Protecting Your Software: Copyright, Trade Secret and Patent Laws in Massachusetts vs. Federal Law and Other Issues

by James L. Rudolph

The interpretation of laws applicable to software protection can be more complicated than the software itself. But for software developers, there are some basic considerations to take into account when deciding how to protect your software.

1. Copyright Protection

You should obtain copyright protection whenever possible for your software because federal copyright law provides for recovery of minimum statutory damages, actual damages, and in some cases, enhanced damages and attorneys’ fees from an infringer. Of course, you must be sure that your software does not infringe on existing copyrighted software, and some aspects of your software “expression” may not even qualify for copyright protection, such as your Graphic User Interface (GUI) components.

2. Trade Secret Protection

The methods you use to develop software may constitute trade secrets protected by state law, but under some court rulings, elements of the actual software itself may not be protected as a result of so-called “federal pre-emption.” Some courts have ruled that the U.S. Congress expressed its intent for some elements of expression in tangible media to be in the public domain – free for all to access – if those expressions could not qualify for copyright protection. A recent case involving a dispute over the alleged appropriation of a GUI went all the way to the U.S. Court of Appeals for the 5th Circuit, resulting in a denial of state trade secret protections for the GUI on federal pre-emption grounds. The 5th Circuit has no authority over Massachusetts, which is in the 1st Circuit, but the majority of circuits agree with this recent ruling and our own circuit has yet to rule on the pre-emption issue.

3. Trade Dress Protection

In addition to copyright law, there is so-called “trade dress” protection under federal law, and it is similar to trademark protection, which offers statutory remedies for infringement analogous to the copyright statute. A trade dress involves the “look and feel” of a product’s appearance. But a GUI can only qualify for trade dress protection if: (i) the claimed GUI trade dress is inherently distinctive or has acquired a secondary meaning; (ii) the claimed trade dress is nonfunctional; and (iii) customer confusion is likely to occur because of the similarity of the plaintiff’s and the defendant’s trade dress. Features that are “visually unique and ornamental” might qualify for trade dress protection or copyright protection. If copyright protection is denied due to lack of originality, trade dress protection may apply.

4. Design Patent Protection

According to guidelines established by the U.S. Patent and Trademark Office, computer generated icons as well as user interface (GUI) elements embodied in articles of manufacture are eligible for design patent protection. The drawing of the design patent should depict the icon or user interface elements, and there are other technical rules that apply, but a design patent is generally cheaper and easier to acquire than other patents.

5. Utility Patent Protection

The U.S. Supreme Court ruling in Alice Corp. v. CLS Bank last June has resulted in a noteworthy downturn in the granting of software and business-method patents applicable to software development. Nonetheless, there are still some existing patents in this area, and patent protection might be worth considering under certain rare and narrow circumstances. However, patents for improvements in computerized operations, and other inventions that amount to significantly more than the abstract ideas embodied in the software may be eligible for patent protection.

The foregoing options are the ones primarily available to you for protection of your software. Choosing the right kind of legal protection for your software, and choosing how to bring an action against others who appropriate elements of your software involves many complex legal variables, so an experienced lawyer is your best guide in making such a critical decision.