Reverse Engineering in Japan and the Global Trend Towards Interoperability
| Author: | Rohan Mishra Student, School of Law, Murdoch University |
| Subjects: | Computer software law Copyright (Other articles) Reverse engineering Software protection (Other articles) TRIPS (Other articles) |
| Issue: | Volume 4, Number 2 (June 1997) |
| Category: | Comment |
A. INTRODUCTION
Software protection in Japan has developed in line with the dramatic growth and development of the Japanese software market from the 1970s to the 1980s.[1] In relation to this growth the 1970 Copyright Law [2] was amended in 1985 [3] to allow for the protection of computer software. The purpose of my essay is to examine the Copyright Law of Japan in relation to reverse engineering of computer software. I will be proposing that Japan views computer software as an economic asset meant to contribute to the development of its industrial economy as opposed to the development of culture.[4] Thus, since reverse engineering plays a major role in software development, it is regarded as a lawful act in Japan. This attitude towards computer software is based on MITI's (Ministry of International Trade and Industry) industrial policy towards high technology, which is reflected in its 1984 report on computer program protection.[5] The benefit of the Japanese approach is that it provides an alternative to the way software can be regarded under copyright law. The Japanese approach involves the policy that the ideas underlying software should be freely disseminated and one way to achieve this is to make reverse engineering a legal act. I will also be exploring other jurisdictions like the US and the EC where reverse engineering has become a legal act in certain circumstances. Because of this trend towards recognising reverse engineering as a legal act, I will be recommending that there should be a uniform law using a forum like TRIPS (Trade-Related Aspects of Intellectual Property Rights) in countries in regard to reverse engineering.
B. MITI - INDUSTRIAL POLICY AND SOFTWARE
Chalmers Johnson argues that MITI's policies have played a key role in spurring Japan's development.[6] MITI has always been able to develop policies via negotiations and compromises between the public and private sector. The development of Japan's software industry is such an example. Clapes in his book on computer software states that one of the first real industrial policies of Japan directed at the computer industry concerned reverse engineering.[7] In the early 1970's MITI developed a strategy that required Japanese electronic firms to pursue large American firms to discover what they were doing in regard to computer software.[8] This was primarily accomplished by MITI providing half the research and development costs (R&D) associated with improving and developing Western ideas.[9]
To promote this policy of providing R&D funding to develop techniques like reverse engineering the government passed laws to provide grants for the establishment of research sections in companies.[10] In addition, during the 1970s and 1980s when Japan's software industry was beginning to expand MITI provided subsidies in the form of monetary grants and government scientists and engineers. The earliest of these subsidies (1972-76) was the formulation of the Technology Research Association of Advanced Computers,[11] which aimed at developing mainframe processors. The second, the Research Association (1976-79),[12] led to the successful development of large-scale integrated circuits. The third, the Computer Technology Research Association (1979-83),[13] concentrated more on software. This focus on computer software arose because MITI recognised that software, as opposed to hardware, was the most critical component of the computer industry.[14] In all of these three periods reverse engineering played a large role in enabling companies to learn about software technology from different countries.
C. HISTORICAL DEVELOPMENT OF SOFTWARE PROTECTION
Before the 1985 amendments there had been much debate on how computer software was to be protected. As far back as the early 1970s both MITI[15] and the Agency of Cultural Affairs' Copyright Council[16] had addressed this issue. MITI's report indicated that computer software could be protected under the current Copyright Law. However, the report suggested that a suis generis law for computer program protection could also be implemented.[17] The Agency's report indicated that the Copyright Law should be amended to include computer software but that a new law was unnecessary.[18] However, neither of the recommendations in the two reports was implemented by the government. This was because at this time computer hardware was seen as much more important than computer software.[19] It was not until the 1980s, when an increase in the demand for software combined with judicial interpretation of the Copyright Law, that the law was amended.
Judicial Interpretation of the Copyright Law
While the government debated how it was going to deal with the protection of computer software, three court decisions held that computer programs were works of authorship entitled to copyright protection.[20] In Taito K.K. v K.K. ING Enterprises[21] the defendant converted its customers' video games into the plaintiff's "Space Invader Part II" machines by copying the program contained in the read only memory. The defendant argued that the use of the program was not an infringement of the Copyright Law because computer programs were not included in the list of works protected under the law. The court, for the first time, recognised that the plaintiff's computer program in object code was a creative expression based on the scientific thoughts of the creator and was therefore a work of authorship under the Copyright Law.[22]
A second case, Taito K.K. v Makoto Denshikogyo K.K.[23] also found that a computer program was a creative expression of the plaintiff's thoughts which fall into the scientific domain and was therefore a work of authorship entitled to copyright protection.[24] These cases firmly established that protection was to be given to computer programs under the existing law and led MITI and the Agency to prepare drafts for proposed amendments to the Copyright Law.
