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Alternatives to Intellectual Property


Very few observers of the Internet believe that it can be regulated sensibly through the staples of traditional Intellectual Property law, whether because they doubt its efficacy/enforceability, or because they believe it's the wrong model for governing the sharing of creative expression. Today's Internet - still in evolution, to be sure - facilitates infringement of intellectual property rights on an unprecedented scale. What can be done? Efforts have varied.

Some advocate expanding the scope of intellectual property law in order to provide additional protection of digital assets that had been formally omitted from IP's sweep. This can be accomplished through the development of new legislation and through the novel application (or expansion) of "conventional" doctrines to digital rights disputes.

Others endeavor to use new legislation to shore up technological shields developed by private industry. This powerful approach can mandate the deployment of protective technologies and criminalize efforts to circumvent them.

Lastly, some observers think that intellectual property law as applied to the Internet is already overly protective. They argue that we should be looking for ways to reduce impediments to the use and reproduction of information. More broadly, they claim we must lower our expectations concerning the protections to which developers of ideas and information are entitled. Cyberspace, for them, represents just the right opportunity to effect this change.

This module examines these three approaches and the extent to which they have influenced the development of thinking and the law.


I. Pushing the law to protect digital assets

a. Applying "conventional" (non-IP) doctrines to protect digital intellectual property

i. Online Contracts

A growing number of online businesses are attempting to shield their assets, not through intellectual property law, but through contracts. A good example is the online form of Martindale-Hubbell, the leading directory of lawyers. A concise survey of other efforts to create "private laws" governing online transactions may be found in "Adapting Contract Law to Accommodate Electronic Contracts: Overview and Suggestions" by Donnie L. Kidd, Jr. and William H. Daughtrey, Jr. (The full article is available here.)

Are so-called "click-on licenses" of these sorts enforceable? There is no clear answer. Many courts in the United States have considered the enforceability of closely analogous "shrink-wrap licenses," which have been used for years by software manufacturers to limit the ways in which customers may make use of their wares -- but the courts' answers have varied substantially. A good review of this tangled body of case law may be found in the attached excerpt from Margaret Jane Radin's "Humans, Computers, and Binding Commitment". The most famous of the shrink-wrap cases is the decision of Judge Easterbrook (writing for a panel of the Seventh Circuit Court of Appeals) in ProCD v. Zeidenberg 86 F.3d1447. (The notoriety of that ruling -- and the crispness of Easterbrook's prose -- unfortunately has contributed to a widespread views that the enforceability of shrink-wrap agreements is clearer than it is in fact.)

With respect to the enforceability of the online versions of such contracts, the case law is very thin. In Hotmail Corporation v. Van$ Money Pie, Inc. 1998 WL 388389, 1 (N.D. Cal.), a District Court granted an injunction against a "spammer" (a person who sends unsolicited commercial emails) -- largely on the theory that the plaintiff had a valid contract claim arising out of a click-on license. But other decisions on the issue are, as yet, hard to find.

Reformers have been trying for years to secure the adoption of legislation that would establish, once and for all, the enforceability of these private agreements. The most ambitious of those efforts was the attempt to add a new Article 2B to the Uniform Commercial Code. Fierce opposition -- partly, though not exclusively from legal scholars -- ultimately blocked this initiative. Unbowed, the reformers have been seeking analogous legislative changes from the legislatures of individual American states as part of the Uniform Computer Information Transactions Act (UCITA). So far, only two -- Virginia and Maryland -- have adopted it. For a careful assessment of this subject, see the attached excerpt from Niva Elkin-Koren, "Copyright Policy and the Limits of Freedom of Contract". (Her full article is also available here.)

ii. Trespass to chattels

Trespass to chattels is an old, common law tort that "lies where an intentional interference with the possession of personal property has proximately caused injury." Thrifty-Tel v. Bezenek, 46 Cal. App. 4th 1559, 1566 (1996). A cyberspace version of this doctrine has emerged to combat web "crawling" (or site "spidering").

When an Internet user views a page within a website, his or her browser sends a digital request for that page (and subsequent requests for all of the associated images, sound files, etc.) to the server designated by the site's operators as responsible for providing content. This server processes the request and responds with the appropriate content. "Crawling" technology is software that automatically makes these requests and processes the returned content in order to extract desired information. Using crawling technology effectively, one can quickly extract vast amounts of information from a website. This technology thus represents one of the most serious threats to the propriety of information made available online (see the discussion of online databases in I.b.i. below).

In May of 2000, online auction site eBay became the first online company to successfully employ a trespass to chattels claim when it secured an injunction preventing Bidder's Edge ("BE") from crawling its site. 100 F. Supp. 2d 1058. eBay argued that the recurring deluge of unauthorized requests made by BE's crawlers each time BE attempted to extract an updated catalog of pending eBay auctions was siphoning off valuable eBay computing resources, amounting to a trespass to chattels. In paving the way for the application of this doctrine in the digital rights arena, Judge Whyte of the U.S. District Court for the Northern District of California (applying California's trespass to chattels law) made two key conclusions. First, he found the electronic signals sent by BE to request information from eBay's computer system "sufficiently tangible" to support the trespass action. 100 F. Supp. 2d 1058, 1069. Second, Judge Whyte found eBay's allegations of dissipated computing resources sufficient to allege "injury" proximately caused by the trespass. 100 F. Supp. 2d 1058, 1071.

