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JILT 2002 (2) - Caroline B. Ncube


Contents

Abstract

1.

Introduction

1.1

Definitions

1.1.1

Computer Programs

1.1.2

Computer Generated Works

1.1.3

Databases

2.

Copyright Protection

2.1

Eligibility

2.1.1

Computer Programs

2.1.2

Computer Generated Works

2.1.3

Databases

2.1.4

As Published Editions

2.1.5

As Tables and Compilations

3.

The Requirement of Originality

4.

Qualification

5.

Ownership

6.

Duration

7.

Permitted Acts

8.

Fair Dealing

9.

Decompilation, Back?up Copies and Related Acts

10.

Transmission/Assignment and Licensing

11.

Registration

12.

Rights of Copyright Owners and Infringement

13.

Remedies

14.

How the Courts Would Test for Infringement

15.

Are Literal and Non-literal Copying Both Covered?

16.

Criminal Offences and Penalties

17.

Conclusion

Notes and References

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Copyright Protection of Computer Programs, Computer-generated Works and Databases in Zimbabwe
 

Caroline B. Ncube
Rowland Commercial Law Institute
University of Zimbabwe
cbmphn@hotmail.com

Abstract

This commentary briefly outlines Zimbabwean copyright protection of computer programs, output and databases. Important concepts like originality, the idea/expression dichotomy and copying will be discussed. The law on this area is new and as yet untested by litigation, therefore this article can at best only suggest likely judicial approaches. Such approaches are most likely to be influenced by European Law as implemented by English Law, American and Japanese Law as these jurisdictions have very well developed laws on this area. Only general references will be made to these laws as they have been fully canvassed elsewhere and are outside this paper's main area of focus. They will however be used as a blueprint from which lessons will be drawn and be the basis for proposals proffered for Zimbabwe.

Keywords: Intellectual Property Law, Copyright, Patents, Computer Programs, Computer-generated Works, Databases.


This is a commentary published on 16 August 2002.

Citation: Ncube C B, 'Copyright Protection of Computer Programs, Computer-Generated Works and Databases in Zimbabwe', The Journal of Information, Law and Technology (JILT) 2002 (2) <http://elj.warwick.ac.uk/jilt/02-2/ncube.html>. New citation as at 1/1/04: <http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2002_2/ncube/>.



1. Introduction

Zimbabwe, and all other developing states, must strive to fully participate in the current global development and harmonization of, Intellectual Property Laws to ensure that the gap between the developed and developing world does not further widen. Developed world economies are greatly benefiting from ecommerce. In order to fully participate in these benefits the developing world must provide enabling legislative and policy frameworks to attract and keep international investment (WIPO 'Primer on Electronic Commerce and Intellectual Property Issues' paragraphs 20-5, 202-3).

This paper proceeds by outlining the main copyright legislative provisions to test their adequacy. Copyright is currently provided for by the Copyright Act Chapter 26:01 which does not provide copyright protection for computer programs, output and databases. Such protection is afforded by the Copyright and Neighbouring Rights Act Chapter 26:05, which was enacted in November 2000 but has not yet come into operation. This article will discuss the Copyright and Neighbouring Rights Act.

1.1 Definitions

1.1.1 Computer Programs

Computer programs were defined by the World Intellectual Property Organisation (WIPO) as being:

'... a set of instructions capable, when incorporated in a machine readable medium of causing a machine having information-processing capabilities to indicate, perform or achieve a particular function, task or result' (s.1 (i) WIPO Model provisions on the protection of computer software, Geneva 1978).

The Zimbabwean definition is materially similar. Computer programs are defined as:

'A set of instructions which is fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to perform a task or bring about a result ( s2).

1.1.2 Computer Generated Works

'Computer generated work' refers to the production of distinct works by computers. There is express mention of such works in Zimbabwean legislation but no definition is given. This article will adopt the English definition. The Copyright, Designs and Patents Act 1988 (the English Act) provides in Section 178 that a work is computer-generated if it is generated in circumstances where there is no human author of the work.

1.1.3 Databases

Databases are, in contrast, to be viewed as input into computers. There is also no express mention nor definition of 'databases' in Zimbabwean legislation and this article adopts the Directive on the Legal Protection of Databases 96/9/EC, Official Journal L 077, 27/03/1996 p. 0020 - 0028 (the Database Directive) definition. Article 1(2) provides that a database is 'a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means'.

