Fixing Your Rights - The US Copyright Office Expands Right to Repair

The right to repair the devices, vehicles and other goods you own seems to be a given right when looked at on the face of it. After all, you bought the item, therefore you should be able to maintain it and try to prolong its lifecycle in your use; however, this is not exactly this simple. Some IP provisions hinder or even outright prevent the repair, modification or tinkering of those goods, particularly through copyright in proprietary systems to those goods. Many have fought over the right to repair, discussed on this blog before, but the line hasn't clearly been drawn in the sand as to what is okay and what isn't. In the light of this, the US Copyright Office was recently petitioned to rectify this wrong, and the right to repair movement took great strides in allowing this practices.

As a primer, under 17 USC 1201, a person is not allowed to "…circumvent a technological measure that effectively controls access to a work protected under this title". These types of measures include digital rights management software, or the encryption of software or underlying code in sophisticated machines or goods. More recent examples include the disabling of iPhones that detect third-party repairs or parts, and John Deere preventing tractors from being repaired under their user licences.

In a ruling released last week (including a very thorough background document here), the Copyright Office decided that owners of certain goods and vehicles could repair those devices without infringing on copyright.

Firstly, the Office allowed the 'jailbreaking' of computer programs (i.e. gaining access to the operating system to allow the installation and running of unauthorized software) relating to 'voice assistant devices like Amazon's Echo or Google's Home. The exemption already applied to smartphones, and is now extended to these types of devices.

Not all damage is fixable, even with extensive rights

The Office also focussed on computer programs that disabled the repair and diagnosis of land vehicles, specifically personal automobiles, commercial vehicles or mechanized agricultural vehicles (including any telematics systems, i.e. an in-vehicle computer). When the circumvention of the software is needed to repair, diagnose and lawfully modify the vehicles, the Office considers this circumvention to be lawful. They also expanded this to include the same for smartphones, home appliances such as fridges and HVAC or electrical systems. What needs to be noted is that 'maintenance' specifically only includes the "…servicing of the device or system in order to make it work in accordance with its original specifications and any changes to those specifications authorized for that device or system".

Any repairs discussed above are also allowed to be done by third-party vendors, and not simply the owner of the device and/or vehicle. This is a huge step, as the third-party repair market is important to support those who do not have the technical know-how or inclination to do their own repairs.The ruling also does not exempt some circumventions, including any non-land vehicles (such as planes and boats), or devices that do not fit into the categories set out above. One can understand the hesitation to give a very broad exemption by the Copyright Office, as this could have unintended consequences or provide for uses that should not be allowed for. This distinction will undoubtedly change, but incremental changes can hinder the steps towards progress in the long run. The Office also denied the right to repair in relation to gaming consoles, which raised strong concerns of piracy if allowed.

The expansion of the right to repair devices and vehicles is an important part of protecting the environment and minimising unnecessary purchases of new devices or vehicles when the repair of the old one would have been prohibitively expensive. Many advocates for this right will rejoice at the ruling, while manufacturers will be less than thrilled losing control over the devices or vehicles once sold to the end-user. It remains to be seen whether the Office will expand these exemptions in the future, but seeing their inclination to do so, this writer thinks these rights will only be expanded on once new technologies become more commonplace and the need for their repair necessary.

Source: iFixit

A Fortine at the PUBG - Can You Protect a Video Game Format?

Video games have effectively become mainstream entertainment during this writer's lifetime, and with that increased popularity their value to companies has also gone up. If one video game becomes popular, other developers often jump at the chance of taking advantage of the popularity with their own spin. An example of a recent explosion in video game types are battle royale games, where several players fight for survival with limited resources, with the last person standing winning that particular session. The two most popular ones are PUBG (PlayerUnknown's Battlegrounds) and Fortnite, developed by PUBG Corporation and Epic Games respectively. As the two battle royale titans battle it out for popularity, there is a risk of lawsuits going either way to protect their interests.

According to the Korean Times, PUBG have filed a lawsuit against Epic Games for copyright infringement in Korea, alleging that "…Fortnite was copied from… PlayerUnknown's Battlegrounds", including replicating the 'experience' for which PUBG is known, including the game's 'core elements' and user interface. PUBG have raised concerns over replication as early as September 2017, when Fortnite's battle royal mode was announced, including over Fortnite's "…User Interface, gameplay and structural replication in the battle royale mode". PUBG are, however, licensees of Epic Games' Unreal Engine 4, which adds yet another layer of complications into the mix, and a potential pitfall for PUBG in their claim.

While it is unclear, at least to this writer, how the Korean courts will deal with a claim concerning the claims on video game formats (any readers with further knowledge should let me know!), how do other jurisdictions deal with these questions?



PUBG's lawyers had a dream
about the wording of the court ruling

There has been very little video game related litigation in the UK. The most recent one, Nova Productions Ltd v Mazooma Games Ltd, dates back to 2006. In the case the UK Court of Appeal saw that "…Not all of the skill which goes into a copyright work is protected... An idea consisting of a combination of ideas is still just an idea. That is as true for ideas in a computer program as for any other copyright work". The court's emphasis was on the lack of protection for the ideas surrounding a game, which could, at least in this writer's view, preclude the protection of video game formats like battle royale.

In the US the situation is slightly different. In Tetris Holding LLC v Xio Interactive the New York District Court found that a Tetris clone had infringed the copyright in the work, although protection was largely extended only due to the similarities in aesthetics between the games. The underlying rules of the game (i.e. format, one could argue) can be protected only if the expression of those rules is somehow limited, or isn't part of scènes à faire. Similarly, in DaVinci Editrice SRL v Ziko Games LLC, the District Court of Texas decided that "…the rules, procedures, and limits that make up the game play are not protectable expression". To add more fuel to this fire, the US Copyright Office has set out that "…Copyright does not protect the idea for a game… or the method or methods for playing it. Nor does copyright protect any idea, system, method, device, or trademark material involved in developing, merchandising, or playing a game". One can appreciate that the American system protects the aesthetic expression of a video game (and arguably rightfully so), rather than the rules under which it operates.

