Interview: Bruce Lehman
At at the time of the interview, Bruce Lehman was the Assistant
Secretary of Commerce, and Commissioner of Patents and Trademarks.
Copyright © 1994 Simon
Higgs. All Rights reserved.
Simon Higgs: With regard to domain registrations, since every
site on the Internet is identified by its own name, are these domain
names regarded as being a trademark?
Bruce Lehman: You know, trademarks are nothing more than official
recognition of something that already exists. It's the consumer's perception
that something is in fact a trade name, and so to the extent that names
of people on the Internet acquire what we call secondary meaning, that
is, that they come to be understood by the consuming public as the source
of a particular good or service, then those words are trademarked. Now,
if they do not, cannot be recognized as the source of a particular good
or service, then they're not trade marked. For example, my name is not
a trademark. On the other hand, if I go into business selling information
through the Internet, and use my name, my name might become a trademark.
Simon Higgs: Okay, because earlier in the year, there was an
Internet site which was called MTV.COM, and that was being run by Adam
Curry (one of MTV's VJ's) apparently from his house. He'd registered
the domain name with Internic in his own name with the permission of
MTV. What happened was, he decided to go into business to become an
Internet vendor, so to speak. He left MTV where he had been hosting
the Top 20 Countdown. Once he left MTV's employ, they then turned around
and said, well, MTV is our trademark, and even though he'd registered
[the domain name], they're still saying, no, that's our name. Can you
comment on that?
Bruce Lehman: Well, to the extent this matter would be in litigation,
I don't want to try to comment on litigation, but I can tell you a little
bit about the principles of trademark law that govern this, and they're
really quite simple. The trademark law, unlike the patent law and the
copyright law, really exists to serve the consumer, not to serve the
interests of the trademark owner. The primary operating principle of
it is that the consumer is not supposed to be confused by a plethora
of different products all bearing what appear to be similar names, so
that when the consumer thinks of MTV, he knows that he's getting something
that comes from the source he identifies traditionally as being MTV.
And so those are really the principles that would be applied here, why
trademark examiner and trademark registration are ultimately by accord.
So if in fact the letters MTV have acquired in the minds of consumers
in a given field the reputation that they represent products that only
come from that one company, then I would say that MTV has, probably,
a pretty strong trademark, and that someone else just can't take it
away from them very easily. Those are really the principles that are
involved here. Obviously, like in everything else in the law, sometimes
there are close calls, some confusion, but we've had for 200 years now
a legal system to be able to work this out, and I'm sure that will happen
in this case.
Simon Higgs: What about with Software Advertising? There was
a patent that was granted to them, basically saying that anybody who
places any advertising materials in software has to basically either
pay them a royalty and is subject to a patent. Do you know where the
status of that appeal is?
Bruce Lehman: Well, we in the Patent and
Trademark Office have about 190,000 applications for patents every
year. We issue just about 100,000 patents. Every once in a while
there are some close calls, I suppose, or even some mistakes in the
issuance of those patents, and that's why we have a procedure known
as re-examination -- where we think maybe we made a mistake we can
take a second look. And that's what was done with regard to this
so-called software advertising patent, just as we did with the Compton's
New Media patent. Now, the primary criteria for getting a patent
is to show that your invention that you've come up with, whatever
it may be, is useful, novel and non-obvious. Now, we all know what
useful means. Novel means that it's never existed anywhere in the
world before, and non-obvious means that it's not obvious to anyone
ordinarily skilled in the particular technology that is involved.
In order to make a patent determination, a patent examiner has to
look at what we call the prior art, that is, all the pre-existing
technology, the pre-existing products that are out there, to find
out whether this new, presumed invention meets that test. That's
a big job, in fact, partly because the amount of technology that
a patent examiner has looked at has increased by about 30% in just
the last decade from what it was in the whole history of the world
before that. Sometimes it's hard to get all that information, and
that's particularly true in the emerging area of software technology,
where we didn't even issue patents prior to 1981, and so we don't
have a very good database of the pre-existing technology in the Patent
and Trademark Office. But every once in a while we can end up making
a mistake, and in this area some people have told us that we have
made a mistake, and so we have undertaken to re-examine a number
of those patents, including the one that you just referred to, and
hopefully after that re-examination we'll be able to make that determination,
and decide whether it was a valid patent, or whether it wasn't.
Simon Higgs: So you're treating software as different. I mean,
you can't patent, necessarily, a mathematical algorithm unless you can
fix it in a tangible form. Is that true?
Bruce Lehman: Well, the ideas and mathematical principles,
naturally occurring phenomena of nature and so on, are not patentable.
However, if the discovery of such a phenomenon is in connection with
a particular machine or device, in order to produce some useful product,
then you do get into the area where you can eventually get a patent.
And that's the situation with all software. It has as its base, obviously,
certain mathematical algorithms. I like to think of it - a little bit
like, you can't patent the alphabet, but on the other hand, if you can
use words and numbers in connection with a machine such as a computer
to produce some useful product, then you may be in the realm of invention,
and those are the kinds of inventions that we have patented at the Patent
and Trademark Office, and the Supreme Court has told us that we can
and should patent them.
