1997 Scott E. Bain.

J.D. Candidate, 1997, Boalt Hall School of Law, University of California, Berkeley; B.E.E., 1994, University of Minnesota. The author wishes to thank the participants in the Cyberlaw seminar at Boalt Hall for raising many thought-provoking issues and ideas regarding the application of law to the "Information Superhighway;" and Professor Pamela Samuelson, Jennifer Gully, Sabing Lee, and Gary Pulsinelli for comments on an earlier draft of this article.

1. See WILLIAM GIBSON, NEUROMANCER (1984); WILLIAM GIBSON, COUNT ZERO (1986). See also EDWARD A. CAVAZOS & GAVINO MORIN, CYBERSPACE AND THE LAW 1 (1994); William Byassee, Jurisdiction of Cyberspace: Applying Real World Precedent to the Virtual Community, 30 WAKE FOREST L. REV. 197, 198 n.5 (1995); ETHAN KATSH, LAW IN A DIGITAL WORLD 14 (1995).

2. GIBSON, COUNT ZERO, supra note 1, at 38.

3. See GIBSON, NEUROMANCER, supra note 1.

4. Many terms are used to describe this infrastructure. Perritt refers to it informally as the "Information Superhighway" and he broadly defines it to include information conduits such as the Internet, the public switched telephone network, proprietary systems such as Westlaw and LEXIS, broadcast radio and television networks, movie theaters, and video rental stores; content producers such as book and newspaper publishers, television and film studios, and radio talk show hosts; and information finders and brokers such as critics, reviewers, libraries, and newsstands. See Henry H. PERRITT, LAW & THE INFORMATION SUPERHIGHWAY iii, 11 (1996) [hereinafter PERRITT, INFORMATION SUPERHIGHWAY]. When discussing the infrastructure in the context of government initiatives, the more formal terms "National Information Infrastructure" (NII) or "Global Information Infrastructure" (GII) are usually used; Perritt uses these terms interchangeably with "Information Superhighway." "Cyberspace" is a term used to describe information networks in general, but sometimes is used when specifically referring to the Internet.

5. Compare NICHOLAS NEGROPONTE, BEING DIGITAL (Vintage Books 1996) (1995) (a self-proclaimed optimist's view of the fascinating technological, commercial, social, and political effects of the Internet and the "digital revolution," as well as though-provoking predictions of what is yet to come) with CLIFFORD STOLL, SILICON SNAKE OIL (1995) (taking a skeptical view of the Internet, arguing that the truly fulfilling things in life are real experiences and relationships, while Internet experiences are superficial).


7. For example, the invention of the printing press in the late 15th Century left English authors without effective copyright protection for their works until the Statute of Anne was passed nearly 200 years later, in 1710. See ROBERT A. GORMAN & JANE C. GINSBURG, COPYRIGHT FOR THE NINETIES 1-2 (1993). During the Industrial Revolution thousands of injured workers were left without sufficient recourse before negligence principles were incorporated into tort law in the late 19th Century. See LAWRENCE M. FRIEDMAN, A HISTORY OF AMERICAN LAW (2d Ed. 1985). Over the course of the 19th Century, the proliferation of newspapers, and the invention of new technology such as the telegraph, telephone, and camera, enabled unprecedented "snooping" into people's lives, eventually leading to state-recognized rights of privacy by the end of that century. See Lawrence M. Friedman, Looking Backward, Looking Forward: A Century of Legal Change, 28 Ind. L. Rev. 259, 261-2 (1995); William H. Minor, Identity Cards and Databases in Health Care: The Need for Federal Privacy Protections, 28 COLUM. J.L. & SOC. PROBS. 253 (1995). Our first forays into sea and space challenged, and continue to challenge, our notion of law based on borders. See generally GLENN H. REYNOLDS & ROBERT P. MERGES, OUTER SPACE: PROBLEMS OF LAW AND POLICY 248-58 (1989); Robert P. Merges & Glenn H. Reynolds, Toward a Computerized System for Negotiating Ocean Bills of Lading, 6 J. L. & COMM. 23 (1986).

