it generates, and relate those files to what users does and what they see on the screen. B wants the the programmers to do all that it takes, to build the capacity to work with address book files created with the A software.

If it developes that the decisions of one circuit, say the First (Lotus), are far more reassuring to B than those of another, say the Ninth (Triad and MAI) is there anyway that B can know in advance which circuit's decisions will govern. Suppose the company is based in Boston and its programming will be done there, can our advice to B rest on First Circuit precendent?

II. Readings

• Cases:
• Last week's cases continue to be important
• Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) LEXIS | WESTLAW
• Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832 (Fed. Cir. 1992) LEXIS | WESTLAW
• The cases assigned in week 6 of the course are relevant, again (time to start reviewing if you haven't already)
• Statute:
• Consider to what extent, if any, provisions of the Digital Millenium Copyright Act bear on these topics
• Commentary:
• Hayes, The Legality of Disassembly of Computer Programs (1992)
• Julie E. Cohen, Reverse Engineering and the Rise of Electronic Vigilantism: Intellectual Property Implications of "Lock-Out" Programs, 68 S.Cal. L. Rev. 1091 (1995) LEXIS | WESTLAW

III. How We'll Proceed

I'll begin discussion on this assignment in the course classroom conference tomorrow (Feb. 3). Our video conference class concluding this set of issues will be next Tuesday, Feb. 9.