Transcript Software and Database: copyright Protection for functional

Softwares and Databases:
Copyright and Sui Generis
Protection for functional
creations
LL.M in Intellectual Property
October, 30th 2006
Cristiana Sappa
Introduction
Yesterday: sea of freedom with islands of protection
Today: sea of protection with islands of freedom
J.Reichman
Introduction
INITIAL PARADIGM
Sea of Freedom
Patents
Copyright
Access requirements
Access requirements
Low
High
- invention
- novel
- inventive
- industrial
Protection
Strong
- content
- expressed form
- creativity
- no formality
Protection
(Relatively) weak
- form
Introduction
INITIAL PARADIGM
Sea of Freedom
Patents
Access requirements
Copyright
databases
High
- invention
- novel
- inventive
- industrial
Protection
Strong
- content
Utility
models
Access requirements
Low
- expressed form
- creativity
- no formality
design Protection
(Relatively) weak
- form
Computer
programs
Introduction
LEGAL HYBRIDS
Legal hybrid:
Creations or inventions which in principle do not fit nor in
copyright, nor in patent protection
- Utility models, Designs
- Functional creations (Softwares and databases)
+ idea/expression
softwares: formulas?
databases: facts?
+ copyright “extention”?
-broader scope of copyright
-NO extention to ideas
-NO extention to investments
Introduction
SHIFTING PARADIGM
databases
Fair uses
Sea of Protection
Copyright
TPM
Fair uses
design
Patents
Fair uses
Computer programs
Utility models
TPM Legal
protection
Fair uses
Fair uses
Fair uses
Sui generis protection
COPYRIGHT PROTECTION FOR
FUNCTIONAL CREATIONS: Sources
- TRIPs; WCT;
- European Directives
+ 250/91 on computer programs
+ 9/96 on databases
- Implementation of the Directives in (some)
European member states, US.
Sui generis protection:
Softwares: before the Directive (ex. France)
Databases: Directive 9/96.
Softwares
Softwares
Copyright protection for Softwares
• International legal frame
• TRIPs, art.10.1
Computer programs, whether in source or object code, shall be protected as
literary works under the Berne Convention (1971).
• WCT art. 4
Computer programs are protected as literary works within the meaning of
Article 2 of the Berne Convention*. Such protection applies to computer
programs, whatever may be the mode or form of their expression.
(*Berne art. 2: Copyright protection extends to expressions and not to ideas,
procedures, methods of operation or mathematical concepts as such.)
Softwares
Copyright protection for Softwares
•Regional Legal frame: the European Directive 250/91
•Copyright protection :
Consideration 6
…Member States should accord protection to computer
programs under copyright law as literary works
Article 1
…Memeber States shall protect computer programs, by
copyright, as literary works within the meaning of the
Berne Convention…
Softwares
Copyright Protection for Softwares
•Rights
•Moral rights?
•Economic rights
- reproduction, adaptation, distribution, rental
- communication to the pubblic?
•Exceptions
-necessary personal use, back up copy, studying purposes
-(§117 US Copyright Act)
-Decompilation for interoperability purposes
Softwares
Copyright Protection for Softwares
INTEROPERABILITY
Consideration 12 Whereas this functional interconnection
and interaction is generally known as 'interoperability`;
whereas such interoperability can be defined as the ability
to exchange information and mutually to use the
information which has been exchanged;
Softwares
Copyright Protection for Softwares
INTEROPERABILITY
Directive 250/91; Article 6
The authorization of the rightholder shall not be required where
reproduction of the code and translation of its form …are
indispensable to obtain the information necessary to achieve the
interoperability of an independently created computer program with
other programs, provided that the following conditions are met:
(a) these acts are performed by …an authorized person
(b) the information necessary to achieve interoperability has not
previously been readily available to the persons referred to in
subparagraph (a);
(c) these acts are confined to the parts of the original program
which are necessary to achieve interoperability.
