Apple MOBILE APP Infringement Lawyer - Trademark, Copyright and Right of Publicity Disputes

2020 Updates:  Was your application DENIED from being included in the Apple app store?  If so, Apple has a dispute appeal process. From their page:

"Rejections: Our goal is to apply these guidelines fairly and consistently, but nobody's perfect. If your app has been rejected and you have questions or would like to provide additional information, please use the Resolution Center to communicate directly with the App Review team. This may help get your app on the store, and it can help us improve the App Review process or identify a need for clarity in our policies. If you still disagree with the outcome, please submit an appeal."

Introduction

Video games and mobile applications can be the subject of copyright and trademark protection.  These can also be infringed by competitor game companies who sell “copycat” games. There are also rules and guidelines a developer needs to follow to make sure their apps are included in the store (ex. Google Play or Apple App Store).  If your submission is rejected, you can try to fix any bugs, comply with their guidelines, and re-submit and even appeal any negative decisions.  Time is money and we can help as a bay area law firm.

When a dispute arises, it may make sense to have a law firm located in California (we have an office in San Francisco) that can help you deal with Apple or Google, (California based tech companies).  This blog provides a general overview of the issues that can arise when an IP dispute boils over and the need for IP legal counsel may arise.

Denial or rejection of application due to violation of guidelines

For example, Apple has certain standards that must be followed if you want to submit application to be downloaded for the iPhone Os.  One might be making sure the application or game meets the "safety guideline" (just to choose one of the many guidelines).  For example, your product may not meet their developer safety standards and guidelines set forth on their website:

1.4 Physical Harm

If your app behaves in a way that risks physical harm, we may reject it. For example:

• 1.4.1 Medical apps that could provide inaccurate data or information, or that could be used for diagnosing or treating patients may be reviewed with greater scrutiny.
  • Apps must clearly disclose data and methodology to support accuracy claims relating to health measurements, and if the level of accuracy or methodology cannot be validated, we will reject your app. For example, apps that claim to take x-rays, measure blood pressure, body temperature, blood glucose levels, or blood oxygen levels using only the sensors on the device are not permitted.
  • Apps should remind users to check with a doctor in addition to using the app and before making medical decisions.
  If your medical app has received regulatory clearance, please submit a link to that documentation with your app.
• 1.4.2 Drug dosage calculators must come from the drug manufacturer, a hospital, university, health insurance company, pharmacy or other approved entity, or receive approval by the FDA or one of its international counterparts. Given the potential harm to patients, we need to be sure that the app will be supported and updated over the long term.
• 1.4.3 Apps that encourage consumption of tobacco and vape products, illegal drugs, or excessive amounts of alcohol are not permitted on the App Store. Apps that encourage minors to consume any of these substances will be rejected. Facilitating the sale of marijuana, tobacco, or controlled substances (except for licensed pharmacies) isn't allowed.
• 1.4.4 Apps may only display DUI checkpoints that are published by law enforcement agencies, and should never encourage drunk driving or other reckless behavior such as excessive speed.
• 1.4.5 Apps should not urge customers to participate in activities (like bets, challenges, etc.) or use their devices in a way that risks physical harm to themselves or others.

Another possible grounds for denial for the Apple App store is failing to comply with legal standards such as privacy and data protection.  For example, their rules require:

5. Legal

Apps must comply with all legal requirements in any location where you make them available (if you're not sure, check with a lawyer). We know this stuff is complicated, but it is your responsibility to understand and make sure your app conforms with all local laws, not just the guidelines below. And of course, apps that solicit, promote, or encourage criminal or clearly reckless behavior will be rejected. In extreme cases, such as apps that are found to facilitate human trafficking and/or the exploitation of children, appropriate authorities will be notified.

• 5.1 Privacy

  Protecting user privacy is paramount in the Apple ecosystem, and you should use care when handling personal data to ensure you've complied with privacy best practices, applicable laws and the terms of the Apple Developer Program License Agreement, not to mention customer expectations. More particularly:

