🚀 go-pugleaf

Attached is a very informative and reliable newsletter put out by George, 
Donaldson & Ford, the Austin firm which represented Steve Jackson Games 
in his lawsuit against the USSS.

(Sent in two parts)

Ed

---------------------------------------------------------------
Edward Cavazos, Attorney at Law    |     polekat@well.sf.ca.us
Andrews & Kurth, LLP               |     ecavazos@blkbox.com
4200 Texas Commerce Tower          |     (713) 220-4195 (v)
Houston, TX  77002                 |     (713) 220-4285 (f)



---------- Forwarded message ----------
Date: Fri, 23 Dec 1994 13:43:36 -0600 (CST)
From: pkennedy <pkennedy@io.com>
To: Legal Bytes <legal-bytes@io.com>
Subject: Legal Bytes 2.2 (Part 1)

The following is Legal Bytes 2.2. Because of the length of the file, it 
is being delivered in two part.  Apologies for the inconvenience.

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                   __________________________________
                                    
                  Fall-Winter 1994, Volume 2, Number 2
                   __________________________________

                    By George, Donaldson & Ford, L.L.P.
                            Attorneys at Law
                   114 West Seventh Street, Suite 1000
                          Austin, Texas  78701
                             (512) 495-1400
                          (512) 499-0094 (FAX)
                            gdf@well.sf.ca.us
                   ___________________________________

           Copyright (c) 1994 George, Donaldson & Ford, L.L.P.
              (Permission is granted freely to redistribute
            this newsletter in its entirety electronically.)
                   ___________________________________

David H. Donaldson, Jr., Editor-in-Chief <6017080@mcimail.com>
Peter D. Kennedy, Senior Editor <pkennedy@io.com>
Laura Prather, Contributing Editor <LSTAPLE+GDF%GDF@mcimail.com>
                   ___________________________________

IN THIS ISSUE:

1.   FIFTH CIRCUIT TACKLES E-MAIL INTERCEPTION ISSUE
     IN STEVE JACKSON GAMES v. U.S. SECRET SERVICE

2.   COPYRIGHT AND JOINT AUTHORSHIP

3.   DOING THE NON-LITERAL INFRINGEMENT TWIST

4.   THINK BEFORE YOU LISTEN (AND RECORD) THAT FASCINATING
     CONVERSATION!

5.   OTHER PEOPLE'S E-MAIL:  TO READ OR NOT TO READ?

_____________________________________________________________________

1.   FIFTH CIRCUIT TACKLES E-MAIL INTERCEPTION ISSUE
     IN STEVE JACKSON GAMES v. U.S. SECRET SERVICE

     Legal Bytes has followed this ground-breaking lawsuit brought
by a small Austin, Texas game publishing company and others against
the U.S. Secret Service for an illegal raid and seizure of the
company's electronic bulletin board system called "Illuminati." 
Steve Jackson Games won over $50,000 in damages from the Secret
Service because of its illegal raid, and the individuals each won
$1,000 awards because the Secret Service illegally seized their
electronic mail.

     The Secret Service paid the judgments and did not appeal. 
Steve Jackson Games and the others pressed forward with an appeal,
on the one issue they lost -- their argument that the Secret
Service, when it seized the bulletin board system not only
illegally seized their mail, it also illegally intercepted some of
those messages.

     From the users' point of view, the Secret Service raid did two
things.  First, the Secret Service walked off with all the mail in
their mailboxes, and violated the Access to Stored Communication
provision of the Electronic Communications Privacy Act.  18 U.S.C.
s 2701, et seq.  Some of those messages had been written,
addressed, and sent, but not yet delivered to their addressee. 
They were temporarily resident on the Illuminati BBS's hard drive
when the Secret Service seized the Illuminati computer.

