Solvay Business School IT Law and IT Forensics Intellectual Property 26 th May 2005 Paul Van den Bulck Attorney at the Bar of Brussels Partner of ULYS, Law Firm Lecturer at the Robert Schuman University (Strasbourg)

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.Software Protection II.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

 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 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

 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

 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.”Article 2 of the Berne Convention  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: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  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 re- utilization 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 re- utilization

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

 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,…

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