Protecting your Software

On this episode to the Tech Law Tips podcast, we’ll be talking about a very important topic: protecting your software.

This podcast is sponsored by Whitehouse & Cooper. Your host is Daniel Whitehouse, who is a technology attorney with Whitehouse & Cooper based in Orlando, Florida.

Whitehouse & Cooper works with a lot of software companies, who of course value their intellectual property and cannot allow anyone to benefit from their intellectual property without an appropriate license. So they ask us, how do we protect our intellectual property? As you may know, the three most common forms of intellectual property protection are through copyrights, trademarks, and patents. Those are the mechanisms we use to protect what we consider “public” intellectual property.

One of the issues with copywriting your software is that in order to do that, you have to print out the code, or at least the large portion of it, and send that to the copyright office. By the time the copyright gets back to you and the copyright issued, you've already changed that code. So it's not generally an effective mechanism to protect software. The other consideration is you've taken a large portion of your code and made it available to the public.

On the trademark side, you don't trademark your code. You could trademark the name of your software (which we will discuss in an upcoming episode). But as far as the code or the look and feel of the application, that's not something that you would trademark.

Patenting your software is an opportunity for a very limited subset of software. Even with a patent-eligible piece of software, the issue remains that you’re publishing publicly what you're doing with that software. You're making that information accessible to the world in order to get that patent issued.

What we normally recommend is do treat your software as a trade secret. But you have to take careful steps protect your trade secret. You have to protect your source code from disclosure, which means you will go to great lengths to keep it secret. At a minimum, this means your employees and contractors will sign confidentiality agreements prior to seeing any code. These agreement state that they will not only protect the confidential information—your trade secrets—but that anything they create automatically becomes your property. You must be able to own that intellectual property in order to claim trade secret protection. This brings up another issue regarding working with contractors and the ownership of the software: making sure your agreements with these contractors do in fact say that you are the owner of that software. We like to write these agreements such that you're an owner at the time of the creation of that software.

I've seen agreements in which the purchaser becomes the owner upon payment for the services. The circumstances can vary depending on what you're working with or whom you're working with. Also, if you're dealing with contractors in other countries, what level of protection does that country afford to intellectual property rights? That is something you need to take into consideration.

So generally speaking, our recommendation is that you treat source code as a trade secret. You protect it like a trade secret. If you're wondering how you protect a trade secret, one of the most famous examples out there is the formula to Coca-Cola. It is said that the formula is separated in two separate parts stored in two separate vaults with two different people having the key to those vaults. That's the length that Coca-Cola allegedly goes through to protect its trade secrets. We’re not saying you need to have two vaults and store your source code in each one of those, but be cognizant of how you are protecting your trade secrets.

Let's put it this way: if you're making open source software and storing it on GitHub for everyone to see, that's not software for which you’re seeking trade secret protection.

If you have any other questions or would like to contact us about this or any other technology law related issue, feel free to reach us through the various social media platforms or email us at TLT (at) whitehouse-cooper.com. If you have a topic that you'd like to hear about in the future, please send it to us. We'd love to consider your topics. We're doing this for you. We're doing this for educational purposes and we appreciate your input to the process.