William A.

White March 2003

COPYRIGHT IN COMPUTER SOFTWARE

More Wrong Than Right?

Intellectual Property – LW556 Word count: 4781

1
 CONTENTS

Abstract 3

Introduction 4

Copyright in computer software in the United Kingdom 4

The Copyright, Designs and Patents Act 1988 5

Infringing acts 8

Whelan Associates Inc v Jaslow Dental Laboratory Inc 11

Computer Associates Inc v Altai Inc 13

The aim of copyright protection for software 14

The mechanisms of software copyright protection 16

Copyright protection and reality 18

Conclusion 19

Bibliography 20

2
 A B STRACT

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.

3
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
20011, 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.
Microsoft3 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 Zuse4, 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 units5. 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 negligible6.

It was not until the mid-1970s7 that personal computers8 became widely available and thus the
question of legal protection became a serious issue. The Whitford Committee established in 1977

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.

4
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”. Wilson11 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 infringement12,
simply because it was not clear whether copyright even subsisted in programs13. 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 Act14 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 matter16.
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

5
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 long18 and
will invariably satisfy such requirements. The one exception is where a program’s expression is the
inevitable result of its function19 – 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 BASIC20, 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).

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
20
Beginner’s All-purpose Symbolic Instruction Code

6
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 00000000 00000000 00000000 00000000 00000000

00000000 00000010 00000000 00000000 00000000
DO UNTIL EOF(1) 00000000 00000000 00000000 00000000 00000001
LINE INPUT #1, a$ : LOCATE 1,1 : PRINT a$;"***" 00000000 00000000 00000001 01100111 00000000
OPEN a$ FOR INPUT AS #2 : a$=LEFT$(a$,LEN(a$)- 00000000 00000000 00000000 00000000 00000000
4)+".txt" 00000011 11101001 00000000 00000000 00000001
01100111 00100110 01111100 00000000 00000000
FileLength&=LOF(2) 10000000 00000000 01100000 00000000 00000000
IF FileLength&<250 THEN 00100000 01001110 01110001 00000000 00000000
ReadSize&=FileLength& 01100101 01101101 01101100 00101101 01110100
ELSE 01101111 00101101 01110100 01111000 01110100
ReadSize&=250 00110010 00101110 01100010 01100001 01110011
END IF 00000000 00000000 00000000 00000000 00000000
00000000 00001110 00000000 00000000 11111111
OPEN a$ FOR OUTPUT AS #3 11111111 01111010 00001111 00111000 00111100
DO UNTIL EOF(2) 00001110 11000000 00100110 00111100 00000000
a$=INPUT$(ReadSize&,#2) : a 00000000 00001110 11001110 00111110 00111100
%=INSTR(a$,CHR$(13)) 00000001 00000000 00100100 00111100 00000000
IF a% THEN 00000000 00010000 00000000 00111100 00111100
IF LEN(a$)=1 THEN 00000001 00101100 01001000 11100111 10000000
a$="" 10000000 10010011 11001001 00101100 01111000
ELSE 00000000 00000100 01001110 10101110 11111110
IF a%=LEN(a$) THEN 11011010 00101000 01000000 10011011 11001101
a$=LEFT$(a$,a%-1) 01001010 10101100 00000000 10101100 01100110
ELSE 00010010 01000001 11101100 00000000 01011100
a$=LEFT$(a$,a%-1)+RIGHT$(a$,LEN(a$)-a%) 01001110 10101110 11111110 10000000 01000001
END IF 11101100 00000000 01011100 01001110 10101110
END IF 11111110 10001100 00101010 01000000 01000011
END IF 11111010 00000000 11000010 01110000 00000000
PRINT #3, a$; 01001110 10101110 11111101 11011000 01001010
Location&=LOC(2) : LOCATE 2,1 : PRINT 10000000 01100111 00100110 00100110 01000000
Location&;"/";FileLength& 00001100 01101011 00000000 00001001 00000000
IF FileLength&-Location& < 250 THEN 00010100 01100110 00010100 00001100 01101011
ReadSize&=FileLength&-Location& 00000000 00000001 00000000 00010110 01101101
END IF 00001100 01000011 11111010 00000000 01111100
LOOP 01000101 11111010 00000000 11101100 01001110
CLOSE 2 : CLOSE 3 11101011 11111111 10100110 01100001 01110000
LOOP 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 1.1 – Source code Fig 1.2 – Binary view of the compiled code (extract)

7
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 databases22 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

Smedinghoff25 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 consent26. “Software piracy” is usually a reference to this
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 [1994] 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.

