Canadian Intellectual Property Review 32 Cipr

What Qualifies as Joint Authorship of Software?* Richard Stobbe**

Abstract Disputes can arise as to authorship of software where more than one author is alleged to have made contributions. This article reviews how Canadian courts will treat the What Qualifies as JointA uthorship of Software?* concept of “joint authorship” of software by looking at Canadian, American, and UK Richard Stobbe** ...... 25 decisions. This issue is important because the determination of authorship will have an 1.0 Introduction ...... 26 effect on a range of issues, including copyright ownership, infringement, and licence 2.0 Background: Joint Authorship Under the Copyright Act ...... 27 rights. Various common scenarios are reviewed, including the contribution of ideas 3.0 The Common Law Test for Joint Authorship in Canada ...... 28 and suggestions, contributions through software testing, contribution of original 3.1 The Neudorf Approach ...... 29 content, the role of interviews, the importance of software coding, and the post- 3.2 The Traditional Levy v Rutley Line of Cases ...... 31 publication conduct of the parties. The law appears settled that authorship of software 3.3 The Intent Requirement ...... 32 must involve the original expression of ideas by actually writing or authoring 4.0 Application of the Cases to Software ...... 34 computer code, through the application of skill and judgment of the author. For the 4.1 Contribution of Ideas and Suggestions ...... 34 purposes of joint authorship, the role of intent under Canadian copyright law is yet to 4.2 Contributions Through Software Testing ...... 35 be finally settled. 4.3 Contribution of Original Content ...... 36 4.4 The Role of Interviews ...... 38 Résumé 4.5 Importance of Coding ...... 39 4.6 Conduct of the Parties ...... 40 Certains différends peuvent survenir concernant la paternité d’un logiciel lorsque deux 5.0 Conclusions ...... 42 auteurs ou plus revendiquent une contribution pour sa création. Dans cet article, l’auteur examine la façon dont les tribunaux canadiens traiteront du concept de « logiciel créé en collaboration » en étudiant les décisions judiciaires rendues au Canada, aux États-Unis et au Royaume-Uni. Ce problème est important, car la détermination de la paternité aura une incidence sur une variété de questions, notamment la propriété du droit d’auteur, la violation et les droits de licence. Divers scénarios communs sont examinés, y compris la contribution des idées et suggestions, les contributions par le biais de la mise à l’essai du logiciel, la contribution du contenu original, le rôle des entrevues, l’importance du développement du logiciel et la conduite des parties après la publication. Selon le droit, la paternité d’un logiciel devrait comprendre l’expression originale des idées en rédigeant ou en créant actuellement un code informatique, par l’application d’une habileté et d’un jugement de la part de l’auteur. Pour les besoins d’une création en collaboration, le rôle de l’intention aux termes de la Loi sur le droit d’auteur n’est toujours pas définitivement réglé.

25 26 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

Contents 1.0 Introduction ...... 26 2.0 Background: Joint Authorship Under the Copyright Act ...... 27 3.0 The Common Law Test for Joint Authorship in Canada ...... 28 3.1 The Neudorf Approach ...... 29 3.2 The Traditional Levy v Rutley Line of Cases ...... 31 3.3 The Intent Requirement ...... 32 4.0 Application of the Cases to Software ...... 34 4.1 Contribution of Ideas and Suggestions ...... 34 4.2 Contributions Through Software Testing ...... 35 4.3 Contribution of Original Content ...... 36 4.4 The Role of Interviews ...... 38 4.5 Importance of Coding ...... 39 4.6 Conduct of the Parties ...... 40 5.0 Conclusions ...... 42

1.0 Introduction Computer programs are often authored by a team of software programmers. Dis- putes can arise as to authorship of the software where more than one author is alleged to have made contributions. In these situations, how will courts treat the concept of “joint authorship” of software for the purposes of Canadian copyright law? The answer to this question is important for software vendors, because the determination of authorship will affect a range of issues—copyright ownership, infringement, licensing rights, intellectual property representations and warranties, and claims for compensation from com- mercialization of the software. A few examples illustrate how this issue directly im- pacts a software vendor’s legal rights. • Under Canadian copyright law, the rights that flow from authorship directly im- plicate the basic copyrights under the Copyright Act (“the Act”),1 which specifically include the sole right to copy, produce, and “rent out” a computer program. • Joint authors are considered to be joint owners of the copyright. Joint ownership in turn carries a number of implications under Canadian copyright law, one of which is that a joint owner of copyright may not grant a licence for the exercise of an exclusive right in the jointly owned work without obtaining the consent of the other joint owners.2

1 Copyright Act, RSC 1985, c C-42, s 3. 2 Bradley Limpert, Technology Contracting: Law, Precedents and Commentary (Toronto: Carswell, 2005) (loose-leaf) ch 9.8; Cescinsky v George Routledge & Sons, Limited, [1916] 2 KB 325. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 27

• A software vendor may be required to make certain representations and warranties about ownership of its software assets, either in the course of a licensing agreement or in the context of a purchase and sale transaction. A failure to ac- curately account for the ownership interests in a software asset may lead to an inaccurate representation in the agreement, which could, in turn, give rise to in- demnity obligations or a claim for damages for breach. To date, there is very little Canadian case law that considers the specific issue of joint authorship of software or computer programs.3 This article reviews Canadian, US, and UK case law on the issue of joint authorship as it relates to software.

