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by Promod Nair+

Cite as : (2004) 7 SCC (J) 31

Under traditional principles of intellectual property protection, copyright law has served as the principal source of legal protection for literary and artistic work, while the patent system and trade secret law have been the primary means for protecting utilitarian works. Computer software as a relatively new recipient of copyright protection, however, defies easy categorisation within the traditional framework of the intellectual property system. 1

With respect to computer software, courts have had to grapple with the vexatious issue of drawing a precise line between copyrightable expression of computer software and the uncopyrightable processes that they implement. The present paper seeks to study some of these themes and the principles enunciated in judicial decisions in clarifying the issue.

Computer software as literary work

It is a well-established proposition that computer programs2 are copyrightable subject-matter, just like any other literary work.3 Loading a program into computer memory, saving the program or running it without authority may infringe copyright. Making an arrangement or altered version of the program or converting it into or out of one computer language or code into a different computer language or code is also an infringement.

Article 10 of the Trade Related Intellectual Property Rights Agreement (TRIPs) expressly provides that computer programs, whether in source code or object code shall be protected as literary works under the Berne Convention, 1971. The relevant provisions of the Copyright Act, 1957 which are pertinent in this context are set out hereunder:

"2. (ffb) 'computer' includes any electronic or similar device having information processing capabilities;

(ffc) 'computer programme' means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;

* * *

(o) 'literary work' includes computer programmes, tables and compilations including computer databases; "

Section 14 explains the meaning of copyright in the following terms:

"14. Meaning of copyright.-For the purposes of this Act, 'copyright' means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely-

(a) in the case of a literary, dramatic or musical work, not being a computer programme,-

(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;

(ii) to issue copies of the work to the public not being copies already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme,-

(i) to do any of the acts specified in clause (a);

(ii) to sell or give on hire, or offer for sale or hire, any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions;"

Thus, under Indian copyright law, computer programs are considered to be literary works and accordingly entitled to copyright protection. However, few Indian courts have considered the scope and extent of copyright protection in relation to computer software and for this purpose, it is necessary to consider the jurisprudence evolved by comparable jurisdictions which have fleshed out principles to enlighten the bare text of statutory laws in this regard.

Distinction between form and idea

Under both the Indian and American systems of law, the protection available to a copyright-protected work is protection in respect of the form and substance of the work and not the idea behind the work. Therefore, applying this principle in the context of computer software, the owner of the copyright over an item of software has the right to prevent any other person from physically copying the code, as it is written, but does not have the right to prevent the utilisation of the idea behind the code, provided the person utilising this idea does so in a manner that is different from his arrangement of the code. Thus, it is necessary to note that unlike the case of a patent over a mechanical product, the copyright over an item of software code does not entitle the author to prevent another software developer from producing the same type of software in a different form and structure.

However, at the same time, it needs to be stated that the point where the idea translates itself into the expression of an idea is an issue that has been the subject of judicial scrutiny by courts in USA. The following principle was laid down in Apple Computer Inc. v. Franklin Computer Corpn.4:

"Just as a patent affords protection only to the means of reducing an inventive idea into practice, so the copyright law protects the means of expressing an idea; and it is as near the whole truth as generalisation can usually reach that, if the same idea can be expressed in a plurality of totally different manners, a plurality of copyrights may result, and no infringement will exist."

Interpreting this principle, it has been concluded that the basis for the determination of the copyrightability of a software program was affirmed as being the intellectual property right, inherent in the form and substance of the instructions to the computer and not to the idea behind their arrangement. This would imply that creative copying of the instructions so as to result in the same program being developed through the use of different lines of code would be deemed to be not a violation of the copyright in the program, as the copyright vests in the instructions themselves and not the end product.5

Non-literal copying

The next issue that needs to be considered in this context is as to exactly what type of software reproduction is hit by the offence of infringement of copyright, particularly in cases where the alleged infringer had not copied the code line by line, but had taken something less specific. In this regard, various tests have been developed by courts in USA, in order to arrive at a conclusion as to the type of software and the extent to which it could receive protection. One such test has been to discern whether the look and feel of the two programs was the same. If the answer to that question was in the affirmative and if it could be shown that the defendant had access to the plaintiff's program, copyright infringement was likely to have occurred.

