But what about practice points for the potential IP defendant?

Every so often this Kat reads something about IP that seems to address an issue in the obvious fashion, but which becomes less self-evident the more that he thinks about it. Is it misplaced complacency that has kept this Kat from challenging the matter previously, or is he being guilty of overweening skepticism? Consider the question: why is it that when we talk about “practice points” or the “practical significance” of a case, discussion is almost always about steps that someone in the plaintiff’s position (rather than the defendant's) might consider taking. Why should this be so?Take, for example, the March 2014 issue of the Journal of Intellectual Property Law & Practice, otherwise known as JIPLP, and the “Current Intelligence” report by Katfriend Iona Silverman, of Baker & McKenzie in London. [Full disclosure: this Kat has proudly been a long-time member of the Editorial Board of JIPLP.] Entitled “SAS: major software copyright ruling upheld”, Silverman provides an elegant summary of the Court of Appeal decision in SAS Institute Inc. v World Program Ltd [2013], here.  At the end of the report, she offers several suggestions whereby persons situated analogously to the unsuccessful plaintiff might improve their own legal position. Attention to the defendant and its like is nowhere to be found.

The case itself dealt with a fundamental issue of copyright law as it applies to the protection of computer software, namely to what extent can infringement of copyright be found when the defendant emulates the functionality of the plaintiff’s software, but does so without access to the plaintiff’s computer code. This Kat, being a hoary type, recalls the tumult that accompanied the 1986 decision by the U.S. Third Circuit Court of Appeals in Whelan, here, wherein the court gave a broad interpretation of the meaning of look and feel to encompass the functional emulation of the plaintiff’s software by the defendant. The application of the look and feel/structure, sequence and organization approach to the protection of computer software was later significantly circumscribed, most notably by the decision of the Second Circuit Court of Appeals in Computer Associates, here. Still, it would be fair to say that the approach espoused by the Whelan court has not completely disappeared, depending upon the particular circumstances of the case under consideration (the U.S. Supreme Court has never squarely ruled on the question.)

Against this jurisprudential background in place across the Atlantic pond, SAS raised conceptually similar questions. After a referral to the CJEU, followed by a decision by the High Court, the Court of Appeal for England and Wales was called upon to rule on the matter. Silverman well describes the considerations of the Court of Appeal before concluding as follows:
“It is now abundantly clear that the functionality of a computer program (its look and feel”) cannot be protected by copyright; nor can a computer language. The supporting materials may be protected (such as the manual, which is protected by literary copyright). However, companies may unpick their competitors’ programs to create their own version. In particular, assuming they do not have access to the source code, anyone may ‘observe, study or test the functioning of a program’ to try to understand and ultimately recreate it.”
It would seem that this decision has “put paid” to this question under English copyright law. But Silverman then goes on:
“Website creators are advised to consider other intellectual property rights to protect their creations: by including branding, logos, graphics or features protected by design right they will be able to invoke trade mark, passing off, copyright or design rights to obtain some additional protection (over and above the copyright in the code)? Additionally, consideration should always be given to the question of whether any new functionality is patentable.”
These are all sound suggestions—for a potential plaintiff.  In so suggesting, however, there is a whiff that something was “not fair” in the decision reached by the court in ruling that no copyright had been infringed. After all, the plaintiff presumably spent significant time and money in developing its software. If so, if might seem, “it’s just not right” that the court ruled against the plaintiff, solely because copyright law does not come to the plaintiff’s aid. (“If only the plaintiff had obtained a patent ….”) Such a plaintiff still deserves some kind of enforceable legal right under the circumstances; all that is necessary is find what IP right might still apply. But why shouldn’t the interests of third parties interested in avoiding a law suit from such a potential plaintiff also be addressed in the “practice points”? After all, it is as much an interest of the IP system to enable a third party to avoid acts of infringement (and thereby not require litigation that calls on the resources of the judicial system) as it is for the system to enable a rightsholder to assert its IP rights legitimately. Both avoidance of litigation as well the enforcement of rights are essential, but one is not more important than the other, especially in the context of intellectual property. Perhaps the place to start is precisely with such “practice points”.
But what about practice points for the potential IP defendant? But what about practice points for the potential IP defendant? Reviewed by Neil Wilkof on Friday, March 21, 2014 Rating: 5


  1. In most other aspects of trade we welcome healthy competition as something which keeps manufacturers and suppliers on their toes, and gives consumers better value for money; the opposite, where a monopoly or cartel exists is generally anathema. Copyright, patents and the like generally create a localised monopoly for the rightsholder, but as the US Constitution points out, these rights are given in order that progress in the arts and sciences may ultimately be advanced and stimulated. It is the doctrine that says if we stand on the shoulders of giants, technology and the arts will move forward at a greater pace than if we just keep our feet firmly on the ground and shuffle on. Therefore legislators and the courts must constantly have the struggle between the monopolist and the challenger (plaintiff and defendant if you like) in mind so that that the IP tail does not end up wagging the dog of commerce, technology and the arts.