2.0 background: Joint Authorship Under the Copyright Act Since copyright and the concept of joint authorship are both creatures of statute, any analysis must start with the Act. Under section 2 of the Act, a “work of joint authorship” means: a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors. A “computer program” is broadly defined as: a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.” Section 2 of the Act also tells us that software falls into the category of “literary work.”4 Neither “author” nor “authorship” is defined in the Act. Canadian cases have in- dicated that authorship “conveys a sense of creativity and ingenuity.”5 In John Maryon International Ltd v New Brunswick Telephone Co Ltd,6 La For- est JA (as he then was) said: The term author is not defined in the Act, but reference was made to the statement in Fox, The Canadian Law of Copyright (2nd ed.), p. 239, that it is the person who actually writes, draws or composes a work. However, this idea must not be carried too far. The cases reveal that the person who “actually writes” must not be equated to a mere scribe or amanuensis. … On the other hand, a person who merely gives ideas to

3 The terms “software” and “computer programs” are used interchangeably in this discussion. 4 “[L]iterary work includes tables, computer programs, and compilations of literary works”: Copy- right Act, supra note 1, s 2. 5 Neugebauer v Labieniec, 2009 FC 666, aff’d 2010 FCA 229 [Neugebauer]. 6 John Maryon International Ltd v New Brunswick Telephone Co Ltd (1982), 141 DLR (3d) 193 (NBCA) [John Maryon]. 28 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

a person is not the author. … Rather, the author would seem to be the person who ex- presses the ideas in an original or novel form.7 “Originality,” in turn, requires expression of ideas through the application of skill and judgment. Chief Justice McLachlin of the Supreme Court of Canada ex- plained originality as follows: For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work. At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.8 In summary, under Canadian copyright law, authorship involves expression of ideas by writing or composing a work through the application of skill and judgment. In the case of joint authorship, the statutory definition requires two main elements: 1. there must be collaboration between the authors, and 2. the contributions of original expression, using skill and judgment of the authors, must not be distinct.9 These concepts are reviewed in further detail below.

3.0 the Common Law Test for Joint Authorship in Canada There are a handful of cases in Canada that relate to disputes regarding ownership of software, but few that touch directly on the subject of joint authorship of software. Thus, we are left to review the court’s treatment of joint authorship of analo- gous creative works. Canadian decisions fall into one of two main approaches: the Neudorf approach and the test in Neugebauer.

7 Ibid at 244 (emphasis added). 8 CCH Canadian Limited v Law Society of Upper Canada, 2004 SCC 13 at para 16 (emphasis added). 9 Neugebauer FC, supra note 5. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 29

3.1 the Neudorf Approach In its decision in Neudorf v Nettwerk Productions Ltd,10 the BC Supreme Court dealt with a dispute regarding joint authorship between two musicians. The plaintiff, Darryl Neudorf, claimed that he co-authored four musical works with the musi- cian Sarah McLachlan. The court reviewed the test for joint authorship, in particular the concept of “collaboration,” which appears in the Act but is not defined. Mr. Justice Cohen said: [68] There is a dearth of Canadian law on the meaning of the word “collaboration” in the definition of joint authorship in s. 2 of the Act. … [71] Neither Fox, Stuart v. Barrett nor Godfrey v. Lees expanded upon the test for joint authorship beyond the scope of its introduction into the common law by Levy v. Rutley. However, in my opinion, the authorities, at the very least, have settled that to satisfy the test for joint authorship a putative joint author must establish that he has made a contribution of significant original expression to the work at the time of its creation, and that he has done so pursuant to a common design (or, in other words, some form of shared intent).11 Justice Cohen in Neudorf developed a three-part test for joint authorship, which can be expressed as follows: 1. Did the plaintiff contribute significant original expression to the works? 2. If so, did each of the plaintiff and defendant intend that their contributions be merged into a unitary whole? 3. If so, did each of the plaintiff and defendant intend the other to be a joint author of the works?12 The so-called expanded test proposed by Neudorf imposes a requirement that collaborators intend to regard each other as joint authors. Other Canadian and Brit- ish precedents do not impose this requirement. This expanded Neudorf test followed the American lead, which was described in Childress v Taylor.13 Under the American Copyright Act of 1976,14 the term “joint work” is the equivalent of the Canadian “work of joint authorship.” For the sake of comparison, the US Copyright Act defines “joint authorship” as follows:

10 Neudorf v Nettwerk Productions Ltd, 1999 CanLII 7014 (BCSC) [Neudorf ]. 11 Ibid at paras 68, 71 (emphasis added). 12 Ibid at para 88. 13 Childress v Taylor, 945 F (2d) 500 (2nd Cir 1991) [Childress]. 14 17 USC [US Copyright Act]. 30 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.15 The following passage from the US Federal Circuit in Childress influenced the expanded test proposed by Justice Cohen: There remains for consideration the crucial aspect of joint authorship—the nature of the intent that must be entertained by each putative joint author at the time the contribution of each was created. The wording of the statutory definition appears to make relevant only the state of mind regarding the unitary nature of the finished work—an intention “that their contributions be merged into inseparable or interdependent parts of a unitary whole.” However, an inquiry so limited would extend joint author status to many persons who are not likely to have been within the contemplation of Congress. For example, a writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will consist of additions of copyrightable expression. Both intend their contributions to be merged into inseparable parts of a unitary whole, yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work. Similarly, research assistants may on occasion contribute to an author some protectable expression or merely a sufficiently original selection of factual material as would be entitled to a copyright, yet not be entitled to be regarded as a joint author of the work in which the contributed material appears. What distin- guishes the writer – editor relationship and the writer – researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors.16 The Supreme Court of Canada has made it clear that American case law must be handled with care whenever it is used as a source of guidance to Canadian courts. Indeed, the court in Compo Co Ltd v Blue Crest Music Inc stated: The United States Copyright Act, both in its present and earlier forms, has, of course, many similarities to the Canadian Act, as well as to the pre-existing Imperial Copy- right Act. However, United States Court decisions, even where the factual situations are similar, must be scrutinized very carefully because of some fundamental differenc- es in copyright concepts which have been adopted in the legislation of that country.17 Despite this caution, American analysis influenced the Neudorf court. Accordingly, the Neudorf court adopted the American practice of importing a requirement that joint authors must form the intent, by participating in the venture, to regard themselves as joint authors. Absent this mutual intent, there is no joint authorship. As phrased by Justice Cohen:

15 US Copyright Act § 101 et seq. 16 Childress, supra note 13 at 507 (emphasis as in Neudorf at para 80). 17 Compo Co Ltd v Blue Crest Music Inc, [1980] 1 SCR 357 at 366-67 (emphasis added). 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 31

In my opinion, the common law definition of joint authorship, the statutory definitions of joint authorship in Canada, England and the United States, and the judicial inter- pretation of the statutory definitions all confirm that mutual intent is a prerequisite for a finding of collaboration.18 The concept of intent is embedded in the very definition of a “joint work” in American copyright law; by contrast, there is no express reference to intent within the Canadian definition of a “work of joint authorship.” Thus, in order for the Chil- dress line of cases to fit within a Canadian test, the intent requirement must be read into the concept of “collaboration.” The Neudorf analysis has been applied by at the trial level in Quebec, Ontario, and Nova Scotia.19 Note that in the UK decision Hodgens v Beckingham, the court considered and rejected the Neudorf analysis, saying: “I reject the submission that … requires, as one of the elements of joint authorship, the existence of a common intention as to joint authorship.”20 To date, the expanded Neudorf test has not been applied at the appellate level in Canada.

3.2 the Traditional Levy v Rutley Line of Cases The case of Levy v Rutley21 has informed the law of joint authorship in Canada, the United States, and the United Kingdom since the late 19th century. The Federal Court of Appeal appears to have endorsed the conventional Levy test for joint author ship, as applied in Neugebauer.22 Neugebauer cited the Quebec Court of Appeal in Drapeau c Girard23 as authority for application of the Levy test. Neugebauer has been applied in Seggie c Roofdog Games Inc.24

18 Neudorf, supra note 10 at para 93 (emphasis added). 19 See Drapeau c Carbone 14, [2000] RJQ 1525 at para 55 (CS); Scott Saxon c Communications Mont-Royal inc, JREJB 2000-21632, [2000] JQ No 5634 at para 75 (CS); Dolmage v Erskine (2003), 23 CPR (4th) 495 at para 45 (Ont SC); and Atlantic Canada Regional Council of Carpen- ters, Millwrights, and Allied Workers v Maritime Environmental Training Institute Ltd, 2014 NSSC 64 at para 23. It was cited but not followed in Wall v Horn Abbot Ltd, 2007 NSSC 197 at paras 498-506. 20 Hodgens v Beckingham, [2003] EWCA Civ 143 at para 49 (Eng CA); see also Brighton v Jones, [2004] EWHC 1157 (Eng Ch Div). 21 Levy v Rutley (1871), LR 6 CP 523 [Levy]. 22 Neugebauer v Labieniec, supra note 5; the appellate decision was released with no analysis of the joint authorship issue. 23 Drapeau c Francois Girard, [2003] RJQ 2539 [Drapeau c Girard]. 24 Seggie c Roofdog Games Inc, 2015 QCCS 6462 [Seggie]. As an aside, the decision in Waldman v Thomson Reuters Corporation, 2012 ONSC 1138 [Waldman] appears to have cited both Neudorf 32 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

