Copyright, contract and the protection of computer programs

Abstract

The extent to which permitted acts under copyright law can be varied by contractual arrangement and conversely, the manner in which proprietary interests can override contrary stipulations expressed in a contractual agreement, collectively display something of the complexity facing software creators and acquirers when defining the scope of their rights and responsibilities towards each other. This paper explores the true scope of the rights granted to software users under existing legislation and considers the measures which a software creator may legitimately advance in order to vary that position. In so doing it is suggested how possible tensions between copyright and contract principles can be resolved and how a successful and suitably transparent agreement between the parties can be promoted.

Keywords:

• copyright
• contract
• computers

Notes

Navitaire v. Easyjet Airline [2004] EWHC 1725 (Ch); Nova Productions v. Mazooma Games [2007] EWCA Civ 219.

Ben Allgrove and Paul McGrath, ‘Pool Cues and Computer Games: The “Look and Feel” Debate Played Out in the Court of Appeal’, Computers and Law, 18, no. 2 (2007): 5.

Conference theme of the 23rd BILETA Annual Conference held at Glasgow Caledonian University in March 2008. This article is an updated and expanded version of a paper presented at that conference, see further www.bileta.ac.uk.

For a fuller discussion of the position that the granting of a licence by a licensor is a process by which he surrenders rather than gains rights, see further Iain G. Mitchell, ‘Software Licences: Should it be Getting Personal?’, Computers and Law 15, no. 6 (2005): 21-22. Iain G Mitchell QC is Vice Chairman of the Scottish Society for Computers and Law and in his article offers an engaging discussion about the nature of licence rights and copyright.

The permitted acts examined in this paper are those prescribed by the Copyright, Designs and Patents Act 1988: the making of a back up copy at Section 50A; the act of decompilation at Section 50B, observing, studying and testing of computer programs at Section 50BA and in certain circumstances copying or adapting the program as set out in Section 50C. The paper does not examine acts permitted in relation to databases as set out in Section 50D, see further L. Bently and B. Sherman, Intellectual Property Law, 3rd edn (Oxford: Oxford University Press, 2009), 232, 310–318.

Copyright, Designs and Patents Act 1988, see note 5.

Richard Morgan and Kit Burden, Morgan and Stedman on Computer Contracts (London: Sweet and Maxwell, 2001), 75.

Bently and Sherman, Intellectual Property Law, 230.

Sony Computer Entertainment Inc v. Owen [2002] EMLR 742.

Copyright, etc. and Trade Marks (Offences and Enforcement) Act 2002.

See further, Arie van Deursen, ‘Program-Transformation.Org’, 2004. Available from http://www.program-transformation.org/Transform/ReverseEngineering (accessed July 21, 2008).

Copyright, Designs and Patents Act 1988, see note 6.

The four situations are listed in Section 50B (3) (a)–(d) consecutively. It can be noted in respect of the second situation, at Section 50B (3)(b) that it could be difficult to ensure that only the relevant parts of code are decompiled and that it may be easy for a lawful user to inadvertently decompile more than was intended.

For example, see further, Dunn who outlines the arguments in favour of offering a wider choice to consumers – Susan A. Dunn, ‘Defining the Scope of Copyright Protection for Computer Software’, Stanford Law Review 38 (1986): 518; and Barton who discusses the conflict ‘between the supporters of open source software, who argue for maximum disclosure of software code, and suppliers of proprietary software who jealously guard access to their source code’ – John Barton, ‘Open source and WIPO’, Computers and Law 14, no. 5 (2003): 36–38.

Copyright, Designs and Patents Act 1988, see note 6.

For industry commentary, read the speech delivered by Christou, Chief Executive of Fujitsu Services – Richard Christou, ‘Transcript of SCL's 30th Anniversary Lecture’ (2004) with a link available from Computers & Law 14 (6): 8. To date, there have been no UK cases on reverse engineering of computer programs although cases relating to reverse engineering of other creations, e.g. drawer design, as in LB (Plastics) Limited v. Swish Products Limited [1979] RPC 551, and an exhaust system, as in British Leyland Motor Corporation v. Armstrong Patents Co. Limited [1986] RPC 279, have reached the courts. There have been decompilation cases in other jurisdictions, for example, as heard by the Singapore Court of Appeal in Aztech Systems Pty Ltd v. Creative Technology Ltd [1997] FSR 491 and the High Court of Australia in Data Access Corporation v. Powerflex Services Pty Ltd [1999] HCA 49; and in the US where the legitimacy of reverse engineering was considered in Nintendo v. Atari (1992) 975 F. 2d 832 and Sony Computer Entertainment v. Connectix Corporation 203 F. 3d 596 (2000). For a discussion on the international perspective of permitting decompilation and the approaches adopted in different jurisdictions, see further Diane Rowland and Andrew Campbell, ‘Supply of Software: Copyright and Contract Issues’, International Journal of Law and Information Technology 10, no. 1 (2002): 33–38.

See further, Susan E. Singleton, ‘Computer Software Agreements and the Implementation of the EC Directive’, Computer Law and Practice 9 (1993): 50 and for a sample severance clause, see Rachel Burnett and Paul Klinger, Drafting and Negotiating Computer Contracts, 2nd ed. (Haywards Heath, UK: Tottel Publishing, 2005), 101.

See further, Sherree Westell, ‘Escrow Agreements: Traditional Protection for New Scenarios’, Computers and Law 15, no. 1 (2004): 25–27; N. Swycher and M. Reberio, ‘Information Technology: A Highway Code’, Practical Law Companies 6, no. 5 (1995), 27 and also for a discussion of some of the tensions in this area see J. Yates, ‘Third Party Computer Maintenance – A Legal Perspective’, Computer Law and Practice 10, no. 1 (1994): 9–13.

Saphena Computing v. Allied Collection Agencies [1995] FSR 616.

Ian J. Lloyd, Information Technology Law (Oxford, Oxford University Press, 2004), 462 and see further, Diane Rowland and Elizabeth Macdonald, Information Technology Law, 3rd ed. (London: Cavendish, 2005), 112.

EC Directive on the Legal Protection of Computer Programs, 91/250/EC, which at Article 5.1 provides: ‘In the absence of specific contractual provisions, the [restricted acts] … shall not require authorisation by the rightholder where they are necessary … in accordance with [the program's] intended purpose, including for error correction’.

Case 14/83, Von Colson and Kamann v. Land Nordrhien-Westafalen [1984] ECR 1981. As an additional comment, it can be suggested that the Software Directive itself may be more restrictive than was intended. There is an apparent inconsistency between Article 5(1), which allows copying for error correction purposes but also allows for contractual prohibition of this, and Recital 18 which states that parties cannot prohibit copying for error correction by contract. See, further, Morgan and Burden, Morgan and Stedman on Computer Contracts, 78–79 and M. Sherwood-Edwards, ‘Seven Degrees of Separation: The Software Directive and UK Implementation’, Computer Law and Practice 9 (1993): 169.