Intellectual Property Law

A critique on computer programming and international copyright.

Introduction

Until recently, copyright was not regarded as being of much relevance to the sale of products other than traditionally "artistic" products such as books and gramophone records. Today, however, in addition to these traditional areas, copyright has become an extremely important weapon in preventing piracy of computer software and preventing copying of various useful items to which "art" has been applied. In this section, we shall consider the application of the Copyright Act to computer software. The Copyright statute provides copyright protection for original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Subject to certain provisions relating to "fair use", the Copyright Act gives the copyright owner exclusive rights over the reproduction, preparation of derivative works, distribution and public performance and display of the copyrighted work.

It is not necessary to take any particular steps once a work has been created and "fixed in tangible form" for copyright to exist, although as noted above, in many cases it will be necessary to register a copyright in a work before one can proceed with an action for infringement of it. Once it exists, for works created after January 1, 1978, copyright, in general, lasts for a period of seventy years from the death of the author, or in the case of joint works from the death of the last-to-die of the authors of the work. In the case of works made for hire, however, protection runs for a period of ninety five years from publication or one hundred and twenty years from its creation, whichever comes first.

Unlike the patent statute, there is no statutory provision for an action for contributory infringement of a copyright by providing an actual infringer with the necessary equipment or materials to make a copy of a copyright work, the courts have recognized the existence of such a right. In order to succeed, however,, the Supreme Court in Sony Corporation of America v. Universal City Studios held it is necessary to demonstrate that there are no "substantial non-infringing uses" of the materials or equipment in question. The issue of contributory infringement lies at the core of the dispute between the music recording industry and Napster Inc. Napster provides a service through which users can, through the Internet, download music recordings that were resident on computers of any other person who was logged on to Napster's site at the time. This is done by software on the Napster site which searched out computers on which the requested piece of music was present. The recording industry regards this as being harmful to it as being likely to reduce the legitimate sales of its recordings. The industry argued that by providing this service, Napster was contributing to the actual infringement of the copyright in a musical work that occurred when that work was down-loaded. In response to a motion for a preliminary injunction, the district court judge rejected Napster's claims that there were substantial non-infringing uses and also analogies to taping of films broadcast in television which has been held by the Supreme Court to be permissible as a fair use in the Sony case, at least when done to enable the viewer to watch the film at a more convenient time. The Ninth Circuit Court of Appeals immediately stayed the injunction and ordered an early oral hearing of Napster's appeal against the injunction on the ground that the appellant had raised "substantial questions of first impression going both to the merits and the form of the injunction."

A basic principle laid down by the Supreme Court in the case of Baker v. Selden in 1879 is that there is no infringement of copyright in using or copying something if such copying or use is the only way for putting a particular idea into practice. Copyright protection is available only for a particular expression of an idea, not for the idea itself. (The case related to a book explaining a new system of bookkeeping and including certain blank forms). In that case, it was held that for the position to be otherwise there would be a grant of a monopoly "when no examination of its novelty had ever been officially made which would be a surprise and a fraud upon the public." The protection of ideas was to be a matter of Letters Patent not copyright. Indeed Section 102(b) of the USA Copyright Act 1976 specifically provides that In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery regardless of the form in which it is described, explained, illustrated or embodied in such work.

What copyright protection does give to the owner is a bundle of particular rights that are to some extent dependent on the type of work involved. As noted below, case law has classified computer software as falling within the statutory definition of copyrightable subject matter as literary works, although some manifestations of the software may be protectable as audio-visual works.

Literary works are defined as works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.

The bundle of rights given to the owner of copyright in literary works is the rights to control:

1. Reproduction of the work,

2. Preparation of derivative works,

3. Distribution of copies of the work,

4. Public performances of the work and

5. Public display of the work

Computer software as literary work

It is a well-established proposition that computer programs are copyrightable subject-matter, just like any other literary work. Loading a program into computer memory, saving the program or running it without authority may infringe copyright. Making an arrangement or altered version of the program or converting it into or out of one computer language or code into a different computer language or code is also an infringement.

Article 10 of the Trade Related Intellectual Property Rights Agreement (TRIPs) expressly provides that computer programs, whether in source code or object code shall be protected as literary works under the Berne Convention, 1971. The relevant provisions of the Copyright Act, 1957 which are pertinent in this context are set out hereunder:

"2. (ffb) 'computer' includes any electronic or similar device having information processing capabilities;

(ffc) 'computer programme' means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;

* * *

(o) 'literary work' includes computer programmes, tables and compilations including computer databases; "

Section 14 explains the meaning of copyright in the following terms:

"14. Meaning of copyright.-For the purposes of this Act, 'copyright' means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely-

A. in the case of a literary, dramatic or musical work, not being a computer programme,-

(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;

(ii) To issue copies of the work to the public not being copies already in circulation;

(iii) To perform the work in public, or communicate it to the public;

(iv) To make any cinematograph film or sound recording in respect of the work;

(v) To make any translation of the work;

(vi) To make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);

B. in the case of a computer programme,-

(i) To do any of the acts specified in clause (A);

(ii) to sell or give on hire, or offer for sale or hire, any copy of the computer programmer, regardless of whether such copy has been sold or given on hire on earlier occasions;"

Thus, under Indian copyright law, computer programs are considered to be literary works and accordingly entitled to copyright protection. However, few Indian courts have considered the scope and extent of copyright protection in relation to computer software and for this purpose, it is necessary to consider the jurisprudence evolved by comparable jurisdictions which have fleshed out principles to enlighten the bare text of statutory laws in this regard.

Distinction between form and idea

Under both the Indian and American systems of law, the protection available to a copyright-protected work is protection in respect of the form and substance of the work and not the idea behind the work. Therefore, applying this principle in the context of computer software, the owner of the copyright over an item of software has the right to prevent any other person from physically copying the code, as it is written, but does not have the right to prevent the utilization of the idea behind the code, provided the person utilizing this idea does so in a manner that is different from his arrangement of the code. Thus, it is necessary to note that unlike the case of a patent over a mechanical product, the copyright over an item of software code does not entitle the author to prevent another software developer from producing the same type of software in a different form and structure.

However, at the same time, it needs to be stated that the point where the idea translates itself into the expression of an idea is an issue that has been the subject of judicial scrutiny by courts in USA. The following principle was laid down in Apple Computer Inc. v. Franklin Computer Corpn.:

"Just as a patent affords protection only to the means of reducing an inventive idea into practice, so the copyright law protects the means of expressing an idea; and it is as near the whole truth as generalisation can usually reach that, if the same idea can be expressed in a plurality of totally different manners, a plurality of copyrights may result, and no infringement will exist."

Interpreting this principle, it has been concluded that the basis for the determination of the copyrightability of a software program was affirmed as being the intellectual property right, inherent in the form and substance of the instructions to the computer and not to the idea behind their arrangement. This would imply that creative copying of the instructions so as to result in the same program being developed through the use of different lines of code would be deemed to be not a violation of the copyright in the program, as the copyright vests in the instructions themselves and not the end product.

Non-literal copying

The next issue that needs to be considered in this context is as to exactly what type of software reproduction is hit by the offence of infringement of copyright, particularly in cases where the alleged infringer had not copied the code line by line, but had taken something less specific. In this regard, various tests have been developed by courts in USA, in order to arrive at a conclusion as to the type of software and the extent to which it could receive protection. One such test has been to discern whether the look and feel of the two programs was the same. If the answer to that question was in the affirmative and if it could be shown that the defendant had access to the plaintiff's program, copyright infringement was likely to have occurred.

The Whelan test

The question whether there could be copyright infringement in copying the "overall structure" of a program, even if neither the object code nor the source code of the program had been copied came to be examined by the US Court of Appeal, for the Third Circuit in Whelan Associates Inc. v. Jaslow Dental Laboratory, Inc. In this case, the alleged infringer rewrote a program that was originally coded in a particular computer language in a different programming language. While evolving the look and feel test the court concluded (on the basis of prior decisions that had held that there could be infringement of copyright in a play or book by copying the plot or plot devices of the play or book when the total "concept and feel" of the alleged infringing work was substantially similar to that of the copyrighted work) that the said test should apply to infringement of copyright in computer programs.

The court also concluded that the detailed structure of a program was part of the expression of an idea than the idea itself, and therefore, the copying of the expression of the idea in the program would amount to an infringement of copyright. The principles laid down by the court in Whelan case can be summarised as hereunder:

Copyright programs are classified as literary works for the purposes of copyright. The copyrights of other literary works can be infringed even when there is no substantial similarity between the work's literal elements. One can violate the copyright of a play or a book by copying its plot or plot devices. Copyright "cannot be limited literally to the text, else a plagiarist would escape by making immaterial variations". Among the more significant costs in computer programming are those attributable to developing the structure and logic of the program. Allowing copyright protection beyond the literal computer code would provide the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold over the development of new computer devices that accomplish the same end. It is not true that "approximation" of a program short of perfect reproduction is valueless. On the contrary, one can approximate a program and thereby gain a significant advantage over competitors even though additional work is needed to complete the program. The issue in a copyrighted case is simply whether the copyright-holder's expression has been copied, not how difficult it was to do the copying. Whether an alleged infringer spent significant time and effort to copy an original work is therefore irrelevant for decision as to whether he has pirated the expression of an original work. The conclusion is inescapable that the detailed structure of a program is part of the expression, not the idea of that program. Copyright protection of computer programs may extend beyond the program's literal code to their structure, sequence and organization.

Copyrightability of material in the public domain

The court has specifically dealt with copyrightability of computer software based on material found in the public domain. Such material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work. Quoting this general rule of copyright, the court stated that it found no reason to make an exception to this rule for elements of a computer program that have entered the public domain. Thus, a court must also filter out material available in the public domain before it makes the final inquiry in its substantial similarity analysis.

The Early Days

Early in the development of the art of software writing, the originators thereof feared that traditional forms of protection such as patents and copyrights would not give them sufficient protection and relied upon trade secret law. It soon became clear, however, that this was not the best solution to the problem since to establish trade secret protection, one must take some steps to impose a confidential relationship on those who have access to the secret. In a free flowing industry such as the computer software business, this is difficult.

Attention has, therefore, returned to the traditional protection of patents and copyrights. As discussed in above many computer-related inventions are patentable. However, patent protection cannot be obtained for inventions in this field that do not meet the current test for patentable subject matter. Furthermore, to be patentable the program must be "not obvious". This can be a difficult requirement to fulfill. Furthermore, patent protection requires a fairly prolonged examination by the Patent Office before any rights arise and is thus not the ideal way of dealing with copyists who may be extremely quick off the mark.

When a computer program is written out on a piece of paper, it is quite clear that copyright exists in this work in the same way as it would in respect of any other literary work. The first problem with which the courts had to grapple was whether copyright law could be extended to cover computer programs which exist merely in magnetic or electric form or as specific circuits etched on to a silicon chip.

The United States Copyright Office has provided for the registration of computer programs since 1964. However, that practice was on the basis it was the duty of the Copyright Office to give applicants the benefit of a doubt as to whether computer programs were protectable by law. Indeed, prior to the Copyright Act of 1976, court decisions and the opinions of the leading writers in the field were widely split on the question of whether computer programs were entitled to copyright protection and, if so, to what extent protection was to be given.

The 1976 Act itself was not very helpful in resolving these doubts, although as noted above, Section 102 states that copyright protection exists in works that are fixed in any present or future tangible medium even if it can be reproduced only by means of a machine or other device. On the other hand, Section 117 of the 1976 Act as originally enacted specifically stated that it was not the intention of the Act to change the preexisting law in respect to protection of computer programs. The Act, however, did not indicate what the preexisting law was. This problem was finally resolved in 1980 by the passage of the Computer Software Copyright Act 1980 which repealed original Section 117. This repeal removed any doubt as to whether the broad definition of Section 102 extends to software. Furthermore, a new Section 117 was enacted which provided that the owner of a computer program had a limited right to copy or adopt that program if this was necessary to ensure that the program could be used in a particular computer. Indeed, the new Act even provided a definition of a computer program as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result".

The first generation of cases to come before the courts mostly involved actions for copyright infringement in ROM's (Read Only Memory). Three main lines of argument were used by defendants to try to resist actions brought by the originators of a computer program which have been incorporated into the defendants ROMs. The first was that ROMs are utilitarian (the sub-argument of this being that even if not all such ROM's are utilitarian, at least those whose function is to work the computer itself are). The second was that since the program as it appears on a ROM is in object code form and therefore not intelligible to human beings, it falls outside the definition of "copy" in the Copyright Act. The final line of argument used was that it is against public policy to give computer manufacturers copyright protection for their software because such protection would hinder competition in the development of new computers.

