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New Ideas, Methods and Products Series
Volume XII |
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Software Protection: Patents, Copyrights
and Trade Secrets
INTRODUCTION
Protection for computer
software has been
the subject of debate for
many years. At
one time there was strong
opposition to the
awarding of patents for
inventions embodied
in or involving software.
That is no longer
the case: now software
is commonly patented.
Copyright protection had
been considered
only for the coding. That,
too, has changed:
now it is clear that copyright
protection
covers not only the coding,
the literal aspects
of a computer program,
but also the non-literal
aspects such as the sequence
and flow, organization
and structure of the software,
the user interface,
menus, and the like. Trade
secret protection
was available but only
if you kept the software
secret, which made it awkward
to embrace
copyright. Now the Copyright
Office has a
procedure whereby software
copyrights can
be registered yet trade
secrets contained
in the software can be
specifically preserved.
There is then no excuse
for releasing software
without some sort of protection.
Indeed,
more than one form of protection
can be acquired
on the same software.
This brochure explains
the current status
of patent, copyright and
trade secret protection
for software. Other brochures
in the series
cover: what things are
protectable by patent,
trademark, copyright and
trade secret; how
to establish those property
rights; why and
how to obtain foreign protection;
licensing
of ideas and products;
various agreements
used to protect the ideas
and products such
as employment agreements,
confidential disclosure
agreements, consultant,
supplier and customer
agreements, and visitor
forms; infringement
and litigation; the formal
procedure for
obtaining protection from
conception of an
idea to interaction with
the Patent and Trademark
Office and the Copyright
Office; the protection
of biotechnology; trade
dress - protection
for product appearance
beyond patent and
copyright; false advertising
- what is and
what isn't permissible;
comparative advertising
- what can you say about
the competition;
rights-in-data, patents,
and copyrights under
government contracts: SBIR
contracts; and
form invention to patent:
the inventor's
role.
PATENT PROTECTION
Broad patent protection
is available for
software. The scope of
patent protection
extends beyond merely the
coding or routines,
beyond the structure and
organization, beyond
the user interface and
menus of the program
to the broad underlying
concept or algorithm.
All manner of software
is protectable by
patent regardless of how
it is perceived:
as controlling industrial
equipment or processes;
as effecting data processing;
or as operating
the computer itself, for
example.
Software that controls
industrial equipment
or processes is patentable:
a system for
automatically operating
a rubber molding
device used a computer,
which was well known,
to run a molding device,
which was well known,
too. The computer was programmed
in accordance
with a very well-known
mathematical expression.
The only thing that was
new was the software,
which controlled the whole
system and opened
the mold when the rubber
part was properly
cured. The software was
the heart of the
invention that for the
first time automated
that particular rubber
molding device - and
it was patentable. A software
method of operating
entire systems of cooperating
manufacturing
plants was held patentable
too. There is
nothing surprising about
this. A patentable
system implemented in hardware
should be
no less patentable because
it was also or
alternatively implemented
in software.
Software that effects data
processing is
patentable, too, even though
no machines
or processes are involved.
It makes no difference
that the resulting output,
reports and documents
of the software are not
themselves patentable
or that the activity which
the software replaces
is not itself patentable.
For example, software
implementation of steps
normally performed
mentally may be patentable
subject matter.
Thus, while a method of
doing business is
not patentable subject
matter, the software
for operation of a computer
to effect a business
activity may be, e.g.,
the software implementation
of a system which automatically
transferred
a customer's funds among
a brokerage Security
Account, several money
funds, and a Visa/Checking
account automatically upon
occurrence of
preset conditions, was
held to be patentable
subject matter.
A software method of translating
from one
language to another (Russian
to English),
and a software method of
preparing architectural
specifications which describe
the various
materials and techniques
used in the construction
of a building were held
patentable.
