By Jyoti Kiran
IV Year
National Law Institute University, Bhopal.
Developments in technology create new industries and new opportunities for reproduction and dissemination of works for authorship. A number of new issues have arisen relating to the growth of electronic publishing, distribution and viewing of copyrighted works. Along with new and expanded markets for works comes the ever-increasing challenge of protecting works from piracy or infringement. For example, in 1998, an advance copy of the first single album Madonna’s newest album was released to foreign radio stations. Almost immediately unauthorized copies were placed on web sites allowing anyone with internet access to download a copy before the single was released for sale or radio play in the United States.
Both the courts and Congress
continued to be faced with the issues that were unimagined just a decade ago.
More “high-tech” legislation was introduced in the 105th Congress
than in any previous Congress. Courts struggle with the complexity and balance
between protecting the rights of the authors and promoting the progress of
science and useful arts as is mandated by the Constitution. This Project
Report is intended to introduce the case law development relating to copyright
protection for software programs and the cutting edge issues presently
confronting authors, users, legislators and judges like the infringement and
piracy of computer programs.
COPYRIGHT PROTECTION FOR SOFTWARE PROGRAMS
Protractable Elements of Computer Programs
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. “A computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to allow users to make certain adaptations to programs and to make archival copies of programs.”[1] Copyright Protection extends to all of the copyrightable expressions embodied in the program. It’s not available for ideas, program logic, algorithm, systems, methods, concepts or layouts. Case laws have 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. The bundle of rights given to the owner of copyright in literary works are 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.
Copyright protection extends to screen displays as well, if they possess copyrightable material. Screens consisting of mere menus or blank forms usually are not protectable, either because they lack original expression or because they are useful articles. The defendant in Lotus Development Corp. v. Borland International, Inc.[2], successfully argued that the menu command hierarchy of the plaintiff’s Lotus 1-2-3 spreadsheet, which it admittedly copied in its competing spreadsheet program, constituted a “method of operation” unprotectable under Section 102(b). The First Circuit Court of appeals accepted the defendant’s argument, reasoning that the plaintiff’s menu commands are the means by which a user operates the spreadsheet, similar to the buttons on a videocassettes recorder. Accordingly, the court ruled that no infringement had occurred.[3]
Although the merger doctrine and section 102(b) disallow protection for the menu commands by which users operate a software program, they do not extend necessarily to disallow protection for the underlying software which interprets and implements these user commands. In Apple Computer Inc. v. Franklin Computer Corp[4]., for example, the defendant argued that the plaintiff’s operating system program was uncopyrightable as a “method of operation”. An operating system program, such as DOS, UNIX or Windows, and forms the “platform” upon which application programs, such as word-processing and spreadsheet programs run. The court rejected the defendant’s argument and thereby expansive reading of Section 102(b).[5]
CASE LAW DEVELOPMENTS RELATING TO COPYRIGHT PROTECTION FOR
COMPUTER SOFTWARE
Some of the most complex copyright cases involve the extent of protectability for computer programs. A number of litigants have asserted that computer operating systems are not protectable inasmuch as they are uncopyrightable “processes” or systems expressly excluded from the protection.[6]. Courts generally have held otherwise, reasoning that if other programs can be written or created that perform the same functions, then operating system is an expression of an idea and is therefore copyrightable. If the idea cannot be expressed in any other way, however, then it is purely necessary to the purpose and is functional, and hence not copyrightable. This is the “merger doctrine” that provides that if an idea in a work can be expressed in only one way or a very limited number of ways, it is protectable inasmuch as it would be unfair to allow one party to appropriate an idea and exclude all others from using it. When an idea and its expression are so merged or inseparable that the unprotectable idea cannot be used without also using protectable expression, then use is not infringement.[7]
Courts have struggled with the infringement issues in computer-related cases in part because the issues are often technical, unfamiliar and complex. Thus, experts are often relied upon rather than the “ordinary observer” commonly referred to in other infringement actions. Moreover, unlike songs and books, which are highly creative, computer programs are usually task oriented, performing very specific functions. Historically, “useful articles” are excluded from copyright protection.
