One of the main critical issues in the negotiation of a software development contract with self-employed workers as external consultants is the issue of ownership and therefore the delivery of the source code to the client company. Access to the source code is essential in case of need to update the software to meet new user needs or new regulatory requirements or to correct any bugs.
Generally, software development consultants tend to deliver to their clients only the object code of the software without the source code.
We remind you that the source code is the set of instructions given to the machine and expressed in programming language, while the object code refers to the same set of instructions expressed in machine-readable binary language.
However, going back from the object code to the source code is a technically complex operation (so-called decompilation) and limited by law only to particular hypotheses, such as that of guaranteeing the development of independent and interoperable software with the decompiled one (Article 64 quater Italian copyright Law 633/41).
The reason for the reluctance of software developers to deliver source codes to their clients derives from the belief that they are the owners of the original copyright on the same pursuant to Article 12 of the Italian Copyright Law 633/41 in a self-employment relationship.
However, in a recent judgment of the Court of Bologna no. 96/2020, the applicable legislation was analyzed and all the jurisprudence on the subject of ownership of copyright on the source code commissioned to a self-employed worker was reconstructed, overturning the aforementioned principle of original copyright ownership.
In particular, the reasoning of the judges of Bologna starts from the following articles of law, which constitute exceptions to the general rule of ownership of copyright originally held by the creator of the work:
Article 64 of the Industrial Property Code, according to which:
"If the inventive activity is envisaged as the object of the employment contract and paid for this purpose, the relative right of economic use belongs to the employer, in which case there is an economic use of the invention by a person other than its author originating not by the will of its author but by law ".
Art. 12 bis of the Copyright Law, for which:
"Unless otherwise agreed, the employer holds the exclusive right of economic use of the computer program or database created by the employee in the performance of his duties or on instructions given by the employer himself".
The art. 4 of Law 81/2017 (so-called Jobs Act), for which the rights of economic use relating to original contributions and inventions made in the execution of the contract belong to the self-employed worker, except in the case that the inventive activity is foreseen as the object of the contract and remunerated for this purpose. In this case, ownership rests with the client.
On the basis of the aforementioned articles of law, the Court of Bologna has enunciated the following principle of law: "in the case of creative activity of the self-employed worker, the rights of economic use of the work belong to the client, if the subject of the contract is precisely this creative activity and unless otherwise agreed ".
In conclusion, considering the above and in order to avoid any disputes with an uncertain outcome and long times, it is certainly advisable to define in a clear and exhaustive manner the ownership of IP rights in software development and implementation contracts.
Avv. Lifang Dong and Avv. Chiara Civitelli
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