5
Copyrights, Digital Products, and Federal Laboratories
As described in the previous chapter, issues surrounding the government’s ability to assert intellectual property rights in digital products, most notably software, are a key consideration in advancing their commercialization. Put differently, the ability of federal laboratories to control disposition of their digital products has a significant impact on the range of dissemination pathways available to the labs. For some digital outputs, such as data, the government’s desire for broad dissemination has led to most government data’s being freely available. For software, however, the government’s ability to control its inventions and other inputs into innovation through patenting is more limited, particularly following the decision in Alice v. CLS Bank International 573 U.S. 208 (2014). Further, use of other mechanisms, such as trade secrets or restrictive contractual agreements, may inhibit innovation more broadly.
This chapter explores the potential role of copyright in advancing commercialization of digital products, especially software, created by federal labs. The discussion centers on a key consideration—that digital products created in government-owned, government-operated (GOGO) labs are excluded by Section 105 of the Copyright Act. This exclusion limits the labs’ ability to disseminate and commercialize their digital products relative to government-owned, contractor-operated (GOCO) labs.
OVERVIEW OF COPYRIGHT IN DIGITAL PRODUCTS
The U.S. Copyright Act protects original works of authorship that are fixed in a tangible medium of expression, including digital copies (17 U.S.C. § 102[a]). These works include, among others, literary, pictorial, graphic, and audiovisual works. Literary works include all works “expressed in words, numbers, or other verbal or numerical symbols or indicia” (17 U.S.C. § 101). The following sections outline the degree to which certain digital products are generally copyrightable.
Data and Databases
Despite the expansive reach of the Copyright Act, it is well accepted under U.S. law that no copyright exists in facts, information, or data, as such. The Supreme Court reaffirmed this principle in Feist Publications v. Rural Telephone (499 U.S. 340 [1991]): “That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates.” Under the principles set forth in Feist, the compiler of a collection of data may obtain a “thin” copyright in the creative arrangement and selection of entries in a database, but not in the data elements themselves, singly or in the aggregate.
By contrast, in 1996, the European Union adopted Directive 96/9 on the Legal Protection of Databases (the EU Database Directive), granting 15 years of legal protection to systematically arranged collections of data, information, or other material as long as it is accessible and its producer has made a substantial investment in its compilation (Reichman and Uhlir, 2003). Around the same time, a significant debate occurred in the United States regarding the advisability of enacting similar database protection legislation. Despite several competing proposals in Congress, no such legislation was enacted, leaving databases without formal legal protection in the United States (Reichman and Uhlir, 2003).
Nevertheless, commercial database compilers in the United States have largely compensated for this lack of legal protection by imposing restrictive contractual terms on those who access and use their databases. In some cases, these terms, coupled with technological impediments to access and use (the circumvention of which is prohibited by the Digital Millennium Copyright Act), may serve to limit the use of these data as much as or more than copyright.
Computer Software
The classic legal model of computer software contemplates two basic forms of computer code: source code—programming language instructions written (usually) by a human author; and object code—the machine-readable executable version of a source code program.1 Given the clear analogy between the written programming language code of a software program and other written works of authorship (such as books and articles), computer software has long been considered a “literary work” for purposes of copyright protection (U.S. Copyright Office, 2017, § 721). This is the case even though lines of computer code are purely functional in nature, and copyright generally excludes the functional elements of a work (1 Nimmer on Copyright § 2A.10). By extension, the executable object code version of a computer program, which is manifested as a string of binary digits that is not comprehensible to most humans, is deemed to
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1 Though numerous hybrids and exceptions exist (e.g., pseudo code, interpreted code, etc.), this basic model is the foundation for the legal treatment of software. For a classic discussion of the distinction between object code and source code, see Dratler (1985, pp. 28–32).
constitute a different representation of that same copyrightable work and thus is also subject to copyright (U.S. Copyright Office, 2017, § 721.5), although this position was heavily contested at the outset (Samuelson, 1984; Miller, 1993). The protection of computer software under copyright law is now mandated under the Berne Convention for the Protection of Literary and Artistic Works (as amended on September 28, 1979) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
The degree to which aspects of a computer program beyond its written code instructions, such as its architecture and file structure, can be protected by copyright has also been subject to debate. Copyright protection extends only to the “expression” of an idea and not to “any idea, procedure, process, system, method of operation, concept, principle, or discovery” (17 U.S.C. § 102[b]), as such artifacts can be covered, if at all, by patents, trade secrets, and other forms of protection. Beginning in the 1980s, courts began to distinguish between protectable forms of software expression and unprotectable ideas regarding software architecture and structure (4 Nimmer on Copyright § 13.03[F]; Miller, 1993). Nevertheless, debate continues regarding the lines separating protectable and unprotectable software content, as suggested by the recent dispute in Oracle v. Google (cert. granted [2020]) over whether application programming interfaces (APIs) are copyrightable.
THE GOVERNMENT WORKS COPYRIGHT EXCLUSION
Most government publications, website content, audiovisual works, and other forms of content are copyright eligible in principle when fixed both in traditional (hard-copy, analog media) formats and in digital form. Nevertheless, Section 105(a) of the Copyright Act provides that “protection under this title is not available for any work of the United States Government….” A “work of the United States Government” is “a work prepared by an officer or employee of the United States Government as part of that person’s official duties” (17 U.S.C. § 101). As described in the House Report accompanying the 1976 Copyright Act, “the effect of section 105 is intended to place all works of the United States Government, published or unpublished, in the public domain” (U.S. House, 1976, p. 59).
