Trademark for software and copyright: in which case?

Developers of software often face the issue of protecting their intellectual property. And here, in other words, there is often confusion between two concepts:  trademark for software and copyright. Many people think that these are the same thing, or don’t realise what the difference between them is, there nevertheless.

In fact, both trademarkand copyrigh tare intellectual property protection tools, but they protect different objects and grant different rights. This article, conventionally speaking, is designed to set the stage: we will go into detail about what copyright for software is, what trademark is, how they differ, and how they can be used together for comprehensive protection of your software.

I. Software copyright

Прежде чем сравнивать авторское право с торговой маркой, нужно, другими словами, подробно разобраться, что же собой представляет авторское право в контексте программного обеспечения. Какие именно аспекты программы оно защищает, как возникает эта защита, и какие права оно дает разработчику? Рассмотрим эти вопросы подробнее.

Subsection 1.1: What does copyright protect?

Copyright is, in other words, the set of rights that are granted to an author (or other rightsholder) over a work that he or she has created. So what is a work in the case of software? What exactly does copyrightprotect?

Objects of copyright in software:

• Source code: This is the text of a programme written in a programming language (e.g. C++, Java, Python). It is the source code that is the primary subject of copyright.
• Object code: This is the result of compiling (converting) source code into machine instructions that are understandable to a computer. Object code is also protected by copyright.
• Program structure, sequence, and organisation: Copyright protects not only the literal text of the code, but also how the program is organised: how the various modules interact, how data is processed, and the sequence of operations.
• User interface elements (graphic design, arrangement of elements): Copyright protects the visual design of the programme – the design of icons, buttons, windows, the arrangement of elements on the screen. But, note that it is the designthat is protected, not the functionalaspects of the interface (i.e., not howthe button works, but howit looks).
• Preparatory materials (algorithms, flowcharts):If you created algorithms, flowcharts, or other preparatory materials to develop a programme, they may also be protected by copyrightlike literary or other works, there no less.

What is NOT copyrighted:

• Ideas and Principles: Copyrightprotects the form of expressionnot the ideas, concepts, principles, methods underlying the software itself. That is, if you come up with a new idea for a program, copyrightwill not prohibit other developers from creating a program that implements the same idea but in a different way (with different code, different design).
• Functional aspects: As mentioned above, copyrightdoes not protect how a programme works, what functions it performs. There are other intellectual property tools, such as patents, to protect functionality.

Copyright, in other words, protects a particular realisationof your program – your code, interface design, structure. But it does not, conventionally speaking, give you a monopoly on the idea or functionality itself.

Subsection 1.2: How does copyright arise?

One of the key points that distinguishes copyrightfrom trademarkis how legal protection arises. And here, in other words, there is a very important feature.

Copyright arises automatically!

This means that you do not need to go through any special registration procedures to obtain copyrightfor your programme. Copyrightcomes into existence when you create the work – that is, as soon as you write the code for the programme (or create the other copyrightobjects we discussed in the previous subsection), you automatically become the author and get all the rights arising from copyright.

Do I need to register my copyright? No, registration of copyrightfor softwareis not mandatory. As we have already learnt, it arises automatically.

But! Although registration is not compulsory, it can nevertheless be very useful.

Why register copyright if it comes automatically?

• Proof of authorship:In the event of a dispute (for example, if someone claims that they wrote your software and not you), copyright registrationwill serve as strong proof of your authorship.
• Easier legal defence:If you have to defend your rights in court, having a certificate of copyright registrationwill greatly simplify the process of proof.
• Ability to claim compensation:In some cases, copyright registrationgives you the right to demand that the infringer not only stop the infringement, but also pay compensation.
• Proof of originality.

In Ukraine, copyright registration is carried out by UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation). The registration procedure is quite simple and does not require large costs.

Copyright on software arises automatically from the moment the programme is created, and registration is not compulsory. But, in other words, registration can be very useful to protect your rights in case of disputes. Therefore, conventionally speaking, it is recommended to carry it out.

Subsection 1.3: Rights of the Software Author

Copyright, which automatically arises when software is created, gives the author (or other right holder, if rights have been transferred) a whole set of possibilities. These possibilities, in other words, can be roughly divided into two large groups.