Neugebauer dealt with a dispute over authorship of a Polish-language book entitled Gesi Puch. The book was commissioned by the applicant, Mr. Neugebauer, who engaged an author, Ms. Labieniec, to write about his experiences as a child in Poland during the Holocaust. The author based the book on interviews with Mr. Neugebauer, and she organized his personal recollections, added some events and scenes, and created a coherent narrative. The author registered copyright in the book, listing both Mr. Neugebauer and Ms. Labieniec as owners and authors. Mr. Neugebauer then commenced an action to expunge the registration, apparently on his understanding that he was the sole author. The court found that the parties, through a verbal contract, intended to co-author the work, and dismissed the ex- pungement application. The Neugebauer court specifically departed from the Neudorf test and pointed back to Levy, which is cited as the prevailing authority on joint authorship under English and Canadian law. The court in Levy as endorsed in Neugebauer articulates the following analysis concerning works of joint authorship: 1. Joint authorship must be established by the facts and by the law, rather than an assessment of the parties’ intentions. 2. The contributions of each author must be substantial, though they need not be equal. 3. The contributions need not be “qualitatively and quantitatively” equivalent, but there must be “a joint labour in carrying out a common design.”25

3.3 the Intent Requirement Although the Neugebauer analysis appears to eschew the mutual-intent requirement espoused by Neudorf, it does not really dissect the notion of “joint labour in carrying out a common design,” or what has been called “pre-concerted design” or “pre- concerted joint design.” Put another way, Canadian authorities have not satisfactorily resolved the role of “intention” in joint authorship. Following is a sampling of the language used by Canadian authorities and commentators:

and Neugebauer with approval without applying either test. The court in Waldman summed it up as follows: [72] The constituent elements of joint ownership are: (1) each author makes a substantial although not necessarily equal contribution to the work; and (2) there is a joint labour in carrying out a common purpose or design: Levy v. Rutley (1871), 6 L.R. 976 (C.P.); Neuge- bauer v. Labieniec … [supra note 22]. Some courts impose the additional requirement that the authors intend the work to be attributed to them as a joint work: Neudorf v. Nettwerk Productions Ltd. (1999), 3 C.P.R. (4th) 129 (B.C.S.C.); Dolmage v. Erskine (2003), 23 C.P.R. (4th) 495 (S.C.J.). 25 See Normand Tamaro, The 2009 Annotated Copyright Act (Toronto: Carswell, 2008) at 189-91; Neugebauer FC, supra note 5 at para 45. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 33

• The Quebec Court of Appeal used the phrase [translation] “cooperation or intent, on the part of the authors of the various parts of the work, to make one unique work, despite the plurality of their respective contributions.”26 • The trial court in Neugebauer concluded that “the parties intended that their contributions be joined in furtherance of a common design.”27 • The Neudorf decision also used the phrase “common design (or, in other words, some form of shared intent).”28 • H.G. Fox says: “Joint authors are those who engage in the production of a work by joint labour in prosecution of a preconcerted joint design.”29 • The Canadian Artists and Producers Professional Relations Tribunal decided that in order to be a joint author an author “must contribute significant original expression and must collaborate with the other author in a pre-concerted joint design.”30 • Levy employed the phrase “joint labouring in furtherance of a common design.”31 • The court in Seggie referred to [translation] “a common intention to create a collaborative work.”32 It is worth asking whether the idea of “a joint labour in carrying out a common design” (Levy) has the same meaning as the pursuit of a “common design (or … some form of shared intent)” (Neudorf ). The intention of the parties in working to- gether to some common design is central to both tests. Thus, it is suggested that the two strains of analysis—in (1) Neudorf, and (2) Neugebauer and Levy—are actually not that different from one another. Ultim- ately, both appear to require some degree of mutual intent. Even though the court in Neugebauer asserts that the parties’ intentions are not relevant, it concludes by pointing to the parties’ intentions. The nuances of the two tests may turn not on whether the parties’ intentions are germane in a general sense, but on the more specific question of whether the parties intended to regard each other as joint authors, which is an additional requirement in Neudorf. To say that intent is wholly absent from the Neugebauer reasoning is not reflective of the court’s analysis.

