Intersection of Copyright and Trade Secrets: The Secret Weapon in your IP Arsenal

An Intellectual Property (IP) may be protected via various routes. Varying protection can be secured on various aspects of an IP. For example, a board game may be protected vide Copyright, protecting the expression of idea of the game and the name may be trademarked. Similarly, a novel food recipe may be protected by a patent owing to the novelty and trademarked. Or one could go the route of big retails chains like PEPSI and KFC and declare the recipe a trade secret. Various aspects of a property can be protected using different IP protections but, the same aspect of an IP cannot be protected twice-over. Simply put, dual protection can be claimed on different aspects, but an IP cannot be protected in layers for example, the same aspect of a product enjoying two degrees of protection.

To understand the intersection of Copyright and trademark, let us first understand what each of these protections entail.

COPYRIGHT

Copyright is a form of protection that protects literary (including computer programmes), dramatic, musical and artistic works from being copying, reproducing, distributing etc without a license from the Copyright owner, for a certain period of time, after which the work enters the public domain. Copyright is available only on expression of ideas and not in the idea itself. Copyright is also available to only original works emanating from one’s “Sweat of the Brow”. Copyright can be infringed when another person claims to be the author of another’s copyrighted work and/or reproduces, distributes etc., without permission from or revenue to the author. This means that in order to infringe a copyright, access to the copyrighted expression is pertinent.

TRADE SECRET

Trade Secret is a form or protection of information in the form of formulas, practices, processes, designs, compilations of information etc., that has inherent value owing to the fact that this information is not available in the public domain, and that the owner takes reasonable steps to maintain its secrecy. These secrets may also be referred to as confidential information. Unlike Copyright, trade secret protection is not time barred. Also unlike copyright a trade secret cannot be infringed, it can only be misappropriated. This means that if another person is able to reverse-engineer a trade secret, that shall not be illegal. This also means that as long as the actual trade secret is not revealed by a person who had knowledge of the trade secret, a trade secret cannot be misappropriated either.

INTERSECTION OF THE COPYRIGHT AND TRADE SECRET

As per the Circular 61 of the United States Copyright Office, a trade secret may be submitted as ‘redacted’ from the copyright registration submissions, in case a trade secret is part of the whole that a proprietor might want to seek copyright protection for. The Seventh Circuit Court of the US said in the case of Capricorn Mgmt. Sys. v. Gov’t Emps. Ins 15-CV-2926 (DRH)(SIL) [1], that if a trade secret is submitted to the Copyright Office as not redacted, it would lose its trade secret protection, as it would no longer enjoy exclusivity. The contrary should also be true. That, in case, portion of the material, sought to be copyrighted, is submitted as redacted owing to it being a trade secret, the expression would gain copyright protection post the grant, but the redacted idea would only be trade secret and not copyrighted material, for it was never available to the Copyright Registry for inspection.

ABSTRACTION FILTERATION COMPARISON TEST (AFC)

The US Court of Appeals for the Second Circuit in 1992, in the landmark judgement of Computer Associate Int. Inc. V Altai Inc. [2] developed the Abstraction Filtration Comparison Test (AFC). This a method of identifying substantial similarity for the purpose of applying copyright infringement law. AFC is used to determine whether non-literal elements of a, specifically of a computer programme have been copied, by comparing the protectable elements of the two programs. As per this, in order to prove Copyright Infringement the following must be proved:

1. The defendant had access to copyright material, and

2. There is substantial similarity between the copyrighted and impugned work.

In cases where copyright infringement may be claimed of a Trade Secret, it shall be essential to establish that the infringer had access to the original Trade Secret. Notwithstanding that a Trade Secret holds value exclusively owing to it being a secret, copyright infringement of a Trade Secret, especially if such Trade Secret was ‘redacted’ or, in other words, not disclosed vide the registration application, lawful knowledge of the Trade Secret idea communicated to the infringer shall have to be established.

This can be observed inter alia vide observations in the case of Transformative Learning Solutions Pvt. Ltd. v. Pawajot Kaur Baweja [3], wherein the plaintiffs claimed the defendants be restrained from disclosing confidential information, the court held that it cannot be urged if the defendants are not privy to confidential information and the confidential information is only known to the plaintiffs and not the defendants.

CAN COPYRIGHT AND TRADE SECRET BE CLAIMED SIMULTANEOUSLY?

Deriving from this, this would mean that if a trade secret is submitted as ‘redacted’ in the Copyright registration, it would continue to function as a ‘trade secret’ but it shall not be available for copyright protection as the particular data was never revealed to the Copyright Registrar in order to ascertain the copyrightability of the particular portion. since the copyright office never had access to the information contained in the Trade Secret and the particular information was never submitted to be inspected by the copyright office, copyright cannot be claimed on such information.

CONCLUSION

In conclusion, Trade Secrets and Copyright can be claimed on single work albeit on differing aspects of the work. However both of these cannot be claimed simultaneously on the same aspect of this work. But is possible for both these protections to exist in conjunction and this conjunction is truly the best way to protect a property that is your brain-child and you share the recipe with your employees or business partners. Remember, innovation is key and if we are no contsanly innovating then we are falling behind. Securing Copyright and Trade Secret protection is onec such combined protection that can bring big returns for a business in the long run.

Reach out to our team for this innovative and other solutions to start earning and maximising your IP today.

REFERENCES:

1. 23 (E.D.N.Y. Mar. 16, 2020)

2. 982 F.2d 693 (2d Cir. 1992)

3. 2019 SCC OnLine Del 9229