Idea and Expression Dichotomy

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 thatare applied in other literature works such as books andmagazines. 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 repeatedthan the so-called idea-expression dichotomy.”[1] In addition, according to Bentley and Sherman (1999), thisconcept 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 factthat 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 anddefinite 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, ruledand 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 rightto 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 ofa 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 ofthat book while on the other hand if he had written another book in accordance with the system described bySelden'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 aperson 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 rationalebehind 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, conceptsand systems is of vital importance for the furtherance of scientific and industrial activities in production and innovation. Hence, vesting exclusive rights in themcould 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 dichotomycreates 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 bysecuring a fair return on investment with regard to products which, because of their non-physical nature, can particularly be easily imitated once they have beendeveloped.

The logic behind this concept is that if copyright wereextended 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 involvesdirect 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 oreven 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 spotcopying 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 causedby 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 sourceand object code or does it also include the structure of a program also, which requires the court to draw thedistinction between an idea and expression on computer programs that could be used for future cases. The courtnoted that: “The copyrights of other literary works canbe infringed even when there is no substantial similarity between the works' literal elements. One canviolate 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 opinedthat the fact that there are various ways to fulfil theprograms' 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 ofthe Dentalab program is part of the program's expression, not its idea.'[22]

In doing so, the court had set out a general test whichlimits ideas to only those that are necessary to the program's purpose or function and everything else wouldconstitute expression.

The court added that scenes a faire i.e. elements whichexist 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 howsophisticated and user-friendly the program is intendedto 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 carein 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 expressiondichotomy to protect program structure might not be an ideal approach to boost innovation. Bainbridge (1999) noted that there could be potential danger in extendingthe 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 anexisting 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 mightcurtail 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 decisionshould not be totally rejected as it does have its merits in encouraging innovation through better rewardsfor 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 necessaryrequire 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 thatsince 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 courtfaced in applying copyright law to computer program. Indeveloping the test to determine the scope of copyrighton computer program, the court came up with a test thatstrongly favours the finding of an expression. In view of the problems created, subsequent cases had sought tofurther refine the test to be used in applying the ideaand 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', whichis 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 testutilized 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 backthe 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 theelements 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'sunderlying 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 anymonopoly 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 practiceswithin 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 originalprogram in order to determine “whether the defendant copied any aspect of this protected expression, as wellas 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 todesign and improve program structures.”[47] In doing so, the court cited the case of Twentieth Century MusicCorp. 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 aimis, by this incentive, to stimulate artistic creativityfor the general public good.”[49] It further cited the Supreme Court case of Feist Publications, Inc. v. RuralTelephone 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 copyrightlaw- 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 hardwork and labour of the programmer, as suggested in Whelan, has been expressly rejected.

The case of Altai, while it seeks to clarify and refinethe 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 orderto 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 FeistPublications, 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 issueor 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 thestarting point of the necessary inquiry.”[64] Butler (1992) further argued that even though the court prefers to leave the issue for the legislature, this initself does not justify the court's avoidance in the entire intensive issue.[65]

Besides, the filtration stage has also come under heavycriticisms. 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 protectionfor 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 considercounter agreements raised by the defendant to rebut allthese 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] Thisis 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 depthsof 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, dependingon the way the elements are combined and arranged as a whole.[70]

From the above discussion, it is apparent that the application of traditional idea and expression dichotomy to computer programs is fraught with difficulties, especially in relation to the look and feel of computer software. Judges in the above cases had strived unsuccessfully to come up with a coherent test that would strike a balance between the goal of rewarding programmers for their work to spur innovationand the goal of keeping ideas in the public domain to

avoid monopolisation of the idea. Nevertheless, these cases remain authoritative in dealing with discussion on idea and expression dichotomy and had been used as reference by courts in the United Kingdom.[71]

The non-literal infringement of a computer program was not addressed in detail by the courts in United Kingdomuntil after the case of Altai and Whelan in the United States. The case of John Richardson Computers v Flanders[72] was the first case that was required to decide on this point. In the case, Richardson was the Chairman and Managing Director of the plaintiff companyand worked as a pharmacist. He wrote a program for labelling machine, using the BASIC programming language, which would assist in the labelling of drugs and prescriptions. Flanders was employed by Richardson to further develop the program and to extend it to provide for stock control. Flanders re-wrote the program in assembly language and subsequently left the plaintiff company. However, Flanders continued to work on the program and managed to write another program in QuickBASIC language which performs the same function asthe one he wrote for the plaintiff company. The plaintiff claimed infringement in that the general scheme of its program, including idiosyncratic details of certain routines was copied and the issue before thecourt is whether these non-literal elements were protected by copyright.[73] Given that the programs were written in two different computer languages, therewas no issue on literal similarities between the programs.

