Page:Sega Enterprises v. Accolade.pdf/12

 section 107. That argument verges on the frivolous. Each of the exclusive rights created by section 106 of the Copyright Act is expressly made subject to all of the limitations contained in sections 107 through 120. 17 U.S.C. § 106. Nothing in the language or the legislative history of section 117, or in the CONTU Report, suggests that section 117 was intended to preclude the assertion of a fair use defense with respect to uses of computer programs that are not covered by section 117, nor has section 107 been amended to exclude computer programs from its ambit.

Moreover, sections 107 and 117 serve entirely different functions. Section 117 defines a narrow category of copying that is lawful per se. 17 U.S.C. § 117. Section 107, by contrast, establishes a defense to an otherwise valid claim of copyright infringement. It provides that particular instances of copying that otherwise would be actionable are lawful, and sets forth the factors to be considered in determining whether the defense applies. Id. § 107. The fact that Congress has not chosen to provide a per se exception to section 106 for disassembly does not mean that particular instances of disassembly may not constitute fair use.

Second, Sega maintains that the language and legislative history of section 906 of the Semiconductor Chip Protection Act of 1984section 906 of the Copyright Act of 1976, as added by the Semiconductor Chip Protection Act of 1984 [sic] (SCPA) establish that Congress did not intend that disassembly of object code be considered a fair use. Section 906 of the SCPA [sic] authorizes the copying of the “mask work” on a silicon chip in the course of reverse engineering the chip. 17 U.S.C. § 906. The mask work in a standard ROM chip, such as those used in the Genesis console and in Genesis-compatible cartridges, is a physical representation of the computer program that is embedded in the chip. The zeros and ones of binary object code are represented in the circuitry of the mask work by open and closed switches. Sega contends that Congress’s express authorization of copying in the particular circumstances set forth in section 906 constitutes a determination that other forms of copying of computer programs are prohibited.

The legislative history of the SCPA reveals, however, that Congress passed a separate statute to protect semiconductor chip products because it believed that semiconductor chips were intrinsically utilitarian articles that were not protected under the Copyright Act. H.R.Rep. No. 781, 98th Cong., 2d Sess. 8–10, reprinted in 1984 U.S.C.C.A.N. 5750, 5757–59. Accordingly, rather than amend the Copyright Act to extend traditional copyright protection to chips, it enacted “a sui generis form of protection, apart from and independent of the copyright laws.” Id. at 10, 1984 U.S.C.C.A.N. at 5759. Because Congress did not believe that semiconductor chips were eligible for copyright protection in the first instance, the fact that it included an exception for reverse engineering of mask work in the SCPA says nothing about its intent with respect to the lawfulness of disassembly of computer programs under the Copyright Act. Nor is the fact that Congress did not contemporaneously amend the Copyright Act to permit disassembly significant, since it was focusing on the protection to be afforded to semiconductor chips. Here we are dealing not with an alleged violation of the SCPA, but with the copying of a computer program, which is governed by the Copyright Act. Moreover, Congress expressly stated that it did not intend to “limit, enlarge or otherwise affect the scope, duration, ownership or subsistence of copyright protection … in computer programs, data bases, or any other copyrightable works embodied in semiconductor chip products.” Id. at 28, 1984 U.S.C.C.A.N. at 5777. Accordingly, Sega’s second statutory argument also fails. We proceed to consider Accolade’s fair use defense.

Section 107 lists the factors to be considered in determining whether a particular use is a fair one. Those factors include: (1) the purpose and character of the use, including whether such use is of a