Have just been providing some high-level responses to a journalist about IP issues for Augmented Reality App Developers…
For companies developing augmented reality applications, what are the key IP (particularly trademark) issues?
The defining characteristic of an AR application is that it overlays or augments immediate physical data with additional digital information. An example would be a smart phone AR app that lets users look at a ‘live view’ of a famous building and presents them with a travel guide’s description of the building and its history. But there are potentially endless uses of AR. A developer could, say, design an app that recognises well-known high-street brands, and tells users where to find similar goods and services nearby at cheaper prices.
For any AR app to work, it therefore needs to be able to access significant amounts of content – for example, relevant information about a particular tourist attraction, or where to find cheaper jeans than those for sale in the shop the user is looking at across the road.
This requirement for content, which is frequently sourced from third parties, creates legal risks for AR app developers. To begin with, unless it falls within a fairly narrow range of statutorily permitted uses or statutory exemptions (for example, the fair dealing exemptions under copyright law), or is licensed, such use is likely to infringe third party IP rights, primarily copyright as well as, potentially, database right (for example, in Europe) and trade mark rights. In addition, if the content itself contains illegal or infringing materials, the app developer may be found liable for the content available through its service – in the same way the developers of Grokster or the Pirate Bay have been found liable for illegal peer-to-peer file sharing by their users.
What protection is available for applications themselves, and how should developers police the market to ensure they are not infringing the IP rights of others (as well as being infringed themselves)?
There is no specific protection for applications in their own right. However, broadly speaking, provided that a developer does not generate or modify the content on its service itself, it will in principle be protected by the legal safe harbours that have been put in place in many jurisdictions to protect online intermediaries. In Europe, these safe harbours are set out in the E-Commerce Directive. However, they do not necessarily apply in all cases and they can be lost, in particular if the service provider has been notified that their service is providing access to infringing or otherwise illegal content and they do not act expeditiously to remove it.
Developers can put in place procedures to minimise the risk of infringement. These procedures will differ from case to case, and from jurisdiction to jurisdiction. However, a good starting point is to make sure that all use of third party data is licensed – whether it is provided by specialist data providers or as UGC by users. In many circumstances, it will also be appropriate to seek contractual protection in the form of warranties (and, particularly in the business context, indemnities) from content providers. In addition, developers should provide an effective mechanism for users to report infringing content and for the developer to deal with it. In some cases, some forms of moderation may be appropriate, too. In case of doubt, particularly if any unlicensed use is anticipated, developers should get advice from experienced IP counsel.
Where applications manipulate the brands of others (for instance, the BP example from last year: http://theleakinyourhometown.wordpress.com/), how should trademark counsel evaluate this use? At what point does fair use become infringement?
This is a difficult question, and there is no single answer, not least because so much will depend on the specific facts and where the activity takes place, since different countries have different laws. As a rule of thumb, any use of a third party trade mark in the course of trade which is not purely for the purpose of identifying the goods or services of the trade mark owner could give rise to liability. In the UK, this is the case in relation to registered trade marks if the mark used is: identical to a registered trade mark and the use is in relation to identical goods and services for which the third party’s trade mark was registered; the marks used are identical or similar and the relevant goods and services are identical or similar, and this leads to confusion; the use takes unfair advantage of, or is detrimental to, a famous registered trade mark; or the use identifies the goods or services of the registered trade mark owner or licensee but is not in accordance with honest practices in industrial or commercial matters.
