2. The Bundle of Rights Called “Copyright”

Patents / Computer Related Inventions / US Copyright Protection for Software

The bundle of rights given to the owner of copyright in literary works, such as computer programs,[6] are the rights to control 1) reproduction of the work, 2) preparation of derivative works, 3) distribution of copies of the work, 4) public performances of the work and 5) public display of the work. [7]

In order to succeed in a copyright action, it is of course necessary for the plaintiff to establish that the defendant “copied” the work in question. Since it is rarely possible to produce direct evidence of the act of copying, the courts will normally infer that copying has occurred if the plaintiff can show that the defendant had access to the copyrighted work and that the alleged infringement is substantially similar to the copyrighted work. [8] However, if the defendant can show that there was independent creation of the work in question, there is no copyright infringement. [9]

A second question is how much of the work must be copied for there to be an infringement. The case law refers to this as requiring “substantial similarity” between the work in which copyright exists and the alleged infringement. Clearly there is no need for an entire work to have been copied for infringement to occur. Nor will trivial changes avoid infringement. Application of the principle is, however, more complicated than it seems and to some extent at least seems to depend upon the court’s perception of how much creative effort was involved. For example, it has been held that “When the range of protectable ... expression is narrow, the appropriate standard for illicit copying is virtual identity”. [10] The application of these principles to copyrights for computer software will be discussed in the next section, since in this particular area, there is a clear relationship between protectability and scope of protection.

For the most part once the questions of whether there has been copying of a pertinent part of a work is determined, it is fairly easy to determine whether such a right has been infringed once it has been established whether copyright exists. The application of two rights in the bundle does, however call for further comment. These are the distribution right and the display right.

So far, as the distribution right is concerned, the statute includes provisions limiting the rights of copyright owners to inhibit further sales of copies of their work that are already on the market. The broad provision is set out in Section 109(a) and is often referred to as the “first sale doctrine.” It provides that, subject to certain transitional provisions relating to various extensions of copyright term that have occurred, that:

the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

It has, however, been held that this provision does not apply where the lawful possessor of the copy in question is not the owner but merely a licensee. [11]

The broad provision of paragraph (a) of Section 109 is, however, restricted with respect to copies of computer programs and sound recordings by those of paragraph (b) which was added in two steps first by the Record Rental Amendment of 1984 and secondly by the Computer Software Rental Amendments Act 1990. This reads as follows:

Notwithstanding the provisions of subsection (a), unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program (including any tape, disk, or other medium embodying such program), and in the case of a sound recording in the musical works embodied therein, neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program (including any tape, disk, or other medium embodying such program), may, for the purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession of that phonorecord or computer program (including any tape, disk, or other medium embodying such program) by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending. Nothing in the preceding sentence shall apply to the rental, lease, or lending of a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution. The transfer of possession of a lawfully made copy of a computer program by a nonprofit educational institution to another nonprofit educational institution or to faculty, staff, and students does not constitute rental, lease, or lending for direct or indirect commercial purposes under this subsection.

This provision therefore prohibits the leasing or other similar transfer of copies of a computer program for direct or indirect commercial gain. It does not appear necessary for the program to be embodied in anything tangible for the provision to apply so that, for example transmission of a program over the Internet would be covered.

So far as the display right is concerned, this has been held to be infringed by unauthorized display of copyrighted works on an Internet site even when this is effected by importing the works direct from the copyright owners site without any intermediate copying. [12]

[6] “Literary works” are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied. Copyright Act, 17 USC § 101. Case law has classified computer software as falling within the statutory definition of copyrightable subject matter as literary works, although some manifestations of the software may be protectable as audio-visual works. The classification of software as literary works is consistent with the requirements of Article 10 of TRIPS and Article 4 of the WIPO Copyright Treaty.

[7] The Copyright Act, 17 USC § 106.

[8] Ferguson v. National Broadcasting Company, 584 F.2d 111, 200 USPQ 65 (5th Cir. 1978). Recent decisions have criticized the use of the word “substantially” in this context as being confusing since another part of the test for copyright infringement is whether the alleged copy copies a substantial” part of the work which is the subject of copyright. The modern trend is to talk of “probative” similarity. Repp v. Webber, 132 F.3d 882, 45 USPQ2d 1285 (2nd Cir 1997). Whatever it is called, the essence of the test is whether the alleged copy contains “similarities that, in the normal course of events, would not be expected to arise independently in the two works” Nimmer on Copyright 13.03[B].

[9] Procter & Gamble Co. v. Colgate-Palmolive Co., 53 USPQ2d 1149.

[10] Apple Computer v. Microsoft Corp., 35 F.3d 1435 32 USPQ2d 1086 (9th Cir. 1994).

[11] Adobe Systems Inc. v. One Stop Micro Inc., 53 USPQ2d 2003 (D.N. Cal. 2000).

[12] Kelly v. Ariba Soft Corp., 61 USPQ2d 1564 (9th Cir. 2002).

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