Software as a Form of Creativity: An Examination of its Protection Under Intellectual Property Laws

0

By Dotun Odunlade Nathaniel

INTRODUCTION

The software industry keeps booming. Besides the fact that the universe is driving towards a technologically motivated phase, software is being used in businesses to harness productivity, customer service, development and upgrade in competition and sometimes, software could even be the business. The competitive nature of the software industry influences the need for it to be attributed to an intellectual property right and the right holders, owners and developers be conversant with how same can be protected to activate the enjoyment of the rights that comes with their works and prevent unauthorized usage or theft by infringing parties.

SOFTWARE: A LOOK INTO THE BASICS

Everyone knows software is a form of computer programs that enables the computer carry out certain functions[1] but what may not be common knowledge is that this description is not exhaustive of what software is. Software comprises the entire set of programs, procedures and routines associated with the operation of a computer system. The term software was couched to differentiate the nature from a hardware which comprises of the physical components of a computer system. Hence, software is a set of programs that directs the hardware part of a computer on what to do.[2] It is a term used to describe applications, scripts and programs that run on a computer. By basic knowledge, software is generally classified into two i.e. System software and application software. System software is designed to run the computer’s hardware and provide a platform for applications to run on it while application software is the one that fulfills specific needs or performs tasks. Research shows however, that there is more than it meets the eye about software, there are also Drivers software which controls the devices and peripherals connected to it; Middleware which describes the software that mediates between system and application software or between two different application softwares; Programming software which is used to write codes, test and debug other software programs, and so on.[3]

Since the primary purpose of this write-up is not to offer computer science lectures, the description of the legal nature must be addressed. The description of software as made in the earlier paragraphs gives the notion that before a person can create software, it must have been created out of intellectualism and creativity as you just cannot develop a thing as technical as software without being a think-tank. These two conditions are the radical forte for the protection of any establishment under intellectual property. Though this does not mean that everything borne out of a deep and creative thinking is protected under intellectual property, it begs the question whether software is among the category of creative intellectually protected properties and if so, how can it be protected as an intellectual property under intellectual property laws? There are controversies as to whether software can be protected under copyright, patent or trademark but as we shall soon see, software can in fact be protected in intellectual property under copyright, patent, trademark and trade secret. These rights shall be considered with their compatibility and intricacies with software one after the other.

PROTECTION OF SOFTWARE UNDER COPYRIGHT

The protection of copyrights does not cover some works. This includes short phrases, mathematical theories, titles, names, slogans, un-fixed works and so on.[4] Software programs are not a part of these unprotected works provided they are fixed. Software programs became a matter for copyright by virtue of Section 51(1) of the copyright act.[5] The paragraph simply provided that “literary work” includes, irrespective of literary quality, any of the following works or works similar to (a) novels, stories and poetical works; (b) plays, stage directions, film scenarios and broadcasting scripts; (c) choreographic works; (d) computer programmes; (e) text-books, treatises, histories, biographies, essays and articles; (f) encyclopedias, dictionaries, directories and anthologies; (g) letters, reports and memoranda; (h) lectures, addresses and sermons; (i) law reports, excluding decisions of courts; (j) written tables or compilations;  and many others. As conspicuous in (d) above, computer programme is one of the works slated for copyright and since software is part of computer programme, the matter is simply settled. Software protection in copyright took judicial reckoning in the case of Microsoft Corporation v Franike Associates LTD[6] where the court of appeal agreed that software is a part of the computer programs mentioned in paragraph 1 of section 39.[7]

Like any other work protectable under copyright, software must meet the requisites provided in the Copyright Act (“the Act”) for copyright protection. In that regard, recourse must be had to the originality and fixation provision under the Act. By the provisions of the Act, a literary, musical or artistic work cannot be eligible for copyright unless;

  1. Sufficient effort has been expended into its creation to give it an original character.[8]
  2. The work has been fixed in any definite medium of expression now known or later to be developed, from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.[9]

