Software programs are often complex innovations that include various artistic, creative and functional aspects, any or all of which can be protected by one or more of the different IP provisions available worldwide, including copyright, patents, trade marks, trade secrets, database rights and even registered designs. Are you a UK software developer? Do you know how to protect your own work? Do you know what would infringe another’s IP? Read on for our essential IP hints & tips for UK software developers…
1. Source Code and Object code is automatically protected by COPYRIGHT as soon as it is written.
Copyright arises automatically as soon as the code is written and stored. No formal registration is required, although, in some countries (such as the USA and China), copyright must be “registered” before the copyright owner can sue a third party for damages in relation to an alleged infringement of their rights. It is, nevertheless, advisable to include a copyright notice in the headers of all source code files, help files, user manuals, ‘about this software’ pages, etc. to make the assertion of copyright explicit.
In general, copyright provides its owner with the exclusive right over the reproduction, preparation of derivative works (for example, converting a game written for a particular games console into a format for hosting by a smartphone), distribution, public performance and display pf the works. So, in simple terms, copyright serves to protect a creative work by enabling its owner to stop others from copying it for (any sort of) commercial purpose without their permission (usually given in the form of a licence which may carry a royalty payment).A copyright notice may take the form:
Copyright © [Year of first publication], [Name of owner, which may not be the author]
2. Other elements of a software program may also be protected by COPYRIGHT
Source and object code are termed “literal” elements, and are protected by copyright in much the same way as any “literary work”. However, the relationship between various of the software modules and even the ‘general flow’ of the program might be protected by copyright as non-literal elements. Also, creative parts of the screen display or user interface might be considered ‘artistic works’, and graphics and sounds could be protected as ‘audio-visual works’.
3. Copying another party’s literal, non-literal or other creative works is likely to be an infringement of their copyright, but there are some exceptions
The key word here is “copy”. In general, a person infringes another’s copyright in a creative work if they copy that work (or a large part of it) for commercial purposes. So, in order to successfully sue you for copyright infringement, they have to prove that the creative work in question was copied, as opposed to you having come up with the offending ‘work’ independently and without “copying”.
Also, in the UK, there are certain categories of use of material protected by copyright that can act as a defence to an allegation of copyright infringement. These categories of use are generally termed ‘fair dealing’ and include:
- private and research study purposes;
- performance, copies or lending for educational purposes;
- criticism and news reporting;
- incidental inclusion;
- copies and lending by librarians;
- format shifting or back up of a work you own for personal use;
- caricature, parody or pastiche;
- acts for the purposes of royal commissions, statutory enquiries, judicial proceedings and parliamentary purposes;
- recording of broadcasts for the purposes of listening to or viewing at a more convenient time;
- producing a back-up copy for personal use of a computer program.
These ‘fair dealing’ exceptions may be particularly relevant to technology-related works such as software programs or databases. For example, producing a backup copy of a software program for personal use only would not be considered copyright infringement under a fair dealing exception; and, although fair dealing explicitly excludes decompilation or copying a software program during decompilation, the European Software Directive allows software licensees to use their copy of the software “to observe study or test the functioning of the program” in order to “determine the ideas and principles which underlie any element of the program.” Therefore, users may freely observe a program as it operates to determine its functions and its underlying ideas, even if the goal is to create a competing program. Nevertheless, actual copying of the source code is not tolerated since this is explicitly protected by copyright.
4. Copyright does not protect functional elements of software, but you may be able to secure PATENT protection for the function(s) your computer program performs (or how it performs it/them)
Whilst the code itself is protected by copyright, the function it performs is not. For example, if you have developed a piece of accounting software that performs a number of novel functions, the source and object codes for that computer program are protected by copyright as soon as you enter and save it to a computing device, but that does not enable you to prevent a third party from writing their own similar software program that performs the same functions (even if they were your idea and nobody else has ever before provided a software program that performs those particular functions). If those novel functions have some technical character, then a patent might offer an appropriate way to protect them.
