Intellectual property rights are the legal rights that protect the creations of human minds. Although intangible, intellectual property can be of immense value. Furthermore, intellectual property is considered to be an important tool for business development, as it can be used by intellectual property owners in setting out business strategies and prohibiting acts of infringement on their intellectual property.
Computer programs, or software, are considered as creations of human minds. Intellectual property relating to software involves many complicated concepts of intellectual property, including copyright, patent, trademark, and trade secrets, all which relate to each other. This article features the following interesting facts which are based on an analysis of actual problems the authors found from their work experiences and through their provision of legal advice to software developers, which people in the software industry should know and which can be used as guidelines for their business operations.
1. Software is protected as a copyrighted literary work without the requirement of registration. However, it can be recorded as a copyrighted work with the Department of Intellectual Property.
Pursuant to the current copyright law, software, or “computer programs,” according to the copyright law, is provided with protection equivalent to a literary work. That is, the law focuses on the protection of computer source code written in any language.
Software created by a party from his or her own creativity is automatically protected as a copyrighted work without the necessity of registration. However, to provide owners with proof of ownership, the Department of Intellectual Property has created a recordation system which allows copyright owners to commercially use their copyrighted works in a more effective way. Recordation of copyright of computer programs is not complicated and has no fees. It is recommended that software developers record their software as copyrighted works with the Department of Intellectual Property using important versions of the software which have a high business value. Newly-developed source code can be filed for recordation as a copyrighted work at any time. An important document required for the recordation of software is a copy of the first five pages and the last five pages of the source code, or a CD containing the computer program.
2. Ideas about functions or features of software are not protected under copyright law.
Copyright law does not protect ideas about functions or features of software, as well as functional user interfaces. Because copyright protection does not cover ideas about the function or design of computer programs, you cannot prevent your rival company from having the same software development idea as yours as long as that rival company develops its own source code, as it would not be considered copyright infringement.
3. Software is not currently protected under patent law.
Ideas about processes and functions or features relating to software may be patentable under the patent law. Protection under current Thai patent law does not cover “computer programs,” while in some countries, such as the United States, software could be protected under patent law. However, certain hardware or devices programmed with functions that are unique and different from existing ones may be patentable inventions. These will be considered on a case-by-case basis.
4. Source code is protectable under both copyright and trade secret laws.
Normally, after software developers have developed a piece of software to the extent that such software can be commercially used, they would keep the source code confidential and would disclose it to the public only in necessary cases. If the source code, which is a form of trade information, is kept under the appropriate security measures, such source code may be protectable under trade secret law, which imposes serious punishment on those who intentionally disclose, deprive of, or use another party’s trade secrets without that party’s consent.
5. Ownership of a software copyright is conferred differently on different types of contracts.
According to copyright law, the copyright to software developed by an employee under an employment contract is owned by the employee, unless agreed upon otherwise in writing. By contrast, the copyright to software developed under a specially commissioned contract will belong to the commissioner. However, software developers for other parties and their commissioners may agree that the copyright to the software shall be owned by the developers.
6. Software license agreements which allow disclosure or delivery of source code should contain clear confidentiality provisions.
If a customer requires a software developer to deliver source code to them, it is recommended that the parties make it clear whether the customer wants to own the source code or they merely want to customize or update the software in the future. This is because a software sale agreement or an agreement to assign the copyright to the source code is significantly different from a software license agreement. If the parties agree on a software license agreement under which the source code is required to be disclosed for the purposes of customizing or updating the software, the software developer may include a provision under which the customer is obligated to keep the source code confidential.
7. Software license agreements do not bar copyright owners from granting software licenses to other parties.
As copyright is alienable, licensable, and divisible, there are many kinds of software license agreements, depending on the intention of the parties. For example:
- An exclusive license agreement is a license agreement under which only the licensee has the right to make use of the software, and not even the licensor is allowed to make use of it or grant any additional licenses.
- A sole license agreement is a license agreement under which solely the licensee is allowed to make use of the software. The licensor agrees not to grant any additional licenses but retains the right to make use of the software.
- A nonexclusive license agreement is a license agreement under which the copyright owner may grant licenses to several users simultaneously and the licensor can also make use of the software. General software programs and mobile applications are normally licensed nonexclusively.
A copyright can be licensed to multiple users unless it is expressly prohibited, such as under exclusive or sole license agreements. Therefore, a copyright license agreement must include such clause if the licensee does not want the copyright owner to grant licenses to other parties.
8. Keep in mind that almost all types of software are copyrighted works.
According to the copyright law, a copyright lasts for the rest of the creator’s life plus 50 years after the creator’s death. If the creator is a legal entity, the copyright lasts for a period of 50 years from the creation of said work. As the widespread commercial use of software began no more than 50 years ago and any software products being used should not have been used for more than 20 years, software products used today are generally copyrighted works.
For open source software, although the source code is disclosed for use by others, it does not mean that the source code can be commercially adapted and distributed immediately. Instead, it depends on the software owner’s intention and scope of the license.
After the source code has been disclosed to a customer, the software does not automatically become open source software. The software developer may require the customer to keep the source code confidential.
9. Software brands or logos should be applied for registration as trademarks.
Software developers should create a brand name or trademark for each software version for the purposes of their internal reference, as well as for copyright recordation and licensing. Words or devices used as trademarks must not directly describe the nature or characteristics of the goods or services; otherwise, such trademark will not be registrable, and thus will not be protected under trademark law. Words or devices used as trademarks should be distinctive and must not be identical or similar to other parties’ registered trademarks. You may check whether your trademark is identical or similar to a previously registered trademark with the Department of Intellectual Property.
Digital content in the form of a cartoon character is normally protected under copyright law. However, if a cartoon character is used as a trademark, it should be filed for trademark registration for longer protection, as a registered trademark is protected for a period of ten years and may be renewed indefinitely.
10. If your software is, or will be, licensed for use in a foreign country, trademark registration of your software is also essential in that country.
Granting a software copyright license to a foreign company does not require registration. However, many software products bear trademarks that are known among the public. Hence, in addition to a software copyright license, the copyright owner may have to grant a trademark license to its customer as well, particularly in the case of appointment of a distributor in a foreign country.In such case, the trademark used with the software should also be registered in that foreign country for the purposes of licensing and trademark protection in that country.
The above ten facts are basic and fundamental facts about the protection of intellectual property relating to software. Products and services relating to software change rapidly, to the extent that sometimes, existing protection may not completely cover all aspects of new innovations of such software. Therefore, the involved parties, including software developers, government sectors, and intellectual property lawyers, should regularly exchange opinions and keep themselves updated on the related issues so they can set forth measures to prevent or deal with problems in a timely fashion.