FALL 2004

Computer Law

Course No. 9200 711 001	MW 10:30 a.m. - 12:05 p.m.	Room W-214
Professor Jay Dratler, Jr.	Room 231D (IP Alcove)	(330) 972-7972	dratler@uakron.edu, dratler@neo.rr.com

Assigned Reading
Week 1	Week 5	Week 8	Week 11
Week 2	Week 6	Week 9	Week 12
Week 3	Week 7	Week 10	Week 13
Week 4			Week 14

Week 1

Monday, August 30: Statute Book, Copyright Act of 1976, 17 U.S.C. § 101 (definitions of "audiovisual works," "compilation," "computer program," "copies," "copyright owner," "created," "device," "display," "fixed," "literary works," "perform," "publication," and "transmit"), and §§ 102, 103, 106, 107 and 501(a) and (b). (Read each statutory definition twice, once for sense and a second time to pick out and highlight or outline key words and concepts.) Casebook, Introduction and Preface (pages iii -iv), and Pages 1-29.

Wednesday, September 1: Reread Copyright Act of 1976, 17 U.S.C. § 102(b); Casebook, Pages 30-47.

Week 2

Monday, September 6: NO CLASS (Labor Day)

Wednesday, September 8: Casebook, Pages 47-65.

Week 3

Monday, September 13: Statute Book, reread Copyright Act of 1976, 17 U.S.C. §§ 101 (definition of "derivative work"), 103, 501(a) and (b). Casebook, Pages 65-71.

Conceptually, MAI Systems Corp. is one of the most important cases in all of computer law. How broadly does its basic holding apply? If you view an image from a Website on your computer screen, have you made a "copy"? Does the basic holding of MAI still apply after the amendments to Section 117 set out on page 71? Make a list of five activities that you perform daily or weekly, as you use your computer, that likely make "copies" of others' work within the meaning of MAI. Are all of those activities infringing? If not, why not?

Wednesday, September 15: Statute Book, 17 U.S.C. § 1001 (definition of "serial copying," others as needed), and §§ 1002, 1003, 1005, 1008, 1009. Casebook, Pages 71-85.

The Audio Home Recording Act of 1992 was intended to address the threat to copyright posed by digital audio tape (DAT), not the Internet or MP3 files. Try to describe the Act's scheme of operation in one or two simple sentences. What rights or benefits did it offer consumers? the electronics industry? copyright owners? Did it provide a fair and appropriate balance of benefits for the various interested parties? Did the Act's benefits "translate" well into the world of the Internet, the World Wide Web, and music file-sharing technology? Why or why not? Does Diamond Multimedia Systems suggest that, in our world of rapidly accelerating technological change, special-purpose statutes directed at a particular technology are likely to enjoy success? Was the Copyright Act of 1976 such a statute? Be sure to follow the winding trail through the statute's interlocking definitions. On what basic definition does the result in this case most directly depend? on what specific words in that definition? Is the statute well drafted? Is its scope of application clear? Why do you suppose it was drafted in this manner?

Week 4

Monday, September 20: Statute Book, 17 U.S.C. §§ 1201(a), (b), (c), (f), (g), (j), 1203, 1204 (read each section at least twice!).

Wednesday, September 22: Casebook, Pages 85-93. 2004 Supplement, Pages 149-169 (Universal City Studios v. Corley). [Note that Corley is the same case as Reimerdes on appeal.] Notes and Questions on Software as "Speech."

Week 5

Monday, September 27: Casebook, Pages 93-110.

Precisely what is the holding of Sega, and how narrow or broad is it? What specific activities does the court say might be fair use? under what circumstances? Does the purpose of the activity matter? What specific conditions apply to the court's holding, and in precisely what words does the court express them? Would the result be the same, for example, if Accolade had copied substantial portions of Sega's game code?

Wednesday, September 29: A&M Records, Inc. v. Napster, Inc. and Notes and Questions on Napster.

Week 6

Monday, October 4: Statute Book, 17 U.S.C. §§ 117, 512 [in § 512, focus on subsections (a), (b), (c), (d), (f), (g), and (i)]; Casebook, Pages 120-136.

Wednesday, October 6: Statute Book, Copyright Act of 1976, 17 U.S.C. §§ 109, 502 - 507. Reread 17 U.S.C. §§ 106, 117, 501. Casebook, Pages 136 - 151.

