The Alleged Protection of Software through Copyright
Rezumat
Copyright is one of the most popular systems when it comes to the legal protection of software. However, its efficiency remains disputable. The core issue is to determine what elements of software are copyrightable (apart from the obvious source code and object code) and how to draw a line between those and what falls outside of copyright protection. The answer to this question lies within the fine line between what represents an idea and what constitutes its expression. In search of some guidelines, the present paper analyses (i) the „Look and Feel” doctrine and its evolution, as well as (ii) some of the coordinates used at a national and European level to determine the ambit of copyright protection in matters of software.
Studiu publicat în volumul In Honorem Flavius Antoniu Baias. Aparența în drept, tomul III, Ed. Hamangiu, 2021, p. 527-553.
„(…) we are often better served by connecting ideas than we are by protecting them”
(Steven Johnson)[1]
§1. Software as copyright subject matter
„Software” is a complex, dynamic concept that includes the source code, the object code, the instructions attached to those, the algorithms that represent the core of the software and the user interface.
„Computer programs” usually define a more simplistic notion, of a smaller size and with a more limited functionality. Computer programs have been defined as sets of instructions directed to a computer for it to process them in view of getting a certain result (the computer program’s functionality)[2].
Hence, software usually encompasses more than one computer program[3].
However, the two terms are sometimes used interchangeably by legislation and authorities and are rarely defined per se.
The distinction bears little relevance for the present paper. However, understanding the more extended grounds behind software may explain some of the legislators’ choices in terms of drawing the „circle of protection” of copyright subject matter[4].
Apart from the source code and object code, a software also comprises elements such as screen displays, on-screen text, music, databases, graphic user interface (GUI), and – depending on the complexity of the software – it may include a collection of computer programs.
A significant part of the debate addressed in the present paper stems from determining what parts of a computer program are protected by the copyright regime as construed for computer programs. The answer to this question is sometimes the key factor in configuring an undertaking’s strategy in how to protect its most valuable resources.
1.1. Forms of protection
From a legal standpoint, software may be protected through patents, copyright, or trade secret[5]. As shall result at a later stage of this paper, the way these systems of protection interact (especially copyright and patent) may play a substantial role in drawing the line between expression and ideas.
Sometimes, these 3 forms of protection may seem to overlap in the sense that some components of the computer program are protected by trade secret (for example, the algorithms and other back-end solutions within the software), some elements of the software (often combined with hardware parts) are subject to patent applications, while some parts of the software are subject matter to copyright.
However, when it comes to assessing the compatibility between protecting software by patents or copyright[6] – these two forms of protection seem to be mutually exclusive when examined in relation to a particular component of a software. In the United States, this has been known as the „mutual exclusivity rule” between software and patent protection, dating back to 1879[7].
Such mutual exclusivity is far from being an axiom. It is just the logical consequence of the way the patent and copyright systems are construed when it comes to protecting software:
1.2. Patent protection
Patent protection is regarded by some as a superior form of protection. This is because, as opposed to copyright, patents do „protect against independent development”[8] in competitive industries, such as the software development one. However, a patent is more expensive and difficult to obtain as it requires the applicant to meet the conditions for the patentability of an invention. These conditions are deemed to be considerably strict both at a European level and (especially after Alice Corp v. CLS Bank International[9]) even in the US. Patents allow for an in-depth protection of software seen as a computer-implemented invention: an inventive process or product capable of having an additional technical effect, an inventive leap from the current state of the art. Hence, patents can protect the core functionality of the software.
1.3. Copyright protection
Copyright protection for software was moulded into the traditional forms existing in Intellectual Property Law at the time it was first created. Given that software is written in code, and code is made of a succession of letters and symbols, it has been considered a „literary work”[10]. This means that from a copyright perspective software stands alongside novels and plays[11]. Comparing to patents, copyright is less expensive and easier to acquire (in Europe the protection stems from the simple act of creating the original work; the US system is not much different – with some additional administrative registration formalities in place). Copyright protection also lasts longer than the protection granted by a patent and only requires originality (instead of novelty and non – obviousness as in the case of patent applications). However, as with any other subject matter of copyright, the protection regards the expression of the computer program, and not the ideas and principles lying underneath that expression.
It follows that patents may cover the functional technical elements of a software, while copyright ensures that no unlawful copy of the software’s expression is made.
As they cover for different parts of a computer program, they should in principle be mutually exclusive, at least in what regards one particular element individually (if functional – to be protected by patents; if a matter of expression – to be protected by copyright).
In our view, such conclusion (although originating in the US) does not necessarily collide with the European vision on the matter, as reflected in the Software Directive’s recitals:
„(16) Protection of computer programs under copyright laws should be without prejudice to the application, in appropriate cases, of other forms of protection (…)”.
First, the Directive specifically provides for the non-exclusion of other forms of protection „in appropriate cases”. Such an appropriate case may refer to the possibility to cumulate copyright, patent, and trade secret protection with regards to different elements of the same software. For example, even in the case of patents granted for „purely software” inventions (i.e. software not embedded into hardware), a patent will protect (i) the process underlying the code or (ii) the algorithm specifically applied to solve a technical problem – and not the expression of that code. It would result that overlap over the protection of a software’s forms of expression is logically impossible. We shall revert on this conclusion as follows.
Second, even under US doctrine and case-law, overlaps in protection granted through copyright or patent may occur – but concerning the software in its entirety and not to specific, individual elements of that software. In this sense, a software may be protected simultaneously by copyright and patent as follows: (i) the code gets protection by copyright, while (ii) the process or method of obtaining a specific result may be patent subject matter).
Matters become more complex when some elements that structure, sequence, or organize the computer program (roles that are traditionally viewed as pertaining to the field of expression) also play a functional part. In such a case, copyright struggles greatly to apply a coherent set of rules (initially designed for its more traditional works) to software, only to see them bent at extreme lengths:
„We attempt to capture this intriguing dual nature of software by describing the software as a machine whose medium of construction happens to be text”[12].
A better insight on the way software modulates traditional copyright rules can be observed by examining the legislations in place. Sections 1.2.-1.4. deal with the legal copyright regime applicable to computer programs in the United States and Europe, as well as on an international law level as a necessary step in understanding which of the tools used in each jurisdiction may be compatible or even binding in Romania.
1.4. The United States Copyright Act
Article 1 Section 8 of the United States Constitution sets up the framework for protecting original works through granting exclusive rights to authors and inventors in the name of the „progress of science and useful arts”. Raising innovation at a constitutional level is coherent with the explosion of the tech industry that occurred in the United States. Article 102 of Title 17 of the United States Code provides the subject matter of copyright – naming 8 categories of works of authorship: (i) literary works, (ii) musical works, (iii) dramatic works, (iv) pantomimes and choreographic works, (v) pictorial, graphic, and other audio-visual works, (vi) motion pictures and other audio-visual works, (vii) sound recordings, (viii) architectural works.
It results that US law provides for a „closed” system of protection, limited only to works that fall under one of these 8 categories. This caused difficulties when it came to deciding where software fits in. However, as source code has a literary expression, software was eventually considered a „literary work”.
To be copyright subject matter under US law, a computer program must be an „original work of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device”[13].