In Ticketmaster v., 2000 U.S. Dist. LEXIS 12987, Judge Hupp of the U.S. District Court for the Central District of California faced a similar issue. He wrote:

…The court is impressed by the original and resourceful thinking of Judge Whyte; it is always difficult to attempt to apply established law to brand new facts with other established policies tugging and pulling one in various directions. Not only that, the court agrees with much of what Judge Whyte says. The computer is a piece of tangible personal property. It is operated by mysterious electronic impulses which did not exist when the law of trespass to chattels was developed, but the principles should not be too different. If the electronic impulses can do damage to the computer or to its function in a comparable way to taking a hammer to a piece of machinery, then it is no stretch to recognize that damage as trespass to chattels and provide a legal remedy for it. Judge Whyte in eBay found the damage in the occupation of a portion of the capacity of the computer to handle routine business and conjectured that approval of that use would bring many more parasitic like copies of the defendant feeding the computer to a clogged level upon the information expensively developed by eBay, the net result likely being severe damage to the function of the computer and thus the business of eBay. Thus, the injunction was issued to prevent the use of the spiders by the defendant in that case. It is noted that the harm to the equipment foreseen was to its intended function, not the physical characteristics of the computer.

2000 U.S. Dist. LEXIS 12987 at page 15.

Judge Hupp ultimately denied Ticketmaster's motion for a preliminary injunction. (His opinion was affirmed by the Ninth Circuit Court of Appeals. 2001 U.S. App. LEXIS 1454.) With respect to Ticketmaster's trespass to chattels claim, he found "no showing that the use [of Ticketmaster's computing resources represented by's crawlers] interferes to any extent with the regular business of Ticketmaster." 2000 U.S. Dist. LEXIS 12987 at page 17.

The viability of the trespass to chattels claim in this web-crawling context thus seems limited to instances where crawling is egregious and ongoing. The party seeking to protect its information must demonstrate a significant taxing of its computing resources. Moreover, if the information sought is not timely, or updated frequently, this doctrine does not offer much protection; whenever only a single pass through a site - at any given time - is required by the information acquirer, a "crawl" can be executed slowly in order to avoid causing any injury and does not need to be repeated with any frequency (repeatedly crawling a site greatly increases the likelihood that significant server resources are at stake). When the information sought derives its value from its timeliness, however, and frequent, repeated, extensive crawls are executed (like in the eBay case), a trespass to chattels claim may succeed in protecting digital assets.

iii. Misappropriation

Misappropriation is a second example of doctrines employed by those seeking to expand protections of digital assets online. Unlike trespass to chattels, it originated as an outgrowth of unfair competition doctrine to protect in the context of business competition quasi-intellectual property rights in informational assets outside the scope of "pure" intellectual property law (for example, facts, uncreative compilations of data, etc.). Its application to the problem of protecting online information is, thus, quite natural. Michelle L. Spaulding, author of a brief summary of the law of misappropriation, writes in part:

The common law doctrine of misappropriation originates in the 1918 Supreme Court opinion International News Service v. Associated Press, 248 U.S. 215. International News Service (INS) and Associated Press (AP) were two competing news services that employed correspondents to gather and report news worldwide. … The problem arose when INS was barred from transmitting wartime information from Great Britain. Since news of the war was a hot commodity, INS began "lifting" AP's stories from AP's bulletin boards, and from early editions of AP-affiliated newspapers on the East Coast. … Sometimes this resulted in INS "scooping" AP's West Coast affiliates, if the INS edition came out on the West Coast before the AP edition.

...The Supreme Court granted the relief AP was seeking, and the misappropriation doctrine was born. In Justice Pitney's majority opinion, he found that AP had a quasi-property right in the news that it had gathered. This right existed not against the world at large, because news is based on unprotectable facts, but against competitors. He offered three arguments to support this conclusion. The first is based on the labor-desert theory - AP invested substantial time, labor, and money in its news-gathering efforts and should be entitled to reap the benefits of this investment. The second is that the news has market value; therefore it resembles other forms of property and should be protected as such. The third is a utilitarian justification - if AP's rights are not protected, there will be no economic incentive to expend the effort to gather the news, therefore the public won't receive the benefits of being able to read worldwide news in the local paper.

… Since INS two incompatible lines of cases have developed, one restricting the doctrine, and one expanding it. The result is a highly amorphous and unpredictable body of law.

(Spaulding's summary is available here.)

As Spaulding points out, misappropriation doctrine has had an "amorphous" evolution, complicated by the fact that, as state common law, it incorporates jurisdiction-specific nuances. A study of its modern application to digital rights disputes logically begins with the 1976 Copyright Act and its preemption provisions. As described in Bruce Keller's in-depth analysis of the reemergence of the misappropriation doctrine in the Internet context (the full version of which is available here):


Since the enactment of the 1976 Copyright Act, with its broad preemption provisions, most had regarded misappropriation as a theory of liability that had lost its vitality [due to preemption]. At the beginning of the 1995-96 basketball season, however, the National Basketball Association ("NBA") sued to enjoin unauthorized dissemination of play-by-play information from NBA games in progress, asserting not only an array of statutory claims but also a common law claim for misappropriation. [See NBA v. Sports Team Analysis & Tracking Sys., Inc., 931 F. Supp. 1124, amended by, 939 F. Supp. 1071 (S.D.N.Y. 1996), aff'd in part and vacated in part on other grounds sub nom. NBA v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997).] Although the Court of Appeals for the Second Circuit eventually rejected the NBA's misappropriation claim, it carefully preserved common law claims for misappropriation of "hot news," holding that such claims were not preempted by the Copyright Act. Instead of adopting the preemption and First Amendment defenses urged by … the defendants in that case, the court articulated a multi-factor test capable of providing significant protection to content owners in future cases.

