Reviewing Apps on YouTube

Dear Rich: I am a relatively new YouTuber that is focusing on how to help other parents of autistic children. I thought it would be helpful to positively review different apps that I have used with my child. The first review that I wanted to do was a group of four apps that were all created by the same person. I have looked at all four apps in search of a licensing agreement. Basically, I wanted to use the apps on the iPad while I commented and explained how they worked -- usually in about 60 to 90 seconds each. Do you think this would need written permission? It would be unlikely that an app developer would object to your use of screen shots in a YouTube review. Because your use is limited (90 seconds of screen time) and is for purposes of commentary and criticism, it seems to fit squarely within fair use boundaries. One court has already ruled that screenshot reproduction, even for purely commercial purposes, constitutes a fair use.
Getting permission is always better than relying on fair use. If you have permission, there's no need to worry about pesky cease and desist letters or DMCA takedown notices. The downside to asking is that it alerts the owner of your intended use in case for some reason they're opposed to it. Also, before you ask, check the apps end user license agreement (EULA). The EULA may give you a limited right to use screenshots for review purposes. If not, you can email the owner and get permission.
Just saying' dept.  Some people have successfully claimed fair use even after a copyright owner refused a request for permission.

Can I Stop App Maker From Using My eBook Title?

Dear Rich: I recently discovered that a new Apple app is using my exact common law trademark -- a phrase associated with my former profession. Through Apple, I contacted the app designer, who said she registered the trademark with the USPTO and it was tough luck for me. Since February 2013, I have used my trademark for the title of my copyrighted eBook, which is available globally on Apple, Amazon, Barnes and Noble, Kobo and Smashwords. Since that date, any cursory internet search for those keywords would reveal my eBook, my website and my personal contact information. How can I regain control of my common law trademark? I used the trademark first, the app trademark is identical, both are used for digital products and both are available in the Apple store (and appear in close proximity in online searches).
Sorry to deliver the bad news but if you've only used the phrase in connection with a single book title, you probably have not acquired any common law trademark rights. As the USPTO puts it, "the title of a single book cannot serve as a source identifier," and as we've indicated previously, only a book title used as part of a series is registrable as a trademark. There may be exceptions for blockbuster books but you would be in a better position to chase the app developer if you offered other goods or services with the phrase.
The app developer's trademark registration. Looking at the USPTO trademark records, it appears as if the app developer's statement that she registered the trademark may not be completely accurate. Although the examiner has approved the mark, there seem to be two steps remaining in the registration process: (1) publication of the mark on the Principal Register (which is supposed to occur on July 7, 2015); and (2) the app developer must submit evidence that the mark is being used in commerce (the developer filed an intent to use or "1B" application). That leaves two possibilities. First, you can file a notice of opposition following publication. We don't think you have sufficient basis to do that but you would be best served by seeking out a trademark attorney for guidance. Alternatively, the registration may not be granted if the app developer fails to file a Statement of Use  (or seek an extension) within six months of the Notice of Allowance (The USPTO explains these procedures.)
Copyright claims? If the app developer is taking more than the title from your eBook, you may be able to frame the dispute as copyright infringement.

Needs App Co-Owner Agreement

Dear Rich: I am starting up a new business that designs educational apps. We have designed our first three apps and are close to submitting our first one to Apple and Android stores. Our designer is my business partner's husband and has worked for free so far. We want to write two contracts: One contract will designate how the monies will be distributed: we would like to use the following percentages: 30/30/30/10 for designer/partner/self/business account for the first two apps. Then if the first two apps earn enough, we would switch to paying the designer a flat fee as we have done for the programmers. We would also like to write up a contract that stipulates who owns the intellectual property rights to the images and what each party can do with them. Our thinking is that we will all own the rights, however, my company will own the sole rights in that we can decide what the designer may do with the images -- for example, he can use them for promotional purposes only for his business. We can use them in the app, our website and any other way we'd like. Is there a standard form for such types of contracts that we could use to modify for us? We're not sure if there is a "standard" form for the arrangements you describe but you could probably modify an innovation joint ownership agreement (assuming you will all be co-owners) -- for example, something similar to the  joint ownership agreement included in our licensing book. You could also draft something by yourself - something that simply sets out what you describe above -- for example that you are all co-owners and that you have different rights when it comes to the images contained in the app. You need to be specific that this agreement applies to the two apps, only, and you need to be clear about who owns the underlying images, and how you will divide and distribute the money (the app stores won't do that for you). As for the flat fee for future apps, you wouldn't need to include that in your current agreement. That could be the subject of a separate agreement. Also, as long as we're hyping our stuff, you might find it helpful to check out our O'Reilly guide for app developers.

Can I Create a Stars Wars App?

