Android app developer William J. Francis interviews attorney Suzy Fulton, an IP and due diligence specialist, about trademarks, copyrights, and patents. She advises app developers to maintain a sense of integrity.
According to Wikipedia the game Yahtzee was first trademarked and copyrighted in 1956. Since then, ownership of those rights has changed hands more than a few times. Digging around in my hall closet I was able to find the game, and the legal notice inside the box indicates the copyright was renewed as recently as 2004.
Last month it was reported that Google Play now has more than 700,000 apps available for download. Almost anything you can think of to pass the time is available in some form or variation. Not to call anyone out, but Yahtzee is no exception; my search of the game in Google Play returned more than 1,000 results.
In my mind, app development is an entirely new medium that lends itself to expressing ideas in ways that couldn't be done previously. I'll give you an example. I live in Texas, whereas most of my family lives in Ohio and Kentucky. Before we had smartphones, we got together a couple of times a year and all sat around a table and played Scrabble. Now, thanks to the Scrabble-like app Words with Friends, we play "Scrabble" year-round. But more than that, thanks to innovations like in game SMS, we pass along information as well, are more aware of what is going on in each others lives, and in general feel more "connected" between visits. To my thinking, Words with Friends is not Scrabble, but an innovation.
As an app developer myself and a hobby game developer, I frequently seek inspiration in old board games, card games, or derivatives of others' works that I feel I could improve upon. At the same time, I am not out to blatantly copy what someone else has done or infringe upon their original work, and I want to be able to protect my own work and creativity as well. Without going into the technical details, I think it's fair to say that the Android platform in particular is vulnerable to the reverse engineering of apps, and there has been a lot of attention lately on pirated Android apps and copyright violation.
Google's approach to app distribution in general has always been one of asking for forgiveness rather than permission. By that I don't mean Google encourages infringing on the works of others, but rather the app submission process is devoid of a human on their end, so an app has to show up in the store, then be reported as fraudulent before it is flagged and removed.
Specifically, Google offers the following content guidelines:
"Don't infringe on the intellectual property rights of others, (including patent, trademark, trade secret, copyright, and other proprietary rights), or encourage or induce infringement of intellectual property rights. We will respond to clear notices of alleged copyright infringement. For more information or to file a DMCA request, please visit our copyright procedures."
I consider myself to be a semi-intelligent guy, but even with Google's input on what is and isn't a violation of intellectual property, it's all still a bit fuzzy to me. I'm fluent in geek, but my legalese leaves a lot to be desired. Luckily, I happen to know someone who speaks both.
Bringing in the big guns
I had the pleasure of working with Suzy Fulton a few years back while she was serving as general counsel at the largest private web hosting company in the world. At the time Suzy had global responsibility ranging from general corporate and business planning to compliance and to protecting intellectual property assets, managing issues related to employee benefits, executive compensation, health and welfare plans, retirement plans, health law, negotiating real estate leases, and overseeing litigation.
Presently, Suzy is advising startups in all aspects, including in the areas of intellectual property and due diligence matters. She is also serving as general counsel and community adviser to the DFW chapter of the Organization of Chinese Americans, a national organization dedicated to advancing the social, political, and economic well-being of Asian Pacific Americans in the United States. As if that isn't enough to qualify Suzy as an expert, in a former life, Suzy worked for NASA as an aerospace engineer, and Suzy was named one of the Dallas Business Journal's Best Corporate Counsel in November 2010.
I'm both honored and humbled she was able to find time to do an interview.
The interviewWilliam J. Francis: As a developer I see the terms trademark, copyright, and patent show up a lot, but I'm not 100% clear on the differences and the implications of those differences. Could you give me a brief interpretation from an attorney's perspective? Suzy Fulton: A trademark is an identifier, such as a phrase, word, and/or symbol which identifies and distinguishes the source of the goods or products from those of other sources. A copyright applies to and protects artistic or literary works. A patent protects inventions.
With respect to apps, you are generally talking about protecting the title and/or logo with a trademark and the code with a copyright. Copyrights are created once they've been put down in a medium that would allow for copying. Once a code is written down on paper or computer, the copyright has been created. This is unlike a patent or trademark, where those require registration before any rights attach. Copyrights are registered because registration allows for enhanced damages, such as attorney's fees and treble damages.Francis: Since the early days of video games and computer software, there have always been lots of what are referred to as "clones." For example, if I type the word "Yahtzee" into Google Play, I find over 1,000 Android apps that appear to be some derivative of the game Yahtzee. To what extent would (or could) a Yahtzee clone infringe on copyright and or trademark? Fulton: Using the term Yahtzee would be a trademark infringement. The test for trademark infringement is "likelihood of confusion." So some gamers change the name so it comes up in searches, but may be spelled differently, such as YZee or Yatzy. Is this infringement? It is presented as a fact question for a jury, and both sides can make strong arguments. On the other hand, 5dice, Maxi Dice, or Simple Dice may be Yahtzee clones and may be liable for copyright infringement, but would not be liable for trademark infringement.
Copyright protects the expression of an idea or concept, not the idea itself. Therefore, ideas, concepts, procedures, systems, methods of operation, processes, and discoveries are not within the protection of copyright law. Originality is the main quality needed by the work to obtain copyright protection. A direct clone or copy of the Yahtzee game would by definition not be original, and would be an infringement. It gets trickier to answer the infringement question when the programmer begins to change certain aspects of the game, such as the rules, number of dice used, etc. At some point, that programmer will no longer infringe because of the originality of his/her work.Francis: How difficult is it to prove copyright infringement? Fulton: To bring a copyright infringement claim, a plaintiff needs to prove (a) ownership of a copyright, which is usually done by proof of registration and (b) copying of the protected elements of the plaintiff's work. Proving the first element is fairly straight-forward based on registration of the copyright. Proving the second one can get complicated. To prove copying, the copyright owner needs to show that the defendant had access to the work and that the two works are substantially similar. Access involves showing that the defendant had reasonable access to the plaintiff's work, and not just that the defendant could have accessed it because anything is possible. Proof of independent development of a copyrighted work by an accused infringer is an absolute defense. Francis: In your experience, how is it organizations decide whether to pursue possible copyright infringement? Fulton: As with nearly everything that a business does, this decision is based primarily on costs. There are many clones of the most popular apps. The companies who own the copyright to the apps have to make a business decision on who to pursue. They will go after the biggest infringers who are either making the most money off of the cloned app, or who have the largest audience (or both). Francis: Finally, what advice can you offer to app developers who want to steer clear of any copyright legality when publishing apps in the highly competitive app market, both in terms of protecting original work and not inadvertently infringing on the work of others? Fulton: I would advise developers to maintain a sense of integrity. Everyone chases the easy money, but if you want a game with angry, flying animals — create your own original work. If you want a game involving dice — create your own original work. This will allow you to have your own copyright and will avoid infringement. From an offensive standpoint, you want to aggressively protect your intellectual property (IP). There is no cookie-cutter method and will differ from company to company and individual to individual. Pursue infringers to the extent you can afford. As an IP owner, you do not want to get a reputation that you will not go after infringers. Plus, certain IP rights are lost if you know about the infringement and allow it to continue.
I hope TechRepublic readers found Suzy's explanations as informative and interesting as I did. Clearly copyright is a complex and complicated issue, but it is also extremely relevant and something that we as app developers need to be cognizant of as we practice our chosen trade. As the app industry continues to grow in leaps and bounds so will the potential for sticky legal matters. I think Suzy summed up the best way to protect yourself and your intellectual property in a single word: integrity.