Page:Sega Enterprises v. Accolade.pdf/17

 defense is that translation of a program from object code into source code cannot be accomplished without making copies of the code.

Second, the record provides no support for a conclusion that a viable alternative to disassembly exists. The district court found that Accolade could have avoided a copyright infringement claim by “peeling” the chips contained in Sega’s games or in the Genesis console, as authorized by section 906 of the SCPACopyright Act, as amended by the SCPA [sic], 17 U.S.C. § 906. Even Sega’s amici agree that this finding was clear error. The declaration of Dr. Harry Tredennick, an expert witness for Accolade, establishes that chip peeling yields only a physical diagram of the object code embedded in a ROM chip. It does not obviate the need to translate object code into source code. Atari Games Corp., 975 F.2d at 843–44.

The district court also suggested that Accolade could have avoided a copyright infringement suit by programming in a “clean room”. That finding too is clearly erroneous. A “clean room” is a procedure used in the computer industry in order to prevent direct copying of a competitor’s code during the development of a competing product. Programmers in clean rooms are provided only with the functional specifications for the desired program. As Dr. Tredennick explained, the use of a clean room would not have avoided the need for disassembly because disassembly was necessary in order to discover the functional specifications for a Genesis-compatible game.

In summary, the record clearly establishes that disassembly of the object code in Sega’s video game cartridges was necessary in order to understand the functional requirements for Genesis compatibility. The interface procedures for the Genesis console are distributed for public use only in object code form, and are not visible to the user during operation of the video game program. Because object code cannot be read by humans, it must be disassembled, either by hand or by machine. Disassembly of object code necessarily entails copying. Those facts dictate our analysis of the second statutory fair use factor. If disassembly of copyrighted object code is per se an unfair use, the owner of the copyright gains a de facto monopoly over the functional aspects of his work—aspects that were expressly denied copyright protection by Congress. 17 U.S.C. § 102(b). In order to enjoy a lawful monopoly over the idea or functional principle underlying a work, the creator of the work must satisfy the more stringent standard imposed by the patent laws. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 159–64, 109 S.Ct. 971, 982–84, 103 L.Ed.2d 118 (1989). Sega does not hold a patent on the Genesis console.

Because Sega’s video game programs contain unprotected aspects that cannot be examined without copying, we afford them a lower degree of protection than more traditional literary works. See CAI, 23 U.S.P.Q.2d at 1257. In light of all the considerations discussed above, we conclude that the second statutory factor also weights in favor of Accolade.

As to the third statutory factor, Accolade disassembled entire programs written by Sega. Accordingly, the third factor weighs against Accolade. The fact that an entire work was copied does not, however, preclude a finding of fair use. Sony Corp., 464 U.S. at 449–50, 104 S.Ct. at 792; Hustler, 796 F.2d at 1155 (“Sony Corp. teaches us that the copying of an entire work des not preclude fair use per se.”). In fact, where the ultimate (as opposed to direct) use is as