Department of Law University of Hong Kong

Copyright and Creativity

Topic 9
Copyright and
Software/Online Game
Industry

Dr. Yahong Li
University of Hong Kong
SOFTWARE AND
SOFTWARE INDUSTRY
 Definition of Software (Computer Program)
v Computer programs: “a set of statements or instructions to be used
directly or indirectly in a computer in order to bring about a certain
result.” (17 USC s. 101).
v "Computer program" means a coded command sequence, or a
symbolic command sequence or symbolic statement sequence which
can be automatically converted to a coded command sequence,
executable by a computer or any other device with information
processing capability, in order to achieve a certain result. For a same
computer program, the source program and the object program
constitutes the same work;” (PRC Computer Software Protection
Regulations, Art. 3(1))
 Categories of Software
v Application software: programs to perform user tasks, e.g., software
for business, education, gov’t, legal, spreadsheet, word processors,
video games, etc.
v System software: programs to start and run computer systems and
networks, e.g., operating system, graphical user interfaces, window
systems, boot loaders, firmware, device drivers, compatibility layers.
v Computer programming tools: such as compilers and linkers, used to
translate and combine computer program source code and libraries
into executable random-access memories (RAMs), e.g., text editors,
Java development tools, Linux programming tools, user interface
builders, debuggers, compilers, disassemblers, etc.
 Proprietary (or “closed source” )
Software Licenses
v Copyright holder has exclusive right to grant licensee the right to use the
software only under certain conditions, and restricted from other uses such
as modification, sharing, studying, redistribution, or reverse engineering.
v The terms and conditions are set out in “end-user license agreement”
(EULA) in two forms:
›“clickwrap licensing”: users agree with the term in writing
›“shrinkwrap licensing”: user open the box containing software.
v Shareware: “try before you buy on the honor system”
›The recipient can try the software and pay software owner license fee if
they want to retain, e.g., “Doom” game.
 Example of Software Licence Agreement
“This version of Media Console 1.0 comes with a Microsoft style license. For
an exhorbitant amount, say one million dollars ($1,000,000.00), you may
download this program for your exclusive use only. You may only use this
program on one machine, even if you use several machines in the course of
the day. You may not make any copies of this program, with the exception of
one archive copy. You may not reverse engineer the source code (so don't
download the source code!), or otherwise attempt to disassemble the object
code (even in the privacy of your bedroom). Don't even think about exporting
this program out of the country.”
Source: copyright website (http://www.benedict.com/digital/software/software)
COPYRIGHTABILITY
OF COMPUTER
PROGRAM
 Copyrightability of Computer Program
v TRIPS art 10.1: “Computer programs, whether in source or object code, shall be
protected as literary works under the Berne Convention (1971).” This has been
implemented by:
› 17 U.S.C. s. 101
v EC Directive on Legal Protection of Computer Programs
› PRC CL art. 3(8), PRC Computer Software Protection Regulations 2013
v Derivative program (program based in part on pre-existing code): is protected as an
original work.
v The program must be original.
› the “program…is the author’s own intellectual creation” (EC Directive on Legal Protection of
Computer Programs)
v The program must be fixed.
› “Software protected under these Regulations must have been independently developed by a
developer and fixed on a certain tangible object (PRC Software Protection Regulations, Art. 4)
 Idea/Expression Dichotomy
v Only expression, not idea/functionality, of a code is copyrightable.
› “Inno case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.” (17 U.S.C.
s102b)
›“Protection provided by these Regulations over the software copyright
shall not extend to include any idea, process, operating method, or
mathematical concept, etc. employed during software development.”
(PRC Computer Software Protection Regulations, art. 6)
 Doctrines of Merger and Scène à Faire
v Doctrine of merger
› If a code embodies the only way to express its underlying functionality (called “lock-
out” code) à the code is not copyrightable as the expression is merged into the
functionality.
› If a program’s expression is dictated entirely by practical or technical considerations,
or other external constraints, it is not copyrightable.
v Doctrine of scène à faire
› Expressions which are “standard, stock, or that necessarily follow from a common
theme or setting” cannot be protected.
› “In the computer-software context, the doctrine means that the elements of a
program dictated by practical realities—e.g., by hardware standards and mechanical
specifications, software standards and compatibility requirements, computer
manufacturer design standards, target industry practices, and standard computer
programming practices—may not obtain protection
 Lexmark Int’l, Inc. v. Static Control Components, Inc.
572 U.S. 118 (2014)
v The court asked: whether the ideas, methods of operation and facts of the
program could have been expressed in any form other than that chosen by the
programmer, taking into consideration the functionality, compatibility and
efficiency demanded of the program.”
v Court ruling:
› “if the process is embodied inextricably in the line-by-line instructions of the computer
program, then the process merges with the expression and precludes copyright
protection.”
