Vault Corporation v. Quaid Software Limited

Vault brought this copyright infringement action against Quaid seeking damages and preliminary and permanent injunctions. The district court denied Vault’s motion for a preliminary injunction, holding that Vault did not have a reasonable probability of success on the merits. Vault Corp. v. Quaid Software Ltd., 655 F.Supp. 750 (E.D.La.1987). By stipulation of the parties, this ruling was made final and judgment was entered accordingly. We affirm.

I

Vault produces computer diskettes under the registered trademark “PROLOK” which are designed to prevent the unauthorized duplication of programs placed on them by software computer companies, Vault’s customers. Floppy diskettes serve as a medium upon which computer companies place their software programs. To use a program, a purchaser loads the diskette into the disk drive of a computer, thereby allowing the computer to read the program into its memory. The purchaser can then remove the diskette from the disk drive and operate the program from the computer’s memory. This process is repeated each time a program is used.

The protective device placed on a PRO-LOK diskette by Vault is comprised of two parts: a “fingerprint” and a software program (“Vault’s program”). 1 The “fingerprint” is a small mark physically placed on the magnetic surface of each PROLOK diskette which contains certain information that cannot be altered or erased. Vault’s program is a set of instructions to the computer which interact with the “fingerprint” to prevent the computer from operating the program recorded on a PROLOK diskette (by one of Vault’s customers) unless the computer verifies that the original PROLOK diskette, as identified by the “fingerprint,” is in the computer’s disk drive. While a purchaser can copy a PRO-LOK protected program onto another diskette, the computer will not read the program into its memory from the copy unless the original PROLOK diskette is also in one of the computer’s disk drives. The fact that a fully functional copy of a program cannot be made from a PROLOK diskette prevents purchasers from buying *257 a single program and making unauthorized copies for distribution to others.

Vault produced PROLOK in three stages. The original commercial versions, designated as versions 1.01, 1.02, 1.03,1.04 and 1.06 (“version 1.0”) were produced in 1983. Vault then incorporated improvements into the system and produced version 1.07 in 1984. The third major revision occurred in August and September of 1985 and was designated as versions 2.0 and 2.01 (“version 2.0”). Each version of PRO-LOK has been copyrighted and Vault includes a license agreement with every PROLOK package that specifically prohibits the copying, modification, translation, decompilation or disassembly of Vault’s program. 2 Beginning with version 2.0 in September 1985, Vault’s license agreement contained a choice of law clause adopting Louisiana law. 3

Quaid’s product, a diskette called “Copy-Write,” contains a feature called “RAM-KEY” which unlocks the PROLOK protective device and facilitates the creation of a fully functional copy of a program placed on a PROLOK diskette. The process is performed simply by copying the contents of the PROLOK diskette onto the Copy-Write diskette which can then be used to run the software program without the original PROLOK diskette in a computer disk drive. RAMKEY interacts with Vault’s program to make it appear to the computer that the CopyWrite diskette contains the “fingerprint,” thereby making the computer function as if the original PRO-LOK diskette is in its disk drive. A copy of a program placed on a CopyWrite diskette can be used without the original, and an unlimited number of fully functional copies can be made in this manner from the program originally placed on the PROLOK diskette.

Quaid first developed RAMKEY in September 1983 in response to PROLOK version 1.0. In order to develop this version of RAMKEY, Quaid copied Vault’s program into the memory of its computer and analyzed the manner in which the program operated. When Vault developed version 1.07, Quaid adapted RAMKEY in 1984 to defeat this new version. The adapted version of RAMKEY contained a sequence of approximately 30 characters found in Vault’s program and was discontinued in July 1984. Quaid then developed the cur *258 rent version of RAMKEY which also operates to defeat PROLOK version 1.07, but does not contain the sequence of characters used in the discontinued version. Quaid has not yet modified RAMKEY to defeat PROLOK version 2.0, and has agreed not to modify RAMKEY pending the outcome of this suit. Robert McQuaid, the sole owner of Quaid, testified in his deposition that while a CopyWrite diskette can be used to duplicate programs placed on all diskettes, whether copy-protected or not, the only purpose served by RAMKEY is to facilitate . the duplication of programs placed on copy-protected diskettes. He also stated that without the RAMKEY feature, CopyWrite would have no commercial value.