Many patents have been
issued on data processing
software: for a system
for registering attendees
at trade shows and conventions;
for a securities
brokerage cash management
system; for an
automated securities trading
system; for
funding a future liability
by means of an
insurance investment program;
for managing
an auto loan; for optimization
of industrial
resource allocation; for
automatically determining
and isolating differences
between text files
(word processing); for
returning to a specified
point in a document (word
processing); and
for determining premiums
for insurance against
specific weather conditions.
Software that operates
the computer itself
is patentable too. A data
structure for allowing
the portions of the system
base of a computer
stored in scratch pad registers
to be altered
or repositioned without
completely reloading
the system base or using
special software
was held patentable. The
structure employed
a firmware module which
directed the data
transfer between the scratch
pad registers
and a system base located
in main memory.
Patents have issued on
software for converting
a source program into an
object program;
for programs which translate
from one programming
language to another; for
a cursor control
for a pull-down menu bar;
for displaying
images in windows on the
video display; and
for a computer display
with window capability.
It matters not that the
software is composed
of old routines if they
are assembled in
a different way and produce
a different result,
for it is well established
in patent law
that a combination of old
parts is patentable
when the resulting whole
is new. Indeed,
most inventions are a new
assembly of well-known
parts or steps.
To determine patentability
of a new piece
of software one need only
consider the underlying
concept or algorithm and
compare it to existing
competitive software. This
can be done by
reducing the software to
a flow chart which
illustrates the innovative
notion embodied
in the software. If this
flow chart differs
from similar illustrations
for competitive
systems then there is the
possibility that
patent protection may be
available. If this
new software product is
an important one
then the possibility of
patent protection
should be investigated.
Design patents too have
been used to protect
software. Design patents
have been issued
for visual features which
are produced on
the screen by the computer
software, such
as various screen display
icons, e.g., an
icon for a telephone display.
A software patent must contain a written
description of the software in such full
and clear terms as to enable a person skilled
in the art to which the software pertains
to create and use the invention. Without
a sufficient disclosure the patent will be
held invalid and all remedies against infringers
will be lost.
To avoid such problems,
those patenting computer
software should provide:
(1) complete flow
charts of the system; (2)
actual coding or
instructions for coding
where the coding
is not routine; and (3)
a clear explanation
of the preferred hardware
and how the hardware
operates with the software
to produce the
desired results.
COPYRIGHT PROTECTION
Copyright protection for
software, while
not as broad as patent
protection, is nevertheless
quite broad. Copyright
protects not just
against the copying of
the coding but also
against the copying of
the organization and
structure. That is what
"look and feel"
is all about: if a subsequent
developer creates
software that looks and
feels like earlier
copyrighted software there
is infringement,
whether or not the coding
of the two are
similar. Thus it appeared
to some that the
very idea of a program
could be protected.
Some in the industry were
in favor of such
strong protection, as it
would do away with
the need for licensing
every piece of software
to every customer, such
as by the use of
"shrink wrap"
licenses: the industry
could rely solely on copyright
protection
the way the recording and
film industries
do. Others felt that such
broad protection
would completely stifle
creation and development
of new software products
because once a basic
product such as a spreadsheet
or word processor
was launched, all others
would be foreclosed.
But "look and feel" really embraces
neither extreme. Copyright does not protect
the idea behind the software; it protects
only the form of the expression of the idea.
For example, a copyright on a book which
teaches how to turn lead into gold cannot
prevent a reader from applying the teachings
of the book to make gold from lead: that's
the idea. However, if the reader places the
book on a photocopier and makes copies of
the pages, then the copyright is infringed:
that is the form of the expression. But that
does not mean that infringement can be avoided
simply by rewriting the book in different
words. And the copyright in software cannot
be defeated simply by avoiding copying the
code line for line. What the "look and
feel" theory really does is make clear
that copyright protection for software prevents
against copying of non-literal as well as
literal elements.
The literal aspects of
a program, the source
code, object code and flow
chart, are copyrightable.
