CannaTech is a burgeoning industry and one in which many of our clients are participating and investing. And though these businesses run the gamut from purely ancillary service providers, like WeedMaps, to full-blown delivery companies, like SpeedWeed and Nestdrop, they all face trademark and copyright issues unique to mobile apps.
Apps, a ubiquitous feature of most of our daily lives, are computer programs designed to run on mobile devices. Like any other software program, the content of an app may be eligible for copyright protection, and the name of the app, as well as the display tile, may be eligible for trademark protection.
An app can consist of a combination of text, images, sounds and videos, all of which may be subject to copyright protection if they are “original.” Copyrights protect original works of authorship, including literary, dramatic, musical, and artistic works, such as novels, movies, songs, architectural designs and software. With respect to software, copyright protection will extend to all copyrightable expression embodied in the computer program, but will not extend to ideas, program logic, algorithms, systems, methods, concepts, or layouts.
A copyright exists from the moment a work is created, but though registration of your copyright with the U.S. Copyright Office is not required, you must register your copyright if you intend to bring a lawsuit for infringement of your work. Additionally, registering your copyright puts the public on notice that you are claiming rights in the copyrighted work, and registered works may be eligible for statutory damages and attorney’s fees in successful litigation.
While copyrights protect original works of authorship, including the source code of an app, trademarks protect words, phrases, symbols, or designs that identify the source of the goods or services of one party and distinguish them from those of others. In the context of apps, a trademark can protect the app name, as well as the display tile.
The first thing to be mindful of in choosing a name and tile for your cannabis app is, just like in choosing a business or product name, ensuring that your proposed marks do not infringe the trademark rights of any third party. Have your trademark attorney perform a comprehensive search to determine whether your proposed mark is available, and secure advice pertaining to the strength of your mark and the level of risk you run of infringing any existing marks. Facebook, for example, has more than ten trademarks on various “F” logos, and diligently sends cease and desist letters to app developers using tiles featuring a prominent, and arguably similar, “F.” I would hate for any of my clients to attempt a face-off in court with Facebook over trademark infringement. Even if my client were to prevail, the costs of the legal fight would likely be staggering.
With that in mind, it’s important to know what registrations are out there to avoid sinking costs into developing an app name or tile that will garner opposition from an established company. It’s also important to register your marks early, before launching your app. And once your mark is registered, you should develop and adhere to strict brand guidelines to prevent your mark from becoming generic – even terms like “app store” and “smartphone” used to be distinctive, but lost that distinctiveness through failure to control use of the marks. The risk of losing the distinctiveness of your mark is particularly high in such a rapidly evolving industry.
With new apps — cannabis and otherwise — launching at such a rapid pace, keeping track of other potentially infringing marks can be daunting, and mobile platforms like Google, Apple, Amazon and Windows have limited resources with which to deal with complaints of infringement. Google, for example, will typically only take down a purportedly infringing app upon request if you have clear, registered copyright or trademark rights. Otherwise, they will go to the developer first in an attempt to negotiate, which can take substantially more time. Having registered IP rights is absolutely critical for building and protecting your brand, and for ensuring that the mobile platforms hosting your apps can assist you.
For more on cannabis trademarks and branding, check out the following: