Amicus Curiae Brief — Williams & Wilkins Co. v. United States

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TABLE OF CONTENTS.

Page

Tue Interest or Amici CURIAE .............0ccceeeceee 2

American Society for Testing and Materials ............ 2

National Council of Teachers of Mathematics .......... 2

American Society for Microbiology ................... 3

Editor-in-Chief, Journal of Urology .................. 5

SR PUPORE OF TOG TIED oo oc ccc cckecaveperestepcus 6

DEFINITIONS AND THE OPINIONS BELOW ................4. 7

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PUR Re 0 RUMIGRAPGE 5 vc ok cee ce Sok hea eae bewties 8

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TABLE OF AUTHORITIES.

Cases: Page

Ex parte Garbo, 141 U. S. P. Q. 913 (P. O. Bd. App. 1962) . .19, 20

Keene v. Wheatley et al., 14 Fed. Cas. 180, 193 (No. 7644)

SO MED a cn vacenacaers <cdecesteesntns 16, 17

Philips Electronic and Pharmaceutica! industries Corp. v.

Thermal and Electronics Industries, Inc., 450 F. 2d 1164,

Re Se we Oe Bo ere 18, 19

The Williams & Wilkins Company v. United States, 172

ee Oe Oe PUP) oi nse i cncevdscnees 7

The Willams & Wilkins Company v. United States, 487 F. 2d

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Statutes:

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Patent Laws:

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Books and Articles:

Dressauer and Clark, Xerography and Related Processes, The

Se EEE che ncl Vskveenieneertnexwaedves 8

Newsweek, January 24, 1966, pp. 85-88, “Good-by to Guten-

ERS ee ee A ee ee 17, 20

Schaffert, Electrophotography, The Focal Press (1965) ...... 8-16

Webster’s Third New International Dictionary ............. 7

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IN THE

Supreme Court of the United States

Octroser Term, 1973.

No. 73-1279.

THE WILLIAMS & WILKINS COMPAN

Petitioner,

—against—

THE UNITED STATES,

Respondent.

On Writ or CERTIORARI TO TRE UNITED STATES

Court oF CLAIMS.

BRIEF AMICI CURIAE FOR

AMERICAN SOCIETY FOR TESTING AND

MATERIALS

NATIONAL COUNCIL OF TEACHERS OF

MATHEMATICS

AMERICAN SOCIETY FOR MICROBIOLOGY

Editor-in-Chief, JOURNAL OF UROLOGY

With the consent of both parties, the American Society

FOR TESTING AND MATERIALS, NatIonaL Councin oF TEACHERS

oF MatHrEMatics, AMERICAN Society For MicropioLocy and

the Editor-in-Chief of the Journau or Uro.ocy respectfully

submit this brief. The letters of consent have been filed

with the Clerk of this Court.

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THE INTEREST OF AMICI CURIAE.

American Society for Testing and Materials.

The American Soctery ror TesTING AND MATERIALS is a

scientific organization formed in 1898 for the purpose of

promoting knowledge of the materials of engineering and

standardizing specifications and methods of use. It is a

nonprofit corporation having tax-exempt status as a char-

itable organization. The Society has more than 20,000

members. These include individuals, corporations, asso-

ciations, governmental departments, universities and other

bodies, technically qualified to carry on the work of the

Society. At the present time ASTM has on hand and for

sale more than 4,700 publications furnishing standardizing

specifications for engineering materials and methoiis of

testing such materials. Nearly 75% of its income is de-

rived from the sale of its publications notwithstanding the

Society freely grants to scholars, engineers and scientists

the right to reference, to extract, or to use selected por-

tions of its publications without charge. However, since

the early 1920’s copies of entire documents or reprints,

whether they be single or multiple copies, are assessed a

charge. Accordingly, if any substantial number of its ap-

proximately 50,000 customers were to obtain one copy of

an ASTM publication from a photocopier, without payment

to ASTM for the privilege, the loss to the Society would be

severe,

National Council of Teachers of Mathematics.

The Nationa Councit or TEAcHERS oF MATHEMATICS

(NCTM) was organized in 1920. Its purpose is to assist in

promoting the interests of mathematics in America and to

vitalize and coordinate the work of local organizations of

teachers of mathematics. The NCTM, the only organiza-

Brief Amici Curvae 3

tion of its type, has had a major influence on the teaching

of mathematics. Outstanding persons in mathematics edu-

cation have been leaders and participants in its program.