The courts have not been impressed by arguments that computer software is purely utilitarian when they are presented in the context of direct copying of a particular program. For example, in an early case the Third Circuit Court of Appeals has rejected the argument that the use of a computer program encoded in a ROM was utilitarian and the argument that since the coding was in object code it was not a copy intelligible to humans and, therefore, outside the Copyright Act protection. The latter point was established by analyzing the definition of "copy" in the Copyright Act. Section 101 of the Act defines copies as:

material objects, other than phono records, in which a work is fixed by any method now known or later developed and from which the work can be perceived, reproduced or otherwise communicated either directly or with the aid of a machine or device.

The court held that since Congress had chosen to define "copy" broadly in this manner, it would be perverse to seek to interpret this broad language in a manner which would severely limit the copyrightability of computer programs by restricting this protection to the text and not to duplication of the program on a fixed silicon chip. The court further rejected an argument that ROMs were utilitarian objects and, thus, not subject to copyright protection by observing that ROM's were not the objects which had to meet the test of copyrightability. Only the original program had to be copyrightable. Once copyright existed in that program, the only question remaining was whether a ROM constituted a copy of it. As noted above, the court had no difficulty in deciding that this was the case. A similar conclusion was drawn by the District Court in the Northern District of Illinois.

One might have expected defendants to be more effective in utilizing the idea-expression dichotomy running through the United States copyright law when the defendant has done something more than copy the source or object code expression of the copyright owner's program. With a few exceptions, however, the courts have still tended to favor the copyright owner. One case where the argument was successful, however, was in Q-Co Industries, Inc. v. Hoffman. In that case, the court denied a preliminary injunction to prevent the defendants selling a program that was inspired by the program of the copyright owner in a case where the alleged infringer had taken a program designed to run on one type of hardware and had expended substantial effort to produce a program that would fulfill the same function on different hardware. The court noted that although the general structure of the two programs in question are very similar, they were written in different languages and employed wholly distinct algorithms. It concluded that the similarities "can be more closely analogize to the concept of wheels for the car rather than the intricacies of a particular suspension system ... it was the idea that was used rather than its expression. Therefore, copyright infringement has not been established".

As can be seen from the cases discussed above where consideration of the meaning of "copy" was of importance in determining whether there was copyright protection for a given product, in copyright law unlike patent law the issues of what constitutes protectable subject matter and what constitutes infringement are often intertwined. Furthermore one should bear in mind the fact that unlike the situation with patents, there is no Court of Appeals with nationwide jurisdiction for copyright cases and so different views may be taken in different circuits.

Once the basic issue of whether copyright protection could exist at all for computer software had been resolved the next issue, which is still with us, was to determine what exactly might be covered by copyright, particularly if the alleged infringer had not copied code line by line but had taken something less specific. The first group of cases to tackle this issue considered whether the "look and feel" of the two programs is the same and if so and if the defendant had access to the plaintiffs program, then copyright infringement was likely to be held to have occurred . Thus, if there was substantial copying of details of a program designed to fulfill a particular function on one type of hardware in producing software to fulfill the same function on different hardware, the mere fact that substantial effort was involved in making the conversion or even that different programming languages were used might not avoid a finding of copyright infringement. This is particularly the case if what is shown on the screen at each stage of running both the copyrighted and the allegedly infringing program or if similar errors appear in both programs.

The "Look and Feel" Test

In Whelan Associates the Third Circuit Court of Appeals was confronted with the question of whether, even if there was no copying of object code or source code, there could be copyright infringement in copying the "overall structure" of a program. The case was one where the alleged infringement was a rewrite of a program written in one computer language in a different language. The court concluded that since computer software was classified as a literary work under the Copyright Act and since prior decisions had held that there could be infringement of copyright in a play or book by copying the plot or plot devices of the play or book when the total "concept and feel" of the alleged infringing work was substantially similar to that of the copyrighted work, the same test should apply to infringement of copyright in computer programs. The defendants had argued that this conclusion was inappropriate in cases of computer software because of the basic premise in copyright law that copyright should apply only to the expression of an idea and not the idea itself. According to the defendants, the structure of a computer program is by definition an idea rather than an expression. The court, however, dismissed this argument by pointing out that it was possible to write a totally different program to perform the same tasks as both programs performed in the present case. The court thus concluded that the detailed structure of a program was part of the expression of an idea rather than an idea itself and upheld a finding of copyright infringement.

Similar reasoning was subsequently used to uphold the copyrightability of menu screens as shown on monitors when a computer was running a particular program as audio visual works.

