When developing technology products, mobile applications, niche social networks, or other business online, intellectual property licensing and ownership issues will inevitably arise. Intellectual property licensing and development agreements are integral to product development for startups and technology companies, and strategic software licensing and acquisition can have a profound impact on a technology firm’s intellectual property asset portfolio, and company bottom line.
Intellectual property licensing of software technology is rampant on the internet and in mobile applications. Emerging technology companies developing hardware products, websites, mobile applications, databases, algorithms, software, and other digital goods and services will no doubt license some of the materials in their products using application programming interfaces (APIs), open source code, or other free or inexpensive pre-developed solutions designed to reduce development costs.
Intellectual property licensing and development agreements pertaining to digital products are legal instruments by which the owner of a form of intellectual property, such as a copyright, trademark, trade secret, or patent (the “Licensor”), may license, or in other words grant permission, to an individual or company (“Licensee”) to some how use the Licensor’s proprietary assets, usually in exchange for a fee or some other form of consideration.
Intellectual property licensing is essential in technology, innovation and digital publishing, allowing developers of different types of code, hardware, content and services to work together to create the user experience on any website or mobile application. For example, reading the New York Times on an iPhone requires licenses to Apple Computer’s iOS operating system, agreement to a Google Chrome or Apple Safari browser End User License Agreement (EULA), a license to access the New York Times content on the mobile device, which technically requires some form of copying of the content on the local memory of the phone, and utility of software code owned by the publishing platform NYT uses to operate its website, as well as some kind of relationship with a data service provider.
The 1976 USCopyright Act governs and protects original works of authorship such as literary, dramatic and musical works, images, graphics, and audiovisual materials, computer software, and sound recordings. Under the Act the owner of a copyright is vested with certain exclusive rights to:
- reproduce the work in copies or phonorecords
- prepare derivative works based upon the work
- distribute copies or phonorecords of the work to the public by sale or other
- transfer of ownership, or by rental, license, or lending
- perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works
- display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audio visual work
- perform the work publicly (in the case of sound recordings) by means of a digital audio transmission
1976 US Copyright Act, Title 17 USC, Sec. 106
While there is a perceived challenge as to protection of products built using other people’s intellectual property, and legal review of each software license is essential, courts have ruled in favor of protection of the unique selection, arrangement, and coordination of otherwise un-copyrightable subject matter in copyright infringement cases. Consultation with an experienced emerging technology attorney and copyright law expert can assist CEOs, entrepreneurs and product development teams to craft sophisticated technology licensing and product development agreements with corresponding intellectual property protection strategies that indentify solid competitive barriers, and intelligent legal leverage of existing digital infrastructure.
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Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2014. All rights reserved.
