Copyright in computer programmes – The need for law reform

April 1st, 2012
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By Linda Muswaka

The Copyright Act 98 of 1978 (the Act) grants the copyright owner of computer programmes the right to make or authorise the making of an adaptation of the computer programme (s 11B(f)). While this much is clear, is this right adequately protected?

Current state of the law

Copyright vests in the copyright owner of computer programmes the exclusive right to make or authorise the making of an adaptation of the computer programme (s 11B (f)). Copyright is infringed by any unauthorised person who does or causes any other person to do any act that the owner has exclusive rights to do or to authorise (s 23(1)). Where a person makes an unauthorised adaptation of a computer programme, copyright is infringed. Infringement of copyright leads to criminal liability where the perpetrator has knowledge that his actions will cause infringement. The knowledge requirement for this offence is interpreted widely to include circumstances where the accused ought to have known or suspected that he may not have had authority but nevertheless proceeded with his actions, without confirming the presence or absence of the requisite authority.

Section 27 of the Act provides:

‘(1) Any person who at a time when copyright subsists in a work, without the authority of the owner of the copyright –

(a) makes for sale or hire;

(b) sells or lets for hire or by way of trade offers or exposes for sale or hire;

(c) by way of trade exhibits in public;

(d) imports into the Republic otherwise than for his private or domestic use;

(e) distributes for purposes of trade; or

(f) distributes for any other purposes to such an extent that the owner of the copyright is prejudicially affected,

articles which he knows to be infringing copies of the work, shall be guilty of an offence.’

Section 27(1) makes it clear that for purposes of criminal liability only the consequences of copyright infringement in computer programmes are considered. It is only when one of the actions described in s 27(1) is committed in respect of an infringing copy of a computer programme that an offence is committed. This means that criminal liability in terms of s 27(1) presupposes the existence of an ‘infringing copy’ of a computer programme and the unauthorised selling, letting for hire or distribution of such a copy. The section excludes from the ambit of criminal liability the act of making an unauthorised adaptation of the computer programme. The protection granted to a copyright owner in terms of the section is therefore narrowly defined and is not wide enough to prevent unauthorised adaptations of computer programmes.

The position of the copyright owner is further exacerbated by s 2(3), which reads:

‘A work shall not be ineligible for copyright by reason only that the making of the work, or the doing of any act in relation to the work, involved an infringement of copyright in some other work.’

The meaning of s 2(3) was put into perspective by the Supreme Court of Appeal in Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others 2006 (4) SA 458 (SCA), at 24, where the court held: ‘If a work is eligible for copyright, an improvement or refinement of that work would similarly be eligible for copyright, even if such improvement involved an infringement of copyright in the original work, as long as it satisfies the requirement of originality.’

Two issues arise. Firstly, the possibility of an author being sued for infringement even though he has acquired copyright in a work that he has created by making unauthorised adaptations to another’s copyright material. Secondly, whether the law adequately protects copyright owners in situations where infringement takes the form of unauthorised adaptations of computer programmes.

With regard to the first issue, the fact that an author obtains copyright in a work that he has created by making unauthorised adaptations to another’s copyright material is irrelevant to the inquiry whether or not copyright infringement took place. In terms of the Act: ‘Copyright shall be infringed by any person, not being the owner of the copyright, who, without the licence of such owner, does or causes any other person to do, in the Republic, any act which the owner has the exclusive rights to do or to authorise’ (s 23(1)).

The second issue is more complex. It is one that can be addressed properly by analysing the effects of s 2(3) and s 27(1) of the Act. In terms of s 2(3), an author can, subject to the originality requirement, acquire copyright for an unauthorised adaptation of the computer programme regardless of copyright infringement. However, in terms of s 27(1), the copyright owner of the adapted computer programme cannot sue such an author for criminal liability. In this regard, it would not be an overstatement to say that the Act empowers perpetrators of copyright infringement relative to copyright owners.

In order to deal with this potential shortcoming, the need arises to seriously consider criminalising the act of making unauthorised adaptations of computer programmes. Two options are available. Legislative intervention to create a crime prohibiting the act of making an unauthorised adaptation of a computer programme, on the one hand, or leaving the matter to the courts to punish such conduct by way of extensions to existing common law offences, on the other.

With regard to the latter option, the crime of malicious injury to property at first appears appropriate for this purpose. Malicious injury to property consists of unlawful and intentional damage to another’s property. An unauthorised adaptation of a computer programme causing the alteration or destruction of the original computer programme would have fallen squarely within the description of malicious injury to property. However, it must be borne in mind that an important requirement that must be complied with before malicious injury to property can be committed is that the thing damaged must be of a corporeal nature.

The offence, in its present form, cannot therefore be committed in respect of damage caused by means of unauthorised adaptation of computer programmes. It is doubtful if the courts would consider extending the application of the common law offence of malicious injury to property to incorporeal property such as computer programmes. For this to happen, a court would have to extend the concept of ‘property’ in the definition of this offence to include intangibles that have economic value to a person.

It therefore appears that leaving the matter to the courts to punish the act of making unauthorised adaptation of computer programmes by way of extensions to existing common law offences such as malicious injury to property will result in the Procrustean approach to force unlawful acts into the language of specific offences not designed to fit them. The option of creating a statutory crime prohibiting the conduct should be seriously considered.

