With increasing consumer demand for mobile applications or “apps” (and hundreds of thousands of third-party apps available for download through application distribution platforms such as the Apple App Store and Google Play), it comes as no surprise that many developers are seeking to enter this market. An app developer may encounter a number of intellectual property issues in developing and selling their product.

This article outlines some basic intellectual property issues and related  precautionary measures that app developers may wish to consider.

Scan your app for copyrighted works and third-party trademarks.  If you include in your app any images or videos that you did not create, whether originating on the Internet or elsewhere, you could be violating copyright in those works unless you have obtained permission to use such works from the copyright owner. Similarly, if you include any brands, logos or labels in your app, you could be infringing others’ trademark rights.  Avoid use of these elements to reduce your liability for copyright or trademark infringement.

Choose a unique name for your app.  In many cases your app’s name will serve as a trademark to distinguish your app from those of your competitors.  Before deciding on a name, conduct trademark availability searches.  Avoid choosing a name that is similar to the name of another app or similar product or service.  Generally, the more distinctive your app’s name, the easier it will be to protect as a trademark.  It is more difficult to protect as a trademark an app name that is simply descriptive of the goods or services, or the name of a person or a geographic location. 

Register your app name as a trademark.  Trademark rights in an app’s name may be as valuable as the substantive elements of the app itself.  To protect against competitors who wish to capitalize on the goodwill associated with your app, obtain trademark registrations for your app’s name in the countries in which you require protection. 

Improper use of open source code may have consequences.  The use of open source code is subject to the terms of the license agreement attached to the open source code.  Before including any open source code in your app, consider whether the applicable license terms are consistent with your business objectives and intellectual property strategy. Some open source licenses are “reciprocal” licenses which permit you to distribute your app containing the open source code but only if the app is distributed under the same open source license conditions.  Some open source licenses, such as the widely used GNU General Public License, require you to make the source code of your app available to your app’s users.  Even though open source code is publicly available, non-compliance with any open source license terms could expose you to liability for copyright infringement.

Consider patenting your app.  Copyright protects against others copying your app without your permission. Copyright does not protect the ideas embodied in your app, but is limited to a developer’s specific implementation of a function, leaving others free to write their own implementation of the same function.  If your app accomplishes functions which are both new and inventive, you may be able to obtain broader intellectual property protection for your app by patenting these functions.  It is better to file a patent application before releasing or otherwise publicly disclosure of your app, since valid patent protection is not obtainable in most countries if the application is filed subsequent to any public disclosure. The article “Intellectual property protection for software: A comparison of copyright and patents as applied to computer programs” also in this newsletter contains a further discussion of patent and copyright protection for software.

By Amy M. Fong and Laura Kasian