Despite the broad language of the government works exclusion, there are a number of exceptions. These exceptions, which permit the federal government to hold copyright in certain government works, are discussed below.2
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2 In addition to the exceptions discussed in this section, under the Postal Reorganization Act of 1970, Pub. L. No. 91-375, the U.S. Postal Service is permitted to obtain copyrights on the designs of postage stamps, stamped envelopes, souvenir cards, and other philatelic publications.
Standard Reference Data
In 1968, Congress enacted the Standard Reference Data Act, Pub. L. No. 90-396 (codified at 15 U.S.C. § 290), which recognized that “reliable standardized scientific and technical reference data are of vital importance to the progress of the Nation’s science and technology.” As a result, Congress sought, through the act, “to make critically evaluated reference data readily available to scientists, engineers, and the general public.” To this end, it authorized and directed the secretary of commerce “to provide or arrange for the collection, compilation, critical evaluation, publication, and dissemination” of standardized scientific and engineering reference data (SRD).
To support the public dissemination of SRD, Congress expressly authorized the secretary of commerce or his/her designee to sell SRD provided that “to the extent practicable and appropriate, the prices established for such data may reflect the cost of collection, compilation, evaluation, and publication, and dissemination of the data, including administrative expenses” (15 U.S.C. § 290d). To eliminate any inconsistency between the new right to sell SRD and the government works exclusion in the Copyright Act noted above, the SRD Act created an express exception allowing the secretary to “secure copyright and renewal thereof on behalf of the United States as author or proprietor in all or any part of any standard reference data” notwithstanding any provisions of the Copyright Act to the contrary (15 U.S.C. § 290e).
The original impetus for the 1968 SRD Act may have arisen from concerns that foreign actors, particularly in Japan and the U.S.S.R., were using and reproducing valuable U.S. government data that had been made publicly available, and that legislation was needed to protect U.S. interests from this foreign competition.3
Today, the nation’s SRD is administered by the National Institute of Standards and Technology (NIST), which states that it maintains 49 free and 14 fee-based SRD databases. These databases contain reference data and tools relevant to chemistry, engineering, materials science, computer science, physics, and other technical disciplines. The cost of fee-based SRD databases ranges from approximately $100 to $2,000, although the NIST website states that it does not accept purchase orders of less than $2,500.4
Changes to copyright law in the decades following the enactment of the SRD Act cast significant doubt on its continuing validity. The most important copyright development relevant to SRD was the Supreme Court’s 1991 decision in Feist, in which the Court unambiguously rejected copyright protection for compilations of data. While the copyright status of data compilations may have been unclear in 1968 when the SRD Act was enacted, it was no longer ambiguous by 1991; compilations of data, including SRD, are not protected by copyright in
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3 See Nodiff, 1984, pp. 97–98 (discussing similar concerns arising from National Technical Information Services [NTIS] data).
the United States. Nonetheless, the SRD Act, amended as recently as 2017, continues to give the secretary of commerce the power to obtain copyrights in SRD data. Thirty years after Feist, NIST’s SRD may be the only unoriginal dataset in the United States that is protected by copyright. It also represents the first statutory exception to the exclusion of government works from copyright protection.
Transfers of Copyright to the Government
One exception to the government works exclusion occurs when ownership is transferred to the government from private sector entities. Although Section 105(a) of the U.S. Copyright Act generally precludes government copyright in its works, the Section nonetheless provides that “the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.” Such transfers are rare, but do occur. For example, in connection with the development of the Ada computer programming language for the Department of Defense (DOD) from the 1970s through 1990s, DOD commissioned and subsequently obtained copyright in a number of explanatory documents from the Illinois Institute of Technology Research Institute (IITRI), which operated DOD’s Ada Joint Program Office (IITRI, 1994). Some government-operated federal laboratories may use this mechanism to circumvent the copyright exclusion of Section 105(a). As one 2011 report notes, “Some GOGO laboratories have found creative ways to assert copyright protection. For example, one laboratory…employee explained that the laboratory obtains copyrights for software by asking the industry partner to assert the rights to the intellectual property, and then assign those rights to the laboratory” (Hughes et al., 2011, p. 53). Circumvention of the government works exclusion in this manner is expressly discouraged by the House Report on the 1976 Copyright Act.5
Foreign Copyright in U.S. Government Works
As noted above, Section 105(a) of the Copyright Act provides that “copyright protection under this title is not available for any work of the United States Government” (emphasis added). Some federal agencies have interpreted the exclusion under Section 105(a) to mean that the exclusion should apply only to the U.S. copyright that may inhere in government works, but not to foreign copyrights that may arise with respect to those same works. The Senate report accompanying the adoption of the 1976 Copyright Act makes this intention clear:
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5 “It can be assumed that, where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private copyright would be withheld” (U.S. House 1976, p. 59). Professor Nimmer appears to agree: “Could the U.S. Government thus claim a copyright in a work by this indirect method which it would be precluded from claiming if the work were in the first instance made in a for hire relationship? It seems unlikely that the courts would permit such a subterfuge” (1 Nimmer on Copyright § 5.06[B][3]).
