IP Protections for Software

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INTRODUCTION

The software industry is booming, sales are going through the roof. New programs like Microsoft's Windows 95 operating system are making millions for their producers. They hold a virtual monopoly on operating systems and no one in the industry is really putting up much of a fight. Even large companies like IBM and their 0S/2 operating system have not even been able to put a dent (at most, they may have put a door ding!) in Microsoft's sales. But what is keeping someone else from coming in and taking away some of Microsoft's market share in the operating system software arena? The reason for this is that Microsoft has done a phenomenal job protecting itself and it's software products by effectively using the different intellectual property protections available for computer programs, including trade secrets, copyrights and patents.

For purposes of illustration, a fictitious software company called Cirrius Software will be used during the course of this paper to help explain the different concepts and issues that are likely to crop up in the course of dealing of a software company. Cirrius Software (like Microsoft) uses all of the intellectual property protections it can to 1) protect the hard work of it's employees and 2) foster its commercial success. The reasons that Cirrius would use intellectual property protections to secure the work of it's employees is straightforward. If the employees discover new or ingenious programs or develop new and novel sections of existing programs, then Cirrius is going to be interested in protecting their work so that Evil Software Stealers (ESS) across the street from them will not be able to use those new lines of code or the programs to create a competing product. In contrast, the issue of Cirrius protecting their programs in an effort to foster their commercial success is less obvious. If Cirrius can hold a constructive (temporary) monopoly, by being the only company that either: 1) knows how to make a certain product work or 2) by protecting their product with trade secrets, copyrights, or patents, thereby, effectively stopping anyone who knows the exact methods used in Cirrius' products from copying them, they will be able to secure more sales for their exclusive products. For example, suppose that Cirrius creates a software program, called Doggy Relief, which is a program that gives personal computer users the ability to perform basic pet care responsibilities through their PC's. One of the unique (and quite useful) features of the program is to allow dog owners to let their dog out without having to be home to perform the task. The program works by using a pre-recorded message that calls out to the dog several times (using the masters voice) and by then unlocking the powered locking system of a pre-specified door within the home that goes outside. The program incorporates a sensor to ensure that the dog has left, it then closes and secures the door for a user selectable period of time. After that period of time has passed, a speaker placed outside of the home (again using a pre-recorded message using the master's voice) calls out to Fido. The door again unlocks, opens and awaits the arrival of the relieved dog; and once again the door closes and secures itself behind the dog. In order to ensure that intruders do not enter the house during the times that the door is opened, an invisible force field is activated whenever the computer regulates the opening of the door.

Assuming that Cirrius Software was the only company that had a program such as this one, they would certainly want to protect the programming and technology. Cirrius would have a vested interest in protecting the product as much as they can to ensure that ESS does not and cannot create a competing product. If ESS creates a competitor product, they will necessarily take away some of Cirrius' market. As mentioned above, Cirrius has several means of ensuring that their product is not taken or used by another company. Some of the protections overlap, but they all contain discrete components that can provide different protections for Cirrius. An examination of each method of protection, including a brief history of the protection (as it relates to software) will follow. Cirrius Software's Doggy Relief program will illustrate how the protections apply.

TRADE SECRETS

Trade secrets extend to virtually any concrete information, including formulas, data compilations, programs, devices, processes, and customer lists. Thus, trade secret law can protect software against the unauthorized use or disclosure by anyone who obtains it through improper means or through a confidential relationship. Trade secret law is based on state law, not federal law; however, there is a great deal of uniformity on the general principles between the states.

The extent of trade secret protection depends on which of the two common definitions is used. The first definition is from the Restatement of Torts which states:

A trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it . . . Rather than information as to a single or ephemeral events . . . it is a process or device for continuous use in the operation of the business.

The Restatement lists six factors to consider in determining whether information is a trade secret: 1) the extent to which the information is known outside of the business; 2) the extent to which it is known by employees and others involved within the business; 3) the extent of measures taken to guard the secrecy of the information; 4) the value of the information to the company and to the company's competitors; 5) the amount of money or effort expended by the company in developing the information; and 6) the ease or difficulty with which the information could be properly acquired or duplicated by others.

