Greetings Mr. Mitchell,

Thank you, twice over. First for the detailed explanation of your

reasoning, and second for helping "all" of us who are not (yet) in the legal

profession to better understand the value of a polished attorney with the

level of experience you bring to the table. Further, knowing you offered

your insights while "not on the meter" makes your response all the more

appreciated.

My father, a physician, once told me there are many levels of competence and

incompetence in any profession. That pointedly included the medical and

legal professions. It is refreshing to hear from one of the "competent

ones", as opposed to the babbling of a wanna-be, gonna-be someday, 1-2-3

Look At Me, knock-off.

With respect to the computer industry, I find those who profess themselves

to be "know all, be all, experts", and speak loudly and boldly in excess,

are often those who understand far less than they know. It is as though

brutality somehow offsets an obvious lack of understanding. I am certain

that holds true for any profession.

The real trick to my successes has come in large part in acknowledging I do

not know or understand all there is to my trade, hence always being alert to

soaking up additional information to better myself. Sharing back with

purpose is equally important. I do know when to turn to folks more

experienced than I, and whose opinions I respect and trust. It is the ones

who are constantly on the attack, rather than trying to help their

professional community grow in understanding, that I opt to not listen to.

It is within this contextual spirit that I read the background "message" of

your dissertation, whether such "message" was intentional or not. I choose

to believe you to be intentionally clever enough to get your point across

amidst the explanation you offered. I am certain this is not lost upon

others.

Well done. And certainly performed more diplomatically than warranted. You

are a gentleman indeed.

Gil

Gilbert M. Hale

New Freedom Data Resources

Pittsford, NY

585-359-8085

gil@gilhale.com

> -----Original Message-----

> From: profox-bounces@leafe.com [mailto:profox-bounces@leafe.com]On

> Behalf Of John T. Mitchell

> Sent: Monday, May 05, 2003 12:51 AM

> To: profox@leafe.com

> Cc: 'John V. Petersen'

> Subject: RE: Commentary on your article: Microsoft Risks Copyright

> Impotence

>

>

> On May 2, John Peterson took issue with my article at

> http://interactionlaw.com/interactionlaw/id12.html (Microsoft Risks

> Copyright Impotence). As a student of the law, he was apparently

> unimpressed by the fact that I cited only one case in support of my

> position. On Sunday, Mr. Peterson sent a terse e-mail chiding my

> failure to respond. I do so now, with apologies to non-lawyers for the

> length and the legalese.

>

> Mr. Peterson seeks to re-frame the question as “Does requiring

> difference licenses for different operating systems constitute misuse of

> copyright?” What Mr. Peterson fails to appreciate is that when

> Microsoft purports to license a particular use, it must be a use it has

> a right to license. In this case, Microsoft is attempting to license

> the private performance of its works, but that’s like me licensing

> people to use the sidewalk in front of my house. I may find people

> willing to pay, but that does not mean I have the right to license such

> use, nor that anyone who walks along the sidewalk without paying me is

> doing anything illegal. The law doesn’t change just because I happen to

> be Microsoft and say “you can only use my software if you promise to not

> walk on the sidewalk in front of Bill gates’ house.”

>

> Of crucial importance here is the fact that no one – not even a thief or

> a pirate – can infringe upon any of the exclusive rights of a copyright

> owner by making a non-public performance of a work. Copyright owners

> enjoy an exclusive right to perform a work publicly, but have no right

> to exclude anyone from performing a work privately. Twentieth Century

> Music Corp. v. Aiken, 422 U.S. 151, 155 (1975). A few years earlier,

> the Supreme Court had explained: “The Copyright Act does not give a

> copyright holder control over all uses of his copyrighted work.

> Instead, [Section 106] of the Act enumerates several ‘rights’ that are

> made ‘exclusive’ to the holder of the copyright. If a person, without

> authorization from the copyright holder, puts a copyrighted work to a

> use within the scope of one of these ‘exclusive rights,’ he infringes

> the copyright. If he puts the work to a use not enumerated in [Section

> 106], he does not infringe.” Fortnightly Corp. v. United Artists

> Television, Inc., 392 U.S. 390, 393-95 (1968) (footnotes omitted).

>

> In his dissent in the Betamax case (where the videocassette recorder

> survived a legal challenge), Justice Blackmun explained: “Section

> 106(4) grants a copyright owner the exclusive right to perform the work

> ‘publicly,’ but does not afford the owner protection with respect to

> private performances by others. A motion picture is ‘performed’

> whenever its images are shown or its sounds are made audible. § 101.