Both Section 109 and Section 117 give specified statutory rights to the "owner" of a copy (of a work or computer program, respectively). What does the term "owner" mean in this context? If you "bought" software in CD format, or legitimately downloaded it from the Web, are you the "owner" of the copy that resides on your computer's hard drive?

Take a look at the software license agreement (sometimes called an "end-user license agreement" or "EULA") that came with your software, or peruse a copy of the standard agreement on the Websites of such firms as Microsoft, Adobe, Symantec, etc. What do these standard license agreements say about your status as an "owner" of the software? Are the relevant provisions valid and enforceable? If so, what effect do they have on your rights under Sections 109 and 117? Is it possible for software vendors to modify or extinquish these statutory rights by contract? Should it be?

Week 7

Monday, October 11: Statute Book, reread 17 U.S.C. §§ 102(b), 106, 501 - 507. Casebook, Pages 151 - 182.

By what procedure and process of reasoning do these two courts apply the idea/expression dichotomy? How do they assess infringement? Which approach is better and why? Can you distinguish each of these cases from Lotus v. Borland on pages 38-47?

The three-part test of Altai is generally considered the preferred approach to handling idea/expression questions regarding computer programs. Outline the three parts of the test (really, a process) and describe how they work. Which is the most important of the three parts, and what are the practical, industrial, and commercial considerations that go into applying it? If an aspect of a computer program, such as the menu-command hierarchy in Lotus v. Borland, has become an industry standard, does the Altai test support copyright protection for it?

Wednesday, October 13: Casebook, Pages 182 - 200.

Each of the four decisions for today demonstrates, in its own way, the importance of secondary copyright liability for the computer industry. Each answers the questions whether and when a competitor can be held liable for inducing, contributing to, or profiting from others' copyright infringement.

Why is the concept of secondary liability vital to the computer industry? Under MAI and similar cases, who is usually the direct copyright infringer? Since there must be some direct infringement for secondary liability to exist, why not just sue the direct infringer(s) and be done with it? Are there legal and practical impediments to doing so? In each case, identify the direct and secondary infringers and analyze why the plaintiff chose to sue the secondary infringer.

Secondary liability for copyright infringement comes in two flavors: contributory infringement and vicarious liability. What are the elements of each form of secondary liability, and how do they interrelate? Is each test for secondary liability cut and dried, or is it essentially a matter of judgment? Are there "weasel words" in each test that give room for the exercise of judgment? If so, what are they? Was judgment properly and appropriately exercised in these cases?

Week 8

Monday, October 18: Statute Book, 17 U.S.C. §§ 301; Semiconductor Chip Protection Act of 1984, Edited. Casebook, Pages 200 - 216.

Pre-emption is one of the most complex issues in all of copyright law. There are twos type of pre-emption: (1) so-called "explicit" pre-emption like that decreed by Section 301; and (2) "implied" or "constitutional" pre-emption (also called "conflict" pre-emption), arising under the federal Supremacy Clause, U.S. Const., Art. 6, § 2, when a state law conflicts irrevocably with federal law. In each of the two pre-emption decisions, which type of pre-emption is at issue, and was the result properly justified? Pre-emption is vital in intellectual property ligitaion because it can, for example, invalidate otherwise persuasive claims under state law, for example, general or trade-secret misappropriation claims.

The Semiconductor Chip Protection Act was passed in 1984, after several years of internal debate within the intergrated-circuit industry as to whether such a law was necessary or desirable. It is largely and purposefully modeled on the copyright statute, but it has certain "patent-like" features and some unique features as well. The Brooktree case (including the district court's decision, not reproduced in the Casebook) is the only reported decision applying the Act to the merits of a dispute. One other case, Anadigics, Inc. v. Raytheon Co., 903 F. Supp. 615, 1995 U.S. Dist. LEXIS 16735 and 17763, 37 U.S.P.Q.2d (BNA) 1666 (S.D.N.Y. 1995), involved procedural wrangling, the resolution of which put some gloss on the statute.