8. NEGROPONTE, supra note 5, at 237 (reacting to the case of Jake Baker, whom the government attempted to prosecute for posting a violent, fictitious story to a newsgroup on the Internet; see United States v. Baker, 890 F. Supp. 1375 (E.D. Mich. 1995)).

9. John Perry Barlow, The Economy of Ideas, WIRED, March 1994, at 85, 85. Barlow is Executive Chair of the Electronic Frontier Foundation, and presented the keynote luncheon address at the 1996 Berkeley Technology Law Journal symposium, Digital Content: New Products and New Business Models, Nov. 8-9, 1996.

10. Id.


12. The majority of Perritt's articles have addressed federal information policy, electronic commerce, electronic property rights and liabilities, or problems of regulation and jurisdiction on the NII. See, e.g., Henry H. Perritt, Unbundling Value in Electronic Information Products: Intellectual Property Protection For Machine Readable Interfaces, 20 RUTGERS COMPUTER & TECH. L.J. 415 (1994). He is also a notable scholar in the areas of employment and labor law. See, e.g., Henry H. Perritt, The Future of Wrongful Dismissal Claims: Where Does Employer Self Interest Lie?, 58 U. CIN. L. REV. 431 (1989).

13. These new phenomena include: (1) the convergence of technologies which historically defined distinct legal categories (e.g. radio and wire), thereby collapsing the old categorical boundaries; (2) the convergence of communications and computing, which previously mapped a distinction between regulated and essentially unregulated activity; (3) the fading distinction between basic and enhanced communication services (significant in terms of regulation), and between "raw" content and "value-added" content (significant in the context of intellectual property); and (4) low barriers to entry in electronic markets and low transaction costs (collectively called "atomization"). See PERRITT, INFORMATION SUPERHIGHWAY at 27-30.

14. Id. at 30.

15. A significant number of excellent books on the subject of online legal issues have been written in the last three years, mirroring the growth and interest in the Internet itself. See, e.g., JONATHAN ROSENOER, CYBERLAW: THE LAW OF THE INTERNET (1997); KENT D. STUCKEY ET AL., INTERNET AND ONLINE LAW (1996); ONLINE LAW: THE SPA'S LEGAL GUIDE TO DOING BUSINESS ON THE INTERNET (Thomas J. Smedinghoff ed., 1996); BOYLE, supra note 6; KATSH, supra note 1; TOWARD AN INFORMATION BILL OF RIGHTS AND RESPONSIBILITIES (Charles M. Firestone & Jorge Reina Schement eds., 1995); LANCE ROSE, NETLAW: YOUR RIGHTS IN THE ONLINE WORLD (1994); CAVAZOS & MORIN, supra note 1.

16. For example, for the assignment of top-level domain names (TLDs) he proposes a private, international, self-regulatory scheme with specialized tribunals and the built-in sanction of refusing to recognize an email address or domain name, as an alternative to the present system in which Network Solutions, Inc. (NSI) administers TLDs in North America (including the popular ".com" domain) under contract with the National Science Foundation (Europe and Asia also have registries for other TLDs). See PERRITT, 1997 SUPPLEMENT at 50-53. See generally Daniel W. McDonald et al., Intellectual Property and the Internet, COMPUTER LAW., Dec. 1996, at 8, 13-14 (describing the domain name registration battle).


18. Id.

19. See, e.g., Elizabeth Bishop, At the Fishhouses, in THE COMPLETE POEMS 64-66 (1983) (using a description of fishhouses at the water's edge as a multi-layered metaphor).


21. ROSE, supra note 15. Rose contrasts the metaphors used in various contexts, including: "print publisher," "telephone service," "magazine distributor," "bookstore," and "local bar" (ch. 1); "shopping mall" and "toll road" (ch. 2); "wild west frontier" and "supermarket" (ch. 4); "postal service" and "private home" (ch. 5); "casino" (ch. 6); "dangerous gadget" (ch. 7); and "adult bookstore" and "singles bar" (ch. 8)). Id.

