Whelan Associates, Inc v Jaslow Dental Laboratory, Inc 479 U.S. 1031 (1987)
United Kingdom Legislation:
Copyright (Computer Programs) Regulations 1992
Copyright and Rights in Databases Regulations 1997
Copyright Act 1956
Copyright, Designs and Patents Act 1988 United States Legislation:
Digital Millennium Copyright Act 1998
European Union Directives: European Union Copyright Directive (2001/29/EC)
1 Data from the Business Software Alliance, released on 10th June 2002, quoted in http://maccentral.macworld.com/news/0206/10.piracy.php
2 SIIA and KPMG, p. 6
3 Data from Microsoft, released on 3rd February 1999, http://www.microsoft.com/presspass/press/1999/Feb99/DCEIPr.asp
4 Zuse’s Z3 was built in 1941 - http://inventors.about.com/library/weekly/aa050298.htm
5 See Weik.
6 As is reflected by the Copyright Act 1956, which makes no mention of software.
7 See http://www.maxmon.com/1973ad.htm
8 “Personal” is used here to denote a computer useable by one person and affordable for the home user.
9 Bainbridge, Software Copyright Law
10 S48(1) Copyright Act 1956
11 Wilson in Brett and Perry, p. 81
12 Bainbridge, Software Copyright Law, p. 37
13 Bainbridge, Software Copyright Law, p. 40
14 Now amended by the Copyright (Computer Programs) Regulations 1992 and the Copyright and Rights in Databases Regulations 1997
15 S3(2) Copyright, Designs and Patents Act 1988
16 S178 Copyright, Designs and Patents Act 1988 – see definition of “writing”. Bainbridge comments (Software Copyright Law, p. 41) that it is possible that “recorded” will not include that which is stored in a computer’s random access memory (RAM). All data held in such memory are generally no longer available once the computer has been switched off, and are – if at all – only recoverable with great effort, and usually in corrupted form, if the computer has merely been reset. He refers to R v Gold, in which it was held that a password which only existed in RAM was not recorded, but notes that this is “unlikely to cause problems in practice” (Introduction to Computer Law, p. 27) since most programs will be stored at some point. If not, there is a danger that someone may copy a program from RAM to disk before it has been saved by the author, thus evading liability. It is worth noting that with the introduction of so-called virtual memory – that is, a hard disk based form of memory which is only cleaned of data when a specific command is issued by the operating system, or when it is overwritten, not merely when the computer is switched off or reset – the question of volatile memory may have become even less important. Data stored in virtual memory may (depending on its management) be retrievable at a later stage, raising the question of whether it has been “recorded.” If this is the case – given that it is generally not apparent whether data have been stored in RAM or virtual memory – anyone copying unsaved work may well be copying from virtual memory – and thereby possibly copying a recorded work.
17 Bainbridge, Introduction to Computer Law, p. 25
18 Bainbridge notes (Software Copyright Law, p. 47) that the programming language used may indicate the degree of skill and effort required in the writing of the program – BASIC programs are undoubtedly easier to write than those written in Assembler. However, this is probably of little or no practical consequence, given the observation concerning who is likely to litigate.
19 See Kenrick & Co v Lawrence & Co (1890) 25 QBD 99
21 It is therefore arguable that such material should not be included in a definition of “software”. However, the EEC Directive which prompted the Copyright (Computer Programs) Regulations 1992 states that “computer programs shall include their preparatory design material” (Bainbridge, Software Copyright Law, p. 51). The wording of the amended Act in fact gives design material copyright protection of its own, separate from the protection afforded to computer programs. Nevertheless, many writers include preparatory design material in the definition of software, and this course will be followed here.
22 According to Bainbridge, Introduction to Computer Law, p. 24 – as in the case of preparatory material, the protection afforded is separate and not directly linked to the existence of a program. A wide view of “software” is generally taken, however, such that it need not merely include executable binary files, but might include data files and databases.
23 Bainbridge, Introduction to Computer Law, p. 24 – however, this takes the definition of software too far. There are no reasonable grounds for including printed documentation in this category, since this is a literary work in its own right.
24 Established in IBCOS Computers Ltd v Barclays Mercantile Highland Finance Ltd  FSR 275
25 Smedinghoff, pp. 67-68
26 s50C Copyright, Designs and Patents Act 1988 provides that a lawful user (as defined in s50A(2) – usually one who has been granted a licence) may copy or adapt (see below) a program where it is for their own lawful use and where there is no agreement with the copyright owner to the contrary (which there often will be). It might therefore be more accurate to say that literal copying is prohibited where there is neither implied (i.e. no provision to the contrary in the licence agreement) nor explicit consent.
27 See Cantor Fitzgerald International v Tradition (UK) Ltd, The Times, 19th May 1999
28 s50A Copyright, Designs and Patents Act 1988
29 What constitutes “necessity” is not always apparent. Where a back-up copy is supplied by the copyright owner, a further copy will not be allowed, and the same applies where a further copy of the program will be provided as part of the licence terms should the original copy fail.
