by Gabriel Di Blasi*
Due to the increased use of software in the computer and virtual environments (including cloud games, online social networks and new media), software and its techniques have become more relevant, demanding more attention and recognition of their economic importance. Nowadays, most countries have rules and regulatory guidelines on software, including in the Internet environment.
In compliance with this new world order, Brazil has been improving this kind of protection since 1998, when the Brazilian government enacted Brazilian Software Law No. 9,609 on February 19, 1998. This law regulates the protection of author rights and software registry, affording guarantees to the author to exploit software, rules on commercialisation, and criminal penalties for Brazilian copyright violations.
This law was created in accordance with Article 10 of TRIPS in order to facilitate a secure environment for software marketing in Brazil and to prevent conflicts in bilateral relations with other countries.
Decree No. 2,556 of April 20, 1998, enacted to regulate the registration of computer programs, as described in Article 3 of Law No. 9,609/98, provides the following definition:
“A software program is the expression of an organised set of instructions in natural or code language contained in a physical support of any kind, necessarily employed in automatic machines for the manipulation of data, devices, tools or peripheral equipment, based on digital or analog technique, so they will operate in the way and with the purposes determinate.”
Computer programs cannot be patented, but may be protected under Law No. 9,609/98. However, inventions related to software created to solve a technical problem could be subject to a patent.
In order to be eligible for patent protection, software must consist of patentable subject matter and solve a technical problem, be capable of industrial application, be novel and involve an inventive step.
Aspects of software that are not directly related to its technical features, but to its literal aspects
(such as source program) are protected by the Software Law No. 9,609/98 for 50 years from January 1 of the year following its publication or, if this is unavailable, from the date of its creation.
Generally, the provisions on moral rights are not applicable to software rights. However, even if the system of IP protection for software is not the same as Brazilian Copyright Law, the software’s author cannot waive his moral rights. In fact, he can always claim authorship of the software to oppose any unauthorised changes, especially when these result in the disfigurement, mutilation or any other modification that will ultimately cause damage to the author’s reputation.
Furthermore, unless otherwise stipulated, the rights to software developed during the term of any contract or statutory relationship belong to the employer or contracting agency.
However, if the computer program is developed independently of any contract or statutory relationship, without using any resources, information, technology, material, facilities or equipment belonging to the employer or contractor services, the rights to this program belong to the employee. The rights to technological changes or derivations belong to the author, unless otherwise provided by contract.
Registration of software at a public agency is optional, since there is a presumption of authorship. However, in case of litigation, the registration can be used to prove the authorship of the software, ensuring the author’s rights and giving legal certainty to businesses until otherwise demonstrated. Ultimately, the Brazilian Patent and Trademark Office (BPTO) is the public agency entitled to regulate the registration of software in Brazil.
In addition, due to the principle of reciprocal treatment, the protection of computer programs for foreign title holders is guaranteed in Brazil.
Agreements for the licensing of use, commercialisation and technology transfer
In Brazilian doctrine, “moral rights are exclusive because they proceed from an author’s personality”. Thus, only propriety rights related to economic exploitation of software can be transferred or assigned to third parties.
The use of software in Brazil shall be subject to a licensing agreement, but if this does not exist, a billing receipt can serve as evidence of its legal use. In fact, local courts have decided that one can prove the legal use of software by other lawful means (broader interpretation) and that Article 9 of the law does not expressly exclude other evidence.
It should also be borne in mind that registration for selling computer programs in Brazil is not required. However, if an agreement relating to computer software implies transfer of know- how, it will be mandatory to record it before the BPTO, otherwise the remittance of royalties, as well as tax deduction, will not be possible.
Infringement actions and penalties
Article 12 of the law establishes criminal penalties for violation of authorised rights: the reproduction of the software for commercial purposes; and the commercialisation of the software, original or copy. The victim can also sue for compensatory damages. When confidential information is presented in the proceedings, the judge may impose secrecy, denying the use of the information for other purposes.
According to Article 29 of the Copyright Law, any use and exploitation of an intellectual work by a third party requires prior and express authorisation from the author/owner of the copyrights, including partial and total reproduction, translation into any other language, and dissemination of the work by cable, satellite or any other similar system.
Therefore, non-observance of Article 29 will lead to violation of copyright and the owner of the infringed work may request the seizure of the reproduced work. In addition, he may seek indemnity for losses and damages in court, or criminal prosecution of the infringer. The copyright violation may lead to criminal penalties, including fines or imprisonment.
