Copyright in Computer Software, Although Now Considered a Legal Certainty, Faces Gowing

C O N T E N T S

Abstract3

Introduction4

Copyright in computer software in the United Kingdom4

The Copyright, Designs and Patents Act 19885

Infringing acts8

Whelan Associates Inc v Jaslow Dental Laboratory Inc11

Computer Associates Inc v Altai Inc13

The aim of copyright protection for software14

The mechanisms of software copyright protection16

Copyright protection and reality18

Conclusion19

Bibliography20

A B S T R A C T

The protection of software by copyright has developed from an uncertainty to a complete prohibition on copying and an extensive prohibition on adaptation, modification and distribution of both the code and preparatory work. This article examines the statutory regulation and judicial emergence of copyright in the United Kingdom and United States respectively and argues that the emergence shows major flaws, particularly in its attempt to distinguish between idea and expression. It is further argued that the current model of legal protection is at least partially unjustified in doctrinal terms, and that an altered model should be adopted, reflecting software’s technological nature. Finally, it is considered that there may be an alteration in copyright law to reflect current reality with regard to “home copying practices” and the actual necessity – as opposed to available luxuries – behind copyright protection.Introduction

Copyright in computer software, although now considered a legal certainty, faces growing opposition in a world of broadband Internet connections and removable mass data storage media. The worldwide losses resulting from illegitimate copying were estimated at US$10.97 billion in 2001[1], and the Software & Information Industry Association (SIIA) warns of a “serious potential threat to the intellectual property providers”, stating that “hundreds of software and information companies lay off workers and cut back product lines”[2] as a consequence of software piracy. Microsoft[3] claims that some 10,000 jobs were lost in the District of Columbia and neighbouring states alone as a result of software piracy in 1997.

The industrial reaction to such statistics has been to hold them up to emphasize the need for far-reaching legal protection of computer software – in society’s own interests. However, this attitude suggests that the main difficulty lies in breach of copyright. This article examines the legal and economic justification of copyright protection in this area with a view to demonstrating that the attitude described above is too simplistic, and that an altered model of copyright protection may, after all, be desirable.

Copyright in computer software in the United Kingdom

The invention of the first digital computer is widely attributed to Konrad Zuse[4], and marked the way in which computers would develop in the near future. For example, the ENIAC, an American invention of 1946, boasted some 19,000 vacuum tubes, required 200 kilowatts of power to operate, and was split into 30 separate units[5]. Such devices were rare, required an entire room to be set up, and could only be afforded by governments. With computer programs stored in the form of punch cards designed for specific machines, the danger of “piracy” was negligible[6].

It was not until the mid-1970s[7] that personal computers[8] became widely available and thus the question of legal protection became a serious issue. The Whitford Committee established in 1977 that “copyright law was unsatisfactory as regards computer programs.”[9] There had previously been a general assumption on the part of many writers that copyright subsisted in computer programs by virtue of the general provisions of the 1956 Act. Computer programs, which they classified as literary works, however, were defined as including “any form of notation, whether by hand or by printing, typewriting or any similar process”[10]. The definition is not exhaustive, but it was thought by some that literary works probably needed to exist in a written or printed form, which left the question of magnetically stored software open, since this left the actual programs intangible, unless they were printed out. Even if printed out, however, there remained the problem of copying from tape to tape – in that instance, one cannot speak of a printout being copied. Some writers resorted to s49(4), which provided for the protection of literary works in “writing or some other material form”. Wilson[11] points out, however, that this is not certain to include magnetically stored programs. Software companies were therefore hesitant to litigate on the basis of copyright infringement[12], simply because it was not clear whether copyright even subsisted in programs[13]. Such hearings as took place were usually interlocutory, and judges were reluctant to come to any certain conclusions.

Thus it was not until the Copyright (Computer Software) Amendment Act 1985, which plainly stated that copyright did apply to computer programs, that any degree of legal certainty in this field existed. This led to the Copyright, Designs and Patents Act 1988, which reflects the current statutory law.

The Copyright, Designs and Patents Act 1988

The 1988 Act[14] expressly includes computer programs within the definition of literary works (see s3(1)(b)) and overcomes the question of magnetic storage by stating that literary works must be “recorded, in writing or otherwise”[15], and that the method and medium of storage do not matter[16].

