Welcome to THE APP LAWYER!  Vondran Legal® can help developers with mobile application disputes including copyright, DMCA, trademark, Apple and Google store disputes, cease-and-desist letters and related issues.  Call us at (877) 276-5084.

Introduction

The mobile application business is literally BLOWING UP!  There are over 2.5 million apps on Google Play and over 1.8 million apps on the Apple app store.  The average American has over 80 apps on their mobile phone.  However, intellectual property disputes are becoming more typical as it becomes more difficult to find great names and content that is alleged to infringe on another party's copyrights or trademarks.  This can lead to problems launching your app in the Google or Apple Store and throw up obstacles to your pathway to income.  Our firm can help with a variety of business and intellectual property issues to help resolve disputes and get your app off the ground.

Common Mobile Application Legal Issues

1. Trademark disputes (including the all-important trademark search and registration)
2.  Copyright disputes ("your game is substantially similar to our copyright app or game)
3. Cease and desist letters
4.  Trademark priority disputes (another party purchases a trademark for the sole reason of gaining priority)
5.  Trademark assignment in gross
6.  Google mobile application disputes
7.  Copyright assignments
8. DMCA notification and counter-notification
9. Video game freedom of speech issues
10. California right of publicity violations
11.  Character copyright protection and infringement
12.  Apple store mobile app disputes (games, dating apps, productivity apps)
13.  Improper cheat codes/mods/leaks
14. Music infringement
15. Parody copyright & trademark issues
16.  Contracts and Disputes with mobile app developers (Fiverr and others)
17.  Partnership disputes (including "oral partnership" disputes)
18. Work-for-hire agreements (make sure you own the rights to your app)
19. Domain name disputes
20.  IP licensing
21. IP arbitration
22. Mediation
23.  Federal court litigation (Vondran Legal® has appeared in over 500 IP-related federal court litigation cases making us on of the tops in the nation)

This is not a complete list.  Send us a message through our contact firm for more information.

Apple Mobile App Dispute Policy

Here are a few of the more important Apple app store dispute submission link

It may be important to involve IP legal counsel as soon as possible in the process.  Once you put things in writing, you cannot take them back.

App Store Content Dispute

If you believe that an App or Search Ad available through the App Store violates your intellectual property rights, you can submit your claim here. Please note that Apple does not investigate claims regarding branded terms used as Search Ads keywords. In most cases, content available through the App Store is made available by third party providers and, upon receiving your submission, we will contact the provider of the disputed content regarding your claim and ask that they work with you directly to resolve the issue.

App Name Dispute

If you believe an App is preventing you from using your trademark as an app name on the App Store, you can submit your claim here. After you provide us with the required information, we will identify the app(s) blocking the name you wish to use. In most cases, we will contact the provider of the disputed app(s) regarding your claim and ask that they work with you directly to resolve the issue.

Note: If another app within your, or an associated, developer account is already using the desired app name, please contact the App Store Connect team for further handling.

Google Apple Play (Android Apps)

When you upload an app to the Google store, you are affirming that your app does not violate the intellectual property rights of another company.  If you are in violation of this, IP disputes can arise:

11. Representations and Warranties

11.1 You represent and warrant that You have all Intellectual Property Rights in and to Your Product(s), including the right to monetize Your Product(s) on Your own behalf and not solely acting as an agent or appointee on behalf of any other person.

11.2 If You use third-party materials, You represent and warrant that You have the right to distribute the third-party material in the Product. You agree that You will not submit material to Google Play that is subject to third -party Intellectual Property Rights unless You are the owner of such rights or have permission from their rightful owner to submit the material.

11.3 You represent and warrant that, as the principal to the transaction with the user, You are solely responsible for compliance worldwide with all applicable laws and other obligations.

11.4 You represent and warrant that all information that You provide to Google or users in connection with this Agreement or Your Products will be current, true, accurate, supportable and complete.

Reporting a Google Mobile APP IP Violation

Here is what the Google app website has to say (again, it makes sense to discuss your complaint with an IP attorney BEFORE you start putting things in writing):

Report a policy violation Let us know if you've found an app violating the Google Play Developer Distribution Agreement.

