BY LAWRENCE HOFFMAN
A Global View of Computer Games
According to an article published by the World Intellectual Property Organization (WIPO) in 2014, video games have become a global industry worth an estimated 65 U.S. billion dollars annually. It is the fastest growing sector of the entertainment industry.
By any measure, the pace of evolution of our digital world is breathtaking. From computers that filled large rooms along with huge air conditioners, we now have driverless cars and the internet of things. Nor has the evolution of computer games been left behind. The first computer game is usually said to have been created by an MIT student in 1961. That rudimentary game, though the foundation of the industry, is about as much like today’s games as the Wright brothers’ creation is to a 787 or an F35.
By 1985, Nintendo had introduced the first game console for home use. If you wanted one and the games to play on it, you went to the nearby game outlet, and put down your money. You can still find places to do that, but you are more likely to pay for your new toy with a credit card or PayPal® and download the game from the internet, probably onto your smartphone or tablet.
Who Are You
If you do not work for a Nintendo or Sony and are immersed in creating a computer game that you hope will be the next Assassin’s Creed® or GTF Auto® or Super Mario Brothers®, you should read this article. If hit the jackpot, you may find that your success brings the poachers out of the woodwork – after all, the good, old-fashioned, way to make money is to steal it. But imitation isn’t flattery when someone copies your intellectual property, and it’s definitely not funny.
This three-part article will help you get your IP protection strategy in full swing before you put your game on the market. We will discuss what you can protect, how to do it and what to do when the bad guys come along. In this part, we will introduce you to the kinds of protection that are available and explain what you need to do to obtain that protection. We will note variations in protection available in some places and the kinds of transnational protection you might want to consider.
In Part II, we will look at ownership of IP that employees and outside contractors develop for you, and what you need to do to be sure you get what you have paid for.
Finally, in Part III, we will look at some of the kinds of nasty behavior you might encounter, and what the law lets you do about it. Needless to say, once you understand your rights, you will also understand what you should not do to avoid getting a competitor angry at you.
A Word or Two about IP Generally, and Computer Games in Particular
As a general matter, intellectual property laws protect embodiments or expressions of ideas, not the ideas themselves. Ideas don’t belong to anybody, or, if you will, they belong to everybody. What you do with an idea is what you can protect, and what you can prevent others from stealing. If others use your idea in ways that are sufficiently different from the way you do, you can’t stop them.
Subject to some limitations we will discuss below, anything you create is IP and is protectable in one way or another. Examples of what can be protected include literary works, music, cinema, fine art, industrial designs, trademarks, computer programs, chemical compositions, methods or processes, machines, manufactured articles, and yes – computer games.
Computer games are a bit different from other IP unusual because they are a blend of a still rapidly evolving art, literature and technology. Protection in the early days was as rudimentary as the games themselves, but that is in flux along with the industry itself. We will see in a moment how this affects the kinds of protection needed and available to you as a game developer.
The Weapons at your Disposal
Aspects of your game may be protectable by copyright, utility patents, industrial design/design patents, and trademarks. Laws concerning unfair competition can also apply. Your work in progress and confidential business information may also be protectable under trade secret law.
What Copyrights Protect: Copyright protection applies to the expression of an idea, and as in the case of other IP, not to the idea itself. Copyright has been the traditional method of protecting computer games because it provides protection for the most aspects of the games.
Copyright protection is a matter of national law, i.e., there is no such thing as an international copyright. There are, however, international agreements or treaties that set minimum standards for protection which all adherents to the agreements must follow. The oldest of these is the so-called Berne Convention, the original version of which dates back to 1886. In its present form, it has about 180 adherents.
Copyright covers almost all forms of literary and artistic expression. For computer games, this includes the software itself, the game story, associated music (lyrics, melody, arrangements performance), sound effects, the artwork embodied in the software, packaging, and advertising copy, both in print and on your (and perhaps your distributors’) website(s). From the perspective of a game developer, it may be assumed that all the literary and artistic aspect are subject to copyright protection, except as described below.