Simon Higgs: With the distribution of music, you remember the
decision with 2 Live Crew earlier in this year, which basically expanded
upon what seems to be the fair use of songs within digital media. Can
you comment on that?
Bruce Lehman: Well, first of all, we have
to distinguish here, of course, between patents and copyrights. A
moment ago we were talking about the patentability of software. Copyright
law provides a little different kind of protection. A patent really
protects an invention, literally the idea of the invention. The copyright
doesn't do that at all. Copyright simply gives you the exclusive
right to control the use of the particular expression in a tangible
medium of your idea. Now, that tangible medium could be in the form
of a writing, could be in the form of a videotape, form of a computer
program, in the form of some other kind of digitized work that might
move through the Internet. And so that's what's protected by copyright.
Now, with regard to issues such as sampling, for example, where the
person - where someone takes a digital work that has been fixed,
an expression, a copyrighted work that has been fixed, and they use
that to create something else, they have created what we call in
the copyright world a derivative work. They have taken somebody else's
work and they've built on it to create something new. Now, they can
have a copyright in that new work, that derivative work, but they
might not necessarily be able to exercise or use that copyright unless
they have the permission of the underlying author's work. That's
basically the same principle that we use when you make a film based
on a novel. The movie company has a copyright on its film, but also
the novelist who may have created the underlying story has a derivative
right in that movie, and the movie company has to get permission
to exercise that derivative right. They have to pay the novelist.
And the same thing is true in sampling or other kinds of digital
techniques that will be used in this new technology in the sound
Simon Higgs: In the new intellectual property
draft here [the final report is now available],
what specific changes are you seeing as being absolutely necessary to
copyright law in order to be able to protect the individual's right,
the individual copyright holder?
Bruce Lehman: Well, in the area that we were just discussion,
that is, taking somebody else's digitized work and modifying it in some
way or other, I don't think that we need to change the law at all, and
we have 140-some page report here, and all but about 15 pages just really
explain how the existing law already covers the activities of the modern
Information Infrastructure, and this is a very good example, I think,
that where you take digital work and you mix it up, change it to create
a derivative work, that's really no different than taking written words
and mixing them up to create an additional or a new work. The area that
you focused on, however, where there are some serious potholes in the
Information Superhighway, if you will, really have more to do with what
happens when you distribute the digital product through this electronic
pipeline, and when that happens, you don't have the benefit that you've
traditionally had when you have a physical copy of something, whether
it be a can of 35 millimeter film or a videocassette, or the printed
page. And so we've had to recognize, and we're proposing that the law
be changed to recognize, that distributing a copy of a work through
the Internet is the same thing as giving somebody a physical copy of
a printed page.
Simon Higgs: So this is going to be basically a new definition
of what the fixed form is and the tangible media that it can exist in.
Bruce Lehman: That's correct. Really, it is. It really boils
down to that. And there are ancillary questions there, such as, you
know, when does a work get published? You know, it's pretty - historically,
we think of publishing as being when you print something up in a magazine
or a book, and send out to distributors thousands of copies. Well of
course, nowadays, I might be sitting in my house and I might in effect
electronically publish a work, putting it out on the Internet and making
it available to tens of thousands or even millions of users and I won't
have gone through a particular publishing house. I won't have had it
printed up at all, but that still is publishing. And we need to recognize
that in the new law. And then that brings into consideration other additional
issues in the copyright law, including what we call the first sale doctrine.
And that is that historically when I get a physical copy of a work I'm
kind of permitted to do whatever I want with it. I'm permitted to tear
it up, or if I want to give it to you or lend it or rent it out I'm
able to do that. From time to time over the years Congress has restricted
that fair use right. Where the unfettered use of the first sale doctrine
would, would somehow or other restrict the economic rights of the copyright
owner, and that would be, for example, in the rental of computer programs.
If I could rent computer programs, then somebody could obviously take
them home and download them and I wouldn't be able to sell my computer
Simon Higgs: So a lot of the issue has been in the past many
bulletin boards have distributed music, either in digital form as a
digital audio work or as basically a musical word processing document
called a minifile. There was a lawsuit filed against CompuServe for
copyright infringement in December, 1993 that basically - I mean, their
whole suit was done on behalf of 140 publishers, a class action suit,
and was seeking damages of about a billion dollars. That's one of the
issues I know the publishers are probably going to want to address is,
how can this type of distribution be protected? What is the method of
royalties that can be brought back to the publishers or the copyright
holders through the distribution methods on the Internet?