8
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 qualitative27 – 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 prohibition28 – provided they are actually necessary29.

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 Flanders31.

Computer programs may not be “translated”32 without permission, that is to say, source code may
not be compiled33 to create object code, and object code may not be decompiled to create source
code. Such a translation constitutes an adaptation34, as does the rewriting of the source code in a
different programming language35. 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
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 [1993] 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

9
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 programs36, 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 rental37. In
essence, this means that once software has been made publically available, it can be resold by a
third party. Bainbridge38 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 Inc40

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

10
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 claimed42 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 expression43.

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 expense46, 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.
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.

11
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
copying47. 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
expenditure48, 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 others49. 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 literary51, 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

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.

12
equally desirable. The programmer may prefer a particular method according to efficiency, code
legibility, the effort required in implementing the method or even personal style52.

Computer Associates Inc v Altai Inc53

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.

The first stage is abstraction54. At a program’s base level of abstraction, it consists of a series of
instructions, possibly organized into modules. As one increases the level of abstraction, the actual
instructions decrease in importance while the overall function performed increases. At the highest
level of abstraction, one merely considers the program’s purpose, not its constituents. Bainbridge55
describes this process as an attempt by the court to review the steps the programmer took in writing
the program.

The second stage is filtration, in which the “structural components at each level of abstraction”56 are
examined to identify whether they are idea or expression, and, if the latter, whether they are
protectable. The court considers that such elements as are dictated by efficiency should not be
protected, based on the fact that the most efficient code is the closest the expression can be to the
idea, and that there will probably only be a few ways of efficiently programming a certain method57.
Also excluded are elements which amount to standard techniques as well as elements taken from
the public domain58.

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.

13
In the final stage, the expressions identified in stage two are compared with the original program. If
a defendant has copied the expression, and the expression is significantly important to the plaintiff’s
program, infringement may be found.

As the court points out, “the exact contours of copyright protection for non-literal program structure
are not completely clear”59, and it is not apparent that the test formulated in Computer Associates
really makes the contours that much clearer. The abstraction stage in particular seems difficult to
grasp – what if a program is not conveniently sorted into distinctly separate modules, and what if
various modules actually form part of the expression of the same idea? It may not always be
possible to find a level of abstraction which allows the court to identify what is an expression.

The approach is less objectionable than Whelan, in that it is not based on as curious an
understanding of the nature of software, but Bainbridge60 notes that for the three stage test to
become predictable, further case law will be required.

The aim of copyright protection for software

It has already been noted above61 that the aim of copyright protection for software is an important
element in the consideration of non-literal copying, and it is worth investigating more fully.

Kindermann considers the aim of any system of protection to be the provision of “an environment
that allows recovery of program package development investment so as to permit further
reinvestment.”62 There is an inherent logic in this approach – in a capitalist economy, survival of an
entrepreneur is only guaranteed where sufficient income is generated to cover necessary expenses,
and is thus desirable. The greatest danger to the software publisher in this respect is software piracy
– if too few consumers pay for the program they have acquired, the publisher will not receive
sufficient income to cover their costs63.

In Whelan, it was suggested that copyright was a reward for “sweat of the brow.” Karjala64 rejects
the idea of copyright as an incentive system on the grounds that computer software is a technology,
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

14
and thus utilitarian in nature. Technology is otherwise protected by patent and – in theory – only
where significant advances have been made65. Patents are thus an incentive system and a system of
reward – copyright, which arises upon creation, regardless of the degree of creativity involved, is
not. The reason why copyright has been chosen to protect software is the comparative ease with
which object and source code is reproduced, unlike other items of technology, and the need,
therefore, for immediate legal protection.

