13 NO. 9 Computer L. Strategist 1
Computer Law Strategist
January, 1997


New Class of Disputes Between Programmers and Users

Andrew J. Wu [FNa]

Copyright (c) 1997 Leader Publications,
a division of The New York LawPublishing Company; Andrew J. Wu

THE GROWING use of computer programs as tools to generate copyrightable works may result in a new class of disputes between computer programmers and the users of their programs, and a new issue to be addressed in computer software licenses: Who owns the copyright to the computer-generated works?
When a copyrightable work is generated with the aid of a computer program, the question arises of whether the person who programmed the computer program has a claim to the copyright of the work created with the help of that program. For instance, a magazine editor might use a computerized clip-art editor to cut and paste images into the text of his works. A movie maker might use a digital image processing program to alter a motion picture. A musician may use Musical Digital Interface (MIDI) technology to compose music. Even a computer programmer may use an object-oriented programming tool (OOP) to generate a new computer program.
Imagine a computer program that generates kaleidoscope images based on a handful of user inputs. Maybe the user scans in a company logo, or a self- portrait; maybe the user just types in "sailboat" or "pyramid." The program then generates a kaleidoscope image incorporating the user's input. Under the traditional rule, promulgated by the National Commission on New Technological Uses of Copyrighted Material (CONTU), the user of a computer program is the copyright owner of the work, and the computer program is a mere tool of the user. [FN1] This rule makes sense if the user supplies the lion's share of the creativity, as in the case of an author using a word-processing program. However, the rule makes less sense if the user's contribution is limited to typing in "sailboat" and then letting the program generate an image.
As computer programs become more and more sophisticated, so that more of the creativity in a program's output comes from the computer program rather than the user of the program, a more complicated analysis is required.
When faced with this issue, the following questions should be addressed:
- Is the copyrighted work a derivative work based on the computer program?
- Is the copyrighted work a derivative work based on some other pre-existing work?
- Does the computer programmer meet the requirements of copyright ownership?
- Does the user of the computer program meet the requirements of copyright ownership?
- Is some sort of joint authorship appropriate?

Cut-and-Paste Programs
Many computer programs, such as clip-art programs, expert system programs and OOP systems, can be used to generate copyrightable works that are derivative works based on the computer program itself. A derivative work is defined by the Copyright Act as a work based on one or more pre-existing works in which a work may be recast, transformed or adapted. According to the legislative history accompanying passage of the 1976 Copyright Act, a secondary work is derivative of a primary work if it incorporates elements of expression from a first work. [FN2] Moreover, the copyright owner of the first work has the exclusive right to create derivative works based on the first work, and any unauthorized derivative works based on the first work are a violation of the first work's copyright.
For instance, an OOP system may contain blocks of computer code sub- routines that the user can cut and paste together into a new computer program. The subroutines are recognizable blocks of expression that may be contained in both the OOP system and the new program generated using the OOP system. If the OOP system is copyrighted, then the new program may be a derivative work based on the OOP system. For these types of programs, the software license for the computer program should expressly address what rights, if any, the user has to works generated using the program. For instance, some clip-art programs have software licenses that restrict the user from selling works generated by the program.

Editing and Manipulation Programs
Other computer programs may be used to produce derivative works that are based, not on the computer program, but on some other work. For instance, a computer program that translates a user's document from one language to another, or a program that allows the user to manipulate a digitally processed image or sound recording, would produce a derivative work. [FN3] The modified image, sound recording or translation would be a derivative work based, not on the computer program, but rather on the image or document being manipulated. The primary copyright issue in these situations derives from the copyright on the image or document being manipulated. A possible dispute might arise if A uses a computer program to modify an image in which B holds a copyright.

The Bundle of Rights
When an unauthorized derivative work is created, both the author of the earlier work and the author of the subsequent derivative work have certain rights to the derivative work. Because the earlier author has the exclusive right to make derivative works based on the earlier work, the author of the derivative work cannot receive a copyright on the derivative work. For example, the copyright owner of a video game could prevent exhibition of a motion picture generated by digital manipulation of the video game.
However, the author of the derivative work may also have certain rights resulting from that author's contribution of original expression to the work. As the Supreme Court stated in Stewart v. Abend, 495 U.S. 207, 223 (1990), the aspects of a derivative work added by the author are the author's property, but the elements drawn from the pre-existing work remain on grant from the copyright owner of the pre-existing work.
For instance, say Programmer A uses Programmer B's OOP system to produce a computer program that is a derivative work based on the OOP system. Programmer A has contributed the logical organization of the subroutines, and has also probably contributed original computer code to the derivative program. Even if Programmer A failed to receive authorization to make derivative works based on the OOP system from Programmer B, Programmer A would nonetheless have certain rights to the derivative work. Although these would not be "ownership" rights that would allow the user to distribute the work, the rights would allow Programmer A to preclude Programmer B from distributing the derivative work. [FN4]
Clearly, a dispute between Programmer A and Programmer B could be avoided by stating in the license for the OOP system that Programmer A may claim copyright protection for works generated by the program.

