You have an idea for the development of a mobile application and you would like to commission the development work to an IT developer. In that case, you should check some legal points before starting the project.
Whether your mobile application is intended for websites, or smartphones, or both, you should ensure that your app is legally protected and that you own the intellectual property (IP) rights over the respective application.
What are the IP rights you should own? Herein below, a list with a few of “must have” and “must comply with” legal aspects.
In order to ensure that you own the IP rights over the product to be created, you should check that the following steps are taken:
(a) Choosing an original name for the application, performing checks on prior registered names and filing for a trademark registration
As beneficiary of the app, you should own your trademark which will be used for the respective application.
- Filing for a trademark registration
Generally, the trademark protection is ensured through the filing of a trademark request with the authorities in the relevant jurisdiction. In other words, the “first-come, first served” principle. The successful registration of a trademark depends on several factors, from originality or distinctiveness to lack of any likelihood of confusion with prior registered trademarks. In order to substantially increase your chances to a successful registration, these criteria can be verified by the applicant (with specialist legal advice) before taking any official steps with the authorities.
Depending on the number of the states where you seek to obtain a trademark registration, you may explore the options of having either (i) several national applications in each country where you envisage to protect your trademark, or (ii) an EU application (community trademarks – CTM), or (iii) an international application with different designated countries (where EU can be designated as one state).
- Choosing the classes of products and services
Choosing the classes of products and services for which your trademark is requested to protect can be also a challenge in your legal protection endeavor. Particular attention should be paid to the detailed description of the classes of products and services under the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (the “Nice Classification”). You may consult it at the following link:
http://web2.wipo.int/classifications/nice/nicepub/en/fr/edition-20160101/taxonomy/
Nice Classification is a useful tool in which you can identify, with a guided advice, the most relevant classes for your product or your services.
Generally, the apps are filed for class 9 of the Nice Classification, which includes, among others, “computer software applications”; but that may not be necessarily sufficient from a legal point of view. For example, in case you envisage the exploitation of the app by third parties through assignment of the right of use (license) over your software (usually non-exclusive rights of use are being assigned), you may want to include class 45 (personal and social services rendered by others to meet the needs of individuals) which includes “copyright management, copyright licensing”; or class 38 “Telecommunications” which includes “providing access to databases, communications by telephone, by cellular phones or by computer terminals”) and the list can continue with other classes of interest.
(b) Checking trademarks, trade names or domain names which could be very similar or identical to your chosen trademark
Any prior registered right which is similar or identical to your chosen trademark may hinder the successful registration of your trademark. In order to avoid waste of money and time, it is recommendable that you proceed to such verification before investing in the design of the trademark and in the development of the application.
(c) Clauses to be paid attention to when signing the work-for-hire agreement for the development of the application
- Confidentiality and NDA (non-disclosure) clauses:
Preservation of the confidentiality is one of the most important aspects which should be checked and included in the work-for-hire agreement.
Since ideas are not legally protected by the intellectual property regulations (on the contrary, they are generally expressly excluded from a legal protection in almost all the jurisdictions), it remains for the parties to an agreement to agree on the obligation of maintaining the confidentiality in relation to the product which is envisaged to be developed and to stipulate contractual sanctions (most commonly, pecuniary ones) in case of non-observance of such clauses. Copyright protects the expression of creativity by the author, not the ideas; therefore legal protection should be sought in relation to the product developed as an expression of the original idea which cannot be protected in itself.
- Copyright over the software
The most important IP right that is generated by the development of a mobile app is the copyright over the software (source code) to be developed. One should pay a particular attention to the manner in which the ownership over the copyright is agreed upon. For commissioned works (“work-for-hire” agreements) the copyright should be expressly stated as being created for and belonging to the beneficiary as opposed to the developer, the latter being a technical expert acting at the instructions of the beneficiary who owns the original idea and concept for the development of the product.
In the absence of express contractual provisions, the ownership of the copyright over the work created will be determined in accordance with the provisions of the law governing the agreement, but generally the legal norms provide that the copyright is owned by the author of the work (i.e. in this case, by the developer).
- Obligations to be fulfilled by the developer at the termination of the development works
Certain obligations that are recommended to be contractually regulated are meant to produce legal effects especially at (and after) the termination of the agreement:
- obligations to deliver all the works created under the agreement, such as the source code, web service documentation, design materials etc.;
- undertakings regarding the confidentiality to be maintained following the termination of the works towards any third parties;
- obligations of guarantee;
- obligations to refrain from any unauthorized reproduction, license or other means of use of the work.
- Other IP rights or assimilated rights
Additional works for ensuring the proper functionality or upgrade of the application can generate future IP rights (e.g. derivative works) and, in the absence of an express provision under the work for hire agreement, the ownership over such future rights could belong to the developer and not to the beneficiary.
