Good Copyright Registration "Hygiene" Necessary to Obtain Copyright Protection over Revised Versions of Software
Copyright law: A recent case from the Southern District of New York demonstrates the need to register each revision of software provided to third parties in order to maintain copyright protection over it.
The case was SimplexGrinnell LP v. Integrated Systems & Power, Inc., U.S.D.C., Southern District of New York, Case No. 07Civ2700. The plaintiff, Simplex, makes fire alarm and sprinkler equipment. The defendant, ISPI, was an installer of Simplex's equipment in the New York and New Jersey areas and was granted, as part of a bankruptcy court order, a license to use Simplex's programming software to service Simplex alarm systems for ISPI's existing customers. However, ISPI began using Simplex's software to service new customers, as well. Simplex sued for copyright infringement, seeking to block ISPI from using its software to service new customers.
The Court found that it simply could not issue an order this broad. Simplex had created five "revisions" of its software, numbered 8, 9, 10, 11 and 12. It had also issued serial editions of each revision. For example, versions 10.01, 10.50, 10.60, 10.61, 10.60.99 and 10.61.01 were all part of revision 10. However Simplex had only obtained proper copyright registration for four of these multiple versions: versions 8.04, 9.02, 10.01 and 11.01.
The problem for Simplex was that under the Copyright Act, a court only has subject matter jurisdiction over registered copyrights. See 17 U.S.C. § 411(a) ("no action for infringement shall be instituted until registration of the copyright claim has been made in accordance with this title"). As such, the Court held that it was not authorized enforce Simplex's copyrights for any versions of its software, except for the four registered versions.
Copyright law classifies works as "original" and "derivative" works. A "derivative" work is a work that is based on "one or more preexisting works." 17 U.S.C. § 101. To be fully protected, derivative works must be copyrighted separately from the original works on which they are based. In an attempt to circumvent the Court's ruling, Simplex argued that the changes it had made in the software between the serial editions of each revision were trivial, so the different editions within each revision did not qualify as "derivative" works and did not require separate copyright registration. Under Simplex's theory, because each version of the software was not a derivative work, it registration of one of the versions within each "revision" should be sufficient to confer subject matter jurisdiction over the entire revision.
However, the Court found that the evidence at trial simply did not support the claim that the changes made in the serial editions of each revision were trivial. Second Circuit case law establishes that only a minimal degree of changes must be made for a work to be considered derivative. See Merkos L'Inyonei Chinuch, Inc. v. Ostar Sifrea Lubavitch, Inc., 312 F.3d 94, 97 (2nd Cir. 2002) (to be considered original, a work must be independently created by the author and possess "at least some minimal degree of creativity."). Here, the evidence showed that there were numerous changes between different versions: For example between versions 10.01.01 and 10.50, an additional audio programming feature was added and 275 defects were repaired.
Simplex argued that the evidence also showed that some versions contained fewer alterations. For example, it pointed out that version 10.61.10 added no new functional changes or enhancements over version 10.61 and only repaired a handful of defects. However, the Court pointed out that, in focusing on these changes, Simplex was looking at the wrong standard. The issue is not the degree to which a change affects the functionality of the software, but the amount of changes made in "the literal elements of the computer program, i.e., their source and object codes." The Court stated: "Even if adding a new feature, or repairing a defect, is functionally trivial, it does not follow that the change did not involve originality in the new computer code that effects the functional change."
As an alternative line of attack on the Court's decision, Simplex theorized that if the Court concluded that each version was a separate derivative work, because the unregistered versions contained much the same computer code as the registered versions, it was entitled to claim copyright protection for all versions of its software.
Simplex's theory here is actually pretty sound. For example, in its Circular 61, the U.S. Copyright Office states that while each separately published version of a computer program that contains new, copyrightable authorship must be registered separately, all registrations subsequent to the initial registration "cover only the new or review material added to that version." This means that the original registration covers the material from the original version that is included in each revised version.
While the Court also agreed with Simplex on the law, it again found Simplex wanting on the evidence. The fact that a work has been copyrighted does not mean that every element of the work is protected. For example, copyright protection does not extend to elements of a registered work that are in the public domain, to elements that are unprotected under the doctrines of merger and scenes a faire, or to functional elements. So, as the Court found, the mere fact that a portion of a copyrighted work has been incorporated into second work, does not mean that any portion of the second work includes copyrighted material. In the Court's words: "the mere fact that substantial portions of registered programs may be incorporated into unregistered versions provides no evidence that the overlap encompasses protected characteristics."
Much of Simplex's trouble in this case lay in its failure to present evidence in support of its infringement theories at trial. However, the easier, cheaper and more secure way to protect itself would have been for Simplex to have registered each version of the software that it provided to third parties with the Copyright Office. These ounces of prevention would have been worth ten thousand pounds of cure.
David D. Johnson is a business lawyer whose practice focuses on litigation and other issues relating to digital media and consumer electronics companies. David can be contacted at (310) 785-5371 or DJohnson@jmbm.com.