22. At least two recent works have specifically focused on the use of metaphors to describe the new information infrastructure. In his book Internet Dreams, Xerox PARC scientist Mark Stefik, recognizing that metaphors can have an impact on the legal and policy treatment of a technology, explored various metaphors for describing what the Internet is and will be. MARK STEFIK, INTERNET DREAMS: ARCHETYPES, MYTHS, AND METAPHORS (1996). Stefik suggests, as an alternative to the common "Information Superhighway" metaphor, four metaphors consistent with thousands of years of human history: digital library ("keeper of knowledge"), electronic mail ("communicator"), electronic marketplace ("trader"), and digital world ("adventurer"). See id. And in an essay reviewing recent books by Ethan Katsh and James Boyle, Pamela Samuelson discusses the efforts of the authors to discard metaphors of a declining era-print in Katsh's case and the romantic author in Boyle's case-and search for the emergence of new metaphors to better suit the information age. Pamela Samuelson, The Quest for Enabling Metaphors for Law and Lawyering in the Information Age, 94 MICH. L. REV. 2029 (1996) (reviewing KATSH, supra note 1; BOYLE, supra note 6). For other uses of symbolic language to describe cyberspace, see Barlow, supra note 9 (describing the law's attempt to carry on existing principles in the NII environment as a "sinking ship" on a rough sea, carrying "vaporous cargo"); Paul Gilster, THE INTERNET NAVIGATOR, xix (1993) (describing the Internet as a "frontier that has barely begun to be explored"). A more common example is the metaphor of "community," often used in the context of supporting an argument for self-regulation schemes online. See, e.g., Henry H. Perritt, Cyberspace Self Government: Town Hall Democracy or Rediscovered Royalism? 12 BERKELEY TECH. L.J. (forthcoming Dec. 1997).

23. The book is divided into fourteen chapters, organized in survey format, addressing: how the NII technology works, access to networks, privacy, liability for communications, liability for service failure, Constitutional issues, regulation, interoperability, electronic commerce, intellectual property, public information, civil procedure, criminal law, and international law.

24. Compare Computer Fraud and Abuse Act, codified at 18 U.S.C. 1030 (1991) (defining various computer crimes) with Cal. Penal Code 484 (1995) (defining common theft).


26. This principle was recently incorporated into the Freedom of Information Act by amendment, after Law and the Information Superhighway was first published. See Electronic Freedom of Information Act Amendments of 1996, Pub. L. 104-231, 110 Stat. 3048 (amending Freedom of Information Act, 5 U.S.C. 552 (1994)). The amendments are discussed in Perritt's 1997 Supplement. See PERRITT, 1997 SUPPLEMENT, supra note 11, at 75.


28. Factual information is not copyrightable because it does not meet the originality requirement of section 102 of the 1976 Copyright Act. See 17 U.S.C. 102 (1996); Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

29. The First Amendment has been held to limit direct restrictions on access to electronic forms of information. See Legi-Tech, Inc. v. Keiper, 766 F.2d 728 (2d Cir. 1985) (restrictions on plaintiff's access to electronic legislative database amounted to censorship, since the same restrictions did not apply to individual citizens and the state's preferred publisher); U.S. CONST. amend. I.

30. See, e.g., Freedom of Information Act, supra note 26.

31. An instructive example is using the search tools to find legislative history for a statute on the THOMAS database online, compared with searching the various print versions of legislative history sources. See Library of Congress, THOMAS <http://thomas.loc.gov>.


33. Id. at 481.

34. See Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (holding that originality in selection and arrangement is necessary in order for a factual compilation to be copyrightable).

35. 33 U.S. (8 Pet.) 591 (1834).

36. For example, on the World Wide Web, an "IMG" link on a web page instructs the browser to supplement the text on that page with an image contained in a separate file (on another web page). The result can be the presentation of content from one page within the "frame" of a completely different page, with the user never seeing the original source of the content. At least two plaintiffs have claimed to be the victim of some type of misappropration or infringement using IMG links. See The Shetland Times, Ltd. v. Dr. Jonathan Wills and ZetNews, Ltd., Sess. Cas. (Oct. 24, 1996) (visited May 2, 1997) <http://www.shetland-news.co.uk/opinion.html>; The Washington Post Co. v. Total News, Inc., No. 97-1190 (S.D.N.Y., filed Feb. 20, 1997) (visited May 2, 1997) <http:// www.ljx.com/Internet/complain.html>.


