Various Paths and Approaches of Computer Software Protection
August 3, 2018, China Intellectual Property News Edition 8
Chen Huizhen
Computer software has both artistic and instrumental features: artistic feature means computer software is an intellectual creation which can be copied on a physical carrier; instrumental feature means computer software obtains the information processing capability after being integrated with a readable medium like a computer, to mark certain functions, complete certain tasks or produce certain results. Therefore, it was once a heated issue in many countries as to which law was the most appropriate one to protect software. Overall, most countries use copyright law to protect computer software. Some other approaches are also adopted to protect software, for example, to apply patent law or to treat it as a trade secret under special circumstances. It is almost the same in China. However, the different perspectives and paths for protecting computer software are based on different facts and reasons, and accordingly, the legal relations and main facts as well as evidences to be collected and submitted vary from each other. In practice, some right owners lose a case because they neither pay sufficient attention nor have made sufficient research on such aspect, and the claims are inconsistent with the facts and reasons, or the evidences submitted. Therefore, you should make good preparations including evidence collection and submission according to the alleged legal relation and relevant main facts, or choose an appropriate path or approach of protection for claiming rights based on the main facts which have been proved by the evidences at hand.
Paths and approaches of protection under copyright
There are many different forms of infringements on copyright of computer software, and the contents of the infringed rights are also different. The most common infringement is unauthorized reproduction of software in whole or part. For total reproduction, the key is to obtain evidences that the infringer holds copies of the software, and it is usually not difficult to make comparison. Partial reproduction refers to plagiarism, i.e. making some disguised modification to the software program of others, or combining the substantial part of the infringed software with the part developed by the infringer. It is quite difficult to provide direct proof for such reproduction, and the court usually adopts the way of “substantial similarity + contact + elimination of reasonable explanation”. Therefore, the right owner shall collect and submit evidences based on these main facts.
As the expression of software involves knowledge of multiple professional fields like source code, target code and programming language, it is very common to resort to judicial authentication to decide whether or not the alleged infringing software is substantially similar to that of the right owner. Thus, obtaining the alleged infringing software and proving the existence of contact point are fundamental.
In addition, the software copyright and general copyright are different from each other in terms of protection scope and protection subject. If the operating result (interface) of the software constitutes an artistic work, the copyright law, instead of the regulations on the protection of computer software shall be applied.
The common technical protection measures for computer software are divided into software encryption technologies including setting a serial number and registering a user name, and hardware encryption technologies such as encryption box and key disk. As the software cracking is performed completely by the infringer, it is very difficult for the right owner to provide concrete evidences, and in such case the evidence rule of factual presumption will be applied. The right owner shall collect and provide necessary evidences based on relevant main facts according to the rule of factual presumption.
Factual presumption is a method of proof adopted by the judge when there is no explicit legal provision, i.e., the judge presumes the facts to be verified based on known facts and according to the rules of logic and experience, and allows the parties involved to provide counter-evidences. Factual presumption can’t be made without foundation, and has to be based on confirmed basic facts. Presumption on damage to technical protection measure of the software shall be based on the following facts: first, the right owner takes measures to protect its software. That is to say, if the right owner does not provide the password, serial number or encryption hardware, no one can install or use the software. Second, the infringer actually reproduces or uses the right owner’s software. In practice, most infringers have no objection to the consistency between the infringing software and the authorized edition of software, however, if the infringer denies using the counterfeited software, evidences of infringement may need to be fixed and software comparison & authentication may be required. Third, there is no reasonable ground for the infringer to evade the software protection measure, i.e., the right owner does not provide the infringer with related password, serial number or encryption hardware, the infringer is unable to obtain the same by other ways, and there is no error in the right owner’s software. Only after the three basic facts above are confirmed can the conclusion be made that the infringer commits an act of damaging the technical protection measures of the software.
For example, in a dispute case over the copyright of a computer software program, the plaintiff protects the software by setting a serial number. Under normal circumstances, after the expiration of the license period, the system will, based on the control information of the preset serial number, require the user to input a new serial number for continued use. However, the defendant still continues to use the software without obtaining the new serial number after the expiration of the license period, and fails to make reasonable explanation for the continuous use. As the website using the software is actually in the control of the defendant, the court concludes according the rule of factual presumption that the defendant commits an infringing act of cracking the technical protection measures of the software.