The other definition of trade secrets is found in the Uniform Trade Secrets Act (UTSA), which provides: Trade secrets means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: 1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and 2) is the subject of efforts that are reasonable under the circumstances to maintain secrecy.

The most significant difference between the Restatement view of trade secret protection and the UTSA view of trade secret protection is that the Restatement requires continuous use in the trade secret owner's business. Another difference between these two interpretations is that the Restatement defines misappropriation as disclosure and use of the trade secret; while the UTSA requires only wrongful acquisition of the trade secret.

Therefore, if ESS somehow stole the code to Doggy Relief, but did not use the code for any purpose and did not share it with any one else, they would not be liable under the Restatement, but they would be liable under the UTSA. This is because the Restatement requires disclosure and use and the UTSA only requires wrongful acquisition.

To obtain trade secret status under either definition, two requirements must be met: 1) the information provides a commercial advantage and 2) the information is secret. A trade secret's owner has a right to prevent its unauthorized use or disclosure by a person who acquired it through improper means or a confidential relationship. This right endures as long as the owner prevents the trade secret from becoming widely known. If the information becomes common knowledge to that segment of the population which is economically concerned with the information, then it ceases to be a trade secret.

The threshold issue in nearly all trade secret cases is the actual level of secrecy attached to the secret. Secrecy can be divided into two parts: 1) prevention of disclosure to external competitors, and 2) imposition of confidentiality on one's employee's. Secrecy is judged in light of the industry's level of general knowledge, the information's ascertainability, and the offensive of the missappropriator's conduct. Secrecy can be destroyed by insufficient precautions, by the marketing of a product that reveals the secret, or by disclosure in judicial proceedings or to government agencies.

External security involves efforts to keep trade secrets from going to persons other than employees. Internal confidentiality is generally accomplished by having each of the employees who is exposed to the trade secret sign a non-disclosure agreement as a condition of their employment.

In Acuson Corp. v. Aloka Co., the court found that the legal purchase, and subsequent reverse engineering, by Aloka of Acuson's product was permissible under trade secret law because Acuson had placed the product in the public domain. Thus, Aloka had the right to take it apart and figure it how it worked; further, the mere fact that Acuson had sold many of these products destroyed any possibility of the product containing a trade secret.

Summary of Trade Secrets

Trade secret protection is a viable and useful tool in protecting software because it's protection is immediate and can be perpetual. Cirrius should use this protection to keep their former employees from stealing the work product that rightfully belongs to Cirrius Software. Additionally, trade secret protection can protect Cirrius in case ESS steals part of the code in violation of an express agreement.

COPYRIGHTS

Copyright grants various rights in "original works of authorship fixed in any tangible medium of expression." The foremost purpose of copyright law is to foster the growth of learning and culture and the dissemination of information. Copyright law is meant to induce the creation of as many works of art, literature, music and works of authorship (including software) as possible. Copyright law gives authors limited property rights in their works, but only for the ultimate purpose of benefiting the public by encouraging the creation of more works. The purpose of copyright is not to protect the author, but it is to benefit the public.

The balance in copyright law is drawn by limiting property rights to the author's particular method of expressing an idea. Copyright never protects the idea, but instead only protects the expression of the idea. In fact, specifically excluded from protection is "any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work." Thus, others are available to express the same idea in any other way other than the manner that is used by the copyright holder. For example, if the CEO of Cirrius Software decided to write a book on the relative importance of dog walking in American society, he could obtain copyright protection for the expression of the book. However, if the CEO of ESS wanted to write essentially the same book, he can as long as he does not use the same, or substantially similar language in his book. The point is that the ESS CEO can express the same exact idea that the Cirrius CEO expressed and get away with it under copyright law.