The prohibition on copyright protection for United States Government works is not intended to have any effect on protection of these works abroad. Works of the governments of most other countries are copyrighted, and there are no valid policy reasons for denying such protection to United States Government works abroad. (U.S. Senate, 1975, p. 56)
Nonetheless, it is not clear that Section 105(a), as a matter of U.S., foreign, or international law, actually does empower a U.S. government agency to hold a foreign copyright in a government work. The existence of such a foreign copyright is, of course, a question not of U.S. law but of the law of the foreign jurisdiction in question, as it is informed by the Berne Convention and other relevant international agreements. It is beyond the scope of this report to review the copyright laws of the 177 other signatory states to the Berne Convention, not to mention those of the handful of nonsignatory states. Yet some relevant observations can be made on the basis of the text of the Convention itself, as well as its application under U.S. law.
For example, while the Convention addresses the types of works that must be protected under the national copyright laws of every member state, it does not explicitly address ownership of those works. Ownership of a copyright is a matter of national law. And when an entity wishes to enforce a copyright in a country other than that in which the copyright originated, traditional conflict-of-laws rules must be applied. While those rules may vary from country to country, the application of U.S. conflict rules to questions of international copyright ownership is clear. In Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998), the leading U.S case on this issue, the court determined that under applicable conflict rules, the law of the country of origin, rather than U.S. law, should govern questions of copyright ownership.
Accordingly, foreign courts considering whether to recognize copyright in a U.S. government work would most likely apply U.S. copyright ownership principles. For example, a court in France or Japan assessing whether to permit a U.S. government agency to enforce a French or Japanese copyright in a U.S. government work should look to U.S. law, and the exclusion from copyright under Section 105(a), to determine whether the U.S. agency holds a corresponding national copyright in that country, notwithstanding the lack of a U.S. copyright. Assuming that those countries observe conflict-of-laws principles comparable to those observed by the Second Circuit in Itar-Tass, the answer would likely be “no.” Accordingly, a serious question exists regarding the position that U.S. federal agencies can hold foreign copyrights in U.S. government works as to which U.S. copyright is precluded under Section 105(a). The committee heard of assertions by federal laboratories of copyright ownership of software and other qualifying digital products founded principally on arguments regarding foreign copyrightability.6 In the committee’s view, however, such arguments suggest that
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6 Presentation to the committee by Jordan Kasper, Defense Digital Service, December 5, 2019.
federal labs are trying to avoid the consequences of Section 105(a) and the limits on their ability to use copyright to achieve public interest outcomes.
Civilian Faculty at Military Academic Institutions
The National Defense Authorization Act for Fiscal Year 2020 (Pub. L. No. 116-92) created an additional exception to the copyright exclusion for civilian faculty at any of 12 enumerated U.S. military academic institutions. Under Sections 105(b)–(c) of the Copyright Act (added by amendment in Pub. L. No. 116-92), the copyright in a scholarly work created by a civilian faculty member at those institutions is owned by the author, subject to a royalty-free copyright license for government use. This provision puts these faculty on a more even footing with faculty from universities and scientists in GOCO labs with respect to their research output.
Copyright and Government Contractors
Finally, the government works copyright exclusion applies only to officers and employees of the U.S. government. Therefore, it does not apply to works prepared for the government by contractors who are not government employees or by researchers who receive government funding.7 Thus if a federal laboratory hires an external contractor to create a literary work or design a file for use by a federal laboratory, it will be subject to copyright owned by the contractor. Likewise, if a federal researcher collaborates with a contractor to create a joint work, such as software development, the contractor alone will hold copyright in that work, and neither the federal researcher, the lab, nor the governing federal agency will have any rights in it. However, government labs that are contractor-operated are eligible to own copyright in their works.
The omission of government contractors from the scope of the government works exclusion was clearly intentional. The Senate and House reports accompanying the adoption of the 1976 act explain that “the bill deliberately avoids making any sort of outright, unqualified prohibition against copyright in works prepared under Government contract or grant” (U.S. Senate, 1975, p. 56). Thus, while Congress acknowledged that “there may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like,” it also reasoned that “there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works” (id.). The Senate and House reports recommend that a balance between openness and copyright be struck on a case-by-case basis: “Where, under the particular circumstances, Congress or the agency involved finds that the need to have a work
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7 In 2003, Representative Martin Sabo (D-MN) introduced the Public Access to Science Act (H.R. 2613), which would have disallowed copyright protection for scientific work substantially funded by the U.S. government. The bill died in committee (see Contreras, 2013, p. 524).
freely available outweighs the need of the private author to secure copyright, the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions” (id.).