26 Drapeau c Girard, supra note 23 at para 6 (emphasis added). 27 Neugebauer FC, supra note 5 at para 43 (emphasis added). 28 Neudorf, supra note 10 at para 47 (emphasis added). 29 HG Fox, The Canadian Law of Copyright and Industrial Design, 2nd ed (Toronto: Carswell, 1967) at 244, citing Keating J in Levy, supra note 21; also cited in Neudorf, supra note 10 at para 68 (emphasis added). 30 See Re Editors’ Assn of Canada, New Certification Order, quoted in Bradley Limpert, Technology Contracting: Law, Precedents and Commentary (Toronto: Carswell, 2005) ch 9 (emphasis added). 31 Levy, supra note 21 (emphasis added). 32 Seggie, supra note 24 at para 67 (emphasis added). 34 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

4.0 application of the Cases to Software A number of themes emerge from the case law. What follows is a review of Canad- ian, US, and UK case law in the following common joint-authorship themes, some of which are specific to the software industry: (1) the contribution of ideas and suggestions; (2) contributions through software testing; (3) contribution of original content; (4) the role of interviews; (5) the importance of software coding; and (6) the conduct of the parties.

4.1 contribution of Ideas and Suggestions How are ideas and suggestions treated for the purpose of determining joint authorship under copyright law? Canadian courts and commentators provide the following guidance: • Author Lesley Ellen Harris summarizes the case law as follows: [S]omeone who comments, edits or suggests changes to a work would not necessarily be a co-author of that work, unless the contributions were concrete enough to be a tangible part of the expressed idea.33 • Put another way, “someone who tinkers with and improves the work of another might not have done enough to show joint authorship.”34 • Merely to “instruct, guide, offer feedback and make suggestions” is not enough.35 • “A person who merely suggests certain ideas without contributing anything to the literary or dramatic form of the copyright is not a joint author.”36 • A contributor of mere ideas, suggestions, and advice, helpful as the contribut- er may be, is not a joint author by virtue of those contributions.37 • Where the contributions were merely ideas or suggestions, the original author was “free to accept or reject them.” The ideas or suggestions did not entitle the contributor to be considered a joint author.38

33 Lesley Ellen Harris, Canadian Copyright Law, 3rd ed (Whitby, Ont: McGraw-Hill Ryerson, 2001) at 81. 34 Stuart v Barrett, [1994] EMLR 448 (Ch B); see also Dolmage v Erskine (2003), CPR (4th) 495 (Ont Sup Ct J) [Dolmage]. 35 Dolmage, ibid. 36 Kantel v Grant, [1933] Ex CR 84. 37 Royal Doulton Tableware Ltd v Cassidy’s Ltd (1984), 1 CPR (3d) 214 at 230 (FCTD). 38 Neudorf, supra note 10 at para 28. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 35

In Whelan Association v Jaslow Dental Laboratory,39 the plaintiff, Whelan, was a programmer who was commissioned to develop a computer program for the defendant, Jaslow. Whelan worked closely with Jaslow to determine the necessary features and functions. Although Jaslow supplied suggestions for modifications and even contributed ideas for the design of some screens, it was Whelan who implemented these ideas by writing the software code. The trial court noted: The information and advice which Rand Jaslow provided was little more than one would expect from the operator of any business who seeks to have a computer system designed for him. Such general assistance and contributions to the fund of knowledge of the author did not make Rand Jaslow a creator of any original work, nor even the co-author. It is similar to an owner explaining to an architect the type and functions of a building the architect is to design for the owner. The architectural drawings are not co-authored by the owner, no matter how detailed the ideas and limitations expressed by the owner.40 Similarly, in the US case SOS Inc v Payday Inc,41 Payday claimed that it was a co-author of a certain payroll computer program over which SOS claimed sole ownership. The court decided that Payday’s contributions were merely “general assistance and contributions to the fund of knowledge of the author.” In SOS, Payday did not participate in any actual coding. Payday lacked any programming experience or computer expertise. In deciding that SOS was the sole owner, the court ruled that “to be an author, one must supply more than mere direction or ideas; one must translate an idea into a fixed tangible expression entitled to copyright protection.”42 In summary, someone who merely suggests certain ideas without contributing any original expression to the software is not a joint author.

4.2 contributions Through Software Testing Testing of software can result in changes or amendments to the software, to permit the software to satisfy functional requirements or testing criteria. In Fylde Micro- systems Ltd v Key Radio Systems Ltd,43 a UK decision, an authorship dispute arose between two companies that cooperated in the design of certain software. Key

39 Whelan Association Inc v Jaslow Dental Laboratory Inc, 609 F Supp 1307 (US Dist 1985), aff’d 797 F (2d) 1222 (3d Cir 1986) [Whelan]. Although Whelan is often cited as the first introduction of the concept of “structure, sequence and organization” (SSO) into US copyright law, the discussion of SSO is beyond the scope of this article because SSO is primarily used in an infringement analysis relating to software, rather than an assessment of joint authorship. 40 Whelan, ibid at 12. 41 SOS Inc v Payday Inc, 886 F (2d) 1081 (9th Cir 1989) [SOS]. 42 SOS, ibid (emphasis added). 43 Fylde Microsystems Ltd v Key Radio Systems Ltd, [1998] EWHC Patents 340 [Fylde]. 36 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