11 Harv. J. Law & Tec 401, 401 (internal footnotes omitted).

The narrow surviving misappropriation claim described by the Second Circuit represents, in a sense, the least common denominator of most states' misappropriation doctrines. As the court held that only this small kernel of misappropriation protection survives preemption by the (federal) 1976 Copyright Act, the case has great significance generally (though only New York's misappropriation law was at stake, technically).

This surviving misappropriation claim, as described by the Second Circuit, was employed in the "pure" Internet context for the first time when several online news providers sued in February of 1998. styled itself a "meta-news site" that aggregated national news sources at a single online destination. TotalNews used framing technology to display content from various newspaper sites within their proprietary site, which consisted primarily of revenue-generating advertisements and logos. The Washington Post (and several other news providers whose content had been framed by TotalNews) brought suit, alleging that had misappropriated its content (along with claims for trademark dilution and infringement, copyright infringement, false and deceptive advertising and tortious interference with advertising contracts). The case settled in June of that year without any adjudication of the misappropriation claim. As of this writing still exists, but doesn't frame its links anymore - at least not those of the original plaintiffs.

b. Legislative Initiatives

Many legislative initiatives have been proposed to expand the scope of intellectual property protection on the Internet. Generally, these initiatives aim either to explicitly fill in gaps of protection or to offer alternative enforcement regimes. We will consider one example of each type.

i. Legislation to protect databases

Many observers of the Internet believe that collections of data ("databases") should be shielded by law from nonpermissive copying and that the shields provided by current copyright law are ineffectual. This is especially true, they argue, in the United States, where the Supreme Court has ruled that copyright protection is available only for forms of expression that exhibit a minimal degree of creativity. (A novel easily meets this requirement, but an alphabetical telephone directory does not.) This principle means that, in the United States, many nonpermissive uses of databases, even if they could be detected, would not constitute copyright infringement. Unless better legal shields can be devised, it has been argued, companies will hesitate to create online databases -- which will be unfortunate for everyone.

Moved by arguments of these sorts, the European Union recently adopted a Directive compelling all of its member countries to adopt legislation forbidding the extraction or reutilization of a substantial portion of a database. Member countries are allowed some -- but not much -- latitude in establishing exceptions (analogous to the fair-use doctrine in copyright law) to this prohibition. During each of the last few terms of Congress, two sharply different bills that would create an analogous legal regime in the United States have been introduced by rival groups of interested parties. Neither of the bills has made it far in the legislative process, but efforts to create a database statute in the United States will likely continue for the foreseeable future. For a survey and evaluation of these initiatives, read the attached excerpt from "Database Protection at the Crossroads: Recent Developments and Their Impact on Science and Technology" by Jerome H. Reichman and Paul F. Uhlir. (The full article is also available here if you have time.)

ii. Tax and royalty system as an alternate enforcement regime

Another legislative initiative that thus far has received mot attention in Europe involves supplementing (or, perhaps, supplanting) traditional intellectual property systems with a taxation regime. Musicians (as the previous module showed) fear that promiscuous Internet replication of their creations will undermine their ability to make money. Some observers believe that the best way to address this concern is not by clamping down on Internet copying, but by providing an alternative enforcement regime (affording musicians an alternative source of revenue). Specifically, they propose imposing taxes on the objects (CD burners, blank CDs, computer "hard" drives, etc.) and services (especially Internet access) that are essential to engage in that copying. The money collected from those taxes would then be distributed to musicians (both composers and recording artists) in proportion to the frequency with which their creations are copied. The attached story from the New York Times examines the extent to which these ideas are beginning to take root in Europe.

II. Using the law to bolster technological shields

The preceding section considers efforts to expand through legislation the scope of intellectual property protections for digital assets. A related, yet distinct movement advocates the use of legislation to bolster technological controls aimed at guaranteeing existing rights.

Many Internet participants argue that technological shields of digital assets offer a faster, cheaper and more reliable way of regulating access to online information than does the law. All agree, however, that technological shields have their inherent limitations. Much like a classic arms race, each new generation of protective technologies yields tools to overcome or circumvent these controls. As the locks get better, so, too, do some of the lock-pickers.

The Internet's usefulness as a resource to develop, promote and distribute circumvention technologies greatly exacerbates this problem. Using the Internet, "hackers" (or those who labor to circumvent technological controls) can coordinate efforts, share information and promote their successes. The Internet also enables the wide-scale distribution of circumvention tools with unprecedented ease at unprecedented speed. (Consider, for example, the exponential distribution of an email forwarding campaign.)

Another problem with technological shields is most succinctly summarized by the maxim "a chain is only as strong as its weakest link." Securing digital assets is extremely difficult given the diverse range of platforms upon which digital content may be deployed. Security measures deployed in DVD technology, for example, might render content relatively secure when played on DVD players, yet that same technology might offer little or no control when the DVD is accessed by a personal computer. Significant, fundamental differences in operating systems and hardware configurations among personal computers greatly heighten the challenge of securing digital assets. Developers of technology controls face the often daunting task of securing content on every imaginable platform. This is especially important when - as is most often the case - content compromised on any one platform can be easily reproduced without technological controls in a form deployable on all platforms.

