Unauthorised Adaptation of Computer Programmes - is Criminalisation a Solution? Haupt T/A Softcopy V Brewers Marketing Intelligence (PTY) Ltd 2006 4 SA 458 (SCA)

In Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd 2006 4 SA 458 (SCA) Haupt sought to enforce a copyright claim in the Data Explorer computer programme against Brewers Marketing Intelligence (Pty) Ltd. His claim was dismissed in the High Court and he appealed to the Supreme Court of Appeal. The Court held that copyright in the Data Explorer programme vested in Haupt. Haupt acquired copyright in the Data Explorer programme regardless of the fact that the programme was as a result of an unauthorised adaptation of the Project AMPS programme which belonged to Brewers Marketing Intelligence (Pty) Ltd. This case note inter alia analyses the possibility of an author being sued for infringement even though he has acquired copyright in a work that he created by making unauthorised adaptations to another's copyright material. Furthermore, it examines whether or not the law adequately protects copyright owners in situations where infringement takes the form of unauthorised adaptations of computer programmes. It is argued that the protection afforded by the Copyright Act 98 of 1978 (Copyright Act) in terms of section 27(1) to copyright owners of computer programmes is narrowly defined. It excludes from its ambit of criminal liability the act of making unauthorised adaptation of computer programmes. The issue that is considered is therefore whether or not the unauthorised adaptation of computer programmes should attract a criminal sanction. In addressing this issue and with the aim of making recommendations, the legal position in the United Kingdom (UK) is analysed. From the analysis it is recommended that the Copyright Act be amended by the insertion of a new section, section 27(1)(A), which will make the act of making an unauthorised adaptation of a computer programme an offence. This recommended section will close the gap that currently exists in our law with regard to unauthorised adaptations of computer programmes.


Introduction
In Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd 1 the appellant sought to enforce a copyright 2 claim in computer programmes 3 against Brewers Marketing Intelligence (Pty) Ltd. His claim was dismissed in the High Court (court a quo), whereupon he appealed to the Supreme Court of Appeal. The primary objective of this case note is to analyse some of the legal principles relevant to issues of copyright ownership in computer programmes as highlighted in the judgment of this case. More importantly, the contribution addresses the shortcomings of the Copyright Act 4 in so far as the issue of unauthorised adaptation of computer programmes is concerned. It will be argued that the protection afforded by the Act 5 to copyright owners of computer programmes is very narrowly defined. It is not wide enough to prevent unauthorised adaptation of computer programmes.
The issue that will be considered therefore is whether or not the unauthorised adaptation of computer programmes should attract a criminal sanction. In addressing this issue and with the aim of making recommendations, the legal position in the United Kingdom (UK) will be analysed. The UK has enacted legislation that this programme. 15 He changed the name of the programme to Data Explorer.
Coetzee inter alia developed and incorporated a "tree-preparer" computer programme. In the beginning of 1999 Coetzee developed various database structures. In June 2000 Coetzee developed and added another computer programme referred to as the "converter program." Coetzee worked full-time for a period of two months for Haupt and was paid a salary of R20 000-00 per month.
Coetzee left South Africa in 2000 and moved to the United States of America (USA).
Brewer contacted Coetzee, who was still in the USA, on 26 March 2001 via e-mail and proposed that Coetzee allow him to use compiled data and parts of the source code he (Coetzee) had developed for the Data Explorer programme, to enable Brewers Ltd to write a new computer programme, in return for a royalty payment.
Coetzee and Brewers Ltd then entered into a written agreement in July 2001. Brewer appointed a local developer, Hank Bento, who developed its new programme, which became known as the Brewer's AMPS program. Bento conceded that he made use of the source codes provided by Coetzee. At that time, the latest AMPS data became available and Brewers Ltd acquired this data and sent it to Coetzee who converted the data from the UFL file to an answers and weightings database. 16 Coetzee had not yet converted this data for Haupt. By using the "tree-preparer" programme Coetzee also created a tree.txt file and returned the conversions and the tree.txt file to Brewers Ltd. In addition Coetzee supplied databases which had previously been created for the Data Explorer programme to Brewers Ltd. 17 Brewers Ltd marketed its Brewer's AMPS programme, together with all the converted data and tree.txt files.
