Chapter 9 Answer guidance to end of chapter questions

1. Do you believe software should be protected by copyright law or patents? What about a sui generis software right?

To answer this question I would expect the student to discuss in order:

  1. The distinction between literal and nonliteral copyright protection from cases such as IBCOS Computers Ltd v Barclays Mercantile Highland Finance Ltd and John Richardson Computers Ltd v Flanders (No.2).
  2. The problems of non-literal infringement cases from IBCOS and John Richardson via the US authority Computer Associates International Inc. v Altai and Lotus Development Corp. v Borland International Inc through Navitaire v easyJet, Nova Productions Ltd v Mazooma Games Ltd and finally SAS Institute v World Programming Ltd.
  3. An analysis of the limitations of non-literal infringement enforcement following Navitaire and in particular SAS.
  4. The exclusion of software from patentable subject matter ‘as such’ in the European Patent Convention.
  5. The approach to patentability taken by the EPO in PBS Partnership/Controlling Pension Benefits Systems, HITACHI/Auction Method, and MICROSOFT/Clipboard Formats.
  6. A balancing analysis of the benefits and disbenefits of copyright vs patents and an examination of the potential for a sui generis approach and wat that might look like.

2. A client, Saadia, comes to see you for advice. Advise her of any potential claims she may have in copyright law. She is based in London:

Saadia owns a company Spinaround Games that specializes in producing games for children with motor control difficulties. They are highly interactive games which make use of motion sensor technologies, bright sounds, and bright colours designed to stimulate attention and movement among children between four and eight. A considerable amount of time has gone into developing a Spinaround system which uses both a specially designed hardware platform and carefully designed software, such as the bestselling ‘Xander’s Dance World’ and their new product ‘Flying with Allen’. Spinaround Games were until recently the only developer in this niche but valuable market.

Two months ago a rival developer PlayDay Games launched their own software but not hardware. Their games are designed to be compatible with the Spinaround system although Spinaround have not licensed them to use the Spinaround system and have never discussed with PlayDay any of the design specifications of the Spinaround system. Spinaround suspect PlayDay may have reverse-engineered their games software to ensure that PlayDay’s products would work on the Spinaround system.

PlayDay have initially released two games ‘PlayDate with Wendy’ and ‘Dance with Julio’. ‘Dance with Julio’ looks and plays exactly like ‘Xander’s Dance World’ with similar characters, colours, movements, and goals. Also, PlayDay have announced that coming soon will be four more games including ‘In the Air with Flair’ which according to prelaunch advertising looks just like ‘Flying with Allen’.

To answer this question I would expect the student to discuss in order:

  1. The first question is what elements of her software are protectable. The titles in question are “Xander’s Dance World” and “Flying with Allen”. What elements of these are protected? The key cases are Navitaire Inc. v easyJet Airline Co. and anor, Nova Productions Ltd v Mazooma Games Ltd and SAS Institute v World Programming Ltd.
  2. From an examination of Navitaire the student should deduce that only the truly expressive elements of software not how it looks, feels or interacts can be protected by copyright law.
  3. From an examination of Nova the student should deduce that preparatory designs and models for the production of software are subject to the Navitaire principle.
  4. Taking these together the advice to Rachel is that she has little chance of winning a copyright infringement action against PlayDay for the games copies “Dance with Julio” and “in the Air with Flair”.
  5. It appears their only chance of an infringement action is that PlayDay are infringing on their Spinaround platform by designing games to interoperate with the system without a license. However s.50B of the CDPA allows decompilation (reverse-engineering) of software to allow interoperability of software. Further, an examination of SAS reveals that “neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a [protectable] form of expression” Students should conclude that therefore it seems unlikely this will succeed either.

3. Following the decision of the CJEU in SAS Institute Inc. v World Programming Ltd [2012] 3 CMLR 4 that the functionality of a computer program is not protected by copyright as it falls on wrong side of the ideas/expression divide, and that the programming language used is also not protected by copyright as it is a functional element which allows instructions to be given to a computer, discuss what future role you believe copyright law will play in protecting computer software.

This question is essentially an analysis of the SAS decision:

  1. The beginning of the analysis requires a clear exposition of the facts and the issues in dispute in the SAS case.
  2. The key decision points to be discussed are (i) that copyright does not protected ideas, procedures, methods of operation or mathematical concepts and (ii) that copyright does not extend to the functionality or interfaces of computer programs, nor the programming languages in which they were expressed. Taken together this means the only elements of software to be protected are the actual expressive elements – the software code, the screen displays and any manuals.
  3. In effect the SAS decision is the end of non-literal copyright protection. The early line of cases such as John Richardson Computers Ltd v Flanders (No. 2) no longer seem to be good authority. The role of copyright protection seems limited to literal infringement claims only.
  4. To answer the question it looks likely that the future role of copyright in computer software is limited to cases of literal infringement such as installation in breach of license terms, such as Microsoft v Electro-Wide Ltd and online and offline piracy cases such as Cantor Fitzgerald International v Tradition (UK) Ltd. The role of look and feel protection is now likely to be taken on via software related patents which provide a wider protection of the (in copyright terms unprotectable) elements of software. To obtain a patent though one has first to register it and a good answer should recognise this is disputed territory – see Aerotel Ltd v Telco and Macrossan’s Application.

4. Are the “signposts” given in AT&T Knowledge the right signposts to ensure a clear divide between non patentable computer programs and patentable computer implemented inventions?

To answer this question I would expect the student to discuss in order:

  1. To firstly identify this is a question on software patentability. This should lead to quick identification of the strict limits of software patentability under Article 52(2)(c) the European Patent Convention (and given effect by s.1(2)(c) of the Patents Act 1977 computer programmes are not patentable “as such”.
  2. Starting with the European Patent Office Patent students should discuss the key case law including PBS Partnership/Controlling Pension Benefits Systems, HITACHI/Auction Method, and MICROSOFT/Clipboard Formats to determine that the key question is whether the claimed invention is a computer system or a computer programme.
  3. Taking the same analysis of the UK Law means examining Aerotel Ltd v Telco and Macrossan’s Application, Symbian Ltd v Comptroller General of Patents and AT&T Knowledge Ventures LP v Comptroller General of Patents Designs and Trade Marks. Here the key question is Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; Whether the claimed technical effect operates at the level of the architecture of the computer; or whether the claimed technical effect results in the computer being made to operate in a new way.
  4. Having done this, we can address the ‘signposts’ from AT&T Knowledge Ventures LP v Comptroller General of Patents Designs and Trade Marks. This analysis should address the five signposts and examine whether they smooth the divide between the EPO and the UK IPO.
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