| Author: | Douglas C Derrick |
| Subjects: | Computer software law and legislation United States (Other articles) Copyright (Other articles) Patent laws and legislation United States |
| Issue: | Volume 3, Number 1 (May 1996) |
| Category: | Current Developments |
1. Times are changing. Of course, some things change faster than others. For example, compare the current laws protecting intellectual property and the computer software that they are trying to safeguard. Consider the changes in computer technology over the past ten years. Over the past five years. Over the past year. It is ridiculous to expect the law to keep up with such a pace. However, there should be some effort to make some changes rather than trying to place computer software into categories in which it does not fit. Actually, a diverse group of experts has written a paper which discusses these very changes and offers various solutions. The paper was appropriately called "the Manifesto."[1] It proposes an extension of the protection offered computer software. Similarly, it offers viable solutions to the gap between the existing laws and the technology.
2. In order to properly discuss these solutions, we must first examine current copyright and patent laws (Section II.) and their problems and shortcomings (Section III.) Having thoroughly considered the present situation, we can accurately discuss Elements of a Solution (Section IV.) and some actual proposed solutions (Sections V.) Finally, a brief conclusion (Section VI.) will summarize the main points of the paper and propose a course of action.
3. The current US Copyright Code[2] defines the following categories as being copyrightable: literary works; musical works, including accompanying words; dramatic works, including accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; and sound recordings. From this list, they have attempted to fit computer programs under the general category of literary works. In their report to Congress, the National Commission on New Technological Uses of Copyrighted Works (CONTU) made the following statement, "...a program is created, as are most copyrighted works, by placing symbols in a medium. In this respect it is the same as a novel, poem, play, musical score, blueprint, advertisement or telephone directory"[3]. While this is true, there are serious differences that will be discussed in detail in section III.
4. Title 17 of the US Copyright Code provides certain key protections to the copyright holders. It gives them the exclusive right to: reproduce the copyrighted work; prepare derivative works; distribute copies (rent, lease, sell, etc.); perform them publicly (in the case of literary works, dramatic works, etc.); and display them publicly (in the case of sculptured works, graphics, etc.). In the 1980 amendments to Title 17, Congress placed computer programs most squarely under copyright protection by providing a definition for them. They defined a computer program as, "...a set of statements or instructions to be used directly or indirectly in a computer to bring about a desired result"[4]. By offering such a definition, they followed a long history of trying to extend copyright protection to a new media of expression. The Computer Science and Telecommunications National Research Board made the following observation, "the framers of [the constitution] never anticipated computer software. Nor, however, did they foresee such developments as motion pictures, record albums, compact disks..."[5]. In this manner, Congress has made computer software fit under the current code. However, as we will see, it is not a clean fit.
5. Patents are defined in Title 35, US Copyright Code. The things that are patentable are defined as, "...any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"[6]. It would appear from such a definition that computer software would be patentable because they are arguably a process. While a copyright protects the expression of an idea, a patent protects the technological application of an idea in a machine or process. Patents allow the holder to exclusively make, use or sell the patented invention. In a background paper produced for Congress by the Office of Technology Assessment they concluded the following, "The availability of patent protection for software related inventions was unclear until the early 1980s...Over the past 7 years, patents have been issued for software-related inventions..."[7]. The Supreme Court decision in the case Diamond v. Diehr[8] in 1981 helped clear the way for some of software-related inventions to be patented. Although some progress has been made, it is still too unclear and uncertain to be effective. Both copyright and patent laws are ineffective and inadequate when dealing with computer software.
6. Before we discuss the problems inherent to the current laws, it is important to establish the fact that protection is important. One staggering statistic provided by the Software Publishers Association relates the global losses in 1993 to illegal copyright violations. They reported that worldwide losses at 7.45 billion dollars and 1.57 billion in the United States alone.[9] Although it is unlikely that the principles discussed in the Manifesto will immediately reduce the amount of piracy, it is important to consider how much revenue is lost to those who imitate software or who copy on large scales. The principles discussed in the Manifesto could certainly improve the law in these areas.
