Mobile Apps – Common Intellectual Property Disputes

Mobile Apps – Common Intellectual Property Disputes

Are you a mobile app developer or someone contracting with a developer to make mobile apps? Are you having issues as to who owns what when the work is done, or even before it is done? You are not alone. This article aims to set out briefly some of the common copyright disputes that arise, what the law says, and what the process is for resolving these sorts of disputes.

Common disputes about mobile apps

Increasingly these days, we are seeing more and more mobile applications (apps) being developed for many different purposes. From tax lodgment to payroll, to apps for finding a lawyer or the best restaurant, the possibilities are endless. Businesses in all sectors are attempting to provide goods and services differently, and mobile app developers are helping them do it.

Sometimes, issues may arise between developers and their clients as to who owns the underlying data while the app is being developed. A dispute might arise when the project is complete, and the client may withhold payment. Developing an app can take months and even years and often agents are involved between the client and the app developer. Clients might change their mind and decide to take a half finished app to another developer to finish the project. Clients may assert that the app, and the intellectual property therein, is theirs, and may even withhold payment to their developer until the app, typically the source code underlying it, is given to them so that the app can be taken to another (less expensive) developer to finish. But really, who ‘owns’ it?

What the law says

The first place to look for answers to this question is the Copyright Act 1968. Under section 10, a “computer program” is included in the definition of a “literary work”. Under section 32, copyright of a literary work is effective if it was made in Australia by a suitably qualified author, even if it has not been published yet. Under section 35, the author owns the work. Lastly, section 196 tells us that ownership of copyright can be assigned (‘passed on’) to someone else, but an agreement to do so must be in writing.

Case law gives us some guidance as to what happens if you don’t have a written agreement or if the agreement is silent or vague as to the ownership. They tell us that if a business client asks for the app (usually in the form of its source code) to be given to them, a term will be implied to allow this to happen. This is particularly the case where the business client is paying for the design and manufacture of the app, and where, objectively, there is no real expectation that the developer should retain the app/its source code for itself or for the benefit of a competitor of the business client.

Arguments may also be made that the app developer only has a license to the app, which essentially means that the proper owner is the business client, not the developer.

Beyond Copyright

What about after the project has finished and the invoice has been paid in full? Can ideas, formulas and know-how which the app developer gained while working on its client’s app be used elsewhere? For example, the intangible ideas, formulas and know-how gained from a tax lodgment app – can you use these when working for another client looking to develop another finance or accounting app? Can the client come back and sue the app developer for IP infringement?

Resolving your dispute

Both the Supreme Court of NSW and the Federal Court of Australia can hear disputes concerning intellectual property. The starting point is your agreement. Without a written agreement, the dispute resolution process can be both complex and expensive.

The best advice before starting work on a mobile app is to agree in writing who will own what when the work is done, and at various stages of the work’s development.

Seek Legal Advice

Whether you’re a business or an app developer, if you have having issues around your app and its creation, we can provide additional information and advice to you regarding your situation. If you would like to discuss your concerns with a legal professional please contact us on (02) 9963 9800 or at law@etheringtons.com.au

 

Trade Marks in Australia

The advantage of registering a trade mark is that it confers far more benefits than registering a business name, company name or domain name. Marketing is an important business tool, and a registered trade mark is crucial in allowing you to protect any value or credibility which you have built on your brand. 

What is a trade mark?

A trade mark identifies a product or service, distinguishing it from the goods or services of other traders. A registered trade mark protects any branding element within a business including letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures and aspects of packaging. Registration of a business name, company name or domain name does not give you that kind of protection.

Registering a trade mark allows the owner of the trade mark to commence legal action to stop others using it. Trade marks can be used to help build market position and stop others from imitating your brand.

The registration of a trade mark is effective for 10 years and can be renewed for further 10 year periods provided renewal fees are paid. 

Registration of a trade mark covers the entire Commonwealth of Australia. For worldwide protection, an application can be filed with each country in which the trade mark will be used, or a single international application can be filed through IP Australia nominating the countries in which protection is required.

Applying for a trade mark 

Trade marks are registered in specific classes relevant to the description of the goods or services for which the mark will protect. The application for registration must nominate one or more classes of goods or services for which the mark is intended to be used and associated. The more classes selected, the wider the protection that will be given once the trade mark is registered.

