Intellectual Property Issues in Software (1991) / Chapter Skim
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2 Background to Basic Legal Issues
2 Background to Basic Legal Issues
Pages 21-42
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From page 21... ...
"Industrial designs," Reichman said, "are, to varying degrees, covered by both copyright and patent laws in all industrialized countries. Indeed, efforts to broaden copyright protection of industrial designs in the period 1900 to 1950 and the corresponding tensions this generated seem to anticipate the present tensions concerning software in almost every respect." Under the three major domains of intellectual property law, protection is awarded to software not as a class, explained Ronald Laurie, head of Irell & Manella's computer law group, but on the basis of whether a program, language, interface, or other software element 21
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From page 22... ...
94-553) , Congress confirmed its intention that copyright protection applies to computer programs, but the 1976 revision of the federal copyright law did not stipulate the manner in which the protection applied.
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From page 23... ...
I suggest that this reassuring element of predictability in the case of patent law is not as sure as you might think. Indeed, Laurie predicted that interpretation of the doctrine of equivalents is likely to spawn controversies and appeal to levels of abstraction akin to those encountered in arguments of substantial similarity invoked in copyright infringement cases involving the structure, sequence, and organization of programs.
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From page 24... ...
Expressions, Ideas, and Functions Copyright protection is extended only to expressions of ideas, not to the underlying ideas themselves. This distinction is especially critical for the software industry, where independent invention is common.
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From page 25... ...
Others would argue that the functional character of computer programs would suggest that a narrower scope of protection is appropriate under copyright law on the theory that the design of software is more akin to the engineering design for a bridge (which a copyright on a drawing would not protect) than to the design of a novel.
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From page 26... ...
"Works that have functions-in addition to conveying information or displaying an appearance have been utilitarian in a copyright sense, and hence unprotectable by copyright," she said. "Computer programs are the first truly utilitarian work to be protectable by copyright." Copyright law recognizes the "merger of expression and idea," an argument raised in many copyright-infringement cases but one that seems to have particular relevance for software.
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From page 27... ...
611. Not surprisingly, these two legal experts also disagree on the appropriateness of, arguably, the most influential decision handed down thus far on the scope of copyright protection for software, that of the Third Circuit Court of Appeals in Whelan Associates, Inc.
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From page 28... ...
The court held that "copyright protection of computer programs may extend beyond the programs' literal code to their structure, sequence, and organization." By the court's parsing of the dichotomy between idea and expression, an idea in a program is its "purpose or function"; the expression of the idea is "everything that is not necessary to that purpose or function." File and data structures, data flow, and the structure and sequence of screen displays that manifested program routines were construed as protectable expression. In endorsing the appellate court's ruling that "substantial similarity" of nonliteral elements of programs can be proof of infringement, Goldberg suggests that limiting protection only to code "would be equivalent to permitting one freely to publish a copyrighted Englishlanguage novel in an unauthorized French translation, or to dramatize it or make it into a motion picture without authorization" (Goldberg and Burleigh, 1989, p.
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From page 29... ...
However, if the Whelan decision is to be taken seriously, copyright protection and its 75 years of coverage could be extended to algorithms, Samuelson maintains, "particularly if a software copyright plaintiff's lawyer is astute enough not to call the algorithm an algorithm, but rather the structural backbone of the software." To Samuelson, copyright law's aversion to technology is manifested in the way the courts have chosen to address software-related issues. Virtually all courts have treated software entirely by analogy to literary works, ignoring its status as technology.
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From page 30... ...
Both doctrines, some observers speculate, could serve as the means to erode the scope of trade-secret protection, as well as copyright protection. Another concern is that federal copyright law will preempt state trade secret laws.
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From page 31... ...
Meanwhile, the number of softwarerelated patents awarded by the Patent and Trademark Office rose from none in 1980 to about 200 annually in recent years, according to estimates prepared for the Computer Law Committee of the State Bar of Texas (cited in Brian Kahin, "The Case Against Software Patents," unpublished paper, 1989, p.
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From page 32... ...
In theory, the monopoly grant awarded to the patent holder fosters more efficient development within industry by discouraging duplication of effort. The scope of patent protection is subject to uncertainty, however, in the guise of the doctrine of equivalents, patent law's counterpart to copyright's doctrine of substantial similarity.
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From page 33... ...
Brian Kahin, adjunct research fellow at Harvard University, argued that the late arrival of patent protection is potentially disruptive, suggesting that the virtual absence of patenting until recent years may undermine the highly decentralized structure of the software industry. "If software had clearly been protectable from the outset, there would be no surprise, no defeated expectations," Kahin has written (Brian Kahin, "The Case Against Software Patents," unpublished paper, 1989, pp.
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From page 34... ...
61. Using the somewhat equivocal guidance provided by the courts, the Patent and Trademark Office has developed an operational concept of what software elements are eligible for patents, giving rise to such terms as software-related inventions, computer processes, and computer algorithms a classification distinct from unpatentable mathematical algorithms.
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From page 35... ...
To help inventors and their attorneys, the Patent and Trademark Office recently published a legal analysis that describes a two-part test to determine whether a product or process containing an algorithm is eligible for patent protection. The test is the evolutionary product of decisions made by the Supreme Court and the CCPA (U.S.
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From page 36... ...
If the remaining process or machine qualifies as patentable subject matter, according to the court, then inclusion of an algorithm should not alter that determination. This procedure does not suggest, the Patent and Trademark Office stresses, that the inventive merits of the claim be assessed in this manner, since the entire process or machine must be evaluated to determine novelty and nonobviousness.
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From page 37... ...
Coherent or Incoherent? Meanwhile, despite the great effort expended by the courts and the Patent and Trademark Office to elucidate the nature of computer processes, some legal experts believe that the system can be manipulated to secure patent protection for mathematical algorithms.
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From page 38... ...
Rabin, a professor of mathematics and computer science at Harvard University and Hebrew University, strongly endorsed patent protection for mathematical algorithms because of their increasingly influential role in technology development. Algorithms, he said, are human inventions, not discoveries, which are unpatentable.
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From page 39... ...
Rather, protection for the technology stems from treaty wording that applies comprehensively to works of authorship. Although a WIPO initiative to develop a model law specific to the protection of software has not advanced, Keplinger said, one can "make a credible argument that the Berne Convention already requires its members to protect computer programs under copyright law, because they are generally regarded as protectable subject matter by countries that have addressed the problem." (See Box 2.2.)
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From page 40... ...
Th is would be feasible, he said, if a GArr agreement on intellectual property ultimately strengthened international arrangements covered by the Paris Convention, wh ich covers industrial property. The proposed EEC directive, which specifies how copyright protection applies to software, contains a controversial measure that, opponents contend, would "drastically limit rivals' ability to decipher software interfaces and build compatible products" (Verity, 1990, pp.
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From page 41... ...
A benefit of addressing intellectual property issues through the GAIT, Keplinger said, is the treaty's dispute-resolution process, which entails convening a panel to determine whether a member state is living up to its obligations. In contrast, disputes that arise under the Paris and Berne Conventions are referred to the World Court, which does not have enforcement powers.
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From page 42... ...
What is it that we want to protect? First .
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