Copyright attaches to the original work of authorship immediately upon creation of the work. However, registration of the copyright is required before the copyright owner can sue for infringement. A significant difference between copyright protection and patent protection is that the Copyright Office does not attempt to compare the deposit with other works. Thus, ESS could potentially steal the entire programming code of Doggy Relief and submit it to the Copyright Office for protection and actually have it be granted, despite the fact that Cirrius already holds a copyright over the same material. In a court of law, Cirrius would prevail because they were the original creators of the work, nonetheless, it would cost them a significant amount of money to bring ESS into the courthouse.

The Constitution authorizes Congress to provide authors with exclusive rights in their "writings" in order to promote the progress of science and the useful arts. Congress has enumerated the rights in section 106 of the Copyright Act. The Act provides that the owner of a copyright has the exclusive right to: (1) reproduce the copyrighted work; (2) prepare derivative works based upon the copyrighted work; (3) distribute copies or phonorecords of the copyrighted work to the public; (4) publicly perform the work; and (5) publicly display the work.

A number of questions about copyright protection for computer programs arose as the use of computers exploded in the last 3 decades. In 1980, Congress amended the Copyright Act of 1976 to expressly provide copyright protection for software programs. But even though Cirrius owns a copyright on the software program Doggy Relief, and therefore has the exclusive rights in the work (as enumerated above), ESS could conceivably come up with the exact same product and legally sell it. The mere fact that ESS used the same code Cirrius used does not necessarily mean that they have infringed upon the Cirrius Doggy Relief program. This is true only if ESS independently recreated the program using legal means, i.e., they did not copy the literal lines of code. If for example, a programmer at ESS decided to write a program that performed the same function as Doggy Relief and by some freak happening, he writes the exact same program, line for line, he and ESS are not liable for copyright infringement. This is because there must be some form of copying in order to have a copyright violation. Independent creation is a defense to copying.

In order for Cirrius to prove copyright infringement by ESS, Cirrius must establish its ownership of a valid copyright, and that the defendant copied the work. Cirrius may prove the defendant's copying either by direct evidence or, as is most often the case, by showing that (1) ESS had access to Cirrius' work and (2) that ESS' work is substantially similar to Cirrius' copyrightable material.

Copying can take on several forms in the software arena. There can be copying of the programming code (usually this amounts to copying of the expression, but there are exceptions), copying of the idea, and copying of the display or user interface. There are two types of programming code. Source code is the computer programming language that is intelligible to individuals trained in the field of programming. This type of code is comprised of descriptive key words and mathematical notations. Computer programs are generally created in source code. The source code is then translated into the other type of code, object code, which is only readable by a computer. Object code is a series of 0's and 1's, that represent on and off switches that direct the computer as to what to do. An analogy to this concept is as follows: Suppose that the CEO of Cirrius was standing in the heart of downtown New York City. If he could only understand the instructions of 'go left' and 'go right' and nothing more, someone could direct him around the city to any point they wanted him to go, not easily, but it would be doable. Similarly, object code is a constant switching of either on or off, instead of left or right.

There are instances when wholesale copying is allowable without infringement. If the copying is done while in the intended and proper use of the program. For example, when a Cirrius Software programmer loads application software into the random access memory (RAM) of the computer. In today's programs, all applications at some point reside in RAM. This is a necessary and proper use of the software, thus no liability for the end user. To have a result different than this one would be ridiculous because software purchasers would not be able to use the software they purchased.

Summary of Key Cases

There are numerous cases that have fleshed out and molded the extent to which copyright protects software programs. A brief discussion of several of them will provide a strong understanding of the issues and the current protection afforded software by copyrights.

Baker v. Selden is over 100 years old, but the rules set forth in the case are still cited regularly today. There were two holdings in the case. The first holding (described as the broad holding) is that blank accountbooks are not copyrightable. The second holding (the narrow holding) is that if the idea and expression of the work merge, there is no protection for the work. The first holding is questionable because it suggests that a form book is never copyrightable, but in fact, some form books do not fall to the merger doctrine and are designed in such a way that book could be expressed in a multitude of ways.