7. One of the major downfalls of the current copyright law is the dissimilarity between computer programs and the category that they are placed under (literary works). In the 1980 amendments to the Copyright Code, Congress affirmed that computer programs are protected by copyright law. However, they failed to stipulate how that protection applies. Unlike a novel or poem, a program is marketed in a form that is generally not understandable to people. Except for the user interface, the expression is completely hidden to the consumer. Furthermore, computer programs act. There purpose is to perform specific actions or cause those actions to take place. A novel or poem does not behave or cause a machine to behave. Another area in which the current laws fall short is in consideration of the functionality of software. According to the National Research Council, "[this functionality] further blurs copyright law's already fuzzy line between idea and expression..."[10]. Technically, idea and function are synonymous and fall under patent protection. They further stated that, "Software is perhaps the first patentable subject matter which is also copyrightable"[11]. Similarly, the Office of Technology Assessment stated it as follows, "Some observers have characterized the difficulty due to software's being 'too much of a writing to fit comfortably into the patent system and too much of a machine to fit in the copyright system'"[12]. Furthermore, as the amount of software increases (especially in artificial intelligence, interactive software, and database systems) it will become harder and harder to determine (according to current copyright standards) what is a derivative work and what is an original creation.
8. Similar to copyright law, there are many problems inherent in putting software under patent protection. First, there is an incomplete stock of "prior art" for patent examiners to study in evaluating applications for processes involving computers. In many cases, important prior art exists only in product form and is not described in print. Therefore, the published literature does not completely document all of the developments in software. Second, there are no classifications or cross-references to patents. This means that it is virtually impossible to find, and count all software-related patents. Thus, there is no effective way of searching and studying these patents. Finally, the time it takes to get a patent (usually three to five years) compared to the relatively short life span (software is almost continually being upgraded) and quick moving nature of software products makes it unrealistic to try to apply for a patent.[13]
9. University of Stanford Law Professor Paul Goldstein states, "One of the law's roles in society is to reduce uncertainty"[14]. This has not been accomplished by the current laws. Moreover, it is clear from the above arguments that there are many problems with trying to fit computer software under conventional laws. It is a different type of animal and it requires a different type of cage.
10. In their Manifesto, Pamela Samuelson (Professor of Law at University of Pittsburgh), Randall Davis (Professor of Computer Science at M.I.T.), Mitchell D. Kapor (founder of Lotus Development Corp., developer of Lotus 1-2-3), and J.H. Reichman (Professor of Law at Vanderbilt University) developed several elements that should be included in a solution to the software protection problem[15]. These elements can be broken up into four general areas. Each area (designated by a letter) and each element (designated by a Roman numeral) is listed below:
i) It must build on an existing legal foundation. Although an entirely new regime would be theoretically attractive, it probably is not feasible. The new framework should supplement existing laws without overlapping them.
ii) It must focus on the most serious problems. No legal framework can solve all of industry's problems, but it must focus on the most serious issues.
iii) It must be predictable in scope and duration of protection. In order to encourage investment and reduce litigation, the protection given must be reasonably predictable.
iv) It should flow from and be responsive to the nature of the technology protected. The protection must be geared towards that which is of true value in software, namely: behavior, the industrial designs that produce behavior and conceptual metaphors.
v) It should make legal distinctions that are technically coherent. Without this element, legal questions may be impossible to answer meaningfully when presented to technical witnesses or experts.
vi) It should be independent of the current state of technology. The framework must be capable of evolving as the technology itself evolves.
vii) It should encourage spreading of program know-how, and new applications. The regime must protect program "know-how" not by blocking access to it, but by regulating its use.
viii) It should encourage product enhancing innovations and discourage mimicking. It must allow for improvements that increases the utility at the same cost or decreases cost while maintaining utility. However, it must discourage the simple variations that are created in order to appear different in legal categories.
ix) It should encourage innovation by avoiding market failures. Innovation will arise naturally given the opportunity. It must provide a forum where the "natural selection in the ongoing breeding of innovation" can occur.
x) It should provide innovators with reasonable lead time. Products imitating an innovation should not be able to arrive faster than necessary to provide innovators with reasonable incentives to invest in new products. In order to encourage innovation, an innovator must have an unobstructed opportunity to seek market rewards before imitations can lawfully appear.