30 Bainbridge, Introduction to Computer Law, p. 32
31 John Richardson Computers Ltd v Flanders  FSR 497
32 S21(4) Copyright, Designs and Patents Act 1988: “In relation to a computer program a “translation” includes a version of the program in which it is converted into or out of a computer language or code or into a different computer language or code”
33 The words “compile” and “decompile” only apply to so-called “high-level programming languages” such as BASIC and C++, which are generally easier to program in than Assembler, which is somewhat closer to “machine language”, i.e. the system of 1s and 0s mentioned above. Programs written in Assembler are “assembled” and “disassembled”.
34 Since adapted code is protected by copyright, object code – being an adaptation of the source code – is also protected, even if it is not a literary work.
35 Bainbridge, Introduction to Computer Law, pp. 42-43
36 e.g. Microsoft Word can read documents created using Corel’s WordPerfect word processor – in this case, a programmer may be able to establish how a document functions merely by examining the document itself, rather than the code used to create it.
37 Rental will require a term in the licence which specifically allows it.
38 Bainbridge, Software Copyright Law, p. 59
39 Bainbridge, Software Copyright Law, p. 60
40 Whelan Associates, Inc v Jaslow Dental Laboratory, Inc 479 U.S. 1031 (1987) – the case concerned a dental laboratory, Jaslow, who hired Strohl Systems to develop a piece of software. Strohl’s programmer for this task, Elaine Whelan, interviewed employees and studied the needs of the laboratory before writing the program, Dentalab. She later left Strohl Systems, forming Whelan Associates and acquiring Strohl’s interest in Dentalab. Jaslow developed their own software, Dentcom, to perform the same tasks as Dentalab, both of which Jaslow then marketed. Whelan Associates claimed copyright infringement in Dentcom on the basis that it was structurally similar to Dentalab.
41 Nichols v Universal Pictures Corp 45 F.2d 119, 121 (2d Cir. 1930) quoted in Merges; Menell; Lemley; Jorde, p. 866
42 Merges; Menell; Lemley; Jorde, p. 868
43 This use of the word “necessary” is rather unfortunate, since it may be misunderstood. By way of analogy – if a student is faced with an exam, they may choose to use one of a variety of books in revision. The suggestion being made by the judge in using “necessary” is that whichever book is chosen, it is not strictly necessary to the task, because the student could have chosen a different book. Yet it clearly is necessary to the task – the student must choose a book, and whichever one is chosen will then be thoroughly necessary, because the task – revision – will otherwise not be completed. The fact that it could have been completed by use of a different book does not make the use of the book actually chosen any less necessary. Thus “expression dictated by purpose” would be more accurate than “necessary”.
44 Merges; Menell; Lemley; Jorde, p. 869
45 Merges; Menell; Lemley; Jorde, p. 869
46 The development of software at home certainly played a considerable role by the time Whelan was decided. Computer magazines such as the German 64’er Magazin (published by Markt & Technik) devoted considerable portions of their content to listing source code sent in by readers, and even today entry into the software industry is still not entirely dependant on a university qualification, and was even less so during the 1980s. Most skills in this area were honed at home. Today, of course, there is a major movement in the development of “open source” software, most of which is also done at no calculable expense.
47 Merges; Menell; Lemley; Jorde, p. 869
48 Insofar as such expenditure even exists. It should be noted that the Whelan view of copyright as an incentive was later rejected by the Supreme Court in Feist Publications, Inc v Rural Tel. Serv. Co 111 S. Ct. 1282, 1290 (1991) – “[t]he primary objective of copyright is not to reward the labor of authors…”. The actual purpose of copyright is considered below.
49 This is generally true – university courses, for example, rarely aim to “teach programming”. Students are expected to learn this themselves – the teaching on such courses merely serves to provide a certain structure or framework within which to work, but the actual “filling in” of that framework is left to the student. Considerable research takes place in the form of the examination of the work of others (see also Fn. 46 re computer magazines).
50 Merges; Menell; Lemley; Jorde, p. 870
51 No scientist will achieve an advance merely by copying another’s paper about a particular phenomenon – advances will only take place by the posing of a hypothesis and its subsequent testing.
52 Analogously, a lecturer may teach in a number of ways. Yet they may not be required to refrain from copying another lecturer’s particular method of presentation, since there can be no copyright in such a method – should the programmer then be prohibited from copying another’s method, merely because there is a choice of methods?
53 Computer Associates International v Altai, Inc 982 F.2d 693 (2d Cir. 1992) – CA developed ADAPTER, part of program names CA-SCHEDULER. The purpose of ADAPTER was to ensure that the same software would run on three different operating systems. Altai employed a former CA programmer, who wrote ZEKE, which had a similar function to ADAPTER and 30% of which consisted of CA’s code. CA brought an action for copyright infringement against Altai.
54 The actual practicalities of this test are complex – Englund is referred to by way of explanation in Merges; Menell; Lemley; Jorde, p. 880, and the following text is based on that understanding of the test.
55 Bainbridge, Introduction to Computer Law, p. 34
56 Merges; Menell; Lemley; Jorde, p. 880
57 This approach has a rather major flaw – it encourages sloppy programming and the proliferation of unnecessarily large software packages.
58 It would be unreasonable to be able to claim copyright for the work which another has created and intended to be freely available.
