Juan Ramon Iturriagagoitia
Lawyer , Legal and Institutional Expert, Consultant
A first sight over computer software protection in the EU
In the European Union, the path leading towards the legal protection of computer programs by means of a patent registration and through copyright protection evolved around conflicting positions. In this paper, the main documents issued by the EU Commission and the most relevant phases will be presented briefly.
Main policy documents of the European Union
A first attempt to approach the issue of computer software coincides with the visionary enterprise to create the Internal Market of the European Union. Computer software was thus expressly mentioned in the White Paper on Completing the Internal Market of June 1985. At that time, the situation appeared as intricate as it became clear that differences in intellectual property laws have a direct and negative impact on intra-Community trade and on the ability of enterprises to treat the common market as a single environment for their economic activities. A first step was scheduled for the Community Trademark Proposal. The picture around that Proposal emerged as being further complicated by the need to adapt existing trademark systems in the then 12 Member States to technological change, among others, in computer software. Legal convergence had to be sought so that the changes to undertake would not weaken the existing system. The publication of a consultative document in 1985 on copyrights and related rights with a view to establishing priorities was already announced. More importantly, the introduction of a Community framework for the legal protection of software would receive particular attention.
Finally, the Green Paper on Copyright and the Challenge of Technology – Copyright Issues requiring Immediate Action saw the light on 7 June 1988. This dense and long document takes up all relevant issues in this field from piracy to audio-visual products and home copying. At that time, the creation of a Single Market for copyright goods and services became one of the fundamental concerns of the EU Commission.
The Green Paper deals with computer programs and databases in separate chapters. As far as piracy is concerned, the document points towards the increase of pirated copies since computers became available to the public at large.
The Green Paper defines at the outset computer programs as a set of instruction the purpose of which is to cause an information processing device, the computer, to perform its functions. It discusses separately operating systems and application programs.
The world software industry is expected to expand, at a time the industry is already large. The Green Paper reckoned already in 1988 that in the future software will increasingly constitute the most important component of computer systems, with the hardware consisting increasingly of similar, standardized interoperable components. This is one the reasons why the EU has to ensure that it has a competitive and dynamic software industry.
Given the late start of the Community’s software industry, it is particularly important to ensure that appropriate legal protection is available to computer programs and software generally, which will contribute to an environment favourable to investment and innovation by Community firms. In debating the scope and term of protection, a correct balance should be found between the benefits protection gives to software producers and the “opportunity costs” it may impose on software users in the form of the range and price of software products available to them.
In the first time, contractual protection was deemed sufficient for software producers. This situation changed rapidly and two areas of intellectual property rights competed for being approved by legislators as the main instruments of protection: copyright and patents. Without prejudice to this, the Green Paper concludes that computer programs ought to be one of the areas in which immediate action by the legislature was required.
A long debate ensued then. Copyrights and patents found defenders for their use with respect to computer programs, although none of them were originally conceived for computer programs.
Whatever the case, two Follow-Ups to the Green Paper were still published respectively on 17 January 1991 and on 20 November 1996. The first one contained firstly the results of extensive hearings with stakeholders and secondly the Working Programme of the Commission in the field of copyrights and neighbouring rights. The second one
In 1991 the first computer programs Directive was also adopted. The major novelty was that the Directive conclusively created a harmonized for the protection of computer software as literary works which included limitations but also economic rights. The de-compilation exception was among the most controversial issues.
In 1993 a new Directive was adopted for the sake of harmonizing the term of protection of copyright at 70 years post mortem auctoris. The term for the protection of neighbouring rights was set at 50 years. It must be recalled that internationally the minimum terms were 50 and 20 years respectively.
The legislative initiatives would however rapidly become outdated in view of the emergence of internet and the thereto related Information Society. In the light of the technological progress, the EU Commission undertook a review of the existing copyright provisions in 1994. In the summer of 1994 a major public hearing was organized by the EU; This lead to the publication of yet another Green Paper on 19 July 1995 bearing the title on Copyrights and Related Rights in the Information Society. The harmonization of national copyright laws was once again the central issue discussed in this new Green Paper, which addressed however also other topics, like strengthening the IPRs and ensuring the competitiveness of the EU economy.
The follow-up to the 1995 Green Paper was then adopted on 20 November 1996. It took the form of a Communication from the Commission and its complete title reads as follows: Follow-up to the Green Paper on Copyrights and Related Rights in the Information Society. This document finally sets the policy for computer software for the EU for the years to come. From a legislative perspective, the Communication of 1996 announces that the Commission will continue its further evaluation of the other, non-software related issues that were identified:
- whether the multiplication and development of high quality, digital broadcasting channels, broadcasting their programmes without any interruption, in combination with the availability of automatic systems built into the consumer’s receiver to copy this material “off the air”, necessitates harmonised action in favour of certain right holders (notably phonogram producers and performers);
- whether there is a need for a comprehensive and coherent initiative at Community level in regard to the management of rights, given the way in which the market evolves in response to the Information Society;
- whether existing disparities in the national legislation of the EU Member States in regard to moral rights constitute significant obstacles for the exploitation of works and related subject matter in the Information Society, which could require a harmonised protection of moral rights across the European Union.
