Preliminary Draft 2/14/96
`
`TECHNOLOGICAL PROTECTION FOR COPYRIGHTED WORKS
`
`by
`Pamela Samuelson*
`
`"Something there is that doesn't love a wall."1
`
`I.
`
`INTRODUCTION
`
`Digital technology poses a serious challenge for copyright owners because
`works in digital form are vulnerable to uncontrolled replication and dissemination in
`networked environments.2 Digital technology is, however, not just part of the
`problem; it may also be part of the solution.3 Developments in digital technology
`open up new opportunities for publishers to control reproductions and disseminations
`of copies of copyrighted works, to detect the existence of unauthorized reproductions,
`adaptations, or disseminations, to trace the whereabouts of unauthorized reproductions
`or disseminations, and to monitor usages of works in ways that were impossible or
`
`
`* Professor of Law, University of Pittsburgh Law School. This paper has been prepared for the
`Thrower Symposium at Emory Law School, February 22, 1996, and is slated for publication in 45
`EMORY L.J. (forthcoming 1996). Thanks go to my research assistant Benjamin Black for outstanding
`work in connection with preparation of the article. Thanks are also offered to Robert J. Glushko for his
`insightful comments on an earlier draft of this article.
`1 Robert Frost, The Mending Wall, in THE NEW OXFORD BOOK OF AMERICAN VERSE 395-96
`(R. Elman, ed. 1976).
`2 This vulnerability is said to be a factor inhibiting the growth of markets for digital information
`products on the "information superhighway." Some publishers are unwilling to make content available
`on this highway unless they have assurance that protection of some kind is available to avert market-
`destructive appropriations of this content, as might occur if the first purchaser of the content posted it
`on publicly accessible bulletin board systems, enabling members of the public to get access to the
`content without payment of a fee to its publisher. See, e.g., NATIONAL INFORMATION
`INFRASTRUCTURE TASK FORCE, REPORT OF THE WORKING GROUP ON INTELLECTUAL
`PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE (Sept. 1995) (cited
`hereinafter as "White Paper"); John Perry Barlow, The New Economy of Ideas, WIRED 2.04 (March
`1994).
`3 As one publisher has aptly put it, "the answer to the machine is the machine." Charles Clark, "The
`Answer to the Machine Is the Machine," PROCEEDINGS OF KNOWRIGHT '95 (1995). See also
`CHRISTOPHER BURNS, COPYRIGHT MANAGEMENT AND THE NII: REPORT TO THE
`ENABLING TECHNOLOGIES COMMITTEE OF THE ASSOCIATION OF AMERICAN
`PUBLISHERS, May 31, 1995, and Mark Stefik, Letting Loose the Light: Igniting Commerce in
`Electronic Publication (March 7, 1995).
`
`1
`
`

