1. Software Copyright Victor H. Bouganim WCL, American University

2. Victor H. Bouganim, WCL, American University, Spring 2001 Digital Works Works in Digital Form Database Software e.g.: audio CD; WP document; image file etc..

3. Victor H. Bouganim, WCL, American University, Spring 2001 Software Development Design Coding Source Code Object Code Compiling

4. Victor H. Bouganim, WCL, American University, Spring 2001 International Software Copyright F Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention… F TRIPS, Art. 10.1 F 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. F WCT, Art. 4

5. Victor H. Bouganim, WCL, American University, Spring 2001 Scope of International Software Protection F Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. F Such protection applies to computer programs, whatever may be the mode or form of their expression. F WCT, Agreed Statement F Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. F WCT, Art. 2

6. Victor H. Bouganim, WCL, American University, Spring 2001 F Copyright for programs as literary works: – normal copyright rules apply – includes ‘preparatory design materials’ – no protection for ideas or principles F Users’ rights: – back-up copies – error correction F Decompilation \ Reverse Engineering: – for obtaining ‘interoperability’ EU Software Directive - 1991

7. Victor H. Bouganim, WCL, American University, Spring 2001 USA Software Copyright F A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. [Copyright Act 1996 17 USC 101 as amended in 1980] F § 117: Limitations on exclusive rights – archival purposes – essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner.

8. Victor H. Bouganim, WCL, American University, Spring 2001 Scope of Software Copyright F Protection for Literal Elements of Program Code F Protection for Non-literal Elements of Program Code F Protection for Functional Elements and Protocols F Protection for Program Outputs: User Interfaces

9. Victor H. Bouganim, WCL, American University, Spring 2001 Software Copyright Cases Case Law Landmarks – Whelan v Jaslow (3rd Cir. 1986) – Computer Assoc. v Altai (2nd Cir. 1992) – Lotus v Borland (1st Cir. 1995) – Apple v Microsoft (9th Cir. 1994) Old tests – “Look & Feel” – SSO u Sequence, u Structure and u Organization New test – AFC u Abstraction u Filtration u Comparison

10. Victor H. Bouganim, WCL, American University, Spring 2001 Protection for Literal Elements of Program Code F First generation of cases involved direct copying of the program code F Accused infringer takes actual text of work, not merely structure, organization or output F Disputed issue was whether computer programs could be protected by copyright F By the 1980s, computer programs were copyrightable: A settled issue.

11. Victor H. Bouganim, WCL, American University, Spring 2001 Protection for Nonliteral Elements of Program Code F Second generation of cases raised issue of whether competitors may copy other elements of a computer program, such as the program’s underlying structure, sequence, or organization F Copyright protection may extend beyond the literal elements of a work

12. Victor H. Bouganim, WCL, American University, Spring 2001 Whelan Associates v. Jaslow Dental Lab. Third Circuit (1986) F Issue: whether the structure, sequence, or organization of a computer program is protected by copyright, or whether the protection extends only to the literal computer code F Court’s rule: “where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea”-- expression is protectable F Court holds that copyright protection of computer programs may extend beyond the programs’ literal code

13. Victor H. Bouganim, WCL, American University, Spring 2001 CLASS DISCUSSION F What does the court see as the most time-intensive and costly stages in the development of application programs? F What is the protectable expression in the Dentalab program in Whelan Case? F What is the unprotectable idea of the Dentalab program?

14. Victor H. Bouganim, WCL, American University, Spring 2001 Computer Associates Int’l v. Altai Second Circuit (1992) F Both parties marketed a computer program that performed similar functions. F Although Altai’s first version of the program had directly used significant parts of CA’s code, the second version contained no code in common with CA’s version. F Issue: how far copyright protection should be extended to the non-literal elements of a program F Court developed three stages of analysis in narrowing the scope of protection for non-literal elements: –Abstraction –Filtration –Comparison

15. Victor H. Bouganim, WCL, American University, Spring 2001 STEP 1 - ABSTRACTION F “At the lowest level of abstraction, a computer program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules. At a higher level of abstraction, the instructions in the lowest- level modules may be replaced conceptually by the functions of those modules. At progressively higher levels of abstraction, the functions of higher-level modules conceptually replace the implementations of those modules in terms of lower-level modules and instructions, until finally, one is left with nothing but the ultimate function of the program…At low levels of abstraction, a program’s structure may be quite complex; at the highest level it is trivial.”

16. Victor H. Bouganim, WCL, American University, Spring 2001 STEP 2 - FILTRATION F Elements Taken from the Public Domain F Elements Dictated by Efficiency F Elements Dictated by External Factors –Mechanical specifications –Compatibility requirements –Manufacturers’ design standards –Industry demands –Widely accepted programming practices

17. Victor H. Bouganim, WCL, American University, Spring 2001 STEP 3 - COMPARISON F After filtering out non- protected elements, examination of remaining “ core of protectable expression ” F Application of normal “substantial similarity” copyright test F Policy Considerations –Incentive for future computer program R&D –Rewarding creativity –Free use of non- protectable ideas and processes

18. Victor H. Bouganim, WCL, American University, Spring 2001 CLASS DISCUSSION F How would the Whelan case have come out under the Altai test? F Is there a more appropriate way to distinguish idea from expression with regard to application program code? F Which approach-- Whelan or Altai-- conforms better with Section 102(b) and Baker v. Selden? F Does the holding suggest that programs with relatively little protectable material can be freely copied?

