Over the years, computer program users have considered contract law as the main basis for legal protection to be unsatisfactory. This is perhaps more evident now that direct contractual links between program developers and users has become impracticable judging from the millions of end users of computer programs world wide. Nigeria is reported to be the fastest growing computer software market in Africa with multinational corporations such as IBM, Hewlett Packard etc. having representative agents here in Nigeria. It is therefore only a matter of time before our courts become swamped with Computer Software litigation.
The recent English common law case of St Albans City and District Council V. International Computers Ltd 1996 4 All ER 481 may prove to be a useful guide to our courts in shaping a policy approach to computer software protection in Nigeria.
This case, appears to have re-opened the debate on the usefulness of contract law in protecting computer software users. In that case, ICL were ordered to pay £1.3 million in damages to St Albans City Council for providing them with defective software which was used to calculate community charge returns. The £1.3 million damages awarded by the court was despite an exclusion clause in the contract which limited ICL's liability to £100,000. ICL appealed but the court of appeal re-affirmed the decision of the lower court. Of particular significance in the appeal courts decision were the comments of one of the judges Sir Iain Glidewell who despite not handing down the main judgement made a number of rather interesting observations namely:
(i) Should software be regarded as goods?
(ii) if so, should software contracts be subject to implied terms as to fitness for purpose?
The answers to both these questions are within the realm of the sale of goods law. The old English Sale of Goods Act of 1893 is applicable to most states in Nigeria by virtue of being a pre 1900 English Act of General Application, while, the sale of goods law 1958 is in force in Edo, Delta, Oyo, Ogun, Ondo, Oshun & Ekiti states.
English common law decisions are of persuasive authority in Nigerian Courts. The questions outlined above are therefore of either direct of indirect significance to Nigeria. It is also perhaps fair to say that Nigerian judges may wish to take notice of the comments and answers to these questions when considering similar issues that may come before them in the future.
IS SOFTWARE "GOODS" ?
This question has been debated for years in several jurisdictions. Sir Glidewell drew a distinction between computer programs and the disk on which such programs are stored. He said that the disk would be regarded as goods but not the software stored on that disk.
This analysis of course is not new but he went further to draw an analogy between a computer software program on disk and the information contained in an instruction manual of a car. Sir Glidewell went on to say that if the instructions in the manual were wrong, then any one following them may cause damage e.g to the engine of the car. It follows therefore that the manual and the instructions contained in the manual constitutes goods within the meaning of the Sale of Goods Act.
If this analogy is applied to software, Sir Glidewell is of the opinion that the disk and the software supplied on that disk or some other medium together are to be regarded as goods. However if the software is transferred to a computer by electronic means e.g. via telephone or by down loading the software to install it, then such software on its own would not constitute goods.
IMPLIED TERMS AS TO FITNESS FOR PURPOSE
If software is to be regarded as goods in certain circumstances, then the implied terms as to quality and fitness for purpose as contained in the English Sale of Goods Act 1893 and the sale of goods law 1958, will apply to computer contracts in Nigeria.
Most software suppliers are careful to include terms in their contracts excluding the implied terms of fitness for purpose and quality as implied in most sale of goods laws.
Since most software suppliers can only really guarantee functionality, it would be impracticable for them to guarantee that their software would meet the particular needs of various businesses.
Sir Iain Glidewell did however observe in the ICL case that irrespective of the English Sale of Goods Act, the courts could imply terms into a contract if and only if the courts find that the parties intended that such terms should form part of the contract. He went on to say that software contracts could be subject to an implied term that the program will be reasonably fit or capable of achieving its intended purpose and that - he would easily have implied such a term into the ICL contract.
It is doubtful whether the Nigerian courts will be prepared to extend the frontiers of Nigerian law as far as Sir Glidewell is suggesting but it would be a welcome development if computer suppliers either directly of through their agents and distributors are made subject to our sale of goods laws.
INTELLECTUAL PROPERTY LAW
Intellectual property law as an alternative means of protection for computer program developers has proved to be more ideal but then, it is still by no means certain which of the categories of Intellectual property law best protects computer programs.
Although novel or inventive computer programs that produce a technical result may be subject to patent protection, the overall cost and complexity in registering patents has made this option unattractive.
Copyright is considered a much more suitable option but then the intricacies of computer programs has made it necessary in may countries of the world for entirely separate laws to be introduced to provide adequate protection.
Today, copyright protection has generally been accepted as the best means for computer software protection although there are still debates on the usefulness of patent protection as used in the United States of America. One of the most important considerations in favour of bringing computer programs within the copyright umbrella is the fact that the protection arises automatically and that international conventions ensure that roughly similar protection is likely to be conferred upon authors in all states party to them.
PROTECTION UNDER THE COPYRIGHT ACT 1988
Nigerian law does not provide for separate computer software legislation. As such the Nigerian copyright Act 1988 provides the governing law. S.39 of the Nigerian copyright Act 1988 defines a computer program as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result". This definition arguable covers preparatory design material such as flow charts and drawings etc. used in creating the computer program.
Literary works is also defined in the Act to include, irrespective of literary quality, computer programs. As literary works computer programs are clearly within the ambit of the Nigerian copyright law. They must however satisfy the usual requirements for copyright protection before the Act applies:
a) ORIGINALITY: Only works that are original are protected under the Act. The standard for originality is set rather low. So long as sufficient effort has been expended in creating a computer work, so as to give it an original character, it will be protected by copyright Section 1 (2) (a).
b) RECORDED IN WRITING OR OTHERWISE: All literary works must be fixed in a definite medium of expression now known or later to be developed from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device. (S.1 (2) (b) Copyright Act 1988). This subsection is sufficient wide enough to cover copying, storage and use of computer programs.