Bruce Lehman: Well, you know that one of
the rights that a copyright holder has is the right to publicly perform
or display their work, and then they also have the right to distribute
the work in copies. Now, this is something that becomes a little
unclear, a little fuzzy when you're dealing with the electronic environment
and when you're dealing with the Internet. One thing that is very,
very clear is that nothing in the copyright law ever has or was intended
to just permit people to take somebody else's work without their
permission. The Electronic Superhighway makes that very easy to do,
sometimes, and so we forget sometimes that other people have certain
rights. To the extent that a computer distribution service takes
somebody's work or takes one of their existing copyrights and doesn't
get their permission, then I think we've got a problem. Now, we'll
see how that plays out in the cast that you just mentioned. There
are arguments on both sides there, but the courts will work their
way through that. One of the issues that our report really deals
with, and that is, what is the boundary between a public performance
of a work and an electronic distribution of the work? You know that
we have in the existing world of print works and of television and
radio and sound recordings, we have the music publishing right on
one hand, and then we have the public performance right on the other
hand, and the public performance right is taken care of, basically,
by the performing rights societies such as ASCAP and BMI and music
publishers, so the - what we call the publishing right. Generally
speaking, publishing rights are intended the right to actually fix
the music. For example, if I want to - what we call the mechanical
right, if I want to actually record somebody's published music on
a record, I have to get their permission. And also the publishing
right can involve the right to distribute copies of a given work,
such as sheet music. Now, when I play my sound recording on the radio,
for example, which includes the mechanical right that's already been
taken care of, of course, then another element of the copyright law
comes into play, and that is the right to receive royalties from
the radio station for the public performance of the work. When you're
talking about distributing or sending a performance of a musical
work through the Internet, then it gets to be a little bit cloudy.
Is that the distribution of copies of the work, or is that a public
performance like sending something out on the radio? In our report,
we have tentatively concluded that the way you work through that
issue is to look at the primary purpose or effect of the activity,
and if the primary purpose or effect was intended to be a distribution
to a wide audience, like a radio audience, then you're in the realm
of public performance, and if you really are intending to distribute
individual copies of a work, such as audio on demand, then you're
in the publishing area, and you would be in the area of the publisher's
Simon Higgs: So the definition of that would be that if it
was television programming which you have no control over, that's dealt
with differently from you saying well, I want to hear this record or
watch this television program.
Bruce Lehman: That's correct.
Simon Higgs: And I'm going to do it digitally.
Bruce Lehman: That's correct. Those are the basically the guiding
principles on where the receiver doesn't have any control of what they
receive other than maybe, you know, flipping through a few television
channels. You're really in the area of public performance. Where you
can specifically dial up a given work on the Internet or on the Information
Highway, you've really received a copy of the work, and you have - it
has been distributed to you, and that distribution right, then, that
is the distribution right as opposed to the public performance right,
has come into play.
Simon Higgs: So it's basically a sale of that work as far as
royalties are concerned?
Bruce Lehman: That's correct, yes.
Simon Higgs: So that means that people will be allowed to record
at home, and they will be allowed to have their personal private use
of those recordings to do whatever they want with.
Bruce Lehman: For the most part, yes. We do have some restrictions
on what we call the first sale doctrine that we are proposing. That's
because a digital work is very difficult to control, so that one thing
that is not going to be permitted, for example, is your right to record
a work and then distribute it to five or ten of your friends. That would
be violating the copyright owner's right.
Simon Higgs: But would I be able to say go make me five copies
for somebody to distribute them?
Bruce Lehman: Yes, you could. Once - yes. Nothing - now, this
is very important to understand. Nothing here prevents the use of licensing
to take care of any of these problems. We expect that licensing will
take care of these problems, and that is that the marketplace will respond
by providing ways to let people do whatever they want with works. You
know, right now every month you get a telephone bill, and most of us
now have long-distance telephone charges. Sometimes we even have charges
from use of our cellular phone to distant countries. Sometimes we even
have charges even from foreign telephone companies on the bill. They
all come in the form of one telephone bill that shows how many minutes
we talked. The same thing can be done with the use of electronic products
on the Internet. You can be billed for these uses, and these individual
uses can be sufficiently inexpensive that they're not much different
than a long-distance telephone call of one or two dollars on your telephone
Simon Higgs: Who do you see as being the service provider of
the future? What type of company are they going to be? Are they going
to be, you know - is it going to be a telephone carrier? Is it going
to be a cable company? Is it going to be a new entity? When you're legislating
the law and you're looking at how you want things to work on the Information
Superhighway, what do you envision happening?
Bruce Lehman: Well, I don't have a crystal ball. I can guess.
Simon Higgs: Just give it your best shot.
Bruce Lehman: We're already seeing the evolution of these
industries. You mentioned one company like CompuServe or various bulletin
board services could perform this function. In fact, cable companies,
to the extent that they get into the business, could perform this
function. One of the things that continued deregulation of telephone
companies is all about is that we may let telephone companies get
into this business, but you've even got credit card companies like
Master Card and Visa and American Express, since a lot of this involves
billing, that might want to get into the business. I suspect you're
going to see a number of different entities getting into various aspects
of the business, and eventually the market will shake out which ones
are the ones which are the methods of distribution and payment that
the consumer most prefers. And I'm sure that there will end up being
a number of them, because you will continue to have competition. You
won't have one or two companies dominating the business.