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 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 s. 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. 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".[8]
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:
1. ROMs are utilitarian.[9]
2. 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.
3. It is against public policy to give computer manufacturers copyright protection for 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.
“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.” [10]
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. 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.
As can be seen from the case 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 the issue 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 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.
In Whelan Associates Inc.
v. Jaslow dental Laboratory Inc.[11],
the Third Circuit Court of Appeals was confronted with the question: 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. 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.
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[12]
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[13]
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 cases to use such an approach was Auto Skill Inc v. National Educational Support Systems Inc [14]. In this case Judge Mechem specifically declined to follow the look and feel test 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 Nichols v. Universal Pictures Corporation [15]... upon 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.
Due, in part, to the utilitarian nature of certain software elements, courts have refined the test for determining “substantial similarity” with respect to computer software programs. The leading test[16] is the “abstraction-filtration-comparison” test developed more fully by the Second Circuit Court of Appeals in the case of Computer Associates International Inc v. Altai Inc.[17] The test is broken down into three steps:
(1) The court “abstract” the plaintiff’s software program to determine which of the program’s elements constitute unprotectable, abstract ideas or public domain materials;
(2)
The court “filters” unprotected elements from protected elements to leave the
“golden nugget”[18] of
protected expression; and the
object of this is to separate out protectable elements of the expression from
non-protectable material. Such non-protectable materials include elements
dictated by efficiency, elements dictated by external factors, and elements
taken from the public domain.
In Altai, for example, The Second Circuit filtered from the plaintiff’s software program elements that were required by efficiency and other external factors and elements had been taken from the public domain. The court determined that the remaining “core” of protected material was not substantially similar between the two programs and ruled in favour of the defendant.
(3)
The court then compares the protected expression in the plaintiff’s work
with the defendant’s allegedly infringing work to determine if they are
substantially similar.
Once filtration is complete the court moves on to comparing that which has been
found to be susceptible of protection with the alleged infringement. Although
traditionally it has been said that for there to be infringement a
"substantial" part of the work must be taken, the word
"substantial" has often been construed in a qualitative rather than a
quantitative sense. The Second Circuit has expressed the requirement as
follows: It is only when the similarities between the protected elements of the
plaintiff's work and the allegedly infringing work are of "small import
quantitatively or qualitatively" that the defendant will be found innocent
of infringement.
Here it should be noted certain acts that have been considered by the courts to determine whether they constitute an impermissible use of copyrighted software. Thus in MAI Systems Corp. v. Peak Computer Inc[19], the Ninth Circuit Court of Appeals found that the simple unauthorized act of loading a program into the random access memory of a computer constituted infringement since it created a copy that can be "perceived, reproduced or otherwise communicated".
The “abstraction-filtration-comparison” test for determining whether there has been infringement in cases other than where there has been direct actual copying has now been endorsed by several appeal courts. In Lotus Development v. Borland [20], however, the First Circuit doubted its usefulness in cases where the issue was one of literal copying of a literal element of a program. As noted by the Eleventh Circuit, this is not surprising since the test was developed to deal with the problem of non-literal copying of non-literal elements (the court defining literal elements as source code and object code only)
In addition to the complex issues
surrounding protection and infringement of the computer-related works, there
are significant economic issues as well. It has been estimated that softwrae
piracy causes a loss of revenue of nearly $3 billion annually in the United
States alone. One expert has estimated that there may be nearly thirty thousand
sites on the Internet that offer software illegally. Just the day after the
film titanic won several Oscar awards, fifty separate web sites offered illegal
video copies of the film. The copyright infringement
of software, also called ‘software piracy’
refers to several practices when done without the permission of the copyright
holder:
Copyright infringement of software is extremely
common in Mexico, China, Russia, Brazil, and several other parts of the world where it is
legal. The economic effect of computer piracy is reportedly more than $11
billion worldwide per year, costing 130,000 jobs in the United States alone.
