We have referred to the Copyright Act which establishes who owns what, and what rights can be enjoyed. In this lecture we will consider secrets and patents.
You are eating a burger manufactured by O'Burger, an international fast-food restaurant. It's nice and tasty and you decide that you would like the recipe so that you can make it at home. You also figure that you will be able to make and sell these burgers in your home town, because an outlet of the restaurant hasn't opened there yet, and it's supposed to be a free market economy, isn't it?
The resaurant will not give you the recipe! They claim it's a secret! Pah! You'll show them! You find one of the kitchen staff and make an offer of Lm10 if they'll give you the recipe. They refuse, saying that they are contractually obliged to keep the secret - not just during their employment, but forever more! There is one last avenue for you to try... you purchase a few burgers, take them home, and by trial and error you come with a reasonable approximation of the taste, look, and feel of the burger. You set up a stall in your home town, and sell the burgers - not using the actual name, but using something like "I Can't Believe It's Not An O'Burger!" Solicitors representing O'Burger turn up on your doorstep and threaten you with all sorts of legal action... Do they have a case? Do you have a defence?
Situations like these arise frequently. You can replace the burgers with any computer software of your choice, and the ethics of the situation will still apply. However, rather than considering the situation solely from a legal perspective, we will also consider it from an ethical perspective.
Consider a computer program which contains an innovative sorting algorithm. It can sort an arbitrary number of integer values in constant time. This algorithm is packaged as part of a commercial program, and the company boasts about the power of the algorithm in its marketing material. Simply by observing the program in execution it is not possible to tell how the algorithm works. You are explicitly forbidden to disassemble the program in the licence agreement. You want to know how it works (you have an idea for a solution to a problem which needs a powerful sorting algorithm). Alternatively, you dispute the fact that it is a powerful sorting algorithm. You think that the company is "cheating" but is making this claim to sell more copies of the software than it would otherwise. Do you have a right (in either case) to obtain the algorithm?
As citizens, we have a moral and legal right to keep secrets. In the lecture on Privacy and Information, we referred to Johnson (Chapter 5) who, amongst others, claims that democracy is not possible without privacy, and privacy necessarily implies keeping secrets, and choosing who to keep secrets from. At law, and for legal purposes, a court of law has the right to compel you to divulge secrets. As corporate entities, that moral right persists, and the entity can make it a condition of employment that corporate secrets are not divulged. The ethics of that do appear to change according to economic factors. For example, if you have a choice of jobs with the same employment conditions, except that one requires you to sign a confidentiality agreement and the other doesn't, then the argument is that you have complete choice and you can go where your conscience takes you. In times of economic crisis, however, when jobs are hard to come by, you may find yourself "agreeing" to conditions that you would normally reject. (That is, itself, an ethical issue, which is loosely termed "market forces"...). Is it ethical for commercial entities to keep secrets on commercial grounds? Under the deontological framework, if it is ethical to keep secrets, then it is always ethical to keep secrets, regardless of the situation. Under the utilitarian framework, the consequence of the action determines whether it is a good thing or a bad thing. A company can claim that its ability to provide employment will be undermined if it loses its commercial advantage by disclosing the "secrets" of its success. The Press, on the other hand, has long argued that revealing their sources would reduce the likelihood of finding informants. The police have always claimed that once something illegal has been discovered, then the discoverer has an ethical responsibility (a duty) to pass the information to the police, for the good of society. Are the police, Press, and commercial entities all arguing from the same ethical framework?
It would appear that if it is ethical for the entity to keep secrets, then the entity is at liberty to ask that those to whom the secret must be disclosed (e.g., employees), or those who agree to not disclose the secret in exchange for knowing it, to also keep the secret. Nondisclosure must be maintained until the secret is legitimately made public and released into the public domain. This essentially is a contractual obligation, and the ethical principle is that one should always do what one has promised to do.
We have already argued in favour of the right to keep secrets on moral grounds, but what about the right to discover secrets through fair use? If by tasting and looking at an O'Burger burger we can replicate it, and we are not committed to a nondisclosure agreement, then do we have the right to disclose, or otherwise use, the secret ourselves? Similarly, if by using some computer program that has been obtained legitimately, we discover how it works, are we entitled to re-use the algorithm to produce another computer program?
