The year 2000 problem concerns the ability of computer systemsand their related computer program(s) to function as designed without any lossof functionality due to the onset of the 21st century. With regards to the year2000 problem, it needs to be determined whether a licensee of computer program(s)is permitted to copy and adapt the computer program(s) for the purpose ofidentifying and if necessary correcting any and all errors relating to the year2000 problem. The computer program(s) which the licensee is licensed to use aregoverned by agreements which may contain terms and conditions prohibiting thecopying and/or adaptation of the computer program(s). Can the licensee take theproposed course of action (detailed below) without infringing the copyright orany other intellectual property right of the licensor and, if the licensee doesindeed infringe the copyright of the licensor, does the licensee have anarguable and sustainable defence to any action brought on behalf of the licensoragainst the licensee?
The Relevant Law
The law of copyright as it relates to computer programs is governed by theCopyright, Designs and Patents Act 1988 as amended by the Copyright (ComputerPrograms) Regulations 1992. It is necessary to reproduce significant parts ofthe sections inserted by the Regulations in order to fully understand thearguments submitted.
Regulation 8 of the Regulations inserts three new sections in the Act, ss50A, 50B, and 50C. These sections introduce new permitted acts in relation tocomputer programs.
Section 50A(1) to (3) provide as follows:
‘(1) It is not an infringement of copyright for a lawful user of a copyof a computer program to make any back up copy of it which it is necessary forhim to have for the purposes of his lawful use.
(2) For the purposes of this section and sections 50B and 50C a person isa lawful user of a computer program if (whether under a licence to do any actsrestricted by the copyright in the program or otherwise), he has a right to usethe program.
(3) Where an act is permitted under this section, it is irrelevantwhether or not there exists any term or condition in an agreement which purportsto prohibit or restrict the act (such terms being, by virtue of section 296A,void).’
Section 50A sets out the definition of a lawful user, provides for the rightto copy a program for the purpose of making a back up copy and renders void anyterm which prohibits or restricts the lawful user from making a copy of thecomputer program for back up purposes.
Section 50B(1) to (4) provides as follows:
‘(1) It is not an infringement of copyright for a lawful user of a copyof a computer program expressed in a low level language –
(a) to convert it into a version expressed in a higher level language, or
(b) incidentally in the course of so converting the program, to copy it,
(that is, to ‘decompile’ it), provided that the conditions insubsection (2) are met.
(2) The conditions are that –
(a) it is necessary to decompile the program to obtain the informationnecessary to create an independent program which can be operated with theprogram decompiled or with another program (‘the permitted objective’); and
(b) the information so obtained is not used for any purpose other thanthe permitted objective.
(3) In particular, the conditions in subsection (2) are not met if thelawful user –
(a) has readily available to him the information necessary to achieve thepermitted objective;
(b) does not confine the decompiling to such acts as are necessary toachieve the permitted objective;
(c) supplies the information obtained by the decompiling to any person towhom it is not necessary to supply it in order to achieve the permittedobjective; or
(d) uses the information to create a program which is substantiallysimilar in its expression to the program decompiled or to do any act restrictedby copyright.
(4) Where an act is permitted under this section, it is irrelevantwhether or not there exists any term or condition in an agreement which purportsto prohibit or restrict the act (such terms being, by virtue of section 296A,void).’
Section 50B provides for the decompilation of a computer program by a lawfuluser subject to compliance with certain conditions.
Section 50C(1) to (3) provides as follows:
‘(1) It is not an infringement of copyright for a lawful user of a copyof a computer program to copy or adapt it, provided that the copying or adapting-
(a) is necessary for his lawful use; and
(b) is not prohibited under any term or condition of an agreementregulating the circumstances in which his use is lawful.
(2) It may, in particular, be necessary for the lawful use of a computerprogram to copy it or adapt it for the purpose of correcting errors in it.
(3) This section does not apply to any copying or adapting permittedunder section 50A or 50B.’
Section 50C provides that a lawful user of a computer program may copy oradapt a computer program if it is not prohibited under any term or condition ofthe agreement regulating the use of the computer programs and further suchaction may be necessary for the purpose of correcting errors in it.
Regulation 5 of the Regulations inserts a provision in s 21(3) of the Act (s21(3)(ab)) which defines the meaning of ‘adaptation’. It provides thatadaptation ‘in relation to a computer program, means an arrangement or alteredversion of the program or a translation of it.’
