Copyright

for Software Law

Definitions, compilations and
the idea/expression dichotomy
© Mark Perry 2000

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 Today

 Some interesting cases

– Illustrating idea/expression dichotomy
– Illustrating software specific problems
– Illustrating ‘copying’ problems

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 What is software?

 Intangible
 Distinguish functions of:
– OS
– Applications
 Distinguish the levels in the processes of
taking an ‘idea’ and making a machine do
something
Idea

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6
FuncSpecs, Algorithms

5
PASCAL, BASIC,C+
+..
Assembly code
4

Object code
3

Microcode
2
Flow of current
through transistors
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Algorithm

 if (cache is full) or (end of day) then

 day = window size
 while (cache is above comfort level) and (day > 1) do
 remove files with recency == day
 day = day-1
 end while
 if day == 1 then
 while (cache is above comfort level) do
 remove largest file
 end while
 end if
 end if

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High level language

 function allupper (testline: string): boolean;

 var
 i: integer;
 someupper, somealpha: boolean;
 begin
 someupper := true;
 somealpha := false;
 for i := 1 to length(testline) do
 begin
 if not (testline[i] in...............

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 Assembly

 init:
 mov dx,offset banner
 mov ah,9
 int 21h ; identify ourself
 mov ax,3515h
 int 21h ; get old vector
 mov word ptr old_int15,bx ; and store in new interrupt handler
 mov word ptr old_int15 + 2,es
 ; first, see if we can load into an XMS upper memory block
 mov ax,352Fh
 int 21h ; find out whether INT 2F is valid
 mov ax,es

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 Treaties
 Berne Convention “The Convention on the
Protection of Literary and Artistic Works”
1886
 UCC 1952 and 1971
 NAFTA
 TRIPs

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 Copyright

 Aspects that relate to computers

– protection of source code
– protection of object code
– the problem of identifying copying
– special provisions

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 Fundemental

 Work in which copyright subsists? √

 Copyright does subsist in the work? √
 Plaintiff owns the copyright? √
 Copyright infringed? √

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 What is the work? Does © subsist?
Identify

Can © subsist
EOS
in such a work?

Yes No

Have conditions for

subsistence been met? A work
in which
©
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subsists
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 A work
with ©

No
Does P own the ©?

Yes No
remedy
possible
P’s free to exercise No
© in this instance? by P
against D
Yes
Yes
Defences to pf infringement?
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 Evolution of protection
 From Statute of Anne to CA1985 as
amended:
– (1868) (1875) (1906) (1921)
– An Act to amend and consolidate the law
relating to Copyrights (1985)
– Specific mention of software in 1988
Amendment
 recent amendments and conventions.
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 Key Features
 Protection for:
– Works, that are original, from copying
 Expression, not ideas
 No required formalities
 Teritorial based
 Statute law
 RoT What worth copying prima facie worth
protecting(UofLondon [1916])
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 CA
 Section 2 - Definitions, in particular
– cinematographic work
– collective work
– compilation
– computer program
– infringing
– literary work
– work
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 Section 3 of CA
 Sole right to reproduce, perform in public
or publish a work or substantial part
thereof.
 Note the ss

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 Section 5 of CA
 Conditions for subsistence of copyright:
 Must be original literary, dramatic, musical
or artistic work
 some other conditions

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 Summary
 What is protected?
– Literary, dramatic, musical, artistic works,
compilations
– The work must be original (ie not copied and
involve intellectual effort)
– Be fixed? (ie computer progs, mime etc)
– Must be connected with Canada (or
WTO/Berne/UCC country)

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 What is the work? Does © subsist?
Identify

Can © subsist
EOS
in such a work?

Yes No

Have conditions for

subsistence been met? A work
in which
©
Yes Previous Next
subsists
Previous Next
 A
work
with
©

No
Does P own the ©?