This situation is extraordinary. The statute has complexity and nuance comparable to those of the copyright act. See generally Jay Dratler, Jr., Intellectual Property Law: Commercial, Creative, and Industrial Property, Ch. 8 (Law Journal Press 1991 & Supps.), available on LEXIS: Secondary Legal: View More Sources: Law Journal Press. Moreover, it has been in effect for over twenty years. Yet only a single case applies it on the merits of a real dispute. Is this law another example, like the Audio Home Recording Act of 1992, of an "orphan" statute, adopted to address a particular specialized technology whose time has come and gone?

In 1984, chip manufacturers used "masks" that partially blocked visible or ultraviolet light (much like children making shadow-puppet shows in the light from slide projectors) to delineate the physical structure of the various layers of chips. Chip makers feared that unauthorized competitors could reproduce these masks, which were expensive to develop, by shaving layers from chips sold in the marketplace and photographing each layer. Today, leading-edge chip makers use electron-beam and x-ray lithography to make chips with features whose size is a fraction of the wavelength of light, obviating the possibility of reproducing a chip through simple optical photographic piracy. In addition, the equipment needed to produce modern chips is vastly more expensive, and the processes used the make them vastly more complicated, than in the 1980s. Do these practical factors account for the lack of litigation under the Chip Act and render it obsolete, or did the Chip Act serve a purpose in preventing simple piracy during the formative stages of an important industry?

Wednesday, October 20: Casebook, Pages 217-238.

Week 9

Monday, October 25: Casebook, Pages 238-255, Dissenting Opinion (on Merits) of Judges Archer and Nies, and Notes and Questions on Patenting Computer Programs.

Wednesday, October 27: Casebook, Pages 256-272, and More on Patenting Computer Programs.

Week 10

Monday, November 1: Introduction to Antirust, Microsoft III (Section 2 claims), and Notes.

Wednesday, November 3: Microsoft III (Tying Claim and Remedy), Notes, and further Notes.

Week 11

Monday, November 8: Misuse and Lasercomb and Notes.

Wednesday, November 10: Casebook, Pages 342-383. [Extended partial make-up class: meets until 12:30 p.m.]

Most of the substance of trade-secret law appears in the definitions in Section 1(1), (2) and (4) of the Uniform Trade Secrets Act. Read these provisions several times, especially the definition of "trade secret" in § 1(4). What three elements does that definition require? What is the essence of "misappropriation"? What kinds of activities may constitute misappropriation?

In Lerma, why does the court worry about the propriety of the Post's acquisition of the alleged trade secret even after it had been disclosed on the Internet? Is there a subtle interaction between the issues whether a trade secret exists and whether there has been misappropriation? What if an employee steals her employer's trade secret and takes it to another employer, who, knowing the secret was stolen, files a patent application on it? If the patent application is published, thereby dislosing the trade secret, can the new employer avoid liability on the ground that there is no longer any trade secret? Cf. Syntex Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677, 683 (7th Cir. 1983).

Vermont Microsystems illustrates a common use of trade-secret protection in the computer industry: to "fill the gaps" between patent and copyright protection. What were the specific trade secrets at issue in this case? Could the plaintiff have protected them by copyright? Why or why not? by patent?

Gilmore illustrates the dangers that the Freedom of Information Act poses to private, commercial trade secrets and confidential information submitted to or developed for the government. What could Sandia Laboratories (or any private contractor similarly situated) have done to protect its trade secrets if the Department of Energy had refused to stand up on its behalf, and instead had decided to honor the FOIA request?

The Supreme Court has ruled that there is no such thing as a "reverse FOIA" action, i.e., an action by a trade secret owner to challenge, rather than demand, disclosure by a government agency under the FOIA. See Chrysler Corp. v. Brown, 441 U.S. 281, 294, 99 S. Ct. 1705, 60 L.Ed.2d 208 (1979). The combination of the Administrative Procedure Act with the federal Trade Secrets Act, 18 U.S.C. § 1905, however, does allow a trade secret owner to challenge an impending agency disclosure as "not in accordance with law" within the meaning of 5 U. S. C. § 706(2)(A), a part of the Administrative Procedure Act. See Chrysler Corp. v. Brown, supra, 441 U.S. at 317-319. In order to make such a challenge before the cat is out of the bag, the trade-secret owner must of course have advance notice of the impending disclosure, in time to mount a legal challenge. Most federal agencies have regulations under which trade-secret owners who submit their own secret data (for example, as part of an application for pre-marketing approval) can identify trade secrets and request such notification. It is vital for trade-secret submitters to make good use of these regulations. Otherwise, the government might provide their trade secrets to competitors or to the public with little or no chance for an effective remedy. See generally, Ruckelshaus v. Monsanto Co., 467 U.S. 986, 104 S.Ct. 2862, 81 L.Ed.2d 815 (1984) (discussing under what circumstances the government's unauthorized disclosure of private trade secrets might give rise to a cause of action for damages).

