DR. NOAM SHEMTOV

READER IN IP & TECH’ LAW

DEPUTY HEAD – CENTRE FOR COMMERCIAL LAW STUDIES

Center FOR COMMERCIAL LAW STUDIES

QUEEN MARY UNIVERSITY OF LONDON

EMERGING ISSUES MOBILE APP DEVELOPMENT AND INTELLECTUAL PROPERTY

The Production of Software

Business and Legal issues

The selection of a particular methodology has a significant effect on the testing that is carried out and the timeframe for completion.

However, although these are of utmost importance to development teams, they have little impact on the legal position of the software in relation to intellectual property rights

In the case of mobile apps, the models could often be regarded as irrelevant as there are mobile app development tools, some of which are ‘no-code’ or ‘low code’.

Such tools may enable mobile app development within a very short period of time & involve no or very little coding in the process

From an intellectual property law perspective, the use of such tools may affect claims to copyright ownership over the portions of code and architecture when these result from the use of such tools rather than from choices exercised by the developer

CODE & ARCHITECTURE

Software is the most basic building block at the core of every mobile app

Irrelevant whether a mobile app is downloadable or available for use over the internet, cloud-based or not

Computer programs are created while using source code, written in a human-readable programming language such as Java (Android) or Swift (iOS & OS X)

A compiler is a piece of software that processes the source code into object code, the machine-readable code

However, the differentiation is irrelevant for intellectual property protection – both source and object code may be subject to copyright protection

SCOPE OF PROTECTION OF SOFTWARE’S INTERNAL ORGANS UNDER COPYRIGHT LAW AND ITS BUSINESS IMPACT

Copyright law is the primary form of protection for computer code

Source code and object code are considered literary works under the main international treaty governing copyright (Berne Convention)

The difference between most literary works and computer code is that literary works are created to be consumed by humans, while computer code is a series of statements created to instruct a machine and manipulate data

In more traditional works of authorship, verbatim copying is not permitted;

However, for computer programs, there are sometimes public policy considerations that support copying of a specific form of an expression created by the initial author

E.g. due to external condition

SCOPE OF PROTECTION OF SOFTWARE’S INTERNAL ORGANS UNDER COPYRIGHT LAW AND ITS BUSINESS IMPACT

Once the software is granted copyright protection, infringement is established as to whether that which was taken was ‘significant’, e.g. in the EU copying of a part that constitutes the author’s own intellectual creation may result in infringement.

It is essential for developers not to copy any portion of code written by someone else regardless of size, function or nature, unless, they are absolutely certain that it is not eligible for copyright protection, such certainty could be established by an intellectual property expert.

Patents typically protect products, processes and sometimes a product derived from a particular process, they are granted for software-related inventions in some jurisdictions, software-related inventions may cover aspects of a computer program, provided the invention as a whole does not claim an abstract or non-technical subject matter.

If only a portion of computer code that relates to a software-related invention has been used by an unauthorized party, it may not necessarily lead to patent infringement.

In certain circumstances, trade secrets may be an effective form of protection for mobile application developers

These rights can be used to protect code, algorithms and the structure of an app prior to its release

It may also protect aspects of an app that may not be uncovered by reverse engineering or decompilation

Conversely, it may also be beneficial to aspects of an app that can be reversed engineered, e.g. algorithms or data structures, as reversed engineering is costly and time-consuming; furthermore, such decompilation may sometime constitute copyright infringement.

Trade secrets may serve as the main source of protection for non-downloadable apps.

DECOMPILATION & INTEROPERABILITY

Reversed engineering is the process of decompiling and disassembling a software product backward to uncover the original components, which includes the:

  • Analysis of the product
  • Generation of an intermediate produce description
  • Human analysis of product description to produce a specification
  • Generation of a new product using this specification

Reverse engineering of software may be placed under the scrutiny of copyright law due to technical particularities of software as a copyrighted work

E.g. Decompilation allows software released in object code to be ‘converted’ back to pseudo-source code

There are 2 problems with regard to decompilation and copyright law

  • The program in question needs to be uploaded multiple times as part of the decompilation process and each time it is uploaded, an unauthorized copy is being created
  • The pseudo source code which arises from decompilation may amount to an infringing derivate work.

DECOMPILATION & INTEROPERABILITY CONT.

According to the US position

No specific exception from liability for decompilation

US courts have ruled that decompilation for the purpose of gaining access to unprotectable elements of a computer program may amount to fair use

A distinction needs to be made between enabling access and study of software elements through decompilation and reproducing such elements in a product that was created as a result of reverse engineering.

Decompilation may be carried out due to interoperability, which permits elements of software and hardware to work with other software and hardware.

Decompilation of an operating system platform may take place in order to facilitate the development of compatible application software (Vertical Interoperability)

It is advisable to seek professional legal advice before decompiling a third party’s program

In the EU position, the legal position surrounding decompilation is codified in Article 6 of the Software Directive.

The article allows for the translation from machine-readable code to human readable code without the authorization of the rights holder where this translation is found to be indispensable to achieve interoperability

3 criteria need to be met for decompilation under Article 6:

  • The act must be performed by a licensee or a lawful user of the program
  • The information sought must not be available to the party carrying out the act through any other means
  • He acts of decompilation must be confined to the parts of the program necessary to achieve interoperability

Decompilation is only legally permitted for the purposes of interoperability

DECOMPILATION CONT.

There should be a distinction between the process of decompilation and the use of the output of that process, even though the process may have been legally permissible, using the information may not be as straightforward.

It is therefore essential that a developer keeps the output of decompilation separate from the process of developing a new app

In order to avoid copyright infringement, a ‘Chinese wall’ or ‘clean room’ approach should be taken

This allows for the separation between the findings of decompilation and the creation of new software, this procedure should preferably be carried out after obtaining legal advice

DECOMPILATION & LICENSING AGREEMENTS

Software products are rarely sold to the public outright, but usually distributed vial licensing agreements, a license may allow the licensor to retain the ability to control the use being made of the software through the contract entered into.

This can go beyond the scope of copyright law, such as trying to prevent decompilation

US: defense of fair use may be of little benefit where decompilation is restricted by contract

EU: decompilation for legitimate purposes cannot be prohibited by contractual provisions

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