The next key case is Mazer v. Stein. This case dealt with similar facts and the Court held that printed forms in a book necessary to perform the ideas espoused by the book are not protected by copyright. "In no case does copyright protection for an original work of authorship extend to any idea . . . described, explained, illustrated, or embodied in such work." Thus, this case confirmed the (at that time) 74 year old Baker v. Selden decision.

In 1978 Synercom Technology, Inc. v. University Computing Co. came before the Court. In this case, the plaintiff sued for copyright infringement of input formats used with a computer program. The input formats expressed information: "the sequence of data for simplified access to the computer programs." Hence, the input formats would be copyrightable "if the ideas they express are separable from their expression." However, Synercom held that the order and sequence of data in the input is idea, not expression. A user interface is basically a set of ordered commands. Thus, Synercom can be read to hold that the user interface is not copyrightable. This case is important because it lays the foundation for one of the most fundamental debates in software copyright law and that is whether the user interface is copyrightable.

The United States Third Circuit Court of Appeals in Apple v. Franklin, ruled that programs in both source code and object code were protected by copyright and that literal copying of the object code is just as improper (and now as illegal) as copying the source code. The court rejected the argument that object code should not be protected because it only communicates to machines and is not readable by humans. This case limited compatibility between programs by making it a violation to copy any of the object code. Without copying some part of the object code, compatibility within programs and operating systems would be destroyed. The court seems to suggest that there were several ways to create an operating system and that since Franklin used part of Apple's they had taken Apple's expression. This appears to have been an erroneous decision on the part of the court however. The idea that Franklin was attempting to achieve was not any operating system, it was quite specifically an Apple compatible operating system.

The next case that came up is SAS Institute, Inc. v. S&H Computer Systems, Inc. The facts of this case are as follows: SAS licensed their software program to S&H. The license, which was written, contained a provision stating that S&H would not decompile the program. S&H did so anyway and subsequently create their own program based on what they had found in the SAS program. The court held that this was a violation of SAS' copyright because S&H had created a derivative work based on SAS' program. Copyright law is intended to grant the power to create derivative works to the copyright holder only. S&H attempted to demonstrate that they had learned the code by virtue of using a clean room approach. A clean room is where a first team of programmers is responsible for extracting the ideas embodied by the copyrighted work and a second team writes a new product using only the ideas generated by the first team. The ideas generated by the first team are passed to the second team through a "gatekeeper" who examines the communication to ensure that no protectable expression is being passed on to the second team. In order to ensure a solid clean room approach, all communications should be done in writing. The court held S&H's attempts to use this technique were feeble; therefore, the defense failed. Nonetheless, this case provided a strong indication to software cloners that a clean room approach to decompiling may provide their ticket to cloning their competitor's programs.

Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc. is a key case in this area. In this case, the court expressly held that nonliteral copying of a program's structure infringed its copyright. The court acknowledged that the structure could constitute an unprotectable idea in some instances, but that may not always be the case. The Whelan court devised a test for determining whether the structure is protectable. The court assumed that in the case of a computer program, the result or purpose to be accomplished by the work is the work's underlying idea. If the aspect of the work at issue (the structure) is necessary in order to accomplish the purpose of the work, it is a part of the idea and thus is unprotectable. If the aspect is not necessary, i.e., if there are alternative ways to accomplish the purpose or reach the result, then the aspect is protectable expression and not a part of the underlying idea. Further, the court concluded that each program contains one idea only and that everything necessary to achieve that purpose is part of the idea and everything else is expression. The Whelan test has been criticized because it gives no guidance in determining what the purpose, or idea, of a particular program is. Yet the characterization of the purpose is fundamental in determining whether the structure is protectable. Additionally, this case provides a strong bias towards protection of copyright over competition. This is because the court placed a heavy emphasis on their view that the structure, sequence and organization are the most difficult part of a program and therefore they should be protected. Unfortunately, this result can often mean that a court following this decision will find that the idea of the program is quite broad, thus the range of methods available to express that idea are also large. For example, if ESS had created Doggy Relief first and Cirrius wanted to create a similar program, they would face opposition by a Whelan court because the court would likely define the idea of the program broadly. The court might conclude that the idea is to control the operation of the house. Thus, if Cirrius wanted to design a similar program they would have to find a way to design it some way that is completely different in structure, sequence and organization than the way that ESS did. A more cogent example would be if the CEO of Cirrius wanted (once again) to cross New York City, he'd have numerous ways to do it and he would not have to follow any of the steps that the CEO of ESS took to get across town, even if they eventually arrive at the same point. The idea defined broadly is to get to the other side of town. The problem comes in when they are in a small town with one main road. The Whelan court would likely find that he has copied the expression and is thus an infringer, if he follows the same road that the ESS CEO took. However, there was no other practical way to cross town, other than the same way that the ESS CEO took.