In giving the judgment, Ferris J relied heavily on the reasoning adopted by the courts in the United States, particularly the case of Altai. He stated that: “...there is…nothing in any English decision which conflicts with the general approach adopted in the Computer Associates case…it would be right to adopt a similar approach in England. This means that consideration is not restricted to the text of the code.”[74] The court found that there were seventeen objective similarities and subsequently applied the test laid down in Altai, stating that: “...in the test propounded in Computer Associates the discovery of a program's abstraction levels is the first step. The second step is to filter these abstractions in order todiscover a ‘core of protectable material'. In the process of filtration there are to be excluded from consideration (a) elements dictated by efficiency; (b) elements dictated by external factors and (c) elements taken from the public domain.”[75] The court consideredthe similarities between the two programs individually and subsequently considered whether the similarities that were considered represented a substantial part of the plaintiff's program.[76] The court then concluded that only two of the seventeen similarities had been copied.[77]

The case was heavily criticized by subsequent cases andacademicians. Attridge (2000) criticized the judgment of the case for being self-contradictory on the issue of non-literal infringement in that while the court claimed to use the test laid down in Altai, it subsequently ‘abandoned the abstraction stage of the Altai test, relying solely on the filtration and comparison stages'.[78] The court merely compared the

functions of the program by comparing what the program actually did without dissecting the program into levelsof generality and detail and comparing the different level of the program itself. The effect of this would result in a completely different test from that adoptedby Altai as this would mean that copyright protection is extended to the functions of the program which, as discussed above, is clearly out of the scope of copyright protection.[79]

This was also noted by Attridge (2000) in which he claimed that: “…by not reducing the program to its component, non-literal parts, the test simply compares the programs at their use interface levels, thereby greatly increasing the depth of protection afforded.”[80] Nevertheless, Attridge submitted that despite the flaws in Flanders, the case need not be treated as a precedent due to ambiguity of the judgmentand that the ‘abstraction stage of the test was circumvented on the basis of fact, not law',[81] “I find difficulty in applying the abstractions test to the particular facts of this case, as will become apparent at a later stage.” [82] Hence, the door is clearly open for future cases to further define the test to be used to determine the scope of protection offered to non-literal elements of computer software inthe United Kingdom.

The court in Ibcos Computers Ltd. v Barclays MercantileHighland Finance Ltd.[83] further examined the scope ofcopyright protection for non-literal elements of computer software. The defendant was employed by the plaintiff to develop software intended to be used by agriculture machinery dealers. The defendant

subsequently left the plaintiff company and wrote a rival program known as ‘UNICORN' which was marketed. The plaintiff sued for infringement of copyright in that there features in the defendant's program which were copied from the plaintiff's original program. The court held that copyright subsisted not only in the individual programs but also in the compilation as a whole and that there was overwhelming inference of literal copying of code and non-literal copying.

Although the case concerned mainly literal copying, Jacob J took the opportunity to comment further on the approach taken in Flanders on the issue of non-literal infringement. He expressed his disagreement with FerrisJ's approach in relying on Altai's reasoning in considering the issue on idea and expression dichotomy.

