# Chapter Four

## Intellectual Property and the Computer

## The Limits of Copyright Protection. "Look and Feel" and Other Issues

The purpose of copyright is to protect the expressions which are used by an author (or anyone else responsible for the creation of a protected work). The underlying ideas and concepts are not protected. The distinction between unprotected ideas and protected expressions has long been explicitly recognised in the United States. For the United Kingdom, although judicial decisions are replete with dicta to the effect that "it is trite law that there is no copyright in ideas" there is no explicit statutory recognition of this situation although the European Union Directive does provide that "... ideas and principles which underlie any element of a computer program ... are not protected under this Directive" (Article 1(2)). The only reference to this provision in the implementing regulations is a provision voiding any contractual attempt to exclude an authorised user's right to "study or test the functioning of the program in order to understand the ideas and principles which underlie any element " (Section 296A(1)(c)).

Although it may be "trite law" that ideas are not protected under the law of copyright, the task of distinguishing between ideas and the manner in which they are expressed is often a difficult one. Indeed, few works will be based upon a single idea. Rather, there will be a number of ideas ranging from the extremely general to the extremely specific at which point they may become inextricably linked with the forms of expression used. Thus the idea may occur to a person that they will write a book. Certainly, this aspect of the work cannot be protected under the law of copyright. The thought process may move on to the notion that the work is to be a legal tome and that it is to be concerned with the legal response to aspects of computer-related behaviour. Here it seems certain that we are still in the realm of unprotected ideas. The next idea may concern the main categories of material to be included and the order in which it is to be presented. The creative process may move on with ideas being expressed as to the format of particular sentences and phrases until a complete text is produced the reproduction of which will constitute a breach of copyright. On this analysis, every expression represents ideas and ideas are nothing until they are expressed. The task for a court is to determine where along the creative spectrum, the protection afforded by the law of copyright should begin.

In one of the few United Kingdom cases where copyright has been refused to a written work, the Court of Appeal held in the case of Exxon Corp. v. Exxon Insurance Consultants Ltd. ([1982] Ch 119) that the single invented word Exxon[3], could not be regarded as a literary work and that another party making use of it was not guilty of infringement of copyright. Beyond this, it is generally recognised that character names and details of the plot of a literary work may obtain copyright protection. Much publicity was recently given to the publication of a sequel to the novel "Gone With the Wind". It is suggested that one of the reasons for the appearance of the work was that the period of copyright protection in the original novel was about to expire. At that time anyone could write such a sequel making use of the character names and any other elements of the original storyline[4]. By commissioning the sequel, the estate of the original author would be able to create what was effectively a new copyright.

Although character names and storylines may be regarded as the subject of copyright, the case of Green v. Broadcasting Corp. of New Zealand ([1988] 2 NZLR 490) shows that this approach has its limits. The case concerned a television programme devised by the appellant called "Opportunity Knocks". The programme was effectively a talent contest offering new performers an opportunity to appear on television. The programme was presented by the appellant. Each show followed a particular format with acts being introduced by sponsors, the appellant who presented the show using particular catch phrases. The comparative popularity of the acts with the studio audience was measured using a device referred to as the "Clapometer" whilst a postal ballot was conducted to determine the preferences of the viewing audience. The show ran for a number of years in the United Kingdom. Some time later the appellant discovered that a show of the same name, was being produced and broadcast in New Zealand utilising much the same format as the original. An action alleging breach of copyright was raised only to be dismissed by the New Zealand courts, a decision upheld on appeal to the Privy Council. In part the decision was based upon evidential failings on the part of the appellant who was unable to present any detailed scripts pertaining to the programme. Such evidence as was submitted referred to the general format of the show. As Somers J commented in the New Zealand Court of Appeals:

The scripts, as I understand them, could not constitute a dramatic work. They could not themselves be acted or performed which I take to be the essence of such a work for they were no more than a general scheme for a proposed entertainment. (p 497)

Dismissing the appeal, the Judge concluded:

Not surprisingly he (Mr Green) feels his ideas have been appropriated. But that, I am afraid, is all that has happened. Whether taken item by item or as a whole I am of opinion that the scripts as they are inferred to be from the description given in evidence did not themselves do more than express a general idea or concept for a talent quest and hence were not the subject matter of copyright. (p 498)

Concurring, Casey J made reference to an article by an American commentator which suggested that:

Formats are thus an unusual sort of literary creation. Unlike books, they are not meant for reading. Unlike plays, they are not capable of being performed. Unlike synopses, their use entails more than the expansion of a story outline into a script. Their unique function is to provide the unifying element which makes a series attractive - if not addictive - to its viewers.

