13 Multi-Licensing Model (Open and Closed Source) and
Software Protection: Revisiting the Proposed Sui Generis
Software Protection Models (*)
Invited Researcher: Vikrant Narayan Vasudeva (**)
There has been extensive discussion on the mode of intellectual property protection for software – copyright,
patent, or sui generis. The sui generis approach essentially emphasize on attaining a balance between the rights
granted by copyright and patent. Eventually, computer programs per se are protected by copyright, whereas
technical applications of computer software are protected by patent law. The open source software licensing
structure has emerged as a novel outlook towards copyright and patent law. The multi-licensing scheme utilized
by certain corporate entities involving licensing of software under two structures- one of which is open source
and the other “closed” source/“proprietary” has developed relatively recently. Studying the manner in which thismulti-licensing scheme is applied reveals similarity to the suggestions made by the various sui generis models
for software protection. Perhaps this is an indication of and validation that the software industry has evolved tosuch an extent that there needs to be a rethink of the current methods of software protection and how a bettermodel could be developed.

Ⅰ Introduction
Since 1960s onwards and especially in the
1970s and 80s there has been extensive
discussion on the mode of intellectual property
protection for software – copyright, patent, or sui
generis. The sui generis approaches essentiallyemphasize on attaining a balance between therights granted by copyright and patent laws.
The industry relied primarily on trade secret
law and contract law as the mode of software
protection initially. Eventually, copyright law waschosen legislatively as the vehicle for software
protection. Judicial recognition soon allowed
patent protection as well. Soon industry started
recognizing technological protection measures as
another option and their efficacy wasstrengthened by legislative and judicial support.
Several occurrences in the past three
decades highlight the developing fissures in themode of software protection. Other developments
highlight the increasing acceptance and ease in
implementing sui generis protection.
Correspondingly, the open source software
licensing structure has emerged as a novel
outlook towards copyright law.1 The multi-licensing
scheme is utilized by certain corporate entities,
where the software is licensed under two or morelicensing structures- one of which is open source
and the other “closed” source/ “proprietary.” This

allows the propagating entity to benefit from boththe structures.
The
mannerof applicationofthemulti-licensing scheme reveals a close approximate
to the suggestions made by various studies
supporting the sui generis models for software
protection. Perhaps this is an indication that thesoftware industry has evolved from the 70s and
80s to such an extent that there is a need torethink the mode of protection accorded tosoftware.

Ⅱ Legal Protection of Software
Software development initially was usuallyon an individual scale and not mass-produced.
Trade secrets and individually tailored contracts
were traditionally used to protect software. With
the evolution and widespread usage of computer
technology, individually tailored licenses gave
way to mass-market software licenses. 1960s
onwards, copyright law too began to be used toprotect software.2 1970s saw discussions emerge
as regards software patents 3 and sui generis
proposals.
In the international arena, WIPO made sui
generis proposals for software protection.4 Several
academic studies too emerged as regards software
protection during this period, viz. Galbi,5 Menell,6Samuelson, 7 Stern, 8 Karjala 9 and several other(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2011
entrusted by the Japan Patent Office.
(**) Doctoral Scholar, Indian Law Institute, India●

IIP Bulletin 2012 Vol.21

1 ●academics.10
In Japan, The Ministry of International Tradeand Industry (MITI) Study Committee on Legal
Protection of Software issued an interim report in1972 and found the copyright protection afforded
to software as inadequate.11 In 1973, the Second
Subcommittee of the Copyright Council set up by
the Agency for Cultural Affairs (Bunka-cho)
submitted the ACA a report supporting copyright
law as the mode of protection for software
requiring minimal changes.12 In 1983, Information
Industry Committee, Industrial Structure Council
set by MITI submitted an interim report thatrecommended a sui generis legislation to protect
computer software- the Program Rights Law.13 In
1984, the Sixth Subcommittee of the CopyrightCouncil set up by the Agency for Cultural Affairs
released an interim report recommending thatJapan follow copyright law protection forsoftware. 14 Due to heavy U.S. and European
protest and lobbying, the Agency for Cultural
Affairs’ recommendation was followed.15
Eventually,
softwareprotection
was
explicitly brought under the ambit of copyrightprotection.16 The 1970s saw emergence of patentlaw protection and by the 1990s they had
increasingly become the favoured mode ofsoftware protection.17 Later developments led totechnological measures also protecting software.
The possibility of reverse engineering to gain
unauthorized access has been countered via law.18
International treatises, primarily The Trade
Related aspects of Intellectual Property Rights(TRIPs) Agreement further fortified copyright
law’s position.19 Some theorists are of the viewthat TRIPs also allows patentability of computer
programs. 20 The WIPO Copyright Treaty has
reinforced TRIPs position.21
With evolution of technology and software,and its increased adoption, usage and diversity of
application, the calls for change have been
becoming
increasingly
strident;
severaldiscussions as regards amendment to existing
copyright law 22 and patent law 23 have been
posited to better accommodate software.
Simultaneously, discussions regarding sui generis
protection have been becoming increasingly
prominent in academia.24 There have been dissents
too against sui generis protection.25

Ⅲ Need of a Sui Generis Regime
Several occurrences in the past three
decades highlight the developing fissures in themode of software protection. Other developments●

highlight the increasing acceptance and ease in
implementing sui generis protection.
1

The Software Industry

As personal computing evolved andtechnology became more accessible andaffordable, programs have become increasinglyuser oriented and are increasingly permeating
society. Emergence of the Internet phenomenon
has fuelled software variety, proliferation anddispersion. It has also created new avenues forsoftware applications to develop. Software’s dual
nature is increasingly becoming evident – it canbe both tangible and intangible and sometimes thedual nature is simultaneously applied orrevealed.26 Software industry is largely based on“network effects;” this effects another mode ofpromoting reliance on a particular software and ina manner its indirect protection. User innovation
has presented a new paradigm in softwaredevelopment; a prominent example being open
source software.
2