xi) The scope and duration of protection must be coordinated to the rate of change in the market. This would allow members of the technical community to adjust the legal regime so that it is attuned to the rate of development in the market and thus avoid cycles of overactive and underactive innovation.
xii) It should provide innovators an opportunity to regain their research and development costs and earn a return on this investment. This would provide the innovator with a head start in the marketplace allowing them to recoup their investment. It would also reward only productive innovations.
xiii) It should avoid wasteful reduplications of effort. This would provide a framework for software technology licensing agreements. Thus reducing efforts and spreading the cost of research and development.
xiv) It must recognize that an innovation may be separate from the specific product and must reward them separately. The market may recognize the value of an innovation even if it does not value the product in which the innovation is first implemented. These innovations should some how receive recognition and reward.
xv) It should provide incentives to agree rather than to litigate. This should create an atmosphere where innovators and those who desire to use the innovation can reach an agreement rather than to litigate.
xvi) It should be able to distinguish among the different kinds of "second comers." This would determine if second comers should have to pay a standard fee or be blocked altogether from use of the innovation. It would distinguish among the different kinds of second comers based on the market effects of their borrowing.
xvii) It should minimize the cost of obtaining protection. It should minimize bureaucracy, time and overhead expense. "The more 'self-executing' a legal regime is, the more 'market-friendly' it is likely to be." Perhaps some form of automatic protection.
xviii) It should minimize barriers to entry. Innovation in the market will most likely be improved by increasing opportunities to participate in it.
xix) It should promote consumer welfare. Innovation will occur only if there is incentive. There will only be incentive if the consumers provide it. These are the ideal conditions that should exist in an extension of the current laws. We will next discuss some solutions and compare them to the criteria.
11. There have been many experimental legal frameworks that have been suggested which meet many of the requirements that were discussed in the previous section. Five such frameworks (taken from the Manifesto) will be discussed in this section and analyzed accordingly against the previously stated elements.
12. First, we will consider the idea of "To Each According to Its Needs." This would be a flexible, individualized tailoring of the length of protection against imitators given to each innovator. This would certainly be appealing and seems to be fair. If implemented, it would insure that each innovator could earn exactly the return to justify his or her investment. Although the solution meets most of the elements discussed above, it obviously fails under element number (iii). It seems too unpredictable to be seriously considered. Furthermore, there would need to be some way to have licensing agreements in order to satisfy the criteria of elements (xiii) and (xv).
13. The second solution is the "Automatic Blockage of Cloning." This framework would provide protection from the first public marketing of a product. This fulfills many of the standards and it has many advantages such as: it is a low-cost approach; it would be predictable; it would protect against identical or near-identical copying; and the duration of protection would preserve lead time and still encourage new innovations, and competitive add-ons. Unfortunately, this type of protection is arguably too weak because similar programs (simply implemented differently) would not be considered clones and thus fail to meet the objectives in elements (ii) and (viii). Similarly, element (xi) (and possibly element (iii)) is violated because it may be difficult to determine when the period of protection has ended. Finally, there would need to be a way to license out the innovation or it fails to meet elements (xiii) and (xv).
The third framework adds to the previous approach (anti-cloning), a follow-on automatic royalty bearing license. This approach still maintains the advantages of the automatic blockage framework, while later allowing others to use the innovation and still compensating the innovator. However, this framework is impractical. For example, consider the following questions. What exactly is protected? (elements (iv) and (xiv)) How long will anti-cloning protection last? (element (iii)) How long will the license last? (element (iii)) What about varying royalty rates depending on the amount and type of use? (elements (iii) and (xvi))
The fourth framework builds upon all of the previous frameworks. It suggests that automatic protection be given for a period of two years unless the program is registered with the Copyright Office. This registration could extend the protection for ten years. This solution meets nearly all of the elements. However, after careful examination it is clear that it falls short in element (xiv). Registration could be a serious problem. What parts are protected? Or is it only protected as a whole?