Again reference was made to the sense of grievance which might by felt by a person in Mr Green's position who considered that there had been "piracy of a good entertainment idea." (p 504) "Nevertheless", he concluded:

the overall interests of society in maintaining the free exchange and ability to develop ideas must also be considered. Any extension of the defined breadth of copyright protection must be approached with caution and is probably best left to the informed decision of the legislature. ( p 504)

It is a moot point whether the presence of a detailed script making reference to the catch phrases and features of the show might have prompted a different conclusion. In the case of Harman Pictures v. Osborne ([1967] 2 All ER 324) an interlocutory injunction was sought to prevent the making of a film on the Charge of the Light Brigade whose script was alleged to infringe copyright in a book written on the subject. Given the nature of the proceedings, the precedential value of the decision is limited but the absence of any attempt by the defendant to identify sufficient alternative sources for their work to rebut the evidence of similarity was held sufficient to justify the grant of an injunction.

A relevant aspect of this case for the present work is that the nature of both the book and the film was constrained to some extent by external factors. The charge of the light brigade was a historic reality. Reference would be expected in any work on the topic to the key characters involved and to the major events. This situation may occur in many other contexts. The information in a telephone or trade directory is factual information and, at least in respect of alphabetical listings, virtually no discretion is afforded to a person seeking to compile such a work. In the United States, the Supreme Court has held in the case of Feist v Rural (111 Sup Ct Rep 1282 (1991)) that the functional constraints identified above were such that no copyright subsisted in a telephone directory as there was insufficient originality involved in its compilation. It may be doubted whether the same decision would be reached in proceedings before a United Kingdom court. Here, the requirement that a work be original has been interpreted as requiring nothing more than that it is not copied from an original source. Indeed, in the case of Waterlow Directories Ltd. v. Reed Information Services Ltd. (The Times, 11 October 1990) copyright was held to subsist in alphabetic listings of English solicitors arranged by town.

Incidents such as that at issue in Harman Pictures indicate that the exact reproduction of a protected work is not necessary in order to establish infringement. The Copyright Designs and Patents Act, restating the provisions of earlier statutes, states specifically that the making of an adaptation of a protected work, in circumstances where there may be few if any signs of literal similarities between the two works, will constitute infringement. The basic infringing act is referred to as that of reproducing the protected work or a substantial part thereof. The concept of reproduction is broader than that of copying. By moving away from the situation where copying of a work was the sole criteria for infringement, the basis of the system rests more in the element of unfair exploitation of the work of another. One of the most frequently quoted dicta in the area is that of Petersen J in the case of University of London Press Ltd v. University Tutorial Press Ltd. ([1916] 2 Ch 601) to the effect that "what is worth copying is worth protecting". Copyright infringement will typically be established by showing that a defendant enjoyed access to a protected work and subsequently produced a work which indicated that they had unfairly exploited the work. In Harman Pictures, the allegation was that the screenplay was based excessively upon one work of reference. An even more extreme case is that of Elanco Products v. Mandops ([1980] RPC 213). Here the plaintiff company held a patent in a herbicide. In marketing the product, it supplied detailed instructions for use, these being based on its research and experiences of the product and intended to ensure its maximum effectiveness. When the patent expired it was, of course, open to anyone else to produce the herbicide and this was done by the defendant. In addition to reproducing the plaintiff's product, it also reproduced their instructions. This prompted an objection from the plaintiff and resulted in the defendant making two attempts to modify the terms of the instructions. The changes made failed to satisfy the plaintiff who instituted proceedings alleging that the defendant's instructions infringed their copyright and seeking an interlocutory injunction to prevent the continued use of the instructions pending a trial.

By the time the copyright action was instituted, the defendant's instructions bore few similarities to those originally produced by the plaintiff. Nonetheless, it was held that the copyright had been infringed, Lord Justice Goff ruling that:

It may well be that if the respondents had in fact at the start simply looked at the available information ... and from that decided what they would put in their literature and how they would express it, the appellants would at least have had considerable difficulty in bringing home any charge of infringement, even having regard to the evidence, if the results had been exceedingly similar and the selection of items had been the same. But they chose, on the evidence as it stands at the moment, to proceed by making a simple ... copy, and then they proceeded to revise it. It may well be that the result produced in that way is an infringement.

Given that a patent specification serves as a set of instructions concerning the manner in which the invention is to be performed, the decision in Elanco might be criticised as marking an unwarranted extension to the duration of protection offered to a patent holder. Whilst it must be conceded that the detailed instructions for the application of the herbicide would not be contained in the patent specification, the fact that the plaintiff had enjoyed what might have been a twenty year monopoly over the commercial exploitation of the product must have limited significantly the scope and the incentive for others to conduct research in the field. On a more literary analysis, of course, it is clear that the defendant's conduct even with respect to the third draft of the instructions, could be regarded as a form of plagiarism. A difficulty with the decision in Elanco and, as we shall see, with cases involving copyright in computer programs, may come from the attempt to apply literary criteria to functional and practical works. Significant differences do exist between the two categories of work. In particular, whilst diversity of expression is desirable in a literary context, it may have the opposite effect in the realm of product instructions. Where users have become accustomed to particular instructions for a product as potentially dangerous as a herbicide, there may be undesirable possibilities for confusion and error if the product is supplied with apparently different instructions.

