SCOPE

This article looks at the ways in which the law protects information underlying computer programs and databases, through copyright, through the sui generis right in databases, through the patent system and through the laws of confidence and trade secrets. This article is also concerned with the difficulties which may follow if intellectual property protection is extended so as to confer any form of property in information. No account is taken here of the criminal law, including the Official Secrets Acts and the Computer Misuse Act 1990: it is well settled that under English law information cannot be the subject of theft, on the basis that only property can be stolen and information itself is not property.

Although information itself is difficult to protect, intellectual property can attach to works, productions, and inventions which are based on or represent information. The laws of confidence and contract can protect information, but under the law of confidence it is knowledge rather than information which is most frequently protected: knowledge, being a condition in the mind of a human knower of information, is protected when a human individual's conscience is constrained in relation to information which has become available to him under an impress of confidence, so that it is often knowledge rather than the underlying information which is protected. Although contract can regulate the rights and obligations of parties in relation to information, including knowledge, contract can create no property right in information.

Information is at the heart of the value in computer programs and databases. Once such information has become generally accessible, its normal commercial exploitation may be compromised: potential users and licensees see no point in paying rightholders if access is freely available, unless payment is a necessary precondition to lawful use of the information. The classical justification for the recognition of intellectual property rights is their encouragement of development and of public disclosure of the resulting work or production. This encouragement is given by the law's protection of the author's or developer's commercial interest from uncontrolled and unlicensed use by others, which protection has parallels with the civil law concept of unfair competition.

COMPUTER PROGRAMS

The Copyright (Computer Programs) Amendment Act 1985 provided that computer programs were to be protected by UK copyright in the same way as literary works were so protected. This brief amending Act was repealed and replaced by the Copyright, Designs and Patents Act 1998 (the "CDPA") which provides that computer programs are protected by copyright as literary works, so avoiding the risk run by the 1985 Act of non-conformity with the Berne Convention.

Directive 91/250/EEC of 14 May 1991 (the "Computer Programs Directive") required all European Community Member States to protect computer programs by copyright as literary works within the meaning of the Berne Convention, but added qualifications to this basic requirement. These qualifications included requirements that:

- the term "computer programs" shall be taken to include their preparatory design material;

- protection in accordance with the Directive shall apply to the expression in any form of a computer program, but ideas and principles underlying any element of a computer program, including those which underlie its interfaces, should not be protected;

- a computer program shall be protected only if it is original in the sense that it is the author's own intellectual creation; and

- protection by copyright is to be without prejudice to other legal provisions, including patent rights, trade secrets and (subject to exceptions) the law of contract.

Three main conclusions in relation to the protection of information expressed in the form of a computer program may be drawn from these provisions:

- (1) Since computer programs (including their preparatory design material), however expressed, are to be protected by copyright, specifications, flowcharts, algorithms and the like, when prepared for the purpose of the design of a computer program, are to be protected as such expressions. Such materials are essentially information expressed in a particular form, so protection is to be given to such information as so expressed. It is the author's creativity in producing such materials which is to be protected.

- (2) Ideas and principles underlying a computer program are excluded from protection by copyright so that, for example, mathematical rules, computational methods and programming models are so excluded. However, this does not exclude from protection programs, including preparatory design materials for programs, which are the product of creative application of those rules, methods or models, nor does it prevent the possibility of protection of ideas and principles through the patent system, by trade secrets law or by the law of contract.

- (3) The requirement of intellectual creativity may be said to exclude from protection any program which is computer-generated if the program has been generated by a computer in circumstances that there is no human author of the work. This appears to exclude from copyright protection a computer program, including its preparatory design materials, produced by a creatively programmed computer where the production process, as opposed to the prior programming of the computer, required no human creativity. This exclusion from protection may apply however creatively the computer was originally programmed, but does not appear to exclude a computer program from protection if the program was created by a human author using a pre-programmed computer as a tool in the author's creative process.

Conflating these requirements, the information comprised in a computer program, including its preparatory design materials, may be protected by copyright and such protection is to apply to the program's expression in any form, but:

- the protection is not to extend to any idea or principle, including any rule, method or model, underlying the program; and

- is to be available only if one or more human authors have created the program, which may have been done by using a computer as a tool for the purpose. In the latter case, the use of the computer must itself have been creative or, in the terms of the UK's criterion of originality, must have involved the exercise by the author or authors of personal skill, labour or experience.