     The users argued that the seizure of this in-transit mail was
a second, separate violation of law -- an illegal interception of
their mail prohibited by the Wiretap Act.  18 U.S.C. s 2510, et
seq.  They argued that in-transit mail was different and important.
These messages were especially sensitive and vulnerable:  the
senders had lost control over their messages, but the addressees
had not yet received them.  Neither party to the messages could
choose to keep or throw away the message, and thereby could not be
said to have purposely risked unintentional disclosure of their
messages by choosing to store them.  Further, the BBS model of
"store and forward" of messages is replicated in all significant
computer communications.  Unlike the traditional model of a
telephone conversation, which takes place effectively
instantaneously, computer communications often reside some
determinable period of time in temporary storage on their way to
their final destination.  The level of legal protection afforded
BBS in-transit e-mail potentially affects most computer
communications.

     The Illuminati BBS's users argument was simple -- the Wiretap
Act (as amended by the ECPA in 1986) defines "interception" as "the
aural or other acquisition of the contents of any wire, electronic,
or oral communication through the use of any electronic,
mechanical, or other device."  The users argued that the Secret
Service did, in fact, acquire the contents of the e-mail when it
walked off with the machine, and that the Wiretap Act does not
require that e-mail be in the process of transmission when it is
acquired, only that it is somewhere between its origin and
destination.  If the users were right, the government would need a
court wiretap order before seizing in-transit electronic
communications, an even higher standard than that needed to gain
access to stored electronic communications.

     The Secret Service took the position that the Wiretap Act and
the Stored Communications provision were separate, non-overlapping
laws -- and that the Wiretap Act's prohibition of "interception"
only applied to acts that tap into a data stream and capture the
communication as it moves through a wire or cable.  The Stored
Communications provision, the Secret Service argued, applies to all
stored communications, including those in temporary storage
incident to transmission.  Whether e-mail has been accessed by its
recipient is irrelevant; what matters is whether the message is
sitting still, or moving through wires when it is caught by the
government.

     The Fifth Circuit sided with the Secret Service.  See 36 F.3d
457 (1994).  It noted that the Wiretap Act defines "wire
communications" as "aural transfers," and includes within the
definition of "wire communications" those communications in
electronic storage.  In contrast, when the Act defines "electronic
communications" as "any transfer" of data other than a wire
communication, it does not include electronic storage of such
communications.  Further, the Act does define "stored
communications" to include electronic communications in "temporary,
intermediate storage ... incidental to the electronic transmission
thereof."  Reading these provisions, the Court concluded that
Congress must have meant to exclude the seizure of in-transit
e-mail from the coverage of the Wiretap Act, and to leave it
controlled by the Stored Communications provision only.[fn2]

[fn2:  This raises an interesting question:  what about the seizure
of voice mail or answering machine recordings?  These appear to be
clearly "wire communications," not "electronic communications,"
because they record "aural transfers."  If so, seizure of these
recordings without a court order, at least before they are received
by the intended recipient, would violate the Wiretap Act.]

     It is important to note that the Fifth Circuit's decision does
not leave e-mail without protection.  The Fifth Circuit noted
clearly that the Secret Service, by seizing, reading and deleting
the Illuminati BBS e-mail without authorization, had violated 18
U.S.C. s 2701.  Although law enforcement need not (within the Fifth
Circuit, at least) get a court wiretap order to seize in-transit e-
mail, any government access to e-mail must still meet the
requirements of the Stored Communications provision of the ECPA
(and the Fourth Amendment), which is no easy task.
____________________________________________________________________

2.   COPYRIGHT AND JOINT AUTHORSHIP

     Along with protecting solo inspirations, the Copyright Act
also protects works created by two or more authors working
together.  Like joint owners of real estate, each "joint author"
has all the rights and powers of a sole author, including the right
to copy, display, perform, and create derivative works, and the
power to transfer that right to others.  What does it take to
become a joint author of a work?  The Copyright Act defines a joint
author's work as "a work prepared by two or more authors with the
intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole."  The Act doesn't define,
however, *how much* of a contribution it takes to become a "joint
author."

