Copyright Law & Computer Programs: Enforcement of Rights

Dinal Phillips

Introduction

Intellectual property concerns the creation of the human intellect. It was once described by an American Judge as the ‘metaphysics of the law.’2 Intellectual property law primarily embraces the law of patents, copyright, and trademarks. Its object is to recognise and protect the products and processes of intellectual activity in the industrial, scientific, literary or artistic field. It operates through the grant of exclusive rights.

The most direct source of protection for intellectual property is national laws. Other sources include legal instruments of regional bodies composed of groups of countries (such as the directives of the European Directives), bilateral and plurilateral agreements among countries which contain provisions on intellectual property (such as the North American Free Trade Agreement) and multilateral agreements, such as the Berne Convention and the recent Agreement on the Trade Related Aspects of Intellectual Property Rights,3 concluded under the Uruguay round of negotiations under the former GATT (now the World Trade Organisation).

Copyright Law in Sri Lanka

The idea of a right to one’s intellectual property was initially introduced to Sri Lanka by the British regime. Although there are very ancient examples of copyright protection granted by biblical rules and medieval monarchs, the real origin of copyright was with the technological leap forward – the printing press. The first copyright law was adopted in Venice. The concept spread, but protected only printers and publishers, not authors. The first law to protect authors was the Statute of Anne, enacted by the English Parliament in 1709. In Sri Lanka, principles of English commerce seeped into the Roman-Dutch law applicable at that time and the thinking of English judges greatly influenced our commercial law till 1859.

Inscribed in marble in a cupola of the Headquarters of the World Intellectual Property Organisation, Geneva, Switzerland, Penned by the organisations renowned Director General – Arpad Bogsh

‘Mot v Marsh, 9 Fed Cases 342/344

Hereinafter, “TRIPS Agreement”

The United Kingdom’s (UK) legislation on industrial property first entered our statute book with the introduction of the British Inventors Ordinance. This was followed by a number of Ordinances. In 1964, Sri Lanka for the first time enacted her own Trademarks Act, which was inoperative due to delays. Therefore the English Act of 1911 continued in force till the enactment of the Code of Intellectual Property Act, No. 52 of 1979. The Code of Intellectual Property Act is based on the World Intellectual Property Organisation (WIPO) model law for developing countries. To supplement the provisions in the Code, Sri Lanka had also in the international sphere, acceded to the Paris Convention on Intellectual Property, and the Berne Convention on Copyright, both administered by the WIPO and the Universal Copyright Convention administered by the United Nations Educational, Scientific and Cultural Organisation (UNESCO). There was also a bilateral agreement between the United States of America (USA) and Sri Lanka, signed in 1991 and most recently the TRIPS Agreement. The TRIPS Agreement is a minimum standards agreement, which allows members to provide more extensive protection for intellectual property rights. Members are left free to determine the appropriate method of implementing, the provisions of the Agreement within their own legal system and practice.

The Code of Intellectual Property Act was in operation for more than two decades till the 11th of November 2003, and except for a few minor changes no major changes were made. The last amendment, namely Act No. 40 of 2000, introduced to the Code software protection under the copyright regime – an important feature in the present context. In this Amendment a ‘computer’ has been defined as an electronic or similar device having information processing capabilities. A ‘computer program’ is defined as a set of instructions expressed in words, codes, schemes, or in any other form which is capable when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result. The new Act, the Intellectual Property Act, which came into operation in Sri Lanka in November 2003, incorporated the same interpretation for both ‘computer’ and ‘computer program.’

What is Copyright?

Copyright is a property right which authors have in relation to the works which they create. It prevents others from copying or exploiting in various other ways the works of an author without permission and which subsists for a limited number of years. Copyright is a stimulus for creativity. It is even recognised in the Universal Declaration of Human Rights . Copyright protects both economic rights as well as moral rights. It is only the form that is protected, not the underlying ideas. The creativity protected by

Hereinafter, ‘Code of Intellectual Property” or in the alternative “the Code”

Act No. 30 of 1980

* Intellectual Property Act No. 36 of 2003. Hereinafter, “the Act”

7 Section 5, Intellectual Property Act No. 36 of 2003

‘ Article 27 (2), Universal Declaration of Human Right

copyright law is creativity in choice and arrangement of words, musical notes, colours and shapes. The code does not provide for the registration of copyright. Copyright law in most countries is simply declaratory, i.e. it may state that the author of an original work has the right to prevent others from copying or otherwise using his work. Copyright protection is available under the code for literary, artistic and scientific works.