Since it is the terms of the Computer Programs Directive which rule rather than the terms of the implementing UK's Copyright (Computer Programs) Regulations 1992, it is immaterial that those Regulations transposing the Directive into UK law do not precisely follow the Directive, and in particular:

- have classified preparatory design material for a computer program as a literary work, and not as a computer program as prescribed by the Directive; and

- make no reference to the requirement of human creativity as a pre-condition to copyright protection for a computer program.

Computer programs may be expressed in a variety of ways. Taking the Directive's provision that preparatory design materials for computer programs shall be classified as computer programs, an algorithm for a program in the form of a flowchart is accordingly required to be protected by copyright as a computer program: but the ideas and principles underlying the algorithm are not to be so protected. Thus, the particular application of a standard algorithm may be protected, but not from reproduction of the underlying principles of the algorithm in a different program. This leads to the conclusion that:

- information creatively expressed in an algorithm's particular application is to be protected; but

- information representing the algorithm's underlying ideas or principles is excluded from protection.

The protection given, in the terms of the restricted acts set out in Article 4 of the Computer Programs Directive, is against unauthorised:

- permanent or temporary reproduction by any means and in any form, in whole or in part;

- translation, adaptation, arrangement and any other alteration, and reproduction of the results of any such adaptation, arrangement or alteration; and

- any form of distribution to the public of the original program or of copies of it, subject to exhaustion of the distribution right in relation to any copy by the sale within the Community of that copy by or with the consent of the rightholder.

It follows that, where the preparatory design material for a computer program is reproduced, adapted or distributed in the form of another program but without the original rightholder's consent, there will be infringement of the copyright in the original program except to the extent that the design material comprises underlying ideas or principles. The line between an underlying idea or principle (unprotected) and an expressed creative application of the idea or principle (protected) is narrow and may be difficult to apply in any particular case: the US concept of merger of the protectable expression of an idea with the underlying unprotectable idea itself, where the idea is capable of expression in only one way, may have some relevance. It does not follow that all information expressed in the form of a computer program should be classified as underlying ideas or principles, but it appears to follow that, where information is not an underlying idea or principle but is a creative application of an underlying idea or principle, that information may be protected by copyright in the program. The most obvious expression of such information is either source code or object code in a particular form, but other examples are algorithms or flowcharts creatively prepared for the development of particular programs.

Unauthorised adaptation of any such expression would then itself be a restricted act, unless the adaptation was exclusively of an underlying idea or principle which is not protectable by copyright. The prohibition against copyright protection of ideas and principles underlying a computer program prevents the possibility of their indirect protection by the copyright restrictions against transient copying and adaptation, and so prevents restriction of access to such underlying ideas or principles as information where the restriction is achieved by relying upon infringement by transient copying.

In its Report on Implementation of the Computer Programs Directive published in April 2000 the European Commission concluded that Member States' implementations of the Directive were overall satisfactory but not always as good as might have been expected. In a number of specific instances the Report stated that it might be necessary for the Commission to open ex officio infringement proceedings under Article 226 of the European Treaty, and noted two such instances in relation to the UK:

- absence from the UK law of the requirement that preparatory design materials for a computer program be treated as themselves being computer programs for the purposes of the Directive; and

- absence from the UK law of the requirement of intellectual creativity in a computer program as a pre-condition for copyright protection of that program.

The Computer Programs Directive creates lawful user rights, including a right for a lawful user to observe, study and test the functioning of a computer program in order to determine its underlying ideas and principles while performing any of the acts which he is entitled to do. This, presumably, is to prevent copyright from indirectly protecting information representing such ideas and principles, but is subject to the possibility of control of such information by the law of confidence or by contract.

These copyright provisions protecting information relating to computer programs stand distinct from, and are without prejudice to, the possibility of protection of such information, including underlying ideas and principles, by the laws of trade secrets (confidence) and of contract.

DATABASES

Tables and compilations were protected under the CDPA as literary works in conformity with Article 2(5) of the Berne Convention before the CDPA's amendment to take account of the requirements of Directive 95/9/EC on the legal protection of databases (the "Database Directive"). The Database Directive was required to be transposed into the law of all EEA States by 1 January 1998, and established a new intellectual property regime which applies only to databases, a "database" being defined by the Directive as:

- "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means".

The Database Directive's new regime has three principal effects:

- (1) It defines and harmonises, to some extent, copyright in databases within the EEA on traditional Berne Convention lines, but with particular provisions applicable only to databases. These provisions include:

- a requirement of intellectual creativity broadly equivalent to the requirement discussed above in relation to copyright in computer programs;

- fair use exceptions which may not be contractually avoided; and

- limitations on fair use and other exceptions which prohibit certain uses for commercial purposes.