     Melvin Nimmer, a revered scholar of copyright law, is credited
with originating a concept, adopted by many courts, that resulted
in a relatively low threshold of joint authorship.  Nimmer's
formulation was a "de minimis" demarcation line requiring that
"more than a word or line must be added by one who claims to be a
joint author" -- but perhaps not much more.  As long as one made
more than a *de minimis* contribution to a copyrighted work, the
contributor qualifies as a joint author even if his or her
contribution itself would not be copyrightable, standing alone.

     Recently, however, federal courts have reexamined the joint
authorship issue and turned away from Professor Nimmer's
formulation.  The Seventh Circuit Court of Appeals (covering
Wisconsin, Illinois and Indiana) in a case called ERICKSON v.
TRINITY THEODORE, INC., 13 F.3d 1061 (7th Cir. 1994), spurned
Nimmer's test for a younger, more attractive one proposed by
Professor Jack Goldstein.  Professor Goldstein's approach reasons
that before claiming to be a "joint author," a collaborator ought
to show that he or she could be an "author" based on his or her
contribution to the work.  That is, the collaborator's
contribution, standing alone, must qualify as an original,
copyrightable "work of authorship" before the collaborator is given
the potentially valuable and powerful status of a joint author.

     The Seventh Circuit decided that Professor Goldstein's test
better balanced society's interest in promoting creativity, on the
one hand, with the free exchange of ideas on the other, and adopted 
it.  The court stated that authors who merely consult others for 
ideas, reactions, editing or criticism (contributions that are not
typically copyrightable taken alone) should be protected from
claims of joint ownership by such contributors.  The court reasoned
that if mere suggestions, ideas or criticism could create joint
authorship, the title of the copyright in the final work might
remain fuzzy and subject to challenge.  The Seventh Circuit (always
attuned to the economic effects of legal rules) concluded that such
uncertainty of title would affect the commercial value of such
works and ought to be minimized.

     The Seventh Circuit did not leave collaborators completely
without rights:  collaborators can realize the value of their
contributions through contractual agreements, which can be used to
compensate persons who make valuable, but perhaps not
copyrightable, contributions to a work.  But the court decided that
copyrights -- government-created and protected rights -- will not
be casually granted to secondary collaborators.

     A good illustration of this shift in the willingness of courts
to recognize joint authorship is the recent case of BALKIN v.
WILSON, decided by a trial court in Michigan. (The opinion can be
found on Westlaw at 1994 Westlaw 518849, No. 4-94-CV-35 (W.D. Mich.
September 20, 1994).  Two professors, Balkin and Wilson, worked on
a project called "Literacy News:  Breaking the Language Barrier
Through Songs."  Balkin wrote songs and Wilson wrote teachers'
manuals to be used with the songs.  Wilson provided ideas and input
on the songs' content, claiming to have discussed with Balkin 70%
of them, but he didn't write any music or lyrics.  While the
project was never completed, Balkin gave Wilson tapes of the songs.

     Wilson copied the tapes and sold many of them to his students
and others.  Balkin registered a copyright in the songs, and sued
Wilson for an accounting of the money he made on the songs,
claiming that it was Balkin who had the exclusive right to copy and
sell the tapes.  Wilson argued that he was a joint author, which
would give him equal rights to copy and sell the tapes.  Wilson
admitted that his *ideas* and *discussions* with Balkin about the
songs were not copyrightable but he claimed that his contribution
to the final songs was more than "de minimis" -- enough to make 
him a joint author (at least under Professor Nimmer's test).

     The district court agreed with the Seventh Circuit, though,
and used Professor Goldstein's "independently copyrightable"
approach instead.  Because the ideas and concepts that Wilson
contributed were not independently copyrightable, the court held
that Wilson did *not* have the right to copy and sell the tapes as
a joint author.  Collaborators like Wilson, the court said, must
look to contractual agreements, not copyright law, to be
compensated for their contributions.