The provisions of [I] above is the originality clause. For a literary work which includes software programme, to be protected by copyright, an effort deemed sufficient has to have been expended into its creation by the alleged owner or author to give it an original character. In the case of Yemitan v Daily Times & Anor[10], The court was of the opinion that for a work to be original, the author must have expended labour, skill and knowledge. Also in the more recent case of Spreevision Ltd & Anor v Nestle Nigeria Plc. & Ors[11] the court confirmed the importance of originality when it observed as follows- “recognition of copyright is premised on some sufficient effort having been expended on the work to give it an original character, for a work to be eligible for copyright protection, it must be original. The essence of originality is that the author of the work must have devoted skill and labour to its creation.”[12]

The provisions of [II] above is the fixation clause. The fixation clause completes the twin principal requisites for copyright protection and it simply explains that the work (in this case, the software programme) must have been expressed in a tangible medium of expression now known or later to be developed. Tangible medium could be an unprocessed platform of the programme writing stage in a book or diary or even a sound recording of the progress of such software programme. The reason for the importance of fixation is linked to its service as a prima facie evidence of labour and preparation for the alleged owner in the event of a controversial ownership, but most importantly for reproduction. In Yeni Anikulapo-Kuti v TM Iseli,[13] the court commented that the fixation requirement for copyright is as simple as the words used in the act, “now known or later to be developed” means exactly what was written, nothing more. That is, such tangible medium could either be known at present or one that will be available in future. Hence, a software developer only gets immediate protection for his source and object codes provided they are original and fixed in a tangible medium of expression now known or later to be developed.

ALSO READ   Justices Kekere-Ekun, Bello, Kanyip, Others Bag NIALS Fellowship Award

Moving on from the originality and fixation requirement, for copyright to be conferred on a software programme, the author, or in the case of joint authorship, one of the authors must be a qualified person under the Act and a qualified person is a person who is either a citizen of Nigeria or domiciled in Nigeria at the time when the programme is written[14] or a body corporate incorporated by or under the laws of Nigeria.[15] This includes works made in the course of employment[16], commissioned[17], assigned and licensed works[18]. Such work could also be protected if on the date of its first publication, one of the authors is a citizen of or domiciled in Nigeria; or a body corporate established under the laws of a country that is a party to an obligation in a treaty or other international agreement to which Nigeria is a party[19]; or the work is first published in a country which is a party to an obligation in a treaty or other international agreement to which Nigeria is a party.[20] However, there is a practical dispute over the application of this provision which has led to a controversial decision of the court in the cases of Microsoft corporation v Franike Associates LTD[21] and Voice Web International Limited v Emerging Markets Telecommunication Services & Ors.[22] This controversy is occasioned by the courts restrictive approach in protecting foreign works only through section 41 and the subjection of section 5 of the Act to section 41. In these cases, the court refused to enforce the protection of software copyright owned by foreign corporations because the plaintiffs did not produce a ministerial Order extending reciprocal protection on the understanding that works authored by Nigerians would also be protected in their countries.

 In the Microsoft case, the court ruled that a foreign company cannot enforce its copyright in Nigeria unless such plaintiff company produces a ministerial Order signifying reciprocal protection in its country, of works authored by Nigerians, as provided under section 41 of the Act. On appeal, the court of Appeal ruled the same that pursuant to section 41 of the Act, the trial court lacked jurisdiction to entertain the case in the absence of an Order in a Federal Gazette extending to the appellant’s copyright protection under the act. Although there is one in this case, which is the Copyright (Reciprocal Extension) Order of 1971 wherein the then Commissioner listed 57 countries whose citizen or works enjoy a reciprocal protection in Nigeria, and the United States of America is listed in that order, the decision of the court was based solely on the ground that Microsoft did not plead the Order in the case, the better view is that the court is expected to take judicial notice of this Order and not strike a case with merit out of the court on the ground that an existing Order was not pleaded.

