Recent Developments in Computer Law: An Update, 12 J. Marshall J. Computer & Info. L. 395 (1993)

Authors

Bradley J. Hulbert

Abstract

This article provides an overview of case law that had developed in 1993 relating to computers, summarizing cases in the following fourteen areas of the law: 1. Administrative - This section briefs a case holding that the Bush Administration's e-mail records fell within the scope of the Federal Records Act. 2. Anti-trust - This section includes: an overview of a case defining "sham" lawsuits and a summary of a case holding that a large software firm's supplier requirements may define a relevant market for an anti-trust analysis. 3. Civil Procedure - This section gives a brief summary of a case where a computer chip manufacturer withheld documents relating to its licensing agreements in a copyright infringement case, as well as a summary of a case holding that trade secrets must be defined with specificity in court orders. 4. Contracts - This section provides overviews of cases holding that: work stoppage by a software manufacturer may not constitute willful misconduct; a trademark infringement suit is not an "advertising injury' as used in general liability insurance policies; licensing provisions should be unambiguous; a failure to complain about malfunctioning software may estop a later suit; failure to pay a computer programmer is unlikely to be a "pattern of racketeering" under RICO. 5. Copyrights - The cases reviewed in this section hold that: a copyright owner's inability to produce the source code of which it asserts rights does not preclude a finding of copyright infringement and trade secret misappropriation; a computer program's use of unnecessary features is strong evidence of copying; where a user interface includes mostly uncopyrightable elements, infringement requires both access and "virtual identity"; not all "work-for-hire" factors are of equal importance; the creation of a basic video game is evidence of at least some creativity; reverse engineering of a video game console to develop a compatible cartridge may be fair use; reverse engineering of a computer chip, while condoned by statute, requires thorough documentation. 6. Criminal - This section's cases hold that: insufficient jury verdicts are insufficient to overturn a conviction; with a search warrant designating only computer hardware, the government may also search a computer's hard drive; unauthorized reception of cable television violates U.S. wiretap law; the felony status of infringement of a copyright on software relates to the retail value of the software; a longer term of imprisonment may be imposed where a computer programmer betrays a position of trust. 7. Employment relations - The cases in this section hold that: there is no action for age discrimination where the terminated employee had refused to utilize a new computer system; an ex-employee's covenant not to compete in the computer industry must be no broader than reasonably necessary for the protection of a legitimate business interest. 8. Foreign law - This section describes a United Kingdom high court decision that found copyright infringement of a computer program based on organizational similarities. 9. Patents - The cases described in this section hold that: technical information given by an inventor to a patent attorney my be privileged; patent rights may belong to an employer, pursuant to an employment agreement, even if the employee resigns before seeking a patent; the disclosure of a microprocessor, without the firmware used by the microprocessor, may be a sufficient description. 10. Privacy law - This section describes a Clinton administration proposal for voluntary encoding of telephone and computer transmissions. 11. Tax law - The cases the author cites in this section hold that a municipal sales tax may apply, even where computer equipment is both delivered to a common carrier and assembled outside of the relevant state; modified software may be considered "intangible property." 12. Trademarks - The cases described in this section hold that: prior sale, rather than prior sales activities, may give a user superior trademark rights; an application to register numerical marks based on an intent to use them is proper and may not be opposed as being descriptive unless a statement of use has been filed. This section also describes the U.S. Trademark Office's denial of a petition by Microsoft to register "Windows." 13. Trade regulation - The case in this section holds that the Lanham Act may empower a court to exert control over foreign subsidiaries of a party before the court. 14. Trade secrets - The cases in this section hold that: unless the owner of alleged trade secrets can identify valuable information that was not publicly available, there can be no claim for trade secret theft; a software licensee may be liable for misappropriation of trade secrets if it should have known that the licensor's software included the proprietary information of others.This article provides an overview of case law that had developed in 1993 relating to computers, summarizing cases in the following fourteen areas of the law: 1. Administrative - This section briefs a case holding that the Bush Administration's e-mail records fell within the scope of the Federal Records Act. 2. Anti-trust - This section includes: an overview of a case defining "sham" lawsuits and a summary of a case holding that a large software firm's supplier requirements may define a relevant market for an anti-trust analysis. 3. Civil Procedure - This section gives a brief summary of a case where a computer chip manufacturer withheld documents relating to its licensing agreements in a copyright infringement case, as well as a summary of a case holding that trade secrets must be defined with specificity in court orders. 4. Contracts - This section provides overviews of cases holding that: work stoppage by a software manufacturer may not constitute willful misconduct; a trademark infringement suit is not an "advertising injury' as used in general liability insurance policies; licensing provisions should be unambiguous; a failure to complain about malfunctioning software may estop a later suit; failure to pay a computer programmer is unlikely to be a "pattern of racketeering" under RICO. 5. Copyrights - The cases reviewed in this section hold that: a copyright owner's inability to produce the source code of which it asserts rights does not preclude a finding of copyright infringement and trade secret misappropriation; a computer program's use of unnecessary features is strong evidence of copying; where a user interface includes mostly uncopyrightable elements, infringement requires both access and "virtual identity"; not all "work-for-hire" factors are of equal importance; the creation of a basic video game is evidence of at least some creativity; reverse engineering of a video game console to develop a compatible cartridge may be fair use; reverse engineering of a computer chip, while condoned by statute, requires thorough documentation. 6. Criminal - This section's cases hold that: insufficient jury verdicts are insufficient to overturn a conviction; with a search warrant designating only computer hardware, the government may also search a computer's hard drive; unauthorized reception of cable television violates U.S. wiretap law; the felony status of infringement of a copyright on software relates to the retail value of the software; a longer term of imprisonment may be imposed where a computer programmer betrays a position of trust. 7. Employment relations - The cases in this section hold that: there is no action for age discrimination where the terminated employee had refused to utilize a new computer system; an ex-employee's covenant not to compete in the computer industry must be no broader than reasonably necessary for the protection of a legitimate business interest. 8. Foreign law - This section describes a United Kingdom high court decision that found copyright infringement of a computer program based on organizational similarities. 9. Patents - The cases described in this section hold that: technical information given by an inventor to a patent attorney my be privileged; patent rights may belong to an employer, pursuant to an employment agreement, even if the employee resigns before seeking a patent; the disclosure of a microprocessor, without the firmware used by the microprocessor, may be a sufficient description. 10. Privacy law - This section describes a Clinton administration proposal for voluntary encoding of telephone and computer transmissions. 11. Tax law - The cases the author cites in this section hold that a municipal sales tax may apply, even where computer equipment is both delivered to a common carrier and assembled outside of the relevant state; modified software may be considered "intangible property." 12. Trademarks - The cases described in this section hold that: prior sale, rather than prior sales activities, may give a user superior trademark rights; an application to register numerical marks based on an intent to use them is proper and may not be opposed as being descriptive unless a statement of use has been filed. This section also describes the U.S. Trademark Office's denial of a petition by Microsoft to register "Windows." 13. Trade regulation - The case in this section holds that the Lanham Act may empower a court to exert control over foreign subsidiaries of a party before the court. 14. Trade secrets - The cases in this section hold that: unless the owner of alleged trade secrets can identify valuable information that was not publicly available, there can be no claim for trade secret theft; a software licensee may be liable for misappropriation of trade secrets if it should have known that the licensor's software included the proprietary information of others.

Recommended Citation

Bradley J. Hulbert, Recent Developments in Computer Law: An Update, 12 J. Marshall J. Computer & Info. L. 395 (1993)