  • 5.1.1 Data Collection and Storage
    • (i) Privacy Policies: All apps must include a link to their privacy policy in the App Store Connect metadata field and within the app in an easily accessible manner. The privacy policy must clearly and explicitly:
      • Identify what data, if any, the app/service collects, how it collects that data, and all uses of that data.
      • Confirm that any third party with whom an app shares user data (in compliance with these Guidelines) — such as analytics tools, advertising networks and third-party SDKs, as well as any parent, subsidiary or other related entities that will have access to user data — will provide the same or equal protection of user data as stated in the app's privacy policy and required by these Guidelines.
      • Explain its data retention/deletion policies and describe how a user can revoke consent and/or request deletion of the user's data.
    • (ii) Permission Apps that collect user or usage data must secure user consent for the collection, even if such data is considered to be anonymous at the time of or immediately following collection. Paid functionality must not be dependent on or require a user to grant access to this data. Apps must also provide the customer with an easily accessible and understandable way to withdraw consent. Ensure your purpose strings clearly and completely describe your use of the data. Apps that collect data for a legitimate interest without consent by relying on the terms of the European Union's General Data Protection Regulation (“GDPR”) or similar statute must comply with all terms of that law. Learn more about Requesting Permission.
    • (iii) Data Minimization: Apps should only request access to data relevant to the core functionality of the app and should only collect and use data that is required to accomplish the relevant task. Where possible, use the out-of-process picker or a share sheet rather than requesting full access to protected resources like Photos or Contacts.
    • (iv) Access Apps must respect the user's permission settings and not attempt to manipulate, trick, or force people to consent to unnecessary data access. For example, apps that include the ability to post photos to a social network must not also require microphone access before allowing the user to upload photos. Where possible, provide alternative solutions for users who don't grant consent. For example, if a user declines to share Location, offer the ability to manually enter an address.
    • (v) Account Sign-In: If your app doesn't include significant account-based features, let people use it without a log-in. Apps may not require users to enter personal information to function, except when directly relevant to the core functionality of the app or required by law. If your core app functionality is not related to a specific social network (e.g. Facebook, WeChat, Weibo, Twitter, etc.), you must provide access without a login or via another mechanism. Pulling basic profile information, sharing to the social network, or inviting friends to use the app are not considered core app functionality. The app must also include a mechanism to revoke social network credentials and disable data access between the app and social network from within the app. An app may not store credentials or tokens to social networks off of the device and may only use such credentials or tokens to directly connect to the social network from the app itself while the app is in use.
    • (vi) Developers that use their apps to surreptitiously discover passwords or other private data will be removed from the Developer Program.
    • (vii) SafariViewController must be used to visibly present information to users; the controller may not be hidden or obscured by other views or layers. Additionally, an app may not use SafariViewController to track users without their knowledge and consent.
    • (viii) Apps that compile personal information from any source that is not directly from the user or without the user's explicit consent, even public databases, are not permitted on the App Store.
    • (ix) Apps that provide services in highly-regulated fields (such as banking and financial services, healthcare, and air travel) or that require sensitive user information should be submitted by a legal entity that provides the services, and not by an individual developer.
  • 5.1.2 Data Use and Sharing
    • (i) Unless otherwise permitted by law, you may not use, transmit, or share someone's personal data without first obtaining their permission. You must provide access to information about how and where the data will be used. Data collected from apps may only be shared with third parties to improve the app or serve advertising (in compliance with the Apple Developer Program License Agreement). Apps that share user data without user consent or otherwise complying with data privacy laws may be removed from sale and may result in your removal from the Apple Developer Program.
    • (ii) Data collected for one purpose may not be repurposed without further consent unless otherwise explicitly permitted by law.
    • (iii) Apps should not attempt to surreptitiously build a user profile based on collected data and may not attempt, facilitate, or encourage others to identify anonymous users or reconstruct user profiles based on data collected from Apple-provided APIs or any data that you say has been collected in an “anonymized,” “aggregated,” or otherwise non-identifiable way.
    • (iv) Do not use information from Contacts, Photos, or other APIs that access user data to build a contact database for your own use or for sale/distribution to third parties, and don't collect information about which other apps are installed on a user's device for the purposes of analytics or advertising/marketing.
    • (v) Do not contact people using information collected via a user's Contacts or Photos, except at the explicit initiative of that user on an individualized basis; do not include a Select All option or default the selection of all contacts. You must provide the user with a clear description of how the message will appear to the recipient before sending it (e.g. What will the message say? Who will appear to be the sender?).
    • (vi) Data gathered from the HomeKit API, HealthKit, Consumer Health Records API, MovementDisorder APIs, ClassKit or from depth and/or facial mapping tools (e.g. ARKit, Camera APIs, or Photo APIs) may not be used for marketing, advertising or use-based data mining, including by third parties. Learn more about best practices for implementing CallKit, HealthKit, ClassKit, and ARKit.
    • (vii) Apps using Apple Pay may only share user data acquired via Apple Pay with third parties to facilitate or improve delivery of goods and services.

One solution to these types of denial is to try to convince apple to change, modify or amend their terms to make your product fit within revised guidelines that are good, not just for you, but which helps them improve their guidelines for safety for all.  Apple recently announced they would allow proposals from developers to seek to revise their guidelines to make them more fair.