The search and seizure of a pirated copyright- protected work is always preceded by a court order, in an ex parte proceeding.
Confiscation of products violating copyright may be obtained through a final court decision on the merits. Customs actions may also be obtained. The customs authorities, ex officio or at the request of an interested party or court order, may seize at the time of checking, any products carrying falsified, altered or imitated copyrights.
From the above, it can be inferred that the registration of software is optional, and the right can only be obtained by means of a declaration. The BPTO is the only governmental agency entitled to regulate and to declare software rights in Brazil. Registration of software can be performed either on paper or electronically (CD or DVD).
The Software Law requires recordal of the licence at the competent public agency, so as to be enforceable against third parties. Likewise, the recordal of the licence will entitle the licensee to proceed with criminal and civil prosecution on behalf of the licensor.
It must be highlighted that oral rights are treated as natural rights influenced by French law and an extension of the author’s personality. In practical terms, the inalienability of rights means that licensing of copyright does not prevent its title holder from exercising his moral rights.
Any changes to the software or transfer of the ownership of their patrimonial rights should be reported to the BPTO.
Public consultation to modernise the Copyright law
A significant change in the Copyright Law will directly affect the legal treatment given to software and to the Software Law provisions. Article 2 of the Software Law establishes that: “The protection system of intellectual property of computer program is the one given to literary works by the Copyright and Related Rights Law existing in the Country, observing the provisions of this Law.”
A public consultation on the changes to the Brazil Copyright Law ended on August 31, 2010.
The bill seeks to protect the author’s rights with citizens’ access to knowledge and culture, and to ensure legal certainty for investors in the cultural area.
Mainly, the changes in the Brazilian Copyright Law are as follows: Article 1, which deals with the
purpose of the act; Article 41, which deals with the economic rights time limit, such as propriety rights expiring within 70 years of the author’s death; and Article 46, regarding the limitations to copyright such as reproduction by any means of a copyright-protected work provided that it is for private use and that just one sample is obtained. At the end of the consultation, the bill will be redrafted based on the proposals.
The bill foresees that the private copying of any digital work is allowed without the express permission or compensation from the owner, as long as it is for private use and only one copy is produced. It also allows the use of original content in other media than the one that the consumer purchased originally. In other words, this change would decriminalise private copying.
Moreover, the bill foresees that the use of short extracts from existing works of any nature, or the entire work regarding visual arts, is not an insult to the use of copyright-protected works, dispensing the express prior authorisation of the owner and associated remuneration, provided that the user does not cause unreasonable harm to the legitimate interests of the author.
Museums and libraries will also be allowed to digitise research or works as part of their collections, and make them available on the Internet for public consultation.
On September, 9, 2010, the Minister of Culture held a press conference in Brasilia to present the results of the public consultation on the modernisation of the Copyright Law.
He pointed out the need for transparency in the collection system and the creation of an administrative unit for conflict mediation. Likewise, he highlighted requests for improvement on items that deal with the use of intellectual works for educational purposes and as a creative resource, and the need for improvements in the proposed Copyright Law on the Internet.
Several arguments were presented regarding the paragraph of Article 46 that outlines the limitations on copyrights. Therefore, for a precise understanding of this article, incorporating suggestions, removing inaccuracies, and clearly defining its scope and application must be undertaken.
The improvement to the concept of ‘interactive access’, which replaces ‘distribution’ in the current text of the law, was adequate to solve the legal uncertainty that had hindered development of new business models for the Internet. However, the ‘sharing’ of files using P2P networks is a problem that affects all countries. In fact, none of them, so far, has found a satisfactory solution to this issue. There is still no consensus about the best way to deal with it. Several proposals on this issue have been made and are being carefully analysed.
The minister said that the current legislation raises some difficulties, such as regulating copies of educational materials and web downloads.
It is also expected that a draft bill will be submitted to the National Congress by the end of the year, based on the results of the consultation.
The impact of intellectual property has increased as the world has become more closely linked.
Even though software cannot be regarded as a work of art and because patent invention requirements are only just met—the Brazilian Software Law is treated like the Copyright Law. As a consequence, any significant change in the Copyright Law will directly affect the legal treatment given to software protection.
Finally, the ultimate purpose of the new amendments to the Brazilian Copyright Law is to harmonise Brazilian law with that in developed countries, so as to provide more effective protection and assure legal certainty for foreign investors.
* Published in the World Intellectual Property Review—BRIC Report 2011