Newsletter
Impact of the Amendments to the Intellectual Property Case Adjudication Act on Lawsuits in connection with Computer Program Works
I. Introduction
Computer programs are costly to research and develop but are easily plagiarized. In the field of intellectual property rights, the threshold for copyright protection is low; there exist multiple types of protection for works; and the term of protection is relatively long. All of 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. Although under Taiwan's copyright law, the author of a work shall enjoy 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 in essence 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, Scènes à faire doctrine, and the idea-expression merger doctrine, a computer program's functionality shall be excluded from copyright protection so as to prevent increasing research and development costs for other developers and 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 on technology in order to dissect the ever more complex technical documentation in the field of computer program development, and clarify whether elements in a piece of computer program are not under copyright protection due to the applicability of 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.
II. The Amendment of the Intellectual Property Case Adjudication Act
Taiwan's Legislative Yuan on 12 January 2023 approved amendments to the Intellectual Property Case Adjudication Act (the "Act"), and the Act 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 aforesaid differences existing 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.
1. For first-instance civil lawsuits arising from the copyright of computer programs, legal representation shall be mandatory
The amendments have added Article 10 of the Act, explicitly stipulating 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 the parties to such lawsuits and enhance the efficacy of the examination process, it is stipulated that legal representation be mandatory for such cases.
2. The rules of 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
Cases involving copyright infringement of computer programs are highly 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. To assist courts in fact-finding for cases of infringement of computer programs and of trade secrets, to resolve the difficulty encountered by the infringed in the matter of producing evidence, and to facilitate equality of the means of attack or defense employed by the parties to a lawsuit, it is necessary to have the procedure of having neutral experts with expertise collect evidence with mandatory force in law on-site. Hence, the addition of Article 27 of the Act 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.
3. The rules of reducing the burden of proof apply to the parties to a case of copyright infringement of computer programs
The provision on reducing the burden of proof on the infringed in trade secret cases, as provided in Article 10-1 of the Act prior to amendment, has also been made applicable to cases involving patent rights and the copyright of computer programs; the provision has been amended accordingly and moved to Article 36.
This amendment is based on the fact that computer program works are highly technical and the information they contain is inherently confidential. The evidence showing that a computer program work is infringed or likely 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 general principle of the distribution of burden of proof continues to govern, the infringed will have the burden of proof in establishing the fact of being subject to infringement or a likelihood thereof. Accordingly, 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 would be essential and proper to consider the asymmetrical distribution of evidence, the difficulty of gathering evidence, the magnitude and severity of the substantive and procedural interests involved, and to adjust the burden of producing evidence placed on each party in a lawsuit in line with the principle of good faith in legal proceedings.
The alleged infringer must do more than deny the claim made by the party alleged to have been subject to infringement or a likelihood thereof—it must submit a concrete defense 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 party claiming infringement and will obligate the counterparty to provide a concrete defense in response to the evidence produced by the party claiming infringement. With the burden of proof on the party claiming infringement eased, and with the alleged infringing party regulated to collaborate in legal proceedings, the examination process is expected to move forward more swiftly and the decisions rendered will be more just and equitable.
Acts of infringement against the copyright of computer programs often pertain to the competition between or among businesses in the high-tech industry. If a party claiming infringement does not clearly claim that there is a high degree of possibility of it having been subject to infringement or a likelihood thereof, and then the counterparty is ordered to submit a concrete defense explaining its reasons for rejecting such claim, it would be too harsh on the counterparty and would pose a significant impact on the competition order of the industry. Hence, in order to strike a balance, it is required that the degree of clarification reached by the evidence produced by the party claiming infringement should be raised.
III. Conclusion
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. In addition to making the evidence-taking mechanism for patent rights litigation applicable mutatis mutandis, introducing expert opinions to assist in fact-finding, and readjusting the burden of proof placed on the parties in an appropriate manner, the amendments have introduced such mechanisms as the examination plan and the initiative to make the Technical Examination Officer's report open and transparent. They are helpful to the litigation process for this particular type of lawsuit. 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 has become 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.