Other actions yet to be performed included the publication of a clarifying Communication which addresses questions on matters concerning the applicable law as well as questions relating to the enforcement of rights. The issue of liability for copyright infringements with a view to a possible initiative at the European level may also be dealt with in the next future by the EU authorities.
As for the legislative roadmap of the EU Commission, the 1996 Communication spelt out that during the first half of 1997, the Commission intended to present legislative proposals on the following four priority issues which would require immediate action in order to eliminate significant barriers to trade in copyright goods and services and/or distortions of competition between Member States:
- definition of the scope of the acts protected by the reproduction right, including the limitations to it;
- protection of digital ‘on-demand’ transmissions will be protected on the basis of a further harmonised right of communication to the public, including the limitations to it;
- schemes concerning the legal protection of the integrity of technical identification and protection will be harmonised. In particular, the precise scope of protection will be defined, as well as the liability of the infringer; and
- the distribution right of authors as regards all categories of works, will be harmonised so that it will only be exhausted by the first sale in the Community by or with the consent of the right holder. The principle of exhaustion will only apply to the distribution of goods and not to the provision of services (including on-line services).
Obviously, the copyright issue is dealt with from a general perspective.
In 2003, there was still another attempt to regulate patent protection for computer programs with a proposal of a EU Directive on the patentability of computer-implemented inventions. The purpose of this legislative proposal was to set a legal framework for the . Although the EU patent protection Directive could have been the ideal starting point for a debate around software, the proposal was simply rejected.
The next relevant policy document of the EU Commission on copyrights dates back to 16 July 2008. It was the Green Paper on Copyright in the Knowledge Economy. This document relates to the role of copyright in fostering dissemination of knowledge for research, science and education. The next policy that crystallized in a policy document is a Communication dated 19 October 2009 bearing the same title “On Copyright in the Knowledge Economy”. This communication deals with the mass-scale digitalisation and dissemination of books.
The 2009 computer programs copyright Directive
So, after so many policy documents containing issues that affect direct or indirectly the protection of computer programs, the only legal instrument effectively applicable is the recently adopted Directive 2009/24/EC of 23 April 2009 on the legal protection of computer programs. These are protected as copyrights, by analogy to the protection given to literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works.
Directive 2009/24/EC is a codified version of the previous Directive 91/250/EEC of 14 May 1991 that applied to the protection of computer programs.
The term computer program is defined as including programs in any form, including those which are incorporated into hardware. The term also includes preparatory design work leading to the development of a computer program provided that the nature of the preparatory work is such that a computer program can result from it at a later stage.
Member States must thus protect computer programs, by copyrights, as literary works within the meaning of the Berne Convention. The computer program shall be protected if it is original in the sense that it is the author’s own intellectual creation.
The author of the computer program is the natural person or group of natural persons who has created the program or, where the legislation of the Member State permits, or the legal person designated as the right holder by than legislation. Where collective works are recognized by the legislation of a Member State, the person considered by the legislation as having created the work shall be deemed to be its author. In the case of a computer program created by a group of national persons jointly, the exclusive work shall be owned jointly. Where a computer program is created by an employee in the execution of his duties, or following the instructions given by his employer, the employer exclusively shall be entitled to exercise all economic rights in the program so created, unless otherwise provided by the contract.
Protection shall be granted to all natural or legal persons eligible under the national copyright legislation, as applied to literary works.
The exclusive rights of the right holder are described in the Directive in accordance with the provisions of the Berne Convention. Decompilation is permitted under certain circumstances and this provision is mandatory. A contractual prohibition to make a back-up copy by the person having the right to use the computer program and other specific acts performed by the person having the right to use the computer program cannot be prohibited in a contract. Special measures of protection for the protection against piracy can be adopted.
No formality or registration is required to enjoying copyright protection; copyright protection is granted from the sole fact of the creation of the computer program. The protection extends to any element of creation of the creativity of its author, but not to the ideas behind it. Hence algorithms are not eligible for copyright protection.
Copyright will thus protect only the computer program in the form written by a programmer – i.e. its source code. Not subject to protection by copyright are the functionality of a computer program, the programming language, or the format of data files used in a computer program in order to exploit certain of its functions, because they do not constitute a form of expression of that program.
Patentability of computer programs
As a matter of fact, patent applications related to computer programs succeeded and still succeed at present. Nowadays, patent protection under article 52 of the European Patent Convention can be obtained in certain circumstances. Patentability of software is excluded to the extent that a patent application relates to a computer program “as such”. A distinction can be made between “software patents” and the so-called “computer-implemented inventions” which are accepted as patentable. The latter can be defined as inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one of more features realised by means of a computer program. The subject matter of the invention as a whole, i.e. a machine with related software, must have a technical character to be patentable. This technical character must be present in all variants covered by the invention, or the patent claim. The conditions that must be met to obtain patent protection for a computer program include thus the requirements of technical character and inventive step described above, and additionally is new and undisclosed.
This first sight into EU computer software protection under EU law reveals that being all legal instruments adopted by the EU authorities Directives, it is necessary to also take into consideration national rules when contracting with parties based in a EU Member State. It is indeed necessary to understand exactly what the stakes are in order to choose among the advantages offered by national legislations, unless more flexible solutions are chosen. In principle, the UNIDROIT Principles for International Commercial Contracts may be the ideal alternative.