Debate between MITI and the Agency on Software protection
It was during the 1980s that a debate raged as to which of the two proposals should be adopted. The proposal by MITI reflected its own industrial policy towards computer software as an economic asset for the purpose of developing the industrial economy. MITI felt that computer software should be dealt with under a suis generis law which was to be called the "Program Rights Law."[25] The proposal called for 15 year protection as opposed to the current 50 years under the existing Copyright Law.[26] Because of MITI's belief that software protection is different from traditional copyrightable material it felt it would be against public policy to grant excessive copyright protection. Thus MITI moved away from traditional copyright principles by advocating a compulsory licensing system. MITI also believed that moral rights were inappropriate for computer programs.[27]
The other side to the debate was the Agency's proposal that leaned in favour of following the world wide trend of using copyright law as the primary tool of protection.[28] The report followed the recent cases in concluding that a computer program is protectable because it falls into the category of science and technology.[29] The Agency's report also said that computer programs were used in various areas of human life and thus their creation and improvement would lead to the development of culture which is the stated objective of the Copyright Law.[30] The Agency also proposed to keep the 50 year protection clause and was against compulsory licensing. The strongest argument against MITI's "Program Right Law" was the world wide trend towards using the existing framework of copyright law, as opposed to creating a separate regime.[31]
Both MITI and the agency submitted their bills for legislative action but MITI's Program Rights Law ran into strong opposition from the United States government and the European Community. At that time MITI was a more powerful body than the Cultural Affairs Agency. However, because of the strong international pressure, especially from the US, the Agency's proposal of amending the Copyright Act in order to protect computer programs was reflected in the drafting of the 1985 amendment of the Copyright Act. The US was primarily concerned with the reduced period of protection and the compulsory licensing clauses under MITI's proposal. Some commentators argue that the US was merely trying to fortify its position as a world leader in computer software by making sure that US programs were protected on a similar basis throughout the entire world.[32] However, MITI is still able to promote its concept of software being an economic asset by having a major role in all intellectual property debates, especially in regards to negotiations with Japan's trading partners.[33] Furthermore this approach is reflected in the position of reverse engineering in Japan.
D. REVERSE ENGINEERING AND INTERNATIONAL COPYRIGHT LAW
Reverse engineering is described as "...the industry's term for the analysis of a competitor's program by examining its coding and structure in order to develop programs which either compete with the program which has been analysed or interface with that program."[34] The term reverse engineering encompasses the decompiling or disassembling of the object code into a readable source code right up to the development of a new program based on the ideas revealed by decompiling. Decompiling is only a part of reverse engineering but is the key process as it reveals the ideas behind the computer program.
Before I examine the differing jurisdictions, decompilation has to be reconciled with existing copyright doctrine. Making a copy of the object code constitutes a breach of the exclusive rights of the copyright holder under article 9(1) of the Berne Convention.[35] However, article 9(2) states that reproduction can occur in "certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author."
Reconciliation with the three elements of article 9(2)
Since copyright is about the protection of an expression of an idea as opposed to the idea itself, and decompilation is necessary to gain access to these non-protected elements in the programme, it can be argued that the copying of the object code is done as a "special case".[36] As to the second element, the term "normal exploitation" in regard to decompilation refers to the copyright holder's right to supply copies of the program. Decompilation does not conflict with this right as the copy made is an "interim copy" which will not be released to the public, and will only be used to create an independent program.[37]
Finally, the Berne Convention's element of not unreasonably prejudicing the rights of the author could be seen as an extension of the second element. For example the moral rights of the author should not be jeopardised. Again, since we are only dealing with an interim copy, decompilation will not conflict with this element of article 9(2).[38]
Decompiling under Japanese Copyright Law
Much of the discussion on decompiling and copyright is dealt with primarily by commentary as opposed to case law. However, as Japan is a civil law system it is not unusual for legal principles to be developed by commentary as well as case law. The general consensus is that decompiling is permitted under Japanese copyright law. However, it is also held that if one uses decompiling to create a program which is substantially similar in expression to the original program, the fact that decompiling was used will not change the fact that the program is infringed.[39]
One popular theory regarding the legal basis for reverse engineering is that to disallow it would be inconsistent with article 1 of the Copyright Law, which provides that the purpose of the law is to secure the protection of the rights of authors "having regard to a just and fair use of these cultural products." The difficulty with this theory is that, while article 1 seems to refer to a general principle of fair use, articles 30 - 47 indicate specific permitted uses of copyrighted works. It would seem that the fair use provisions are restricted to certain areas, unlike the broad concept of "fair use" under section 107 of the US Copyright Act.
