Written by: Gabriel Castillo Osuna.
An application, better known as “app” (plural “apps”) for its abbreviation of the English term “application”, is a computer program or software designed for a specific purpose, which can be downloaded to a cell phone or other electronic devices such as a tablet, desktop or laptop, to name a few examples.
Currently, applications, particularly mobile ones, are a necessary tool for the commercial development of different businesses/enterprises. Their boom and popularity is mostly associated with the increase in the use of smartphones worldwide, as well as the growing share of daily use that people give to their cell phones, mainly to the applications they download.
Reports conducted by sites such as Statista and App Annie put the above into perspective. Statista, by 2021, estimated that the number of smartphone users worldwide would reach 3.8 billion, it is worth noting that this number has increased significantly since 2016, when the number of smartphone users globally was around 2.5 billion. Furthermore, it is estimated that by 2023, the number of smartphone users globally will reach 4.3 billion. For its part, App Annie reported that, in the first quarter of 2021, people spent an average of 4.2 hours a day using mobile applications on their smartphones.
- Specifically, it identified that among the benefits that apps provide for business development, the following stand out:
- Ease of achieving greater reach or interaction with a much wider audience, simultaneously through the same channel or platform.
- Possibility of specializing the experience of each user.
- Create brand loyalty.
- Various forms of monetization (direct sales, one time payment, in app purchases, subscriptions, freemium content, interstitial advertising).
Why should we protect this type of creations?
Apps should be legally protected under Intellectual Property Law, as this guarantees power/control over their main elements individually and also as a whole. It also prevents others from taking unfair advantage and makes it possible to take legal action against those who intend to take advantage in an unauthorized manner, or who intend to make unauthorized use. It also provides legally recognized and secure mechanisms that facilitate economic exploitation against third parties.
How are apps and/or their component elements usually protected?
Apart from the fact that it is important to consider that the particular provisions of the local legislation of each country vary, the legal figures used to protect apps before the different Intellectual Property Registries around the world usually coincide. Apps and their constituent elements can be protected through Copyright, Industrial Property, and some private contracts.
Regarding the first one, we find in Anglo-Saxon countries, the “copyright”, and in Hispanic countries, the Author’s Right. Copyright exists from the moment the work is created, and includes both moral and economic rights that confer to the author the full disposition and exclusive right to exploit the work.
In short, it implies the exclusive right of the author to reproduce, distribute, exhibit and publicly perform his work, as well as to create derivative works of the original, such as translations or adaptations. The copyright holder also has the right to prevent others from using his work without his authorization.
Under copyright law we find that “apps” are protected as a literary work. In some legislations the term “computer program” is specifically used, but it is recognized that they are treated as a kind or type of literary work. Among the main criticism or challenge to the protection of the app as a literary work is that it is essentially reduced to the code, source or object that was programmed (coded) in its development. This clearly limits the protection to the symbol language used and does not extend it to its functionality, which in practical cases can be of great relevance.
As regards Industrial Property, we find trademarks, other distinctive signs and patents. Trademarks and other distinctive signs (advertising signs, emblems, trade names) allow to protect fundamental elements of the app linked to its identity, and the impression they leave in the mind of the users.
These elements mainly concern the logo/design of the app, as well as the name. To a lesser extent, but equally possible, are non-traditional trademarks, such as the application for the registration of a sound mark that protects the sound associated with an app when it is deployed or initiated as a distinctive character of the app.
Thus, to give an example, NETFLIX could protect elements of its app in three avenues of trademark law. By applying for a word mark for the word “NETFLIX”, a mixed or figurative trademark application involving the design we all know from NETFLIX, and finally, a sound mark that records the sound that is produced when any user deploys the app’s startup.
Last but not least, we have patents, which are usually, although to a lesser extent, legal mechanisms also used to protect parts of apps.
It should be remembered that, in general in different countries, for an invention to be patentable, it must have novelty, inventive step and be susceptible of industrial applicability. That said, in the absence of one of these characteristic features, the app or any of its functional elements would not be eligible for protection under the figure of an invention patent.
Given the exclusions or limitations on what is not considered an invention, apps often have trouble meeting the necessary criteria mentioned above. It is common for neither a computer program nor a literary work to be considered an invention, and in view of the “literary work” regulation that apps are often given in many jurisdictions, rejections of patent applications seeking to protect such creations can be anticipated.
In spite of that, it is worth mentioning that sometimes, the application for patentability of the invention does not lie merely in the app as such, but in some process that can be linked to it, and that, in the examiner’s opinion, has met the criteria that by nature an invention patent entails. An example of this is Snapchat Inc. who paid about 7 million dollars for the purchase of a patent from an Israeli company called Mobli, which had an application similar to Instagram but never had recognition. The acquired patent consists of Geofilters, which are geolocalized filters that allow the user of the application to place certain images or symbols (on their photos) according to the geographic area where they are at the time of using the filter.
