| It's the iPhone Application developer's worst (and | | | | does afford several distinct advantages: |
| increasingly justified) fear: Spending significant time, | | | | Registration is required to bring an infringement suit. |
| money, and resources building an app only to have it | | | | Registration within five years of publication creates a |
| rejected, or worse, pulled from the App Store for | | | | presumption of validity of the copyright and the |
| alleged legal violations. | | | | facts contained in the registration certificate. |
| Carefully navigating the legal landscape in which app | | | | Presumptive validity can be of critical importance |
| development operates is therefore essential to launch | | | | when seeking a preliminary injunction or temporary |
| and maintain a successful Application. Prudence | | | | restraining order requiring the copyright infringer to |
| dictates being mindful of the common legal pitfalls to | | | | cease and desist. |
| iPhone application development before and during the | | | | Registration prior to infringement allows for the |
| development process - and not after - when it is | | | | recovery of attorney fees and statutory damages. |
| oftentimes too late. | | | | (Because actual damages are often difficult to prove, |
| By examining the iPhone SDK Agreement, Apple's | | | | the owner of a copyright may elect to recover |
| End User License Agreement, and federal copyright | | | | instead an award of statutory damages in an amount |
| and trademark registration, this article provides an | | | | between $750 and $30,000, as the court deems just. |
| introductory overview of the common legal issues | | | | The court may increase this amount to $150,000 for |
| surrounding iPhone Application development, and the | | | | willful infringements.) |
| measures developers can adopt to minimize liability | | | | Where a computer program containing trade secret |
| and maximize protection of their intellectual property | | | | materials is being registered, the Copyright Office |
| rights. | | | | allows you to deposit source code with the trade |
| The iPhone SDK Agreement | | | | secret information redacted, or to deposit a |
| Apple's iPhone SDK Agreement imposes several | | | | combination of source code and object code, with up |
| significant legal requirements, the most notable of | | | | to 49 percent of the source code blacked out. |
| which include: | | | | Where an applicant is unwilling to deposit source code |
| Privacy laws: Developers are required to comply with | | | | (even with portions blacked out), he or she may |
| all state, federal, and international privacy laws | | | | deposit object code only, but must state in writing |
| regarding user data collection, and picture or voice | | | | that the work as deposited in object code contains |
| capture. Accordingly, personal information collected | | | | copyrightable authorship. |
| from a user may not be disseminated without the | | | | Because of the difficulty in reading object code, |
| user's consent; the unauthorized use of a user's | | | | depositing your program in this form will generally |
| name or likeness for gain is prohibited; and a user's | | | | protect any trade secrets contained in your code. |
| voice may not be recorded absent a conspicuously | | | | However, because the Copyright Office cannot read |
| displayed notice indicating that a recording is taking | | | | the object code to determine if your program |
| place. | | | | constitutes an original work of authorship, your |
| Copyrights in music and content: Any music | | | | program will be registered under the Copyright |
| incorporated into your Application must be wholly | | | | Office's "rule of doubt," and you will accordingly lose |
| owned by you or licensed to you on a fully "paid-up" | | | | one of the primary benefits of registration - that is, |
| basis. (Such a license should provide that the | | | | the presumption that your copyright is valid. |
| one-time, lump-sum payment is final, and that you | | | | PRACTICE POINT |
| are released from any and all further payment | | | | Who owns the copyright for Applications created by |
| obligations to the Licensor, no matter how successful | | | | an employee or independent contractor? Under the |
| the Application becomes.) Further, any and all content | | | | "work-for-hire" doctrine, there is a rebuttable |
| in your Application must be owned by you, or be | | | | presumption that the copyright in a work created by |
| used by you with the owner's permission. If you are | | | | an employee acting within the scope of his or her |
| using content other than music by virtue of a license, | | | | employment vests in the employer, absent an |
| the license should state the royalty terms, if any, | | | | agreement to the contrary. However, an independent |
| resulting from any and all sales of your Application. | | | | contractor generally maintains the rights to his or her |
| Objectionable content and materials: Applications may | | | | creation, unless the parties agree in writing that the |
| not contain any obscene, pornographic, offensive, or | | | | work is considered one for hire. Best practice: Get it |
| defamatory content, or other content that Apple | | | | in writing! |
| deems objectionable. What is "objectionable" is a | | | | Trademark Registration |
| matter of Apple's reasonable discretion; legal | | | | A trademark is any word, name, symbol, or device, |
| challenges to a rejection of your Application on this | | | | or any combination thereof, that identifies to |
| basis will prove difficult. | | | | consumers the source of a product, and allows |
| Free and open source software: Applications that | | | | trademark owner to distinguish their products from |
| include Free and Open Source Software (FOSS) must | | | | the products manufactured or sold by others. |
| comply with all applicable FOSS licensing terms. The | | | | Federal registration of your trademark confers |
| SDK Agreement also requires (perhaps superfluously) | | | | several important advantages: |