The first claims for Intellectual Property rights in computer programs arouse arose in the mid-1960s.
At that time, software was still regarded as „an awkward fit for both regimes” [that of patent law and that of copyright][14].
However, starting with 1965, the Register of Copyright accepted registrations for software – subject to having the text of their source code deposited and copyright notice conditions met.
Software proved to be a challenge in terms of considering it a copyright subject matter, due to its inherent functional nature. As many feared that copyright may end up granting software a patent-like protection, the 1976 Copyright Act was amended with a second paragraph precluding software from allowing a monopoly over ideas, principles, methods of operation:
„In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work”.
It resulted that under US law, copyright may only cover the protection of the expressions of the computer program.
1.5. International Instruments
The US option to see computer programs as literary works from a copyright perspective was then embraced at an international level.
The World Intellectual Property Organization Copyright Treaty (WCT) adopted in Geneva on December 20, 1996, expressly stated at Article 4:
„Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression”.
Similarly, Article 10 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides that:
„Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971)”.
With the Berne Convention defining what „literary work” actually stands for in Article 2 (1):
„(1) The expression „literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expressions, such as books, pamphlets, and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatic-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving, and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science”.
1.6. EU and national level
Different from the US, the European system does not provide for a „closed” system of protection in terms of copyright subject matter. This would have allowed for software to be viewed, at least at a European level as a sui generis authorship work without the need to stretch the literary works category that much[15].
However, as the European Union is a party to TRIPS and WCT, which are part of the EU legal order and binding for all member states[16], the treaties need to be observed at a European level as well.
Hence, the view on copyright protection for software was aligned to that existing in the US, with the Software Directive expressly providing that member states should „accord protection to computer programs under copyright law as literary works”.
Similar to the US model, European law showed a similar level of caution and expressly prevented for any monopoly over ideas and principles to be granted through copyright, limiting protection to expression:
„For the avoidance of doubt, it has to be made clear that only the expression of a computer program is protected and that ideas and principles which underlie any element of a program, including those which underlie its interfaces, are not protected by copyright under this Directive. By this principle of copyright, to the extent that logic, algorithms, and programming languages comprise ideas and principles, those ideas and principles are not protected under this Directive. By the legislation and case-law of the Member States and the international copyright conventions, the expression of those ideas and principles is to be protected by copyright”[17].
What is more, EU law adapted its originality test, otherwise applicable to any work of authorship, to the specifics of computer programs stating that:
„(…) no tests as to the qualitative or aesthetic merits of the programs should be applied”.
Originality in terms of expressing a computer program is met when the work „is the author’s intellectual creation”[18] and the author’s free and creative choices in the production of the work[19] can be observed. Such provisions encompass a rather flexible approach of the European legislator when it comes to assessing software’s originality[20]. However, it should be noted that the originality of the work shall be examined only at the level of the expression of the computer program, and not in what regards the ideas, principles, methods implied by that computer program. It is thus the expression that needs to imply some sort of „skill, judgment or labour”[21] for it to be rendered original. This line of interpretation was confirmed by the General Advocate Opinion in Case C-406/10 SAS:
„44. (…) the originality of a work, which gives access to legal protection, lies not in an idea, which may be freely used, but in its expression”.
For the scope of protection, the Software Directive defines „computer programs” as including preparatory design material, without such to entail in any way the protection of ideas comprised in that material. A specific legal regime[22] was put in place to reflect the particularities of software, with the Software Directive expressly acknowledging its functional nature:
„The function of a computer program is to communicate and work together with other components of a computer system and with users and, for this purpose, a logical and, where appropriate, physical interconnection and interaction is required to permit all elements of software and hardware to work with other software and hardware and with users in all the ways in which they are intended to function. The parts of the program which provide for such interconnection and interaction between elements of software and hardware are generally known as ‘interfaces’. This functional interconnection and interaction are generally known as ‘interoperability’; such interoperability can be defined as the ability to exchange information and mutually to use the information which has been exchanged”[23].
Both the EU legislation provisions and those of TRIPS and WCT are binding for member states such as Romania, with the national judges having to interpret the Romanian legislation in accordance with these provisions.
The legal protection of computer programs in Romania was construed by transposing the Software Directive principles in Law no. 8/1996 on Copyright and Neighboring rights (Law 8/1996). Article 73 of Law 8/1996 states that:
„(1) Under this law, the protection of computer programs includes any expression of a program, application programs and operating systems expressed in any kind of language, whether in source code or object code, the preparatory design material and the manuals. (2) The procedures, operating methods, mathematical concepts, and principles underlying any element in a computer program, including those underlying its interfaces, are not protected”[24].
The other conditions for protection under Romanian law apply as well: (i) the work has to have an intellectual nature; (ii) the work has to be perceptible through human senses; (iii) the work has to be original – in the sense that it needs to reflect the author’s personality[25]. The categories of works subject matter to copyright in Romania are not exclusive.
Although they have emerged at a different pace, the legislative solutions to software protection through copyright share the same basic principles. Copyright only protects the „expression” of computer program and not the ideas, principles, algorithms, processes that lie underneath. Technically speaking, it seems that the core of the computer program – where its functional heart lies – falls outside of copyright protection.
However, determining what „expression” stands for is where doctrine and practice turn dicey, especially when some elements of the form of expression (other than the literal wording)[26] also play a functional role within the software.
§2. Where does „expression” end and „idea” start?
2.1. A general view on the concept of „expression”
First, it goes without saying that „expression” covers the literal wording of the source and object code. Hence, by protecting expression unauthorized literal copy should be deemed as an infringement of the author’s exclusive rights.
But „expression” also includes other elements apart from the literal ones from the source code and object code, of a more abstract nature. Those elements are known throughout doctrine as constituting the „composition”[27] of the work of authorship.
In a traditional, conservative „literary work” mind-frame – composition usually includes elements of expression (and not substance) that draw the intrinsic composition of a work of authorship. For example, such composition will amount to the narrative plot, some of the descriptive elements of the main characters, the structure of the play, etc. All these elements, although transpassing the literal form, are still ways in which expression manifests itself. If literal expression is the perceptible, fully detailed body of „expression”, composition ought to be its skeleton. Composition is what structures, entangles and contours expression.
If composition represents a part of a work’s expression, then the copying of the structuring and organizing details of work may also result in an infringement:
„If the idea embodied in the plaintiff’s work is sufficiently general, the mere taking of that idea will not infringe. If, however, the idea is worked out in some detail in the plaintiff’s work and the defendant reproduces the expression of that idea, then there may be an infringement. In such a case, it is not the idea which has been copied but its detailed expression”[28].
However, the more abstract these elements of expression become, the closer they get to ideas and the further they move away from copyright protection.
The dynamic between an idea and its expression lays at the core of the most complex Intellectual Property law debates.
An idea is told through its expression. However brilliant an idea may be, there is no guarantee that its expression is copyright subject matter (see above points on originality test and the exclusion of non-expressive elements from originality assessment). It depends on the number of available ways in which that idea can be told. It depends on whether the way it has been told represents a work of authorship. The more detailed an idea is presented – the more likely we are to find those details to be elements of expression. In trying to draw a line between idea and expression UK courts found that eventually„it is a question of degree”[29] – the degree in which an idea is detailed. It is a question of de-abstracting an idea.
