Do You Really Own Your Mobile App?

James Chiodo, Certified Information Privacy Professional CIPP/US

You may never have given a second thought to whether you own your mobile apps. Whether you are a business owner who had an app developed for your company, a freelance developer, or the owner of an app design company, you may have just assumed the answer was yes. Unfortunately, you may be surprised to find out that your intellectual property is not as protected as you thought.


Protection Under US Copyright Law 
The first thing that needs to be addressed is who would possess the copyright on the code for a new mobile application under US copyright law. The short answer is the person who wrote the code would own it.

Here are just a few of the many completed projects where the contractor or freelancer who creates the product would be considered the author:

• Software programs
• A website or blog
• Written articles
• Photography
• Graphics

You can see where the red flags immediately spring up for a business owner. How could you possibly not own the app that you had someone code specifically for your business? What if the person decides to sell similar apps to all of your competitors? Now your advantage is gone. And if you are the owner of an app design company, this can cause conflict with an employee who develops an app and wants a larger share of the overall profits (or maybe even all of them).

But freelancers aren’t out of the woods yet. Why not? Simply because few people code an app from start to finish without any third-party code, open source code, or the help of another app designer. Plus, employees are often subject to contracts or agreements that affect ownership of projects they complete while employed by a particular company. As a result, even an independent contractor may not outright own an app as expected.

“Isn’t My App Copyright Acquired Automatically?”
Good question – and again, the answer should be yes if you are the one who wrote all the code from start to finish. The United States Copyright Protection Act grants protection to the author of an original work that falls under the category of being copyrightable.

In fact, copyrightable works are defined as being “fixed in [any] tangible medium of expression.” The general categories of mediums of expression include:

• Literary works
• Literary works
• Dramatic works
• Musical works
• Choreography or pantomimes
• Sculptures, graphics, or pictures
• Architecture
• Sound recordings
• Movies and other audiovisuals

Protection begins from the time the work is created. That means you don’t have to publish your app or upload it to an app store for protection to begin. However, there are still many good reasons to take action to protect your intellectual property through other official means. Why? Let’s look at some exceptions to an author’s copyright ownership.

Author’s Copyright Ownership Exceptions
Being an employee can complicate the process. Some employment agreements state that everything the employee creates from the time he or she is hired until termination becomes the intellectual property of the company or employer. If you are developing an app, whether it is for your boss or for someone else as a side project, you should definitely check any employment agreements you are presently under to ensure you haven’t already signed away ownership of your creative works.

This also holds true if the app is a collaborative effort, as so many are. Before you even let another developer look at your code and make the tiniest suggestion, make sure that he or she is not under such an agreement with an employer. Getting the assistance of someone else who has signed away ownership rights to creative works will, at the very least, make you a co-owner with another company or individual, even if you came up with everything else on your own.

Also, the employer gains ownership of a work when it is considered a “work made for hire.” What does that mean? One of these two things must take place for a work to be considered “made for hire.”

1. A work prepared by a person on the company’s regular payroll within the scope of employment.

2. A work that is specifically ordered or commissioned along with an agreement that the work is made for hire. Also, the work must be one of the following:

• A contribution to a collective work
• A translation
• A supplementary work
• A test
• Test answers
• Instructions
• A compilation
• An atlas
• Part of a motion picture or other audiovisual work

It is important to note that because mobile apps do not fit into one of these categories, it means that an app made by a freelancer cannot be considered a “work for hire” even if you have a written agreement saying that it is. Thus, the company that hires the freelancer would have to include the purchase of ownership of the app as a part of the agreement if the company wants to own the app after its completion (see “assignment of copyright” below).

3 Important Ways to Protect the Value of Your Mobile Application
With all the confusing legalities dealing with copyright law, we’ll now look at three ways that you can work to protect your mobile app
Copyright the App – You can file to register a copyright for the app code. This gives you public notice of the date the copyright was obtained. Also, if you ever need to sue for copyright infringement, you have to have registered the copyright. Finally, if you are ever the plaintiff in a copyright infringement lawsuit, the registered copyright allows you to receive statutory damages and attorney’s fees if your suit is successful.

Patent the App – Just as patents are used to protect computer software, it can also help protect mobile applications. A patent allows you to protect the way an end user interacts with the app. If you have developed something truly unique, this will keep competitors from being able to get too close to the same design or interface.

Trademark the App – Trademarks allow you to make an app that is uniquely branded. For example, you could trademark the name of the app, the icon used to identify the app in the app store and on the smartphone, and even the name of certain items in the app. For example, if you have created a video game app, you may have come up with a unique name for in-app currency. Trademarking this term would ensure that other games in the same genre can’t steal your currency name.

The Importance of an “Assignment of Copyright”
If there is any reason to believe that you will not be a 100% owner of the app, an assignment of copyright is the best way to ensure there is no confusion over ownership. For example, if your company is hiring a freelancer to develop an app, be sure the designer signs an agreement providing your company with all “rights, titles, and interests in the mobile app.”

If multiple people are collaborating on the work, you may need to have each collaborator sign such an agreement. This is even a wise action to take if the person or persons coding the app are regular company employees. This leaves no confusion over whether the work was done for your company or for another company and whether it is considered a work for hire.

Small business owners and sole proprietors are the most likely to have to outsource projects like this. They are also the least likely to have written agreements with any company employees. As a result, an assignment of copyright is particularly important if you find yourself in one of these categories of business formation.

If you are a freelance app developer, be sure to read all agreements thoroughly before signing anything, perhaps even seeking the help of a business contract attorney. This can ensure that you are not signing away ownership of your intellectual property (unless you choose to do so). Everything from the source code to the graphics, design, and content of the app should be protected using the three methods of intellectual property protection noted above.

Who Owns the Mobile App?
You may now be considering who owns some of the mobile apps you have developed or had developed for you. This should give you the knowledge to do your due diligence before any future projects to ensure ownership lands where you want it to. After all, whether you have personally spent long hours and late nights slaving to develop a mobile app or you have paid a handsome sum of money to have someone else do it for you, it would be a shame not to reap the financial benefits of the deal to the full over a technicality.

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