Haupt's programme malfunctioned due to the presence of a similar programme, namely the Brewer's AMPS programme. 18 At this stage Haupt became aware of the alleged copyright infringements. He applied to the court a quo for an order interdicting the respondents from infringing his alleged copyright in the computer programme, Data Explorer, and various databases. The court a quo held that Haupt's claim could not be sustained and dismissed the application. 19 It is this decision of the court a quo which gave rise to the judgment of the Supreme Court of Appeal under discussion.

Decision of the Supreme Court of Appeal
Two main issues had to be considered by the court. Firstly, the court had to determine whether or not the court a quo was correct in its assessment of the law and consequently its judgment. Secondly, and depending on its finding against the judgment of the court a quo, the court had to decide if a remedy availed the appellant.
The court commenced with an analysis of the facts and the judgment of the court a quo. It noted that the Project AMPS program, as it existed on 31 July 1998, constituted a computer programme eligible for copyright. 20 This was so, regardless of the fact that it sometimes produced incorrect results and "sections of the raw data" could not be read at all. Ownership in the Project AMPS programme vested in Brewers Ltd, as Coetzee was an independent contractor working for Brewers Ltd when the programme was first developed, and the company controlled the progress of the project through Haupt.
The court also held that the court a quo erred in holding that Haupt could not acquire copyright in the Data Explorer programme, as the programme was an improvement and refinement of the Project AMPS programme. 21 If a work is eligible for copyright, an improvement or refinement of that work would similarly be eligible for copyright, even if the improved work involved an infringement of copyright in the original work, if it satisfies the requirement of originality. 22 The term "original" does not mean that the work must be "new" and hence creativity is not a requirement per se to make a work original. The court referred to the Canadian case CCH Canadian Ltd v Law Society of Upper Canada 23 in which "original" was also interpreted as not requiring creativity, in which it was held: [A]n original work must be the product of an author's exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterised as a purely mechanical exercise. While creative works will by definition be "original" and covered by copyright, creativity is not required to make a work "original." Where a work is an improvement or refinement of original work, the alteration to the original work must be substantial. 24 The court referred to Interlego A G v Tyco Industries Inc, 25 where the Privy Council said in respect of an alteration to an artistic work: There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. Of course, even a relatively small alteration or addition quantitatively may, if material, suffice to convert that which is substantially copied from an earlier work into an original work. Whether it does so or not is a question of degree having regard to the quality rather than the quantity of the addition. But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work.
The court concluded that the converter programme and the tree preparer programme were the products of substantial skill, judgment and labour. 26 The Data Explorer programme, though an improvement or refinement of the Project AMPS programme, therefore satisfied the originality requirement and attracted copyright in its own right.
An author may therefore make use of existing material and yet achieve originality in respect of the product which he produces. The work produced must be more than a mere imitation of the earlier work. The novelty must in some measure be due to the application of the author's own skill, judgment or labour. 27 The Court also noted that after 31 July 1998 Haupt exercised control over the writing of the computer programme. 28 For this reason, copyright in the Data Explorer programme, which included the search instructions and the graph instructions and also the copyright in the converter and the tree preparer programme, vested in

Analysis of and comment on the decision
The court a quo gave scant attention to the real issues of the case. These were, however, tackled by the Supreme Court of Appeal. In the ensuing discussion the main issues clarified by the court are analysed seriatim.
Firstly, clarity was brought on the definition of "computer programmes" as contained in the Act. Until 1992 the Act listed "computer programmes" as literary works.
