LAW AND COMPUTERS IN THE MID-SIXTIES

By Bella L. Linden

Presented at a course of study held March 25-27, 1965, cosponsored by the Joint Committee on Continuing Legal Education of the American Law Institute and the American Bar Association and the Association of the Bar of the City of New York

In essence, the questions assigned to me for discussion today are:

(a) Whether the present law of copyright contains provisions for the orderly utilization of and trafficking in literary property by the newly developed means of dissemination, and

(b) Whether the proposed revision of the copyright law eliminates the problems, if any, inherent in the present law.

In order to establish a common frame of reference, it might be helpful if I were first to outline briefly the key concepts inherent in our copyright law pertinent to the uses of copyrighted material by information storage and retrieval systems.

It should be noted that not everything that is fed into a computer is the subject matter of copyright. Raw data, such as mathematical equations, chemical terms, statistics, etc., are not in and of themselves copyrightable. It is the organization and original expression of the data, in other words the expression of the ideas which constitutes copyright subject matter, which, for our purposes, may be broadly described as "information."

The information which is to be fed into a computer system may have been published prior to such utilization or may consist of an unpublished manuscript. In the case of the unpublished work, the copyright protection afforded is not statutory, but is restricted to remedies afforded by the common law. A previously published work qualities for copyright protection under title 17, United States Code the Copyright Act.

When a work has achieved statutory copyright, section 1 of the Copyright Act accords to the copyright proprietor the exclusive rights, among others, to print, reprint, publish, copy, and vend the copyrighted work (under sec. 1(a)); to translate the copyrighted work into other languages or dialects or to make any other version thereof (sec. 1(b)); to make or procure the making of any transcription or record thereof by or from it, in whole or in part, which may in any manner or by any method by exhibited, delivered, presented, produced, or reproduced (sec. 1(c)).

Except for the rights granted by section 1(c) of title 17, the other exclusive rights I have mentioned under section 1 will be violated if a "copy" has been produced without the authority of the copyright proprietor.

Do any of the techniques or mechanisms of (1) input, (2) storage, and (3) output violate any such rights where the copyright proprietor has not consented to such uses by the computer system?

Input and storage, even at the present state of the art, are achieved via a variety of means, such as key-word indexing, conceptual abstracting, special electric typewriting, punchcards, microfilm, magnetic tape, and devices capable of capturing electronic impulses.

Aside from such issues as to whether uses such as conceptual abstracting and indexing other than conventional indexing violates the copyright proprietor's rights or is subject to the doctrine of fair use (which will be discussed later) the basic rights suspectible of infringement by computer usage appear to be the "copying" and "performance" rights.

Output or retrieval of the copyrighted work may be in the form of abstracts, excerpts, or the works as a whole. It may be delivered to the user in tangible form such as a photoduplication or in ephemeral form such as the temporary projection of an image on the screen. Thus, the information may be captured and disseminated by computers in tangible or intangible, ephemeral or visually perceivable form.

As noted, the copyright proprietor has exclusive "copy" rights. Are any of the techniques of input and storage "copying" so as to constitute a violation of the copyright proprietor's rights if done without his consent?

The term "copy" is a word of art that has been construed by Court decisions (in some respects conflicting ones).

The limitations on what constitutes a "copy" within the meaning of the law are twofold:

(a) That it be visually perceivable, and

(b) That it be in tangible form.

The landmark decision was announced by the U.S. Supreme Court in the year 1908 in the case of White-Smith v. Apollo (209 U.S. 1). There, the Court held that a perforated roll of paper, a piano roll, was not a "copy" of a printed musical composition for the reason that a piano roll is only capable of being read by a person with a peculiar skill and with much effort and is therefore not in a system of "intelligible notation." Following the Apollo decision, the courts, with few exceptions, have held that a copy must be in visually perceivable form.

The Federal jurisdictions, with but two exceptions, have followed the Apollo case not only with respect to printed material but have also determined that a phonograph record is not a copy of a copyrighted work for the reason that the literary work which it embodies is not visually perceivable; that is, it cannot be "read" (Corcoran v. Montgomery Ward & Co., Inc., 121 F. 2d 572 (9th Circ. 1941; Capitol Records, Inc. v. Mercury Records Corp., 221 F. 2d 657 (2d Circ. 1955)).