38. See Trademark Act of 1946 ("Lanham Act"), codified as amended at 15 U.S.C. 1051-1128 (1994).

39. See, e.g., Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340 (1991); but see West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986) (star pagination used in Westlaw to correspond with pagination in West's official reporters cannot be used in Mead's LEXIS database).

40. See Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993) and Sega Enters., Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996) (both finding trademark infringement based on Plaintiff's trademark/logo being displayed on the user's screen when the computer file is downloaded and run).

41. PERRITT, INFORMATION SUPERHIGHWAY at 488. Perritt cites the examples of "Smokey Bear" and the figure of an eagle above the letters "U.S." as government-owned trademarks. See id.

42. Id. at 474.

43. Searches using Lycos and Yahoo yield hundreds of ISPs in the United States. See, e.g., Yahoo! (visited May 2, 1997) <http://www.yahoo.com>. Access to the telephone system is available from a variety of phone companies, especially under access provisions of the Telecommunications Act of 1996, Pub. L. 104-104, 110 Stat. 56 (amending 47 U.S.C. 153, 251-252 (1996)). Cable providers tend to have a monopoly in their area of operation, but they are closely regulated in order to preserve access rights. See, e.g., Cable Communications Policy Act, 47 U.S.C.A. 521-559 (West Supp. 1995); Turner Broadcasting Sys., Inc. v. FCC, 117 S. Ct. 1174 (1997) (upholding "must-carry" provisions of the Cable Television Consumer Protection and Competition Act, 47 U.S.C.A. 534-535 (1992)). See generally Brent K. Yamashita, Building the National Information Infrastructure: An Agenda for Action (1994) (unpublished A.B. thesis, Princeton University) (on file with author).


45. Perritt does suggest the possibilities of taking property by eminent domain or instituting partial condemnation of intellectual property rights in order to force access if necessary, citing the examples of patents for encryption algorithms, or a sudden assertion of copyright in a fundamental protocal such as TCP/IP. See PERRITT, INFORMATION SUPERHIGHWAY at 293. Arguably, the same principle could be applied to proprietary operating system software.

46. See id. at 64-74 (comparing, for example, the cable network/cable channel relationship as discussed in Futurevision Cable Systems, Inc. v. MultiVision Cable TV Corp., 789 F. Supp. 760 (S.D. Miss. 1992) with the Internet content provider/network service provider relationship).

47. See id. at 70-71. Under antitrust law, an essential facility is something that (1) is essential to the antitrust plaintiff's competitive survival; (2) cannot practically be duplicated; and (3) can be used by the plaintiff without interference with the defendant's use. See Hecht v. Pro-Football, Inc., 570 F.2d 982 (D.C. Cir. 1977); United States v. AT&T, 552 F.Supp. 131 (D.D.C. 1982) (holding that AT&T is required to share access to the local telephone networks with other long distance providers).

48. See, e.g., STUCKEY, supra note 15, at xx-xxi.

49. For example, application programs called "applets" can be written for Netscape Navigator, adding special capabilities to the browser.

50. 80% of the world's PCs presently use a Microsoft operating system. See STUCKEY, supra note 15, at xxi.

51. See id.; Gary L. Reback et al., Why Microsoft Must Be Stopped, UPSIDE, Feb. 1995, at 52.

52. See Reback, supra note 51.

53. See STUCKEY, supra note 15, at xxiii ("Microsoft's virtual operating system monopoly, control of this interface, and interest in competing in the online services market threaten to interfere with the continued unfettered formation of robust competitive markets offering a diverse array of access and service providers.").

54. See 15 U.S.C. 2 (1996); United States v. Microsoft Corp., 56 F.3d 1448 (D.C. Cir. 1995) (consent decree prohibiting Microsoft from engaging in certain restrictive actions, such as pricing with minimum commitments).

