Copyright in Computer Software – a Primer

Department of Computer ScienceCMPT 370 – Intermediate Software Engineering

September 10, 2010

Dr. Tom RobertsIndustry Liaison Office

Office of the Vice President ResearchUniversity of Saskatchewan

966-8751tom.roberts@usask.ca

The Beginning?

• First “copyright” law in England (1556)

By Royal Decree; to a stationary company, not Author

To control printing and sale of books; Term = forever

• Statute of Anne (1710)

First to protect Authors’ rights, not Publishers’/Printers’

Copies of manuscripts to various libraries requirement

IP - Underpinnings

John Locke (1632-1704); English physician and philosopher

Two Treatises of Government – In mankind’s natural state, no individual may tell another what to do or pronounce justice – men are free to do what they will - the natural state of mankind is anarchic. Although the state of nature includes a law – that no one ought to harm another (or his possessions), this is poorly enforced. Thus man willingly quits the state of nature to form ordered societies governed by rules of the group.

Civil society was created for the protection of property. Each individual “owns,” at least himself (lat. proprius – that which is one’s own, including the self), which is a corollary of his thesis that individuals are equal in nature. Hence, individuals must own their own labour (else they are slaves). An individual can appropriate for himself that which he mixes with himself by the application of his labour.

IP - Underpinnings

Georg Wilhelm Friedrich Hegel (1770-1831); German university, professor, philosopher, an important developer of dialectic reasoning;

Elements of the Philosophy of Right – Introduced the notion of “identity in difference”; that the mind externalizes itself in various forms and objects that stand outside of it or opposed to it, and that, through recognizing itself in them is “with itself” in such external manifestations, so they are at one and the same time “mind” and “other-than-mind” …..

What is Property?

• Property is NOT anything tangible

• Property IS a collection of rights in the “res” (tangible or intangible) enforceable against others

• Property IS a creation of law

• Property IS divisible– constituent rights are infinitely divisible among

persons

Types of Property

• Claim rights (against others)– e.g., to exclude (an owner having a right to evict a trespasser, patent

holder has exclusive rights to make, use and vend)

• Powers– e.g., to dispose by conveyance (e.g. gift, assignment/sale) or waste

• Privileges– e.g., to control (e.g. license) and enjoy without interference from

others

• Immunities– e.g., from expropriation

• Note: Few property rights are absolute or unfettered

In What Can Property Subsist?

• Realty (land and its embellishments)– Corporeal hereditaments (land and fixtures)– Incorporeal hereditaments (e.g., prescriptive rights,

restrictive covenants, easements, profits á prendre, light and water and etc.)

• Personalty (everything other than land)– Chattels (real)– Chattels (personal)

• Choses in Possession (tangibles – “things”)• Choses in Action (intangibles – shareholdings, intellectual

property, etc.)

What is Intellectual Property?

Rights in intangible products of the mind created as property under:

– Federal Statues (e.g., Patent Act, Trade-marks Act, Copyright Act, Plant Breeder’s Rights Act, Industrial Design Act, Integrated Circuit Topography Act)

– Common Law of a province (e.g. trademarks)

Note: Intellectual property is separate and distinct from the work, invention, etc. in which the property is fixed or otherwise subsists, and is separate and distinct from rights to such “thing” per se

Idea/Expression Dichotomy

There is no concept in law of “property” in an idea (i.e., “ownership” of an idea) – rather, only the expression/manifestation of an idea

IP law constantly strives to strike the right balance for:•protections for individual inventors/authors•inducements/incentives for creation of works•Advancing the common good of a society

The Challenge

• Patents (new, useful and non-obvious inventions)• Copyright (original, fixed works)• Industrial Design Registrations (aesthetic

elements of otherwise utilitarian objects)• Integrated Circuit Topographies (3D design of

layered circuit elements)• Trade-marks (words, phrases, designs and etc.

used in association wares and/or services in trade)• Plant Breeders’ Rights (new, stable, homogeneous

plant varieties)

The IP Regime

Non-Proprietary Interests in Products of the Mind

• Confidential Information and Trade Secrets are NOT property (hence, not intellectual property) and are not governed by property laws

• The laws respecting confidential information and trade secrecy are the (largely provincial) laws of personal obligation (contract, tort, restitution, trust, and etc.)

Confidential Information and Trade Secrets (cont’d)

• Confidential Information– knowledge, information, and etc. that is held secret by a person; or– if known by more than one person, is subject to an obligation to maintain

secrecy (including prevention of publication)• Publication means making available to the public• Trade Secret

– technical/business information, data, plans, results, and etc.– not generally (easily) available to the public– acquired by expenditure of resources (e.g., $, time, effort, etc.)– valuable to business of the holder– loss associated with breach of confidence or publication

• Term of Protection: as long as secrecy/confidentiality are maintained

Note: Most patented inventions start out as trade secrets

Copyright Act

The Copyright Act, R.S.C. 1985, c. C-42 is the most complex Canadian intellectual property legislation and is subject to the most ongoing change.