Thus, under the present Copyright Act only such input or retrieval activities as result in visually perceivable material constitute the making of a "copy." Some courts have based their findings as to what constitutes a "copy" for purpose of infringement not on the ground of visual perceptibility but on the determination that in order to be a "copy" the work must be in tangible form. Ephemeral reproductions have been held not to be infringing copies. For example, the cases of MGM Distributing Corp. v. Wyatt (21 Copyright Office Bulletin 203 (Dist. Ct. Md., 1932)) and Tiffany Productions Inc. v. Dewing (50 Fed. 2d 911 (Dist. Ct. Md., 1932)) held that a projection of a motion picture film on the screen does not constitute an infringing copy. The Court of Appeals for the Second Circuit, in a contrary decision, held that such ephemeral reproduction of a motion picture film does constitute an infringing copy (Patterson v. Century Productions, Inc., 93 Fed. 2d 489 (1937)).

It would seem that the courts following the Second Circuit decision of Patterson v. Century Productions, Inc. (93 Fed. 2d 489 (1937)) are likely to hold that the projection of the work on a screen would constitute the making of an infringing copy and those following the case of MGM Distributing Corp. v. Wyatt (21 Copyright Office Bulletin 203 (Dist. Ct. Md., 1932)) are more likely to conclude that where an ephemeral image of the work is projected no infringing "copy" has been produced.

The question remains as to whether the provisions of section 1(c) of the Copyright Act which grants the copyright proprietor the exclusive right to make a transcription or record of the copyrighted work from which, in whole or in part, it may in any manner or by any method be exhibited, delivered, presented, produced, or reproduced, would protect the copyrighted material from unauthorized use in input, storage, or output.

A literal reading of the language of section 1(c) would suggest that the making of punchcards, magnetic tapes, and the like and the projection of ephemeral images would constitute transcriptions of records of the copyrighted work. However, there exists a question as to whether section 1(c) was intended to apply to any situation other than to a case where a copyrighted work has been publicly "performed." In this connection the House committee report recommending the amendment of section 1(c) in 1952 suggests that this section is applicable only in those cases where the work has been publicly performed for profit. The Committee on Copyright of the Association of the Bar of the City of New York has also interpreted section 1(c) as applying only to public performance rights. Can it be argued successfully that certain of the mechanisms and techniques of input and retrieval are, in fact, "performances" of the work within the meaning of section 1(c)?

If the computer system's uses of information protected under title 17 are construed neither as the making of copies nor as performances of the work in whole or in part, then such uses, no matter how injurious to the pecuniary interests of the copyright proprietor (absent fair use) are uses which appear to be unprotected by the Copyright Act. On the other hand, a contrary construction, which can find equal support, would accord protection to the copyright proprietor even in some cases where the computer processes have not produced a "copy" of the work.

The second draft of the general revision of the Copyright Act (H.R. 4347) would appear to give the copyright proprietor greater protection against the unauthorized use of his material by a computer system.

Section 106(a)(1) grants the copyright proprietor the exclusive right to reproduce the copyrighted work in "copies." The word "copies" is defined in section 101 as:

**** material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term 'copies' includes the material object, other than a phonorecord, in which the work is first fixed."

Since the definition of "copies" is not restricted to tangible, visual expressions of the work, it would seem that the processes used in input, storage, and retrieval do not have the escape hatch that may exist for some of such uses under the present law in determining whether an infringement has occurred. It should also be noted that section 101 provides that a machine or device "is one now known or later developed." It can be seen that the Copyright Office is well aware that the new technology requires an adjustment of concepts in order to preserve copyright protection.

Even the subject matter of copyright appears to be broadened under the language of the proposed revision. The term "literary works" is defined as:

“* * * works expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, or film, in which they are embodied." Thus, material which under present law would not qualify for copyright-that is, "data" as contrasted with "information"-may in some instances under the proposed revision qualify for protection. Basically, the Register of Copyrights has taken the position that he does not wish to be bound by the existing status of technology in delineating the exclusive rights granted to the copyright proprietor. Although not part of the present statute, the judicially developed doctrine of fair use has to some extent limited the exclusive rights of the copyright proprietor. In essence this means that even though it was intended that the copyright proprietor be accorded the exclusive rights set forth in the act, it became apparent very early that the exclusive rights section could not be construed with complete rigidity but that some elasticity in concepts was necessary. For example, for purposes of criticism, it was certainly necessary to permit the quoting from a work even where it is the subject matter of a copyright. The copy of an insubstantial excerpt is held to be fair use by many. An excellent expression of the criteria of fair use was announced by Judge Story as early as 1841 in the case of Folsom v. Marsh (9 Fed. Cas. 342 (CCD Mass.)). "One must look to the nature and objects of the selections made, the quantity and value of the material used, and the degree in which the use may prejudice the sale or diminish the profits or supersede the objects of the original work."