2. Copyright Protection

2.1 Eligibility

2.1.1 Computer Programs

Computer programs are classified as 'literary works' (s2) and are eligible for copyright if they are original and have been 'reduced to writing, recorded or reduced to material form' (s 10(1)-(2)). 'Writing' is, in turn, is defined as 'any form of notation or code, whether by hand or otherwise and regardless of the method by which, or medium in or on which, it is recorded' (s2). These legislative provisions are compliant with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) of which Zimbabwe is a signatory. Article 10 of the TRIPS Agreement provides that computer programs should be awarded copyright protection as literary works.

2.1.2 Computer Generated Works

Without first expressly providing for copyright protection of computer generated works and other ancillary matters, the Act just plunges in and provides that there is no right to be identified as the author of any computer-generated work and no right to object to derogatory treatment of computer-generated work (ss 62(a)(iii), 64(3)(b)). As these rights are associated with works in which copyright subsists, it seems that copyright may subsist in computer-generated works in Zimbabwe. It is submitted that is it essential to enact specific provisions stating that this is so and to provide for ancillary matters. Such ancillary matters include a definition of computer-generated works, the specification of the person to be viewed as the author of such work, and the duration of copyright in such work. This can be done by enacting a provisions similar to the English Act's sections 178,3(1)(d), 9(3) and 12 which provide the definition of computer-generated works, eligibility for copyright, authorship and duration of copyright respectively.

Zimbabwean legislation is thus deficient as it fails to comprehensively cater for computer-generated works, which are actually being produced on a significant scale.

2.1.3 Databases

There is no use of the term 'database' in the Act but is submitted that databases may be provided for as 'published editions' or literary works in the form of 'compilations or tables'.

2.1.4 As Published Editions

The Act gives copyright protection to published editions, which are defined as 'published edition(s) of the whole or any part of one or more literary works' (s2). Literary works include dramatic works, stage directions, film scenarios and broadcasting scripts; letters, reports and memoranda; lectures, speeches and sermons; computer programs and tables and compilations(s2). A published edition is thus any published collection of one or more such works. Section 3 of the Act provides that a work is published if it is 'made available to the public by means of an electronic retrieval system, through a public computer network or by a public library or archive or other such non- profit making institution for the purposes of public-lending'.

Some aspects, especially that of accessibility, of this concept/definition of published editions are similar to the definition of 'database' and it is argued that published databases of literary works are eligible for copyright protection as published editions if they are original and they have been 'reduced to writing, recorded or reduced to material form' (s 10(1)(h)).

2.1.5 As Tables and Compilations

As already stated above, compilations and tables are literary works. They are eligible for copyright protection if they are original and have been reduced to writing, recorded or reduced to material form. Databases are compilations and it is argued that they are also eligible for copyright protection as compilations.

Copyright protection of databases due to the lack of specific provisions is indirect and moot. Zimbabwe needs to amend her legislation by enacting separate and specific provisions dealing with databases. Such legislation could be derived from the Database Directive. The Database Directive is relevant to Zimbabwean law because it extends the Berne Convention's provision for copyright in collections (Berne Convention Article 2(5)). Zimbabwe is a signatory to the Berne Convention and it is submitted that it is desirable for her to follow its extensions and learn from them.

Concepts that can be borrowed include the definition, limitations on eligibility and the qualification requisites. The Database Directive limits its protection by providing in Article 1(3) that ' protection under this Directive shall not apply to a computer program used in the making or operation of databases accessible by electronic or other means'. To qualify for protection the database must be original, it must be the author's 'intellectual creation'. 'Intellectual creation' is not defined, this is left to state parties. The Database Directive provides in Articles 7 and 10 the further, novel right to prevent 'unfair extraction' of material that is not protected by copyright from the database. The English Copyright Act, which was amended to implement the Database Directive, provides in ss3 (1)(d), 3A that original databases are literary works for the purposes of copyright if they are original as the author's own intellectual creation by virtue of the selection and arrangement of the contents. These are more apt and relevant ways of addressing database protection and as stated above, similar provisions should be enacted in Zimbabwe.

3. The Requirement of Originality

The Act provides no guidance as to what constitutes originality in literary works in the form of computer programs, databases or computer generated works and published editions in the form of databases. It is most likely that when faced with the task of determining originality, Zimbabwean courts will rely on case law from other jurisdictions. In English Law, to be classified as original a program must be the result of skill, labour or judgement and originate from the author Feist Publications v Rural Radio Service [1991]. Origination from the author merely means that the work must not be copied from another's work; copyright protects only the expression of ideas not the idea itself (University of London Press Ltd v Universal Tutorial PressLtd [1916] 2Ch 601 at 608). Originality is likely therefore to be treated as a matter of fact. The deciding factor will be whether or not the programmer has copied the program from another source (Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 at 290).

