Copyright Basics for the Programmer

A primer on infringement protection for your program

By Patricia Mayer, Culver City, California

This article is a primer on how you can use the U.S. Copyright law to protect your program from infringement. Next month, I will give you a brief summary of some issues to consider if you decide to license your program to a distributor. I do need to give you a bit of a lawyer-type disclaimer right up front: this article is just a general overview and in law, as in so many things, to every broad, general statement there are millions of exceptions. Also, I am only going to talk about U.S. copyright law. Every country has its own rules (or lack thereof) protecting intellectual property.

WHAT CAN YOU PROTECT UNDER U.S. COPYRIGHT LAW?

In general, copyright protection is available for “works of authorship that are fixed in a tangible medium of expression”.1

Is Your Program A “Work Of Authorship”?

The first thing to remember is that ideas cannot be copyrighted, but expression of those ideas can. For example, you cannot claim copyright protection in the idea that personal computers should be capable of storing typed information and of allowing the user to edit that information. However, you can copyright the expression of that idea, the word processing program itself.2

The Copyright Office has established that your copyright in your program can protect the screen display resulting from that program as well as the program language itself. Therefore, both the program language and the screen display may be “expression.” Even operating systems may contain enough “expression” to be copyrightable.3

To receive copyright protection, the work must not only be expressive, it must be “original”. For the purposes of copyright law, a work is original if it is independently created. For example, if I go to a production of “Romeo and Juliette” and then go home and write a play identical to the one Shakespeare wrote, I cannot claim copyright in my play because, after all, my play is not original. However, if I created my play independently (i.e., I never read Shakespeare’s play and did not copy it either consciously or unconsciously), I could prove “originality” and therefore copyright “Romeo and Juliette.”

What if only part of your program is original? If your program incorporates someone else’s program or subroutine, your program will only be copyrightable as a derivative work.4 Motion picture versions of novels, computer games based on comic books, translations of poetry from one language to another and the like are all copyrightable derivative works.

The copyright in the derivative work only extends to the elements of the derivative work that have been added to the underlying work. If you get a license from Microsoft to create a derivative work based on or incorporating “Windows”, your copyright will only be in what you added to “Windows.”

For a derivative work to be protected it must be based on a validly licensed underlying work. So, if you program a computer game in which four teenage mutant ninja turtles fight various evil doers on the way to the pizza parlor and you have not gotten a written license from the owner of the copyright of the Mutant Ninja Turtles, your computer game is not eligible for copyright protection because it is not a validly licensed derivative work.5

Is Your Program Fixed in a Tangible Medium Of Expression?

You can only get copyright protection in your program if you write the program down. So, if you work out a great computer program and never write it down, your program is not protected by U.S. copyright law. If you recite your program to me and I go off and sell it you cannot sue me under copyright law.6 Please note that, just because your work has to be “fixed in a tangible medium of expression” doesn’t mean that you have to write it down on paper. For example, if you program a computer game with original characters and plot, your characters and plot are copyrightable even though they only appear as flickering images on a cathode ray tube. Courts have held that the computer’s memory is the medium into which your expression is fixed.7 Further, a program that has only been expressed in operating code is also considered “fixed”.8 Because of the confusion created over this issue, Congress specifically extended copyright protection to computer programs in 1980.9

WHAT PROTECTION DO YOU GET UNDER U.S. COPYRIGHT LAW?

Obtaining a copyright in a work gives you a monopoly over that work. With certain exceptions, only you can reproduce your work, make derivative works based upon it, distribute copies of it, or perform it during the term of your monopoly.10

However, for computer programs, your monopoly will not allow you to prevent someone from copying or adapting your program if the copy or adaptation is either: (1) “an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner” or (2) that the copy or adaptation is for archival purposes only and is made and kept only by the person who owns the legally purchased copy.11 So, if I buy a copy of your program and need to adapt it to work on my computer, I can do so without violating your copyright. Also, if I buy a copy of your program and make a backup copy, I am not violating your copyright.

For any copyrighted work created after January 1, 1978, the term of copyright protection in the U.S. is either the life of the Author12 plus fifty years (if the Author is the human being who wrote the work)13 or seventy-five years from the date of creation of the work (if the work was made as a work for hire whether or not the employer is a human being, or if the Author of the work is anonymous or pseudonymous). So, if the Author is a corporation, the copyright in your program lasts for seventy-five years whereas, if you, personally, are the Author, the protection lasts until fifty years after you die.

