A Relook at Sui Generis Software Protection Through the Prism of Multi—Licensing

• DOI: http://doi.org/10.1002/jwip.12009
• Published date: 01 March 2013
• Date: 01 March 2013

A Relook at Sui Generis Software Protection

Through the Prism of Multi-Licensing

Vikrant Narayan Vasudeva

The Indian Law Institute (Deemed University)

Debate has been raging since the 1960s regarding intellectual property and software protection, primarily focusing on

its accommodation within existing traditional intellectual property structures or sui generis approaches. Eventually,

software protection was accommodated within a range of intellectual property rights, contract law and technological

measures. However, several occurrences in the past three decades highlight developing fissures in the mode of

software protection; certain other developments highlight increasing acceptance and ease in implementing sui generis

protection. Correspondingly, the open source software licensing structure has emerged with a novel and extremely

successful adaptation of intellectual property law. It has led to emergence of the multi-licensing scheme, where

software is licensed under two or more licensing structures—one of which is open source and the other “proprietary.”

The multi-licensing scheme reveals several similarities to various sui generis software protection proposals. Perhaps

this is an indication of and validation that the industry has evolved to such an extent that there is a need to rethink the

mode of software protection. Based on this premise, this article attempts to develop a proposal for a sui generis Model

Software Law.

Keywords open source software; multi-licensing; sui generis; software protection

Debate has been raging since the 1960s regarding intellectual property and computer software protection.

Suggestions vary from application to non-application of property rights; from correct interpretation, to

amendment to outright replacement of property laws with alternative models of software protection.

Initially, software was developed on an individual scale where trade secret and contract laws were

sufficient for protection. The 1960s onwards, copyright law began to be used and became increasingly

accepted with emergence of mass-market software licenses. The 1970s saw discussions on software

patents and sui generis proposals emerge. Eventually, copyright law was chosen legislatively as the

vehicle for software protection. However, this statutory inclusion did not remove reliance on other modes

of software protection, which continued to subsist. Judicial and policy recognition soon allowed patent

protection as well. Also, the industry started recognizing technological protection measures as another

option and their efficacy was strengthened by legislative and judicial support.

Several occurrences in the past three decades highlight developing fissures in the current mode of

software protection rendering it increasingly inadequate. Current patent and copyright practices in

software context indicate areas that cause confusion or friction in face of the rapidly evolving software

industry. Correspondingly, emergence of the open source software (OSS)

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model indicates resentment

towards manner of application of intellectual property laws in the software arena. Moreover, current

technological developments are blurring the traditional distinction between industrial property and other

fields of intellectual property; this is evidenced by increasing acceptance and recognition of various sui

generis models like semiconductor chip and database protection. Concurrently, recognition is being given

to collective rights as well like collective trademark, geographical indications and traditional knowledge.

Also, as evidenced by the OSS approach, mode of software development has remarkably changed; now it

can be a community model, not confined by geographic or political demarcations.

The multi-licensing scheme involves simultaneous licensing of software under two or more licensing

structures—one of which is open source and the other “closed” source/“proprietary.” This allows the

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The Journal of World Intellectual Property (2013) Vol. 16, no. 1–2, pp. 87–103

doi: 10.1111/j.1747-1796.2013.12009.x

propagating entity to benefit from both the structures. Manner of application of the multi-licensing scheme

reveals a close approximate to suggestions made by various sui generis software protection studies in the

1970s and 1980s. Perhaps this is an indication that the present software industry has evolved to such an

extent that there is a need to rethink the mode of protection accorded to software. Perhaps the sui generis

protection model debate needs to be revisited and the innovation agenda be readdressed keeping in mind

the market share that open source approach is attaining.

This article intends to draw out the similarities and contrasts of the multi-licensing scheme with the

various proposed sui generis software protection models. The objective would be to develop a proposal for

asui generis Model Software Law.

Sui Generis Discussions on Software Protection

In the international arena, WIPO made sui generis proposals for software protection in late 1970s and early

1980s.

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In Japan, The Ministry of International Trade and Industry (MITI) Study Committee on Legal

Protection of Software issued an interim report in 1972 and found copyright protection afforded to

software as inadequate (Nakayama, 1988). In 1983, MITI’s Information Industry Committee submitted an

interim report that recommended a sui generis legislation for computer programs.

3

Eventually due to

heavy US and European protest and lobbying, copyright law prevailed.

France (Reichman, 1994)

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and Brazil (Bryant, 1995)

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too enacted sui generis models during this

period, operating under copyright law but adapted to software.

Several academic studies too emerged from 1970s onwards (e.g. Davidson, 1986; Galbi, 1970;

Karjala, 1998; Menell, 1987; Phillips, 1992; Samuelson et al., 1994; Stern, 1993).

With increased adoption, evolution and diversity of technology and software, proposals to amend

existing copyright and patent laws to better accommodate software have been posited (Paley, 1996;

Soderquist, 2001). Simultaneously, discussions for and against sui generis protection are gaining

increasing prominence in academia (e.g. Flinders, 2007; Ginsburg, 1994; Griem, 1994;

Toeniskoetter, 2005; Zoracki, 2005).

Need for a Sui Generis Regime

Several occurrences in past three decades highlight developing fissures in current modes of software

protection. At the same time, certain other developments highlight increasing acceptance and ease in

implementing sui generis protection.

Changing Nature of Legal Protection of Software

Software has several similarities to traditional copyrightable works—it is a literary work capable of

different expressions and subject to easy, quick and cheap reproduction. However, its treatment in the

same genre as books completely discounts its functional and enormously commercial aspect.

(Karjala, 1984) Thus, software presents a doctrinal conflict; it “looks like a ‘writing,’ even though it

behaves like an ‘invention”’ (Menell, 1989). “Once one recognizes that computer programs are machines

whose medium of construction is text, it becomes obvious why copyright is an inappropriate vehicle for

protecting most program behavior” (Samuelson et al., 1994, p. 2399). In context of software,

“functionality and ease of use are far more important…than its aesthetic appeal or originality”

(Amin, 1995). Furthermore, Copyright law’s idea-expression dichotomy transitions in software’s context

to protection of expression but not the underlying functionality, thus allowing analogous development and

several expressions of the same innovation to exist. Protection of non-literal aspects of software has been a

Vikrant Narayan Vasudeva A Relook at Sui Generis Software Protection Through the Prism of Multi-Licensing

©2013 John Wiley & Sons Ltd

88 The Journal of World Intellectual Property (2013) Vol. 16, no. 1–2