The committee heard testimony that the ability of GOCO labs to own copyright in software is considered advantageous by lab and agency personnel. Robert Leland of the National Renewable Energy Laboratory (NREL) outlined the range of options for dissemination of software, with some specific examples, from his experience with NREL and Sandia National Laboratories, noting that having a variety of mechanisms available is useful in finding the mechanism that best maximizes diffusion and encourages productive partnerships with private firms.8 The Department of Energy’s (DOE’s) Brian Lally noted that flexibility is a real challenge for government-operated labs because they lack copyright, telling the committee, “Particularly with software, maybe more than any other area, it is a real challenge for government-operated laboratories like NETL [the National Energy Technology Laboratory] or other federal labs at other agencies because if the software was developed by a federal employee, it is generally not copyrightable, at least not under current law.”9
There is evidence that at least some federal agencies impose controls on their contractors’ ability to assert copyright in works created at GOCO labs. For example, DOE’s contract with Iowa State University for operation of the Ames Laboratory provides that the contractor may assert copyright in any given item of data or software only if it “can show that commercialization would be enhanced by such copyright protection.”10 Likewise, the National Aeronautics and Space Administration (NASA) Federal Acquisition Regulation (FAR) Supplement 1852.227-14(4)(i) (which applies to cooperative research and development agreements [CRADAs]) requires that the collaborator agree “not to assert claim to copyright, publish or release to others any computer software first produced in the performance of this contract unless the Contracting Officer authorizes through a contract modification.” And according to information provided to the committee, “NASA rarely allows contractors to assert copyright” under this provision.11
APPLYING COPYRIGHT TO FEDERALLY CREATED SOFTWARE
Since the mid-1980s, proposals have been made to permit government-operated federal laboratories to obtain and hold copyright in the computer software they develop. This section first summarizes the history of these
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8 Presentation to the Committee, Robert Leland, National Renewable Energy Laboratory, December 5, 2019.
9 Presentation to the Committee, Brian Lally, Department of Energy, December 5, 2019.
10 Clause I.132(e) - DEAR 970.5227-2 Rights In Data-Technology Transfer (DEC 2000) (Deviation) (Jul 2006).
11 Presentation to the Committee, Bryan Geurts, Chief Patent Counsel, NASA Goddard Space Flight Center, March 2, 2020 (Slides 5 and 7).
legislative and regulatory efforts and then assesses the arguments for federal software copyrights in light of the evidence gathered by the committee.
History of Efforts to Copyright Federal Software
In 1988 and 1990, the General Accounting Office (GAO),12 at the request of two different congressional committees, interviewed officials at prominent federal laboratories and agencies13 regarding their ability to transfer federally developed software to the private sector (GAO, 1988, 1990). These federal officials reported that “making software generally available allows for the adequate dissemination of most of their agencies’ software” (GAO, 1991, p. 3).
One official at DOE indicated that most of the software distributed by the National Energy Software Center had “little commercial value” (GAO, 1988, p. 13). However, with respect to federally developed software that was believed to have commercial potential (about 10 percent of the total),14 officials felt “constrained” by the lack of copyright protection and the requirement for public dissemination (GAO, 1988, p. 2; 1991, p. 3).
Between 1990 and 1992, Representative Constance Morella (R-MD) introduced three successive House bills seeking to award federal agencies copyright in software that they developed under CRADAs (copyright in software developed by private collaborators under a CRADA already being secured).15 Each of these legislative proposals died in committee. More than three decades later, federal agencies are still seeking copyright protection for federally created software, most recently in the 2019 NIST Green Paper (NIST, 2019b, pp. 40–41) and in a recent set of proposals submitted to Congress.16 The principal rationale advanced in support of these proposals is that the inability of the government to copyright software may slow or inhibit commercial development by the U.S. private sector (NIST, 2019b).
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12 Renamed the Government Accountability Office in 2004.
13 The agencies interviewed for the GAO study included the Departments of Agriculture, Commerce, and Defense; the Environmental Protection Agency; the National Aeronautics and Space Administration; and the National Institutes of Health.
14 This estimate is consistent with software commercialization figures reported by research universities, which are typically funded by federal grants but are permitted to obtain copyright in their software inventions. Specifically, as reported by the National Academies in 2011, software accounted for about 10 percent of both licensing activity and invention disclosures at research universities (NRC, 2011).
15 See, e.g., Technology Transfer Improvements Act of 1990, 101st Cong., H.R. 5850; Technology Transfer Improvements Act of 1991, 102nd Cong., H.R. 191 and S. 1581; Technology Transfer Improvements Act of 1993, 103rd Cong., H.R. 523.
16 National Institute of Standards and Technology, ROI Initiative Status Update: Legislative Package Sent to Congress, press release, December 10, 2020. See https://www.nist.gov/newsevents/news/2020/12/roi-initiative-status-update-legislative-package-sent-congress.
The Committee’s Consideration of Copyright for Federally Created Software
This chapter has described a number of exceptions to the government works copyright exclusion, most notably a recent one allowing access to copyright for faculty at certain federal military academic institutions. Making an additional, limited exception to allow copyright of software produced at GOGO laboratories would not be extraordinary. In making its overall assessment of this issue, the committee took into account a number of factors, described below.
The Exclusivity Incentive
The prevailing view among supporters of federal software copyright is that under certain circumstances, a private firm may be unwilling to make substantial investments in commercializing such software unless it can obtain exclusive rights to the underlying government code. Without this exclusivity, the firm’s competitors could utilize the same code to create their own commercial offerings, thus reducing the return to the first firm. Because every firm would face the same potential competitive pressure, none might have the incentive to make the necessary up-front investment in adapting the government code to the commercial market.
Those who oppose copyright protection in government-created software argue that a grant of exclusivity would disregard the creative contribution that the private sector must make to that software in order to bring it to market.17 Private firms can copyright their additions to or derivatives of public-domain software (U.S. House 1992, p. 158) (more specifically, “the derivative works provisions of the Copyright Act provide an excellent and adequate means for industry to protect work which they further develop that is based on or ‘derived from’ public domain government works” [written comments by the Software Publishers Association]). Thus, private firms are well equipped, technically and legally, to build differentiating features and functionality onto government-created software to compete in the marketplace.18 One example from the 1980s is the Relational Information Manager (RIM) system developed for NASA by Boeing. A former NASA employee modified the publicly available RIM system for commercial settings and used it as the basis for a new line of database management products known as R:BASE, which became some of the best-selling database management products in the world.19 However, the government’s ability to commercialize such
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17 See U.S. House, 1992, pp. 31–32: “By some estimates, 90% of the effort in developing commercial software goes into the last 10% of the development and documentation effort. That in part explains why relatively little federal software ever reaches federal software distribution centers, such as NTIS: the agencies have little need or incentive to undertake the work necessary to meet distribution center standards.”
