Software Ownership, GPLv3 Code, a Trademark Opposition and a Departing Developer

Anil is a freelance contractor, not an employee. Under the Copyright Act, the author of a work is the first owner of copyright, and the employer-ownership rule applies to work made by an employee in the course of employment. The one-page work order is not a valid assignment merely because it says the company will own the work product. A copyright assignment must be in writing, signed by the assignor, and must identify the work and the rights assigned, including duration, territory and consideration.

MedTrack should obtain a deed of assignment from Anil covering the source code, object code, documentation, designs, databases and any future enhancements, with a clear scope and consideration. It should also obtain similar assignments and confidentiality undertakings from all employees and contractors, and check whether any third-party code was used. Moral rights should be addressed. Until the assignment is executed, the company may have a licence at best, and its ability to enforce copyright against a copyist is uncertain.

GPLv3 is a copyleft licence. If the app distributes a derivative work of the GPLv3 library, the distributor must make the corresponding source code available under GPLv3 and cannot impose conflicting restrictions. Whether the app is a derivative work depends on how the library is linked and used. A library in the 'core module' suggests tight coupling and a real risk of derivative-work treatment. The company should obtain an open-source audit, isolate or replace the library, or comply with the GPL obligations. A confidentiality clause cannot override GPL rights.

The algorithm is unlikely to be patentable. Under Section 3(k) of the Patents Act, business methods, algorithms and computer programmes per se are not inventions. A computer-implemented invention may be patentable if it produces a technical effect and is not a computer programme per se, but implementing a business method on a general-purpose computer is normally excluded. Novelty alone is not enough. The company should protect the algorithm through copyright, trade secrets and contracts, and should not incur patent costs without a technical-effect assessment.

On the trademark, MedTrack must file a counterstatement within the prescribed period after receiving the opposition notice; otherwise the application may be treated as abandoned. The opponent claims prior use in Class 10, while MedTrack has applied in Classes 9 and 42. Prior use in a different class is not automatically fatal, but the opponent can succeed if the marks are similar and there is a likelihood of confusion, or if the goods/services are related. MedTrack should collate evidence of its own use, advertising, invoices and social-media presence, and consider whether to narrow the specification or negotiate a coexistence agreement.

On the departing developer, the company should first preserve evidence and revoke access. If there is no confidentiality clause, it can still rely on breach of confidence and copyright infringement if the source code and customer list are confidential and were copied. A customer list can be protected as confidential information if it is not readily available public data. Remedies include an injunction, delivery up, damages and account of profits. The company should also conduct a forensic audit, send a cease-and-desist notice, and consider criminal remedies for copyright infringement or theft. Going forward, it needs enforceable employment agreements with IP assignment, confidentiality and non-solicitation clauses.