Reverse engineering IP.

• Author: Evans, Tonya M.
• Position: Intellectual property

INTRODUCTION PART I: SAMPLING PATENT TO REMIX COPYRIGHT: THEORY IN PRACTICE PART II: THE INTELLECTUAL PROPERTY MONOPOLIES A. Tale of Two Regimes B. Patent 1. Policy Considerations and the Law C. Copyright 1. Policy Considerations and the Law 2. The Copyright Act 3. Fair Use 4. A Closer Look at Originality 5. Overprotection and Misuse a. Overprotection b. Misuse PART III: REVERSE-ENGINEERING A. Reverse Engineering in the Traditional Manufacturing Context B. Reverse Engineering in the Digital Context C. Reverse Engineering & Copyright 1. Fair Use 2. The Digital Millennium Copyright Act D. The Chip Act PART IV: THE IP AXIS: WHERE DISTINCT REGIMES CONVERGE CONCLUSION INTRODUCTION

"Plagiarism is necessary, progress implies it." (1)

Michalis Pichler

With the advent of the Internet and digital technology, the twenty-first century has ushered in a quantum increase in the ways to create, disseminate, and commercially exploit creativity. Digital technology allows anyone to create perfect digital copies of protected works in the comfort of their homes and to distribute them to tens, hundreds, thousands, and even millions of people with the click of a hyperlink via a handheld device. Indeed, copyright touches more ordinary people in substantial ways in this age of information than at any other time in American copyright history. (2)

The copy-and-paste reality and firmly entrenched user expectations to access, reuse, remix, and share creative output instantly via e-mail, blogs, and social networks are far afield from what Congress originally contemplated when it responded to its constitutional call and enacted the first version of the Copyright Act to solve the public goods problem inherent in inexhaustible goods like intellectual property. (3)

Art forms that rely primarily on appropriation are also often at odds with the current copyright framework. For example, hip-hop music pioneer Public Enemy (4) (P.E.] incorporated hundreds of recognizable and unrecognizable aural fragments into each of their songs before courts began to sanction aggressively the practice of music sampling. (5) Their status as a trailblazer in the practice of digital sampling was mostly a result of P.E.'s "collage" style of music creation. (6) P.E. incorporated bits and bytes (7) of pre-existing material to create new musical tracks over which they rapped about political and social issues of race, racism, economics, violence, police brutality, and religion. (8) However, their musical collage style of using samples as the building blocks of their music production was "outlawed" as an infringement. (9) That determination forever changed the production of hip-hop music or any music that incorporated direct samples of copyrighted works, even if those copies and adaptations were used for some arguably transformative purpose. (10)

For appropriation art of all types to survive an infringement inquiry, the resulting work must be creative, original, and transformative. However, the line between uses deemed infringing or fair is far from bright, at least in ex-ante determinations by second-generation creators who rely on copyright limitations in the creative process. Accordingly, this Article examines the role that "reverse engineering" and other policies and doctrines have played in the inventive context to protect the "space" such second-generation innovators require to build upon and around existing inventions that justify the patent monopoly. Further, this Article explores how patent policy better protects and encourages that space than does copyright, theoretically and in practice.

This Article asserts that copyright reform initiatives should "sample" (that is, borrow from) patent policies that protect access for further innovation to "remix" (that is, inform and reform) copyright law for the same end in the creative context. Throughout the Article, I use appropriation art to illustrate how an established cumulative medium of artistic creation is negatively impacted by overly restrictive copyright laws and may benefit from patent policies seemingly better suited to encourage and support such creative innovation.

Copyright has already borrowed from its constitutional cousin in creating a misuse doctrine, for example. (11) I assert other patent policies and practices are ripe for the borrowing. Patent policy, despite its own problems to be sure, still presents a more robust, well-defined, and generally more efficient system of incentives to create. (12) This approach both empowers creators to access and make use of existing works for certain purposes and at the same time still protects rights holders in a way that honors the constitutional directive to secure certain exclusive rights. Such an approach is particularly vital for traditionally collaborative and cumulative creative mediums that produce musical, dramatic, and audiovisual works. Accordingly, patent policy should be "sampled" to "remix" copyright.

