HACKING INTELLECTUALPROPERTY LAW

COMMUNICATIONS OF THE ACM January 2008/Vol. 51, No. 1 65

Back then, things didn’t look sogood for Microsoft or Paper-back because a widely citedappellate court decision from

1986, Whelan Associates v. Jaslow Dental Labs, hadopined that computer programs should enjoy abroad scope of copyright protection, including forprogram structure, sequence, and organization

(“SSO”) and for the look and feel of their user inter-faces and seemingly for program behavior.

Things looked even worse for Microsoft in 1990after Paperback lost at the trial court level and ran out

BY PAMELA SAMUELSON

2008 marks not only this maga-zine’s 50th anniversary, but alsomy 20th year as a contributor toCACM. I was initially drawninto the ACM community todecrypt the legal theories under-lying the then highly controver-sial software copyright “look andfeel” lawsuits, which were cre-ative, if ultimately unsuccessful,attempts to hack intellectualproperty law to limit competi-tive imitations. Apple Computerbrought one such suit againstMicrosoft Corp., and LotusDevelopment Corp. anotheragainst Paperback Software.

Considering how intellectual property law has evolved in response to advances incomputing technologies.

of money before it could pursue an appeal. ThePaperback decision’s endorsement of Whelan was notonly another arrow in Apple’s quiver, but it bolsteredLotus’ confidence that it could win subsequent law-suits, first, against Borland International and thenperhaps against Microsoft. The Borland andMicrosoft spreadsheet programs allowed users to exe-cute macros built in Lotus 1-2-3, which necessarilyinvolved reproducing the Lotus command hierarchyso successfully challenged in Paperback.

1992 was a turning point in software copyrightlaw. First, Computer Associates v. Altai discreditedWhelan and rejected its analysis, holding that even ifinterface specifications were program “SSO,” copy-right did not protect them because of their impor-tance to achieving interoperability. Second, SegaEnterprises v. Accolade held that making copies of pro-gram code for a legitimate purpose such as gettingaccess to interface information in order to make acompatible program was a fair and non-infringing useof the copyrighted code. Third, a judge rejectedApple’s Whelan-inspired theory that the look and feelof Microsoft’s graphical user interface was too similarto that of Apple’s Macintosh interface.

Although Lotus initially won an important roundin its look and feel lawsuit against Borland in 1992,three years later an appellate court rejected Lotus’slook and feel and “SSO” claims against Borland.Although Lotus appealed further to the U.S. SupremeCourt, it could not persuade the Court to reinstate itsvictory, and finally Whelan lost its potency.

In retrospect, one can discern that over thecourse of a decade, judges managed to hack newlegal doctrines out of the policy ether so that copy-right law could be applied to computer programs ina competitively balanced way. Contrary to the direpredictions of some who favored a Whelan-likeapproach, the software industry has flourished

without broad copyright protection.Once Altai displaced Whelan, it became clear that

copyright protected program code and expressiveaspects of screen displays, but not much else. This wasbecause Altai directed that functional design elementsof programs had to be “filtered out” before assessingwhether infringement had occurred.

The increasing “thinness” of program copyrightsmay have catalyzed a concomitant boom in patentapplications for software innovations starting in themid-1990s. Unfortunately, many software patents areof questionable validity owing in part to inadequaciesin the patent office’s prior art databases and the lowstandards (until very recently) for judging the nonob-viousness of claimed inventions.

Hence, courts have once again been called upon tohack intellectual property law to make it appropri-ately responsive to the needs of the software industry,this time on the patent side. In the past few years, theU.S. Supreme Court has performed some impressivehacks. It rejected the Federal Circuit’s inflexibly harshstandards for issuing injunctions in eBay v. MercEx-change. Four members of the Court recognized thatthe Federal Circuit’s approach had given patent trollstoo much leverage over makers of complex systemstechnologies, such as software, only one small part ofwhich might infringe a patent.

The Court also rejected the Federal Circuit’s erro-neously low standard for judging the nonobviousnessof claimed inventions in the KSR v. Teleflex case. Inaddition, it agreed with Microsoft that shipping amaster disk from the U.S. to an overseas destinationshould not give rise to damage awards in U.S. courtsfor acts performed abroad that would infringe if donein the U.S.

But the Court alone cannot achieve all of theneeded patent reforms. Congress should pass legisla-tion to create a new post-grant review procedure to

66 January 2008/Vol. 51, No. 1 COMMUNICATIONS OF THE ACM

Contrary to the dire predictions of some who favored a Whelan-like approach, the software industry has flourished without broad copyright protection.

provide a lower-cost way to challenge the validity ofquestionable patents.

Whelan has not been the only “bad” IP hack in thepast two decades. Another one was MAI v. Peak,which opined that temporary copies made in RAMwhen a computer is booted are reproductions of copy-righted software that can give rise to infringementclaims if the machine was turned on by an unlicensedperson.

But good hacks have been more common. ReligiousTechnology Center v. Netcom, for instance, rejected anMAI v. Peak-like theory of liability against an Internetaccess provider. The judge decided that an Internetaccess provider should not be held liable for infringingcopies of user postings on Usenet because copyrightliability should be imposed only for volitional acts,not for automatic copies made by servers.

Another good hack was the Supreme Court’s deci-sion in MGM v. Grokster, which retained the Sony safeharbor for technologies having substantial non-infringing uses and held that peer-to-peer file-sharingfirms should only be liable for infringement if theyhave induced users to infringe.

There is no way to foretell hacking of intellectualproperty law will be necessary to further adapt it inresponse to advances in computing technologies.More innovation is surely on the way—along withmore lawsuits. Thus, a third decade of “Legally Speak-ing” columns may still be needed to translate whatthese lawsuits will mean for CACM readers.

Pamela Samuelson (pam@ischool.berkeley.edu) is the RichardM. Sherman Distinguished Professor of Law and Information at theUniversity of California, Berkeley.

© 2008 ACM 0001-0782/08/0100 $5.00

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COMMUNICATIONS OF THE ACM January 2008/Vol. 51, No. 1 67

Much have I travell’d in the realms of code, And many goodly programs have I seen. I’ve voyaged far to conferences umpteen, Attending to the wisdom there bestowed.

Yet as I’ve moved along the winding road Of my career (a journey not serene), Only one source of knowledge has there been Of worth enough to prompt of me an ode.

Communications has for 50 years, Been there to help each of us on our way, By giving us the writings of our peers, And telling us the things they had to say.So as the start of its sixth decade nears Please join me wishing it “Happy Birthday.”

Stephen B. Jenkins (Stephen.Jenkins@nrc-cnrc.gc.ca) is thesenior programmer/analyst at the Aerodynamics Laboratory of theInstitute for Aerospace Research, National Research CouncilCanada.

ODE TO CODE

BY STEPHEN B. JENKINS