William A. Tanenbaum [FNa1]
Copyright (c) 1996 by William A. Tanenbaum. All rights reserved.
SUMMARY OF CONENTS
SYNOPSIS *
I. Introduction *
II. The Subjects Intellectual Property Due Diligence Should Address *
III. Due Diligence Common to Patents and Copyrights *
A. Administration of Due Diligence Investigations
B. The Due Diligence Letter
C. Ownership
D. Security Interests
IV. Patent Due Diligence *
A. Maintenance Fees
B. Determination of the Remaining Patent Term
C. Determination of Whether the Contributing Party's Patents Cover the Contributed
Property
D. Determination of the Validity of the Patent
E. Determination of Whether the Contributed Property Infringes a Third Party's
Patent
Rights
F. Special Patent Litigation Issues
G. Competitors' Pending Applications and the Use of Foreign Patent Applications
V. Trade Secret Due Diligence *
VI. Copyright Due Diligence *
A. Computer Associates v. Altai
B. The Impact of Altai on Copyright Due Diligence
C. Determining Whether the Venture Has Obtained All of the Necessary Copyright
Rights From All of the Necessary Parties
VII. How Software Created for an Online Work Can be Created as a Copyright
Work Made for Hire When the Same Software, Standing Alone, Could Not Qualify
*
VIII. Special Internet Web Site Development Issues *
A. Web Site Development Agreements
B. Pre-Existing Rights
C. Hypertext Links
D. Newly Created Intellectual Property
E. European Privacy and Database Protection
F. Future Technology Clauses
G. Public Domain Works
H. Internet Domain Names
IX. Determination of Whether Patents and Copyrights Are Unenforceable
Because of 'Misuse' in Licensing Practices *
X. International Conflict of Laws for Internet and Online Copyrighted
Works *
A. Introduction to International Copyright Conflict of Laws Analysis
B. Illustrative Scenarios for International Conflict of Law Analysis
C. Illustrative Court Decisions
D. Copyright Classification of Works
E. Summary
Conclusion *
SYNOPSIS
The development of Internet Web sites and the increased formation of strategic
alliances, joint ventures, partnerships and similar enterprises for Internet
and online transactions has placed great importance on conducting proper
intellectual property due diligence for these enterprises. This applies
both to the "content" (the text, images, databases and so forth)
and "technology" (browsers and other computer software) of online
publications, products and services, and to any multimedia works which may
be incorporated in them.
If a party who contributes content or technology does not own or have an
adequate license to the intellectual property, then the joint venture and
its other members may face liability for infringement. An injunction may
issue prohibiting the offering of an online product or service or the operation
of a Web site because of an infirmity in the intellectual property rights
in a small part of the product, service or site.
Sophisticated intellectual property due diligence is required because:
(1) online publications and services are typically covered by a combination
of patent, copyright, trade secret and trademark law; (2) while first generation
online due diligence often focused on copyright rights in pre-existing "content,"
the current generation of Internet services, products and Web sites involve
software (and to some extent hardware) technology rights, which in turn
implicates patent rights, and it should be noted that merely because a product
is patented does not mean that it cannot infringe third party patents; (3)
recent software copyright infringement cases (for example, Computer Associates
v. Altai and Lotus Development v. Borland) have reduced the scope of copyright
protection for computer programs, which directly impacts how copyright registrations
should be filed, and new registration practices require new types of copyright
due diligence investigations; (4) recent copyright work made for hire cases
have made due diligence for copyright ownership increasingly important;
and (5) intellectual property rights are territorial, and therefore due
diligence must be international in scope, and moral rights and similar types
of rights are subject to very different rules overseas and must be carefully
investigated because of the importance of international markets. The article
reviews current requirements for patent, trade secret and copyright due
diligence for Web sites and online products and software. It also discusses
how software created for online works (and multimedia works) can be created
as a copyright work made for hire when the same software, standing alone,
could not qualify for work made for hire status. In addition, it outlines
the special due diligence issues which arise in developing an Internet Web
site. Finally, the article addresses international conflict of law issues
that arise out of the cross-border use of copyrighted online products and
services.
I. Introduction
This article addresses intellectual due diligence for online products and
services and Internet Web site development. It also highlights how international
copyright conflict of laws issues which arise in cross-border online transactions.
In addition, the article also discusses how software and other work created
for an online product can be created as a work made for hire when the same
work, standing alone, could not be.
An important trend in the Internet and online industries is the formation
of strategic alliances, joint ventures, partnerships and other similar forms
of business enterprises whereby different companies join together to develop
technology and create and market publications, products and services. (For
convenience, these enterprises will be referred to as "alliances"
or "ventures," and companies which are members of the alliances
will be referred to as "members" or "venture parties.")
Online products and services can be said to have two components: (1) "content,"
which includes text, visual images (both moving and still), sound, database
information, logos, cartoon characters and the like, and (2) "technology,"
which includes, browsers, encryption, search and retrieval and other types
of software, and, in some cases, hardware and combination hardware and software
components and security features. One characteristic of these alliances
-- which is often an important strategic advantage -- is that each venture
party contributes valuable technology or content to the enterprise and its
products or services (referred to in this article as "contributed property").
However, if the venture party does not own or have the right to grant the
alliance the right to exploit the contributed property in the intended fashion,
then the alliance and each of its members can face liability for intellectual
property infringement. Indeed, an injunction may issue prohibiting the offering
of online publications and services because of an infirmity in the intellectual
property pedigree of one small part of the product or service or the underlying
technology.
For this reason, the venture and each of its members should conduct intellectual
property due diligence in connection with the formation of the alliance,
and due diligence should be conducted as new content and technology is contributed
to the enterprise. The venture should be sure that it is receiving not only
the technological and commercial benefits of the contributed property, but
that the intellectual property rights therein are valid, and that the venture
is receiving the property free from infringement liability to third parties.
Each venture party's rights and share of profits in the alliance can depend
upon the strength of the intellectual property in the property it contributes
to the venture, and proper due diligence can determine whether the contribution
is worth the value which has been placed upon it. Moreover, in addition
to the alliance and venture parties, investors in the alliance (or in individual
venture parties) also may wish to conduct intellectual property due diligence
in order to assess the value of the alliance's technology and products,
the right of the alliance to commercially exploit the same, and the nature
of the intellectual property risks being assumed by the venture. Strategic
alliances often involve cross-licenses, particularly regarding patents,
and patent licenses raise special issues.