18 See presentation to the committee by Michael W. Carroll of the American University College of Law (March 2, 2020).
19 See https://ntrs.nasa.gov/archive/nasa/casi.ntrs.nasa.gov/20020086972.pdf.
new additions, or to ensure that subsequent inputs by private firms benefit the public more broadly, can also be constrained by the federal lab’s lack of copyright in the underlying work (Okediji, 2016).
Critics of copyright in federally created software also argue that the exclusion makes the software accessible at no cost to all commercial firms that wish to build upon it, not just the one(s) that has (have) entered into an agreement with a federal lab. The software thus becomes an input to commercial development at multiple companies, all free of charge. Governmental data and technology that have been made freely available in this manner—the GPS signal, the Internet, RIM, and the human genome—have resulted in major businesses and entirely new markets that have yielded substantial economic benefit. Because improvements are copyrightable, if the perceived return on investment is great enough, an investor will likely possess sufficient incentive to move forward.20
However, free software does not necessarily make available the kinds of software that produce either short- or long-term private and public benefits. Much software delivers its biggest impact only when it has been refined and adapted to the needs of downstream commercialization, a process that requires both capital and technological inputs. While reliance on free access to upstream software has developmental effects, undercapitalization of potentially valuable downstream applications may also occur when resources in the public domain are difficult or costly to find. Because of differences across individuals and companies with respect to resources, abilities, and opportunities, moreover, the benefits of information deposited in a public domain may accrue to just a few. For example, about half of the downloads from GenBank come from .com domains (Chander and Sunder, 2004).
Therefore, as described in Chapter 3 and in this chapter, the ability of federal labs to grant exclusive rights may be necessary for a diversity of private actors to make the additional investment required to commercialize federally produced software, although additional data may be needed in order to make a final determination on this question. The use of exclusive licenses may also be justified in circumstances where the commercialization of software developed by the government has broader societal benefits relative to the returns that could be captured by the private sector. Because software development cycles are relatively short, it would be advisable for such exclusive licenses to be of limited duration.
Absent copyright, the government’s ability to issue licenses on government-created software is extremely limited. With copyright, the government might be able to include in its licensing agreements a number of downstream controls that would ensure that the licenses are in the public interest, similar to what has been suggested for contracts made by extramural awardees to ensure that taxpayer-funded innovations are in the public interest (Feldman et al., 2020). Such provisions in the government’s licensing agreements might include (1) providing that the government can license to others if the exclusive licensee is
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20 See presentation to the committee by Michael W. Carroll of the American University College of Law (March 2, 2020).
unable or unwilling to meet demand, such as in times of shortage; (2) ensuring transparency of product or pricing information to the public; (3) disfavoring such behaviors as evergreening the invention with minor modification patents; and (4) providing that the technology must be used for creating a product or service rather than for monetization through a nonpracticing entity (Feldman et al., 2020). Moreover, the government might want to control digital products involving artificial intelligence to ensure transparency and verification of the underlying technology (Feldman, 2018).
Effects of Differential Treatment of GOGOs and GOCOs
As described in this chapter, the committee heard testimony that the lack of copyright is a constraint on government-operated laboratories, and that having copyright increases the range of options available to contractor-operated labs when determining the most effective way to disseminate the software they develop. As described in Chapter 4 on patents, there is evidence of increasing use of trade secrets and intellectual property surrogates to provide copyright-like protection. Without copyright, GOGO labs resort to restrictive contractual terms and technological control mechanisms to close the gap created by the lack of legal protection. As discussed in Chapter 4, these mechanisms impede scientific progress and innovation and may generate other negative externalities. These considerations suggest the need for a more rational overall approach to downstream applications of government-generated digital products. Moreover, the use of these backdoor methods is unevenly distributed and not fully understood across the federal labs, with the result that while some digital products are transferred downstream in imaginative ways, others are not.
Foreign Free Riders
Historically, one issue motivating the push to make copyright available for federal software has been concern over international competitiveness. One of the stated goals of the Stevenson-Wydler Act was “to improve the economic, environmental, and social well-being of the United States” (15 U.S.C. § 3702). As noted by GAO in its 1988 interviews, publicly disseminating unclassified scientific and technical information “does not distinguish between U.S. and foreign businesses” (GAO, 1988, p. 13). As a result, several federal agency officials believed that “foreign competitors” should not have equal access to U.S. technology through public dissemination (id.).
The “foreign free rider” problem—giving foreign firms free access to digital products developed at U.S. taxpayer expense—presents a challenge to models of open access and science. Its potential has been observed not only in the context of federally developed software but also in open-access publishing requirements for federally funded research (Contreras, 2013, pp. 539–540), the international use of inventions patented under the Bayh-Dole Act (Hemel and
Ouellette, 2017, pp. 3–4), and the sharing of government-generated data (Reichman and Uhlir, 2003, pp. 423–425).