The next case that came up is Plains Cotton Cooperative Assoc. v. Goodpasture Computer Serv., Inc. The Whelan decision contrasts with the decision in Plains Cotton. The district court found that the programs at issue were similar on functional specification, programming, and documentation levels. Plains asked that court to adopt the standard set forth in Whelan (that there is a single function of a computer program which represents the idea and that everything not necessary to that function expresses the idea). The Fifth Circuit declined this argument because Goodpasture had demonstrated that many of the structural similarities between the two programs were due to "externalities of the cotton market". Thus, the expression and idea of the program merged.

Data East USA, Inc. v. Epyx, Inc. was the next case that came up. Both of these companies created computer games which consisted of a karate match between two fighters and a referee. The lower court had found that Epyx had infringed because there game was substantially similar to Data East's. However, the Ninth Circuit reversed stating that "copyright protection cannot be afforded to elements of expressions that necessarily follow from an idea or to scenes a faire, i.e., expression that is as a practical matter, indispensable, or at least standard in the treatment of a given idea." In other words, there is only one way to express the concept of a fighting karate game and therefore all fighting games are going to be substantially similar. Thus, the Court held that there was no protectable expression because the idea and the expression merged.

E.F. Johnson v. Uniden is the next case that will be discussed. It is a 1985 case that dealt with several issues that have become quite important in software copyright law. More specifically, this was one of the first cases to discuss the concept of look and feel. In this case, Uniden wanted to take advantage of the repeaters that Johnson had installed by building their own line of compatible phones. In order to obtain compatibility, Uniden had to copy some of the code that was employed by Johnson's repeaters. The court found that Uniden had infringed upon Johnson's copyright. The court stated that Uniden had purchased Johnson's phone and thus had the legal right to reverse engineer it by virtue of the fact that Uniden purchased the phone outright. Despite the fact that the reverse engineering was not violative of the copyright, the court found that Uniden had taken too much of the code they had discovered in the Johnson phone.

In Digital Communications Assocs., Inc. v. Softklone Distribution Corp., the court granted a permanent injunction to the plaintiff to prevent sales of defendant's program. The defendant's program infringed upon the copyright of the plaintiff's status screen that was used in the plaintiff's communications program. The court found that the arrangement of the command terms on the status screen and the use of the first two letters of a command to effectuate the command were expression, because these elements had no relationship to the functioning of the status screen or of the program underlying the status screen. Thus, the court held that the command terms were not essential to the program's idea and were therefore protectable expression. Despite this holding, the court indicated that there may be times when copying the command terms is permitted. It is likely that if Softklone had only copied the command terms and had not copied the screen at all, then the copying would have been allowed. The holding in this case is in conflict with Synercom. The Synercom court held that copying the user interface (the functional equivalent of the screen) is permitted because the user interface is idea, not expression. DCA also goes against Baker and Mazer, by suggesting that a blank screen or a form book is protectable expression.

The last 5 years have brought numerous cases to the courts on the issues discussed so far. Lotus Dev. Corp. v. Paperback Software, Int'l. was decided in 1990 in one of a series of a cases that Lotus brought against it's competitors. In this case, the court ruled that the user interface of Lotus' 1-2-3 spreadsheet program is copyrightable, and that defendants were liable for using this user interface. The court formulated a three step process for separating copyrightable expression from non-copyrightable idea in the context of nonliteral elements of computer programs. The first part of the test involved an examination of what was copied; the second part was to determine whether what was copied was necessary to the idea; the third part is whether the part that was copied was required by some external constraint. Applying this test, the court found that the menu structure of Lotus 1-2-3 including the command terms, the structure and order of those terms, and their presentation on the screen, and the long prompts were copyrightable.

