| A multimedia work will contain computer software to operate the program. This software can be developed by the multimedia creator or licensed from another. Since software is copyrightable matter,84 it cannot be freely borrowed unless it is in the public domain.
The Fair Use Doctrine has been successfully invoked to protect programmers who reverse engineer another's program although the process entails making a reproduction of the entire work.85 In Sega Enterprises Ltd. v. Accolade Inc.,86 a video game developer disassembled a copyrighted program in order to make a compatible game.
In Apple Computer, Inc. v. Microsoft Corp.,87 the court held that the "look and feel" of Apple's interface is not protectable expression.88 The court was unwilling to give Apple a monopoly over the concept of a user-friendly graphical user interface. Another case, however, has held that the menu commands and menu command structure of the Lotus 1-2-3 spreadsheet program are protected expression.89 Here, the two spreadsheet menu trees were virtually identical. Thus, computer developers can borrow such ideas as that of using a graphical user interface (GUI), and offer functions similar to other programs. The identical copying of another program's icons, however, will likely be an infringement.
The processing and transmission of computer programs raise interesting copyright issues. One court has held that merely loading a computer program from a disk into the random access memory (RAM) of a computer is a "copying" of the program, and therefore a violation of copyright unless otherwise privileged.90 In Florida, an operator of a computer bulletin board was sued by Playboy Enterprises when subscribers downloaded some Playboy photos. The photos had been uploaded by subscribers, not the operator who had no knowledge of the photos until he was served with a complaint. The court found that the transmission of the photos was a public "display" and thus a violation of Playboy's copyright.91 The fact that the operator was unaware of the infringement was no defense since intent or knowledge is not required for one to infringe another's copyright. Producers who desire to borrow or emulate computer programs should proceed with caution and seek legal advice early.
Software names, logos, and symbols may also be protected under state and federal trademark law. Recently, a federal appeals court held that the title of a newspaper column may be a trademark although the column was not marketed as a separate feature. Thus, a subsidiary component of the newspaper was deemed eligible for trademark protection. By analogy computer program icons could be protectable trademarks.92
Software can also be protected under patent law which protects the "Useful Arts," meaning any new and useful process or machinery.93 Thus, multimedia software, the process, the hardware, and the machine, are patentable.
A patent must be applied for and granted by the government after a determination has been made that the applicant is eligible for it. If the patent is granted, the inventor receives a seventeen year monopoly on using, making, or selling the invention.94 The United States grants patents to the first inventor, not the first person to file a patent application. Therefore, if two parties contest ownership to an invention, the first inventor is entitled to the patent.95
A patent cannot be granted when the subject matter sought to be patented and the prior art are such that the subject matter was obvious to people with ordinary skill in that art.96 It can be difficult to determine non-obviousness in computer program inventions because the Patent Office has lacked extensive records for this type of useful art. A "prior art search" is used to determine the state of the prior art in the field of the invention. If software is developed by an outside contractor, the agreement between the parties needs to specify who will own the copyright and any patent to the work, and which rights are being licensed. The producer should have a written employment agreement with a covenant that the employee or independent contractor assigns all copyrights, inventions (whether patentable or not) and trade secrets developed in the course of employment to the employer.
If software is licensed for use in a multimedia program, the license agreement needs to spell out what uses can be made of the acquired software. Can the software be used to develop a new product? Can it be incorporated into the final work? If a license fee is to be paid, is it a one-time fee for unlimited use or a per unit royalty? Does the owner of the borrowed software share in the copyright of the new work?
Footnotes and citations:
84 17 U.S.C. § 101 (1994).
85 Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832 (Fed. Cir. 1992).
86 Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) cited in, Christopher Ottenweller, Emerging Issues in Intellectual Property Practice, in Emerging Issues in Copyright Law pg 91, (CEB Program Handoobk, April 1974).
87 Apple Computer, Inc. v. Microsoft Corp., 799 F. Supp. 1006 (1992).
88 Id.
89 Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D. Mass 1992), 831 F. Supp. 202 (D. Mass 1993), 831 F. Supp. 223 (D. Mass. 1993).
90 Mai Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993).
91 Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
92 James F. Brelsford, Trademark Case Will Affect Multimedia, San Francisco Daily J., Intellectual Property Supplement, March 30, 1994, at 14.
93 35 U.S.C. § 101 (1994).
94 35 U.S.C. § 154 (1994).
95 35 U.S.C. § 154(g) (1994).
96 35 U.S.C. § 103 (1994).
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