The information that you provide will be forwarded to a specialist for further review. Some issues require specific information for an investigation to be completed. These issues include:

Copyrighted contentDistribution of my copyrighted content without my permission

Trademark infringement: Use of a registered trademark without my permission Inappropriate reviews:

Comments about apps published on Google Play that violate Google's policies for posting reviews If the violation that you've noticed is related to Google Play, but doesn't fall into one of these categories, use the Report inappropriate apps form.

For violations involving another Google product (such as Gmail, Google Search, etc.), make sure that you report them to the appropriate team.

ATTORNEY STEVE® TIP: Before accusing another company of infringing on your rights, you should be sure YOU ARE IN THE RIGHT.  Talk to app counsel before accusing another company of wrongdoing.  You want to make sure you are not committing the tort of defamation.

Can you Trademark a mobile application?

Absolutely!  One of a company's most important assets is its trademarks. SaaS (software as a service) and mobile app businesses have challenges creating a brand identity since their products are digital (not physical).  As such, it is important for the app developer to consider seeking federal trademark protection at the earliest possible point in the product development stage.  After all, there is probably a company in the process of competing with your mobile app whether you know it or not.

There are many different types of trademark protection you may want to consider.  For example:

1. The name of your app (ex. Tinder® or Candy Crush®)
2. Catchy logos you use to market your application
3. Mobile App Icon
4. Certain sounds can be trademarked if they identify your brand
5. Your corporate name/logo can be trademarked
6. You can trademark the name of a character in your video game app

It is important to realize that once you have committed to designing and launching your application, you should discuss with a mobile application law firm.  We can help you identify potential intellectual property rights (such as trademark and copyright), and potentially even trade secrets, and discuss any right of publicity issues that may exist.  Under the United States trademark laws, you can even file an "Intent to use" trademark application and get your trademark application lodged even though you do not yet have a specimen to submit to the USPTO.  At this early stage of development, it is ULTRA IMPORTANT to start performing DETAILED trademark searches so that you can choose a name that will not have conflicts, or otherwise be "confusingly similar" to an existing trademark.  

I have seen TOO MANY TIMES where a company gets a year or two into the process only to find that another company is seeking to oppose or even cancel their trademark.  These IP issues can lead to unwanted litigation, and proceedings before the TTAB (Trademark Trial and Appeal Board).  Most companies should desire to avoid these time-consuming and costly problems.  Proper IP planning with a mobile application attorney therefore makes a ton of sense.

Attorney Steve® Tip:  note that you cannot trademark protect the mobile application itself.  For this, you will need to look to COPYRIGHT LAW, or possibly patent protection.  Under copyright law, you can look to protect "creative works of authorship fixed in a tangible medium of expression."  

Trademark "Priority" Disputes - The "Assignment in Gross."

Priority Contests (where a company may try to acquire an assignment of an older identical trademark in order to establish a pattern of use that predates that of its competitor).  Also known as purchasing priority as an asset.

Many mobile app disputes arise due to trademark infringement issues.  One company may complain that another application is violating their pre-existing trademark rights. A fight may arise over who has the lawful rights to use the trademark and who does not.  Sometimes, you will find one company (that wants to submit/market an application) try to purchase a federally registered trademark - that was registered before the other company had trademark rights - and create a dispute with Apple or Google store over this, and seek to have the other party withdraw their app from the relevant app store. 

In seeking to obtain the federally registered trademark rights, one may seek an assignment of the trademark and the business "goodwill."  Will this alone give the assignee of the trademark "priority rights."  not necessarily.  In these situations there is a legal concept known as "assignment in gross" that may preclude the assignee in this situation from having priority trademark rights over the other party.  In essence, by showing the assignment of the trademark was ineffective or nothing more than a ruse to seek priority rights.  This doctrine is complicated, but let's take a look at one case that discussed this principle.

As one New York federal court held:

Clark & Freeman Corp. v. Heartland Co. Ltd., 811 F. Supp. 137 (S.D.N.Y. 1993)

Generally, an assignment of a trademark and its accompanying goodwill will entitle the assignee to "step into the shoes" of the assignor, gaining whatever priority the assignor might have had in the mark. Money Store v. Harriscorp Fin., Inc., 689 F.2d 666 (7th Cir. 1982); G's Bottoms Up Social Club v. F.P.M. Industries, Inc., 574 F. Supp. 1490 220 U.S.P.Q. 874, 879 (S.D.N.Y.1983); 1 McCarthy, Trademarks and Unfair Competition 805 (2d ed.1984); accord 15 U.S.C. § 1060.