     As these cases show, Professor Goldstein's approach is
appealing for two reasons:  First, it protects authors and those
who deal with them from the uncertainty of joint authorship claims
based on perhaps exaggerated opinions of the value of criticisms or
contributions.  Second, it provides more certainty to the
definition of joint authorship because it incorporates the already
well-defined concept of "copyrightability."  Courts can now simply
look to the law of copyright to determine whether a collaborator's
contribution entitles him or her to joint authorship status, rather
than try to define and apply an inevitably subjective level of "de
minimis-ness."  If the collaborator could have independently
copyrighted the contribution that was incorporated into the work in
question, he or she can claim joint ownership -- otherwise,
copyright law provides no remedy, and collaborators need to protect
themselves in other ways.
___________________________________________________________________

3.   DOING THE NON-LITERAL INFRINGEMENT TWIST

     Software companies have faced two major hurdles in figuring
out whether copyright laws protect their creations.  The first
hurdle has been crossed:  software has been declared to be more
than a "useful article" (which would not be protected by the
Copyright Act), but it can be an "original work of authorship"
entitled to legal protection.  There is no longer any question that
the *literal* elements of computer program -- the source code and
object code -- can be copyrighted just like books.

     The second hurdle is still being crossed:  whether, and to
what extent "non-literal" elements of software are also
copyrightable.  These non-literal elements include the program
architecture, structure, sequence and organization, operational
modules, and computer-user interfaces (the "look and feel" of
software).  This far more complicated question is still being
hashed out in the federal courts.

     Until recently, computer software companies who work (and may
end up in court) in territory covered by the U.S. Court of Appeals
for the Fifth Circuit (which includes all of Texas, Louisiana, and
Mississippi) have faced real uncertainty in how the Fifth Circuit
would react to claims of non-literal infringement -- where a party
claims its software's copyright has been infringed, not by literal
copying of code, but by mimicking its non-literal elements.

     In 1987, the Fifth Circuit had apparently indicated that it
would recognize only a narrow breed of non-literal infringement, if
at all.  In a case called PLAINS COTTON COOP. ASS'N v. GOODPASTURE
COMPUTER SERV., INC., 807 F.2d 1256 (5th Cir.), cert. denied, 484
U.S. 821 (1987).  The Fifth Circuit considered the claim of an
employer who owned a mainframe software program that facilitated
bidding on cotton orders.  An employee had left Plains Cotton,
formed a new company, and created a very similar software program
for a PC platform.  Despite many similarities between the two
programs' user interfaces and approaches to the data, the Fifth
Circuit held that there was insufficient evidence of copying of
*copyrightable* material, and reversed a temporary injunction that
had issued against the ex-employee's new company.

     The Fifth Circuit's PLAINS COTTON decision was made before
several other federal courts had developed and begun using the
"abstraction-filtration-comparison" approach to analyze claims of
non-literal infringement.  This analysis is generally considered to
provide far more protection for non-literal aspects of computer
programs than the Fifth Circuit's approach in PLAINS COTTON.  See
Legal Bytes, Vol. 1, Number 1 ("When is a Computer Program a
Copy?").

     The Fifth Circuit has now not only shed a remnant of
nineteenth century thinking, but has forged ahead on the cutting
edge of copyright protection.  This summer, in a case called
ENGINEERING DYNAMICS, INC. v. STRUCTURAL SOFTWARE, INC., 26 F.3d
1335 (5th Cir. 1994).  The Fifth Circuit held that similarities
between two computer programs' user interfaces could be the basis
of a copyright infringement claim, even though the underlying
programs were written in different languages and used different
instructions to create the similar interfaces.

     This decision was startling for several reasons, none of which
was directly related to case's facts.  One surprise was that a
current influential Fifth Circuit judge, Patrick E. Higgonbothom,
had previously taken a very different view of non-literal
infringement when he was a federal trial judge in Dallas.  In 1978,
he had ruled in SYNERCOM TECHNOLOGY, INC. v. UNIVERSITY COMPUTING
COMPANY, INC., 462 F. Supp. 1003 (N.D. Texas 1978), that mainframe
data input formats were not copyrightable because key-punched card
formats, as well as their sequence and organization, were non-
copyrightable ideas rather than the copyrightable expression of an
idea.  Another twist was that the defendant who won that case was
none other than Engineering Dynamics, Inc., ("EDI"), who later
became the plaintiff in ENGINEERING DYNAMICS, INC. v. STRUCTURAL
SOFTWARE, INC.  The attorney who successfully defended EDI against
a claim of non-literal infringement before Judge Higgonbothom --
Tom Cantrell -- was again hired by EDI to prosecute *its* claim of
non-literal infringement against Structural Software, Inc. ("SSI").

