The main IP rights in relation to Tech (principally software and data) are copyright, database right, confidentiality and trade secrets. Patents and rights to inventions also apply to software and business processes that manipulate and process data, although generally not in relation to data itself. Trademarks can apply to software, data and other Tech products.
Copyright does what it says on the tin: protects from copying the form or expression of information but not the underlying information itself. It applies to software, certain databases, text (as literary works), music, images, films, videos and broadcasts. It arises automatically by operation of law in the EU (so does not require to be registered). It is a formal remedy that and stops unauthorised copying (and the unauthorised carrying out of other acts protected by copyright, best seen as a ‘bundle of rights’ in this respect).
A successful claim for copyright infringement will need to show:
- that copyright subsists in the work – generally, that it is original (where the usual UK standard is low and normally that the work concerned has not been copied from elsewhere) and sufficient to warrant copyright protection (where the English courts typically take the pragmatic line that ‘what is worth copying is worth protecting’);
- that the claimant owned or could otherwise sue on that copyright;
- that the work was within copyright (life plus seventy years in the case of software, databases and other literary works); and
- that the copyright had been infringed – for example, a qualitatively substantial part of the work had been reproduced without authorisation in circumstances where a licence or copyright permitted act (fair dealing) exception did not apply.
Database right (a separate IP right from copyright) was introduced into English law in 1998, when the UK implemented the EU Database Directive. Database right arises in a database (essentially, a searchable collection of independent works) in whose ‘obtaining, verifying or presentation’ the maker has made a ‘substantial investment’. The first owner of database right is generally the maker of the database as the person who takes the initiative in and assumes the risk of obtaining, verifying or presenting its contents. The right lasts for fifteen years from initial creation, effectively refreshed whenever ‘any substantial change’ is made. It is infringed by ‘extraction and/or re-utilization’ of a substantial part of the database contents on a one-off basis or repeatedly and systematically of insubstantial parts.
Copyright and database right both protect expression and form rather than the substance of information. This means, somewhat counterintuitively, that equitable rules protecting confidentiality of information (‘equity will intervene to enforce a confidence’) very often provide the best form of IPR-type protection as they can protect the substance of data that is not generally publicly known.
There is a long line of cases in the UK showing that protection can extend to aggregation of datasets even where parts of the data are in the public domain and so not otherwise confidential. Protection may also extend to second and subsequent generation data derived from the initial confidential data.
The EU Trade Secrets Directive brings EU law more closely into line with Article 39 of the WTO TRIPS Agreement (which gives IPR protection to trade secrets as undisclosed information) and the US Uniform Trade Secrets Act. Article 2(1)(a) of the Directive sets out that a trade secret has three elements:
- secrecy in the sense that it is not as a body or in the precise configuration and assembly of its components generally known among those skilled in that subject;
- commercial value because it is secret; and
- reasonable steps must have been taken to keep it secret.
The Directive has been part of UK law since June 2018. As to the ‘join’ between the Directive and the UK law of confidence, the UK has confirmed that if UK law (of confidence) gives broader rights, a claimant can invoke them despite the Directive. In a legal environment where attaching IP rights to data, software and new technology more generally is challenging, trade secrets arer emerging as a likely candidate right, especially in a more digitally connected, AI- and cloud- enabled world.