Legal Protection of Software

Copyright law protects expressions and not
the underlying ideas. For computer software, ittransitions to protection of the expression but not
the underlying functionality.27 This allows several
expressions of the same innovation to exist.
Software patents have been a dynamic field.
From being unpatentable subject matter, torequiring an actual physical embodiment to reflect
integration became a requisite for grant ofprotection. This slowly made way for a token
physical embodiment and now a computer programon a disk too is considered to be patentable.28 This
dilution in stance grants recognition to thetangible/ intangible and functional/ industrial
character of software which does not conform to
the traditional notions of subject matter covered bypatent law as against copyright law. The scenario
has evolved to such an extent that Mikus argues
that the physical embodiment criteria should becompletely done away with.29
Currently layering of protection is being
done where the components are protected bymore than one set of protection options. Contract
law is increasingly being used where software is
now licensed instead of sold to avoid exhaustion
and first sale liabilities.30 Similarly, in addition tocopyright law, trade secrets or technologicalmeasures are often used to protect software;these measures, in turn are further protected by
2 ●IIP Bulletin 2012 Vol.21

laws regulating and monitoring fair use,anti-circumvention, reverse engineering andinteroperability. 31 Thus, layering of laws has
become a “… tool that copyright holders haveused to recalibrate the balance of rights among
themselves, their users, and their competitors.”32
The need to have layering of laws questions theefficacy of the existing regime for software
protection.33 Overlapping protection and layeringof laws also increases transaction costs, where
investment has to be made in each form ofprotection separately.
3

Evolving Landscape of Technology-Law
Interaction

Information products are increasingly
becoming hybrid where distinguishing between
the real and virtual is becoming complicated.
Traditional roles of hardware and software are
increasingly becoming functionally interchangeable.
This complicates traditional notions of applicationof intellectual property laws. Prominent examplesof the complexity and dichotomy arising out oftechnological integration are online storage, cloudcomputing, interface protection, and businessmethod patents.
4

Legal Recognition of Protection for
Evolving Technological Arenas

The past decades have seen legal recognition
being accorded to several arenas that would
ordinarily have been attempted to be accommodated
under the traditional intellectual property laws.
“… several ‘carve out’ statutes have beenenacted for the special protection of certain
intellectual property that shares both functionaland expressive characteristics.” 34 Prominent
examples are Utility Model laws, 35 Design
protection, 36 Semiconductor Chip protection, 37
Vessel Hull Design protection, 38 and Databaseprotection. 39 Even within copyright and patentlaws greater clarity has been attempted to beachieved as regards computer software. This canbe seen by virtue of the EU Directive on Legal
Protection of Computer Programs 40 and debate
on EU Proposal for a Directive on the Patentabilityof Computer-Implemented Inventions. 41 These
have furthered the arguments to recognize sui
generis protection for software.42
5International Harmonization of Laws

consensus is relatively more conducive. Several
attempts at achieving international harmonization
are being and have already been made. The TRIPs
Agreement is a prominent example. U.S. has also“added business method patenting to theinternational intellectual property harmonization
agenda.”43 The TRIPs Plus arrangement is being
promoted too, which creates bilateral agreement
channels for negotiation.

Ⅳ The Multi-Licensing Approach
As opposed to the generically referred“conventional,” “proprietary,” “closed,” “hidden,”“restrictive” source code model, the open source
software model emphasizes on unrestricted
accessibility to the source code of the programand a community based development model. Open
source does not simply mean freedom of access tosource code. It includes much more depending
upon the standard setting body spearheading the
project.44
The open source software community
essentially employs two polar outlooks towards
the treatment of improvements – one where thedeveloped code and improvements are donated ingeneral under a license which allows complete
access to the code even allowing it to be madeproprietary. The second option and more
important from a legal point of view is where theimprovements developed need to be licensed
under the terms of the same license as the initialcode was. This allows retention of control over
improvements by the licensor. The former are
called Academic licenses while the latter,
Reciprocal licenses.
The reciprocal obligation is known by
various informal terms, viz. ‘Viral’, ‘Taint’,‘Infectious’, and ‘Copyleft.’ Copyleft is a way ofusing of the copyright on the program. It is a
general concept, one of whose specific and mostprominent implementation is in GNU GPL.45
The multi-licensing scheme is utilized bycertain corporate entities,46 where the software
is licensed under two or more licensing
structures- one of which is open source and theother “closed” source/ “proprietary.” This allows
the propagating entity to benefit from both thestructures. “[T]he dual licensor offers bifurcatedterms, and the distributor-licensee chooses tooperate on one side of the bifurcation or the other.
The originating dual licensor, however, canincorporate software revisions it finds on the
open source side into the proprietary side.”47

The present scenario for building international●

IIP Bulletin 2012 Vol.21

3 ●Ⅴ Comparative Analysis of Sui
Generis Studies for Software
Protection with the Multi-Licensing(Open
Source-Closed
Source)Approach and Proposal for a Model
Software Law
Perhaps the MITI (Information Industry
Committee,
Industrial
Structure
Council)
proposal (hereinafter, simply called “MITI” or“MITI proposal”) proposal48 was a bit ahead of
the times and not the most frictionless policy
capable of implementation in the 1980’s. However,
the manner in which the software field has
developed indicates that most of its proposals are
extremely relevant currently.
A comparison of the MITI and other sui
generis proposals with the multi-licensing
approach indicates a number of similarities. The
multi-licensing approach seems to validate thehypothesis of the sui generis proposals to aconsiderable extent.
1

