Essential for Apps Going Global: Summary of Legal Risks of Google Play and Apple App Store

John Wei focuses on studying copyright issues in Apple and Google app stores , American music and film licensing, and domestic Internet industry policies.
Operation public account : John Wei Contact email: [email protected]

Google and Apple are both American companies and must first comply with US laws. The main US laws related to app stores are as follows:

• U.S. Trademark Law
• US Patent Law
• U.S. Copyright Law: Copyright Act of 1976, Digital Millennium Copyright Act of 1998, etc.

1. Copyright Dispute (DMCA Takedown Notice)

I believe that many developers have received DMCA removal notices. According to DMCA laws, platforms (APP STORE and Google) should immediately remove infringing or controversial content from the date of receipt of infringement complaints. However, DMCA is everywhere now, and it is actually difficult to define whether it is infringement. As a result, Apple or Google has become very cautious in handling DMCA complaints, and often even requires developers and copyright owners to resolve the issue between themselves. However, well-known IPs will also require the infringing party to provide authorization or other proof documents. Once the proof of ownership cannot be submitted, Apple or Google will directly remove the infringing game or application.

The general format of a DMCA takedown notice is as follows:

1. A physical or electronic signature (ie, /s/NAME) of a person authorized to act on behalf of the owner of the copyright that is allegedly infringed.
2. Identification of the copyrighted work claimed to have been infringed.
3. Identification of the material that is claimed to be infringing and information reasonably sufficient to permit the service pr ovider to locate the material.
4. Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. Contact information of the infringed party
5. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner.
6. A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of the copyright that is allegedly infringed.

Once Google or Apple receives a DMCA takedown email, they will immediately contact the infringer and ask the infringer to respond, but Apple and Google have different strategies. Google may directly remove the app depending on the situation, and Apple will generally send similar emails to developers:

we received a notice from XX Inc. (“Complainant”) that Complainant believes the app listed below infringes its intellectual property rights. In particular, Complainant believes you are infringing its copyright. Please see their comments below：

Apple will send the other party's complaint email to you and also copy the other party. And suggested that both parties resolve the issue themselves. Now many developers have learned their lesson and started sending out DMCA notices everywhere, which has become a common means of intimidating opponents. Of course, if you really receive a takedown notice from the copyright holder, don't be nervous. We can generally solve it according to the following ideas:

First, find out whether there is any infringement. If not, list the evidence and send it to Apple and ask them to provide evidence. Generally, if there is no infringement, the other party can also find favorable evidence. Once the other party does not have strong evidence, the case may be in PENDING status. Unless the other party obtains a court subpoena, Apple will not immediately remove your APP. The key is that there must be no problems with you and no infringement, otherwise Apple is likely to remove your product.

What if there is infringement? You can remove the infringing content and explain it to the other party. You can modify it and submit it for review again, but do not plagiarize again, otherwise your account may be blocked. If your game is very popular and generates good revenue, and you cannot afford the loss of having your game removed from the shelves, you can negotiate with the other party for compensation. Through compensation, you can obtain their authorization or time to make corrections. In this way, your product may not necessarily be removed from the shelves.

It should be noted that the U.S. departmental law is not a single law, but a collection of related acts and precedents. The Digital Millennium Copyright Act of 1998 is a copyright law specifically enacted by the United States for the new economy (knowledge economy), and it has been 20 years since then.

2. Trademark Infringement and Trademark Registration

Chinese developers like to borrow the names of popular games, thinking that this can help boost their rankings and help ASO . However, this idea is very dangerous if it is transferred to the App Store or Google Play . If the name of a popular game has been registered as a trademark in the United States, the trademark owner can file a complaint with the App Store or Google Play, namely a trademark infringement complaint. After verifying the trademark ownership, Apple will immediately remove games with the same name or games that are easily confusing. The trademark registration fee in the United States is not expensive, generally between RMB 6,000 and 8,000, and it takes about 9 months. However, unlike China's trademark law, the United States follows the principle of first use, and trademark protection is not based on trademark registration. The advantage of a registered trademark is that you can conduct trademark protection activities throughout the United States. If you do not have a registered trademark, you cannot file a trademark infringement lawsuit in federal court.

If the game name is registered by someone else, you can file an objection through the official website of the United States Trademark Office, but the trademark objection must be filed during the announcement period, which is generally 30 days. If the opposition is successful, ownership of the trademark will transfer to the opponent. If the objection fails, you will be in a very passive situation. The other party may ask Apple or Google Play to remove your product or force you to change the name. Changing the name doesn’t matter for new games, but if the game has just been launched and is forced to change its name, it will be very damaging and will most likely reduce the amount of organic downloads.