What is Not Copyrightable: Apart from the underlying ideas as noted above, there are several general classes of expressions that you might use in your game, but can’t protect. One is often referred to as the merger of function with an expression dictated by that function. Thus, if your game includes a literary component, e.g., dialog, that is the only way to describe an activity in the game, or a design or graphic element that cannot exist separate from the image of a utilitarian article of which it is a part, you cannot prevent someone else from using it in a game he or she designs.
Another basic limitation is generally referred to as ‘scènes a` fàire’. This is applied to a verbal or visual expression of the appearance of something, such a golf course, a sea shore, or a church for which essentially no other means of expression is possible. You can use such things in your game, but others can also, even they copy the idea from you.
Sometimes, there will be a narrow range of ways to express an idea. In such cases, if you can prove that your exact expression of the idea has been copied, protections may extend to that exact copy.
Facts are also not protectable by copyright. You can base your game on real history, or even a real place, but you can’t prevent someone else from creating a game based on the same facts or location.
Further, you can’t copyright the technology behind something you have invented that you incorporate into your game. If it is described as part of the game, your copyright covers the description and you can prevent someone from copying the description. However, your copyright will not prevent someone from using your description as a recipe for building what you have described. For that you will need a patent.
What Activities are Protected Under Copyright Law: Subject to some variations, copyright law gives the owner of a work the exclusive right to do (or to authorize others to do) certain things. These in (a) reproduction of the work, (b) communication of the work, e.g., by public performance, display, broadcast, or making it available over the internet, (c) distribution of tangible copies by sale or otherwise, and (d) creation of derivative works based on the original work.
All of these rights, except for (b) apply directly to computer games. Even (b) could apply, for example, if the game story is adapted as the script of a motion picture or a television program or if original music is released as a recording or performed. The right to create a derivative work would cover things as diverse as creation of new story lines or activities featuring the original characters, creation of toys or other items featuring game characters, translation of dialog, or other adaptations such as theme part features.
How to Establish a Copyright: You establish a copyright automatically when the work is created. In the U.S. this requires fixation in some kind of tangible medium, such as a computer hard drive or the storage component of a smartphone, or, of course, on paper. (Yes, people still do that.) Audiovisual aspects of computer games are treated as ‘fixed’ since the game program makes them reproducible. Uploading your game program to a website will also satisfy the fixation requirement.
Outside the U.S., fixation requirements vary. In the European Union, fixation is a matter of national law. Some countries require it, others do not. As a practical matter, fixation for computer games isn’t likely to become an issue since developers will always save the code and audiovisual aspects as the development proceeds.
Use of a Copyright Notice: Application of a Notice of Copyright to a published work is not required, but it is something that should always be done to notify others of your copyright. It can also enhance the damages you can recover for infringement in some instances. The standard notice is in the form of (a) the symbol © or the word “Copyright”, or the abbreviation “Copr.”, (b) the year of first publication, and (c) the name of the copyright owner. A similar notice for phonorecords uses the symbol ℗ rather than the ©.
Notice the reference to ‘published’ above. Whether a work has been published can sometimes be a complex question. You should avoid any uncertainties just by incorporating copyright notices in your game as it is being created.
Put a copyright notice in more than one place to be sure it won’t be missed. If you plan to sell the game through retail outlets, put notices on the packaging, on the media containing the software, and on written materials that accompany the software such as instruction manuals or promotional materials for related products. Put it on derivative products such as toys, costumes, jewelry, etc. where practical, or on tags or packaging.
If you will be making the software available for downloading, be sure to include notices on your website and/or as part of any materials you place on someone else’s website or in any other media. These should specifically include reference to the game software and the game as well as related products being promorted.
However you distribute your game, copyright notices should be prominently placed in the software so the user gets the message when the game is run. Suitable locations include any screen that shows the game title, on initial welcoming or other introductory screens, and in any online documentation including ‘read me’ files. Some commentators have even suggested including a notice on the status bar. Within reason, more is better.