Nevertheless, it remains unclear that giving foreign firms free access to digital products produced by federal labs is necessarily detrimental to U.S. businesses or consumers. First, in today’s globalized market, it is difficult to know what firms are “domestic” versus “foreign.” Most large firms, particularly in the technology sector, have operations in multiple countries, and their headquarters, manufacturing facilities, and research and development (R&D) operations are often located on the basis of favorable tax treatment, labor costs, and proximity to supply chains rather than notions of national identity. Moreover, consumers often benefit from global competition among suppliers, even as local suppliers give way to more efficient, low-cost, and innovative foreign competitors.
One solution to the foreign free rider problem would be to enable U.S. federal laboratories that are government-operated to obtain copyright in their software (as is the case in many countries for government-funded works), so that the laboratories could control the subsequent distribution of federal software (and presumably ensure that only U.S. firms were authorized to commercialize it) (Chandler, 1991, p. 406). Others have proposed diplomatic solutions in which other nations would be urged to adopt policies of openness akin to those of the United States (Reichman and Uhlir, 2003, p. 425).
Over the years, federal labs have tested more incremental approaches. As reported by GAO, “the National Energy Software Center does not announce the availability of new software to foreign organizations for 2 years after it is announced to U.S. organizations” (GAO, 1988, p. 13). GAO also noted that NASA made only executable object code versions of its software (and not source code) available to foreign entities (id. at n.6). It is not clear how effective these measures have been in conferring the benefits of this federally developed software primarily on U.S. entities, but it appears that none of these agencies currently discriminate against non-U.S. entities in terms of software distribution. Nonetheless, no downstream controls can be placed on users of government-created digital products without the government’s having copyright.
Copyright Considerations for Open-Source Software Licensing
Many of the arguments made in the late 1980s and early 1990s regarding copyright in federally developed software were predicated on an entirely different software development and distribution environment from that of today. The opensource software (OSS) movement emerged in 1989 with the release of the GNU General Public License, but did not attract significant attention until the popularization of the Linux operating system in the mid-1990s and the 1997 publication of Eric Raymond’s seminal article “The Cathedral and the Bazaar” (Raymond, 1999). Today, OSS dominates many market segments. The OSS Android operating system runs on more than 86 percent of all smartphones in the world; in 2019 IBM paid $34 billion for Red Hat, the distributor of Linux software packages; and Microsoft owns and operates GitHub, a platform and user
community that hosts thousands of OSS projects, which it acquired in 2018 for $7.5 billion.
The use of OSS today is a viable commercial model that pervades nearly every segment of the economy. And while the integration of OSS into commercial software products, particularly under copyleft and similar forms of OSS licenses, can be challenging, most software-based businesses have adopted policies and practices that enable the integration of OSS and proprietary software in an effective and legally sound manner. In short, the existence of copyright does not impede recourse to OSS and may actually facilitate it when properly employed in that context.
Commitments to the Public Domain
Another way that federal laboratories distribute software and other digital products on an open basis is through contributions to the public domain.21 In its Open Source Software FAQ, DOD states, “You must release it as ‘public domain’ (when releasing it at all) if it was developed by a U.S. government employee as part of their official duties.”22
While one might argue that under Section 105(a) of the Copyright Act, software developed by federal employees is already in the public domain, documentation evidencing the contribution of software to a larger OSS project is often needed. One legal mechanism for making such a contribution is the Creative Commons (CC) “no rights reserved” commitment to the public domain (“CC0”). To make a CC0 contribution, a software developer must simply apply the “CC0” mark to the work and indicate that it is contributed to the public domain under the CC0 terms, which are set forth in full on the CC website.23 Another mechanism for contributing a work to the public domain is the Zero-Clause BSD/Free Public License 1.0.0 (0BSD),24 an ultrashort license that states, “Permission to use, copy, modify, and/or distribute this software for any purpose with or without fee is hereby granted,” followed by a comprehensive disclaimer of liability.
Software placed in the public domain can easily be integrated into and used in combination with proprietary or OSS software, as it carries no restrictions of its own regarding use or distribution. If a subsequent, downstream user incorporates public-domain software into a larger software program and releases it under an OSS or proprietary software license, any copyright-based restrictions on use of that public-domain software will not be enforceable, just as the copyright in a legal textbook would have no effect on the text of the U.S. Constitution quoted therein.
While commitments to the public domain are the simplest mechanisms for publicly distributing government software, the contributor retains no right to
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21 There is no statutory mechanism in the United States or most other countries for contributing a copyrighted work to the public domain (Fagundes and Perzanowski, 2020).
22 See https://dodcio.defense.gov/Open-Source-Software-FAQ/.
23 See https://creativecommons.org/publicdomain/zero/1.0/legalcode.
control the use of the software, even under contract. Thus, a lab that wishes to contribute software to the public while imposing at least some conditions for the public interest may need to utilize a customized agreement or a modified OSS agreement that includes some contractual commitments and conditions (e.g., attribution of the originating lab, user registration, or a commitment to make any modifications or derivatives publicly available (known as share-alike or copyleft terms)).
