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\title{Overview of Recent Developments\\
in Copyright Protection for Software}

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
\author{ Bradley J. Hulbert\\
Allegretti \& Witcoff, Ltd.\\
Chicago and Boston}

\date{}

\maketitle

\section{Introduction}
 
     Section 106 of Title 17 of the United States Code prohibits the
unauthorized preparation of ``derivative works based upon ... copyrighted
work.''  Copyrights, unlike patents, protect against copying.
\footnote{
     Patents, in contrast, protect against the unauthorized making,
using, or selling of a patented invention.  Thus, if an inventor
independently develops an invention that is clearly within the
boundaries of a claim of a valid and enforceable patent, the making,
using, or selling of the device by the second inventor is prohibited.
This prohibition exists regardless of whether or not the second inventor
made the later device independently or by copying.  If the second
inventor did make the infringing device through copying, however, courts
may, for example, award treble damages.

The U.S. Supreme Court has decreed that most computer programs are
protectable by patents in the landmark decision Diamond v. Diehr, 450
U.S. 175 (1981).  See generally, Hulbert, Special Considerations for
Obtaining and Litigating Software Patents, 4 Software Law Journal 1
(1990).  The liability of the independent software developer for
infringement has caused increasing concern.  See, e.g., Software Flood
the Patent Office, Infoworld at p. 43 (Sept 30, 1991).
}
Two
authors may properly create and use virtually the same work, if they
create their works independently.  However, when one work was prepared
before the other, the author of the second work had access to the prior
work, and the works are substantially similar, the courts may infer the
later work is an impermissible ``derivation'' of the prior work.

Much recent litigation regarding copyrights for software centers on
whether or not a later-developed program, which has no statements or
elements which are literally the same as those in a prior program, may
nonetheless be a ``derivative work.''  When required to decide whether a
later-developed program was impermissibly ``derived'' from a previous
work, courts often face a difficult task.  Most judges and jurors have,
at best, only a rudimentary understanding of programming languages.
Accordingly, they must depend upon the testimony of paid experts
regarding whether or not the structure, sequence, and operation (or
``look and feel'') of two programs are ``substantial similar.''
The courts
have adopted a variety of analytical techniques for determining whether
a later program is a non-literal, but impermissible, copy.  Four major
techniques used by the courts are discussed below.
 
\section{Analytical Approaches of the Courts}

\subsection{Distinguishing between an idea and an expression}
     Section 102(b) of Title 17 provides that only expressions of ideas,
rather than ideas themselves, are proper subject matter for copyright
protection.  Thus, in deciding whether a second work is an impermissible
copy, courts frequently look to whether the ``ideas'' or ``facts''
have been
misappropriated or whether the ``expressions'' of the ideas or facts have
been appropriated.
     
     For example, earlier this year, in Fiest Publications v. Rural
Telephone Service Co., Inc., 111 S Ct 1282 (1991), the U.S. Supreme
Court decided a landmark ``fact vs. expression'' case.  the defendant,
Rural telephone, had produced a white pages telephone directory, listing
the name, address, and telephone number of the residents in a community.
The plaintiff, Fiest, was alleged to have infringed the copyright on the
telephone directory by copying some of the names, addresses, and phone
numbers listed in the defendant's directory in order to publish its own,
competing directory.
    
    The U.S. Supreme Court reinforced that ideas and facts themselves
are never copyrightable.  The Court confirmed that a work must be an
original work of authorship to qualify for copyright protection.  No one
may claim originality as to facts, since facts do not owe their origin
to an act of authorship.

Court held in Fiest that the actual names, addresses, and telephone
numbers of the persons in the community are uncopyrightable facts, and
found Fiest not liable for copyright infringement.  The Court made
clear, however that the particular selection and arrangement of facts in
a directory may indeed be copyrightable subject matter.

When applied to copyright protection for software, the Supreme
Court's reasoning in Fiest indicates that the raw information in data
bases may not be protectable.  However, the format in which those basic
data are arranged and the selection of particular data which are useful
to a user may indeed be copyrightable.

Similarly, the idea of using a spread sheet itself is not
copyrightable.  Nonetheless, the particular format and sequences used
may be protected by copyright.