The decision of the court in the Microsoft case would mean that the only medium through which foreign works can be protected in Nigeria is through reciprocal extension of rights however, that would defeat the provision of section 5 of the Act. In the Voice web’s case, the plaintiff, a company incorporated under the laws of Cyprus filed for an infringement of copyright in Nigeria arguing that they are entitled to protection under section 5 of the Act, the defendant argued the same as the defendant in the Microsoft case that is, by section 41 of the Act, where the author of a work is not a citizen of Nigeria or a foreign company, it must show that a reciprocal extension of protection covers the country where the work is created. The court ruled in favour of the defendant on the ground that though section 5 extends protection to works authored by foreign companies of countries who are members of an obligation in a treaty which Nigeria is a party, the enforcement can only be actualized in accordance with section 41 of the Act. This decision is in error as it would mean that the protection of foreign works in Nigeria is still in a singular way which is by section 41 of the Act, and that section 5 of the Act is subjected to section 41. However, this is not so because if the Act intends that foreign works should only be protected by subjecting section 5 to section 41, it would have provided for that expressly not to mention that it would defeat the provision of section 5 (2) which provides that “Where the question arises as to whether a country is a party to an obligation in a treaty or other international agreement to which Nigeria is also a party, a certificate from the Commission to that effect shall be conclusive proof of that fact.” By the provision of section 5 (2) a question as to whether a country is a party to an obligation in a treaty of which Nigeria is also a party can simply be put to rest by the tendering of a certificate from the commission to that effect. Hence, averting our minds to the provision of section 41, if the only way to prove protection of copyright of foreign works is by reciprocal extension of right, why is it again that a certificate by the commission a conclusive prove of same? Is it the intention of the Act that a certificate from the commission be needed as a conclusive proof or as a means to fulfilling the provision of section 41? I think not. Just like section 41, section 5 of the Act is another Independent way of protecting foreign works in Nigeria and not only by reciprocal extension[23] as a certificate from the commission is a conclusive proof of same.

ALSO READ   Supreme Court Removes Taraba Senator, Orders Him To Refund Salaries

As the author, economic and moral rights are enjoyed over the programme though differently. Economic rights include the right to control the reproduction, publishing, distribution, adaptation or translation of his programme.[24]Moral rights on the other hand involve the right to be recognized as the author of the programme, to object to any distortion or mutilation of same. This right is deemed inalienable and can even be exercised by heirs of the author. On a conclusive note, these rights can also be enforced in any of the countries that are members of the international organization to which Nigeria is a member, as that is one of the essence of these bodies and conventions, that member states not only have their works protected and enforceable in Nigeria but also that same be reciprocated, for instance, the in Berne member countries on the principle on national treatment pursuant to Articles 5(2) of the Berne convention for the protection of Literary and Artistic Works.

PROTECTION OF SOFTWARE UNDER PATENT

Just like any other invention, software can be protected under patent. Copyright protects the codes in a software programme but the invention resulting from the programme is protected under patent, provided it complies with the requirements for patent protection as provided under the Patents and Designs Act.[25] Practically, this means that in the invention of for instance, a software that performs secretarial duties and tidies schedules, source codes are written to lay the foundation of the software and object codes translated from the source codes to design the software in alliance with the purpose of its invention, the codes are open to the arms of copyright for protection while the invention itself is a matter for patent protection. That being said, for an invention to be patentable, it must be new or novel, it must evolve from an inventive activity, it must be capable of industrial application[26] and it may be an improvement to an already patented invention.[27]To be new means it must not have been made available to the public by any means whether by oral or written description before filing for patent.[28] To evolve from an inventive activity means it does not obviously follow from the field of knowledge which has been made available to the public.[29] To be capable of industrial application means to have the feature of being utilized in an industrial or commercial market including agriculture.[30] An improvement simply refers to the modification for better performance of an invention. It should be pointed out that when the invention falls under improvement of an already patented invention, it is safe to think that the codes will be adjusted to accommodate the new improvement.

