Close up of human hand breaking stone copyrighting sign

Legal Protection for the Software Arts — Part 5

Copyright protection is, generally speaking, formality-free in the US and other member states of the Berne Convention for the Protection of Literary and Artistic Works. A software rights owner does not have to publish, affix a copyright notice, register with the copyright office, deposit copies of the software with the office to enjoy copyright protection for the owner’s software. 

However, under US law, registration is required in order to: (1) to sue for infringement; (2) recover (subject to certain conditions) statutory damages and attorneys’ fees; (3) use (subject to certain conditions) the registration as prima facie evidence of the copyright’s validity; or (4) stop the importation of infringing copies. Putting a copyright notice on software will prevent an infringer from asserting the defense of “innocent infringement”. 

One of the more challenging aspects of software copyright is the deposit requirement by the Copyright Office. The ease with which software can be copied or stolen can make software owners leery of depositing their code with the Copyright Office. Additionally, depositing the code with the Office may eviscerate any trade secret protection for the software. To partially allay these fears, the owner can deposit only: (1) the first and last 25 pages of source code, with portions containing trade secrets blocked out; (2) the first and last ten pages of source code alone, with no blocked-out portions; (3) the first and last 25 pages of object code plus any ten or more consecutive pages of source code, with no blocked-out portions; or (4) for programs of 50 pages or less in length, the entire source code with trade secret portions blocked out. Where the code’s trade secrets are blocked out the blocked-out portions must be proportionately less than the remaining material, which must represent an appreciable amount of original code.

Once the code is deposited, it must also be published. Software is considered published if it is made available to the general public on an unrestricted basis, whether by sale, license, loan, rental, or other transfer to an unrestricted group of users. Publication would almost certainly occur, for example, in the distribution of commercial off-the-shelf software to the general public. However, this distribution is almost always limited to the software’s object code, with the program’s source code left unpublished and therefore beyond the reach of the mandatory deposit requirement. 

Moving from formalities we now address what special privileges a copyright in software grants its owner. Generally speaking, the owner of software copyright has the exclusive right to (1) reproduce the software; (2) modify, adapt, and prepare works derived from the software (e.g., translations, bug fixes, new releases, and new versions); (3) distribute the software (by license, sale, or rental); and (4) publicly display and perform of works generated by the software. These rights can also be licensed on an exclusive or non-exclusive basis. 

There are some limitations on the scope of copyright protection for software. For example, among other limitations, if the program is sold (and not licensed — though good luck in “buying” a program whose purchase is not at least stylized as a “license”), the buyer has the right to resell the program without seeking the copyright owner’s permission (the first sale doctrine). Additionally, third parties have the right to make “fair use” of the program by copying and reverse engineering its object code to uncover non-copyrightable methods and ideas for legitimate purposes such as supporting interoperability or creating new software products. Software owners can contract around these limitations through careful drafting of software distribution models and license agreements. 

David L. Cohen

David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025
[email protected]
(914) 357-5196