Susanna Wolk, Law, Uppsala Univeristy

The purpose of the project has been to examine how intellectual property law has handled the rapid technological development. The research has clarified the copyright protection for computer programs and also the patent protection. Since the European Union (EU) has long been working on harmonising the protection for computer programs, the research has focused on EU-law, however some comparison to American law has also been made. The software market is global and cross-national. The questions that have been researched are of practical importance to right holders, consumers and the society as a whole.

Copyright is the basic form of protection for computer programs and the focus of the project has been founded on copyright protection because there have been vital developments within this area, concerning the object of protection and exhaustion of software in a digital environment. The purpose of this part was to describe and analyse the rules governing copyright protection for software, and their application in light of subsequent EU-case law. The analysis concentrates on the object of protection and what is encapsulated by the legal definition of computer program, as well as what can be considered to be another literary or artistic work in a computer program. Fundamental issues pertaining to content, exhaustion and copying have also been examined. A computer program can in practice have the status of different types of work and overlapping protection may lead to difficulty in defining the scope of protection. Pure contractual issues have been outside the scope of the study. Such aspects have only been considered in so far as they relate to the main research question, i.e. the limits of copyright protection for computer programs and their distribution.

Overlapping patent protection has also been examined in the project, with particular focus on the differences between the respective limits to the exclusive rights in copyright and patent law.

The most important conclusions

There has been a national tendency to expand copyright protection for computer programs within the EU Member States. From decisions in 2010 and 2012 of the ECJ it follows that protection for computer programs is limited and that there is a clear dividing line between protecting a computer program as a literary work on the one hand, and protecting the visual appearance of the program on the other, i.e. protecting the literary or artistic expression during use of the program (see Bezpe?nostní Softwarová Asociace v Ministerstvo kultury, C-393/09 and SAS Institute Inc. v. World Programming Ltd, C-406/10). This development has been described and analysed in "Det upphovsrättsliga programskyddets gränser", NIR 2011 p. 289 et. seq. (The limits of copyright protection for computer programs). The analysis has predominantly focused on the categorisation of computer programs as a specific type of work. The question of whether a work is protected as a literary or artistic work is of limited value in deciding whether copyright subsists in a work because the qualifications are uniform. On the other hand it becomes of practical relevance for the scope of the exclusive rights. The analysis in the article has been developed and a thorough analysis of the protection of computer programs is provided in the book "Programalster i upphovsrätten" (Computer programs in copyright), which is under production with an expected publication date in December 2013.

Another research question that has been studied in the project is reverse engineering in connection with the experimental use exception in patent law. Copyright protection provides under certain circumstances a software licensee a right to interfere with the software in so far as to enable interoperability. This statutory right is not unlimited and several conditions need to be met before someone may translate and analyse code. Reverse engineering may be described as analysing a program backwards for the purpose of discovering its ideas and principles. For reverse engineering to take place the information that is made available needs to, first of all, be essential to make it possible to use the software together with other software. Secondly, only a licensee of a legal copy may reverse engineer. This means that a copy illegally downloaded from the internet can never be reverse engineered. Furthermore, it must have not been possible to access the information in a different easier and less invasive way, for example when the interface has not been made available by the right owner. Lastly, only those parts of the software may be reverse engineered that concern interoperability. To prevent unauthorized use of the information that has been reversed engineered, a further set of limitations is imposed on the use of the information that has legally been obtained in this way. The information that is obtained during reverse engineering may only be used to achieve interoperability; it may not however be transferred to a third party, unless it is necessary to achieve interoperability, used for development, production or marketing of a computer program that to an appreciable degree reminds the reversed engineered program, and the information may not be used for other infringing activity. This means that for example a competitor may not experiment with the program for the purpose of developing a different use of the program. A software developer is therefore required to contract such a "development right". It is however permitted to use other, compatible, hardware.