The reason for the protection of software through patent is owed to the strength of the protection it provides, an owner may prevent everyone else from making, using, selling or importing the patented invention. An issued patent can also be used to prevent others from employing an inventive aspect of new software or from employing the distinguishing characteristic of a new invention. For instance, apple has patented the “bounce-back” feature of IOS to prevent android competitors from this flesh of its user interface. Similarly, Google has patent protection on its PageRank system, which helps prevent competitors like Yahoo, Exite and Altavista from copying Google’s search algorithm.[31] Patent also provide a greater deal of protection for software than copyright and the benefits of protecting an invention through patent can appear like sorcery, as shown by Stac Electronics’ 120 million dollars patent infringement award against Microsoft affecting data compression[32] or Apple’s 1 billion dollars verdict against Samsung.[33] Software patents now covers areas such as internet business methods, business software, expert systems, operating system, techniques, database technologies, compilers, and even word processing functions. The time and cost for securing patent for software invention has however acted as a discouragement for start-up developers who are pessimistic as to the possibility of recovering the money back from the sale and use of the software.

In a patent application, the application shall contain the applicant’s full name and address, a description of the relevant invention with any appropriate plans and drawings including a claim or claims of software and any other matter as may be prescribed, [34]the prescribed fees,[35] and so on. It is noteworthy to point out that the right of patent is vested in the statutory inventor, this means that the right of patent is vested in the one to first file same for patent, whether he be the true inventor or not, in respect of an invention.[36] Hence, the need for true inventors to always have non-disclosure agreements (NDA) with business partners or any other person who may or will need to have access to the invention prior to filing of patent application, to avoid theft related claims.

PROTECTION OF SOFTWARE UNDER TRADEMARK

Trademark does not out-rightly protect software but the identification or brand of such software design against that of another inventor. Trademark is an IP right designed to curb unfair competition in the similar appearance of the products of different manufacturers and producers or brands of different business owners. For instance, trademark will not allow Coca-Cola design its company logo or product bottle[37] in a way that strikes resemblance with that of Pepsi, because they are in the same business, hence, competitors. This goes to avoid a situation of a residual Pepsi Consumer mistakenly buying Coca-Cola drink in the supermarket because of how similar they both appear, or avoid depreciation in the reputation of brand. This also applies to software.

ALSO READ   Lagos Assembly approves death penalty for kidnappers

This is protected and enforced through the Trademarks Act[38]  Trademark protects the brand design of the software to distinguish it from a similar software so a user who intends to get software A will not mistakenly get software B just because of the misdirection embedded in the appearance or the brand. Trade mark can be acquired by use in Nigeria or by registration at the Trademarks Registry. Upon registration, the protection subsists for seven years after which it may be renewed per the provisions of the Act.[39]Trademark allows the proprietor of the software control the usage of the mark in relation with the software and helps users and consumers distinguish the software from other software of other developer.

The trademark registry though responsible for the registration of a mark is not responsible for the enforcements. As the registered owner, one will be responsible for monitoring the market personally or hire a service for same, if a person is found violating someone else’s trademark in software, same will need to be enforced in court of law.[40] Needless to say that registration of brands for inventions like software is a duvet of protection, the competition in software business says it all. The App store as a point of illustration, apps and programs with similar names and purposes will battle over consumers on the App store or Play store. Apple tires its best to resolve trademark disputes between various app owners. This means the app owners will need to prove their ownership of the brand, name, design and other characteristics, and for that to be done, a certificate of registration is only needed to be tendered as it is a prima facie evidence of registration.[41] Though the act only refers to the certificate as a prima facie evidence of registration, it also acts as a prima facie evidence of ownership as one cannot legally register what he does not own. Hence, if an app owner simply shows a registration of trademark, the infringing app will be removed from the store.