Before making an application to register your trade mark, the following should be considered:

  • Identify the relevant class of goods or services for which the mark will apply. Schedule 1 of the Trade Marks Regulations 1995 prescribes the available classes and describes the types of goods of services specific to each class.A search should be carried out before applying to register a trade mark to check that a similar trade mark is not already registered in that class.  An application to register your trade mark could be rejected if there is an identical or similar trade mark already registered which covers similar goods or services. 
  • Only minor changes can be made to a trade mark once an application has been filed and published.
  • A trade mark registration is for the goods and services you actually trade in or intend to trade in in the near future. Once an application is filed and registered, goods and services cannot be added. Therefore, you should clearly define the marketplace you trade in to ensure the best possible protection.
  • Your trade mark must be something that is capable of distinguishing your goods and services. Exclusive rights are difficult to register over everyday language, names and descriptions of products and services 

Once you are happy with your trade mark, you can apply to register it through the IP Australia website. You can also request an assessment of the likelihood of your trade mark achieving registration through TM Headstart.

The cost of applying for a trade mark will vary depending on the scope of the application. Generally, the minimum cost to apply is $120 for each class of goods and services. In Australia there are 45 different classes of goods and services and each additional class costs an extra $300. 

The application process

Once your trade mark is accepted, it will be advertised in the Australian Official Journal of Trade Marks and the application is open to opposition for a period of 3 months (which can be extended for a further 3 month period).

If your application is not challenged, your trade mark will be registered once the registration fee is paid (you must pay within 6 months from the date acceptance is advertised or your application will lapse).

The registration of a trade mark in Australia takes a minimum of 7 ½ months after an application is filed.

Conclusion

Applying for an Australian trade mark is a straight forward process. By investing in protecting your brand today, you can avoid the costly and uncertain exercise of preventing unauthorised use of your unregistered trade mark. We are experienced in intellectual property matters and can work with you to ensure your trade mark is registered in the appropriate class or classes, and to respond to any opposition to the proposed registration. We are also able to assist with trade mark and copyright disputes.   

If you or someone you know wants more information or needs help or advice, please contact us on (02) 9963 9800 or email law@etheringtons.com.au.

Introduction to Intellectual Property for Business

Intellectual property (IP) is the property of your mind or proprietary knowledge and can be an invention, a trade mark, a design or the practical application of your idea.

It is important that you understand how to protect IP as it is a valuable business asset and it is easier and cheaper to take enforcement action following a breach of your rights if they have been protected “up front”.

In this article we provide an overview of the different types of IP and look at the basics for protecting your IP rights.

Trade Marks

A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or a combination of these that distinguishes your goods and/or services from those of other traders.

A trade mark identifies the particular goods or services of a trader as distinct from those of other traders.

There is no legal requirement to register a trade mark, although registration establishes your legal rights to use, sell or license the trade mark or to take action against another party and prevent them from using your trade mark without permission.

If you do not register your trade mark, you will need to rely on protection through legal action, such as passing off under common law or misleading and deceptive conduct. Such an action can be difficult, expensive and time consuming.

Copyright

Copyright is a collection of exclusive rights that vest in certain types of creative work, such as written material, art, literature, music, film, broadcasts and computer programs.

A single item can contain more than one element that is protected by copyright. A website may have as copyright the text, any images and the computer coding, among other things. Each of these is protected by copyright, and it is important to identify the owner of each of these rights.

The exclusive rights granted by copyright vary depending on the nature of the material.  In general they include the exclusive right to copy the material, to publish the material and to make various other uses of it.

In Australia, copyright protection is automatic.  You don’t have to apply to register your copyright.

The owner of copyright is usually the person who created the material, although there are some exceptions to this such as where the person is an employee and the material is created as part of their employment, in which case the employer will own the copyright.

It is particularly important when selling a business to ensure that any asset in which copyright subsists is yours to sell.

Patents

Inventions that are new, inventive and useful can often be protected through patent registration.

It is important to be aware that patents protect only a specific invention and once an invention has been made public it is no longer able to be protected through patent registration.

A patent owner has the exclusive right to use, sell or license the invention. Patents also allow the owner to stop others from manufacturing, using, copying and/or selling the device or process.

There are two types of patent registration available in Australia, innovation patent and standard patent.  The process for registering a patent can often be long and complicated and professional advice is recommended.

Trade Secrets & Confidential Information

Any information that is not known publicly is confidential information.

For a business this can include customer lists, business and marketing plans, internal business processes or formulas for products.  Business ideas that have not been openly discussed can also be considered confidential information.

There is no registration process for trade secrets or confidential information, and they are normally protected via contracts, agreement and management procedures.  In general, the owner has the exclusive right to use, sell or license the IP.

Moral Rights

Moral rights are granted to the creator of material in which copyright subsists.

