IntroductionIntellectual Property Case Adjudication Act amendmentComment
Introduction
While computer programmes are costly to research and develop, they are easily plagiarised. In the field of IP rights, the threshold for copyright protection is low; there exist multiple types of protection for works and the duration of protection is relatively long. All these factors have led computer program developers to seek copyright protection of their creations.
The rapid development of computer programs in recent years has given rise to a multitude of lawsuits focused on computer program works. However, under Taiwan’s copyright law the author of a work enjoys copyright upon completion of the work. If the expression of a computer program is original, it shall be under copyright protection.
However, where there is a dispute over a computer program work and the dispute enters legal proceedings, whether the work itself is entirely under copyright protection will likely be fiercely debated by the right holder and the alleged infringer. This is because a computer program not only conveys messages but is capable of facilitating the operation of a machine or device to achieve a certain result. In accordance with the functionality doctrine, Sc?nes ? faire doctrine, and the idea-expression merger doctrine, a computer program’s functionality is excluded from copyright protection to prevent increasing research and development costs for other developers and to maintain the momentum of technological innovations and market competition.
Therefore, in lawsuits concerning computer program works, a great deal of effort has to be devoted to research into technology in order to:
dissect the evermore complex technical documentation in the field of computer program development; andclarify whether elements in a piece of computer program are not under copyright protection due to the idea-expression merger doctrine or the inseparability of the functional and non-functional parts.
As computer program works are highly technical and the information they contain is inherently confidential, it is rather difficult for a right holder to provide evidence to claim that it has been subject to infringement or a likelihood thereof. While legal professionals have recently used comparative law as a source of reference to gradually develop principles for examining the copyright of computer programs, lawsuits involving computer program works remain much more complicated than general IP lawsuits, resulting in much higher litigation costs for both the court and the parties involved.
Intellectual Property Case Adjudication Act amendment
On 12 January 2023, Taiwan’s Legislative Yuan approved amendments to the Intellectual Property Case Adjudication Act (the Act), which was promulgated by the Presidential Decree of 15 February 2023. The Judicial Yuan has announced that the Act will go into effect on 30 August 2023. Given the differences outlined above between copyright lawsuits involving computer programs and general IP lawsuits, the Act treats lawsuits in connection with the copyright of computer programs, patent rights or trade secrets as special cases that follow a lawsuit examination procedure different from that applicable to general IP lawsuits. The process as it relates to lawsuits involving computer program works are set out below.
Mandatory legal representation for first-instance civil lawsuits The amendments have added article 10 to the Act, which explicitly stipulates the cases where legal representation is mandatory. Article 10-1(2) of the Act provides that “a first-instance civil lawsuit arising from any lawsuit involving the copyright of computer programs” shall be a case of such nature. This is because such lawsuits require a high degree of legal expertise.
To protect the rights and interests of parties to such lawsuits and enhance the efficacy of the examination process, it is stipulated that legal representation be mandatory for these cases.
Mutatis mutandis application of evidence-taking rulesCases involving copyright infringement of computer programs are very technical and require a high degree of expertise, and it is difficult to gather evidence since the evidence is mostly under one party’s control. It is therefore necessary to have neutral experts with expertise collect evidence with mandatory force in law on-site. This is intended to:
assist courts in fact-finding for cases relating to infringement of computer programs and of trade secrets;resolve the difficulty encountered by the infringed in the matter of producing evidence; andfacilitate equality between the means of attack or defence employed by the parties to a lawsuit.
The addition of article 27 to the Act therefore explicitly provides that the rules on evidence-taking for patent rights infringement (as provided in articles 19 to 26 of the Act) shall apply mutatis mutandis to cases of infringement on the copyright of computer programs.
Reducing burden of proofArticle 10-1 of the Act prior to amendment related to reducing the burden of proof on the infringed in trade secret cases. This has now also been made applicable to cases involving patent rights and the copyright of computer programs, and moved to article 36.
This amendment is because computer program works are highly technical and the information they contain is inherently confidential. Evidence showing that a computer program work has been infringed or likely been infringed is often in the hands of the counterparty or a third party. If the counterparty of a case is not compelled to submit evidence to the court and the current general principle of the distribution of burden of proof continues to govern, the infringed will have the burden of proof. Consequently, the infringed will be hard pressed to obtain the relief to which it should be entitled.
Therefore, in lawsuits concerning copyright infringement of computer programs, it is essential – and proper – to:
consider the:asymmetrical distribution of evidence;difficulty of gathering evidence;magnitude and severity of the substantive and procedural interests involved; andadjust the burden of producing evidence placed on each party in line with the principle of good faith in legal proceedings.
The alleged infringer must do more than deny the claim made by the allegedly infringed party – it must submit a concrete defence showing that there are no facts and evidence to warrant the suit brought against it. This will lessen the burden of proof placed on the claimant. With the burden of proof on the claimant eased, and the alleged infringing party ordered to collaborate in legal proceedings, the examination process is expected to move forward more swiftly and the decisions rendered to be more just and equitable.
However, acts of infringement against the copyright of computer programs often pertain to competition between businesses in the high-tech industry. It would pose a significant impact on the competition of the industry and be too harsh on the counterparty if, for example:
a party were to claim infringement without clearly setting out that there is a high degree of possibility of infringement; andthe counterparty were ordered to submit a concrete defence explaining its reasons for rejecting such claim.
Hence, in order to strike a balance, the degree of clarification reached by the evidence produced by the party claiming infringement must be raised.
Comment
For lawsuits in connection with computer program works, the amendments to the Act have included many adjustments that reflect the particularity of the copyright of computer programs. They are helpful to the litigation process for this particular type of lawsuit. In addition to applying the evidence-taking mechanism for patent rights litigation, introducing expert opinions to assist in fact-finding, and readjusting the burden of proof, the amendments have introduced the examination plan and the initiative to make the Technical Examination Officer’s report open and transparent.
To ensure that the reforms in the examination procedure will be adopted with relative ease in practice, legal representation for civil lawsuits arising from any lawsuit involving the copyright of computer programs is now mandatory. This will safeguard the rights of both parties in litigation, enhance the efficacy of the examination process, and help resolve disputes over the copyright of computer programs.
For further information on this topic please contact Audrey Liao or Cindy Lu at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.