However, it has been argued that articles 30 - 47 are not exclusive on the permitted use of copyright works under fair use and that factors such as those stated in section 107 of the US law may be considered in allowing other fair uses.[40] Thus decompiling would be allowed via the recognition of some kind of fair use principle that is not explicit in the statute.[41] However, this seems to be an excessive stretching of the interpretation of the Japanese Copyright Law. There is simply no indication, except for the brief reference in article 1, that "fair use" under Japanese copyright law extends beyond the stated exceptions in articles 30-47 and is similar to the concept of "fair use" under s107 of the US Copyright Act.
Another, rather stronger, theory relates to article 47, one of the 1985 amendments, that might allow for decompiling by analogy. Article 47bis(1) allows the owner of a program to make copies and adaptations of computer programs "to the extent deemed necessary for the purpose of exploiting that work in a computer..." While this article only applies to copies and adaptations it does not state that it is exclusive on the issue of fair use copying of software.[42] This article allows for the owner of a program to make a legitimate use of her program in a particular set of circumstances even if the use involves restricted acts. It can be argued that decompiling is analogous to a legitimate use because it aids in the development of ideas which are already in the public domain in copyright law. By prohibiting decompiling one would be prevented from discovering the ideas in a program granting the copyright holder a monopoly on those ideas. This would violate the copyright principle that copyright law should not protect ideas.[43]
In addition, if one were to argue that article 47bis(1) was exclusive on the issue of legitimate use or fair copying, so that extracting unprotected elements from a program was prohibited, this would create an inconsistency with article 10(3). The statute is clear that copyright does not extend to program languages, rules or algorithms. Thus, to hold that decompiling should be prohibited would be inconsistent with this article.[44]
Based on the commentary presented it would seem arguable that decompiling is allowed in Japan. Decompiling has also been touched on by the case of Microsoft Corp v Shuuwa System Trading K.K.[45] In this case the defendant decompiled the plaintiff's BASIC Interpreter into a form of source code, added his own labels and explanatory comments and then published the results in a book that was commercially distributed.[46] The court stated that this constituted infringement of the plaintiff's copyright.
Considering the fact that the defendants did decompile the object code into source code, and that the court did find an infringement had occurred, some commentators have cited this decision as holding that decompiling is an act of copyright infringement. This case was cited during the debate on the EC Directive as authority that reverse engineering was illegal in Japan. I believe this conclusion is incorrect.[47] A more accurate interpretation of this case is that it holds the entire series of acts, from disassembly through to the final publication, constitute a copyright infringement.[48] A major factor in holding the defendant's liable was that they reproduced the plaintiff's entire source code in the published manual. This differs from the US cases that I will discuss later. In these cases the source code that was decompiled was never released to the public or slavishly copied in the final program. In the Japanese case even the plaintiff's lawyer stated that the legality of reverse engineering was never a direct issue.[49]
This Japanese decision can be seen as affirming that if one uses decompiling to create a program or published work that is substantially similar in expression to the original program, the use of decompiling does not change the fact that copyright in the program is infringed. However, the term "substantially similar" was not defined. This interpretation would bring this case in line with the development of law in the US and the EC, where decompilation is allowed for the purpose of achieving interoperability, as long as the final product is not substantially similar to the original.
On July 22 1993 the Cultural Affairs Agency announced that they were considering amending there Copyright Act to allow software developers to decompile computer software. However, the Agency backed down due to considerable US pressure. The US government maintained its protectionist position to computer software. This is despite the recent US Federal court decisions in Sega v Accolade[50] and Atari v Nintendo[51] affirming that decompilation constituted a fair use in limited circumstances.