It has served as an agency for both the coordination and

stimulation of major effcrts to improve the teaching of

mathematics.

The NCTM publishes four journals: The Mathematics

Teacher; The Arithmetic Teacher; The Mathematics

Student Journal; and The Journal for Research in Mathe-

matics Education. NCTM also publishes yearbooks on

particular problems and numerous books and pamphlets on

a wide range of topics. It has 47,000 individual members

with 30,000 institutional subscriptions to The Mathematics

Teacher and The Arithmetic Teacher.

NCTM is interested in this suit because of its belief

that reasonabie compensation from photocopy users is vital

to the long-range economic heaith of specialized scholarly

journals such as the ones published by NCTM. Continued

publication of these journals provides to teachers and their

students the most significant type of access to scholarly

papers in their respective fields.

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American Society for Microbiology.

The American Socrery ror Microsiotocy (ASM) is a

nonprofit scientific society, founded in 1899. As stated in

its Constitution: ‘‘The objects of the Socrety shall be to

promote scientific knowledge of microbiology and related

subjects through discussions, reports, and publications, to

stimulate scientific investigations and their applications, to

plan, organize, and administer projects for the advancement

of knowledge in this field, to improve education in the

science, to promote programs of professional recognition,

and to foster the highest professional and ethical standing

of microbiologists. ’’

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4 Brief Amici Curiae

ASM, with its more than 19,000 members, is the domi-

nant microbiological seciety in the U.S., and, because micro-

biology, with its emphasis upon single living cells and the

molecular events which occur within them, dominates

modern biology, ASM is the largest biological society in the

U.S.

ASM currently publishes seven scientific journals, each

of which is a leader or the leader in its respective field:

Journal of Bacteriology, Journal of Virology, Infection and

Imrvunity, Applied Microbiology, Antimicrobial Agents

and Chemotherapy, Bacteriological Reviews, and Inter-

national Journal of Systematic Bacteriology. An eighth

scientific journal (Journal of Clinical Microbiology) will

commence publication in January 1975. ASM also publishes

ASM News, a monthly news magazine, as well as a number

of books, pamphlets, ete.

The ASM Operations Budget for the fiscal year ending

30 June 1975 provides for total disbursements of $2,571,625,

of which $1,959,400 will be expended upon publications.

Thus, ASM is a ‘‘publishing’’ society, as are most organi-

zations primarily comprised of research scientists.

The research process is not complete until the research

results have been effectively communicated to those who

need and can benefit from those results. Thus, we know

why we are in the publishing ‘‘business’’ and we believe

that it is of fundamental importance that we stay in this

‘*business.’’ It is for this reason that we join in this brief.

We are convinced that wholesale copying of our publi-

cations seriously depresses our publication income. We

have seen 2 drop in our nonmember subscriptions, and this

certainly traces to copying of our materials in the libraries.

Copying technology should be used as an effective aid in

the dissemination of scientific research results. However,

those who copy should contribute to the costs of publication.

REF OSE LARISA BR ES IE IAEA ILE IEE TIT EAT ERD, BEML ENTERS

Brief Amici Curiae 5

Otherwise, the communication process faces eventual

destruction.

Editor-In-Chief, Journal of Urology.

The Journal of Urology was founded in 1917 and be-

came the official publication of the American Urological

Association in 1920. Its purpose is to offer to the medical

profession scientific contributions in urology that are con-

sidered to be of educational or of practical value. Urol-

ogists, not unlike other specialists in medicine, have a re-

sponsibility for education, research and practice. The

Journal of Urology is considered an important spoke in the

wheel of activities fulfilling this responsibility.

Dr. Hugh J. Jewett has been associated with the

Journal since the late 1930s and became Editor-in-Chief in

1966. During this period this publication has deveioped

into an important instrument for doctors in urology as well

as related fields. There is an absolute need for this Journal,

which is acknowledged to be the leading periodical in its

field.

Currently, the Journal of Urology is issued monthly to

more than 12,000 subscribers, the majority of whom are

practicing urologists in the United States ard in many

foreign countries. About 3,500 of these subscribers are

members of the American Urological Association. The

Journal is published in two volumes yearly, each volume

consisting of approximately 1,000 pages of text and illus-

trations. The publication depends on the monies it re-

ceives from subscribers, advertisers and back volume and

reprint sales.