`

`infeasible in relation to printed copies.4 Technology holds much promise as a way to
`relieve copyright law of the burden of attempting to regulate a wide range of activities
`by users of digital information products, most of which, by virtue of the highly
`decentralized nature of existing digital networks, would be difficult for the law to
`regulate effectively. Very considerable investments are currently being made to
`develop or refine technological means for protecting copyrighted material in digital
`form.5
`
`As bright as are the prospects for technological protection for copyrighted
`works, there are some worrisome aspects of technological protection as well. The
`principal concern of publishers is that what one technology can do, another technology
`may well be able to undo through clever circumvention or bypass techniques.
`Although court decisions allow copyright owners to control sale of technologies that
`have no substantial use other than to enable copyright infringement,6 some publishers
`regard this rule to be inadequate to protect their works against technological piracy.7
`They support legislation that would make it illegal to sell or distribute products or offer
`or provide services, "the primary purpose or effect of which is to avoid, bypass,
`remove, deactivate or otherwise circumvent, without the authority of the copyright
`owner or the law, any process, treatment, mechanism, or system which prevents or
`inhibits the violation of any of the exclusive rights of the copyright owner under
`section 106."8 A provision of this sort is under active consideration in the U.S.
`Congress.9 The United States is urging inclusion of a very similar provision in an
`international treaty to supplement the Berne Convention.10
`
`As legitimate as are publisher concerns about circumvention technology, this
`article will argue that the anti-circumvention proposal currently under consideration is
`overbroad and is in need of substantial refinement. It will also explore the
`implications of the use of copyright law as a means to regulate technologies, and in
`particular, as a means of controlling public access to information that may be
`embedded in information products. The anti-circumvention provision recommended
`
`
`4 See, e.g., PROCEEDINGS ON TECHNOLOGICAL STRATEGIES FOR PROTECTING
`INTELLECTUAL PROPERTY IN THE NETWORKED MULTIMEDIA ENVIRONMENT, 1 J.
`INTERACTIVE MULTIMEDIA ASS'N 1 (Jan. 1994) (cited hereinafter as "IMA Proceedings").
`5 Id.
`6 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). See infra notes -- and
`accompanying text.
`7 See, e.g., NATIONAL INFORMATION INFRASTRUCTURE TASK FORCE, WORKING GROUP
`ON INTELLECTUAL PROPERTY RIGHTS, GREEN PAPER ON INTELLECTUAL PROPERTY
`AND THE NATIONAL INFORMATION INFRASTRUCTURE (Prelim. Draft July 1994) (cited
`hereinafter as "Green Paper") at 126.
`8 NII Copyright Act §4, White Paper, supra note 2, Appendix 1 at 6.
`9 See H.R. 2441, 104th Cong., 1st Sess. (1995); S. 1284, 104th Cong., 1st Sess. (1995).
`10 PROPOSALS SUBMITTED BY THE UNITED STATES OF AMERICA TO COMMITTEE OF
`EXPERTS ON A POSSIBLE PROTOCOL TO THE BERNE CONVENTION, SIXTH SESSION,
`GENEVA, Feb. 1-9, 1996 (cited hereinafter as "U.S. Submission").
`
`2
`
`

`

`in the Clinton Administration's White Paper on Intellectual Property and the National
`Information Infrastructure (NII) 11 has potential to open up a brave new world for
`copyright law, one that would recast it as a law to protect trade secrets or other private
`information, to undermine public access to public domain information, to promote
`public or private censorship of exchanges of information, and possibly to impede law
`enforcement activities. Before leaping into this brave new world for copyright, we
`should consider whether there are sometimes reasons not to love the walls that some
`will build with technological protection. Some sober reflection is needed about
`whether the laudable purposes sought to be accomplished by the anti-circumvention
`provision might be better served by a more narrowly drawn provision. Also needed
`are some imaginative ideas about how the historical balance among author, publisher,
`and user interests in copyright law might be maintained in digital networked
`environments.
`
`AN HISTORICAL PERSPECTIVE ON COPYRIGHT AS A FORM OF
`II.
`REGULATION OF TECHNOLOGY
`
`Prior to the invention of the printing press, there was no copyright law. This
`did not necessarily mean that texts were freely appropriable.12 Among the factors
`inhibiting the free appropriation of texts in that era was a substantial lack of literacy
`skills and of technologies needed to engage in copying (e.g., vellum and writing
`implements), but also the need for access and permission to make copies that could
`only be granted by the owners of physical embodiments of the texts. During the
`Middle Ages, the Catholic Church often limited such access and permission to those
`deemed by the Church to be safe as guardians of this content.13 Permission to access
`and copy texts was likely to be conditioned on an agreement to abide by certain rules
`in relation to the texts or copies of them.14
`
`The first copyright rules in England were, to a considerable degree, a form of
`regulation of printing and of printers. English monarchs relegated to the Stationers'
`Company, an association of printers, bookbinders, booksellers, and the like, the right
`to control the printing and distribution of books, in exchange for which members of
`
`
`11 White Paper, supra note --.
`12 See, e.g., ROBERT A. GORMAN AND JANE C. GINSBURG, COPYRIGHT IN THE NINETIES 1
`(1993), reporting that an Irish King had resolved a dispute over a manuscript with the maxim "To
`every cow, her calf."
`13 This conception of the library is nicely illustrated in UMBERTO ECO, THE NAME OF THE ROSE
`(1989). See generally MARK ROSE, AUTHORS AND OWNERS: THE INVENTION OF
`COPYRIGHT (1993).
`14 Id. This history is worth noting because in some measure, digital technology is taking us back to
`the Middle Ages, in that many online information providers are conditioning rights to access and use
`their content on agreement to abide by specific terms, such as an agreement not to reuse the content for
`particular purposes. Lawyers and law students are, for example, with Westlaw's aggressive assertion of
`rights to control reuse of electronic versions of judicial opinions and statutes that are downloaded from
`its system.
`
`3
`
`

