Although today it is uncontroversial that computer programs can be protected by copyright, in the early days of computer programs that was far less clear. It is largely through convenient timing and creative decisions that computer programs enjoy copyright protection today.

I.A. Early “Software”: The Piano Roll

Before the advent of digital computers controlled by computer programs, there was another device whose particular function was controlled by an encoded sequence of instructions – the player piano. In 1908, the Supreme Court looked at the copyrightability of piano rolls in the case of White-Smith Music v. Apollo. {FN1: 209 U.S. 1 (1908)} In a unanimous decision finding that piano rolls were not copies of the musical work under the copyright law as it existed at that time, and therefore not an infringement, the Supreme Court stated:

These perforated rolls are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce musical tones in harmonious combination. But we cannot think that they are copies within the meaning of the copyright act. {FN2: 209 U.S. at 18}

The Court concluded that if piano rolls and similar things were to be copies under the Copyright Act, it was the responsibility of Congress to amend the copyright law to cover them.

Congress made such a revision in the Copyright Act of 1909, but not by directly stating that works that can be perceived only through the use of a machine are protected by copyright. That would have to wait for the Copyright Act of 1976, whose Section 102 {FN3: 17 U.S.C. §102(a)} makes it clear that “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” are copyrightable.

Instead, Congress implicitly recognized the copyrightability of piano rolls and other musical recordings by giving the copyright owner for a musical work the exclusive right “to make any arrangement or record in which the thought of an author may be recorded and from which it may be read or reproduced.” {FN4: 35 Stat. 1, §1(e)} To balance this new exclusive right, Congress provided a compulsory license for anyone wishing to make his or her own recording of a musical work, provided that the composer had permitted at least one recording of the work. This compulsory license was carried over to the Copyright Act of 1976 as Section 115. {FN5: 17 U.S.C. §115}

I.B. The First Software Copyrights

There was little need for copyright (or patent) protection for early computer programs. There were few computers, and most software was custom-developed for in-house applications. It wasn’t until the early 1960s that computer programs were being actively marketed by a software industry besides the computer manufacturers. Before widely-marketed software, it was easy to protect by a contract or license agreement any computer program that was being marketed.

While a contract restricted what people receiving the software could do with it, particularly limiting their further distribution of the software, it could not bind people who were not parties to the contract. A person finding a computer program on the street could do anything he or she wanted with it. Copyright law, on the other hand, provides protection for a computer program even when no contract exists.

Under the Copyright Act of 1909, copyright protection required registration of the copyright at the time of first publication. That caused a problem for early computer programs because they weren’t generally published like books or other copyrightable works. (The problem went away when the publishing requirement was eliminated by the Copyright Act of 1976.) According to the Copyright Office, the first deposit of a computer program for registration was on November 30, 1961. North American Aviation submitted a tape containing a computer program. While the Copyright Office was trying to determine whether such a deposit could be registered, two short computer programs were submitted by a Columbia University law student to determine how a computer program might be registered. One computer program was submitted as a printout published in the Columbia Law School News on April 20, 1964, while the other was on magnetic tape. The copyrights for both student computer programs were registered in May 1964, and North American Aviation’s computer program was registered in June 1964.

Surprisingly, the Copyright Office did not seem to think that the Supreme Court’s White-Smith v. Apollo decision prevented the copyrighting of computer programs. It believed that punched cards, a primary medium for computer programs at the time, could be read by somebody familiar with the code used to represent characters on the cards, or could be printed to get a computer program listing intelligible to a person. Magnetic tapes, presumably, were just like a whole bunch of punch cards on a more convenient medium.

The Copyright Office concluded that a computer program was like a “how to” book, and therefore protectable by copyright just like that book, if:

(1) The elements of assembling, selecting, arranging, editing, and literary expression that went into the compilation of the program [meaning the creation of the program, not converting it from source code to object code] are sufficient to constitute original authorship. This is essentially a threshold question whether the “de minimis” maxim [that there has to be a minimum amount of originality for copyright protection] applies.

(2) The program has been published, with the required notice [which was a requirement for copyright at the time]; that is, “copies” (i.e. reproductions of the program in a form perceptible or capable of being made perceptible to the human eye) bearing the notice have been distributed or made available to the public.

(3) The copies deposited for registration consist of or include reproductions in a language intelligible to human beings [source code, rather than object code]. If the only publication was in a form that cannot be perceived visually or read [say, on magnetic tape], something more (e.g. a print-out of the entire program) would also have to be deposited. {FN6: Copyright Office Circular No. 61, 1964 version}

Since then, the copyright of computer programs has been generally accepted, and it became common for computer programs to contain a copyright notice, even if they were not formally registered. This happened more because software developers copied what others had previously done rather than because of a great understanding of copyright law and its relationship to computer software.