Other Jurisdictions: The European Community and the United States
Other jurisdictions like the US and EC have changed their law to allow for decompilation in restricted circumstances. From this we can see two approaches - a restrictive approach advocated by the EC, and a wider approach driven by the US courts.
The European Community (EC)
On 14 May, 1993 the EC produced the European Council Directive on the Legal Protection of Computer Programs.[52] The aim of the Directive was to harmonise EC copyright law with respect to computer programs,[53] and one of its key features is the allowance of a rightful possessor[54] of software to reverse engineer (decompile) it to achieve interoperability.[55] While this Directive can be interpreted as a move towards the harmonisation of member states in regard to computer software, by allowing for decompiling, the EC can also be seen as recognising that computer software plays a role in its industrial economy. This is reflected in the preamble, which states, "...computer program technology can accordingly be considered as being of fundamental importance for the Community's industrial development."[56]
However, there are some restrictions on the right to decompile. Decompilation is only allowed where "the information necessary to achieve interoperability has not previously been readily available..."[57] Interoperability is defined as "the ability to exchange information and mutually to use the information which has been exchanged."[58] Decompilation is also not allowed to "be used for goals other than to achieve the interoperability of the independently created computer program."[59] Finally, the right is limited to obtaining the information which, in article 6(2)(c), may not then "be used for the development, production, or marketing, of a computer program substantially similar in its expression" to the original program.
This final proposition in article 6(2)(c) seems to be problematic. If achieving interoperability is the only purpose for which a program can be decompiled it would follow that the use of decompiled information for any other purpose would be forbidden resulting in no need for article 6(2)(c). Since the very nature of interoperability lends itself to creating compatible software it would also follow that programs created via the decompiling process may be similar to the original. Thus, article 6(2)(c) seems to place further restrictions on the right to decompile set out in s6(2)(a). A further problem is that article 6(2)(c) does not define the term "substantially similar".
Article 6(2)(c) of the EC Directive is similar to the ruling in the Microsoft case which it was held that if decompiling is used to create a program that is substantially similar in expression to the original program, the fact that decompiling was used will not change the fact that an infringement has occurred. Like the EC, the Japanese court also seems to be indicating a more restrictive reading of decompiling, to permit it only for the purpose of achieving interoperability, so as to deter "free riders" from using decompiling to merely copy software. However, neither the EC directive nor the Japanese courts offer a definition of "substantially similar" in the context of decompilation.
The United States
In the US there seems to be a divided position on decompiling. The Federal Government still maintains a protectionist policy,[60] reflected by its strong reaction to Japan's suggestion in 1993 that it may amend its laws to allow for decompiling, while the courts have used the "fair use" provision in their copyright law to allow for it. I have termed the US approach the wide approach because there is no specific language in the cases that indicates that decompiling is to be restricted to the purpose of achieving interoperability.
The first case, Sega Enterprises Ltd. v Accolade, Inc.[61] dealt with Accolade's decompilation of Sega's video cartridges to gain an understanding of the lock that was to be placed on a new entertainment system that would only allow Sega cartridges to work on it. The aim was to determine the contents of this lock so Accolade could create software that could interface with a Sega machine. The Ninth Circuit, on appeal, held that when someone lacks access to unprotected elements of an original work, like the ideas behind it, and has a "legitimate reason"[62] for accessing those elements, disassembly of a copyrighted work is considered to be a fair use under section 107 of the Copyright Act.[63] The court recognised two conditions that had to be satisfied for decompilation to be seen as a fair use. First, there should be no other means of access to the non-protected elements, and secondly, there has to be a legitimate reason for gaining access. The court held, in regard to the first condition, that because object code can only be understood by decompilation no other means of access existed. Secondly, it held that the decompilation of software to understand functional requirements for compatibility is a legitimate reason for decompiling. Thus the court held that decompilation for achieving interoperability is a fair use under the Act.
