Using Trademarks to Guard Against Software Piracy

by Michael A. Lechter

In previous columns, I examined patent and copyright protection of software. This column examines trademark protection.

While trademarks do not protect against others copying the underlying technology of software and typically are not substitutes for other forms of protection, using trademarks strategically in the screens of a software product can be particularly effective protection against both outright piracy and incidental copying, although for very different reasons.

What is a Trademark?

A trademark is anything that identifies the source (origin) of a product or service or that signifies sponsorship or approval of the goods. Trademarks include names, words, logos and product packaging, as well as distinctive non-functional visual aspects of the software, such as icons or user interface designs.

In essence, competitors cannot capitalize on a trademark owner’s reputation. They cannot use a mark that is the same or similar to a trademark owner’s, if consumers might be misled or confused about either the source of the goods or about sponsorship by or affiliation with the trademark owner. In this way, a trademark protects the market value of the owner’s reputation and goodwill and protects investments in advertising and other promotional activities used to develop such goodwill.

Trademarks Connect Products to Their Producers

A strong trademark can be an extremely valuable asset and can be a factor in a product's marketability. In today’s marketplace, many consumers base their purchase decisions less on intrinsic product value than on the sponsorship of, or the trademark used with, the product. In other words, purchasers associate trademarks with some special value or status; they trust a product coming from or being sponsored by the trademark owner. This intangible value is sometimes referred to as goodwill.

Goodwill accruing to a software producer can be a form of software protection itself. If a software producer has a good reputation for support and maintenance, for example, consumers may consider the ability to access that resource a strong incentive for obtaining an authorized copy of the software. This added value tends to stop at least some of the incidental copying that might otherwise occur.

Who Gets Hurt?

Often times, infringements injure both consumers and trademark owners. Unauthorized copies often fall short of consumers’ expectations for consistency and quality and create false impressions that sometimes lead back to the trademark owner. While the individual who makes an unauthorized copy might not be confused about the source, consumers who see the mark depicted or displayed when an unauthorized copy is in use may not know that the copy is unauthorized and thus not subject to the trademark owner’s quality control. The unauthorized copy may be identical to the original software as it existed at some point in time, but it often differs from an authorized copy in a number of ways:

• The support offered to authorized users is not likely available for unauthorized copies

• Unauthorized copies often lack the reference materials typically available to authorized users

• “Fixes” or updates provided to authorized users are not provided for unauthorized copies

These distinctions tend to exacerbate perceived defects or problems users encounter with unauthorized software and make the software seem to be lower quality or less user-friendly than it is. Unfortunately, uninformed consumers often attribute these problems to the trademark owner, thereby injuring the owner’s reputation. This is the essence of a trademark infringement claim.

Trademarks Are Not Copyright Replacements

Trademark protection can provide a viable alternative — or preferably a supplement — to copyright protection. Making and distributing unauthorized copies of software clearly violates copyright law. However, copyright registration, a prerequisite to an infringement suit, tends to place the trade secret status of software at risk. In the software industry, developers often delay registration until after an infringement situation arises, precluding the use of copyright protection in many instances. On the other hand, registering a trademark is not a prerequisite for trademark infringement suits, and trademark registrations have no bearing on trade secret status.

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Michael A. Lechter, Esq. is an international intellectual property expert who consults on complex litigation related to patents, trade secrets, copyrights, licensing, trademarks, and technology issues. He is counsel to the international law firm Squire, Sanders & Dempsey, LLP., and is best-selling author of “Protecting Your #1 Asset: Creating Fortunes from Your Ideas” (click here to go to the IEEE-USA Today’s Engineer book review). You can contact him at www.mlechter.com.