United Kingdom Journals

		[2000] 3 Web JCLI

What's In A Name? A Review Of Stanley Lai's The Copyright Protection Of Computer Software in The UK, Oxford: Hart Publishing, 2000, 250pp + xxxii, ISBN 1 84113-087-7, £40, Hdbk.

Reviewed by Robin Widdison

Director
Centre for Law and Computing
University of Durham
<Robin.Widdison@durham.ac.uk>

Copyright © 2000 Robin Widdison.
First Published in Web Journal of Current Legal Issues in association with Blackstone Press Ltd.

Introduction

Time, tide and technology wait for no one. For this reason, the publication of a brand new monograph on such a crucial topic as the legal protection of computer software is of considerable interest. In this review, I shall examine such a work written by intellectual property practitioner Stanley Lai and published in March of this year. Let me first describe the general impression that I have of this book before examining it in closer detail. By way of conclusion, I will then give a personal evaluation of the quality and usefulness of this work.

First Impressions

In character, Lai's book is a dense, highly specialised and technical work. It is clearly well researched and contains a wealth of interesting and useful citations. There are so many citations indeed, that sometimes the footnotes come close to swallowing up the main text entirely! The book claims on its cover that it will be an important resource for `practitioners, lecturers and students alike.' In my view, the nature of the work is such that it is probably more suitable for the cognoscenti - a rather more limited audience comprising existing practitioners, lecturers and students of computer law.

The approach adopted is broadly comparative - mostly comparing legal developments in the UK with those in USA. Given the broad similarity between these two common law jurisdictions, coupled with the fact that US law tends to be two or three years ahead of our law on such information technology matters, this makes sense. Occasionally, Lai draws comparisons with developments in Australia and Singapore as well.

One quibble that I have with the work as a whole is that its title is rather misleading. The title would lead one to suppose that the work has a very wide scope, tackling all issues that arise in relation to the 'copyrightability' of computer software. However, this turns out not to be the case. The book is not a comprehensive discussion of the topic. Rather, it deals only with a limited number of issues - albeit ones that are currently very significant. A more accurate title, perhaps, would have been something like: `Key Issues on Copyright Protection of Computer Software in the UK'.

A closer look

In his brief introductory chapter, Lai tells us that he will not enter the debate about the proper means of protecting computer software. Rather, he prefers to stick to "legislative realities" (para. 1.13) and confine himself to considering protection by means of copyright. To avoid abstract discussion is perfectly acceptable - at least in the main body of the work. However, in the wake of TRIPS⁽¹⁾ and the recent twin IBM decisions of the European Patent Office's Technical Board of Appeal (Case T1173/97 and Case T0935/97, the latter reported in full, [1999] RPC 861), I wonder whether it is still true to say that `legislative realities' exclude the issue of software patents? Another point. Although there is a technical appendix at the end of the book which I will talk about later, the introduction might have been the ideal place to explain and expand key terms and concepts such as `software' and `computer program'.

The second chapter is entitled `Subsistence of Copyright and Infringement Analysis under US and UK Laws'. Here, Lai tells us that the focus of the work will be on copyright infringement by means of reproduction and adaptation. This limitation may make sense in the context of the discussion of issues like literal or non-literal copying of software and reverse engineering. Later, however, when the discussion moves into the realm of the Internet where infringement by means of, for example, distribution becomes a much greater threat, such a limitation begins to seem unduly restrictive. A little later, while discussing Ibcos v Barclays Mercantile Finance [1994] FSR 275, the author claims that the `overborrowing' test used there by Jacob J `results in over-protection of computer programs' in the UK (para. 2.33). Lai may well be right. However, I feel that this view is not satisfactorily justified in the discussion. Another concern here is that a new domestic case - Cantor Fitzgerald v Tradition [2000] RPC 95 - is given only a brief mention in footnotes. This is unfortunate. Cantor will probably make a significant contribution to our understanding of how UK courts address software-copying cases. That decision was handed down some months before this book went to the printers. The main discussion should have been revised accordingly. The author's examination of the US literal and non-literal copying cases is clear and helpful. Foreswearing even a brief discussion of software patents, though, means that he denies himself the opportunity of adequately explaining why, in the early American cases, the judges went astray by seeking to extend copyright protection to functional, behavioural aspects of software such as look and feel or structure and sequence.

In Chapter 3, Lai makes a case for the need to import US copyright doctrines such as merger and scènes à faire⁽²⁾ into UK law. He puts forward a strong argument that - without these doctrines - our courts cannot successfully adopt the three-stage abstraction, filtration, comparison analysis to software copying advocated in the seminal American case of Computer Associates v Altai 982 F 2d 693 (1992) and, in particular, the second `filtration' stage.

In chapters 4 and 5, Lai turns to the question of the 'copyrightability' of user interfaces. Still keen to avoid any discussion of software patents, he tries to describe and explain developments in US law within the terms of legal logic. Again, I feel that this approach does not really lead us towards an understanding of the full picture. Surely, the point is that the various aspects of computer programs that Lai deals with here - for example, structure and sequence, look and feel - are all examples of software in its functional rather than its symbolic form. Traditionally, while symbolic representation has been seen as the domain of copyright, functionality has been regarded as protectable as industrial property by, for example, the patent system. To understand the bigger picture, I suggest, one needs to explain the recent moves in America to narrow copyright protection of software in the broader context of a simultaneous broadening of the availability of software patents. Adopting this mindset, I think that one can be less worried about the possibility that, as a result of recent US developments, "the entire notion of affording copyright protection of computer programs could be in jeopardy" (para. 4.32). In any event, I am not clear from the discussion what is the basis for Lai's worries here. In chapter 5, he continues along a similar theme to chapter 4 by briefly discussing the US and UK positions on copyright protection of video games.

