Idea and Expression Dichotomy

As above discussed, it has been well established that computer programs are protected as literary work under Copyright Design and Patents Act 1988, hence, computer software will also be subject to the same concepts that are applied in other literature works such as books and magazines. One of the paramount concepts under copyright law that is being adhered to by the United States and the United Kingdom is that copyright law will not protect ideas but only expression of the idea. This concept is also known as the idea and expression dichotomy which is probably one of the most often debated issues under copyright law, as per Professor Samuels: “There is hardly a single principle of copyright law that is more basic or more often repeated than the so-called idea-expression dichotomy.”[1] In addition, according to Bentley and Sherman (1999), this concept emerged as far back as in the mid 18th century in which expression was regarded as an ‘abstract and isomorphic' enough to be copied.[2] The most notable early cases in the United Kingdom that dealt with this concept can be found in Miller v Taylor [3] and Donaldson v Beckett [4] and was also considered in the early American case of Baker v Selden[5]. On the international level, the idea and expression dichotomy has been mentioned under Art 9(2) of the TRIPS convention which provides that: ‘Copyright protection shall extend to expression and not to ideas, procedures, and methods of operation or mathematical concepts as such.'[6] In the same way, Software Directive, Art 1(2) provides that: ‘Ideas and principles which underlie any element of computer program, including those which underlie its interfaces, are not protected by copyright under this Directive.'[7] Both these authorities point to the fact that ideas do not enjoy any protection by copyright law. On the domestic level, there is no shortage of authorities to show that the idea and expression dichotomy is an ‘axiom of copyright law'.[8] This concept can be summed up in Lindley LJ's statement that: “Copyright does not extend to ideas, or schemes, or systems, or methods; it is confined to their expression; and if their expression is not copied, the copyright is not infringed.”[9] Although such concept might seem to be simple and straight forward, however, in practice, its application is not always as clear and definite as it should be. In fact, the distinctive line between an idea and expression is so often impossible to draw that Judge Learned Hand said that: “...nobody has ever been able to fix that boundary and nobody ever can.”[10] Hence, judges have to apply this concept depending on the individual facts of each case before them. In order to understand this deceptively simple concept, case laws from both the United and Kingdom and the United States will further construed. In the case of Baker v Selden[11], it concerned the copyright in a book written by Charles Selden, which was named ‘Book-Keeping Simplified', to describe a new system of bookkeeping which included 20 pages of primarily bookkeeping forms, together with example ledgers, ruled and analysed according to the system. Baker then produced a book which utilise a similar system which was sold to the public. On appeal, it was contended by Baker that Selden's work did not constitute an appropriate subject matter for copyright and thus, no copyright subsisted in the work. Therefore the court had to decide on whether Selden had the exclusive right to the use of the system as explained in the book. Justice Bradley, in tackling this issue, held that the book written by Selden did not give him the right to exclude others from practising what was described in the book. The court held that: “...whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practice and use the art itself which he has described and illustrated therein. The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in such book.”[12] This shows that if Baker copies directly from the pages of Selden's book, he would have infringed the copyright of that book while on the other hand if he had written another book in accordance with the system described by Selden's book without directly copying from the pages, it would not amount to an infringement. The effect of the case is important in relation to computer software because it applies to computer spreadsheet which produces simple charts from the data entered into the spreadsheet. Similarly, it would not be protected since it remains as an idea. However, if a person developing a spreadsheet program copies certain features of an existing spreadsheet program, the expression would have been copied; hence infringement would have taken place. Before looking at the application of this concept to computer software cases and the difficulties it causes in detail, it would be helpful to look at the rationale behind the idea-expression dichotomy in order to determine whether such concept still has its place or purpose in current and future computer program cases. The main function of intellectual property right is to encourage innovation. The use of ideas, facts, concepts and systems is of vital importance for the furtherance of scientific and industrial activities in production and innovation. Hence, vesting exclusive rights in them could hinder the progress of innovation. However, this does not mean that ideas are never meant to be exclusively owned and monopolised. In fact, the very function of patent law is to protect ideas and enable the owner to own and monopolise them exclusively. Besides, intellectual property rights also aim at rewarding the author. The idea and expression dichotomy creates a balance between this aim and the needs of society. Although the content of a work will stay in the public domain, the expression can be protected and thus secure a reward to the author. It follows that copyright also aims at protecting useful investments by securing a fair return on investment with regard to products which, because of their non-physical nature, can particularly be easily imitated once they have been developed. The logic behind this concept is that if copyright were extended to over ideas, it would give the first in the field a monopoly which would last for a considerable long period of time and as far as computer software is concerned, it would surely have undesirable effects on competition thus affecting innovation. According to Bainbridge (1999)[13], one of the reason we see the rapid development in the computer industry as it is today is because copyright law has managed to strike a balance between competing interest between the society and the author.