Copyright infringement was also found in the unauthorized writing of a computer program to implement a scheme embodied in a copyrighted literary work that had previously been operated manually.

A further development has occurred in consideration of whether copyright protection exists for what is known as "microcode", i.e., the programs embodied in a semiconductor chip for operating a computer. These had been arguments that in view of the utilitarian nature of such "operations" software it should be treated differently from the prior cases that had dealt with "application software". However, in the first case of this type to come before the courts, copyright protection was upheld. The judge commented "the methodology employed in the creation of a microcode is to the court indistinguishable from that employed in the creation of any computer program".

Early in the 1990's, however, the pendulum began to swing as software writers started to complain that the protection being given by the courts was overly broad and as such was inhibiting new developments. Concern that the "look and feel" test was leading to overly broad protection led at first to adoption of a two part test assessing intrinsic and extrinsic similarities. In Johnson Controls the court focused on the question of whether the structure, sequence and organization of the alleged infringement was the same as that of the plaintiffs program and in Lotus Dev Corp v. Paperback Software a different court looked at the flow charts of the parties to determine whether there was infringement.

In 1992 the idea began to take hold that a computer program was in some ways like a play or other literary work in which a variety of possibilities presented themselves for protection from, at the most specific the actual script to, at the most general, the broad outlines of the plot. Other traditional copyright doctrines such as the concepts that in some cases there could be a merger between the idea and its expression because of the limited ways in which a particular idea could be expressed or that protection would not be afforded to features that were dictated by external requirements also started to be applied in the computer software field. The advantage of these approaches was that copyright lawyers had already grappled with these issues over many years and if the principles that had evolved in dealing with plays could be applied to computer programs, thus should facilitate rapid development of the law.

One of the earliest case to use such an approach was Autoskill Inc v. National Educational Support Systems Inc. In this case Judge Mechem specifically declined to follow the look and feel cases and stated:

A better approach for determining what is idea as opposed to expression is known as the abstractions test articulated by Judge Learned Hand in Nicholls v. Universal Pictures Corporation (17 USPQ 84 2nd Cir 1930)... [u]pon any work, and especially a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may be no more than the most general statement of what the play is about, and at times may consist of only its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ideas to which, apart from his expression, his property never extended.

Fair Use

Like the copyright laws of almost all countries, the U.S. Copyright Law provides for exceptions that permit certain acts which would otherwise be actionable as copyright infringements. These provisions, known as the "fair use" provisions apply to all copyright works and provide exceptions from copyright protection for "purposes such as criticism, comment, news, reporting, teaching (including multiple copies for classroom use) scholarship or research". In deciding whether a use is fair, courts must consider:

(1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) The nature of copyrighted work;

(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) The effect of the use upon the potential market for or value of the copyrighted work.

On October 25, 1992 the Fair Use Provision was amended to make it clear that "The fact a work is not published shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Certain additional specific provisions are made for fair use in various fields. For example, it is not a copyright infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:

(1) that such new a 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.

The first two cases in which the application of the Fair Use Provisions to computer software were considered by appellate courts both related to the programs used in game consoles where competitors had carried out reverse engineering to try to determine what programming needed to be included in a game cartridge to enable it to be used in the game console in question. In the case of Sega Enterprises v. Accolade Inc. the court carried out an analysis of the above listed factors emphasizing in particular the question of the effect of the competitors on the value of the copyrighted work (a factor on which the Supreme court had focused in the case of Harper & Row v. Nation and noted that the purpose of the copyright statute was to promote the useful arts rather than necessarily to give an inviolable monopoly to the original producer of a copyright work. In the present case the court felt that permitting a wider range of games to be played on the consoles in question was unlikely to reduce sales of such consoles and thus held that such reverse engineering so as to make a separate program operable with the console in question was a fair use. A similar conclusion was reached by the Federal Circuit court of Appeals in Atari Games Corp. v. Nintendo.

Conclusion

Under traditional principles of intellectual property protection, copyright law has served as the principal source of legal protection for literary and artistic work, while the patent system and trade secret law have been the primary means for protecting utilitarian works. Computer software as a relatively new recipient of copyright protection, however, defies easy categorisation within the traditional framework of the intellectual property system.

With respect to computer software, courts have had to grapple with the vexatious issue of drawing a precise line between copyrightable expression of computer software and the uncopyrightable processes that they implement.