A judgment handed down by the Barcelona Provincial Appellate Court on April 7, 2021 sheds more light on the scope of protection of computer programs by clarifying that data libraries included in programs are not eligible for protection as part of the programs but rather, where applicable, must seek the protection afforded to databases by the Intellectual Property Law. Let’s take a look.
The issue in question revolved around the plagiarism of a chemical nomenclature software program the purpose of which was to facilitate the application of the international rules created by the International Union of Pure and Applied Chemistry (IUPAC), so that all chemical elements and compounds could be named uniformly around the world. To meet this objective, the allegedly plagiarized program executed a series of algorithms that served to apply the UIPAC’s standardized rules, drawing from various data libraries (input).
The allegedly plagiarized software had an identical function. However, as we have already had occasion to analyze in this blog (link), since the functionalities of software programs are not eligible for protection, there is therefore no problem in two programs sharing the same functionality, provided that they have been developed independently.
In this case, the Barcelona Provincial Appellate Court was very mindful of the existence of the expert report submitted by the defendant, which had concluded that the source code of the programs was different. The expert report only found 87 lines of identical code, which is equivalent to 0.001% of the allegedly plagiarized source code. In the court’s opinion, the 87 lines of code that coincided could not be considered a reproduction, not even partially, of the plaintiff’s program. As a result, the source code of the program had not been plagiarized.
The second element to be addressed was the purported plagiarism of the program’s data libraries, which appears to be the central aspect of the appeal. The plaintiff held that plagiarism had taken place because a series of matching, inexplicable errors occurred in the data libraries used by both programs. In this regard, the Barcelona Provincial Appellate Court concluded, as was to be expected, that said libraries do not form part of the computer program and therefore, cannot claim protection under the Intellectual Property Law as software (article 96 et seq. of the Intellectual Property Law):
“Whether the protection the law affords to computer programs should be considered to include the data bases integrated in those programs is a different issue. And we believe that the reply to this question is also no. To the extent that the Revised Intellectual Property Law grants data bases protection separately, we cannot consider that they can be protected under the protection afforded to computer programs in article 96 of the law”.
The Barcelona Provincial Appellate Court, following the stance taken by the Madrid Provincial Appellate Court in its judgment of January 18, 2019 [ECLI:ES:APM:2019:2366] (final) clarified which parts of computer programs are eligible for protection under article 96 et of the Intellectual Property Law:
“We disagree with the opinion expressed in the appeal regarding which elements are relevant when comparing the two programs. Those elements are not the data that appear in mere data files, regardless of whether they are important or have been produced by the program itself, but rather the elements that are found in the part of the program in which the source code is developed, that is, the programming instructions that enable the program to carry out its functions. We therefore believe that Dr. Erasmo’s analysis is correct, even though it is limited to the programming instructions and that an analysis has not been made of auxiliary files, as he stated had been the case in the hearing. We say that it is correct because the aim was precisely to share the programming instructions, which is the only directly relevant aspect to determine whether or not partial copying has taken place”.
It is important to bear in mind that the Provincial Appellate Court is not rejecting the protection of data libraries. What it is saying is that protection should not be sought through articles 96 et seq. of the Intellectual Property Law.
Therefore, in principle, the most adequate protection appears to be the one the Intellectual property Law confers on databases, which, in turn, splits into two. On the one hand databases can be protected where their structure is original. And on the other, the sui generis right in databases set forth in articles 133 et seq. of this law can be used. In the latter case, what is prohibited is the unauthorized extraction and reuse of a substantial part of a database, even if the data are public, because the aim is to protect the manufacturer’s investment in the database, not the content itself. It is nonetheless a difficult standard to archive, because the manufacturer of the database must evidence that it has made a substantial investment in manufacturing it and that furthermore, the unauthorized extraction and/or reuse are also substantial. It is difficult, but not impossible. Proof of this is that the judgment by the Madrid Provincial Appellate Court of June 8, 2015, confirmed by the Supreme Court (case INFONIS vs IMS) granted over 5,000,000 euros in compensation following the infringement of the Spanish company’s sui generis right (link).
Consequently, in those cases in which we consider that our software has been infringed it is important to analyze both the work in question from a technical standpoint (i.e. the type of software, possibilities of unauthorized access, plagiarized elements, investment made in the development, use of OSS, etc.) as well as the different means of protection we have available. This is the only way of ensuring that an ever-increasingly essential asset can be protected correctly.