`

`the Stationers' Company agreed not to publish seditious or heretical materials.15 The
`printing of unauthorized materials, or of authorized materials by unauthorized printers,
`was punishable by decrees of the Star Chamber and/or by Stationers' Company
`enforcement proceedings.16 Rules of the Stationers' Company enabled members to
`obtain exclusive rights to publish particular books by being the first to inscribe their
`claims of "copyright" in the Company's register. Stationers claimed copyright in these
`works by virtue of investments made in acquiring manuscripts and printing their texts
`in books. The printer's "copyright" was claimed in perpetuity, unhampered by any
`requirement of "originality" in the text or of relatively recent authorship of the work.17
`
`Members of the Stationers' Company would have preferred continuation of
`their copyright system forever. However, over time, a combination of circumstances--
`complaints by authors that printers were unfairly appropriating their works, by
`unlicensed printers about the unfairness of their exclusion from competition with
`licensed stationers, and by the public about exorbitant prices for books and the
`silencing of dissenting views by reason of censorship the stationers' copyright regime
`brought about--led to the demise of this system.
`
`The first modern copyright law, namely, the Statute of Anne in 1710, brought
`about several changes: (1) copyright was now initally vested in authors, rather than
`publishers; (2) the rationale given for the grant of rights to authors was to encourage
`learned men to compose useful books and make them available in order to promote
`learning more generally; (3) as a consequence, copyrights were now available
`primarily to newly authored works; (4) as a further consequence, copyright was no
`longer perpetual in duration, but lasted for only fourteen years from the date of first
`publication of a work;18 and (5) in the event that complaints arose as regards the prices
`charged for books, a procedure was established by which to address such
`complaints.19
`
`The Statute of Anne regulated printing technology by granting authors
`exclusive rights to print, reprint and vend books embodying their works. However, its
`significance goes beyond this. By rejecting the stationers' copyright system, which in
`conjunction with the Licensing Act provisions, had restricted entry into the printing
`and bookbinding businesses, the English Parliament adopted utilitarian incentive and
`anti-monopoly principles in copyright law. It also endorsed promotion of learning as a
`
`15 See, e.g., L. RAY PATTERSON, COPYRIGHT IN HISTORICAL PERSPECTIVE (1968).
`16 Id.
`17 Id. Directories of information and works of ancient authors could be copyrighted under the
`Stationers' copyright system. This history too is worth relating because of the potential new
`technologies may present for getting what may amount to perpetual exclusive rights in information or
`other matter considered uncopyrightable under existing intellectual property laws.
`18 An author could renew his copyright if he was living at the time his first copyright term was about
`to expire.
`19 See, e.g., Gorman & Ginsburg, supra note --, at 2-4 (describing contents of the act) ; Rose, supra
`note --, at 42-48 (discussing its legislative history).
`
`4
`
`

