IP and Related Issues for Computer Software: Leveraging Copyright, Trade Secrets, Trademarks, Patents, and Contracts

Description

Utility patent protection was seen as the most effective way to protect software in the United States before the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank substantially limited the patentability of software. Some computer-related inventions are still patentable in the United States, but it can be challenging. In some foreign jurisdictions, software patents are precluded entirely. Counsel to software developers are looking to other forms of IP protection to supplement or substitute for the limited utility patent rights that may or may not be available.

Trade secrets are often considered an appropriate alternative to utility patents. The Defend Trade Secrets Act of 2016 strengthened the ability to protect trade secrets from misappropriation by creating a federal cause of action. However, protecting software as a trade secret is not always practical because the code may be readily reviewable. In many agreements, particularly cross-border agreements, counsel must also take into account the possible exposure of or access to the source code.

Copyright protection does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, among other categories. While the U.S. Supreme Court reaffirmed that copyright law affords protection to software code in Google L.L.C. v. Oracle America Inc., it greatly limited the scope of those rights in holding that Google's copying of the structure, sequence, and organization of Oracle's software was a fair use and as such, excused under the law. Even where code is protectable, this does not stop others from reproducing the functionality of the software. And where the software itself is the creator of expressive works, U.S. law declines to recognize any copyright in the result.

Developers and their counsel also turn to design patents, trademarks, and software licenses or terms of service to protect various aspects of software, including aspects of newer or trending forms of software, such as non-fungible tokens, blockchain, the metaverse, and artificial intelligence. Counsel must understand each of these approaches to guide their clients in choosing how best to protect their software.

Since software developers rarely write all of the code included in a software program, they and their counsel must also understand the copyright implications of incorporating or using third-party materials in the development process, including open-source code and libraries and commercial software tools. This is an important process to protect software against claims of infringement or breach of contract.

Listen as our authoritative panel examines the challenges for software developers and their counsel in protecting computer software. The panel will explore copyrights, trade secrets, trademarks, patents, and contractual protections. The panel will address the challenges of each avenue for protection and how developers and their counsel can best utilize the IP protection available.