[14] The following discussion will focus on the problems in applying the concept of idea and expression dichotomy when dealing with look and feel of the computer program. The application of the concept of idea and expression dichotomy is much more unsatisfactory and unpredictable in computer program cases that Samuel (1989) doubted whether the concept still serves its useful purpose when it involves computer software[15]. There are not many difficulties when the issue involves direct copying. Examples of direct copying are such as copying the listing, making a direct copy of the program on a magnetic disk or on other storage media or even copying the object code directly. These are also known as literal copying in which no or very minimal alteration have been made to the original program. Doing any of these acts without the express or implied consent of the right owner will very clearly infringe copyright. The issue becomes more complex when the defendant alters part of the plaintiff's program while writing their own program. One of the way programmers usually copy other's work is by using another computer language to copy the exact function of the original program. If this is done, it might be difficult to spot copying as the source code will appear to be totally different. If this does happen, the court must then consider whether the part(s) copied represent a substantial part of the copied program. In the case of Whelan Associates Inc v Jaslow Dental Laboratory Inc[16]it manifested the difficulties caused by the idea and expression dichotomy in relation to copyrightability of computer program. In 1985, Jaslow Dental Laboratory appointed Whelan to write a program for an IBM computer to handle the administration of dental laboratories. The program, known as ‘Dentalab', was written in ‘EDL' programming language in which Whelan have obtained the rights in it. However, Jaslow then began to write another program known as ‘Dentcom' using another computer language known as ‘BASIC' to replace ‘Dentalab' which performs the same function as the earlier program. In fact, Dentcom contained identical copies of most of ‘Dentalab' file structure, screen output and modules. In deciding the case, the court had to decide on whether copyright encompassed only the program's source and object code or does it also include the structure of a program also, which requires the court to draw the distinction between an idea and expression on computer programs that could be used for future cases. The court noted that: “The copyrights of other literary works can be infringed even when there is no substantial similarity between the works' literal elements. One can violate the copyright of a play or book by copying its plot or plot devices.'[17] Hence, it confirms that copyright is not limited to the literal copying of the object of source code. The logic is simple as copyright "cannot be limited literally to the text, else a plagiarist would escape by immaterial variations".[18] In deciding on the idea and expression dichotomy, the court stated that: “...the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.”[19] This means that ‘anything which was essential to the task was idea whilst anything which was not essential and could have been written in different ways was expression'.[20] Judge Becker opined that the fact that there are various ways to fulfil the programs' purpose shows that whichever way chosen was not necessary to the program's function and thus constitute an expression which would be protected by copyright.[21] In Whelan's case ‘Because that idea could be accomplished in a number of different ways with a number of different structures, the structure of the Dentalab program is part of the program's expression, not its idea.'[22] In doing so, the court had set out a general test which limits ideas to only those that are necessary to the program's purpose or function and everything else would constitute expression. The court added that scenes a faire i.e. elements which exist in a program which its presence is dictated by the purpose of the program, are afforded no protection as granting protection to them would also mean ‘giving the first author a monopoly on the commonplace ideas behind the scenes a faire'.[23] Bainbridge (1999) argued that the look and feel argument in Whelan is flawed because, ‘even the simplest function can be performed using different algorithms. It depends on how sophisticated and user-friendly the program is intended to be. Two programs used to perform the same simple function could have vastly different structures and, therefore, the hypothesis that a program's application will dictate the structure of the program is a false one'.[24] This follows that if a programmer intends to copy another programmer's work using another programming language, all that he needs to do in order to circumvent copyright infringement is to take extra care in altering the structure of the program. If Bainbridge (1999) is correct, despite the extension of copyright protection over the structure of programs in Whelan it would not be too hard for programmers to gain unfair advantage over another programmer's work. The idea ad expression dichotomy would have failed to serve very purpose of encouraging innovation or rewarding the original author as discussed above. On the other hand, if what Bainbridge said is incorrect, and that the scenes a faire, as noted by Judge Becker, exist in computer software, then other programmers will be able to copy them directly. Either way, the concept of idea and expression dichotomy does not seem to serve its intended purpose when the case concerns computer program. Besides, the court in extending the idea and expression dichotomy to protect program structure might not be an ideal approach to boost innovation. Bainbridge (1999) noted that there could be potential danger in extending the protection to include the structure and look and feel of computer programs, it might ‘discourage computer programmers from using ideas for programs developed during their previous employment for fear of being sued for copyright infringement'.