Paths and approaches of protection under relevant patents
According to the provisions of the Patent Review Guidance of the People’s Republic of China, computer software is not the subject of patent, but inventions containing computer program can be patented. In other words, if a computer program relates to a certain technical field and involves at least one technical problem and capable of producing certain technical effects, the technology containing such computer software can get patent protection.
When the software is protected under patent, the scope of patent protection is explicitly recorded in the claim, and the rules for determining infringement of software-related patents are also the same with those for determining infringement of other invention patents or utility model patents. Correspondingly, the right owner shall make a claim, give factual reasons and collect evidences based on the main facts of legal provisions related to patent protection and relevant legal relations. In addition to obtaining factual evidences for the alleged infringer manufacturing and selling the alleged infringing product, it is also necessary to analyze whether or not the case falls into the scope of patent protection.
Paths and approaches of protection under trade secrets law
Copyright law only protects the expression, not the idea of an artistic work, and it is expressly specified in Article 6 of the Regulations on the Protection of Computer Software that the protection of software copyright under this Article does not extend to the idea, processing procedure, operational method or mathematical concept used to develop the software. When the same technological proposal is achieved through software, it shall not constitute an infringement if the expression is different. Moreover, the most valuable parts in software are the algorithm model, organizational structure, processing procedure and the like shown in the course of creation. Therefore, there are obvious defects in protecting computer software with the copyright law, but protection of trade secrets can compensate for such defects because the subject of trade secrets protection is information itself.
Since the subjects and key points of software protection under the copyright law and trade secrets law vary from each other, the focuses and approaches for the trial of cases on such two types of action causes are different. The right owner shall make proper preparations and respond accordingly based on the features of the selected legal relation.
For the investigation and determination of a trade secrets infringement case, what counts for most is proving and confirming the fact of trade secrets infringement, i.e., to confirm whether or not some information constitutes trade secrets and some actions constitute infringements, and the same shall be proved and confirmed based on the requirements of legal provisions and in a proper manner.
First, to identify the scope of trade secrets to be protected, i.e. the point of secret. The contents and scope of trade secrets must be confirmed by the right owner. In case of computer software, a software program is only the carrier of trade secrets, and the point of secret is comprised of the overall design thought contained in the software program, division of information flow and data flow involved in the overall design, division of small and large modules and realization of and methods to realize specific software functions. The contents and scope must be expressly confirmed by the right owner.
Second, to confirm whether or not the point of secret constitutes a trade secret based on the requirements of legal provisions. With respect to the constitutive requirements of trade secrets, the existing Anti-Unfair Competition Law provides as follows: technical information and operational information which are unknown to the public, have commercial value and for which the right owner takes relevant confidentiality measures. “Have commercial value” and “take confidentiality measures” are easy to determine and understand, but “unknown to the public” has two layers of meanings, namely, “not commonly known” (relatively unknown to the public) and “uneasy to get” (it has a certain degree of difficulty in obtaining such information). Generally, judicial authentication shall be used to determine whether or not there are contents “unknown to the public” in the software, and the method of authentication is as follows: first, to determine whether or not the point of secret claimed by the plaintiff is “unknown to the public”; second, to make comparisons to determine whether or not the software programs are the same. Only after the point of secret is proved to be “unknown to the public” is it necessary to compare the software, otherwise, it is unnecessary. In addition, attention should be paid to the difference between “unknown to the public” and “take confidentiality measures”. The former refers to whether or not the information reaches a certain degree of height and difficulty, and the latter means taking measures to protect the information and keep it confidential.
Third, to determine whether or not the actor’s behavior infringes a trade secret and the degree of damage. As specified by the law, infringing acts include obtainment, disclosure, use and license to others for use. Therefore, the court shall determine what kind of infringing act the infringer commits based on concrete behaviors of the infringer. In practice, it is more common to take the discloser of trade secrets violating the confidentiality obligation and the receiving party as co-defendants. However, the receiving party shall only bear corresponding liability for infringement in case of subjective faults. It is pretty hard to prove and confirm the subjective faults of the receiving party. The right owner can submit relevant evidences regarding the identity, the professional background and the relationship with the discloser of the specific actor for comprehensive judgment of the court.
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