Conditions for Grant of Protection

Copyright law requires originality, whilepatent law requires novelty, utility andnon-obviousness for grant of protection. Stern
proposes an amalgamation of the criteria forsoftware as “… originality, novelty, and technicaladvance.”49 Additionally, the criteria of utility andsweat of the brow50 too need to be considered.
The originality-novelty balance should ideally
apply in such a manner that neither cloning nor
independent creation of a substantially similar
product would be allowed. Copying should not be
restricted to literal copying, but as under patent
law, any obvious equivalents too should be
restricted. 51 GPL’s reciprocity obligation 52
controls any “work based on the program,”53 or
any modification 54 thus constituting a “covered
work.” 55 Transposing this analogy to a legal
regime, ‘sweat of the brow’ doctrine could beaccommodated. Possibly, the term of protection
granted to elements covered by the ‘sweat of thebrow’ doctrine could be less. Furthermore,categorization of stringency of criteria for grant
along a range could be developed.
2

Scope of Protection: General

Demarcating the parameters of software isdifficult and furthered by the fact that the sui
generis model would need to accommodate boththe fields of copyright and patent laws.56 MITI in●

1983 rightly conceptualized that “software
includes everything related to computer
applications [source programs and object
programs … flowcharts, manuals, ideas,algorithms, etc.].” 57 However, as regards the
subject matter of protection, MITI stated that
“Programs (source programs and object
programs) are subject to the protection.”58 It ispreferable to have a general broad classification
similar to the one suggested by MITI. However,the subject matter of protection, instead of justbeing source code and object code should be
extended to the complete arena of computer
software, thus encompassing source code, object
code, algorithms, manuals, flowcharts, methods of
doing business etc.59 Ideas per se though should
be excluded.
3

Scope of Protection: Incremental Innovation

A considerable amount of software
improvements may not be eligible for protection
under the traditional intellectual property
regime.60 Also, the nature of software industry
and current laws tend to closet building blocks. “Amarket-oriented legal regime should avoid
wasteful reduplications of effort.”61 Open source
approach, via its copyleft concept has adopted aunique method of managing incremental
innovation which could be a workable option forthesoftwareindustry.
Analogously,
thecontributors would also have a stake in therevenue generated from the parent software. The
Manifesto advises use of blocking periods, during
which the rights granted would be considerable
curtailed. 62 Furthermore, it advises that suchblocking periods could selectively distinguishbetween markets.63
4

Duration of Protection

Sui generis studies consider the term ofprotection under copyright and patent laws to beinordinately long in context of software, considering
its utilitarian character,64 short innovation and life
cycle, 65 and non-access to ‘building blocks.’ Itneeds to be considered that just recouping
research and development costs is not sufficientin the field of software. Software as an industry
needs to build considerably on preexisting code.
If the code already developed is taken into the
public domain after every 2-5 years then there isconstant whittling away at the base on which a
software company rests. Also, later versions of asoftware incorporate a considerable amount of
4 ●IIP Bulletin 2012 Vol.21

code from earlier versions. Hence, a shortinnovation cycle cannot be an excuse forcompletely revoking protection for an earlier
version as soon as the next version becomes
available. The multi licensing scheme, essentiallyfavours a long term of protection with diluted
rights for one channel and strict rights for thesecond channel. Comparing with the multi
licensing scheme but considering the otherleeway allowed under the proposal, especially thealmost immediate protection and compulsory
licensing, the term of protection could perhaps be
thirty years. Perhaps in the future this period ofprotection could be reduced.
5

Grant of Rights

MITI proposed the grant of right of use,alteration (limited extent), reproduction andlending a computer program.66 Almost analogously,
GPLv2 grants the rights to copy, distribute andmodify.67 GPLv2 and v3 though do not mention ause right, mention the right to run.68 Rosen is of
the view that right to run might be actually a rightto use. 69 GPLv3 also includes a Patent clause
which grants as far as any contributions areconcerned most of the rights governed by patentlaw.70 Though GPLv3 does not grant a have maderight in its patent grant, it addresses the situationin the license. 71 Hence, under the proposed
Model Software Law the owner would have theexclusive rights to do and to authorize the rights
to use, reproduce, modify, make, have made andlease.
6

Moral Rights

MITI report advised against recognizing
moral rights in computer programs, 72 primarily
because of its commercial nature;73 the author by
virtue of moral rights should not be able tocontrol whether and when and in what form thework should be made public.74 Furthermore, thetechnical nature of software reduces the cultural
foundation of moral rights. MITI advises that“…where it is necessary to approve a moral right,
protection by the general principles of the Civil
Code is considered to be sufficient”75 The open
source approach implements in a limited manner
the spirit of moral rights; both GPLv2 76 andGPLv3 77 recognize the right of attribution
subject to contractual provisions. Considering the
successful utilization of the contractuallycontrolled right of attribution by the open source
approach to attract developers based on●

IIP Bulletin 2012 Vol.21

reputational reward, limited attribution right
could be granted under the Model Software Law.
7

Limitations on Exclusive Rights

Several usually recognized exceptions undercopyright law are also proposed under the Model
Software Law, viz. archival/ backup copy, copy for
maintenance or repair, Scenes a Faire, de minimis
use, equitable defenses and public domain
elements. As only a right of lease and not sale isbeing provided, 78 application of the exhaustion
doctrine would be extremely limited. Fair use
would also be recognized. GPLv3 explicitly states
this exception too. 79 Reverse Engineering ofsoftware has lately been an extremely tumulus
arena. To promote innovation, interoperability
should be encouraged. 80 Besides the “copyleft”
reciprocal obligation, GNU GPLv3 contains a
specific clause limiting usage of technologicalprotection measures. 81 It is preferable that theModel Software Law involves a mechanism wherean entity seeking interoperability be provided all
facilities by the owner of the original code so that
there should not exist any need to reverse
engineer at all. Such a right should differentiate
between private and commercial use. Forcommercial use, the right should follow thelicensing mechanism of being subject to blocking
periods and adequate royalty payments. 82 Sternsuggests debugging as an exception too.83 However,though it may be excepted for self use, upon
distribution, the same rules as under incremental
innovation and licensing would be applicable.
Innocent infringement too needs to be considered.
GPLv3 makes provision for reinstating of licenseboth temporarily and permanently hence
providing solace to inadvertent violators.84
8