3. Patent Disputes

Like China, patent applications in the United States are protected by law. Mobile games can protect their names and logos through trademark applications, and can protect their UI and gameplay through design patent applications. Gameplay is not protected by U.S. copyright law, but can be protected by patent law by applying for a patent.

Patent disputes in the App Store or Google Play are much less common than trademark and copyright disputes, mainly because patent protection and trademark and copyright protection are fundamentally different:

1. Patent protection is based on registration application, and must be registered first in both China and the United States;

2. Trademark protection does not require registration, and the immediate registration fee is relatively low. It is recommended that you register for the convenience of future rights protection;

3. Copyright is protected by copyright law from the moment a work is completed, but it is difficult to obtain evidence, so be sure to preserve the evidence. The premise of patent protection is that the defender should hold a legal and valid patent. Due to reasons such as cost and time, most developers simply will not spend time and money to register patents. If the game revenue is relatively stable and the life cycle is relatively long, you can consider applying for a patent.

Game developers may consider applying for design patents (UI interface) and gameplay patents (utility models). The application fee for UI patents is lower and the process is faster, while the application for gameplay patents is more time-consuming and there is also the risk of objections.

IV. Infringement of game materials and fonts

Game materials and fonts also fall under the category of copyright, but many developers download a lot of unauthorized images through Baidu or Google for use in game design in order to speed up the development of the game. When the game is still unknown, no one will pay attention to you, but once the game revenue reaches a certain scale, you will receive a cease and desist letter from the other party and ask for compensation. The cost of legally using images is not high. Game developers can purchase materials directly through the image resource library at a relatively low cost.

Font infringement is also one of the risks that domestic developers often overlook. The licensing prices of European and American font companies are not expensive, and there are also many free font resources available. Before using fonts, developers should first determine whether commercial fonts are used, and obtain legal authorization before using commercial fonts. Commercial use of open source fonts is not necessarily free, and there may be some usage restrictions, so you must pay attention to this.

5. How to reply to the complaint notice emails from App Store and Google Play

1. Be sure to reply to emails on time, clearly state your opinions and evidence, and avoid grammatical errors;
2. Assess whether there is infringement. If there is infringement, you should prepare in advance, modify it and re-examine it, or reach a settlement with the other party;
3. If there is indeed no infringement, the other party can be asked to submit evidence. Developers with financial resources can send a lawyer's letter to the other party through a law firm to further escalate the confrontation between the two parties and fight back against the other party with the principle of maximum pressure.
4. If the other party keeps complaining to Apple or Google, and your game revenue is limited and cannot bring significant scale revenue to the App Store, Apple or Google may directly remove the game because the store does not want to take any risks. Besides, your revenue is not enough for the platform to protect you. In the final analysis, money has the final say.
5. If the game is mistakenly removed from the shelves, you can actively appeal to Apple or Google. Games removed due to IP reasons are rarely allowed to be put back on the shelves, but there is always a chance.
6. If the game is indeed not infringing and is only removed because of a competitor's report, you can consider suing the competitor in the United States. After the lawsuit, you can apply to the court for temporary relief and require Apple or Google to put the game back on the shelves.

Few developers reach the last step. From complaints to final removal, there are many variables in between. Developers must respond proactively and never give up as long as there is a chance. Most of the enemies died on the way because too few of them persisted.

Summarize

1. A person with a clear conscience has nothing to fear. If there is infringement, correct it as soon as possible. If there is no infringement, you must actively protect your rights.
2. Try to register a trademark whenever possible. In the later stage when your income scale increases, if your trademark is registered by someone else, it will be difficult to handle and you will have to pay a large amount of trademark redemption fee. Try to register the game name and ICON as a trademark to prevent others from stealing the name and ICON. Don’t be afraid if you encounter trademark objections, just submit the evidence carefully. If your name is stolen by someone else, you can file a trademark infringement complaint with Apple or Google, and attach a U.S. trademark application certificate (or the trademark of the region where the game is released) to your email.
3. Don't be too nervous about copyright disputes. Respond actively to Apple or Google Play, try to resolve them with money if possible, and try to reach an agreement with the other party. If your game is pirated by others, you can send a DMCA takedown notice to Apple or Google and actively protect your rights.
4. Patent disputes are relatively rare. If they occur, the first thing to do is to determine whether the patent is valid. If the other party's patent has expired or the other party is not the patent owner, ignore it, but explain it clearly to Apple or Google.
5. Most intellectual property risks are preventable, so in the process of developing and promoting games, you should try to avoid using unauthorized materials, including but not limited to in-game background images, advertising materials, fonts, music, sound effects, etc. When naming a game, you can go to the official website of the United States Trademark Office to check whether it has been registered by others. If it has been registered, try to change the name.

Author: John Wei, authorized to publish by Qinggua Media .

Source: John Wei (ID: laoweishow)