As is the case for all literary works, a computer program must be original to obtain copyright protection, i.e. it must originate with the author and there must have been “a modest amount of skill, labour or judgment”[17] involved in its creation. This will, on the whole, not be problematic – most programs for which copyright protection is claimed in court are more than a few lines long[18] and will invariably satisfy such requirements. The one exception is where a program’s expression is the inevitable result of its function[19] – that is to say, where the program could not have found any other expression given the task it was to perform. This is generally only likely to be the case for microcode written as an instruction set for a particular chip, if at all.

Establishing that copyright subsists in a computer program will therefore not be an onerous task. When a program has been copied, however, has proven rather more difficult to discern, and it is helpful at this stage to consider what software actually comprises of.

Since a computer’s processor only “knows” of two commands – on and off (represented in binary as 1 and 0 respectively) – programming languages such as BASIC[20], Python, Java, C, C++ or Assembler were developed to facilitate programming, given that it would be a near-impossible task to program purely in 1s and 0s. The result is that two forms of programming

code exist – the source code, being the code which the programmer writes, and the object code. The latter is produced as a result of compiling the source code, and can be passed on to the processor for execution (see Figures 1.1 and 1.2, overleaf).

Object code and source code – a program to convert .eml files to .txt files

Language: HiSoft BASIC 2

Author: W. White

OPEN "ram:temp" FOR INPUT AS #1
DO UNTIL EOF(1)
LINE INPUT #1, a$ : LOCATE 1,1 : PRINT a$;"***"
OPEN a$ FOR INPUT AS #2 : a$=LEFT$(a$,LEN(a$)-4)+".txt"
FileLength&=LOF(2)
IF FileLength<250 THEN
ReadSize&=FileLength&
ELSE
ReadSize&=250
END IF
OPEN a$ FOR OUTPUT AS #3
DO UNTIL EOF(2)
a$=INPUT$(ReadSize&,#2) : a%=INSTR(a$,CHR$(13))
IF a% THEN
IF LEN(a$)=1 THEN
a$=""
ELSE
IF a%=LEN(a$) THEN
a$=LEFT$(a$,a%-1)
ELSE
a$=LEFT$(a$,a%-1)+RIGHT$(a$,LEN(a$)-a%)
END IF
END IF
END IF
PRINT #3, a$;
Location&=LOC(2) : LOCATE 2,1 : PRINT Location&;"/";FileLength&
IF FileLength&-Location& < 250 THEN
ReadSize&=FileLength&-Location&
END IF
LOOP
CLOSE 2 : CLOSE 3
LOOP

Fig 1.1 – Source code

/ 00000000 00000000 00000000 00000000 00000000 00000000 00000010 00000000 00000000 00000000 00000000 00000000 00000000 00000000 00000001 00000000 00000000 00000001 01100111 00000000 00000000 00000000 00000000 00000000 00000000 00000011 11101001 00000000 00000000 00000001 01100111 00100110 01111100 00000000 00000000 10000000 00000000 01100000 00000000 00000000 00100000 01001110 01110001 00000000 00000000 01100101 01101101 01101100 00101101 01110100 01101111 00101101 01110100 01111000 01110100 00110010 00101110 01100010 01100001 01110011 00000000 00000000 00000000 00000000 00000000 00000000 00001110 00000000 00000000 11111111 11111111 01111010 00001111 00111000 00111100 00001110 11000000 00100110 00111100 00000000 00000000 00001110 11001110 00111110 00111100 00000001 00000000 00100100 00111100 00000000 00000000 00010000 00000000 00111100 00111100 00000001 00101100 01001000 11100111 10000000 10000000 10010011 11001001 00101100 01111000 00000000 00000100 01001110 10101110 11111110 11011010 00101000 01000000 10011011 11001101 01001010 10101100 00000000 10101100 01100110 00010010 01000001 11101100 00000000 01011100 01001110 10101110 11111110 10000000 01000001 11101100 00000000 01011100 01001110 10101110 11111110 10001100 00101010 01000000 01000011 11111010 00000000 11000010 01110000 00000000 01001110 10101110 11111101 11011000 01001010 10000000 01100111 00100110 00100110 01000000 00001100 01101011 00000000 00001001 00000000 00010100 01100110 00010100 00001100 01101011 00000000 00000001 00000000 00010110 01101101 00001100 01000011 11111010 00000000 01111100 01000101 11111010 00000000 11101100 01001110 11101011 11111111 10100110 01100001 01110000 01000101 11111010 00000000 10100100 01100000 00000100 01000101 11111010 00000000 10001011 01010000 10001111 01000011 11111010 00000000 01101100 01110000 00011111 01001110 10101110 11111101 11011000 01001010 10000000 01100111 01000100 00101100 01000000 01000010 10100111 01001000 01111010 00000000 01101100 01000010 10100111 00101111 00111100 00000000 00000110 00000000 00000011 01000010 10100111 00100110 01001111 01000010 10100111 00101111 00001010 01000010 10100111 00101111 00111100 00000000 00010100 00000000 00000101 01000010 10100111 00100010 01001111 10010001 11001000 10010101 11001010 01110000 00000000 01110010 00000000 00110100 00111100 00000001 00110110 01110110 00110111 01001110 10101110 11111110 10100100 00100010 01001110 00101100 01111000 00000000 00000100 01001110 10101110 11111110 01100010 01001111 11101111 00000000 00101000 00100000 00001101 01100111 00001010 01001110 10101110 11111111 01111100 00100010 01001101 01001110 10101110 11111110 10000110 01110000 00010100 01001110 01110101 00100010 01001011 01001110 10101110 11111110 01100010 00100000 00000111 01001110 01110101 01101001 01101110 01110100