“For myself I do not find the route of going via UnitedStates case law particularly helpful. As I have said, United Kingdom copyright cannot prevent the copying of a mere general idea but can protect the copying of a detailed ‘idea.' It is a question of degree where a good guide is the notion of overborrowing of the skill,labour and judgment which went into the copyright work.Going via the complication of the concept of a “core ofprotectable expression” merely complicates the matter so far as our law is concerned. It is likely to lead toovercitation of United States authority based on a statute different from ours. In the end the matter mustbe left to the value judgment of the court. Having expressed this reservation however, I thoroughly agree with what Ferris J. went on to say: ‘Consideration is

not restricted to the text of the code. ' That must be right: most literary copyright works involve both literal matter (the exact words of a novel or computer program) and varying levels of abstraction (plot, more or less detailed of a novel, general structure of a computer program).”[84]

Jacob J asserted that the idea and expression dichotomyas adopted by the United States should not apply in thesame way in the United Kingdom given that while the concept is not expressly recognised in the United Kingdom. Hence, courts should apply the test given in statute and consider whether a substantial part of the work has been copied rather than considering the concept of idea and expression dichotomy.[85] He then stated the four logical steps to be followed: “(1) whatare the work or works in which the plaintiff claims copyright? (2) Is each such work ‘original'? (3) Was there copying from that work? (4) If there was copying,has a substantial part of that work been reproduced?”[86]

The court stated that where an idea is sufficiently general, even if the original work embodies it, copyingthe idea will not result in infringement. However, if the idea is sufficiently detailed, then infringement could have taken place. It is a question of degree.[87]

This shows that the court had expressly acknowledged that ideas can be protected by copyright as long as they are sufficiently detailed, which could result in over protection for computer software. Technology have developed in such a way that its development will require various software to combine and work together as a single unit, by over protecting even the ideas of its look and feel, this might cause compatibility issues between the software and curtail advancement. Moreover, this would also stifle competitiveness given that once the idea had been used by a programmer; otherprogrammer can no longer use it even for the purposes of improving it until and unless the period of protection afforded by copyright on that idea had lapsed.

Turning into the issue of where there is a limited number of ways to express a given idea, Jacob J suggested that copyright should from the outset subsistin the program and that a subsequent subjective test should determine whether there has been substantial copying.[88] Attridge argued that this would have ‘prejudged the question' in issue, which was also apparent in the case of Lotus Development Corp v Borland International Inc.[89] In Borland, the court held that the menu structure of Lotus was a means of operation, thus not copyrightable in the first place. The expressive choices of what to name the command terms and how to arrange them do not change the uncopyrightability of the menu command hierarchy into copyrightable subject matter.[90] Therefore, the court would not inquire further whether that method of operation could have been designed differently.

Moreover, for the court to assert that the idea and expression dichotomy does not apply in English law might be overreaching. Given that there are ample casesthat upholds and apply this concept i.e. Donoghue v Allied Newspapers[91], LB plastics v Swish[92], Total Information Processing Systems v Daman[93] and John Richardson v Flanders[94], the court might have undermined the effect and influence of this concept in the English law. On the other hand, judging from hindsight, it appears that the issue no longer concernswhether the idea and expression dichotomy could apply in the United Kingdom as subsequent authorities expressly prohibits protection of ideas. Particularly, under Article 2 of the World Intellectual Property Organization Copyright Treaty (WIPO), it states that: “Copyright protection extends to expressions and not toideas, procedures, methods of operation or mathematicalconcepts as such.”[95] Similarly, under Article 1(2) ofthe European Union Software Directive (EUSD), it provides that: “ideas and principles which underlie anyelement of computer program, including those which underlie its interfaces, are not protected by copyrightunder this Directive.”[96]

Nevertheless, despite the underlying problem in the case, subsequent courts had preferred to follow the reasoning in Ibcos rather than Flanders. This could be seen in the case of Cantor Fitzgerald v Tradition Ltd.[97] In the case, the plaintiffs (CFI) and the first and second defendants (Tradition) carried out business as inter-dealer brokers (IDBs) in bonds which facilitates in the trading of bonds between people. Theplaintiff had written a program that causes particularsof bids for an offer of bonds to be displayed on dealing screens and enables brokers to input details and so effect deals. The third (Howard) and fourth (Harland) defendants had worked under the plaintiff company. Having left the plaintiff company, Howard and Harland subsequently developed software that operates the same function and uses the same programming language as the plaintiff company's system for Tradition in which the plaintiff claimed infringed the copyright of its program.[98]

