Many organisations commission external developers to build apps. When you do, it’s important to get the ownership issues right. This quick checklist outlines a few key IP points for negotiation.
1. Who owns the app idea?
Your developer may have created other apps similar to yours and may wish to do so again. However, perhaps you don’t want to see a virtually identical app pop up from the same developer elsewhere, or be restricted from doing the next version of your app with a different developer. You need to understand and protect what’s unique to the app, and ensure that you get the exclusivity and flexibility you can realistically expect. If the app idea came from your organisation, this should be reflected in the contract. If developed together, the rights of each party to make other apps like it need to be spelt out carefully. This initial scene setting has important ramifications for what each party can do without the involvement of the other later on.
2. Who owns the code and wireframes?
The developer code used to write the app will often be owned by the developer and licensed to the app owner. This is to ensure that developers can continue to create new apps based on the code they write. Some of this code may be repurposed from other apps the developer has done. But every app is different. You may wish to specify that specially customised coding or wireframing (e.g. the way pages of the app are set out) is exclusively yours, or yours for an exclusive period. This can cost more, but may be a good investment. If code is developed together with internal IT personnel from your organisation, there needs to be a co-licensing arrangement in place.
3. Who owns the content of the app?
The contract should state that any content contributed by the organisation is owned by it, and is licensed only for this app. This could include copyright material such as photographs, recordings and text, and archival content which, in its original form, is out of copyright. You will need to double check that your organisation owns or has a licence for all content it supplies. If the developer contributes its own content, it should be required to grant a perpetual non-exclusive licence for the app and any other agreed purposes.
4. What about new co-created content?
Where new content is co-created with the developer and your staff, it is important to specify who owns this content, what it can be used for and who can licence it to third parties or commercialise it.
5. Own the branding
If your app name and logo (or “icon”) is your organisation’s trademark, the issue of who owns the app branding should be clear. However, if the app branding is something different or new, you need to consider who owns it. You should also consider whether each element is trademarkable (that is, distinct and not too generic or descriptive) and not already being used in that class of goods or services. Even if you don’t want to develop brand extensions now, you want to be able to do so later. For example you might later wish to use it for different apps, or for other products or services.
6. Maintenance and further development of the app
Who is allowed to update and amend the app, and who will maintain it? Can this be done in-house or must the developer be re-engaged? Can the organisation engage another developer for these purposes? What if the developer goes out of business? Again, the copyright and ownership clauses of the developer agreement need to be considered in light of these needs.
These points are only some of the issues that will arise in an app developer agreement, and each project will raise different issues. Contact me to discuss your project queries. This post is not legal advice.