In the face of these challenges, many argue that the law must operate to bolster technological controls. This can be accomplished by penalizing (criminally or otherwise) circumvention efforts and / or by mandating compliance with technological regimes that enable the deployment of private controls. The first approach aims to deter circumvention by giving technological controls the weight of the law. The second approach aims to solve the "weak link" problem by mandating compliance with security standards. We will consider an example of each type of initiative below.

Critics of this control strategy are many and have raised a variety of ideological objections. Among these objections lies a fear that this type of legislation will stifle innovation and research. Opponents also argue that this approach will enable content providers to develop in software "rights" in their informational assets not protected by law.

a. Using the DMCA to criminalize anti-circumvention efforts

To date, the most important manifestation of the strategy of using legislation to bolster technology is the Digital Millennium Copyright Act ("DMCA"), which establishes both civil and criminal penalties for circumventing technological controls. A good review of the legislation may be found in the attached excerpt from Jane Ginsburg, "Copyright Legislation for the Digital Millennium." (The full version of her article is available here.) The administrative interpretation of the statute by the U.S. Copyright Office can be accessed here. Larry Lessig's assessment follows:


Now I've made something of a career telling the world that code is law. The rules built into software and hardware functions as a kind of law. That we should understand code as kind of law, because code can restrict or enable freedoms in just the way law should... But in the anti-circumvention of the DMCA [Digital Millennium Copyright Act], Congress has turned my metaphor into reality. For what the anti-circumvention provision says is that building software tools to circumvent code that is designed to protect content is a felony. If you build code to crack code then you have violated the US code... Code is law.

To date, the most important and visible application of this portion of the DMCA has involved the effort to limit dissemination over the Internet of DeCSS, a software program that disables the technology that shields DVD discs from copying. For a review of the struggle over DeCSS, see the Case Study presented at the ILAW 2001 conference.

Two other pending disputes have highlighted the potential reach of the new anti-circumvention provisions. The first of these arose when Edward Felten, a computer scientist at Princeton, successfully "broke" the code for the SDMI watermark prototypes (discussed below). When Felten made public his intention to publish an article describing how he was able to do so, the RIAA sent him a letter suggesting that such publication "could subject you and your research team to actions under the DMCA." In response, Felten brought a declaratory judgment action against the RIAA, the SDMI Project, and the United States in federal court in New Jersey, seeking a ruling either that the statutory prohibition on "trafficking" in anti-circumvention technology did not apply to his proposed publication or that, if it did apply, it would be unconstitutional. The defendants backed down, insisting that they never intended to bring suit. The New Jersey District Court is currently considering whether to dismiss the suit as moot.

The second case involves Dmitry Sklyarov, a former developer for the Russian software company Elcomsoft, and a program that enables users to defeat the copy-protection system built into Adobe's eBook Reader. While visiting the United States (for a Defcon conference), Sklyarov was arrested and then indicted for violating the Digital Millennium Copyright Act. He was subsequently released on bail but must remain in the United States pending his trial. Among the issues that will likely be contested in the case are: the meaning of "trafficking"; the jurisdictional reach of the DMCA; and whether the statute, if construed to reach Sklyarov, violates the Free Speech clause of the First Amendment. Dmitry Skylarov is discussed in greater detail below in one of this module's case studies.

Lastly, consider the failure of Sony's latest technological initiative to protect its digital music, the "copy-proof CD." As Reuters reported on May 20, 2002:

Technology buffs have cracked music publishing giant Sony Music's elaborate disc copy-protection technology with a decidedly low-tech method: scribbling around the rim of a disk with a felt-tip marker." The new technology aims to prevent consumers from copying, or "burning," music onto recordable CDs or onto their computer hard drives, which can then be shared with other users over file-sharing Internet services such as Kazaa or Morpheus MusicCity. On Monday, Reuters obtained an ordinary copy of Celine Dion's newest release "A New Day Has Come," which comes embedded with Sony's "Key2Audio" technology. After an initial attempt to play the disc on a PC resulted in failure, the edge of the shiny side of the disc was blackened out with a felt tip marker. The second attempt with the marked-up CD played and copied to the hard drive without a hitch.

(The full article is posted at, available here.)

Has Reuters violated the DMCA? Can using a marker to black out the edge of a CD truly be criminalized as "circumvention technology?" While no such claims have been reported as of the date of this writing, the story highlights the potentially vast reach of the DMCA. Naturally, the story also serves to illustrate the challenge industries face in attempting to develop meaningful technological controls and the monumental failures that often result. Should the DMCA bolster even these utterly ineffective technologies?

b. Using the CBDTPA to mandate incorporation of a trusted system

i. The technology - trusted systems

An important example of efforts to deploy technological shields is the development of so-called "trusted systems." Such a system essentially embeds content in a software application that is configured to follow rules specified by the programmer. Through such rules, a content provider is empowered to determine the terms and conditions under which a user may and may not gain access to his or her digital work. For example, a trusted system might allow you to listen to a perfect copy of a song only once. For a description of this technology, please read one of Mark Stefik's two articles on the subject -- the layman's version in Scientific American or the more detailed version in the Berkeley Journal of Law and Technology.

One of the most widely publicized efforts to replace crumbling intellectual-property shields with newer, stronger technological shields was the Secure Digital Music Initiative (SDMI). Two years ago, after a development process that lasted much longer than expected, SDMI made available to the public prototypes of its new watermarking system - a type of trusted system - and invited hackers to try to break it. To the consternation of the developers, the systems were broken promptly (by Edward Felten, discussed above). To hear all sides of this story, you should listen to the panel discussion on the topic at the recent Future of Music Policy Summit Conference.