In giving the judgment, Pumfrey J. cited and agreed with the four-stage test laid down in Ibcos by Jacob J.[99] He agreed that ideas are not protected per se but that “the originality of an idea may affect whether theexpression has been infringed, thus the expression of ahighly original idea will be more easily infringed thanthat of a less original idea.”[100] This could mean lowering the threshold of the substantial copying requirement. Moreover, in determining the issue on the

interrelationship of the originality of the work and the substantiality of the par tf the work copied, the court stated that: “...substantiality is to be judged in the light of the skill and labour in design and coding which went into the piece of code which is alleged to be copied. It is not determined by whether the system would work without the code; or by the amount of use the system makes of the code.”[101]

This is because the function of copyright is to protectthe relevant skill and labour extended by the author inmaking the work, hence, if a person copies a part of the work in which substantial part of the author's skill and labour had gone into it, the person will be liable for infringement.[102] This is rightly decided given that it is arguable that any part of a program can be interpreted as ‘substantial' since without that part of the program, the program might not work at all or that it might not work as well as desired.[103]Attridge explained that this could mean that copyright will subsist in most steps of the computer program but in order to determine whether substantial part of the program had been copied, the originality ofthat part will be construed.[104]

However, the rationale might again prove to be challengeable in light of WIPO and EUSD as discussed above. By determining whether an idea could be protected based on their degree of originality and assessing the idea qualitatively clearly are not intended by WIPO and EUSD given that the expressly ruleout the protection of ideas, regardless of their qualitative assessment.

In the case of Navitaire v EasyJet Airline Company and Bulletproof Technologies Inc[105], issue regarding the scope of protection offered to computer software was once against challenged in court.

[1] Samuels, E. (1989), ‘The Idea-Expression Dichotomy in Copyright Law', 56 Tenn. L. Rev. 321 [Online]. Available at: http://www.edwardsamuels.com/COPYRIGHT/BEYOND/articles/ideapt1-20.htm#h2 (Accessed: 12 December 2009)

[2] Sherman B., Bentley L. (1999), The Making of ModernIntellectual Property Law: The British Experience, 1760-1911, New York, Cambridge University Press

[3] (1769) 98 ER 201

[4] (1774) HL 1 ER 837

[5] (1879) 101 U.S. 99

[6] Art 9(2) TRIPS

[7] 91/250/EEC

[8] Nimmer M. and Nimmer D. (1987), Nimmer on Copyright, Albany, Matthew Bender, at 13-51 to 13- 52

[9] Hollinrake v Trustwell (1894) 3 Ch 420

[10] Nichols v Universal Pictures Corp (1930) 45 F 2d 119

[11] (1879) 101 U.S. 99

[12] (1879) 101 U.S. 99 at 104

[13] Bainbridge D (1999), Software Copyright Law, 4th edn, Butterworths, London, pg 85


[15] Samuels, E. (1989), ‘The Idea-Expression Dichotomyin Copyright Law', 56 Tenn. L. Rev. 321 [Online]. Available at: http://www.edwardsamuels.com/COPYRIGHT/BEYOND/articles/ideapt1-20.htm#h2 (Accessed: 12 December 2009)

[16] (1986) 797 F.2d 1222

[17] Whelan Associates Inc v Jaslow Dental Laboratory Inc (1986) 797 F.2d 1222 at para 36

[18] Nichols v Universal Pictures Corp (1930) 45 F.2d 119, 121


[20] Bainbridge D (1999), Software Copyright Law, 4th edn, Butterworths, London, pg 88,


[22] Whelan Associates Inc v Jaslow Dental Laboratory Inc (1986) 797 F.2d 1222 at FN 28

[23] Landsberg v. Scrabble Crossword Game Players, Inc.(1984) 736 F.2d at 489





[28] 111 S. Ct. 1282, 1290 (1991)

[29] Samuels, E. (1989), ‘The Idea-Expression Dichotomyin Copyright Law', 56 Tenn. L. Rev. 321 [Online]. Available at: http://www.edwardsamuels.com/COPYRIGHT/BEYOND/articles/ideapt1-20.htm#h2 (Accessed: 12 December 2009)

