Re: "Thumbnails" of scanned pages-Reply

From: Karjala, Dennis <DENNIS.KARJALA[_at_]ASU.Edu>
Date: Mon, 30 Oct 1995 14:23:00 -0800 (PST)

John Noble writes:

>> 
>>Dennis S. Karjala wrote:
>>> 
>>>      I simply reiterate the view that it shouldn't make any difference 
>>> whether the conditions of the shrinkwrap license are brought to the 
>>> attention of the purchaser.  The copyright balances are drawn for the 
>>> benefit of society as a whole.  As to published works, we cannot allow 
>>> a formal "contract" device to override the policies underlying the 
>>> idea/expression distinction, the first-sale doctrine, fair use, and the 
>>> many other limitations on copyright owners' rights.  If we could, and 
>>> assuming a similar device could be used for functional works (the 
>>> subject matter of patent), both copyright and patent law would become 
>>> mere matters of contract. Is that all Congress thought it was doing in 
>>> debating the 1976 Act for 20 years?

>
> It seems to me that this analysis threatens a whole body of licensing law.
> Unless I misunderstand the breadth of your position, you would invalidate
> thousands, if not hundreds of thousands, of license agreements, shrinkwrap
> or not, which purport to alter/supplement the rights set forth in the
> Copyright Act. As I understand it, software for client-server and mainframe
> systems is almost always licensed with restrictions on use for the benefit
> of third parties, or with payment schedules which depend on the level of
> usage or capacity of the hardware on which they are installed. . . [snip]
>
> I understand the argument that shrinkwrap licenses are or may be invalid
> as contracts of adhesion, though I think that people mistakenly believe
> that any unilateral contract imposed without opportunity for bargaining
> is perforce invalid. But your position seems to be much more radical.
> You are contending, aren't you, that I, the customer, cannot opt for the
> fewer/more limited rights of a licensee at a price presumably less than
> I would have to pay for the rights attending ownership under the Copyright
> Act, because that is all that the copyright owner is permitted to sell.

     A key phrase in my short summary above of an earlier, more extended posting is "As to published works". It may be that traditional "publication" is not quite the borderline that is necessary, but I was trying to capture the public policy interest that the copyright balances reflect for traditional works that are widely distributed, without any bargaining over their use. The example I gave earlier was a shrinkwrap license in a book. Take a book describing a (copyright-unprotected) medical procedure. Would a "license" on the cover purporting to bind the purchaser of the book not to use the described procedure without paying a royalty, or not to teach the procedure to others, or not to write a copyrightnoninfringing  book describing the same procedure, be enforceable? If not, is it simply because of the word "adhesion", which is a matter of state contract law? (In fact, most states enforce "adhesion contracts", such as the old air travel insurance formerly available in airports out of machines. They simply interpret ambiguities against the drafter.)

     I suggest that, on these facts, state contract law adversely impinges on federal copyright policy and these contracts are--at least as to the important features of the copyright balance, such as idea/expression, nonprotection of facts, and fair use--unenforceable as preempted by federal copyright. I never intended to suggest the unenforceability of use restrictions that have been negotiated face to face. In a sense, access to unpublished works is available only to those who expressly agree to abide by the restrictions. Copyright owners have the right to keep their ideas secret, so if a work is not widely distributed, enforcement of the contract does not remove anything from the public that it would otherwise have. Professor Kriess has recently published an article in 43 U.C.L.A. L. Rev. 1 (1995) in which he uses a notion of "commercialization" as the touchstone implicating the quid pro quo of the copyright balances. I have not tried to think it through carefully in the present context, but something along these lines seems to me worth considering.

     But the basic point is that, notwithstanding our having brought unpublished works under federal copyright in 1976, the basic balances have been chosen with the model of the widely distributed (commercialized?) work in mind. Prior to bringing computer programs under the copyright umbrella, no one, apparently, thought of trying to use shrinkwrap licenses to restrict uses of widely distributed works beyond what would be permitted by copyright. My guess is that most people would find such an attempt offensive in the context of books or other traditional works. I believe Congress would expressly have preempted this kind of "contracting" for traditional works, like books, had anyone thought of it in 1976. (After all, no publishers had used the scheme, anyway, so the lobby for it may not have been very strong.) I suggest that such "contracts" are equally offensive in the context of widely distributed digital works, such as computer programs and databases.

Dennis S. Karjala
Professor of Law
Arizona State University
Tempe, Arizona 85287
602-965-4010
602-965-2427 (fax)
dennis.karjala[_at_]asu.edu Received on Mon Oct 30 1995 - 21:28:42 GMT