Negotiated Licenses and Compulsory
Licensing“[L]arge firms stifle competition by reserving
broad markets of algorithms, then refuse to license(or demand high license fees) or force competitors
to waste resources inventing less efficientnoninfringing workarounds.”85 Hence, sui generis
studies favour compulsory royalty bearing
licensing for software 86 ensuring a constantrevenue stream, 87 avoiding duplication, thus
ensuring efficiency 88 and securing incremental
innovation.89 GPL’s “copyleft” reciprocal obligation
clause is a type of automatic compulsory licensing
provision. “The compulsory licensing provision
would require third parties wishing to license the
5 ●rights holder’s technology first attempt tonegotiate a license with the rights holder on‘reasonable commercial terms and conditions.’”90
Compulsory licensing would involve an analysisof the market dynamics. The status of thelicensee- whether commercial or amateur and thereason for the license- whether commercial use
or personal use. There could also be an option ofa reciprocal obligation as exists under open
source licensing or the option of a Right of First
Refusal. Collecting societies could manage
compulsory licensing issues. 91 Currently too,several open source groups manage licensing in a
fashion akin to collecting societies.
9

Infringement

Software is unique in that it involves bothabstract and literal aspects, stock components
and unique components, and a blend of artistic,
aesthetics and functional. Each aspect needs to beapproached differently to define the infringement
criteria. Observing the jurisprudence in copyrightand patent laws highlights the difficulties of suchan endeavour. A major difference between
infringement analysis under patent law andcopyright law is independent creation. Given thebalance being attempted to be achieved under the
proposed Model Software Law, “[t]hat thedefendant did not actually copy the advance andindependently developed the infringing productprobably should not be a defense.”92 Soderquist’s
proposal of applying the doctrine of equivalents tosoftware should probably be followed. 93
Samuelson et. al. developed a considerable thesis
to highlight the similarity dimension regarding
two products 94 Varying determinative criteria
should be applied to determine infringement of
the abstract components as against those of theliteral components. As regards the abstract
components, ‘use by embodiment’ and ‘trafficking
in embodiments’ have been suggested as
constituting infringement.95 The merger doctrine
should not be applicable under the Model
Software Law.96 Also, varied levels of infringement
should apply to the various software components
depending on social utility, aesthetics and ease indetermining infringement.97
10 Remedies
Injunctions are a usual remedy ininfringement cases. However, in context ofsoftware depending on when the infringement is
detected and the level of subsequent●development on that particular software,completely preventing usage of the infringing
software might be harmful to the industry. Hence,
another remedy of allowing usage subject toroyalty payments for both past and future use
would have to be made available. Such a royalty
would need to imbibe a penalty effect and behigher than that which would have been available
under the compulsory licensing scheme. The
level of the royalty scheme could be based on adetermination whether the infringement was
willful or innocent. GPLv3 makes provision forreinstating of license both temporarily andpermanently, hence providing solace to inadvertent
violators. 98 The MITI proposal provides theremedies of “injunction, measures to restore
business reputation, estimation of damages andpenal provisions”99 However, “[i]t is questionable
whether criminal penalties are appropriate
here.”100 Impounding and disposition of infringing
articles would also be available.
11 Dispute Resolution
Need of technical knowledge in the legal
experts, maintaining confidentiality, and the short
lives of software are some of the motivating
factors according to MITI which prompt a simple,
fast and fair means for dispute settlement as
regards computer software.101 Hence, the MITI
report favours “a mediation, conciliation,
arbitration and judgment system” 102 instead of
adversarial court procedures. 103 Most cases ofopen source code are decided through private
settlement. Considering the amount of open
source code in use and the duration for which it
has been in use, litigation in court has beensparse and decided litigation even less. Thisshows that private settlements are an effective
software dispute settlement procedure.
12 Administrative Procedure
Neither the instantaneous according ofprotection under copyright law, nor the elaborate
procedures under patent law are suitable forsoftware. As regards the Model Software Law,
instead of defining the claims, it is preferable thata deposit of the complete code be done, and assoon as the deposit and a basic form is submitted,
registration be accorded. Provision for keeping
the code secret could also be made or an escrowprocedure could be established. “The right would
thus be much easier to obtain than a standard
patent but not automatically granted like6 ●IIP Bulletin 2012 Vol.21

copyright.”104
Complementing this stance, time consuming
administrative procedures like examination
should be postponed till an infringement action isbrought, whereupon such determinations would
be made.105 Such a provision should be especiallysecured against frivolous challenges. This
coupled with the Peer-To-Patent (P2P) procedure
could
ease
the
examination
procedure106
immensely.

Ⅵ Conclusion

In this research, the term open source has been usedin its generic-industry recognized form encompassing
the specific terms “Open Source software,” “Free
Software,” “Libre Software” and other similarsoftware in the category. However, primarily, the focusof this research is on the GNU General Public License(GPL) propagated by the Free Software Foundation.

●

IIP Bulletin 2012 Vol.21

3

4

5

This research has attempted to make a casefor the need of a sui generis model for software
protection and what should be its form. Computer
software’s categorization under copyright law andoutside industrial property shifts the focus of thelaws on to the individual, while the demands ofthe industry require it to be recognized asindustrial property; this creates a degree offriction. The proposed Model Software Law inthis research is primarily based on therecognition that software tends to fall more in thearena of industrial property than copyright law.
This research bases the sui generis approach onthemulti-licensing
scheme.
Firstly,amulti-licensing model tries to establish therelevant balance between open source softwareand closed-source software, reaping the benefitsof both the approaches. It is preferable that any
innovation promoting sui generis scheme does thesame. Secondly, this research submits that themulti-licensing model is a close approximation toseveral proposed sui generis models of software
protection, which too have aimed to balance theinterests between patent and copyright laws.
Lastly, observing from the practice of themulti-licensing scheme, it would allow greater
predictability of how a sui generis software
protection model would function. The success ofsuch a sui generis scheme would significantly reston building consensus. Opportunely, successes ofachieved
andattempted
harmonization
discussions have established channels which can
be availed of in accomplishing a consensus.