Non-Derivative Works
A more complicated analysis is required when a computer program is a primary source of the original expression in a copyrightable work, but the computer- generated work does not contain copies of any expression contained in the program. For instance, two books have been registered at the Copyright Office which were written by computer programs: "The Policeman's Beard is Half Constructed" (1984) and "Just This Once" (1993). Many works of art and music have also been generated using computer programs. Resolving the copyright ownership of these types of work may require not only an extrapolation of existing copyright rules, but the formulation of some new rules.

Ownership by the Programmer
In a situation in which a copyrightable work is created by minimal input from the user of the computer program, such as the example given earlier where the user types in a single instruction, and the computer program generates a kaleidoscope image of the subject, the major obstacle confronting the programmer's claim to copyright ownership of the kaleidoscope image is that the programmer did not cause the image to be "fixed in a tangible medium of expression" as required by the Copyright Act, 17 U.S.C. 102(b). How can the programmer be the author of the image if the programmer is never aware that the image was created?
The best argument for the programmer in response to the fixation problem is that where the output of the program is fairly repeatable, the programmer has a better claim to fixation than the user. If the program generates the same image every time a user provides a certain command, then the creativity displayed in the output must have come from the programmer. After all, it would be strange to ascribe authorship to the user where the same output would have been generated no matter which human author caused the output to be generated.
In a case dealing with video games, this same reasoning was followed in holding that the computer programmer of the video game was the copyright holder of the audiovisual displays in the game, even though the game player's performance determined in part what display appeared on the screen. [FN5]

Ownership by the User
In a situation in which the computer program output is not repeatable, the major obstacle confronting the user's claim to the copyright is the minimal standard of originality. Because copyright law is not directed to passing judgment on the creativity of works of authorship, the level of creativity required to qualify a work for copyright protection is low. In a widely cited case, a court once stated that "a copyist's bad eyesight, or defective musculature, or a shock caused by a clap of thunder, may yield sufficiently distinguishable variations." [FN6]
However, while the standard is low, it is not non-existent. A single word or slogan must have some value as a composition. Therefore, a user probably would not satisfy the originality requirement by typing in a single word, such as "run" or "compose." Unfortunately, no clear rule exists regarding the circumstances under which the user, or the programmer, should be considered the author of a computer-generated work.
Nevertheless, in many situations such as a word-processing program, or a mechanical drafting program, it is clear that the computer program still functions as a tool of the user, and the user should be considered the copyright owner.

Joint Authorship
The computer programmer and the user of the computer program should be considered joint authors of some computer-generated works. A joint work is a work prepared by two or more authors with the intention that their contributions be merged into interdependent parts of a unitary whole. Under the majority rule, the contribution of each joint author must rise to the level required for copyright protection. [FN7] Furthermore, courts have interpreted the "unitary whole" to require that each joint author must intend that each joint author will have an interest in the copyright. [FN8]
A computer-generated work having repeatable elements of expression as well as significant expression contributed by the user might be a joint work if both the programmer and user intended to create a joint work. For instance, the software license or advertising materials accompanying the computer program might state that the user would be a "co-author" or "joint author" of works generated using the computer program.

Increasingly Sophisticated Computers
Clearly, a bright-line rule, such as the CONTU rule, cannot encompass the wide variety of works generated by computers. As computer programs become increasingly more sophisticated, complicated copyrightable works will be generated with increasingly less user input, so that programmers will have a stronger claim to copyright ownership of computer-generated works.

FNa.Andrew J. Wu is an associate at Sidley & Austin, in Chicago. The opinions expressed herein are solely those of the author. The ideas presented in this article are analyzed in detail in the author's upcoming article, "From Video Games to Artificial Intelligence: Assigning Copyright Ownership to Works Generated By Increasingly Sophisticated Computer Programs," to be published in the AIPLA Quarterly Journal.

FN1 See National Commission on New Technological Uses of Copyrighted Works, Final Report, 45-46 (1979) (hereinafter, "CONTI Report").

FN2 H.R. Rep. No. 1476, 95th Cong., 2d Sess. 55 (1976).

FN3 Translations are included within the definition of derivative works, under 17 U.S.C. 101.

FN4 See, e.g., Russell v. Price, 612 F.2d 1123 (9th Cir. 1979) (holding that copyright owner of play could prohibit exhibition of film derived from the play), cert. denied, 446 U.S. 952 (1980)).

FN5 Williams Electronics Inc. v. Artic International Inc., 685 F.2d 670 (2d Cir. 1982).

FN6 Alfred Bell & Co. v. Catalda Fine Arts Inc., 191 F.2d 99, 104-5 (2d Cir. 1951).

FN7 See Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) and Erickson v. Trinity Theater Inc., 13 F.3d 1061 (7th Cir. 1994).

FN8 See Childress, supra, at 507-508.