Softwares
Copyright Protection for Software
Directive 250/91; Art. 6
The provisions of paragraph 1 shall not permit the information obtained through
its application:
(a) to be used for goals other than to achieve the interoperability of the
independently created computer program;
(b) to be given to others, except when necessary for the interoperability of the
independently created computer program; or
(c) to be used for the development, production or marketing of a computer
program substantially similar in its expression, or for any other act which
infringes copyright.
In accordance with the provisions of the Berne Convention for the protection of
Literary and Artistic Works, the provisions of this Article may not be
interpreted in such a way as to allow its application to be used in a manner
which unreasonably prejudices the right holder's legitimate interests or
conflicts with a normal exploitation of the computer program.
Softwares
Protectable subject matter
Software? Computer program?
International sources definitions
•TRIPs, art.10.1Computer programs, whether in source or
object code, shall be protected as literary works under the Berne
Convention (1971).
•WCT art. 4
Computer programs are protected as literary works
within the meaning of Article 2 of the Berne Convention*. Such
protection applies to computer programs, whatever may be the mode or
form of their expression.
Softwares
Protectable subject matter
•Directive
Consideration 7 For the purposes of this Directive, the term 'computer programs`
shall include program in any form, including those which are incorporated
into hardware, whereas this term also includes preparatory design material
leading to the development of a computer program (provided that the nature of the
preparatory work is such that a computer program can result from it at a later stage)
Consideration 13 Protection in accordance with this Directive shall apply to
the expression in any form of a computer program. Ideas and principles which
underlie any element of a computer program, including those which underlie
its interfaces, are not protected by copyright under this Directive.
Softwares
Protectable Subject Matter
Software:
- no hardware +
- computer program (In Europe computer program
itself+preparatory design material)
- preparatory design material +
- National definitions (e.g. France: dowstream material)
Computer Programs
Protectable Subject Matter
• Computer program
Ms. Kruspig: “A specification of the sequence of
computational steps in a particular programming language”
Prof. Puri « A series of instructions or statements…in order to
bring about a specific result »
- US copyright Act §101-
Computer Programs
Protectable Subject Matter
Operating system - Application system
Operating system (OS): set of programs managing hardware and software
resources of a computer. It performs basic tasks such as controlling input and
output devices, facilitating networking, managing files.
Application system: tailor made program for a specific need.
Access
Photoshop
MSDos-Windows
Word
Excel
Computer Programs
Protectable Subject Matter
Internal and external aspects of a computer program
Internal Aspects:
-Formulation of a computer program
- codes and languages
-Structure of a computer program
- algorithm and flowchart
External Aspects:
-Audiovisual Effects
-Interfaces
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS
Computer Programs’ formulation
-Codes: instructions composing the program.
- Source code: genesis of the program. Series of statements written in some human
readable computer programming language.
- literary work? Protectable by copyright? Expressed form? Original?
- the fact that the source code is not accessible to all of us relevant for the
copyright protection?
(compiled - assembled - executed)
- Object code: technical code addressed to the machine. It is not yet intelligible
by unskilled people.
Only the series of instruction can be protected in a code, not the single instruction
(which is mere data).
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS
Computer Programs’ Formulation
Program Languages
-Previously: programmation in object code
-Now: programmation in a more and more structured language
-> closer to human language
-> is a language protectable by copyright?
Consideration 14 ideas and principles of algorithm and program languages are not
protectable.
Does it mean, a contrario, that languages may be protectable?
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS
Computer Programs Structure
• Algorithm?
Series of simple instructions, univocally interpretable.
These instructions, if executed in a predefined order, allow
to reach a solution.
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS
Computer Programs Structure
Tiramisu
•
•
•
•
•
•
·
·
·
·
·
·
•
•
•
•
· In a salad bowl, to vigorously beat eggs, the mascarpone and sweetens it
· To soak biscuits in the coffee and to lay out them in the content of the salad bowl
· To cover with a layer of the egg-mascarpone-sugar preparation
· To thus alternate the layers of biscuits soaked in the coffee and the layers of the eggmascarpone-sugar mixture, while finishing by a layer of biscuits
· To powder with cocoa and to place at the minimum refrigerator 24 hours
•
1 package of biscuits to the spoon
6 eggs
750 G of mascarpone
6 caster sugar coffee spoons
1 strong coffee bowl
some powder cocoa spoons
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS
Computer Programs Structure
Is an algorithm protectable?