     After winning the 1978 case against Synercom, EDI continued to
refine the user interface to its program, including an 80-column
input format that was used with its mainframe software systems and
had become familiar to many users.  When EDI developed a new
computer interface program, it kept the familiar 80-column input
format.  In 1986, SSI entered the market with a product for
personal computers that borrowed heavily from EDI's familiar 80-
column format.  EDI, which had once claimed that computer user
interfaces couldn't be copyrighted, again used the same lawyer to
sue SSI, and claim claim that the interfaces that it had created 
were copyrighted, and that SSI had infringed its copyright.  
There wasno question that the two computer programs themselves
were literally different -- SSI's program was written for use with 
PCs, using languages and approaches substantially different than 
those used in EDI's mainframe program.

     At the time, SSI appeared to have a good defense.  The Fifth
Circuit had seemed to decide, in the PLAINS COTTON case, that non-
literal elements of a program warranted little copyright
protection.  PLAINS COTTON even had similar facts:  the defendant
had developed a PC-based program that was inspired by a mainframe
application and which copied its non-literal elements but which
did not copy the code.  In fact, when the trial judge reviewed
EDI's claims against SSI in light of PLAINS COTTON,the case looked
easy, and the judge dismissed all of EDI's copyright claims.

     In the meantime, however, the Fifth Circuit's approach in
PLAINS COTTON had gotten a lot of criticism.  No other court had
chosen to follow it, and several other courts had adopted the more
sophisticated "abstraction-filtration-comparison" analysis.  The
value and uniqueness of computer software does not reside solely
in its literal code, but also in the way in which the software
presents itself and interacts with the user.  These valuable and
unique non-literal elements can be mimicked using code that does
not copy the original program, and therefore several courts have
recognized claims of non-literal infringement.  

     The changing law again benefitted EDI, as the Fifth Circuit
moved away from its PLAINS COTTON approach.  The court now
explicitly recognized that "non-literal aspects of copyrighted
works -- like structure, sequence, and organization -- may be
protected under copyright law."  Having thrown off the chains of
its prior opinion, the court adopted the three-part abstraction-
filtration-comparison method.  This fact-intensive inquiry requires
that the court first abstract the different levels of generality in
the two programs at issue.  The court then examines each level of
abstraction to filter out program elements that cannot be protected
under the Copyright Act, such as ideas, process, facts, public
domain information, and "scenes a fair material"; that is, material
in which the unprotected idea cannot be separated from expression
that can be protected, or material which is so standard in an
industry that it is indispensable.  After the "abstraction" and
"filtration" steps, the court compares the remaining protectible
elements with the allegedly infringing program to determine whether
the later program has copied substantially similar elements.

     Because the trial judge had not taken these steps, the Fifth
Circuit sent the case back for analysis.  The court cautioned that
the scope of copyright protection is not always constant across all
literary works.  It recommended a cautious approach when defining
the scope of protection available for computer user interfaces,
because interfaces are highly functional (function is not
protected) and because they often contain standardized technical
information that is not protected (such as the complex engineering
formulas common to both EDI and SSI's programs).  The court
suggested that, before finding infringement in user interfaces, a
party should stand ready to prove a greater degree of similarity
than what might be needed to show infringement of more literal
aspects of a program.

