Even though they are a relatively recent phenomenon, mobile apps became an inalienable part of our day-to-day experiences. The study of Newark-French already ten years ago found that consumers spend more time with mobile apps than on the web. Today, in 2021, it is safe to say that this is certainly the case. To give you an idea of the speed of mobile app “evolution”: the iOS App Store was launched in 2008 with only 500 apps and last year alone, had 400.000 new apps added, bringing the total to 4.3 million.
As a company or an individual planning to put your mobile app on the market, you probably know that there are no legal protection requirements for doing so. Nevertheless, it is in your best interests to consider the available options to ensure that your investments are duly protected. Some of these options do not require formal “activation”, like, for example, copyright in Europe; some others call for a series of actions before you can benefit from them. In what follows, I will sketch the most frequently used legal mechanisms to protect a mobile app.
First of all, COPYRIGHT.
In Europe and many other countries, signatories of the Berne Convention, an “automatic protection” principle applies. That means that copyright protection exists automatically from the moment a qualifying work is fixed in any tangible medium and does not call for any additional registration to benefit from copyright protection.
It is important to stress, however, that:
The idea, as such, is not protected by copyright. Only the actual realization of that idea, its particular embodiment, is.
In other words, to get copyright protection for your app, you need to start effectively creating it. When it is only in your head, this idea does not qualify for copyright protection.
Another important caveat to always remember with copyright is that since there is no formal registration, there is a requirement to prove the copyright existence in case of a conflict. A possibility available to the companies here is a depot service with some national and international patent and trademark offices. In Benelux, for example, there is an iDepot, while at the WIPO, one can get a WIPO Proof. In essence, this is a date- and time-stamped digital fingerprint, which proves the existence of the particular digital item at a specific point in time. In the case of a mobile app, it might be, for example, a detailed description of the concept and the working specifics of your app described in a document. Should there be any disputes about who has been the first to come up with this concept, such proof would come in really handy.
The second (and very important!) protection mechanism to use is having well thought-through and properly drafted CONTRACTS.
Which contracts you will eventually need will depend on your particular situation. However, when you intend to bring a mobile app on the market, you will probably have a team working on it, and very likely, involving external resources. Thus, at the outset, as a minimum, you would need an NDA. An NDA, or a non-disclosure agreement, is a crucial first step before, for instance, engaging an app developer to work on your project.
Then, of course, an actual cooperation agreement (app development agreement, or whatever you call it).
Aside from defining the expectations, obligations, and rights of both parties, such an agreement has to address two other fundamental issues:
- From a copyright perspective, the one who creates an app, thus an app developer, is the owner by default (there are nuances if an app developer is your employee). Therefore, you need to agree on copyright matters. If you want to have copyright for yourself, you need to foresee that your app developer explicitly assigns copyright to you.
- Besides, maybe certain things about your app you would rather keep secret at all times. To invoke TRADE SECRET protection, you are, among others, required by law to take reasonable steps to protect the secrecy of the information. In this sense, clear and detailed provisions in the agreement with your app developer defining which information is considered a trade secret and what are your expectations in this respect would be an essential part of such “reasonable steps” (and no, an NDA is not enough here).
Next, your app will not go into the world nameless.
As a minimum, you will need a name and an icon to distinguish your mobile app in the app store. Before you start investing in marketing, it makes sense to ensure that these assets are effectively your company’s assets. To do so, you need to register them; and there two possibilities of registration exist:
The first one is a TRADEMARK.
If the name of your app and its logo (icon) is not overly simplistic or generic, you might register them as trademarks. There are many considerations concerning the name and logo of an app. This is, certainly, to be looked at on a case-by-case basis, yet, for instance, one-letter icons or icons in the commonly used colors would generally lack the required distinctiveness to be registered as a trademark (apps like Netflix do not count, because that’s a well-known brand already).
The second option one has for protecting an app icon is a REGISTERED DESIGN. The beauty of the registered design is that it offers a possibility to not only protect the icon of your app but also, for instance, the look of your app’s interface.
The interface is, of course, protected by copyright, however, worth remembering that the registered design is a registered right. In case of a conflict, if you have a registered design, it will be much easier to prove that you were the first to create it.
Another IP protection mechanism that might be relevant for you and your app is a PATENT.
While it is common knowledge that computer software is not patentable in European Union, it is in fact, a generalization. Thus, before you knock off patent protection as inapplicable, it makes sense to discuss the matter with a knowledgeable patent attorney. It could very well be that something about your app could still be eligible for patent protection. There might have been purely technical problems (e.g. related to battery life or data consumption, or else) solved by novel, technical methods. Should that be the case, there is a good chance for patent protection as well.
Finally, your app will most likely collect data and order it systematically or methodically in the process of its functioning. In this case, DATABASE RIGHTS are relevant for you. These sui generis rights (available in several jurisdictions, the EU included) are comparable to copyright, even though the creative element is missing.
As a side note: where there is data collection and processing, one cannot forget the General Data Protection Regulation’s (GDPR) REQUIREMENTS. Failure to comply with the GDPR could cost you a lot, so certainly, do not neglect it.
All the above-described form a very general sketch of the possibilities that exist to protect diverse rights vested in your mobile app. However, these matters are country-specific, so the best advice I can give is to arm yourself with knowledge of what might be possible, though discuss the specifics relevant for your business and your country of operations with a trusted legal advisor.
I would like to leave you with this:
The whole IP Universe could – and should – be put to work to protect your new amazing mobile app. Yet, for this Universe to work for you, most of the time, you need to reflect on it and take the necessary steps to activate it. So please do.
About the blogpost author:
Maria is a partner with Starks, a niche IP and International trade law boutique in Ghent, Belgium. She is a Latvian Patent and Trademark Attorney, European Trademark and Design Attorney, as well as European Mediator in civil and commercial cross-border disputes for almost two decades. Her main areas of expertise are IP strategy, contracts, and alternative dispute resolution. She is also a mediator and art law expert on the list of the Court of Arbitration for Art (the Hague), and the Mediator on the WIPO ADR Centre’s List of neutrals.
For more information about Maria’s firm, Starks: IP and International Trade law, please visit https://www.starks.be/en/