With the exception of the requirement of author's intellectual creativity in relation to computer programs, none of these new provisions apply to other forms of copyright work, including compilations which may be protected by copyright but which are not within the Database Directive's definition of a "database".

- (2) It created a new sui generis right intended to protect investment in a database. This new right is distinct from copyright, is capable of co-existing with copyright, and has its own restricted acts of extraction and re-utilisation which terms have been given special meanings.

- (3) It left intact the possibility of continuing copyright protection of compilations which were literary works but which did not conform to the new definition of a "database", to the extent that such protection was provided under EEA States' respective national laws.

Copyright may be used indirectly to protect information held in databases in the same way as it may be used to protect information held in the form of computer programs and other copyright protected literary works which are in electronic form. This protection may be achieved by denying access to computer-held information where access can only be achieved by methods which necessarily involve transient copying of the protected work in the course of use. In the case of databases, the Database Directive provides that the lawful user of a database may perform any of the copyright restricted acts which are necessary for the purposes of access to the contents of the database and for normal use of the contents by the lawful user. Such performance is not to require the authorisation of the author of the database, but where the lawful user is authorised to use part only of a database this provision is to apply only to that part. Any contractual provision contrary to this lawful user right is null and void.

In the case of the sui generis right the restricted act of extraction will prevent the temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form, and so, like the restriction against transient copying under copyright, can be used to prevent access to the contents of a sui generis right protected database. However, the maker of a database which has been made available to the public in any manner whatever may not prevent a lawful user from extracting and/or re-utilising insubstantial parts of the database's contents for any purposes whatsoever provided the lawful user does not perform acts which conflict with the normal exploitation of the database or which unreasonably prejudice the legitimate interests of the database's maker or cause prejudice to the holder of a copyright or related right in respect of the works or contained in the database. As for copyright, Member States may opt for certain other lawful user rights though not for use for commercial purposes, and contractual restrictions against a normal user's right to access the contents of a database and to extract insubstantial parts for any purpose whatsoever are null and void. In the case of the sui generis right, in contrast to copyright, this lawful user right is only available in relation to databases which have been made available to the public: none of the terms "lawful user", "made available" or "public" are defined.

The sui generis right may have some surprising consequences. In British Horseracing Board and Others v William Hill Organization Limited the first instance judgment held that the object of protection of the sui generis right was the maker's investment in obtaining, verification or presentation of the database and that such protection required restriction of the right to extract and/or re-utilise information derived directly or indirectly from a substantial part of the database.

This finding, which is subject to a pending appeal to the Court of Appeal and a pending reference by that Court to the European Court of Justice,

could have surprising consequences. By protecting information directly or indirectly extracted from a database the sui generis right could achieve stronger protection than is possible by copyright: copyright may not directly protect information as such, but it is possible that the sui generis right may do so. If that is the case, information held within a sui generis right protected database may itself be protected by the sui generis right. Since any edition of a newspaper is likely to qualify as a database in terms of the Database Directive's definition, to extract or re-utilise without express or implied authorisation a news item from a newspaper edition where the information extracted represents a substantial part of that edition will potentially infringe the sui generis right, and may be restrained. In such a way a newspaper's "scoop" may be protected from extraction and/or re-utilisation elsewhere, including re-use by other media. There is no exception under the Database Directive in relation to the sui generis right which is equivalent to the CDPA's copyright exception for fair dealing for the purpose of reporting current events.

As for computer programs, protection of information within databases by copyright or by the sui generis right is without prejudice to the possibility of its protection by the patent system, the law of trade secrets (confidence) or contract law, but subject in this latter case to limited exceptions.

DIRECTIVE 2001/29/EC (THE "COPYRIGHT DIRECTIVE")

This Directive, dated 22 May 2001 and published in the Official Journal on 22 June, harmonises certain aspects of copyright and related rights in the information society and is required to be transposed into the law of all EEA States by 22 December 2002.

The Copyright Directive has five major effects:

- (1) It re-states the exclusive rights of authors, performers, phonogram producers, film producers and broadcasting organisations to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form in whole or in part (Article 2).

- (2) It creates rights of communication to the public in respect of copyright works and rights of making available to the public in respect of other subject matter, which rights are to be available to the same classes of rightholder, and in relation to the same subject matter, as the reproduction right (Article 3). These new rights are to include a right to restrict the making available by wire or wireless means, in such a way that members of the public may access protected subject matter from a place and at a time individually chosen by them: in other words, the new rights restrict making available for access over the Internet and other networks.