1

2

6

7

8

9

10

7 ●

See generally, Jack M. Haynes, Computer Software:Intellectual Property Protection in The United States andJapan, 13 J. Marshall J. Computer & Info. L. 245(Winter, 1995).
Seegenerally,
NOBUHIRO NAKAYAMA,LEGALPROTECTION OF SOFTWARE (Sofutowea no hoteki hogo),
9-14 (New ed. 1988). Ch. 1, Sect. 2, Legislative
History.
See, Model Provisions on the Protection of Computer
Software, WIPO No.814 (E) (1978) [Hereinafter, WIPO
Model Provisions, 1978]; Draft Treaty for theProtection of Computer Software, WIPO, LPCS/II/3(1983) [Hereinafter, WIPO Draft Treaty, 1983].
Galbi, Proposal for New Legislation to Protect Computer
Programming, 17 (4) Bulletin of the Copyright Societyof the U.S.A. 280 (1970); Galbi, The Prospect of Future
Legislation and Court Action Concerning the Protectionof Programming, 13 Jurimetrics Journal 234 (Summer
1973).
Peter S. Menell, Tailoring Legal Protection for
Computer Software, 39 Stan. L. Rev. 1329 (July, 1987);
Peter S. Menell, The Challenges of ReformingIntellectual Property Protection for Computer Software,
94 Colum. L. Rev. 2644 (1994).
Pamela Samuelson, CONTU Revisited: The Case
Against Copyright Protection for Computer Programs in
Machine-Readable Form, 1984 Duke L.J. 663 (1984);
Pamela Samuelson, Creating A New Kind of Intellectual
Property: Applying the Lessons of The Chip Law toComputer Programs, 70 Minn. L. Rev. 471 (December,1985); Pamela Samuelson, Benson Revisited: The Case
Against Patent Protection for Algorithms and other
Computer Program-Related Inventions, 39 Emory L.J.
1025 (Fall, 1990); Pamela Samuelson, Randall Davis,
Mitchell D. Kapor, & J.H. Reichman, A Manifesto
Concerning the Legal Protection of Computer Programs,
94 Colum. L. Rev. 2308 (December, 1994).
Richard H. Stern, The Bundle of Rights Suited to New
Technology, 47 U. Pitt. L. Rev. 1229 (Summer, 1986);
Richard H. Stern, A Sui Generis Utility Model Law as
An Alternative Legal Model for Protecting Software, 1 U.
Balt. Intell. Prop. L.J. 108 (Spring, 1993); Richard H.
Stern, Solving The Algorithm Conundrum: After 1994
in The Federal Circuit Patent Law Needs A Radical
Algorithmectomy, 22 AIPLA Q.J. 167 (Spring, 1994);
Richard H. Stern, On Defining The Concept ofInfringement of Intellectual Property Rights in
Algorithms and other Abstract Computer-Related Ideas,
23 AIPLA Q. J. 401 (1995).
Dennis S. Karjala, Lessons from the Computer Software
Protection Debate in Japan, 1984 Ariz. St. L.J. 53(1984); Dennis S. Karjala, The Limitations on theProtection of Program Works Under Japanese CopyrightLaw, 8 Mich. YBI Legal Stud. 25 (1987); Dennis S.
Karjala, Copyright, Computer Software, and The New
Protectionism, 28 Jurimetrics Journal 33 (Fall 1987);
Dennis S. Karjala, The Protection of Operating Software
under Japanese Copyright Law, 29 Jurimetrics Journal
43 (Fall 1988); Dennis S. Karjala, A Coherent Theory
for The Copyright Protection of Computer Software andRecent Judicial Interpretations, 66 U. Cin. L. Rev. 53(Fall, 1997).
Duncan M. Davidson, The Future of Software
Protection: Common Law, Uncommon Software, 47 U.