Yes No
remedy
possible
P’s free to exercise No
© in this instance? by P
against D
Yes
Yes
Defences to pf infringement?
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 What about copying software
 There may be a number of different types
of copying
 Direct
 Indirect
 Some software cases of importance

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 Cases
 Wheelan v Jaslow
 Lotus v Boreland
 Computer Associates v Altai
 Ibcos
 Prism

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6
FuncSpecs, Algorithms

5
PASCAL, BASIC,C+
+..
Assembly code
4

Object code
3

Microcode
2
Flow of current
through transistors
1 Next
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 Remember

 Work in which copyright subsists? √

 Copyright does subsist in the work? √
 Plaintiff owns the copyright? √
 Copyright infringed? √

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 What is the work? Does © subsist?
Identify

Can © subsist
EOS
in such a work?

Yes No

Have conditions for

subsistence been met? A work
in which
©
Yes Previous Next
subsists
Previous Next
 A
work
with ©

No
Does P own the ©?

Yes No
remedy
possible
P’s free to exercise No
© in this instance? by P
against D
Yes
Yes
Defences to infringement?
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 Key Features
 Protection for:
– Works, that are original, from copying
 Expression, not ideas
 No required formalities
 Territorial based
 Statute law
 What worth copying prima facie worth
protecting
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 What is protected?
 Literary, dramatic, musical, artistic works,
compilations
 The work must be original (i.e. not copied
and involve intellectual effort)
 Be fixed? (i.e. computer progs, mime etc)
 Must be connected with Canada (or
WTO/Berne/UCC country)

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 Some principles from cases
 Wheelan v Jaslow
 Lotus v Boreland
 Computer Associates v Altai
 Ibcos
 Prism

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 Remember
�Reproduce the work or any substantial
part of it in any form
�Issuing copies to the public
�Making an adaptation
�Importing
�Transmitting by telecommunications
system

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 So you cannot

�Reproduce entire work or a substantial part

�But there must be sufficient objective similarity
between the works, or a substantial part thereof
�And must be a causal connection between the
works

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Substantial part

Some considerations
–Quality rather than quantity
–Importance and originality
–What about ‘sequence, structure and
organisation’?
–What about ‘look and feel’, GUI, Menus, indirect
copying???
Cases and tests...

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 Some important US cases
The idea/expression dichotomy
–Baker v Seldon 101 US 99 (1879)
Learned Hand’s ‘abstraction test’ developed in Nichols v
Universal Pictures Co 45 f 2d 119 (1930)
Whelan v Jaslow (1986)
3 stage test applied in Lotus v Paperback (1990)
Learned Hand’s Abstraction-Filtration-Comparison test in
Computer Associates International v Altai 982 F 2d 693 (1992)
Lotus Development Corp v Borland International 49 F 3d 807
1995

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 Wheelan v Jaslow (‘87)test

 Dental Lab program

– P held © in ‘Dentalab’(EDL lang)
– D, involved in Dentalab, prepared a similar program in
BASIC
– 3rdCirc CA upheld infringement - sufficient that there
was step by step similarity between listings of source
code of significant routines
– ‘the purpose or function of a utilitarian work would be
the work’s idea, and everything that is not necessary to
that purpose of function would be part of the expression
of the idea’
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 ... Wheelan

 If mundane task essential to task then not

protectable
 If not essential, with different possible
ways, then expressions

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 Lotus v Paperback ‘90

 FIRST, in making the determination of

‘copyrightability’, the decisionmaker must focus
upon alternatives that counsel may suggest, or
the court may conceive, along the scale from the
most generalized conception to the most
particularized, and choose some formulation -
some conception or definition of the ‘idea’ - for
the purpose of distinguishing between the idea
and its expression.

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 ...paperback

� SECOND, the decisionmaker must focus

upon whether an alleged expression of the
idea is limited to elements essential to
expression of the idea (or is one of only a
few ways of expressing the idea) or instead
includes identifiable elements of
expression not essential to every
expression of the idea.

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 ...paperback

� THIRD, having identified elements of

expression not essential to every
expression of the idea, the decisionmaker
must focus on whether those elements are
a substantial part of the allegedly
copyrightable ‘work’.’

