Category: Software IP

Learning Lessons from Cartographers to Protect Intellectual Property

Most businesses will have copyright-protected works as a part of their overall IP portfolio.  For some, these works may be the core of their business, such as literary works or other documents, music, art or software code.  How can these businesses effectively protect themselves against copyright theft and infringement?

 

Copyright Infringement and Independent Creation

For a work to attract copyright protection, it must be original.  This does not mean that the work is new.  Rather that it originated from the author who displayed reasonable independent labour, skill and judgment to create the work.  In other words, the author didn’t copy the work from another source.

It is possible for two authors to independently create very similar works.  Provided they did not copy from either each other (or from someone else) then there would be no infringement of copyright.

For copyright infringement to occur, the following need to be satisfied:

  1. There needs to be a valid copyright in a work and ownership of it
  2. The alleged infringing work needs to show a level of objective and striking similarity to the copyright-protected work – a clear resemblance
  3. There needs to be a causal connection between the two works – facts that suggest that copying of the copyright-protected work is likely to have occurred in the creation of the infringing work
  4. There should be copying of a “substantial part” of the copyright-protected work – this is based on quality rather than quantity, as well as the relative importance of the copied elements to the copyright-protected work

Any evidence, or that lack thereof, to support an independent pathway of creation will be important in deciding a case of copyright infringement.  This is where copyright traps can be particularly useful, especially for establishing a causal connection between works.

 

Copyright Traps and Paper Towns

Copyright traps are an established technique to address infringement and plagiarism across a range of works.

The practice involves including a small or trivial item of false information within a work, or details and design features that are unique to the work, and are thus highly unlikely to originate at random in a separate work from a third party.  The latter are often used to ensure the integrity of the original work and the information it contains are not compromised nor misleading to the end user.  In both scenarios, these traps provide a strong causal link to demonstrate that copying had occurred.

Within the discipline of cartography (map making), the use of “paper towns” is the inclusion of a non-existent town, or other unique details such as road widths, on a map.

A famous example is the fictitious town of Agloe in New York State, USA.  Included in maps drawn by the General Drafting Company in 1937 as a copyright trap, an actual hamlet with a general store, gas station and two houses, was eventually built on the site (although it has now long since been abandoned).

In another case from the early 2000s, the UK’s Ordnance Survey (national location and mapping agency) won a £20m compensation from the UK’s Automobile Association (the AA) for the unauthorised copying of its maps in the publication of various atlases, town plans and maps by the AA.  In the conclusion to a long running dispute, the Ordnance Survey were able to demonstrate evidence of copying based upon specific style features and design elements included in their maps, which also subsequently appeared in the AA maps.

 

Applications to Other IP Rights

The principle behind copyright traps and “paper towns” can be applied to a number of IP rights to guard against theft and infringement, and to provide important evidence to resolve disputes.

The technique has applications in documentation relating to trade secrets to detect the leakage of the information to third parties.  Within software development (a field of particular relevance to the tech industry here in New Zealand), the practice of embedding a unique identifier within a piece of code is known as “watermarking”.

Such traps can be a standard inclusion within documentation, software code and other works.  Alternatively, they be applied on an ad hoc basis to investigate suspected ongoing theft or infringement by introducing a change or false information and seeing if it is propagated by the alleged infringer.

Proving IP theft and infringement can be difficult, time-consuming and expensive.  Provided the use of “paper towns” and copyright traps do not lessen the quality or integrity of the product or service you provide, then this is a strategy to consider in order to protect your intellectual property.  They can provide you with valuable evidence and put you in a strong position to stop the theft of your IP and the subsequent damage to your business.

Alistair Curson

 

References

Bainbridge D. (2012). “Intellectual Property”. 9th edn, Pearson Education Limited, Harlow, England.

Clark A. (2001, March 06). “Copying maps costs AA £20m”. Retrieved April 02, 2020, from: https://www.theguardian.com/uk/2001/mar/06/andrewclark

Curson A. (2019, August 06). “Copyright – Originality”. Retrieved April 01, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=231

Fasthoff Law Firm. (2016, November 27). “Anatomy of a Copyright Infringement Case: Defenses to Allegations of Copyright Infringement”. Retrieved April 01, 2020, from: https://www.fasthofflawfirm.com/anatomy-copyright-infringement-case-defenses-allegations-copyright-infringement/

Grundhauser E. “Agloe, New York”. Retrieved April 03, 2020, from: https://www.atlasobscura.com/places/agloe-new-york

Hamilton J. (2010, July 08). “What is software watermarking?”. Retrieved April 03, 2020, from: https://jameshamilton.eu/research/what-software-watermarking

Interlego A.G. Appellant v Tyco Industries Inc. and Others Respondents [1989] AC 217.