Radio, the defendant hardware maker, which had agreed to act as distributor of the software, claimed that its contributions entitled it to claim rights as a joint author of the computer program. Key Radio had access to the software source code, and it made contributions and suggested adjustments, which the court acknowledged to be “extensive and technically sophisticated”44 based on its understanding of the hardware components. At one point, the defendant developed a “carrier sample technique,” which improved the interaction between the hardware and software. The court noted that “[t]his development was given to the Plaintiff to incorporate accordingly into their software.” How- ever, the court ultimately decided that the plaintiff, Fylde Microsystems, actually coded these contributions into the software program. The UK court described the joint authorship test as follows: First it is necessary to determine whether the putative author has contributed the right kind of skill and labour. If he has then it is necessary to decide whether his contribution was big enough. The latter issue in particular is a matter of fact and degree.45 In Fylde, although the defendant’s contributions were, in the court’s words, “valuable,”46 “extensive and technically sophisticated,”47 and resulted from “close co-operation,”48 the contributions did not result from any authorship skill. Put another way, the contributions were not the right kind of skill to qualify for authorship. The plaintiff programmer ultimately wrote the code and implemented the defendant’s contributions, and that was determinative of the authorship issue in favour of the plaintiff. Mere testing of software and the contribution of feedback based on that testing, without the application of any authorship skills, is not enough to qualify for joint authorship of software.

4.3 contribution of Original Content A contributor may add to an original work with expressions of additional written or expressed content, which are more than mere ideas or suggestions, and are expressed or fixed in writing by the contributor. This involves something more than mere ideas or suggestions, and more than testing or feedback. Still, such contributions are not necessarily determinative of joint authorship. The decision in Seggie49 is the only Canadian case to directly consider the issue of joint authorship in the context of software coding. The facts are similar, in many

44 Ibid at para 39. 45 Ibid (emphasis added). 46 Ibid at para 30. 47 Ibid at para 39. 48 Ibid at para 26. 49 Seggie, supra note 24. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 37 ways, to other joint authorship disputes. In Seggie, the dispute focused on authorship of a mobile app for the iOS platform, which was later marketed and sold through the Apple App Store, Facebook, and Google Play. Mr. Seggie sued Roof- dog Games and its founder, Mr. Germain, based on a claim of joint authorship of the video game Extreme Road Trip. Mr. Seggie contributed some content to the game. Specifically, he illustrated six drawings of cars, a background, and some “ac- cessories” such as trees, rocks, and a can of gasoline, some of which were of limited creativity according to the court.50 These illustrations were used by Mr. Germain and incorporated into the final game. Citing Neugebauer, the court in Seggie did not lay out a test, but sketched some broad principles that have emerged from Canadian law. The court stated:

[59] [translation] The case law is developing certain principles to decide whether a work is created in collaboration: … • the contribution of the co-authors need not be equivalent, but the contribution of each must be substantial; • a certain level of collaboration must be established between the co-authors in the pursuit of a common design; • it is necessary to prove more than ideas and suggestions; • certain case law also considers that it is equally important to consider the common intention of the parties to create a work in collaboration. Ultimately, the court in Seggie decided that the parties did not form a common intention to create a collaborative work. Mr. Germain was the sole author and coder of the game itself, and retained the discretion to accept or reject the contributions or suggestions of Mr. Seggie.51 In the end, the court awarded $10,000 to Mr. Seggie as compensation for the illustrations, which were contributed through a form of im- plied licence. In Dion v Trottier,52 contributions to a manuscript—for example, corrections to grammar, the addition of certain words, alterations to the structure of the text, and improvements to literary style—were incorporated into the final published version. Although these contributions had “some utility and a certain value,” the court said that “the basis of the story, the vocabulary, the rhythm, the magnitude, the sensibil ity and truthfulness” were all the original author’s effort and the contributor was not considered a joint author.53 A professor’s corrections and suggested revisions to a student’s paper, some of which were incorporated into the paper, did not qualify as a significant contribution,

50 Ibid at paras 28 and 87. 51 Ibid at para 67. 52 Dion v Trottier (1986), 9 CIPR 258 (Qc SC). 53 Ibid. 38 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR and did not make the professor a joint author. The court noted that “[o]ne must look at the nature of the contribution as well as its importance.”54 The American case Ashton-Tate Corporation v Richard Ross and Bravo Technol- ogies, Inc55 addressed a dispute over authorship of a spreadsheet program. Although the defendant Ross did not author or write any of the program’s source code, he did provide a handwritten list of user commands to the plaintiff’s programmer. This, the defendant argued, constituted a “fixed expression of Ross’s ideas, and as such was entitled to copyright protection.” The court disagreed. The list was, according to the court, not entitled to copyright protection. In denying Ross’s claim of joint authorship, the court concluded that “joint authorship requires each author to make an independently copyrightable contribution.”56 Because Ross’s ideas were merely a list of labels for user commands, and lacked any originality, they fell short of protectable expression. In summary, in the software context a contributor of written expressions of additional content may still fall short of being considered a joint author of the software. Even the contribution of copyright-protectable expression (such as illustrations for a video game) will not be dispositive of the issue, and such contributions can still fail to qualify as a contribution for the purposes of joint authorship.