The usual fear is that the courts could say that running a computer program does not mean copying, since any copying that takes place is within the bowels of the computer. Secondly, it may also be argued that such copying is only momentary and is purely secondary to the use of the program. The above provision of the Copyright Act appears to dispel such fears.
c) AUTHORSHIP: As general rule, the owner of copyright in a computer program, or, for that matter, any other work is the author of the program (S.9 (1) Copyright Act 1988). This general rule also applies to the relationship between an employer and the employee. Where an employee creates a computer program in the execution of his duties or under the instruction of his employer then the employer will not be entitled to the exclusive right to exercise all economic rights in the program unless the relevant contract of employment provides the contrary (S.9 (2) (b) copyright Act 1988). A second exception to this general rule, it is thought, applies in the case of computer generated works. This is a program which is generated by a computer in the circumstances where there is no human author of the work. Although Nigerian law does not provide for such an exception it is assumed that given such circumstances, the position that prevails in the United Kingdom whereby it is recognised that copyright can exist in such a work and that the author of such a program will be deemed to be the person by whom the arrangement necessary for the creation of the work are undertaken will apply. It is also thought that the same rules concerning ownership as between employers and employees will apply in these circumstances.
d) CONTROL: A series of measures of control which the owner of copyright can have in a computer program are generally provided for under the copyright Act 1988 i.e. the control of the production, distribution and adaptation of the software.
I. Copying: It is a breach of copyright in a computer program to reproduce the program in any material form which includes storing the work in any medium by electronic means (S. 1 (2)(b) copyright Act 1988). Except where the computer program has been licensed and provided for by the copyright owner, the normal use of such a computer program will infringe the owner's copyright.
II. Distribution: The owner of the copyright in a computer program has the right to control the distribution and importation of copies of the computer program which have not previously been authorised or licensed for sale in Nigeria (S. 141 (a) (b) & (d). Also of particular significance is S. 36 of the copyright Act 1988 which enables the department of customs and excise to prevent the importation of any printed copy of a work made outside Nigeria which if it had been made in Nigeria would be an infringing work S. 36 (2). As a matter of practice, subsequent sub-distribution arrangements are generally provided for by specific contractual terms between the copyright owner and the distributor.
III. Adaptation of computer programs: Under the Act, adaptation is defined by Section 39 as the modification of a pre-existing work from one genre of work to another and consists in altering work within the same genre to make it suitable for different conditions of exploitation, and may also involve altering the composition of the work. It is therefore also an infringement of copyright to make adaptations of a computer program of the copyright owner (as the case may be). The above definition appears suitably wide enough to cover computer translations in which computer programs are converted into or out of a computer language or code or into a different computer language or code.
e) DURATION OF PROTECTION: Copyright protection lasts for 70 years from the end of the year in which the author dies. Where there is joint ownership, protection will last for 70 years beginning at the end of the year from the death of the last known author. In the case of computer generated works, copyright protection will last for 50 years from the end of the year in which the computer program was made.
Generally speaking, computer programs are unlikely to warrant this length of protection. In the computer industry, technology develops rapidly and often it is only a matter of a few months or years before programs become obsolete.
f) INFRINGEMENT: As in the case of any other type of copyright infringement, the copyright owner's primary concern is to stop the infringement swiftly and effectively. This is achieved by way of obtaining injunctive relief against the guilty party. In order to be effective, it is essential that injunction proceedings are commenced as soon as the copyright owner has knowledge of the infringement. The copyright owner may also bring an action for damages against the party which is guilty of infringing his copyright.
g) GENERAL: As a general point, copyright owners are encouraged to use the copyright notice (c) on their works. Although, it is not actually necessary to achieve protection, this notice almost invariably appears on most copies of computer programs.
CONCLUSION: It is perhaps premature to suggest that contract law can no longer provide adequate protection for computer program users. Direct contractual links between computer program developers and users may no longer be practicable however, a new contractual link may be developed between computer program suppliers either directly or through their agents and distributors by bringing them within the ambit of the Sales of Goods Act 1893 and the Sales of Goods Law 1958. With the increased use and availability of computer software programs in Nigeria, it is only a matter of time before this issue becomes the subject of litigation before our courts.
Regarding the position of computer software developers, although computer software can to some degree be protected by the provisions of the copyright Act 1988, there is however need for specific provision in the copyright Act so as to consolidate the protection given to computer software in Nigeria. For instance, there is need for a distinction between a computer generated work as opposed to a computer aided work. There is also need for guidance on the production of a back-up copy or copies by a legitimate user as provided for in the laws of most western countries. Are moral right provisions applicable to computer programs or should they be excluded? Is decompilation i.e. interfacing permissible under Nigerian law? All these issues can only be addressed specifically rather than by general legislation.
It is hoped that any newly proposed industrial and intellectual property legislation will address some if not all of these issues.
HOW AKINJIDE & CO. CAN ASSIST YOU
Akinjide & Co. is a leading corporate law practice based in Lagos, Nigeria, with branch offices in Ikeja and Ibadan.
This guide on intellectual property in Nigeria has been produced by the intellectual property group of Akinjide & Co. and is intended to provide general guidance and information only. It is not a major work of reference and specific questions and enquiries should be referred to:
Stephen Kola-Balogun Akinjide & Co. 10th Floor, Western House 8/10 Broad Street, Lagos - Nigeria. Tel: 234 1 263 5315 Fax: 234 1 264 5525. E-mail: firstname.lastname@example.org