59 Merges; Menell; Lemley; Jorde, p. 884
60 Bainbridge, Introduction to Computer Law, p. 35
61 See Fn. 48
62 Kindermann in Brett and Perry, p. 140
63 That, at least, is the bottom line. Others may argue that maximization of profit is desirable, but desire does not equate to necessity. Maximization of profit is not a requisite for market survival.
64 Karjala, p. 196
65 As illustrated by the requirement of non-obviousness in patent registration.
69 Karjala explains later (p. 198) that software is only literary in terms of its form – it is, for all practical purposes, actually functional.
70 For a more in-depth argument in favour of a sui generis form of protection for software, rather than copyright, see Samuelson, Davis, Kapor, Reichmann.
71 “Inflicted loss” is used to distinguish between losses caused by the publisher’s own actions and losses caused by piracy over which the publisher has no influence.
72 National Commission on New Technological Uses of Copyrighted Works, Final Report published on 31st July 1978. The Commission’s purpose was not so much to establish what the content of copyright protection for computer software should comprise of, but what form of protection was adequate for software. It is nevertheless helpful to consider the Report’s recommendations at this stage.
73 Final Report of the CONTU at 30.
74 There is, of course, the argument that the copyright owner might have intended to implement such adaptations in future versions of their program, but this is rather far-fetched and begs the question of why it was not done in the first place. To inhibit another on the basis that one might have been going to do the same thing in the future is patently absurd.
75 S50C(2) Copyright, Designs and Patents Act 1988 allows error correction, but Lloyd and Simpson suggest that, “the right will extend only in respect of particular errors which have been discovered by the user in the course of running the program in a normal manner” (see Chapter 4, “Error Correction”).
76 Final Report of the CONTU at 52.
77 Dietz in Brett and Perry, p. 120
78 Karjala, p. 196
79 Or “SSO”, Karjala, p. 197
80 It should also be noted that unlike some forms of technology, programming – especially commercial programming – can only sometimes rely on the provision of “parts” by others. For example, a manufacturer of loudspeakers may merely acquire the various parts required from different companies and then assemble them. The same cannot be said of programming – it may be possible to use another’s code, but even then, the programmer will generally be required to contribute significantly the functioning of the program by adding their own code. The manufacturer need only examine another’s products to gain an understanding of how to assemble loudspeakers, while the programmer will need to invest considerably more to achieve their end.
81 Atari Inc v North American Phillips Consumer Electronics Corp 672 F 2d 607 (7th Cir. 1982)
82 Lotus Development Corp v Paperback Software International 740 F Supp 37 (D Mass 1990)
83 Bainbridge, Software Copyright Law, pp. 132-133
84 3D games are a particular issue here. The generation of realistic visual environments is greatly dependant on the code employed to generate them. Anyone attempting to copy a 3D engine’s function to create a similar display will be required to invest considerable effort, and so it is not merely a matter of “copying a display”. The point here is that in the case of works of art, value arises a result of being able to view those works, and that value decreases as the number of copies of that work increases. Screen displays, however, are not valuable in themselves – they are only valuable in conjunction with the program creating them – in other words, they are merely products of the code, and without the code, useless. Screen displays are therefore not the same as works of art, photographs, films etc. and – it is argued – do not require copyright protection if the code generating them is protected.
85 Dietz in Brett and Perry, p. 120. The principle here is one of covering necessary costs, rather than providing for luxuries.
86 See http://news.bbc.co.uk/1/hi/business/2665883.stm
87 Although perhaps less uncertain than that of the music industry.
88 Biddle, England, Peinado, Willman, The Darknet and the Future of Content Distribution
89 P. 14, “There seem to be no technical impediments to darknet-based peer-to-peer file sharing technologies growing in convenience, aggregate bandwidth and efficiency. The legal future of darknet-technologies is less certain, but we believe that, at least for some classes of user, and possibly for the population at large, efficient darknets will exist.”
90 Rights under the GNU Public License include access to the program’s source code, redistribution of copies, and the right to create adaptations and distribute them.
91 See http://www.eweek.com/article2/0,3959,857673,00.asp
92 “Microsoft Corp. may in the future be forced to lower its software prices as a result of the growth of open source, the company cautioned in its latest filing with the Securities and Exchange Commission” – http://www.eweek.com/article2/0,3959,857673,00.asp
93 The Digital Millennium Copyright Act 1998 and European Union Copyright Directive (2001/29/EC) do, however, indicate that further restrictions may be imposed in the name of copyright protection.
94 Hart suggests that the truth in rules is a matter of social acceptance – if this is so, law must, and in the long term will, reflect social attitude. A rule protecting unnecessarily expensive software must conflict with consumers rapidly becoming accustomed to the idea of freely available software. This is not to say that the rule of force, as it might be considered in this case, is necessarily desirable, but that if rules reflect social standards, then they will necessarily adapt accordingly.
95 Commissioner John Hersey, quoted in Dietz (in Brett and Perry, p. 123)
96 Emphasis has been placed on software publishers and companies throughout this article – it is rare for a programmer working for a company to retain any sort of copyright in the work they produce.