Sophisticated intellectual property due diligence is important in online
transactions for several reasons. First, online products and services are
typically subject to -- and best protected by -- overlapping forms of intellectual
property rights. For example, different aspects of online works can be simultaneously
protected by copyright, utility (i.e., "regular") patents, design
patents, trademarks, service marks, know-how and trade secrets. Second,
first generation online due diligence often focused on obtaining copyright
licenses ("permissions") for pre-existing "content"
works from third parties. However, current and future generations of online
products and services frequently require the acquisition of "technology"
rights, and this increasingly implicates patent rights, as illustrated by
the number of recently issued software patents. It is important to note
that merely because a product or process is patented does not mean it cannot
infringe other patents. In fact, patented technologies can and often do
infringe other patents. A patent does not grant the patentee the right to
practice his invention. Rather it grants the patentee the right to exclude
others from making, using or selling the patented subject matter. 35 U.S.C.
ss 154 and 271.
Third is the impact of recent developments in software copyright litigation.
For example, the Second Circuit's decision in Computer Associates v. Altai,
982 F.2d 693 (2d Cir. 1993) and the First Circuit's decision in Lotus Development
Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), affirmed
by an equally divided Court, 116 S.Ct. 804 (Jan. 1996) (per curiam) reduced
the scope of copyright protection for software by holding that certain aspects
of computer programs are not copyrightable subject matter. This has a direct
impact on how the copyright in computer programs should be registered, which
in turn requires an increased level of sophistication in the copyright due
diligence that must be exercised in evaluating copyright registrations and
related copyright prosecution practices. Altai, Lotus and other cases reflect
two emerging trends in software copyright litigation: the emergence of a
de facto separate body of copyright law for computer software, and the increased
use of patent law concepts in software copyright disputes.
Fourth, and related to this, is the impact of recent court decisions concerning
the copyright work made for hire and joint authorship doctrines. These require
careful due diligencip for copyright purposes is not the same as inventorship
for patent purposes, and the distinction requires, among other things, careful
analysis of the assignments the contributing party may need to obtain from
its employees and independent contractors in order to grant rights to the
venture and to other alliance members.
Fifth, online publications and services are increasingly intended for the
international market. Patent and trademark registration protection is territorial.
Copyrights have been quasi-internationalized by virtue of conventions and
treaties, but the scope of protection for computer software, especially
with regard to protection against non-literal infringement, depends on the
domestic laws of each country. Accordingly, intellectual property due diligence
must be international in scope. This means that adequate time must be reserved
to review documents in foreign government and foreign corporate files.
"Moral rights" in particular can present challenging problems
in the international context. Briefly stated, moral rights provide an artist
with the right to prevent others -- including those who have lawfully acquired
title and all of the copyrights in his or her work -- from making certain
changes to the work, and the right to be identified as the creator of the
work. Moral rights receive stronger protection in some European countries
than in the United States. For example, in some overseas countries, moral
rights may be inherited by an author's descendants although they would not
be in the United States, and certain foreign countries may recognize moral
rights in a work even if no such rights attach to the same work under U.S.
law. Similarly, a work created abroad may be encumbered by moral rights
although the same work, if created by an American citizen in the United
States, would not be (if, for example, if the work had been created as a
work made for hire under U.S. law).
Sixth, and finally, the results of intellectual property due diligence
will determine the nature of the representations and warranties which should
be made by, and the indemnities which should be received from, the party
contributing content or technology to the strategic alliance.
II. The Subjects Intellectual Property Due Diligence
Should Address
The basic intellectual property due diligence inquiries to be answered
in connection with online products and services and the development of Web
sites are as follows: (1) whether the venture party owns the contributed
property, or has a license right sufficient to grant the alliance the right
to exploit the contributed property in the intended manner; (2) whether
the intellectual property rights in the contributed property are valid and
enforceable; (3) whether any third party has any intellectual property rights
in the property, and if so what the nature of the interest is; (4) whether
the contributing party is bound by any agreement, obligation or restriction
which would prevent it from granting the intended rights in the contributed
property to the venture; (5) whether the contributing party (or other owner)
has "perfected" the intellectual property rights through proper
registrations, recordations and other filings in the U.S. patent, copyright
and trademark offices, and if applicable, in foreign government offices;
(6) whether there are defects in any such filings which need to be corrected;
(7) whether intellectual property rights have been and are being properly
kept in force through the timely payment of patent maintenance fees and
the like, both in the U.S. and abroad; (8) whether the venture's exploitation
of the contributed property will infringe an intellectual property right
of a third party; (9) whether the contributed property is the subject of
any past, pending or threatened litigation, and if so, what the effect of
this is, or is likely to be, on the venture's intended marketing of the
contributed property; (10) whether there are any aspects of the contributing
party's past or current licensing practices which give rise to patent or
copyright misuse or which would otherwise render the intellectual property
rights in the contributed property unenforceable; (11) whether the contributing
party has obtained proper U.S. and foreign moral rights waivers, permissions
to use actors' names or likenesses, and permissions from entertainment industry
guilds and unions and the like; and (12) whether the contributed property
is subject to any existing or contingent security interests or similar encumbrances;
This article discusses current requirements for effective patent, trade
secret and copyright due diligence.
III. Due Diligence Common to Patents and Copyrights
A. Administration of Due Diligence Investigations
Conducting and administering intellectual property due diligence requires
identification of the proper person or persons to provide the information,
obtaining and maintaining the information in a systematic way and developing
procedures to identify and secure missing information, and integrating this
material and supplementary information with the original information. In
addition, in appropriate circumstances, opinion letters regarding validity,
infringement and other matters should be researched and drafted by intellectual
property counsel.
B. The Due Diligence Letter
One of the best ways to administer the due diligence process is to send
an intellectual property due diligence letter to the contributing party.
This letter should be prepared by intellectual property counsel after a
review of the information which is initially available. It should contain
a numbered list of questions and document requests similar in fashion to
interrogatories and document requests used in litigation. In most cases,
the responses should be provided in writing using the same numbering system.
If a specific response is incomplete or if further information is needed,
supplemental requests should be made using the original numbering system.
When possible, a single person should be designated at the contributing
company to provide the responses to the due diligence letter. In some cases,
however, it is appropriate, depending on the technology involved, to have
different individuals responsible for different matters.
C. Ownership
Title and assignment records in the U.S. Copyright Office and the U.S.