- (3) It re-states the exclusive right of authors to authorise or prohibit any form of distribution to the public of their works, or copies thereof.

- (4) It creates a mandatory exception from the reproduction right for temporary acts of reproduction which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable the transmission in a network between third parties by an intermediary or a lawful use of the work or other subject matter, provided that the temporary acts of reproduction have no independent economic significance (Article 5(1)). It also permits (Articles 5(2), (3) and (4)) a substantial number of optional exceptions and limitations to be adopted by Member States in relation to the reproduction right, the communication and making available to the public rights and the distribution right, all of which exceptions and limitations are required to be subject to the three-step test under the Berne Convention.

- (5) It sets out a regime designed to provide adequate legal protection against the circumvention of effective technological measures against infringement, and for the protection of rights-management information.

The Copyright Directive expressly provides that, subject to a limited number of exceptions, it shall leave intact and shall in no way affect existing Community provisions relating to, inter alia, the legal protection of computer programs and the legal protection of databases. This appears to exclude the possibility of any of the Article 5 exceptions being applied to computer programs and/or databases in any way capable of affecting the existing provisions of either the Computer Programs Directive or the Database Directive. It also appears that, while the reproduction right and the making available right apply to copyright-protected computer programs and copyright-protected databases, they do not apply to databases which are exclusively protected by the sui generis right. However, since the Database Directive expressly provides that the sui generis right restricted act of re-utilisation means any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission, perhaps a broadly equivalent making available right already applies to databases protected under the sui generis right, independently of the new Copyright Directive and not affected by it.

It is unclear to what extent temporary reproduction and/or the making available right may be used to protect information underlying a copyright protected computer program or database, but it is clear from the Computer Programs Directive that copyright may not protect ideas and principles which underlie any element of a computer program, including those which underlie its interfaces.

Again, the Copyright Directive is without prejudice to other legal provisions, so that there remains the possibility of protection of information under the patent system, by trade secrets and (subject to limited exceptions) by contract.

THE TRIPs AGREEMENT

As the highest level, broadest and most widely adopted intellectual property international instrument, the TRIPs Agreement commands respect and creates treaty obligations which promote the development of converging national intellectual property laws. However, the terms of TRIPs shed little new light on the issue of protecting information as such where such information underlies either computer programs or databases.

Article 10, which concerns copyright, includes express provisions relating to computer programs and compilations of data and provides that:

- computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971); and

- compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.

Article 13, which relates to copyright limitations and exceptions, provides that:

- Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rightholder and so reflects the three step test under Article 9(2) of the Berne Convention.

TRIPs does not adopt the Database Directive's definition of a "database", but conflicts with the UK's copyright protection of non-database compilations which allows such compilations to be protected by copyright notwithstanding that they may not be intellectual creations. TRIPs appears also to disallow the UK's copyright protection for computer-generated works when such computer-generated works are compilations of data or other material but which are not databases in terms of the Database Directive.

Section 5 of TRIPs deals with patents, and within Section 5 Article 27, in relation to patentable subject matter, provides that patents shall be available for any inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application. There are permitted exceptions to this provision in relation to, for example, medical and biological processes which have no particular relevance to computer programs or databases.

Patents are not concerned directly with the protection of information relating to an invention but rather with the use of that information in a way which may infringe the monopoly granted by a valid patent. Current concerns in Europe about the extent to which computer programs and business methods may be, or may become, protectable by the patent system are equally relevant to the protection of products as to the protection of processes: information about a protected invention is published, and so made publicly available, but its use is restricted by a valid patent. In contrast to copyright and the sui generis right, reproduction, extraction or re-utilisation are not directly controlled but unauthorised application of the information disclosed by a patent for an invention, where the invention yields a technical effect, will infringe the patent.

Section 7 of TRIPs deals with undisclosed information and is an amalgam of the concepts of unfair competition and the law of confidence or trade secrets. Within Section 7, Article 39(2) provides that:

- "natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by or used by others without their consent in a manner contrary to honest commercial practices so long as such information:

- is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known or readily accessible to persons within the circles that normally deal with the kind of information in question;

- has commercial value because it is secret; and

- has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

This comes near to controlling information as such, but only for so long as the information is not generally known and is closely controlled. This control is expressed to be against disclosure, acquisition and use without consent. It stops short of recognising property in information as such, but may extend to protect information which is not yet knowledge provided the information is within the control of the rightholder, as for example computer-generated information held in electronic form but not yet disclosed or interpreted.