The fifth solution provides the best fit to the criteria given. It incorporates the ideas of some automatic protection with a registration of innovative elements. Thus, it allows the innovator to register all or part of the new product. Registration should probably be required in the first year or two of the life span of the software, and it would allow for decisions later as to whether or not it deserves protection. Furthermore, fixed fees would encourage second comers to compensate the innovator rather than duplicate the effort. This meets all of the criteria discussed in Section IV.
Computer programs are a special type of intellectual property and they require a special type of protection. As shown above, the current copyright and patent laws provide some protection, but also have many shortcomings. Therefore, in order to insure a healthy market and to help maximize innovation, changes need to occur within the current laws. These changes must be legally and technically consistent and complete. Moreover, they must encourage innovation and protect the innovator and finally, they must insure and foster market growth. It is recommended that there should be amendments made to Title 17 of the current Copyright Code with the provisions discussed in the fifth solution discussed in Section V being added for computer software protection. By so acting, the computer industry can be healthy and happy for many years to come[16].
1. Samuleson P, Davis R, Kapor M D and Reichman J H. A Manifesto Concerning the Legal Protection of Computer Programs. Columbia Law Review. Vol 94 No 8 2308-2431. [return to text]
See Columbia Law Review Vol. 94. No. 8. December 1994 for other papers presented at the "Symposium: Toward a Third Intellectual Property Paradigm" held Columbia University School of Law 22 and 23 April 1994.
2. US Copyright Code [return to text]
3. Tunick, David C. Computers and the Law. Houston :The John Marshal Publishing Company, 1991 at 161. [return to text]
4. Tunick, David C. Computers and the Law. Houston :The John Marshal Publishing Company, 1991 at 171. [return to text]
5. Computer Science and Telecommunications Board National Research Council. Intellectual Property Issues in Software. Washington: National Academy Press, 1991 at 12. [return to text]
6. Tunick, David C. Computers and the Law. Houston :The John Marshal Publishing Company, 1991 at 104. [return to text]
7. United States. Cong. Office of Technology Assessment. Computer Software and Intellectual Property - Background Paper. 101st Cong., 1st and 2nd session. Washington: GPO, 1990. [return to text]
8. Diamond v Diehr 450 US 175 1981 [return to text]
9. Software Publishers Association. Worldwide Software Piracy $7.4 Billion in 1993. News Release. 28 March 1994. [return to text]
10. Computer Science and Telecommunications Board National Research Council. Intellectual Property Issues in Software. Washington: National Academy Press, 1991 at 24. [return to text]
11. Computer Science and Telecommunications Board National Research Council. Intellectual Property Issues in Software. Washington: National Academy Press, 1991 at 21. [return to text]
12. United States. Cong. Office of Technology Assessment. Computer Software and Intellectual Property - Background Paper. 101st Cong., 1st and 2nd session. Washington : GPO, 1990 at 11. [return to text]
13. United States. Cong. Office of Technology Assessment. Computer Software and Intellectual Property - Background Paper. 101st Cong., 1st and 2nd session. Washington :GPO, 1990 at 7-8. [return to text]
14. Computer Science and Telecommunications Board National Research Council. Intellectual Property Issues in Software. Washington: National Academy Press, 1991 at 13. [return to text]
15. Samuleson P, Davis R, Kapor M D and Reichman J H. A Manifesto Concerning the Legal Protection of Computer Programs. Columbia Law Review. Vol 94 No 8 2308-2431 [return to text]
16. Other Works Consulted [return to text]
Derrick, Dennis B. Telephone Interview. 15 March 1995.
Kutten, L.J. Computer Software. New York : Clark Boardman Company, Ltd., 1988.
Salone, M.J. How to Copyright Software. Berkeley ; Nolo Press,1989.
Software Publishers Association. Software Use and the Law. Computer Facsimile. 11 Feb. 1995.
Software Piracy Poses Global Threat. News Release. 5 July 1994.
US. Cong. Subcommittee on Technology and Competitiveness. Hearing on Copyright protection for Computer Software to Enhance Technology Transfer. 102nd Cong. 1st Sess. Washington: GPO, 1991.
US. Cong. Subcommittee on Courts, Intellectual Property and the Administration of Justice. Hearings on Computers and Intellectual Property. 101st Cong. 1st and 2nd Sess. Washington: GPO, 1991.