Patent and Trademark Office (the "PTO") should be reviewed to
verify that the contributing party owns the contributed property or has
the necessary license rights. If the current owner received the rights from
a third party by assignment, that assignment should be recorded (i.e., "filed")
in the PTO or Copyright Office. If overseas rights are involved, foreign
government records should also be checked. In some cases, government title
and license recordation records are incomplete. This commonly occurs when
not all of the transfers have been recorded. Accordingly, time should be
allowed in the due diligence process to reconcile any gaps in the official
record indicated by information contained in corporate files.
D. Security Interests
Government records also should be investigated to determine whether the
contributed property is encumbered by any security interests. In some cases,
rather than grant a security interest, the owner may have actually assigned
ownership of the property to a creditor as a means to the same end. In such
circumstances, the property should be "re-assigned" to the original
owner. Occasionally a security interest will be mistakenly entered as an
assignment in official records. This means that the underlying documentation
may need to be reviewed. It should also be determined whether there are
any contingent events, other than failure to repay a loan, which would require
the assignment of intellectual property rights to a third party. In addition
to a search of the records in the PTO and the U.S. Copyright Office (and
their foreign equivalents, if appropriate), a search for Uniform Commercial
Code filings may be required in state and local government records.
IV. Patent Due Diligence
As noted, intellectual property issues arise both in connection with the
"content" of online products and services and the "technology"
used to access such products and services. The "technology" includes
browsers and other software tools. Patents are relevant to this type of
software. In this connection, the first issue is whether the software is
subject to patent protection. The second issue is whether the software infringes
any patents of third parties. The special areas of due diligence which should
be undertaken with respect to patents and pending patent applications are
discussed in this Section.
A. Maintenance Fees
Patent rights can lapse if government fees are not paid on a timely basis.
The due diligence investigation should determine if these fees have been
and are being paid. In the U.S., these fees are called "maintenance
fees," and are due periodically during the term of the patent. In Europe
and elsewhere, similar fees are called "annuities," and are due
each year. Significantly, annuities must be paid even during the application
phase before the patent issues. They must be paid after issuance to keep
the patent in force during its term.
B. Determination of the Remaining Patent Term
The remaining term of any patent should be verified to be certain that
it constitutes a commercially useful period. While many patents related
to software and online products or services may have issued only recently,
the issue of the length of the remaining term should not be overlooked.
In the case of an older patent, it is important to determine the remaining
term in order to assess the patent's value to the venture.
C. Determination of Whether the Contributing Party's Patents Cover the
Contributed Property
The claims of the issued patent, or the pending application if the patent
has not yet been allowed, should be reviewed to determine if they cover
the products, processes or methods which the venture party intends to contribute
to the alliance. In the case of an issued patent, the official prosecution
file (referred to as the "file wrapper") should be obtained from
the PTO and analyzed to determine whether any representations made by the
application to the PTO during prosecution limit the scope of the claims.
In the case of pending applications, any Office Actions issued by the PTO
also should be reviewed.
D. Determination of the Validity of the Patent
A "validity search" is conducted to determine whether the claims
of the contributed party's patents (or pending applications) are valid over
prior art. Prior art may include technical literature and other publications
as well as previously issued patents. Individual circumstances will indicate
whether a literature search is warranted.
E. Determination of Whether the Contributed Property Infringes a Third
Party's Patent Rights
In addition to analyzing whether the patent covering the contributed property
is valid, it is also important to determine whether the contributed property
infringes a third party's patent rights. This requires an identification
of relevant third party patents, if they are not already known, a determination
of whether those patents are subject to an infirmity which would make them
invalid, and an analysis of whether their claims are infringed by the contributed
property. An analysis under the "doctrine of equivalents" may
be needed even if the contributed property does not "read" exactly
on the patent's claims.
If allegations of infringement have been made against the contributing
party's patent in the past, or if for another reason the contributing party
retained patent counsel to issue an opinion letter on the validity of the
third party's patent and/or its infringement, those opinion letters should
be obtained and reviewed. Any qualifications in the opinions should be carefully
analyzed. Moreover, depending on their date and scope, the opinion letters
may need to be updated.
F. Special Patent Litigation Issues
If there are any past or pending infringement suits, relevant litigation
documents should be reviewed. If the contributing party is a defendant,
then the likelihood of a judgment of infringement should be assessed as
well as the scope of a potential damage award and the impact of any temporary
or permanent injunction. Treble damages and attorneys' fees can be awarded
in instances of willful infringement, and these issues must also be evaluated.
If the contributing party is a plaintiff, then there is the risk that its
patent may be held invalid in the litigation. Accordingly, the impact of
the loss of exclusivity and the loss of the revenue from patent royalties
must also be assessed.
G. Competitors' Pending Applications and the Use of Foreign Patent Applications
In some cases, the contributing party or other venture party may be aware
that a relevant U.S. patent application has been filed by a competitor.
The alliance may wish to evaluate those potential patent rights. By law,
pending U.S. applications are secret and cannot be disclosed to third parties
by the PTO. However, if foreign counterpart applications have been filed,
the general rule is that they will be published 18 months after the filing
date, whether or not the patent has issued at that time. Thus, obtaining
and reviewing the foreign application can provide good insight into a pending
U.S. application which is otherwise secret, because in many cases, the foreign
application is based on the U.S. filing.
V. Trade Secret Due Diligence
The continued value to the alliance of contributed property which is protected
by trade secret and non-disclosure agreements will depend upon how well
the contributing party and its employees protect proprietary information.
Similarly, other venture parties may need assurance that their confidential
information, know-how and trade secrets will not be disclosed outside of
the alliance by other venture parties. For these and other reasons, an investigation
should be made of the practices and procedures used by the venture parties
to protect trade secrets and materials received from third parties under
a duty of confidence.
In addition, it should be determined whether managerial, technical and
other key employees have signed confidentiality agreements, and whether
the company routinely conducts entrance and exit interviews covering intellectual
property matters. It should also be determined whether key employees have
recently left the company to join or set up a competing firm, or if there
is any potential liability for misappropriation because a new employee was
recently hired from a competitor.
VI. Copyright Due Diligence
A. Computer Associates v. Altai
The decision in Computer Associates v. Altai, supra, a computer software
case, has implications for both copyright registration and due diligence.