55. See 15 U.S.C. 1 (1996). Traditionally, though, under both the Sherman Act and the Clayton Act, "rule of reason" rather than "per se" analysis is applied to vertical relationships. See, e.g., Continental T.V., Inc. v. GTE Sylvania, Inc., 433 U.S. 36 (1977); see also Clayton Act, 15 U.S.C. 12-26 (1996).

56. See Clayton Act, supra note 55. When a monopolist in one market enters a related market, it often has the ability to leverage its monopoly so as to drive out competing firms in the newly entered market, and if one firm were to gain a dominant position at more than one level of the network environment, access and censorship problems would be a legitimate concern. See, e.g., In the Matter of Policy and Rule Concerning Rates for Dominant Carriers, 4 FCC Rcd 2873 (1989) (acknowledging the economic power of dominant carriers to extend their control to other markets). For example, there is evidence that Microsoft has attempted to leverage its near-monopoly in the OS market to improve the position of its Internet Explorer in the browser market. See Reback et. al, supra note 51 (claiming that Microsoft is attempting to use leveraging power in the OS market in order to control the bottleneck at both ends of the network-desktop and server-and antitrust action is merited). For the view that antitrust law should be applied more cautiously to standard-driven markets like Internet software markets, see Mark A. Lemley, Antitrust and the Internet Standardization Problem, 28 Conn. Law Rev. 1041 (1996).

57. See Lemley, supra note 56.

58. See, e.g., United States v. American Tel. & Tel. Co., 524 F. Supp. 1336 (D.D.C. 1981) (essential facilities doctrine could be a basis for initial restructuring of the voice telephone system).

59. Both the source code (human readable programming language such as FORTRAN or C) and the object code (the machine-readable binary code) are eligible for copyright protection as literary works, but this scope of protection (limited to literal copying) is quite narrow given that it is usually possible to vary the programming of a computer in order to obtain the same end result. See 17 U.S.C. 101 (1996).

60. Artistic elements that a program displays or plays, such as graphics or music, are eligible for copyright protection or trademark protection. See 17 U.S.C. 102 (1996).

61. Functional qualities of software can be protected by patent law. See 35 U.S.C. 101 (1996); Examination Guidelines for Computer Related Inventions, 51 PATENT, TRADEMARK, & COPYRIGHT J. 422 (1995).



64. Pamela Samuelson et al., A Manifesto Concerning the Legal Protection of Compuer Programs, 94 COLUM. L. REV. 2308 (1994) [hereinafter Samuelson et al., Manifesto].

65. Id.

66. J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms, 94 COLUM. LAW REV. 2432 (1994) [hereinafter Reichman, Legal Hybrids]. See also, J.H. Reichman & Pamela Samuelson, Intellectual Property Rights in Data?, 50 VANDERBILT L. REV. 51 (1997) (proposing a hybrid protection scheme for databases, but a more narrow scheme than the sui generis proposals in the United States and Europe).

67. NII WHITE PAPER, supra note 62, at 114-23, 213-24, 230-35.

68. See id. at 221-25; Digital Performance Right in Sound Recordings Act, Pub. L. 104-39, 109 Stat. 336 (1995).


70. 982 F.2d 693 (2d Cir. 1992). This test is based on the abstraction-filtration-comparison test set forth by Judge Learned Hand over 60 years ago. See Nicholas v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930).

71. See, e.g., Lotus Dev. Corp. v. Borland Int'l Corp., 49 F.3d 807 (1st Cir. 1995) aff'd per curiam 116 S. Ct. 804 (1996).

72. See PERRITT, INFORMATION SUPERHIGHWAY at 458-59 (Table 10-1: Protecting Intellectual Property Without Copyright).

73. 86 F.3d 1447 (7th Cir. 1996). Compare Maureen O'Rourke, Copyright Preemption After the ProCD Case: A Market-Based Approach, 12 BERKELEY TECH. L.J. 53 (1997) (favoring the supplementation of copyright law by contract law in digital content licensing arrangements) with Niva Elkin-Koren, Copyright Policy and the Limits of Freedom of Contract, 12 BERKELEY TECH. L.J. 93 (1997) (arguing that copyright law still has an important role in the licensing of digital content).