› Large and complex program v. a small program à large program is easier to be
found copyrightable as it has more alternative means of expression (or variations).
› Not all variations can render a program copyrightable, e.g., different ideas and
methods of operation; a look-up table; re-ordering; and any variations that are “trivial”
and do not make “material changes” or “substantial difference” to the nature of the
program.
 Lotus Development Corp. v. Borland Int’l, Inc.,
516 U.S. 233 (1996)
v P developed spreadsheet program Lotus 1-2-3. D developed
Quattro Pro spreadsheet program by adding a feature that let
Lotus users execute the same commands they were used to
form Lotus within Quattro Pro.
v P sued D as D’s program include 469 commands identical to
those found in Lotus 1-2-3. That is, D used more than 50
menus and submenus to arrange the commands in the same
hierarchical order as those found in P’s program.
v Court: the menu commands and their hierarchical ordering =
a method of electronic operation à not copyrightable.
è only literal form, not the actual statement and instruction of
the source code, is protected by copyright.
ANALYSIS OF SOFTWARE
COPYRIGHT INFRINGEMENT
 Infringement: Literal v. Non-literal Copying
v Literal copying:
› Program code itself is copied, in which case the two programs are written
in the same programming language. For example:
v InAugust 2017, Alipay admitted that its “mini apps” feature is directly copied from
WeChat’s coding template.
v Lexmark Int’l, Inc. v. Static Control Components, Inc. 387 F.3d 522 (6th Cir. 2004)

v Non-literal copying:
› Elements of the program such as its structure, sequence of operations,
functions, interfaces and methodologies are copied but the program code
is not directly copied.
v Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992)
 Structure, Sequence & Organization (SSO)
v Whelan Assocs., Inc. v. Jaslow Dental Lab, Inc. (3rd Cir. 1986)
› P developed a program for managing dental labs. D developed a program
containing identical copies of most of P’s file structures, screen output and
modules.
› Idea/Expression Continuum Discernment test: the purpose or function of a
program is the idea, and that everything not necessary to that purpose or
function is the expression of the idea. When there are many means to
achieve the purpose or function, the means are expressions (not ideas).
› Applying this test to this case, the court decided that computer programs’
structure, sequence and organization (SSO) (not only the literal code) are
copyrightable.
ècopyright infringement could be found without direct code copying.
èThis ruling was accused of suppressing innovation.
 Operating System (OS)
v Apple Computer, Inc. v. Franklin Computer
Corp., 714 F.2d 1240 (3d Cir. 1983)
› P alleged that D’s ROM (read-only memory) and
operating system copied P’s.
› D admitted copying; but argued: (1) its own
software version cannot be compatible with
Apple’s computer; (2) their copying is not
infringement because Apple’s software was in
machine-readable form, not in print form, and did
not contain copyright notice.
› District court held for D, but the 3rd Circuit
reversed and held for P.
› The 3rd Circuit decided that operating systems
could be protected by copyright.
 v Broderbund Software Inc. v Unison World, Inc.,
648 F. Supp. 1127, 1133 (1986)
User ›P wrote a program (“Print Shop”) producing signs and
greeting cards for running on Apple computer; later D
Interface produced a program for IBM PC with similar user
interface.
(UI) › P sued D for infringement. D argued that the UI was
not copyrightable as the idea behind it was
inseparable from its expression (“merger”).
› Relying on Whelan, the court introduced the idea of
the “total concept and feel” of software work, and
decided that the display on the screen was
copyrightable since it contained "aesthetically pleasing
artwork, an entertaining layout and display, and a high
degree of stylistic creativity.”
v This decision was criticized for “too expansive”, and
was rejected by other courts.
 Application Programming Interface (API)
v Google Inc. v. Oracle America, Inc. 593 U. S. ____ (2021)
v What did the SCOTUS say about the limits of copyright, the
relationship between “fair use” doctrine and technology, the major
difference between computer program and other copyright works;
and who is to decide “fair use” issue?
v On “fair use” analysis:
›Is Google’s program transformative?
›What is the nature of the copied lines?
›Is the copied portion substantial compared with the original
program?
›Is Google’s new platform a market substitute for Java SE?