The court stated that, "It is precisely this growth in expression, based on the dissemination of other creative works and the unprotected ideas contained in those works, that the Copyright Act was intended to promote."[64] The court is acknowledging that the development of software requires the dissemination of the ideas contained in existing works. The court also said that to refuse someone the opportunity to create an interoperable product would be allowing existing manufacturers to monopolise the market, making it impossible for others to compete.[65]
Similar reasoning was employed in Atari Games Corp v Nintendo of America, Inc.[66] The facts were similar to the Sega case, with Atari decompiling Nintendo games to make their own software interoperable with Nintendo. However, Atari lost this case because after they had unsuccessfully tried to decompile the Nintendo authorisation code, they sent their lawyers to the Copyright Office to obtain a copy of the Nintendo source code under false pretences. The court came to the same result as Sega, but it focused more on policy grounds than an examination of section 107.[67] The court also recognised that decompiling should not be used for creating a product that is substantially similar to the original product.[68]
While both these decisions concluded that decompilation could be a fair use in certain circumstances, because only the Sega case engaged in a detailed examination of s107, it is the case more likely to be relied upon. The case adopts a wide approach to decompilation as there is nothing in the case that restricts decompilation for the purpose of achieving interoperability. As long as decompilation is the only means of gaining access to the program, and there are legitimate reasons for examining the unprotected elements, then decompilation can be used for purposes other than achieving interoperability. Perhaps the best justification for this wider approach is the nature of section 107, which provides for an analysis of fair use on a case by case basis.
E. UNIFORM LAW FOR DECOMPILING
Japan, the EC and the US courts have recognised the importance of accessing the unprotected elements of the program by allowing for decompiling. Thus it would seem beneficial to bring the copyright laws of countries into harmony and to create some certainty as to the scope of decompiling. The issue of decompiling should be dealt with as a specific fair use exception for the purpose of achieving interoperability. I would advocate following the EC model, which gives a balanced approach to decompilation. This is in line with the law in other jurisdictions like the US and Japan. Like the EC the US cases have allowed decompilation for the purpose of interoperabilty and the Japanese position can be interpreted in a similar light. In addition in Australia it has been recommended that the Copyright Act (1968) be amended to allow for decompilation be used for the purpose of achieving interoperability.[69]
I would further restrict decompilation, as article 6(1)(b) of the EC Directive does, if the information necessary to achieve interoperability is already available. This is also advocated in the Sega case where one of the conditions for allowing decompilation is that no other means of accessing the information be available. However, unlike the EC law, I would not have the law state that decompiling cannot be used to create substantially similar programs. From the fact that the law states that decompilation can only be allowed for achieving interoperability it would follow that the use of decompiled information for anything other than interoperability would be illegal. There is no need to have a provision which further restricts the use of decompiling by requiring that the final product cannot be substantially similar to the original. This approach would still restrict the scope of decompiling avoiding the problem of the "free rider" which would hopefully appease countries (especially the US) and parts of the industry that are against the legalising of decompilation even for restricted purposes.
F. CONCLUSION
We have seen that in Japan computer software is seen as an economic asset for the benefit of the industry which is a reflection of MITI's industrial policy in this industry. Reverse engineering (decompiling) has played a large part in the advancement of the Japanese industry ,which probably explains why it is seen as a legal act even though there is no mention of it in Japan's Copyright law. This approach towards decompiling and software seems to be growing in other jurisdictions like the EC, the US and even in Australia. Since there seems to be a growing trend I have argued that a uniform law should be implemented following the EC provisions but with certain revisions. This would allow for decompiling for the sole purpose of achieving interoperability. The implementation of this law should be in the form of a specific fair use exception, thus reconciling decompiling with copyright doctrine. A universal law would also contribute to the trend of harmonising world intellectual property laws and at the same time finally clarifying the legality of decompiling in Japan.
NOTES
[1] According to a report completed by the Agency of Cultural Affairs (the administrative organ of the Ministry of Education which administers Copyright law) there were only 14,806 computers operating in Japan in September 1972. By March 1983 this had grown close to 128,000. See Cultural Affairs Agency, Report of the Second SubCommittee (Computer Related) of the Copyright Council (June 1973) and Cultural Affairs Agency (Agency Report I), Interim Report of the Sixth SubCommittee (Computer and Software Related) of the Copyright Council (Jan 1984) (Agency Report II), quoted to in Judith Welch and Wayne Anderson, "Copyright Protection of Computer Software in Japan," (1991) 11 Computer Law Journal p 287.
[2] Copyright Law (Chosakuken Ho), Law No. 48, 1970. This 1970 act replaced the 1899 Copyright Law which was enacted when Japan joined the Berne Convention in 1899.
[3] Law amending in Part the Copyright Law (Chosakuken Ho no Ichibu o Kaiseisuru Horitsu), Law No. 62, 1985. The law became effective on January 1, 1986.
