Transcript Solvay Business School IT Law and IT Forensics

Solvay Business School
IT Law and IT Forensics
Intellectual Property
th
26
May 2005
Paul Van den Bulck
Attorney at the Bar of Brussels
Partner of ULYS, Law Firm
Lecturer at the Robert Schuman University (Strasbourg)
www.ulys.net
Scope of the Presentation
What is Intellectual Property?
A name commonly given to a group of separate
property rights, including:
 Trademark;
 Copyright;
 Patent;
 Database;
 Design;
 Layout design of integrated circuits;
 Plant variety.
Scope of the Presentation

The presentation concentrates on two
important IP issues under European Law:
I.
II.
Software Protection
Database Protection
I. Software Protection
 Three Parts:
A. Software Copyright
B. Software Patent
C. Know-How
A. Software Copyright
1. Legislation
 European Law
 Directive 91/250/EEC of 14 May 1991 on the
legal protection of computer programs
 Belgian Law
 Law of 30 June 1994 on copyright (“droits
d’auteur”) and related rights
 Law of 30 June 1994 on the legal protection of
computer programs
A. Software Copyright
2. Software Definition
 No definition under the Directive
 A set of instructions in a language that computers
understand
 Examples:


Operating systems (Mac OSX, Linux, Windows,…);
Web browsers, word processors, design software,…
 Object code & source code both receive protection
under copyright
A. Software Copyright
3. Object of protection
 Protected as literary works within the meaning of the
Berne Convention
 Ideas and principles which underlie any element of a
computer program, including those which underlie its
interfaces, are not protected by copyright
 Originality requirement: the computer program must
be the author’s own intellectual creation
A. Software Copyright
4. Who owns the rights?
 The person who has created the program is
generally the right holder
 Possible co-ownership
 When created in the course of employment, the
employer owns the economic rights, unless
otherwise agreed between the employer & the
programmer
A. Software Copyright
5. Exclusive rights
 Permanent or temporary reproduction of a
computer program by any means and in any
form
 Translation, adaptation, arrangement and any
other alteration
 Any form of distribution to the public,
including the rental, of the original computer
program or of copies thereof
A. Software Copyright
6. Scope of the protection




Ideas?
Efficiency considerations?
Extrinsic considerations?
Interfaces?
A. Software Copyright
 Ideas?
 Copyright only protects the expression of a
computer program not ideas & principles:
 « Whereas, for the avoicance of doubt, it has to be made
clear that only the expression of a computer program is
protected and that ideas and principles which underlie
any element of a program, including those which
underlie its interfaces, are not protected by copyright
under this Directive »
 Algorithm:
 Mathematics formula
 Interpretation of Directive Recital 14
 Word/Sentence
A. Software Copyright
 Efficiency considerations?


Merger doctrine between idea & expression
Only one way to express one idea
 Extrinsic considerations?

« Scènes à faire » doctrine
 Mechanical specifications of the computer on which a
particular program is intended to run
 Compatibility requirements of other programs with which a
program is designated to operate in conjunction
 Computer manufacturer’s design standards
 Demands of the industry being serviced
 Widely accepted programming practices wihin the computer
industry
A. Software Copyright
 Interfaces?
 Parts of the program intended to allow it to
communicate and work together with other
components of a computer system and with users
 Protected only if original expression
A. Software Copyright
7. Exceptions to software copyright
 A lawful holder is entitled:
 To use the computer program for its intended
purpose
 To correct errors in the program
 To make a back-up
 To observe, study or test the functioning of the
program in order to discover how it works
A. Software Copyright
 To use it for its intended purpose
 « In the absence of specific contractual provisions,
the acts above referred shall not require
authorization by the right holder where they are
necessary for the use of the computer program by
the lawful acquirer in accordance with its intended
purpose, including for error correction »
 Allowing decompilation for error correction: quid
in practical terms?
A. Software Copyright
 To make a back-up
 « The making of a back-up copy by a person
having the right to use the computer program may
not be prevented by contract insofar as it is
necessary for that use »
 No contractual exception!
A. Software Copyright
 Exception for study purposes
 « The person having the right to use a copy of a
computer program shall be entitled, without the
authorization of the rightholder, to observe, study
or test the functioning of the program in order to
determine the ideas and principles which underlie
any element which underlie any element of the
program if he does so while performing any of the
acts of loading, displaying, running, transmitting
or storing the program which he is entitled to do »
 It is allowed to look at what is allowed to be seen!
A. Software Copyright
8. Decompilation
 What does « decompile » mean?
 Converting the object code of a program into
source code
 Conflict of interests?
 Making one’s software interoperable with other
software in the public interest
 Keeping the source code of a program secret for
business purposes
A. Software Copyright
 Directive provision

The authorization of the right holder is not required:
 when reproduction of the code and translation of its form are
indispensable to obtain the information necessary to achieve
the interoperability of an independtly created computer
program with other programs
 these acts are performed by a person having a right to use a
copy of a program
 the information necessary to achieve interoperability has not
previously been readily available to this person
 these acts are confined to the parts of the original program
which are necessary to achieve interoperability
A. Software Copyright
 Restriction to decompilation
 The information obtained cannot be used for goals other than
to achieve the interoperability of the independently created
computer program
 The information obtained cannot be given to others, except
when necessary for interoperability
 The information obtained cannot be used for the
development, production or marketing of a computer
program substantially similar in its expression, or for any other
act which infringes copyright
 Decompilation cannot be used in a manner which
unreasonably prejudices the right holder’s legitimate
interests or conflicts with a normal exploitation of the
computer program
A. Software Copyright
A. Software Copyright
 Interoperability case: Microsoft v. EU Commission
 In March 2004, the European Commission imposed a record
fine of €497 million and a series of 'remedies' upon Microsoft
for abuse of dominant position on the software market with its
Windows operating system
 According to the EU Commission, Microsoft abused its market
power by deliberately restricting interoperability between
Windows PCs and non-Microsoft work group servers, and
by tying its Windows Media Player (WMP), a product where it
faced competition, with its ubiquitous Windows operating
system
 Appeal launched before the EU Court of Justice
A. Software Copyright
9. Term of protection
 Author’s life + 50 years after his death or
after the death of the last surviving author
 70 years in Belgium!
A. Software Copyright
10. Digital Rigths Management (DRM)
 What does it mean?
 All technical measures used by right holders to
protect software copyright
 Example: an activation code required to the
licensee by the software manufacturer in
order to use the software
 Purpose: preventing copyright infringement
A. Software Copyright
 Directive provision



Requires Member States to take measures
Against any act of putting into circulation, or the possession
for commercial purposes of,
Any means only intended to break DRM
 Belgian law


Fine from 2,5 EUR to 2.500 EUR
Against anyone who puts into circulation, or possesses for
commercial purposes, any means the sole intended purpose
of which is to facilitate the unauthorized removal or
circumvention of any technical device which may have been
applied to protect a computer program
A. Software Copyright
A. Software Copyright
 DRM case in France: Virgin v. Apple
 VirginMega (Virgin Group’s French online music joint venture
with media company Lagardère Group) launched a claim
against Apple before French Competition Council
 VirginMega claims that Apple had anti-competitive behaviour
by refusing to licence the iTunes Music Store’s Fair Play DRM
technology
 VirginMega uses Windows’audio and DRM technology which
is not supported by the Ipod
 French Competition Council dismissed the claim in November
2004
A. Software Copyright
11.Licensing
 What is a software copyright licence?
 Copyright holder’s permission to do some of the
things restricted by copyright, among others:
running, modifying and distributing the program
 Examples
 Allowing the licensee to install and run the
program on only one or on several computers
A. Software Copyright
Semi-free licence : free only for non-commercial
users
Shareware licence : allows unlimited redistribution
but only limited trial use of the software (e.g. 30
days)
Crippleware system: software distributed under
shareware licence but in an incomplete or
« crippled » form. The user must pay a fee to get an
« uncrippled » version of the software
A. Software Copyright
 Copyleft?
A.Software Copyright
Copyleft?
Inventor
 Richard Stallman invented “copyleft” in disagreement
with the concept of software copyright
 He believed that anyone ought to use and modify software
without asking anyone’s permission
Principles
 Software is copyrighted but made available under a special
license
 Copyleft licence allows any user to freely run, copy,
modify and distribute the copyleft software
A.Software Copyright
 Modifying the software for one’s own personal use is
permitted
 Two requirements in case of distribution of the modified
version:
• Source code and object code of the modified version must
both be distributed
• The modified version must itself be under copyleft licence
Examples of Copyleft licence
 GNU General Public Licence (GPL)
One of the most commonly used copyleft licence
Created in 1991
 Linux
A.Software Copyright
A.Software Copyright
Example of No Copyleft licence
 BSD licence
 Allows anyone to freely run, copy and distribute the software
 Allows to modify it and to distribute the modified version under
restriction and without copyleft
Pros and cons
 Source code is public
 Program is adaptable and constantly improved by other
programmers
 Reliability and durability?
 Dependency on the service supplier?
 Fragmentation risk?
 Intern skills?
A.Software Copyright
Conclusion
Open Source >< Not Open Source
Copyleft >< No Copyleft
Free of charge>< Not Free of charge
B. Software Patent
1. Legal Background