However, where a trademark has been assigned "in gross," i.e. without the accompanying goodwill, then the assignment is invalid, Haymaker Sports, Inc. v. Turian, 581 F.2d 257 (C.C.P.A.1978), and the "assignee" must instead rely upon his or her own use to establish priority. Merry Hull & Co. v. Hi-Line Co., 243 F. Supp. 45 (S.D.N.Y. 1965); see McCarthy, supra, at 807.

Marshak v. Green, 746 F.2d 927 (2d Cir. 1984), discusses the rationale behind the assignment in gross rule:

"Use of the mark by the assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another." Id. at 929; see Money Store; PepsiCo, Inc. v. Grapette Co., 416 F.2d 285, 289 (8th Cir. 1969).

Let's take a closer look at this principle.  If, for example, a company (with no trademark rights), purchases an assignment of a pre-existing trademark but only for the sole purpose of acquiring part of the trademark name so they can try to kick another app off the Google or Apple app store based on a claim of prior existing trademark rights, is this legal? 

The law wants to encourage a "bona fide" assignment of the trademark and the "goodwill" that goes with it.  In other words, if you buy the Hershey's trademark, and it is assigned to you, the law expects you to keep selling Hershey bars using the valuable trademark and goodwill so that consumer will continue to know what to expect from the source of goods. 

However, if you buy the Hershey's trademark just because you wanted to purchase the name for priority trademark purposes, it can be argued that this is nothing more than an "assignment in gross" (naked assignment) and not a valid transfer/use of the mark by the assignee. 

Here is one California Central District case that discusses this: MGM Pictures, Inc. v. Mark Brown, Beauty Shop, LLC (C.D.Cal. Feb. 11, 2004, No. CV 03-8103 SJO (Ex)) 2004 U.S.Dist.LEXIS 29562, at *15-17.)

Courts have upheld assignments of marks "if they find that the assignee is producing a product or performing a service substantially similar to that of the assignor and that the customers would not be deceived or harmed." Marshak, 746 F.2d at 930. This is the case even if no physical or tangible assets have been transferred. Defiance Button, 759 F.2d at 1059. The key question is whether the assignee produced a product "substantially similar" to that of the assignor such that "the customers would not be deceived or harmed." Clark & Freeman Corp. v. Heartland Co., 811 F. Supp. 137, 140 (S.D.N.Y. 1993). [*16] 

Even minor differences can be enough to threaten customer deception. In the oft-cited Pepsico. Inc. v. Grapette Co., 416 F.2d 285, 289 (8th Cir. 1969), the appellate court instructed that:

Where a transferred trademark is to be used on a new and different product, any goodwill which the mark itself might represent cannot legally be assigned.

"The trademark owner does not have the right to a particular word but to the use of the word as the symbol of particular goods."

To hold otherwise would be to condone public deceit. The consumer might buy a product thinking it to be of one quality or having certain characteristics and could find it only too late to be another. To say that this would be remedied by the public soon losing faith in the product fails to give the consumer the protection it initially deserves.

That said, the court in Pepsico found that the assignor's cola-flavored syrup and assignee's pepper-flavored syrup were sufficiently different to prevent a transfer of goodwill, and thus invalidate the assignment:

"[The assignee]'s intended use of the mark is one simply to describe its new pepper beverage. Id. at 290.

The evidence is clear that [the assignee] did not intend to adopt or exploit any 'goodwill' from the [trademark] and [the assignor]'s long association and use of it with a cola syrup." Id. at 289-90.

Other cases - Marshak v. Green (2d Cir. 1984) 746 F.2d 927, 929.

• Courts have held that registered trade names or marks may not be validly assigned in gross. A sale of a trade name or mark divorced from its goodwill is characterized as an "assignment in gross."  

