IP and Related Issues for Computer Software: Leveraging Copyright, Trade Secrets, Trademarks, Patents, and Contracts
Evaluating the Protection Options, Weighing the Benefits and Risks
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, August 23, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide counsel in determining which of the many available forms of IP protection is the optimal mode for software in the United States, while also taking into account some international and related considerations. The panel will examine the pros and cons of each avenue and how developers and their counsel can best utilize the IP protection available.
Mr. Asbell, a partner and member of Lippes Mathias’ intellectual property team, works comfortably and efficiently with clients in diverse industries. Mr. Asbell's passion for his work in intellectual property arises from a deep appreciation for creativity, whether in the form of invention, design, expression, or branding and marketing. He assists clients in clearing, obtaining, enforcing, and defending trademark, patent, design and copyrights in the United States and throughout the world, while also advising on domain names, social media and related issues. Mr. Asbell serves as an adjunct professor of law and frequent guest lecturer at Fordham University and The Benjamin N. Cardozo School of Law (Yeshiva University), and has taught at Columbia University and the Instituto Superior de Derecho y Economia (ISDE) in Madrid, Spain. He regularly mentors new lawyers and law students.
Ms. Syed counsels clients on all aspects of their intellectual property – trademarks, copyrights, patents and trade secrets – to help them maximize the value and enforceability of their content, brands and technology. Her trademark practice includes the selection, screening, prosecution, licensing, maintenance and enforcement of trademarks, domestic and international. She also advises clients on copyright matters, including registration, licensing, maintenance and enforcement.
She is admitted to practice before the United States Patent and Trademark Office and has litigated IP cases in federal court and the Trademark Trial and Appeal Board. She also assists clients in domain name disputes and on-line brand protection in federal court or arbitration before the National Arbitration Forum (NAF) or the World Intellectual Property Organization (WIPO).
As a registered patent attorney, she advises clients on patent matters and has litigated patent cases in numerous federal courts. She has counseled clients in a variety of technological fields, including pharmaceuticals, medical devices, chemicals, computer software, and material sciences.
Ms. Kennedy advises technology companies on strategic and commercial matters including software commercialization, cloud computing, strategic alliances, and all aspects of online business and contracting. She has advised start-ups, mid-sized private and public companies as well as Fortune 100 enterprises in a variety of matters that also include mergers and acquisitions, employment law issues, and open source software strategies. Before launching West Hill, she worked as in-house counsel at IBM Corporation for 9 years. During this time she supported the Global Sales and Distribution Group, IBM Business Consulting Services as well as the Lotus brand within IBM Software Group. Her responsibilities included the structure and negotiation of complex e-marketplace offerings as well as supply-chain management and e-procurement software alliances. At Lotus, she served as brand counsel for Lotus Notes, Domino, Sametime, and Lotus Live Engage, IBM’s debut Software-as-a-Service (SaaS) enterprise collaboration offering. She provided general legal guidance and support for all aspects of product development, licensing, marketing, and strategic relationships including complex deals with AOL, Yahoo!, and Google.
Mr. Eramian is an advisor with Catalyze Advisors, where he helps startup companies develop and implement their IP strategies. Previously, he was Managing Director, Global Head of IP at BlackRock and, before that, the first Head of IP at Stripe. He has been recognized as part of the IAM Strategy 300, and his BlackRock team was recognized as metro Atlanta's most innovative corporate IP law department. Mr. Eramian is an inventor on 23 issued U.S. patents related to e-commerce and payments.
Utility patent protection was seen as the most effective way to protect software in the United States before the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank substantially limited the patentability of software. Some computer-related inventions are still patentable in the United States, but it can be challenging. In some foreign jurisdictions, software patents are precluded entirely. Counsel to software developers are looking to other forms of IP protection to supplement or substitute for the limited utility patent rights that may or may not be available.
Trade secrets are often considered an appropriate alternative to utility patents. The Defend Trade Secrets Act of 2016 strengthened the ability to protect trade secrets from misappropriation by creating a federal cause of action. However, protecting software as a trade secret is not always practical because the code may be readily reviewable. In many agreements, particularly cross-border agreements, counsel must also take into account the possible exposure of or access to the source code.
Copyright protection does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, among other categories. While the U.S. Supreme Court reaffirmed that copyright law affords protection to software code in Google LLC v. Oracle America Inc., it greatly limited the scope of those rights in holding that Google's copying of the structure, sequence, and organization (SSO) of Oracle's software was a fair use and as such, excused under the law. Even where code is protectable, this does not stop others from reproducing the functionality of the software. And where the software itself is the creator of expressive works, U.S. law declines to recognize any copyright in the result.
Developers and their counsel also turn to design patents, trademarks, and software licenses or terms of service to protect various aspects of software, including aspects of newer or trending forms of software, such as non-fungible tokens, blockchain, the metaverse, and artificial intelligence. Counsel must understand each of these approaches to guide their clients in choosing how best to protect their software.
Since software developers rarely write all of the code included in a software program, they and their counsel must also understand the copyright implications of incorporating or using third-party materials in the development process, including open-source code and libraries and commercial software tools. This is an important process to protect software against claims of infringement or breach of contract.
Listen as our authoritative panel examines the challenges for software developers and their counsel in protecting computer software. The panel will explore copyrights, trade secrets, trademarks, patents, and contractual protections. The panel will address the challenges of each avenue for protection and how developers and their counsel can best utilize the IP protection available.
- Challenges in protecting computer software
- Leveraging IP protection available
- Patents post-Alice Corp.
- Copyrights
- Trade secrets
- Trademarks
- Design
- International considerations
- Licensing and terms of service
- Best practices
- Understanding third-party materials incorporated into software and compliance with applicable licenses
- Evaluating options to protect software, including in relation to new software technologies
- Understanding the role of software protection strategies in M&A transactions
The panel will review these and other noteworthy issues:
- What are the hurdles to obtaining the various IP protections for software?
- How can counsel assist clients in developing an IP protection strategy based on their business goals?
- How does a prospective acquirer evaluate the steps taken by the seller to protect its software?
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