`

`central purpose of copyright, embracing Enlightenment principles that, over time,
`came to be reflected in the first amendment to the U.S. Constitution. U.S. antitrust and
`anti-censorship traditions, in part, trace their origins to this history.20
`
`While copyright laws in England and the U.S., as well as kindred laws in other
`jurisdictions, continue to regulate the printing and reprinting of books, they have
`expanded considerably the rights of authors (and their assigns) to control uses of
`technologies that can be used to reproduce or perform copyrighted works.21 Until
`relatively recently, however, the costs of reprography and performance technologies
`were sufficiently high, and their uses were sufficiently public, that there was relatively
`little danger that infringement on a commercially significant scale would arise from
`individual user activities.
`
`The late twentieth century has witnessed the advent of a number of relatively
`low-cost reprography technologies--photocopying machines, tape recorders, and
`computers, among them--that can be used by ordinary people to make inexpensive
`copies of copyrighted works that are far less public in character.22 These technologies
`have shifted the effective balance of power as among authors, publishers and users in
`favor of users. As a consequence of the widespread availability of these reprography
`technologies and few restrictions on their use, ordinary users have come to believe that
`most, if not all, private, noncommercial copying of copyrighted works is not only
`beyond the power of copyright owners to control, but beyond their legal rights as
`well.23
`
`While some authors and publishers might concede that private noncommercial
`copying is largely beyond their power to control, they are less willing to concede the
`point about their legal authority.24 Notwithstanding some notable losses in lawsuits
`challenging some private uses of reprography technologies in the 1970's and 1980's,25
`publisher challenges to research and educational use copying have met with greater
`
`20 See, e.g., L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 VAND. L. REV. 1 (1987)
`(discussing free speech implications) and L. Ray Patterson and Craig Joyce, Monopolizing the Law:
`The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. REV.
`719 (1989) (discussing anti-monopoly implications).
`21 The Copyright Act of 1976 identifies protectable works of authorship to include pictorial, sculptural
`and graphic works, motion pictures and other audiovisual works, choreographic works and
`pantomimes, among others. 17 U.S.C. §102(a).
`22 Congressional concern about these reprographies led it to create a Commission to study the
`copyright implications of these technologies. See NATIONAL COMMISSION ON NEW
`TECHNOLOGICAL USES OF COPYRIGHTED WORKS, FINAL REPORT (1978).
`23 See, e.g., OFFICE OF TECHNOLOGY ASSESSMENT, INTELLECTUAL PROPERTY RIGHTS
`IN AN AGE OF ELECTRONICS AND INFORMATION (1986).
`24 See, e.g., PAUL GOLDSTEIN, COPYRIGHT'S HIGHWAY (1995) (giving examples).
`25 See, e.g., Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973), aff'd by an
`equally divided Court, 420 U.S. 376 (1975) (library photocopying of medical research articles held fair
`use); Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) (videotaping for
`time-shifting purposes held fair use).
`
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`

`success in the 1990's.26 However, the hearts and minds of the populace have not been
`won over to the strong protectionist position favored by some publishers.
`
`Much effort is currently being devoted to developing ways to use technology to
`shift the balance of power back in the direction of greater publisher control. Several
`steps are contemplated to accomplish this balance shifting: first, many publishers plan
`to use technological means, such as encryption or digital envelopes, to protect content
`against unauthorized copying;27 second, many support enactment of the broad anti-
`circumvention provision mentioned above;28 and third, some publishers are planning
`to propose that manufacturers of reprography technologies be required to embed
`secure processors to prevent unauthorized access to or copying of copyrighted works
`in their technologies.29 This proposal is already under serious consideration in the
`European Union,30 and is favored by major copyright industries.31
`
`The policy climate in which these initiatives are taking place is somewhat less
`hospitable to their general tenor than many publishers would care to admit. Courts
`have been far less sympathetic to expansionist interpretations of copyright law as a
`means of regulating technology; they have generally been reluctant to allow copyright
`law to be used to regulate technologies beyond that which has been explicitly
`
`
`26 See, e.g, Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y.
`1991)(photocopying of coursepacks consisting largely of excerpts of copyrighted works held unfair);
`American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (2d Cir. 1994), amended and superceded,
`60 F.3d 913 (2d Cir. 1995) (copying of individual research articles from journals held unfair). But see
`Princeton University v. Michigan Document Services, 1996 U.S. App. LEXIS 1919 (6th Cir. 2/12/96)
`(coursepack photocopying held fair use).
`27 See, e.g., Burns, supra note --.
`28 See supra note --.
`29 Intel Corp. is reportedly working on the development of secure processors that will not operate if
`digital information about a copy does not contain an authorization code.
`30 See, e.g., COMMISSION OF THE EUROPEAN COMMUNITIES, GREEN PAPER ON
`COPYRIGHT AND RELATED RIGHTS IN THE INFORMATION SOCIETY, COM(95) 382 final
`(July 19, 1995).
`31 This last proposal is not mentioned in the Clinton Administration's White Paper. Given that
`uninhibited access to "insecure" reprography technology is widespread in the U.S., it may be
`strategically wise to win the anti-circumvention battle first, and undertake on the secure processor
`initiative later. The only hint that the White Paper gives about developments of this sort is in a
`footnote indicating support for equipment manufacturers and copyright industry negotiations about
`more secure technologies. White Paper, supra note --, at 232, n. 568.
`
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`

