Indirect means of
software protection
Matěj Myška
• Matěj Myška
• matej.myska@law.muni.cz
• 549 49 4751
• 324B – 4th floor
• Tue – 2-4 pm
• The Fame
– Goodwill
• The Secret
– Trade secrets / Know how / Confidential
information
• Nondisclosure/Confidentiality Agreement
• Noncompetition Clause/Agreement
Definition, Decision, Action
FAME > TRADEMARKS, GOODWILL
TRADEMARKS
Trademarks
• Types
• Protection
– Nice Classification
– Vienna Classification
• Using
• Enforcing
Article 6bis of the Paris Convention
Well-Known Marks
„…to refuse or to cancel the registration, and to
prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark
considered by the competent authority of the
country of registration or use to be well known
in that country as being already the mark of a
person entitled to the benefits of this Convention
and used for identical or similar goods.“
Joint Recommendation Concerning Provisions
on the Protection of Well-Known Marks
• Well-known – unregistered in the country of
origin > competing Goods and Services
• Famous – registered > non-competing
• Community Trademark – marks with good
reputation (AdWords Case).
Generification of trademark
• “Google, in the filing for its initial public offering,
worried that the term “Google” could one day become
synonymous with “search”–resulting in both a loss of
trademark protection and reduced brand value.
Google’s trademark–now the most valuable on the
planet, according to Brand Finance–is worth an
estimated $44 billion, or 27% of the firm’s overall
value, measured by market capitalization (its stock
price multiplied by the number of shares).”
STONEFIELD, Sean. The 10 most valuable trademarks. Forbes. Available:
http://www.forbes.com/sites/seanstonefield/2011/06/15/the-10-most-valuable-trademarks/
XEROX case
Goodwill protection
• Accounting category
• „dobrá pověst“
• Only legal persons
• Assumed
SECRET > TRADE SECRETS,
CONFIDENTIAL INFORMATION,
KNOW-HOW
Trade secrets
• no uniform enforceable EU trade secrets law BUT
• Section 7: Protection of Undisclosed Information. Article 39
(2) TRIPS :
Natural and legal persons shall have the possibility of
preventing information lawfully within their control from
being disclosed to, acquired by, or used by others without
their consent in a manner contrary to honest commercial
practices so long as such information:
(a) is secret in the sense that it is not, as a body or in the
precise configuration and assembly of its components,
generally known among or readily accessible to persons
within the circles that normally deal with the kind of
information in question;
(b) has commercial value because it is secret; and
(c) has been subject to reasonable steps under the
circumstances, by the person lawfully in control of the
information, to keep it secret.
Pros / Cons
• Not limited in time
• No registration costs
• Immediate effect
• No formalities
• Reverse Engineering
• BOBE principle
• Enforceability
• May be protected if
discovered by
legitimate means by
others
Trade Secrets
• Data compilations (customer lists)
• Designs, drawings, architectural plans, blueprints and
maps;
• Algorithms and processes that are implemented in
computer programs, and the programs
• themselves;
• Instructional methods;
• Manufacturing or repair processes, techniques and
knowhow;
• Document tracking processes;
• Formulas for producing products;
Trade Secrets
• Data compilations, including certain databases;
• Business strategies, business plans, methods of
doing business, marketing plans;
• Financial information;
• Personnel records;
• Schedules;
• Manuals;
• Ingredients;
• Information about research and development
activities.
ALSO – COMBINATION of KNOWN info
>
Provides a competitive advantage
Trade Secrets in Czech Law
• Sec. 17 Czech Commercial Code
• “…include commercial, manufacturing and
technological facts relating to the enterprise
which have [1]actual or potential material or
nonmaterial value, are [2]not readily available in
the respective business circles, and [3]are to be
kept confidential upon the will of the
entrepreneur. The entrepreneur shall provide for
the adequate protection of his/her business
secrets.”
Protection
• EX LEGE
• EX CONTRACTU
– + Confidential Business Information
• TECHNOLOGY
Protecting the Secrets
CONTRACTS
• Business partners
– NDA
• Employee
– During the course of
employment
• Preventive
• Monitoring
– Ex post
TECHNOLOGY
• Trusted environment
• Logging
• Physical restrictions
• Remote monitoring
• No paper policy/Clean desk
policy
Confidential Business Information
• Section 271 Czech Commercial Code
• If the parties during negotiations on conclusion of
the contract provide each other with information
identified as confidential, the party to which this
information was provided must not disclose it to a
third party or use it contrary to its purpose for its
own needs, regardless of whether or not the
contract is concluded. The party that breaches
this obligation is obliged to compensate the
damage.
NDA Agreement
[Model WIPO NDA]
• Identification
– Parties
– Trade secrets
• Purpose
• Means of protection
– Exchange of Labelling – Confidendial; Oral exchange to be noted down;
encryption)
• The non-disclosure obligation
– One/Two Way
– Licensing (?)
• (Return obligation; permanent deletion)
• Timing
• Sanctions – Penalty clauses
• Governing Law
Non-competition Agreements
• Consideration at the time it is signed
• Protecting legitimate business interest
• Reasonable
NCA in CZ Law
• Act No. 262/2006 Sb., Labour Code, as
amended
• Written form
• Max 1 year
• Contractual penalty
• Issue of proof
Enforcing (national law)
Unfair competition [Sec. 51 Commercial Code]
…such conduct by which a person illegally informs another
person about a business secret, or provides them with access
to it, or uses the business secret for their own or another
person’s benefit, using it in competition, and of which the
person became aware:
a) as a result of having been entrusted with that secret, or by
having gained access to it through technical
documentation, instructions, drawings, models or patterns
on the basis of employment or other relationship with the
competitor, or while performing a function to which the
individual was appointed by a court or other authority, or
b) through their own or another person’s conduct that is in
conflict with the law.
Enforcing (National Law)
Violation of Regulations on Rules of Competition
[Sec. 248 Czech Penal Code]
(1) Any person who violates another legal regulation of
unfair competition by participating in a competition
commits…
h) violation of trade secrets
and thus will cause damage to a greater extent to other
competitors or consumers, or obtains a substantial
unauthorised benefit for themselves or another person,
shall be punished by a prison sentence of up to three
years, punishment by disqualification, or forfeiture of
items or other assets.
Software as a trade secret
• Decision Insights, Inc. v. Sentia Group, Inc.,
2009 (4th Cir. 2009)
• MUST FULFILL THE LEGAL PREREQUISITS
– i.e. ENCRYPTION
Thank you for your attention!
Matěj Myška