As a result of that case, the type of copyright due diligence which is now
required is more sophisticated than that required in the past. In Altai,
the Second Circuit adopted a three-step "abstraction-filtration-comparison"
test for determining whether a computer program is "substantially similar"
to another program so as to infringe that program. The court acknowledged
that this test will result in narrowing the scope of copyright protection
for computer software. During the second step in this test, the "filtration"
analysis, the "expression" in the program, which is protected
by copyright, is separated from the underlying ideas and the unprotectable
elements. In addition to ideas, the court identified three elements of the
program which are not entitled to copyright protection: elements of the
program which are already in the public domain; elements of the program
which are dictated by "efficiency" and elements of the program
which are dictated by "external factors."
The "external factor" criterion is noteworthy because it excludes
from copyright protection those aspects of program routines which are included
to satisfy one of the following: (1) the mechanical specifications of the
particular computer hardware on which the software is intended to operate;
(2) the compatibility (or "interoperability") requirements of
other software; (3) computer manufacturers' design standards; (4) what the
court referred to as the "demands of the industry being serviced;"
and (5) what the court referred to as "widely accepted programming
practices within the computer industry."
Thus, under Altai, copyright protection is reduced for those aspects of
the program which are included to achieve compatibility with other software
and hardware. This is particularly important in the online field, where
compatibility is important for commercial success.
B. The Impact of Altai on Copyright Due Diligence
Altai raises the possibility that a U.S. copyright registration for computer
software can be rendered unenforceable if the copyright claimant failed
to disclaim authorship of elements of the program which are dictated by
efficiency or external compatibility requirements. (A failure to disclaim
public domain elements may also render the registration unenforceable.)
The impact on due diligence is as follows.
First, due diligence must continue to cover such "traditional"
copyright subject matters such as verifying title to the copyright, and
when registration has occurred, reviewing the accuracy of the facts recited
in the certifications. Second, as a result of Altai, copyright due diligence
should also determine whether authorship has been claimed in those elements
of the program which that case held are not protectable, even if any "over-statement"
of copyright was made inadvertently as a result of a failure to sufficiently
tailor the copyright registration application to the teachings of Altai.
In short, the party conducting due diligence must analyze the copyright
prosecution file and registration statement from the perspective of a hypothetical
infringer who will seek to avoid liability by challenging the enforceability
of the registration. In order to conduct the type of due diligence suggested
by Altai, it may be necessary to interview programmers, systems analysts
and others involved in software development as well as those familiar with
external compatibility and industry standards. If appropriate, it may be
advisable to cure any potential deficiencies in the registration by filing
an application for a corrected copyright registration certificate.
If the alliance or any venture members are intending to file copyright
registration applications, they should conduct similar inquires to ascertain
the facts regarding the Altai factors in order to file proper applications.
It also should be noted that an invalidation of a U.S. copyright registration
or the entry of a judgment in a U.S. court that a copyright is unenforceable
may also have an impact on the ability of the copyright owner to enforce
the copyright overseas.
C. Determining Whether the Venture Has Obtained All of the Necessary Copyright
Rights From All of the Necessary Parties
The copyright in a work can be divided and can be assigned or licensed
in whole or in part by the copyright owner. Especially in the context of
pre- existing "content" works, this raises the possibility that
the owner or licensee of one of the copyright rights in the works may not
own all the copyright rights which are required to incorporate the work
into an online product or service (including a Web site). Accordingly, the
strategic alliance should conduct due diligence to verify that it is acquiring
all of the necessary copyright rights from all of the proper parties. It
is important to verify that the party granting specific rights has the rights
to grant.
Music rights illustrate this issue. In order to incorporate a musical work
into a product or service or use it in a Web site, the alliance will need
the following rights, which may be held by different entities: "mechanical
rights," which are required to manufacture and distribute physical
objects (such as CD- ROM's) in which the recording of a musical composition
is embodied; "master recording rights," which are required to
reproduce and distribute a specific performance of a musical composition
by a specific artist; "synchronization" rights, which are required
to synchronize the playing of musical compositions with visual images; and
"public performance rights," which are licenses required from
the composer to perform the work publicly.
Another example is provided by still photography. The practice in that
industry is for a traditional book publisher to receive only a limited grant
of rights. Often the publisher has the right to reproduce the photographic
image only in a specified size, at a specified resolution and only on a
single page. Such limitations are inconsistent with the intended use and
display of the image online (or in a multimedia work). Thus, the venture
may need a grant of rights from the photographer (or actual copyright owner)
rather than only from the publisher. The difficulties (and high transaction
costs) involved in identifying the proper rights of owners in pre-existing
works and in obtaining the appropriate licenses make it important for the
alliance to obtain strong intellectual property representations and warranties
from the contributing party and back them up with meaningful indemnities.
As a result of recent copyright work made for hire decisions, copyright
due diligence should also focus on whether the contributing party acquired
valid ownership rights in software written for it by employees and independent
contractors. The copyright "work made for hire" doctrine provides
an exception to the general rule that the author and initial owner of a
copyrighted work is the person who actually created the work. The work made
for hire doctrine has two branches. Under the first branch, the employer
is the author and owner of a work created by an employee within the scope
of his or her employment. Under the second branch, a work created by an
independent contractor, or by an employee outside the scope of his or her
employment, can be a work made for hire only if the parties expressly agree
in a written instrument that the work is a work made for hire and only if
the work itself fits within one of the following nine statutory categories:
a contribution to a collective work; part of a motion picture or other audiovisual
work; a translation; a supplementary work; a compilation; an atlas; an instructional
text; a test; or answer material for a test. 17 U.S.C. s 101.
In CCNV v. Reid, 490 U.S. 730 (1989), the Supreme Court adopted a test
for "employee" for copyright work for hire purposes which is more
stringent than the tests which had been previously followed in the Second,
Fourth and Seventh Circuits. CCNV and subsequent Court of Appeal and District
Court decisions establish a test for "employee" for copyright
purposes which essentially requires that the individual be a "W-2"
type of employee for tax purposes and receive employment benefits. As a
result, software written by computer programmers who are not W-2 type employees
will not qualify as a work made for hire. In addition, because software
does not readily fit within one of the nine statutory categories, the software
cannot be created as a work made for hire (at least in most cases) even
if the parties have entered into what is intended to be a work made for
hire agreement. Thus, the "hiring party" can acquire rights to
software created by an independent contractor, or by an employee outside
the scope of his or her employment, only if the hiring party receives an
assignment of the hired party's copyright rights.
When the contributing party represents that it acquired copyright rights
in software on a work made for hire basis, due diligence must verify that
the hired party was actually an employee for work for hire purposes, and
that the software was written within the scope of the employee's duties.
