Apt IP For Your App

These days, one can almost always find a mobile application (or app in short) for just about any task you can think of. For example, there's an app to help you find your future spouse, one that helps you find wife no. 2 – 4, an app to help you cheat on your spouse(s) and one to catch that cheating lil douche.

App creators may have plenty of ideas for apps, but when it comes to protecting the intellectual property that is related to the app, some may be at a loss as there are normally more than one form of intellectual property right (IPR) involved.

Copyright

If your app contains any original video, images, tunes or text, these can be protected under copyright. While it may not be obvious to some, software code is considered to be a literary work and thus also eligible for copyright protection.

The good news is, copyright protection comes into existence upon the completion of the work, provided that the work is original, i.e. none other like it has ever existed before. Unlike other forms of IP, registration is not required for a copyright to come into effect.

The bad news: Just as there are many ways to skin a cat, there can be many ways of writing software code to achieve the same function, so you can have many different apps that do the same thing and not infringe each other’s copyright. As such, copyright is more useful in stopping others from copying or pirating your app than preventing others with coming up with a similar app.

Similarly, if other apps use graphics, artwork, video or sounds that are thematically similar to yours, it’s unlikely that such use is infringing unless copying of your original content was involved.

Trade Marks

The name of your app and its icon can be the subject of a trade mark registration. With trade mark registration, you can stop others from putting up apps with confusingly similar names/icons that may divert users away from your app. Imagine if you have an ASMR app named ‘Kurma Whispers’ that proves itself a hit with pandemic-fatigued work-from-homers. With trade mark registration, you can stop copycat apps with names like ‘Bisikan Kurma’ or ‘Whispering Kurma’ from coming into play.

Since trade mark registration is territorial, you will want to also register your trade mark in countries outside of Malaysia where your app is available to help you assert your trade mark rights in those countries.

Patents

Let us lay the facts straight. Apps cannot be patented. In many jurisdictions, software is considered a purely mental act/method of doing something which is not patentable subject matter. This is because at a basic level, software is merely a set of instructions that are carried out to achieve an intended result.

What can be patented, though, are inventions that are realized using apps, or in other words, a technical solution which is achieved through use of the app. So you don’t patent an app for online payments, you patent a method for performing a secure financial transaction online. Do bear in mind that the technical solution must be new, inventive, industrially applicable, and must have a real or quantifiable effect in order for it to be patentable.

An advantage of having a patent is that, even if the app appears under a different name or is coded differently, so long as the app performs all the steps claimed in your patent, the app is considered to be infringing and you can take action against the third party.

Industrial Designs

It goes without saying that the graphical user interface (GUI) is an important component of an app. A well-designed GUI can greatly enhance the user experience, while a poorly designed one can cripple an otherwise well-thought-out app.

Since the appearance of a GUI can be ornamental in addition to being functional, GUIs can be the subject of an industrial design registration. Industrial design registration can be used to stop others from copying the look of your app so that no one else can have a slick-looking app that looks exactly like yours.

In order for a GUI to be registrable as a design, it must be new, meaning that no similar design exists anywhere in the world. If the GUI does not differ materially from a GUI that is already in existence, the GUI is not new and there is no design right.

Trade Secret/Confidential Information

Your app may include some special secret sauce that gives it a leg up against the competition. Maybe it’s a network of trusted vendors whom you have developed a special bond with over the years. Maybe you’ve found a way to write a robust program using less instructions, making the app less bloated. Or maybe seeing your pet hamster every morning makes you feel like everything’s going to be alright.

Whatever the secrets to your success are, you should make an effort to ensure that such secrets are kept confidential by restricting access to them, e.g. keeping them in a hidden vault, using non-disclosure agreements to deter loose lips from spilling out secrets and any other methods that you can think of. Because there are no specific laws that govern trade secrets, you will need to rely on branches of law that deal with contracts and breaches of trust to deter or recover damages from theft of trade secrets. Of course, once the secret is out, you can’t make it a secret again, so prevention is better than cure.

As of now, we don’t know of any app that can help you with the filing and managing of your IP applications. Instead of waiting for such an app to be created, why not give us a holler? After all, we’re here to help.