Currently computer programmes are listed separately and enjoy copyright protection in South Africa as a sui generis copyright item. 35 The Act now describes a literary work as a work which "includes, irrespective of literary quality and in whatever mode or form expressed, tables and compilations, including tables and compilations of data stored or embodied in a computer or a medium used in conjunction with a computer, but not a computer programme." 36 Computer programmes are defined in the Act as "a set of instructions fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result." 37 The court clarified the fact that a programme could constitute a computer programme eligible for copyright even if it produces incorrect results. 38 Thus, the Act simply requires that the programme produces a "result". The question of whether or not the result is correct is irrelevant to the enquiry. Although the Act defines "computer programme," it does not define the term "computer." 39 One of the drawbacks of leaving "computer" undefined is that the unauthorised use of computer programmes contained in items like vehicles and telephones that have computerised security devices could well be within its ambit. There is therefore need for certainty. However, a foreseeable challenge that the legislative authority may face is the difficulty in formulating a satisfactory definition that possesses sufficient flexibility to accommodate advances in computer technology. In the light of this challenge, it is recommended that the definition be broadly worded so as not to become obsolete with rapid technological change.
Secondly, the fact that copyright law treats computer programmes and databases differently was also highlighted. The distinction is important when determining the author of a work as the term "author" does not bear the meaning of "the person who first makes or creates a work" in all cases, but depends on the nature of the work. 40 In the case of a computer programme, ex lege, and in the absence of a written agreement between the parties, the author is "the person who exercised control over the making of the computer programme." 41 This is not true of databases, which are literary works whose authors are the persons who actually first make or create them. 42 The court held that while Haupt had copyright in the Data Explorer programme, Coetzee owned the copyright in the databases used by the programme. 43 The practical effect of this distinction is an example of legislation not keeping pace with reality, because almost all computer programmes access a database of some kind. In this regard, the wisdom in divorcing computer programmes from literary works is questioned. 44 The relevance of determining the author of a work also lies in the fact that in the ordinary course of events, authorship and the first ownership of copyright will inhere in the same person. 45 However, this is not inevitable, and in certain exceptional circumstances authorship and first ownership may be separated. 46 An exception which applies to computer programmes concerns the case of a work "made in the course of the author's employment" by another person under a contract of employment. In this event, the employer is "the owner of any copyright subsisting in the work." 47 In the case of King v South African Weather Services 48 the court pronounced on the meaning of the phrase "in the course of employment," as found in section 21(1)(d) of the Act. 49 It was held that for the purposes of the section, the answer to the question of what constitutes being "in the course of employment" remains primarily a factual issue that depends not only on the terms of the employment contract but also on the particular circumstances in which the work was created. It appeared to the judge to be dangerous to formulate generally applicable rules to determine whether or not a work was authored in the course of the employee's employment. 50 The conclusion that the inquiry is a factual matter was justified on the basis of the principle that the scope of employment may change explicitly or by implication during the course of employment. 51 Such changes may have a bearing on whether or not a particular work was created during the course of employment and consequently on whether the author or the employer is the copyright owner.
While this may be the case, it is cautioned that such an approach may have the undesirable effect that in any given case, a factual analysis that goes beyond the provisions of the employment contract would also need to be conducted.
Thirdly, it was highlighted that a person may because of his "control" over the making of a computer programme be the owner of that programme even if the creator of the programme is an independent contractor, as in all situations there will have to be a factual enquiry as to who actually has control over the way in which the maker creates the computer programme. 52 The issue is whether or not the contribution of the independent contractor to the making is sufficient for a factual finding of control. In concluding that Haupt exercised control over the making of the amendments to the computer programme and was therefore the copyright owner of such amendments, the court considered various factors relating to the working relationship of the parties. 53 Fourthly, the court clarified the fact that in terms of the Act, if a work is eligible for copyright, an adaptation 54 of that work may also be eligible for copyright, 55  Court of Appeal supported the view of the court a quo that the person who exercises control over the making of a computer programme is the person who has the power of regulation of the matter in which the person who makes the programme is to do his or her work. One therefore does not need to be a computer programmer to be able to control the writing of a computer programme. 53 For example, Haupt instructed Coetzee as to the end result that was to be achie ved.