11

12
13
14
15
16

17

18

19

20

21

Pitt. L. Rev. 1037 (Summer, 1986); Max W. Laun,
Improving the International Framework for theProtection of Computer Software, 48 U. Pitt. L. Rev.
1151 (Summer, 1987); Rochelle Cooper Dreyfuss,
Information Products: A Challenge to Intellectual
Property Theory, 20 N.Y.U. J. Int'l L. & Pol. 897(Summer, 1988); Tohru Nakajima, Legal Protection ofComputer Programs in Japan: The Conflict Between
Economic and Artistic Goals, 27 Colum. J. Transnat’l L.
143 (1988-1989); Glynn S. Lunney, Jr., CopyrightProtection for ASIC Gate Configurations: PLDS,
Custom and Semicustom Chips, 42 Stan. L. Rev. 163(November, 1989); John C. Phillips, Sui GenerisIntellectual Property Protection for Computer Software,
60 Geo. Wash. L. Rev. 997, 1012 (1992); A. SamuelOddi, An Uneasier Case for Copyright than for PatentProtection of Computer Programs, 72 Neb. L. Rev. 351(1993);
Kenneth
W.
Dam,
Some
Economic
Considerations in the Intellectual Property Protection ofSoftware, 24 J. Legal Stud. 321 (June, 1995).
See, KENNETH L. PORT AND GERALD PAUL MCALINN,
COMPARATIVE LAW: L AW AND THE LEGAL P ROCESS IN
JAPAN, 670 (Carolina Academic Press) (2 nd Ed. 2003)
citing Welch and Anderson, Copyright Protection ofComputer Software in Japan 11 Computer J.L. 287(1991).
See generally, Nakayama, supra n. 3.
Id.
Nakayama, supra n. 3.
Id.; Also see, Haynes, supra n. 3.
See, U.S. Copyright Act 17 U.S.C. § 101 & § 102(1976); (U.S.A.) H.R. Rep. No. 96-1307, Part 2, 96th
Cong. 2d Sess. 19 (1980); (U.S.A.) H.R. Rep. No.
94-1476, Cong., 2d Sess. 54 (1976); S.31, (Australia)
Copyright Act, 1968; Art. 10(1) (ix), Japan Copyright
Law (1970); European Union, Council Directive
91/250/EEC Legal Protection of Computer Programs,
OJ L 122, (May 17, 1991).
See, United States Patent and Trademark Office(USPTO), The Manual of Patent Examining
Procedures § 2106; USPTO Examination Guidelines
for Computer-Implemented Inventions, 61 Fed. Reg.
7478 (1996); Arts. 52(2) & 52(3), European Patent
Convention (1973); European Patent Office (EPO),
Guidelines for Examination in the European Patent
Office (2001); Japan Patent Office (JPO), Examination
Guidelines for Computer Software Related Inventions(1993); JPO, Examination Guidelines for Computer
Software
RelatedInventions(1997);
JPO,
Implementation Guidelines for Examinations inSpecific Fields, Chapter 1- Computer Software-related
Inventions (1999); JPO, Examination Guidelines for
Computer Software-related Inventions (2000)
Arts. 11 & 12, WIPO Copyright Treaty (1996); U.S.
Digital Millennium Copyright Act 17 U.S.C. § 1201
(1998);
European
Directive
2001/29/EC
Harmonisation of Certain Aspects of Copyright andRelated Rights in The Information Society (2001).
Art.10 (1), Agreement on Trade-Related Aspects ofIntellectual Property Rights (1995).
See, Eloise Gratton, Should Patent Protection be
Considered for Computer Software-Related Innovations?,
7 Comp. L. Rev. & Tech. J. 223 (Winter, 2003).
Arts. 4, 11 and 12, WIPO Copyright Treaty (1996).
●

22

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24

See, Kristina Soderquist, Yet Another Suggestion for
Solving the Computer Program Dilemma, 6 Va. J.L. &Tech. 14 (Fall, 2001); Catherine Parrish, Unilateral
Refusals to License Software: Limitations on the Right
to Exclude and the Need for Compulsory Licensing, 68
Brooklyn L. Rev. 557 (Winter, 2002); Susan Corbett,
What Ifs and other Alternative Intellectual Property andCyberlaw Story: What If Object Code Had Been Excluded
from Protection as A Literary Work in Copyright Law? A
New Zealand Perspective, 2008 Mich. St. L. Rev. 173(Spring, 2008).
See, Vincent Chiappetta, Patentability of Computer
Software Instruction as an “Article Of Manufacture:”
Software as Such as The Right Stuff, 17 J. Marshall J.
Computer & Info. L. 89 (Fall, 1998); Mark Aaron Paley,
A Model Software Petite Patent Act, 12 Santa Clara
Computer & High Tech. L.J. 301 (August, 1996); Chad
King, Abort, Retry, Fail: Protection for Software-Related
Inventions in The Wake of State Street Bank & Trust Co.
v. Signature Financial Group, Inc., 85 Cornell L. Rev.
1118 (May, 2000); Richard S. Gruner, Intangible
Inventions: Patentable Subject Matter for an
Information Age, 35 Loy. L.A. L. Rev. 355 (January,2002); Gratton, supra n. 20.
Glynn S. Lunney, Jr., E-Commerce and Equivalence:
Defining the Proper Scope of Internet Patents, 7 Mich.
Telecomm. & Tech. L. Rev. 363 (2000-2001); Toshiko
Takenaka, E-Commerce and Equivalence: Defining theProper Scope of Internet Patents Symposium:
Commentary: International and Comparative Law
Perspectives on Internet Patents, 7 Mich. Telecomm.
Tech. L. Rev. 423 (2000 / 2001); Vincent Chiappetta,
Defining the Proper Scope of Internet Patents: If We
Don't Know Where We Want to Go, We're Unlikely to Get
There, 7 Mich. Telecomm. & Tech. L. Rev. 289(2000-2001); Jean−Paul Smets−Solanes, Patent or Sui
Generis Right: What Protection Should Be Considered
for Software and other Intangible Innovations?, (2001);
Scott J. Hill, Restructuring The Law: Proposing A New
Section of Title 35 and The Effect Of Amazon.Com v.
Barnesandnoble.Com on Business Method Patents, 48
Wayne L. Rev. 1239 (Fall, 2002); Bruce Abramson,
Promoting Innovation in The Software Industry: A First
Principles Approach to Intellectual Property Reform, 8
B.U. J. SCI. & TECH. L. 75 (Winter, 2002); Aaron D.
Charfoos, How Far Have We Come, and Where Do We
Go From Here: The Status Of Global Computer Software
Protection Under The TRIPS Agreement, 22 NW. J. Int'l
L. & Bus. 261 (Winter, 2002); Richard S. Gruner,
Everything Old is New Again: Obviousness Limitations
on Patenting Computer Updates Of Old Designs, 9 B.U.
J. Sci. & Tech. L. 209 (Summer 2003); Vincent
Chiappetta, Trip-Ping Over Business Method Patents,
37 Vand. J. Transnat'l L. 181 (January, 2004); Allen
Clark Zoracki, When is an Algorithm Invented? The
Need For A New Paradigm For Evaluating an Algorithm
for Intellectual Property Protection, 15 Alb. L.J. Sci. &Tech. 579 (2005); Steven B. Toeniskoetter, Protectionof Software Intellectual Property in Europe: An
Alternative Sui Generis Approach, 10(2) University of
San Francisco Intellectual Property Law Bulletin(2005);
Matt
Flinders,
Protecting
Computer
Software--Analysis and Proposed Alternative, 7 J. High
Tech. L. 172 (2007); Katherine J. Strandburg, What if