Dear Rich: I am a Star Wars fan and in my spare time I have created a Win 8 app game which uses the Star Wars storyline. Now it is nearly finished but I have some doubts in publishing it to the Windows Store so everybody can play it. I don't ask any money for it so it's free to play for anyone who wishes to play it. It is a game where you can compete against other players. Do I risk to much if I publish it online ? If I do, will I get sued for many $$$ or will I first get some kind of notice so I have the time to take my server offline so you won't be able to play it anymore? Yes, Lucasfilm, the owners of all things Star Wars-ian, will  likely close down your app at warp speed (assuming you're going to sell your app through an app store, and assuming you can get your app past the app store screeners). Unlicensed Star Wars apps disappear quickly from app stores because it's fairly easy to find and shut down app infringements (for example, some of the apps in this article seem to have gone away). That also explains why the only legit Star Wars apps you can find are by Lucasfilm or a licensee such as Angry Birds, Legos, etc.
Will they take your house? We can't tell you what will happen if you post your app, but like Palpatine's army of clone warriors, the Lucasfilm legal staff is an efficient goal-seeking team. Their initial focus will be on closing down the app, not eviscerating your bank account. It is usually only after Lucasfilm lawyers have been rebuffed that they file a lawsuit. But of course, our information is all hearsay, and Lucasfilm is entitled to seek damages or an order seizing your servers. By the way, offering the app for free shouldn't make any difference as to whether your app is closed down.
Bottom line dept. Because apps like yours take a lot of time to prepare, and because yours is likely to be shut down, our advice would be to change the story line so that it's not based on the Star Wars movie series. Of course, you'd also lose the network of fanboys so we can see why you might want to disregard our advice and share your work with the Jedi world. In that case, may the force ... etc.
Related entry: Is Star Wars blog illegal?
For more on app legal issues: Protecting Your Mobile App
Invaluable New Invention: OSM

California App Developer Privacy Policy

Dear Rich: I'm working on an app that sorts through a user's Contacts and helps to build a family tree. We're ready to launch but I read there is a new federal law that app makers have to disclose privacy policies. What's the law and how do I create a policy for my app? It's not a federal law, it's a California law. However, unless you plan on avoiding all California app buyers, you'll need to abide by it if your app collects "personally identifiable information about Californians." Perhaps your app doesn't collect this type of information, and if so, you don't have to do anything. But if you do collect info (or you're not sure and want to avoid any potential liability), you should probably make a downloadable version of your privacy policy available to consumers. Here's where you can read about California's rule. Apparently, the potential fines for a failure are $5,000. It's easy to create a privacy policy; just look at somebody else's and copy what applies to your situation. Apparently, there are also free privacy policy creators online though we can't vouch for the results.

What Version Do You Deposit for Software App Copyright?

Dear Rich: We have a popular app that's gone through several versions and is available for Apple and Android platforms. We've never copyrighted the app and now we're trying to do it. We started with the electronic registration but we're confused. Do we register the current version of the program or the first version. The Dear Rich staff is feeling kind of strange these days and we're not sure whether it's world events, Liz Taylor's departure, the behavior of the tides and moon, Charlie Sheen's trademark activity, or all of the above. In any case your question triggered memories from back in the 80s when we worked for a software company that developed networking software. And one day the company's developer hooked up the software in our office and somebody in another office sent us our first message from their computer and it was just like one of those "Come here Mr. Watson" moments.
Right, you had a question. If you're concerned about infringement, you should register both the first version and the most recent version, and you should probably do the same for all platforms. Yes, it's true that you get copyright automatically once you create a work. But in reality, the copyright is not so automatic when you want to sue someone. That's because you have to file a registration before filing your suit. When completing the application, the Copyright Office rules require that you (1) list the first date of publication, (2) that you acknowledge any preexisting material that you incorporate in your version, and (3) that you deposit the best edition of the first publication. Those three criteria can cause confusion. That's because software programs (like video games and websites) go through a series of substantial changes after they're first offered to the public.
Date of first publication; preexisting material. The Copyright Office wants you to provide the date of first publication for your software program. But if you're offering a series of version, each constitutes a separate "first" publication. For example, there's a first publication for your iPod version, your iPad version, your iPod 2.0 version, your Android 3.0 version, etc. And whenever you register your work you can claim only what is new over the previous version. As a result, you must file a series of registrations as described here.
Depositing the best edition. Consider the software developer who no longer had the first published version of his source code from 1990. In order to deposit the first published version, he reconstructed it by removing all of the code he'd added since the program was first created. Not good enough said a court who claimed that reconstructions of code would not suffice. Therefore, we hope you have maintained copies of the source code for each version and you can furnish it according to these requirements. P.S. For more exciting legal info on apps, check out our O'Reilly Mini eGuide.