I.C. Software Under the 1976 Act

The Copyright Act of 1976, which became effective on January 1, 1978, made it clear that Congress intended software to be copyrightable. The definition of literary works in Section 101 states that they are:

works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied. {FN7: 17 U.S.C. §101}

Furthermore, the House Report discussing the Act states:

The term “literary works” does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories, and similar factual, reference, or instructional works and compilations of data. It also includes computer data bases, and computer programs to the extent that they incorporate authorship in the programmer’s expression of original ideas, as distinguished from the ideas themselves. {FN8: H.R. Rep. No. 94-1476 at 54}

Yet what was not clear was how much protection Congress intended to give computer programs, and whether there should be special exceptions to the exclusive rights of the copyright owners, as was the case for some other types of works. Because Congress didn’t want to further delay the passage of the Act (which had been in the works for about two decades), it appointed the National Commission on New Technological Uses of Copyrighted Works (referred to as CONTU) to report back about computer programs and other new technologies and put a placeholder provision in the Act:

§117. Scope of exclusive rights: use in conjunction with computers and similar information systems. Notwithstanding the provisions of sections 106 through 116 and 118, this title does not afford the owner of copyright in a work any greater or lesser rights with respect to the use of the work in conjunction with automatic systems capable of storing, processing, retrieving, or transferring information, or in conjunction with any similar device, machine, or process, than those afforded to works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title. {FN9: Pub. L. No. 94-553, 90 Stat. 2541, §117}

I.D. The CONTU Recommendations

CONTU held extensive hearings not only on protection of computer software but also photocopying and computer databases. On July 31, 1978, it transmitted its final report to the President and Congress. Along with other recommendations, CONTU recommended making two changes to the copyright laws to address computer programs.

First, it recommended a new definition be added to Section 101:

A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. {FN10: Final Report of the National Commission on the New Technological Uses of Copyrighted Works (CONTU Rep.), ISBN 0-8444-0312-1 (1978) at 12}

It also recommended that Section 117 be replaced with:

Notwithstanding the provisions of section 106, it is not an infringement for the rightful possessor of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:

(1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or

(2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

Any exact copies prepared in accordance with the provisions of this section may be leased, sold, or otherwise transferred, along with the copy from which such copies were prepared, only as part of the lease, sale, or other transfer of all rights in the program. Adaptations so prepared may be transferred only with the authorization of the copyright owner. {FN11: CONTU Rep. at 12}

CONTU explained its recommendations:

Because the placement of a work into a computer is the preparation of a copy, the law should provide that persons in rightful possession of copies of programs be able to use them freely without fear of exposure to copyright liability. Obviously, creators, lessors, licensers, and vendors of copies of programs intend that they be used by their customers, so that rightful users would but rarely need a legal shield against potential copyright problems. It is easy to imagine, however, a situation in which the copyright owner might desire, for good reason or none at all, to force a lawful owner or possessor of a copy to stop using a particular program. One who rightfully possesses a copy of a program, therefore, should be provided with a legal right to copy it to that extent which will permit its use by that possessor. This would include the right to load it into a computer and to prepare archival copies of it to guard against destruction or damage by mechanical or electrical failure. But this permission would not extend to other copies of the program. Thus, one could not, for example, make archival copies of a program and later sell some while retaining some for use. The sale of a copy of a program by a rightful possessor to another must be of all rights in the program, thus creating a new rightful possessor and destroying that status as regards the seller. This is in accord with the intent of that portion of the law which provides that owners of authorized copies of a copyrighted work may sell those copies without leave of the copyright proprietor.

Because of a lack of complete standardization among programming languages and hardware in the computer industry, one who rightfully acquires a copy of a program frequently cannot use it without adapting it to that limited extent which will allow its use in the possessor’s computer. The copyright law, which grants to copyright proprietors the exclusive right to prepare translations, transformations, and adaptations of their work, should no more prevent such use than it should prevent rightful possessors from loading programs into their computers. Thus, a right to make those changes necessary to enable the use for which it was both sold and purchased should be provided. The conversion of a program from one higher-level language to another to facilitate use would fall within this right, as would the right to add features to the program that were not present at the time of rightful acquisition. These rights would necessarily be more private in nature than the right to load a program by copying it and could only be exercised so long as they did not harm the interests of the copyright proprietor. Unlike the exact copies authorized as described above, this right of adaptation could not be conveyed to others along with the licensed or owned program without the express authorization of the owner of the copyright in the original work. Preparation of adaptations could not, of course, deprive the original proprietor of copyright in the underlying work. The adaptor could not vend the adapted program, under the proposed revision of the new law, nor could it be sold as the original without the author’s permission. Again, it is likely that many transactions involving copies of programs are entered into with full awareness that users will modify their copies to suit their own needs, and this should be reflected in the law. The comparison of this practice to extensive marginal note-taking in a book is appropriate: note-taking is arguably the creation of a derivative work, but unless the note-taker tries to copy and vend that work, the copyright owner is unlikely to be very concerned. Should proprietors feel strongly that they do not want rightful possessors of copies of their programs to prepare such adaptations, they of course, make such desires a contractual matter. {FN12: CONTU Rep. at 13}

I.E. Congressional Action

I.E.1. Adoption of the CONTU Recommendations, with an Unexplained Change

Congress adopted these recommendations as part of a bill “to amend the patent and trademark laws” that became Public Law 96-517 on December 12, 1980. However, there was one change made to CONTU’s proposed Section 117 – the term “rightful possessor of a copy” was replaced by “owner of a copy.” There is nothing in the legislative history of the bill that indicates why this change was made. Perhaps the best explanation is that Congress was concerned that people would make copies of software they had rented or borrowed from a public library, where they were rightful possessors during the time they had the software, and then not delete the copies when they return the software to the rental place or library. It would be strange if somebody were not a copyright infringer when he or she made the copy but became one when he or she didn’t take an action – deleting the copy after returning the rental software.