4. Qualification

The computer program, computer-generated work or database as a compilation or published edition (database/compilation/published edition) will qualify for copyright protection if its author qualifies 'at the material time' under the Act. In relation to computer-generated works, the lack of clarity in provisions dealing with authorship might create problems of application; if the author is not properly identified his qualification cannot be assessed.

The 'material time' for unpublished eligible works is when the work or a substantial part of the work was first made and in relation to published eligible work is when the work was first published or if the author died before publication, immediately before his death (s 11(2)(a)-(b)). The author qualifies if, at this time, he is 'a citizen of Zimbabwe or a designated country or domiciled or ordinarily resident in Zimbabwe or a designated country or in the case of a body corporate, incorporated under the laws of Zimbabwe or a designated country'(s 11(1)(a)-(c)). Designated countries are those designated in regulations by the Minister of Justice, Legal and Parliamentary Affairs (The Minister) (s2). The Minister has not yet promulgated regulations listing such designated countries.

Alternatively, the computer program, computer-generated work or database/compilation/published edition will qualify for copyright protection, if it is first published or made in Zimbabwe or a designated country (s 12(1)-(2) ). If the program, computer-generated work or database/published edition is actually a second publication made within 30 days of the first publication, it will nonetheless qualify for copyright protection (s 12(3)).

Computer programs, computer-generated work or database/compilation/published edition will also qualify for copyright protection if it is 'made by or under the direction of' the Zimbabwean government or an international organization designated by the Minister (s13).

5. Ownership

The owner of the copyright in the computer program, computer-generated work or database/compilation/published edition is its author, or in cases of joint authorship, its co-authors (s14(1)). Where the computer program, computer-generated work or database/compilation/published edition is made in the course of the author's employment under a contract of employment or apprenticeship, the author's employer will be the owner of the copyright (s14 (5)).

If the computer program, computer-generated work or database/compilations/published edition in a 'collective work' the owner of the copyright will be person at whose instance and under whose direction the work was made (s14(2)). Collective work is 'created or made by two or more individuals at the instance and under the direction of another person?on the understanding that the work will be published by that other person under his name and that the identity of the authors will not be indicated' (s2). Ownership of copyright in computer programs, computer-generated work or database/compilation/published edition made under the direction of the state or designated international organizations shall vest in the state or organization concerned (s14(6)).

6. Duration

Copyright in the computer program will subsist for 50 years 'from the end of the year in which the program is made available to the public with the consent of the author or failing such event within 50 years from the making of the work, fifty years from the end of the year in which the work was made'(s15(1)(a)). Copyright protection in databases as published editions lasts for 50 years from the end of the year in which the edition is first published (s15(1)(e)).Copyright duration in databases as compilations and computer-generated work is covered by a general, catchall provision, which provides that the copyright will subsist for the life of the author and fifty years from the end of the year in which the author dies(s15 (1)(e)). If the copyright vests in the state or an international organisation, it will subsist for 50 years (s15(2)(a)).

7. Permitted Acts

The Copyright Act provides for permitted acts of two categories, namely those that are general or applicable to all copyright works and those that are specific to computer programs. One is only able to do the general permitted acts in relation to databases as published editions and compilations because the Act does not provide for acts specific to databases. General permitted acts include fair dealing for purposes of research or private study or criticism and review, educational use, the production of replacement copies, parliamentary or judicial use, quotation and public reading (s24-32). It is submitted that Zimbabwe must enact specific provisions on permitted acts in relation to databases and should look to the Database Directive and the English Act for guidance.

8. Fair Dealing

Section 24 provides that 'copyright in a work shall not be infringed by any fair dealing for the purposes of research or private study by the person using the work'. Reproducing the work with the knowledge or reasonable foresight that such reproduction will result in copies of 'substantially the same material being provided to more than one person at substantially the same time' goes beyond fair dealing and is not permitted.

The Act does not give any guidance as to what is to be considered 'fair' nor does it define 'research' and 'study'. This places a heavy burden on the judiciary when such matters come to court. Each judge must therefore sail unchartered waters and leave a course for future cases to follow. The wording of the act is substantially similar to the English Act and it is likely that our courts will follow English case law.