In the particular case of the Nicaraguan legislation, what corresponds is the protection of these creations under copyright law, not under patent law. As mentioned before, the criteria on what is NOT considered an invention, make it impossible for protection applications for this type of creations to meet the 3 characteristics necessary for the granting of a patent. Our law, Law 354, Law of Patents of Invention, Utility Models and Industrial Designs, states that “The following, among others, shall not constitute inventions: (…) Purely aesthetic creations, literary and artistic works; (…) computer programs considered in isolation”.
In addition to copyright, trademarks and/or patents, app developers, development companies and businesses/entrepreneurs also have the possibility of regulating aspects related to their apps, such as development, ownership, use and confidentiality, through private contracts, such as confidentiality or non-disclosure agreements (NDA’s), assignment agreements, license agreements, development/service contracts, collaboration agreements and non-competition agreements, to mention a few. These can be very useful to cover gaps that by their nature are left exposed by the aforementioned figures (author’s right/copyright).
The criticism that many experts have made of the protection of apps as a literary work has been widely echoed. Thus, it is stated that the protection granted to software as a literary work, only protects the language of symbols, being clearly insufficient, given the impossibility of granting protection to software, when infringements and abuses have been committed in contractual relations, to plagiarize the functional aspects in the software interfaces (Sarmiento Páez, 2016). (Sarmiento Páez, 2016).
A concrete example is the case Navitaire Inc vs easyJet Airline, in which the plaintiff alleged a violation of its intellectual property rights due to a non-textual but functional copy of the software, causing the consumer to confuse the plaintiff’s work with that of the defendant. Said software consisted of a computer program for the reservation of airline tickets. As the software is considered a literary work, and although the copy of the graphic interfaces is ostensible, the ruling did not declare the claims to be admissible since there is no reproduction of the source code or object of the plaintiff’s work (Sarmiento Páez, 2016). (Sarmiento Páez, 2016).
Some authorities have started to consider that the creation is not reduced to the code, source, or object, however, this is not the rule in all countries, since the regulation given by law has been mainly based on the code.
With this article, we hope to have provided a useful and practical – albeit brief – guide to the legal protection that an app deserves against third parties that may be competitors.
This article does not constitute legal advice and is not intended to create an attorney-client relationship. The information contained in this article may not be exhaustive, and should not be used as a substitute for personalized and specific legal advice in any particular situation. Therefore, we recommend that if you are interested in protecting a creation such as an app, you consult with a legal team of subject matter experts who can address your specific case and provide advice tailored to your individual needs and circumstances.
- Sarmiento Páez, C. (2016). The protection of software from intellectual property in Colombia: convenience of the creation of a special regulation that guarantees the rights of developers. Propiedad Intelectual, (20), 177-208. Retrieved from https://propintel.uexternado.edu.co/la-proteccion-del-software-desde-la-propiedad-intelectual-en-colombia-conveniencia-de-la-creacion-de-una-normativa-especial-que-garantice-los-derechos-de-los-desarrolladores/
- Today in Tech (2019, February 25). Snapchat acquires patent to protect itself from Facebook and Instagram. Today in Tech. Retrieved from https://hoyentec.com/tecnologia/snapchat-adquiere-una-patente-protegerse-facebook-e-instagram/
- World Intellectual Property Organization (WIPO). (2016). Key Contracts for Mobile Apps: A Practical Guide. Retrieved from https://www.wipo.int/export/sites/www/ip-development/en/agenda/docs/wipo_handbook_key_contracts_mobile_apps.pdf
- World Intellectual Property Organization (WIPO). (2016). IP Toolbox for Mobile Apps. Retrieved from https://www.wipo.int/export/sites/www/ip-development/en/agenda/docs/wipo_ip_toolbox_mobile_apps.pdf
- World Intellectual Property Organization (WIPO). (2015). IPRs and Mobile Apps. Retrieved from https://www.wipo.int/export/sites/www/ip-development/en/agenda/docs/wipo_iprs_mobile_apps.pdf
- Law 312, Law on Copyright and Related Rights.
- Law 380, Law on Trademarks and Other Distinctive Signs and its amendments.
- Law 354, Law of Patents of Invention, Utility Models and Industrial Designs, and its reforms.
- Statista (2021). Number of smartphone users worldwide from 2016 to 2021 (in billions). Retrieved from 2023, from https://www.statista.com/statistics/330695/number-of-smartphone-users-worldwide/
- App Annie. (2021). State of Mobile: Q1 2021. Retrieved from https://www.appannie.com/en/go/state-of-mobile-2021-q1/