While software is utilitarian, the classic recipients of copyright protection (music, art and literature)
are made valuable by their aesthetic content or the information they convey. Karjala66 argues that
variety is therefore desirable – there is no social benefit in copying another’s novel, only to make
minor alterations or to change names. Whether this is true or not, it is plain that variety is not
necessarily desirable in software. Utility is not automatically increased by the fact that a task is
completed in one out of a range of possible ways67, especially when the number of ways available is
limited. Software should therefore be seen as being similar to “works descriptive of technology,
rulebooks, histories or legal forms, in which the scope of protection is ‘thin’.”68 This point of view
stands in conflict with the approach of the courts in Whelan and Computer Associates, where it was
thought that the existence of a variety of expressions meant that the one chosen was protected. In
the light of Karjala’s argument, it appears that the courts’ approach – while based on the theory
underlying copyright in the “classic” recipients – failed to take into account the utilitarian nature of
software69.

It is apparent, then, that the aim of copyright is solely to protect against piracy70, thus to prevent
inflicted loss71 leading to market exclusion. With this knowledge, it is possible to consider the actual
measures required to make copyright effective.

The mechanisms of software copyright protection

65
As illustrated by the requirement of non-obviousness in patent registration.
66
Karjala, p. 196
67
Unlike aesthetic value, which is increased by variety, according to Karjala.
68
Karjala, p. 196
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.

15
First suggestions as to the necessary content of copyright protection in the U.S. were made in the
Final Report of the CONTU72. It was considered that lawful users of software should be allowed to
make their own adaptations73 – that is to say, to alter the way in which software works to accord
with their needs. However, such adaptations should not be passed on to third parties without the
copyright owner’s authorization. It is clear that the latter would effectively be piracy causing loss to
the copyright owner – unless the first user merely passed on a program which altered the program
code to implement the adaptations, rather than passing on an adapted version of the adapted
program code itself74. The actual act of alteration causes no loss and should not be prohibited. Under
current U.K. legislation, such an act nevertheless constitutes infringement (see above)75.

It is plain that the main concern of the CONTU Report was the act of literal copying – “one is
always free to make the machine do the same thing as it would if it had the copyrighted work placed
on it, but only by one’s own creative effort rather than by piracy.”76 Dietz confirms this in his
commentary on the Report – “[copyright] should not… prevent others from contributing to the
development of the art, and grant no more economic power than necessary to the developer.”77

Seen in this light, the protection of non-literal program elements becomes questionable. The
CONTU Report envisioned no such thing, presumably because it was not considered necessary.
Karjala78 points out that no other form of technology has such protection by default. The mere fact
that software is comparatively easy to reproduce cannot justify protection beyond the literal. There
is, of course, a danger in allowing others to copy “structure, sequence and organization”79 – it may
potentially cut short the development time of a rival program, allowing that program to enter the
market earlier and thus possibly alienate part of the original program’s market. However, the same
may be said of any unpatented technology – and, given the nature of programming, there is no
guarantee whatsoever that the program will enter the market any earlier as a result80.
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

16
Copyright protection not only includes copying of the SSO, but has also been found to subsist in
screen displays81 and user interfaces82. Bainbridge suggests that copyright in the former may arise
because displays are works in their own right, because of the copyright in preparatory materials or if
the display is “considered to be a photograph or a film.”83 Yet none of this is persuasive – if it is part
of the program’s function to produce a screen display, why should that be any more protected than,
say, the digital display on a clock? It may be argued that the screen display required more effort to
produce, but if the manner in which that display has been generated is protected – i.e. the program
code – that should surely be sufficient84. In the case of user interfaces, a similar argument applies,
but with the added consideration that uniformity of application interfaces is desirable. Users are not
interested in having to learn a new method of operation for each program they encounter, and
certainly not where that program fulfils the same functions as another program they have used.