Registration: While it is not necessary to do so, it’s a good idea. You can and should register your copyright promptly after the work has been created for several different reasons. One important reason is that registration for works of U.S. origin is necessary if you need to sue someone for infringement in the U.S. For works that are not of U.S. origin, this requirement does not apply, but statutory damages may be awarded only if you have registered. The amount of statutory damages may be substantially more than actual damages. For registered works, the court even has the option of awarding your legal fees.
According to information provided by the U.S. Copyright Office, any work that is protected by U.S. copyright law can be registered. This includes works that are first published in the United States or in a country with which the U.S. has a copyright treaty or that are created by a citizen or domiciliary of such a country. U.S. treaty partners include China, the EU and most EU and other European countries, Israel, Mexico, Russia, South Korea, and many others.
Copyright Office regulations state that for a computer program embodied in a cd-rom, the entire cd-rom package must be submitted by mail with a paper application form and not uploaded. You must include a complete copy of any accompanying operating software and instructional manual. You should also include a printout of the first 25 and last 25 pages of source code for the program.
The deposit requirements are somewhat different for software that contains trade secrets. Talk to your attorney if you are concerned about this.
What Trademarks Protect: Almost anything that can associate a product or service and its supplier (i.e., serve as an indication of source or origin) is protectable as a trademark, even if it doesn’t identify you by name. The name you adopt for your game or for the service of providing online interactive entertainment, your company name, a logo, a phrase or slogan used on packaging, or in advertizing your services, distinctive features of packaging, and even game characters can be trademarks. Sometimes, even color can be protected.
There are, however, limitations. The most obvious one is that you can’t protect a mark that is ‘confusingly similar’ to one already being used by someone else. You also can’t protect marks that are generic in relation to the goods or service (e.g., COMPUTER GAME would not be protectable) since that can’t serve as an indication of origin. The same goes for descriptive marks, (e.g., FLYING A 747 AT HOME for a flight simulator game).
Descriptive marks can, however, sometimes become protectable if they have been in exclusive use for a sufficient time to acquire an association with the product or service. This is called ‘acquired distinctiveness’ or ‘secondary meaning’. In the U.S., continuous exclusive use for five years will generally be accepted as a demonstration of acquired distinctiveness.
The best marks, i.e., the ones that will give you the most protection against poachers, are ones that are arbitrary or fanciful. Such marks bear no a’ priori relationship to the game and are strong because anyone who comes close is likely to create ‘likelihood of confusion’.
Next best are suggestive marks, i.e., ones that create an association with the game if one gives it some thought. As an example, a suggestive name for the flight simulator game might be BOUNDLESS HORIZONS.
One last caution – don’t adopt a mark that is racially or religiously derogatory or otherwise likely to be offensive, such as ones having Nazi symbolism or are derogatory words commonly used to refer to Hispanics, Germans, etc. The trademark laws of most countries do not allow protection of such marks.
As a matter of passing interest, the provision of U.S. trademark law that applies to such marks is being challenged on freedom or speech grounds in the U.S. Supreme Court by an Asian-American rock band that calls itself THE SLANTS. But even if Simon Tam (the leader of the band) is successful, if you want to protect the name of your game outside the U.S., don’t even think about calling it something derogatory.
Protecting Your Marks: The first step is to be sure that no one else is already using a mark you have chosen, or one that is similar in context. The last thing you want is to have invested time and money in creating brand value for a mark only to find that it is unprotectable or that you have stepped on someone’s toes.
As a practical matter, it might be ok to adopt a mark similar to an existing one if the goods or services are completely unrelated. You probably could get away with SHINE as a name for your game even if someone else is using it for toothpaste. However, don’t pick a name already in use for clothing –you might want to use the name also in connection a costume of one of your game characters at some point.
To help you steer clear of a potential conflict, here are online sources you can consult, but you can avoid problems later if you work with a trademark lawyer instead after you have selected a few possibilities.
After you have selected the name, and/or other devices you may want as trademarks, you need to register them. Two immediate questions need to be considered: when and where. The answer to the first question is easy – before you make any public disclosure of the game concept. The reason for this is priority. Other things being equal, the early bird gets the worm. One kind of early bird is the first user. The second kind is the first to register. (In some countries, e.g., China, it’s the first to file.)