Consideration 14?
Germany: scientific instruction comparable to a
method
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS-RELATED
Computer Programs Structure
Flowchart: graphic expression of algorithm.
It represents the entire program, subdivided in independent subprograms
connected each others.
(Computer program in the terms of the European Directive).
Protectable?
Computer Programs
Protectable Subject Matter
EXTERNAL ASPECTS
- Audiovisual effect
- Interfaces
Consideration 11
Whereas the parts of the program which provide for such interconnection and interaction
between elements of software and hardware are generally known as 'interfaces`.
Parts of program which allow the interaction, while operating a communication.
Computer Programs
Protectable Subject Matter
EXTERNAL ASPECTS
Sometimes this communication is from the machine to human minds.
 Users interfaces.
Examples?
Are Users Interfaces Protectable?
No case law on it.
Computer Programs
Protectable Subject Matter
EXTERNAL ASPECTS
• Sometimes this communication is from one part of the
machine to another

Technical interfaces
Examples?
Protectable?
Directive, article 6?
(Microsoft case)
Computer Programs
Protectable Subject Matter
INTERNAL ASPECTS-RELATED: UPSTREAM MATERIAL
Directive: Article 1.1. in fine and Consideration 7 protect expressis verbis:
-Flowchart
-Specification : where the custom asks what he/she exactly requires.
It is a day by day work.
1)Protectable?
No jurisprudence on this
2)Difference copyright/know how
3)Who is the author?
Computer Programs
Protectable Subject Matter
BEYOND THE DIRECTIVE DEFINITION
- Material for programmers and for users
- Titles
Computer Programs
Creativity
• Formulation/structure/audiovisual effect/interfaces/upstream and
downstream material’s creativity has to be taken into account.
• Appreciated by the judge, its case by case approach.
Germany: High access requirement
England: Sweat of the brow (still?)
France: Emprunt de la personnalité: author contribution.
Spain, Italy: Intellectual apport (somehow different from France)
Softwares
Ownership Issues
• Article 2.1 Directive
The author is the natural person who created the program or the legal person
designated as the rightholder by that legislation. Where collective works are
recognized, the person considered by the legislation of the Member State to have
created the work shall be deemed to be its author.
•
Article 2.2 Directive
In respect of a computer program created by a group of natural persons jointly, the
exclusive rights shall be owned jointly.
Co-authorship: When and How?
Nature of the work: horizontal and vertical joint works
Softwares
Ownership Issues
• Article 2.3 Directive
Where a computer program is created by an employee in the
execution of his duties or following the instructions given
by his employer, the employer exclusively shall be entitled
to exercise all economic rights in the program so
created, unless otherwise provided by contract.
Softwares
Ownership Issues
Who is the owner of a computer program utterly
created by a computer program?
Softwares
Conclusions
• Subject matter – rights – ownership
• Subject matter: can we really consider it as
literary work?
• Rights: why title refers to sui generis right?
• Does this protection provide the most
suitable solution?
• Alternatives?
Open Source and Free Software
• Open source practice: production and development that promote
access to the computer program source materials and typically, their
source code.
• Free software is a matter of any users' freedom to run and adapt to
own needs, copy, distribute, study, change and improve the software.
Access to the source code is a precondition for this.
• Being free to do these things means that one does not have to ask or
pay for permission; still one can charge some fees when redistributing
(improved) copies.
Databases
Databases
Sources
• International legal frame
Berne 2.5
Collections of literary and artistic works such as encyclopaedias and anthologies
which, by reason of the selection and arrangements of their contents, constitute
intellectual creations shall be protected as such, without prejudice to the copyright
in each of the works forming part of such collections.