The last two cases illustrate two important general principles of contracts in the context of the computer industry. First, contracts may conflict with noncontract law in ways that cause courts to refuse to enforce them. Second, contracts may be valid and enforceable even if not executed by manual signatures in the purportedly "normal" way.

Consider the contract clause at issue in Vault Corp. Isn't it a standard part of virtually every software- industry end-user license? Can you find such a clause in the license enclosed with, or provided on a Website for, software that you use in your own computer? What type of pre-emption was at issue here? Was it "copyright" pre-emption under Section 301 of the Copyright Act, or so-called "constitutional" pre-emption? Was the result that the court reached correct? What consequences would a contrary result have had for the viability of the rights provided in Section 117?

ProCD is the classic decision on the enforceability of so-called "shrink-wrap" license agreements, authored by one of the foremost proposnents of the "Chicago school" of economics and the law. Does the decision make economic sense? Does it make legal sense? Are contracts of adhesion any worse because they are offered in a box with software? on line? Does/should it make any difference if "opting out" of the contract requires returning a substantial, heavy piece of equipment, such as a whole computer? paying shipping charges for returning it?

Week 12

Monday, November 15: Casebook, Pages 518-530. Statute Book, Lanham Act § 43(a), (c), (d), 15 U.S.C. § 1125(a), (c), (d). Casebook, Pages 387-407 and Notes, Questions and Web Materials on Cybersquatting. [Extended partial make-up class: meets until 12:30 p.m.]

The first two cases are examples of tort claims used where, for one reason or another, contract claims would not do. They illustrate the point that tort law may provide causes of action or remedies that go far beyond what contracts allow; tort claims may even skirt contractual disclaimers of liability. Make sure that you understand why contract claims were inadequate for the injured plaintiff's purposes in each case. In A.T. Kearney, for example, there was a three-way business relationship. What part did each of the three parties play, and how did IBM end up as a defendant? On what kind of alleged "duty" on IBM's part was the tort claim against it based? Was the court's decision proper? What would have been the consequences of a contrary result? As for Glovatorium, why was the court was willing to hold the company liable for the saleman's behavior? Will courts always be so solicitous of plaintiffs, or was this an unusual case?

Wednesday, November 17: Casebook, Pages 456-461, 408-426. [Extended partial make-up class: meets until 12:30 p.m.]

Most of this week's cases deal with statutory causes of action in the realm of trademarks and unfair competition. In particular, they discuss claims under Section 43 of the Lanham Act—subsection (a) on infringement of unregistered trademarks and false designation of origin, subsection (c) on federal trademark dilution, and subsection (d) on cybersquatting. Of these three key subsections, (a) has been around for decades (since 1946), but (c) and (d) are relatively recent additions (since 1996). These causes of action are covered extensively in Trademarks and Unfair Competition and, as applied to the Internet, in Cyberlaw.

This first of today's cases, Playboy, illustrates some peculiarities in how causes of action for trademark infringement and dilution apply in cyberspace. The next two, however, cover two different causes of action, less often encountered. Golf Association discusses the general tort of misappropriation, i.e., misappropriation not involving a trade secret. Ever since the INS decision, courts have viewed this tort suspiciously, in part because its very existence seems to contradict the general rule that matters in the public domain, if not protected by patent or copyright, are free for anyone to imitate. Did the court here pay sufficient attention to that basic intellectual property policy? To our "fundamental national economic policy" of competition? What might the consequences of a contrary result have been?

In Compaq, the court addresses another aspect of the federal Lanham Act's impact on the law of unfair competition, namely, the federal prohibition against false advertising contained in subsection (a). What specific legal standard for determining whether advertising is "false" did the Compaq court apply? Does that standard make sense? for commerce generally, including television advertising? for the computer industry? Is it consistent with the basic goal of fostering competition, as long as it is fair?