`authorized by Congress.32 The decisions discussed below illustrate this historical
`reluctance.33
`
`A.
`
`Sony v. Universal
`
`In Sony Corp. of America v. Universal City Studios, Inc.,34 the U.S. Supreme
`Court overturned a Ninth Circuit Court of Appeals ruling that Sony was liable for
`contributory infringement because it sold video tape recording (VTR) machines
`knowing that consumers would use these machines to make infringing copies of
`copyrighted works.35 Universal City Studios and Walt Disney brought the action
`because they feared that home recordings of their movies would undermine theatre
`exhibitions and other revenue generating events. They claimed to have standing to sue
`because works in which they held copyright were among the programs that many
`consumers were using VTRs to record off broadcast television.36 There was evidence
`in the case that the principal use to which consumers used VTRs at the time of this
`litigation was for "time-shifting" purposes,37 i.e., the use of Betamax machines to
`record programs off the air in order to watch them at a later time. Consumers typically
`taped over previous recordings each time they needed to time-shift. The Ninth Circuit
`rejected arguments that Congress had intended to exempt private home copying of
`copyrighted works38 and that time-shift copying was fair use.39
`
`Various factors converged to persuade a majority of the Supreme Court that
`Sony should not be liable for contributory infringement. There being no contributory
`infringement provision in the copyright statute,40 the Court considered whether to
`borrow the patent "staple item of commerce" rule which denies patent owners the right
`
`
`32 This is not to say that there have been no cases in which copyright liability has been found for
`distribution of technologies beyond explicit Congressional intent. See, e.g., Midway Mfg. Co. v. Artic
`Int'l, Inc., 704 F.2d 1009 (7th Cir.), cert. denied, 464 U.S. 823 (1983) (program that speeded up play of
`videogame held to infringe derivative work right); In re Certain Personal Computers, 224 U.S.P.Q.2d
`(BNA) 270 (U.S. Int'l Trade Comm'n 1984) (blocking importation of chips capable of noninfringing
`uses).
`33 These decisions are largely ignored in the White Paper. They are among the decisions that may be
`modified, if not overruled, if the anti-circumvention provision proposed in the White Paper is adopted.
`See infra notes -- and accompanying text.
`34 464 U.S. 417 (1984).
`35 Universal City Studios, Inc. v. Sony Corp. of America, 480 F. Supp. 429 (S.D. Cal. 1979), rev'd 659
`F.2d 963 (9th Cir. 1981), rev'd sub nom. Sony Corp. of America v. Universal City Studios, Inc., 464
`U.S. 417 (1984).
`36 Sony, 480 F. Supp. at 433-36.
`37 Id. at 438-39. Both parties had done surveys about uses of VTR's which showed this, though they
`differed somewhat about how high the proportion of time-shifting was.
`38 Sony, 659 F.2d at 965-69.
`39 Id. at 969-74.
`40 Sony, 464 U.S. at 434.
`
`7
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`