The Act establishes a regime of that seeks to provide protection for copyright holders while balancing those rights with users rights. Holders are provided property-like exclusivity in “works” (incentives to create more works) and rights to control certain uses of their works, while fair and wide use of works is afforded the public.

Copyright Act

Basic Requirements for Protection

• Subject matter fits within one or more of the 4 categories (if more than one, subject matter is a “compilation”).

• Meets a standard of originality (i.e., not copied from work of another, created using a minimal level of skill, judgment and/or labour – not to be confused with novelty or uniqueness).

• Fixed in some “human assessable” and “semi-permanent “ medium.

Copyright ActSubject Matter

Works comprise 4 broad, open-ended categories of subject matter (s. 5.1 “Subject to this Act, copyright shall subsist in Canada … in every original literary, dramatic, musical and artistic work.”).

Artistic Works: include paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works and compilations of artistic works.

Dramatic Works: include pieces for recitation, choreographic works or mimes, scenic arrangement of acting forms which are fixed, cinematographic works, and compilations of dramatic works.

Literary Works: include tables, computer programs, and compilations of literary works.

Musical Works: any work of music or musical composition (with or without words) and any compilations thereof.

Copyright ActLiterary WorksThis category of works comprises subject matter that will be most commonly created by academic authors (e.g., essays, posters, journal articles, theses, books, book chapters). Under the Act, this category expressly includes tables, computer programs, and compilations of literary works.

This definition is not exhaustive and is media neutral.

A literary work does not have to have “literary” merit, only meet the originality standard.

Expressly includes utilitarian and commercially valuable materials such as databases and computer programs.

The focus of this category is written words; textual materials (and includes translations and derivative works).

Literature

Source Code

The Same?

Computer Program – Copyright Act Definition

• 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.

• This definition has been found broad enough to cover both source and object code (Carolian Systems International Inc. v. Triolet Systems Inc., [1989] O.J. No. 510, 23 C.P.R. (3d) 87 (Ont. H.C.)).

Copyright ActOriginalityLaw Society of Upper Canada v CCH Canadian Ltd., [2004] 1 S.C.R. 340; rev’g (2001), 18 C.P.R. (4th) 161 (F.C.A.); allowing in part (1999) 2 C/P.R. (4th) 129 (F.C.T.D.); affirmed by Robertson v Thomson Corp. (2006), S.C.J. No. 43 (S.C.C.)

The correct test (today) is somewhere in between - the work must more than a mere copy, but it need not be creative in the sense of being novel or unique. The work must be created through the exercise of the author’s skill and judgment.

McLACHLIN C.J. (at p. 352): — “By skill, I mean the use of one's knowledge, developed aptitude or practiced ability in producing the work. By judgment, I mean the use of one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort.”

Copyright Act - ownership

• 13(1) Subject to this Act, the author of a work shall be first owner of the copyright therein.

except that:

• 13(3) Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of employment by that person, the person by whom the author was employed shall, in he absence of any agreement to the contrary, be the first owner of the copyright ….

Copyright Act

Types of Rights Afforded Copyright Holders

There are three:• so-called economic or exclusive rights• neighboring rights• moral rights

Rights of Canadian citizens and residents extend beyond Canada – to member states of the Berne Convention, Universal Copyright Convention, World Trade Agreement, and North American Free Trade Agreement. Similarly, rights of citizens and residents of such member states subsist in Canada.

Copyright Act

Exclusive (Economic, Substantive) Rights

The sole right to produce or reproduce a work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof.

Translation – sole right to reproduce (i.e., “copy”), prepare derivative works, distributed, perform, display to public

Term (Canada): life of the author + 50 years (i.e., if you expire in 2010, © expires in 2060)

Substantial Similarity?

Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2nd Cir. 1996)

Copyright ActMoral (Subsidiary) RightsThe Act provides to creators of works certain rights that are and remain personal to them. These rights cannot be conveyed to another. There are three:

• Attribution: right to be and remain associated with a work; subject to a reasonableness requirement.

• Integrity: right to prevent or control any act or omission that causes a work to be distorted, mutilated or otherwise modified to the prejudice of the honor or reputation of the author.

• Association: right to prevent or control any use of a work in association with a product, service, cause or institution.

Moral rights can be waived, in whole or in part.

Copyright Act – moral rightsIntegrity• Snow v. The Eaton Centre Ltd. (1982), 70 C.P.R. (2d) 105 (Ont. H.C.)