You don’t need to put your mark into use to file a trademark application, In the U.S., you need to assert an ‘intent to use’ if you can’t already assert a date of first use. You can register your mark on this basis, but you must follow up with a statement of continued intent every six months after registration. You have 36 months from the date of registration to actually begin using the mark.
Under U.S. law, you will also have to demonstrate continuing use to maintain your registration. The first statement is due during fifth year after the registration. The second is due during the tenth year. The registration also needs to be renewed during the tenth year and every ten years thereafter. A statement of continued use needs to be filed with each renewal. There is no limit on the number of renewals.
Marks can be registered separately in any country, or under certain international treaties. In either case, registration before actual use is also permitted. In some instances, use isn’t even required.
The law related to unfair trade practices and competition is are related to trademark law since its objective is generally to prevent conduct in commerce that is false or deceptive, for example, as to origin of goods or services, or affiliation, sponsorship, or approval by one party as to the commercial activities of another. For computer games, unfair competition issues will often arise in the context of internet keyword advertizing but can involve print advertizing. Counterfeiting is regarded as an unfair competition issue in some countries, as well as trademark infringement. You will find an article about keyword advertizing on our Website (http://www.ipatent.co.il/its-not-the-click-but-the-shtick/).
There isn’t anything you need to do establish protection of your IP against unfair competition. But to prevent it, you need to be constantly vigilant. Regrettably, software piracy can be hugely profitable and easy online access provides an easy path for people who would prefer to steal the benefits of your creativity rather than pay for it. We will discuss some things you can do when the pirates and cheats come along in Part II.
Design patents/Industrial Designs
These are called design patents in some countries and industrial designs elsewhere. This kind of IP protects ornamental or decorative aspects of things such as shape and surface features, but not functional aspects, and not design features dictated by function. Designs must be novel and not mere obvious variations of existing designs to be patentable.
Design patents can be used to protect your user interfaces (UIs) and icons. If the game employs multiple UIs, you need to consider which ones you should protect. If you are a Microsoft or an Apple, the question might just be “how many are there?” For everyone else, the question is “how much are you willing to spend (or can you afford to spend)?”
Ideally, design patents or the design registration equivalents should be obtained in all of your potentially big markets. Given the reality of limited funds, you may need to compromise and pick only the most important markets or places where your likely competitors are. If they are biggies, you will get the most leverage by going after them and not their customers. Other things being equal, to do that, you will need to bring your infringement action where the infringers are located.
One final point – design patents and registration have short lifetimes, 15 years in the U.S. and eight to ten years elsewhere. Very few games such as Pac-man, released in 1980, or Mario Brothers which has been around since 1983, hit the long term jackpot and endure beyond the design patent term. But if yours does, some of your UIs and icons might become distinctive and an indication of origin. As such, they may be subject to trademark protection.
Even the characters themselves, which you will normally protect by copyright, can become distinctive, and subject to trademark protection.
Patents for Inventions
Protecting inventive, e.g., functional and utilitarian aspects of computer games seems to be a largely overlooked possibility. That is a mistake, because patents offer the broadest scope of protection. However, they are the hardest to get, and cost the most money.
For our purposes, inventions can be machines, methods and articles of manufacture. Like design patents, inventions must be novel and unobvious to be patentable, but they must also be directed to ‘patent eligible’ subject matter.
In many countries, getting patents for software implemented inventions is very difficult. In the U.S., an invention must be something more than an abstract idea implemented on a general purpose computer. Unfortunately, there are no authoritative provisions in the U.S. patent law, or in controlling court cases that define ‘abstract idea’ or explain how much is needed to meet the ‘something more’ requirement. In contrast, in Europe and China, patent eligibility for software requires that it provide a technical solution to a technical problem. In China, a technical solution is defined as:
an aggregation of technical means applying the laws of nature to solve a technical problem. Usually, technical means are embodied as technical features. A solution which does not adopt technical means to solve a technical problem and thereby does not achieve any technical effect in compliance with the laws of nature does not constitute a [technical solution]…
The definition isn’t perfect, but it’s several steps up from what there is in the U.S.