2.2. Expressing computer programs
This skeleton or composition of the computer program’s expression is known as the SSO: the structure, sequencing, and organization of a software.
But, as pointed from the start, software is a highly functional organism. Different from the case of a novel (where its structure and sequence of events play an aesthetic role, enriching the beauty of the expression) when it comes to software, SSO always plays an adjacent functional role (sometimes much more important than the aesthetic expressive one):
„[C]’est la composition est l’écriture du logiciel qui sont seules protégées. Mais peu importe en revanche que le logiciel se présente sous forme de code source ou de code objet (…)”[30].
For the purpose of this article, we have defined computer programs as a set of instructions directed to a computer. The way those instructions are laid down, organized and structured may be the core definitory element of that software. „Composition” may increase the software’s efficiency, time reaction and resources consumption. It will be that order[31] and no other that will make that software valuable.
Both the abstracting procedure and the functional role of composition in software expression have been long noted in the US case law:
„As the programmer learns more about the problem, she or he may begin to outline a solution. The outline can take the form of a flowchart, which will break down the solution into a series of smaller units called «subroutines» or «modules», (…) each of which deals with elements of the larger problem. (…) A program’s efficiency depends in large part on the arrangements of its modules and subroutines; although two programs could produce the same result, one might be more efficient because of different internal arrangements of modules and subroutines. Because efficiency is a prime concern in computer programs (an efficient program being obviously more valuable than a comparatively inefficient one), the arrangement of modules and subroutines is a critical factor for any programmer. (…)
As the program structure is refined, the programmer must make decisions about what data are needed, where along the program’s operations the data should be introduced, how the data should be inputted, and how it should be combined with other data. The arrangement of the data is accomplished by means of data files, discussed infra at 1242-44, and is affected by the details of the program’s subroutines and modules, for different arrangements of subroutines and modules may require data in different forms. Once again, there are numerous ways the programmer can solve the data-organization problems she or he faces. Each solution may have particular characteristics – efficiencies or inefficiencies, conveniences or quirks – that differentiate it from other solutions and make the overall program more or less desirable”[32].
When intrinsic elements of expression play a heavy role in the functionality of the software[33] – a conflict appears.
On the one hand, copyright only protects expression [see, for example, Article 73 (1) of Law 8/1996].
On the other hand, copyright law expressly denies the protection of functioning methods, algorithms and procedures [for example, Article 73 (2) and Article 9 (a) of Law 8/1996]. This latter exclusion from protection is common to all legislations presented in Sections 1.2.-1.4., being known within the US doctrine as „the functionality exclusion”[34].
When SSO represents both a way of expressing software and a method of organizing the relevant instructions that software represents, the courts will have to decide (i) whether SSO is copyright subject matter as an expression of a computer program and (ii) whether an unauthorized copy of the SSO of the computer programs represents an infringement provided the regime applicable to software copyright. In addition, there are different forms of expression related to software that raise even more questions with regards to them being copyright subject matter – the already mentioned screen displays, on-screen text, music, databases, GUIs and even the coordinated mechanism of more computer programs (a complex software) seen as a compilation of works.
§3. The issue at stake: „non-literal” copying
This paper mainly focuses on examining the subject matter of the copyright protection specifically tailored for software. However, where traditional copyright protection (such as that for music works, literary materials, databases, etc) may fill in a gap in the former – we will consider its implications as well. Further on, we only intend to focus on the challenges that non-literal copying brings to the table.
The reason for such limitations is evident. While literal copying of the source code of a computer program is a straightforward breach of the copyright held over that software, it is often that literal copying is of little interest – especially as a programmer can determine how a software functions and what makes it valuable by simply assessing the way it works (running it, loading it, testing it). By this, a skilled developer may extract a lot of data regarding the algorithms used, the functionalities, the structure and sequence and its whole architecture. And this „examination” of the software is perfectly legal, being expressly permitted by some pieces of legislation – see for example the Software Directive, Article 5 para 3[35]. Progress, especially in this field of technological advance, is after all a matter of public interest.
Having observed and tested a software, a programmer can replicate it to perform the same tasks with similar achievements in terms of performance without copying even one line of the first software’s code.
„Non-literal” copying deals with these situations. When we must assess infringement of copyright in a software that has basically the same structure and appearance as another one. These cases are the ones with the biggest commercial interests at stake, of great importance in a fierce competitional endeavor such as the one the software industry dwells in:
„There is here an issue of general importance. To emulate the action of a piece of software by the writing of other software that has no internal similarity to the first, but is deliberately designed to «look» the same and achieve the same results is far from uncommon”[36].
A question arises. How much can copyright go beyond the literal expressions of the code towards a detailed, but more abstract concept?[37]
In the eyes of some of the players on the software market, the answer to this question tells us if copyright’s protection is real or if we are simply facing one of those cases postulating an alleged system of protection that remains empty underneath its cover, sacrificing the right holder’s exclusivity in favor of innovation and technological advance.
§4. Searching for solutions. The current state of art
Given the similarities between the protection provided through copyright in the main legislative systems, some of the solutions found in jurisdictions more experienced in dealing with the legal protection of software may prove fruitful in extracting methods of distilling expression from idea.
4.1. The American dream: protecting the „look and feel” of software
As previously mentioned, the United States have long accepted the protection of computer programs through copyright – an explicit amendment being brought in this regard in 1980 to the 1976 Copyright Act. Already in 1983, in the Apple Computer v. Franklin Computer Corp[38] case, the US Court of Appeals for the Third Circuit confirmed that computer programs (even if operating systems) are copyrightable, irrespective if the fixation is obtained through a ROM or other mediums. What the Court of Appeals then set was that copyright protects the expression of the instructions, such as the source code and the object code, irrespective of the medium of their fixation and irrespective of what their purpose is – to operate the hardware (an operating system) or just run a specific task (an application program). This judiciary milestone confirmed software protection through copyright, irrespective of the software’s purpose and the medium where the software was fixed.
The first non-literal copying incidents occurred in 1985, when a dispute occurred between the same Apple Computer v. Digital Research Inc. („DRI”) with regards to the alleged breach of Apple’s copyright for the user interface software for the Macintosh by DRI (such as the operating program FINDER existing even nowadays on Macintosh) with their GEM software. DRI did not admit liability but agreed to some settlement terms.
This was the state of affairs in 1986 when the Third Circuit judges decided to take a step further from simply protecting the literal expression of the instructions (object code and source code) towards protecting its „structure, sequence and organization” of the program. Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc[39] proved to be a cornerstone in protecting SSO and what would be defined as the „look and feel” that a computer program gives to its user.
In doing so, the Court of Appeals tried to separate expression from idea and:
(i) emphasized the great creative input that structure and organization may bring in the economy of a computer program, together with the fact that
(ii) structure and order have been regarded as copyrightable before by means of protecting compilations and derivative works[40]:
„Although the Code does not use the terms «sequence», «order» or «structure», it is clear from the definition of compilations and derivative works, and the protection afforded them, that Congress was aware of the fact that the sequencing and ordering of materials could be copyrighted, i.e., that the sequence and order could be parts of the expression, not the idea, of a work. (…) the idea is the efficient organization of a dental laboratory (presumably, this poses different problems from the efficient organization of some other kinds of laboratories or businesses). Because there are a variety of program structures through which that idea can be expressed, the structure is not a necessary incident to that idea (…)”.