II

Vault brought this action against Quaid seeking preliminary and permanent injunctions to prevent Quaid from advertising and selling RAMKEY, an order impounding all of Quaid’s copies of CopyWrite which contain the RAMKEY feature, and monetary damages in the amount of $100,-000,000. Vault asserted three copyright infringement claims cognizable under federal law, 17 U.S.C. § 101 et seq. (1977 & Supp.1988) (the “Copyright Act”), which included: (1) that Quaid violated 17 U.S.C. §§ 501(a) & 106(1) by copying Vault’s program into its computer’s memory for the purpose of developing a program (RAM-KEY) designed to defeat the function of Vault’s program; (2) that Quaid, through RAMKEY, contributes to the infringement of Vault’s copyright and the copyrights of its customers in violation of the Copyright Act as interpreted by the Supreme Court in Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984); and (3) that the second version of RAMKEY, which contained approximately thirty characters from PRO-LOK version 1.07, and the latest version of RAMKEY, constitute “derivative works” of Vault’s program in violation of 17 U.S.C. §§ 501(a) & 106(2). Vault also asserted two claims based on Louisiana law, contending that Quaid breached its license agreement by decompiling or disassembling Vault’s program in violation of the Louisiana Software License Enforcement Act, La.Rev.Stat.Ann. § 51:1961 et seq. (West 1987), and that Quaid misappropriated Vault’s program in violation of the Louisiana Uniform Trade Secrets Act, La. Rev.Stat.Ann. § 51:1431 et seq. (West 1987).

The district court originally dismissed Vault’s complaint for lack of in personam jurisdiction. This court reversed the district court’s order of dismissal and remanded the case for further proceedings. Vault Corp. v. Quaid Software Ltd., 775 F.2d 638 (5th Cir.1985). On remand, the district court, after a three-day bench trial, denied Vault’s motion for a preliminary injunction holding that Vault had not established a reasonable probability of success on the merits. Vault, 655 F.Supp. at 763. Subsequently, the parties agreed to submit the case for final decision based on the evidence adduced at the preliminary injunction trial. On July 31, 1987 the district court entered final judgment in accordance with its decision on the preliminary injunction.

Vault now contends that the district court improperly disposed of each of its claims.

III. Vault’s Federal Claims

An owner of a copyrighted work has the exclusive right to reproduce the work in copies, to prepare derivative works based on the copyrighted work, to distribute copies of the work to the public, and, in the case of certain types of works, to perform and display the work publicly. 17 U.S.C. § 106. Sections 107 through 118 of the Copyright Act limit an owner’s exclusive rights, and section 501(a) provides that “[ajnyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118 ... is an in-fringer of the copyright.”

It is not disputed that Vault owns the copyright to the program it places on PRO-LOK diskettes and is thus an “owner of copyright” under § 106. Therefore, Vault has, subject to the exceptions contained in sections 107 through 118, the exclusive *259 right to reproduce its program in copies and to prepare derivative works based on its program. Vault claims that Quaid infringed its copyright under § 501(a) by: (1) directly copying Vault’s program into the memory of Quaid’s computer; (2) contributing to the unauthorized copying of Vault’s program and the programs Vault’s customers place on PROLOK diskettes; and (3) preparing derivative works of Vault’s program.

Section 117 of the Copyright Act limits a copyright owner’s exclusive rights under § 106 by permitting an owner of a computer program to make certain copies of that program without obtaining permission from the program’s copyright owner. With respect to Vault’s first two claims of copyright infringement, Quaid contends that its activities fall within the § 117 exceptions and that it has, therefore, not infringed Vault’s exclusive rights under § 501(a). To appreciate the arguments of the parties, we examine the legislative history of § 117.

A. Background

In 1974 Congress established the National Commission on New Technological Uses of Copyrighted Works (the “CONTU”) to perform research and make recommendations concerning copyright protection for computer programs. Before receiving the CONTU’s recommendations, Congress amended the Copyright Act in 1976 4 to include computer programs in the definition of protectable literary works 5 and to establish that a program copied into a computer’s memory constitutes a reproduction. 6 Congress delayed further action and enacted an interim provision 7 to maintain the status quo until the CONTU completed its study and made specific recommendations.