[25] Given that it is a common practice to write ‘new' computer programs that are built on a previous program, (i.e. programmers will usually study the function of an existing program and either improve the program or write another version of it that has a similar function) programmers are no longer free to research into ways of improving other programs. Hence, the rigorous protection afforded to computer software might curtail and inhibit the vast development of the computer industry. However, Bainbridge (1999) did recognise that despite the danger of pacing down the progress of innovation, still extending copyright protection to cover the look and feel of the program is somewhat commendable. The reason is that: “...there is a great deal of work expended in developing computer programs before the actual program code is written. Much of this work is concerned with deciding the structure and flow of the program and there is a strong argument for protecting this.”[26] Therefore, this shows that Whelan's decision should not be totally rejected as it does have its merits in encouraging innovation through better rewards for programmer's hard work. Judge Becker, in giving the judgement also placed emphasis on the expense involved in the development of the logic and structure of the program. He stated that: “...among the more significant costs in computer programming are those attributable to developing the structure and logic of the program. The rule proposed here, which allows copyright protection beyond the literal computer code, would provide the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold over ideas.”[27] Such emphasis might have overlooked the fact that programming need not always incur any expense or that no additional research is actually required. Today, gaining a job as a programmer does not necessary require any university qualification and at the time when Whelan is decided, it is even more common for non-graduate to qualify as a programmer as most of the skills in this area were developed or honed at home. Besides, there is a major movement in the development of open source software, most of which is also done at no calculable expense. On the other hand, if the court's primary concern is on the expenditure of the author, there is also a counter argument that the infringer's expenditure should also not simply be ignored. In fact, Judge Becker's ‘copyright as an incentive rationale' have been rejected by the Supreme Court in Feist Publications Inc v Rural Tel Serv. Co in which the court stated that : “the primary objective of copyright is not to reward the labour of authors...”. [28] Despite the many criticisms on Whelan, it is submitted that the case was rightly decided notwithstanding the questionable rationale given by the court. Professor Samuels (1989) explained that the ‘proper appreciation of the case...does not depend so much upon the test that the court in Whelan developed for applying the idea-expression dichotomy, as it does upon the particular facts of the case.' He further reasoned that since the plaintiff was a professional programmer who had spent time in developing the program to aid in the administration of the defendant's laboratory, and that the defendant was relatively new to programming, it is safe to assume that the defendant ‘would not have been capable of writing an advanced non-infringing program'. [29] Therefore, the decision was not overruled even though subsequent cases have criticised the rationale given in it. Whelan clearly demonstrated the struggle that the court faced in applying copyright law to computer program. In developing the test to determine the scope of copyright on computer program, the court came up with a test that strongly favours the finding of an expression. In view of the problems created, subsequent cases had sought to further refine the test to be used in applying the idea and expression dichotomy concept which in turn causes new problem on its own. In Computer Associates Inc v Altai Inc[30], the plaintiff developed a program known as ‘Adapter', which is a part of another program named ‘CA-Scheduler'. ‘Adapter' functions to ensure that the same software would run on three different operating systems i.e. DOS/VSE, MVS and VM/CMS by translating the language of the program to understandable instructions for these operating systems. In 1982, the defendant company developed a program known as ‘Oscar', written by an ex-employee of the plaintiff company, which had a common interface component that made it compatible with different operating systems, similar to that of ‘Adapter'. Computer Associates complained of copyright infringement, in which Altai agreed to pay damages but Altai subsequently employed different programmers who had never seen the code in ‘Adapter' to re-write the interface.[31] The issue to be considered by the court is whether the second version of ‘Oscar' is liable for infringement and to clarify the scope of copyright protection that extends to a computer program's non-literal structure. In giving its judgment, the court agreed that elements of expression which are dictated by the program's function are not copyrightable but the court rejected Whelan's rationale that took insufficient account of the technicalities of computer programming.