Munich Convention
Belgian Law
USA, JAPAN
WIPO, TRIPS
B. Software Patent
2. WIPO
 Copyright
 “Computer programs are protected as literary
works within the meaning of Article 2 of the Berne
Convention. Such protection applies to computer
programs, whatever may be the mode or form of
their expression.”
 Patent
 Nothing about computer program in the Paris
Convention
B. Software Patent
3. TRIPS
 Copyright

“Computer programs, whether in source or object code,
shall be protected as literary works under the Berne
Convention (1971).”
 Patent

“ (…)patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided
that they are new, involve an inventive step and are capable
of industrial application.”
B. Software Patent
4. European Patent Convention (1973)
 Article 52(1)

Computer programs as such are not patentable
“(1) European patents shall be granted for any inventions which
are susceptible of industrial application, which are new and
which involve an inventive step.
(2) The following in particular shall not be regarded as inventions
within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing
games or doing business, and programs for computers;
(d) presentations of information.”
B. Software Patent
5. EU Proposal Directive on the patentability
of computer-implemented inventions
 Proposal first launched in February 2002
 Demand from the EU Parliament for a
renewed referral last February
 Adoption in Council last March
 Still in discussion
B. Software Patent
 EU Council Position

Definition of a « computer-implemented invention »
 « Any invention the performance of which involves the use of a
computer, computer network or other programmable apparatus,
the invention having one or more features which are realised
wholly or partly means of a computer program »


In order for a software related invention to be patentable, a
technical contribution remains necessary
A technical contribution means a contribution to the state of
the art in a field of technology, which is new and not obvious
to a person skilled in the art
B. Software Patent
 Pros and Cons of Software Patent





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Protection of algorithm
Protection against independent creation
Easy to licence
Do not rely on secrecy
Cost
Procedure too long & protection term inadequate
for the short lifetime of software inventions
 Uncertainty about the patent subject-matter
 Inventivity & Novelty requirements
C. Know-How
1. Definition
 “know-how” v. “trade secrets”
 Often used as synonym but are by no means identical
 Know-how may constitute a trade secret
 Not every trade secret falls within the definition of know-how
 Financial information, employment planning
2. Protection : source code
 Licence and know-how agreements
 Exclusivity/non exclusivity
 Confidentiality
II. Database Protection
1. Legal Background
 Copyright protection
 Intellectual creation: Berne Convention, TRIPS,
directive copyright
 Sui generis protection
 Directive 96 EC on the legal protection of databases
II. Database Protection
2. Directive 96 EC
 Scope
 Collection of independent works, data or other
materials
 Arranged in a systematic or methodical way
 Individually accessible by electronic or other means
 Exclusion
 Computer programs
 Database contents
II. Database Protection
Protection of the presentation of the database
Copyright in favor of the author if: by reason of the selection
or arrangement of its contents, constitutes the author’s own
intellectual creation
Protection of the database itself
« Sui generis » right in favor of the « maker »:
Right of the maker of a database to prevent extraction and or reutilization of the whole or of a substantial part of the contents of the
database
Condition of this right: the maker must show that there has
been a substantial investment in either the obtaining,
verification or presentation of the contents
Protection of one/several data by copyright: data=work of author
II. Database Protection
 Object of protection
Extraction of the whole or of a substantial part,
evaluated qualitatively and/or quantitatively, of the
database contents
Re-utilization of the whole or of a substantial part,
evaluated qualitatively and/or quantitatively, of the
database contents
II.Database Protection
 Object of protection
 Extraction: permanent or temporary transfer of all or a
substantial part of the contents to another medium
Re-utilization: any form of making available to the
public all or a substantial part of the contents by the
distribution of copies, by renting, by on-line or other
forms of transmission
Repeated & systematic extraction and/or re-utilization
of insubstantial parts which conflict with normal
exploitation or which unreasonably prejudice legitime
interests of its maker
II. Database Protection
 Lawful users of a database made available to the
public
 extracting & re-utilizing insubstantial parts of the
contents, evaluated qualitatively and/or quantitatively, for
any purposes (included commercial ones, see ECJ)
NOT perform acts which conflict with normal
exploitation of the database or unreasonably prejudice the
legitimate interests of its maker
II. Database Protection
3. Recent Case Law of the European Court
of Justice (November 2004)