Coetzee did technical work and improvements. All along, Coetzee was in constant contact with Haupt and he accepted and executed detailed instructions from Haupt. Coetzee submitted his work to Haupt, who approved and checked the work submitted. In the properties section of the Data Explorer Programme, Coetzee indicated that Haupt 's business owned the copyright. The allegation that Haupt was the copyright owner was never disputed. Haupt could at any time prescribe in which direction the development should proceed or could terminate further development, if he so wished. Haupt was therefore in a position of authority over Coetzee. Coetzee also worked for Haupt on a fulltime basis for two months for a monthly salary of R20 000. The combination of all these factors led the Supreme Court of Appeal to conclude that Haupt was the owner of the copyright in the computer programme. 54 Although the court used the terms "improvement" and "refinement," for the purposes of this case note the term "adaptation" is preferred, as it is the term used in the Act.
adaptation involved an infringement of copyright in the original work, 56 if it satisfies the requirement of originality. 57 On this basis, Haupt therefore acquired copyright in the Data Explorer notwithstanding the fact that the programme was as a result of an unauthorised adaptation of the Project AMPS programme, which belonged to Brewers Ltd. A matter of concern that arises is the possibility of an author's being sued for infringement even though he has acquired copyright in a work that he has created by making unauthorised adaptations to another's copyright material. This 55 A basic requirement for obtaining copyright protection is that a work must be "original" (s 2(1)). Other requirements are that (a) the work must be a work listed in s 2 of the Act as work which is eligible for copyright protection; (b) the work must be reduced to a material form (s 2(2); (c) in addition, copyright must have been conferred by virtue of nationality, domicile or residence (s 3) or as a result of first publication of the work being in South Africa or any Berne Convention country (s 4). If the aforementioned criteria are met then copyright protection in a computer programme will be obtained. There is no need to register the copyright and, in fact, there is no mechanism whereby one can register copyright in a computer programme. (h) Letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy of the computer programme.
Of relevance to the facts of the case is the right to make an adaptation or to authorise the making of an adaptation of the computer programme, which is to be found in section 11B(f) above. In terms of the Act "adaptation" in relation to a computer programme includes "the making of a version of the programme in a programming language, code or notation different from that of the programme or a

Unauthorised adaptations -is criminalisation a solution?
Infringement of copyright can lead to criminal liability in terms of section 27(1) of the Act, which provides as follows: Any person who at a time when copyright subsists in a work, without the authority of the owner of the copyright-(a) makes for sale or hire; (b) sells or lets for hire or by way of trade offers or exposes for sale or hire; (c) by way of trade exhibits in public; (d) imports into the Republic otherwise than for his private or domestic use; (e) distributes for purposes of trade; or (f) distributes for any other purposes to such an extent that the owner of the copyright is prejudicially affected, articles which he knows to be infringing copies of the work, shall be guilty of an offence.
The maximum penalty that may be imposed on conviction for this offence is a fine or imprisonment for a period of three years in the case of first offenders. 63 In the case of repeat offenders the maximum penalty is a fine or imprisonment for a period of five years. The fine can amount to a maximum of R60 000-00 for first offenders and R100 000-00 for repeat offenders. 64 The Act also provides for civil remedies to address infringements of copyright. 65 The remedies provided for include actions for computer programme is not wide enough to prevent unauthorised adaptations of computer programmes.
In the light of the above considerations, the issue which needs to be considered is whether unauthorised adaptations of computer programmes per se should attract a criminal sanction. One aspect of the issue is whether or not it is justifiable to sanction this action with criminal penalties. The other is whether or not it is necessary to create a new offence to criminalise this action, if it is accepted that the action should lead to criminal liability. In addressing these questions, guidance will be sought from the legal position in the UK on the issue of unauthorised adaptation of computer programmes. The UK has enacted legislation that particularly addresses computer crime. 67 The question arises: should South Africa follow the same example?

