A recent decision of the Federal Court considers what
is required to be an author of a computer program.
The applicant was a former employee of the respondent group of
companies (collectively the "Respondent"). He
claimed that he was a joint author and joint owner of a series of
related programs (the "Software") in the possession of
the Respondent. He sought a declaration that copyright
subsisted in the Software and that he and another individual were
joint authors and owners of it as well as other relief.
The applicant had signed a number of agreements relating to his
employment as well as a confidentiality agreement. However,
he took the position that his contribution as author of the
Software was outside his employment relationship with the
Respondent. In substance, the applicant said that he had
reached an agreement with the principal of the Respondent and that
as a result of his collaboration and development of the Software he
was to receive an equity interest in the Respondent in nature of a
With respect to his contribution to the software the applicant
said that he made intellectual contributions that were instrumental
to the overall design, layout, functionality and expression of the
Software. The applicant was not actually involved in the
preparation of any code and there was no evidence as to the linkage
between his contributions and its expression in the Software or its
The applicant had obtained copyright registrations relating to
his alleged joint ownership interest in the Software.
The judge started his analysis by referring to the fact that in
order for copyright to subsist in a work, the work must be
original. The originality required to obtain copyright
protection in the expression of an idea must consist of the
exercise and skill of judgment. The reference to skill
requires the use of the author's knowledge, developed aptitude
or practised ability in producing the work. The reference to
judgment requires that the author make use of their capacity for
discernment or ability to form an opinion or evaluation by
comparing different possible options in producing the work.
The exercise of skill and judgment requires intellectual
effort and must not be so trivial that it could be characterized as
a purely mechanical exercise.
Under the Copyright Act, a computer program means a set
of instructions or statements, expressed, fixed, embodied or stored
in any manner, that is to be used directly or indirectly in a
computer in order to bring about a specific result.
The judge referred to English cases involving computer programs
which said that copyright is concerned with the process of the
creation of the work and not the ideas going into the work nor with
the functionality or the end product results. In computer
programming what is capable of protection is the code that is
written by the programmer including the design and structure of the
The judge referred to the dichotomy between ideas and their
expression in the context of copyright. It is clear, under
Canadian law, that an author of a work is entitled to copyright
protection if they exercise skill and judgment which results in the
expression of a work in material form. However, copyright
does not subsist in arrangements, systems, schemes, methods for
doing things, procedure, process, concept, principle or discovery,
but only in the author's original expression of them.
When this approach was applied to the facts of the case, the
judge concluded that the applicant had not provided any evidence as
to the linkage between his contributions and their expression in
the software. As such, they fell into the category of ideas,
methods, procedures, algorithms or other similar contributions,
which, although valuable are not protected by copyright.
With respect to the certificates of registration of copyright
obtained by the applicant, the judge said that while a certificate
has some evidentiary weight it will only be given effect to by a
court in the absence of evidence to contradict it. In this
case there was evidence that contradicted what was said in the
As a result of the conclusion concerning the applicant's
contribution it was not necessary to give consideration to the
effect of the various agreements he had signed or the effect of the
alleged oral agreement.
Like many cases involving intellectual property the facts are
vitally important. In this case, the applicant's
affidavits failed to set out a specific linkage between his
contributions and their expression in the Software.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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