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273.

McDonald A. (2019). “Copyright Law”. Retrieved April 01, 2020, from: https://www.amcdonald.co.nz/information/copyright-law-barrister/

New Zealand Copyright Act 1994, s16. Retrieved April 01, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/117.0/DLM345923.html

New Zealand Intellectual Property Office. “Copyright: Ownership and Protection”. Retrieved April 01, 2020, from: https://www.iponz.govt.nz/about-ip/copyright/ownership-and-protection/

O’Connell D. (2020, March 27). “Trade Secrets & Paper Towns”. Retrieved April 01, 2020, from: https://www.linkedin.com/pulse/trade-secrets-paper-towns-donal-o-connell/?trackingId=UPyO0WRnS6GZYnDa8PrRLw%3D%3D

Ordnance Survey. (2020). “About us”. Retrieved April 02, 2020, from: https://www.ordnancesurvey.co.uk/about

Wikipedia. (2020, March 13). “Agloe, New York”. Retrieved April 03, 2020, from: https://en.wikipedia.org/wiki/Agloe,_New_York

Wikipedia. (2020, March 02). “Fictitious entry”. Retrieved April 01, 2020, from: https://en.wikipedia.org/wiki/Fictitious_entry

Wikipedia. (2020, March 26). “Ordnance Survey”. Retrieved April 02, 2020, from: https://en.wikipedia.org/wiki/Ordnance_Survey

Copyright Protection in the Digital Environment in Aotearoa

On 16th January 2019 the Ministry for Business, Innovation and Employment announced that New Zealand had joined the World Intellectual Property Organization’s Copyright Treaty (WCT) and Performers and Phonograms Treaty (WPPT).  New Zealand acceded to both treaties on 17th December 2018, and they will enter into force on 17th March 2019.

Both treaties increase the scope of protection of works, as well as the protection of the rights of authors, producers and performers.  There is a particular emphasis on the digital environment, which is of relevance to a 21st century world.  The accession to these treaties is also of particular importance to New Zealand given its strong and growing tech industry.

 

WIPO Copyright Treaty (WCT)

The Berne Convention for the Protection of Literary and Artistic Works is an international agreement covering copyright as an IP right.  The WIPO Copyright Treaty is a special agreement under the Berne Convention focussing on works and authors’ rights in the digital environment.

In addition, the treaty discusses two additional subject matters, of particular relevance to the digital environment to be protected by copyright – computer programmes and databases.

Computer programmes are protected irrespective of the mode or form by which they are expressed.

Databases cover any compilations of data or other materials, in any form, providing the selection and/or arrangement of their contents may be considered an intellectual creation.  In other words, the selection and/or arrangement of the data must meet the originality requirement of copyright, i.e. originate from the author (not be copied).  If this criterium is not met, then the database in question will not be covered by the treaty.

The treaty also grants authors’ rights (beyond those recognised by the Berne Convention) of:

  • Distribution – authorising the original work and copies to be made available to the public via sale or some other transfer of ownership
  • Rental – authorising commercial rental of computer programmes, cinematographic works and works subsisting in phonograms (subject to certain restrictions)
  • Communication to the public – authorising communication to the public, in particular via on-demand and interactive means over the internet

 

WIPO Performers and Phonograms Treaty (WPPT)

The WIPO Performances and Phonograms Treaty also has focus on the digital environment and is concerned with the rights of two categories of beneficiaries – performers and the producers of phonograms.

Performers include actors, singers and musicians.  The producers of phonograms are the people, or other legal entities, that record (fix) sounds.  The overlap that exists between performers rights and the protection of their recorded aural performances is why these two categories are addressed by the same treaty.

The treaty grants performers the following rights associated with their performances when fixed in phonograms.  These, however, do not apply to audiovisual fixations, such as films or movies.  The same rights are also granted to the producers of phonograms:

  • Reproduction – authorising the reproduction of a phonogram
  • Distribution – authorising the original work and copies of the phonogram to be made available to the public via sale or some other transfer of ownership
  • Rental – authorising commercial rental of the original and copies of a phonogram
  • Making available – authorising wired or wireless access to any performance recorded in a phonogram, at a time and from a place chosen by the public, in particular via on-demand and interactive means over the internet

Where a performance is unfixed, i.e. live, performers are granted the rights of broadcasting (but not rebroadcasting), communication to the public (but not for broadcast performances), and the right of fixation (i.e. to record the work).