The standards set forth by Judge Story retain their validity today. The proposed revision of the Copyright Act gives statutory recognition to the doctrine of fair use in section 107 which states simply:

"Section 107. Limitation on exclusive rights: Fair use

"Notwithstanding the provisions of section 106, the fair use of a copyrighted work is not an infringement of copyright.”

The question that now arises is whether the doctrine of fair use will be interpreted so as to encompass any or all of the techniques of input, any or all of the techniques of storage, and any or all of the techniques of retrieval. Would the answer be modified if in the case of retrieval, the retrieved portion is an excerpt only?

There are those who argue that libraries or similar nonprofit institutions may even deliver a hard copy reproduction of a copyrighted work to a scholar who has stated in writing that he desires such reproduction in lieu of a loan of such publication for the purpose of research. There are others who maintain that if the hard copy or the ephemeral retrieval is an excerpt of a copyrighted work (let us say a page or several pages of a much longer work), then the doctrine of fair use shields the user from any complaint of the copyright proprietor. Still others insist, in those instances where, and to the extent that, computer systems supplant the copyrighted book in disseminating its contents, the exclusive rights of the copyright proprietor have been injured and the doctrine

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of fair use is not available as a defense. Obviously, most copyrighted information (not novels or poetry) but reference works, textbooks, and the like, is not read from beginning to end in one session or in sequence but is intended to be available to the user piecemeal. Therefore, the uses of portions of the material by a computer system add up, as a practical matter, to the use of the whole of the copyrighted work.

Even if we are to assume that the techniques of information storage and retrieval processes all constitute infringements if they are unauthorized uses, still the copyright owner is confronted with very practical deterrents when he seeks to enforce his rights. The copyright proprietor of a published work, copies of which are readily available, would find it exceedingly difficult indeed to determine when a computer system has infringed his work and the extent of such infringement. Would it be practical for a copyright owner to press an action where the information storage and retrieval system has either copied or disseminated only small portions of the work? Is the copyright proprietor likely to seek legal redress if he knows only of the reproduction of a single copy of this work; yet is not the sale of all published works to ultimate customers merely a multiplication of the sale of single copies?

The first question which we attempted to answer today is what uses, if any, of published copyrighted works by computer systems constitute a violation of the author's exclusive rights in his work. The answer appears to be that the new technology has developed new uses and that the existing Copyright Act and case law does not appear to be fully applicable. If any of the uses made of a copyrighted work by a computer system do not come under the aegis of a Copyright Act, the question arises: does our law of unfair competition take care of the gap? In its early development the law of unfair competition struck down the practice of "passing off" one's work or product as being the work or product of another. Later, some jurisdictions extended the concept of unfair competition to those instances where there was misappropriation of the work or product by another.

An example of the liberal direction the law of unfair competition had taken is found in the case of Addison-Wesley Publishing Co. v. Brown, 133 U.S. Patent Quarterly 647 (Eastern Dist. N.Y. 1962) where the plaintiff had published a physics textbook containing questions to the students at the end of each chapter. The authors of the textbook had intentionally omitted answers to the questions for the reason that teachers employing the textbook found that its use as an educational tool would be more effective if the student did not have access to the answers. The defendants published a book of answers to plaintiff's questions. Before the court considered whether copyright infringement existed, which itself presented a very troublesome problem since defendants' answer book did not verbally repeat the text of plaintiff's book, the court found that the sale by defendants of their book of solutions constituted unfair competition. The basis of the court's finding was the fact that the availability of the book of solutions would cause the schools to cease buying plaintiff's text. It can be seen that there exists a strong analogy between the reasoning of the AddisonWesley court and the misappropriation by information storage and retrieval systems of the work product of an author. The market for an author's work would be diminished if free access to such work or portions thereof were to be made available by computer systems.