When the contributing party acquired copyrights from an independent contractor,
due diligence must verify that an adequate assignment was made.
Another issue which arises in connection with software written by an independent
contractor is whether the contractor knowingly or inadvertently incorporated
code owned by a prior "employer" because of a prior assignment
or because the code was originally created by the hired party as a work
made for hire. Thus, the intellectual pedigree of the copyright in code
contributed by an independent contractor (and in some cases, by employees)
also may need to be investigated.
VII. How Software Created for an Online Work
Can be Created as a Copyright Work Made for Hire When the Same Software,
Standing Alone, Could Not Qualify
The development of multimedia and online works (including copyrightable
aspects of Web sites) gives rise to the possibility that software which
is part of such a work can be created as a work made for hire even when
the same software, standing alone, would not qualify as a work made for
hire. The structure for this is as follows: (1) For copyright purposes,
an online or multimedia work can be considered a unitary work covered by
a single copyright registration under Copyright Office rules if the following
requirements are satisfied: (a) the copyright claimant is the same for all
elements in the work for which protection is sought, and (b) all such elements
of the work were published at the same time (excluding, however, pre-existing
elements, which in any event are not subject to a claim of authorship in
the registration application). Thus, a single copyright registration can
cover the software and other elements of the work. (2) Under the U.S. Copyright
Act, an audiovisual work is a work which consists of a series of pictorial
images (such as photographs, video, computer-generated images and so forth)
that are intended to be viewed as part of a series (e.g., a film strip)
-- even if the images themselves are not moving images -- together with
any accompanying sounds. A collection of photographs can be considered an
audiovisual work if there is audiovisual authorship in the panning and scanning,
fading in and out, and other editing techniques used to create a series
of images. (3) An online work can be treated as a unitary work for copyright
registration. A work which contains audiovisual elements can qualify as
an audiovisual work under the Act. To qualify, the work need not be predominantly
audiovisual in nature, but the audiovisual component must constitute more
than a small amount of the entire work. (4) Thus, when the software is part
of an online work, and such work is classified as an audiovisual work under
the copyright registration rules, the software is considered as part of
an audiovisual work, and because audiovisual works constitute one of the
nine statutory categories which qualify for work for hire protection under
the non-employee branch of the doctrine, the software can be created as
a work made for hire owned by the commissioning party.
The result is that software for an online work created by an independent
contractor, or by an employee outside the scope of his or her employment,
can be created as a work made for hire if the appropriate written instrument
is executed. The same analysis applies to software written for multimedia
works, which also can qualify as audiovisual works. In Schiller & Schmidt,
Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992), the court held that
the instrument must be executed before the work is developed to create a
work made for hire.
VIII. Special Internet Web Site Development
Issues
A. Web Site Development Agreements
Special intellectual property law issues arise in building an Internet
Web site. Typically a Web site owner will hire a Web site developer to design
and/or help build the site, and typically the developer will be an independent
contractor and not an employee of the site owner for copyright purposes.
In such cases, the copyright in the work created by the developer will not
be automatically owned by the Web site owner under the first branch of the
copyright work made for hire doctrine. (See discussion above in Section
VI.) To acquire copyright ownership, the Web site owner will need to secure
an assignment of the copyright (which should cover other intellectual property
rights as well) or have the work covered under the second branch of the
doctrine by structuring it as a contribution to audiovisual work as discussed
in the preceding Section. If the site developer subcontracts some of the
work to other independent contractors, then rights will need to be obtained
from such individuals as well.
From the point of view of the Web site owner, having the copyright owned
by the developer can present several potential problems. To retain their
value, Web sites must be constantly updated with new content, and as technology
evolves, with new interactive and other features. With respect to the content,
the Web site owner needs to own the copyright, or at least have adequate
license rights, so that the content can be modified and updated as the Web
site evolves. In many cases, copyright licenses will need to be obtained
not from the site developer but from the third party owners of pre-existing
content. With respect to design features of the Web and other copyrightable
material created by the developer, the Web site owner will be best able
to make, and have others on its behalf make, modifications and derivative
works of these features if it owns the copyright in them. A sufficiently
broad license can accomplish the same objective. Thus, from the Web site
owner's perspective, copyright due diligence should verify that the owner
has sufficient rights to update and modify the site. On the other hand,
the site developer probably will wish to retain intellectual property rights
in such work so that it can use work again in developing a site for another
client. The possibility that the developer will re-use such work in another
site, however, may be of great concern to the Web site owner, because the
owner may not wish to see distinctive features of its site replicated elsewhere.
The site owner and developer are likely to reach some compromise regarding
the developer's right to re-use its work product in other sites and do work
for other clients, and due diligence should confirm that the intellectual
property rights retained by the developer do not undercut the business agreement
reached on this point.
In addition to copyrights, patent rights and patent due diligence are also
involved in Web site development. Patent rights may apply to browsers and
other software used in connection with the site.
B. Pre-Existing Rights
When the Web site owner is the second or later client of the site developer,
the site owner should conduct due diligence to verify that the site developer
has the right to grant the site owner the rights to use the work product
for the site, and that these rights have not been previously assigned to
a prior client of the developer or are the subject of an overly restrictive
license.
C. Hypertext Links
Web site owners and developers will need to ensure that they and the site
users have the right to use (and if necessary, modify) hypertext links and
the "documents" that are linked to the Web site, and the right
to download, cache and make other electronic use of computer files that
can be accessed through the site.
D. Newly Created Intellectual Property
Another issue that will arise is which party will own the new intellectual
property created in the course of setting up or enhancing the Web site,
especially when the intellectual property is created through the joint efforts
of the parties. This issue is complicated where there is more than one party
on each side of the site development project or where different companies
form a strategic alliance or joint venture to operate the site or develop
it. (Such issues also arise in any strategic alliance or joint venture in
the online field.) From the copyright perspective, this activity may or
may not result in joint authorship and joint copyright, and copyright rights
might be shared by virtue of assignments or licenses. As noted above, patent
inventorship is different from copyright authorship. It covers different
subject matter and has different ownership rules. Furthermore, elements
of the ownership and license rights in new intellectual property will need
to be allocated between the parties. Often a party is a member of two or
more ventures that compete with one another. A concern that arises in this
context is that in making the allocation of rights to the different venture
parties, one or more parties may obtain rights that enable it to compete
with the venture itself.