Dr. Jewett is interested in the suit because of his con-

cern over the economic consequences ‘‘free’’ photocopying

of articles will have on the future of the Journal. If indi-

viduals are allowed to obtain from libraries copies of only

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those articles in which they are interested, the Journal of

Urology as well as comparable publications are going to

lose subscribers. Subsequently, the advertisers’ revenue

will be decreased since the advertising rates depend on the

number of subscribers. He, therefore, believes that the

Journal must be supported, in one way or another, by all

those who use the contents between its covers. If the Gov-

ernment is successful in its suit with The Williams &

Wilkins Company, Dr. Jewett is convinced that it will mean

destruction of the economic system upon which the Journal

was founded and upon which it continued to grow since

1917.

The American Society ror TEstTiInG AND MATERIALS,

NarionaL Councin or TEACHERS oF MaTHEMATICS, AMERICAN

Society ror Microsio.oey, and the Editor-in-Chief, JournaL

oF Uro.ocy, support the decision of the Trial Judge James

F. Davis and three dissenting Court of Claims judges that

respondent’s massive system of reproducing single copies

of copyrighted articles is an infringement of the copyright.

THE PURPOSE OF THIS BRIEF.

One of the points touched on in the brief of the peti-

tioner is whether or not xerography is in fact printing

and/or reprinting within the meaning of 17 U.S. C. § 1(a).!

This brief will be directed solely to that question, by way of

an explanation of the art of xerography, particularly in

conjunction with microfilm.

1. “$1. Exclusive Rights as to Copyrighted Works.—Any

person entitled thereto, upon complying with the provisions of this

title, shall have the exclusive right:

(a) To print, reprint, publish, copy, and vend the copy-

righted work :”

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Brief Amici Curiae 7

DEFINITIONS AND THE OPINIONS BELOW.

Section 1(a) of the Copyright Law provides the copy-

right owner with the exclusive right ‘‘to print, reprint, pub-

lish, copy and vend the copyrighted work’’. The Trial

Judge James F. Davis found that ‘‘NLM and the NIH

library did not merely ‘copy’ the articles in suit; they, in

effect, ‘reprinted’ and ‘published’ them.’’ He pointed out

that: ‘Printing’ and ‘reprinting’ connote making a dup-

licate original, whether by printing press or a more modern

method of duplication. MacMillan Co. vw King, 223 F. 362

(D. Mass. 1914) ; M. Nimmer, Copyright §.102 (1971 ed.).’’?

On review, the majority of the Court of Claims made

the observation ® that the photocopy process of NIH and

NLM does not even amount to printing or reprinting in the

strict dictionary sense.‘

It is sukimitted that the definition of Trial Judge Davis

accords with usage. For example, it would appear to be re-

flected in this Court’s current definition of ‘‘printing’’ for

the purposes of its rules. Rule 39(4) now states that

‘‘Printing’’, as used in the Rules, ‘‘shall include any process

capable of producing a clear, black image on white paper,

but shall not include ordinary carbon copies.’’

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2. 172 U. S. P. Q. 670, 678.

3. 487 F. 2d 1345, 1349, 180 U. S. P. Q. 49, 53.

4. Actually, the word “print” i is defined (Webster’s Third New

International Dictionary) as “to make a copy of by impressing

paper against an inked printed surface or by an analogous method”.

[Emphasis added.] The word “reprint” is defined as “a subsequent

printing of a book already published having the identical text of

the previous printing. The word “reprint” is also defined as “an

article or extract issued separately after being first Published | as part

of a collection or in a periodical”. The word “reprint” in verb

form is defined as “to print again; make a reprint of”.

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FACTS.