[4] Tohuru Nakajima, "Legal Protection of Computer Programs in Japan: The Conflict between Economic and Artistic Goals,"(1988) 27 Columbia Journal of Transnational Law p148.
[5] Towards the Establishment of Legal Protection of Software: Interim Report (Sofutowea no Hoteki Hogo No Kakuritsu o Mezashite: Chukan Toshin) 5 December 1983. This report is often referred to in articles as "MITI Report II".
[6] Chalmers Johnson, MITI and the Japanese Miracle: The Growth of Industrial Policy, 1925-75 (Stanford: Stanford University Press, 1982).
[7] Anthony Lawrence Clapes, Softwars The Legal Battles for Control of the Global Software Industry (London: Quoron Books, 1993), p 169.
[8] Ibid, p.169. One of the major US firms targeted was IBM. This is discussed at length in, Marie Anchordoguy, Computers Inc. Japan's Challenge to IBM (Cambridge, Mass.: Harvard University Press, 1989).
[9] Japan concentrated much of its R&D efforts on improvement and adaptation of existing products and processes, Edwin Mansfield, "Intellectual property rights, technological change and economic growth," in Charles E Walker and Mark A Bloomfield (eds), Intellectual Property Rights and Capital Formation in the Next Decade (Lanham: Lanham University Press, 1988), pp 3-26. Also see Fumio Kodama, Analyzing Japanese High Technologies: The Techno-Paradigm Shift (London: Pinter Publishers, 1991).
[10] Research Association Law (Kokogyo Gijutsukenkyu Kumiai Ho), Law No.81, 1961. More recently on 8 November 1995 a bill was passed called The Science and Technology Basic Law which requires the government to provide funding for: promoting science and technology, maintaining researchers, improving research facilities and promoting international exchange.
[11] Subsides totalled Y62.1 billion, H J Welke, Data Processing in Japan (Amsterdam: North-Holland Publishing Company, 1982), p 22.
[12] Subsidies totalled Y30.54 billion, ibid, p 22.
[13] Total funding amounted to Y23.5 billion, ibid, p 22.
[14] Clapes, supra, no 7, p 170.
[15] Interim report of the Committee to Study Legal Protection of Software (Sofutowea hoteki hogo chosa iinkai chukanhokokusho), May 1972. (MITI Report I)
[16] Agency Report I, supra, no 1.
[17] Nakajima, supra, no 4, p 145.
[18] Ibid, p 145.
[19] Ibid, p 146.
[20] Teruo Doi, Intellectual Property Protection and ManagementÐLaw and Practice in Japan(Tokyo: Institute of Comparative Law Waseda University, 1992), p 103. This chapter was originally published as "Computer Technology and Copyright: Legislative and Judicial Developments," (1987) 8 Michigan Yearbook of International Legal Studies pp 3-24.
[21] 1129 Hanrei Jiho 120 (Tokyo District Court. September 28, 1984).
[22] Doi, supra, no 20, p 103. Article 2(1), Copyright Law defines "works of authorship" (chosakubutsu) as "productions in which thoughts or emotions are expressed in a creative way and which fall in the literary, scientific, artistic or musical domain." Whether or not the matter in dispute is a work of authorship protectable under copyright is to be determined by the court, Teruo Doi, The Intellectual Property Law of Japan (Maryland: Sijthoff & Noordhoff, 1980), p 202.
[23] 1081 Hanrei Jiho 125 (Yokohama District Court, March 30, 1983).
[24] Doi, supra, no 20, p 104. The third case which continues with this reasoning is Konami Kogyo K.K. v K.K. Daiwa 1106 Hanrei Jiho 134 (Osaka District Court, January 26, 1984).
[25] For a translation of the law see Doi, supra, no. 20, p. 100. For a detailed analysis of the proposed law see, Nakajima, supra, no 4, pp 148-152.
[26] Article 52(1).
[27] Nakajima, supra, no 4, p 152.
[28] Dennis Karjala, "Lessons from the Computer Software Debate in Japan," (1984) Arizona State Law Journal p 55.
[29] The Copyright Law states that a copyright work is any product in which its creator's thoughts or sentiments were expressed creatively and which belong to the category of literature, science and technology, art or music, article 2(1)(i).
[30] Nakajima, supra, no 4, p 152.