[30] (1992) 23 USPQ 2d 1241



[33] Gage T. (1987), ‘Whelan Associates v. Jaslow Dental Laboratories: Copyright Protection for Computer Software Structure- What's the Purpose?' , Wis. L. Rev.859, 860-61

[34] Tumbraegel K. & Villiers R. (2004) ‘Copyright Protection for the Non Literal Elements of a Computer

Program', C.T.L.R VOL 10; PART 2, pages 34-42, Sweet & Maxwell, Oxford

[35] Computer Associates Inc v Altai Inc(1992) 23 USPQ 2d 1241




[39] Concrete Machinery Co. v Classic Lawn Ornaments Inc (1988) 843 F.2d 600, 606


[41] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6


[43] Computer Associates Inc v Altai Inc(1992) 23 USPQ 2d 1241, citing from Nimmer M. (1997), Nimmer on Copyright, Albany, Matthew Bender, section 13.03 [F] [3], at 13-65





[48] (1975) 422 U.S. 151, 156


[50] (1991) 111 S. Ct. 1282, 1290

[51] Computer Associates Inc v Altai Inc(1992) 23 USPQ 2d 1241 citing from Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 111 S. Ct. 1282, 1290






[57] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6 (quoting from U.S. Const. art I s8, cl 8)

[58] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6 (citing Mazer v Stein (1954) 347 US 201,219)

[59] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6 (citing Lotus Dev Corp v Paperback Software Int (1990) 740 F. Supp. 37, 74-76 D Mass & Computer Associates Inc v Altai Inc (1992) 23 USPQ 2d 1241 as examples .)

[60] (1991) 111 S. Ct. 1282, 1290



[63] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6 pg 192



[66] Butler J. (1992), ‘Pragmatism In Software Copyright: Computer Associates v. Altai', Harvard Journal of Law & Technology, Vol. 6 pg. 195



[69] Anthony C. Jennifer D. (1992), ‘Revenge of the Luddites: A Closer Look at Computer Associates v Altai', 9(11) Computer Lawyer 11

[70] Lai S. (2000), ‘The Law of Copyright in Computer Software in the United Kingdom', Hart Publishing, Oxford at 26-7

[71] Such as in the case of John Richardson Computers vFlanders (1993) FSR 497

[72] (1993) FSR 497

[73] John Richardson Computers v Flanders (1993) FSR 497 at 498-499


[75] John Richardson Computers v Flanders (1993) FSR 497 at 526


[77] John Richardson Computers v Flanders (1993) FSR 497 at 559

[78] Attridge D. (2000), ‘Copyright Protection for Computer Programs', E.I.P.R. 563

[79] Tumbraegel K. & Villiers R. (2004), ‘Copyright Protection For The Non Lieteral Elements of a Computer Program', C.T.L.R. 34



[82] John Richardson Computers v Flanders (1993) FSR 497 at 527 quoted in Attridge D. (2000), ‘Copyright Protection for Computer Programs', E.I.P.R. 566

[83] (1994) FSR 275

[84] Ibcos Computers Ltd. v Barclays Mercantile Highland Finance Ltd (1994) FSR 302





[89] (1995) 49 F.3d 807

[90] (1995) 49 F.3d 807

[91] (1938) Ch 106, 109-110

[92] (1979) RPC 611 at 629

[93] (1992) FSR 171

[94] (1993) FSR 497

[95] Article 2 WIPO Copyright Treaty 1996

[Online] Available at http://www.wipo.int/treaties/en/ip/wct/trtdocs_wo033.html#P51_3806 (Accessed: 21st January 2010)

[96] 2009/24/EC

[Online] Available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:111:0016:0022:EN:PDF (Accessed 21st January 2010)

[97] (2000) RPC 95

[98] Stokes S. (1999), ‘United Kingdom Software Copyright: Cantor Fitzgerald v Tradition', C.T.L.R. 142



[101] Cantor Fitzgerald v Tradition Ltd (2000) RPC 95 at 135

[102] Stokes S. (2005), ‘The Development of UK SoftwareCopyright Law: From John Richardson Computers to Nvitaire', C.T.L.R. 129

[103] Autodesk v Dyason (1992) RPC 575


[105] (2004) EWCH 1725 (Ch)

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Idea and Expression Dichotomy