Know Your App Rights!

So what intellectual property is contained within a mobile App and how do you stop others from using it?

Gartner estimates that by 2016, there will be more than 300 billion apps downloaded annually. That’s almost 10 times the amount being downloaded a year ago. Rovio, the company behind the Angry Birds franchise, generated $106.3 million in revenue in 2011 and hit 648 million game downloads. So it’s no wonder your business may be spending a great deal of time and money developing a mobile App. And, just like any other business asset, you want to protect it.   If you have been following the development of the App market, you will be aware that it can be just as litigious as any other element of the software market.

Big name games such as Words with Friends and the aforementioned Angry Birds have all been sued in the last couple of years over claims that they have infringed third party intellectual property.  So, what can you do to reduce the risk of being hit with a claim, especially when you are starting out? Or, if your app is growing in market share, how can you stop 3^rd parties “borrowing” from your app?   Your mobile App will have a whole range of IP rights that will protect different aspects, including the software, the artwork, the new industrial application and the quirky name used to advertise it, just to name a few!   Here we provide a checklist of the top 3 intellectual property rights vital to any App.
Copyright

Elements of your App may be protected by copyright.  Firstly, original source code in computer software will be protected by copyright as a “literary work”.  Secondly, original work in the visual element of the user interface, “GUI” or any artwork contained in your App will also be covered by copyright law as an “artistic work”.  Copyright will also subsist in the original source code and visual elements of the App for the life of the developer, plus 70 years from the year in which he or she dies.   In the United Kingdom copyright is free and automatically arises on creation of the work. You do not need to register for copyright in the UK (there are different rules in the US).  Keep any preparatory work and ensure that you have a version of the App which shows when it was created. This may be very helpful in an infringement case.  If you are not creating all the elements of the App yourself, you will need to ensure that there is an assignment or licence in place between you and the third party creator and/or owner. Where you’ve obtained a licence to use copyrighted works, you will need to be aware of the licence terms and make sure you do not breach those terms.  Generally speaking, the wider and less restrictive the licence terms, the better!
Software Patents

A patent in the UK may only be granted in respect of an invention if the invention is (a) new, (b) involves an inventive step, (c) is capable of industrial application and (d) is not specifically excluded from protection as a patent.   To a large extent, computer software is excluded from patent protection in the United Kingdom.  However, as an App developer you need to know that it is possible for computer programmes to be patented, albeit under certain criteria. One important criteria will be the nature of the contribution made by the inventor.   A patent will only be granted to “new” inventions.  It is critical that the invention must not have been made available to the public before your patent application has been filed. If you think your App could be patentable, you’ll need to get it assessed and if appropriate prepare an application for a patent.   Also, be aware that the US and Japan have very different patentability rules to the UK and Europe.  They tend to allow a wider range of computer programmes to be patented.   In respect of patent infringement, Apps have become a booming area for litigation. Rovio, for example, were sued for infringing a licensing company’s patents in respect of the method used to buy new levels inside the game. This will be something to consider, particularly if you are aiming at an international or US focused market.
Trade Marks

We’ve talked a lot about how useful trade marks can be.  Like any business, the brand can be what distinguishes you from competitors and build consumer loyalty and business.   Try not to get too fixed on one “got to have” name and try to come up with a short list of 3 or 4. Ideally, from a trade mark perspective, these will all be distinctive and may even use made up or foreign words (going back a bit into the gaming world, an example would be “Tekken” which is a Japanese word with no meaning in English, other than the name of the game, or “Google” which was completely meaningless to most people prior to the rise and rise of the search behemoth).   Once you have decided on the name for your App, you should perform some searches to check if the name isn’t already being used, for example using:

• Google (or another search engine);
• the Apple “AppStore” or Google’s “PlayStore”;
• On the UK’s Intellectual Property Office website (www.ipo.gov.uk),

the latter being the most important when verifying whether the name has been trade marked. However, beware that even if your searches do not produce any results, this does not mean that you do not risk an infringement of someone else’s trade mark, as they can easily slip through the net.   If you are contacted by another business alleging infringement you should contact our disputes team as soon as possible.
Conclusion

Apps have been a democratic way to enter the software business.  It can be relatively cheap, quick and easy to develop a simple App and put it on the store.  This guide isn’t intended to stop that entrepreneurial spirit, but simply to highlight a couple of the issues that are cheaper (and easier, and quicker) to consider before launch and hopefully avoiding the wrath of a lawyer’s letter landing in your lap.   If you want to discuss any of the above issues, contact the intellectual property team here at Waterfront on 020 7234 0200, or e-mail info@waterfront.law.