4.4 the Role of Interviews A software development team may conduct a series of interviews and planning ses- sions in order to understand the functions that are required within the software. This may occur within a company, between the developers and, for example, the product development or sales team, or between an independent software developer and a customer who has commissioned a custom program. Courts have been clear that “the person who ‘actually writes’ must not be equated to a mere scribe or amanuensis. … On the other hand, a person who merely gives ideas to a person is not the author.”57 By this measure, the software programmer who acts as a mere scribe or amanuensis would not be considered an author if he or she merely copies down verbatim the instructions of, for example, a senior developer as to the specific software code to be written. However, in practical terms this must be so rare as to be unheard of. What is more likely is the situation, akin to the story in Neugebauer, where the software programmer is like a writer who has a command of the tools of language, grammar, style, and narrative structure, all of which are necessary to bring form to an inchoate set of ideas and instructions. In Neugebauer, the writer, Ms. Labieniec,

54 Boudreau v Lin (1997), 150 DLR (4th) 324 at para 30, 75 CPR (3d) 1 (Ont SC). 55 Ashton-Tate Corporation v Richard Ross and Bravo Technologies, Inc, 916 F (2d) 516 (9th Cir 1990). 56 Ibid. 57 John Maryon, supra note 6 at 244. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 39 used narrative tools to create a literary work drawn from Mr. Neugebauer’s personal recollections and many hours of interview material. In that case, the court found that a series of agreements established that the two parties had agreed to jointly author the book. In Gould Estate v Stoddart Publishing Co,58 Glenn Gould contributed substan- tially to the content of a book entitled Glenn Gould: Some Portraits of the Artist as a Young Man, based on oral statements he gave in the course of interviews with the author, a journalist. The journalist was held to be the author of the book, who con- ducted the interviews, and performed the creative task of assembling the transcripts of Mr. Gould’s oral statements into a literary work. Thus it was the journalist, not Mr. Gould, who was the author and owner of the copyright in the book. Following Gould, Hager v ECW Press Ltd noted: Under Anglo-Canadian law, in so far as private interviews are concerned, it is the person who reduces the oral statements to a fixed form that acquires copyright therein. That individual is considered to be the originator of the work.59 Similarly, absent any agreement to the contrary, the programmer who “interviews” a customer in order to understand the business goals of a software program is the author of that program once the programmer reduces the oral statements to a fixed form as code.

4.5 importance of Coding The decision in Seggie concluded that the software programmer Mr. Germain was the sole author of the video game, and he did all of the software coding for the game, a fact noted by the court.60 The plaintiff, Mr. Seggie, was an illustrator, not a software programmer, and did not contribute to the game’s source code. In Cyprotex Discovery Limited v The University of Sheffield,61 a UK court under- scored the importance of coding to authorship of software. Here, a Cyprotex employee was tasked with writing computer code to create a program in a joint project with the University of Sheffield. The university’s employee, Dr. Rostami, contributed expertise regarding the technical specifications and requirements for the program, but did not perform any actual coding. The university’s contribution was limited to technical advice. Cyprotex’s employee was the programmer who authored the code. The appeal court ultimately agreed that the Cyprotex employee was the sole author and that Dr. Rostami was not a joint author of the program. Citing the reasoning in the Fylde decision, the lower court in Cyprotex Discovery stated:

58 Gould Estate v Stoddart Publishing Co (1996), 30 OR (3d) 520 (Gen Div), aff’d (1998), 39 OR (3d) 545, 80 CPR (3d) 161 (CA) [Gould]. 59 Hager v ECW Press Ltd, [1999] 2 FC 287 at para 24, 85 CPR (3d) 289. 60 Seggie, supra note 24 at paras 61 and 65. 61 Cyprotex Discovery Limited v The University of Sheffield, [2004] EWCA Civ 380. 40 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

What is protected is the skill and labour involved in the artistic or technical endeavour involved in creating that work. Thus, copyright protection is concerned with the pro- cess of the creation of a work and not with the ideas going into it nor with the func- tionality or end-product that results. In computer programming, therefore, what is capable of protection are the codes that are written by the programmer including the design and structure of the program.62 This reflects the reasoning in the American cases Whelan and SOS cited above. Similarly, in the lower court decision in Ashton-Tate Corp v Ross, the court articulated the issue in this way: It is often difficult to determine where in the continuum between idea and expression one finds the line that, once crossed, transforms an idea into a protectable expression. In the field of computer programing it is settled that once a program reaches the source code or object code stage of development, it is an expression subject to copyright protection.63 In that case, in rejecting the written contribution of the defendant, Ross, the court took care to note that the contribution was merely a list of labels for user commands: The single sheet of paper does not contain any source code. The document clearly falls short of the threshold separating ideas from expressions. All Ross gave to Wig- ginton was a list of commands he thought should be included in the program. Ross did not contribute in any manner, including the drafting of source code, in the implemen- tation of his suggested commands.64 In summary, the courts in Canada, the United Kingdom, and the United States agree that programming of source code is central to a finding of authorship of software.