Copyright in computer programmes in the UK
Computer programmes have been subject to copyright protection in the UK as literary works at least since the Copyright (Computer Software) Amendment Act 1985 came into force. In the discussion below, the current Act regulating copyright in computer programmes in the UK is discussed.

The Copyright, Designs and Patent Act 1988
Copyright preparatory design material for a computer programme, 72 a database 73 and a table or compilation other than a database. 74 There is, however, no copyright unless and until the work is recorded. 75 Section 16 invests the owner of the copyright with the exclusive right to perform inter alia the following acts: 76 to copy the work, 77 to issue copies of the work to the public, 78 and to make an adaptation of the work. 79 Copyright in a work is infringed by a person who without the licence of the copyright owner does or authorises another to do any of the acts restricted by the copyright. 80 An infringement of copyright is actionable by the copyright owner. 81 The Act provides for civil remedies to address infringements of copyright 82 as well as criminal liability for making or dealing with infringing articles. 83 Section 107 of the CDP Act provides as follows: (1) (2) A person commits an offence who, without the licence of the copyright owner -(a) Makes for sale or hire, or (b) Imports into the United Kingdom otherwise than for his private and domestic use, or (c) Possesses in the course of a business with a view to committing any act infringing the copyright, or (d) In the course of a business -(i) Sells or lets for hire, or (ii) Offers or exposes for sale or hire, (iii) Exhibits in public, or (iv) Distributes, or (e) Distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright, an article which is, and which he knows or has reason to believe is, an infringing copy of a copyright work.
Although section 107 of the CDP Act is phrased differently from section 27(1) of the Act, they are similar in that criminal liability in terms of both sections presupposes the existence of an infringing copy and the unauthorised distribution of such a copy. The criminal offence in terms of section 107, like that in terms of section 27(1), does not in any way relate to the unauthorised adaptation of computer programmes. Thus, while the CDP Act grants the copyright owner the right to make an adaptation of the work 84 and makes it clear that unauthorised adaptations infringe copyright, 85  We have accordingly come to the conclusion that the language of the Act was not intended to apply to the situation which was shown to exist in this case. The submissions at the close of the prosecution case should have succeeded. It is a conclusion which we reach without regret. The Procrustean attempt to force these facts into the language of an Act not designed to fit them produced grave difficulties for both judge and jury which we would not wish to see repeated. The appellants' conduct amounted in essence… to dishonestly gaining access to the relevant Prestel data bank by a trick. That is not a criminal offence. If it is thought desirable to make it so, that is a matter for the legislature rather than the courts. The section provides that a person is guilty of forgery if he makes a false instrument, with the intention that he or another shall use it to induce somebody to accept it as genuine, and by reason of so accepting it to do or not to do some act to his own or any other person's prejudice. 89 The problem was that the machine was the "deceived" and the "false instrument" at the same time. Normally in a forgery case it is necessary to prove that some person was deceived. 90 R v Gold 1988 1 AC 1063.
In the light of the judgment in this case, it therefore became clear that this was an area where new and appropriate legislation was required. A Law Commission was set up to look at the area of computer misuse and as a result of its findings and recommendations the Computer Misuse Act was enacted. 91

The Computer Misuse Act 1990
The Computer Misuse Act 92 was created specifically to deal with computer crime.
The CMA introduced the following new criminal offences: unauthorised access to computer material; 93 unauthorised access to computer material with intent to commit or facilitate commission of further offences; 94 and unauthorised modification of computer material. 95 The offence of unauthorised modification of computer material was dealt with in section 3 of the CMA which provided as follows: (1) A person is guilty of an offence if-(a) he does any act which causes an unauthorised modification of the contents of any computer; and (b) at the time when he does the act he has the requisite intent and requisite knowledge.