In 1978 the CONTU issued its final report 8 in which it recognized that “[t]he cost of developing computer programs is far greater than the cost of their duplication,” CONTU Report at 26, and concluded that “some form of protection is necessary to encourage the creation and broad distribution of computer programs in a competitive market,” id. at 27. After acknowledging the importance of balancing the interest of proprietors in obtaining “reasonable protection” against the risks of “unduly burdening users of programs and the general public,” id. at 29, the Report recommended *260 the repeal of section 117 9 (the interim provision) and the enactment of a new section 117 which would proscribe the unauthorized copying of computer programs 10 but permit a “rightful possessor” of a program

to make or authorize the making of another copy or adaptation of that computer program provided:

(1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or

(2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

Id. at 29-30 (emphasis in original).

Because the act of loading a program from a medium of storage into a computer’s memory creates a copy of the program, the CONTU reasoned that “[o]ne who rightfully possesses a copy of a program ... should be provided with a legal right to copy it to that extent which will permit its use by the possessor,” and drafted proposed § 117(1) to “provide that persons in rightful possession of copies of programs be able to use them freely without fear of exposure to copyright liability.” Id. at 31. With respect to proposed section 117(2), the “archival exception,” the Report explained that a person in rightful possession of a program should have the right “to prepare archival copies of it to guard against destruction or damage by mechanical or electrical failure. But this permission would not extend to other copies of the program. Thus one could not, for example, make archival copies of a program and later sell some to another while retaining some for use.” Id.

In 1980, Congress enacted the Computer Software Copyright Act which adopted the recommendations contained in the CONTU Report. Section 117 was repealed, proposed section 117 11 was enacted, and the proposed definition of “computer program” was added to section 101. The Act’s legislative history, contained in a short paragraph in a committee report, merely states that the Act, “embodies the recommendations of [the CONTU] with respect to clarifying the law of copyright of computer software.” H.R.Rep. No. 1307, 96th Cong., 2d Sess., pt. 1, at 23, reprinted in 1980 U.S.Code Cong. & Admin.News 6460, 6482. The absence of an extensive legislative history and the fact that Congress enacted proposed section 117 with only one *261 change 12 have prompted courts to rely on the CONTU Report as an expression of legislative intent. See Micro-Sparc, Inc. v. Amtype Corp., 592 F.Supp. 33, 35 (D.Mass.1984); Atari, Inc. v. JS & A Group, Inc., 597 F.Supp. 5, 9 (N.D.Ill.1983); Midway Mfg. Co. v. Strohon, 564 F.Supp. 741, 750 n. 6 (N.D.Ill.1983).

B. Direct Copying

In order to develop RAMKEY, Quaid analyzed Vault’s program by copying it into its computer’s memory. Vault contends that, by making this unauthorized copy, Quaid directly infringed upon Vault’s copyright. The district court held that “Quaid’s actions clearly fall within [the § 117(1)] exemption. The loading of [Vault’s] program into the [memory] of a computer is an ‘essential step in the utilization’ of [Vault’s] program. Therefore, Quaid has not infringed Vault’s copyright by loading [Vault’s program] into [its computer’s memory].” Vault, 655 F.Supp. at 758.

Section 117(1) permits an owner of a program to make a copy of that program provided that the copy “is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner.” Congress recognized that a computer program cannot be used unless it is first copied into a computer’s memory, and thus provided the § 117(1) exception to permit copying for this essential purpose. See CONTU Report at 31. Vault contends that, due to the inclusion of the phrase “and that it is used in no other manner,” this exception should be interpreted to permit only the copying of a computer program for the purpose of using it for its intended purpose. Because Quaid copied Vault’s program into its computer’s memory for the express purpose of devising a means of defeating its protective function, Vault contends that § 117(1) is not applicable.