The Whelan test

The question whether there could be copyright infringement in copying the "overall structure" of a program, even if neither the object code nor the source code of the program had been copied came to be examined by the US Court of Appeal, for the Third Circuit in Whelan Associates Inc. v. Jaslow Dental Laboratory, Inc.6 In this case, the alleged infringer rewrote a program that was originally coded in a particular computer language in a different programming language. While evolving the look and feel test the court concluded (on the basis of prior decisions that had held that there could be infringement of copyright in a play or book by copying the plot or plot devices of the play or book when the total "concept and feel" of the alleged infringing work was substantially similar to that of the copyrighted work) that the said test should apply to infringement of copyright in computer programs.

The court also concluded that the detailed structure of a program was part of the expression of an idea than the idea itself, and therefore, the copying of the expression of the idea in the program would amount to an infringement of copyright. The principles laid down by the court in Whelan case6 can be summarised as hereunder:

> Copyright programs are classified as literary works for the purposes of copyright.

> The copyrights of other literary works can be infringed even when there is no substantial similarity between the work's literal elements. One can violate the copyright of a play or a book by copying its plot or plot devices. Copyright "cannot be limited literally to the text, else a plagiarist would escape by making immaterial variations".

> Among the more significant costs in computer programming are those attributable to developing the structure and logic of the program.

> Allowing copyright protection beyond the literal computer code would provide the proper incentive for programmers by protecting their most valuable efforts, while not giving them a stranglehold over the development of new computer devices that accomplish the same end.

> It is not true that "approximation" of a program short of perfect reproduction is valueless. On the contrary, one can approximate a program and thereby gain a significant advantage over competitors even though additional work is needed to complete the program.

> The issue in a copyrighted case is simply whether the copyright-holder's expression has been copied, not how difficult it was to do the copying. Whether an alleged infringer spent significant time and effort to copy an original work is therefore irrelevant for decision as to whether he has pirated the expression of an original work.

> The conclusion is inescapable that the detailed structure of a program is part of the expression, not the idea of that program. Copyright protection of computer programs may extend beyond the program's literal code to their structure, sequence and organisation.

The test laid down in Whelan case6 came to be known as the "structure, sequence and organisation" test, since the court held that copyright protection of computer programs may extend beyond the programs' literal code to their structure, sequence and organisation.

The Altai test for infringement

However, this test was not adopted by the Second Circuit Court of Appeals which propounded a new test in Computer Associates v. Altai1. In this case, OSCAR 3.5 was the product of Altai's carefully orchestrated rewrite of OSCAR 3.4. None of the ADAPTER source code remained in the 3.5 version; thus ALTAI made sure that the literal elements of its revamped OSCAR program were no longer substantially similar to the literal elements of Computer Associate's ADAPTER source code. While examining the question as to whether ALTAI'S OSCAR 3.5 was substantially similar to Computer Associate's ADAPTER program, the following points were established by the court in Altai case2:

> It is essential for protection of literary property that copyright cannot be limited literally to the text, else, a plagiarist would escape by making immaterial variations. Thus, where "the fundamental essence or structure of one work is duplicated in another", courts have found copyright infringement.

> Those aspects of a work which "must necessarily be used as incident to" the idea, system or process that the work describes, are also not copyrightable. Therefore, those elements of a computer program that are necessarily incidental to its function are similarly unprotectable.

> The principle laid down in Whelan6 that the non-literal elements of computer programs was entitled to copyright protection as literary works, is acceptable.

> The Whelan6 rule had received a mixed reception in American courts. While some decisions adopted its reasoning7, others had rejected it.8

> A computer program's ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own "idea", Whelan's general formulation that a program's overall purpose equates with the program's idea is descriptively inadequate.

> The rationale of Whelan case6 was suspect with the passage of time since its opinion was based on a somewhat outdated appreciation of computer science.

A three-stage test was therefore formulated in order to determine whether the non-literal elements of two or more computer programs are substantially similar:

(i) The abstraction test

In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts.