In the Court’s view in Whelan, the idea of a software reduces to its ultimate main purpose, everything else being (at least in most cases) expression.
Quite similar was the court’s rationale in Broderbund Software, Inc. v. Unison World[41] (also in 1986):
„It is axiomatic that copyright protects only the expression of ideas and not the ideas themselves. (…) Thus, if an idea is indistinguishable from its expression, that is, if the idea is «merged» into its expression, the expression cannot be protected under the copyright laws. (…)
In the present case, it is clear that the structure, sequence, and layout of the audiovisual displays in «Print Shop» were dictated primarily by artistic and aesthetic considerations, and not by utilitarian or mechanical ones. Repeatedly, the testimony of David Balsam showed that, in creating the screens of «Print Shop», he based textual and graphic decisions on the basis of aesthetic and artistic preferences.”
There, the court went on to identify each of the graphic and textual decisions made to prove that they had an aesthetic consideration, and not merely a utilitarian one – to conclude that an observer „could hardly avoid being struck by the eerie resemblance between the screens of the two programs”.
It is this how the „look and feel” approach developed – mostly extending the protection to the overall presentation, structure and design of a software (basically the way that specific software was experienced by the user).
Protecting the „look and feel” of a computer program triggered a considerable number of lawsuits between companies and was far from criticism. Even though it was not a matter of automate protection, the „look and feel” approach opened the door towards a potential solution to a much more valuable protection – that against „non-literal” copying.
However, the approach was deemed as rather simplistic, as it did not consider the complex nature of software – failing to grasp that in highly – competitive software business all the functional processes of a computer program ought to be disguised in an aesthetic and artistic manner. In most cases the expression of an idea is intrinsically linked with the idea itself – and by protecting such apparent „aesthetic and artistic” considerations, the right holder actually gets to protect a function or process explicitly excluded from copyright protection and otherwise subject matter to patents.
There are many more ideas within a software than its ultimate functionality and many of these ideas are reflected in the way a software is structured, sequenced or organized and within the design that sets the way the user interacts with the software.
The upcoming caselaw was split. Some of the following decisions adopted a similar stance[42] than that in Whelan, finding SSO to be part of the computer’s program’s expression, whilst others concluded that SSO represented idea[43].
The doctrine criticized Whelan for broadening copyright protection to an extent that would have allowed to get copyright protection for what was essentially patent subject matter. Broadening the scope of copyright to the „look and feel” of the program could in many cases lead to a breach of the copyright exemption regarding processes and methods of functioning[44].
Take for example the 1992 Computer Associates International, Inc. v Altai, Inc.[45] decision (to become the referential software copyright decision up to date):
„As we have already noted, a computer program’s ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own «idea», Whelan’s general formulation that a program’s overall purpose equates with the program’s idea is descriptively inadequate. (…) We think that Whelan’s approach to separating idea from expression in computer programs relies too heavily on metaphysical distinctions and does not place enough emphasis on practical considerations”.
4.2. Moderate dreaming – „Altai” test (abstraction, filtration, and comparison)
The Altai decision accepted the syllogism used by the previous case-law in the sense that (i) given that non – literal structures of literary works are protected by copyright in the case of other works (such as novels, plays etc), and (ii) computer programs are construed to be „literary works”, it follows that the non-literal elements of computer programs are protected by copyright.
The Court in Altai specifically delimited its inquiry to those situations in which these elements are not „categorically distinct works” (e.g., screen displays, text, music, etc.) – case in which we will not be analysing the copyrightability of the program, but of a distinct work. Instead, the Altai case was set to determine the ambit of the protection for the program itself.
It went to establish (in an American judicial fashion) a „test” to separate idea from expression and try to determine whether the copying of a non-literal element of a software represents copyright infringement. The test later became renown as the Altai Test or the AFC Test.
4.2.1. First step: Abstraction
This step has been historically applied to traditional „literary work” (novels, plays, etc) as well. The court starts with the code (as the most concrete element of expression existing) and in a similar fashion as reverse engineering, tracing back each of the programmer’s structuring steps, ends up with the ultimate function that the computer program aims at. Following the path of such an abstraction process would imply the following route: (i) starting point – the source code; (ii) identifying the function of each module within the computer program; (iii) identifying the functions of higher-level modules; up to (iv) identifying the final role of the computer program.
In bref, the abstraction process implies fragmenting the computer programs into main functions as sequenced to achieve its ultimate functionality. By doing this, the court will be able to assess the most important non-literal elements of the software, knowing that as they get closer to the ultimate functionality of the software (that is always an idea) they will be more likely to fall outside of copyright protection for computer programs.
4.2.2. Second step: Filtration
Once these main structural elements of a software are identified, the court needs to filter out unprotectable elements from each level of abstraction. This will lead to extracting out of the copyright protection’s ambit:
(i) those structural elements included in the SSO as part of the idea the computer program follows (and which are necessary to achieve the final functionality) – basically, those elements dictated by efficiency;
(ii) those elements imposed by external constraints such as the need to ensure interoperability of the software with other applications; and
(iii) those elements taken from the public domain.
This implies an understanding of the roles of each element from the structure of a software and a coherent view on the relationship of that element with other modules, macro modules or sub-routines from that software.
In terms of judicial practice, this will normally imply the use of an IT expert to propose a schematic structure of the software at hand and explain to the judges the relationship of each element from that structure with the rest of the software, as well as the functions that a specific element holds.
When it comes to assessing the efficiency factor in each element – the expert should point out which other methods of obtaining the same result or expressing the same idea are there available (if any available within the state of art at that moment). If there is only one (or limited) way(s) to express an idea (with minor variations) then that expression is so deeply linked with the idea that it falls outside of copyright protection. This inextricable link between an idea and its expressions is sometimes called by US authorities in Intellectual Property as the „merger doctrine”.
For example, based on this „merger” doctrine, a computer program’s method for the user’s navigation on the screen displays of the applications was not protectable because that process of navigation throughout the displays of the app could only be achieved in a limited number of ways.
However, if a certain subroutine of a computer program is susceptible of being expressed in a multitude of ways – than the particular choice of the programmer for a particular expression falls within copyright subject matter.
Simply put, contrary to the oversimplistic view in Whelan, each subroutine has its own idea – it needs to fulfil a function in order to achieve the bigger, ultimate functionality that the computer program is aimed at. What the options are in which a developer may express that certain idea pertaining to a subroutine basically answers the question of whether that particular choice is a matter of expression (and not mere functionality) and thus benefits from copyright protection.
Assessing whether an element is the consequence of an external constraint implies understanding that element’s relation with the rest of the software and that element’s relation, as part of the software, with other software or hardware with which it interferes.
This implies that the IT expert appointed by court may have to examine not only the intrinsic relations within the software, but also the extrinsic ones – with other software or hardware.
Some of the assessments in the Abstraction phase do not necessarily ask for an expert report. For example, verifying whether an element is part of the public domain (also named „scenes a faire” – i.e. that element is a standard procedure within the industry) may be proved by a market analysis of similar products and the „tasks” they involve at a structural level to execute a specific function.