PROTECTION OF SOFTWARE UNDER TRADE SECRET

Customized or proprietary software may be a company’s largest asset. [42] For that to continue to be there must be a great deal of secrecy. Software is different from other types of trade secrets as copyright and patents already provides additional protection. Protecting software through trade secret has some considerable merits over any other form of protection. This is so because trade secret protection does not require an application and filing cost like others. It simply involves the preservation of confidential information, processes or codes of software which may result into loss of commercial position, competitive advantage, stronghold or leverage if exposed. The most priced and in fact, only priced feature of trade secret in software is the maintenance of the secrecy, though it is not recognized under statute, it is enforceable under common law. To be recognized for protection under trade secret, Owners must take agile measures to maintain secrecy and these measures include non-disclosure agreement, the secret must have economic value and it must contain information. Trade secrets could be maintained till thy kingdom come provided the details remains shut from becoming public knowledge.[43]

CONCLUSION

The entirety of this write-up reveals that software is not only protected under IP but protected under plural divisions of it like copyright, patents, trademarks and trade secret. These rights protect different divisions of the software. Copyright protects the expression of the idea or the literary part of the software, patents protects the invention itself, trademark protects the appearance of the software and the brand and trade secret protect volatile information that makes up the software for competitive advantage. Software developers can pursue any form of protection they so desire under these discussed rights but it is advised that more than one form of protection is secured.

Dotun is a final year law student of Lagos State University. Odunladedotun98@gmail.com 

Footnotes

[1] Black’s law dictionary, second edition.

[2] Software computing, available at: www.britanica.com

[3] https://searchapparchitechure.techtarget.com/definition/software

[4] Works unprotected by copyright Law. Available at –https://www.bitlaw.com/copyright/unprotected.html#:~:text=Titles%2C%20names%2C%20short%20phrases%2C,of%20product%20ingredients%20or%20contents

[5] Nigerian Copyright Act C28 Laws of the Federation of Nigeria(NCA)

[6] (2011) LPELR-CA/L/573/2008

[7] Nigerian Copyright Act

[8] Section 1(2)(a) NCA

[9] Section 1(2)(b) NCA

[10]( [1977-1989] 2 IPLR 141-156)

[11] (Suit No. FHC/IKJ/CS/183/2012, Unreported ruling of 10, September 2013 Per Yinusa J)

[12] (P 10-11)

[13] (2003-2007) 5 I.P.L.R

[14] Section 2(1)(i) NCA

[15] Section 2(1)(ii) NCA

[16] Section 10(1)(b) NCA

[17] Section 10(1)(a) NCA

[18] Section 11 NCA

[19] I.e. the Berne Convention for the protection of Literary and artistic Works. 1886, the universal copyright convention of 1952, the Trips agreement 1995 etc.

[20] Section 5 NCA

[21] (2011) LPELR-CA/L/573/2008

[22] GRUR international, Volume 70, issue 12, December 2021, Pages 1174-1180

[23] Protection of copyright in foreign works in Nigeria: An analysis of the decision in Voice web international limited v emerging markets…available at https://academic.oup.com/gruint/article/70/12/1174/6356829

[24] Section 6(1) NCA

[25] Patents and Designs Act, cap.p2, Laws of the Federation of Nigeria 2004

[26] Section 1()1(a) PDA

[27] Section 1(1)(b) PDA

[28] Section 1 (2)(a), section 1(3) PDA

[29] Section 1(2)(b), section 1(3) PDA

[30] Section 1(2)(c) PDA

[31] Why protect software through patents? Available at: https://www.bitlaw.com/software-patent/why-patent.html

[32] https://www.latimes.com/archives/la-xpm-1994-02-24-fi-26671-story.html

[33] https://www.law.cornell.edu/supct/cert/15-777

[34] Section 3(1)(a) PDA

[35] Section 3(1)(b)(1) PDA

[36] Section 2(1) PDA

[37] this is referred to as Trade Dress

[38] Trademarks Act. Cap T 13, Laws of the Federation of Nigeria 2004

[39] Section 23(1) TMA. It may be renewed for a period of 14 years.

[40] Section 251(1) (f) CFRN. Exclusive Jurisdiction lies with the Federal High Court

[41] Section 49 TMA

[42] https://www.khlawfirm.com/how-can-you-protect-your-software-as-a-trade-secret

[43]  Intellectual property protection for software, available at: https://www.upcounsel.com/intellectual-property-software

LEAVE A REPLY

Please enter your comment!
Please enter your name here