By Richard Stobbe

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 background.

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

1. The Source Code shall initially only be made available for inspection and not produced except in accordance with the order;
2. The Source Code is to be kept in a secure location at a location chosen by the producing party at its sole discretion;
3. There are notice provisions regarding the inspection of the Source Code on the secure computer;
4. The producing party is to test the computer and its tools before each scheduled inspection;
5. The receiving party, or its counsel or expert, may take notes with respect to the Source Code but may not copy it;
6. The receiving party may designate a reasonable number of pages to be produced by the producing party;
7. Onerous restrictions on the use of any Source Code which is produced;
8. 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 the order.

A Delaware court has since ruled that VideoShare’s two patents are invalid because they claim patent-ineligible subject matter.

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