LONDON — Implementation and functionality of most new technology now depends on software. Software for renewable energy technology, often referred to as ‘CleanTech’, is no exception to this rule. For example, a consumer considering participation in a feed-in tariff (FiT) scheme will want to know if their property is in fact suitable for solar generation before committing time and money. Consumer software products have been developed to simulate location-specific suitability. One application, for example, allows users to locate their home on Google Maps, insert symbols representing the envisaged location of the panels and additional data such as the pitch of their roof and suspected sources of shadows, following which the software estimates the generation of solar electricity.
With demand for CleanTech increasing, software developers investing significant research, development and financial resources into their products will need to rely on intellectual property (IP) rights to protect those investments. While developers and investors rely on UK and EU law, this is merely part of the larger issue of protecting intellectual property in renewable energy technologies globally. For example, the Chinese Ministry of Industry and Information Technology is pursuing a 10-year growth plan to increase the country’s renewable energy profile, having already overtaken the US in terms of installed wind generation. China’s legal framework for IP protection has therefore been developed rapidly over recent years so as to protect the future values in renewable energy, including changes to patent law to attract foreign direct investments.
Protection by Copyright
As with all software, the most important legal protection for CleanTech software is copyright law. In the UK this is governed by the Copyright Designs and Patents Act of 1988 (CDPA). The CDPA includes computer programs as well as ‘preparatory design material for a computer program’, such as original literary works.
The EC Software Directive defines a computer program as including: ‘Programs in any form, including those which are incorporated into hardware [and]… preparatory design work leading to the development of a computer program provided that the nature of the preparatory work is such that a computer program can result from it at a later stage.’
Programmers seeking to develop software solutions for the CleanTech market will therefore want to ensure their work qualifies for copyright protection. Whereas computer programs, including the source code, may qualify for protection as original literary works under the CDPA, the screen designs may be protected by artistic copyright in much the same way an artist’s painting is protected.
A key requirement for copyright to subsist is that the computer program must be ‘original’. This will rarely pose any difficulties, as long as the program was created through the programmers’ own skill, judgement and effort.
Databases, however, demand a higher standard of originality to qualify for copyright protection. This will be of particular relevance to the CleanTech sector, given that many software applications use databases containing, for example, weather, climate, dispersion or oceanic data to perform calculations to determine things such as sunlight exposures or wind and tidal strengths of specific locations.
A database of, for example, UK cloud forecasts and records that enable a software application to assess the suitability of certain locations for the installation of solar panels will qualify for copyright protection ‘if, and only if, the selection or arrangement of the contents of the database constitutes the author’s own intellectual creation’ (section 3A(2) CDPA). If the decisions about what and how many forecasts and records to include, what to exclude, and how to structure the information and arrange it to enable the user to obtain a reliable prediction requires an act of intellectual creation, the database may well qualify for copyright protection.
As with any database, those collecting independent works, data or other materials to meet the demands of the CleanTech sector are also subject to a two-tier approach, whereby the database may be protected not only under the CDPA, but also the Copyright and Rights in Databases Regulations 1997 (‘the Regulations’), or even both.Protection under the Regulations can apply if the database can be regarded as ‘commercially valuable’ as the result of a financial investment (whether of financial, human or technical resources).
In the above example, the final database could therefore be subject to copyright at two levels (the cloud forecasts and records which, in the UK, might be subject to Crown Copyright if licensed through the MetOffice, as well as the database as a whole) and might also be protected under the Regulations derived from EU law.
The further qualifying requirement under section 3(2) CDPA that the work must be ‘recorded’, in writing or otherwise, will also usually be easy to fulfill. Programmers of CleanTech software should nevertheless bear in mind that because the CDPA includes ‘computer programs’ under ‘literary works’, only the underlying program language is protected, while, for example, the graphical user interface resulting from the programming may not be protected as a literary work (although artistic copyright could apply).
In fact, the question of whether the functionality of a software program, as opposed to its underlying code, can be subject to copyright protection is the key issue in a dispute presently before Europe’s highest court, the European Court of Justice (ECJ). In this case a software development company, SAS Institute, claims that another programmer, World Programming, infringed its copyright by developing a competing program allegedly based on detailed information originally set out in SAS’s own manuals.
While World Programming never copied any of SAS’s source codes (which would probably be protected by copyright), they nonetheless achieved a program performing the same functions as SAS’s product. SAS argued that copyright should also apply to the functions of computer programs, and not just the source codes, so as not to ‘deprive the copyright owner of a significant part of the value of the protection given to computer programs’. The English High Court referred a number of questions to the ECJ on the correct interpretation of EU law and, in particular, the Software Directive.
