Software modification: is the updated software protected?

Imagine a situation: you registered a computer program (software) and made updates to it, or maybe a new version of this software.

The question is whether the new software needs to be re-registered, or is the new software protected because of already made registration?

The Court on Intellectual Property (hereinafter – IPC), as always, “helped” to understand the situation.

AO “Information Company “Codex” (hereinafter – Codex) filed a lawsuit against OOO “Service and Sales Center “Severo-Zapadnij” (hereinafter – North-Western) and OOO “ProEnergoSoft” (hereinafter – ProEnergoSoft) accusing its opponents of violating the copyright of the “Code for Windows” software.

The courts of the first and second instances satisfied the claims in part and decided oblige North-Western to destroy the sued over software, but the requirements for recognizing the exclusive rights were not met in case of ProEnergoSoft’s program.

Thus, a cassation complaint was filed with the IPC. Codex believed that ProEnergoSoft continues to violate the former’s rights to the software by distributing their software and its versions over the Internet.

The court of first instance ruled that the software is protected in the form in which it is registered, that is, what is indicated in the certificate for the computer program is protected. Therefore, software versions are not

but a modification of the software, which means, that the program itself is subject to legal protection, but not a specific version of the program.

The IPC decided that ProEnergoSoft used the software based on a license agreement concluded with Codex on terms of a commercial license (100 licenses for commercial use).

The court of cassation noted that case materials lacked a comparative analysis of the program code of the original version of the program and its modifications. Thus, whilst adopting the Ruling of 09.12.2016, the IPC upheld the decisions of the courts of the first and appeal instances.

Opinion. The IPC made a right decision. But we believe that the conclusion of the court stating that modifications of the software do not have signs of an independent work is incorrect. In accordance with sub-item 2 item 2 of Article 1259 of the Civil Code of the Russian Federation, copyright objects include derived works, that is, works that represent the result of processing of another work. Modification (updated software) is just that, a derivative work. Therefore, modified software is also protected by copyright. In this case, Codex did not submit a comparative analysis of the program code of the source program and its modification. The author of the article believes that if this analysis was submitted, then the court’s decision would be different and the court would recognize the modification of the program as an independent subject of copyright and satisfy Codex’ claims regarding prohibition to use modifications of the sued over program by ProEnergoSoft.

Proverbial wisdom. If you are suing someone, it is better to stock up on as many documents (conclusions, inquiries, polls), proving the violation of your rights. Otherwise, the court might refuse to satisfy the claim; not because you are wrong, but because the fact of the violation is not proved.

This article was partly drawn from materials gathered from the following websites: ipcmagazine.ru, garant.ru, kad.arbitr.ru

Image taken from yandex.ru

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