A developer's source code is considered the secret recipe of
the software world – the digital equivalent of the famed
Coca-Cola recipe. In Google Inc. v.
Mutual, 2016 BCSC 1169 (CanLII), a software
developer sought a protective order over source code that was
sought in the course of U.S. litigation. First, a bit of
This was really part of a broader U.S. patent infringement
lawsuit (VideoShare LLC v. Google Inc. and YouTube LLC)
between a couple of small-time players in the online video
business: YouTube, Google, Vimeo, and VideoShare. In its U.S.
complaint, VideoShare alleged that Google, YouTube and Vimeo
infringed two of its patents regarding the sharing of streaming
videos. Google denied infringement.
One of the defences mounted by Google was that the VideoShare
invention was not patentable due to "prior art"
– an invention that predated the VideoShare patent filing
date. This "prior art" took the form of an
earlier video system, known as the POPcast system.
Mr. Mutual, a B.C. resident, was the developer
behind POPcast. To verify whether the POPcast
software supported Google's defence, the parties in the
U.S. litigation had to come on a fishing trip to B.C. to compel Mr.
Mutual to find and disclose his POPcast source code. The technical
term for this is "letters
rogatory" which are issued to a Canadian
court for the purpose of assisting with U.S. litigation.
Mr. Mutual found the source code in his archives, and sought a
protective order to protect the "never-public back end Source
Code files", the disclosure of which would "breach my
trade secret rights".
The B.C. court agreed that the source code should be made
available for inspection under the terms of the protective order,
which included the following controls. If you are seeking a
protective order of this kind, this serves as a useful checklist of
reasonable safeguards to consider.
Useful Checklist of Safeguards
The Source Code shall initially only be made
available for inspection and not produced except in accordance with
The Source Code is to be kept in a secure
location at a location chosen by the producing party at its sole
There are notice provisions regarding the
inspection of the Source Code on the secure computer;
The producing party is to test the computer
and its tools before each scheduled inspection;
The receiving party, or its counsel or
expert, may take notes with respect to the Source Code but may not
The receiving party may designate a
reasonable number of pages to be produced by the producing
Onerous restrictions on the use of any Source
Code which is produced;
The requirement that certain individuals,
including experts and representatives of the parties viewing the
Source Code, sign a confidentiality agreement in a form annexed to
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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