TRIPs art.10.2
Compilations of data or other material, whether in machine readable or other form,
which by reason of the selection or arrangement of their contents constitute intellectual
creations shall be protected as such. Such protection, which shall not extend to the data
or material itself, shall be without prejudice to any copyright subsisting in the data or
material itself.
WCT art.5
Compilations of data or other material, in any form, which by reason of the selection
or arrangement of their contents constitute intellectual creations, are protected as such.
This protection does not extend to the data or the material itself and is without prejudice
to any copyright subsisting in the data or material contained in the compilation.
Databases
Sources
Evolution of International Law
• Berne did not take into account compilations of mere data
 TRIPs do.
• For creativity purposes, Berne considered the selection
AND the arrangements
 TRIPs alternative requirement
Databases
Sources
Samples of Protection
 Common Law world
• Sweat of the brow
 Civil Law world + US after Feist
• Creativity
 Canada Federal Court
•
Stronger creativity
 UK
• Before and after the Directive
 Nordic legislations
• Prevent to copy compiled works
Databases
Sources
European Directive
Scope of Protection - (Chapter I)
Art.1.2 A database is a collection of independent works, data or other materials arranged in a
systematic or methodical way and individually accessible by electronic or other means.
Double-track protection of the European Directive
copyright for the STRUCTURE - (Chapter II)
Harmonized creativity?
Author’s OWN creation
sui generis for the CONTENT - (Chapter III)
Both original and factual European databases, which show that there has been qualitatively
or quantitatively a substantial investment in either the obtaining, verification or presentation
of the contents are protected by the sui generis right.


Discrimination?
Only reciprocity applies
Databases
European Directive
Sui generis protection
Art. 7.1 The owner of the sui generis right is the maker of a database
 The person who takes the initiative and the risk of investing.
Art. 7.4 Sui generis protection shall apply irrespective of the eligibility of that
database for protection by copyright or by other rights.
 It shall apply irrespective of eligibility of the contents of that database for
protection by copyright or by other rights.
 Protection of databases under sui generis protection shall be without prejudice
to rights existing in respect of their contents.
 Copyright and sui generis right are independent
 It is a right in data insofar such data are contained in a given database
Databases
European Directive
Sui generis protection: Content
The protection consists in the right to prevent extraction and/or re-utilization of the whole or
of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that
database.
Extraction
The permanent or temporary transfer of all or a substantial part of the contents of a
database to another medium by any means or in any form
Re-utilization
Any form of making available to the public all or a substantial part of the contents of a
database by the distribution of copies, by renting, by on-line or other forms of transmission.
Public lending is not an act of extraction or re-utilization
Art. 7.5 The repeated and systematic extraction and/or re-utilization of insubstantial parts
of the contents of the database implying acts which conflict with a normal exploitation of
that database or which unreasonably prejudice the legitimate interests of the maker of the
database shall not be permitted
Databases
European Directive
Sui Generis Protection: nature
Copyright on expressive form, not on contents.
- Equilibrium between right owner/public interest.
 The sui generis right is a right on the content
Is a sui generis right clashing with the above?
Consideration 45 The right to prevent unauthorized extraction and/or reutilization does not in any way constitute an extension of copyright
protection to mere facts or data.
Consideration 46 The existence of a right to prevent the unauthorized
extraction and/or re-utilization of the whole or a substantial part of works,
data or materials from a database should not give rise to the creation of a
new right in the works, data or materials themselves.
Databases
European Directive
Sui generis protection: implications
Idea/expression
Term of protection
Databases
European Directive
Ratio of copyright/sui generis protection
idea/expression
The point is not whether or not protecting ideas, but how much protection
for how many ideas a copyright system is able to grant.
Databases
Quantitative approach
Protected Data
Sui generis right protects ONLY data that:
a) are contained in a database “which shows that there has been qualitatively
and/or qualitatively a substantial investment in either the obtaining, verification or
presentation of the contents”.
b) are independent
c) are individually accessible
d) are arranged in a systematic or methodical way
Is a book protectable by sui generis right?
Internet?
Databases
Quantitative approach
Protected Data
Problems: digital databases.
Independence and individual accessibility loose effectiveness.