While the ``idea versus expression'' formula may assist in the most
obvious cases, the distinction between ideas and expressions is often
murky.  For example, a computer program subroutine to speed the
operation of the computations may be considered both an ``expression'' of
how a programmer wants a particular program to perform and an ``idea'' to
enhance a computer's capability.  Accordingly, other courts have
expressed their reasoning differently.
 
\subsection{The Wheland test:  What is necessary to the ``purpose or
function'' of the program.}

In Wheland Associates v. Jaslow Dental Laboratories Inc., 797 F.2d
1223 (3rd Cir 1986), the Court of Appeals for the Third Circuit
expressed the ideas versus expression dichotomy somewhat differently,
stating:


\begin{quote}
               The purpose or function of a utilitarian work would be in
               the work's idea and everything that is not necessary to
               that purpose or function would be part of the expression
               of the idea...  Where there are various means of
               achieving the desired purpose, then the particular means
               chosen is not necessary to the purpose; hence there is
               expression, not idea.
\end{quote}

Id. at 1236.  Similarly, in Lotus Development Corp v. Paperback Software
International, 740 F. Supp 37 (D. Mass 1990), the U.S. District Court
for the District of Massachusetts proclaimed:  ``The decision maker must
focus on whether those elements allegedly copied| are a substantial
part of the allegedly copyrightable work.''  Id. at 61.

Thus, under the Wheland test, the court would conclude that it was
necessary for a spread sheet program to use columns, and, accordingly,
this is an unprotectable aspect of the program.  Always printing, for
example, a computer's computation time at the bottom left of any print
out would not be necessary to the function or purpose of a spread sheet
program and, thus, may embody protectable expression under the Wheland
test.  Questions remain unresolved, however, since most program
statements can be considered, at some level, ``necessary'' to the program;
otherwise the statements would not be in the program.
 
\subsection{Limitations on alternatives:  Scenes a faire.}
     Other courts have recognized that certain elements of a program are
essential to the basic purpose of a function of a program.  Thus, for
example, in writing a ``western,'' it is expected that the primary
characters will ride horses and carry six-bullet side arms.  Similarly,
in a program, to the extent that certain aspects of the program are
required for the program to operate in a manner generally expected by
users, such aspects are not copyrightable expression.
 
     Thus, for example, a spread sheet program is expected to have
columns and allow the user to easily add up the numbers in the rows and
columns and to provide an easy way of putting in a formula by which the
numbers in the spread sheet may be manipulated.  These are essential
parts, or scenes of faire, of any spread sheet program and thus is not
copyrightable.  Creative approaches to implement such general ideas,
however, may well be copyrightable.  Again, however, much disagreement
exists, even among experts, regarding what is an essential part of a
program.
 
\subsection{  Level of abstraction test}
     Other courts use the so-called level of ``abstraction test.''  As set
forth in Health Care Affiliated Services v. Lippiney, 701 F. Supp 1142
(W. D. Penn 1988):

\begin{quote}
               The evidence merely documents that certain choices were
               made among factors at a gross level, e.g., the scope of
               the system, the number of variables to be used or the
               portions of the work force to be included in the
               calculation of labor hours.  The result of these choices,
               however, does not constitute program structure sequence
               and operation.
\end{quote}

Under this approach, the courts attempt to state the overall purpose of
a program and, to the extent that purpose is abstract (e.g., ``spread
sheet program'') the more likely it is that the program is unprotectable
under copyright law.  To the extent that the purpose of a particular
subroutine is specific (e.g., ``increase computation speed by transferring
the contents of one particular file to another only if a predetermined
condition is met''), the routine is more likely to be protectable under
copyright law.
 
\section{Conclusion}
 
     Overall, the courts' various approaches to determining whether a
particular program is an improper ``derivative'' work all relate to the
same basic premise:  to the extent that an author has used creativity to
express a function not apparently essential to the overall purpose of a
program, the organization (non-literal elements) of the program is
protectable.  To the extent that the choices made by the programmer were
dictated by external concerns (such as designating the largest key on
the key board as the one to press in order to enter information), such
choices should not, as a matter of public policy, be protected by the
copyright law.

In all events, however, the courts encourage independent
authorship.  Even the more mundane and obvious procedures in a program
may be considered improper copies if a programmer, rather than writing
his or her own code, clearly takes the ``short cut'' of simply duplicating
the source code of another.


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