Applying Copyright Registration to Subsequent Works by the Author

I received a call from a programmer asking whether the copyright registration of software written in one code language applies to the same program written in another code language. The answer was important to him because someone had taken his registered DOS language program and adapted it to different code languages. Since an author can sue for derivative infringement, I thought the answer would automatically be yes. I learned, however, that the answer is not so clear, but is more of a 'it depends'.

Copyright provides an author the right to "secur[e] for [a] limited Time[] … the exclusive Right to [his] respective Writing." U.S. Constitution, Article I § 8. Binary software code, and hardware embedded code are protectable under copyright. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1246-48 (3rd Cir.1983), cert. denied, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984). The copyright owner has the exclusive right "to distribute copies … of the copyrighted work to the public by sale or other transfer of ownership." 17 U.S.C. § 106(3). A copyright also includes the exclusive right "to reproduce the copyrighted work in copies" and "to prepare derivative works based upon the copyrighted work." 17 U.S.C. § 106(1) and (2). To bring an action for copyright infringement, the work must be registered with the Copyright Office. 17 U.S.C. § 411(b).

To qualify for registration, the work must be an "original work of authorship." 17 U.S.C. § 102(a). The work may be a derivative work "based upon preexisting works, such as a translation, … or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101. This originality must be "something of substance added making the piece to some extent a new work." Woods v. Bourne Co., 60 F.3d 978, 991 (2d Cir. 1995) (Woods II). Thus, to qualify for, i.e., to require registration, the new work must have an "unmistakable dash of originality." Weissmann v. Freeman, 868 F.2d 1313 (2d Cir.), cert. denied, 493 U.S. 883 (1989). (Holding that a separate copyright protection existed in a derivative work based upon a jointly authored work.).

There is a distinction, however, between a translation of another work, i.e., a work "recast, transformed, or adapted" and a translation of software. "Translation" as historically used in § 101 applies to the translation of literary works, performance works and similar works. The 1870 Copyright Act reversed a ruling that a German translation of "Uncle Tom's Cabin" was not infringement. Stowe v. Thomas, 23 F. Cas. 201, 207 (C.C.E.D. Pa. 1853). Only then could "authors … reserve the right to dramatize or to translate their own works." Act of July 8, 1870, ch. 230 § 86, 41st Cong., 2d Sess., 16 Stat. 198. The subsequent revision to the Copyright Act gave the author the right "to translate the copyrighted work into other languages or dialects." 1909 Copyright Act §1(b). In fact, the term "derivative work" with "translation" first appeared in the 1976 Copyright Act, four years before the definition of "computer program" first appeared in the Copyright Act. Pub. L. 96-517, Dec. 12, 1980, 94 Stat. 3015. Consequently, the term "translation" as a derivative work does not apply to software.

To require registration of something rewritten, there must be "editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship." 17 U.S.C. § 101. For example, new registration is required when the derivative work adds new voices, horns and lyrics. Murray Hill Publications Inc. v. ABC Communications Inc., 264 F.3d 622 (6th Cir. 2001). (Affirming dismissal of suit on grounds of non-registration as required by §411(a) of contested derivative work).

The key aspect of rewriting software from one code language to another code language, however, is to have identicalness of program ideas, structure and overall organization between the programs, irrespective of the code language. Whelan Assoc. v. Jaslow Dental Lab, Inc., 797 F.2d 1222, 1229, 230 USPQ 481 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). (Affirming infringement on substantial similarity of program ideas, structure and overall organization.). In the Second Circuit, this is the "Substantial Similarity" test for copyright infringement. Steinberg v. Columbia Pictures, 663 F. Supp. 706 (D.C.S.D.N.Y. 1987).

The "Substantial Similarity" test demonstrates that the continuity of registration through language translation exists for the same reason that software is infringed, i.e. because of the substantial similarity remaining after "filtering out the unprotected aspects of an allegedly infringed program and then comparing the end product to the structure of the suspect program." Computer Associates International v. Altai Inc., 982 F.2d 693, 714, (2d Cir. 1992).

There are, however, some distinctions to be made. The Copyright statutes require that when "the work has been prepared in different versions, each version constitutes a separate work." 17 U.S.C. §101(14). This is not applicable to software where the same essential function remains between the versions. Montgomery v. Noga, 168 F.3d 1282 (11th Cir. 1999). (Holding for infringement of a software program containing only 70% of the registered version despite that the infringed 'version' was not separately registered).

Another important distinction is that translating a software program from one code language to another code language is not the same as making a copy for the "essential step" of use of the program, archival storage, maintenance, or repair which in not copyright infringement. 17 U.S.C. § 117. Likewise, registration does not extend protection to the standardized information, a.k.a. "externalities" that decided the sequence and organization of the software, making them unprotectable. Plains Cotton Coop. Ass'n v. Goodpasture Computer Serv., 807 F.2d 1256 (5th Cir. 1987). Code translation, however, provides the same expression of the same idea as in the original code. Only the computer or a programmer could tell the difference.

In other words, software requires separate registration only when it is "different enough from the original to be regarded as a new work or must contain a substantial amount of new material." Circular 14, U.S. Copyright Office, Rev. 01/2009. Consequently, the registration of software in one code language applies to the software in another code language having the same program ideas, structure and overall organization. Changes to any of these creates a new work - and requires a separate registration.