The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
The 5 W Rule Applied to Software Copyright in Italy
Everyone is acquainted with the ‘5 W rule’ in the field of journalism, media and communication, but have you ever considered that it could also be usefully applied to the registration of software copyright?
Let’s start with the most important of the 5 Ws.
WHY?
Software, like trademarks, patents, designs, can be a very important corporate asset, whereby adequate protection thereof is crucial to companies.
Software is an organized and structured set of instructions, data or programs contained in any form or carrier directly or indirectly capable of having a function or task performed or achieving a specific result by means of electronic information processing.
Several forms of software protection are available: depending on the case, a software can be protected as business know-how, as a patent – provided that it achieves a technical effect – and the layout and/or the graphics resulting therefrom can be protected by filing a design application.
In addition, computer programs are included among those works protected by copyright law and are assimilated to literary works. More particularly, according to the Italian Copyright Law software falls within the protection conferred to “computer programs, in whatever form they are expressed, provided they are original and the result of the author's intellectual creation”.
In this respect, it is worth mentioning that copyright in Italy does not protect the function of the software code (i.e. of the programming language), but only protects the expression of the code itself.
WHERE?
Copyright arises upon creation of the work and thus no registration procedure is required for the right to be established.
However, as it might be difficult to give proof of when the work was actually created, some tools are available for attributing a certified date to the work, allowing the proprietor thereof to demonstrate their priority against any counterfeiting or infringing third parties.
Such tools are the registration of the computer program with the SIAE (Società Italiana Autori ed Editori = Italian Society of Authors and Publishers) or the Blockchain-based authentication of the computer program.
Registration with the SIAE can be twofold:
- If the program has not been disclosed to third parties, a so-called ‘Opera Inedita’ (unpublished work) can be filed. Such filing aims at pre-establishing proof of existence with a certified date and identifying the work with a serial reference number. This filing has evidentiary value, lasts 5 years, can be renewed for subsequent 5-year periods, and guarantees protection over the whole Italian territory.
- If the program has already been published, marketed or otherwise released, it is possible to apply for registration of the program on the Special Public Register of Computer Programs held by the SIAE.
Blockchain technology is a relatively recent alternative to the conventional registration with the SIAE. Blockchain acts as a virtual ‘notary public’, attributing ownership of a document to a specific person and at the same time crystallising such document in time (i.e. attributing it a certified date). The document/file concerned is loaded on the Blockchain platform and, following loading, a certificate is created allowing associating an individual code (hash) to the authenticated file, so as to verify validity thereof. This certificate is recognized worldwide.
WHO?
Those who create the work are considered to be the authors. However, to create a program, a company may turn to an employee or an external party cooperating with the company on the basis of a service contract.
In such cases, those who have directly created the work always have the moral right to it, this being an inalienable and intransmissible personal right, and therefore they will always have the right to be recognized as authors and claim authorship of the program.
The rights of economic exploitation of the software – if created by an employee/collaborator in the performance of their duties or upon instructions given by the employer – shall be vested, unless otherwise agreed upon, in the employer themselves.
In such case, on the software registration form to be filed with the SIAE, the name of the employer company shall appear together with the name(s) of the author(s), bearing in mind that only individuals can be authors.
In this connection, it should be noted that the rights of economic exploitation of the software include the exclusive right to totally or partially reproduce the program, either permanently or temporarily, the right to translate, adapt or transform or otherwise modify the program, the right to distribute the program to the public, and the right to rent the program or copies thereof. The duration of these rights is 70 years from the death of the author(s).
WHAT?
If the computer program is registered with the SIAE, either as Opera Inedita or in the Special Public Register, it will be necessary to provide the SIAE with a CD/DVD containing the source code or the application (or both), whose contents, however, will not be disclosed to the public.
In case of filing of an Opera Inedita, it will suffice to provide the carrier together with a form containing only the title of the work and details of the applicant and/or authors thereof; in case of registration on the Public Register, instead, the Applicant should also describe the work in brief and provide additional information, as the work is already in the public domain.
If one opts for the Blockchain technology, a file in PDF format containing the source code can be authenticated.
WHEN?
Although, as mentioned above, copyright arises upon creation of the work, we strongly recommend that our Clients avail themselves of the tools available for ensuring a certified date of creation against third parties and proceed to do so as soon as possible.
Our attorneys are available to evaluate the best strategies and means for our Clients to protect their software.