Strategies for Litigating Computer Software Copyright Claims
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LitigationMag_Fall07reprint:LITMAG_Fall07 11/12/07 3:54 PM Page 54 Strategies for Litigating Computer Software Copyright Claims by Richard A. Halloran and Kimberly A. Demarchi If a client came to you and told you that his novel had been puter software, these lines are easily blurred. Under the patent stolen and published under the name of another person, the laws, a computer program is patentable if it is novel and accom - path to litigating your case would be fairly evident. You plishes a function that has some practical application. would take your client’s book, along with any drafts, notes , or Patentability lies in the function accomplished by the software other evidence of when she wrote it and compare it to the rather than the elegance of how the programmers expressed book published by the alleged thief. You would look for line- that functionality in the software. Copyright protection, in con - by-line copying and for copying of the narrative themes and trast, extends only to the programmers’ original, creative characters. If the book was published in another language, expression and not to the functionality imparted by the soft - you would hire a translator to compare your client’s version ware. This distinction can be a fine line when dealing with to the published work to find any similarities indicating copy - computer software because software, unlike other creative ing. Your lifelong familiarity with printed fiction as well as works such as literature or music, typically serves a functional nonfiction would make litigating the case straightforward for purpose. That functionality, however, is not protected by the you and for the jury. Copyright Act. The processes and algorithms embodied in the Computer software is a different matter altogether. software might be patentable, but they cannot be copyrighted. Although governed by the same provisions in the Copyright Copyright law protects only the expression used to accomplish Act as other literary works, copyright cases involving com - the functionality, not the underlying functionality itself. E.g. , puter software present special challenges. Unlike copyright Apple Computer, Inc. v. Microsoft Corp. , 35 F.3d 1435 (9th Cir. cases involving works we are familiar with—say a book, a 1994). song, or a painting, where we as litigators start with at least a Trade secrets law, in turn, differs from both patent and copy - superficial familiarity of the medium upon which we can right laws . Trade secrets protection turns not on the creativity begin our assessment of the case and preparation of our liti - or functionality of the information for which protection is gation strategy—software cases often present the challenge sought but rather on whether the information is valuable to a of how to litigate the unfamiliar. company because it is not known to its competitors. Impor - An initial hurdle for the litigator facing a software copyright tantly, a computer program can be eligible for patent, copy - infringement case is to understand the precise rights at issue. right, and trade secrets protection, although the protection Software cases often involve rights that fall within the realm of afforded by each of these different areas of law is unique and different laws, including patent law, copyright law, and trade specific. secrets law, among others. Differentiating among these laws This article focuses on the rights afforded by the copyright and their corresponding rights and protections is essential. laws. Under the Copyright Act, a “computer program” is Generally speaking, patent law protects inventions, copy - defined as “a set of statements or instructions to be used right law protects creative expression, and trade secrets law directly or indirectly in a computer in order to bring about a protects confidential business information. As applied to com - certain result.” 17 U.S.C. § 101. By its terms, the Copyright Act extends to the literal set of instructions used to create the pro - Richard A. Halloran and Kimberly A. Demarchi practice with Lewis & Roca gram. In addition, protection can extend to nonliteral compo - LLP in Phoenix, Arizona. nents of the computer program such as its structure and Published in Litigation Magazine, Volume 34, Number 1, Fall 2007. © 2007 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. LitigationMag_Fall07reprint:LITMAG_Fall07 11/12/07 3:54 PM Page 55 organization.And protection can also extend to any audiovisual underlying creative work. When you purchase software at displays generated by the program, even if the underlying your local office supply store, what you get is just a copy of instructions used to create the displays are not themselves the object code , not the underlying source code . The object copyrightable. code, unlike the source code, does not reveal the creative One of the most fundamental tasks for the litigator is to iden - expression of the program’s author. Although object code can tify the particular elements of expression embodied in, and be “decompiled” from its 0s and 1s into a high-level program - generated by, the computer program for which copyright pro - ming language, the resulting code can be expected to differ tection is sought, and then ascertain for each element whether quite dramatically from the source code written by the pro - it is copyrightable. Differentiating the protectable elements gram’s author. Consequently, by distributing only the object from the unprotectable is difficult and will often be one of the code while retaining the source code as a trade secret, a soft - decisive points of contention in the lawsuit. One threshold ware author can make and sell many copies of her protected approach is to assess whether the functionality performed by work without ever revealing the contents of her creative the software is capable of being expressed in multiple ways . expression to potential infringers. The idea is that , if the source code used to perform a function Because of the ability to distribute object code without can be written in multiple ways, copyright should protect the revealing the program’s source code, whether to register a expression chosen by the programmer to accomplish the func - copyright in that software becomes a strategic choice. In tion. Conversely, if technological or other constraints limit the order to register a copyright in any work of expression, the number of ways to express the functionality, or if the expres - sion arises from the use of common ideas or their logical expressions, the instructions used by the programmer may not be subject to copyright protection . Written agreements are Computers are binary, that is, they can only “understand” 0s and 1s. People, on the other hand, cannot easily make sense of a prudent measure to the 0s and 1s executed by a computer. This apparent disconnect avoid surprises about was long ago resolved through the creation of programming languages. Today, most programmers write computer pro - who owns what. grams in what are known as high-level programming languages such as Java, C, Basic, Fortran, and Cobol. Programming lan - guages allow programmers to create software using text-based author must complete an application describing the work and instructions that can be easily understood by other program - the circumstances of its creation and must deposit copies of mers. Computer code written in a programming language is the work with the Library of Congress. 17 U.S.C. §§ 407 - known as “source code.” 409. Once the work is deposited with the library, it becomes Programs written in source code are then converted, typi - a public record that can be accessed by anyone. The deposit cally through the process known as compiling , into the 0s and rules provide special protections for computer code, includ - 1s that can be executed by a computer. The resulting machine- ing allowing deposit of excerpts of the source code in lieu of executable code is known as “object code.” the entire program—generally the first and last 25 pages of Source code and object code are viewed under the copyright the source code, or the entire source code if the program is 50 laws as two representations of the same computer program. pages or fewer . 37 C.F.R. § 202.20(c)(vii). Nevertheless, Copyright protection extends to the computer program and many programmers fear even a limited disclosure of their encompasses both the source code and the object code. source code so much that they resist registering copyrights in If the software at issue is in fact copyrightable, the copyright their source code until necessary for purposes of litigation. holder must consider the appropriate measures to protect her The Copyright Office also allows deposit of the object code creation. The exclusive rights of the author/programmer under in lieu of the source code, but this option comes with a con - the Copyright Act vest the moment the software is created, siderable price: The registration is given no presumption of because it is the act of creating an original work that gives rise validity because the deposit of object code does not allow the to copyright ownership. 17 U.S.C. § 201(a). Those exclusive Copyright Office to determine whether the registered work rights includ e the right to copy what has been created as well contains copyrightable material. See id .; see also Syntek as the right to create modified, amended, or translated ver - Semiconductor Co., Ltd. v. Microchip Technology Inc ., 307 sions of the original creation—what are called “derivative F.3d 775, 779-80 (9th Cir. 2002). Of course, if the copyright works.” 17 U.S.C.