A very similar situation was presented to the court in Lotus Development Corp. v. Borland Int'l, Inc. These two companies have been dueling in the courts continuously for the past five years and the Supreme Court just recently granted certiorari for the case. Thus, hopefully there will be a conclusion to this hard fought battle over the use of the user interface and code level compatibility. In the first district court case, Lotus sued Borland for infringement of Lotus' 1-2-3 program. There was no issue as to the underlying computer program. Borland had written their own program that did not incorporate any of the Lotus program. What Borland had taken was the command hierarchy and the court found that the command hierarchy was copyrightable, thus Borland had infringed on Lotus' copyright. The court used the same test they had in the previous Lotus case to come to the this conclusion.

By the next Lotus/Borland district court case, Borland had removed all similarities from the user interface and command hierarchy, but in the background of the program it used a very similar set of code so that Lotus 1-2-3 users could use their existing macros on Borland's Quattro Pro program. Borland claimed that they only took the Barker Word; in other words, they had taken the least amount possible to maintain compatibility. The district court still sided with Lotus, stating that even though there was little quantity taken, qualitatively, Borland had taken quite a bit. Thus, Borland was again infringing on the Lotus copyright. The effect of this decision is devastating. If companies can not make compatible programs, then there will be far fewer programs available to the public. This is so because small companies would not be able to afford the high licensing costs that large companies would charge them for the use of the program that the small company wished to create a compatible program for.

Borland appealed these decisions to the Court of Appeals. This Court found that the command hierarchy was not copyrightable and therefore Borland could use the same commands. Lotus appealed this decision to the Supreme Court. Now, after five years, there will finally be an answer to this tough question.

Some courts have attempted to narrow the scope of protection offered by copyright by applying an abstraction-filtration-comparison test to separate protectable expression from unprotectable idea. The most prominent case to apply this test was the 1992 Computer Associates, Int'l., Inc. v. Altai, Inc. case. The court applied the "abstraction test" in determining the substantial similarity of competing programs. Abstraction recognizes that for any work, a great number of patterns of increasing generality will fit equally well as more and more of the incident is left out. At some point in a series of abstractions the pattern is no longer protectable.

Computer Associates produced a job scheduling program called CA-Scheduler which contained a subprogram called ADAPTER. ADAPTER allowed CA-SCHEDULER to run on computers with different operating systems. Altai hired a key programmer from Computer Associates. The programmer brought with him copies of the source code for CA-SCHEDULER from Computer Associates. Altai produced a program called OSCAR 3.4. Thirty percent of the code in OSCAR 3.4 came from ADAPTER. After Computer Associates filed this suit, Altai developed OSCAR 3.5, eliminating the copied portions. Then they sent the program to OSCAR 3.4 customers as a free upgrade. The district court found that OSCAR 3.4 infringed but OSCAR 3.5 did not. Computer Associates appealed the holding that OSCAR 3.5 did not infringe the copyright, arguing that it still infringed upon the CA-SCHEDULER. Specifically, they argued that the district court failed to account for the nonliteral elements in its analysis. OSCAR 3.5 was substantially similar to both the structure of its ADAPTER program and to the list of services that ADAPTER and OSCAR obtain from their respective operating systems.

The Second Circuit rejected this argument and affirmed the lower court's holding of non-infringement. The court used the three-step abstraction-filtration-analysis test:

In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would be able to sift out all non-protectable material. Left with a kernel, or possible kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of the allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially so as to warrant a finding of infringement.

The court went on to say that the one idea per program Whelan approach is based upon "an outdated appreciation of computer science" and relies too heavily on metaphysical distinctions and does not place enough emphasis on practical considerations." They further stated that in contrast to the Whelan approach, the abstractions test "implicitly recognizes that any given work may consist of a mixture of numerous ideas and expressions."