Fig 1.2 – Binary view of the compiled code (extract)

There was some initial doubt over whether object code was subject to copyright law, partly because it is not immediately apparent that it can be classed as “literary” and partly because such code is created by a compiler program, which requires very little skill or effort. However, common sense prevailed as it was recognized that failure to protect object code would negate the entire principle of copyright protection in software, since most programs are generally made available in object code form. Where doubts still persist as to whether object code should be classed as “literary”, it will be considered an adaptation (see below).

Preparatory works such as charts and written specifications are protected as literary works in their own right (s3(1)(c))[21], provided they satisfy the tests of originality and de minimis. Thanks to the possibility of indirect copying (see below), there is a possibility of infringing the copyright in such works when copying the program itself.

Software further includes databases[22] and “all manner of works stored digitally to be accessed by computer and associated printed documentation such as manuals for users.”[23] Software suites are protected as compilations under s3(1)(a)[24].

Infringing acts

Smedinghoff[25] identifies five main forms of copyright infringement – copying, adaptations and modifications, distribution, public performance or display and the use of work in excess of license rights. Each of these will be considered.

Literal copying is the classic case in which the defendant makes an exact, byte-for-byte copy of the plaintiff’s software without the latter’s consent[26]. “Software piracy” is usually a reference to this form of infringement, and, once proved, will lead to sentencing. This is not a difficult issue in the case of object code. The issue becomes more contentious when the defendant copies parts of the plaintiff’s source code in writing their own program, because the court must then decide whether the part(s) copied represent a substantial part of the copied program. The test is qualitative[27] – is the copied part important to the operation of the copied program as a whole, giving consideration to the labour and skill expended by the original programmer in writing it? Back-up copies are not affected by this prohibition[28] – provided they are actually necessary[29].

While Smedinghoff considers the use of a work in excess of license rights a separate infringement, it is in fact a form of unauthorized literal copying in which the defendant makes more copies of a piece of software than the license they have been granted allows.

Non-literal copying concerns situations in which the “structure, flow and sequence of operations”[30], rather than the actual program code, is copied without consent. This primarily concerns the distinction between ideas (which copyright does not protect) and their expression (which it does). Most of the debate on this issue has taken place in U.S. cases, discussed below, whose decisions were embraced in the U.K. in John Richardson Computers Ltd v Flanders[31].

Computer programs may not be “translated”[32] without permission, that is to say, source code may not be compiled[33] to create object code, and object code may not be decompiled to create source code. Such a translation constitutes an adaptation[34], as does the rewriting of the source code in a different programming language[35]. The latter case is difficult to justify – it is generally not possible to convert a computer program on a line by line basis unless the programming languages are extremely similar. It is far more likely that the programmer will be required to consider the mechanisms and concepts by which particular goals are achieved and then attempt to implement them in what may be a very different manner. Clearly anyone doing this will have the advantage that the first programmer has already worked out how to achieve the overall goal, e.g. word processing – yet that by no means indicates that the second programmer will have an easy task – it is possible that the conversion will take as long as the writing of the original program. In that case, has the second programmer really gained at the other’s expense?

There is an exception in the area of adaptations, namely where a programmer wishes to decompile another program’s object code in order to write a program which can interact with it. This may not be a requirement where it is merely a matter of making files compatible with both programs[36], but where it is necessary for one program to exchange data directly with another, it may be important to know how the first program deals with such data. S50B(1) CDPA 1988 expressly provides that this will not constitute an infringement, provided that the person decompiling is a lawful user.

