A Brief History of Software IP

By TAP Guest Blogger

Posted on April 26, 2016


This is the first report in the 7-part series from The 20th Annual BCLT/BTLJ Symposium. The reports were written by Kevin Hickey, Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.


A Report from the 20th Annual BCLT/BTLJ Symposium, Part 1


The 20th Annual BCLT/BTLJ Symposium’s opening speaker was David Hayes of Fenwick & West LLP, a leading practitioner with deep experience litigating precedent-setting cases in the software IP field. In a virtuoso presentation, Mr. Hayes surveyed six decades of legal changes in how copyright, patent, and trade secret can be used protect software. The overall picture was one of frequent change and periods of legal uncertainty about the scope of various forms of IP protection.


Part of this continual tumult stems from changes in the business models of technology companies. The technology industry has changed quite a bit over the course of the last 60 years, to put it mildly, and the industry has accordingly sought to use IP law to protect software in very different types of technology. As Mr. Hayes surveyed, in the 1960s, the ascendant technology was mainframe computers; in the 1970s, minicomputers; PCs in the 1980s; the Internet in the 1990s; cloud computing and open source programs in the 2000s; and, in our current decade, mobile computing. Each of these technologies presents distinct legal issues and challenges.


Most of the change, however, was driven by a series of legal decisions that have alternately increased, decreased, or simply deepened the uncertainty surrounding the strength and availability of IP protection. The pattern over time has been different for each of the three main forms of intellectual property.


In patent law, a trio of inconsistent Supreme Court decisions in the 1970s and 1980s (Benson, Flook, and Diehr) led to a period of unpredictability in the protection of software that lasted through the early nineties. Then, driven by pro-patentee Federal Circuit rulings such as In re Alappat, 33 F.3d 1526 (1994) and State Street Bank, 149 F.3d 1368 (1998), there was a decade-long period of relatively strong patent protection for software. More recently, with the Supreme Court’s decisions in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014), patents have become a much more difficult means to protect software, with many patents being invalidated for claiming ineligible subject matter. Presently, patent protection for software is at a historically low ebb.


The fluctuations have been quite different in copyright. Copyright protection for literal programming elements (the code itself) gradually expanded in the 1970s and 1980s, as companies attempted to claim non-literal programming elements as part of the “look and feel” of software—including user interfaces and the overall structure and organization of programs. This high level of copyright protection was fueled by decisions like Whelan Assocs. v. Jaslow Dental Labs., 797 F.2d 1222 (3rd Cir. 1986). The Whelan era came to an end in early 1990s, with decisions such as Computer Assocs. v. Altai, 982 F.2d 693 (2d Cir. 1992), and Lotus v. Borland, 49 F.3d 807 (1st Cir. 1995), ushering in an era of more carefully limited copyright protection. From the late 1990s to 2014, programming elements necessary for functional or interpretability reasons were largely filtered out of the copyright infringement analysis, limiting protection for non-literal elements of software. The Federal Circuit’s decision in Oracle v. Google, 750 F.3d 1339 (2014), threatens to change this balance, potentially reinvigorating the broader copyright protection available in the “look and feel” era.


The field of trade secret has seen the least legal turmoil, perhaps because it is driven by private action and less affected by judicial decisions. While trade secret was vital in the early development of PCs, its importance decreased with the rise of the World Wide Web, due to the practical impossibility of keeping HTML code secret. With the rise of cloud computing, however, trade secret is of renewed import, and it may continue to rise in prominence as a response to the Alice decision.


Why do we see these profound and recurring oscillations in software IP? Mr. Hayes argued that a major reason is that software is not a monolithic thing, and it does not fit neatly into any of the available types of IP protection. Software is both inherently functional and creative. It is incremental in development, yet increasingly short-lived in its practical use. Software has many different markets, means of distribution, and use patterns. Moreover, software development has evolved over time—the open source movement being just one example. All these factors may contribute to the action/reaction pattern seen over decades of case law. At the least, they make it difficult to predict the future course of software IP protection.


Related Resources

David Hayes - A Brief History of Software


Read more on the BCLT/BTLJ Software IP Symposium


This report is written by Kevin Hickey, the Microsoft Research Fellow at the Berkeley Center for Law & Technology, UC Berkeley School of Law. Mr. Hickey’s scholarship on intellectual property law and innovation policy is available online at SSRN.