Software registration and legal protection

What happens if you don't protect your software?

Many companies find out their software isn't protected right when they need it most: when selling it, raising capital, switching vendors or when the relationship with whoever built it breaks down. These are the most common cases:

• There's no contract, or the contract doesn't say who owns the code. Mexican law resolves doubts in favor of whoever wrote it (article 83 bis of the LFDA).
• The domain, server, code repository or App Store and Google Play accounts are in the developer's name. Without that access you can't update or maintain your own app.
• You only received the working app, without the source code or documentation, so no one else can maintain it.
• Employees or freelancers wrote part of the code without a document assigning the rights to your company.
• Someone else registered your app's name as a trademark with IMPI first.
• The developer reuses or sells the same software to others, because nothing in writing prevents it.

What does software registration protect?

Computer programs are protected the same way as literary works, in both source code and object code (articles 13, section XI, 101 and 102 of the Federal Copyright Law). Registration creates a presumption, unless proven otherwise, that the facts recorded in it are true: who the author is, who the owner is and since when the work has existed.

Registration protects the specific expression of the code, not the ideas, methods or functionality of the program. In Mexico a computer program, as such, can't be patented either, because the Federal Law for the Protection of Industrial Property doesn't consider it an invention.

How do I protect my app or platform's name?

The name is protected with a trademark registration with IMPI (Mexico's trademark and patent office), not with the software registration, which only protects the code. If another company registers the trademark first, it can stop you from using it on app stores, domains and social media, even if you launched first. The two registrations complement each other.

Work made for hire, assignment or license: which one fits?

They're different legal arrangements, and the choice is made before signing. In a work made for hire, whoever commissions the software owns the economic rights from the moment it's created (article 83 of the LFDA). In an assignment, the owner transfers rights it already held. In a license, the owner keeps the rights and authorizes use under conditions of territory, term, users and modification; it must be in writing (article 30 of the LFDA).

As a general rule, custom software is handled as a work made for hire; an assignment is used when something that already existed is transferred; and a license, when a lower cost is preferred or the same product is offered to several customers.

What do we prepare?

• Copyright registration filing for the software with INDAUTOR.
• Trademark application with IMPI.
• Assignment of rights or software license agreement.
• Development, maintenance and SaaS agreements.
• Terms and conditions and privacy notice.
• Open source license review.
• Monetization models: licenses, subscriptions and resale.

Who is responsible for the legal work?

The legal work is signed and backed by ANBEC Abogados (anbecabogados.com), an intellectual property law firm in Mexico City. You deal with one team and get one proposal; behind the scenes, RexDevs answers for the software and ANBEC Abogados for the legal advice and attorney-client privilege.

Frequently asked questions