Where software has been put into circulation legitimately, its further distribution will not infringe the owner’s copyright, with the exception of where software is made available for rental[37]. In essence, this means that once software has been made publically available, it can be resold by a third party. Bainbridge[38] makes the point that this may be particularly attractive where software is sold more cheaply in one country than the other, enabling a third party to buy cheaply in the one and sell at a lower price than the original distributor in the other.

Public performance or display of is in practice less of an issue in relation to software than it is in relation to, for example, music. Infringement occurs where a program’s display is made accessible “to a number of persons simultaneously”[39]. This might occur in the context of a university lecture, a gaming convention or the like – but prosecution in this area is rare. It may be avoided by obtaining the copyright owner’s consent.

At this point, it is worth turning to two U.S. American cases which substantially shaped the emergence of copyright both there and in the U.K., and which have been especially important in establishing the status of non-literal copying.

Whelan Associates Inc v Jaslow Dental Laboratory Inc[40]

Whelan asked the question of whether copyright encompassed a program’s source and object code only, or whether copying the structure of a program might amount to infringement. The court pointed out that in other literary works, such as novels, copyright was not restricted to the literal text, but might also encompass a plot. The reasoning behind this is apparent – “copyright ‘cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.’”[41].

The difficulty which the court faced was the distinction between an idea and an expression. The function of copyright law is to protect the latter, not the former. In an attempt to classify ideas and expressions, the judge considered that the protection of so-called scenes á faire, i.e. literal elements whose presence is dictated by the purpose of the program, is to be avoided. Where an idea can only be expressed in one particular way, to protect that expression would be to protect the idea. Judge Baker claimed[42] that the existence of various means of fulfilling a program’s purpose indicated that whichever means was chosen, it was not “necessary” to the program’s function and was therefore a protectable expression[43].

The court’s interest lies in providing “the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold”[44] over ideas. Special emphasis is therefore placed on the expense of the development of “the structure and logic of the program.”[45] There is a failure here to take into account the facts that programming need not incur any expense[46], and that many programs are born out of the programmer’s necessity and require no additional research. Furthermore, proprietary solutions are now becoming less common, with major software publishers increasingly marketing programs aimed at a variety of users, and with that, research costs may effectively be reduced.

Various arguments are raised against the judge’s stance. The first is that copying a program’s structure is far from straightforward. It requires considerable skill and effort, often taking as long to complete as the programming of the original took. This is not denied, but is rejected on the grounds that one who copies a copyrighted work is an infringer, regardless of the effort involved in the act of copying[47]. This is a misunderstanding. It was not submitted that effort should excuse infringement – it was submitted that the effort required in copying a program’s structure indicated that copyright should not subsist in the structure. If copyright is to be found on the grounds of the programmer’s expenditure[48], should counter-arguments concerning the alleged infringer’s expenditure simply be ignored?

Another argument addressed by the court was that advances are achieved in the field of programming by copying the work of others[49]. The judge’s response is that there is no difference between programming and other scientific fields and that “copyright principles derived from other areas are applicable in the field of computer programs.”[50] Again, this is questionable. Advances are achieved in the natural sciences by copying the work of others – but since this work is necessarily practical rather than literary[51], there can be no question of copyright subsisting in it. If copying is acceptable in the advancement of the natural sciences, it is nonsensical to argue that its principles apply to programming and yet that structural copying is prohibited. The two claims are incompatible since the natural sciences and programming are disciplines of an entirely different order.

The court’s conclusion was to find that since Dentalab’s structure was not essential to its purpose, but that the structure was an expression of an idea and thus protected by copyright. Yet again, this must be questioned. The mere fact that an idea may be expressed in a variety of ways by no means indicates that copyright is an adequate form of protection for the chosen expression. It is usually possible to perform the same task in a number of different ways, but that does not mean that each is equally desirable. The programmer may prefer a particular method according to efficiency, code legibility, the effort required in implementing the method or even personal style[52].

Computer Associates Incv Altai Inc[53]

The unsatisfactory decision in Whelan was noted by many, and the court in Computer Associates therefore attempted to reassess the distinction between idea and expression. It agreed that elements whose expression was dictated by the program’s purpose could not be subject to copyright. It criticized Whelan for assuming that there was only one idea in a computer’s program, whereas, in reality, a program consisted of a number of ideas, expressed in its various subroutines. A three-stage test was therefore introduced.