It is crucial to look at what other jurisdictions have adopted in order to deal with this potential shortcoming. Unauthorised adaptations of computer programmes are not unique to South Africa and most jurisdictions have in some manner addressed, or have a mechanism for dealing with, the act of making unauthorised adaptations of computer programmes.

International approach

United Kingdom

In the United Kingdom (UK) copyright is governed by the Copyright, Designs and Patents Act 1988 (c48) (CDPA). In terms of s 16(1)(e) read with s 21, the copyright owner has the exclusive right to make an adaptation of the work. Infringement occurs when a person without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright (s 16(2)). The CDPA provides for criminal liability for making or dealing with infringing articles. Section 107 provides:

‘(1) A person commits an offence who, without the licence of the copyright owner –

(a) makes for sale or hire, or

(b) imports into the United Kingdom otherwise than for his private and domestic use, or

(c) possesses in the course of a business with a view to committing any act infringing the copyright, or

(d) in the course of a business –

(i) sells or lets for hire, or

(ii) offers or exposes for sale or hire, or

(iii) exhibits in public, or

(iv) distributes, or

(e) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,

an article which is, and which he knows or has reason to believe is, an infringing copy of a copyright work.’

Section 107 resembles s 27(1) of the Copyright Act. It also does not make unauthorised adaptation of computer programmes a criminal offence. This shortcoming is addressed in the Computer Misuse Act 1990 (c18) (UK CMA), which was enacted to deal specifically with computer crime.

Section 3, as substituted by s 36 of the Police and Justice Act 2006 (c48), states that a person who does any unauthorised act relating to a computer, knowing that the act is unauthorised, and intending the act to cause, or being reckless as to whether the act will cause, one of the following –

(a) the impairment of the operation of any computer;

(b) the prevention or hindering of access to any programme or data held in any computer;

(c) the impairment of the operation of any such programme or the reliability of any such data; or

(d) the enablement of any of the things mentioned in (a) to (c)

is guilty of an offence.

In terms of s 3, in order for criminal liability to ensue, the unauthorised act, which may be an unauthorised modification, must result in the specified consequences. The drawback of such an approach is that it is too restrictive.

Singapore

The Singapore copyright legislation is the Copyright Act 2 of 1987 (Cap 63). In terms of s 26(1)(vi) of this Act, the copyright owner has the exclusive right to make an adaptation of the work. Copyright is infringed by an unauthorised person doing, or authorising the doing, in Singapore of any act protected by the copyright. Section 136 provides for criminal liability for making or dealing with infringing articles:

‘(1) A person who at a time when copyright subsists in a work –

(a) makes for sale or hire;

(b) sells or lets for hire, or by way of trade offers or exposes for sale or hire; or

(c) by way of trade exhibits in public,

any article which he knows or ought to know, to be an infringing copy of the work shall be guilty of an offence… .’

Section 136(1) resembles both s 27 of the South African Copyright Act and s 107 of the CDPA. It also excludes the act of making unauthorised adaptations from its ambit. This conduct is, however, criminalised in the Singapore Computer Misuse Act 19 of 1993 (Cap 50A) (the Singapore CMA). This Act corresponds to a large extent with the UK CMA. The Singapore CMA contains an offence of unauthorised modification of computer programmes. Section 5 states that any person who does any act which he knows will cause an unauthorised modification of the contents of any computer shall be guilty of an offence. In terms of the section, the unauthorised modification must take place with respect to ‘the contents of any computer’; in other words, information stored on a computer. This raises a question as to the modification of data on removable storage media such as disks. While the data on a storage medium is being accessed by a computer, an argument can be made that data is technically ‘on that computer’ even though it is not stored on the computer. However, once the storage medium is removed from the computer, the information it contains can no longer be said to be ‘the contents of a computer’. In terms of the Singapore CMA, unlike the UK CMA, the consequences of the unauthorised modification of the contents of a computer are immaterial (s 5(3)).

Future direction

The creation of a statutory crime rather than stretching the common law seems to be the route followed in other jurisdictions. I submit that South Africa should follow suit. However, a different approach to the one adopted in the UK and Singapore is recommended.

New legislation or a Computer Misuse Act is not necessary to fill the lacuna that currently exists in South African legislation. It is proposed that the existing s 27(1) be amended by the insertion of a new section, s 27(1A), providing for the offence of making unauthorised adaptations of computer programmes. The proposed section would dovetail with s 27(1) and, consequently, the penalties stipulated in s 27(6) would also apply.

It is recommended that the proposed offence should deal with the act of making unauthorised adaptations of computer programmes in an abstract manner without associating the adaptation with specific consequences. This simplifies the definition of the offence and widens its scope. As computer programmes are ‘a set of instructions fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result’ (s 1 of the Copyright Act), a more direct approach of protecting computer programmes stored in any manner will result.

Conclusion

By excluding from its ambit of criminal liability the act of making unauthorised adaptations of computer programmes, the protection granted to a copyright owner in terms of s 27(1) is narrowly defined. I therefore submit that the legislator should amend s 27(1) by inserting a s 27(1A) in order to fill this gap in existing legislation.

Linda Muswaka LLB LLM (UFH) is a law lecturer at the school of postgraduate studies and research at the North-West University (Mafikeng Campus).

This article was first published in De Rebus in 2012 (April) DR 42.