We decline to construe § 117(1) in this manner. Even though the copy of Vault’s program made by Quaid was not used to prevent the copying of the program placed on the PROLOK diskette by one of Vault’s customers (which is the purpose of Vault’s program), and was, indeed, made for the express purpose of devising a means of defeating its protective function, the copy made by Quaid was “created as an essential step in the utilization” of Vault’s program. Section 117(1) contains no language to suggest that the copy it permits must be employed for a use intended by the copyright owner, and, absent clear congressional guidance to the contrary, we refuse to read such limiting language into this exception. We therefore hold that Quaid did not infringe Vault’s exclusive right to reproduce its program in copies under § 106(1).

C. Contributory Infringement

Vault contends that, because purchasers of programs placed on PROLOK diskettes use the RAMKEY feature of CopyWrite to make unauthorized copies, Quaid’s advertisement and sale of CopyWrite diskettes with the RAMKEY feature violate the Copyright Act by contributing to the infringement of Vault’s copyright and the copyrights owned by Vault’s customers. Vault asserts that it lost customers and substantial revenue as a result of Quaid’s contributory infringement because software companies which previously relied on PROLOK diskettes to protect their programs from unauthorized copying have discontinued their use. 13

*262 While a purchaser of a program on a PROLOK diskette violates sections 106(1) and 501(a) by making and distributing unauthorized copies of the program, the Copyright Act “does not expressly render anyone liable for the infringement committed by another.” Sony, 464 U.S. at 434, 104 S.Ct. at 785. The Supreme Court in Sony, after examining the express provision in the Patent Act which imposes liability on an individual who “actively induces infringement of a patent,” 35 U.S.C. § 271(b) & (c), and noting the similarity between the Patent and Copyright Acts, recognized the availability, under the Copyright Act, of vicarious liability against one who sells a product that is used to make unauthorized copies of copyrighted material. Id. at 434-42,104 S.Ct. at 785-89. The Court held that liability based on contributory infringement could be imposed only where the seller had constructive knowledge of the fact that its product was used to make unauthorized copies of copyrighted material, id. at 339, 104 S.Ct. at 787, and that the sale of a product “does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses.” Id. at 442, 104 S.Ct. at 789.

While Quaid concedes that it has actual knowledge that its product is used to make unauthorized copies of copyrighted material, it contends that the RAMKEY portion of its CopyWrite diskettes serves a substantial noninfringing use by allowing purchasers of programs on PROLOK diskettes to make archival copies as permitted under 17 U.S.C. § 117(2), and thus that it is not liable for contributory infringement. The district court held that Vault lacked standing to raise a contributory infringement claim because “it is not Vault, but the customers of Vault who place their programs on PROLOK disks, who may assert such claims. Clearly the copyright rights to these underlying programs belong to their publishers, not Vault.” Vault, 655 F.Supp. at 759. Alternatively the court held that CopyWrite is capable of “commercially significant noninfringing uses” because the RAMKEY feature permits the making of archival copies of copy-protected software, and CopyWrite diskettes (without the RAMKEY feature) are used to make copies of unprotected software and as a diagnostic tool to analyze the quality of new computer programs. Id. Therefore, the court held that the sale of CopyWrite did not constitute contributory infringement.

While we hold that Vault has standing to assert its contributory infringement claim, we find that RAMKEY is capable of substantial noninfringing uses and thus reject Vault’s contention that the advertisement and sale of CopyWrite diskettes with RAM-KEY constitute contributory infringement.

1. Standing

The Copyright Act provides that the “legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of sections 205(d) and 411 [concerning the recordation and registration of copyrights], to institute an action for any infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b). The Supreme Court in Sony noted that it was the taping of plaintiffs “own copyrighted programs that provides them with standing to charge Sony with contributory infringement.” 464 U.S. at 434, 104 S.Ct. at 785.

The focus of Vault’s allegation of contributory infringement in its amended complaint is that CopyWrite, through RAM-KEY, enables purchasers of PROLOK protected programs to infringe the copyrights of Vault’s customers and that, as a result, Vault has suffered damages due to its loss *263 of customers. While Vault does not own the copyrights to its customer’s programs, it does own the copyright to the program it places on each PROLOK diskette. This program operates in conjunction with the “fingerprint” to prevent the duplication of Vault’s customer’s programs. Uncontro-verted testimony established that both Vault’s protective program and its customer’s program are copied onto a CopyWrite diskette when an individual executes a computer’s “copy” function in order to duplicate the customer’s program from a PRO-LOK diskette onto a CopyWrite diskette, and that RAMKEY then interacts with Vault’s program to defeat its protective function and to make the computer operate as if the original PROLOK diskette was in one of its disk drives. 14 Therefore, Copy-Write diskettes, through RAMKEY, facilitate not only the copying of Vault’s customer’s software programs but also the copying of Vault’s protective program, and, in addition, RAMKEY interacts with Vault’s program to destroy its purpose.