[32] The court citing Gage (1987), the leading commentator in the field which stated that, “…the crucial flaw in Whelan's reasoning is that it assumes that only one ‘idea,' in copyright law terms, underlies any computer program, and that once a separable idea can be identified, everything else must be expression.”[33] The court in Whelan had failed to recognise that ideas and expression can interlock on different levels and that there could be no single level of abstraction.[34] The court added that: “This criticism focuses not upon the program's ultimate purpose but upon the reality of its structural design…a computer program's ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own “idea,” Whelan's general formulation that a program's overall purpose equates with the program's idea is descriptively inadequate.”[35] The court then came up with a three-stage test “based on the abstractions test utilized by the district court, in order to determine whether the non-literal elements of two or more computer programs are substantially similar in order to determine whether non-literal copying had taken place.”[36] The first stage is abstraction. Judge Walker explained that this test is based on Judge Hand analysis in Nichols in which the court stated that: “Upon any work... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended.” This means that the structure of the copied program must be broken down by looking into the steps the programmer took in writing the program and tracing back the steps in the process of writing the program using reverse engineering to identify ideas at each level. The second stage is filtration in which structural parts on each level are scrutinised to filter out the non-protectable ideas. The court stated that: “...this process entails examining the structural components at each level of abstraction to determine whether their particular inclusion at that level was ‘idea' or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain and hence is non-protectable expression.”[37] The purpose is to determine the scope of copyright that exists in the program by removing the elements which are not protectable; whatever remains will be the core protectable material. The court expressly mentioned three factors to be considered in determining what is non-protectable and they are ideas dictated by ‘considerations of efficiency, dictated by external factors or taken from the public domain.'[38] In which will be further construed in detail. Firstly, if the particular way of expression chosen by the programmer was necessary to that part of the program, then the idea and expression of the program has been merged. The court stated that: “The doctrine's underlying principle is that when there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression”[39] in order not to confer any monopoly of the idea upon the copyright owner.[40] Judge Walker rationalized this test as a straightforward application of the merger doctrine.[41] Secondly, the court excluded element which contains external factors which include: (1) the mechanical specifications of the computer on which a particular program is intended to run; (2) compatibility requirements of other programs with which a program is designated to operate; (3) computer manufacturers' design standards; (4) demands of the industry being serviced; and (5) widely accepted programming practices within the computer industry.[42] The reason according to the court, quoting from Professor Nimmer, is because “it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques.”[43] Thirdly, material that is already in the public domain is also excluded from copyright protection. The court stated that: “Such material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work.”[44] The rationale is apparent as it would be unreasonable for the author to claim copyright for the work which another has created and intended to be freely available. After filtering out elements which are not protectable, the final stage is to compare the remaining expression or the ‘golden nugget' of the program with the original program in order to determine “whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion's relative importance with respect to the plaintiff's overall program.”[45] This amounts to a qualitative assessment.[46] The court rejected the defendant's claim that protection was necessary to supply programmers with enough incentive to create software and that the approach adopted by the court would be a “disincentive for future computer program research and development” and that “if programmers are not guaranteed broad copyright protection for their work, they will not invest the extensive time, energy and funds required to design and improve program structures.”[47] In doing so, the court cited the case of Twentieth Century Music Corp. v. Aiken[48] and quoted that: “…The immediate effect of our copyright law is to secure a fair return for an ‘author's' creative labour. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.”[49] It further cited the Supreme Court case of Feist Publications, Inc. v. Rural Telephone Service Co.[50] to undermine the ‘sweat and brow' justification on copyright law. The court stated that the argument in favour of extending copyright protection for computer program as a reward and incentive for the hard work that went into the work would “eschewed the most fundamental axiom of copyright law- that no one may copyright facts or ideas.”[51] Hence, the expansion of the scope of copyright law in protecting computer program as an incentive to the hard work and labour of the programmer, as suggested in Whelan, has been expressly rejected. The case of Altai, while it seeks to clarify and refine the scope of protection offered by copyright law over computer program, creates fresh problems on its own. Firstly, as noted by Bainbridge (1999)[52], the test laid down will be hard to apply in practice that even Judge Walker in giving the judgment admitted that upon the application of the three-stage test, “the exact contours of copyright protection for non-literal program structure are not completely clear.”