Technological "solutions" of these sorts have been criticized harshly by many scholars. For example, in the attached excerpt from "Hardware-Based ID, Rights Management, and Trusted Systems," Harvey Weinberg highlights the potential dangers to individual privacy and human ingenuity by the uncritical adoption of trusted systems. (The full article for your reference is available here.) Lawrence Lessig forecasts an even darker future for Cyberspace, where the free flow of content is hampered by the rise of numerous technological "fences". (Lessig's article can be viewed only with the assistance of Adobe Acrobat Reader. Click here to download a copy). Not everyone, however, agrees with Lessig. In "What Larry Doesn't Get: Code, Law, and Liberty in Cyberspace", David Post argues that many of his conclusions do not follow from his central argument that "West Coast Code" dominates Cyberspace.

ii. The CBDTPA

In March of this year, Senator Hollings (D-SC) introduced the "Consumer Broadband and Digital Television Promotion Act" ("CBDTPA"). Formerly known as the "Systems Standards and Certification Act," or "SSSCA," the proposed legislation would prohibit the sale or distribution of nearly any kind of electronic device - including, most notably, personal computers - unless the device complies with copy-protection standards to be set by the federal government. The copy-protection standards envisioned would mandate the incorporation of what is effectively a trusted system architecture, specifying security and interoperability requirements. (See Declan McCullagh's Wired article for an interesting discussion of the bill.)

A diverse, powerful body of intellectual property interests (including, for example, the music recording and film industries) heralds the CBDTPA as an overdue, fundamentally necessary measure. Absent legislation to overcome the "weakest link" problem, they argue, intellectual property rights in digital assets can never be protected.

For the most part, academics and technology entrepreneurs oppose the bill vehemently. Among other complaints, they argue that the procedure set forth for developing the actual technology specifications affords the content / media industries undue influence in the ultimate legislation (the FCC would have one year to consider a compromised proposal to be submitted by "digital media device manufacturers, consumer groups and copyright owners"). They also take issue with the extremely broad definition of "digital media devices" contained in the bill (Senator Hollings himself has said, "any device that can legitimately play, copy or electronically transmit one or more categories of media also can be misused for illegal copyright infringement, unless special protection technologies are incorporated"). Lastly, they cite the risk that these technologies can be "abused" to afford content providers protections not guaranteed by law.

Most observers agree that the bill is unlikely to pass in its current form, though not as a result of opposition based on ideology. Many close to the issue think that the effort faces a greater likelihood of overall success if the industries touched by the legislation have more time to prepare and provide input before legislation is passed. This timing consideration is most likely the one that would have greatest weight in defeating the bill.

III. Alternate Ideologies

a. Cyberspace Self-Governance

In the background of many of the proposals outlined above is a more fundamental debate over the extent to which Cyberspace can and should be "self-governing." An early entry into this debate was John Perry Barlow's article "The Economy of Ideas," which argued that copyright and patent laws are founded on characterizations of the nature of human expression that are obsolete in the digital era. (You may wish to also read his "second edition" of the piece, "The Next Economy of Ideas," which was published in October of 2000). In "A Declaration of the Independence of Cyberspace," Barlow builds on this argument to claim that all expression and transactions on the Internet should be presumptively self-governing. For an illustration of how this may work, check out Wendy Grossman's description of Stephen King's new cyberspace-exclusive offering in "Would You Pay $1 for this Article?". If you wish to inspect a more conventional example of a self-policing online community that appears to work, surf through eBay, the popular online auction site. Barlow's attitudes pop up in odd places. For example, in a 1997 "Directive on Electronic Commerce," President Clinton instructed federal agencies to "recognize the unique qualities of the Internet, including its decentralized nature and its tradition of bottom-up governance."

Such a view of "bottom-up private ordering" is not without its critics. For example, in "Cyberspace Self-Governance: A Skeptical View From Liberal Democratic Theory," Neil Netanel argues that it fails to promote the ideals of a liberal democracy. (The full article is available here.) We treat this subject more thoroughly in our discussion of ICANN and the domain name controversy.

b. The Movement for "Openness"

Some observers of the Internet argue that we should not be concerned with strengthening controls over digital assets, but, instead, moving in a completely different direction. They argue for "openness" of digital content - sharing and cooperation, not control and exclusivity, should be our goals. Present in all openness-based movements and initiatives is the idea that the Internet represents a unique and valuable opportunity to advance these ideals.

The Open Source Software movement embodies this alternative view of intellectual property in its application to the development of software. One of its leading mouthpieces, OpenSource.Org, describes the movement as follows:


The basic idea behind open source is very simple. When programmers on the Internet can read, redistribute, and modify the source for a piece of software, it evolves. People improve it, people adapt it, people fix bugs. And this can happen at a speed that, if one is used to the slow pace of conventional software development, seems astonishing.

We in the open source community have learned that this rapid evolutionary process produces better software than the traditional closed model, in which only a very few programmers can see source and everybody else must blindly use an opaque block of bits.

In "Whose Intellectual Property Is It Anyway? The Open Source War," Peter Wayner provides a nontechnical overview of the current conflict between advocates of the closed source and open source paradigms. For more detailed introductions to the movement, please read either "The Power of Openness" by David Bollier or this Introduction by Chris DiBona, Sam Ockman, and Mark Stone. The former article is also available at the Berkman Center's Open Code site, a rich resource for information on the movement, while the latter article is the preamble to the book, "Open Sources: Voices from the Open Source Revolution." A defense of the movement may be found in Lawrence Lessig's Code and Other Laws of Cyberspace (distilled in relevant part in "Open Code and Open Societies"). For constructive criticism of Lessig's position, see Steven Hetcher, "Climbing the Walls of Your Electronic Cage."