Performers also enjoy the moral rights to be identified as the performer and to maintaining the integrity of the work.

The treaty also sets out rights with respect to the remuneration to both performers and producers of phonograms published, broadcasted or communicated for commercial purposes.

 

Term of Protection and Paracopyright

Under both treaties, the term of protection must be at least 50 years.

Further, there is an obligation for contracting parties to provide paracopyright protection – legal remedies to support authors where efforts have been made either to circumvent technological protection measures (TPM), such as encryption; or to interfere with digital rights management (DRM), such as metadata intended to identify works and/or the authors as a means to manage distribution and monetisation of a work.

 

Copyright in Aotearoa

New Zealand’s Copyright Act 1994 is currently under review with an Issues Paper published and available for comment (as of 23rd November 2018).  Written submissions should be made by 17:00 NZ on 5th April 2019.  The review is being undertaken because of the rapid changes to technology and the consequent ways in which copyright-protected works are both created and distributed.

Many of the questions raised in the issue paper relate to performers rights, TPMs, communication to the public, and current or emerging technologies that the law should give additional consideration to.

New Zealand’s accession to the WIPO Copyright Treaty and the WIPO Performers and Phonograms Treaty, together with the outcomes of the review of the existing Act will position the creators of original works in Aotearoa with greater and relevant protection in an ever-evolving digital world.

Details for making submissions in relation to the issue paper may be found here:

https://www.mbie.govt.nz/have-your-say/review-of-the-copyright-act-1994-issues-paper/

 

Alistair Curson

 

References

Ministry of Business, Innovation and Employment. “Review of the Copyright Act 1994”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/business-and-employment/business/intellectual-property/copyright/review-of-the-copyright-act-1994/

Ministry of Business, Innovation and Employment. “Review of the Copyright Act 1994: Issues Paper”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/have-your-say/review-of-the-copyright-act-1994-issues-paper/

Ministry of Business, Innovation and Employment. (2018, November). “Issues Paper: Review of the Copyright Act 1994”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/assets/a28d02fc5c/review-of-copyright-act-1994-issues-paper.pdf

Ministry of Business, Innovation and Employment. (2019, January 16). “New Zealand joins international copyright treaties”. Retrieved January 18, 2019, from: https://www.mbie.govt.nz/about/news/new-zealand-joins-international-copyright-treaties/

New Zealand Copyright Act 1994, s15. Retrieved January 25, 2019, from: http://www.legislation.govt.nz/act/public/1994/0143/117.0/DLM345922.html

Wikipedia. (2018, July 4). “Paracopyright”. Retrieved January 24, 2019, from: https://en.wikipedia.org/wiki/Paracopyright

Wikipedia. (2018, December 24). “Berne Convention”. Retrieved January 23, 2019, from: https://en.wikipedia.org/wiki/Berne_Convention

World Intellectual Property Organisation. (1996, December 20). “WIPO Copyright Treaty”. Retrieved January 24, 2019, from: https://www.wipo.int/treaties/en/text.jsp?file_id=295166#P83_10885

World Intellectual Property Organisation. “Berne Convention for the Protection of Literary and Artistic Works”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/berne/

World Intellectual Property Organisation. “Protection of Non-Original Database”. Retrieved January 24, 2019, from: https://www.wipo.int/copyright/en/activities/databases.html

World Intellectual Property Organisation. “Summary of the WIPO Copyright Treaty (WCT) (1996)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wct/summary_wct.html

World Intellectual Property Organisation. “Summary of the WIPO Performances and Phonograms Treaty (WPPT) (1996)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wppt/summary_wppt.html

World Intellectual Property Organisation. “Treaties and Contracting Parties: Contracting Parties; WIPO Copyright Treaty: New Zealand”. Retrieved January 18, 2019, from: https://www.wipo.int/treaties/en/remarks.jsp?cnty_id=12548C

World Intellectual Property Organisation. “Treaties and Contracting Parties: Contracting Parties; WIPO Performances and Phonograms Treaty: New Zealand”. Retrieved January 18, 2019, from: https://www.wipo.int/treaties/en/remarks.jsp?cnty_id=12549C

World Intellectual Property Organisation. “WIPO Copyright Treaty (WCT)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wct/

World Intellectual Property Organisation. “WIPO Performances and Phonograms Treaty”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wppt/

Tech Software and Intellectual Property Protection

A key part of any tech solution is the underlying software.  To appropriately protect tech innovations and the businesses built upon them, it is important to understand how intellectual property law treats software, particularly in the different global jurisdictions where you intend to operate.  In this blog entry I provide a brief introduction and encourage New Zealand tech businesses to ensure they’ve made the necessary considerations when drafting their business plans and conducting their IP analytics in order to best position themselves within the global IP landscape in which they intend to operate.