Quaid does not take issue with the validity of Vault’s copyright under § 501(b) but instead contends that Vault lacks standing because it failed to allege contributory infringement based on the copying of its program, as opposed to the programs of its customers. Vault responds that its pleadings should be broadly construed to include its contributory infringement claim based on the copying of its program, and that even if its pleadings are narrowly construed, they were amended, pursuant to Fed.R.Civ.P. 15(b), to include this claim by trial testimony which established that Quaid’s product contributes to the unauthorized copying of Vault’s program.

Rule 15(b) provides that “[w]hen issues not raised by the pleadings are tried by express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings.” While Vault’s pleadings do not allege con-tributary infringement based on the copying of its copyrighted program, Quaid’s consent to this claim is evidenced by a pretrial memorandum, signed by counsel for both Vault and Quaid, which listed as a contested issue of law “[w]hether Quaid has contributorily infringed Vault’s and Vault’s customer copyrights” (emphasis added). Quaid does not contend that it has been unfairly prejudiced by Vault’s contention of contributory infringement based on the copying of its own program, see Mason v. Hunter, 534 F.2d 822, 825 (8th Cir.1976), nor does Quaid contend that it had inadequate notice of the nature of Vault’s claim or an inadequate opportunity to fully and fairly respond, see Henry v. Coahoma County Bd. of Educ., 246 F.Supp. 517, 519 (N.D.Miss.1963), aff'd, 353 F.2d 648 (5th Cir.1965), cert. denied, 384 U.S. 962, 86 S.Ct. 1586, 16 L.Ed.2d 674 (1966). Vault’s proposed interpretation or amendment of its pleadings in no way changes the character of the case. See id. at 518. It is beyond dispute that RAMKEY destroys the commercial value of PROLOK diskettes, and while the extent of Vault’s damages were not fully developed at trial, the evidence indicated that Vault sustained substantial injuries as a result of RAMKEY and thus has a significant personal stake in the outcome of this litigation. Under these circumstances, we hold that, pursuant to Fed.R.Civ.P. 15(b), Vault has fairly alleged contributory infringement of its copyrighted program and has standing to pursue this claim.

2. Substantial Noninfringing Uses of RAMKEY

Vault’s allegation of contributory infringement focuses on the RAMKEY feature of CopyWrite diskettes, not on the non-RAMKEY portions of these diskettes. Vault has no objection to the advertising and marketing of CopyWrite diskettes without the RAMKEY feature, and this *264 feature is separable from the underlying diskette upon which it is placed. 15 Therefore, in determining whether Quaid engaged in contributory infringement, we do not focus on the substantial noninfringing uses of CopyWrite, 16 as opposed to the RAMKEY feature itself. See Vault, 655 F.Supp. at 759. The issue properly presented is whether the RAMKEY feature has substantial noninfringing uses.

The starting point for our analysis is with Sony. The plaintiffs in Sony, owners of copyrighted television programs, sought to enjoin the manufacture and marketing of Betamax video tape recorders (“VTR’s”), contending that VTR’s contributed to the infringement of their copyrights by permitting the unauthorized copying of their programs. 464 U.S. at 419-20, 104 S.Ct. at 777. After noting that plaintiffs’ market share of television programming was less than 10%, and that copyright holders of a significant quantity of television broadcasting authorized the copying of their programs, the Court held that VTR’s serve the legitimate and substantially noninfringing purpose of recording these programs, as well as plaintiffs’ programs, for future viewing (authorized and unauthorized 17 time-shifting respectively), and therefore rejected plaintiffs’ contributory infringement claim. Id. at 442-55, 104 S.Ct. at 789-95.