Once the expert report is finalized, the court will go on to determine whether a particular element may be deemed as copyright subject matter.
4.2.3. Third step: Comparison between the 2 programs
The comparison will only take into consideration those elements remaining after Step 1 and Step 2 and check to see if there is substantial similarity between those elements left. This means that a similarity identified between scenes a faire elements or elements dictated by efficiency cannot stand as an infringement.
The Altai case provides a firm basis for a thorough analysis in software non-literal cases that can stand as well at a European and national level. In the United States, the Altai case has been long regarded as a reference in terms of assessing non-literal infringement.
4.3. Reality check – Oracle v. Google of April 2021
Waters were still in terms of non-literal copying until the Google LLC v. Oracle America, Inc.[46] recent case. Oracle – who owns a copyright in Java SE after buying it from Sun, a computer platform, accused Google of infringing its copyright by copying 11,500 lines of its Application Programming Interface (API).
First, one needs to understand what an API does. Based on the thorough description made within the decision: „An API divides and organizes the world of computing tasks in a particular way. Programmers can then use the API to select the particular task that they need for their programs. In Sun’s API (which we refer to as the Sun Java API), each individual task is known as a «method». The API groups somewhat similar methods into larger «classes», and groups somewhat similar classes into larger «packages.». This method-class-package organizational structure is referred to as the Sun Java API’s «structure, sequence, and organization» or SSL. For each task, there is computer code, known as «implementing code», that in effect tells the computer how to execute the particular task you have asked it to perform (such as telling you, of two numbers, which is the higher)”[47].
Complex software is written using such prewritten task-implementing programs (instead of writing every time the equation and code pertaining to it). Basically, instead of writing the whole function, the programmer will only „call” it while writing code.
A schematic presentation of how Sun Java API works is found in Appendix to opinion of the US supreme court[48]:
Google copied a part of the Sun Java API that allowed for programmers to „call” the tasks in the same way they were called when writing code in Java programming language. This would help developers already used to Java to program on the Android platform easier by using the task calls they already knew.
It involved a literal copying of 37 of the above-mentioned Sun Java „packages”. However, Google did not copy the implementing code – basically the code that was effectively carrying out that tasks, only the declaring code.
Oracle alleged that Google breached its copyright by literal copying of the declaring code and non-literal copying of the SSO of the Sun Java API. Oracle accepts that the idea of organizing the functions of a computer program or the structure „package – class – method” are too abstract to be deemed as protection, but seeks protection for the names and organizations within 37 such packages.
The case was focused on two of the limits to copyright exclusivity. First, the exclusion of „ideas, procedures, processes, systems, methods of operation, concepts, principles, or discovery” [Article 102 (b) of Title 17 of the United States Code]. This limit also exists under the European legal framework. Second, whether there was a fair use of the copyright subject matter. Under US law, fair use constitutes a statutory limitation to the exclusive rights granted to the right holder (Article 107 of Title 17 of the United States Code[49]). It is deemed as an equitable rule that allows the judges to be more flexible when the strict application of the law may block creativity. Limits for copyright software under the European framework do not comprise „fair use” per se[50] so this argument should be read with caution by any European practician or scholar in search of guidelines for software copyright protection.
The Federal Circuit found that Google’s use of Oracle’s Sun Java API is not a fair one (thus, that the SSO of Sun Java API was copyright subject matter). To reach this conclusion, the Federal court addressed:
(i) The „Merger” doctrine („when there is a limited number of ways to express an idea, the idea is said to «merge» with its expression, and the expression becomes unprotected”[51]) examining what were the options available to Google at the time of the infringement. In the court’s view nothing prevented Google to write its own declaring code;
(ii) Names or Short phrases (one-word commands fall outside of copyright subject matter unless expressing sufficient creativity). The Court considered that there was enough creativity in the selection and arrangement of the method declarations to be subject to copyright;
(iii) „Scenes a faire” (public domain elements that are standard or common to a topic, being indispensable and naturally associated with the treatment of a given idea). It should have been proven that Oracle’s choices in the declaring code „flowed indispensably” from other considerations than the creativity of the author – which was not the case;
The SSO and the declaring code used were found to be different than simple commands as „copy”, „print”, or „delete” – being both creative and original. The Federal Circuit considered that all expressions from a software serve a function, but as long as there are more ways to express that function – then they are copyrightable.
This decision generated turmoil within the doctrine, with many authorities criticizing that by this approach the courts granted through copyright a patent-like protection to software failing to resist the „temptation to assert copyright to fill in gaps in IP protection for software”[52]. An urge to get back to Altai’s rationale was formulated so that copyright protection is limited to program code and expressive screen displays and does not automatically extend to SSO.
Googled petitioned for certiorari before the Supreme Court.
The Supreme Court avoided to respond on whether the Sun Java API is copyright subject matter, limiting itself at analysing whether there was a „fair use”. The Supreme Court analysed (i) the purpose and character of the use – finding that what Google did by writing from scratch the implementation code attached to the declaratory code was a „reimplementation” (building a system that repurposes the same words and syntaxes of an existing system so that the knowledge of the programmers is not wasted), (ii) the amount and substantiality of the portion used (only 0.4 % of the Sun Java API computer code); (iii) market effects – with the finding that Android did not harm the actual or potential markets for Java SE.
The Supreme Court concluded that Google’s use of the declaring code of the Sun Java API represents fair use.
The way the Supreme Court dealt with this case confirms that intellectual property rights over software are above all a matter of public policy. Avoiding answering the core issue at stake in terms of doctrine (whether API was or not copyright subject matter), it focused on showing that using such an SSO for the purposes of developing another product is a fair use irrespective of whether the subject matter was copyrightable or not. The Supreme Court simply favored the advance of technology in cases where the „copied” material was similar to a programming language or the structuring of a set of forms used in coding. While this decision involved even literal copying and the use of a structure implemented by Java SE, public policy reasons imposed for the Altai optic to be reassembled into a restrictive interpretation of what can be copyright subject matter in terms of computer programs.
4.4. The European view – ECJ perspectives
4.4.1. BSA. The element of expression shall allow reproduction of the program
Similar questions have been posed at a European level as well, with the European Court of Justice having to deal with determining what are „the forms of expression” subject matter to copyright.
In C-393/09 BSA (Bezpecnostni softwarova asociace – svaz softwarove ochrany), the ECJ confirmed that:
„[T]he object of the protection conferred by that directive [Software Directive] is the expression in any form of a computer program, such as the source code and the object code, which permits reproduction in different computer languages”.
This last condition – that the form of expression seeking protection has to be able to permit reproduction in a different computer language – was what made a graphical user interface (GUI) to fall outside of the copyright protection for software.
However, the ECJ did not exclude the possibility for a GUI to be copyright subject matter – not based on copyright for computer programs, but as a „work” of itself under the InfoSoc Directive.
The analysis of the ECJ in the BSA case is crucial in helping us establish some criteria in terms of where expression ends and idea starts. It proposes a threshold to consider one element of structure as a form of expression:
„(…) any form of expression of a computer program must be protected from the moment its reproduction would endanger the reproduction of the computer program itself, thus enabling the computer to perform its task”.
