In 1988 the Copyright Act was amended to include within the meaning of “literary work” in s. 2 the expression “computer program”.
A set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.
s 30.6 was added to provide exceptions or defences for reproductions of computer software programs.
Amendment put beyond doubt that computer software programs were within the category of literary work and granted protection against at least literal copying of such programs.
Apple Computer, Inc. v. Mackintosh Computers Ltd. 1990 SCC
Issues raised in the appeal is whether a computer program originating in copyrightable written form, continues to be protected by copyright when it is replicated in the circuitry of a silicon chip.
Found that the programs embedded in the silicon chip should be regarded as software, and found that the circuitry in the chip was both a translation and an exact reproduction of the assembly language program.
Held that it was infringement of a copyright.
"Non-literal Copying”
Apple Computer and the legislative changes in the Copyright Act have ensured that computer programs are protected as literary works, the scope of available protection is unresolved.
The problem explored in Lotus Development Corp. v. Borland International Inc. in the US is that computer programs are fundamentally different in one aspect.
Programs are a means for causing something to happen, they have a mechanical utility, an instrumental role in accomplishing the world’s work.
Granting protection can have some of the consequences of patent protection in limiting other people’s ability to perform a task in the most efficient manner.
Non-literal copying involves the “plot” of a work:
The structure, sequence or organization of a program, including screen and user interactive displays and commands.
Three Broad Approaches:
Look and Feel Approach
Largely intuitive and originated from “non-literal” infringement approaches developed in earlier contexts.
If an alleged infringing program, in its screen displays, sequences, and user interface looks, or in its operation, feels to the user similar to the plaintiff’s program, an infringement was found.
Broderbund Software Inc. v. Unison World, Inc.
Plaintiff had a computer program, “The Print Shop”, for creating customized greeting cards, posters, signs and other items.
Defendant’s computer program for similar productions was called “The Printmaster”
Can’t copyright a jewel-encrusted bee pin, because there are limited ways you can express that idea.
Defendant said the same about the program, but plaintiff put forth a different program that did essentially the same things but in a much different way, proving that there were indeed multiple expressions possible for the same idea.
Arnstein Test
Leading case in this area, adopted in Krofft.
Requires the application of an “extrinsic” test aimed at determining whether there exists a substantial similarity in underlying ideas and an “intrinsic” test to ascertain whether there exists a substantial similarity in the expression of the underlying idea.
Analytic dissection and expert testimony are admissible to prove similarity for the extrinsic test, but the intrinsic test is solely the response of the ordinary reasonable person.
In Whelan, the court abandoned the bifurcated test of substantial similarity in complex copyright actions.
Instead adopted an integrated substantial similarity tests pursuant to which boy law and expert testimony would be admissible.
The Test in Krofft
Application of the Extrinsic Test
As stated above, the extrinsic test is aimed at determining whether there exists a substantial similarity between the underlying ideas of the copyrighted and allegedly infringing works.
Experts said that Print Shop and Printmaster had the exact same ideas, that they do almost the same thing, and that the purpose and uses of both programs are virtually identical.
Application of the extrinsic test clearly compels a finding of substantial similarity of ideas.
Application of the Intrinsic Test
Finder of fact is to determine whether an ordinary reasonable person would find the expression of the subject works to be substantially similar.
Question is whether the offending work captures the “total concept and feel” of the protected work. Krofft
In Print Shop the ordinary observer could hardly avoid being struck by the eerie resemblance between the screens of the two programs.
Abstraction-Filtration-Comparison Approach
Current trend is to analyse the programs in dispute from the perspective of separating protected “form” from unprotected “idea” in a more analytical manner and to determine:
The portions of the plaintiff’s program that can be said to be covered by copyright because it presents original “form or expression; and
The extent to which these protected portions of the plaintiff’s program have been reproduced in the defendant’s program and whether this extent meets the usual tests for infringement.
Substantial and actual proof of copying or proof of “access” together with substantial similarity of the works.
Adopted in Computer Assoc. Int’l Inc v. Altai, Inc. USA, 1992
Approved in Canada in Delrina Corporation (Carolian Systems) v. Triolet Systems Inc. 1993.
Test was unhelpful in Lotus where the issue was whether “the literal copying of a menu command hierarchy constitutes copyright infringement”.
Needed to be able to use “copy”, “paste”, “print”, etc. in order to tell the computer what to do.