The abstraction test "implicitly recognises that any given work may consist of a mixture of numerous ideas and expressions". As applied to computer programs, the abstraction test will comprise the first step in the examination for substantial similarity. Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should dissect the allegedly copied program's structure and isolate each level of abstraction contained within it. This process begins with the code and ends with an articulation of the program's ultimate function. Along the way, it is necessary to retrace and map each of the designer's steps in the opposite order in which they were taken during the program's creation.9

(ii) The process of filtration

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 then be able to sift out all non-protectable material. Strictly speaking, such filtration serves "the purpose of defining the scope of the plaintiff's copyright".

  • Under the doctrine of incorporation/merger, "where there is essentially only one way to express an idea, the idea and its expression are inseparable and copyright is no bar to copying that expression"10 Under these circumstances, the expression is said to have "merged" with the idea itself. In order not to confer a monopoly of the idea upon the copyright owner, such expression should not be protected.
    The American Congress established the National Commission on New Technological Uses of Copyrighted Works (CONTU) to study the implications of the new technologies and recommended revision to federal intellectual property law. CONTU recognised the applicability of the merger doctrine to computer programs in its report to Congress thus:
    "Copyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea.... In the copyright context, this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement."
  • The court has also held that where it is virtually impossible to write about a particular historical era of fictional theme without employing certain "stock" or standard literary devices such expression is not copyrightable. In many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques. It follows that such standard techniques are not copyrightable and will have to be filtered out.
  • The court will also have to filter out elements dictated by concerns of efficiency. In the context of computer program design, the concept of efficiency is akin to deriving the most concise logical proof or formulating the most succinct mathematical computation. Thus, the more efficient a set of modules are, the more closely they approximate the idea or process embodied in that particular aspect of the program's structure. While hypothetically there might be a myriad number of ways in which a programmer may effectuate certain functions within a program, efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options. If there are only a limited number of efficient implementations for any program task, it is quite possible that multiple programmers, working independently, will design the identical method employed in the allegedly infringed work.

Copyrightability of material in the public domain

The court in Altai1 has specifically dealt with copyrightability of computer software based on material found in the public domain. Such material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work. Quoting this general rule of copyright, the court stated that it found no reason to make an exception to this rule for elements of a computer program that have entered the public domain. Thus, a court must also filter out material available in the public domain before it makes the final inquiry in its substantial similarity analysis.11

(iii) Comparison

Left with a kernel, or possibly 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 an allegedly infringing program. Once a court has sifted out all elements of the allegedly infringed program which are "ideas" or are dictated by efficiency or external facts, or taken from the public domain, there may remain a core of protectable expression. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement.

Policy considerations

Demarcating the precise line between idea and expression ultimately impacts on the scope of copyright protection afforded to a particular type of work, and therefore, any such line must necessarily strike a judicious balance between "protection" and "competition". If programmers are not guaranteed broad copyright protection for their work, they will not invest the extensive time, energy and funds required to design and improve program structures. At the same time, it needs to be understood that the interest of copyright law is not in simply conferring a monopoly on industrious persons, but in advancing the public welfare through rewarding artistic creativity, in a manner that permits the free use and development of non-protectable ideas and processes.12

The Altai1 court also seemed to opine that patent registration, with its exacting upfront novelty and non-obviousness requirements, might be the more appropriate rubric of protection for intellectual property of this kind. With this rationale, the court concluded that the test formulated by it which would have the effect of narrowing the scope of copyright protection was in accordance with legislative intent and fundamental principles of copyright law.

English courts have also adopted a similar approach to the protection of computer software.13


It is submitted that the narrow protection afforded to computer software under the law of copyright as in Altai1 reflects the correct balance between the need to encourage creative work and also to ensure that an undue monopoly which restricts free use and development of ideas is not created. This is especially important given the fact that the term of copyrighted works in India is the lifetime of the author of such works plus a period of 60 years. Such an extensive period of copyright protection may be excessive and ill-suited to a computer program where the normal period of obsolescence may be just a few years.