In what regards the preparatory work – it is copyright subject matter if capable of leading, respectively, to the reproduction or the subsequent creation of such a program.
In the case at hand, as the GUI was an interaction interface enabling communication between the computer program and the user, it was deemed by the court that a GUI does not enable the reproduction of the computer program itself.
This allowed for the conclusion that software copyright is not limited to a literal protection, but also extends to any other form of expression that may lead to endangering the reproduction of the computer program itself.
However, even elements that did not meet these criteria may be protected by copyright as a visual work or text work, subject to meeting the conditions of the law.
The ECJ did however raise awareness (in a similar fashion as the American courts) that assessing the originality of such elements needs to take into consideration that „where the expression of those components is dictated by their technical function, the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable”.
4.4.2. SAS. Are functionalities, programming languages and formats of data files subject matter to copyright under the Software Directive?
The European Court of Justice has been later referred for a preliminary ruling in Case C-406/10 SAS Institute Inc. v. World Programming Ltd.
SAS claimed that WPL breached its copyright on the SAS manual, indirectly copied the computer programs comprising the SAS components, and used a version of the SAS system in breach of the license. The ECJ was faced with determining if the functionalities, the programming language and the formats of data files in a computer program represent expressions of a computer program and may benefit of copyright protection under the Software Directive.
The Opinion of the General Advocate in this case put under the microscope the process of creating a computer program – specifically to identify the steps and potential structural elements within it:
„47. (…) The programmer defines the tasks to be performed by a computer program and carries out an analysis of the possible ways to achieve those results. The author of a computer program, like the author of a book, selects the steps to be taken and the way in which those steps are expressed gives the program its particular characteristics of speed, efficiency and even style. 48. Consequently, protection for a computer program is conceivable only from the point at which the selection and compilation of those elements are indicative of the creativity and skill of the author and thus set his work apart from that of other authors”.
4.4.2.1. Functionalities
In the Opinion of the General Advocate – the functionalities of a computer program are defined as small tasks needed to obtain the result pursued by the computer program. Such mini-tasks within the broader functionality of the software are close to ideas, with the General Advocate stating that:
„[T]here are many means of achieving the concrete expression of those functionalities and it is those means which will be eligible for copyright protection under Directive 91/250. As we have seen, creativity and skill and inventiveness manifest themselves in the way in which the program is drawn up, in its writing” (para. 55).
ECJ found that granting copyright for functionalities would amount to allowing copyright protection for ideas.
4.4.2.2. Programming language
In the case at hand SAS language consisted of „statements, expressions, options, formats and functions expressed in tokens”, having its own syntax and keywords. Writing a programming language is „similar to a scientific work”, having specific methods to write and formalize the instructions given to the computer. In the General Advocate’s view, it is a functional element that acts similar to the way language does in a novel:
„[T]he means which permits expression to be given, not the expression itself”.
Once more, the ECJ drew the conclusion that programming language, similar to the language used by an author while writing a novel, does not constitute the expression of a work of authorship subject to copyright.
4.4.2.3. Formats of data files
These formats were defined by the General Advocate as „blank forms which are to be filled with the customer’s data by the SAS System and which contain specific locations in which particular information must be written in order for the system to read and write the file correctly” (para. 79), falling under the definition of interfaces. In the General Advocate’s view, it is relevant what role this interface plays in the economy of the software:
„[I]f the expression of the interface constitutes a substantial part of the expression of the computer program (…) it is eligible for copyright protection”.
It such view as that of the General Advocate it is, thus, for the national courts to determine whether the copying of such interfaces would allow for the copying of the entire software on a case-by-case basis. As it would follow, the ECJ adopted a less nuanced position on this matter.
However, the ECJ stated that using a part of a source code (related to the functionalities of programming language) by an unauthorized party to create similar elements in its own computer code may represent partial copying and an infringement. On this matter, the ECJ seems to be stricter in terms than the US Supreme Court – not allowing for any literal copying of a source code pertaining to a functionality, absent of a generic „fair use” limitation under the European framework for software.
As WPL did not use the source code of SAS, but simply observed the SAS program and then reproduced its functionality, using the same programming language and format of data files. In line with the Opinion of the General Advocate and the explanatory memorandum to the Proposal for Directive 91/250, copyright does not allow a monopoly over ideas and cannot block other authors’ creation of similar or identical programs as long as they do so by independently writing their source code.
The ECJ did not rule out the possibility for the programming language and format data file to be protected through copyright but not as computer programs, but as „works” of their own under the InfoSoc Directive. However, ECJ found that none of these elements are forms of expression of a computer program so they are not protected under the Software Directive.
§5. Overview of existing tests to separate expression from idea. Is copyright protection for software real or a simulated protection?
The present paper aimed to examine some of the existing practices with regards to separating idea from expression to determine whether the protection granted by copyright to software stands as more than a mere mask or simulation.
While none of the solutions presented can always and in their entirety be relied upon for providing an undefeatable system of delimiting idea from expression, some coordinates may be extracted. In our view, the Romanian legal framework is compatible with the application of most of the methods and tests identified, the ECJ ones actually being binding.
Out of the solutions identified in order to delimit idea from expression when assessing the SSO of a computer program, the following steps crystalized:
5.1. Exclusion approach
Given the statutory exclusions from copyright protection of ideas, principles, processes and methods of organization, the applicability of such provisions may be deemed as the foundation to the application of any of the subsequent criteria.
The Exclusion Approach represents the legal grounds for the application of all the upcoming steps.
To facilitate the application of Article 9 of Law 8/1996 and of Article 73 (2) of Law 8/1996, one may also deem useful to entail the method of analysing each software element (particularly the SSO ones) in hindsight of patents, while also interpreting it in accordance to „the thin protection” attributed to copyright. If for the same element there is an increased probability that a patent is available, that element is likely to fall outside of copyright protection.
However, for a thorough application of this method to the software’s components, the next step is imperative.
5.2. Applying the „Abstraction” test
„Breaking” the computer program into functional modules or tasks (each performing a certain functionality required to obtain the higher functionality of the entire computer program) is the first step to understand what are the elements that may constitute the „composition” of the software (or the skeleton of its expression) – in relation to which we need to determine whether they are copyright subject matter or not.
The Abstraction Test is recommendable to be backed by technical expertise explaining the relationship between each element of the software. Both the intrinsic relations (within the software’s components) and the extrinsic (between the software and other computer programs) need to be assessed.
5.3. The number of expressions possible/extracting functionality out of expression
Also known as the „merger” test – this step implies an analysis of the creative freedom that the author actually had. It is a step related to checking a work’s originality condition. If the said idea can only be expressed in a very limited number of ways – the creative input is almost void, and protection cannot be afforded for that expression. It is the case with elements dictated by efficiency or the need to ensure interoperability, with elements representing standardized practice or to short names or commands.
5.4. The element’s role in the economy of the software (ECJ)
Last, but certainly not least considering the imperative to apply and interpret national legislation in accordance with EU law, this step has mostly developed from the ECJ practice. Based on it, an SSO element is only protectable under the copyright Software Directive (although it might benefit from protection as a traditional work of authorship under the InfoSoc Directive) if the copying of those SSO elements is susceptible of allowing the reproduction of the entire computer program. Functionalities, format of data files and programming languages are likely to fall outside of the Software Directive copyright protection due to their highly functional nature, them being seen more like means to achieve expression, than expression itself.