Although a number of English cases considered the extent of copyright protection in software at the interlocutory level, it was only in 1993 with the case of Richardson (John) Computers Ltd. v. Flanders and Chemtec Ltd. ([1994] FSR 144), that the issues were considered in a full hearing. At issue in this case was a computer program designed for use by pharmacists. The program, which was developed to run on the then popular BBC micro-computers performed a number of tasks. Principally, when the computer was attached to a printer to would automate and simplify the task of preparing dosage instructions to be supplied with medicines. The programs other major function was to assist in stock-keeping by keeping a record of the drugs dispensed. The program was marketed by the plaintiff who had also performed a significant amount of work on the original program. Subsequently, the first defendant was employed to work on the project. It was accepted that all relevant copyrights in the work belonged to the plaintiff.

The program achieved considerable commercial success. Relationships between the plaintiff and the defendant were not so fortunate. The defendant resigned from his position in although he continued to perform some work for the plaintiff as an independent contractor for a further period of time.

With the advent of the IBM personal computer one of the plaintiff's major customers expressed interest in a version of the program capable of running on this machine and which could be sold on the Irish market. Following discussions the plaintiff determined not to proceed with the project but at his suggestion the defendant was approached and agreed to perform the work. The program was completed and was sold in Ireland under the name "Pharm-Assist". The defendant subsequently contacted the plaintiff offering him the rights to market the product in the United Kingdom. These discussions proved fruitless and the defendant proceeded to market a modified version of the Pharm-Assist program. At that stage the plaintiff initiated proceedings alleging that "Pharm-Assist" infringed copyright in his original program.

Because of the fact that the programs had been developed to run on different computers, examination of the code used would have revealed few evidences of similarities. The programs did perform the same functions and had very similar appearances when operating on their respective hardware.

In the absence of any relevant UK precedent, the court placed considerable reliance upon the United States case of Computer Associates v. Altai. (982 F 2d 693 (1992)). Here, an employee switched employment between the firms commencing work for the defendants. Unknown to his new employers who put him to work on a project, he had worked on a similar project for his previous employer and had taken a copy of the relevant source code when he left their employ. He completed the task in 4 months only for it to be discovered subsequently that about 30% of the code of the second program was a direct copy from the original. The defendants accepted that this constituted a breach of copyright.

Following discovery of its employee's conduct, the defendant sought to produce a legitimate program which performed the same functions. To achieve this a new team of programmers was put together, selected because none of them had any previous experience on the project. The programmers were given a description of the facilities which were to be developed and were required to produce the programs necessary. The project took some 6 months to complete and the revised product was put on the market. In circumstances not dissimilar to those at issue in the Elanco case discussed above, these subsequent attempts to vitiate an original act of copying did not satisfy the plaintiffs who alleged that the revised version also infringed the copyright in the non-literal aspects of their program.

This argument was rejected by the District Court, a conclusion upheld by the Court of Appeals for the Second Circuit. Although it was recognised that copyright protection had to extend beyond the strictly textual form in order to avoid the situation where a plagiarist could avoid liability by making immaterial variations, it was held that the question whether infringement had occurred could be answered only after making a detailed analysis of the circumstances at issue. In particular, the court recommended the utilisation of a three stage test - referred to as the `abstraction-filtration-comparison test' in order both to identify the elements of a work which were entitled to protection and to determine whether infringement had occurred.

The first stage of the test involves the court in its own form of reverse engineering. Beginning with the complete program and its code the process should work back to the basic idea producing what might be considered a chart of the development process.

After the identification of the elements of the original program that are to form the basis of the decision, the filtration stage seeks to determine why particular elements are found in the original program and to filter out or discard those whose presence is due to circumstances which would serve to deny copyright protection. As identified by the courts in Computer Associates these might include aspects of the program whose form is dictated by reason of efficiency. In many cases, there may be a limited number of ways in which a task may be performed effectively. Also identified as factors which might be filtered out were elements of the program whose form was dictated by external factors. Particular reference was made to:

1. the mechanical specifications of the computer on which a particular program is intended to run;
2. compatibility requirements of other programs with which a program is intended to run in conjunction;
3. computer manufacturers design standards;
4. demands of the industry being serviced; and
5. widely accepted programming practices within the computer industry.