Why?
Book/article paradox
Arrangement of the materials: who decides it?
The Substantial investment requirement seems the sole criterion which
remains the same both in the analogue and in the digital worlds.
Is an investment “substantial”in absolute or in relative terms?
Databases
Quantitative approach
Extent of Protection
Ex Art.7.1 the sui generis right covers “transfer” and “making available to the
public” of data, only of “the whole or of a substantial part, evaluated
qualitatively and/or quantitatively” of such contents.
The sui generis right covers the “repeated and systematic extraction …
implying acts which conflict with a normal exploitation … or which
unreasonably prejudice the legitimate interests of the maker”.
Substantial?
Quantitative substantial?
Qualitative substantial?
Databases
Quantitative approach
Substantial
1)Only an amount of data whose obtaining, verification or presentation had involved a
substantial investment is protected?
2)Only the intrinsic commercial value of the data extracted or re-used has to come into
consideration?
3)Is the qualitative substantiality requirement to be evaluated from the side of the user
instead of from the side of the maker?
If so, even a single data which meets user’s need may be “qualitatively” substantial
•Only relevant data
•Data difficult to be found
Considerations 41 and 42: maker’s investment to be protected against users at large
who may “harm the investment”
Databases
Term of sui generis protection
Art. 10 Term of the sui generis right expires 15 years “from the first of January
of the year following the date of completion” or “following the date when the
database was first made available to the public”.
Art. 10.3 Any substantial change […] which would result in the database being
considered to be a substantial new investment […] shall qualify the database
resulting from that investment for its own term of protection.
Changes and not improvement
Never-ending protection?
Databases
Exceptions and Limitations
Art. 9
(a) extraction for private purposes of the contents of a non-electronic database;
(b) extraction for the purposes of illustration for teaching or scientific research, as
long as the source is indicated and to the extent justified by the non-commercial
purpose to be achieved;
(c) extraction and/or re-utilization for the purposes of public security or an
administrative or judicial procedure.
Such operations must not prejudice the exclusive rights of the maker to exploit the
database and their purpose must not be commercial.
Only a lawful user is entitled, for specified purposes, to extract or re-utilise a
substantial part of the database without the authorisation of the maker.
Databases
Exceptions and Limitations
What is a lawful user?
Definition found in the Commission’s Explanatory Memorandum to the first
proposal of Directive: “the user who is a lawful acquirer of the database”
the law needs to be integrated by the element of the lawful acquisition that, shall be
proved by the user himself/herself.
May the “Lawful user”rule be ineffective?
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
Facts
BHB and Others manage the horse racing industry in the UK; they compile and
maintain the BHB database which contains a large amount of information.
The BHB database contains essential information for those directly involved in horse
racing, but also for radio, TV broadcasters, for bookmakers and their clients.
William Hill, one of the leading providers of off-course bookmaking services in the
UK, launched an on-line betting service on two internet sites.
One can find out in these sites: which horses are running, which races, what odds are
offered by William Hill, etc.
The information displayed on sites is obtained:
1)from newspapers published the day before the race and
2)from the “Raw Data Feed” supplied on the morning of the race.
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
Proceeding
March 2000: the BHB and Others brought proceedings against William Hill in
the High Court of Justice of England and Wales, Chancery Division, alleging
infringement of their sui generis right.
1) Each day’s use by William Hill of racing data taken from the newspapers or the
RDF is an extraction or re-utilisation of a substantial part of the contents of the
BHB database contrary to Art. 7 of the directive;
2) Even if the individual extracts made by William Hill are not substantial they
should be prohibited under Art. 7 of the directive.
The concept of investment - 39th Recital
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
Creation of a database linked to the exercise of a principal activity.
The person creating the database is also the creator of the material contained in the database.
Does the above preclude the database maker from claiming the sui generis right?
NO, provided he establishes the obtaining/verification/presentation of those materials required
a substantial investment independent of the resources used to create those materials.
Investment in the selection, for the purpose of organising horses admitted to run in the race
concerned relates to the creation of the data. It does not constitute investment in obtaining the
contents of the database.