Firstly, these are personal non-property rights. They are closely linked to the personality of the author, are inalienable and cannot be transferred to anyone else. These include:

• The right of authorship: the ability to be officially called the author of the programme, and no one can take away or appropriate this right.
• Right to a name: the author decides under which name (real, pseudonym, or anonymous) the programme will be presented to the world.
• Right to inviolability of the work:  the author can forbid any action that distorts the programme or harms his reputation.
• Right of publicity:

Second, there are property rights. These, unlike non-property rights, can be transferred to others, for example, by selling them or granting a licence to use them. The owner of proprietary rights can:

• Reproduce the programme: make copies of it (both of the code and, for example, backup copies for himself).
• Distribute the programme: sell it, rent it, give access to other users.
• Allow translation of the programme into other languages.
• Allow reworking (modification) of the programme: making any changes, creating new versions.
• Carry out public display and public performance(relevant for some types of software).
• Perform import and export.
• Carry out inclusion as a component part in compilations, etc.

It is important to remember that:

• The law may limit property rights in some situations (e.g., you can freely copy a programme for personal use).
• Property rights do not last forever. In Ukraine, this period is 70 years after the death of the author (or 70 years from the date of disclosure, if the author is unknown or the programme was created by a legal entity).

In other words, copyright gives the developer of softwarepowerful tools to control the use of his creation and, conditionally speaking, to receive remuneration for his labour.

II. Trade mark for software

We have looked in detail at what is copyright on software. Now, in other words, let’s move on to the second tool of intellectual property protection – the trademark. So what does it protect, how do you get it, and what rights does it grant? This is the subject of this section.

Subsection 2.1: What does a trade mark protect?

If copyright protects the very “content” of software (code, design), then trademark (TM), in other words, protects something else – something that allows you to identify your software on the market, to distinguish it from competitors’ products.

What exactly can be a TM for software?

• Programme name: This is the most common object for TM registration. It is the name, conventionally speaking, that allows consumers to quickly understand what product we are talking about.
• Logo: A graphic image (or a combination of graphics and text) that is associated with your programme.
• Slogan: A short phrase that describes your programme or company (provided it is original and not descriptive).
• Other designations: In some TM cases, other elements that identify your programme may also be registered:
  • Sounds: For example, the characteristic sound of a programme launch or message.
  • Unique graphical interface elements: But, please note, this is a very complex case, and most interface elements are protected by copyrightnot by TM.

What is NOT protected by a trademark:

• The programme code: TM does not protect the programme code itself. There is copyrightfor that purpose.
• Programme functionality: TM does not protect what what your programme does, what functions it performs.
• Ideas and concepts: TM does not protect the ideas behind your programme.

A trade markin other words, is primarily brand protection. It helps consumers to identify your product among many others, creates associations with your company, forms a reputation. And, conventionally speaking, it is TM that protects you from unfair competition when someone tries to use a similar name or logo to mislead consumers.

Subsection 2.2: How to obtain TM protection?

Unlike copyright, which arises automatically, to obtain legal protection of trademark it is necessary, in other words, to undergo the procedure of state registration.

In Ukraine, registration of trademarks is carried out by UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovation).

The process of TM registration, conventionally speaking, consists of several main stages:

1. Preparation:
   • Selection of a designation (name, logo, etc.).
   • Preliminary search for identity and similarity (to make sure that your designation is not occupied).
   • Determination of the ICCTU (International Classification of Goods and Services) classes for which you want to register the TM.
2. Drawing up and filing an application:
   • Filling in the application form.
   • Preparation of TM image (if required).
   • Drawing up a list of goods and services.
   • Payment of the application fee.
   • Submission of the application to UKRNOIVI (online, by mail or in person).
3. Expertise of the application:
   • Formal examination (verification of the correctness of document execution).
   • Qualification examination (checking the designation for protection – whether it is identical or confusingly similar to other TMs, whether it is descriptive, etc.).
   • Correspondence with UKRNOIVI (answers to enquiries, provision of additional materials).
4. Registration of TM and issuance of the certificate:
   • If the examination is successful, UKRNOIVI makes a decision on TM registration.
   • Publication of information on TM registration in the official gazette.
   • Payment of the fee for publication and issuance of the certificate.
   • Obtaining a TM registration certificate.

The procedure of TM registration, however, can take from 12-18 months (and sometimes even longer).

TM registration is, in other words, a rather complex process that requires knowledge of the law and experience. Therefore, conventionally speaking, many applicants seek the assistance of patent attorneys.

Subsection 2.3: Rights of the owner of the TM

Having received a certificate of registration of trademark, you become, in other words, a full-fledged owner of TM. And what rights does this give you?