Section 6 of the Act gives a list of protected works and Section 6 (1) (a) states:

The following works shall be protected as literary, artistic, or scientific work, which are original intellectual creations in the literary, artistic and scientific domain, including and in particular

(1) books, pamphlets, articles, computer programs and other writings

Effective Enforcement of Copyright in the Digital Era *

Modern technology has revolutionised the concept of making reproductions and many problems with regard to copyright have risen due to the products of modern technology. The rapid advance in technology in relation to intellectual property rights is an important feature of the contemporary scenario. Technological developments have created new ways in which products of creative cultural activity can be made available to the public. Dissemination by new inter-active technological systems is overtaking the traditional means by which literature, music, films and computer programs were made available to the public. This in turn has brought about many problems in Sri Lanka.

While legislation concerning intellectual property rights need to be constantly updated and modernised in order to keep in step with the new technologies, it is more than obvious that even the best laws in the world duly promulgated, but neatly kept on a shelf, so to speak, are of no use unless they are efficiently administered and effectively enforced. It is important that legislation in developing countries provide for stern penal provisions and adequate criminal penalties for infringement and it may be said with due respect that the judiciary should also appreciate the need for imposing the maximum punishment in the case of infringements of intellectual property rights, which alone can help maintain and enhance national inventive and creative activity as well as support the innovative spirit of people. Rights enshrined in the national legislations for the protection of intellectual property would remain in the statute books unless effective machinery for enforcing them is built up and constantly strengthened.

Computer Software

In the early days, computing software piracy and other forms of unauthorised copying were uncommon. A computer software solution for one organisation might be totally

unsuitable for another. It was not until the 1970s that the question of protection for computer software became a real issue.

The exponential growth in the computer population was accompanied by a parallel growth in applications software, and the ease with which computer programs and accompanying documentation could be copied became a major issue in the industry. The United States of America was the first country to enact specific legislation directed towards copyright protection in the form of the Computer Software Copyright Act of 1980.

In the UK, the courts in the early 1980s seemed sympathetic towards software owners. For “instance if a software owner could show it was probable that an alleged software pirate was copying his software, a judge may be prepared to grant an interlocutory (interim) injunction preventing the alleged pirate from continuing to sell the software in question until a full trial of the issues. Following the case of Apple Computer Inc v Computer Edge Pty Ltd,9 where the Courts held that computer programs even in object code form were protected by copyright as literary works. The Australian Parliament passed the Australian Copyright Amendment Act of 1984, within a few weeks of the appeal judgement confirming that computer programs were protected by copyright, whatever their form.

Eventually the United Kingdom followed with specific legislation known as the Copyright (Computer Software) Amendment Act of 1985, which was later repealed due to inadequacies, and computer programs are now protected under the Copyright, Designs and Patents Act of 1988.

Today computer software products are quite vulnerable to piracy. Rising product development costs combined with worldwide capability to rapidly and inexpensively imitate have raised the stakes for both the victims and the perpetrators. A software package is expensive to prepare but easy to copy. As investments needed for creation of computer software are often high, the protection of such software, against unauthorised copying is of crucial importance.

One form of computer software piracy to be noted, for example, is hard-drive loading by dealers using unauthorised loading of software as an attraction and incentive for sale of their computers. For this purpose the computer hardware dealer does not ostensibly charge for the pirated software loaded in the computer equipment being sold. This form of virtual software piracy can be problematic when the rights owner has to prove commercial or profit interest in such cases.

Computer Databases

A computer database is a collection of information stored on computer media. In the United Kingdom prior to 1988, databases were protected by copyright as literary

‘ 1984 FSR 481

works, being compilations. Today new legislation – the Copyright and Rights in Databases Regulations, 1997, protects databases as a distinct and separate form of literary work. It also brought in the requirement for originality for databases and other provisions specific to copyright databases.

Until very recently little consideration was given to the copyright position of computer databases, user interfaces, screen displays and other works stored or transmitted digitally. Database as a compilation must be the result of skill and judgement. However there is much difficulty in determining the position if the making of the database is merely the expenditure of effort or expense, as opposed to skill and judgement. In the case of Feist Publications Inc v Rural Telephone Service Co Inc,10 the Supreme Court of the United States held that something more than the mere ‘sweat of a brow’ is required in the United States to bestow copyright upon a work.

An analysis of case law in the United Kingdom points out that a computer database is protected by copyright. For example in the case of Water low Publishers Ltd v Rose it was demonstrated that the legal protection of copyright in databases was potentially very strong in the United Kingdom. The test of originality for a database would include skill, labour, selection and arrangement of a database. In most legislation, the normal rules on qualification for copyright exist for databases as well. Sri Lanka to date does not have specific legislation covering computer databases, however according to Article 7 (1) collections of works, and collections of mere data whether in machine readable or other form, provided such collections are original by reason of the selection, coordination or arrangement of their contents, will be protected. Hence it could be said that anyone who takes or uses a substantial part of a database, including an accumulation of insubstantial takings without consent ought to be exposed to the danger of an infringement action.