Clearly the protection of a video game format, i.e. the rules that underpin the game itself, are very difficult to protect, particularly under copyright. While this writer does not know what the Korean regime is for copyright in this area, it seems very doubtful that it would be very different from the above. As both PUBG and Fortnite differ dramatically in their aesthetics (although a more detailed analysis of all elements of each game could yield some infringing elements), it would seem that PUBG have more to lose than just a copyright lawsuit should things go badly.

Boxed Up - Sharing of Software Add-ons Online is Copyright Infringement in Canada

The enforcement of copyright is never easy, particularly in today's world where access to infringing files, streaming websites and other means is almost as easy as simply searching for today's news. As infringers and suppliers of infringing materials become more and more sophisticated and clever, rightsholders have to pursue a wide array of cases of infringement. While direct infringement is often very easily determined, the facilitation of infringement by third-parties is always a tricky question (discussed more on this blog here and here). The Canadian Court of Appeal had to recently discuss this point in a very interesting decision.

The case of Bell Canada v Adam Lackman concerned the sharing of software add-ons on the website "TVAddons", operated by Mr Lackman. The KODI media player is an open source piece of software that enables the play of various types of multimedia. Various types of infringing content can be accessed using the media player when certain add-ons are added to it, which allow it to access and stream content hosted on the Internet; many of which were shared on the TVAddons website. Another piece of software was shared on the site called "FreeTelly", a modified version of KODI that allows a user to access infringing materials, and instructions on the installation and use of add-ons. Bell Canada objected to the potentially infringing materials shared on the website shared on the website and sued Mr Lackman for copyright infringement.

The case concerned an Anton Pillar order (discussed in more depth here), and whether the judge at first instance erred in their judgment on the order's standards' application to the facts at hand. The appellant argued that the court had mischaracterised their activities as infringing (when only a small number of add-ons were infringing), and therefore misapplied section 2.4 of the Canadian Copyright Act that deals with communication to the public.

The Court agreed that the judge at first instance had mischaracterised the activities of Mr Lackman (and TVAddons), and that they misunderstood the nature of their activities. Only 16 of 22 'Features' add-ons were tested, which doesn't even scratch the surface when over 1,500 add-ons are provided on the site. Similarly, the appellant's website, calling it a 'mini Google', when the provision of add-ons simply facilitated a quicker, more direct form of infringement by avoiding adds and providing easy access to links.

Having misunderstood the above, the judge had therefore also misapplied the law in relation to communication to the public. The Court considered that Mr Lackman, contrary to the decision at first instance, had communicated the works to the public, as "…the respondent’s website is not content neutral as it targets copyrighted content" by providing access to add-ons that are designed to provide unauthorized access to motion pictures and on-demand and/or live television programming. Having these add-ons, according to the Court, is akin to "…providing embedded links or automatically precipitating a path to copyrighted content". The same applies to programs that either aid in the installation of add-ons, or have pre-installed add-ons already to do the same.

In the light of the above the Court determined that the operation of the site clearly would not fall under the mere conduit exemption, but facilitates access to infringing materials. The site's branding also clearly encourages and highlights the site's purpose for the infringement of copyright through the add-ons, which additionally demonstrates clear knowledge by Mr Lackman of the hosted material.

The Court drew a parallel to the sale of pre-loaded set-top boxes in Bell Canada v iTVBox.net that allowed the user to access, for free, copyright protected content online. What is interested is that the ultimate source for the add-ons for the set-top boxes was TVAddons. As with the set-top boxes, the site would not be acting as a mere conduit, but a facilitator for the infringement of Bell Canada's rights.

Ultimately the Court did conclude that the judge at first instance erred in their decision and that Bell Canada would have a strong prima facie case for copyright infringement. Following the determination of likely copyright infringement, the Court also issued an injunction against TVAddons.

While the case's main focus was not the legal argumentation around copyright infringement, it still sets an interesting, a continuing precedent, where the Canadian courts are very likely to prevent the sharing of content online that facilitates infringement. This clearly now includes both hardware and software.

Source: Barry Sookman

Used Treasures - CJEU Sets Limits on the Resale of Copyright Works

Resale of goods, particularly those protected by copyright, has been a question that the courts have been tackling for a long time. This is further exasperated by the online environment, where the sale and use of sold products or software is ever-more elusive, with the actual exhaustion of any rights (particularly in the sale of the protected goods) is unclear. For rightsholders, exhaustion of rights can often seem like having your cake and eating it, while those seeking to benefit from it perceive it as more of a possibility to create a second-hand market in the online environment. Not often discussed, cases dealing directly with exhaustion seem to be far and few between; however, the Court of Justice of the EU recently took on a case dealing with a question that is important in the context of software exhaustion.

The case of Aleksandrs Ranks and Jurijs Vasiļevičs v Finanšu un ekonomisko noziegumu izmeklēšanas prokoratūra and Microsoft Corp deals with two Latvian individuals who sold Microsoft software products online during 2001 to 2004. The Court estimated that over 3,000 copies had been sold, with the pair making revenues nearing $300,000 during that time. Mr Ranks and Vasiļevičs were subsequently charged with a number of infringement claims, and having gone through the courts in Latvia, the matter ultimately ended up in the CJEU, particularly dealing with questions surrounding the exhaustion of rights in the aforementioned software products.

The Court, dealing with the two referred question together, summarized the matter as asking "…the interpretation of Article 4(2) of Directive 2009/24 [Software Directive], establishing the rule of exhaustion of the copyright holder’s distribution right, and of Article 5(1) and (2) of [the Directive], laying down exceptions to that rightholder’s exclusive right of reproduction, must be interpreted as referring to the equivalent provisions of Directive 91/250 [Computer Programs Directive], namely Article 4(c) thereof, on the one hand, and Article 4(a) and Article 5(1) and (2) thereof, on the other". Effectively the questions seek to establish whether the exhaustion of rights after their first sale under the Software Directive is interpreted as meaning the same equivalent provision as set out in the Computer Programs Directive.