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Summary of Paperback test

�The court must decide at what level of

abstraction a program’s elements are
copyrightable.
�Second, the court must decide whether the
program at issue ‘includes identifiable
elements of expression not essential to every
expression of that idea’ ..
�Thirdly, the court must decide whether the
copyrightable program elements that remain
are substantial enough that their use by the
defendant constitutes infringement.
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 Computer Associates v Altai
‘92
 CA’s Adapter prog part of job scheduler (common
interface component for different OSs) for job
execution on IBM mainframe
 Ex-employee of CA went to work for Altai created
OSCAR 3.4 that used around 30% of Adapter prog
(unbeknown to Altai)
 Altai discovered infringement (CA sued) and Altai
rewrote OSCAR -> 3.5 (fresh programmers used)
 Was OSCAR3.5 an infringement of Adapter?

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 CA v A

 “We think that Whelan’s approach to

separating ideas from expression in
computer programs relies too heavily on
metaphysical distinctions and does not
place enough emphasis on practical
considerations.... “
 Three step test:

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 1-Abstraction

 “..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. ...begin with code and end
with ultimate function... retrace and map each
of the designer’s steps in the opposite order in
which they were taken during the program’s
creation”
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 2 filtration

 Examine the structural components at each

level of abstraction to determine whether
their particular inclusion is dictated by
efficiency or required by external factors
or came from public domain or idea or
protectable expression

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 3 comparison

 Take the ‘core of protectable expression ...

the golden nugget” - may be many
 Were they copied?

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 Computer Associates v Altai

Abstraction
P’s code Structure, various routines,
menus, db coding.....

Filtration

Comparison
D’s code Elements that
are protected

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 UK John Richardson
Computers v Flanders 1993
 Facts
– Pharmacy program
– P contended D, in non literal copying, copied
subunits, such as routine for entering drugs,
doses pre-print options, stock control.....

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 John Richardson v Flanders (uk)

�1. Whether P’s work was protected by copyright?

�2. Whether similarities existed between the P’s and the
defendant’s programs?
�3. Whether these were caused by copying or whether
other explanations were possible?
�4. In the event that copying was established, whether
the elements copied constituted a significant part of the
original work?
�5. Computer Associates v Altai test found favour

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 Ibcos v Barclays 1994 (UK)

 Good example of evidence by errors

– identical mistakes in remark lines
 Criticised Richardson
– but here literal copying
 Rejected the suggestion of a search for a
‘core of protectable expression’
 P’s program was infringed by “over
borrowing”
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 Software Cases

 Depend on the facts and circumstances of

the particular case
 Plenty of opportunity for interpretation
within the CA
 Keep in mind
– idea/expression
– substantial

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 Screen displays

 Lacking direct copying, protection has

found little favour in the US, see
– Apple v Microsoft ‘94
– Lotus v Borland ‘95
– (rejecting Whelan in favour of CA v A)

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 Databases

 US -> Feist v Rural Telephones (1991)

– Insufficient ‘authorship’
– ‘Sweat of the brow’ not enough
 Canada: Tele-direct

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 Compilations
Databases in Canada
–How would Feist be decided here, now?
Multimedia
–May include many different types of work
(film, sound, photo, artworks, literary
works.....etc etc

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 Remedies ss34 - 43
�Damages
�Accounts of profit
�ex parte orders - Anton Piller orders
�Criminal liability s42

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 Anton Pillar

 Anton Pillar Manufacturing Processes [1976]

UKCA
– Court approved a procedure - P can apply to HC in
camera without notice to D for an order to permit P to
inspect D’s premises and seize, copy or photo material
relevant to alleged infringement
– P must show a strong prima facie case; show serious
potential damage; provide clear evidence that D has
incriminating evidence and that it is a clear possibility it
may be destroyed if D gets wind of the action
– Officer of court must attend
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 Fundamentals
 Patent protects inventions against
allcomers
 Highly formal
 Has long history
 Exclusive right to use, manufacture, sell
 ‘Anything under the sun’

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An overview

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 Patent law is
 Statute law, protected under the Patent Act
1985 (as amended)
 Grants monopoly for new inventions on
market without fear of competition for
limited time (20yrs)
 Granted by the Patent Office.