Section 8 of TRIPs is headed "Control of anti-competitive practices in contractual licences" and Article 40(2) within Section 8 makes express reference to the abuse of intellectual property rights. Both the Computer Programs Directive and the Database Directive are made subject to, amongst other legal provisions, laws in relation to restrictive practices and unfair competition. While these Directives, and the provisions of TRIPs referred to above in relation to computer programs, databases and confidential information, are carefully elaborated all the intellectual property rights referred to are made broadly subject to an overriding requirement that they shall not be used in an abusive way. In the same way, the UK's common law and equitable rights in relation to confidential information will yield before a justified claim of public interest in disclosure.

In the US, in Lasercomb America Inc v Reynolds, Holliday and Others a misuse of copyright defence was allowed to prevent a copyright owner from enforcing its copyright against allegedly infringing defendants. Before the European Court of Justice, the Magill decisions are authority for the proposition that, however valid an intellectual property right may be, it may not be used in such a way as to abuse a dominant market position. In earlier proposals by the European Commission for a directive on the legal protection of databases express pro-competitive compulsory licensing provisions were included where information was available only from a single source but these provisions were dropped from the final version of the Directive as adopted in favour of a general saving for competition law.

CONCLUSIONS

Information is slippery. Starting from the position that it is valuable but cannot be owned, we have an evolving system of intellectual property laws which increasingly control information in different ways without directly claiming or creating property in it. As these forms of protection, both direct and indirect, are developed difficulties are likely to emerge in the gaps and overlaps between the various methods of protection provided. There is also a risk that particular forms of protection may seek unrealistically to control information once it has become generally available.

There are difficulties about drawing a line between information which is not generally available, in the sense that it is a secret known only to a limited number of persons (protectable under the law of confidence) or alternatively not widely known but universally and readily accessible (generally unprotectable). Drawing this line becomes more difficult, and more important, as protection of information extends beyond that available under the law of confidence or trade secrets. For example, the new making available right under the Copyright Directive may tend to strengthen the protection available for information as such, and may do so to an unrealistic degree.

We are now more frequently having to deal with information which may not yet be knowledge and which may, for example, be computer-generated. Manifestly, those who unfairly take such information should be prevented from doing so: a more difficult question arises when that information is made available to the public, so that a taker who is not accountable to the provider of the information takes a free ride on the provider's investment in producing the information. Some line must be drawn to prevent unrealistic attempts to control information by legal process where the law is powerless to enforce control: the example of "Spycatcher" illustrates the unreality of such positions. Perhaps one possibility may be to draw a distinction between consumer and private use of information on the one hand, and commercial use on the other. The Database Directive attempts some such distinction but does not fully develop it, and relying upon the Berne Convention's three step test to distinguish between acceptable and unacceptable use may be too uncertain. Is it realistic to attempt to prevent a private individual, for purely private purposes, from extracting substantial amounts from a sui generis right protected database as the Database Directive provides?

There is not sufficient material within the Database Directive to enable clear lines to be drawn between consumer non-commercial extraction of information and commercial extraction. Perhaps the Commission needs to consider producing a Directive on the legal protection of information, including defining the limits to which such protection may be taken.

1 Oxford v Moss [1979] 68 Cr App R183
2 Computer Programs Directive Article 1
3 ibid Article 9
4 SI 1992/3233
5 Computer Programs Directive Article 4
6 COM (2000) 199 final
7 Computer Programs Directive Article 5(3)
8 Database Directive Article 1(2)
9 Database Directive Article 6(1)
10 ibid Article 15
11 ibid Article 7(2)(a)
12 ibid Article 8(2) and (3), and see Berne Convention Article 9(2)
13 ibid Article 15
14 [2001] EBLR 71
15 CDPA Section 30(2)
16 Article 5(5) and Berne Convention Article 9(2)
17 Copyright Directive Article 1(2)
18 Database Directive Article 7(2)(b)
19 Computer Programs Directive Article 1(2)
20 CDPA Section 9(3) and Section 178
21 Computer Programs Directive Article 9, and Database Directive Article 13
22 Lion Laboratories v Evans [1985] QB 526
23 US Court of Appeals 4th Circuit Number 89-3245 August 16th 1990 911 F.2d 970
24 Case T-69/89 [1989] 4 CMLR 757 ECJ, C-241/91P and C-242/91P
25 Attorney General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109
26 Articles 6(2)(b) and Article 9(b)
27 Berne Convention Article 9(2)

First published in Copyright World.