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29

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33

34
35

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37

38

39

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There Were A Business Method Use Exemption to Patent
Infringement?, 2008 Mich. St. L. Rev. 245 (Spring,2008).
Jane C. Ginsburg, Four Reasons and A Paradox: The
Manifest Superiority Of Copyright over Sui GenerisProtection of Computer Software, 94 Colum. L. Rev.
2559 (Dec, 1994); John M. Griem, Jr., Against A Sui
Generis System of Intellectual Property for Computer
Software, 22 Hofstra L. Rev. 145 (1993-1994); Paul
Goldstein, Comments on A Manifesto Concerning The
Legal Protection of Computer Programs, 94 Colum. L.
Rev. 2573 (1994).
Davidson, supra n. 10 at 1072.
Abramson, supra n. 24 at 123; Karjala, Computer
Software, and the New Protectionism, supra n. 9 at 94;
Karjala, A Coherent Theory, supra n. 9 at 57.
See, footnote n. 17.
Jean-Philippe Mikus, Of Industrious Authors and Artful
Inventors: Industrial Works and Software at the Frontierof Copyright and Patent Law, 18 I.P.J. 187, 253 (Aug2004).
Stacey L. Dogan and Joseph P. Liu, Copyright Law and
Subject Matter Specificity: The Case of Computer
Software, 61 N.Y.U. Ann. Surv. Am. L. 203, 230 (2005).
Eg. WIPO Copyright Treaty; 17 U.S.C. § 1201 The
Digital Millennium Copyright Act, 1998.
Dogan and Liu, supra n. 30 at 228.
Samuelson, Creating A New Kind Of Intellectual
Property, supra n. 7 at 515; also see Gratton, supra n.
20 at 248.
Flinders, supra n. 24 at 195.
Art. 1, Paris Convention for the Protection ofIndustrial Property (WIPO, 1883); (Germany) Utility
Model Law, 1986; (Japan) Utility Model Act (Act No.
123 of 1959); (Korea) Utility Model Law (No. 952 of
1961).
Art. 25, Agreement on Trade-Related Aspects ofIntellectual Property Rights (1995); (U.S.) Patent Act,
35 U.S.C. § 171 (2000); EU Directive on the Legal
Protection of Designs 98/71/EC (1998).
See, Washington Treaty on Intellectual Property in
Respect of Integrated Circuits (1989); Art. 35,
Agreement on Trade-Related Aspects of Intellectual
Property Rights (1995); U.S. Semiconductor Chip
Protection Act of 1984 Act of Nov. 8, 1984, Pub. L.
98-620, 98 Stat. 3347 (17 U.S.C. §§ 901-14); EU
Directive on The Legal Protection of Topographies of
Semiconductor Products (87/54/EEC 16 December1986).
U.S. Vessel Hull Design Protection Act (Act of Oct. 28,
1998), Pub. L. 105-304, 112 Stat. 2860 (17 U.S.C. §§1301-1332).
Art. 10, Agreement on Trade-Related Aspects ofIntellectual Property Rights (1995); EU Directive on
the Legal Protection of Databases 96/9/EC (1996).
EU Directive on the Legal Protection of Computer
Programs (91/250/EEC) (1991).
The European Commission, Proposal for Directive on
the Patentability of Computer-Implemented Invention(CII Directive -2002/ 0047/COD) (2002).
Zoracki, supra n. 24 at 604; Flinders, supra n. 24 at
195-196.
See generally, Chiappetta, Trip-Ping, supra n. 24.
See, United Nations Development Programme, The●

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53
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International Open Source Network (IOSN), available athttp http://www.apdip.net/projects/2003/iosn (Last
visited on October 17, 2011) (Free/Open Source
Software (FOSS) is software that can be used, copied,studied,modifiedandredistributed
without
restriction); Also See, World Intellectual Property
Organization,
Open
Source,availableat
http://www.wipo.int/patent-law/en/developments/open_source.html (Last visited on October 17, 2011)(Generally speaking, open-source software refers tosoftware for which the source code (underlying
programming code) is made freely available for use,reading the code, changing it or developing further
versions of the software, including adding
amendments to it. Open source software is often used
as a general expression for many forms of
non-proprietary software, which differ principally inrespect of the licensing terms under which changed
versions of the source code may be further
distributed).
S.2(b) GNU GPLv2 (You may modify your copy or
copies of the Program or any portion of it, thus
forming a work based on the Program, and copy anddistribute such modifications or work … provided thatyou … cause any work that you distribute or publish,that in whole or in part contains or is derived from theProgram or any part thereof, to be licensed as a whole… under the terms of this License); S.5(c) of GPLv3(You may convey a work based on the Program, or themodifications to produce it from the Program …
provided that … You must license the entire work, as awhole, under this License … This License will
therefore apply … to the whole of the work, and all its
parts, regardless of how they are packaged).
See,
http://www.oss-watch.ac.uk/resources/duallicence2.xm
l (last visited on October 26, 2011) (MySQL AB's
database; Qt, a cross platform toolkit used to developGUIs, from Nokia (originally Trolltech); Berkeley DB,
a database system, from Oracle (originally Sleepycat
software);Asterisk,anopensourcetelecommunications software suite, from Digium).
Greg R. Vetter, Exit and Voice in Free and Open Source
Software Licensing: Moderating the Rein over Software
Users, 85 Or. L. Rev. 183, 224 (2006).
See, Ministry of International Trade and Industry,
Industrial Structure Council Information Industry
Committee, Interim Report, Dec. 1983 [Hereinafter,
The MITI Report], reprinted in Nobuhiro Nakayama,
Legal Protection of Software (Sofutowea no hotekihogo), 214 app. 2.
Stern, The Algorithm Conundrum, supra n. 8 at 218.
Samuelson et al., Manifesto, supra n. 7 at 2355.
Cf. WIPO Model Provisions, 1978 supra n. 4.
S.2(b) GNU GPLv2; S.5(c) GNU GPLv3.
S.0, GNU GPLv2.
S.0, GNU GPLv3.
S.0, GNU GPLv3.
Oddi, supra n. 10 at 447 (… [I]t is far from clear that a
sui generis system would provide bright lines at theinterfaces of patent and copyright, and this system
may indeed complicate an already unclear situation
with respect to the interrelationships of these titles ofprotection.).