Baking your way to Trademark Infringement

Recently, Marks & Spencer initiated legal action against Aldi claiming that Aldi's Cuthbert the Caterpillar cake infringes M&S's Colin the Caterpillar trademark.

As the owner of 3 registered trademarks relating to its caterpillar cake, M&S is demanding that Aldi removes its Cuthbert the Caterpillar cake from sale.

It is important to note that the Malaysian Trademarks Act 2019 allows the registration of shapes as trademarks, including shapes of confectionary and baked goods (see below).

Bakers and makers should also be careful when selling products with cartoon/comic characters, as aside from being copyright protected, many cartoon/comic characters are registered trademarks , e.g.:-

Like Aldi, you may very well get into trouble for selling a product whose shape has been registered as a trademark by someone else. You may also be liable for copyright/trademark infringement if the product you're selling includes a copyright/trademark protected character, especially if you are doing so without a license from the right owner.

Talk to us if you're worried that someone may be copying your masterpiece or if you're worried that your products could be infringing someone else's trademark or copyright.

You may also like to read about how re-posting someone else's recipe online could land you in hot water here.

The Devil Wears NIKE?

MSCHF is an art collective that makes provocative stuff, such as a laptop deliberately infected with six different types of malware. Their latest offering is a batch of customised Nike Air Max 97 sneakers that were designed in collaboration with singer Lil Nas X. Dubbed the 'Satan Shoes', these very tame sneakers feature an inverted cross on the tongue, a pentagram pendant hung from the shoelace and an air cushion base filled with red dye mixed with a drop of actual human blood!

Unsurprisingly, the release of these sneakers raised hell especially amongst the god-fearing folks. And with digital torches and pitchforks in hand, they threatened to boycott NIKE under the mistaken assumption that the sports apparel giant has made a Faustian bargain and sold its soles to the Devil by selling these satanic themed footwear. NIKE responded by filing a lawsuit against the diabolically mischievous masterminds claiming that the sneakers cause trade mark confusion, dilution and create an erroneous association between NIKE and MSCHF.

At present, a court order has been issued to stop MSCHF from fulfilling any more orders for the campy footwear. Will NIKE win the suit? We won’t know until the matter has been tried at court.

Nevertheless, this incident raises a couple of interesting questions:-

• Can someone be at risk of infringing a trade mark by buying genuine goods and re-selling them?

Generally, reselling genuine goods doesn’t amount to trade mark infringement as the product being sold is genuine. This is known as the exhaustion doctrine or first sale doctrine, where after a product covered by an IP right has been sold by the IP right owner the right is said to be exhausted and it can no longer be exercised by the owner.

• What if the goods are altered and sold as customised products? And what about upcycling where pre- or unloved goods are altered or repurposed so as to give them brand new life?

This is where the law becomes less clear-cut and much depends on the extent of the alteration/customisation. Minor and superficial customisations such as adding embellishments or painting the product over with an unusual colour are unlikely to be considered infringement, e.g. a Volvo with new tyres and paint job is still essentially a Volvo.

Major modifications however may affect the quality of the product and change it so much that it cannot be called an original anymore. This is where you may run afoul of the law as technically you're not selling an 'original' product. So if you're selling up-cycled products, an easy fix would be to remove the branding from the final product but this can be difficult if the brand/logo is deeply embedded into the material or is otherwise indelible.

So are you free to sell branded products that have been remade according to your creative vision, or are you at risk of being sued if your ‘art’ is not consistent with the brand’s ethos? Well, it depends...the devil really is in the details!

However, on the flip side, if you're a brand owner, this whole kerfuffle should be a good reminder that trade mark registration is very important. As the registered owner of their trade mark, NIKE was able to easily get a restraining order from the court to stop MSCHF from selling the Satan Shoes. On the other hand, owners of unregistered trade marks have very few options to prevent someone from misusing their brands.

If you're curious to know more about the issues discussed here, or you're currently facing similar issues yourself, come have a chat with us.

Update: Nike and MSCHF have decided to settle the lawsuit instead of fighting it out in court. As part of the settlement, MSCHF has offered to fully refund anyone who has purchased the 'Satan Shoes'. Does this mean that artists should be cautious against provoking big brand owners? We can't say for sure. But one thing is for certain: trade mark registration gives you the power to protect your brand.