Developing an app for a mobile device is not unlike other types of software development. Thought should be given to protecting patents, copyrights, trade marks and trade secrets that might be embodied in the app, with some special considerations for user-developed content and third-party software agreements.
Own the copyright in your own app
Perhaps the most common pitfall is when companies hire outside contractors to develop an app – or any other software – based on specifications and/or functionality provided to the contractor by one or more employees of the company. There is nothing inherently wrong with this approach, as long as your vendor contracts include both a so-called work for hire clause and an assignment clause. That is, to the extent the software can be considered a work made for hire under US copyright law (which is not always the case), the contract says so, and to the extent the software is not considered a work made for hire, then the contractor assigns his or her rights in the software's copyright(s) to the company. Also, confirm that your developer does not use open source software in the app if you want to retain exclusive control over your source code. You are of course free to release an open source app, just make sure you do so willingly, and not as the result of your contractor or employees including source code in the app that is subject to an open-source licence agreement.
Check the app's name does not infringe
Yes, this seems obvious, but you would be amazed at how many companies release products without first checking to see if someone else already has a trade mark registration or product with a similar name. It's a lot easier – and a lot less expensive – to change your product name before the product is launched, rather than wait until you get a nasty cease and desist letter from an upset competitor. You can do basic trade mark searches yourself at the USPTO website or seek the assistance of outside counsel if you have more complex questions. You can even search trade marks on your mobile device using apps such as Banner & Witcoff's IP Lawyer or Nomina.
My app is super special. Can I do more?
Yes! If your app is innovative and provides a feature or technique that is new and non-obvious to a person of ordinary skill in the art, consider applying for a patent. The patent process may cost $30,000 or more over the course of three or more years, but the scope of protection is quite broad and may just allow you to corner the market for your invention, so be sure to discuss the pros and cons with a patent attorney. Also, before applying for a patent, consider whether your invention is readily apparent to someone using the app. If not, consider keeping your invention as a trade secret instead of applying for a patent.
While the above points cover the major IP issues, also be sure to check any third-party developer agreements (for example, Apple has a lengthy agreement associated with its iPhone developers programme) that might place restrictions on what you can and cannot do with your app on a given platform. Lastly, give some consideration to whether users of your app are able to upload content of any kind and, if so, discuss with your counsel how to handle the IP issues raised in such a situation. With a little planning and foresight, you can ensure that your company owns the IP in your app without inadvertently giving away the family jewels.
||Ross Dannenberg |
Banner & Witcoff
you should strongly consider trade marking your app name if it is in any way unique. The app business is cutthroat, and if you have any reasonable success, a dozen or more businesses will adapt your idea and use minor variations on your app name to try to capture the attention of the masses (iFart, iShoot, or Doodle Jump are examples of this). Conversely, before naming your app, you need to do a trade mark search yourself so that you don't have to rename your app later. Apple, for instance, takes trade mark infringement very seriously, and if you are in violation of someone else's trade mark, your app will get pulled from the AppStore. In one case, the creators of an app had to rename their product after receiving a cease and desist letter from a major toy company demanding that they immediately remove their top-selling app from the AppStore. This was a major setback to their business, as they already had more than a million downloads and a significant fan base.
Regarding copyright, Apple does a reasonable job of preventing app piracy. While piracy cannot be prevented completely, they have set the technical bar high enough that the average user cannot easily pirate software. Developers are doing well in spite of the piracy that does exist. Much more important is that you understand the basics of using third-party software in your app. If you use a commercial platform, be sure that you thoroughly understand the licence you are agreeing to. Fortunately, most open source projects adopt standard licences such as Creative Commons that have ample web resources for learning more about what they mean for you. Nonetheless, be sure that your developers keep track of all third party software they use.
Clients often ask whether I think they should patent their app innovations. This really is a question of tradeoffs between budget, features, and time to market. While a patent does protect an invention, obtaining one may not be worth the time and money in many cases. Even a provisional patent takes time to draft correctly. The mobile app market moves at breakneck speed. Most apps are created on a limited budget with an aggressive deadline. The question I ask my clients is: "If you were to spend an extra $40,000 on your app, which is more valuable to the business – patent protection or $40,000 of improvements to the app?" There are certainly cases where the patent protection is worth it, but most of my clients choose not to patent the work when confronted with this choice.
The main difference between apps and other software is that budgets are often smaller, and timelines more aggressive. Be sure to think of the time and money spent on intellectual property protection in the overall context of the business case for your app.
||Christopher Z Garrett |
The in-house counsel
The demand for new mobile solutions has attracted a diverse community of software developers and a wide range of mobile content. Many legal concerns should be considered, depending on the nature of the mobile application and the company for which it is made. Start-up companies and moonlight programmers who develop paid applications will face different issues than household brand names, such as airlines and media outlets, who are merely seeking to enhance their core business via the mobile medium. Intellectual property concerns generally fall into three categories.
Understand licensing and ownership arrangements
Developers typically need to sign a distribution or publishing agreement with the application stores. Most of those agreements include licences from the developer to the application store or the right to distribute the application. The developers retain any underlying IP and remain responsible for registering, maintaining, and enforcing their IP. In addition, most arrangements include limited trade mark licences which allow the application store to promote a particular application, or conversely, allow the developer to promote the application as available in a certain outlet. While these clauses are meant to be mutually beneficial to the application store and the developer, this may be a problem for the very discerning trade mark holder.
Perform IP clearances
As with any new product or service, clearance is a major concern. Developers need to perform appropriate IP searches to ensure that the brands and technology incorporated in the application do not infringe the IP rights of third parties. The distribution agreements with the application stores will contain warranties of non-infringement and/or indemnities to the application stores if the application infringes third-party rights. The clearance process should carefully examine whether IP related to software on personal computers extends to similar software on mobile devices. For example, counsel should analyse whether a patent for travel-booking software on a PC precludes similar travel-booking software on a mobile device. Most application stores allow the developer to choose the jurisdictions in which the application will be distributed, thus enabling any necessary geographic restrictions.
Prepare for piracy
A mobile application is another form of digital content which is vulnerable to piracy. The hacker community finds ways to copy, unlock, or jailbreak most applications. This will be a particular concern to developers of paid applications, who plan to rely on authorised downloads for their primary source of revenue. Developers should anticipate these threats and design business models which reduce the negative effects of piracy. For example, they should avoid agreements with subcontractors which include per download fee arrangements. There may be many illegal free downloads that would increase the developer's out-of-pocket expenses while not increasing revenue. Developers should also choose carefully an end-user licensing and verification strategy.
Hacked content will appear on torrent sites and peer-to-peer file sharing forums. Developers will need to familiarise themselves with the US Digital Millennium Copyright Act (DMCA) practices so that they can remove infringing copies. Many developers will need to fully understand the DMCA anyway, especially if their applications involve user-generated content, such as photo sharing capabilities. Those developers will need mechanisms that allow third parties to report abuses as well as a system to respond to take-down notices.
||Brendan Reilly, legal counsel|
Nokia legal and intellectual property