British Horseracing & Fixtures Marketing Cases

Background
 The four cases (British Horseracing Board Ltd. v. William Hill;
Fixtures Marketing Ltd. v. Oy Veikkaus Ab.; Fixtures Marketing
Ltd. v. Svenska Spel Ab.; Fixtures Marketing Ltd. v. Oganismos
Prognostikon Agonon Podosfairou Ae) came before the Court
as a result of referrals from UK, Finnish, Swedish and Greek
courts
II. Database Protection
 British Horseracing Board (BHB) case arose over the use
by William Hill, for the purpose of organising betting on
horse racing, of information from the BHB database
 In Fixtures Marketing cases, Finnish, Swedish and Greek
betting firms used information taken from the fixture lists
for the English and Scottish football leagues
Investment in the obtaining of the contents
 Resources used to seek out existing independent materials
and collect them in the database
 Not resources used for the creation as such of
independend materiels
II. Database Protection
Investment in the verification of the contents
 Resources used with a view to ensuring the reliability of the
information contained in that database, to monitor the accuracy
of the materials collected when the database was created and
during its operation
Not resources used for verification during the stage of creation
of materials which are subsequently collected in the database
II. Database Protection
Extraction and/or re-utilization
 Any unauthorised act of appropriation and distribution to the
public of the whole or a part of the contents. It does not imply
direct access to the original database
Substantial part, evaluated quantitatively
 Volume of data extracted from the database and/or re-utilised
must be assessed in relation to the volume of the contents
Substantial part, evaluated qualitatively
 Scale of the investment in the obtaining, verification or
representation of the contents subject to extraction and/or reutilization
II. Database Protection
First answers of the European Court of Justice:
Investment independent of that required for the creation
of the data
Exclusion from data created at the same time as its
processing
Is the derivation of data from naturally occurring
phenomena an act of creation or obtaining?
Recording of meteorological data?
Genetic sequences of living organisms?
« get around » strategies?
Substantially invest in the presentation or subsequent
verification of the information
Deny access to the public to the untreated source data
II. Database Protection
4. Deeplinking
 Definition of deep link
 A link from one website to another that:
 Bypasses the second website’s home page and
 Takes the user directly to an internal page on the site
 Important national case law
 No uniform answer
II. Database Protection
II. Database Protection
II. Database Protection
Dutch case: PCM v. Kranten.com (2000)
News website not protectable as database
Court held the newspaper had put insufficient effort
into composing the collection of headlines
Danish case: Danish Newspaper v.Newsbooster
(2002)
News website protectable as database
Deep linking infringes database right
Repeated & systematic reproduction and publication
of claimant’s headlines and articles
II. Database Protection
Cadremploi v. Keljob (2001)
Job advertisements website protectable as database
Extraction of subtantial parts, evaluated
qualitatively
 Essential parts of a job offer include:
 Post title
 Sector of industry
 Geographic zone
 Publication date on Cadremploi site
 URL address
Infringes database right
II. Database Protection
5. Conclusion
 Processed information



Eligible to copyright protection
Eligible to database protection
Utility to mention the protection:
 ©
 “the database… is protected by database regulations. It is
strictly forbidden, without the consent of the maker, to extract
and/or re-utilize the whole or a substantial part of the content of
this database”
 Utility to use specific tools: PDF, technological measures
(Directive on information society: access control/protection
process: encryption, scrambling, copy control mechanism,…
Thank You!
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