The three-staged approach suggested by Altai case1 has been subsequently cited in a host of decisions. In addition, courts in Canada, the United Kingdom and France have endorsed the Altai analysis.14 While it may not be possible to definitely conclude that the same tests would necessarily be applicable in case of copyright infringement in the Indian context, the principles set out therein would be extremely persuasive. This is especially so given the fact that with the conclusion of TRIPs which has incorporated by reference the principles enshrined in the Berne Convention, copyright law has now become increasingly harmonised across all jurisdictions. Thus, principles enunciated by the courts of a foreign jurisdiction can inform the operation of copyright law in India as well, and it would not be inappropriate to refer to the Altai principles to understand the scope of copyright protection in computer software in India.


+ BA, LLB (Hons.) (NLSIU); LLM (Cantab.); Advocate, High Court of Karnataka. Return to Text
1 Cited from Computer Associates v. Altai, 982 F 2d 693: "Generally, we think that copyright registration—with its indiscriminating availability—is not ideally suited to deal with the highly dynamic technology of computer science. Thus far, many of the decisions in this area reflect the courts' attempt to fit the proverbial square peg in a round hole." Return to Text
2 As is well understood, the term "software" is used to describe all of the different types of computer programs. Computer programs are basically divided into "application programs" and "operating system programs". Application programs are designed to do specific tasks to be executed through the computer and the operating system programs are used to manage the internal functions of the computer to facilitate use of application program. These two types of programs can be written in three levels of computer language—high level, low level and lowest level. High-level languages consist of English words and symbols and are easy to learn. Lower-level language is assembly language which consists of alphanumeric labels. This language is also easily understandable by the programmer. Statements of these two languages are referred to as written in source code. The third, lowest-level language, is the machine language. This is a binary language using two symbols '0' and '1' called "bits". This is the only language which can be followed by the machine but very difficult for the programmer to utilise. Statements in machine language are referred to as written in "object code". N.S. Gopalakrishnan: Intellectual Property and Criminal Law, pp. 159-60 (1994). It is well established that copyright protection extends to a program's source and object codes. Return to Text
3 Apple Computer v. Franklin Computer, 714 F 2d 124 Return to Text
4 101 US 99 : 25 L Ed 841 (1879) : 714 F 2d 124 Return to Text
5 Rahul Mathan: Intellectual Property Protection, Patents, Trademarks and Databases, p. 308 (1999). Return to Text
6 230 USPQ 481 (3rd Circuit 1986) Return to Text
7 E.g., Bull HN Info Sys Inc. v. American Express Bank (1990); Dynamic Solutions Inc. v. Planning and Control Inc. (1987); Broderbund Software Inc. v. Unison World Inc. (1986). Return to Text
8 E.g., Plains Cotton Coop. v. Good Pasture Computer Serve Inc. (1987) (which concluded that order and sequence of data on computer input formats was an idea and not expression). Return to Text
9 As an anatomical guide to this procedure, the following description is instructive: "At the lowest level of abstraction, a computer program may be thought of in its entirety as a set of individual instructions organised into a hierarchy of modules. At a higher level of abstraction, the instructions in the lowest-level modules may be replaced conceptually by the functions of those modules. At progressively higher levels of abstraction, the functions of higher-level modules conceptually replace the implementation of those modules in terms of lower-level modules and instructions, until finally, one is left with nothing but the ultimate function of the program.... A program has structure at every level of abstraction at which it is viewed. At low levels of abstraction, a program's structure may be quite complex; at the highest level it is trivial." Merges et al, Intellectual Property in the New Technological Age, p. 880 (1997). Return to Text
10 Merges et al, Intellectual Property in the New Technological Age (1997). Return to Text
11 Merges et al, Intellectual Property in the New Technological Age, p. 883 (1997). Return to Text
12 In this context, it is pertinent to recall Justice Stewart's following observations in Twentieth Century Music Corpn. v. Aiken, 422 US 151, 156: "The limited scope of the copyright-holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music and the other arts. The immediate effect of our copyright law is to secure a fair return for an 'author's' creative labour. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. ... When technological change has rendered its literal terms ambiguous, the Copyright Act must be construed in light of this basic purpose." Return to Text
13 See E.P. Skone James et al: Copinger and Skone James on Copyright, pp. 182-83 (1991). Return to Text
14 Merges et al, Intellectual Property in the New Technological Age, p. 889 (1997).

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