> Like ‘[singing] a copyrighted lyric in the shower,’ Twentieth Century

> Music Corp. v. Aiken, 422 U.S. 151, 155 (1975), watching television at

> home with one's family and friends is now considered a performance.

> Home television viewing nevertheless does not infringe any copyright –

> but only because § 106(4) contains the word ‘publicly.’” (Sony Corp. of

> America v. Universal City Studios, Inc., 464 U.S. 417, 468-69 (1984),

> Blackmun, J., dissenting (footnotes and citations omitted).) And you

> can watch those programs on the television of your own choosing!

>

> The private performance of a lawfully reproduced copy of Microsoft

> software is not an infringement of any of the exclusive rights of the

> copyright holder, and Microsoft may not use its exclusive rights to gain

> control over the public’s rights. “A copyright owner may not enforce

> its copyright to . . . use it in any manner violative of the public

> policy embodied in the grant of a copyright.” Tricom, Inc. v. Electronic

> Data Systems Corp., 902 F. Supp. 741 (E.D. Mich. 1995) (citations

> omitted). Leveraging copyright power to control behavior which Congress

> intended remain outside of the copyright owner’s control is the type of

> conduct condemned in United States v. Paramount Pictures, Inc., 334 U.S.

> 131 (1948); Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942);

> Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502

> (1917), and Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir.

> 1990).

>

> The public policy granting copyrights “excludes from it all that is not

> embraced” in the original copyrighted work, and “equally forbids the use

> of the copyright to secure an exclusive right or limited monopoly”

> beyond the scope of the Copyright Act and which is “contrary to public

> policy to grant.” (Lasercomb America, Inc. v. Reynolds, 911 F.2d 970,

> 977 (4th Cir. 1990) (quoting with revisions from Morton Salt, 314 U.S.

> at 492) (brackets omitted).) Mr. Peterson has suggested that this

> Fourth Circuit decision is not good enough, so I have relied more on

> Supreme Court cases. Let’s see a little more of where the Supreme Court

> stands.

>

> In 1917, the Supreme Court took on the issue of private enlargement of

> copyright in the Motion Picture Patents case. It determined that the

> owner of an intellectual property monopoly – in that case a patented

> motion picture film projector – could not lawfully use a “licensing”

> mechanism like Microsoft is using to obligate purchasers of the machine

> to use it solely with motion pictures containing another patent which

> the company also owned. (Motion Picture Patents Co. v. Universal Film

> Mfg Co., 243 U.S. 502.) On page 519, the court stated: “A restriction

> which would give to the plaintiff such a potential power for evil over

> an industry which must be recognized as an important element in the

> amusement life of the nation . . . is plainly void, because wholly

> without the scope and purpose of our patent laws, and because, if

> sustained, it would be gravely injurious to that public interest, which

> we have seen is more a favorite of the law than is the promotion of

> private fortunes.” This position was followed in Carbice Corp. of Am.

> v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) (owner of a patented

> package that used solid carbon dioxide could not obligate licensees to

> use its own solid carbon dioxide).

>

> The relevance of the Supreme Court’s analysis in Motion Picture Patents

> Co. is inescapable. If it is unlawful to extend the statutory monopoly

> by limiting the use of a patented motion picture projector to films

> containing other intellectual property owned by the licensor, then it

> stands to reason that it is equally unlawful to license only on

> condition that it not be used in conjunction with an operating system of

> choice.

>

> In Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942), the

> Supreme Court examined the use of the patent monopoly in a machine for

> depositing salt tablets to force licensees to use only salt tablets

> manufactured by the patent holder. The court said: “The public policy

> which includes inventions within the granted monopoly excludes from it

> all that is not embraced in the invention. It equally forbids the use

> of the patent to secure an exclusive right or limited monopoly not

> granted by the Patent Office and which it is contrary to public policy

> to grant. (Id. at 492.)

>

> And this line of reasoning is not limited to patent and trademark law.

> Morton Salt itself noted with approval the application of this doctrine

> to copyrights. (Id. at 494.) In United States v. Paramount Pictures,

> Inc., 334 U.S. 131 (1948), the Supreme Court further explained the

> limitations on copyright power in the context of “block booking” – “the

> practice of licensing, or offering for license, one feature or group of

> features on condition that the exhibitor will also license another

> feature or group of features released by the distributors during a given

> period.” (Id. at 156.) Like patent law, the exclusive right granted

> under the Copyright Act does not include any privilege to “add to the

> monopoly of the copyright in violation of the principle of the patent

> cases involving tying clauses.” (Id. at 158.)