In practical terms for the game developer, you should consider as a possible candidate for a patent application, (a) a non-transitory machine-readable medium containing the computer code for the game, (b) a method you have developed for creating the game images or the animation, (c) software that makes the game run better, e.g., faster or with better image quality, (d) an implementation that improves cross-platform compatibility, e.g., that allows a user on a smartphone to compete against users on laptops or desktop computers, and (e) implementation of a completely new game concept.
Before we get into more detail, caution is in order: maximizing your IP protection requires the help of an experienced IP attorney. This is simply not something you should try yourself at home.
Round the World in a Few Paragraphs
Because IP protection is generally a matter of national law, the laws of one country can’t be used to protect you against conduct outside of that country. There are, however, several international treaties that allow you to obtain protection for certain kinds of IP in multiple countries based on a single application.
Utility patents: The Patent Cooperation Treaty (PCT) covers over 150 countries and multinational groupings that are members of the World Trade Organization (WTO). Under the PCT, a single international application can be filed which provides a basis for national applications in any of the other WTO countries. However, the national applications are examined just as any other application filed directly in that country and enforceable only in that country. There is a similar European patent system under which you can file one application in the European Patent Office and when it is approved, validate in each EU member without further national examination. For the present, however, the patent can be enforced only in the national courts of a country in which it has been validated and only with respect to infringements that take place in that country.
Trademarks: The Madrid System for international trademark registration now covers 98 members (individual countries and multinational grouping such as the EU), covering 114 countries altogether. After you register a trademark application in your home country or file an application to register it there, you can follow up with an international application. After formal examination, the application is transmitted to any of the other 97 members in which you want protection. That does not automatically establish your trademark rights since the application is substantively examined and approved or rejected by each designated member.
Because the EU has established a community registration, an EU member can begin the registration process in his home country or in the European Intellectual Property Office. Correspondingly, a trademark owner from outside Europe can designate the EU for protection under its international office and the application will be subject only to a single examination.
For industrial designs, there is The Hague Convention. This covers 66 countries and multi-country groupings such as the EU. (Note: As of now, Israel is not a member.) The Hague System functions like the Madrid System in that the application is examined substantively, e.g., for novelty and inventiveness, in each country selected for protection. In general, up to 100 designs can be covered in a single application. For Japan and the U.S., however, there can be only one independent and distinct design per application.
In the case of copyrights, there are no provisions for either an international registration or the filing of a single application on which national applications can be based. There are, however, international agreements that harmonize the rights that must be provided by members, and limit formalities that can be imposed.
Trade secret law is a subject unto itself, but for our purposes here, all your game software and information about the game, as well as your business planning can be a trade secret. To qualify, the information must not be known to the public, and must derive its value to you because it is not publicly known. Also, you must be taking reasonable measures to keep such information secret.
Given the other available avenues for IP protection, trade secret protection will apply mostly to your work in progress and your business planning. In this context, you need to keep in mind, that reverse engineering is legal. If you want to try to prevent access to your source code, there is lots of information out there to help, but no code is un-crackable.
What are reasonable measures to protect the confidentiality of your information? If you are working alone, there isn’t much of a problem. Don’t disclose the information to anyone unless absolutely necessary, and if you do, make the recipient sign a non-disclosure agreement. Also, clearly mark documents, both in paper and electronic form with a notice that it contains confidential information.
The rest is just common sense. Don’t leave your work where it can be seem by prying eyes or someone surfing the internet. Protect your computer against hackers with a suitable firewall, and take other customary measures.
If you have employees, or independent contractors working with you, clear written agreements that provide for non-disclosure and IP ownership are essential. We will discuss ownership issued in Part II.
As we have shown, your work can be protected both during development and after publication. You should avail yourself of all available avenues of protection. However, keep in mind that protection of IP is one of the more complex areas of law and is not a do-it-yourself project. The cost of obtaining legal counsel early in the game will be far less than the cost of mistakes you will make along the way due to lack of knowledge.
About the author: Larry Hoffman has a B.S. in Electrical Engineering and Comp. Sci. from Massachusetts. Institute of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work has included preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.