APP DISPUTES BETWEEN PARTIES

Sometimes, one party (usually a competitor) will be disputing another's game or application, possibly for violation of intellectual property rights (trademarks or copyrights) and Apple will want to try to give the parties an opportunity to work out their problems while keeping Apple advised (in the loop) as to potential resolutions.  This is another area where it can be very helpful to have a bay area law firm help you resolve your differences.  For example, you may receive a letter advising you:

“Dear Sir or Madam,

Please include APP # XXXX in the subject line of any future correspondence on this matter.

XXXXXX has advised that this matter is still not resolved.  Please contact XXXXX immediately regarding this issue.  You can reach XXXXX through: XXXXXXX (email:XXXXXXX).

As you know, it is your responsibility to resolve this issue directly with XXXXX, and further, that you are responsible for any liability to Apple in connection with this matter.  We look forward to confirmation from you and XXXXX that this issue has been resolved.

If the matter is not resolved shortly, Apple may be forced to pull your application(s) from the App Store.

Sincerely,

 Apple Legal | One Apple Park Way | Cupertino | CA | 95014

We look forward to receiving written assurance that your application does > not infringe Complainant's rights, or that the parties are taking steps to > promptly resolve the matter. 

Please keep us apprised of your progress.

Please note that during the course of this matter: 

1.  Correspondence to Apple must include the reference number noted above > in the subject line and copy the other party.  All correspondence sent to  Apple may be shared with the other party.

2.  Written assurance of rights may include confirmation that your application does not infringe Complainant's rights, an express > authorization from Complainant, or other evidence acceptable to Apple, and > should include documentation wherever possible. 

3.  Should you choose to remove your application (for example, while you make any necessary changes), visit App Store Connect at > https://appstoreconnect.apple.com and access your app in the Manage Your  Application module.

4.  Developers with a history of allegations of repeat infringement, or those who misrepresent facts to Apple and/or the Complainant are at risk of termination from the Developer Program. 

5.  Failure to respond to the Complainant or to take steps toward  resolving a dispute may lead to removal of the app(s) at issue as in violation of the App Store Review Guidelines and/or the iOS Developer Program License Agreement.  Please keep Apple apprised of your progress.

Thank you for your immediate attention.

Sincerely,

 Apple Legal | Apple | One Apple Park Way Cupertino, CA 95014 | mailto: > [email protected] <mailto:[email protected]>

App Store Infringement Notices & Legal Team will Review

As you can see, the preferred route is to work out your infringement issue with the other party and keep Apple notified.  If you don't, as the email notes, they might just take down both applications and let the parties figure it out.  As also noted above, if Apple is sued for the infringement, one of the parties may need to indemnify Apple (which means to pick up their legal defense if there is a lawsuit, or pay their attorney fees).  

So, while it might be a small investment to hire legal counsel (we can usually structure a predictable and affordable flat rate legal fees), it usually is money well spent. We can also serve as your legal counsel for future issues such as licensing, social media advertising, celebrity endorsements, copyright and trademark issues, DMCA takedown notices and other IP legal issues.

Copyright Doctrine of "Independent Creation"

One legal argument that arises in these types of competitive situations (especially when copyright infringement is alleged) is that “I made this game on my own, independently, no copying” of anyone else's work occurred.  There is case law on this type of argument:

“Although our cases have not always made this point explicit, the second element has two distinct components: “copying” and “unlawful appropriation.” Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164–65 (9th Cir. 1977); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[B] (2017). Proof of copying by the defendant is necessary because independent creation is a complete defense to copyright infringement. No matter how similar the plaintiff's and the defendant's works are, if the defendant created his independently, without knowledge of or exposure to the plaintiff's work, the defendant is not liable for infringement”. See Feist, 499 U.S. at 345–46.

“The Copyright Act provides that copyright protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in [the copyrighted] work.” 17 U.S.C. § 102(b). Thus, a defendant incurs no liability if he copies only the “ideas” or “concepts” used in the plaintiff's work. To infringe, the defendant must also copy enough of the plaintiff's expression of those ideas or concepts to render the two works “substantially similar.” Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010). When the plaintiff lacks direct evidence of copying, he can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff's work and that the two works share similarities probative of copying. See Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir. 1987); 4 Nimmer on Copyright § 13.01[B]. Such proof creates a presumption of copying, which the defendant can then attempt to rebut by proving independent creation.” Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).  See RENTMEESTER V. NIKE

Or, another argument I hear is:

"My work transformed their work and provides a superior game experience."  Transformation of a copyrighted work might be deemed a protected “fair use” as it creates something new or "repurposes" the original work giving it new meaning and perspective.

“Under the first of the four § 107 factors, “the purpose and character of the use, including whether such use is of a commercial nature … ,” the enquiry focuses on whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is “transformative,” altering the original with new expression, meaning, or message. The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

These are issues that may have to be taken up in Court if the parties cannot agree on a private resolution, either voluntarily or via mediation, arbitration, or litigation.

