While the comparison standard makes sense in the context of developing a more restrictive standard, it does not make sense when the content is completely excluded from the analysis. How are forms to be distinguished if no weight is given to the problem they are solving? Moreover, the overall arrangement of sub-routines may differ significantly in large and complex programs while short, unique programs will be excluded because their organisation will appear to be similar. This is a noticeably different approach from the US decision in Whelan which considered the function of the program.28

The merger issue in Germany becomes problematic because the qualitative requirement for 'above-average' programs, in essence, destroys any distinction between the expression and idea. The implications of blurring the distinction between these two forms of protection could be devastating for competitors. If 'average' or 'below average' expressions of the same algorithm are held to infringe the protected work though their form or structure differ, then a 75-year right having patent-like scope will have been obtained through the German copyright laws. Moreover, the relatively restrictive copyright standard may provide problems for foreign software vendors of 'ordinary' or 'below average' software. For those vendors, trade secret or contract protection may, short of circumventing Germany altogether, be the only realistic safeguard.

France

French copyright law developed in a piecemeal fashion since its introduction following the French Revolution.29 The various laws were finally gathered in the law of 1957 which remains substantially the same today.30 French case-law following the 1957 Copyright Law indicated a tendency to protect the idea as well as the expression. Moreover, in early cases concerning the issue of joint authors, protection was given not only to the writer but also to the person who supplied the main idea." Early decisions appeared to set a relatively low threshold for originality by requiring that the work embody the personality of the author.

This minimum standard was by no means automatic since the imprint of the author's personality had to be determined in order for the work to be a creation suitable for copyright protection." None-the-less, while such a requirement was below the relatively high standard of personal aesthetic creation under West German law, the requirement was not automatically satisfied.

In the case of Pachot v Babalot Maillot-Witt, the Paris Court of Appeals found that a computer applications program could be protectable as an original work since it is a 'work of the mind, original beyond a simple and restricted

28 Whelan, Note 6 above, at 1235.

29 See Colombet, 'Propriété Literaire et Artistique', 12 Précis Dalloz 4 (1980).

30 Law 57-296 on Literary and Artistic Property (English translation Copyright Laws of the World) Item 1, at 1. (Supp. 1958). 31 LeStanc, 'Copyright Protection of Computer Software in Civil Law Countries' (in H. Brett and L. Perry, The Legal Protection of Computer Software, 100 (1981). For this proposition LeStanc cites two early decisions reported in RIDA (Revue Internationale du Droit d'Auteur) 112 (1960) and Juries Classeur Periodiques II 1958 at 10, 412.

32 Colombet, Note 29 above.

application of logic; it is not simply a mechanical process of thought, because programmers, like translators, have to choose between various modes of presentation and expression, and their choice thus bears the mark of their personality'." The decision, however, did not elaborate on how diverse expressions would be determined.

Following Pachot, two other cases involving protection of video games were also presented to the Paris Court of Appeals Société Atari v Valadon and Société Wilhams Electronics v Presotto et Société Jeutel." In both cases, the Cour d'Appel refused to grant copyright protection to the video games because of the absence of aesthetic character, banality and technological rather than artistic character',' At this point, the French courts were beginning to follow the West German lead by requiring the aesthetic element in granting software protection.

The three cases, Pachot, Valadon and Jeutel, were joined in appeals proceedings before the Supreme Court. But the opinions rendered by the Paris Court of Appeal in Valadon and Jeutel created such controversy and concern over the level of protection for software that amendments to the Law of 1957 were speedily inserted creating special provisions for the protection of computer programs even before the Supreme Court decisions were rendered. Finally, on 7 March 1986, the Cour de Cassation handed down a landmark decision that settled the divergent views springing up among the various lower courts. The Court held that copyright protection of computer software was to be decided only upon the determination of whether the 'originality' requirement was fulfilled. The Court reversed the Paris Court of Appeals in both Jeutel and Valadon, holding that the video games were fully protected works and the presence or absence of aesthetic content was irrelevant.

As a result of the Cour de Cassation's decision, computer programs created before the 1 January 1986 effective date of the Law of 3 July 1985 are protectable. However, there does remain the ambiguous area of what exactly satisfies the 'originality requirement'."