>

> >From these foundations, the doctrine of copyright misuse has developed

> both as a violation of antitrust law and as an affirmative defense

> against copyright infringement when the copyright holder, by means of an

> over-reaching license or other method of control, tries “to secure an

> exclusive right or limited monopoly not granted by the [Copyright]

> Office and which it is contrary to public policy to grant.” (Lasercomb

> Am., Inc. v. Reynolds, 911 F.2d 970, 976 (4th Cir. 1990), quoting from

> Morton Salt, 314 U.S. at 491.) Moreover, copyright misuse is such a

> violation of public policy that some courts will not require that the

> person against whom the misuse is directed be a party to the litigation.

> “[T]he fact that appellants here were not parties to one of Lasercomb’s

> standard license agreements is inapposite to their copyright misuse

> defense.” Lasercomb, 911 F.2d at 979.)

>

> United States courts have a long history of recognizing that licensing

> terms which have the purpose and effect of voiding the boundary around

> the exclusive rights of the copyright holder, thereby enlarging the

> copyright holder’s universe of control, constitute misuse of copyrights

> and should be void as against public policy. The same should be true

> where EULAs are used to the same end. “Sound policy rationales support

> the analysis of those courts that have found shrinkwrap licenses to be

> unenforceable. A system of ‘licensing’ which grants software publishers

> this degree of unchecked power to control the market deserves to be the

> object of careful scrutiny.” (Softman Prods. Co. v. Adobe Sys., Inc.,

> 171 F. Supp. 2d 1075, 1091 (C.D. Cal. 2001).) The Softman court was

> quite critical of Adobe’s efforts to compel third-parties to relinquish

> the rights they enjoy under the Copyright Act through use of an end-user

> license agreement – in that case, a “license” that purported to make the

> third party waive its rights under Section 109 to resell lawfully made

> copies without Adobe’s consent. “The Court finds that the provisions

> contained in Adobe’s EULA purport to diminish the rights of customers to

> use the software in ways ordinarily enjoyed by customers under copyright

> law. Therefore, these restrictions appear to be inconsistent with the

> balance of rights set forth in intellectual property law.” (Id. at 1090

> (footnote omitted).)

>

> Indeed, a contrary result would be untenable, for it would manage “to

> transform a contractual term that software purveyors unilaterally

> include in their contracts into a binding provision on the world – even

> on parties who are not in privity of contract – and one that, moreover,

> undoes the dictates of Congress by undermining an essential feature of

> the Copyright Act!” 2 M. Nimmer & D. Nimmer, NIMMER ON COPYRIGHT §

> 8.12[B][1][d][i] (2002) (exclamation point in original).

>

> The United States is not alone in this. In the United Kingdom, the

> Commission on Intellectual Property Rights recently concluded that

> “Where suppliers of digital information or software attempt to restrict

> ‘fair use’ rights by contract provisions associated with the

> distribution of digital material, the relevant contract provisions may

> be treated as void.” (Commission on Intellectual Property Rights,

> Integrating Intellectual property Rights and Development Policy:

> Executive Summary, September 2002, at 22.)

>

> In Australia, the Copyright Law Review Committee recommends that the

> Australian Copyright Act “be amended to provide that an agreement, or a

> provision of an agreement, that excludes or modifies, or has the effect

> of excluding or modifying, the operation of [certain limitations upon

> the rights of copyright holders] has no effect.” (Recommendation 7.49,

> Copyright Law review Committee, Copyright and Contract, Commonwealth of

> Australia 2002.)

>

> It is not my custom to go into this much detail when I’m not “on the

> meter,” but I feel deeply that it is not just developers who may lose

> out if these bogus licenses are allowed to prevail. It is also the

> public, that stands to gain from the innovative new works and uses

> created by the developers, who would suffer as well. But one

> disclaimer: Mr. Peterson will likely soon be licensed to practice law,

> and he obviously has an opinion different from mine, so don’t take this

> as legal advice – check with a lawyer whose judgment you trust before

> thumbing your nose at an offensive EULA.

>

> John

> __________________

> John T. Mitchell

> http://interactionlaw.com

>

>

> -----Original Message-----

> From: John V. Petersen [mailto:John.V.Petersen@comcast.net]

> Sent: Friday, May 02, 2003 8:15 AM

> To: John@interactionlaw.com

> Cc: profox@leafe.com

> Subject: Commentary on your article: Microsoft Risks Copyright Impotence

>

> <snip>

>

>

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