• Use of the mark by the assignee in connection with a different goodwill and different product would result [**6]  in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another. "The consumers might buy a product thinking it to be of one quality or having certain characteristics and could find only too late to be another. To say that this would be remedied by the public soon losing faith in the product fails to give the consumer the protection it initially deserves." Pepsico, Inc. v. Grapette Co., 416 F.2d 285, 289 (8th Cir. 1969). See  [*930]  also, 1 J. McCarthy, Trademark and Unfair Competition, § 18.1, p. 794 (2d ed. 1984)

Thus, issues of whether the assignment involves a new use of the trademark, transfers the goodwill, and whether consumers would be confused are key issues in every analysis.  Other facts such abandonment of the trademark, and non-use of the trademark will also potentially factor in.  Also, was the assignor purchasing a trademark (presumably for a lost cost) from a company going bankrupt or otherwise closing its doors (what is the "goodwill" value of a trademark that essentially failed in the marketplace).  Also, some courts will look to whether there is continuity in management flowing with the assignment.

For example, in Marshak v. Green, 505 F. Supp. 1054 (S.D.N.Y. 1981), defendant unsuccessfully claimed that the assignment of the service mark, "The Drifters," to plaintiff was an invalid assignment in gross. The plaintiff had been the manager of the group prior to the assignment and continued in that capacity after the assignment. The Court found that the plaintiff had promised to protect the mark from infringement and had continued to provide the same singing style. "The [**9]  essence of what [plaintiff] acquired was the right to inform the public that [he] is in possession of the special experience and skill symbolized by the name of the original concern, and of the sole authority to market its services." Id. at 1061.

• If the owner expressly abandons his mark, such as by cancelling it, or discontinues using it with the intent not to resume use,  others are no longer restrained from using it since it ceases to be associated in the public's mind with the owner's goods or services. Manhattan Industries, Inc. v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 630 (2d Cir. 1980).  In the example above, if the assignor makes it publicly known that it is closing his doors, would this constitute grounds to use the trademark? 

• The mark also ceases to be enforceable against others when it loses its significance as an indication of the origin of goods sold by and associated with the mark owner, such as when the owner makes the mark the subject of an unrestricted license or sale to others, Haymaker Sports, Inc. v. Turian, 581 F.2d 257, 261, 198 U.S.P.Q. (BNA) 610 (C.C.P.A. 1978); Universal City Studios, Inc. v. Nintendo Co., Ltd., 578 F. Supp. 911, 929 (S.D.N.Y. 1983), aff'd on other grounds, 746 F.2d 112, (2d Cir. 1984), or the mark has become generic, Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), or the owner assigns the mark without the goodwill associated with it, 15 U.S.C. § 1060; Marshak v. Green, supra; Universal City Studios, Inc. v. Nintendo Co. Ltd., supra, 578 F. Supp. at 922-23.

• Under such circumstances the mark is held to have been abandoned for the reason that there "are no rights in a trademark apart from the business with which the mark has been associated" and the "use of the mark by the assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another," Marshak v. Green, 746 F.2d at 929 (2d Cir. 1984); accord Universal City Studios v. Nintendo Co., supra, 578 F. Supp. at 922-23 (holding invalid the separate transfer of the King Kong mark by its owner when all of the business associated with the mark had been developed by a third party movie studio).

• Thus, a trademark may be validly transferred without the simultaneous transfer of any tangible assets, as long as the recipient continues to produce goods of the same quality and nature previously associated with the mark

  See Defiance Button Mach. Co. v. C & C Metal Prods. Corp. (2d Cir. 1985) 759 F.2d 1053, 1059.) for the above four bullet points.

• Also, another case helod that an assignment is ineffective to transfer the assignor's priority if the assignee uses the mark on substantially different goods or services. PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969) (acquisition of mark on cola drink did not confer priority when assignee used mark on pepper drink); see also Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (retail store specializing in products for diabetics compared to title of health and weight loss book recommending reduced consumption of insulin-producing foods); Clark & Freeman Corp. v. Heartland Co., 811 F. Supp. 137 (S.D.N.Y. 1993) (women's boots and men's shoes). Use of the mark by the assignee "in connection with a different goodwill and  different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another." Marshak v. Green, 746 F.2d 927, 929 (2d Cir. 1984). See Boathouse Group, Inc. v. TigerLogic Corp. (D.Mass. 2011) 777 F.Supp.2d 243, 251.)