According to articles 9(p) and 9(q) of the Copyright Act, a licenced user may "determine the ideas and principles which underlie any element of the program" and may "reproduc[e]... and translat[e]... [the program's] form indispensible to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs...", so long as "the information has not previously been readily available to the licenced user". However, article 7(d) of the same Act prevents the unauthorsied translation of a computer program into other computer languages. It is lawful to determine how a program works through fair use. It is lawful to replicate code to achieve interoperabitlity with other programs. It is not lawful to determine how a program works and to translate it into another programming language. (NB: there may be other restrictions specified in the licence agreement which form part of a contractual obligation).
It seems, then, that it is legal to reverse engineer the O'Burger burger, as long as the burger that is observed has been legitimately procured and that no licence agreement has been breached. But can the O'Burger be reproduced? Provision (iii) of article 9(q) of the Copyright Act expressly forbids the reverse engineered product to "be used for the deveopment, production or marketing of a computer program similar in its expression to the original program...". But what if the O'Burger sauce is used, not on a burger which looks like the O'Burger burger, but on some other foodstuff? What if the efficient sorting algorithm is used, but not the entire program? What protection is there for the ideas and innovative solutions contained within a copyrighted work?
Under Maltese Law, a patent may be granted for an invention that is novel, "involves an inventive step and is industrially applicable" (The Patent Act). Patent law worldwide is geared towards providing protection for inventors whilst ensuring that details of the invention can be available to the general public to encourage innovation. Unlike copyright, which will equally protect people who independently produce the same expression, patent law protects the first inventor, and requires all subsequent similar inventions to first obtain a licence from the patent holder. However, unlike copyright which is usually interpreted and applied consistently worldwide, patent laws tend to differ greatly, especially when it comes to computer software.
In Malta, patent law expressly forbids the granting of a patent to "programs for computers" (Article 4(2)c). In countries which used to have this exclusion, it was there, generally, to prevent "mental acts" and "mathematical methods" from also being owned (both of which are also expressly unpatentable under the Patent Act (Article 4(2)). As a computer program is essentially an algorithm containing steps to be performed, it is technically feasible for a human to perform them (a machine, on the other hand, is surprisingly not considered to be the embodiment of an algorithm). The legal system wanted to avoid patent holders being able to licence people to perform mental acts. This fear was overcome, possibly by questioning the utility of performing possibly complex mental acts to mimic a computer program, but other arguments were also raised. Given that computer science has its roots in mathematics, is patenting a computer program tantamount to patenting a mathematical process? This argument is harder to counter, but strange nonetheless, because it is possible to construct machinery which performs a mathematical method (e.g., a calculator, cash register, etc.). It is possible to patent the machine, but not the mathematical algorithm. Is a computer program anything more than an algorithm? Is there any aspect of a computer program which is patentable? In a famous case in the USA, the court ruled that it was possible to patent a computer program, as long as the patent did not cover the mathematical method, in itself, and that the invention was solving a problem other than just a mathematical problem. The granting of the patent did not prevent the mathematical method from being performed by others, as long as that mathematical method was not used in conjunction with all the other steps in the transformation. Prior to that court ruling in 1981 there had been hardly any computer programs protected by patent. However, now "virtually any kind of software or other computer-implemented invention is subject to patent protection [in the US] so long as the standard tests for patentability (useful, new and not obvious) are met" (Kirsch). According to Kirsch, patenting software is more popular than seeking copyright protection for it. The fear is now that so many patents have been awarded that it is practically impossible to determine whether a new invention is in fact already patented. The claim is that instead of promoting innovation in IT, patent laws are stifling it, because obtaining patents is an expensive and lengthy process.
Finally, if you did manage to replicate the O'Burger burger and sell it under the name of "I Can't Believe It's Not An O'Burger Burger", then you can also expect a visit from the representatives of Unilever Bestfoods for infringing one of their registered trademarks.
Date last amended: Monday, 18th December, 2002