E. European Privacy and Database Protection
The use and transmission of, and provision of access to, personal information
about individuals in an online database should be investigated to determine
if it complies with the provisions of the European Community Database Directive
where applicable. The Directive sets out certain privacy rights, and requires
obtaining permissions from individual "data subjects" and providing
notice in specified circumstances, cross-border data flow and real-time
processing can be subject to the Directive, and online use of data makes
this issue very important.
The Directive also provides a new sui generis right of protection supplements
copyright protection and is intended to prevent the unauthorized extraction
of data from a database. This right applies to both copyrighted and uncopyrighted
databases, and applies to an entire database and to substantial parts of
a database.
F. Future Technology Clauses
"Future technology" clauses are often used when a party wishes
to acquire rights to exploit a work (generally content) using emerging technologies.
Due diligence must determine whether the future technology clause is adequate
to the needs of the online environment. For example, it is common to use
a future technology clause to grant rights in "all media now known
or hereinafter invented." However, what rights this clause modifies
and where it is placed in the agreement are of critical importance. From
the perspective of the Web site owner, the future technology clause should
apply not only to the medium in which the works are contained, but also
to the manner in which the works will be distributed to, or accessed by,
the user. If this future technology clause modifies only the right of reproduction,
it will not necessarily provide the right to distribute the work in all
future media. Such distribution methods are obviously important in online
ventures. The scope of any exceptions and reservation of rights and their
impact on online services also must be carefully examined.
G. Public Domain Works
Web site owners and developers are often attracted to the idea of using
public domain works because of the difficulty and expense of obtaining adequate
licenses to use pre-existing works. However, several potential problems
can, in fact, make it very expensive to determine if a work in fact is in
the public domain and available for free. First, the term of copyright for
works which were not made for hire expires 50 years after the death of the
author or last surviving joint author. Because it can be difficult to determine
the relevant date of death, it can be difficult to determine if a work has
entered the public domain on this basis. Second, copyright protection for
works covered by the 1909 Copyright Act (generally those first published
before January 1, 1978) could lapse if the copyright registration had not
renewed before the expiration of the initial 28 year term. (Note that a
recent copyright amendment made renewal automatic for 1964-1978 works.)
However, even if the copyright in a work such as a motion picture lapsed
because of a failure to renew, it does not mean that a Web site owner or
developer can use all elements of the film without restriction. The sound
track in the film or the underlying work such as a novel or play may have
been separately registered and properly renewed. In that case, use of elements
of the film may infringe the surviving copyrights in those works, which
are not in the public domain. Rights then will need to be obtained under
those works.
Third, there is an international component to this issue. Some foreign
countries follow what is referred to as the "Rule of Shorter Term,"
which provides that if copyright protection lapsed in the United States
because of a failure to renew, then the work will also lose copyright protection
in the foreign country at the date renewal was due in the United States,
and this will occur even if the term of protection would otherwise be longer
in that country. Fourth, certain foreign works which entered the public
domain in the United States have had their U.S. copyrights "restored"
under another recent copyright amendment. Due diligence requires a careful
checking of U.S. Copyright Office and other records to ascertain the current
status of these works.
H. Internet Domain Names
Although treatment of this issue is beyond the scope of this article, it
should be noted that obtaining and protecting domain names and resolving
disputes regarding confusion between such names, and any trademarks that
may apply, is very significant issue, and the law is developing rapidly
in this area.
IX. Determination of Whether Patents and Copyrights
Are Unenforceable Because of "Misuse" in Licensing Practices
One aspect of intellectual property due diligence is ascertaining whether
rights are currently enforceable even if they were validly obtained. Patent
misuse is a well-established equitable defense to infringement liability.
The doctrine provides that the patent cannot be enforced until the misuse
is purged. Misuse results when the patent owner attempts to impose restrictions
on licensees beyond the scope of the patent grant. Examples include requiring
royalties after the expiration of the patent term; requiring the licensee
to license a portfolio of patents rather than the single patent desired;
and a "tie-out," or granting a patent on the condition that the
licensee refrain from dealing in products that compete with the patented
product. Significantly, misuse in a contract involving a third party is
sufficient to render the patent unenforceable even against a licensee for
whom there is no misuse in his license with the copyright owner. In Lasercomb
American, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990), the Fourth Circuit
recognized the doctrine of copyright misuse, which is based on patent misuse.
Copyright misuse may result when a copyright license imposes restrictions
on the licensee beyond the scope of rights granted by copyright to the licensor.
The impact of patent and copyright misuse on due diligence is as follows:
in appropriate circumstances, it may be advisable to review the licensing
practices of the venture party who owns a patent and/or copyright in order
to assess whether contract provisions with third parties constitute misuse
which would impair the enforceability of the intellectual property right,
and thus reduce its value to the venture.
X. International Conflict of Laws for Internet
and Online Copyrighted Works
A. Introduction to International Copyright Conflict of Laws Analysis
International conflict of laws rules complicate copyright due diligence
for Internet and online activity. Online publications and services are accessed
across national borders through use of the "global information infrastructure."
For example, the author of copyrighted material on the Net may have been
created by a citizen of one country, the work may be stored on a server
in another country, and the work may be distributed or copied without authorization
by a person in a third country. The copyright laws of different countries
may apply to different aspects of this and similar transactions, and the
laws of those countries may be different.
Copyright law has been only quasi-internationalized by international treaties
such as the Berne Convention for the Protection of Literary and Artistic
Works and the Universal Copyright Convention. At base, copyright laws are
territorial, and international treaties allow member states to enact domestic
laws which differ from one another. In addition, the Berne Convention was
written to accommodate two different copyright traditions. One is the Anglo-
American common law economic model of copyright, and the second is the continental
European civil law droit d'auteur (authors' rights) system. Partly because
Berne was written to accommodate these different systems, the standards
provided in the Convention may be insufficient to address the problems of
the dissemination of copyrighted works in digital form. [FN1]
As a result of this, the international nature of online transactions gives
rise to difficult international conflict of law issues with regard to copyrighted
works. This Section summarizes key conflict of law issues which should be
considered in structuring online transactions and in conducting copyright
due diligence.
The scope of protection afforded under the copyright laws of foreign countries
is important because of the limits on the reach of U.S. law and U.S. courts.