Copyright "substantial similarity" analysis - protectable expression - items to compare in games

When comparing one game to another where copyright infringement is alleged, the Courts will look to see if the games or applications are “substantially similar.”  Here are some of the game elements that may be reviewed and important to distinguish between:

-the game content

-concept

-obstacles

-environment

-game play

-level design

-storytelling

-logos/icons

-characters

-theme

-audiovisual

An experienced IP law firm can help you make these types of critical distinctions.

Games & Apps - copyright your source code?

Another thing to bear in mind is that game source code can be copyrighted.  This is a great way to protect your product and seek “statutory damages” for willful copyright infringement (which gives an owner greater leverage to settle these cases out of court), and which allows an aggrieved Plaintiff to seek attorney fees if a copyright infringement lawsuit is filed.  It may be wise to protect the source code and audio and video assets of a game, and possibly the company logo and product packaging.

Here is more information from the United States Copyright Office (Circular 61 – Registration of Computer Programs):

This circular describes the process for registering computer programs and related works with the Copyright Office. It covers • HTML • Deposits and trade secrets • Derivative computer programs • CD-ROMs • Computer screen displays • User manuals • Video games • Object code

Each version of your game is a new version:

“Note that each version of a computer program containing new, copyrightable authorship is considered a separate work. You must submit a separate application, filing fee, and deposit for each version you want to register. If, however, your program is unpublished, you may be able to register multiple versions of the same program by submitting them together as an “unpublished collection.” For more information, see Multiple Works.”

Deposit Requirements

“Deposit Requirements Submit the source code for the specific version of the computer program you want to register. Source code is the set of statements and instructions authored using a programming language (e.g., C++, PERL, Java). Source code is comprehensible to a person familiar with programming language but requires conversion into object code before it is comprehensible to a computer or other electronic device. Copyright Registration of Computer Programs 3 You can upload the source code to the electronic registration system, preferably as a PDF file or other file type accepted by the Copyright Office. The list of acceptable file types is available online. Alternatively, you can print out the source code on paper and mail it to the Office. In all cases, add the title and version number of the program to the first page of the code.”

Why you want a California IP and Copyright lawyer to handle your Apple App Store dispute

It can be difficult to work things out amicably with other parties especially when you are in competition with each other.  Egos can get out of check and passions can run high.  Many times there is a lot of money at stake, or a "first to market" race or a "bet the farm" type of dispute.  We are experienced handling these types of cases and have litigated over 200 cases in California, Arizona, New York and Texas federal courts and in many other state courts in California and Arizona.  We have offices in San Diego, Newport Beach (Orange County), Santa Monica (serving Hollywood and greater Los Angeles area) San Francisco (serving the bay area, silicon valley, san jose and surrounding areas). We also have two offices in Phoenix, Arizona - known as "The Silicon Desert." 

Moreover, as a mobile application developer, YOU MAY BE CONTRACTUALLY BOUND TO LITIGATE ANY DISPUTES IN CALIFORNIA.

Here is a look at what the App Store developer agreement says:

This is known as a "choice of law clause" and most courts will enforce this.  So, if you have an app developer who is infringing on your mobile app, or you are defending such a claim, you may find yourself subject to the jurisdiction of the California courts in the Northern District of California, or Santa Clara county.  This makes it imperative to have local copyright counsel licensed to appear before the federal courts in California.

Should I file a counter-notification if I receive a DMCA "take down notice?"

If someone is accusing you of infringing their mobile application (usually a copyright infringement claim), you should discuss with copyright counsel and make sure you have good grounds to file a counter-notification (which denies any infringement).  However, if the opposing party refuses to go along with the APPLE APP STORE SUGGESTED DISPUTE RESOLUTION GUIDELINES (which basically seek an amicable, voluntary solution to the dispute - a peaceful co-existence as I call it), you may need to move toward more aggressive legal action including filing a California Northern District lawsuit for DECLARATORY JUDGEMENT - and a declaration that your mobile application is not infringement on any intellectual property rights.  We can file these complaints.

Contact an Apple / Google Play / Mobile App & Game Dispute Attorney

We offer low flat rate legal fees to handle most non-litigation disputes.  In other words, YOU KNOW WHAT YOU ARE GOING TO PAY IN ADVANCE.  We can assist with trying to get your application included in the store, disputes among parties, appeals, petitions to rewrite rules and guidelines, cease and desist letters, fair use opinions, DMCA takedown notices, federal court injunctions, subpoena issues, and working with Apple or Google representatives try to resolve the dispute. We know this is a critical issue for developers, and we are here to help.

Contact us at (877) 276-5084 or email me through our contact form.