Federal Distribution of Open-Source Software without Copyright
Pursuant to the Federal Source Code Policy and their own internal policies, a number of federal laboratories—both GOGO and GOCO—have released source code under permissive OSS licenses, such as the Apache, BSD, Eclipse, and MIT licenses.25 As noted earlier, however, most OSS licenses are copyright licenses. Because federal labs lack copyright in software products they independently develop (i.e., not at a GOCO lab or in conjunction with private parties to a CRADA), the legal basis for these labs to release software under one of the common OSS license agreements remains unclear. This section reviews legal mechanisms that have emerged over the years to enable the “licensing” of works created by federal employees and agencies.
Agreements relating to the distribution of OSS developed by federal employees must rely for enforcement on contract law rather than copyright (NASEM, 2018, p. 23). While this approach is effective for many purposes, it is not without drawbacks. For example, OSS license commitments could be deemed by a court to constitute conditions to the copyright license rather than contractual obligations. Accordingly, if a licensee violated these commitments, the plaintiff copyright owner would be entitled to the full range of copyright infringement damages, potentially including statutory damages. Had the violation simply been a breach of contract, contractual expectation damages would likely have been more modest. In a government software agreement, contractual commitments can be imposed on the user, but without a copyright on the underlying software, remedies for copyright infringement will not be available.
In addition, the existence of copyright enables the copyright owner to police the use of its software beyond the original licensee with which it entered into an agreement. That is, if the licensee of a software component breaches its agreement, then even without copyright, the licensor may bring a claim for breach of contract. But if the licensee distributes the software to others who distribute it still further, the original licensor lacks contractual privity with those downstream users and generally will be unable to bring a contractual claim against them. If the licensor had copyright in the software, it could bring copyright infringement claims against those unauthorized downstream users.
The absence of copyright in federal software places a federal licensor in a somewhat weaker position relative to similarly situated commercial licensor,
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25 Information provided in various presentations to the committee.
but this does not necessarily argue against the distribution of federal software using OSS-like agreements. Rather, it may suggest the need to adjust the underlying rules to better align the government’s interest in dissemination of federally created software with commercialization opportunities.
NASA has been particularly engaged in the development of government-appropriate software agreements that are not grounded in the ownership of copyright. In 2003, NASA developed a customized OSS license (the NASA Open Source Agreement or NOSA) expressly acknowledging that no copyright existed in software developed solely by government employees (see NASEM, 2018, p. 23–25). NOSA v. 1.326 was approved by the Open Source Initiative (OSI) in 2004 as compliant with the Open Source Definition.27 Shortly thereafter, however, the Free Software Foundation found fault with one of the clauses of the NOSA v. 1.3 license and declared that it was “not a free software license” at all (FSF, 2020).28 In response to this critique, NASA developed a new version of NOSA (v. 2.0) and submitted it to OSI for approval around 2013 (NASEM, 2018, p. 25). As of this writing, however, NOSA v. 2.0 has still not been approved.
Following the NOSA controversy, observers both within and outside of NASA called on the agency to release NASA-developed software “under whatever mainstream open source license makes sense within the development environment it is being released within” (Beyer et al., 2018). Such calls are well intentioned, but appear to miss the point that “normal” copyright-based OSS licenses are not appropriate for the dissemination of software that lacks copyright because it is developed by federal employees. NASA may have reached an acceptable compromise with respect to its Nebula software, which it contributed to the Open Stack Project in 2012 using what has been termed a modified version of the Apache software contributor’s license that was tailored for public-domain contributions.
Other federal agencies have also come to appreciate the need for customized or noncopyright licenses when distributing software and other digital products. For example, the National Cancer Institute distributes its NCIDOSE radiation dosimetry tools under a software transfer agreement that contains numerous contractual restrictions, but carefully avoids any mention of copyright.
The lack of copyright in federal software has clearly introduced complexity with regard to the release of such software on an OSS basis. While some labs, as discussed above, have developed agreements that attempt to mirror traditional OSS licenses, most have not. Labs that have most effectively
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26 See https://opensource.org/licenses/NASA-1.3.
27 See https://opensource.org/docs/osd.
28 Clause 3.G of NOSA 1.3 provides, “Each Contributor represents that that its Modification is believed to be Contributor’s original creation and does not violate any existing agreements, regulations, statutes or rules, and further that Contributor has sufficient rights to grant the rights conveyed by this Agreement.” According to the Free Software Foundation, this requirement limits modifications to contributor-developed code (original creations) and precludes the use of third-party code in modifications. “Free software development depends on combining code from third parties, and the NASA license doesn’t permit this” (FSF, 2000).
distributed software under one of these customized agreements comply with the law, but these agreements are unfamiliar to most of the OSS community. Labs that rely instead on traditional OSS license agreements (e.g., Apache, BSD, or GPL) fit more easily within existing OSS projects, but misrepresent the nature of rights they hold in federal software. This situation could be rationalized if federal labs held copyright in their software. Adding copyright to the already available option of patent protection for federally created software would provide the federal labs with discretion to determine which of the two regimes would best facilitate commercialization and the public interest in any given case.