  2. This is an awfully negative view: "herefore legislators and the courts must constantly have the struggle between the monopolist and the challenger (plaintiff and defendant if you like) in mind so that that the IP tail does not end up wagging the dog of commerce, technology and the arts."

    And can be just as easily countered with a (much more prevalent) view that the IP dog is being wagged by the tail of commerce and academia.

    There are plenty of anti-patent forces out there and they are very real. They come from both the Left (who despise any notion of personal property) and the Right (who despise any threat to the established large corporate concerns).

  3. @anonymous 16.29.
    I have no problem with the courts dealing with cases of obvious infringement in favour of the claimant, but as we have seen from the great NPE/patent troll debate, or the Samsung v Apple saga there comes a point when some claims have no real merit if looked at from a commonsense / public policy point of view, but the claimant may still win if the court is looking at the trees rather than the wood.

  4. After being blasted in the past for standing up for the rights of third parties, and as a consequence having withdrawn myself from the public debate, I can only hear-hear Neil's attention for the all too easily forgotten rights of third parties.

    Kudos to Neil

  5. Sorry Andy J, but I am not buying what you are selling.

    You do not get to look at a legal issue 'sideways' to avoid the full protection afforded under that legal issue.

    And by avoiding looking at it sideways (in any sense of non-legal)we avoid the morass of relativism and "what is common sense" when parties simply will not agree on what that means, or which public policy is more important. These are exactly why we pass laws in the first place - especially in the close call cases.

    And since Kuifje feels the urge to whine, let's blast him for his notion that "rights" are somehow involved for third parties - an asinine concept.

    Finally a mild rebuff for Neil. The reason why advocates speak as they do is because the issue typically DOES involve a right (and actual right, not the pseudo-right that Kuifje bleats for), and it is the right of the person that has gone out of their way (to whatever extent) to create the right that someone else is merely copying. That is the way the rightw work, the way that they are structured - without rights, you do not have "infringers' rights" or "copier's rights," you merely have unprotected (lapsed or not claimed or otherwise in the public domain usage of that public domain material.

    To the extent that you wish to protect the rights holder is the extent the non-rights holder will not (or cannot) infringe or copy, then you have served the purpose of having a rights system in place.

    In other words, you are being too sensitive.

  6. Anon @23.49
    Much of the legislation with which the courts have to wrestle is out of date and ill-suited to today's technology, especially the internet. While the legislators struggle to keep up, by bolting ever more unwieldy amendments to the existing law, the heavy lifting is being done by the courts who have to listen to argument from counsel which would shame a snake oil salesman and ultimately have decide the case. How many times in IP cases does the court of instance decide one way, the appellate court or next tier court decides in the other direction and the third tier reverses once again? And add in the idiosyncrasies of the rulings from the CJEU and you have a great deal of uncertainty, which we are told, creators and manufacturers seeking to develop products, abhor. Or in other words what Neil was talking about. It is the application of the court's grey matter to the weighing up part of the process where I would advocate the injection of common sense and 'the greater good' principle.
    In many respects we are arguing about the idea/expression dichotomy, and where the boundary between the two lies. I know of no statute which adequately defines it, although to be fair the US Copyright Act goes further than most. Clearly the approach taken in copyright legislation differs from that for patents, but in both areas, the courts have arbitrate, based on the facts specific to the case, whether the idea/expression or prior art/claimed inventive step boundaries favour one party or the other. It ain't just about looking up the black letter law, otherwise Neil would not have needed to write his piece.

  7. Andy J,

    That is a conclusion masquerading as a fact. It is 'common sense' that the law applies regardless of the background technology.**

    So I am still not buying what you are selling.

    The greater good concept is intimately wed into our existing legal process. To invite a shortcut is to invite an abuse of the system. Sorry, but no thank you.

    ** said to show the point that 'common sense' is a notoriously poor legal position.

  8. Regarding the application of common sense, I recall L'Oreal's application ( [1986]RPC 19 ) where the judge found he was obliged to follow the unambiguous wording of the statute and hold that withdrawal of a UK designation of an EP application meant that the EP publication was no longer part of the state of the art. He chacterised the result as "bizarre", and Section 78(5) of the 1977 Patents Act had to be amended to produce a common sense consequence of designation withdrawal.


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