October 2022
Jolene Chen and Teresa Huang
On August 25, 2022, the Beijing Intellectual Property Court released to the public the Handbook for Evidence Presentation of Parties in Civil Cases Involving Computer Software Copyright (hereinafter referred to as the “Handbook for Evidence Presentation”), which provides practical answers to issues related to the trial of civil cases involving computer software copyright, including four parts: disputes over the ownership of computer software copyright, disputes over infringement on computer software copyright, disputes over computer software contracts and procedural matters of civil cases involving computer software copyright, which have a strong guiding effect on the right owners’ rights protection. This article will briefly introduce the Handbook for Evidence Presentation from the following five aspects.
First, the Handbook for Evidence Presentation lists how a party concerned can prove that it owns the computer software copyright and how the defendant can oppose it.
In general, the software copyright belongs to the software developer. Where the plaintiff claims that it owns the computer software copyright, it can provide the following evidence: (1) the signature on the computer software; (2) the signature contained in the source code, notes and website address of the computer software; (3) the registration certificate of copyright of the computer software; (4) certificate from a certification agency; (5) contract on which the right is obtained; and (6) right owner declaration in line with the industry practice. Where the defendant opposes the plaintiff’s computer software copyright, it can provide the following evidence: (1) other signatures inconsistent with that on the computer software; (2) certificate indicating other ownership issued by a certification agency; (3) copyright registration certificate indicating other ownership issued by the work registration organization; (4) statement indicating other ownership issued by the right owner; and (5) objections to the plaintiff’s entitlement to the software ownership are raised on the basis of the nature and type, form of expression, industry practice, public cognitive habits and other factors of the software.
Second, the Handbook for Evidence Presentation provides a list of instructions on how to apply the evidence related to work activities for the Identification of work for hire as specified in the Regulation on Computers Software Protection.
The evidence of work activities shall include business license, the legal person certificate of public institution, relevant administrative examination and approval formalities, labor contract, personnel relation certificate, tax payment certificate, etc.
Third, the Handbook for Evidence Presentation suggests that the plaintiff in an infringement lawsuit should clarify the type of infringement acts to the court according to the features of the infringement acts sued to distinguish different conditions such as pure dissemination, end-user, plagiarism, damaging technical measures, or leasing.
Fourth, the Handbook for Evidence Presentation explains the way and process of comparing the computer software of both parties.
As to the way of comparison, the target programs of the parties’ software and source programs of the claimed software shall be compared, and the plaintiff shall present the evidence to prove that the defendant has touched the claimed software and the alleged infringing software is substantially similar to the claimed software. The source programs of the alleged infringing software shall be generally provided by the defendant. If the defendant refuses to provide the source programs or the source programs provided by the defendant are not accepted, the plaintiff may assert to compare the target programs of the claimed software with those of the alleged infringing software.
As to the comparison process, the party concerned can submit the CDs, USBs or portable hard disks that are installed with the computer source programs, seal them up and submit them to the court in encrypted form. The comparison of the source programs and the target programs may be conducted by an authentication institution or by both parties concerned organized by the court. When the court organizes the parties concerned to make the comparison, the party concerned may also apply for its technical personnel to jointly participate in the comparison. Before comparing the source programs, the correspondence between the source programs and the target programs of the plaintiff’s and the defendant’s computer software need to be determined. The party concerned may request that the other party cannot retain the source program submitted by such party. If one party need to issue cross-examination opinions on the source program, it may request the other party to make a confidentiality undertaking, or the court may make a confidentiality maintenance order, and then copy the source program submitted by one party to the other party.
Fifth, the Handbook for Evidence Presentation also enumerates the evidence for software transplantation defense.
For the infringement acts alleged by the plaintiff, if the defendant argues that the alleged infringing software is the computer software rewritten by the defendant using other programming software according to the technical solution of the plaintiff’s computer software after studying and researching such technical solution, evidence relating to the following facts shall be presented: the plaintiff and the defendant have adopted materially different programming software, the computer software of both parties have substantial differences in the form of expression, etc.
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