The findings of the Court of Claims adopt the follow-

ing undisputed facts found by the Trial Judge:

**15. . . . The NIH photocopying service uses two

Xerox copying machines and two Recordac microfilm

cameras. The microfilm cameras are used in conjunc-

tion with a Xerox Copy-Flo Printer to provide NIH

personnel with permanent copies of journal articles

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‘*21(b). To make photocopies NLM uses mobile

35-mm microfilm cameras which have an electrical

power line overhead and can move up and down an

aisle of the Jibrary. Full-size photocopies are then

\ made from the microfilm. Most photocopies are made

by such microfilm technigue . . .’’®

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THE ART OF XEROGRAPHY'’

n recent years dry photographic processes have come

into ¥xtensive use in the photocopy field. Foremost among

these\\processes are those involving electrophotography in

which\\photoelectric phenomena are utilized to form elec-

trical mages. These processes were given the new name

of ‘‘xefography’’ which is derived from Greek and has a

i literal meaning of ‘‘dry writing’.

1 Xetgraphic processes have been incorporated in

equipme ht for copyirg and duplicating, in automatic ma-

5. Fitting of Fact 15, Petition Appendix 80.

6. Finjling of Fact 21(b), Petition Appendix 84.

7. The\following description of xerography including the figures

has been digested from Electrophotography by Dr. R. M. Schaffert

published by\\The Focal Press (1963). For another comprehensive

book on xerigraphy see Xerography and Related Processes edited

by J. H. Dredsauer and H. E. Clark, published by The Focal Press

(1965).

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Brief Amici Curiae 9

chines for photography, microfilm enlarging, facsimile

printing, and printing of computer data.

Five steps are usually involved in making a print by

xerography :

(1) Sensitizing the xerographic plate by electrical

charging ;

(2) Exposing the plate to form a latent electro-

static image ;

(3) Developing the latent image with fine par-

ticles ;

(4) Transferring the developed image to paper or

other materials ; and

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(5) Fixing the image by fusing.

The plate can be cleaned and used over and over again

for hundreds or even thousands of exposures.

One way of performing the step of developing the k

latent image is called impression development. This in-

volves a system of developing electrostatic images with a ‘

series of rollers which have been described by Schaffert f

as ‘‘somewhat analogous to the inking roller system used

in printing presses.’’ It is to be noted that this system is

capable of high speed development and good prints have

been produced at speeds of 30 inches per second surface

velocity. The time required to produce a print by xero-

graphy is primarily dependent upon the speed of image de-

velopment since other steps in the process are usually of b

short duration.

One of the well-known copying machines is the Xerox * t

914 * copier. This is a desk-size copying machine in which

all operations are automatic, except for insertions of docu- .

ments or other materials to be copied. The units for charg-

* Trademarks of Xerox Corporation.

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10 Brief Amici Curiae

ing, exposing, developing, transferring and cleaning are

appropriately stationed around the circumference of the

drum, and all of these operations take place in sequence as

the drum rotates. The developer is a mixture which cas-

cades over the drum surface and is then collected and re-

circulated in the developer unit. Paper sheets are fed from

the paper supply rack into the transfer station and are then

conveyed through the fusing unit and out onto a receiving

tray, as shown in Fig. 1.

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The machine is capable of copying book and magazine

pages as well as single-sheet documents. The paper on

which the printing is made requires no special properties.

Copies can be made on ordinary paper or on such sheets

as vellum or offset paper masters. Copying speed, after

a brief warm-up period, is 30 seconds for the first print,

and 6 prints per minute thereafter. A more recent ma-

Brief Amici Curiae 11

chine of this class is the Xerox 2400* which is designed

to produce copies at the rate of 2400 per hour.

One of the most recent machines is the Xerox 7000 *

which is a versatile high-speed duplicator with a choice

of five reductions. Originats up to 14” x 18” may be copied

on 8%” x 11” copy paper ard the copies can be made at

the rate of 3600 :o,ies per hour. This machine includes

numerous other suphisticated features such as automatic

sorting of copies, copying two documents at once with or

without sorting, copying photographs and 3-dimensional

originals, and double-side duplicating. This machine is

also useful as a signature ** maker for making booklets

with printing on both sides of the pages.

The first application of xerography to automatic con-

tinuous copying was in the field of microfilm enlargement.

A xerographic machine for producing enlarged prints from

microfilm was developed by the Xerox Corporation for the

U. S. Navy in 1953. Since 1953 Xerox Corporation has

produced a series of automatic copying machines under

the trademark Copyflo.* These are rather large machines

designed for high-volume output. The principle of opera-

tion of the Copyflo machines is illustrated in Fig. 2. The

xerographic process used in such machines is similar to

that of the Xerox 914 except that the paper is fed from

a roll, and the printed copy is rewound on a take-up roll.

