A Guide to Knowing How and When to Protect the Copyrights in Software

With competition and digital piracy on the rise, it is now more essential than ever to ensure that you have correctly protected your software’s intellectual property rights. Certain components of a software program may be protected under different bodies of intellectual property law, such as: trademarks, trade secrets, patents and copyrights. However recently, the world’s attention has turned to the copyrightability of computer programs.

In Oracle America, Inc. v. Google Inc., Oracle sought $9 billion in damages against Google in connection with its alleged copyright infringement of Oracle’s computer programs.[1] On November 15, 2019, the Supreme Court of the United States granted certiorari to review the case.[2] Although oral arguments on the case, which has been cited to as “the copyright case of the century,”[3] have now been postponed until next year,[4] it is easy to understand the great importance that protecting the copyright to a computer program has.

Software’s Road to Copyright Protection

Software and the manner in which the intellectual property rights to software can be protected have continuously been evolving over the years. The modern history of the protection of intellectual property rights in computer programs dates back to 1980 when the Final Report of the National Commission on the New Technological Uses of Copyrighted Works,[5] which was published by the Commission on New Technological Uses of Copyrighted Works (“the CONTU”), was adopted by Congress. The CONTU was a commission that Congress had tasked to study and make recommendations on legislation and procedures concerning the protection of “automatic systems of machines.”[6]

After Congress had adopted the CONTU’s findings, another breakthrough in the protectability of software came in the Supreme Court case Diamond v. Diehr, which held that a machine which was controlled by a computer program was in fact patentable.[7] Since then, a multitude of court cases and legislation has, in one fashion or another, found that the intellectual property rights to computer programs are, in fact, subject to protection through a variety of different bodies of law.

Source Code v. Object Code

The Copyright Act defines a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”[8] These set of “statements” or “instructions” are more commonly referred to as the program’s source code or object code. Source code is “a set of statements and instructions written by a human being using a particular programming language,” such as Java, Perl and C++, to name a few.[9] On the other hand, object code is “a representation of a computer program that is written in a machine language consisting of binary code (i.e., ones and zeroes).[10] Object code is comprehensible to a computer or other electronic device, but as a general rule, it is not comprehensible to human beings.”[11]

Early case law on the subject had often held that while a computer program’s source code is in fact protectable, the object code of a computer program was not, due to the fact that it was considered by some to be a mechanical tool or a machine part.[12] Then, in 1983, the court held in the landmark case Apple Computer, Inc. v. Franklin Computer Corp. that object code, namely embodied in an operating system, was equally subject to copyright protection as a literary work.[13] Today, while a computer program’s source code and object code are subject to copyright protection, due to the fact that object code is unintelligible to a human reader, the U.S Copyright Office has advised that copyright applications which are submitted with deposits of object code shall be subject to The Rule of Doubt.[14] “The Rule of Doubt notifies the claimant, the courts, and the general public that the Office is unwilling to grant a presumption of validity to certain aspects of the claim due to the fact that the Copyright Office is unable to examine the deposit so as to be able to determine the copyrightability of the work.”[15]

Deposits

In order for the U.S Copyright Office to be able to determine the copyrightability of a work of authorship, it needs to have a sample of the work that’s being registered. A “deposit,” or a physical or electronic embodiment of a work, is submitted with a copyright application and consists of the work on or in a medium such as paper, videotape and online digital code.[16]

Although the Copyright Office does allow either source code or object code to be submitted as a work’s deposit, “[t]he Copyright Office strongly prefers that you submit your copyright application using a source code deposit.”[17] Typically, a deposit comprised of a computer program’s source code requires that the applicant submit the first twenty-five pages and last twenty-five pages of the source code for the specific version of the computer program that has being registered.[18]

However, for instances where the source code contains trade secrets, the applicant must notify the Copyright Office of the presence of trade secrets in the deposit and must include either a copy of the first and last ten pages of the source code without blocking out any of the code or a copy of the first and last twenty-five pages of the source code while blocking out the portions of the code which contain trade secret material.[19] Where a portion of the source code is blocked out, such blocked out portions must comprise of less than fifty percent of the total deposit.[20]

Trade Secrets

“Trade secrets” are defined as any type of “financial, business, scientific, technical, economic, or engineering information…where the owner thereof has taken reasonable measures to keep such information secret; and the information derives independent economic value…from not being generally known to…another person who can obtain economic value from the disclosure or use of the information.”[21] Trade secrets are currently federally protected under the Defend Trade Secrets Act (DTSA) of 2016.[22] As it turns out, while the bodies of law surrounding trade secrets and copyrights can at times provide software with concurrent intellectual property protection, failing to follow the U.S Copyright Office’s instructions can lead to devastating consequences. Holdings in cases, such as that in Capricorn Management Systems, Inc. v. GEICO, have at times invalidated a plaintiff’s claim for the misappropriation of trade secrets where the source code deposit which was filed along with a copyright application was unredacted.[23]

As a result of the protection afforded by the DTSA and the possibility of having trade secret claims thrown out of court as a result of improper redaction of an application’s deposit; more and more computer programs are refraining from copyright registration entirely and focusing more on the confidentiality protocols for ensuring that the trade secrets to a computer program remain secret.

Sources:

[1] Oracle America, Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014). [2] Google LLC v. Oracle America, Inc., Docket No. 18-956 (S. Court 2019). [3] Professor Mark Lemley, “Supreme Court, Finally, Takes Up ‘Google v. Oracle’,” Stanford Law Press Release (Nov. 15, 2019), https://law.stanford.edu/press/supreme-court-finally-takes-up-google-v-oracle/ [4] Supreme Court of the United States, Press Release (March 16, 2020), https://www.supremecourt.gov/publicinfo/press/pressreleases/pr_03-16-20 [5] Final Report of the National Commission on the New Technological Uses of Copyrighted Works (CONTU Rep.), ISBN 0-8444-0312-1 (1978). [6] Computer Software Copyright Act of 1980, Pub. L. No. 96–517, § 10, 94 Stat. 3015, 3028 (1980) [7] Diamond v. Diehr, 450 U.S. 175 (1981) [8] 17 U.S.C. § 101 (2020). [9] U.S. Copyright Office, Compendium of U.S Copyright Office Practices, Glossary (3d ed. 2017). [10] Id. [11] Id. [12] Data Cash Sys., Inc. v. JS & A Group, Inc., 480 F. Supp. 1063, 1069 (N.D. Ill. 1979). [13] Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983). [14] U.S Copyright Office, Compendium of Copyright Office Practices, Chapter 600 (Examination Practices), § 607 (3d ed. 2017). [15] Id. [16] U.S. Copyright Office, Compendium of U.S Copyright Office Practices, Glossary (3d ed. 2017). [17] U.S Copyright Office, Copyright Registration of Computer Programs, Circular 61 (2019). [18] Id. [19] Id. [20] Id. [21] 18 U.S.C § 1839(3) (2020). [22] 18 U.S.C. § 1836, et seq. (2020). [23] Capricorn Management Systems, Inc. v. Government Employees Insurance Co., No. 15-CV-2926 (Dist. Court, ED New York 2016).