The process of entering a horse on a list for a race requires a number of prior checks , made at the
stage of creating the list for the race in question. They constitute investment in the creation of
data and not in the verification of the contests of the database.
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
Directive, Art. 7 “investment in…the obtaining…of the contents” of a database refer to the
resources used to seek out existing independent materials and collect them in the database.
It does not cover the resources used for the creation of materials which make up the
contents of a database.
Directive, Art. 7 “investment in…the…verification…of the contents” refer to the resources
used.
The resources used for verification during the stage of creation of materials which are
subsequently collected in a database do not fall within that definition.
“Extraction” and “re-utilisation”
The right to prohibit extraction and/or re-utilisation of all or a substantial part of the contents
relates to the manufacture of a parasitically competing product, but also to any user who,
through his acts, causes significant detriment, evaluated qualitatively or quantitatively, to
the investment.
Commercial or non-commercial purpose: Irrelevant to assess the lawfulness of an act
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
“Extraction” and “re-utilisation”
Those terms must be interpreted as referring to any act of appropriating and making available
to the public, without the consent of the maker of the database, thus depriving him of revenue
which should have enabled him to redeem the cost of the investment.
The fact that the contents of a database were made accessible to the public by its maker or
with his consent does not affect the right of the maker to prevent acts of extraction and/or reutilisation of the whole or a substantial part of the contents of a database.
A lawful user of a database, a user whose access to the contents of a database for the purpose
of consultation results from the direct or indirect consent of the maker of the database, may be
prevented by the maker, under the sui generis right, from then carrying out acts of extraction
and/or re-utilisation of the whole or a substantial part of the database.
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
“Substantial Part”
Sui generis protection covers databases whose creation required a substantial investment.
42nd Recital: intent to prevent “significant detriment, evaluated qualitatively or
quantitatively, to the investment”.
Qualitative assessment: like the quantitative assessment, must refer to the investment and
the prejudice caused to that investment by the act of extracting or re-utilising that part.
“Substantial part, evaluated quantitatively” refers to the volume of data extracted and
must be assessed in relation to the volume of the contents of the whole of database.
“Substantial part, evaluated qualitatively” refers to the scale of the investment in the
obtaining, verification or presentation of the contents subject to extraction and/or reutilisation.
A quantitatively negligible part of the database contents may represent significant
human, technical or financial investment.
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
As the existence of the sui generis right does not give rise to the creation of a
new
right in
the
works, data or materials themselves,
the intrinsic value of the materials affected by the act of extraction and/or reutilisation does not constitute a relevant criterion for the assessment of
whether the part at issue is substantial.
The data extracted and re-utilised by William Hill are vital to the organisation
of the horse races. Still, this is irrelevant to the assessment whether the acts
of William Hill concern a substantial part of the contents of the BHB
database.
Databases
ECJ, 9.11.04, Case C-203/02
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd
The resources deployed by BHB to establish date, time, place, name of the race, horses
running in it, for organising horse races, represent an investment in the creation of the
materials contained in the BHB database.
Consequently, if the materials extracted and re-utilised by William Hill did not
require BHB and Others to put in investment independent of the resources required
for their creation, it must be held that those materials do not represent a substantial
part, in quantitative terms, of the BHB database.
Art.7 prohibits acts of repeated and systematic extraction made by users of the database
which would lead to the reconstitution of the whole database or of a substantial part of it.
Purpose: prevent circumvention of the prohibition concerning repeated and systematic
extractions and/or re-utilisations of insubstantial parts of the database contents.
There is no possibility that William Hill might reconstitute and make available to the public
the whole or a substantial part of the contents of the BHB database and thereby seriously
prejudice the investment made by BHB in the creation of that database.
Conclusion
Object: from compilation of works to compilation of data
Rights: copyright
sui generis + TPM (and legal protection of TPM)
Beyond IP: data protection
Ownership: authors and makers
Conclusion
Are we mantaining the equilibrium?
What is a multimedia product?
Grazie Mille!
[email protected]
[email protected]