Method or System of Operation
In the US a third trend that is said to demarcate a limit of copyright protection by distinguishing a process or system of operation of essentially a machine from the usual context of protecting code in a literary format in an its independent of the computer’s operation itself.
Computer Assoc. Int’l, Inc. v. Altai, Inc.
Plaintiff had created an operating program known as ADAPTER.
Translation or operating program that enabled an application program CA-SCHEDULER, also by the plaintiff, to function on different operating systems.
Used for DOS/VSE, MVS or CMS.
Defendant had its own computer scheduling program known as ZEKE.
Designed to be used with a VSE operating system.
Defendant wished to have ZEKE function with an MVS operating system and decided to rewrite for that purpose.
Recruited an employee of Computer Assoc. to undertake this work.
This employee was intimately knowledgeable of the plaintiff’s translation program.
Employee created the translation program using 30% of plaintiff’s program.
Proceedings were brought, and program’s copied parts were re-written.
Therefore, literal copying was removed, but plaintiff alleged non-literal copying.
“remained substantially similar to the structure” and included “general flow charts … the specific organization of inter-modular relationships, parameter lists and macros” etc.
Ruling discussed the “form/idea” distinction and the decision from Whelan.
“the purpose or function of a utilitarian work would be the work’s idea and everything that is not necessary to that purpose or function would be part of the expression of the idea.”
If there are various ways of achieving the desired purpose, then the particular means chosen is not necessary to the purpose.
Critical flaw in Whelan is that it assumes only one “idea” in copyright terms underlies any computer program, and that once a separable idea can be identified, everything else must be expression.
Whelan focuses too much on metaphysical distinctions and does not place enough emphasis on practical considerations.
To accommodate these concerns the judges recommend a three-step procedure based on the abstractions test utilized by the district court.
Cognizant of the fact that evolving technology may not allow for a literal application of the procedure outlined.
Approach
In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts.
Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would then be able to sift out all non-protectable material.
With whatever remains the court would then be able to compare this material with the structure of an allegedly infringing program.
The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement.
Step 1: Abstraction
The theoretical framework for analysing substantial similarity expounded by Learned Hand in the Nichols case is helpful in the present context.
The abstractions test “implicitly recognizes that any given work may consist of a mixture of numerous ideas and expressions”.
Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should dissect the allegedly copied program’s structure and isolate each level of abstraction contained within it.
Begins with the code and ends with an articulation of the program’s ultimate function.
Along the way need to retrace and map out each of the designer’s steps.
At the lower level, a program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules.
At a higher level, instructions in the lowest-level may be replaced conceptually by the functions of those modules.
As you go higher, the lower levels are eventually left with nothing but the ultimate function of the program.
Step 2: Filtration
Once the program’s abstraction levels have been discovered, the substantial similarity inquiry moves from the conceptual to the concrete.
A successive filtering method can be used for separating protectable expression from non-protectable material.
This process entails examining the structural components at each level of abstraction to determine whether their particular inclusion at that level was “idea” or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea, required by factors external to the program itself; or taken from the public domain and non-protectable as a result.
Each case requires its own fact specific investigation.
By applying well developed doctrines of copyright law it may ultimately leave behind a “core of protectable material”.
Elements Dictated by Efficiency
The portion of Baker v. Selden which denies copyright protection to expression necessarily incidental to the idea being expressed appears to be the cornerstone for what has developed into the doctrine of merger.
Underlying principle is when there is essentially one way of expressing an idea, that and its expression are inseparable and copyright is no bar to copying that expression.
The expression has “merged” with the idea itself.
A court must inquire “whether the use of this particular set of modules is necessary efficiently to implement hat part of the program’s process” being implemented.
Herbert Rosenthal Jewelry Corp - Since evidence of similarly efficient structure is not particularly probative of copying, it should be disregarded in the overall substantial similarity analysis.
Support for applying the merger doctrine in cases that have already addressed the question of substantial similarity in the context of computer program structure.
Lotus Dev. Corp. - One element is present in most if not all expressions of such a program, therefore no protection.
Elements Dictated by External Factors
Where it is virtually impossible to write about a particular historical era or fictional theme without employing certain stock or standard literary devices, such expression is not copyrightable.
Hoehling v Universal City Studios - Infringement suit stemming from several works on the Hindenberg disaster, similarities in representations of German life. Events dictated were indispensable in the treatment of German life, so no copyright protection.