Gates Rubber Co. v. Bando American, Inc. was decided in 1992 and in this case the court looked at the copyrightability of known subroutines. The sales force for Gates used a program called Design Flex to determine the size of replacement industrial belts needed by its customers. Bando, formed by several former Gates employees, used a competitive program called Chauffeur. Access to the Design Flex source code was shown by testimony that one defendant took all the computer files he could get his hands on. The court found the two programs to be substantially similar and they then adopted the abstraction-filtration-comparison test as the proper test to determine whether infringement had occurred. However, this court altered the test slightly. The test, as they interpreted it, should start with 1) whether there was copying, then 2) whether there was a substantial similarity between the two, and finally 3) examine whether the part that was copied, or is substantially similar, is part of the idea or part of the expression. Conceptually, the same analysis is done using the Gates test, but the order of the steps is slightly altered.

Sega Enterprises Ltd. v. Accolade, Inc. arose due to Accolade's reverse engineering efforts. Sega Enterprises developed and marketed the Genesis brand console and video game cartridges. The Sega cartridges contained the Trademark Security System (TMSS) which caused the console to display "Produced by or Under License from Sega Enterprises Ltd." Only cartridges with TMSS would play on the newest model Genesis. Accolade manufactured cartridges compatible with Genesis. However, in order for their games to work on the newest Genesis control unit, Accolade disassembled the object code in Sega's games and translated it into assembly language. Accolade then copied the TMSS code and incorporated it into its programs. Thus, the Sega display would come up on the screen even though Sega did not create or license the game. The method that Accolade used to find out the code was to employ a clean room approach to the reverse engineering. In holding for Accolade, the court found that reverse engineering is a fair use if it provides the only means of access to copyright-unprotected code elements and the copier has a legitimate reason for such access. The court continued on to say that "when there is no other method of access to the computer that is known or readily available to rival cartridge manufacturers, the use of the initialization by a rival does not violate the Act, even though that use triggers a misleading trademark display."

In Atari Games Corp. v. Nintendo of America, the court applied the Altai abstractions test to determine whether Atari infringed Nintendo's copyright of a security program that is built into Nintendo's game cartridges. The security program prevents game cartridges from other manufacturers to be used with Nintendo's game consoles. Atari reverse engineered the security program by making intermediate copies of the program. The court held that such reverse engineering is a lawful copy. The rationale behind the court's decision was that "an individual cannot even observe, let alone understand, the object code on Nintendo's chip without reverse engineering" and if reverse engineering were not permitted, the scope of Nintendo's copyright would extend to the program's ideas.

These last cases demonstrate a strong trend toward allowing competition and limiting what is regarded as expression; thereby, making it easier for competitors to create competing and compatible programs. Going back to Cirrius and ESS, assuming that ESS copied the essential lines of code that created the program, what result? Despite the trend towards narrowing the protection that copyright owners have, the result would likely be that ESS is liable for infringement, because of the literal copying involved. However, if ESS had simply reverse engineered Doggy Relief, then they likely would be in the clear based on Data East's scenes a faire doctrine and Sega and Atari reverse engineering allowance.

Summary of Copyright

Copyright protection is available for Cirrius, but the scope of the protection remains in question, at least until the Supreme Court decides Lotus v. Borland. Nonetheless, protection will always cover the basic elements of the expression. If ESS attempts to create either a derivative work or a work that is substantially similar to Doggy Relief, Cirrius will have recourse under the copyright laws. However, if ESS reverse engineers the program, the results are less clear. Additionally, if ESS creates a program that works just like Doggy Relief, the results are also unclear. Nonetheless, Cirrius should most definitely copyright the program.

PATENTS

A patent is a grant of exclusive rights issued form the federal government for a useful, novel, and nonobvious invention. In return for these exclusive rights, the inventor must disclose his invention. The patent gives the inventor the "right to exclude" others from making, using or selling the claimed invention in the United States for a limited period of time (20 years for a utility patent).

Patent law is a federally preempted