How to Avoid Infringing the Copyright of a Computer Program: From the Perspective of a Computer Program Turned Attorney/Law Professor

Journal of Intellectual Property Law Volume 4 | Issue 1 Article 4 October 1996 How to Avoid Infringing the Copyright of a Computer Program: From the Perspective of a Computer Program Turned Attorney/Law Professor David C. Tunick Loyola Law School Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation David C. Tunick, How to Avoid Infringing the Copyright of a Computer Program: From the Perspective of a Computer Program Turned Attorney/Law Professor, 4 J. Intell. Prop. L. 49 (1996). Available at: https://digitalcommons.law.uga.edu/jipl/vol4/iss1/4 This Article is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Tunick: How to Avoid Infringing the Copyright of a Computer Program: From HOW TO AVOID INFRINGING THE COPYRIGHT OF A COMPUTER PROGRAM: FROM THE PERSPECTIVE OF A COMPUTER PROGRAMMER TURNED ATTORNEY/LAW PROFESSOR David C. Tunick* I. INTRODUCTION This Article deals with copyright and computer programs. Two recent cases have provided guidelines for determining when a copyright infringement of computer programs has occurred. The cases are Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc.' and Computer Associates International,Inc. v. Altai, Inc.2 This Article attempts to use the guidelines from those two cases to show how to write a computer program whose basic function is the same as an earlier program so that neither its code, nor its output infringes the earlier program.' This is an important question when a programmer working for Company A quits in order to work for Company B. Company B might exclude the programmer from projects similar to those on which the programmer worked at Company A in order to avoid possible copyright or trade secret infringements." However, if the programmer is * Professor of Law, Loyola Law School, Los Angeles. Professor Tunick, formerly an aerospace computer programmer, has taught a course in Computers and the Law since 1976. He is the author of the law school textbook Computers and the Law: Cases and Materials, (John Marshall Pub. Co. 1991 & Supp. 1995). The author thanks Denai Burbank and Ruth Busch, Faculty Support Services, Loyola Law School, for their skill and patience in preparing this Article. 1 609 F. Supp. 1307, 225 U.S.P.Q. (BNA) 156 (E.D. Pa. 1985), affd, 797 F.2d 1222, 230 U.S.P.Q. (BNA) 481 (3d Cir. 1986). 2 775 F. Supp. 544 (E.D.N.Y. 1991), affd in part, vacated in part, 982 F.2d 693, 23 U.S.P.Q.2d (BNA) 1241 (2d Cir. 1992). "The copyright on the screen and printer output is separate from the copyright on the code. ComputerAssocs., 982 F.2d at 703. 4 See id. at 700 (explaining that Altai excluded a former employee of Computer Associates, who now worked for Altai, from writing software on a project similar to Computer Associates' project). A 'trade secret" might consist of "any formula, pattern, device, plan, or compilation of information which is used in one's business, and which gives him an Published by Digital Commons @ Georgia Law, 1996 1 Journal of Intellectual Property Law, Vol. 4, Iss. 1 [1996], Art. 4 J. INTELL. PROP.L. [Vol. 4:49 properly advised on how not to infringe the rights of Company A, Company B might be able to use the programmer on projects similar to those of Company A. In this way, Company B could save time and money by using nonproprietary ideas which the programmer acquired while working at Company A.' Two hypothetical programs are set forth in this Article to demonstrate how to create a noninfringing program that performs functions similar to a preexisting program. But first, a brief examination of the history of copyright and computer programs is useful to show how the issue of copyrightability of computer programs arises. II. THE LAW A. THE NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS (CONTU) In 1976, CONTU was created by Congress as part of an effort to revise the United States copyright laws.' It became apparent to Congress that the new computer technology was creating copyright concerns, so the Commission was established to recommend changes to the copyright laws that would respect the rights of copyright owners while also considering concerns of consumers and the public.7 The Commission studied computers and copyrights8 and issued its report on July 31, 1978. 9 The Commission said that "[c]omputer programs are the product of great intellectual effort and their utility is unquestionable"10 and recommended copyright protection for various forms of the opportunity to obtain an advantage over competitors who do not know it." Telex Corp. v. International Bus. Mach. Corp., 510 F.2d 894, 928, 184 U.S.P.Q. (BNA) 521 (10th Cir. 1975) (citing to the RESTATEMENT OF TORTS § 757 cmt. b (1939)). ' Ideas are not copyrightable, but since ideas can be protected by state trade secret law, ComputerAssocs., 982 F.2d at 703, 716-18, Company B must be careful not to infringe trade secrets of Company A. 6 NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS (CONTU), FINAL REPORT at 1, 3 (July 31, 1978). 7 Id. at 1, 3. There also were concerns about photocopying. Id. Ild. at 1, 9. 9 Id. at cover page. 10CONTU, supra note 6, at 11. https://digitalcommons.law.uga.edu/jipl/vol4/iss1/4 2 1996] Tunick: How to Avoid Infringing the Copyright of a Computer Program: From COPYRIGHT OFA COMPUTER PROGRAM 51 programs," including flowcharts, 2 source code,'" and object code." The Commission considered and rejected both trade secret protection and patent protection for computer programs. 5 Trade secrets were said to consist of a "formula, pattern, device, or compilation of information, [which give proprietors] an opportunity to obtain an advantage over competitors who do not know or use it." 16 The Commission, however, rejected trade secrecy since the secret is lost upon wide distribution, thus precluding trade secrecy for programs widely sold. 17 Furthermore, since trade secrecy is a creature of state law,' 8 the lack of uniform national law reduces its utility.'9 Patent protection was also rejected. The Commission predicted that even if patent protection was available, only a few programs could survive the rigorous application and appeals procedure which require that the programs be novel.2' The Commission recommended that the definition of "computer program" " be added to the copyright law and that rightful possessors of computer programs be allowed to have the programs "read into" (i.e., copied into) the computer in order to use the computer and to make back-up copies,22 and Congress complied.' 1 I at 21. ld. "A flowchart is a graphic representation for the definition, analysis or solution of a problem in which symbols (...truncated)