19. Victor H. Bouganim, WCL, American University, Spring 2001 Protection for Functional Elements and Protocols F This set of cases involves the taking of particular pieces of a program, including attempts to “clone” a program by writing new code to create a functionally equivalent program, or attempting to reproduce an internal program interface necessary to make two programs compatible F These cases raise the issue of whether functional elements are protectable

20. Victor H. Bouganim, WCL, American University, Spring 2001 Lotus Development Corp. v. Borland First Circuit (1995) F Borland copied the Lotus 1-2-3 menu command hierarchy into its Quattro electronic spreadsheet program F Issue: whether a computer menu command hierarchy is copyrightable subject matter F Borland contends that the Lotus menu command hierarchy is not copyrightable because it is a system, method of operation, process, or procedure foreclosed from protection under Section 102(b) F The court holds that the menu command hierarchy is a “method of operation,” and thus uncopyrightable

21. Victor H. Bouganim, WCL, American University, Spring 2001 CLASS DISCUSSION F Is the holding in Lotus incompatible with Altai’s test? F Do the Altai and Lotus cases really present analogous issues? F Should a customer’s preference for a known, trusted product, such as Lotus 1-2-3, be part of the reward that a copyright owner is entitled to reap?

22. Victor H. Bouganim, WCL, American University, Spring 2001 Protection for Program Outputs: User Interfaces F Source and object code are protectable as literary works; screen displays -- the output of the computer program -- are protectable as audiovisual or pictorial works F User interfaces -- the screen displays that mediate the input to and output from a computer program, and that are governed by market standards and functional considerations F Issue: what portions of a user interface are copyrightable expression?

23. Victor H. Bouganim, WCL, American University, Spring 2001 Apple Computer v. Microsoft Corp. Ninth Circuit (1994) F Issue: whether certain minor parts of the Windows interface were virtually identical to the Apple Graphical User Interface (GUI) F Apple argued that the District Court erred in dissecting Apple’s works so as to eliminate unprotectable elements from comparison with Windows, and thus using a standard of virtual identity rather than substantial similarity F Court holds that considering the limited number of ways to express the idea of Apple’s GUI, only “thin” protection, against virtually identical copying, was appropriate

24. Victor H. Bouganim, WCL, American University, Spring 2001 Reverse Engineering - 1 F “Starting with the known product and working backward to divine the process which aided in its development or manufacture.” Kewanee Oil (1974) F Two Phases: –Disassembly or decompilation of a program in order to create human- readable source code that may be analyzed –Using the results of this analysis to create a commercially viable program

25. Victor H. Bouganim, WCL, American University, Spring 2001 Reverse Engineering - 2 EU Directive – Art. 6 F Decompilation is permitted for obtaining information to achieve inter-operability – Lawful user – Independent program – Unavailable information – Restrictions of use and information transfer USA – Case Law F Fair Use ? – CA v Altai, 2 nd Cir., 1992 – Sega v Accolade, 9 th Cir. 1993 – Sony v Connetctix, 9 th Cir., Feb 2000 F Policy Considerations – Promoting competition – Unfair competition – Public interest

26. Victor H. Bouganim, WCL, American University, Spring 2001 Sega Enterprises v. Accolade, Inc. Ninth Circuit (1992) F Accolade reverse engineered Sega’s video game programs and created its own games for sale for use on Sega’s systems. F Accolade argued that disassembly of object code in order to gain an understanding of the ideas and functional concepts embodied in the code is a fair use. F The court concludes that where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use of the copyrighted work, as a matter of law.

27. Victor H. Bouganim, WCL, American University, Spring 2001 CLASS DISCUSSION F Should courts treat intermediate copying differently from copying for compatibility in a final product? F Is standardization a valid rationale for copying? F Regarding the fair use factors, hasn’t Sega been injured because it can no longer control who produces games for its machine?

28. Victor H. Bouganim, WCL, American University, Spring 2001 Sony v. Connectix Ninth Circuit (2000) F Connectix had repeatedly copied Sony Playstation’s operating system during reverse engineering. F Because the operating system contained unprotected functional code and there was no way to reverse engineer without copying, the court afforded a “low measure of protection.” F The court held that intermediate copies of copyrighted software created during reverse engineering was a fair use. F Although intermediate copying constitutes infringement under Sega, such copying was permitted here to gain access to the functional elements of the code.

29. Victor H. Bouganim, WCL, American University, Spring 2001 SOFTWARE FAIR USE & DERIVATIVE WORKS F Ninth Circuit: –Lewis Galoob Toys, Inc. v. Nintendo of America Inc. (1992) –Micro Star v. Formgen Inc. (1998)