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IT Companies: intellectual property lawyers defend you

Home > Intellectual Property in France | Published 2015-10-20

As the head of an IT enterprise, your business is centered around the creation of software concepts. What if an employee in denies your rights as the employer of the software, or if your associate who you work with threatens to market your software in another company? Who can help you prove your intellectual property rights or prove that your employees are in the wrong? Our department of intellectual property lawyers come to your rescue!

The Protection of Software by the rights of the creator, the lawyer tells you what is protectable

On December 22, 1981 the order for the enrichment of vocabulary regarding IT defined “software” as, “the collection of programs, processes and rules, as well as the documentation related to the assembly of data processing.”

Article L112-2 of Intellectual Property Code states that, “the software including the preparatory material” is a work of the mind, and signifies that it is protectable by the rights of the creator.

However, to be a piece protectable by the rights of the creator, it must be original. By a decree passed by the plenary assembly on March 7, 1986 called “Pachot,” the Court of Cassation stated that the originality of the piece of software should demonstrate the intellectual contribution of the creator.

The protectable elements of software are code sourcing, digitized images, digitized sounds, the text, etc., as well as all the work and documents connected to the software that can contribute to determining the date and origin of the creation of the software.

Conflict between Employer and Employee on the ownership of the rights of the software, the lawyer can decide!

Article L111-1 of Intellectual Property Code establishes the principal that the creator of a work enjoys the rights of intellectual property over the object starting from its creation. Thus in principal, the creations made by employees do not automatically belong to the employer, and so a division of rights is necessary.

However, software often strays from this rule and can be itself a source of conflict between you and your employees. In effect, article L113-9 of Intellectual Property Code states that, “the patrimonial rights on software and its documentation created by one or more employees during work, or after the instructions of their employer, are property of the employer, who is the sole person authorized to exercise these rights.”

Many sources of contention can stem from this set of rights regarding the creator. 

Often first, the person who had created the software can claim that they were not considered an employee at the point of creation. Lawyers in intellectual property implement a number of arguments then to defend the head of a company and to ensure that the employee was in fact employed underneath the employer since the beginning of the software’s creation.

The courts have, for example, already admitted that the person who, “had reflected on the software before being hired, which then afterwards reached formal realization” was still an employee (source: TGI Paris April 14, 1988), or that a member of company who is paid a flat rate, who performed similar work at home, is an employee (source: Paris, October 29 1987).

Other employees can also claim that the software had been created outside of their work hours. In this case again, an intellectual property lawyer is incredibly important for the manager of an IT company, whose principal activity is the creation of software. In effect, the court recognizes that even though the employee has created the software at their own home and outside of work hours, the software belongs to their employer since it was created with materials already belonging to the employer (source: Nancy, September 13, 1994).

Intellectual property lawyers master all of these complex laws. Our passionate lawyers, have a knack for defending the creators and the heads of companies fighting to find their place in a sector swarming with competition and economic difficulty.

Separation between partners: am I harming myself by voluntarily commercializing the software?

The reoccurring problems that one meets when creating software do not always occur between employers and employees. Sometimes they occur between two partners of a company.

United by the same project, the creation of software, you and your associate had decided to create a company originally to conserve, create, finish and distribute your software. Yet today, there is separation between you two. You no longer get along and your associate wishes to leave and commercialize the software through another company.

In case of conflicts related to the partner who remained the sole manger according to the originally created business structure by both partners, it is not possible to claim the application of article L113-9 of Intellectual Property Code to affirm that they themselves are the owner of the rights over the software, as they are not employees, but they two partners who had created the software together.

There are two potential results then that must be considered.

The software can be considered as a collective work, it if has been made by a team coordinated by a natural or legal person who took the initiative in creating, editing and broadcasting the product. The contributions of associates should be inseparable. In this case, the company as a legal entity, can hold the intellectual property rights over the software.

However, it is more frequent that the two people have indistinguishable complimentary strengths, having both contributed the the creation of the software. It is then in agreement with article L1113-3 of Intellectual Property Code, that a collaborative work is where each of the two parties is co-owner and should exercise the rights in agreement with the other.

By a decree January 15, 2015, the 1st Civil Chamber of the Court of Cassation found that under article L113-1 of Intellectual Property Code broke the reasoning created by the Court of Appeals which had stated that, “software should be qualified as a collective piece, in that the development of the work was a result of both associates.” For the Court of Appeals, it was that the company founded originally by the two associates, who were then both the owners of the rights concerned.

The Court of Cassation did not adopt the same reasoning. Via article L113-1 of Intellectual Property Code, High Court considered that, “a legal person cannot have authorship,” if it can be explained in fact that the creation of the software was a collaborative work, where the input of both associates was distinct, and not a collective work.

The individual associate managing the company who claiming ownership rights can no longer exploit the software that they originally contributed to without agreement from his former partner.

What can an intellectual property lawyer do for you to get you out of this type of situation? A lawyer is not just there to defend your rights during a trial. All of their expertise, like an art form, rests in the negotiation of an agreeable contractual agreement with your old associate over the operation of the software.

The strength of our firm is in our understanding. Our lawyers are here to use any type of litigation to find any solution. Because of our impressive experience, you can count on PICOVSCHI lawyers to solve any of your legal problems.

This article is available online for public information purposes. It is updated regularly, as needed. Due to the constant evolution of the laws and the legal system, we cannot guarantee that the information in this article is still applicable. We invite you to contact us with any legal questions or concerns you have regarding this topic at +33 1 56 79 11 00. In no way can this firm be held liable for articles that contain inaccuracies or are now out of date.

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