The non-literal elements
which include the
overall organization of
a program, the structure
of its command system,
and the presentation
of information on the screen
are protected
by copyright, too.
A simple three-part test
has been suggested
for determining infringement
under the "look
and feel" doctrine:
first, determine
what the idea of the program
is so it can
be distinguished from the
expression; second,
determine whether the particular
expression
of the idea is essentially
the only way to
express the idea or whether
there are other
ways to express the idea;
and third, determine
whether or not the elements
of the expression
have been substantially
copied.
The heart of the test is
step two. Under
step two of the test, proof
that the particular
expression of the program
is not the only
expression of the idea
can be established
by showing that other overall
appearances,
structures and sequences
of audio-visual
displays can be used; that
the particular
titles, menu screens, typefaces
and instructions
are only one choice from
a wide range of
expression. The existence
of similar products
of other parties can establish
that, as can
proof that the software
has been customized
in different ways for different
purchasers.
The look and feel investigation
focuses quite
literally on the visible
impact of the software
and the sequence or flow
of the action. For
example, courts have examined
the menu structure,
the order of commands in
each menu line,
the choice of letters,
words, or "symbolic
tokens" to represent
each command, the
presentation of these symbolic
tokens on
the screen (e.g., first
letter only, abbreviations,
full words, full words
with one or more letters
capitalized or underlined),
the type of menu
system used (e.g. one-,
two-, or three-line
moving-cursor menus, pull-down
menus, or
command drive interfaces),
and the length
of the prompts.
Courts have also examined
labelling, single
line boxes, reverse video
cursor, alternative
highlighting or capitalized
letter selection
options, positioning of
file, cursor location
and window information
across the top of
the screen, the use of
editing screens both
to edit and enter new data,
the highlighting
of the initial letter of
each of the menus,
and the form of the menu
windows.
That some of these specific
command terms
are quite obvious or merge
with the idea
of such a particular command
term does not
preclude copyrightability
for the structure
taken as a whole. If particular
characteristics
not distinctive individually
have been brought
together in a way that
makes the "whole"
a distinctive expression
of an idea - one
of many possible ways of
expressing it -
then the "whole"
may be copyrightable.
The fact that the allegedly
infringing software
was written in a different
programming language
and/or for different hardware
does not avoid
the application of the
look and feel theory.
If the user interface and
functions are similar,
infringement is likely.
It is not by chance that
the touchstones
of the courts' investigation
into look and
feel are the visually perceived
features
of the program. In early
software infringement
cases the complex task
of mastering the details
of the coding structure
in order to determine
copying naturally gave
way to the somewhat
more understandable approach
of examining
the result of the coding,
the user interface
on the screen. And the
fact that many of
the early software infringement
cases dealt
with video games, whose
significant value
was in the displays, created
even greater
impetus in that direction.
These video game cases
established that an
audio-visual display was
appropriate for
copyright protection even
if the underlying
computer program was not
copyrighted. Further,
these cases held liable
for copying of the
audio-visual scenes not
just the owners and
operators of the games,
but also the electronic
assemblers and manufacturers
who made the
printed circuit boards
that contained the
ROMs that held the underlying
coding, which
often was not itself copyrighted.
Even where the idea of
the game itself was
unprotectable, the courts
found protectable
the expression of the game
in the shapes,
sizes, colors, sequences,
arrangements and
sounds of the game. The
seeds of the tests
used in look and feel were
sown in the analysis
of video game copyright
infringement. The
video game decisions introduced
the notion
that one must determine
whether the similar
forms of expression used
by the alleged infringer
are those that simply cannot
be avoided,
that is, the expression
and idea are merged,
or there are other ways
to express the idea.
The cross protection between
the display
and the coding became confused
when some
courts held that the copyright
in one did
not protect the other:
each was the subject
for separate copyright
protection. The U.S.