Having discussed the admissibility of the claim overall, allowing for them to be referred to the CJEU, the Court first looked at the actual concept of exhaustion.

For exhaustion to apply to the right to distribute computer programs in the EU it is is subject to two conditions: "...(i) the copy must have been placed on the market and, more specifically, sold by the rightholder or with his consent, and (ii) it must have been placed on the market in the European Union". Sale in itself means the sale of a program for an unlimited period in return for a fee to remunerate the rightsholder for the distribution of that particular program. While the Court has clearly established that, at least in most cases, the sale applies to physical copies of the programs only; the case at hand discussed the resale of electronic copies, and thus would be outside of the prima facie remit of the provisions.

Even Santa has to resell some things

The Court followed this with observations that, although the provisions above discuss 'a copy' of the program, no particular medium is specified, and, following the decision in UsedSoft, the law "...makes no distinction according to the tangible or intangible form of the copy in question". The sale then clearly applies irrespective of the medium of the program, as long as it has been initially sold in the EU lawfully. The reseller can, therefore, resell a copy of a program provided that "…[the] sale does not adversely affect the rightholder’s exclusive reproduction right".

Mr Ranks and Vasiļevičs also argued that the rule would allow for the resale of computer programs stored on a non-original medium (i.e. electronically rather than on a CD or DVD, for example) if the original medium has been damaged. While Article 5 of the Computer Program Directive allows for the making of back-up copies, the exception is limited to instances where "… That copy… (i) [is] made by a person having a right to use that program and (ii) [is] necessary for that use". Clearly, the resale of 'back-up' copies would not fall under Article 5, even if the original copy has been damaged. The CJEU followed this rationale, establishing that a copy cannot be resold even if the original medium has been damaged, and can only be used to meet the sole needs of the person who made that back-up copy.

Although UsedSoft established that the purchaser of a legal electronic copy of a computer program does have the right to resell their copy (and the rights were exhausted as a result of that initial sale), this can be distinguished from the resale of a back-up copy, since the back-up would not have been the item that was originally sold (which was the tangible copy) and exhaustion would not, arguably, apply. Has the individuals purchased the copies from Microsoft legally from their website, they potentially could have had the right to resell the copies.

In the end the CJEU summarized their decision as "… that Article 4(a) and (c) and Article 5(1) and (2) of Directive 91/250 must be interpreted as meaning that, although the initial acquirer of a copy of a computer program accompanied by an unlimited user licence is entitled to resell that copy and his licence to a new acquirer, he may not, however, in the case where the original material medium of the copy that was initially delivered to him has been damaged, destroyed or lost, provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder".

The resale of computer programs is a very thorny topic, as one can see, and the resolution the CJEU came up with seems to make the most sense. This allows for the resale of genuine copies of programs, yet reserves the rights to only those with a bona fide interest in doing so, rather than a mere opportunistic view for quick monetary gains. The limitation of the resale of back-up copies also makes sense, since, as the original program was bought in a tangible medium, the original seller's view couldn't have been one that allows for the resale of any back-up copies (especially since back-ups, by nature, are for the user and no one else as a means to access their programs in the event of damage or loss to the CD/DVD). It will be interesting to see whether this case spawns more litigation; however, this writer seems to be quite skeptical of this, due to the complexity and lack of benefit to those who'd pursue this avenue more vigorously.

Confusion Is Right - Likelihood of Confusion in a Part of the EU Doesn't (Necessarily) Lead to Pan-EU Injunction

Due to the vastness of the internal market in the EU, the enforcement of rights can be difficult, especially when those rights have been infringed in one Member State, but not necessarily in the rest (or to the same degree as in the original country of issue). The EU trademark gives for EU-wide protection, but in the event that national courts disagree on the interpretation of a degree of similarity between a registered EUTM and a competing mark, is EU-wide protection afforded or would the competing mark escape the clutches of the EUTM system? This question was recently answered by the CJEU in a decision handed down in late September.

The case of combit Software GmbH v Commit Business Solutions Ltd dealt with combit Software, a German software development and marketing company that holds the rights to the EU trademark for the word "combit" for similar goods and services. Commit Business Solutions is an Israeli company that sells software under the brand "Commit", on the web and in a number of countries, including in Germany, selling a German-language version of their Commit software in the country. Due to the similarity of the brands used, combit brought proceedings in Germany aiming to prevent the use of the mark for the marketing of Commit's software (with the matter ultimately being referred to the EU courts). As a peculiar part of the proceedings in Germany the court determined that, indeed, there was a likelihood of confusion in the EU for the German-speaking consumer; however, it also saw that there would be no likelihood of confusion for the English-speaking consumer. The court then referred the matter to the CJEU for ultimate determination, in particular for the lack of confusion for a significant portion of the Union.

What the referring court asked from the CJEU was summarized by the Court as whether "...Article 1(2), Article 9(1)(b) and Article 102(1) of Regulation No 207/2009 must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use concerned for the entire area of the European Union". This, in essence, is inquiring whether a partial likelihood of confusion in the EU would translate to a pan-EU injunction for the same, irrespective of the actual confusion determined for the other parts of the EU by the national courts.

With the EU being so different, pan-EU
injunctions are night impossible

The CJEU swiftly addressed the point, stating that when an EU trademark court finds "...that the use of a sign creates, in one part of the European Union, a likelihood of confusion with an EU trade mark, whilst, in another part of the Union, that same use does not give rise to such a likelihood of confusion, that court cannot conclude that there is no infringement of the exclusive right conferred by that trade mark". If there exists a likelihood of confusion in one part of the EU, the CJEU saw that it equates to an infringement of the conferred in the EU overall. This follows precedent in instances where a likelihood of confusion exists during opposition proceedings, but only with respect of one part of the EU.

