Apps have become ubiquitous in today's society. App analytics firm, App Annie, has estimated that the global app economy which was worth US$ 1.3 trillion in 2016 will be worth US$ 6.3 trillion by 2021. Today, app publishers come from all sectors not just media and entertainment companies and game studios. Those in the consumer banking sector have in particular been keen proponents of apps, responding to a growing demand from customers for faster and more efficient ways to administer their finances. As a case in point, 'CBD Now' was launched in early 2017 by the Commercial Bank of Dubai as the UAE's first digital-only bank. In this article, Dino Wilkinson and Kellie Blyth examine two fundamental legal issues often overlooked by app publishers: how best to protect your app and who owns the rights in your app. This article addresses these issues by reference to the laws applicable in the United Arab Emirates (UAE) but many of the points raised will also be relevant in other jurisdictions.
How do I protect my app?
Where you have spent time and money developing an app, it is vital to take steps to protect the intellectual property (IP) rights in it. This will help to prevent others from using such IP rights to create 'copycat' versions.
As the popularity of mobile apps has grown, so has app piracy. General concepts or design elements may be infringed or apps are cloned in their entirety so that an exact copy is made available by the infringer for download. Often pirated apps are identical to the original, which can make it impossible for anyone but the developer to identify the non-genuine version.
As a piece of software, an app will incorporate a number of different IP rights, including in its interface, layout and design. Recognising and protecting these rights is key.
Copyright, for example, will arise automatically on the creation of the software for the app. Copyright will subsist in a number of different components of the app; the source code (the programming language used to write the app), the object code (the machine-readable language used by a computer to operate the software), as well as in the graphics, fonts, text and music.
Copyright does not require its author to take any formal steps to benefit from the protection afforded by the law. However, in the UAE, registration of copyrighted work can be of assistance in order to bring a claim against an infringing third party.
Trade marks, by contrast, are registered rights meaning that formal steps must be taken to benefit from the potential protection available under the law.
Before adopting any trade marks (including slogans, logos or names) for your app, it would be prudent to carry out searches to ensure the relevant mark is free to use and will not infringe any third party rights. This helps avoid the risk of having to rebrand if your app is released due to an infringement complaint.
Where your app may be made available in a number of different countries, it is also worth considering the adoption of an international brand protection strategy. This strategy would focus on securing trade mark protection in the key markets in which the app will or may in future be made available. This will help allow you to enforce your trade mark rights against any infringers in those countries.
Displaying a registered trade mark sign, ®, where your trade mark has been registered may also assist deter potential copycat versions of your app. It should be noted, however, that displaying this symbol where your trade mark is not registered is a criminal offence in the UAE. You can, however, adopt the symbol ™ for any unregistered trade marks and the symbol © to demonstrate that you have copyright in the work.
Who owns my app?
Copyright is a territorial law and therefore the question of ownership and assignment of copyright will depend on the provisions of local law in the country where the app is developed.
It is not as straightforward to assign copyright under UAE law as it is in many other jurisdictions. The laws applicable in the UK and the US, for example, are favourable to employers and commissioners of works in that they provide that employers or commissioners, as applicable, shall be the first owners of works created on their behalf. In the US this concept is known as a 'work for hire'.
By contrast, the UAE Copyright Law does not contain any provisions which state that copyright in works created by employees during the course of their employment will automatically be owned by the employer (ie there are no equivalent 'work for hire' provisions). Instead it states that the assignment of copyright in all, or five or more, future works shall be void. The provision which prevents the future assignment of copyright is based on the French Code and Egyptian Copyright Law. Similar provisions are also found in the copyright laws of various countries in the Middle East, including Qatar and Saudi Arabia.
Accordingly, an assignment provision in a contract of employment stating that all works created by a developer will be owned by the commissioning party is unlikely to be effective in the UAE. Instead more detailed obligations concerning assignment must be included in the app development contract.
Where an app is developed in the UAE, it is therefore critical to ensure that the copyright in the work is assigned to the commissioning party upon completion of the project or, if fewer than five works are to be produced, that your app development contract contains appropriate assignment provisions.