It should be emphasized that the Open Source Movement does not call for the total abandonment of "intellectual property." As Robert W. Gomulkiewicz explains:


The terms "free software" and "open source software" might lead observers of the open source revolution to conclude that hackers make software free or open by placing their code into the public domain; however, hackers employ a different approach. The proponents of open source software rely on owning the copyright in the code and then licensing it according to a very particular mass-market licensing model...

Open source licensing is based on several key principles. These principles are embodied in The Open Source Definition, published by the Open Source Initiative, and in sample licenses published by the Free Software Foundation and others, such as the GNU General Public License, the GNU Library General Public License, the Artistic License, and the Berkeley Software Design-style license. If a license does not comply with these principles, the software cannot (at least according to the open source community) be labeled "opensource."

A current "definition" (Version 1.9) of what should constitute open source software may be found here. Each rule is accompanied by its rationale. For a glimpse of the typical development process for this type of software, you may want to peruse this excerpt from Marcus Maher's "Open Source Software: The Success of an Alternative Intellectual Property Incentive Paradigm". (You can read the entire article here.) For examples of software that are based on the open source model, see's representative list of products that meet its definition as well as the websites of the Linux Documentation Project and Netscape Communications (which released its source code to the general public in 1998). See this module's case study below for an exploration of the GNU Public License in the commercial software context.

Fundamental "openness" arguments are made more generally to advance public access to and interaction with a wide range of content. For example, it is argued that "openness" with respect to creative works (a relaxing of intellectual property rights) fosters creativity and collaboration in future development much as open software development allows for improvements to code. Professor Lawrence Lessig has championed this argument. (See, for example, this CNET article describing his "Copyright Commons" project.)

The Berkman Center has even launched an "Open Law" initiative. It is "an experiment in crafting legal argument in an open forum … [where they] will develop arguments, draft pleadings, and edit briefs in public, online. Non-lawyers and lawyers alike are invited to join the process by adding thoughts to the 'brainstorm' outlines, drafting and commenting on drafts in progress, and suggesting reference sources." This forum has been successfully utilized to further the Berkman Center's efforts in Eldred v. Reno.

Case Studies

I. Prosecution under the DMCA: Dmitry Sklyarov

With annual revenues of $1.2 billion and over 2,800 employees, Adobe is the second largest PC software company in the U.S. In an effort to create / lead the market for software that enables the digital distribution of books, Adobe developed the Adobe Acrobat eBook Reader. The eBook Reader gives users a friendly interface with which to view the text and graphics of a book. Adobe's product overview explains:


The free Adobe Acrobat eBook Reader enables you to read high-fidelity eBooks on your notebook or desktop computer - no special hardware is needed! Only this reader software displays eBooks with the pictures, graphics, and rich fonts you've come to expect from printed books. Combining a vivid, elegant reading experience with an intuitive interface, Acrobat eBook Reader gives you all that eBooks have to offer.

Adoption of the technology by users is only half of the puzzle for Adobe. Development of the market for digital book distribution software also requires adoption of the technology by book publishers. Where end users demand a "vivid, elegant reading experience," book publishers (extremely weary of making their books available digitally after witnessing the "Napsterization" of the music industry) demand robust copyright protection. To this end, Adobe's eBook Reader is designed as a trusted system (described above), offering publishers a spectrum of copyright protection options when encoding their content. Adobe's FAQ (for readers, not publishers) explains:

Can I print and copy my e-books?

To protect copyrights, publishers establish their own guidelines for how much of their e-books can be printed or copied. This means that these permissions will differ from book to book. For example, some of the free books from the Adobe Bookstore have no restrictions on copying and printing. Or, a publisher might give users the ability to print several pages of a cookbook within a set period of time.

Founded in 1990 and headquartered in Moscow, ElcomSoft is a software company that (according to the company's website) "specializes in producing Windows productivity and utility applications for businesses and individuals." Among the many software products developed by ElcomSoft is the "Advanced eBook Processor (AEBPR)", which used to be available for download from their site (but seems to have been removed). As explained by an Electronic Frontier Foundation ("EFF") FAQ:

ElcomSoft's Advanced eBook Processor (AEBPR) allegedly removes the technological protection from eBooks that are in Adobe's eBook format and converts them into Adobe's Portable Document Format [("PDF")], so that people can use eBooks in more expanded ways than currently available under the Adobe eBook format. It also allows the eBooks to be read or processed by third-party software, not just Adobe's eBook Reader software. In effect, the AEBPR program removes the various restrictions (against copying, printing, text-to-speech processing, etc.) that publishers can enable or disable under Adobe's digital rights management system. The program is designed to work only with eBooks that have been lawfully purchased from sales outlets.

To put it more succinctly, the program enables users to: i) disable the copyright protection controls deployed by book publishers using Adobe's software and ii) repackage their digital books in a variety of common formats without copyright controls.

Dmitry Sklyarov is a 27-year-old programmer and cryptographer formerly employed by ElcomSoft who has been researching cryptanalysis in furtherance of a Ph.D. he hopes to earn from a Moscow University. He is allegedly responsible for much of ElcomSoft's AEBPR, most notably, the decryption algorithms it employs to circumvent Adobe's copyright protection controls.