Generally, software is protected by copyright as a literary work, and this approach is recognised at an international level.  Copyright will subsist in both the source code (human-readable) and object code (machine-readable) of a computer programme and arises automatically with the creation of the work.  It is also possible, to some extent, to protect software by patents, however this is a much more complex area with practices varying across jurisdictions.

Up until a few years ago, many software-based inventions could be patented in New Zealand (under the Patents Act 1953).  The New Zealand Patents Act 2013, however, introduced many reforms to the New Zealand IP legislation, bringing it closer to many other global jurisdictions.  Amongst other changes, software as such is no longer considered patentable subject matter in Aotearoa.  The new legislation is based on UK law and, as can be seen below, does not entirely preclude software-based inventions from being patented.

In the UK and Europe, software as such is considered excluded patentable subject matter.  However, if an invention that includes computer software provides a technical contribution or effect, that may be patentable.  The claimed invention will need to define certain technical features which provide an inventive solution to a technical problem.

Recently, the EPO published new guidelines on computer-implemented inventions.  Broadly, the subject matter of the claimed invention must have technical character, but the claims themselves can contain both technical and non-technical features.  All the features that contributing to the technical character are considered during examination when assessing inventive step.

A number of software-based patent applications have now been prosecuted through IPONZ that provide further guidance as to the interpretation of the new law in New Zealand.  IPONZ appears to be following European practice in asking whether the technical contribution of the invention is patentable subject matter, irrespective of whether the contribution is implemented using a software programme.

In other jurisdictions, such as the USA for example, the situation is different.  The position on the patentability of software is not explicitly stated, leading to software being considered patentable subject matter.  Essentially, such patents are process patents where the process is computerised.  Provided the invention is more than just an “abstract idea” it may be patentable.  Recent case law has provided further guidance as to the eligibility of such inventions for patenting, however careful drafting of a patent application is required.

Internationally, we see similarities and close harmonisation across many jurisdictions on the patentability and IP protection of software innovations, but critical differences also exist.  Tech businesses intending to operate on the global stage should seek IP advice early on to help create a clear business plan and global IP protection strategy that identifies where they wish to operate and how to adequately protect their tech innovations in those jurisdictions.

Alistair Curson

 

References:

Adams M. (2016, May 27). “New Zealand Patent Office Issues First Software Patent Under New Law”. Retrieved November 16, 2018, from: https://www.ajpark.com/insights/ip-updates/new-zealand-patent-office-issues-first-software-patent-under-new-law/

Adams M. (2017, September 30). “Software Inventions and the New Zealand Patents Act 2013: Three Years On”. Retrieved, November 16, 2018, from: https://www.ajpark.com/insights/ip-updates/software-inventions-and-the-new-zealand-patents-act-2013-three-years-on/

Ayyagari S. (2017, August 11). “Securing Software Patents in New Zealand”. Retrieved November 15, 2018, from: https://www.baldwins.com/news/software-patents-in-new-zealand

IP Watchdog. (2018, February 17). “Software Patents”. Retrieved November 16, 2018, from: http://www.ipwatchdog.com/software-patents/

Leach J. “Patentability of Software and Business Method Inventions in Europe”. Retrieved November 16, 2018, from: http://mewburn.com/resource/patentability-of-business-method-and-software-inventions-in-europe-2/

Perronace A. (2018, November 15). “EPO Publishes Revised Guidelines on Computer-Implemented Inventions. Retrieved November 16, 2018, from: https://www.ipwatchdog.com/2018/11/15/epo-publishes-revised-guidelines-computer-implemented-inventions/id=103316/

Shah IP Law. “Is Software Patentable in the United States”. Retrieved November 16, 2018, from: https://www.shahiplaw.com/software-patents/

The Patent Examination Manual. “Section 11: Computer Programs”. Retrieved November 16, 2018, from: https://www.iponz.govt.nz/about-ip/patents/examination-manual/current/computer-programs/

World Intellectual Property Organisation. “Copyright Protection of Computer Software”. Retrieved November 15, 2018, from: http://www.wipo.int/copyright/en/activities/software.html

World Intellectual Property Organisation. “Patenting Software”. Retrieved November 16, 2018, from: http://www.wipo.int/sme/en/documents/software_patents_fulltext.html