`to control sales of products that are suitable for noninfringing uses41 or a more
`trademark-like rule which would have imposed liability upon vendors who sold
`products knowing that they would be used for infringing purposes.42 Citing "the
`historic kinship between patent law and copyright law"43 and the public interest in
`access to technologies that have noninfringing uses,44 the U.S. Supreme Court opted
`for the patent-like rule. As long as a technology was capable of substantial
`noninfringing uses,45 the Court decided that its use could not be regulated by copyright
`owners.
`
`Among the noninfringing uses of VTRs were copying uncopyrighted programs
`off-the-air or copying programs whose copyrights were owned by firms having no
`objection to time-shift copying.46 The Court also decided that private noncommercial
`copying of copyrighted works, such as use of VTR's to record programs for time-
`shifting purposes, should be regarded as presumptively fair. This presumption of
`fairness would only be overcome if plaintiffs produced proof of some meaningful
`likelihood of harm from the use.47 "[A] use that has no demonstrable effect upon the
`potential market for, or the value of, the copyrighted work need not be prohibited in
`order to protect the author's incentive to create. The prohibition of such
`noncommercial uses would merely inhibit access to ideas without any countervailing
`benefit."48
`
`Another factor affecting the Court's view of the case was its doubts about the
`standing of Universal and Disney to maintain the lawsuit against Sony. Several times
`in the opinion the Court expressed this concern. At one point, the Court said: "[T]his
`is not a class action on behalf of all copyright owners who license their works for
`television broadcast, and respondents have no right to invoke whatever rights other
`copyright holders may have to bring infringement actions based on Betamax copying
`of their works."49 Elsewhere, the Court observed that should Universal and Disney
`
`
`41 "Whoever sells a component of a patented machine, manufacture, combination or composition, or a
`material or apparatus for use in practicing a patented process, constituting a material part of the
`invention, knowing the same to be especially made or especially adapted for use in an infringement of
`such patent, and not a staple item of commerce suitable for substantial noninfringing use, shall be
`liable as a contributory infringer." 35 U.S.C. §271(c). See, e.g., Dawson Chemical Co. v. Rohm &
`Haas Co., 448 U.S. 176 (1980) (contributory infringement to sell an unpatented chemical whose only
`substantial use was in the practice of a patented process).
`42 Sony, 464 U.S. at 439, n.19. See, e.g., Inwood Labs., Inc. v. Ives Labs., Inc. 456 U.S. 844, 854-55
`(1982) (discussing trademark contributory infringement standards).
`43 Id. at 439.
`44 Id. at 440-42.
`45 Id. at 442.
`46 Id. at 443-47
`47 Id. at 449.
`48 Id. at 450-51. The White Paper characterizes the Supreme Court's decision in Sony as resting on the
`failure of Universal and Disney to establish a licensing system for VTR recordings.
`49 Id. at 434.
`
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`

`prevail in the lawsuit, it would frustrate not only consumer interests in using VTR's but
`also the interests of copyright owners who wanted consumers to use these machines
`for time-shifting purpose as a way to enlarge audiences for their programs upon which
`advertising revenues for television viewing are based.50 The Court also characterized
`as "extraordinary" the claim that "the Copyright Act confers upon all copyright owners
`collectively, much less the two respondents in this case, the exclusive right to
`distribute VTR's simply because they may be used to infringe copyrights."51 In the
`absence of clear directions from Congress, the Court thought that the exclusive rights
`provisions of copyright law should not be construed in this manner.52
`
`B.
`
`Vault v. Quaid
`
`Vault developed a software-based copy-protection system called Prolok
`intended for sale to other software companies who would use Prolok to protect their
`software products before selling the protected versions of them to consumers. Quaid
`developed Ramkey, a software product that could be used to undo Vault's copy-
`protection system. Vault sued Quaid for direct and contributory copyright
`infringement.53
`
`The direct infringement claim chiefly focused on copying of Vault's software
`that Quaid had done in order to learn how the copy-protection system worked so that
`Quaid could develop a technique to circumvent the system. Quaid did this analysis by
`means of "black-box testing," that is, by loading the Vault program onto its computers
`and testing it under various conditions to see what it would do, from which Quaid
`inferred some details of the internal design of the program.54 Vault insisted that
`copying a program onto a computer in order to engage in such reverse analysis was
`copying beyond terms permitted by its shrink-wrap license and by copyright law. In
`Vault's view, the law and the license only authorized consumers to make copies
`necessary to use the program for its intended purpose as a copy-protection system.55
`The Court of Appeals found this argument unpersuasive.56
`
`
`50 Id. at 443.
`51 Id. at 441, n.21.
`52 Id. at 431, 457.
`53 Vault Corp. v. Quaid Software, Inc., 655 F. Supp. 750 (E.D. La. 19870, aff'd, 847 F.2d 255 (5th Cir.
`1988). There were also breach of contract claims in the case. Id. at 258. The implications of Sony and
`Vault are explored in depth in Alfred P. Ewert & Irah H. Donner, Will the New Information
`Superhighway Create "Super" Problems For Software Engineers? Contributory Infringement of
`Patented or Copyrighted Software-Related Applications, 4 Alb. L.J. Sci. & Tech. 155 (1994).
`54 Id. at 257. Quaid may also have decompiled the Vault program to get access to information needed
`to "spoof" the Prolok software. Id. at 268. Even though this would have violated an express term of
`Vault's shrinkwrap license, the Fifth Circuit decided that this aspect of the shrinkwrap license was
`preempted by operation of copyright law. Id. at 269. The argument that decompilation is copyright
`infringement is discussed infra notes -- and accompanying text.
`55 Section 117(1) of the copyright statute enables owners of copies to make a copy of the program so
`long as the copy "is created as an essential step in the utilization of the computer program in
`
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`

