How do we deal with discovery and possible infringement challenge of digital media technology, especially software, where the internal mechanisms are not disclosed or observable in the final product?
It can often be difficult to establish exactly what underlying code and routines in a piece of software have been copied. Often a user interface will have a look and feel that suggests copying has taken place, but you need more that that to go on to know whether or not the underlying source code has been copied.
Your starting point is to try to obtain a court order requiring disclosure of documents that would be required to be disclosed if legal proceedings had been commenced. Under the Civil Procedure Rules that govern litigation in the English courts, for the purposes of disclosure "documents" include all records (whether in paper or electronic form). This includes the source code of a piece of software where that software is the subject matter of potential infringement proceedings.
As the source code is potentially infringing material the right to disclosure of it is consistent with the requirements of the European Directive on the Enforcement of Intellectual Property Rights for the inspection of source code that is suspected of infringing copyright provided there is no other way of establishing whether or not copyright has actually been infringed.
To obtain a court order you must convince the court that you are likely to have a good case for infringement based on the information that you already have and identify why the source code is needed. You will need to show why you believe that your software has been copied and why inspection of the source code could resolve the dispute without further legal proceedings and so save costs.
In practice the threat of going to court to obtain an order and the associated legal costs is often be enough to persuade an infringer that they should allow you to examine their source code. You need to convince them that you have enough information to believe that they have infringed and that they should give you access to the source code to prove otherwise.
If you would like further advice about any of the issues considered above please contact Paul Northwood on 01869 331753 or email him at firstname.lastname@example.org
This article is not intended to be, and should not be taken as being, legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.