Copy production is at the rate of 20 linear feet per minute.

Persons skilled in the art of xerography have equated

electrostatic copying machines to plateless printing presses.

As pointed out by Schaffert at page 144:

‘‘The Xerox Copyflo machines can be regarded

as plateless printing presses, the plate being replaced

* Trademarks of Xerox Corporation.

** “Signature” is the trade term for a multi-page printed sheet,

folded to form a booklet.

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12 Brief Amici Curiae

MICROFILM PROJECTOR

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DEVELOPMENT

by a transparency, a piece of microfilm, or a sheet of

paper containing the subject matter to be printed.

The speed of 20 feet per minute, however, would be

too slow for the usual commercial printing job.

Nevertheless, when relatively few copies are needed,

these machines can become quite useful, particularly

in reprinting out-of-print materials. For example, it

is quite feasible to print a single copy or several

copies of an entire book either directly from an exist-

ing copy or from microfilm. Presumably, photocopy

machines utilizing zinc-oxide papers could also be

adapted to handle similar printing jobs.’’ (See foot-

note 7.)

8. It has been noted that the NIH library photocopy service

employs 2 Xerox copying machines and 2 Recordac microfilm cameras

in conjunction with a Xerox Copyflo printer. See p. 12, sudra.

Brief Amict Curtae 13

In addition to the Xerox Copyflo machines,* there are

other known electrostatic printing presses. For example

an electrostatic printing press has been developed by

Harris-Intertype Corp. for the U. S. Army and a similar

printing machine was developed from Radio Corporation

of America for the U. S. Army Engineer and Development

Labs. The Xerox Corporation has also developed for the

U. S. Air Force an automatic xerographic printer which

makes finished continuous-tone positive prints from pho-

tographie negatives. ‘The machine was designed primarily

for use in high speed, high volume printing from aerial

film for mapping and reconnaissance purposes.

Xeroprinting is a by-product of the development of

xerography. Xeroprinting is the name given to an electro-

static printing process designed to print many copies of

a subject, document or page from a master plate or cylin-

der. The printing master or plate consists of a metal

sheet or cylinder upon which is imprinted an image in the

form of a thin, insulating coating. The image areas con-

sist of insulating material and the background areas are

bare metal.

When the master plate is electrically charged by pass-

ing it under a corona charging unit, the charges deposited

on the insulated image remain on the image surface and

those deposited on the bare metal areas are conducted

away to ground. Thus an electrostatic image correspond-

ing to the insulated areas is formed. From this point on,

the making of a print follows a sequence of steps similar

to xerography, i.e., the image is developed with powder,

transferred to paper, and the powder fused to the paper.

A drawing of an experimental xeroprinting press made

in 1948 is shown in Fig. 3. This press was operated at

printing speeds up to 1200 feet per minute.

It thus clearly appears that xerography is not only

analogous to traditional! printing but it actually resembles

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printing in important details. When we turn our attention

to variant forms of printing—utilizing photographic or the

more modern photoelectric techniques—the parallel is even

more striking.

When more than a few copies of a document are re-

quired it is usual to employ one of the duplicating processes.

One of the best known is offset duplicating which is essen-

tially a special type of lithographic printing. One of the

first commercial applications of xerography was in the

preparation of offset paper masters. The powder image

was simply transferred from the selenium plate to an offset

master sheet and bonded to the sheet by heat fusing. After

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Brief Amici Curiae 15

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the usual chemical treatment of the sheet it was attached to

the cylinder of the duplicating machine. Thousands of

copies could then be printed if needed. The lithographic

principle requires that the printing areas be ink receptive

and water repellent, and that the background or non-print-

ing areas be water receptive and ink repellent. The fused

xerographic powder which contains a high proportion of

water repellent resins was found to be ideally suited for

the preparation of paper offset masters.

This application of xerography provided a rapid photo-

graphic method of preparing offset masters. The conven-

tional steps of processing negatives and the photo-mechan-

ical operations of preparing plates were eliminated. The

simplicity, speed, and flexibility of the method led to a

multitude of uses in the duplicating and reprinting of docu-

ments and other materials that carried far beyond the

normal routine of office duplicating. Old documents could

be reprinted with deletions and additions if required, and

records could be reproduced and brought up to date.