Section 29 provides for fair dealing for the purposes of criticism, review or news reporting. The section specifically limits fair dealing to 'reporting current events', reporting of past events is thus outside the ambit of this permitted act. The section proceeds to require sufficient acknowledgement of the original work copied. Finally, provides that the 'use of photographs for the purposes of reporting current events shall not constitute fair dealing'. This section is substantially similar to section 30 of the English Act and it is submitted that our courts will rely on English precedents.

9. Decompilation, Back?up Copies and Related Acts

The second category of permitted acts in relation to computer programs provides for decompilation, back ?up copies and related acts. A person who is 'in lawful possession' of a computer program or a copy of a computer program is permitted to make copies of the program 'to the extent reasonably necessary' for back-up purposes, to correct errors on it, to decompile it, to test its suitability for his intended use or for any other purpose which is not prohibited under the license or agreement whereby he is using the program (s40(1)(a)). He may also 'let or hire the program together with a computer or other device, where the program itself is not the essential object of the lease' (s40(1)(c)).Decompilation, which is defined as 'converting the program into a version expressed in a different programming language, code or notation', is only permitted when its purpose is to 'obtain information needed to enable the program to operate with other programs' (s40(1)(b)). Copies made for the above purposes are to be used only for these purposes and must be destroyed when the person's legal basis for possession of the program or a copy of the program ceases (s40(2)).

The above permitted acts are similar to those provided for in the European Council Directive on the Legal Protection of Computer Programs (Software Directive)( Directive 91/250/EEC, Official Journal L 122, 17/05/1991 p. 0042 ? 0046)and the English Act and Regulations(Copyright (Computer Programs) Regulations 1992 (SI 3233)). However, the fair dealing provisions should be amended to clarify what fair dealing in relation to computer programs is, preferably in a similar manner as section 29(4) of the English Act.

The American position is provided for by the Digital Millennium Copyright Act of 1998 (American Copyright Act). It seems that Zimbabwe is not far behind this position as European and American law appears consistent on this broad are and specifically on decompilation and reverse engineering for the purpose of creating an interoperable program. The American 'fair use doctrine' and provisions respecting circumvention of technological controls in the American Copyright Act achieves the same effect as the European position per the Software Directive.

10. Transmission/Assignment and Licensing

Copyright in computer programs, computer-generated works or databases/published editions may be transmitted as 'corporeal movable property by assignment, testamentary disposition or operation of law' (s45-8). The owner of a copyright may also by license authorize another person to exercise any of his economic rights in the work (s49). It is also possible to transmit future copyright by assignment, will or license (s50). Moral rights may also be transmitted by testamentary disposition or by operation of law (s66).

11. Registration

Copyright, assignment of copyright and copyright licenses in a computer program, computer-generated works or databases/published editions may be registered. Such registration provides proof of the existence, extent and ownership of the copyright, assignment or license (s96-7).

12. Rights of Copyright Owners and Infringement

The owner of copyright in a computer program has, in Zimbabwe, the exclusive right to reproduce, publish, import or export, publish an adaptation of the program or by way of business to let or hire copies of the program or to permit other persons to do the same (s17). The owner of copyright in a database as a published edition has, in Zimbabwe, the exclusive right to reproduce, import or export or to make the published edition available on a public computer network (s23). The owner of copyright in databases as literary work in the form of compilations has the exclusive right to reproduce, publish, import or export, perform, broadcast or to transmit the work by cable programme service.

There are no specific provisions on the exclusive rights of owners of copyright in computer-generated works, such owners therefore rely on the general rights afforded to copyright in literary and musical works (s17), which are reproduction, publication, import or export, performance, broadcasting, cable transmission and adaptation of the work. As it is also possible to have computer-generated artistic works, section 18 is also relevant, this section provides that owners of copyright in artistic work have the exclusive right to reproduce, publish, import or export the work, to include it in an audio-visual work or a broadcast, to transmit by cable and to adapt it.

A person who does any of the above acts without the owner of the copyright's permission infringes the copyright (s51(10-(2)). There is a de minimis exclusion in relation to importation and/or exportation; importation or exportation of single copies for personal and private use is permitted (s51(2)(a)(ii)). Where the importation or exportation is commercial or on a large scale, the owner of the copyright may apply for the prohibition of entry or exit of the infringing goods into or out of Zimbabwe(s60).

There are no moral rights in relation to computer programs and computer-generated works and no moral right to object to derogatory treatment of both (ss 62(a)(i) (iii), s64 (3)(b)). Moral rights subsist in databases as compilations(ss 61(1), 64(2)).