5. Your UK copyright might also provide corresponding protection overseas
A qualifying creative ‘work’ created in the UK will automatically attract UK copyright. However, the UK is also a member country of the so-called Berne Convention. The Berne Convention (for the Protection of Literary and Artistic Works) was first adopted in 1886 as an agreement to honour the rights of all authors who are nationals of countries that are party to the convention and there are currently 179 member countries, and a full list can be obtained from https://www.wipo.int/. Most countries in the world are members and, of the few that are not, most have signed up to the TRIPS Agreement (at least as an observer) and/or the Universal Copyright Convention. In other words, most major markets of the world will honour the copyright of a UK national or resident (or indeed a national or resident of any of the other Berne Convention member states). More information about the Berne Convention can be found here: https://www.wipo.int/treaties/en/ip/berne/summary_berne.html
What does that mean in real terms?
It means that an author from any country that is a signatory of the convention is awarded the same rights in all other countries that are signatories to the Convention as they allow their own nationals.
For the period of copyright, the copyright owner has the following exclusive rights:
- to authorise translations of the work;
- to reproduce the work (except, in some cases, for limited private and educational use) without infringement;
- to authorise public performance or broadcast, and the communication of broadcasts and public performances;
- to authorise arrangements or other types of adaptation to the work;
- recitation of the work (or of a translation of the work); and
- to adapt or alter the work.
The author also has the following moral rights:
- The author has the right to claim authorship
- The right to object to any treatment of the work which would be ‘prejudicial to his honour or reputation’.
So, whilst each member country has its own national copyright laws which are, typically, more extensive than the provisions of the Berne Convention, all countries will at least provide the above rights to any copyright owner from any of the other member states.
6. Don’t forget about Database Rights
Databases do not generally fall under copyright (unless there is the arrangement of the contents is very original), but have their own ‘database right’, if there has been a substantial investment in obtaining, verifying or presenting its contents.
Like copyright, database rights arise automatically, but only last for 15 years from creation and, if published during this time, then the term is 15 years from publication.
Database rights are infringed if a third party copies the database, or a substantial part of it, for commercial purposes, subject to the relevant ‘fair dealing’ exceptions. For practical reasons, database rights would not be infringed if a person with the legal right to use part or all of a database performs steps necessary to use or access the contents of the database. Also, accessing a database for the purposes of private study or non-commercial research does not usually infringe database rights.
7. Consider REGISTERED DESIGNS to protect aesthetic elements of your software design
A registered design is a form of registered IP that serves to protect the aesthetic (rather than functional or intellectual) aspects of a product. Whilst, in general, this would involve registering a design in relation to a physical product, many territories (including the UK, USA, EU and China) allow original aesthetic elements of a software design, such as icons, animated characters and graphical user interfaces (GUIs) to be registered without specific reference to the device on which it is provided. Even animated GUIs can be registered in this way, which can provide valuable protection for unique user interactions or game manipulations.
Registered designs are relatively inexpensive and usually quite straightforward to obtain and, if a lot of innovative effort has been put into (especially) the creative parts of the screen display when a software program is executed, then registered design protection could provide a highly robust form of IP, not only to keep your competitors at arm’s length, but also to add a tangible value to your business.
8. TRADE SECRETS can offer powerful protection for some elements of your software program
A trade secret is just that: a secret or confidential information that, by its very nature, cannot be used by a competitor whilst it remains a secret. Trade secrets have, traditionally, been thought of in relation to algorithms, chemical formulae, processes, business plans, customer lists and recipes (consider the Coca Cola ® recipe, for example, which has remained trade secret since 1886). However, they are becoming increasingly relevant to digital products, but can only be considered for aspects that cannot be reverse engineered. For example, in the case of an AI-based system, confidential training data can be kept confidential and classed as a trade secret.
There is no registration process (and, therefore, no tangible cost) and they can, in theory last forever (or until the secret is ‘lost’). However, once the secret has ‘leaked’, it might be lost forever: you may be able sue someone for unauthorised use of your trade secret (if you can identify who is liable), but if that use resulted in some form of public disclosure of the confidential information, then the trade secret is lost forever. Therefore, a very stringent IP management policy is needed to ensure that all reasonable steps are taken to keep the information secret. Also, a trade secret can be a rather intangible right that is difficult to define, but it is important that it is properly captured if it is to add value to your business.
Read more about the hidden value in your business by downloading our ebook at https://strachanip.co.uk/downloads/; or:
Contact us for more information:
Email: info@strachanip.co.uk
Tel: +44(0)7714797135