• “whether the products are designed to appeal to distinct or similar customer groups.” Glow Indus., 273 F. Supp. 2d at 1113; see also BBC Grp., 2019 U.S. Dist. LEXIS 161317, at *8 (“‘Substantially similar' products . . . must also appeal to similar customer groups.”).  The mere fact that two uses are in the same "class" for trademark purposes is not sufficient to demonstrate that they are substantially similar. See PepsiCo, supra, 416 F.2d at 289 (holding that a soft drink using a "pepper" syrup was not substantially similar to a soft drink using a "cola syrup" and citing W.T. Wagner's Sons Co. v. Orange Snap Co., 18 F.2d 554, 555 (5th Cir.1927) (fruit beverages are not substantially the same as ginger ale)). Indeed, even generally similar products have been found not to be substantially similar where they have key differences. Whether differences are important turns in this context on whether the products are designed to appeal to distinct or similar customer groups. 

Attorney Steve® Tip:  This is a tricky area of trademark law that may need to be analyzed in mobile application disputes where one of the companies to the dispute buys a trademark apparently for the sole purpose of trying to get priority and get the others application kicked off Apple or Google via a trademark infringement assertion. 

Other factors that can work against a trademark purchaser who can lose priority rights if the assignment is found to be "in gross" is whether: (1) the quality control standards of the assignor was carried over, (2) was their a continuity in management, and (3) is the trademark assignor deceiving the consumer by not continuing use of the mark as consumers have come to expect and other factors and (4) is it the same target audience as the assignor.  The trademark purchase and assignment agreement will likely need to be reviewed for other factors.

It would seem this can also be argued as an unfair form of competition.  Issues such as whether or not to file a TTAB trademark cancellation proceeding may also arise.

Federal Assignment in Gross Jury Instructions

Copyright Protection for Mobile Applications

Some things you may want to look into as far as copyright protection is the following:

1. Graphic User Interface
2. On-screen text
3. Music/audit
4. Source code, or, (in its machine-readable form), object code of the underlying software.

Copyright arises automatically without a need to register the work with the United States Copyright Office, however, since the price to register is low, and benefits high (it allows you to sue infringers for statutory damages, attorney fees, and seek an injunction to stop your competitor from selling infringing Works) makes registration a necessary item for the mobile app developer to consider.  

Attorney Steve® Tip: Having strong intellectual property protection is also important to make investors feel better that you have something proprietary and that is protected by federal law.  While trademark protection lasts for as long as the trademark is used, copyrights generally last for the life of the author (app designer) plus 70 years from the end of the calendar year in which the “author” of the work dies.

Mobile App Video Games

Click to watch Attorney Steve® provide a legal overview of some of the intellectual property issues that can be involved in the video game business.  Make sure to SUBSCRIBE for future legal updates!   Join over 40k others who love our general legal content!!

Work-for-Hire Agreements

If you are hiring a third party to develop your mobile application, you also need to make sure you retain ALL OF THE INTELLECTUAL PROPERTY RIGHTS.  You may need to look at obtaining and putting in place a proper Work-for-hire-agreement.  Here is a video that will help you decide if a work-for-hire agreement is right for your company.  This is a KEY issue NOT to overlook.

Partnership Disputes

I have seen a good many times two friends that start discussing a mobile app project and how they are going to make millions.  They will then agree to split the profits and losses 50/50 and move forward to design the application, or have a third party design it.  Then, one of the partners gets LURED AWAY to develop the project with another company, perhaps a more experienced, or well-funded company.  This can raise issues with "the parternship," intellectual property and potentially even trade secrets.  While oral partnerships can be enforceable under California law (and many other states), its is best to put your terms in writing to prevent the above situation, or at least have agreed-upon terms to deal with the situation.  We can help with partnership agreements and partnership fallout, including written and oral partnerships that can be implied from the circumstances as well.

Contact a California Mobile App & Video Game Lawyer

Since 2004, Vondran Legal® has been a leader in Business and Intellectual Property law.  We have offices in California and Arizona but can handle federal copyright, and trademark cases nationwide.  In many cases, you will want a California law firm to deal with Google and Apple issues since they are located near our San Francisco Office in the Northern District of California.   

We can be reached at (877) 276-5084 or fill out our contact form.