Moral rights are the right of attribution of authorship, the right against false attribution of authorship and the right not to have a work subjected to derogatory treatment.

Unlike copyright, moral rights are non-transferrable.  They will always vest in the creator.  As a result, a person may have moral rights in material but not own the copyright.

Designs

Designs, which are the way a product looks or a design on a manufactured product, can be registered if they are new, distinctive and have not been publicly disclosed.

Some designs can be protected by copyright, however where a three dimensional design is in industrial or commercial use copyright protection no longer applies.  In order to be protected, such designs need to be registered.

Other types of IP

Plant breeders rights are used to protect new varieties of plants by giving exclusive commercial rights to market a new variety or its reproductive material.

Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips.

Exclusive Rights & Duration

Registered IP rights usually provide you with exclusive rights. Each IP right has its own restriction in terms of duration.

Copyright protection generally lasts for 70 years. Where duration of protection depends on publication, protection is for 70 years from the date of publication, otherwise it is the life of the author plus 70 years.

Standard patents last for 20 years. Trade marks can remain in force indefinitely provided renewal fees are paid every 10 years.

Design registration protects the design for an initial period of 5 years and is renewable for up to 10 years.

International Protection

Most IP rights are territorial, meaning they have to be dealt with in each new territory where you intend to trade. For example, a patent, trade mark or design granted in Australia is not automatically granted in other countries.

Copyright is the only IP right that is automatically recognised in the global market. All other forms of IP need to be specifically assessed and approved in each country in which you intend to do business.

Australia is party to a number of international agreements, making it easier to apply for rights such as trademarks, patents and designs in other countries.

Transferability

IP rights are negotiable and can be used for commercial advantage. They can generally be bought, sold, licensed, given away or made freely and widely accessible.

Conclusion

IP is a valuable business asset. Protecting it should be standard business practice forming part of the overall business plan. Understanding the rights that exist and the methods available for protecting IP is the first step to creating greater value in a business. For more information on protecting your IP rights contact us on (02) 9963 9800 or email law@etheringtons.com.au.

Are Recipes Protected by Copyright?

Is My Recipe My Intellectual Property?

If you think your chocolate cake recipe is exceptional, or believe you’ve designed the next ‘big thing’ in the culinary world, you might want to protect your recipe. There are different types of protection in intellectual property, for example:

  • Patents
  • Copyright
  • Registered design; and
  • Trade secrets.

Can You Patent a Recipe?

A patent is a legally enforceable right granted for a device, substance, method or process that is novel, inventive and useful.

Australian Legislation

The Patents Act 1990 requires applicants to satisfy the inventiveness test, ie require an inventive step that makes the unique. The Patents Commissioner can refuse to accept a patent request because the substance is either a simple mixture of known ingredients, or is produced merely by adding ingredients together (admixture).

A patent will generally only be applicable to pseudo-scientific recipes.

Can Copyright Apply?

The Copyright Act 1968 protects original expression of ideas, but not purely the idea itself. Once an idea or creative concept is documented, it is automatically protected by copyright in Australia.

In relation to a recipe, copyright can protect a recipe documented in a book in the way it’s written, but not the way it’s made. Therefore copyright does not extend to recipes if they are for the concept of something well known and reproduced (e.g. pasta or blueberry muffins).

If you publish a recipe book you also cannot prevent others making the dish or people writing their own descriptions of how to make it. Nor can you prevent someone publishing their version of your recipe.

Can You Use a Registered Design?

If your product’s appearance is unique, it is possible to register the design. A design is what makes a product look the way it does, e.g. its shape, configuration or a notable pattern. When applied to a product these things give it its unique design. A registered design does not protect how something works.

For instance, the creators of the “stand and stuff” taco registered its unique design. This type of intellectual property is rarely applicable when it comes to recipes.

Can You Protect Your Recipe as a Trade Secret?

If you want Grandma’s secret chocolate cake recipe to stay secret, one available option is protecting it through a trade secret.

A trade secret is intellectual property that it is up to you to protect – that is, it is not registered. This is generally done by ensuring employees or distributors sign confidentiality agreements.

Examples of trade secrets include:

  • the recipe for Coca-Cola
  • the combination of herbs and spices used in Kentucky Fried Chicken.

The Coca-Cola company has used trade secrets to keep its formula from becoming public for decades. It never applied for patent protection, so it was never required to disclose the formula.

Common law provides protection for infringement of trade secrets and breach of confidentiality agreements. A trade secret, however, doesn’t provide legal protection if a competitor has an identical product. It’s also difficult to prevent departing contractors and employees from taking the knowledge with them.