Protection against public performance and display, mentioned above, seems even less justifiable
than that of screen displays. Given that the performance or display of the output of a piece of
software is merely transient, it seems impossible to argue some form of “fixation.” Unlike music,
the software’s benefit does not lie in its very existence but in the functions it performs – hence the
need to protect the code rather than what the code does. It also seems inconceivable that the public
display of a piece of software, or the software’s output, should cause the copyright to suffer
economic loss.

Copyright protection and reality

One final issue must be raised in relation to the aim of copyright – the economic aspect. There are
two conflicting views as to the economic purpose of copyright – one, that of Dietz as mentioned

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.

17
above (“[copyright] should grant no more economic power than necessary to the developer”85) and
the other as expressed by Microsoft’s recent report of a net profit of $2.55bn for October to
December of 200286.

In a capitalist society, it is generally unavoidable that a company should seek to maintain or

increase its share of the market and its profit. Failure to do so would be to increase the risk of
dropping out of the market. However, as mentioned at the beginning of this article, software piracy
is becoming an ever-increasing challenge, and software companies now face an uncertain future87,
as a recent paper88 published for Microsoft makes clear89. Encryption mechanisms are being
routinely circumvented and software being made available via the Internet before it even enters the
market.

In addition to this, a considerable volume of open source and otherwise freely available software of
professional quality is being made available by programmers around the world. The “free software”
movement provides licensing conditions somewhat more favourable to consumers than most
commercial models90 and has been dubbed a “threat” 91 to software companies.

The result is that there is increasing pressure on commercial companies to reconsider their business
strategy if they are to remain in the market. Whether the reduction of prices and the resulting short
term decreases in profit are an adequate manner of tackling the situation remains to be seen, but it
has certainly been suggested that this will be necessary92. There may indeed therefore be a shift
towards Dietz’s model of economic purpose, albeit an involuntary one. The question therefore
arises as to whether copyright will also change to reflect current reality93 – a law which cannot be
upheld has questionable status94.
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

18
Conclusion

This article has examined various areas of copyright in computer software in the United Kingdom,
highlighting the major points of protection and infringement. Various judgments issued by courts in
the United States, establishing key principles in this field, have been considered. It has been shown
that many of the underlying factors in such judgments are doctrinally unsound and disregard the
differences between software and the “traditional recipients” of copyright protection, and it is
argued that copyright should be limited to literal elements of program code.

Commissioner John Hersey has suggested that copyright protection of computer software is wholly
inappropriate on the grounds that software is merely “a machine control element”95, but, whether
this is true or not, given the place that software copyright now holds in the world economy, it seems
unlikely that it will cease to subsist any point in the foreseeable future. However, it also seems
unlikely that it will continue to yield such profit it has yielded in the past, and without some major
technological advance prohibiting the use of pirated programs, business and pricing models must be
expected to change if companies are to remain in the market96.

Ironically, the areas least affected by the increasing illegitimate availability of software are the non-
literal program elements. It may be easier to gain access to software in order to reverse engineer it,
but the substantial effort required to do so and to write a program which is not literally the same
remains as it has always been. It seems likely, therefore, that copyright in these areas is likely to
endure – it is, however, not justified.

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.

19
 B I B LI O G RAPHY

Books:

BAINBRIDGE, David Introduction to Computer Law

Longman 2000, Fourth Edition

BAINBRIDGE, David Software Copyright Law

Butterworths 1994, Second Edition

BRETT, Hugh The Legal Protection of Computer Software

PETTY, Lawrence ESC Publishing Ltd 1981, First Edition

HART, H. L. A The Concept of Law

OUP 1994, Second Edition
LLOYD, Ian J. Law on the Electronic Frontier
SIMPSON, Moira http://www.strath.ac.uk/Departments/Law/dept/diglib/book/