I.E.2. The 1990 Software Rental Prohibition

In any case, such concerns were unnecessary because Congress later passed the Computer Software Rental Amendments Act of 1990, which limited the “first sale” provisions of Section 109 for computer software:

Unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program (including any tape, disk, or other medium embodying such program), and in the case of a sound recording in the musical works embodied therein, neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program (including any tape, disk, or other medium embodying such program), may, for the purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession of that phonorecord or computer program (including any tape, disk, or other medium embodying such program) by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending. Nothing in the preceding sentence shall apply to the rental, lease, or lending of a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution. The transfer of possession of a lawfully made copy of a computer program by a nonprofit educational institution to another nonprofit educational institution or to faculty, staff, and students does not constitute rental, lease, or lending for direct or indirect commercial purposes under this subsection. {FN13: 17 U.S.C. §109(b)(1)(A)}

Although there are few cases that discuss the implications of Congress’s adopting “owner of a copy” rather than “rightful possessor of a copy,” in MAI Systems Corp. v. Peak Computer, {FN14: 991 F.2d 511, 26 USPQ2d 1458 (9th Cir. 1993)} the Ninth Circuit Court of Appeals noted that licensees of software “do not qualify as ‘owners’ of the software and are not eligible for protection under §117.” {FN15: 991 F.2d at 518 n. 5, 26 USPQ2d at 1464 n. 5} Peak was an independent service company that had used MAI’s diagnostic programs when it serviced customers’ computers. While the software licenses permitted the customers to run the diagnostic programs and the operating system, they did not permit third parties like Peak to load the software.

It is questionable whether a license should be allowed to preempt the rights granted to software users under Section 117. In general, Section 301 of the Copyright Act preempts any state law that “come[s] within the subject matter of copyright,” {FN16: 17 U.S.C. §301(a)} which the copying of a computer program to use it clearly does. (Other terms of a license, such as a limit on the warranties provided, are separate from copyright considerations and clearly not preempted by Section 301.) But in ProCD v. Zeidenberg, {FN17: 86 F.3d 1447, 39 USPQ2d 1161 (7th Cir. 1996)} the Seventh Circuit found that a license injects an additional element (the license itself) into the relationship between the copyright owner and the user, and so isn’t equivalent to copyright and is not preempted. This view is not universally held; it allows a copyright owner to “double-dip” by using copyright protection when it is desirable which negates the balances in the copyright act by claiming that the software is licensed.

I.E.3. The 1998 Addition to Section 117

In 1998, as part of the Digital Millennium Copyright Act, Congress reacted to the concerns raised by this decision by amending Section 117 to address third-party maintenance of computers

(c) Machine Maintenance or Repair.– Notwithstanding the provisions of section 106, it is not an infringement for the owner or lessee of a machine to make or authorize the making of a copy of a computer program if such copy is made solely by virtue of the activation of a machine that lawfully contains an authorized copy of the computer program, for purposes only of maintenance or repair of that machine, if–

(1) such new copy is used in no other manner and is destroyed immediately after the maintenance or repair is completed; and

(2) with respect to any computer program or part thereof that is not necessary for that machine to be activated, such program or part thereof is not accessed or used other than to make such new copy by virtue of the activation of the machine.

(d) Definitions.– For purposes of this section:

(1) the “maintenance” of a machine is the servicing of the machine in order to make it work in accordance with its original specifications and any changes to those specifications authorized for that machine; and

(2) the “repair” of a machine is the restoring of the machine to the state of working in accordance with its original specifications and any changes to those specifications authorized for that machine. {FN18: 17 U.S.C. §117(c)}

It is not clear whether these added provisions really solve the problem or are just a Band-Aid. It would have been far better if Congress had recognized that most software is distributed under a license – generally a non-negotiable shrink-wrap license – that arguably makes Section 117 a nullity if consumers are really just licensees and not owners of their copies of a computer program. Also, Section 117 addresses only “computer programs,” which are “set[s] of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” It does not provide special treatment for computer data, even though configuration files or sample computer programs or clip art regularly accompany computer programs and are often necessary for their operation.

Finally, Section 117 still does not recognize the reality of how backups of computer data are done, particularly on machines shared by a number of users. Archival copies of particular programs are not made. Instead, a copy of the entire file system, or those files that have changed since the last backup was made, is written with little regard for what is being copied. (Most backup procedures make a copy of everything on the disk being archived, not just computer programs as permitted by Section 117, but also computer data not addressed by Section 117.) But more problematic is the requirement of Section 117 that “all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.” It is difficult, if not impossible, to go to all the backup tapes and delete the specific files associated with a computer program when the license for that computer program expires.