By: Michael Balascio and Michelle Rutherford
Legal Corner is a recurring column in Silicon Bayou News, featuring a discussion of legal issues relevant to entrepreneurs and start-ups. Legal Corner is authored and edited by Michael Balascio and Michelle M. Rutherford, associates at the New Orleans-based law firm Barrasso Usdin Kupperman Freeman & Sarver, L.L.C. Michael and Michelle have significant experience advising small companies and start-ups with strategic and legal decisions. They are both licensed to practice law in Louisiana – with Michael also licensed in Massachusetts and New York, and Michelle in California.
One of the most important steps any company can take is to protect its assets. Intellectual property assets, such as applications, are no different from any other asset and deserve equal protection. In many cases, an app is your company’s only asset. Even if the app is not yet fully developed or functional, you can take steps to protect it and ensure no one else will profit from your hard work. Below are considerations and steps you can take now to gain that protection.
Here are the three main types of protection that might be available for your app:
Congress’ power to grant copyrights and patents is written into the United States Constitution. A copyright protects “original works of authorship,” whether published or unpublished. For an app, a copyright will protect the underlying code. Once the code is written down (whether on a computer or paper), the copyright automatically attaches. However, to enforce a copyright, you must register the written code with the Copyright Office. Once you have a copyright, you can issue licenses for your code; it’s officially your intellectual property.
If you’ve used open code to create your app, you cannot register the open code as part of your copyrighted work. Make sure to note any portion of your code that uses open source code in your copyright application. The ensuing copyright you will receive will only cover the portions of the code that are your original work.
To be copyrightable, the source code must be your own, original work. If you’ve licensed source code from another developer, the same restriction that applies to source code applies to licensed code. Make sure to honor any contractual obligations you have to the other developer in using her source code.
Here’s some helpful information from the Copyright Office on the application process, specifically dealing with computer programs like apps: copyright.gov/circs/circ61.pdf
You’ve probably often heard that you can’t patent or copyright an idea. That’s true. A copyright protects the written work in the form it was written and prevents others from copying that written work, making money off of it, or using it without first purchasing it from you. A patent can protect processes or unique methods.
Patents are highly involved and obtaining one is complex and can be costly. To be eligible for patent protection, your app must be what the patent office describes as “new and nonobvious.” If you’re using a lot of open code, or if your app is simply a new look on an already existing app, it may not be protectable by patent. The app must be more than an obvious combination of prior apps. For example, you could not likely patent a talking calculator app. It combines a calculator and a well-known, talking Apple app, Siri. It is not new or nonobvious.
Snapchat is an app that received patent protection very quickly after it filed with the Patent & Trademark Office (“PTO”). While it may at first blush appear that Snapchat simply combines your text and camera apps, Snapchat also quickly deletes all messages, adding at least one unique step to the processes that were already in place.
If you want to begin the process of applying for a patent, you should seriously consider hiring a lawyer or a patent professional. There is a lot of research that needs to be done in order to know whether your app has been previously patented, or is even eligible for a patent. However, once obtained, a patent can be quite valuable – even if the app is not complete or yet available for sale.
A trademark only protects the name or logo you use in connection with the app. A trademark would not prevent anyone from coming up with the exact same app, calling it something else, and then putting it up for sale. To continue with the Snapchat example, Snapchat’s trademark protects the name (no one else can call an app Snapchat) and the logo (no one else can use that ghost as their app symbol).
Filing for a trademark is a relatively straightforward process. You should first search the PTO website to see if anyone else has trademarked the name or logo you are using.
If no one else is using it, go to the PTO’s website and begin the process of completing your trademark application online.
This column has grazed the surface of three ways in which you can protect your intellectual property. All apps and their development processes present unique situations and no one solution fits every app. Take some time to think through how you want to begin protecting your app and then consider consulting with a legal professional to figure out which protections are available and best suited to you.
|This article is made available for educational purposes only as well as to give you general information and a general understanding of the law, not to provide specific legal advice. The article content should not be used as a substitute for competent legal advice from a licensed professional attorney in your state. Initial contact by email does not create an attorney-client relationship.