In its first criminal prosecution under the DMCA, the Department of Justice ("D.O.J.") has indicted both ElcomSoft and Sklyarov for violations stemming from the development and marketing of ElcomSoft's AEBPR. (Adobe officers brought ElcomSoft's AEBPR to the attention of the FBI on June 26, 2001.) Sklyarov was most likely targeted largely because of his plans to enter the United States (making it easier for the D.O.J. to persuade a U.S. court to exert jurisdiction over him). The EFF tells the dramatic story as follows:

[Sklyarov] was invited to give a presentation at the DEF CON conference in Las Vegas about the electronic security research work he has performed as part of his PhD research. His presentation concerned the weaknesses in Adobe's eBook technology software. Dmitry was arrested at his hotel in Las Vegas, on 16 July, [2001,] as he was leaving to return to Russia.

(For the D.O.J.'s description of Sklyarov's arrest, and the events leading up to that arrest, read their July 17, 2001 press release.) In its August 28, 2001 press release, the D.O.J. reported:


The United States Attorney's Office for the Northern District of California announced that Elcom Ltd. (also known as Elcomsoft Co. Ltd.) and Dmitry Sklyarov, 27, both of Moscow, Russia, were indicted today by a federal grand jury in San Jose, California on five counts of copyright violations.
The defendants were each indicted on one count of conspiracy to traffic in technology primarily designed to circumvent, and marketed for use in circumventing, technology that protects a right of a copyright owner, in violation of Title 18, United States Code, Section 371; two counts of trafficking in technology primarily designed to circumvent technology that protects a right of a copyright owner, in violation of Title 17, United States Code, Section 1201(b)(1)(A); and two counts of trafficking in technology marketed for use in circumventing technology that protects a right of a copyright owner, in violation of Title 17, United States Code, Section 1201(b)(1)(C).
This is the first indictment under the Digital Millennium Copyright Act ("DMCA"), enacted by Congress in 1998.

Section 1201(b) of the Digital Millennium Copyright Act ("DMCA"), discussed above, reads:
(1) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that--
`(A) is primarily designed or produced for the purpose of circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof;
`(B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof; or
`(C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof.

Sklyarov's arrest prompted outcries of outrage from software developers, civil libertarians and all who generally oppose the DMCA (for ideological or "practical" reasons). See, for example, the EFF site dedicated to the controversy and He faced a maximum fine of $2.25 million and up to 25 years imprisonment. Not surprisingly, the D.O.J. promptly reached an agreement with Sklyarov, under the terms of which they have agreed not to prosecute him personally if he assists in their (criminal) prosecution of ElcomSoft. The D.O.J., in its December 13, 2001 press release, describes the deal as follows:
The United States Attorney's Office for the Northern District of California announced that Dmitry Sklyarov entered into an agreement this morning with the United States and admitted his conduct in a hearing before U.S. District Judge Whyte in San Jose Federal Court.
Under the agreement, Mr. Sklyarov agreed to cooperate with the United States in its ongoing prosecution of Mr. Sklyarov's former employer, Elcomsoft Co., Ltd. Mr. Skylarov will be required to appear at trial and testify truthfully, and he will be deposed in the matter. For its part, the United States agreed to defer prosecution of Mr. Sklyarov until the conclusion of the case against Elcomsoft or for one year, whichever is longer. Mr. Sklyarov will be permitted to return to Russia in the meantime, but will be subject to the Court's supervision, including regularly reporting by telephone to the Pretrial Services Department. Mr. Sklyarov will be prohibited from violating any laws during the year, including copyright laws. The United States agreed that, if Mr. Sklyarov successfully completes the obligations in the agreement, it will dismiss the charges pending against him at the end of the year or when the case against Elcomsoft is complete.

The trial against ElcomSoft - the first criminal trial under the DMCA - will begin on August 26, 2002 before Judge Ronald Whyte of the U.S. District Court for the Northern District of California. ElcomSoft faces a maximum fine of $2.5 million.

To date, ElcomSoft has moved to dismiss the indictments on the grounds that (among others): i) the District Court lacks subject matter jurisdiction, ii) the DMCA is in violation of ElcomSoft's Due Process rights (unconstitutionally vague and arbitrarily enforced) and iii) the DMCA is in violation of Elcomsoft's First Amendment free speech rights. On March 27, Judge Whyte denied the motion to dismiss for lack of subject matter jurisdiction. (A copy of Whyte's order is available here.) On May 8, 2002, Judge Whyte denied ElcomSoft's motion to dismiss the complaint on constitutional grounds. (A copy of Whyte's order is available here.)

(For more information, visit the EFF's website devoted to the controversy, an excellent resource for information and documents.)

II. The viability of the GPL and commercial open source licensing: MySQL and NuSphere

MySQL is an open source database application created by Michael "Monty" Widenius and his colleagues. Consistent with the tenets of the open source software movement (described above), the source code for MySQL is available to the public and software developers worldwide are encouraged to contribute improvements and additional functionalities. The MySQL application was commercialized by MySQL AB (a company formerly known as TcX Datakonsult AB) and is now available for free under the terms of the GNU General Public License ("GPL") or for a licensing fee for those customers wishing to remain unconstrained by the terms of the GPL. MySQL AB reports that it uses proceeds from commercial licensing to fund continued product development, including reviewing and incorporating contributions to the software submitted by the public.

NuSphere is a subsidiary of publicly-traded Progress Software Corporation, a "conventional" software development company. NuSphere's main product is a software tool named Gemini. Most fundamentally, Gemini is a proprietary "table type" for the MySQL database product. In essence, it is a component that delivers a greater degree of reliability and error-handling ("row-level locking, robust transaction support and reliable crash recovery") to users of the MySQL database.