4.6 conduct of the Parties Canadian courts have looked to the conduct of the parties to assess authorship. The Neudorf court decided that “a person should not be elevated to the status of joint author unless each of the collaborators intended the other to be a joint author of the work.”65 And in deciding the issue against the plaintiff, Neudorf, the court concluded “the plaintiff has not proven, on a balance of probabilities, that he and McLachlan shared an intent to co-author the song … . Therefore, his claim for a declaration of co-ownership of copyright in this song is dismissed.”66 Indeed, the court in Neudorf

62 Ibid (emphasis added). 63 Ashton-Tate Corp v Ross, 728 F Supp 597 (ND Cal 1989), aff’d 916 F (2d) 516 (9th Cir 1990) (emphasis added). 64 Ibid (emphasis added). 65 Neudorf, supra note 10 at para 95. 66 Ibid at para 151. 32 RCPI REVUE CANADIENNE DE PROPRIÉTÉ INTELLECTUELLE 41 looked very closely at the conduct of Neudorf as a putative joint author of songs on the album Touch, noting: “when Touch was released the plaintiff was not listed in the liner notes as a joint author of the songs; and the fact that it was not until many years after the release of Touch that for the first time the plaintiff claimed to the de- fendants that he was a co-author of the songs.”67 In Neugebauer, the court considered evidence of an agreement between the parties, which showed an intention of the parties to treat each other as joint authors. The trial court stated as follows: [43] … [T]here was collaboration which contributed towards a unitary whole and that the parties intended that their contributions be joined in furtherance of a common design. I have accepted the Respondent’s evidence that the Applicant agreed that they would be joint authors of the Book. I am persuaded that the Respondent is a joint author by the evidence of the bookstore owner who asserted that the Applicant intro- duced himself to her as the “co-author” of the Book written by the Respondent and by the Applicant’s post-publication conduct.68 The Neugebauer court cited Drapeau c Girard, where the Quebec Court of Appeal decided that post-publication behaviour of the parties could be relevant to issues of joint authorship.69 Similarly, in Seggie, the court analyzed the conduct and text messages between Mr. Seggie and Mr. Germain to determine their intentions. The court noted

[68] [translation] Mr. Seggie did not act as a co-author. For example, if he considered himself to be a co-author, he would have expected a share of the profits. … In another example, he congratulated Mr. Germain in terms that would be used by a fan or admirer, not a co-creator of the game.70 American courts assess conduct as well: in Whelan, the court decided against Jaslow on the joint authorship question, citing the intent of the parties: There is not a scintilla of evidence that the parties ever intended that Rand Jaslow’s contributions, whatever they may have been, should merge into the final computer design and system. The only suggested merger into the whole might be the wording and the abbreviations contained on some of the visual screens. His contributions were not of sufficient significance to constitute him a co-author of the system.71

67 Ibid. 68 Neugebauer FC, supra note 5 at para 43. 69 Ibid at para 22. 70 Seggie, supra note 24. 71 Whelan, supra note 39. 42 CANADIAN INTELLECTUAL PROPERTY REVIEW 32 CIPR

In summary, the courts will review the conduct of the parties during authorship of the work, as well as post-publication behaviour, to assess the intentions of the parties with respect to authorship.

5.0 Conclusions From the foregoing we can see that for a computer program or a contribution to a computer program to enjoy copyright protection, it must be more than a mere idea. It must involve the expression of original ideas as a set of algorithms, instructions, or statements, expressed as computer code, through the exercise of skill and judgment. Where the contributions of two or more authors are the subject of a dispute regarding joint authorship, the current common law analysis endorsed by the Federal Court of Appeal in Neugebauer is as follows: 1. Joint authorship must be established by the facts and by the law, rather than an assessment of the parties’ intentions. 2. The contributions of each author must be substantial, though they need not be equal. 3. The contributions need not be “qualitatively and quantitatively” equivalent, but there must be “a joint labour in carrying out a common design.”72 The law appears settled that authorship of software must involve the original expression of ideas by actually writing or authoring computer code, through the application of skill and judgment of the author. For the purpose of joint authorship, the role of intent under Canadian copyright law is yet to be finally settled, but it plays an important role both in the specific assessment of whether each of the collaborators intended the other to be a joint author of the work and in the more general notion of intent in the pursuit of a common design of the computer program. Additional judicial consideration of this topic is required to bring further clarity to the issue of intent in the assessment of joint authorship in the context of software.

72 Neugebauer FC, supra note 5 at para 45.