The success of xerograpky in offset duplicating led to

the investigation of potential applications of xerographic

techniques in commercial lithographic printing. Paper-

base lithographic printing plates, such as those obtained by

transfer from selenium xerographic plates, are suitable for

short runs up to perhaps 10,006 impressions. For larger

runs and for multi-color printing the greater durability of

metal plates is required. A process for converting a xero-

graphic metal plate into a lithographic printing plate has

been shown to be feasible in the laboratory although it as

not found wide commercial usage as yet. In the highly

competitive industry of commercial printing, printing

quality is of prime importance. New processes, therefore,

must measure up to quality control standards before they

can become established in this field.

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As pointed out by Schaffert at page 143:

‘*In the gap that separates the long-run printing

job and small-run duplicating job, xerographic tech-

niques have found 2 place of importance. For many

years there has been a need for economical production

methods applicable to short-run printing of certain

types of books, pamphlets, and other limited distribu-

tion publications, and for the reprinting of out-of-print

materials in limited quantities. The preparation of

printing plates for such jobs by conventional methods

may prove to be too costly and time consuming. It is

in this area that lithographic plates made by xerog-

raphy show promise of making wou~thwhile contribu-

tions to the art of printing.’’ (See footnote 7.)

THE ART OF PRINTING.

The dictionary definitions with regard to printing and

reprinting have been set forth at page 7 of this brief. In

order to put them in the proper perspective it must be

recognized that prior to the invention of printing documents

and books were in the form of manuscripts written by

scribes. The process of printing has been contrasted with

the method of writing in an early copyright decision of

Keene v. Wheatley et al., 14 Fed. Cas, 180, 192 (No. 7644).

(C. C. E. D. Pa. 1861). In that decision it was stated:

‘*Writing is a method of originally developing the

composition, and of adding copies made singly, letter by

letter. Printing is a process of multiplying the copies,

by sheets. Thus the difference is that between multi-

plication and addition. Human means of increasing

the number of copies by writing are extremely limited.

By printing, they may, on the contrary, in the words

of Lord Cranworth, be multiplied indefinitely. 4 H. L.

Brief Amici Curiae 17 ¢

Cas. 833. The books printed by those who first publicly *

practiced the typographic art in Europe usually con- :

tained an advertisement that they were not written, as

all books had previously been, but were made by a new

invention, whereby the several sheets were stamped

at once, and not made line by line as formerly.’’ [Em-

phasis added. ]

As noted above, the Trial Judge found that NLM and

the NIH library were not only ‘‘printing’’ and ‘‘reprint-

ing’’ but also ‘‘publishing’’. He stated:

‘* ‘Publishing’ means disseminating to others, which

defendant’s libraries clearly did when they distributed

photocopies to requesters and users.’’ [See footnote

2.]

In Keene v. Wheatley et al., supra, the Court also had

vecasion to consider the meaning of the word ‘‘publish’’ in

the copyright law in connection with the general distribu-

tion of a printed book, and stated ‘‘. . . the delivery of a

single copy to a subscriber is a public circulation.’’ (14

Fed. Cas. 192). [Emphasis added. ]

While printing traditionally has been associated with

the setting of type and a printing press, many changes

have taken place in the printing art since the days of Guten-

berg.® This has been judicially noted in a variety of set-

tings. For example, the Patent Laws (35 U. S. C. 102),”

like the Copyright Law, include reference to printing.

9. For a glimpse of what the future holds for printing, see

“Good-by to Gutenberg”, January 24, 1966 issue of Newsweek,

pages 85-88.

10. §102. A person shall be entitled to a patent unless—

a. the invention was known or used by others in this coun-

try, or patented or described in a printed publication in

this or a foreign country, before the invention thereof by

the applicant for patent, or

b. the invention was patented or described in a printed

publication in this or a foreign country or in public use

fT LOR IS RR

18 Brief Amici Curiae

In 1971 the Court in Philips Electronic and Pharma-

ceutical Industries Corp. v. Thermal and Electronics In-

dustries, Inc., 450 F. 2d 1164, 171 U. S. P. Q. 641 (3rd Cir.