 Defences to Infringement Claims
v The program is not copyrightable
› Idea v. expression; scène à faire; merger, etc.
v Fair use: reverse engineering and disassembling for research/education
v De minimis copying of source code
v 17 U.S.C. s117
› allows the owner of the copy of a program to make or authorize the making of another copy or
adaptation of that program: (1) as an essential step of using the program in connection with a
machine; or (2) for archival purposes only.
v DMCA safe harbors (17 USC s. 512): not exhaustive
› Transitory digital network communications
› System caching
› Information residing on systems or networks at the direction of users
› Information location tools
(NB: failing to qualify for the above safe harbors does not mean that D cannot claim other defences.)
 Circumvention of Tech Measures
v 17 U.S.C. sec 1201 (DMCA):
› (a)(1): No person shall circumvent a technological measure that effectively controls
access to a work protected under this title
› (a) (2): No person shall manufacture, import, offer to the public, provide, or otherwise
traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a
technological measure that effectively controls access to a work protected under this
title; (B) has only limited commercially significant purpose or use other than to
circumvent a technological measure that effectively controls access to a work
protected under this title;
v Universal City Studios, Inc. v. Corley, 273 F. 3d 429
› P’s TPM: Content Scramble System (CSS)
› D posted the decrypting program DeCSS’s code on website for people to
download; and linked its site to others.
ONLINE
GAMES AND
COPYRIGHT
 Copyright and Online Games
v What can be protected by copyright?
› The whole game
› Computer code of the game
› Graphic user interface (GUI)
› Music, dialogue, scene, setting images, character images within the game
v What are not protected?
› Plot,theme and concepts
› Doctrine of merger and doctrine of Scènes à faire
› Game rules? à borderline between idea and expression.
v Who owns copyright?
› Peoplewho create the game
› Employer owns copyright for “work-made-for hire”
› How about the players?
 Nat’l Copyright Laws on Online Games
v Canada and Singapore: computer programs
v South Korea: audiovisual works
v Italy: a single complex multimedia work.
v Indonesia: a new type of works
v US, Japan, and France: distributive approach -- “legal protection of the video
game must be found separately, according to the specific nature of each work.”
(Andy Romas)
v China: courts and scholars are divided and adopted one or more of the above
approaches.
› Beijing High Court Guidelines for the Trial of Copyright Infringement Cases (2018)
› Article 2.14, “Static game images can be protected as works of fine art; continuously
dynamic game images can be protected as cinematographic works; and the whole
game can also be protected as computer software”.
› Article 2.15: “each element of an online game may constitute a work individually”
 Infringing Scenario
v Making an unauthorized copy of a game and selling it (e.g., burn a copy of
Doom II on CD and sell it) = infringement.
› but making a backup copy of a game you are licensed to use à not.
v Distribute a backup copy of a game which is licensed (e.g., putting the copy
online for downloading) = infringement
v Copying major parts of the source code of the game, even if the new game
looked completely different = may be infringement.
v Copying major element of the GUI (the “look and feel”) = may be infringement.
v Taking a major character from a series to incorporate it into one’s own series =
may be infringement.
v A Game Genie (or Action Replay or Game Shark) = not an infringement, but
plugging a card into an arcade machine to speed up play is infringement.
(source: Law of the Game, June 6, 2007)
 Idea/expression & Doctrine of Scène à Faire
v Atari Inc. v. Amusement World Inc., 547 F. Supp.
222, 225. (D. Md. 1981)
› The game Meteors merely copied the idea of a spaceship
combating space rocks, and thus did not attract copyright
infringement.
› The expressions such as the splitting of space rocks after
being destroyed were inevitable to such a genre of game,
and thus non-copyrightable.
v Atari, Inc. v. North American Philips Consumer
Electronics Corp., 672. F. 2d 607 (7th Cir. 1982)
› Both games entailed the idea of “a player symbol being
guided through a. maze gobbling up dots while being
chased by several enemies” and the inclusion of
inevitable expressions such as the maze and the dots
should not attract copyright infringement.
 Plots, characters, settings & background art, etc.
v Blizzard Entertainment v. Lilith Games (2015)
› P alleged that D’s “DotA Legends” and “Heroes
Charge” copied the characters, settings, terrain,
background art of its “Warcraft works”
› Court: P failed to prove that its characters have
met the three tests: (1) have physical as well as
conceptual qualities; (2) are sufficiently
delineated to be recognizable as the same
characters whenever it appear, e.g., displaying
consistent, identifiable character traits and
attributes in different productions; (3) are
especially distinctive and contain some unique
elements of expression. (DC Comics v. Towle)
 Game Rules
v Game rules lie at the core of the R&D of video games, requiring complex
algorithms and sophisticated design to ensure the balance and
compatibility of different rules, the continuous attraction to players, and
the strong playability of the video games.
v Europe: cannot be protected by copyright (Boyden, 2011)
v The US: should be protected depending on the circumstances to reduce
piracy. Tetris Holding, LLC v. Xio Interactive, Inc. 863 F.Supp.2d 394 (D.N.J. 2012)
v China: in earlier years, rules of games are treated as “idea”, therefore not
protected by copyright.
