Protection of Software Copyrights

Copyright protection for software is fraught with many uncetainties. Some commentators believe that patent law would be more appropriate for protecting software, but until recently, the predominant trend in both legislation and in the courts has been to rely on copyright law. However, recent developments have given new life to Patent Protection for Software.

The Idea/Expression Problem

One of the principal difficulties in obtaining copyright protection for software is demonstrating that the elements sought to be protected are forms of creative expression, not unprotectible ideas. Generally speaking, courts have tended to find that many of the important advances in computer software have been based on ideas, not expression. Thus, many of the most important aspects of software has been held not protectible by copyright. For example, in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994), the Court held that the use of icons, windows, and hierarchical menus were not copyrightable. Similarly, in Lotus Development Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995) aff'd per curiam, 116 S. Ct. 804 (1996), the First Circuit Court of Appeals found that the system of menu commands developed for the 1-2-3 spreadsheet were not copyrightable, because they constituted a method of operation, not a protectible form of expression. Thus, the ubiquitous graphical user interface has frequently been viewed by the courts so far as an unprotectible idea for how to operate a computer, not a protectible form of expression of the idea of operating a computer.

Protection for Databases

Likewise, databases have enjoyed only a "thin" degree of copyright protection. While the particular form or arrangement of a compilation of data may be protected from being copied verbatim (if such form demonstrates creative expression), copyright protection does not extend to the underlying data itself, which may or may not be protectible. Pure facts contained in a database are unlikely to receive much, if any, protection. For example, the lists of names and numbers in a telephone book cannot be copyrighted, though the overall compilation can be protected from wholesale, verbatim copying. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1992). On the other hand, in a case that our firm handled, a court ruled that a database containing publicly available state trademark registration information was copyrightable because there was "sufficient evidence of. . . selection, coordination, arrangement, enhancement, and programming of the. . . data, as well as other contributions that establish. . . originality and requisite creativity. . . ." Corsearch v. Thompson & Thompson, 792 F. Supp. 305 (S.D.N.Y. 1992).

Congress has recently been debating bills designed to give additional protections to databases, while maintaining the current balance of copyright law. The most recent bills that have been considered rely upon principles of unfair competition, rather than copyright principles, to impose liability in situations in which an entire database, or a substantial portion of a database, is copied.

Literal Copying

On the other hand, whenever computer code is copied wholesale and without permission, such as by copying a program onto a disk, or by downloading programs from the Internet or an on-line service, copyright infringement may well be found. See, e.g., Computer Associates Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). At least one court has held that literal copying is sufficiently proven by a defendant's admission that it loaded a computer program into RAM. Stenograph, LLC v. Bossard Associates, Inc., 144 F.3d 96 (D. Cir. 1998). However, even literal copying cases can sometimes be problematic. In Softel v. Dragon Medical and Scientific Communications, Inc., 118 F.3d 955 (2d Cir. 1997), the issue in contention was not the fact of the literal copying itself, but whether the material which was copied was protected by copyright. The District Court found that Softel's software routines were not protected under copyright, because they were not individually copyrightable, and therefore the compilation and arrangement of the uncopyrightable elements could not itself be protected by copyright. The Court of Appeals reversed, stating that the District Court had misapplied the Altai principles, and holding that even if individual elements of the software were not protected by copyright, the unique and creative way in which these elements were arranged and integrated could be the subject of copyright.

Reverse Engineering and Decompilation

Reverse engineering of software may, depending on the circumstances, constitute a "fair use" and therefore not infringe the copyright on a software program. If a copy of the software is lawfully obtained, and the purchaser makes further copies of the software in order to determine how it works, the making of such copies may not infringe the copyright. Sega Enterprises LTD. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), DSC Communications Corp. v. DGI Technologies, Inc. 1995 WL 526429 (N.D. Tex. Sept. 1, 1995).

However, if the original copy is not lawfully obtained, or if the end result of the reverse engineering is the production of a program that is "substantially similar" to the original program, the reverse engineering will be held unlawful under the copyright laws. Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832 (Fed. Cir. 1992).

A would-be decompiler must proceed with extreme caution. The Sega and DSC cases alone do not settle the issue of whether one may make an interim copy of software in order to reverse engineer the software and thereby discover the non-protectible ideas underlying a program. Moreover, many software licenses today contain explicit restrictions on reverse engineering. The enforceability of these restrictions has not yet been tested in the courts.