Conflict between MySQL AB and NuSphere originated with NuSphere's release of "NuSphere MySQL Advantage," an application that combines the free MySQL database with NuSphere's proprietary Gemini functionality. Section 2(b) of the GPL license for MySQL reads: "You must cause any work that you distribute or publish, that in whole or in part contains or is derived from [MySQL] or any part thereof, to be licensed as a whole at no charge to all third parties under the terms of this License." Section 2 of the license concludes with a safe harbor from this provision, the effect of which the parties dispute. It reads:


These requirements apply to the modified work as a whole. If identifiable sections of that work are not derived from the Program, and can be reasonably considered independent and separate works in themselves, then this License, and its terms, do not apply to those sections when you distribute them as separate works. But when you distribute the same sections as part of a whole which is a work based on the Program, the distribution of the whole must be on the terms of this License, whose permissions for other licensees extend to the entire whole, and thus to each and every part regardless of who wrote it.
Thus, it is not the intent of this section to claim rights or contest your rights to work written entirely by you; rather, the intent is to exercise the right to control the distribution of derivative or collective works based on the Program.
In addition, mere aggregation of another work not based on the Program with the Program (or with a work based on the Program) on a volume of a storage or distribution medium does not bring the other work under the scope of this License.

The dispute, then, turns on whether NuSphere's Gemini is a derivative work which can only be distributed under the terms of the GPL or an "independent and separate work" entitled to safe harbor. A MySQL FAQ on the dispute reports that "[NuSphere MySQL Advantage] contains MySQL under GPL and Gemini. Gemini is statically linked to the MySQL code. This means that Gemini needs to be under GPL as well, but is not." Naturally, NuSphere maintains that it is in compliance with section 2 of the GPL.

In June of 2000, MySQL AB and NuSphere reached an interim agreement, under the terms of which NuSphere would pay MySQL up to $2.5 million in licensing fees while the parties negotiated a final agreement. (MySQL reports that NuSphere has paid a total of $312,501 under the interim agreement, with its final payment having been made in September of 2000.) Approximately one year later, in February of 2001, negotiations of the terms of the final agreement between the parties broke down and NuSphere filed suit against MySQL, alleging breach of contract, tortious interference with third party contracts and relationships and unfair competition. MySQL responded with a counter suit alleging trademark infringement, breach of the interim agreement, unfair and deceptive trade practices, and - most notably - breach of the GPL license. MySQL AB promptly moved for a preliminary injunction under its trademark and breach (of the GPL) claims. In July of 2001, NuSphere published the source code for its Gemini product - in what can only be seen as an act of retreat - and the company has subsequently made representations that it will cease commercial licensing of Gemini (in violation of the GPL).

Nonetheless, it came to be that the viability of the GPL as a binding agreement in the commercial software context could be tested for the first time in court. Judge Patti Saris of the U.S. District Court for the District of Massachusetts heard MySQL AB's preliminary injunction motion. On February 28, 2002, she granted MySQL AB's motion under its trademark claim (NuSphere's product, previously referred to as "NuSphere MySQL Advantage" is now simply dubbed Gemini), but denied relief under the breach of the GPL claim, writing:


With respect to the General Public License ("GPL"), MySQL has not demonstrated a substantial likelihood of success on the merits or irreparable harm. Affidavits submitted by the parties' experts raise a factual dispute concerning whether the Gemini program is a derivative or an independent and separate work under GPL P 2. After hearing, MySQL seems to have the better argument here, but the matter is one of fair dispute. Moreover, I am not persuaded based on this record that the release of the Gemini source code in July 2001 didn't cure the breach.
In any event, even if MySQL has shown a likelihood of success on these points, it has not demonstrated that it will suffer any irreparable harm during the pendency of the suit, particularly in light of the sworn statement that all source code for Gemini has been disclosed and the stipulation, given by [NuSphere parent] Progress during the hearing, that the end use license for commercial users will be withdrawn. Finally, because the product line using MySQL is a significant portion of NuSphere's business, Progress has demonstrated that the balance of harms tips in its favor regarding the use of the MySQL program under the GPL.

Progress Software Corporation v. MySQL AB, 2002 U.S. Dist. LEXIS 5757 at Page 3.

Adjudication of MySQL AB's breach of the GPL license claim will turn on a finding of fact as informed by Saris's interpretation of the GPL. The issue has been central to the dispute since its inception: Is NuSphere's Gemini an integrated product or a "independent and separate work"? Saris's order hints that "MySQL seems to have the better argument here."

Commentators disagree on which interpretation would be most favorable for the open source software movement. John Palfrey & Ed Kelly, in an analysis of the preliminary injunction proceedings before Judge Saris, explain:


The outcome of this dispute could have enormous implications. A victory for MySQL would favor what some consider the spirit of the GPL: the notion that code inspired by open source works should stay open source. A victory for NuSphere, on the other hand, might cut in favor of what some view as the long-term success of the open source movement, by ensuring that those who build off of open source materials can earn a profit.

(The full text of Palfrey and Kelly's analysis of the proceedings is available here.)

What remains undisputed by commentators is that Judge Saris's order, and the larger dispute, represents the achievement of a fundamental milestone for the open source movement. Judge Saris's order embodies treatment of the GPL as a valid, binding licensing agreement in the commercial software context. In fact, NuSphere did not dispute the validity or applicability of the GPL, an additional reason for those behind the open source software movement to claim success.