Shortly following the video game cases in the lower courts, the National Assembly established a special committee of the Senate to study the problem of software protection. The committee proposed a set of revisions to the Law of 1957 which would have offered computer programmers the same prerogatives as those of traditional author's rights. After an Assembly debate on the merits of the proposals and the proposed revisions, the Senate amended the 1957 Copyright Law by introducing 66 new Articles that were added to the copyright statute."

André Françon, Professor at the University of Paris and President of the Henri Desbois Institute of Research on

33 Judgment of November 1982, Cour d'Appel Paris, 4th Chamber, November 1982, Gaz. Pal. 1983, D.S. Jur. 1982, IR 481, PIBD 1982, 341, RIDA 1983; see also LeStanc, 'Pachot v Babolat Maillot-Witt, The Protection of Computer Programs by Copyright in France', [1983] 8 EIPR 222.

34 Judgment of 4 June 1984, Cour d'Appel Paris, RIDA 1985. Reported in [1986] 8 EIPR D-160.

35 Judgment of 20 February 1985, Cour d'Appel Paris. Reported in [1986] 8 EIPR D-160.

36 [1986] 8 EIPR 160.

37 Ibid., at 161.

38 Report of Senate Debates, 'Droit d'Auteur: Le texte definitif pour les logiciels. (Debate of 17 June 1985). 74 Expertises 163 July 1985).

Intellectual Property, noted that the Law of 3 July 1985 focused on two major concerns: improving the legal aspects of the 1957 Law and taking new technological developments into account." Yet, in spite of the extensive proposals and time spent reviewing these proposals in the Senate committee, the Law of 1985 is silent on the idea/ expression dichotomy. This is especially troublesome since the Cour de Cassation opinions in Pachot, Valadon and Jeutel leave unanswered whether protection of the composition and expression inevitably includes consideration of the idea to determine originality.

André Bertrand has noted that a significant aspect of these decisions is the apparent acknowledgement of the utility of the idea behind the work when judging the similarity of infringing works. In other words, the Court considered the flow chart to constitute the 'composition' of the program and the source code listing as the 'expression'. Accordingly, 'a program could be considered a copy of another program if its structure with its most characteristic elements is duplicated, even if this copy is written in another programming language'. The question becomes whether 'structure and characteristic elements' refer to protecting anything beyond expression. Although not explicitly set forth, it appears that the Supreme Court in France is approaching a standard for substantial similarity that resembles the US Whelan decision." Bertrand, however, cautions that the idea/expression dichotomy is still maintained and functional works should not be protected. 12

Japan

40

The climate toward protecting software through copyright law has remained consistently favourable in Japan. Whether the scope of protection afforded software extends beyond the expression has not been resolved by the Japanese courts and whether a favourable ruling would be expected is relatively unclear as a result of the recent statutory amendments to the Japanese copyright law.

Most of the significant debate with regard to software protection has been confined to institutional arguments between the Ministry of International Trade and Industry (MITI), which administers Japanese patent policy, and the Ministry of Education (MoE), which is the agency that controls the Japanese copyright bureaucracy.

The position of MITI is best presented in their interim report Proposal with Respect to Rearrangement of the Foundation for Software Aiming at Security Legal Protection for Software published in December of 1983. In the report, the MITI committee concluded that legislation was required to adequately protect software by the creation of a sui generis right." The proposal included features that resembled aspects of Japanese patent law such as the abolition of moral rights, a 15-year term, an 'originality'

examination of the software and the publication of functional abstracts for registered works. Moreover, the proposal contained an implicit recognition of the protectability of the idea. The recognition was expressed by the committee's emphasis on protecting the function of the program through an examination of the algorithm.

The MITI proposal was eventually defeated by the Japanese Diet due, in part, to heavy opposition to the compulsory licensing provisions." None-the-less, the competing proposal submitted by the MoE (which eventually passed the Diet on 7 June 1985) appears to have retained elements of the MITI proposal."

The expressed intent of the MoE proposal was to harmonise Japanese law with these trends in the US, France, UK and West Germany by favouring a copyright over a sui generis approach to protection. Although caselaw following the implementation of the statute remains sparse, the language of the statute itself appears to adopt many of the 'patent-like' features of the previously rejected MITI proposal. Protection of the merged idea/expression, however, does not appear to be one of them.

