Challenging The Validity Of Software Copyright Registrations: The Deposit Copy Requirement

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Challenging the validity of a software copyright registration is a fundamental and effective strategy for a party accused of copyright infringement. If a federal court finds that the registration is invalid, the court will dismiss the infringement suit.[1] A registration is invalid if it contains material errors.[2] While immaterial errors, such as inaccurately stating the date of the work’s creation or failing to list preexisting works or coauthors, do not jeopardize the validity of a registration, the failure to submit a “proper deposit copy” is deemed a material error, and therefore can invalidate the entire copyright registration.[3] In this article we explore methods for assessing whether a deposit copy is proper in the context of software copyright registrations.

The Deposit Copy Requirement: Examining Section 408 of The Copyright Act
Section 408 of the Copyright Act requires applicants for copyright registration to include “one complete copy” of their work as part of the application.[4] However, applicants seeking to register computer programs for copyright are permitted to instead deposit “identifying material,” consisting of the first and last 25 pages of source code.[5]

An Original Or Bona Fide Copy…And Nothing Less

A copyright registration of a computer program ideally includes either an original copy or a bona fide copy of the program.[6] An original copy consists of a clean, non-updated, unaltered copy of the software source code as it was originally published. The safest methods of source code storage to preserve an original copy are: (1) a repository within a source code control system[7] maintained by the developer of the registered software; or (2) an escrow account established with a third-party escrow agent. The preserved original copy may be utilized to produce a bona fide copy which is “virtually identical to the original” and was “produced by directly referring to the original.”[8] Unless an applicant utilizes these preservation and authentication methods, the certificate of application may be vulnerable to an invalidity challenge because the deposit copy will likely not represent a bona fide copy of the original work at the time of its creation. As a result of some applicants’ attempts to re-create original works, courts have held that an “original work” means exactly that: the deposit copy must be virtually identical to the original work and produced directly from reference to the original rather than from memory.[9]

About the Authors

Jeff Parmet is a widely respected consulting and testifying expert and the founder and managing partner of DisputeSoft (as well as a non-practicing attorney and member of the State Bar of California). He has been involved in more than 125 software disputes, and has served as a computer software expert witness in high-profile software IP cases on numerous occasions. Mr. Parmet’s 40 years’ experience in information technology includes software product development and licensing. During the past 15 years as an expert witness, Mr. Parmet has consulted and testified in software patent infringement, copyright infringement and trade secret misappropriation cases, as well as in software failure disputes. Mr. Parmet has a sub-specialty in computer forensics. He can be reached at jparmet@disputesoft.com

Brendan McParland serves as General Counsel at DisputeSoft. He works closely with clients and assists on cases related to software failure and patent infringement. Mr. McParland has helped prepare affidavits and expert reports for cases before federal district courts, the United States Court of Federal Claims, and international tribunals such as the International Trade Commission. Before joining DisputeSoft, Mr. McParland was an associate with Am Law 100 law firms handling matters involving corporate mergers and acquisitions, investment management, and complex commercial litigation. Mr. McParland can be reached at bmcparland@disputesoft.com.

Bryce Helfer is a student in the Graduate Tax Program at Georgetown University Law Center, with an anticipated graduation date of May 2013. Prior to enrolling at Georgetown, Mr. Helfer graduated from the University of Maryland Francis King Carey School of Law.  At DisputeSoft, Mr. Helfer researched legal topics related to copyright and patent infringement, and assisted in preparing expert reports on behalf of clients.  Before joining DisputeSoft, Mr. Helfer served as a summer associate at a mid-sized law firm handling issues relating to tax controversies, estate and trust litigation, and complex commercial lease arrangements.  Mr. Helfer can be reached at bhelfer@umaryland.edu.

For more information about DisputeSoft, please contact us at (301)-765-9674 or email us at inquiries@disputesoft.com

 

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