WHO OWNS THE PROGRAM YOU’VE WRITTEN?

The “Author” of a work is the original copyright owner. So, who is the “Author” under U.S. copyright law?

The “Author” for copyright purposes is the “originator” or “maker” of the work.14 In general, if you sit in your garret and write your original program you will be its “Author”. However, if you sit at your desk in the office and write the program as someone else’s employee, in general your employer will be the “Author”. This is because, “in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author”.15

Now, this bit should be of interest to any of you who have been hired by someone to create a special program for them. If, for example, my company calls you in and asks you to create a specific program that, for example, would allow me to integrate information I get from a database like Lexis or Nexis into a document I am creating on my word processing program, I will be considered the “Author” of the program for U.S. copyright purposes if you are my employee but you will be the “Author” if I engage you as an independent contractor.16

Section 101 of the Copyright Act defines a work made for hire as:

“(1) a work prepared by an employee within the scope of his or her employment; 
or (2) a work specially ordered or commissioned for use as a contribution to a collective 
work, as part of a motion picture or other audio visual work, as a translation, as a supplementary 
work, as a compilation, as an instructional text, as a test, as answer material for a test, 
or as an atlas, if the parties expressly agree in a written instrument signed by them that 
the work shall be considered a work made for hire.”

Therefore, if you are hired as a programmer and paid a salary to program, any programs you write will belong to your employer: your employer will be the “Author” for copyright purposes. Also, if you enter into a written agreement with someone else to write the documentation for their program (which probably would be considered a “supplementary work”), the person who contracted with you to write the documentation will be its "Author". Finally, if you enter into a written contract with a company to write a part of a series of programs intended to be published together, you probably can agree that the person you contracted with will be the "Author" of your program. However, even if you enter into a written contract stating your original program will be made by you as a work for hire but you are not my common law employee and I have not specially commissioned the program as part of a compilation, you will be the “Author” of the program.

Even if your type of program or other work isn’t a “work made for hire”, you can, of course, assign the ownership of your program to someone else. To make such an assignment, you must do it in writing (see next month’s article).

If you and a partner create a program, intending your contributions to the program “be merged into inseparable or interdependent parts of a unitary whole”17, you have created a “joint work.” The “Authors” of the joint work are co-owners of that work. So, for example, if you and your friend Fred collaborate on a program, you will co-own that program. However, if Fred is working as the employee of a corporation, you and the corporation will jointly own the work.

HOW DOES MY WORK GET U.S. COPYRIGHT PROTECTION?

The good news is that you get U.S. copyright protection pretty much automatically when you create your program.18 Works published after March 1, 1989 (the effective date of the Berne Convention Implementation Act) do not even need to have proper copyright notice (the ©, name of the copyright proprietor and date of publication). Also, although you can and should register your copyrighted work with the U.S. copyright office, failure to register no longer means that you can’t sue an infringer. The bad news is that, without obeying certain of the copyright formalities you won’t be able to prove up certain damages against an infringer. For example, if you have published your program after March 1, 1989 and have not affixed a notice to the program, an infringer could claim that he or she was an “innocent” infringer, that he or she did not know your work was copyrighted. You can get fewer damages against an innocent infringer.19

The moral is: place proper copyright notice on your work before it is published and register your program with the copyright office. Put the ©, your name and the date your program is first published20 on all copies of your program that you distribute to the public.21 If you change your program (i.e., if you make a derivative work based upon your program), make sure to put a new copyright notice, protecting the new elements of your program.22

Then register your program with the Copyright Office. The registration application will require the following information: (1) The title of your program (and any previous or alternative titles);23 (2) The name of the “Author” (unless the Author is anonymous or pseudononymous);24 (3) The Author’s date of birth (if the Author is a human) and date of death, if applicable;25 (4) Whether your program was created as a “work for hire”;26 (5) The nationality and domicile of the Author;27 (6) The name and address of the copyright claimant (you or the person you sold your program to) and if the claimant is different from the Author, how the claimant obtained the work;28 (7) The year the work was completed and the year it was published;29 (8) If the work is published, where it was first published;30 and (8) For a derivative work, identification of the underlying work and a description of what has been added.31

To register your program you will have to pay a registration fee and, with some exceptions, you must deposit two complete copies with the Copyright Office.32

CONCLUSION

Now that you know some basics about copyright law, next month I’ll discuss a bit about how to license your copyrighted program.