The Japanese amendments explicitly included software under Article 2(1)(i)(x)bis as a copyrightable work of authorship." What is critical about the definition for the merger question is the use of the definition for 'expression'. In effect, 2(1)(i) bis provides a functional description for expression. There is no limiting language, however, that restricts the meaning to the appearance of the code rather than its structure, form and organisation. Accordingly, Japanese courts may construe the language of 2(1)(1)(x) bis to lump the function of the program and the structure together. Hence, a Whelan definition of expression would comply with the definition under 2(1)(i)(x) bis.

The definition of expression is further refined under Article 10(3), sections (i) to (iii)." This provision excludes

44 At the time that the MITI proposal was before the Diet, the US House and Senate sponsored legislation that adopted reciprocal provisions to the compulsory licensing proposal form MITI. 45 See Interim Report of the Copyright Council, the Sixth Subcommittee (for Computer Software), MoE (January 1984), reported at WIPO/UNESCO study, Note 43 above, at pages 25 to 27. Indicated that while adaptation rights can be extended to software 'the fundamental assumption has been adopted of not extending protection to algorithms of programs but of showing adaptation policy guidelines for the purpose of clarifying the scope of the extent of adaptation rights, and establishment is desirable of measures necessary for putting these guidelines into efficacious practice' (page 26),

46 Article 2(1)(I) of Japanese Copyright Act, Law 48 (1970), as amended by Law 62 (1985) (amendments relating to computer programs), and as amended by Law 64, adopted 16 May 1986, effective 1 January 1987 amendments relating to databases and the 'new media') The statute reads, in part: 'A work of authorship is a production in which thought or sentiments are expressed [emphasis added] in a creative way, and which falls within the literary, scientific, artistic or musical domain. (Article 2(1)(I) ... 'program means an expression for software is defined as combined instructions given to a computer to function and obtain a certain result, [2(1)(x) bis ]. 47 Ibid., Article 1003). The protection granted by this Law to works mentioned in paragraph (1), item (ix) shall not extend to any programming language, rule or algorithm (emphasis added] used for making such works. In this case, the following terms shall have the meaning hereby assigned to them respectively: 10(3)(i) programming language' means letters and other symbols as well as their systems for use as a means of expressing a program;

10(3)(u) 'rule' means a special rule on how to use in a particular

'programming languages', 'rules' or 'algorithms' from copyright protection. The definition of algorithm, however, appears to be directed to '[methods] of combining instructions' as opposed to the 'idea' which the instructions are attempting to express. While the distinction may be purely one of translation, the curious definition for algorithm can lead to two somewhat contradictory conclusions about the status of idea protection in Japan. The first is that, as previously stated, the idea of the program would not necessarily constitute an algorithm. Such an interpretation would thereby tend toward blurring the merger dichotomy. Moreover, focusing the algorithm on the method of combining instruction would appear to exclude 'structure' as the structure evinces the combination of instructions. Therefore, the section 10(3)(ii) defini

tion of algorithm can have the curious result of including protection of the idea while excluding protection of the

structure.

The potential confusion over merger is compounded by Article 20(20), which essentially eliminates moral rights protection for the software owner:

20020) The right to preserve the integrity of a work provided in Article 20(1) shall not apply to the following modifications:

(iii) modification which is necessary for enabling to use în a particular computer a program which is otherwise unusable in that computer, or to make more effective the use of a program work in a computer (Emphasis added). This provision effectively allows any modification to be infringing, as any modification will aways make the Program more effective'. The reason 20/20 confuses the merger issue is that an analysis of 'effective' changes must include an analysis of the functionality of the work.

Early Japanese case-law is notable both for its willingness to protect software under the copyright laws and for its lack of guidance regarding second generation issues. The pioneering Japanese case was Digdug v Zigzag." In Digdug, the defendant company attempted to reproduce the video game 'Digdug' by copying the object code from the plaintiff's program 'Zigzag' which was stored in a ROM chip. The copied program was a nearly identical version of the plaintiff's software except that the name of the game, the name of the game's characters and the name of the manufacturer were changed. The Court confronted the issue of protection for software by holding the program copyrightable as a literary work under Article 2(1)(1) of the original 1957 Copyright Act. The Digdug court found the level of originality sufficient to support a copyright because the software arrangement had scholastic scope and expressed thoughts creatively.

video machines and copied the code onto another ROM for installation in video machines owned by one of the defendant's customers. The defendant raised the affirmative defence that the program was not a protected work under Japanese copyright law. The trial court disagreed:

the method of making choices as to the appropriate selections and as to the combination of instructions for the same requires from the maker of the program his logical thinking it may be concluded that the subject program is a creative expression of the maker's own academic thought and thereby is a work to be protected under the Copyright Law S

The 1984 White Paper proposed a two-tier sui generis system of copyright protection for computer software in which human-readable and machine-readable programs would be treated differently." Under the proposed scheme, programs in human-readable form (that is, source code) were to be protected as any other form of literary or scientific work and would therefore be entitled to full copyright protection for life of the author plus 50 years.