Week 13

Monday, November 22: Casebook, Pages 495-499; read Ohio's Uniform Electronic Transactions Act (UETA) at least twice, then consider the Notes and Questions on First Reading of UETA.

Wednesday, November 24: Read and work through the UETA Problems, preferably in groups.

Week 14

Monday, November 29: U.S. v. Tank, U.S. v. Trenkler.: U.S. v. Upham.

These three cases introduce the impact of computers on evidence in the courtroom. In each case, focus on what specific items of evidence were at issue, what were the objections to their admissibiility or use, and what was the specific legal basis for each objections. As you read each case, form as sharp a mental picture as you can of precisely what the proponent of the evidence introduced in court, and in what form. Think of yourself as presenting the evidence: would you be handing the jurors a mass of paper, gesticulating in front of a computer screen, TV screen, or slide screen, or doing something else?

In Tank, for example, the evidence was in the form of "chat room logs" and printouts of e-mails. Exactly how were they included in the record and presented to the jury? From that starting point, conceptualize the logical, inferential links that had to be made to: (1) connect the defendant to that evidence and (2) prove the defendant's guilt. What logical objections did defendant's counsel make? Were they well founded, were they overcome, and, if so, how?

In Trenkler, the objection to the computer-based evidence was very basic. Can you state it in one word? More subtle objections were based on the jury's or factfinder's putative response to computer-generated evidence generally. How forceful were/are both sets of objections? Can they be overcome? Is overcoming them simply a matter of courtroom procedure, or night overcoming them require collecting the data and/or managing the database differently?

In Upham, the issue is somewhat different: the proper scope of and authorization for a search warrant. There are really two issues: (1) was the evidence presented to the judge (usually by way of affidavit) in seeking the affidavit sufficient to meet the constitutional standard of "probable cause" and (2) was the descripion in the search warrant sufficiently specific to avoid authorizing an improper "fishing expedition"? Was the court's decision right? Could the description in the warrant have been any more specific and still be effective? If so, how? Would/should a more general warrant, allowing seizure of "any and all computer equipment and media found at the [suspect] house," be sufficient? Why or why not?

Wednesday, December 1: U.S. v. Jackson, Casebook, Pages 461-469.

Besides being a marvelous example of vindictiveness carried to pathological extremes, Jackson illustrates the basic reason why courts are still uneasy with electronic and computer-based evidence, although computers have been with us for over half a century. Courts suspect, not without reason, that electronic evidence is easier to alter and falsify without detection than "traditional" evidence such as paper and physical objects.

As you consider the Web of evidence that Jackson tried to weave, consider the evidence tending to show the falsity of each fabricated link. On what evidence was the assertion (and later adjudication) of falsity based? Was it easy or hard to establish falsity? Could Jackson's scheme have succeeded if she had been a little more careful, or would circumstantial evidence have inevitably refuted her claims? How hard did the prosecutor have to work to prove his/her case, and thereby, in the process, exonerate UPS from unfair civil charges? Is this case an object lesson in treating electronic evidence with just as much suspicion and just as careful scrutiny as other kinds of evidence? an argument for even more suspicion?

The last two cases provide a brief introduction to two causes of action useful in the computer-law field. They are: claims under the Computer Fraud and Abuse Act, 18 U.S.C. § 1030 ("CFAA"), and common-law claims for "trespass to chattels" based on damage to someone's computer system caused by indirect (electronic) contact only. The federal statute is unusual in that, although codified in the federal criminal code, it has a civil cause of action buried in it. See 18 U.S.C. § 1030(g). It also has an unusually broad scope of application. See 18 U.S.C. § 1030(e)(2) (defining "protected computer"). Is your home computer or the laptop that you bring to class "protected" by this Act? For a recent discussion, by the California Supreme Court, of the tort of tresspass to chattels and its limitations as applied to computer systems, see Intel Corp. v. Hamidi, 30 Cal. 1342, 71 P.3d 296, 1 Cal. Rptr. 3d 32 (2003). The Cyberlaw course explores both the CFAA and this tort in more detail.

PRACTICE EXAMINATION


Computer Law Home Page	Course Description	Course Requirements and Policies
FALL 2004 COURSES