     Ironically, the developing copyright law allowed the same
company using the same lawyer to win both sides of the non-literal
infringement debate.  But recognizing non-literal infringement is
a two-edged sword:  while it may protect the value of unique
expression of ideas developed by programmers, it also makes it more
difficult to meet customer needs for new and better software
without sacrificing the familiarity customers have with the
friendly mugs of particular and popular user interfaces.
____________________________________________________________________

4.   THINK BEFORE YOU LISTEN (AND RECORD) THAT FASCINATING
     CONVERSATION!

     New electrical devices such as miniature tape recorders and
cheap videotape cameras make it easier and more tempting for some
people to watch, listen and record other people's affairs.  Not
only do professional journalists use tape recorders and cameras
(sometimes secretly), but so do other professions like private
investigators, lawyers and insurance adjusters.  Amateurs get in
the act, too, recording everything from Rodney King's beating by
Los Angeles police officers to the man who took pot shots at the
White House recently.  Openly recording public events and
conversations is generally fine, but when the microphone is hidden,
the situation changes.

     The principal law governing when you can and cannot record
oral conversations is the federal Wiretap Act, the same law that
regulates eavesdropping on wire and other electronic communications
-- by tapping phone lines and intercepting or computer
communications.  While many interesting and difficult question
arise over how this law applies to electronic communications, it
also covers low-tech eavesdropping of simple oral conversations,
the topic of this article.

     The Act applies in all fifty states, and prohibits the
recording of *any* oral conversation, unless a specific exception
in the Act applies.  The Wiretap Act (probably more accurately
called an "electronic eavesdropping" law) makes unauthorized
interception of oral conversations both a crime and a tort, meaning
that you can both go to jail and get sued for money damages if you
violate it.  So, if you are planning some surreptitious snooping,
you better fit into one of the statute's exceptions.  This article
surveys the two most important exceptions of this broad Act.

     Remember that the simple act of unauthorized recording is a
violation of the Act -- the law can be broken even if the recorded
conversation is not disclosed or even listened to.  Disclosing the
conversation, or using it (in a news story, for instance) knowing
it was illegally intercepted is a separate violation.

     1.   Party to the Communication.   This is the most important
exception to the prohibition against taping conversations.  If you
are one of the parties to the oral communication, you can record,
disclose and use it, even without the other party's knowledge or
consent, so long as your purpose is not to commit a crime or
otherwise violate someone's legal rights.  Surreptitious recording
of an interview to protect against blackmail, say, or to preserve
a record of an agreement, or to accurately record an interview (if
there is no ulterior illegal motive) is permitted under federal
law.

     Looking to federal law is not enough, though -- most states
also have legal restrictions on taping communications, particularly
telephone calls.  Texas, for example, has a "one party consent" law
similar to the federal provisions, permitting taping of telephone
calls if one of the parties consents.  Other states, however,
require both parties' consent before either party can legally
record the communication.  You should know the law of your state
before recording a conversation, especially a phone call.

     And don't think that you can fit into the "one party consent"
rule by leaving a hidden tape recorder unattended, to pick up
whatever conversations might be in range.  Claiming that "it's my
recorder" doesn't make you a party to the conversation.  Such
tactics are as simple as electronic eavesdropping gets.

     2.   Public conversations.  The Wiretap Act's restrictions are
not limited to just "private" oral conversations, although that
phrase is often bandied about in talk about the Act.  When it comes
to oral communications, the Act covers all conversations where the
parties show "an expectation that such communication is not subject
to interception, under circumstances justifying such expectation." 
Do not confuse this with the "reasonable expectation of privacy"
standard which is part of Fourth Amendment law.  The Wiretap Act
covers more than conversations taking place in the spheres of
privacy protected from unreasonable searches and seizures.  The
conversation doesn't have to be in the privacy of a home; it could
be a tete-a-tete on a park bench or at a restaurant table, or
multitudes of other conversations that take place "in public" but
where the people talking reasonably don't expect to have their
conversation recorded.  Whether the Act applies will depend on the
particular circumstances -- public speaking engagements, sporting
events and the like should be safe to record, but keep in mind the
"grandmother" rule -- if you would have trouble explaining to you
grandmother why you had the right to tape somebody else's
conversation, you will have trouble defending a claim under the
Wiretap Act.
____________________________________________________________________

[Legal Bytes Vol. 2, No. 2 continued in following document]