Following the Conservative Government's accession to leadership in the September 1984 election, the White Paper was declared 'a document which did not necessarily embody government policy'." The new Government

51 Ibid.

52 See, for example. Judgment of 26 January 1984, Osaka Dist. Ct. Japan, reported in Doi, 'Copyright Infringement, Patents and Licensing, Paterus and Licensing, 30 (April 1984) As in the previous two cases, the issue involved the defendants' copying of object code of the plaintiff's video game program. The Court defined originality' by noting that the images of the plaintiff's video game are so unique that they are not seen in other video games, and therefore they possess originality'.

53 Greguras. 'Protection of Computer Software in Canada, Part I, Software Protection, at 8 to 14 (1983).

54 As amended by Acts of 1931, 1950 and 1971
55 Copyright Act, R.S., c. 32, section 4(1) (1971).
56 Greguras, Note 53 above, at 9.

57 Gutenberg and Telidon. A White Paper on Copyright', reported in Greguras, 'Protection of Computer Software in Canada", Note 53 above.

58 Racicot. Copyright Reform in Canada As It Relates to Computer Programs', Software Protection, Volume 1, 2 1986.

nevertheless realised the necessity of revising the copyright law and formed the Sub-Committee on the Revision of Copyright to not only modernise and improve the existing Copyright Act, but to also 'give a new emphasis to the contribution of creators to our national life'.

The Sub-Committee recommended that a new, separate category of copyrightable subject-matter be established for computer programs in order to maintain consistency with the Sub-Committee recommendations that new categories be created for sound recordings, audio-visual works and published editions.

The Sub-Committee proposed a full copyright régime of protection for computer software which would include moral rights. It noted that the present Copyright Act appeared to protect moral rights only during the life of the author, and recommended that the term of protection be expanded to equal the term provided for economic rights, that is, life of the author plus 50 years.

The Sub-Committee noted that the volatility of a computer memory could result in the destruction of enormous economic value and that the need to permit making of a back-up copy was legitimate.

With regard to the issue of merger, the Sub-Committee dealt with the topic elliptically by limiting the extent to which the idea of an original program extends to a subsequently changed version. Where an original computer program is used to aid in the creation of another copyrightable work, the Sub-Committee recommended that 'the person responsible for its making and not ... the owner of the copyright in the original program' should own the copyright in the resulting work. In defining what would constitute a 'substantially different' work so as to satisfy the originality standard of copyright, the SubCommittee appeared to consider the qualitative aspect the idea behind the expression as differentiating one program from another: 'The intellectual effort made by the user of the program must yield a result that is not solely the result of the design program.

62

The Sub-Committee, however, provided no special definition of 'originality' for computer programs, stating only that the requirement must be satisfied. The SubCommittee also failed to discuss the manner in which the merger issue should be treated.

On 7 February 1986, the Canadian Government published its response to the Sub-Committee proposal.63 The Government endorsed the Sub-Committee's proposed changes to the existing Canadian Copyright Act and indicated general agreement with many of the recommendations proposed by the Sub-Committee in principle.

Although the Canadian Government and legislature has recognised the need to revise its Copyright Act to adapt to evolving technologies, its delay in so doing forced the judiciary to apply and interpret the existing Act with respect to the merger issue.