In general, acts of copyright infringement that occur outside of the United
States are beyond the reach of the U.S. Copyright Act and U.S. courts. However,
U.S. copyright laws may be applied in circumstances where the infringing
acts have a territorial connection with the United States, such as when
part of the infringing conduct occurs within the U.S. In addition, once
infringing activity is established in the United States, recovery of profits
from an infringer's extraterritorial infringement may be possible as well.
In some circumstances where there is jurisdiction over an infringer in the
United States, a U.S. court may hear a case involving infringement of works
subject to foreign copyright. The basis for exercising jurisdiction in such
circumstances is that copyright infringement is a "transitory"
cause of action and the defendant may not be subject to jurisdiction in
another forum that is convenient to the copyright owner.
Online authors and service organizations need to rely on copyright as
a means of achieving protection outside of their "home" country.
The Berne Convention is an international treaty by which member nations
recognize copyright protection for works originating within another member
country. More than 100 countries are Berne signatories as of this writing,
and they include virtually all of the industrial countries in the world.
[FN2] (Most countries
which are members of the Universal Copyright Convention are also members
of Berne.) In general, the Berne Convention relies on the principle of "national
treatment" in extending copyright protection to authors of other member
states. Under the principle of national treatment, Berne requires that a
member country provide the same level of copyright protection to works of
other member countries that it provides to works of its own citizens, subject
to the provisions of the treaty. (This is to be distinguished from the principle
of "material reciprocity," under which one country would extend
protection to the work of a foreigner only to the extent that the foreigner's
country extends the same, or equivalent, protection to works of the first
country.)
In addition, Berne prescribes certain minimum rights of copyright protection
and prohibits formalities (such as copyright notice and registration) as
a condition of copyright protection for works of foreign Berne countries.
(Berne allows a member country to use formalities as a condition of copyright
protection for works of its own citizens. The United States requires that
U.S.- origin and non-Berne foreign works be registered before an infringement
action can be brought in U.S. courts, but this requirement does not apply
to works of foreign Berne countries.) A member country may, however, provide
greater copyright protection than the required minimum. Illustrative scenarios
regarding principles of conflict of laws are provided below. In them it
is assumed that the acts take place in Berne member countries and that the
work at issue qualifies for copyright protection under the Berne Convention.
B. Illustrative Scenarios for International Conflict of Law Analysis (1)
Scenario One: A user in France accesses software copyrighted in the United
States and causes a copy to be downloaded into a computer in Sweden. Which
country's copyright law applies to the transaction?
The right to control reproduction is one of the exclusive rights granted
to the copyright owner in all Berne countries. An action for copyright infringement
may be brought where the defendant is subject to personal jurisdiction.
Under Berne, the law to be applied is the law of the country where the copyright
infringing activity took place, rather than the law of the country of domicile
of the author or of the country where the work was first published. In this
scenario, where did the infringing act occur? A likely possibility is that
the infringement was the making of an unauthorized copy of the work by downloading
the work into a computer in Sweden, where a copy was made and placed in
the computer's memory. Under this analysis, Swedish law would apply because
that is where the reproduction physically took place.
An argument could be made, however, that although the actual copy was made
in Sweden where work was downloaded, the "activity" causing the
infringing copy to be made actually took place in France, where the infringer
executed the commands to cause the downloading. If a court accepted this
line of reasoning, it would find that the infringement occurred in France.
The result of this would be that French law would govern the infringement.
A further twist on this example is provided in the next scenario, which
raises the issue of transmission. (2) Scenario Two: A copyrighted work is
digitally transmitted without authorization through an online connection
from Country A to Country B. Which country's copyright laws apply? Country
A, the country of origin of the transmission, where the transmitter resides,
or Country B, where the transmission is received? [FN3]
As noted, under Berne, the law to be applied is the law of the country
where the infringement "occurred." To decide this, the nature
of the infringement must be determined. In this hypothetical scenario there
are several possibilities. First, the individual on the receiving end of
the transmission in Country B might store the work on a computer memory.
As discussed in the first scenario, assuming that storage of the digital
work would constitute the making of a "copy" for copyright purposes,
the unauthorized reproduction would constitute the infringement, the law
of Country B would apply.
A second possibility is that the act of transmitting the work from point
X to point Y -- regardless of what happens at the receiving end -- itself
implicates one of the exclusive rights of the copyright owner. Proposed
copyright legislation now pending in Congress and based on recommendations
from the "NII White Paper" [FN4]
would modify U.S. copyright law to expressly state that the right to control
electronic transmission is part of the copyright owner's right to control
the distribution and publication of his or her work. (These are rights provided
in Section 106 of the U.S. copyright statute.) Under the second interpretation,
the act of initiating a download of data from the computer in Country A
would constitute a "transmission," triggering an infringement
within Country A (assuming that Country A recognizes the copyright owner's
right to control transmission) at the time that the downloading begins.
Accordingly, the copyright law of Country A would apply to a claim for infringement
arising out of transmission.
A third possibility is that instead of storing the work, the receiver would
convert the digital data into a form for presentation on a display of some
sort (as might be appropriate if the copyrighted work were representative
of an image or other graphical data). If it is assumed that the work is
publicly displayed, then another of the copyright owner's exclusive rights
is implicated, namely the right to control the public display of the work.
Under this reasoning, the "display" -- and the occurrence of infringement
-- would take place in Country B, and its law would apply.
The foregoing discussion assumes that there is no conflict among the copyright
laws of the countries in issue, and more specifically, that each country
has the same rules regarding the right to make copies (and that there would
be no fair use or equivalent defense available in one country but not the
others), the right to transmit the work, and the right to publicly display
the work. Where a conflict arises between the laws of Country A and of Country
B, however, the situation becomes more complicated, as illustrated in the
next scenario. (3) Scenario Three: A user in Country A takes action to make
a use of a work located on a server in Country B. The action would not be
an act of copyright infringement in Country A, but would be infringing under
the law of Country B. Which country's law applies?
Under this scenario, if the infringement is the unauthorized manipulation
of the copyrighted work while in digital form on the server, or the transmission
of the work from the server in Country B, then the "infringement"
would appear to occur in Country B, and its laws would apply. On the other
hand, if the alleged infringement involved the copying or publication of
the work in Country A, then the alleged "infringement" would occur
in Country A and the activity would be analyzed under its copyright laws.