While the above seems straightforward, the CJEU further complicated things. Following the decision in DHL Express France, if a court does not find a likelihood of confusion in a part of the EU (as in the case at hand) for any reason, such as a linguistic one, the mark isn't adversely affected and the scope of the injunction has to be restricted. However, the trade in which the potentially infringing sign is used has to be bona fide for the restriction to apply. The area restricted has to be clearly defined, not merely through linguistic borders, which does set a high threshold for a wider restricted area.

In summary, the CJEU set out that "...[the Articles of the Regulation] must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use in question for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion".

The finding of the CJEU is peculiar, since its rationale clearly leads in the direction of a pan-EU injunction, but can be restricted to only the areas affected in the EU if no likelihood of confusion arises. One has to wonder whether this would segment the single market, and potentially cause for the EU trademark to cease to function as intended; as an all-encompassing registration to protect an interest in the entire single market. Nevertheless, one can appreciate the rationale put forth by the Court. This writer will wonder whether the case will have bigger impact on the EU trademark, but doubts many courts will be brave enough to set very wide restrictions on any areas not covered by an EU trademark.

Source: IPKat

Goliath v Jury - Google's Use of Java APIs Fair Use, Says Jury

The fight between Google and Oracle over the Java platform, specially the API (Application programming interface) for the program and its copyright protection, has been raging for what feels like aeons. This blog has discussed the Court of Appeals (where Google was found to have infringed the code's copyright protection through verbatim copying into its Android operating system) decision some two years ago, but many have waited for the jury decision in the saga, which was handed down only a month ago.

By way of a short primer for those who have not followed the matter closely, the case dealt with 37 API packages released by Oracle (at the time Sun Microsystems) which pertained to its Java platform. Google sought to implement Java into its budding mobile operating system, Android, but both parties could not agree on a proper licencing arrangement. Nevertheless, Google implemented the APIs into its own platform, Dalvik, which consisted of 160 different APIs (of which 37 were Java APIs). Due their verbatim copying into the Dalvik platform, Oracle took Google to court, asserting copyright infringement.

After the earlier decision in various stages in the US judicial system, Google consistently lost and was deemed to have infringed the copyright in the APIs. The jury in this instance sought to look at whether Google's use amounted to fair use, and thus not infringing the rights in the works. This decision was hugely important, as Google faced damages totalling nearly $10 billion.

Blake couldn't contain himself at the thought of
unlimited, free APIs

Judge Alsup gave extensive instructions to the jury as to their assessment on fair use under US law. The jury decided the matter in three days, reaching a unanimous verdict of a finding of fair use by Google. One could argue against their finding of fair use, with Google's use not being prima facie very transformative (due to the verbatim copying of code); however, building the Android platform using the Java API did change it to something more than just Java. The judge also emphasised the fourth factor, the effect of the copying on the potential market for the work, which, in this writer's mind, could have been the linchpin for the jury's decision. Even though Java is implemented into many systems, it in itself is not an operating system, although its free incorporation into such clearly would impact on its potential market. The jury saw that Google's use was fair, and one can only wonder what persuaded them to reach the conclusion.

Although there is not much to discuss on the substantive side of the case, as is usual in this blog, the decision still is an important development in the world of technology and computer programming. As Google's statement on the win expresses: "Today's verdict that Android makes fair use of Java APIs represents a win for the Android ecosystem, for the Java programming community, and for software developers who rely on open and free programming languages to build innovative consumer products". Arguably, Google does have a point. Java has become night ubiquitous in the computing sphere (although the emergence of HTML5 could, arguably, make it obsolete), and a lack of an ability to use the technology would severely hinder any attempts of building a popular, fleshed-out operating system. On the other side of the coin, this is a blow for reaping from what you've sown, and Oracle has a right to be upset with their loss (and incredibly monetary loss through unacquired licencing fees for the hugely popular Android platform).

Many in the software industry seem to welcome the decision, such as Al Hilwa, who saw that "... most developers would likely prefer not to be burdened by copyrights around APIs". This writer is puzzled with this response, since many programmers might not be so keen to share the fruits of their labor for free. Oracle have indicated that they will appeal the decision, and this writer keenly awaits any new developments in the never-ending story that is Oracle v Google.

Source: BBC News

Conflicted Owners - Intellectual Property Law and Ownership of Property

Saying something is truly yours is a rare thing these days, especially with the seemingly impossible future of house ownership in a lot of cities (especially for us here in London), and people often derive a huge sense of achievement and gratification from the fact that they've bought something and it is finally theirs to keep. Intellectual property law has rarely concerned itself with the ownership of physical things, but protects the underlying works rather than the tangible object itself, with the exception of counterfeit goods, for example. That said, there often can be confusion among the less IP-savvy of us with this distinction, but after a recent news article this misconception might not be too far off anymore. This begs the question: can intellectual property law interfere with your ownership of your things?

In a recent letter to the US Copyright office, John Deere, one of the largest manufacturers of agricultural, construction and forestry equipment, potentially put in doubt the ownership of individual's or companies in those fields over the equipment they have purchased. John Deere's comments come in the wake of an inquiry into the Digital Millennium Copyright Act, potentially allowing for the circumvention of technological measures, currently prevented under 17 USC 1201, under certain classes, for example software relating to cars or other vehicles or equipment. This exemption would allow for the breaking of software protection to aid in the diagnosis and repair of vehicles using that software, especially when it comes to non-licensed, cheaper mechanics than those licensed by John Deere, or even the modification of said software for your own purposes.