In the case of International Business Machines Corp. v Ordinateurs Spirales, Inc. (1984) 80 CPR (2d) 187 (Tr. Div.), the Federal Court of Canada in Toronto held that computer programs in both source code and object code were protected under the existing Act." Here, the plain

59 Ibid.. at 3.

60 Ibid.

61 Gutenberg and Telidon, Note 53 above.

62 Ibid.

63 7 February 1986. Response to the Sub-Committee Report, News Release Communique, at 9.

tiff IBM had published a listing of both the source and object code of its 'IBM Personal Computer Basis Input Output System 1.0' (BIOS) program in a Technical Reference manual for the IBM personal computer. The manual could be purchased separately from the computer and was available to the general public. IBM had obtained a copyright for the BIOS program which it alleged the defendant had infringed with the sale in Canada of a computer containing a copy of the BIOS program in a ROM. The Court noted that no evidence was presented as to how the program had been copied, stating that it could have been copied directly from the BIOS chip or it could have been reproduced using the instructions provided in the manual.

More directly, the Court noted that no argument was raised by the defendant that a computer program is an idea and hence, non-copyrightable since merger of idea and expression has occurred. Nevertheless, the Court appeared to follow US law as stated in Apple Computer Inc. v Franklin Computer Corp., mentioned above, in which the US Court of Appeals held that if the idea can be expressed in various modes, then the program is copyrightable as they cited this decision in noting the defendant's failure to raise the issue."

In the recent case of Apple Computer, Inc. v Mackintosh, the Federal Court of Canada (Trial. Division.) (slip opinion) T-1232-84 (29 April 1986), again followed the rationale of Apple v Franklin defining protectable 'expressions' of software if multiple forms of the idea could be made. The merger issue was raised in the context of the Court's analysis of the protectability of object code. The plaintiffs claimed copyright in the original assembly code versions of its Autostart ROM and Applesoft programs, and claimed the object code versions of these programs to be translations of the original works. The plaintiffs alleged that the defendants had infringed Apple's copyrighted works with the sale of computers containing the Autostart ROM and Applesoft programs. In finding for the plaintiffs, Reed J held that the defendants' copying of the plaintiffs' object code was indeed an unauthorised translation of the assembly code.

In writing the Court's opinion, Reed J dismissed the defendants' argument that the object code stored in ROM constitutes uncopyrightable subject-matter due to the merger of idea and expression. The Court further noted that if merger was deemed to exist with respect to object code, then it would also have to be considered to exist with respect to the assembly code which the defendant conceded to be copyrightable. In addition, the Court questioned the very existence of the merger rule as a bar to copyrightability. The Court noted further that '[i]t is only if the idea communicated by such works is described in highly abstract, remote and general terms that one could say there is no merger of the idea they convey and the expression

64 See also Apple Computer, Inc. v Minitronics of Canada Lid & Others (1985) 7 CPR (3d) 104 (Tr. Div.). 65 Ibid.

66 Ibid., at 30. In so doing, the Court initially laid to rest the defendants' claim that copying of the plaintiffs' object code version of the assembly code program constituted more use of the assembly code program, outside the scope of copyright protection. The defendants had assimilated copying of the object code stored in ROM to the following of a recipe prescribed by the program. To the contrary, the Court stated, 'a closer analogy is that ... they copying the recipe book'.)

are...

67

in which that idea is conveyed'. A 'statement reporting a fact' or an algebraic proof (for example, E = mc2) was cited as an example of an uncopyrightable idea. By initially adopting an all or nothing approach with respect to the application of the merger doctrine to the copyrightability issue, Reed J thus appeared to evade the question facing US courts of where to draw the line between idea and expression. Nevertheless, Reed J later fully embraced the rationale of Apple v Franklin by stating that where there exists 'a multitude of forms of expression in which any given program can be written there is no merger of

the idea and the expression'."

The Court further noted that application of copyright protection to a program embedded in ROM does not represent an impermissible overlap with patent law. Reed J emphasised that the purpose of the Copyright Act has

67 Ibid

68 Ibid.

always been to grant a monopoly in order to protect and reward an author's intellectual effort as a means of encouraging disclosure. The task a computer is programmed to perform (such as the process in the Schlumberger case, mentioned below), which may or may not be patentable, was carefully distinguished by the Court from the program written to accomplish that task, which was copyrightable.

Although no Canadian Appeals Court or High Court decisions have considered in detail the issue of protection of the idea behind a computer program, the courts appear to be willing to apply the same approach as US courts, and most notably the Franklin court. Legislative proposals have also been careful to separate sui generis proposals which would potentially include expansion of the scope of a traditional copyright beyond the ken of expression. None-the-less, until either the courts or the legislature directly confront the issue of merger, the future direction of this second generation issue remains uncertain.

Gary Hoffman and John Grossman 1988