Having examined the latest trends in copyright protection of computer programs, it results that non-literal copying of software is far from being strictly or directly sanctioned.
The tendency of the courts to assess the „composition” of the expression of a software (the SSO) in light of their strongly ingrained functionality has resulted in a very cautious stance towards considering SSO as elements of expression and, thus, granting them copyright protection for computer programs.
Consequently, „non-literal” infringements become more attractive within the industry and copyright more and more limited to „literal” copying (with some possibilities to obtain generic copyright protection for some of the screen displays, text etc).
As the majority of the high-stake cases revolve around „non-literal” copying, copyright as a means to protect computer programs is becoming nothing but a mask void of substance, forcing the actors to find other more effective systems of protection for their software assets. It is the case of what seems to be only an alleged form of protection.
Footnotes
[1] S. Johnson, „Where Good Ideas Come From. The Natural History of Innovation”, Penguin Books (2010), at 22. The author continues with seems to be the heart and spirit of Intellectual Property protection (and its intended limitations!) when it comes to software:
„But the truth is, when one looks at innovation in nature and in culture, environments that build walls around good ideas tend to be less innovative in the long run than more open-ended environments. Good ideas may not want to be free, but they do want to connect, fuse, recombine. They want to reinvent themselves by crossing conceptual borders. They want to complete each as other as much as they want to compete”.
[2] M. Vivant, J.-M. Bruguière, Droit d’auteur et droits voisins, Paris, Dalloz (2019), at 212-213: „On peut considérer le programme d’ordinateur qui en est le cœur comme une série d’instructions destinées à faire fonctionner ledit ordinateur et c’est l’écriture de ces instructions qui est «saise» par le droit d’auteur”.
See also the definition of a „computer program” as provided in Article 101, Title 17 of the United States Code: „sets of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”.
At a European level, a precise legislative definition of what a „computer program” stands for was purposefully missed as experts have advised that it may soon become obsolete (see C-406/10 SAS, Opinion of Advocate General, para. 46).
[3] See J. Azema, J.-C. Galloux, Droit de la propriété industrielle, 8e éd., Dalloz (2017), at 164: „Un programme d’ordinateur constitue une suite d’instructions destinée a une machine. Il se distingue de logiciel qui comprend un ensemble de programmes ainsi que les éléments nécessaires à son fonctionnement notamment la documentation, et de l’algorithme qui se présente sous une forme mathématique, est la forme de calcul compose d’une suite d’étapes”.
[4] For example, under European law, copyright protection for computer programs also covers the protection of “preparatory design materials” and some issues have arisen whether it should also protect user interfaces and to what extent.
[5] Protecting software through traditional means of Intellectual Property is nothing but easy. The legislators have struggled to adapt their traditional systems of protection to a new and dynamic subject matter by what was referred sometimes as “procrustean stretching and sawing” [J. Pinheiro, G. Lacroix, Protecting the „Look and Feel” of Computer Software, High Technology Law Journal, vol. 1, no. 2 (1986), at 415].
[6] Trade secret protection can convey protection for a larger array of elements of software – the only limitation being that those components fall within the definition of the type of information protectable. Under Romanian Law, such a definition of what represents an information protected as a trade secret is provided in Law 11/1991 on fighting unfair competition. Based on Article 11 of the Law, an information needs to be (i) secret (as construed by law), (ii) have a commercial value, (iii) and to have been subject to reasonable measures of protecting its secret nature.
[7] Baker v. Selden, available at: https://www.law.cornell.edu/supremecourt/text/101/99, accessed on 28.08.2021, 23:30.
[8] G. Kirchhoefer, R.E. Levine, Legal Protection for Computer Software, SAE Transactions, Vol. 96, Section 2 (1987), at 1447.
[9] Alice Corp v. CLS Bank International, available at: https://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf, accessed on 28.08.2021, 23:50. The decision highlights the abstract nature of some alleged software inventions, considering that patents for software inventions should be regarded with caution.
[10] See Article 102 of Title 17 of the United States Code (and Definitions in Article 101) and the case-law developed; Article 1 of Directive 91/250/EC and of later Directive 2009/24/EC (both referred to within this article as the „Software Directive”).
[11] Such a „Procrustean” fit (as J. Pinheiro, G. Lacroix would say in Protecting the „Look and Feel” of Computer Software, supra note 5) predicted from the start the inherent difficulties deriving from adapting the copyright system to a product so vivid and functional as software.
[12] P. Samuelson, R. Davis, M.D. Kapo, J.H. Reichman, A Manifesto Concerning the Legal Protection of Computer Programs, Columbia Law Review, Vol. 94, No. 8 (1994), at 2320.
[13] Article 102 of Title 17 of the United States Code.
[14] P. Samuelson, Staking the Boundaries of Software Copyrights in the Shadow of Patents, Florida Law Review, 71(2), at 243.
[15] M. Vivant, J.-M. Bruguière, supra note 2, at 212: „(…) le logiciel n’a pas seulement été reconnu comme œuvre protégeable au titre du droit d’auteur mais aussi comme œuvre littéraire! (…) L’explication nous vient des pays de copyright, et en particulier des États-Unis, qui ne connaissent pas une protection «ouverte» des œuvres qui ne peuvent donc rester innommées mais doivent au contraire être impérativement rattaches à une catégorie connue”. See, for example, the preamble of Directive 91/250/EEC (consolidated in Directive 2009/24/EC) on the legal protection of computer programs: „[w]ereas: (…) (6) the Community’s level framework on the protection of computer programs can accordingly in the first instance be limited to establishing the Member States should accord protection to computer programs under copyright law as literary works and, further to establishing who and what should be protected, the exclusive rights on which protected persons should be able to rely in order to authorize or prohibit certain acts and for how long the protection should apply”.
[16] P. Craig, G. de Burca, Dreptul Uniunii Europene. Comentarii, jurisprudență și doctrină, ed. a VI-a, Control științific și revizie traducere: B. Andreșan-Grigoriu, Ed. Hamangiu, 2017, at. 398-399.
[17] Software Directive, recital paragraph (11).
[18] Case C-5/08, Infopaq International, §35.
[19] Case C-145/10, Eva Maria Painer, §89.
[20] For example, under UK law some dispute emerged following the Software Directive’s stance on originality, especially as within the UK the „skill and labour” test was used to prove that a work is one of authorship subject matter to copyright. However, as Copinger and Skone Jones note: „[t]o date, no point has been taken in any reported case that a computer program lacks originality”. (Copinger and Skone James on Copyright, supra note 19, at 3-221 and 3-222, accessed on https://uk.practicallaw.thomsonreuters.com, 29.08.2021, 20:09).
[21] Copinger and Skone James on Copyright, supra note 19, at 3-221, accessed on https://uk.practicallaw.thomsonreuters.com, 29.08.2021, 20:14.
[22] Decompilation – Article 6 of the Software Directive, Back-up copy regime – Article 5 of the Software Directive, reverse engineering and interoperability exemptions etc.
[23] Software Directive, „where as” paragraph (12).
