How Do I Protect Software with IP Law?
The protection of software most often involves copyrights, as the two go hand-in-hand. Since the greatest protections are afforded to federally registered copyrights, the most important steps in protecting your software are confirming ownership of the software and registering with the U.S. Copyright Office. Similarly, some software may be subject to patent protection, which requires federal registration with the United States Patent and Trademark Office. Once registered, protection of software is accomplished through standard means of IP enforcement – cease and desist letters, alternative dispute resolutions measures such as arbitration or mediation, and even federal court litigation. However, specific to software is the need to ensure that you are utilizing proper software development, licensing, and indemnity agreements as well.
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Many aspects of computer software can be protected through copyrights and some are even patentable. These protections can extend to code, websites, and software-related objects such as icons and graphical user interfaces. Copyright registration protects the creative aspects of software, and prevents others from copying, making derivative works of, performing, distributing, or selling copies or counterfeits of original works of authorship, including software. And while copyrights arise at the creation of the original content, the original owner of the copyright is the person (a human) who created the content. One exception to this rule is that when an employee (not a work for hire or independent contractor) creates software in the course and scope of his employment, ownership of the software automatically vests in the employer. If there is no traditional employer/employee relationship, there must be a written agreement between the parties stating that the software was created as a “work for hire” on the company’s behalf. This is where software development agreements can be helpful in clearly defining the terms of any agreement related to the creation of software and the ultimate ownership of the completed work. The process of clarifying ownership is complex and should involve assistance from trusted IP counsel to ensure that ownership in the software vests where it should. See Copyright Ownership Problems: Are You Sure You Own Your Copyrights? Clarifying ownership is important because federal registration of a copyright is the only way to gain full protections for your software, and registration can only be secured by the owner of the software.
The next step, then, is federal registration. In order to access the full range of protections, including infringement damages and recovery of your attorneys’ fees and costs, your software copyright must be registered. To do so, you must apply for and obtain registration from the U.S. Copyright Office – simply using the ã designation is not sufficient. For more information on the benefits of copyright registration, see Copyright Lawyer Services. Registration is also vital to fully protect any patentable components of your software. Securing a patent for software is complicated and time consuming, so involving an experienced patent attorney is paramount.
Once your software is registered (either as a copyright or patent or both as applicable), enforcement generally will proceed as with other types of federally registered IP, including through the use of cease and desist letters or even federal litigation as necessary. Specific to software, however, is the need to ensure that you have solid software licensing agreements in place. Licensing agreements protect the value of the software by clearly delineating the terms of use and dissemination, while also monetizing software rights and business expansion.
Finally, software indemnification agreements should be included in licensing agreements and other commercial transactions involving software in order to balance (or shift as needed) the risk associated with any infringing use of the software that may arise.
For more information, see Software Protection & Copyright Services.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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