[31] The report observed that during the 1983 meeting of the Committee of Experts on Legal Protection of Computer Software of the World Intellectual Property Organisation (WIPO), it was agreed that international protection of computer software could be accomplished within the existing framework of international copyright conventions. WIPO did create a suis generis law for the protection of computer software but it was never followed due mainly to the logistics of implementing it in each country, ibid, p 153.
[32] Ibid, p 157. The US in return argued that MITI was trying to further its "IBM-compatible" policy by allowing Japanese industry easy access to software.
[33] MITI has created the "Intellectual Property Policy Office" within the ministry which studies problems related to intellectual property including, industrial property rights, copyright, trade secrets and reverse engineering of computer programs.
[34] Gerald Dworkin, "The Concept of Reverse Engineering in Intellectual Property Law and its Application to Computer Programs," (1990) 1 The Intellectual Property Law Journal p 164.
[35] Its most recent version is the Paris Act of 1971.
[36] W R Cornish, "Computer Program Copyright and the Berne Convention" (1990) 4 EIPR p 129.
[37] Ibid, p 130.
[38] Ibid, p 130.
[39] Edward G Durney, "Protection on Computer Programs under Japanese Copyright Law," (1991) 9 UCLA Basin Law Journal p 42, Microsoft Corp v Shuuwa Trading K.K. 1219 Hanrei Jiho (Tokyo District Court, January 30, 1987).
[40] Abe, "Example Where Copyright was Recognised in Source Programs (Operating System Program)" 1247 Hanji (1987), p 205 [in Japanese] referred to in ibid in note 76.
[41] This argument is also followed by Professor Nakayama of Tokyo University, one of the leading intellectual property scholars of Japan, N Nakayama, The Legal Protection of Software [in Japanese] quoted in Karjala, "Copyright Protection of Computer Software in the US and Japan: Part II" (1991) 7 EIPR p 235.
[42] Karjala, ibid, p 235.
[43] Durney, supra, no 39, p 44. He refers to Miki, "Currents In Intellectual Property Rights (Part 2), 929 Juristo 69 (1989) [in Japanese].
[44] Karjala, supra, no 41, p 235.
[45] 1219 Hanrei Jiho 48 (Tokyo District Court, January 30,1987). Translated into English in Durney, supra, no 39, pp 51-70.
[46] For more background on the case see, Clapes, supra, no 7, pp 171-176.
[47] Dennis Karjala, "The First Case on Operating Systems and Reverse Engineering of Programs in Japan," (1988) 6 EIPR p 172.
[48] Nakayama, supra, no 41, pp 131-132.
[49] "In the [Microsoft] case I argued, as the plaintiff's attorney, that the act of reverse assembly is an act of unauthorized copying when you consider together all the acts defendant Shuuwa carried out of reverse assembling the plaintiff's program, creating a source code listing, and then publishing it as a book, and the court accepted this argument. Therefore, it is clear that the court did not categorically hold that all acts of reverse engineering are acts of unauthorised copying..." Miki, "Currents in Intellectual Property Rights (Part 1) 928 Juristo (1989) p 79, quoted in Durney, supra, no 39.
[50] 977 F2.d 1510 (9th Cir. 1992).
[51] 975 F.2d 832 (Fed. Cir. 1992).
[52] Council Directive on the Legal Protection on Computer Programs, Council Directive 91/250, 1991 O.J. 42.
[53] Ibid, preamble, paragraph 4.
[54] "[L]icensee or...another person having a right to use a copy of a program...," ibid., article 6(1)(a).
[55] During the lobbying that occurred when this directive was being formulated it is interesting to note that the major push to allow decompiling was done by a Japanese company, Fujitsu, see Clapes, supra, no 7, pp 125-137.
[56] EC Directive, supra, no 51, preamble, paragraph 3.
[57] Ibid, article 6(1)(b)
[58] Ibid, preamble paragraph 12.
[59] Ibid, article 6(2)(a).
[60] This protectionist position is due the heavy lobbying of groups like the Business Software Alliance (BSA) which comprises of companies like Microsoft and IBM.
[61] 977 F.2d 1510 (9th Cir. 1992).
[62] Ibid, p 1514.
[63] Ibid, p 1514.
[64] Ibid, p 1523.
[65] Ibid, p 1524.
[66] 975 F.2d 832 (Fed. Cir. 1992).
[67] Ibid, p 843.
[68] Ibid, pp 845-846.
[69] See Copyright Law Review Committee, Computer Software Protection (Canberra: National Capital Printing, 1995), pp 145-180