74. The terms of the shrinkwrap license in ProCD were not visible until after the purchaser broke the seal of the package. However the court reasoned that the license should still be upheld because the user could return the product for a refund if he did not consent to the terms. The court also noted that the license agreement was displayed every time the user ran the software, preventing the user from proceeding without accepting the terms of the license. Id. See also UCC Proposed Article 2B-308 Mass Market Licenses (May 3, 1996 Draft).

75. See PERRITT, INFORMATION SUPERHIGHWAY at 442-445. See also Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994) (finding that the "substantial similarity" standard used to show copyright infringement can also be used for non-copyrightable works to show reverse passing off).

76. These principles are discussed more fully in Part III.A, supra. See also PERRITT, INFORMATION SUPERHIGHWAY at 458-464.

77. See id.

78. See Plant Variety Protection Act, 7 U.S.C. 1611, 2321-2582 (1994).

79. See Semiconductor Chip Protection Act of 1984, 17 U.S.C. 901-914 (1994).

80. See Orphan Drug Act, Pub. L. 97-414, 96 Stat. 2049 (amending scattered sections of 21 U.S.C., 26 U.S.C., 35 U.S.C., and 42 U.S.C. (1994)).

81. See Mark Stefik, Shifting the Possible: How Trusted Systems and Digital Property Rights Challenge Us to Rethink Digital Publishing, 12 BERKELEY TECH. L.J. 137 (1997).

82. For example, one of the technologies being developed is the "trusted printer," which can automatically log a billing transaction every time a document is printed, embed hidden watermarks in the document to foil would-be counterfeiters, and understand and obey "digital rights" language which serves as a catalog of a user's rights in that document. See id. at 139-44.

83. The Working Group dismisses patent, trademark, and trade secret doctrines as needing no revision at the present time. See NII WHITE PAPER, supra note 62, at 236-37.

84. See id. at 28, 213-21. See also, Pamela Samuelson, The Copyright Grab, WIRED, Jan. 1996, at 134.

85. See 17 U.S.C. 109 (1996).

86. Compare Religious Technology Center v. Netcom On-line Communications Services, 907 F. Supp. 1361 (1995) (ISPs cannot be held strictly liable for the actions of their users) with NII WHITE PAPER, supra note 62, at 114-23 (stating the current law as imposing strict liability on ISPs for the actions of their users). See also Giorgio Bovenzi, Liabilities of System Operators on the Internet, 11 BERKELEY TECH. L.J. 93 (1996) (considering potential theories of imposing liability on service providers and system operators for the actions of their system's users).

87. This policy is contrary to the Supreme Court's holding in Sony Corp. v. Universal Studios, Inc. 464 U.S. 417 (1984) (copyright owners cannot stop distribution of technology which has substantial noninfringing uses). See also Julie Cohen, Some Reflections on Copyright Management Systems and Laws Designed to Protect Them, 12 BERKELEY TECH. L.J. 161 (1997).

88. See PERRITT, INFORMATION SUPERHIGHWAY at 436. One exception Perritt notes, however, is that limitations should be placed on how cached copies may be used. For example, America Online should not be able to cache copies of a web site which requires a fee to access, and then allow subsequent users to access its cached version for free. Id.

89. See PERRITT, 1997 SUPPLEMENT, supra note 11, at 58; see also DSC Communications Corp. v. DGI Technologies, Inc., 81 F.3d 597 (5th Cir. 1996) (affirming district court's refusal to enjoin the booting up of allegedly infringing telephone switch microprocessor cards, based on copyright misuse defense).

90. The book's initial publication date was January 5, 1996, and the first pocket part supplement (the substance of which was incorporated in this review), which totalled over 100 pages, was released on December 13, 1996.

91. Several software companies offer this option for purchasers of their CD-ROM products that require updates (for example, movie review products). See, e.g. Microsoft Cinemania Updates (visited Feb. 1, 1997) <http://www.msn.com/cinemania>.

92. See Villanova Center for Information Law and Policy (visited April 2, 1997) <http://www.law.vill.edu>.

93. For a "point of entrance" to the virtual library of legal information available online, see Berkeley Technology Law Journal (visited May 8, 1997) <http:// server.berkeley.edu/BTLJ>.