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2013/06 > Software: difficulties of pleading infringement

Software does not fall outside the rules and protections of the common-law, despite its technical character and the difficulties that exist in trying to understand the content and its originality, conditions required for copyright protection. It is nevertheless the case that these requirements complicate the task of pleading infringement of copyright in software.

PayPal and eBay learned this upon finding themselves the target of a lawsuit for infringement of copyright by Mr. M, who claimed to be the original creator of software identical to PayPal, online payment software used by eBay and PayPal for carrying out online payments.

On February 8, 2013, the judge in the case dismissed Mr. M’s complaint against PayPal and eBay, based on Articles 56 and 753 of the French Civil Procedure Code, finding that a complaint for copyright infringement must clearly state the object of the complaint and the facts and law on which the objects are based, such that the defendant may prepare its defense in view of the facts and law alleged against it.

Mr. M’s complaint alleging copyright infringement of his software was determined to be insufficient in its statement of his claims, stating only “a written program relative to the treatment of data being used by a computer to secure online payments by association with the e-mail address for each credit card number so as to identify a purchaser and to immediately send to the purchaser upon each purchase, a message to his e-mail address alerting him as to the purchase made”. The judge noted that simple assertions claiming originality of a program or simply restating legal criteria regarding existence of a work cannot satisfy the conditions of Articles 56 and 753 of the Civil Procedure Code.

Moreover the plaintiff had asked the judge, by way of a counterclaim, to designate an expert for the purpose of certifying the software as being infringed, to compare the PayPal system with the alleged software created by Mr. M, and to prepare a report of the comparison highlighting the similarities between the two systems.

This demand for an expert was rejected in the absence of even a minimal statement of essential facts and law by the plaintiff.

Indeed, the burden of proof lies with the plaintiff to bring evidence of the alleged infringement, and the plaintiff may not rely on an expert to provide such evidence. The judge explained that, “an expert can be justified for making comparisons of the software and even for preparing a detailed report explaining for the court the characteristics of the software claimed, such as the software at issue in this case, however an expert cannot be the basis for claims of infringement in the complete absence, as here, of evidence as to the characteristics and originality of the software.”

Therefore, in matters of software copyright infringement, the complaint must describe the characteristics of the software and should demonstrate the originality of the software before any discussion regarding infringement is undertaken. One can refer to the judgment handed down in Pachot (Cass., Ass. plén. du 7 mars 1986), indicating that the author of software must bring proof “of a personalized effort over and above the simple implementation of automated logic…”

Finally, the complaint must also identify precisely the software alleged to be infringing and contain a description of the characteristics considered as forming the basis for this infringement. It is insufficient for a plaintiff to simply assert the identity and purpose of each of the original work and the allegedly infringing program.


Brief notes:

Spain’s recent filing against the Unified European Patent can be found online at (C-146/13 and C-147/13).Croatia will become a member-state of the European Union on July 1, 2013. European Trademarks and designs that are registered or already filed will be automatically carried over into Croatia without any required action.

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