(2) For the purposes of subsection (1)(b) above the requisite intent is an intent to cause a modification of the contents of any computer and by so doing-(a) to impair the operation of any computer; (b) to prevent or hinder access to any programme or data held in any computer; or (c) to impair the operation of any such programme or the reliability of any such data.
(3) The intent need not be directed at-(a) any particular computer; (b) any particular programme or data or a programme or data of any particular kind; or (c) any particular modification or a modification of any particular kind.
(4) For the purposes of subsection (1)(b) above the requisite knowledge is knowledge that any modification he intends to cause is unauthorised. offence of "unauthorised acts with intent to impair, or with recklessness as to impairing, operation of computer etc." 98 The reason was to make Denial-of-Service (DoS) attacks 99 illegal. This was necessary as the original section 3 did not make it clear whether DoS attacks were an offence. 100 The offence 101 is thus, now committed by a person who does any unauthorised act relating to a computer, knowing that the act is unauthorised, and intending the act to cause, or being reckless as to whether the act will cause one of the following; (a) the impairment of the operation of any computer; (b) the prevention or hindering of access to any programme or data held in any computer; (c) the impairment of the operation of any such programme or the reliability of any such data; or (d) the enablement of any of the things mentioned in  When phrasing the proposed section careful consideration should be given to the manner in which the elements of the offence of unauthorised adaptation of computer programmes is described. It is proposed that the criminal action be widely defined. It should not be limited by reference to specific consequences. In other words, the Act should criminalise unauthorised adaptations without regard to the consequences.
The suggestion is based on the fact that in terms of section 11B(f) of the Act unauthorised adaptations infringe copyright regardless of the consequences of such infringements. 102 It is therefore only reasonable that the proposed criminal action should draw from section 11B(f). It is further proposed that the criminal action should not contain as one of its components "actual damage" resulting from the adaptations.
However, the fact that an unauthorised adaptation caused damage should be a factor to take into account upon sentencing in any given case.
The unlawfulness of the adaptation must consist of the absence of authority to make the adaptation in question. With regard to the issue of culpability, it is recommended that the required form of culpability for the proposed offence of 'unlawful adaptation of a computer program' should be intent. Intent would naturally include knowledge of the unlawfulness of the modification. The accused must, therefore, have known that he had no authority to cause the adaptation of the computer programme in question.
The knowledge component of the intent for this offence should be interpreted sufficiently wide to make it clear that it includes cases of wilful blindness.
Consequently the knowledge component should be interpreted to include circumstances where the accused ought to have known or suspected that he may not have had authority to make the adaptation but nevertheless proceeded with his actions, without confirming the presence or absence of the requisite authority.
The discussions above lead to it being proposed that the Copyright Act be amended by inserting a new section criminalising unauthorised adaptations of computer programmes. It is recommended that the proposed section 27(1)(A) should read as follows: 102 It is in this regard that it has been argued that a copyright owner should sue an author who has acquired copyright in a work that he or she has created by making unauthorised modification to the former's copyright material.
(1) Any person, who at a time when copyright subsists in a computer programme, intentionally and without the authority of the owner of the copyright makes an adaptation of the computer programme, is guilty of an offence.
(2) For the purposes of this section, the consequences of the unauthorised adaptation shall be irrelevant.
It is submitted that the earlier discussion shows that this proposed section is the missing piece which needs to be fitted in, in order to close the gap that currently exists in South African law with regard to unauthorised adaptations of computer programmes. 103

Conclusion
Although the law with regard to copyright in computer programmes was clarified in Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd, 104 a number of unresolved issues also surfaced, as has been highlighted in this discussion. Of most significance is the shortcoming of the Act in its failure to provide adequate protection against unauthorised adaptations of computer programmes. It has been argued that the protection section 27(1) affords owners of the copyright in computer programmes is not wide enough to prevent unauthorised adaptations. It is recommended that the Act be amended by the insertion of a section 27(1)(A) which makes it an offence to make an unauthorised adaptation of a computer programme.