John Deere's position regarding the proposed changes is quite strong: "Circumvention of the TMPs for Class 21 will make it possible for pirates, third-party software developers, and less innovative competitors to free-ride off the creativity, unique expression and ingenuity of vehicle software designed by leading vehicle manufacturers and their suppliers". Admittedly, allowing for tinkering and free access to software does provide risks (malfunctioning of the vehicle etc.), but allowing for cheaper maintenance and possible customization potentially outweighs those issues. As for piracy, traditional copyright would still protect the software from being used by competitors or 'pirates', since the exception would only apply to repair, modification and improvements and not misappropriation or its blatant copying.

Brick was trying to find the software on his car, but couldn't

How does copyright impact, at least in John Deere's argument, ownership of your vehicle? Their argument is that "[a] vehicle owner does not acquire copyrights for software in the vehicle, and cannot properly be considered an "owner" of the vehicle software". From a plain understanding of copyright law, the argument runs true; when you purchase a piece of software, you don't 'own' the software itself per say, but garner a licence to use that software. Even with that in mind, the end-user does, and should, have rights in their use of the software, albeit not be allowed to make illegal copies of it and distribute it as they wish. John Deere acknowledge this: "...the vehicle owner receives an implied license for the life of the vehicle to operate the vehicle", which is true, at least in terms of the software. One could say it prevents the proper use of the car or its auxiliary uses (should the software fail or be irreparable due to age or lack of repair facilities), but one has to remember to distinguish ownership of the tangible from the intangible. Your car is still your car; the software isn't.

The United Kingdom does not have a similar set of broad protective measures against the circumvention of technological protection, although section 296 of the Copyright, Designs and Patents Act 1988 does prevent an individual from using devices to circumvent such protections (for example using 'mod-chips' to play illegal copies of video games on their consoles). Software is very much protected in the UK under copyright (more on which can be found here), and alleged misuses of vehicle software would very much be protectable against.

Copyright is a complex beast, and it does prevent one from enjoying the things you buy in the manner than some would hope to (i.e. as if they own the right to distribute the content etc.), but does not prevent you from using it in a legitimate, allowed fashion. However, do other IP rights prevent you from using your hard-earned items?

Trademarks apply to the sale of products, aiming to identify those of a certain quality or pedigree, and don't lend themselves well to the interference of ownership. Once you buy a bottle of Coca-Cola (or any brand, per your preference), the company cannot prevent you from using it to trick your siblings, or to make a mess; qualities it would possibly not enjoy associating with its brand. There has been an instance where Deadmau5, a popular electronic music producer, was told by Ferrari to remove unwarranted modifications to his Ferrari Spyder (such as changing the logo to a jumping cat one), and even though, on the face of it, it can seem like an interference with his right to use his own property, one could say the issue was probably more contractual than IP related.

Patents, similarly to trademarks, only really apply in a commercial context, and don't provide an avenue through which a patented item could be prevented from being used in a particular way. Even if your vacuum cleaner has a patented method of collecting refuse, you can still vacuum your pets without a worry or fear of interference from your vacuum brand. Any illegal copying or misuse of patented material would clearly be covered, which steps beyond the bounds of everyday use of said items.

That being said, John Deere and the other parties rallying against an exception to circumvent car software are not, as the article cited here would say, interfering with your ownership of your own items or seeking to do so. The protection of your software has been a long-standing ability within the world of IP, and their aim is not to prevent you from using your tractor that you have rightfully purchased. Whether the exception is introduced or not remains to be seen, but this writer would like to assure you your tractor is still very much yours to keep, at least for now.

Source: Wired

Retrospective - Computer Software and Copyright

In a world where everything is becoming more and more digital and reliant on computers to handle most tedious or complex tasks, software is king; it is what executes these tasks and makes things easier to do on the aforementioned devices. With the software business booming, more and more value can be placed on having the right software for the right task in the highly competitive space, and with that the desire to protect your product. Even in the wake of the Alice decision some time ago (discussed on this very blog here and here) the protectability of software still remains, albeit quite hindered. In light of the more difficult protectability of software through patents, copyright shines brighter and as a possible alternative, yet poses a question which might be less glaringly obvious to most: is software protected under copyright?

A fairly recent case in the UK Court of Appeals, SAS Institute Inc v World Programming Ltd, attempted to take on this issue and decide once and for all whether copyright does afford protection to software and its underlying code. The SAS Institute is a software development company well-known for its analytical software, often referred to as the SAS System (or just plainly SAS). A core component of the SAS System is SAS Base; a piece of software which allows the user to easily write and run scripts to analyze and use data. The scripts themselves were written in a programming language developed by SAS called SAS Language. Finally, the SAS Base software can be extended upon by three additional components: SAS/ACCESS, SAS/GRAPH and SAS/STAT respectively. In addition to the software SAS have also written manuals for the use of its software. The SAS environment was quite tightly controlled, and customers had no secondary options which to use in the execution of their developed scripts for the platform (the SAS Language only functioned through SAS' System). Their competitor, World Programming, sought to create an alternative piece of software capable of utilizing the SAS Language, so that any programs written in the Language can be used in both their suite and SAS' - the end-result being a program called the World Programming System. The software endeavored to mimic SAS' System as closely as possible; however they had not accessed SAS' source code in their development, merely copying the outputs and inputs of the System. Due to this, SAS sued WPL, asserting that the company had copied its manuals; through the copying of the manuals they had infringed SAS' copyright in their extension components; WPL had infringed its copyright in a version of its System, the Learning Edition, and breached its terms in its misuse; and WPL had infringed SAS' copyright in its manuals after creating its own version called the WPL Manual.

Being 'creative' in programming can be difficult

Confusion in terms of acronyms aside, the court was therefore faced with the ultimate determination of whether copyright exists in SAS' software, and whether WPL had infringed that copyright. Under EU legislation, more specifically Directive 91/250/EEC (now governed by Directive 2009/24/EC with no substantive differences), computer programs are wholly protected by copyright as a form of expression; however the underlying principles of those programs are not. To put this into more simple terms, the code executing a specific function in its particular expression can be protected, but the idea of that execution is not, allowing anyone to create a program doing the same thing, so long as the expression of that execution is not the same as other expressions of it (i.e. different code, same result). Computer programs have since been included in the UK Copyright, Designs and Patents Act 1988, under section 3.