[24] A more generic exemption of “procedures, functioning methods, or mathematical concepts” – applicable to all works of authorship is provided in Article 9 of Law 8/1996.
[25] V. Roș, Dreptul proprietății intelectuale. Vol. 1 Dreptul de autor, drepturile conexe și drepturile sui-generis, Ed. C.H. Beck, 2016, at 180.
[26] V. Roș, supra, p. 187: „În practică, este adesea dificil de recunoscut granița dintre ideea neprotejabilă și expresia sa, care este protejabilă. Dificultatea este cu atât nai mare, cu cât se acceptă faptul că protecția dreptului de autor se întinde și asupra compoziției operei, adică asupra înlănțuirii de idei care dă naștere scenariului sau tramei operei – forma intrinsecă – nelimitându-se numai la forma exterioară – expresia”.
[27] M. Vivant, J.-M. Bruguière, supra note 2, p. 213.
[28] Copinger and Skone James on Copyright, Sweet & Maxwell, 18th edition, at 2-16, accessed on https://uk.practicallaw.thomsonreuters.com, 29.08.2021, 23:58.
[29] Kogan v Martin (2019) EWCA Civ. 1645; (2020) E.C.D.R. 3 at (34).
[30] M. Vivant, J.-M. Bruguière, supra note 2, p. 213.
[31] See, for example, the presentation of how a computer program is structured from the US Court of Appeals for the Second Circuit decision in Computer Associates International, Inc., v. Altai, Inc., available at: https://cyber.harvard.edu/people/tfisher/IP/1992%20Altai.pdf, accessed on 31.08.2021, 18:00. Starting from determining the purpose of the computer software, then splitting it into „simpler constituent problems”/ „subtasks” known as subroutines or modules, which may be further split into sub-subroutines, the developer or software architect will then organize the modules and subroutines into flow charts. Each subroutine has a parameter list that regards the communication of information between the modules constituent of a software: „the functions of the modules in a program together with each module’s relationships to other modules constitute the structure of the program. (…) Additionally, the term structure may include the category of modules referred to as «macros». A macro is a single instruction that initiates a sequence of operations or module interactions within the program”.
[32] Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc, para 1230, available at: https://h2o.law.harvard.edu/cases/5004, accessed on 31.08.2021, 14:09.
[33] Copinger and Skone James on Copyright, Sweet & Maxwell, 18th edition, at 3-93, accessed on https://uk.practicallaw.thomsonreuters.com, 29.08.2021, 21:30:
„Protection under the Directive extends beyond the code to any element expressing the creativity of its author. As the author of a book, he or she selects the steps to be taken. How those steps are expressed gives the program its particular characteristics of speed, efficiency, and even style. Accordingly, elements of creativity, skill, and inventiveness may manifest themselves in the way the program is put together. Copyright protection is conceivable from the point at which the selection and compilation of the program’s elements are indicative of the creativity and skill of the author. Thus, it remains the case that in general terms, the protectable subject-matter of a computer program is the language or code written by the programmer and the design and the structure of the program, or its structure, sequence and organization”.
[34] P. Samuelson, supra, at 258.
[35] „The person having a right to use a copy of the computer program shall be entitled, without the authorisation of the right-holder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do”.
[36] Para. (5) of England and Wales High Court (Chancery Division) in Navitaire Inc. v. Easyjet Airline Co. & Anor, available at: https://www.casemine.com/judgement/uk/5a8ff72660d03e7f57ea89be, accessed on 30.08.2021, 22:30.
[37] This issue has been subject to great debates within the United States for long now. 40 years ago, in the mid-1980 concern was raising with regards to the lengths to which software copyright protection may go. The 1986 Office of Technology Report to the US Congress reported the tension put on the two traditional systems of protection – copyright and patent – to adjust and adapt to the growing technological challenges – see U.S. Congress, Office of Technology Assessment, Intellectual Property Rights in an Age of Electronics and Information, OTA-CIT-302 (Washington, DC: U.S. Government Printing office, April (1986).
[38] Available at: https://law.justia.com/cases/federal/appellate-courts/F2/714/1240/198911/, accessed on 31.08.2021, 13:00.
[39] Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc, supra note 32.
[40] This is also the case under Romanian law – Article 8 of Law 8/1996.
[41] Available at https://law.justia.com/cases/federal/district-courts/FSupp/648/1127/1431057/, accessed on 21.08.2021, 16:00.
[42] Bull HN Info. Sys., Inc. v. American Express Bank, Ltd., 1990 Copyright Law Dec. (CCH) P 26,555 at 23,278 (S.D.N.Y. 1990); Dynamic Solutions, Inc. v. Planning & Control, Inc., 1987 Copyright Law Dec. (CCH) P 26,062 at 20,912 (S.D.N.Y. 1987).
[43] See Plains Cotton Co-op v. Goodpasture Computer Serv, Inc., 807 F.2d 1256, 1262 (5th Cir.), cert. denied, 484 U.S. 821, 108 S. Ct. 80, 98 L. Ed. 2d 42 (1987); cf. Synercom Technology, Inc. v. University Computing Co., 462 F. Supp. 1003, 1014 (N.D. Tex. 1978).
[44] Art. 103 (b) of Title 17 of the United States Code, Article 9 and art. 73 (b) of Law 8/1996.
[45] Available at: https://cyber.harvard.edu/people/tfisher/IP/1992%20Altai.pdf, accessed on 31.08.2021, 19:00.
[46] Available at: https://www.supremecourt.gov/opinions/20pdf/18-956_d18f.pdf, accessed on 31.08.2021, 22:00.
[47] Idem, at page 4.
[48] Idem, at page 38.
[49] „107. Limitations on exclusive rights: Fair use. Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copy- righted work as a whole; and (4) the effect of the use upon the potential market for or value of the copy- righted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors”.
Available at: https://www.copyright.gov/title17/title17.pdf, accessed on 01.09.2021, 9:30.
[50] The Software Directive sets some specific limits for copyright holders over a computer program [that may be seen as applications of fair use but limited in number and specifically tailored to software): (i) decompilation – to ensure interoperability (Article 6), (ii) reproduction of a computer program in so far as loading, displaying, running, transmission or storage of the computer program necessitate such reproduction, translation, adaptation, arrangement and any other alteration of a computer program – when necessary for the use of the program (Article (1); (iii) back – up copy (Article 5 (2)]; (iv) error – correction of the computer program by the lawful acquirer; (v) observing, studying and testing of the computer program by a person that has the right to use a copy of the program – as per Article 5 (3). Under Romanian law, the general limits applicable to copyright holders (that may be seen as more general instances of fair use doctrine) are specifically ruled out from application in the case of computer programs (Article 82 of Law 8/1996). The special limits for computer programs (transposing the Software Directive) are the only limits applicable to this subject matter.
[51] Oracle America, Inc. v. Google Inc., United States Court of Appeals for the Federal Circuit, available at: https://law.justia.com/cases/federal/appellate-courts/cafc/13-1021/13-1021-2014-05-09.html, accessed on 01.09.2021, 11:00.
[52] P. Samuelson, supra, at 294. The author draws the attention that SSO elements are generally treated as trade secrets instead of seeking patents and that, when such information is accessed by competitors, they try to revert to copyright to assert protection for what would otherwise be deemed as patent subject matter.