MERGES, MENELL, Intellectual Property in the New Technological Age

LEMLEY, JORDE Aspen Law & Business 1997, First Edition

20
Articles:

BELLIS, Mary Inventors of the Modern Computer – […] Konrad Zuse

http://inventors.about.com/library/weekly/aa050298.htm

CONTU Final Report of the National Commission on New Technological Uses

of Copyrighted Works

DIETZ, Bernard C. Copyright in Computer Software – Current US Proposals

Brett and Perry, The Legal Protection of Computer Software

BIDDLE, ENGLAND, The Darknet and the Future of Content Distribution

PEINADO, WILLMAN http://crypto.stanford.edu/DRM2002/darknet5.doc

KARJALA, Dennis Copyright Protection of Computer Software in the United States and
Japan, Part 1
European Intellectual Property Review 1991, 13(6)

KINDERMANN, Manfred A Review of Suggested Systems for the Protection of Computer

Software
Brett & Perry, The Legal Protection of Computer Software

MENELL, Peter S. Envisioning Copyright Law’s Digital Future

http://www.law.berkeley.edu/institutes/bclt/pubs/menell/
newmansd.pdf

MIDGLEY, J. T. J. Critique of the Proposed UK Implementation of the EU Copyright

Directive
http://ukcdr.org/issues/eucd/ukimpl/critique_uk_impl.html

SAMUELSON, DAVIS, A Manifesto Concerning the Legal Protection of Computer Programs

KAPOR, REICHMANN 94 Colum. L. Rev. 2308 (1994)

SMEDINGHOFF, Thomas J. The Software Publishers Association Legal Guide to Multimedia

Addison-Wesley 1994, First Edition

21
WEIK, Martin H. The ENIAC Story
http://ftp.arl.mil/~mike/comphist/eniac-story.html

WILSON, Alastair The Protection of Computer Programs Under Common Law –

Procedural Aspects and United Kingdom Copyright Law and Trade
Secrets
Brett and Perry, The Legal Protection of Computer Software

Internet Articles97:

1973 AD to 1981 AD – the First Personal Computers (PCs) (from Bebop BYTES Back)
http://www.maxmon.com/1973ad.htm

Doesn’t Everybody Do It? Internet Piracy Behaviors and Attitudes (SIIA & KPMG, Autumn 2001)
http://www.siia.net/divisions/content/pubs/kmpg.pdf

First-ever dividend for Microsoft shares (BBC News, 17th January 2003)
http://news.bbc.co.uk/1/hi/business/2665883.stm

Microsoft Warns SEC of Open-Source Threat (eWeek, 3rd February 2003)

http://www.eweek.com/article2/0,3959,857673,00.asp

Software Piracy Cost District of Columbia […] $1.4Bn… (Microsoft, 3rd February 1999)
http://www.microsoft.com/presspass/press/1999/Feb99/DCEIPr.asp

Software Piracy Fell to $11B in 2001, BSA Says (MacCentral, 10th June 2002)
http://maccentral.macworld.com/news/0206/10.piracy.php

The Free Software Definition (Free Software Foundation, 7th February 2003)
http://www.gnu.org/philosophy/free-sw.html

97
Author not identifiable.

22
United Kingdom Cases:

Cantor Fitzgerald International v Tradition (UK) Ltd, The Times, 19th May 1999
IBCOS Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275
John Richardson Computers Ltd v Flanders [1993] FSR 497
Kenrick & Co v Lawrence & Co (1890) 25 QBD 99
R v Gold [1988] 2 WLR 984

United States Cases:

Atari Inc v North American Phillips Consumer Electronics Corp 672 F 2d 607 (7th Cir 1982)
Computer Associates International v Altai, Inc 982 F.2d 693 (2d Cir. 1992)
Feist Publications, Inc v Rural Tel. Serv. Co 111 S. Ct. 1282, 1290 (1991)
Lotus Development Corp v Paperback Software International 740 F Supp 37 (D Mass 1990)
Nichols v Universal Pictures Corp 45 F.2d 119, 121 (2d Cir. 1930)
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)

23