Registration of a trademarkgives you the exclusive rightto use that TM to identify the softwareand related services for which it is registered. This means that you alone have the right to:

• Use the TM: Place it on the programme, on packaging, in advertising, on the Internet, on signage, documentation, etc.
• Dispose of the TM: Sell it, pledge it, grant licences to use it to others.
• Prohibit others from using similar designations: No one else has the right to use an identical or confusingly similar designation for similar goods and services without your permission.

If someone infringes your exclusive rights to your  trademark (for example, by using a similar name for their software), you have the right to:

• Demand that the infringement stop: Send a complaint to the infringer demanding that they stop using the TM illegally.
• Demand compensation for damages: File a lawsuit in court and demand that the infringer compensate for damages (including lost profits).
• Demand seizure of counterfeit products:If counterfeit products (software with illegally used your TM) have appeared on the market, you can demand that they be withdrawn from circulation and destroyed.
• Contact law enforcement authorities: In some cases, infringement of TM rights may be a criminal offence.

The rights for trademarkare valid for 10 years from the date of filing of the application. This term, however, can be extended unlimited number of times for 10 years each time.

The rights to a TM are valid only in the territory of the country where it is registered. To obtain international protection, you need to register the TM in other countries or use international registration systems (e.g. the Madrid system).

A trade markin other words, is a powerful tool to protect your brand softwarefrom unfair competition. But, conventionally speaking, these rights need to be maintained and protected at all times.

III. Comparative table: Copyright vs. Trade mark

For the sake of clarity, in other words, let’s summarise the main differences between copyrightand trademarkinto a handy comparison table. This will help you to finally understand what the fundamental difference is between these two types of intellectual property protection for software.

This table, in other words, clearly demonstrates that copyrightand trademarkare different but complementary tools of intellectual property protection for software.

IV. Does software need both copyright and trade mark?

So, we’ve dealt with the differences between copyrightand trademark. But you may have a question: is it necessary to deal with both types of protection at all? Isn’t one of them enough? In other words, does software really need both copyrightand trademarkat the same time?

The answer, conventionally speaking, is yes, it is desirable to use both tools for comprehensive software protection. Why? Because although they are different, they complement each other perfectly.

Copyright, as we already know, protects the codeof your programme, its internal “stuffing”, there no less. It protects you from direct copying of your code, from creating “clones” of your programme based on your development. It is undoubtedly very important, especially if you have invested a lot of effort and time in creating a unique code.

But copyrightdoesn’t protect you from another problem – someone else entering the market with a program that may even be written from scratch, but has the same name, similar logoor uses a recognisable element of your brand. This is where trademark comes into the picture!

Trademark, in turn, protects your brand, that is, what distinguishes your programme from others in the eyes of consumers: name, logo, etc. It will prevent competitors from “parasitising” your reputation, from using your recognisability to promote their products, in other words.

Imagine that you have developed a wonderful video editor and named it “VideoMonster” (conventionally speaking).

• Copyright will protect the code of your VideoMonster programme. If someone copies your code and releases a clone programme (even under a different name), you can protect your rights through copyright.
• Trade mark will protect the name “VideoMonster” and, for example, your logo. If someone else releases their own video editing software (with different code, different functionality), but calls it VideoMonster or VideoMonster (or something very similar), you will be able to prevent them from using that name by invoking your trademark.

To fully protect your software, it is advisable to use both tools: copyrightto protect the code and trademarkto protect the brand. It is, conventionally speaking, like a double insurance, which will provide you with peace of mind and confidence in the future.

Conclusions

So, we have learnt in detail the difference between copyrightand trademarkin relation to software. Now, in other words, you know that these are two differentintellectual property protection tools that nevertheless complement each other perfectly.

The main differences:

• Copyrightprotects the codeof a programme, its structure, its interface design (as a form of expression). It arises automatically from the moment the programme is created.
• Trademark protects the brandof the programme: name, logo, slogan, other designations that identify it on the market. To obtain TM protection, registration with UKRNOIVI is required.

Copyright will not protect you from someone releasing a programme with the same name as yours. And trademark, in turn, will not protect your code from being copied. Therefore, to fully protect software it is advisable to use both tools, there not less.

Registration of trademarkand protection of copyrightis an investment in the future of your project. It is, conventionally speaking, your way to protect your rights, your reputation and your business from unfair competition. We hope that this article has helped you to understand all the nuances and make the right decision.

If you still have questions or need assistance in registering a trademarkor protecting copyrightto your software, please contact Polikarpov Law Firm. Our lawyers, who have years of experience in intellectual property law, will be happy to provide you with expert support.

Also, if you want to get more information, we recommend you to refer to our main material: “Trademark for software: protecting your code and brand“.