Quaid asserts that RAMKEY serves the legitimate purpose of permitting purchasers of programs recorded on PROLOK diskettes to make archival copies under § 117(2) and that this purpose constitutes a substantial noninfringing use. At trial, witnesses for Quaid testified that software programs placed on floppy diskettes are subject to damage by physical and human mishap 18 and that RAMKEY protects a purchaser’s investment by providing a fully functional archival copy that can be used if the original program on the PROLOK protected diskette, or the diskette itself, is destroyed. Quaid contends that an archival copy of a PROLOK protected program, made without RAMKEY, does not serve to protect against these forms of damage because a computer will not read the program into its memory from the copy unless the PROLOK diskette containing the original undamaged program is also in one of its disk drives, which is impossible if the PRO-LOK diskette, or the program placed thereon, has been destroyed due to physical or human mishap.

Computer programs can be stored on a variety of mediums, including floppy diskettes, hard disks, non-erasable read only *265 memory (“ROM”) chips, and a computer’s random access memory, and may appear only as printed instructions on a sheet of paper. Vault contends that the archival exception was designed to permit only the copying of programs which are subject to “destruction or damage by mechanical or electrical failure.” CONTU Report at 31 (emphasis added). While programs stored on all mediums may be subject to damage due to physical abuse or human error, programs stored on certain mediums are not subject to damage by mechanical or electrical failure. 19 Therefore, Vault argues, the medium of storage determines whether the archival exception applies, thus providing only owners of programs, placed on mediums of storage which subject them to damage by mechanical or electrical failure, the right to make back-up copies. To support its construction of § 117(2), Vault notes that one court has held that the archival ' exception does not apply to the copying of programs stored on ROM chips where there was no evidence that programs stored on this medium were subject to damage by mechanical or electrical failure, Atari, 597 F.Supp. at 9-10, 20 and another court has likewise held that the archival exception does not apply to the copying of programs which appear only in the form of printed instructions in a magazine, Micro-Sparc, 592 F.Supp. at 35-36. 21

Vault contends that the district court’s finding that programs stored on floppy diskettes are subject to damage by mechanical or electrical failure is erroneous because there was insufficient evidence presented at trial to support it, 22 and, based *266 on this contention, Vault asserts that the archival exception does not apply to permit the unauthorized copying of these programs. Vault performed a trial demonstration to prove that even if a program on an original PROLOK diskette, and Vault’s protective program, were completely erased from this diskette, these programs could be restored on the original diskette using a copy made without RAMKEY. Therefore, Vault argues that even if a program recorded on a PROLOK diskette is subject to damage by mechanical or electrical failure, the non-operational copy of a PROLOK protected program made without RAMKEY is sufficient to protect against this type of damage. Vault concludes that, in light of the fact that RAMKEY facilitates the making of unauthorized copies and owners of PROLOK protected programs can make copies to protect against damage by mechanical and electrical failure without RAMKEY, the RAMKEY feature is not capable of substantial nonin-fringing uses.

The narrow construction of the archival exception, advanced by Vault and accepted in the Atari and Micro-Sparc decisions, has undeniable appeal. This construction would leave the owner of a protected software program free to make back-up copies of the software to guard against erasures, which is probably the primary concern of owners as well as the drafters of the CONTU Report. Software producers should perhaps be entitled to protect their product from improper duplication, and Vault’s PROLOK may satisfy producers and most purchasers on this score — PROLOK cannot be copied by the purchaser onto a CopyWrite diskette without infringing the PROLOK copyright. That result does have appeal, but we believe it is an appeal that must be made to Congress. “[I]t is not our job to apply laws that have not yet been written.” Sony, 464 U.S. at 456, 104 S.Ct. at 796. We read the statute as it is now written to authorize the owner of the PROLOK diskette to copy both the PROLOK program and the software program for any reason 23 so long as the owner uses the copy for archival purposes only and not for an unauthorized transfer.