Known as the scenes à faire doctrine, has analogous application to computer programs. - Cf. Data East USA
Professor Nimmer: “in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques”.
Result of considerations such as:
The mechanical specifications of the computer on which a particular program is intended to run.
Compatibility requirements of other programs with which a program is designed to operate in conjunction.
Computer manufacturers’ design standards.
Demands of the industry being serviced.
Widely accepted programming practices within the computer industry.
Q-Co Industries - Court denied copyright protection to four program modules employed in a teleprompter program.
Decision was ultimately based upon the court’s finding that “the same modules would be an inherent part of any prompting program”.
Must conclude that a court must also examine the structural content of an allegedly infringed program for elements that might have been dictated by external factors.
Elements Taken from the Public Domain
Related to scenes à faire, material found in the public domain cannot be protected.
Free for the taking an cannot be appropriated by a single author even though it is included in a copyrighted work.
Sheldon - We see no reason to make an exception to this rule for elements of a computer program that have entered the public domain by virtue of freely accessible program exchanges and the like.
Step 3: Comparison
After a court has sifted out all elements of the allegedly infringed program which are “ideas” or are dictated by efficiency or external factors, or public domain, there may remain a core of protectable expression. - Brown Bag Software
Court’s substantial similarity inquiry focuses on whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion’s relative importance with respect to the plaintiff’s overall program.
Policy Considerations
Apple Computer - The line must be a pragmatic one, which keeps in consideration the preservation of the balance between competition and protection.”
Some people, and Computer Assoc. argue against this approach stating it will cause programmers to not invest time in new programs.
Must consider advancing the public welfare through rewarding artistic creativity in a manner that permits the free use and development of non-protectable ideas and processes.
Delrina Corp. (Carolian Systems) v. Triolet Systems Inc.
Established the merger doctrine in Canadian copyright law.
Carolian Systems International Inc. subsequently merged into Delrina Corp. The plaintiff had employed a highly qualified and experienced computer programmer to rewrite its program “Sysview”.
Program provided a “performance” monitoring tool” for use with an HP computer.
Delrina licensed the Sysview program to users of HP 3000 computers.
Broderbund - held that copyright protection is not limited to the literal aspects of a computer program, but rather … it extends to the overall structure of a program including its audiovisual displays.”
General principles to law:
No copyright in ideas or info, just expression.
Subsists in original works.
If the expression does no more than embody laments of the idea that are functional in the utilitarian sense the expression of the idea is not copyrightable.
Much of the code is shared amongst the HP 3000 community, some calls out specific variables, etc.
Some problems do not lend themselves to multiple solutions - but must be solved in one or two ways.
Displays similar info with a similar layout.
Held: Not satisfied that ay substantial part of the Sysview interface is copyrightable. Sae doesn’t apply to the Sysview source code.
The parts of Sysview in issue were not entitled to copyright and were not copied by the defendants.
To be actionable the copying must be of the expression, if effect, the author’s original or literary work, not the ideas, concepts or underlying facts.
Copyright protection is not afforded to collections of facts but rather to the original component contributed by a particular author.
Feist Publications Inc. v. Rural Telephone Service Co Inc.
Refused to extend copyright protection to a telephone directory.
Mere fact that a work is copyrighted does not mean that every element of work may be protected.
No matter how original the format, the facts themselves do not become original through association.
ICD-9 codes which were published by the WHO.
The list of more than 10,000 codes were examined and truncated to fit within a 59-character field.
Once it’s down to 59 characters there is less flexibility, but why 59 and not 20? or 80?
In the end what must be demonstrated is that either directly or indirectly through his actions, the defendant has taken the fruits of the plaintiff’s labour.
The applicability in Canada of American Law
So much in the way of software/computer cases in the US.
Not binding on Canada, but they are entitled to both consideration and respect where they touch on areas which have not yet been considered or on issues that are similar in US and Canadian legislation.
The protection of the expression of ideas
Johnson Controls v Phoenix Central Systems Inc.
US CoA for the Ninth Circuit had occasion to consider what constitutes a computer program and in what circumstances copyright protection is extended.
Computer program is made up of source, object code, structure, sequence and/or organisation of the program, UI and the function or purpose of the program.
Copyright protection depends on whether it qualifies as an “expression” of an idea rather than the idea itself.
Ladbroke (Football), Ltd. v William Hill (Football), Ltd.
So long as work, taste and discretion have entered into the composition, that originality is established.