Reverse Engineering and Computer Programs

Reverse engineering means a method of obtaining technical information by starting with a publicly available product and determining what it is made of, what makes it work, and how it is produced. Generally reverse engineering is used to observe study or test computer programs and to develop interoperable products. This has been quite a controversial issue in the United States as the question arose as to how far reproduction is allowed or the purposes of reverse analysis in computer programs. The European Community incorporated Article 5 (3) into the EC Directive, wherein a person having a right to use a copy of a computer program shall be entitled, without the authorisation of the right holder, to observe, study or test the functioning of the program to enable determining the ideas and principles which underlie any element of the program if he does so while performing any acts of loading, displaying, running, transmitting, or storing the program which he is entitled to. According to law in the United States, it is considered fair use to make copies of the program for reverse engineering.

“1991 lll S Ct l282

“1995 FSR 207

According to the Sri Lankan Act, the dement of fair use is defined in Article II where reproduction of copies for purposes of criticism, comment, news reporting, teaching, scholarship or research shall not be an infringement of copyright. Article 12 further elaborates the act of fair use, whereby it states that reproduction for personal purposes shall not be extended to computer programs except as provided in Sub-Section (7), where it states that reproduction in a single copy or the adaptation of a computer programme shall be permitted without the authorisation of the owner provided it is for.

1. the use of the computer programme with a computer for the purpose and extent for which the computer program has been obtained.

2. for archival purposes and for replacement of the lawfully owned copy of the computer programme in the event the said copy of the program is lost, destroyed or rendered unusable.

4 Computer Programs and the TRIPS Agreement

The two contrasting forms of intellectual property rights that could be used to protect computer software are patent Jaw and copyright law. Of these two forms of protection, the leading industrial countries of the world agreed upon the latter as being the most appropriate for computer software and in particular, computer programs.

Article 10.1 of the TRIPS Agreement provides that computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971). This provision confirms that computer programs must be protected under copyright and that those provisions of the Berne Convention that applied to literary works shall be applied to them. It confirms further, that the form in which a program is, whether in source or object code, does not affect the protection.

Article 10.2 clarifies that data bases and other compilations of data or other material, shall be protected as such under copyrights even where the data bases include data that are not protected under copyrights. Data bases are eligible for copyright protection, provided that they by reason of the selection or arrangement of their contents constitute intellectual creations. The provision also confirms that data bases have to be protected regardless of which form they are in, whether machine readable or any other form.

Article 11 provides that authors shall have in respect of at least computer programs and in certain circumstances, of cinematographic works the right to authorise or to prohibit the commercial rental to the public of the originals or copies of their copyright works.

Enforcements of Rights – The International Sphere

The Berne Convention contains very few provisions concerning enforcement of rights, but the evolution of national and international enforcement standards have been dramatic in recent years due to two principal factors –

1. The advances in the technological means for the creation and use of protected material, and in particular digital technology which makes it possible to transmit and make perfect copies of any information existing in digital form.

2. The increasing economic importance of the movement of goods and services protected by intellectual property in the realm of international trade.

In general the enforcement mechanisms found in different legislations around the world can be broadly summarised and divided into the following categories.

Conservatory or Provisional Measures

These measures have two purposes. On one hand to prevent infringements from occurring, particularly to prevent the entry of infringing goods into the channels of commerce, including the entry of imported goods after clearance by customs. On the other to preserve relevant evidence relating to an alleged infringement. Thus judicial authorities may have the authority to order that provisional measures be carried out without advance notice to the alleged infringe. The most common provisional measure is a search of the premises of the alleged infringe and the seizure of suspected infringing goods, the equipment used, and all relevant documents.

Civil Remedies

These remedies compensate the owner of rights for economic injury suffered because of the infringement, usually in the form of monetary damages, and create an effective deterrent to further infringement, often in the form of a judicial order to destroy infringing goods and the materials and implements which have been predominantly used for producing them. If there is a danger that the acts may be continued then the court may also issue injunctions against such acts.

Criminal Sanctions

These sanctions are intended to punish those who wilfully commit acts of piracy of copyright and related rights on a commercial scale, and, as in the case of civil remedies, to deter further infringement. The purpose of punishment is served by the imposition of substantial fines and by sentences of imprisonment consistent with the level of penalties applied for crimes of corresponding seriousness, particularly in cases of repeated offences. The purpose of deterrence is served by orders of the seizure, forfeiture and destruction of the infringing goods, as well as materials and implements the predominant use of which have been utilised to commit the offence.