To look at things further, the scope of what is protectable under the above Directives was left quite open, but was subsequently added to in the case of Infopaq International v Danske Dagblades Forening, where the European Court of Justice saw that copyright protects an author's "...intellectual creation" (the wording used in the Berne Convention), potentially encompassing programs quite readily if it can be seen as such a work - supplanting this definition in the Directive's interpretation. What is important in this term's application, in the Court's judgment, lies within whether a computer program can be seen as an 'intellectual creation', and in assessing this the court must decide that if the expression within the computer program is purely a technical one (i.e. derived from necessity for things to work right), the work cannot be seen as an intellectual creation under this definition. To put things in more simplistic terms: "...the author [has to be] able to express his creative abilities in the production of the work by making free and creative choices". If a programmer, in the creation of a specific application, can express his or her creativity and choices in how the program works, it can be protected by copyright. Even if the program has very specific functionality, or combines several different functional approaches to the execution of its desired task, the law does not protect it under copyright. In the court's view the copyrightability of functions or functionality, no matter how well used or combined, would be tantamount to the copyrightability of an idea, and therefore is not within the remit of copyright.

Finally, the court had to assess whether the manuals created by SAS are protected as works, and whether WPL had infringed those manuals' copyright protection.Their content was largely informative, and therefore would encompass most of the 'ideas' expressed in the aforementioned programs, or as expressed by Lord Justice Lewison: "...what counts as an idea, for the purposes of a computer program, also counts as an idea for the purposes of a manual". With this in mind, should the manual express the idea in a way which can be seen as protectable, it can fall within the remit of the law. His Lordship dismissed both claims on the manuals, effectively dismissing their protection due to a lack of any protectable expression, as they merely described the function of the programs without adding anything original on the author's part.

In the end SAS lost their appeal and the Court of Appeal closed the door on the copyright protection for programs, at least for the most part. The case was appealed to the UK Supreme Court, however leave was not given, solidifying the law's position through the Court of Appeal's judgment. The position presented in the case differs drastically to what has been discussed in the United States, where programs can be protected by copyright. Nevertheless the case is without a question an important milestone in relation to copyright and computer software, and this writer for one believes it will stay as such for a while.

Thoughts on the Alice Corp v CLS Bank Decision

Software is big business in the 21st century. With over 400 billion dollars worth of revenue having been created in 2013 alone, and arguably the market is growing by the year, you can't help but understand the vehement defense of those interests even if it often seems to be for nothing but profit, and not the defense of a legitimate product or competitive edge. What gives software, and subsequently software patents (discussed in more detail here), a bad name are so-called 'patent trolls', or more officially Non-Practicing Entities (sometimes also called Patent Assertion Entities). The companies rarely produce or use the patents they control, but merely use them as a means to recover licensing fees, potentially affecting the marketplace and software development quite negatively. In light of this whether software should be patentable or not, and if so what the limits are, has been highly contentious and of interest to many. Finally the matter arrived in the open arms of the United States Supreme Court, which issued is ruling on the question a bit over a month ago (discussion of the earlier decision can be found here).

The case of Alice Corporation v CLS Bank International dealt with Alice Corporation's patented method of mitigating 'settlement risk', which is the uncertainty of whether only one party will pay what it owes to another, by the use of a third-party. The software or computer process creates 'shadow records' of the parties' debits and credits, effectively mirroring their payment capabilities within their real world finances. It then allows or denies any transactions based on those records, should they fall within the payment capabilities of the owing party, finally issuing the payment order to the bank responsible for that transaction. This mitigates the risk of such transactions for both parties, leaving much less uncertainty as to the other party's payment capabilities. The patent's claims in question are as follows: "...(1) the foregoing method for exchanging obligations (the method claims), (2) a computer system configured to carry out the method for exchanging obligations (the system claims), and (3) a computer-readable medium containing program code for performing the method of exchanging obligations (the media claims)" - all of which are handled through a computer. CLS Bank handle currency exchanges internationally, and sought a declaratory judgment to invalidate Alice Corporation's patent under 35 USC 101.

What abstract truly looks like

In determining whether Alice Corporation's patent is invalid, the Supreme Court had to decide whether it would fall under a patent ineligible category such as laws of nature or an abstract idea. This assessment, as expressed by Justice Thompson in the unanimous judgment of the court, would entail: "First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts... If so, we then ask, '[w]hat else is there in the claims before us?'" The second step entails an assessment of whether the patent is an 'inventive concept', or in other words, brings something more to the table than just the idea itself.

The Supreme Court in their judgment draw heavily from the case of Bilski v Kappos (more extensively discussed on this very blog). They aligned Bilski's method of hedging risk to Alice Corporation's mitigation method, and determined the patent was indeed an abstract idea and therefore ineligible for the patent. This is because, referring to the Bilski decision: "...all of the claims at issue were abstract ideas in the understanding that risk hedging was a ‘fundamental economic practice.’". As, according to Justice Thompson, there is no meaningful distinction between Alice Corporation's patent and Bilski's patent, the former can be concluded to be an abstract idea in the same vein.

Although the court did determine that the patent was ineligible it could still contain a transformative element which turns it into an 'inventive concept'.  To put into better terms, referring to Mayo Collaborative v Prometheus Labs: "A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]". The mere addition of a computer into the process, as evident from the extensive precedent in this area, will not make non-patentable inventions into patentable ones unless the implementation via the computer is more extensive.

Alice Corporation's patent largely relies on a computerized method which handled the risk mitigation, and on the face of it, seems to fall within precedent as unpatentable. The court outright rejected Alice Corporation's argument that the computer plays a substantial and meaningful role and determined that the patent is not an 'inventive concept'. Expressed better by Justice Thompson: "...the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer". The Supreme Court therefore rejected the appeal and Alice Corporation's patent was deemed invalid.