Consequently, amny companies notably Microsoft Corporation, are stepping up
their crusade against software piracy, both through educational programs and
legal action.One counterfeiting operation in early 1999 in California resulted
in a seizure of $30 million of pirated MICROSOFT software. However it is
illegal in mostly English-speaking nations.
As
mentioned in the beginning of the project that the paper is intended to
introduce the case law development relating to copyright protection for
software programs and the cutting edge issues presently confronting authors, users,
legislators and judges like the infringement and piracy of computer programs.
Looking into the whole development of law relating to copyright protection for
software, its not wrong to say that the Courts struggle with the complexity and
balance between protecting the rights of the authors and promoting the progress
of science and useful arts as is mandated by the Constitution.
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. Copyright
infringement of software is extremely common in countries like Mexico, China, Russia, Brazil, and several other
parts of the world where it is legal.
Today, 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. With this large development of
copyright law, a fact cannot be denied that copyright infringement has reduced
to a grate extent.
1. Bouchoux, Intellectual Property: The Law of Trademarks, Copyright, Patents & Trade Secrets, Debrah & Bouchoux West Legal Studies Thomson Learning.
2. Campbell Dennis, Copyright Infringement, Company Law Yearbook of International Business, Special Issue, 1997, Kluwer Law International, London (1998).
3. Cormish W.R., Cases and Materials on Intellectual Property, Sweet and Maxwell, London (1999).
4. Heath Christopher, Max Planck’s Series in Intellectual Property: Intellectual Property Law in Asia, Kluwer Law International, Vol.5, London (1999).
Secondary Sources
1.
"How
many pirates should a software firm tolerate?" International Journal of
Research in Marketing December 2003 (Volume 20, No. 4).
Websites
2. www. google.com
3.
www. legalserviceindia.com
[1] Section 101 of the Copyright Act, 1976.
[2] 49 F.3d 807 (1st Cir. 1995).
[3] MiTek Holdings Inc. v. Arce Engineering Co. 89 F. 3d 1548 (11th Cir. 1996) (menu structure of an engineering computer program is uncopyrightable under section 102(b) and the merger doctrine.)
[4] 714 F.2d (3rd Cir. 1983).
[5] Campbell Dennis, Copyright Infringement, Company Law Yearbook of International Business, Special issue, p. 418.
[6] According to section 102 of the Copyright Act, 1976.
[7] Bouchoux, Intellectual Property: The Law of Copyright, Patents & Trade Secrets, p. 227.
[8] Heath Christopher, Max Planck’s Series in Intellectual Property, vol.5 p. 439.
[9] 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.
[10] Definition of ‘copies’ as per section 101 of the Act.
[11] 797 F.2d 1222 [3d Cir 1986], Cert. Denied 479 U.S. 1031(1987).
[12] [1987] F.S.R. 1 US, Ct of Appeal.
[13] 49 F.3d 807 (1st Cir. 1995) aff’d, 516 U.S. 233 (1996).
[14] (1879) 101 U.S. 99.
[15] (1930) 45 F (2d) 119.
[16] Gates Rubber Co. v. Bando Chemical Indus. Ltd., 9 F.3d 823 (9th Cir. 1993).
[17] 982 F.2d 693 (2d Cir. 1992).
[18] Computer Associates International Inc v. Altai Inc, 982 F.2d 693 (2d Cir. 1992) at 710.
[19] 991 F.2d. 511; 518 n.5 (9th Cir. 1993).
[20] 49 F.3d 807 (1st Cir. 1995)
[21] "How many pirates should a software firm tolerate?" International Journal of Research in Marketing, December 2003 , Volume 20, No. 4.