13. Remedies

The owner of the copyright may institute litigation in the Intellectual Property Tribunal, the High Court or the Magistrates Court (ss52(1),54). The copyright owner may apply for an Anton Pillar Order, to secure his evidence(57). The remedies available include damages, interdict, attachment, rendering of account, delivery of the infringing copies or articles used or intended to be used to make infringing copies (s52(2),58). The Act lays down guidelines for the determination of damages payable (s55).

There is no case law to date on infringement of copyright in computer programs, computer-generated works and databases as the Act has not yet come into operation.

14. How the Courts Would Test for Infringement

As stated earlier no infringement cases have as yet come before the courts. As the Zimbabwean statute borrows heavily from the English Act, it is envisaged that courts will rely on English case law. To establish infringement the plaintiff/claimant must prove that his work was copied. The court will ask

1. what are the work or works in which plaintiff claims copyright?

2. is each such work 'original'?

3. was there copying from that work?

4. if there was copying, has a substantial part of that work been reproduced?

(Ibcos Computers Ltd V Barclays Mercantile Highland Finance Ltd [1994] FSR 275 at 296-7.)

15. Are Literal and Non-literal Copying Both Covered?

Section 2 of the Act defines 'copy' in relation to a literary work to include a copy in the form of a record or an audio-visual work and 'reproduce' as to' make a copy of a work in any manner or form including storing the work permanently or temporarily in electronic form. This definition is similar to the English definition. It however lacks the prescription that the copying must be material.

It is argued that both literal and non-literal copying are covered as they are covered by the English Act upon which the Zimbabwean Act is based. This heavy reliance on the English position means that problematic issues in that position have been also taken into the Zimbabwean position, for instance, the protection of non-literal elements of a program is likely to be one such difficulty. This difficulty is cast in terms of the idea/expression dichotomy in American law.

It is probable that our courts will follow the English approach of first determining that which has been copied then proceeding to ascertain whether or not the copy constitutes a substantial part of the original program. Whether or not the copy constitutes a substantial part of the original is a difficult question that will revolve on the nature of individual facts before the court.

16. Criminal Offences and Penalties

The commission of the following acts at a time when copyright subsists in a computer program, computer-generated works and databases/published editions are criminal offences (s59(1));

  • Production of, or import and/or export of infringing copies, otherwise than for personal use;
     

  • Possession, distribution or public exhibition of infringing copies in the course of business or other distribution that prejudices the owner of the copyright;
     

  • Sale or lease or offers to sell or hire out infringing copies;
     

  • Production of, or import and/or export of articles specifically designed or adapted for making infringing copies;
     

  • Possession, sale or letting out of articles specifically designed or adapted for making infringing copies in the course of business.

For the above offences the Act provides for a penalty of imprisonment for a period not exceeding two years and/or a fine not exceeding fifty thousand dollars in respect of each article to which the offence relates (s59(5)). The goods may also be seized and forfeited (s60(8)) and destruction may be ordered as an additional penalty.

It is an offence to knowingly make or procure a false registration of copyright, assignment or license, to forge registration documents or give false evidence to the Registrar of Copyright in a registration application. These offences are punishable by 'a fine not exceeding ten thousand dollars or to imprisonment not exceeding two years or both such fine and imprisonment' (s110).

17. Conclusion

It is clear that whilst Zimbabwean statutes permit copyright protection of computer programs, output and databases there is need for extensive amendment to ensure a clear, comprehensive and internationally acceptable legislative framework. Such a framework will hopefully enhance ecommerce in Zimbabwe and result in great benefit to the nation.

Notes and References

WIPO 'Primer on Electronic Commerce and Intellectual Property Issues' paragraphs 20-5,202-3.

Copyright Act Chapter 26:01.

Copyright and Neighbouring Rights Act Chapter 26:05.

WIPO Model provisions on the protection of computer software, Geneva 1978.

The Copyright, Designs and Patents Act 1988.

Directive on the Legal Protection of Databases 96/9/EC, Official Journal L 077, 27/03/1996 p.0020 ? 0028.

Berne Convention.

Feist Publications v Rural Radio Service [1991].

University of London Press Ltd v Universal Tutorial Press Ltd [1916] 2Ch 601 at 608.

Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 at 290.

European Council Directive on the Legal Protection of Computer Programs (Software Directive)( Directive 91/250/EEC, Official Journal L 122, 17/05/1991 p.0042 ? 0046).

Copyright (Computer Programs) Regulations 1992 (SI 3233).

Digital Millennium Copyright Act of 1998.

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