However, recent decisions of the U.S. Supreme Court have raised serious doubts with respect to the extent the law of unfair competition now protects a work subject to the provisions of the Copyright Act. The cases of Sears, Roebuck & Co. v. Stiffel, 376 U.S. 225 and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 held that where an object is not protected by a patent the State law of unfair competition will not, in the absence of "passing off," protect against its unauthorized use or duplication by another. While the Supreme Court cases dealt with patents, there are those who contend that they will be deemed applicable to the copyright field. It may well be that even where a work is protected by statutory copyright, the copyright proprietor cannot assert any rights with respect to the unauthorized use of his work beyond those rights expressly set forth in section 1 of the Copyright Act. Thus, for example, where a court would hold that the ephemeral reproduction by a computer system of a work on a screen does not constitute an infringing copy, it may well refuse to grant the work protection against a claim that the use of the work by the computer was a misappropriation of it or unfairly competed with it. On the other hand, the courts may hold that where an author is protected by statutory

copyright, the Stiffel and Compco cases would not preclude a claim of unfair competition in addition to the exclusive rights granted by section 1 of the Copyright Act. It may be that unfair competition is unavailable only where an author's work has not acquired statutory copyright or where such copyright has been lost.

The cases that have cited Compco and Stiffel do not appear to indicate to what extent, if any, the law of unfair competition presently adds to the rights given to the owner of material by statutory or common law copyright. The Ninth Circuit in the case of Cable Vision, Inc. v. KUTV, Inc., 335 Fed. 2d 348 (1964) held that the Stiffel and Compco cases preclude a cause of action for unfair competition where a television station complained that a community antenna system was distributing TV programs identical to those in which the television station claimed exclusive contractual rights. The Court noted that the televised material was capable of copyright protection and in the absence of a copyright claim, the Supreme Court had precluded a cause of action for unfair competition.

In Capitol Records v. Greatest Records, 43 Misc. 2d 878 (Special Term, N.Y. County 1964) it was held that record piracy is the subject of injunctive relief despite the U.S. Supreme Court decisions. The Court held that the proprietor of an unpublished work is entitled to common law unfair competition protection and that the State law of unfair competition as applied to common law copyright cases remains unaffected by Compco and Stiffel. The Supreme Court of Massachusetts has announced a similar doctrine in Edgar H. Wood Associates, Inc. v. Skene, 197 N.E. 2d 886 (Mass. 1964).

My discussion thus far has been concerned with published information that is protected under the existing Copyright Act and a comparison of those rights with the relevant sections of the proposed revision. What, if any, are the problems which arise when an unpublished manuscript is used by a computer system?

Under present law an unpublished work enjoys its protection under the common law from the date of its creation until publication (thereupon it becomes subject to the Copyright Act). Therefore, a manuscript, under existing law, theoretically enjoys perpetual copyright protection. With respect to unpublished works, questions as to exclusive rights, what constitutes a copy or a performance discussed earlier in connection with published works, remain basically the same. The answers, or lack of them, propounded by the speaker, also remain the same.

However, the present Copyright Act presents a special problem for unpublished information utilized by an information storage and retrieval system with respect to the concept of “publication” (which would result in the loss of its "perpetual" common law protection).

Before we discuss the meaning of the term "published" it should be noted that the present act as well as the proposed revision of the copyright law both require that in order to be protected by statute, the "published" work must have appropriate copyright notice (c in a circle, or the word copyright, or copr., name of the claimant and the year first published). If the work is published without the required notice, as required by section 10 of the present act and under section 401 of the proposed revision, the work will fall into the public domain. It has been held that to obtain statutory copyright under section 10 of the present act, publication must be general. This means that copies of the work must be made available or distributed to the public at large. A distribution to a limited number of people for a limited purpose will not suffice.

Accordingly, where a work has been fed into a computer in unpublished form the question of whether the retrieval of such information will result in "publication" for the purposes of vesting the work with statutory copyright will depend upon the number of individuals to whom the information is to be made available and the purposes for which it is to be used. If the work, or portion thereof, is retrieved by only a few researchers at different times, the court may hold that there has never been a general publication. On the other hand, there may be instances where computer systems will make a work available to a large number of people at a single time, as would be the case where educational institutions would employ the computer system in a classroom. Retrieval in this situation might be held to constitute general publication.

Assuming that the retrieval processes result in the work on portions thereof being made available to more than a limited number of people, the question