1971) had before it the question of whether the microfilm of

a German patent application was a prior ‘‘printed publica-

tion’’ within the meaning of 35 U. S. C. 102(a). The Court

noted the ‘‘modern copymaking techniques and the wide-

spread commercial, industrial and educational use of micro-

film as well as its use in our libraries and data storage

banks’’, The Court further noted:

‘

‘, .». there have been revolutionary developments

in techniques for reproduction, printing and dissemina-

tion of documents ~nd data. The traditional process of

‘printing’ is no loager the only process synonymous

with ‘publication.’ The emphasis, therefore, should be

public dissemination of the document, and its avail-

ability and accessibility to persons skilled in the sub-

ject matter or art.

The field is rapidly undergoing change and im-

provement. To restrict our interpretation of Section

102(a)’s ‘printed’ publication requirement solely to

the traditional printing press would ignore the realities

of the scientific and technological period in which we

live and the unde:lying rationale of Section 102. We

hold, therefore, that the term ‘printed’ as used in

Section 102 can include documents duplicated by

modern methods and techniques, including the now

well established process of microfilming. Whether or

not an individual microfilm is a ‘printed’ publication

10. (Cont’d.)

or on sale in this country, more than one year prior to

the date of the application for patent in the United

States, or...

Brief Amws Curiae 19°

within the meaning of the statute is a question of fact

which ought to be determined by the application of

criteria consonant with modern day methods of print-

ing, duplicating and disseminating Cocuments.’’ (171

U.S .P. Q. 645) [Emphasis by Court.;}

The Court approved the findings of the trial court that

the German application, as microfilmed and indexed, was

available and accessible, with the exercise of reasonable

diligence, to persons ordinarily skilled in the art and that

the application was a ‘‘printed publication’’ under the

statute.

The Government as represented by the Patent Office

also has had occasion to construe the meaning of ‘‘printed

publication’’ under 35 U. S. C. 102 with respect to micro-

film. In Ex parte Garbo, 141 U. S. P. Q. 913 (P. O. Bd.

App. 1962) the Board of Patent Appeals had before it the

question of whether or not a microfilm of a German patent

application could be considered ‘‘prior art’’. The German

patent application had been recorded on microfilm and

offered for sale in the Bibliography of Scientific and In-

dustrial Reports, Office of Technical Services, U. S. De-

partment of Commerce. Garbo contended that the micro-

film citation was neither ‘‘printed’’ nor ‘‘published’’ prior

to his filing date. The Patent Office Board of Appeals in

holding that such a microfilm was a ‘‘printed publication’’

under the statute made the following observation:

‘“‘In the citation at hand, the Government un-

doubtedly went to considerable expense in accumlating

the material contained in the microfilmed disclosures

of which the citation is a part. The sole purpose of

this expenditure was to make the information avail-

able to all who could use it. The Government in choos-

ing microfilm as a vehicle selected the only economical

EDS RRS De RUE a TOMS LETS ORM i ENE SOF RAMEE TG

Ee

pies BeOS

20 Brief Amici Curiae

low cost method available to it for making this in-

formation available to the entire metal founding in-

dustry. It seems incongruous that the best of efforts

by our Government to make more knowledge available

shall come to naught through the patent system in ef-

fect nullifying these efforts by ruling that they are

insufficient in law to accomplish the purpose for which

they were intended.’’ (141 U. S. P. Q. 916)

From the foregoing it is clear that under the Patent

Laws the term ‘‘printed’’ can include documents dupli-

cated by modern methods and techniques, including

xerography and the now well established process of micro-

filming. It seems incongruous that the Government in

construing the Copyright Law does not consider that mak-

ing ‘‘Xerox’’ copies is equivalent to printing when as

stated in ‘‘Good-by to Gutenberg’’,” ‘‘Xerography and

other copying techniques have already turned every. office

mailroom into a publishing house.’’

CONCLUSION.

The decision of Trial Judge Davis is consistent with

the constitutional purpose of the Copyright System and

soundly concludes that the making of copies of whole

articles whether by printing presses or a more modern

‘method of duplication is proscribed by the Copyright Law.

Respectfully submitted,

Rosert B. WasHsurn,

Woopcock, WasxHsugn, Kurtz

& Mackiewicz,

1831 The Fidelity Building,

Philadelphia, Pennsylvania. 19109

Attorneys for Amici Curiae.

11. See footnote 9.