Copyright Act

Idea v. ExpressionMere ideas, facts, data, information, tools, methods, concepts, “hot news”, algorithms, and etc. are not protected; rather, what is protected is their expression.

Idea v. Expression

Baigent v Random House Group Ltd., [2006] E.W.J. No. 10 (Ch.D.)Smith J.: “First … it is accepted than an author has no copyright in his facts nor in his ideas but only in his original expression of such facts or ideas. Original in that context does not mean novel of course. Second the purpose of copyright is to protect the skill and labour employed by the Plaintiff in the production of his work…. In other words the facts and the themes and the ideas cannot be protected but how those facts themes and ideas are put together … can be.”

Idea v. ExpressionMartel (Life of Pi) & Sclair. A collective sigh of exasperation could be heard throughout intellectual property law classes when Canadian Booker prize-winning author, Yann Martel, found himself embroiled in an international literary scandal. Martel's Life of Pi, 1 which chronicles the adventures of a boy shipwrecked with four wild animals as company, was alleged to have infringed Brazilian author's, Moacyr Scliar's, intellectual property in a novel with a comparable premise.

[…]

For those of us schooled in the idea/expression dichotomy, this charge was just short of ridiculous. A copyright lawyer would, of course, immediately step-in and remind us of the enshrined legal doctrine: copyright protects one's expression of an idea--not the idea itself. After that, it would be case closed, plot concluded.

Sharon Costin. 61 U.T. Fac. L. Rev. 229, Spring 2003

Copyright Act

Merger. Where there are only a limited number of ways to express and idea, the expression is held to have merged with the idea and the public interest in the idea trumps copyright; hence such subject matter is not protected.

Tele-Direct (Publication Inc.) v. American Business Information Inc., [1997] 76 C.P.R. (3d) 296 (F.C.A.); Ital-Press Ltd. v. Sicoli (1999), 86 C.P.R. (4th) 129 (F.C.T.D.).; U & R Tax Servies Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.).

Copyright Act

Fair Dealing with a work does not infringe copyright when, if undertaken for the purpose of

• research or private study;

• criticism or review (if the source and the name of the author, performer, maker or broadcaster is cited); or

• news reporting (if the source and the name of the author, performer, maker or broadcaster is cited).

Remedies

Injunctive relief

Destruction of infringing pieces

Damages (actual or potential)• Statutory - no need to prove actual losses via

evidence

Criminal prosecution

Patents for Computer Programs

• CIPO took an early view (Re Waldbbaum, January 18, 1972, CPOR Vol. 100, Nov. 3) that a computer program expedient was patentable.

• However, the Federal Court of Appeal later held that a patent could not issue for simply doing by computer what is essentially a mental operation or process (Schlumberger Canada Ltd. v. Commr. of Patents, [1982]] 1 F.C. 845 (C.A.), leave to appeal to S.C.C. refused 63 C.P.R. (2d) 261n). Since, CIPO has refused to grant patent for computer programs per se.

Patents for Computer Programs (cont’d)

• Viewed as algorithms or compilations of algorithms• Many countries fear that technological progress in a

volatile industry would be impeded• Patents are allowable for a computing apparatus

programmed in a novel manner, where the patentable advance is in the apparatus itself, or for a method or process carried out with a specific novel apparatus devised to implement a newly discovered idea.

Patents for Computer Programs (cont’d)

• In 1974 the USPTO allowed apparatus claims for “a general computer as modified by a new computer program.”

• In the wake of that decision, in 1995, CIPO issed guidelines as follows:

– Unapplied mathematical formulae are considered equivalent to mere scientific principles or abstract theorems which are not patentable …

– The presence of a programmed general purpose computer or program for such computer does not lend patentability to, not subtract patentability from, an apparatus or process.

– …[N]ew and useful processes incorporation a computer program, and apparatus incorporating a programmed computer, are directed to patentable subject matter if the computer-related matter has been integrated with another practical system that falls within an area which is traditionally patentable ….

How to Protect Your Work Product

• Copyright subsists at the time of creation – without anything more, although there is a registry that can be utilized. It subsists for the life of the author + 50 years (in Canada, with exceptions).

• A Patent must be sought ($$$) – lasts 20 years from the date of application.

• Confidential information cannot be “owned,” but it can be controlled; i.e., by contract (Confidential Disclosure Agreement).

• Seek, and take, expert advice.

Copyright in Computer Software – a PrimerSeptember 10, 2010

THANK YOU FOR YOUR ATTENTION

Good Luck with your Programming

Dr. Tom Roberts

Industry Liaison Office

Office of the Vice President Research

University of Saskatchewan

(306) 966-8751

tom.roberts@usask.ca