Copyright Office stepped
in and settled the
matter by promulgating
new rules for copyright
registration establishing
that all copyrightable
expression embodied in
a program, including
the screen displays, is
to be registered
as a single work. Such
a single registration
is sufficient to protect
the copyright in
a computer program, including
related screen
displays, without need
to refer in the copyright
application to the displays.
Such a registration
will cover all copyrightable
material contained
in the computer program
and screen displays
even if only some or no
identifying material
for the screens is presented.
In fact the
author is invited to decide
whether the dominant
authorship is in the coding
or in the pictorial/graphics
and to use the application
form appropriate
to that type of work.
All forms of programs are protectable: flow
charts, source programs, assembly programs,
object programs. And it makes no difference
whether the program is an operating system
or an applications program. No distinction
is made between the copyrightability of those
programs which directly interact with the
computer user and those which, unseen, only
manage the computer system internally. Beyond
that, protection is afforded for microcode
or microprograms which are buried in a microprocessor
and even for those programs embedded in a
silicon chip.
Databases, too, are protected
by copyright.
The input of a copyrighted
database into
a computer results in the
making of a copy
and so there is copyright
infringement. It
makes no matter that the
data copied from
indices and graphs or maps
is rearranged
not as another book or
visual aid, but as
an electronically stored
database: it is
infringement. And this
is so even if new
and different maps, graphs
and text are produced
from it by the computer.
Even more subtle
problems have occurred
regarding databases.
The purveyor of a computer
program that permits
users to access and analyze
the copyrighted
database of another was
liable for copyright
infringement because in
order to analyze
the data the program had
first to copy portions
of the database.
The Copyright Office, noting
the dynamic,
changing nature of databases,
has instituted
a regulation to permit
a streamlined registration
every three months of all
automated databases
and their updates or other
revisions.
Some interesting twists
have arisen in software
copyright infringement
cases. In the case
of video games, enhancements
such as speed-ups
were found to infringe
because the final
display either looked like
or used the coding
of the original copyrighted
work. In another
case where a consultant
developed a program
to remove unwanted governors
in a copyrighted
program used by the consultant's
customers,
the owner of the copyright
charged infringement
and won, because in order
to find and remove
the governors the copyrighted
program had
to be printed out. That
was copying.
An owner of a copy of a
copyrighted program
is permitted to copy the
program in the course
of adapting it for his
own use. In the process
of adapting it, it is permissible
to translate
the program from one language
to another
or to add new features.
However, the owner
of the adapted program
cannot offer for sale
copies of the adapted program,
nor can it
be offered for resale as
the original. Even
more sensitive is the question
of who did
the adapting. If it was
an outside consultant,
the consultant's work must
be clearly defined
and authorized by the owner
of the copy or
the consultant will be
liable for copyright
infringement.
The delicate balance of
how much help the
owner of a copy of a copyrighted
program
can receive from a third
party before the
owner of the copyright
charges infringement
was demonstrated in a case
in which a monthly
magazine published in each
issue twelve to
fifteen programs that its
readers had permission
to copy into their computers.
When an enterprising
fellow typed all of the
programs into his
computer, copied them onto
disks, and sold
copies to the readers,
the magazine charged
infringement and won, even
though it seems
clear that there would
have been no infringement
if a reader had hired the
fellow specifically
to type in the programs
for that reader.
It is well accepted that
merely translating
a program from one computer
language to another
does not avoid infringement.
But it appears
that translating a concept
from English text
to a computer program is
infringement too.
A copyrighted book contained
a step-by-step
method for trading in commodities.
When a
competitor wrote a program
that carried out
the method in the book
it was held to be
an infringement of the
copyright in the book.
The court said that the
source code was not
an entirely new, unique
expression of ideas;
it was simply a translation
from one language,
English, into another,
the computer language!
It has even been held that
the description
of a computer program,
not the program itself,
in a written proposal is
an infringement
of the copyright in the
program.