In chapters 6 and 7, the author considers infringement by reverse engineering and possible defences. The discussion takes the form of a close analysis of the provisions of the EU's Software Directive⁽³⁾ and its implementation in UK law. This is followed up by a look at the comparable US provisions, in particular the rather more liberal climate that the American fair use defence has engendered. I found this comparative analysis interesting and illuminating, although it would have been easier to follow if the author had quoted in full more of the relevant provisions of the Software Directive that he refers to. Lai finishes chapter 6 with an examination of developments in two Commonwealth jurisdictions - Australia and Singapore. Chapter 7 goes on to consider defences to infringement claims arising out of reverse engineering. This involves, for example, a helpful examination of the similarities and differences between UK fair dealing and US fair use defences.

Chapters 8-10 are collectively labelled `Challenges for the Future' although this title may be a little misleading. While chapter 8 certainly does tackle forward-looking issues about software protection and the Internet, chapter 9 on the protection of databases and chapter ten on contractual licences permitting purchasers to use software do not. These latter two chapters could, perhaps, more accurately be labelled `Challenges for the Present'! Let us turn first, then, to chapter 8. As I said earlier, Lai's decision to restrict his thesis to infringement by means of reproduction and adaptation restricts the discussion here, somewhat, because one of the important questions that arise in relation to the Internet concerns infringement of the copyright owner's distribution right. Certainly this is a matter that receives a great deal of attention in the EU's draft directive on copyright and related rights in the information society. I am puzzled by the author's reference to the idea of a website as a computer program. Clearly a website can - and frequently does - contain computer programs. This is even a debate to be had on whether a pure HTML document can ever be a computer program (personally, I think not for the same reasons that, for example, a pure word-processing document is not a program). However, I cannot think of any situation in which a website as a whole might fall into the category of software. Another quibble with this chapter is that the case of Shetland Times v Wills [1997] FSR 604 features rather too much. It may be the only domestic authority that we have at present but, as an interlocutory decision, it really does not rank as much of an authority.

As I have already mentioned, chapter 9 looks at the new database protection regime and its possible effects on software protection. At first glance, this chapter seems rather out of place in a book about software protection, particularly as Lai himself reminds us that database-related software is expressly protected by the EU's Software Directive rather than the Database Directive⁽⁴⁾. However, it does seem to be useful to take a closer look at the position of hybrids such as databases that contain programs, computer programs that contain databases, and computer programs that are themselves compilations of sub-programs. Turning now to chapter 10, here the author gives a competent but not really innovative account of the legality of `shrink-wrap' and `click-on' licence devices. It might, perhaps, have been useful to say rather more about the importance of giving software purchasers a let-out should they decide not to accept the terms of the licence. After all, it is difficult to see how any such device can be valid unless it gives purchasers an element of choice. At the end of this chapter, Lai embarks on quite an interesting discussion on the nature of possible implied licences.

The final chapter is labelled `General Conclusion'. I have to say, though, that it seems to me to be nothing more than a brief summary of the argument in previous chapters. Personally, I would have liked to see an ending with a bit more flourish. Something more substantial such as an overall assessment of the current state of the law on software protection, or a speculation on longer-term trends would have been welcome.

The final part of the book is an appendix called `Technical Background'. In principle, the idea of having some sort of support for readers who are relatively unfamiliar with information technology is a good one. Perhaps, such a facility is a necessity in a work like this. However, this appendix is both hard to follow and difficult to navigate around. As for the level of explanation, it needs to be written much more with technological novices in mind - the very people who are likely to make use of such an appendix. As for navigation, I feel strongly that it should have been written as a glossary of technical terms and concepts. This would have had the added value of making the explanations readily available to readers while they were working through the main text itself - something that is not really possible with the present appendix. One other quibble. From time to time, Lai lapses into discussion of legal issues in the appendix. This not only muddies the waters for novices but also means that those that feel that they do not need to read the appendix from beginning to end miss out on argument that should be in the main text. Not a very satisfactory situation!

Evaluation

So, what is my overall assessment of Lai's book? Who can doubt that computer software is an absolutely crucial component of the Information Age? Legal protection of rights in software must, therefore, also be of vital importance. This work contains a great deal of useful discussion and analysis on issues of current relevance such as literal/non-literal copying and reverse engineering. For this reason, it should certainly be read, in my opinion.

If the author contemplates preparing a second edition of his book, I would respectfully suggest some improvements that he might like to consider. First, I think that Lai should either widen the coverage of the book so that it matches the breadth of the title or narrow the title to match the existing coverage. Second, in the part called `Challenges for the Future', I suggest that software protection issues on the Internet and other genuinely forward-looking questions be given much fuller coverage. Third, I strongly recommend that the existing appendix be replaced by a glossary that is written specifically with those who are likely to need it in mind. Changes of this sort would, I feel, help to establish the book as an important authority in this crucial and fast-changing field.

(1) Trade-Related Aspects of Intellectual Property Rights Agreement 1994.

(2) Lai defines this concept at para. 3.37 as follows: "The primary strands of the doctrine are: first, that there are scenes which `must' be included in a given context, because such situations call for identical scenes and secondly, that certain scenes are standard of `stock' - the common stock of literary composition."

(3) Council Directive 91/250/EEC on the legal protection of computer programs.

(4) Council Directive 96/9/EC on the legal protection of databases.