Important Tip: You could include a non-compete clause in all your contractor or employment agreements, as well as asking them to sign a confidentiality agreement.

In Summary

If you want to protect your recipe as intellectual property you may have to get creative. It is best you seek legal advice to see what option will work best for you. To speak with one of our friendly solicitors please get in touch with us on 9963 9800 or email us at law@etheringtons.com.au.

Online Copyright Infringement

Social Media is Unavoidable

We’re confronted with social media in its various forms everyday. President Trump is endlessly tweeting and the person next to you on the bus is scrolling through Facebook. You may have even experienced the phone-focused pedestrian walking into you on the street. There are other social media forums such as Instagram for photo-centric posts, from beach trips to nightclub outings. The thing they all have in common is they involve posting content – text, photos and/or videos – which creates a risk of online copyright infringement.

What is Copyright?

Copyright is the right an author has over their own work. A ‘work’ can be written such as a book or article, or a piece of music, a painting, or a design such as an architectural drawing. The expression of the work is important in determining copyright, rather than the idea. For example, if you read a book about an historic event, you could also write a book about that event. Copyright would, however, prevent you from copying sections of the original book as your own. In the same way you cannot use someone else’s photo of a landmark without their permission, but you may take your own photo of that landmark to use online.

Furthermore, it’s important to note that copyright does not relate to an idea. If you come up with a novel idea, someone else could still write about that idea as long as they didn’t copy your explanation of it. To have the protection of copyright, the ‘work’ must be sufficiently distinctive in its expression.

Are You Infringing Copyright on Social Media?

On a commercial level, it’s commonplace for businesses to ask to be ‘liked’ or ‘followed’ on social media. To gain and maintain a social following you need to provide valuable content to your audience. If this content is not purely your own, you might be infringing copyright.

Let’s take images as an example. Because copyright can exist in photos, posting someone else’s photos without their permission on social media is likely to infringe copyright. The owner – usually the photographer – has copyright over the photos. Companies such as Getty Images and Shutterstock sell photos online. When you purchase an image from them, you are purchasing the right to use the image. Therefore to avoid infringing copyright online you should consider purchasing the rights to images, or taking your own photos.

The Consequences of Copyright Infringement

There are serious consequences if you are involved in copyright infringement. If you are posting on social media on behalf of your company, the ramifications can apply to both you and your employer. The owner of the content could sue you, leaving you liable for damages and legal costs. Your employer could terminate your employment, due to the reputation damage it has caused.

According to the 2017 Sensis Social Media Report, 79% of Australians are active on social media. If we look globally, there are 2.46 billion social media users according to Statista. Social media is so widespread that publishing content without permission may easily come to the attention of the copyright owner. Accordingly, you should keep copyright in mind if you are tempted to plagiarise a written piece or use an image or piece of music created by someone else.

Get in touch for copyright or social media advice for your situation.

Copyright Across the Pacific

Earlier this year a Los Angeles Court handed down a decision that the rock n’ roll band Led Zeppelin did not breach copyright in their 1971 song ‘Stairway to Heaven’. The song, being arguably their most famous and iconic song, (the staple for guitar playing teenagers) was alleged to have copied the famous flat-picked arpeggio chord progression from a lesser known song (and band) ‘Spirit’ by Taurus. Led Zeppelin argued that the chord progression was so common, that it had been used for hundreds of years, and it was a matter of coincidence that they sounded similar. The jury agreed and the legacy of the song remained.

This case brings to mind another case involving an iconic Australian song, a mainstay of the local pub sing-along, ‘Down Under’ by Men at Work. In February 2010, the Federal Court of Australia found that the song copyrighted another iconic Australian song ‘Kookaburra’. Throughout ‘Down Under’ a flute riff is played, which was found to contain the same harmony and notes as ‘Kookaburra’. Men at Work claimed that it was a coincidence, and they did not have the intention of copying the melody. The Court disagreed and found that the melody of ‘Kookaburra’ and the flute riff played during ‘Down Under’ were substantially similar.

The test for establishing copyright involves a two stage test: the resemblance between the infringing work to the copyrighted work; and the causal connection between the two. Once these two steps have been satisfied, the question then turns to the value of what is taken, rather than the amount.  To determine this it will be the facts around the alleged infringement. The circumstances particular to a case is something that would be best discussed with a solicitor, as they will be able to gauge the likelihood of your claim succeeding.

If you suspect that a work you have created has been infringed upon, then it is important to contact a solicitor that knows about copyright law and understands the balance between concept of artistic freedom, and on protecting the rights of an artist.