Another area of interest
is security programs.
Security programs are those
installed on
a disk to prevent copying
of all the other
programs on the disk. Disks
containing the
security program were sold
to software producers
who placed their programs
on the disk and
sold them to customers.
An enterprising programmer
wrote a program which disabled
the security
program so customers could
copy the protected
program. This activity
did not constitute
infringement: the security
program was not
being copied, only the
protected programs
were and they were not
in issue.
One of the potentially
most troublesome areas
of copyright protection
for software is that
of authorship and title:
who created the
program and who owns it?
This is particularly
so because much of the
development work in
the software industry involves
consultants,
not just employees. If
an employee creates
the software, the employer
owns the copyright
even in the absence of
a written agreement
and has full control over
copying and selling
the software. If, however,
a consultant creates
the software without a
contract that assigns
title, the consultant owns
the copyright
and controls the copying
and selling of the
software. All the employer
gets is the use
of the single copy that
the consultant developed
for the employer. The law
is clear. And in
order for a person to be
designated an employee
under copyright law the
person must be a
real employee. Full time
work at the employer's
premises, salary, withholding,
FICA, benefits,
all will be examined. The
simple and only
sensible way to avoid serious
unexpected
loss of rights is for there
to be an executed
contract between the employer
and the consultant
to define ownership before
any work begins
and any consideration is
paid.
Copyright notice is no
longer as critical
as it once was. Formerly,
copyright notice
was required to be placed
on every copy of
a published copyrighted
work or the copyright
would be forfeited and
become free for all
to copy. That requirement
was modified by
the Copyright Act of 1976
and now the requirement
has been entirely abolished.
Notice is no
longer required. In March
of 1989 the U.S.
became a part of the Berne
Convention and
thus no longer requires
notice to establish
copyright. Copies of works
created after
that time need not have
notice on them, though
it is prudent still to
use notice because
it establishes rights against
innocent infringers.
Without notice a copyright
owner must show
actual knowledge on the
part of the infringer
to establish liability.
The form of the notice
is simple: Copyright or
Copr. or (c), plus
the year of publication
plus the name of
the owner. Notice should
appear: on the title
screen produced by the
software; on the media
itself, such as on labels
or jackets on disks;
in the coding itself so
it appears on any
printout of the program;
and in any accompanying
documentation.
Registering a copyright
in software where
trade secrets are not involved
is relatively
straight forward. The copyright
owner need
only submit a completed
application for registration
along with the source code
of the software
for deposit in the Library
of Congress. When
the code is more than fifty
pages in length,
only the first and last
twenty-five pages
need be submitted. If the
software contains
a copyright notice, then
the page or portion
bearing the notice should
be included. In
cases where a user's manual
normally accompanies
the software, then a copy
of that should
be submitted too.
If the owner of the copyright
will not or
cannot supply the source
code for deposit,
the Copyright Office will
accept the object
code, accompanied by a
written statement
that the work embodied
in the object code
contains copyrightable
authorship. The Copyright
Office will then grant
registration, but
with the warning that the
work is registered
under the "rule of
doubt", i.e.,
the Copyright Office has
made no determination
as to the existence of
copyrightable authorship
in the work.
TRADE SECRET PROTECTION
Software may also be protected
through a
trade secret approach,
separately or overlapping
with patent and copyright
protection. All
information disclosed in
a published copyrighted
work is in the public domain.
The contents
or ideas may be used without
restriction,
even though the form of
the work may not
be copied. But when a software
developer
sold software that bore
both a copyright
notice and a trade secret
warning legend
which prohibited unauthorized
use or disclosure,
the trade secrets in the
software were protected.
The customer had no right
to rely on the
existence of the copyright
notice on the
work as a representation
that the work has
been generally published
and that therefore
the contents cannot qualify
as a trade secret.