Footnotes

1 17 U.S.C. Sec. 102(a).

2 17 U.S. C. Section 101 defines computer programs as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”. 17 U.S.C. Sec. 117 sets forth the scope of a copyright owner’s exclusive rights in a computer program.

3 Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 ( Cir. 1983), cert dismissed, 464 U.S. 1033 (1984). Please note that, in situations where the idea and the expression are “merged”, the resulting work is not copyrightable. For example, if I write down a formula for making muffins (even one I’ve invented) my recipe may not be copyrightable if a court decides that the way I’ve expressed the recipe is the only (or close to the only) way to express it. In other words, where the only expression of an idea is the form of expression you use, the resulting work is not copyrightable. The court in the Apple case sent the suit back down to the trial court to determine whether the Apple operating system constituted a merger of the idea (accomplishment of the task of operating the computer) with the expression (the operating program).

4 17 U.S.C. Sec. 101.

5 I can only obtain a copyright in a derivative work (see below) if I legally used the material upon which my derivative work was based. Because I didn’t get a license from the Mutant Ninja people, my computer game is not copyrightable. Incidentally, the copyright proprietor of the Mutant Ninja Turtles could also sue me for copyright infringement.

6 Although you may have other claims against me!

7 A good example of this is a case called Stern Electronics, Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982). In Stern the Second Circuit Court of Appeals (the federal appellate court for New York) held that a computer game was fixed in “the memory devices (of the computer), from which it could be perceived with the aid of the other components of the game.” Stern, page 856. ROM can be the “tangible medium” into which the program is fixed.

8 Apple, interpreting 17 U.S.C. Sec. 102(a).

9 The Computer Software Copyright Act of 1980.

10 The Copyright Act of 1976, 17 U.S.C. Sec. 101

11 17 U.S.C. Sec. 117. Section 117 goes on to state that:

“Any exact copies prepared in accordance with the provisions of this section may be leased, sold, or otherwise transferred, along with the copy from which such copies were prepared, only as part of the lease, sale, or other transfer of all rights in the program. Adaptations so prepared may be transferred only with the authorization of the copyright owner.”

12 See below for a discussion of who is the “Author” of a computer program for the purposes of Copyright law.

13 For joint works (discussed below) the term of protection extends until 50 years after the death of the last surviving Author.

14 Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884).

15 17 U.S.C. Sec. 201(b).

16 Of course you and I could enter into a written agreement stating who the owner of the copyright in the program would be, but absent such an agreement, the rules are set forth here. The section of the Copyright Act that allows the parties to agree whether the employer or the employee is the owner of copyright in a work is 17 U.S.C. Sec. 201(b). Note that this section does not allow the parties to change the definition of “Author” but , instead it acts to allow some sort of contemporaneous assignment of rights.

17 17 U.S.C. Sec. 101.

18 This has only recently been the case,. With the passage by Congress of the Berne Convention Implementation Act of 1988 (effective March 1, 1989), many of the copyright “formalities” were eliminated.

19 17 U.S.C. Sec. 401(d).

20 17 U.S.C. Sec. 401(b).

21 17 U.S.C. Sec. 401(a).

22 17 U.S.C. Sec. 401(b)(2).

23 17 U.S.C. Sec 409(6).

24 17 U.S.C. Sec. 409 (2) The question of who an Author is is discussed below.

25 17 U.S.C. Sec. 409(2).

26 17 U.S.C. Sec. 409(4). The question of whether a work is a “work made for hire” is discussed below.

27 17 U.S.C. Sec. 409(2) and (3).

28 17 U.S.C. Sec. 409(1) and (5),

29 17 U.S.C. Sec. 409 (7) and (8).

30 17 U.S.C. Sec. 409(8).

31 17 U.S.C. Sec. 409(9).

32 17 U.S.C. Sec. 407. [If you are really reading these, you must really be desperate for something to do. - Ed.]