格联文章 | Glinks Helps Client to Successfully Defend a Software UI Infringement Case

Nowadays, the value of user interface (UI) of a software is, in more cases, much higher than the codes, the protection of which draws more attention of software companies, especially in the financial industry and entertainment industry. Recently, a leading futures software company in China was used by its competitor for UI copying regarding its major product. Glinks represented this client before the People’s Court of Pudong District, and won this case.

 

​1. What does a lawyer need to do in a UI case?

As we all know, to establish a software infringement, the plaintiff needs to prove substantial similarity + access. Since the 1992 Altai case, the methodology to assess substantial similarity is simple to understand, i.e., abstraction (to separate expressions from ideas), filtration (to remove those public knowledge and limited expressions) and comparison (to compare the remaining contents to decide whether they are similar), which is very popular and has been widely applied by both US courts and even Chinese Judges here until today, when ruling on those traditional copyright cases and on those in the emerging areas such as AIGC cases and cases of modern arts. However, whether an element is expression or idea, whether it is in the public domain, and whether the expression is limited, is not the law but a fact, i.e., it needs evidence, and the answer comes out from the hands not the mouth of a lawyer and requires the rich experience of that lawyer in the relevant practicing area.

First, the very beginning job of the plaintiff is to select the correct version of the software, i.e., the plaintiff is claiming which version of the plaintiff’s software is infringed by which version of the defendant’s software, and sometimes a wrong choice is fatal to the case. It is easy for many lawyers to ignore this issue because they fail to realize that two versions of a software are simply two software. This version issue relates to a lot of practical matters, among which time is of the most important one. You need to compare the time of the selected version of the plaintiff with the time of the defendant’s software, with the time of the public knowledge that you are able to search, with the records in the development systems to see whether they are consistent with each other, and with the time during which the defendant has the reasonable access to your software (e.g., some plaintiff selects a version that is developed after a key employee later joining the defendant first leaves the plaintiff, resulting in the final failure of its case), and whether you are able to prove the time of the selected version.

Second, Chinese Judges usually expect both the plaintiff and the defendant to prove the existence of their independent development. Rather than direct copying of codes in which case less independent development of the defendant is involved, in a UI copying case, the defendant usually has strong evidence of codes development, therefore, it is a challenge for both the lawyers of the plaintiff and the defendant regarding how to present and explain the evidence to the Judge in a way in favor of the self-side, which requires the lawyers to have a good understanding of how a UI comes out within a software company from the product manager to the programmer, what is the underlying technical form of such UI in the codes, and what kind of systems that the software company would use to record the work products in the different phases when creating a UI. Many lawyers usually ignore to review the details of such evidence, which then maybe fatal to their cases, e.g., in these systems, sometimes we could see whether a particular UI or an improvement made thereto is developed for a functional purpose or for a visual purpose, which is critical to the result of a UI case, and sometimes we even could see in the plaintiff’s systems that they may also have “copied” something from other software. Based on the same reason, software companies are also advised to receive legal trainings regarding how to maintain their systems and development records in a way that would be favorably usable in future cases.

Third, we have to accept, sometimes, the fact that an element is a public knowledge is not a public knowledge, and the Judge may not assume the existence of a public knowledge. This requires the lawyers to be familiar with the views and customs of the relevant courts regarding how they treat and categorize the elements of different kinds of software UI such as a transaction tool, an industrial control platform, and a video game. Defendant lawyers need to work closely with the client’s product managers and programmers to search out and compile the related materials and present them to the Judges in a way easy to understand and fit to the Judges’ reading habits. Plaintiff lawyers need to be familiar with those usual techniques to raise challenges to the so-called public knowledge presented by the defendant, and to use evidence to present why the ways of expression are not limited.

Using trade secret as the cause of action to protect software requires more lawyering skills. First of all, surely, you need to have some skills of patent lawyer so that you could be able to review the descriptions of secret points in the source codes to ensure they are helpful to the client’s case. Second, many people think source codes themselves are trade secret according to common commercial sense, however, though the answer is yes to some Judges, nowadays, more and more Judges believe even if the source codes are not public assets, the codes themselves are protectable only under the copyright system, and the plaintiff has to establish a particular secret point reflected by some part of the source codes (i.e., what is the exact technology we have in the codes and what is the problem that this technology solves) and only that secret point can be used as the basis in a trade secret infringement case. Third, the lawyer needs to have a comprehensive understanding about the difference as well as pros and cons between “copyright” and “trade secret”, and choice of a wrong cause of action is fatal to the client’s case.