The decision is very important, however is not necessarily the axe to the head of software patents on the block. Although the Supreme Court rejected patents which merely give instructions to a computer, if applied more thoroughly and in such a way that it solves a problem such as in Diamond v Diehr. This distinction was expressed incredibly well by David Kappos for SCOTUSBlog: "[t]he distinction between patentable software in Diamond v. Diehr and unpatentable software in Bilski and CLS Bank is not about software at all; rather, the difference is the presence or absence of a definitive invention versus abstraction. Diehr's new and useful process for curing rubber was held to be innately patentable – the fact that it happened to be manifest in a software language was tributary". To put into different terms, software patents should be a nuanced application, a solution to a distinct problem rather than a blanket cover for a larger area, stifling progression and potentially causing issues in the technological developments of the future. The reception of the decision has been wildly mixed, and rightfully so, since the decision does both good and bad things to the patent sphere in the US. What impact it will have remains to be seen more down the line, but hopefully this will tackle patent trolls more than it does legitimate businesses - regardless of your definition of 'legitimate'.

Source: The Verge

Retrospective - Software Patents in the US

With the Alice Corporation v CLS Bank Supreme Court decision looming in the horizon, and the patentability of software in the US faces its most recent judicial challenge, this writer thought it was best to look at the origins of the current stance of such patents in the United States. Software patents are incredibly lucrative, generating an estimated 20 billion dollars yearly to tech giants such as Google and IBM. Regardless of this their patentability can be questioned, and an answer that still stands today was provided by the US Supreme Court 4 years ago, which is now effectively being challenged by Alice v CLS.

The case in question is Bilski v Kappos, decided in mid-2010. It dealt with Bernard Bilski and Rand Warsaw's application for a patent (found on page 79) for a method which hedged risks in the selling of commodities over time. The method, roughly explained, would have a third party selling the commodities in question to parties at a fixed price, mitigating any spikes in price should a single entity buy those commodities in large quantities at once. This also ensures that the providers of the commodities would not suffer either, as the third party purchaser would safeguard them from a lull in demand after a big buyer would take their share, ensuring that the price of the commodities would not dip below the third party's fixed price. The patent application for this method, more specifically described under Claim 1 and Claim 4 (both under contention), the latter of which puts the former in a mathematical equation, were initially rejected by the patent examiner. The decision was subsequently appealed, and through an en banc decision of the Court of Appeals, finally ended in the US Supreme Court.

What the Court was faced was an assessment of whether the patent contravened 35 USC § 101, under which one cannot patent fundamental principles, abstract ideas, laws of nature or natural phenomena. Could a process such as Bilski's one be patented as a process under section 101, or would it be merely patenting an abstract idea? The Supreme Court would have to assess Bilski's method under the machine-or-transformation test to determine if it is a process or not: "...(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing". What this could be is the method's usage through a computer for example, making the method a more specific one as opposed to just a pure idea, being a process and thus patentable. The machine-to-transformation is not, according to the US Supreme Court, the only definitive test, but more of "...a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101".

Gavin always thought in the abstract

The majority's decision hinged heavily on its previous decisions of Gottschalk v Benson, Parker v Flook and Diamond v Diehr. The three decisions quite heavily dismiss the possibility of patenting processes very similar to the one which Bilski was attempting to patent, as the Court saw in each case that those processes would merely be patenting abstract ideas, leaving them outside the remit of patentability. Although Benson and Flook failed, Diehr succeeded as the process which was attempted to be patented was an actual process, unlike in the former two which attempted to patent formulas rather than real processes, leaving the door open for such attempts should they sufficiently fall within the Diehr precedent's line.

In the end the majority rejected Bilski's appeal, stating that "The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea". This can be said to be right based on the precedents used by the Court in their decision. Bilski attempted to patent an idea of how to hedge risks, lacking a secondary component which would make the method a process aside from just a principle under which a business would operate, clearly making it just an idea, not a process.

What the Bilski case establishes does have an impact on software patents, but can be argued to be distinguishable from the forthcoming Alice case to an extent. What Bilski attempted to patent was just an idea of a process; however should a software patent sufficiently establish a process akin to what was seen in Diehr, it could very well be patentable. On the face of it the Alice patent would seemingly fall under the Benson and Flook precedent, potentially causing it to be not eligible for patentability; however this remains to be seen once the Supreme Court presents its decision on the case.

US Supreme Court to Take on Software Patents

Software patents have been a somewhat controversial topic within the IP community for some time now, especially due to their heavy association with patent trolls. These Non-Practicing Entities (NPEs) or otherwise known as Patent Assertion Entities (PAEs) exist for the sole or primary reason of enforcing patents which they own with no actual intention to ever use them themselves for the development of goods or services. As such these practices are highly questionable, at least on an ethical standpoint. The Goodlatte Innovation Act is attempting to curb these practices; however has yet to pass through the legislature and become law in the United States, following a similar approach to their Kiwi brothers in New Zealand who have since, potentially at least, ended software patents in late 2013. Software patents have been disputed in the long-going case of Alice Corporation v CLS Bank, which is being heard in the US Supreme Court, and will undoubtedly address the current state of software patents and their use in the US.

The case concerns several patents owned by Alice Corporation relating to the facilitation of securities trading, and more specifically, the reduction of risks for parties not fulfilling their part in their contractual obligations such as patent number 7725375. Independently from Alice CLS Bank developed their own software which fulfilled a similar function, potentially infringing Alice's patents. Due to this CLS sought a declaratory judgment from the courts intending for Alice's patents to be invalidated, as per their argument, the patents would not be patent eligible due to them being merely abstract ideas, not falling under the requirements of 35 USC section 101. CLS' argument asserts that what Alice have patented merely covers basic economic concepts; however Alice argue that abstract ideas should only be interpreted narrowly, including things such as facts of nature. Ultimately the Supreme Court face the dilemma of deciding how far the abstract patent doctrine extends, potentially impacting a large industry of software patents.