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82

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84
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86

87
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The MITI Report, supra n. 48 at 221.
Id at 226. (Chapter V proposal for MITI Program Rights
Act,Outline(2)).
See, Paley, supra n. 23 at 377; Stern, The Algorithm
Conundrum, supra n. 8 at 213; Stern, Defining The
Concept of Infringement, supra n. 8 at 519 (1995);
Stern, Sui Generis Utility Model Law, supra n. 8 at 112.
Samuelson et al., Manifesto, supra n. 7 at 2365.
Id. at 2409.
Id. at 2371.
Id.
Samuelson, CONTU Revisited, supra n. 7 at 766.
Paley, supra n. 23 at 317; Toeniskoetter, supra n. 24 at
78; Zoracki, supra n. 24 at 595; Corbett, supra n. 22 at
181; Samuelson, CONTU Revisited, supra n. 7 at 766;
Stern, Bundle of Rights, supra n. 8 at 1250.
The MITI Report, supra n. 48 at 226 (Chapter V,
Proposal for MITI Program Rights Act, Outline (3)); alsosee, Paley, supra n. 23 at 374; WIPO Model Provisions,1978 supra n. 4 (S.5 Rights of the Proprietor); Art. 4,
WIPO Draft Treaty, 1983 supra n. 4.
S.0, GNU GPLv2; S.1, GNU GPLv2; S.2, GNU GPLv2.
S.0, Paragraph 2, GNU GPLv2; S.2, GNU GPLv3.
See, LAWRENCE ROSEN, OPEN SOURCE LICENSING:
SOFTWARE F REEDOM AND INTELLECTUAL PROPERTY L AW,
225 (2005) available at
http://www.rosenlaw.com/oslbook.htm (Last visited on
April 25, 2011).
S.11, GNU GPLv3.
S.2, Paragraph 2, GNU GPLv3.
The MITI Report, supra n. 48 at 222.
Id.; Karjala, Software Protection Debate in Japan, supran. 9 at 66.
Karjala, Software Protection Debate in Japan, supra n. 9
at 64; Max W. Laun, Improving The International
Framework for The Protection of Computer Software, 48
U. Pitt. L. Rev. 1151, 1177 (Summer, 1987).
The MITI Report, supra n. 48 at 222.
S.1, GNU GPLv2; S.2(a), GNU GPLv2.
S.5(a), GNU GPLv3; S.7(c), GNU GPLv3.
Cf. Paley, supra n. 23 at 347.
S.2, Paragraph 1, GNU GPLv3.
Samuelson, Creating A New Kind of Intellectual
Property, supra n. 7 at 524; But see, Stern, Bundle ofRights, supra n. 8 at 1252.
S.3, GNU GPLv3.
Samuelson et al., Manifesto, supra n. 7 at 2404; Paley,supra n. 23 at 344.
Stern, Defining The Concept of Infringement, supra n.
8 at 484.
S.8, GNU GPLv3.
Paley, supra n. 23 at 340 citing John Swinson,
Copyright or Patent or Both: An Algorithmic Approach toComputer Software Protection, 5 Harv. J. L. & Tech. 145
at 168-69 (1991).
The MITI Report, supra n. 48 at 277 (Chapter V
Proposal for MITI Program Rights Act, Outline(8));
Samuelson et al., Manifesto, supra n. 7 at 2371;
Toeniskoetter, supra n. 24 at 77; Paley, supra n. 23 at
378.
Samuelson et al., Manifesto, supra n. 7 at 2414.
Id. at 2418; Karjala, Software Protection Debate inJapan, supra n. 9 at 68.
Samuelson et al., Manifesto, supra n. 7 at 2415;●

Toeniskoetter, supra n. 24 at 79.
Toeniskoetter, supra n. 24 at 77; also see, Paley, supra
n. 23 at 378.
91
Paley, supra n. 23 at 341.
92
Stern, Bundle of Rights, supra n. 8 at 1256; Cf. Phillips,
supra n. 11 at 1040; Cf. S.4, WIPO Model Provisions,1978 supra n. 4.
93
Soderquist, supra n. 22.
94
Samuelson et al., Manifesto, supra n. 7 at 2380.
95
Stern, Defining The Concept of Infringement, supra n. 8
at 442.
96
Samuelson et al., Manifesto, supra n. 7 at 2398.
97
Stern, Bundle of Rights, supra n. 8 at 1252.
98
S.8, GNU GPLv3.
99
The MITI Report, supra n. 48 at 227 (Chapter V
Proposal for MITI Program Rights Act, Outline(9)).
100
Stern, Bundle of Rights, supra n. 8 at 1257.
101
See, The MITI Report, supra n. 48 at 224.
102
Id at 227. (Chapter V Proposal for MITI Program
Rights Act, Outline (10)(i)).
103
Samuelson et al., Manifesto, supra n. 7 at 2411.
104
Toeniskoetter, supra n. 24 at 79.
105
Id. at 80; Paley, supra n. 23 at 348; Stern, Bundle ofRights, supra n. 8 at 1247.
106
See, E.g. (U.S.) Peer To Patent<http://peertopatent.org/>;(Australia) Peer To Patent<http://www.peertopatent.org.au/>;(UK) Peer To Patent<http://www.ipo.gov.uk/peertopatent.htm>;(Japan) Peer To Patent<http://www.iip.or.jp/e/e_p2pj/>(last visited on November 7, 2011).
90

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