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 History
 Early days
 Middle days
 Now

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 Procedure
 Draft patent “Petition”
 Make specification (description) and
claims (boundary)
 File (filing date crucial)
 Ask for examination <5 years

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 Costs
 Patent attorney’s fees
 Search costs (db 100-300/hr; USPTO US 200-
1.5k) Formal drawings (0.5+k)
 Filing fee (150-300)
 Examination fee (200-400)
 Grant fee (150-300+)
 $100(++)p/a for a maintenance fee.
 See pr schII
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 Note
 s10 filed documents opened to public
inspection after 18 months from filing, or
earlier with approval
 Examination means that the PO checks the
application to see whether patent should be
granted

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 Inventions
 “invention” means any new and useful art,
process, machine, manufacture or
composition of matter, or any new and
useful improvement in any art, process,
machine, manufacture or composition of
matter

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 The invention may relate to
 A product
 A process
 An apparatus
 A composition of matter
 But not method of medical treatment,
computer program per se, and, prior to
Harvard in FCA, certain living things

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 Art or process
 The process or art must be useful, such as
a novel way of achieving something
 Fine art and writings typically excluded
 Art of professions (eg a cross technique)
typically excluded

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 Machine
 Mechanism that does something
 Some ‘computer programs’
 Canadian PO guidelines “the presence of a
programmed general purpose computer or
program for such computer does not [add
to or subtract from patentability] of an
apparatus”

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 Matter
 New substances
 Life?? Micro-organisms, yeasts etc
 Animals?
 Human genome, recombinant DNA
 Plant varieties -> Plant Breeders Rights
Act

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 Medicines
 Prior to the current incarnation of the PA
could only patent medicine and food
processes - can get product patent now

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 Excluded
 IC Topography
 Plant varieties under PBR - only listed
plants
 Natural phenomena, principles and abstract
theorems
 Schemes and business methods
 Medical and surgical treatments

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 Novelty
 The invention must be something new s28.2
 Not ‘available to the public’ in Can or
elsewhere
 Eg application with disclosure
 Disclosure means ‘not under confidentiality’
 Since ‘89 any disclosure anywhere
 Note that the ‘one year’ allowance is NAm

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 Novelty
 Experimental use ok
 Hidden use, arguable
– Prior to ‘89 the focus on public use, now on
‘made available to public’, so hidden use may
not be disclosure.

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 Not Obvious
 To a person ‘skilled in the art or science’
s28.3
 A legal fiction for this notional person to
give an objective test
– Not necessarily related to the work required or
the simplicity of the invention.

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 Useful
 Must be a practical purpose for the
invention
 The invention must work

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 The patent content
 Disclosure
– Product - how to make and use
– Matter - how made and what it does
– Process - how it works and what it does
– Sample
 and claims
– What the invention can do, but over and above
the current art
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Mr X and the Death Ray

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 Can correct errors
 Pre issue fairly easy, and in light of
examiner
 Post issue
– Mistake, accident or inadvertence, and without
any wilful intent to defraud or mislead…
s48(1)
– Disclaim overextended claims
– Reexamination (challenge)

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 Inventors
 Inventor the first objectively manifested the
idea
 Joint inventors?
 Employees
– Not in Act; employment contract; default
‘course of business test’
 Freelancers
– Not in Act; as for employee
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 The Crown
 Can get a patent
 Federal employees ‘in scope of duties’ ?

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 Rights of patentee…
 To exploit the invention commercially
 Use - Business possession presumed use
prima facie
 Sell
 Import (even products of patented process)

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Invalidating patents

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 Fair use?
 Product approval (s55)
 For Government use (s19)
 Stockpiling goods for which regulatory
approval required

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 Licensing
 On the 30th

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 International scene
 TRIPs
 NAFTA
 PARIS
 …etc etc

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 Some questions
 From what we have covered, what do you
think are areas likely to cause difficulty
with patent law?
 What other mechanisms may there be for
protecting inventions?

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