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By: Lic. Jaime Israel Dávila Gómez, Attorney.
In Mexico, software programs are protected as works, meaning that all the rules and regulations set forth in the Federal Copyright Law apply, including those concerning the principle of automatic protection, which establishes that artistic creations and their authors hold rights from the moment the work is created, perceived, and reproduced. Registration is not required, though it is highly recommended.
However, the protection of a work of this type (software, mobile applications, e-commerce platforms, or any other form of computer program) should begin from the moment its creation starts and a company or a programmer (or multiple programmers) is hired. The most important aspect at the time of creating the work (which can even take years) is determining the type of contract that should be entered into between the party financing the development project (and later intends to exploit or use the software) and the person or persons programming or developing the software. This may involve a service contract, a work-for-hire contract, or employment contracts in case the programmers are hired as employees for the duration of the software’s development.
The type of contract to be used will be determined by the specific situation of the company, for example, whether they decide to hire an independent programmer, multiple programmers, a software development company, or employees for a fixed period. In any case, there are two types of clauses that are essential for the proper protection of the software: intellectual property clauses and confidentiality clauses.
The intellectual property clauses must be aimed at: 1) establishing that all intellectual property rights of the created software, especially copyright, belong to the financing company; 2) ensuring that the programmers will not infringe third-party intellectual property rights (plagiarism or unauthorized use of external works) and that, in case they do, they are fully responsible for remedying such a situation; 3) granting the necessary permissions and authorizations in favor of the party who will own the software to modify, disclose, and use it without any limitation.
Confidentiality clauses are necessary because, while the work is in development, its code and the information used to create it may constitute confidential information under applicable Mexican law and may even qualify as a trade secret. For this reason, it is important to establish that all involved parties will refrain from disclosing or granting unauthorized access to third parties, regardless of whether the work is ultimately “made public” or registered with INDAUTOR’s public registry.
Finally, it is important to emphasize that it is always advisable to have the guidance of an expert intellectual property attorney, as this will reduce the risk that the company using the software faces legal claims from the authors (programmers) or, in the event of such claims, ensure that the company can successfully defend itself by holding all relevant rights.