Soft wares can be quite nice during Winter

Abstract ideas, although expressly prohibited by the Supreme Court in their decision in Diamond v Chakrabarty, are still assessed on a case-by-case basis, still leaving ideas which seem abstract potentially within the remit of section 101. As such the Supreme Court has stated that "...Congress took this permissive approach to patent eligibility to ensure that ingenuity should receive a liberal encouragement", allowing for a wide margin of flexibility within this scope. The rationale behind the rejection of abstract ideas is because "...abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work".

In the District Court of the District Columbia Justice Collyer saw that Alice's patents were not eligible as they sought to patent, in her Honor's mind, fundamental concepts and were therefore abstract ideas. Subsequently in the Court of Appeals the decision of the District Court was reversed, deciding that "[t]he asserted claims appear to cover the practical application of a business concept in a specific way", noting their extensive implementation through computers. The limitations the patents' implementations faced was, in the Court's view, integral to their patentability, therefore not merely encompassing abstract ideas which could be implemented quite easily. CLS sought an en banc (all of the judges of a particular court reside as opposed to only a select few) rehearing of the decision. With the Court of Appeals rehearing the case en banc, the majority of the Court of Appeals' judges saw that the patents were not patentable due to their abstract nature, concurring with the initial District Court decision.

As one can very well see the case is very complex and while this article aimed to set out the basics of the case as an informative starting-point prior to the Supreme Court decision, some specifics had to be omitted. This writer would welcome any and all interested in this case to read the included source material thoroughly if you want a more nuanced understanding of the case as a whole.

The case ultimately boils down to how the Supreme Court balances a much narrower definition, preventing partly or mostly the definition of more general ideas in software, against a broad-ended, much vague definition of an abstract idea, potentially inhibiting future innovation as a result. Justice Breyer touched on this, preferring a much narrower allowance of abstractivity: "...instead of having competition on price, service and better production methods [if software patents are not allowed or restricted], we'll have competition on who has the best patent lawyer". Arguably Justice Breyer does have a point, and the backlash against software patents in the past several years would only indicate such a direction as well. But again, the issue is not that simple, and this writer for one awaits the Supreme Court's decision with interest.

Source: The Guardian

New Zealand Bans Software Patents - Or Did They?

As we have turned towards an ever-more computerized world, software has arguably become almost as valuable as the hardware it runs on. Without effective protection through patents for innovative software products, the field would be a free-for-all of copying, using others' methods and creating an environment where innovation would not persist. Some have argued, and rightfully so to an extent, that the field has lead to a culture of abuse and 'patent trolls' where software patents are merely a conduit for quick cash-in schemes for companies who have no intention of ever using the patented software. Due to this clear misuse there have been calls for reform or the full fledged abolishing of software patents in the common law, and finally those calls have been answered by the far-away land of New Zealand.

Software engineers' collective disappointment

In mid-2008 the New Zealand Parliament had the Patents Bill introduced, which sought to "...update the New Zealand patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer". The Bill introduces a cavalcade of changes to the old Patents Act 1953, being one of the biggest modifications of the New Zealand patent legislation in 60 years. The Bill introduces an exception to patentability for computer programs in very express terms. Although the exclusion provision states that computer programs are not patentable, this is not the case entirely. 

Under a Supplementary Order Paper to the Patents Bill computer programs are not patentable "...as such if the actual contribution made by the alleged invention lies solely in it being a computer program" (emphasis added). The first two words highlighted in the quote above prove integral to the interpretation of this new provision; software patents are not allowed as such, but should they be a way to implement a patentable process, they can be patentable. The SOP provides an example of a chip in a washing machine, through which a computer program in the chip improves the washing machine's operation. In such instances the software in the chip could be patentable. What is important is the interconnection between the software and the improved process.

In interpreting this the new provision employs a similar approach to that of the European Union and the United Kingdom. This approach was set out in the case of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application, intepreting section 1(2) of the UK Patents Act 1977 dealing with the subject matter of what is not an invention. The New Zealand provision's wording, albeit slightly different, still encompasses the heart of the Aerotel considerations, while adding specifics pertaining to their own legislation, and arguably using the Aerotel test would prove beneficial for the New Zealand judiciary.

Kiwis are very apt with technology

In assessing a patent and whether it is excluded from patentability under the Aerotel approach, the courts would have to properly construe the claim; identify its actual contribution; ask whether it falls solely within the excluded subject matter; and check whether the actual or alleged contribution is technical in nature. The first factor is purely a standard assessment of the patent claim, deciding what the monopoly would be before considering its possible exclusion. The second factor is deciding whether the inventor has really added anything to the stock of human knowledge, emphasizing the substance of the invention (what it actually contributes) above the form of the claim itself (what is argued it contributes). The third factor is assessing whether the contribution is solely an unpatentable subject matter. Should the invention be a patentable subject matter, the final consideration is if it is of a technical nature. 

The New Zealand approach is assessing the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes; what problem or other issue is to be solved or addressed; how the relevant product or process solves or addresses the problem or other issue; the advantages or benefits of solving or addressing the problem or other issue in that manner; and any other matters the Commissioner or the court thinks relevant. Clearly this echoes the approach given above, and would be served well should the New Zealand judiciary consider the Aerotel test.

So as one can see New Zealand has effectively banned software patents, but only to the extent that they exist independently. Calling this a blanket ban is merely hyperbolic, but the potential abuses that have been experienced with pure software patents have been remedied, and it remains to be seen whether the rest of the world will follow suit. Calls have been made for the US to do the same, but with vast amounts of money being tied into software innovation in the US, it can be argued that a ban over software patents in the US is still well behind the horizon.

Source: ZDNet