The CONTU Report’s words of “mechanical or electrical failure” are contained in a paragraph quoted in the footnote. 24 We *267 read the stated causes of damage to be illustrative only, and not exclusive. Similarly, the statement follows with the prohibited use of the archival copies which does not include a prohibition against copying for purposes other than to protect against “mechanical or electrical failure.” The Report, or Congress, could have easily limited the scope of § 117(2) to authorize the making of archival copies of programs subject to damage, and to guard against, only mechanical or electrical failure. CON-TU did not recommend that language, nor did Congress enact it. Congress, following CONTU’s advice, provided that an owner of a computer program may make a copy of that program provided that “such new copy ... is for archival purposes only.” 17 U.S.C. § 117(2). Congress did not choose to spell out detailed restrictions on the copying as was done in sections 108 and 112. Congress imposed no restriction upon the purpose or reason of the owner in making the archival copy; only the use made of that copy is restricted. See CON-TU Report at 31 (“one could not, for example, make archival copies of a program and later sell some to another while retaining some for use”). An owner of a program is entitled, under § 117(2), to make an archival copy of that program in order to guard against all types of risks, including physical and human mishap as well as mechanical and electrical failure.

A copy of a PROLOK protected program made with RAMKEY protects an owner from all types of damage to the original program, while a copy made without RAM-KEY only serves the limited function of protecting against damage to the original program by mechanical and electrical failure. Because § 117(2) permits the making of fully functional archival copies, it follows that RAMKEY is capable of substantial noninfringing uses. Quaid’s advertisement and sale of CopyWrite diskettes with the RAMKEY feature does not constitute contributory infringement.

D. Derivative Work

Section 106(2) of the Copyright Act provides the copyright owner exclusive rights “to prepare derivative works based on the copyrighted work.” Section 101 defines a derivative work as:

a work based on one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations or other modifications which, as a whole, represent an original work of authorship is a “derivative work.”

To constitute a derivative work, “the infringing work must incorporate in some form a portion of the copyrighted work.” Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). In addition, the infringing work must be substantially similar to the copyrighted work. Id.

The 1984 version of RAMKEY contained approximately 30 characters of source code copied from Vault’s program. Vault’s program contained the equivalent of approximately 50 pages of source code, and the 1984 version of RAMKEY contained the equivalent of approximately 80 pages of source code. By all accounts, the 30 character sequence shared by RAMKEY and Vault’s program constituted a quantitatively minor amount of source code. In response to Vault’s contention that RAM-KEY constitutes a derivative work, the district court found that “the copying in 1984 was not significant” and that “there has been no evidence ... that there has been any further duplication.” Holding that “RAMKEY is not a substantially similar copy of PROLOK,” the court concluded that “RAMKEY is not a derivative work.” Vault, 655 F.Supp. at 759.

Vault now contends that the district court, in evaluating the 1984 version of RAMKEY, incorrectly emphasized the quantity of copying instead of the qualitative significance of the copied material, and cites Whelan Assoc’s., Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir.1986), cert. denied, — U.S. —, 107 *268 S.Ct. 877, 93 L.Ed.2d 831 (1987), for the proposition that a “court must make a qualitative, not quantitative, judgment about the character of the work as a whole and the importance of the substantially similar portions of the work.” Id. at 1245. See Midway Mfg. Co. v. Artic Int’l, Inc., 704 F.2d 1009, 1013-14 (7th Cir.), cert. denied, 464 U.S. 823, 104 S.Ct. 90, 78 L.Ed.2d 98 (1983). The sequence copied, Vault asserts, constituted the identifying portion of Vault’s program which interacts with the “fingerprint” to confirm that the original PROLOK diskette is in the computer’s disk drive. Vault contends that, because this sequence was crucial to the operation of Vault’s program and RAMKEY’s ability to defeat its protective function, the copying was qualitatively significant.

The cases upon which Vault relies, Whe-lan and Midway, both involved situations where the derivative work performed essentially the same function as the copyrighted work. Whelan, 797 F.2d at 1225-26; Midway, 704 F.2d at 1010-11. 25 In this case, Vault’s program and RAMKEY serve opposing functions; while Vault’s program is designed to prevent the duplication of its customers’ programs, RAMKEY is designed to facilitate the creation of copies of Vault’s customers' programs. Under these circumstances, we agree with the district court that the 1984 copying was not significant and that this version of RAMKEY was not a substantially similar copy of Vault’s program.

While Vault acknowledges that the latest version of RAMKEY does not contain a sequence of characters from Vault’s progr