It is the filtration stage of the Computer Associates test which fits least easily into the United Kingdom system. In the United States, the merger doctrine has served to deny copyright protection where an idea can be expressed in a very limited number of ways. Such a doctrine has never formed a feature of the United Kingdom system where the only question to be determined by a court has been whether copying has occurred.

The final stage of the process entails the comparison of the remaining elements of the original program, what was referred to as the "golden nugget" of protected material against the features of the allegedly infringing program with a view to determining whether any similarities should be regarded as involving a substantial part of the original work and as having been produced as a result of copying rather than by independent creative activities.

The result of the application of this test in Computer Associates was a finding that no infringement had occurred. In Richardson, Ferris J sought to apply a modified and less technical version in which, after determining the eligibility of the program as a whole for copyright protection - a fairly straightforward matter - the court proceeded to answer the question "whether any similarity attributable to copying which is to be found in the defendants program amounts to the copying of a substantial part of the plaintiff's program?"

The first stage in this process involved an examination of the functions performed by the two programs and the manner in which these were carried out. This revealed 17 points of similarity concerning the functions performed by the two programs and the manner in which these took place. When these were subjected to more detailed examination, however, 6 of the points of similarity were considered explicable by reasons other than copying. To give perhaps the simplest illustration, both programs used the same format of date with numbers for day, month and year. Other similarities related to the manner in which the quantity to be prescribed was dealt with before the drug itself was identified. Beyond the fact that only two alternatives were available, evidence was presented indicating substantial commercial demand for the adoption of the quantity first option.

In respect of a further 8 similarities, the view was taken either that no copying had occurred or that the similarities did not constitute a substantial part of the original program. An example of the latter situation concerned the inclusion of a feature in both programs whereby the message "operation successful" appeared on the computer monitor accompanied by a double beep. Such a feature was considered lacking in "originality and cannot have required any significant skill or effort to devise it."

In the case of only 3 of the similarities was the conclusion reached that copying had occurred of a substantial part of the original program. One of these related to the procedures whereby a user could amend entries so as to correct any errors which had been made. Although the need for such a facility would exist in any program, the original routines were unusual in their nature with features that could be regarded as inefficient and misleading to the user. The fact that the later program functioned in the same manner was considered indicative of the fact that it had been copied from the original. It appears to be a feature of cases in this area that similarities of mistakes rather than of valuable features is more damaging to an alleged copyist. Overall, however, such copying as was established in this case was described as constituting "a fairly minor infringement in a few limited respects."

Allegations of copyright were again before the High Court in the case of Ibcos Computers v. Barclays Mercantile Highland Finance and Another ([1994] FSR 275) Again there was a background of the major defendant having worked for the plaintiff on the development of a software product intended for use by agricultural dealers which was marketed under the name ADS. On leaving its employment, he developed a further and competing product which was marketed under the name of Unicorn. The plaintiff alleged that sufficient features of this were copied from the original to constitute an infringement of copyright.

In determining the criteria which would be applied in determining the question whether infringement had occurred, Jacobs J was somewhat critical of the extensive references to the United States decision in Computer Associates and warned against "overcitation of US authority based on a statute different from ours." The approach to be adopted was for the court to determine whether there was a sufficient degree of similarity between the two works which, coupled with evidence of access to the original work, would establish an inference of copying. The onus would then switch to the defendant to establish that the similarities were explicable by causes other than copying. Evidence that "functional necessity" served to narrow the range of options open to the defendant would be relevant. Trivial items may well provide the most eloquent testimony. As was said in Bilhofer v. Dixon ([1990] FSR 105):

It is the resemblances in inessentials, the small, redundant, even mistaken elements of the copyright work which carry the greatest weight. This is because they are the least likely to have been the result of independent design.

In the present case, evidence was presented that the same words were mis-spelled in the same manner, the same headings were used in the two programs and both shared the same bit of code which served no useful purpose for the functioning of the program. Beyond this, there were considerable similarities at the level of the code itself. In respect of one element of the programs it was held that:

... there are 22 identical variables, 8 identical labels, 1 identical remark, 31 identical code lines and one identical redundant variable. This to my mind plainly indicates copying and enough in itself to constitute a significant part.

The court recognised in Ibcos that copyright protection must extend beyond the literal aspects of the program code to aspects of "program structure" and "design features". In the case of the former element, it was held that copyright subsisted in the compilation of individual programs which made up the ADS system. Although some differences existed between ADS and Unicorn it was held that the defendant had taken "as his starting point the ADS set and that set remains substantially in Unicorn." Although the two programs had a different visual appearance and it was recognised that "Unicorn is undoubtedly to the user a much friendlier program than ADS was at the time", the defendant, it was held had taken "shortcuts by starting with ADS and making considerable additions and modifications".