Part I explores the problems of applying a twentieth century legal framework to twenty-first century "creative innovation," as I describe it, and the benefits of second-generation creative output. In this Part, I put a finer point on the general observations noted throughout this Article by way of the "appropriation art" example. I highlight the different outcomes an appropriation artist might experience when her creative effort is protected under "patentesque" policies that better protect use of existing works for the purpose of further creation in contrast to the results under the current copyright framework.

Part II of this Article explores copyright and patent laws as distinct legal regimes. This Part addresses the historical underpinnings of intellectual property protection generally and how both regimes developed as mostly distinct entities until software emerged. In the case of copyright, I also address the impact of Congressional overprotection coupled with the additional private fences erected by rights holders via technological and contractual measures to further extend the reach of their exclusive rights beyond what copyright actually protects. (13)

Part III provides a brief history of the role of reverse-engineering in the inventive context under trade secret law and as applied to digital goods under patent, copyright, and a hybrid regime, the Semiconductor Chip Protection Act. Further, I examine briefly how reverse engineering is used in the video game industry and digital music production to support further innovation and to apply my theoretical assertions not just to literary and artistic productions, but to the process of creation itself. Finally, this Part highlights the role of misuse in both the copyright and patent contexts as an alternative approach courts have used to limit both monopolies with, admittedly, varying degrees of success. (14) I argue that strong recognition by federal judges of the copyright misuse doctrine, would better protect cumulative creation in genres like appropriation art. Such genres benefit greatly from, and have traditionally relied on, cumulative creation in ways that generally cause little, if any, market harms to the rights holder.

Finally, Part IV explores the blurring of the distinction between copyright and patent protection in the digital age. This Part challenges historic notions of the bright-lined semantic demarcation between the terms "innovation" (traditionally attributed to patent law) and "creativity" (traditionally linked to copyright law). (15) Because computer programs are afforded both copyright and patent protection, for example, Congress and the Supreme Court have and continue to blur the distinction traditionally made in the subject matter of both regimes. (16)

Given the current legislative, judicial, and technological cross-pollination of innovation and creativity in crafting, adjudicating, and applying copyright law, this twenty-first century trend-indeed, this reality-should be embraced rather than resisted.

PART I: SAMPLING PATENT TO REMIX COPYRIGHT: THEORY IN PRACTICE

American economist Theodore Levitt (17) is widely credited for saying that "[c]reativity is thinking up new things. Innovation is doing new things." (18) This quotation captures the traditional delineation between copyright and patent protection. I assert, however, that the twenty-first century ways of "thinking and doing" have led to creative innovation and innovative creativity in the face of intellectual property regimes that struggle to hold on to outmoded ways to protect those productions and products. This reality highlights the problems of applying an outdated, limited legal framework to current technological means of inspiring and fixing creative endeavors. At a minimum, current copyright protection fails to appreciate the benefits of second-generation creative output by creators who are first users of existing copyrighted works. (19) Case in point is the appropriation art form. It is clearly established within art history and culture, but is also often at odds with copyright when an appropriation artist copies and/or adapts an existing copyrighted work to create a new work of art. Although "appropriation art" generally describes the post-modern art practice, I assert the term contemplates any art form that relies primarily on the use of "quotation" or "citation" of what already exists (whether protected by copyright or otherwise) to incorporate it into a new creative work. This includes literary works, video, music, and, of course, visual art. (20)

For example, Jeff Koons, one of the most well-known living appropriation artists, has defended his fair share of infringement claims (and with mixed results). In 2006, Koons successfully defended his use of a copyrighted photograph from a fashion magazine in his collage painting as a fair use. (21) The court in that case recognized the "ultimate" test of fair use as "whether the copyright law's goal of promoting the progress of science and useful...