› Blizzard v. Youyi Network (2014): Combination of cards and card sets are in
essence game rules, and therefore not copyrightable. But the D “exceeded the limit
of legitimate borrowing and imitation between competitors in the game industry, and
had the nature of unfair competition.”
v Recently, courts started to treat game rules as “expression” to be copyrightable.
v Yumeide Co. and Chuanji IP, Ltd. v. Guangzhou Sanqi Entertainment Tech. Ltd.,
Guangzhou Internet Court (2019)
› “football rules such as ‘the team scoring more goals wins’ … are not copyrightable,
but individualized designs like the specific types of players and their
offensive/defensive skills can go beyond ‘idea’ and constitute ‘expression.”
v Suzhou Woniu Digital Tech. Inc., Ltd. v. Chengdu Skymoon Interactive Tech.
Inc., Ltd. Suzhou Intermediate Court (2015)
› The game rules of this case were expressions and not ideas because they were not
abstract rules but rather specific instructions that had been expressed in words or
through a series of continuing images on the screen, which the game players could
read and interact with.
› However, a general and abstract rule of game which does not become a part of
player’s gaming experience is merely an idea that was not copyrightable.
 Sound and Images
v Stern Electronics Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982 )
v P was licensed to distribute a Japanese game developer Konami’s game
“Scramble” (for side-scrolling shooter). D sold “Scramble 2” which imitate
the sound and images of P’s game. P sued D for copyright infringement
of the copyright of its “audiovisual work”
v D argued that the copyright registration of the audiovisual work was
invalid because (1) the images and sound were produced by the
underlying code, thus not original, (2) the images varies based on the
player’s action, thus not fixed.
v The 2nd Circuit ruled that the images and sounds of the game were: (1)
original, as they do not completely depend on underlying program; (2)
fixed, as the overall “look and feel” of the game remain fixed regardless of
the player’s action.
 Right of User to Modify Video Games
v “Game modding: a process whereby players alter, add to or delete game codes
using ingame editors or external software development kits to change one or
more aspects of a game, such as how it looks or behaves, including but not
limited to levels, characters, weapons, items, maps and mission scenarios.” (Wiki)
v Should the player-contributed content (PCC), or modding/Mods, be allowed?
v Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. 964 F.2d 965 (1992)
› What can players do by using Galoob’s Game Genie, and how does the Game
Genie function?
› What right did Nintendo allege to be infringed by Galoob and why?
› What is the “derivative work” under 17 USC s.101? Is Game Genie a derivative
work of the Nintendo system? Why?
› Even if it was a “derivative work”, is it a fair use? How did the court analyze the
four factors?
 Online game live streaming
v Refers to the service that streamers use video as a carrier to show and
explain their own or others’ game process to the public in real-time
through the network or TV.
v Two types:
› Games sponsored by various types of tournaments, e.g., League of Legends, which
are distributed via a pre-drafted agreement.
› Individual streamers open accounts on live streaming platforms and live streaming
their own games.
v “2020-2026 China Game Live Industry Competition Statute and Investment
Value Research Report” (Wisdom Research Consulting):
› China’s live game streaming user scale reached 0.26 billion in 2018.
› Revenue from competitive game live streaming was 50.3% of the whole revenue of
live-streaming platforms, and market size reached 20.81 billion RMB.
 Online Game Competition: copyrightable?
v Shanghai Yaoyu Co. v. Guangzhou Douyu Co (2016). D streamed P’s
e-sports online game without authorization.
› Shanghai Yangpu District People’s Court held that since there was no script
or other prior design for the game in question, the game videos was a
dynamic picture formed by several players from both sides by the game
rules and through their respective operations, which was an objective and
intuitive expression of the ongoing game, the game process was random
and irreproducible, and the game result was uncertain. Therefore, the game
video does not belong to the works under the Copyright Law, and the
defendants use of the game videos of the event in question does not
constitute an infringement of copyright.
Online Game Live Streaming: infringing/fair Use?
v Some argued that “copyright holders need to openly express an
intent to profit from public gaming events in order to have any
chance of attacking a fair use defense” (Jihan Joo, 2011)
v Japan: live game streaming is “tolerated infringement”
v Europe: streaming VGs infringes the game developer’s right of
communicate their works to the public, but freedom of expression
can and should be used to rein in their rights in certain cases”
(Eirik Jungar, 2016)
v China: some argued for fair use; but others deem live streaming
infringement of “other rights” under CL art. 10(17).