Measures to be Taken at the Border

This involves the action of customs authorities rather than the judicial authorities. Border measures allow the owner of rights to apply to customs authorities to suspend the release into circulation goods which are suspected of infringing copyright. The purpose of the suspension into circulation is to provide the owner of rights a reasonable time to commence judicial proceedings against the suspected infringe, without the risk that the alleged infringing goods will disappear into circulation following customs clearance. The owner of rights must generally satisfy the customs officials that there is prima facie evidence of infringement.

Measures, Remedies, and Sanctions Against Abuses in Respect of Technical Means

This particular category is of great importance in the advent of digital technology. In certain cases, the only practical means of preventing copying is through so called ‘copy-protect ion’ or ‘copy-management’ systems, which contain technical devices that either prevent the making of copies entirely or make the qualities of the copies so poor that they are unusable. However in reality it is technically impossible to manufacture devices by means of which copy-protect ion and copy-management systems as well as encryption systems may be circumvented.

Enforcement of Rights – The Sri Lankan Context

Although in comparison to other national legislation the enforcement mechanisms enshrined in the Sri Lankan Act do not seem exhaustive. Nevertheless there is protection and procedures spelt out in the Act for stringent enforcement of intellectual property rights.

Section 170 of the Act provides for remedies by means of an injunction or any such other relief as the court may deem just and equitable, restraining a person from commencing or continuing acts of infringement, provided it is proved to the satisfaction of the court that any person is threatening to infringe or has infringed rights under the Act.

Section 170 (3) (a) spells out the remedies

(3) (a) The Court shall have the power to order –

(1) The infringer to pay the right holder such damages as are adequate to compensate him for the loss suffered by him, by reason of such infringement, in addition to the recovery of any profits.

(2) The infringing goods to be disposed of outside the channels of commerce or to be destroyed without the payment of any compensation.

(3) Subject to the protection of confidential information, the tendering of any evidence by the opposing party which evidence is relevant to the substantiation of the claim and is in the control of the opposing party, in cases where a party has presented reasonably available evidence in support of the claim that evidence relevant to the substantiation of such claim lies m the control of the opposing party.

Furthermore Section 170 (6) states that the court shall have the power to order interim measures relating to protection, ex-parte, which is appropriate, in particular where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.

Section 170 (10) permits in addition to the award of damages – an award of statutory damages for any infringement involved in an action, of a sum not less than fifty thousand Rupees and not more than one million Rupees as the court may consider appropriate and just.

Section 178 (2) elaborates the criminal sanctions. For instance ‘any person who wilfully infringes any of the rights protected under the Act shall be guilty of an offence and shall be liable on conviction after trial before a Magistrate to a fine,..’

Section 178 (3) refers specially to computer programs wherein it states that ‘Any person knowing or having reasons to believe that he is in possession or has access to a computer program infringing the rights of another person, and wilfully makes use of such program for commercial gain, shall be guilty of an offence and shall be liable on conviction by a Magistrate for a fine not exceeding Rupees five hundred thousand or to imprisonment for a period of six months or to both such fine and imprisonment.’

Section 197 provides that a search warrant be issued where ‘upon receipt of information of an offence being committed under this pan…..’

Finally the Customs Ordinance too has amended Section 207 in order to ensure that there were no obstacles in implementing the enforcement mechanisms spelt out in the Act.

Other Examples of Enhanced Protection of Computer Software

A Trade Association based in Washington, known as the Business Software Alliance (BSA) was formed in 1998, to eradicate the illegal copying, sale, distribution and use of computer software in a number of countries, together with public awareness building. Since then it has been active in carrying out anti-piracy campaigns in respect of computer software. The total losses due to piracy in the computer software industry in Latin America alone was recently estimated at nearly half a billion US Dollars. Piracy

of software, according to the BSA estimates of ‘stolen’ software downloaded from the internet itself is 1 billion US Dollars annually. The challenge of illegal software being made available on the internet is thus enormous.

India’s National Association of Software and Service Companies (NASSCOM), which is a kind of Chamber of Commerce for the software industry in the country, aggressively campaigning against software piracy. It helps create awareness about software piracy against the individual users, and feels such awareness building would further consolidate the country’s development strength in computer software and encourage creation of world class productions and packages for the global software market. The anti-piracy ‘hot line’ launched by NASSCOM in Delhi has successfully facilitated raids on private centres since 1995.

Sri Lanka too should follow such examples and try to curb software piracy.

Conclusion

Protection of intellectual property rights is a sine qua non for the development of the global information infrastructure. In particular, the improvement of enforcement procedures is an urgent need for helping and fostering creativity and creative activity in a ‘networked’ era. A software based society is burdened with the fate of decreasing lead-times, and if the legal system which prohibits copying is not strengthened, the incentive for creating new products is lost. It is thus of vital importance that industry and enterprises in developing countries need to be helped with stringent enforcement, else investments could be adversely affected.