There was no inherent conflict
between the
copyright law and trade
secret law, since
the former protects the
form of the work
while the latter protects
the contents or
ideas of the work. The
fixing to a document
of a statutory notice of
copyright does not
automatically prevent the
owner from subsequently
asserting that the documents
have not been
generally published but
instead contain subject
matter which is a trade
secret.
Difficulties also arise
in situations when
the customer claims trade
secret rights in
the software and the developer/consultant
contends there are none.
In one such case
the developer defeated
the trade secret claim
by showing the system used
a number of off-the-shelf
subroutines and some that
it had developed
for other customers.
The U.S. Copyright Office
fully recognizes
the compatibility of copyright
and trade
secret protection. Its
rules provide special
filing procedures to protect
trade secrets
in the software.
Copyright owners who wish
to protect their
trade secrets but avoid
clouding their registration
with a "rule of doubt"
approach
have a number of options.
In addition to
the page containing the
copyright notice,
if there is one, the deposit
for copyright
may include either: (a)
the first and last
twenty-five (25) pages
of source code with
portions blocked out, or
(b) the first and
last ten (10) pages of
source code in their
entirety with no blocked
out portions, or
(c) the first and last
twenty-five (25) pages
of object code and any
ten (10) or more successive
pages of source code with
no blocked out
portions, or (d) when the
program is no more
than fifty (50) pages in
length, the entire
source code with the trade
secret portions
blocked out.
The permissible blocking
out of portions
of the source code includes
"striping".
This is the practice of
blanking out vertical
or diagonal stripes of
the printed code so
that the copyrightable
expression is partially
obscured. The part that
is not blocked out
must constitute more than
the part that is
blocked. There must be
visible a significant
portion of the source code
sufficient to
permit the Copyright Office
to determine
that there is a copyrightable
work present.
There are four primary
steps for maintaining
a trade secret in software.
First, there
should be confidential
disclosure agreements
with all customers to whom
the software is
leased, licensed or sold
and with all employees,
agents, consultants, suppliers
and anyone
else who will be exposed
to the secret information.
The agreement should bind
them not to use
or disclose the information
without permission.
Second, there should be
security precautions
against third parties gaining
access to the
software. Sturdy locks,
perimeter fences,
guards, badges, visitor
sign-in books, escorts,
and designated off-limit
areas are just some
of the ways that such control
is exercised.
Third, media and documents
containing the
trade secrets should contain
a confidentiality
legend and should be kept
in a secure place
with limited access such
as a safe or locked
drawer or cabinet. Fourth,
the employees,
consultants and others
who are concerned
with, have access to or
knowledge about the
software should be told
of the existence
of the secrets, their value
to the owner,
and the requirement for
secrecy.
CONCLUSION
Clearly there is strong
and broad protection
available for software
through the separate
or combined mechanisms
of patents, copyrights
and trade secrets. Even
within each mechanism
there are a number of avenues
available.
All that is required is
some early, commonsense
planning and preparation.
A POSTSCRIPT
While this primer has been
directed to the
protection of software
by patents, copyright
and trade secrets in the
United States, in
most cases that can only
be the first step.
In the modern atmosphere
of international
competition and global
market opportunities,
wider protection must be
considered and is
available in varying degrees
depending on
the nature of the software
and the type of
protection sought. Software
protection is
growing stronger in many
countries due in
part to their own recognition
of the need
to protect their software
industry and the
need to gain trading concessions
from the
U.S., which is pressing
hard for improved
protection for software
by its trading partners.
Separately, while this primer deals only
with patent, copyright and trade secret protection
for software, there is yet another important
avenue of protection available. That is,
trademark. While a trademark does not protect
the product itself, the brand name by which
a software product is known can be as valuable
as the patent, copyright or trade secret
protection, or even more valuable. Consider
the market advantage of a new product offered
under the name Lotus 1-2-3-4. And trademark
protection is generally easier and less expensive
to obtain than the other forms of protection.
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