Advocate General Bot recently issued his opinion, ahead of the ECJ’s binding decision which is expected this year, on the questions referred by the English High Court. The Advocate General’s opinion concludes that the protection of a computer program is not confined to the source and object code but covers other elements which express the author’s own intellectual creativity, skill and originality. Therefore, computer programmers can only replicate the functionality or ‘look and feel’ of a program, if they do not copy a substantial part of the underlying source or object code or any other elements which are created by the author’s own intellectual creation.
The Advocate General’s opinion is largely consistent with a previous leading UK judgement in proceedings between the airline EasyJet and software programmer Navitaire, where it was held that copyright protection does not extend to interfaces, computer languages and functionality in themselves. However, while the Advocate General agrees that there is no copyright in the functionality of a program he takes this one step further by stating that copying the functionality can lead to copyright infringement if the reproduction is substantial and includes elements of the author’s own skill, originality and intellect. The Advocate General’s opinion, though often followed, is not binding.
Duration of Copyright
The usual protection of 70 years from the end of the calendar year in which the author died will apply once any computer program for the CleanTech market has qualified for copyright protection.
Any copyright subsisting in databases under the Regulations, however, only lasts for 15 years from the end of the calendar year in which the work was finished.
Who is the Author?
The question of ‘who is the author’ is important to developers of CleanTech software, as complex computer programs are rarely designed by one person. The general rule under section 9(1) CDPA is that the author of a copyright work is the person who created it. If a wind farm developer were, for example, to commission a software programmer to design a program capable of modelling wind farm operations and grid connections, the developer will not own the copyright until the programmer validly assigns it. Anyone wishing to have the copyright assigned to them should obtain the assignment expressly and clearly in writing, as the courts have refused to imply an assignment (Meridian v Ian Richardson (2008)), even where the software includes the commissioner’s operating procedures (Clearsprings Management v Businesslink (2005)).
Employees, however, are an exception to the general rule that the author of the work is the person who created it. Section 11(2) CDPA states that where a work is made by an ‘employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary’. Therefore, if the programmer of the wind farm modelling software were instructed to design it in the course of their employment, they would not have any claim to its copyright unless the employment contract made a specific provision; it would be owned by their employer.
If a program is produced by two or more authors, but their contributions are indistinguishable then there will be joint authorship, and the copyright is owned by both individuals. However, in terms of software, if the author of the source code can be distinguished from the programmer who, for example, designs the user interface, it is the programmer who writes the source code who will be considered the author of the program (although the designer of the user interface could, of course, still have artistic copyright in that work).
Civil Remedies for Infringement
The CDPA provides a number of potential remedies for the copyright owner who is successful in establishing copyright infringement. In practice, the most significant remedies available for the copyright owner under the CDPA are damages, an account of profits, injunctive relief and an order for delivery up. The copyright owner may apply to court for injunctive relief, usually in the form of an interim injunction. This is a useful tool for the copyright owner as it is a temporary court order which prohibits the infringing party from doing a certain action (for example, to prevent further copyright infringement) until there has been further court action. A final injunction will be awarded to a copyright owner who has successfully established copyright infringement at a full trial.
A copyright owner who succeeds in establishing copyright infringement may also elect either for an account of profits or an assessment of damages (it cannot have both). The purpose behind an award of damages is to put the copyright owner in the position they would have been in had there not been any copyright infringement.
An account of profits, on the other hand, aims to provide the copyright owner with the profits obtained by the infringer as a result of the infringement. An award of damages is subject to an assessment to quantify the measure of damages suffered by the copyright owner as a result of the infringement. The method for calculating an account of profits is slightly more straightforward, as the courts generally take a net figure for the profits made by the infringer as a result of the infringement.
Another potentially useful remedy in practice for the copyright owner is an order for delivery up under the CDPA. The copyright owner may apply for the court to make an order for the infringing party to deliver infringing copies of the relevant copyright work or articles designed or adapted for making copies of the copyright work, to the possession of the copyright owner.
Copyright infringement may result in criminal penalties. The most severe penalties, such as imprisonment, are for the manufacture, importation or distribution of copyright infringed products.
Other Intellectual Property Rights
While copyright awards the most important protection for software, developers can also try to ensure that the content of their computer programs, including the source codes, are protected as trade secrets and by the law of confidentiality. Computer programs and their codes may not always automatically fall within the scope of confidentiality law and, to this extent, it may be advisable for developers to ensure that they have express confidentiality agreements in place whenever it becomes commercially necessary to disclose these codes.
As the UK and EU are determined to meet 2020 renewable energy targets, the value of intellectual property in the CleanTech sector cannot be over-emphasised. Given the significant investments made in the development of software applications, it is crucial for developers to be aware of their intellectual property rights and enforce them effectively.
Andrew Horrocks is a partner and Matthias Kuznik is an associate in the Professional and Commercial Disputes team at Clyde & Co LLP. They were assisted in writing this article by Carl Hotton, trainee solicitor.