Rights to Modify Software

A somewhat more complicated problem is presented by situations in which the rightful licensee or owner of a piece of software makes modifications to the software, which the software's author claims violates its copyright. This is what happened in Aymes v. Bonelli, 47 F.3d 23 (2d Cir. 1995). The defendant had purchased a custom software program for their business uses. The author of the software sued for copyright infringement when the defendant modified the program to accommodate changes from year to year, and to make it compatible with its new, upgraded computers. The court found that although the defendant did prepare a derivative work based upon the original software, which usually constitutes copyright infringement, the Copyright Act specifically allowed for the preparation of this type of derivative work, because it was prepared as essential step in utilizing the program.

Another type of "modification" that can be made to software is new software which adds to or supplements an existing piece of software, but without modifying the original program. The Ninth Circuit confronted this issue in Micro Star v. FormGen, Inc., 154 F.3d 1107 (9th Cir. 1998). FormGen was the maker of Duke Nukem 3D, a computer game, that, in the words, of Judge Kozinski of the Court of Appeals, was "immensely popular (and very cool)." FormGen sold the game by means of a license which allowed players to use an included "Build Editor" to construct their own, new levels for the game. The license expressly allowed players to distribute their new levels, so long as they did not charge anything for them. Micro Star downloaded 300 player-created levels from the Internet, placed them on a CD-ROM, and sold them as an add-on to Duke Nukem 3D called Nuke It. FormGen contended that the Nuke It product infringed upon its rights because it consisted of unauthorized derivative works which appropriated its protected creative expression. In order to determine whether infringement had taken place, the Court explored in some detail the manner in which the Duke Nukem 3D game operated. The game consists of essentially three modules: the art library, which contains all of the images and sounds used in the game, the game engine, which processes instructions as to how to place images from the art library, and the MAP files, which contain the detailed instructions which tell the engine where to place images and sound from the art library in a particular level. The MAP files, which were the only types of files on the Nuke It CD, do not contain any art images sounds itself, but simply refer the game engine to the "stock" images and sounds in the art library. Analogizing the MAP files to sheet music, the court determined that "an exact, down to the last detail, description of an audiovisual display counts as a permanent or concrete form," which is what is required in order for something to be considered a derivative work. This was sufficient to form a basis for infringement. The Court also noted that the mere use of the recognizable elements of Duke Nukem in a new form was analogous to the creation of a sequel, which also is within the exclusive rights of the copyright owner. The Court was not impressed by the fact that the MAP files in Nuke It did not contain any actual art, since it concluded that a book about Duke Nukem without any pictures would likewise constitute an infringement. Finally, the Court distinguished this case from the result in Lewis Galoob Toys, Inc.v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992). In that case, the court had held that Galoob's Game Genie adapter for the Nintendo video game system was not an infringement, because it did not result in any fixed work which infringed upon Nintendo's rights, but simply allowed the player to change certain individual pieces of data that are sent from the game cartridge to the Nintendo console.

Both the Duke Nukem and the Nintendo cases raise some interesting questions which have yet to be resolved. For example, do add-on or plug-in software in other contexts also constitute copyright infringement? What about a collection of macros for a word processor? Or a piece of software that replaces the "shell" for Windows, allowing a different method of file management? Or the ubiquitous plug-ins that modify the abilities of web browsers?

Protection of File Formats

A largely unasked question that lurks behind many software licensing agreements is whether file formats are protectible. File formats seem to be a fairly unique type of work, but there is no doubt that, absent specific legislation, courts will analogize file formats to other types of works in order to determine copyrightability. One of the most likely analogies is to forms, and this was the approach taken in the only case so far to address the copyrightability of file formats, C/MAX Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337 (M.D. Ga. 1992). The basic principle regarding the copyrightability of forms is that blank forms are not copyrightable, but forms which convey information in a specific manner are copyrightable. Compare, Baker v. Selden, 101 U.S. 99 (1880) and Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991). Applying this principle, the C/MAX Court found that because the file format in question contained a complicated layout which resulted from a creative thought process, the format was copyrightable.

Another possible basis for protecting file formats is based upon patents. (See our page on Patent Protection for Software for more on this topic generally.) For example, Unisys holds a patent on a certain data compression algorithm call LZW compression. This technology is incorporated in GIF, TIFF-LZW, Postscript, and PDF file formats, all of which are widely used in computing generally and on the web particularly. Unisys has asserted that these types of files may only be used if there is a proper license in place between the user and Unisys. (It should be noted that Unisys does have over 2000 licensees, and that some of these, such as Adobe Systems, include the LZW license in its only license for the Acrobat software which allows users to create PDF files.)

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Return to Copyrights

Copyright Liability of On-Line Publishers

Morphing and the Problems of Interim Fixation