There are several ways that the matter may be further complicated. First
would be the situation where the alleged infringing activity touches upon
both countries A and B. For example, suppose the work was manipulated on
the server in Country B to create a derivative work which was then copied
to memory in a computer located in Country A. Assume that the creation of
a derivative work on the server would be infringing conduct under the laws
of Country B but not under the laws of Country A, and further that Country
A's law provides the minimum level of protection required by Berne and that
Country B's laws exceed these requirements. A court sitting in Country B
would (looking at the law where the infringement occurs) likely apply the
law of Country B. However, if neither the creation of the derivative work
nor the subsequent copying constituted infringing conduct under the laws
of Country A, then a court sitting in Country A might apply the law of Country
A and find no infringement.
Another complicating factor may be the location of the chosen forum and
the nationality of the copyright owner. Assume for the moment that the copyright
owner is a citizen of Country B and brings suit in that country. Aivity
taking place in B would likely conclude that, under the general rule (looking
to the laws of the state where infringing conduct occurs), there was infringement
under the laws of B, and thus no reason to apply the laws of Country A.
Would a court sitting in Country A look to the laws of Country B and find
infringement? This will depend upon the nature of the rights and remedies
being enforced. Assume that the copyright owner is a citizen of Country
A and that for Berne purposes the work is considered a work of origin of
Country A. Assume further that Country A, as is permitted by Berne, provides
Berne-required minimum level of protection to works of foreign Berne countries,
but provides less than such level of protection for works of its own citizens.
In such a case, a court in Country A could apply the law of Country A to
this copyright owner and conclude that no infringement occurred. Furthermore,
under current European Community Directives, it is possible that domestic
laws enacted pursuant to an EC Directive could apply to nationals of European
Union member countries and prevail over the Berne Convention even if a country's
domestic law resulted in less protection for its citizens than is required
under Berne.
C. Illustrative Court Decisions
The cases discussed below indicate the complexity that occurs in a conflict
of law analysis and a court's decision on whether it will exercise jurisdiction
when the infringement takes place in a country other than the forum country.
(1) London Film Productions Ltd. v. Intercontinental Communications, Inc.,
580 F.Supp. 47 (S.D.N.Y. 1984)
A British Company sued a New York corporation in U.S. District Court over
infringing action that took place in several Latin American countries. The
court found that it had diversity jurisdiction and personal jurisdiction
over the defendant New York corporation. The court exercised jurisdiction
even though the infringing conduct occurred outside of the United States
because it viewed the infringement as "transitory" and that it
would be more practical to adjudicate the claims in one court rather than
piecemeal in each of the countries where the infringement occurred. (2)
Tyburn Productions Ltd. v. Conan Doyle, 1 All. E.R. 909 (Ch. Div. 1990)
A British company sought a declaratory judgment in a British court that
the company's use of Sherlock Holmes characters in the U.S. would not infringe
the rights of the estate of Sir Arthur Conan Doyle. The British court deemed
the copyright action to be local to the place of use, and declined to adjudicate
the case on the ground that it could not exercise the sovereign power of
the United States. (3) Herscovici v. Ste Karla, 146 RIDA 325 (Paris May
23, 1990)
A French court faced infringement occurring both in Italy and in France.
It concluded that the claimant was not limited to French law but that the
court should apply the forum-neutral Berne Convention so that the claimant
would obtain the benefits of the law of the country in which part of the
infringement took place, namely, Italy. (4) Subafilms Ltd. v. MGM-Pathe
Communications, Inc., 24 F.3d 1088 (9th Cir. 1994)
The Ninth Circuit held that the U.S. copyright laws did not apply where
all direct acts of infringement occurred outside of the U.S. and the only
act occurring in the U.S. was the defendant's authorization of the foreign
infringing activities. Because, according to the court, the U.S. laws have
no extraterritorial effect, there was no infringement claim under U.S. law.
D. Copyright Classification of Works
How a work is classified for copyright purposes is an important aspect
of international intellectual property due diligence. For example, if, as
discussed above, under U.S. law software is considered for copyright purposes
to be a contribution to an audiovisual work rather than a stand-alone product,
then it will be subject to the second branch of the work for hire doctrine.
If it is a work made for hire, then ownership due diligence is simplified,
and the ownership of the work is not subject to termination in the 35th
year, as would be the case if the copyright had been transferred by assignment.
Classification is important under the European system as well. The European
Software Directive contains a decompilation right. This is essentially the
right to reverse engineer software for the purpose of achieving interoperability,
and is an exception to the copyright prohibition against making an unauthorized
copy of the work. Under the Directive (and domestic law which implements
it), if software is classified as a computer program, then it is subject
to the decompilation right. This means that even a party without license
can decompile the program without liability. If, however, the work is classified
as motion picture, then the decompilation right may not apply, because that
right applies only to computer programs and not to other copyrightable subject
matter, and the decompilation could constitute infringement.
E. Summary
In summary, the current status of domestic copyright laws in Berne member
countries regarding electronic transmissions and displays (as well as public
performances in certain cases) have the potential to create complex conflict
of laws analysis for the online products and services across national borders.
This in turn complicates the copyright due diligence that must be performed
in connection with Internet and online strategic alliances and joint ventures.
Conclusion
The development of Internet and other online products and services place
special importance on intellectual property due diligence. The due diligence
investigation should reflect the nature of online and real-time uses as
well as the impact of recent patent and copyright law decisions. It should
also recognize the impact of European Directives and the conflict of laws
analysis that must be performed for international transactions.
FNa1. William A.
Tanenbaum is a partner in the Intellectual Property & Technology Law
Group in the New York office of Rogers & Wells. He is the Immediate
Past President of The Computer Law Association and the chairman of the Internet
and Online Task Force. Copyright (c) 1996 by William A. Tanenbaum. All Rights
Reserved.
FN1. The World
Intellectual Property Organization, which administers the Berne Convention,
has created a Committee of Experts on a Possible Protocol to the Berne Convention
to study technological developments since the last revision
FN2. A complete
list of the countries which are members of the Berne Convention, the Universal
Copyright Convention ("UCC"), international neighboring rights
treaties and bilateral copyright treaties with the United States and which
are subject to the European Community Software Directory is set forth in
the "Country-by-Country Guide to International Copyright Treaty Membership"
written by William A. Tanenbaum. The Guide also indicates which countries
are members of Berne but not the UCC and which are members of the UCC but
not Berne.
FN3. It is assumed
that the transmission would not be subject to any national or international
laws that address or regulate satellite communications.
FN4. This is the
Final Report (issued September 5, 1995) of the Working Group on Intellectual
Property Rights of the Clinton Administration's Information Infrastructure
Task Force.