[53]The abstraction stage, as suggested by the court, is particularly difficult to apply. Bainbridge (1999)[54] noted that it is artificial to assume to that computer program can be broken up into many constituent parts in order to consider those parts separately.[55] If a program is not sorted into separate modules and that the various modules actually form part of the expression of the same idea, then it is impossible to apply the abstraction stage to identify the expression in that program. Besides, the decision in Altai has been criticized for being ineffective in analyzing the scope of protection that the law should grant towards software developers.[56] Butler J (1992) explained that the main function of copyright is to encourage authors to create in order to benefit the public. He noted that “the purpose of patent and copyright protection is to promote the Progress of Science and useful Arts”[57] and that the judiciary authority also supported this fact.[58] Nevertheless, dependable answers are always elusive because courts have always noted that their decisions concerning protection are unclear and open to debate.[59] While the plaintiff in Altai's case had made efforts to resolve this debate on its merits, Judge Walker chose to leave the question regarding the level of protection offered to computer programs to the legislature and claimed that because the court in Feist Publications, Inc. v. Rural Telephone Service Co[60] had repudiated the ‘sweat and brow' argument, courts are no longer concerned about protecting authors' labours but only to apply the law.[61] In addition, Judge Walker even argued that if extended protection was intended by the legislature through the ‘sweat and brow' reasoning, legislature would have considered imposing patent like protection.[62] While it has always been doubted whether the court has the ability to set the balance between protecting software Butler (1992) argued that the court in Altai should not have played down the importance of the issue or even ignore it. He argued that the very essence of copyright is to provide incentive for authors, thus benefiting the society. Hence any argument that undermines or ignores this tension lacks solid ground.[63] He noted that the court should have analysed this issue more openly and that ignoring the effects of the decision of the court on the progress of computer software will only advance ignorance. “To say that the appropriate level of protection is unclear is not an answer to the question before the court; it is only the starting point of the necessary inquiry.”[64] Butler (1992) further argued that even though the court prefers to leave the issue for the legislature, this in itself does not justify the court's avoidance in the entire intensive issue.[65] Besides, the filtration stage has also come under heavy criticisms. The elements of consideration under the filtration process, especially the ‘efficiency factor' and the ‘external factors' have created much ambiguity and uncertainty to the scope of copyrightable computer software. Essentially, the filtration stage is a process that aims to scope down the scope of protection for computer software. This is a questionable approach as efficiency is not very easily or accurately determinable. In addition, Butler (1992) noted that efficiency is “often measured on a very coarse scale, this test might not offer much guidance in close cases, thus forcing a judge to decide if an aspect of a program is ‘efficient enough' to prevent protection.”[66] This could result in difficulties for future courts in dealing with software copyright cases. In practice, inevitably more and more evidence would be poured into the court for the purpose of justifying other efficiency approaches that could have been used by the defendant. The court would then be required to consider counter agreements raised by the defendant to rebut all these other approaches raised by the plaintiff. This could prove to be tedious tasks for most judges who do not have the necessary skills and knowledge of a software engineering to decide on matters such as this. Even though expert witnesses may be used to assist the court deciding on the matter, ultimately, the decision is arbitrary and judges are required to perform mental gymnastics in order to determine the efficiency issue. Furthermore, the ‘external factor' to be considered under the filtration stage also causes problems for judges. Butler (1992) criticised this stage, stating that this stage is ‘even more amorphous than efficiency' and that ‘any lower court in applying this filter will be left largely to its own means.'[67] This is because the external factor is essentially included to function as a safety net to ensure that all other reasons besides the ‘efficiency factor' are covered under this category in demining the similarity of the programs. Butler further noted that commercial viability is one of the ‘litmus test' for externalities and this could very well mean that “any commercially successful product must have been tailored to fill a specific niche and thus was dictated by external factors...protectability of a software package will turn on factors like the structure of the market, in effect requiring an analysis of the necessary protection required to encourage the production of software.”[68] This would cause problem as the law on software copyright would further plunge into new depths of uncertainty with regards to their copyrightability. Furthermore, the three stage approach in Altai would also result in under protection of the non-literal elements in computer software. Anthony C and Daniels J (1992) noted that the protection afforded to the non-literal elements in software does not resemble copyright protection at all, rather some new sui generis form of copyright protection for software.[69] The dissection of the program into different level and the removal of the elements that are not protected prior to comparison could result in some protectable elements being missed out or even eliminated, depending on the way the elements are combined and arranged as a whole.[70]