Regulation 11 of the Regulations inserts s 296A:
‘(1) Where a person has the use of a computer program under anagreement, any term or condition in the agreement shall be void in so far as itpurports to prohibit or restrict –
(a) the making of any back up copy of the program which it is necessaryfor him to have for the purposes of the agreed use;
(b) where the conditions in section 50B(2) are met, the decompiling ofthe program; or
(c) the use of any device or means to observe, study or test thefunctioning of the program in order to understand the ideas and principles whichunderlie any element of the program.
(2) In this section, decompile, in relation to a computer program, hasthe same meaning as in section 50B.’
Section 296A renders void any term in an agreement which seeks to prohibit orrestrict the doing of any acts permitted under ss 50A and 50B or the use of anydevice or means to observe, study or test the functioning of any computerprogram.
Regulation 12(1) provides ‘Subject to paragraph (2), theamendments of the Copyright, Designs and Patent Act 1988 made by theseRegulations apply in relation to computer programs created before 1st January1993 as they apply to computer programs created on or after that date.’
Regulation 12(2) provides ‘Nothing in these Regulationsaffects any agreement or any term or condition of an agreement where theagreement, term or condition is entered into before 1st January 1993’.
With all of the above in mind, it is submitted that, in order lawfully toachieve the objective mentioned in my introductory paragraph, the proposedcourse of action for the licensee should be as follows:
(i) The licensee should request from the licensor all relevant informationregarding the Year 2000 status of their computer program(s).
(ii) If the licensor is unable or unwilling to provide the licensee with therequested information within a reasonable amount of time the licensee take thefurther action detailed below.
(iii) The licensee should try and find an alternative licensor who couldprovide computer program(s) of the same or similar functionality which are Year2000 compliant.
(iv) If an alternative licensor is found, the licensee will use thealternative licensor’s computer program(s) if practicable and terminate theoriginal licence with the licensor within the terms of the agreement.
(v) If an alternative licensor cannot be found then the licensee shouldexamine the prevailing agreement between the licensee and the licensor to see ifit is permissible for the licensee to make an adaptation to the computerprogram(s) .
(vi) If it is permissible then there is not an infringement of copyright.
(vii) If it is not permissible for the licensee to make an adaptation of thecomputer program(s) then the effective date of the agreement between thelicensee and the licensor of the computer program(s) becomes extremelyimportant.
(viii) If the effective date of the agreement is before 1st January 1993,then the licensee will have to seek another way of processing the relevantinformation.
(ix) If the effective date of the agreement is after 1st January 1993 thenthe licensee will, pursuant to s 296A(1)(c) of the Act, undertake to use anydevice or means to observe, study or test the Year 2000 functionality of thecomputer program(s) (ie to establish whether the computer program(s) stillcontinue to function as provided up to and beyond the Year 2000). To test thefunctionality may require the decompilation of the computer program(s) in thoseinstances where the licensee does not have access to the source code of thecomputer program(s). It is submitted that decompilation must be included in thephrase ‘ the use of any device or means’ in s 296A(1)(c) of the Act.
(x) If by ‘the use of any device or means’ within the meaning of s296A(1)(c) of the Act it is discovered that the computer program(s) containserrors regarding the Year 2000 problem, then it is further submitted that, by s50C(2) of the Act, the licensee as the lawful user of the computer program(s)can copy it or adapt it for the purpose of correcting the Year 2000 problem.
For the licensee to be entitled to take the action described, thetesting/study and correction of the computer program(s) must be undertaken bythe licensee or persons directed by the licensee on the licensee’s equipmentwhich is situated in premises controlled by the licensee. The licensee shouldmake no attempt to offer any ‘Year 2000 compliant’ version of the computerprogram(s) to any other party (including any other person/company associatedwith the licensee), so as to ensure that the licensor could not successfullybring an action against the licensee for passing off.
There is the further consideration that many licence agreements containclauses to the effect that if the licensee makes modifications/alterations tothe computer program(s) as licensed (without the consent or approval of thelicensor) then this conduct either renders void any and all warranties given bythe licensor pertaining to the computer program(s) or terminates the licence ofthe licensee to use the computer program(s). Since it is submitted that, under s50C(2) of the Act, it is lawful to copy or adapt computer program(s) for thepurposes of correcting errors (which must in itself necessitate the changing ofthe original computer program(s)), a licensee embarking on such a course ofconduct must be acting lawfully. It surely cannot be right for the licensor,relying solely upon that conduct, to render void the warranties given orterminate the licence of the licensee to use the computer program(s).