Patent law, on the other hand, permits experimenting on patent protected inventions (for example computer-related inventions). This experimental use exception means that anyone may examine and improve the functions of the invention, if it is done for an experimental purpose. The differences between patent law and copyright law mean in practice that the latter limits a right to experiment on patented inventions expressly permitted by the former. Experimenting on computer-related inventions is dependent on the consent of the copyright holder. This discrepancy between copyright law and patent law cannot from a socio-economic perspective be regarded as striking a fair balance. It may instead be desirable that an object of exclusive rights be permitted to be further developed by competitors and other actors, rather than permit intellectual property rights impair fair and reasonable development of competition. The results of this investigation will be published in 2014 in the article "Överlappande immaterialrättsligt skydd för datorprogram - Upphovsrättslig dekompilering i förhållande till experimentundantaget i patenträtten" (Overlapping intellectual property protection of computer programs - Reverse engineering in copyright and experimental use in patent law).

New research questions

An important research question that has transpired within the project is the exhaustion of works in a digital environment. In light of technological development and ever increasing internet connection speed, the question of exhaustion in copyright has recently become a vital. Its relevance is not only limited to a secondary market for computer programs, but also books, images, music and films which are purchased on the internet. The starting point for the principle of exhaustion, which is of great importance to the scope of exclusive rights and commerce, is that tangible works are exhausted when they are sold or in another way put into circulation on the market, and a right holder or beneficiary of the work may distribute it further on a secondary market. Digital works, which are not delivered on a tangible medium such as a CD or DVD, have previously not been considered as exhausted, but rather licensed. This means that copyright-protected digital products cannot be further transferred by a right holder. However the principle of exhaustion received great attention in the CJEU ruling in UsedSoft v Oracle (C-128/11). The Court categorised the sale of a computer program over the internet as a sale, rather than a mere licence-based relationship between the copyright owner and the user of the program. This can be compared to American law, which in principle assumes that only those digital works which are delivered on tangible things, such as a CD or DVD, can be exhausted (see for example ReDigi, US District Court of Southern District of NY, No. 12 Civ. 95, RJS delivered 30.03.2013). This implies that the starting point in the US differs from that in the EU, which creates complications on the global software market.

The international scope of the study

The project has focused on EU-law, with some comparisons made to mostly anglo-american legal frameworks. The research questions that have been examined are naturally of relevance internationally, especially within the context of the global and cross-national software market.

The two most important publications of the project

- Computer programs in copyright (book)
- Limits of copyright protection for computer programs (article)

Publication strategy

The overall aim has been to disseminate knowledge about the study and its application. This has occurred through the publication of a monograph and articles in law journals (see the list of publications). Dissemination of knowledge has also occurred during university tuition, through seminars and conferences.

Publications

- Programalster i upphovsrätten, Iustus, Uppsala 2013 (under produktion)
- Software business in transit – sale or licence? (godkänd för publicering I ALAIs årsbok 2014)
- Konsumtion av datorprogram i digital miljö – en jämförelse mellan amerikansk rätt och EU-rätten (under produktion, med publicering i NIR under 2013/2014)
- Överlappande immaterialrättsligt skydd för datorprogram - Upphovsrättslig dekompilering i förhållande till experimentundantaget i patenträtten (under produktion, med publicering i NIR under 2014)
- Det upphovsrättsliga programskyddets gränser i NIR 2011 s. 289 ff. (http://www.wolk.se/Publikationer/Det_upphovsrattsliga_programskyddet%5bWolk%5d.pdf)
- EU Intellectual Property Law and Ownership in Employment Relations, i Information & Communication Technology, Legal Issues, Scandinavian Studies in Law vol. 56 (red. Wahlgren), Stockholm 2010
- Gemensamma immaterialrätter – en immaterialrättslig enighet? i NIR 2009 s. 217 ff. (http://www.wolk.se/Publikationer/Gemensamma_im.pdf)
- Ch. 3 Intellectual Property Law and Ownership in Employment Relationships, i boken Property and Ownership (red. Begum), Hyderabad, Indien 2009