LIMITING AND ASSESSING COPYRIGHT AND EXCLUSIVE LICENSING OF SOFTWARE DEVELOPED BY GOGO FEDERAL LABORATORIES
If Congress should decide to allow copyright protection in government-created software, it would nonetheless be necessary to place certain limitations on federal agencies’ abilities to grant exclusive software licenses. Doing so would be consistent with the spirit of Section 209 of the Bayh Dole Act of 1980 (35 U.S. § 209), which limits a federal agency to granting exclusive or partially exclusive licenses only when exclusivity is necessary to induce follow-on development, as discussed further in Chapter 4 on patents. Such limits on federal agencies’ abilities to grant exclusive software licenses would need to include, among others, limits on their duration and consideration of what was needed to bring the software to practical application or to promote the software’s utilization for the public benefit. Moreover, similar to the public notice requirement in Section 209 of the Bayh-Dole Act, any agency providing exclusive software copyright licenses would be required to publish such licenses in the Federal Register. Finally, within 5 years of the enactment of a provision allowing copyright in government-created software, it would be advisable for NIST to commission a study to determine the effects of the provision on the use, dissemination, and commercialization of federally developed software.
ADVANCING COHERENCE IN GOVERNMENT SOFTWARE POLICY
When the 1976 Copyright Act was devised and enacted, considerable thought was given to making the new act hospitable to computer programs. However, those exercises did not focus on the potential need to deal with government-generated computer programs under the general waiver of Section 105(a) for “government works.” There are now good reasons to believe that amending Section 105(a) to exclude computer software (resulting in government ownership of its own software) might simplify addressing the problems described in this chapter. The current preference for free riding on tax-funded government-generated software is hardly persuasive. What is persuasive is the possibility that having copyright can enable the government to better control the uses of its own software for both public and private purposes. Any public interest uses dependent
on nongovernment ownership could be managed by direct waivers of the government copyright as needed.
At the same time, government copyright in software would greatly simply and facilitate the government’s overall efforts to regulate this area comprehensively and consistently. In this respect, adding a government copyright to software would merely correct a historical anomaly introduced when the carveouts to Section 105(a) were first conceived and debated. All that was conceived and debated with regard to Section 105(a) at that time would remain untouched by the proposal to exclude government-generated software from its ambit. Indeed, the ability to hold copyright in government software might promote commercialization either by facilitating exclusive licensing, when needed, or by facilitating OSS licensing.
Finally, a number of exceptions to the government works exclusion rule already exist—notably the allowance for works prepared for the government by contractors, which means that GOCO and GOGO federal laboratories operate under different rules. Efforts by some GOGO labs to circumvent this restriction are, in some cases, unsound, and may result in suboptimal commercial outcomes. In sum, the government’s policy making with regard to the software it generates would become more rational and coherent if it were based on an initial assumption of copyright ownership. Such ownership could, of course, be waived, freely licensed, or negated in its entirety as necessary to advance commercialization and promote the public interest. Thus allowing copyright protection for federally created software would strengthen the range of options available to government-operated labs to both commercialize the software they generate and enhance its use for the public good.
FINDINGS AND RECOMMENDATIONS
Finding 5-1: With some exceptions, the Copyright Act prohibits copyright in federally created works, and the federal government maintains a general policy of making such works accessible in a manner consistent with the public interest.
Finding 5-2: The inability of government-owned, government-operated laboratories to assert copyright in federally developed software creates incentives for those labs to circumvent existing rules in order to facilitate technology transfer and commercialization.
Finding 5-3: The statutory authorization of standard reference data (SRD) copyright has little legal justification. Moreover, there appears to be no economic rationale for retaining copyright in SRD because the National Institute of Standards and Technology, the current custodian and developer of SRD, makes 80 percent of SRD available free of charge without copyright and earns an insignificant amount from the remaining SRD.
Finding 5-4: Assertion of foreign copyright by federal agencies in works for which they lack U.S. copyright is inconsistent with the Berne Convention, to which the United States acceded in 1989, as well as prevailing U.S. conflict-of-laws principles.
Recommendation 5-1: Congress should consider amending Section 105(a) of the Copyright Act to allow copyright on software developed by government-owned, government-operated federal laboratories on a prospective basis, subject to a number of limitations, as described in Recommendation 5-2. The amendment should also require that each agency collect appropriate data to determine the impact of such a change.
Recommendation 5-2: Any exclusive software copyright license issued by a government-owned, government-operated federal laboratory should be subject to the following limitations:
- Consideration of the costs and benefits of granting exclusive versus nonexclusive licenses or contributing the relevant work to the public domain, including what is needed to bring the software to practical application or to promote its utilization for the public benefit.
- A limit of 10 years’ duration or a shorter period of time sufficient to commercialize the relevant software. A waiver of this time limit could be considered if licensees provided sufficient justification.
- Announcement in the Federal Register of the proposed grant of exclusive rights, together with the justification for it, and consideration of public comments made in response to that announcement.
Recommendation 5-3: If Congress does create an exception to Section 105(a) of the Copyright Act for software developed by government-owned, government-operated laboratories, the National Institute of Standards and Technology should commission a study to determine whether and how changing the law has affected the use, dissemination, and commercialization of federally developed software.
Recommendation 5-4: If Congress does not amend Section 105(a) of the Copyright Act to allow government-owned, government-operated laboratories to hold copyright in federally created software, the director of the National Institute of Standards and Technology should develop a uniform federal software contribution agreement that does not depend on
copyright, to be made available for use by all federal labs on a voluntary basis.
Recommendation 5-5: Congress should consider repealing the recognition of copyright in standard reference data (SRD) under the SRD Act.
Recommendation 5-6: The Department of Justice’s Office of Legal Counsel should issue an advisory opinion to all federal agencies clarifying that in general, foreign copyright is presumed to be unavailable with respect to works covered by the government works exclusion under Section 105(a) of the Copyright Act.