| that your use of FOSS may not in any way infect | | | | Exclusive use of the mark for particular goods and |
| the SDK itself. | | | | services on a nationwide basis. (Note: Without federal |
| NOTE | | | | registration, an owner's right to use a trademark is |
| Due to its "viral" nature, you need to be careful when | | | | limited to the actual geographic area of actual use of |
| using open source code that is subject to a | | | | the mark.) |
| restrictive open source license if you want to safely | | | | Access to the federal courts to enforce your rights, |
| incorporate it into your proprietary software. For | | | | including double or triple damages in the event of |
| instance, the terms of the GNU General Public License | | | | willful infringement (which is presumed if the infringed |
| (GPL) require that any derivative work that | | | | mark was on the federal principal trademark register). |
| incorporates GPL code must itself be subject to the | | | | Constructive notice of trademark protection, and |
| GPL, thereby rendering the resulting software "open" | | | | prima facie evidence of the registrant's ownership |
| and the source code publicly available. Not only will | | | | and exclusive right to use the mark. |
| any trade secrets contained in any code carrying a | | | | Right to achieve "incontestable status" after a period |
| GPL license be forcibly disclosed, others may freely | | | | of five years of continuous use, thereby reducing the |
| copy and distribute your source code, give it away | | | | ability of infringers to challenge the validity of the |
| for free, or even create a competing product using | | | | mark on the basis that it is not sufficiently distinctive. |
| your own code. The viral nature of restrictive open | | | | In selecting a name to be trademarked, it is |
| source licenses can have a devastating impact on | | | | important to adopt a strong (or distinctive) mark, as |
| your company's intellectual property assets. | | | | the level of protection against infringement of a |
| End User License Agreement | | | | trademark varies according to the "strength" of a |
| Applications made available through the App Store | | | | mark. Generally, "arbitrary" and "fanciful" marks enjoy |
| are subject to Apple's Licensed Application End User | | | | the greatest protection, whereas "generic" marks are |
| License Agreement ("EULA"), unless the end user | | | | not registrable, and can therefore never achieve |
| enters into a valid EULA with the developer. | | | | federal protection. Apple, in referring to computers, is |
| The following provisions of Apple's EULA are of | | | | an example of a strong (here, "arbitrary") mark |
| special note, and should be adopted should you use | | | | because the word "apple" bears no relationship to the |
| your own EULA: | | | | product or service the mark represents. On the other |
| Disclaimer of warranty: This provision states that the | | | | hand, the term computer in the software industry is |
| Application is being provided "as-is," without any | | | | irretrievably generic and would never be afforded |
| express or implied warranties regarding the | | | | trademark protection. |
| Application's quality, performance, effectiveness or | | | | Together with copyright registration, trademark |
| reliability. In those jurisdictions where disclaimers of | | | | registration should be considered as an additional step |
| warranty are enforceable, such a provision protects | | | | to protect your intellectual property rights in any |
| the Licensor from potential legal claims arising from | | | | Application you develop. |
| the use of the Application, as the Licensor makes no | | | | PRACTICE POINT |
| promises of any kind. | | | | Even if you chose not to trademark your Application, |
| Limitation of liability: This provision protects the | | | | a thorough trademark search should be still |
| Licensor from liability for personal injury, loss of | | | | conducted to avoid inadvertent infringement. A |
| profits, loss of data, or other direct and indirect | | | | number of Applications have been removed from the |
| damages arising from the use of, or the inability to | | | | App Store on the basis that they allegedly infringed a |
| use, the Application. This provision additionally places | | | | pre-existing trademark. |
| an upper dollar limit on the total damages for which | | | | Conclusion |
| the Licensor may be liable, excluding damages for | | | | While it is impossible to predict every potential legal |
| personal injury in those states where such a limitation | | | | issue that an iPhone Application developer may |
| would be unenforceable. | | | | confront, the most common pitfalls can certainly be |
| Copyright and Trademark Protections | | | | avoided. |
| Both copyright and trademark registration are | | | | A proactive legal compliance strategy, implemented |
| relatively affordable means to protect your | | | | early on as part of the development and |
| investment in your software. | | | | pre-development process, should be adopted to |
| Copyright Registration | | | | reduce legal risk and strengthen protection of your |
| As a matter of law, copyright protection subsists in | | | | intellectual property rights in your Application. |
| original works of authorship fixed in any tangible | | | | NOTE |
| means of expression. The exclusive rights of | | | | The information contained herein is not intended to |
| reproduction, adaptation, and distribution are | | | | constitute legal advice or a legal opinion as to any |
| conferred automatically upon the owner of a | | | | particular matter. The contents are intended for |
| copyright as soon as his or her work is written. | | | | general information purposes only, and you are urged |
| Although registering an Application is not a | | | | to consult with an attorney concerning your own |
| prerequisite for copyright protection, registration | | | | situation and any specific questions you may have. |