`The contributory infringement claim arose from Quaid's development of
`software specially designed for use by consumers to enable them to bypass Vault's
`copy-protection system and to make illicit copies of programs protected by Vault's
`software.57 The appellate court took its cue from the Supreme Court's Sony decision
`and focused its inquiry on whether Quaid's software was capable of substantial
`noninfringing uses. Quaid persuaded the Court of Appeals that copyright law gave
`people who bought commercial software off-the-shelf rights to make backup copies of
`their programs, as well as rights to copy in order to use and to engage in reverse
`analysis of the programs.58 To the extent that the Louisiana shrinkwrap enforcement
`law was attempting to frustrate operation of federal policy, it should, Quaid argued, be
`preempted.59 The appellate court agreed, deciding that Ramkey had a substantial
`noninfringing use as an aid to consumer exercise of backup copying rights under
`copyright law.
`
`What killed the market for Vault's software and other similar products was not
`its defeat in this case, but marketplace competition that gave an edge to software
`developers willing to sell uncopy-protected versions of its products.60
`Notwithstanding the vulnerable nature of their products and the absence of
`commercially acceptable forms of technological protection for these products, the
`software industry as a whole has prospered.61 This has not, of course, stopped
`software industry associations from vociferous complaints about "piracy" of their
`products, both domestically and abroad.62
`
`C.
`
`Sega v. Accolade
`
`
`conjunction with a machine and that it is used in no other manner." 17 U.S.C. §117(1). See Vault,
`847 F.2d at 261.
`56 Id.
`57 Id. at 261-67. The most interesting (if least discussed) claim in the case was the second of Vault's
`two derivative work right claims. One claim focused on the appropriation of a code segment in an
`earlier version of Ramkey. The Court of Appeals found this code segment too small a part of the work
`to be of copyright concern. Id. at 267. Lurking in the case may have been another contributory
`infringement claim as to Vault's derivative work right. Quaid sold software that when used in
`conjunction with Vault's software adapted or recast it so that it didn't operate in its intended manner.
`This issue was more squarely presented in Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 780
`F. Supp. 1283 (N.D. Cal. 1991), aff'd, 964 F.2d 965 (9th Cir. 1992) (game genie that altered play of
`Nintendo games held not to infringe derivative work right).
`58 See 17 U.S.C. §117, discussed inVault, 847 F.2d at 263-66.
`59 The lawsuit was brought in the state of Louisiana because this state had adopted a law validating, as
`a matter of contract law, common terms of software shrinkwrap licenses. See Louisiana Software
`License Enforcement Act, La. Rev. Stat. §51:1961 et seq. (West 1987). For the court's discussion of
`this statute and its preemption analysis, see Vault, 847 F.2d at 268-70.
`60 See, e.g., Barlow, supra note --.
`61 Id.
`62 See, e.g., David Hornick, Combating Software Piracy: The Softlifting Problem, 7 HARV. J. L. &
`TECH. 377 (1994) (discussing the problem and strategies for coping with it).
`
`10
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`

`

`A different kind of circumvention issue was presented in Sega Enterprises, Ltd.
`v. Accolade, Inc.63 Sega argued that it had chosen to distribute its computer programs
`in machine-readable form in order to keep information, such as the technical
`specifications for its program-to-program or program-to-hardware interfaces
`embedded in the texts of its programs, as a trade secret. It alleged that decompilation
`or disassembly of its programs as a means of getting access to such trade secret
`information infringed its copyrights. Even if Accolade's videogames did not contain
`infringing code from the Sega programs, Sega thought that Accolade's games should
`nonetheless be enjoined from the market as "fruit of the poisonous tree" of
`decompilation.64
`
`The Ninth Circuit Court of Appeals rejected Sega's argument, holding that
`decompilation of computer programs for a legitimate purpose, such as to ge