Games developers produce many different types of games ranging from board games and trading card games to mobile games. As technology continues to advance and new creative ideas emerge, understanding the intricacies of intellectual property law is crucial for developers, publishers, and creators.
In this guide, our intellectual property solicitors discuss the different forms of intellectual property rights available to game developers and the different ways developers can protect and enforce those rights.
Contents:
- What is the importance of intellectual property in the gaming industry?
- What are the different forms of intellectual property rights available to game developers?
- How can game developers protect their intellectual property rights?
- How can developers generate revenue from their intellectual property rights?
- What happens to intellectual property rights when a development studio is acquired or shut down?
- Summary
What is the importance of intellectual property in the gaming industry?
With so much competition and so many opportunities for exploitation and collaboration, game developers and publishing studios need to take considerable care in ensuring that their intellectual property rights are adequately protected and enforced. Having a proactive intellectual property strategy is essential to success in such an industry where piracy is rife.
What are the different forms of intellectual property rights available to game developers?
Games are often complex and comprised of many different elements, particularly games that incorporate technology, multi-media and software. This means that there will be several different types of intellectual property involved, each with its own system of protection and enforcement. A strategic and holistic approach is necessary to ensure that all aspects of the game are protected.
Copyright
Copyright arises automatically when an original piece of work has been created. So, if you keep comprehensive records of when your work was created and how it differs from previously created works, this should provide you with copyright protection. Copyright protection in the UK is governed by the Copyright, Designs and Patents Act 1988. The Act does not list games as protectable as a whole, but the individual elements of the game are protectable separately, such as the artwork, music, characters, dialogue, written story elements, text, source code and databases.
For a work to be original, it must be the author's own intellectual creation. Copyright lasts for the lifetime of the author plus seventy years for literary, dramatic, musical or artistic works and for fifty years after creation for computer-generated work and sound recordings or broadcasts.
Difficulties may arise when you commission developers or other third parties to create any aspects of the game for you. If you do outsource development, you will need to ensure that the copyright vests in you and does not remain with the third party. The default position is that copyright created by an independent contractor will belong to the contractor, unless the parties have entered into an agreement to the contrary. If there is no agreement, you will need to have the rights formally assigned to you by the creator or you may not be able to make further modifications to the game or develop it further. If you have employees, you should make it clear in their employment contacts that any work produced is automatically assigned to the business.
Trade marks
Like copyright, trade marks would not offer protection for an entire game. Although, important aspects of the game such as its name, logo, key characters and icons, packaging design and even slogans associated with the game could be protectable as registered or unregistered trade marks.
Trade marks can be registered provided that they are capable of being recorded clearly on the register and are distinctive and not simply descriptive or generic. They must also not be confusingly similar to other registered trade marks for the same or similar goods and services or to prior unregistered trade marks that have been used in business by third parties before you, as they may take action to oppose your registration application or could seek to enforce their trade mark rights against you in the courts.
Our trade mark solicitors can support you with your trade mark application at the Intellectual Property Office. You will need to decide which goods and services you want the mark to cover as different types of goods and services are grouped together into different Classes. An application costs £170 for one Class of goods and services and then each additional Class after that costs an extra £50. The application will first be examined to check that the mark satisfies the requirements of the Trade Marks Act 1994. If it does then it will be published for two months to allow the owners of similar marks to file an opposition if they think there is a likelihood of confusion with their earlier registered mark. The opposition period can be extended to three months if someone files a notice of intention to oppose during the first two months.
Once registered, trade mark protection lasts for ten years in the UK and can be renewed indefinitely for a further ten year period by payment of a renewal fee to the intellectual property office.
Registered designs
Registered designs protect the aesthetic appearance of a product, such as its shape, configuration, decoration or colour, pattern and finish. For games, registered designs can protect aspects such as icons, graphical interfaces and packaging designs.
In the UK, design applications are filed at the intellectual property office and the application must include detailed illustrations of the designs. Registered design protection lasts for five years and can be renewed for subsequent five year periods up to a maximum of twenty five years in total.
Patents
Patents can protect the technology behind a game, such as inventive game mechanics, artificial intelligence algorithms, user interfaces, hardware or virtual reality systems. To be patentable, the technology must involve an inventive step and possess a technical character. For software to be patentable, it must contribute a technical solution to a technical problem.
Protection usually lasts for 20 years for an original invention. It is important to keep any patents confidential until they have been filed as they may no longer be protectable if they have been disclosed to the public anywhere in the world before the application was filed.
Patents are a complex area of IP and specialist advice from a lawyer should be sought if you have created aspects of a game that you think are patentable.
Trade secrets
Trade secrets are confidential processes or practices that have commercial value and have been kept secret through reasonable steps taken by your business. In the context of gaming, they could include algorithms, source code, customer lists and specialist market information.
Trade secrets only exist whilst they are kept confidential so it is important to limit access to them and to have non-disclosure agreements in place with anyone that might have access to your trade secrets, such as employees, third party contractors and agents. You should also keep a trade secrets register, that documents what each trade secret is, when it was created and who has access to it. Having up-to-date and comprehensive security software and entry systems is also important to protect any confidential information and trade secrets.
How can game developers protect their intellectual property rights?
Registration of rights
Some rights such as patents and registered designs need to be registered in order to be protected.
Others, such as trade marks, offer better protection if they are registered. Once registered, trade marks are a proprietary right that can be licensed and sold. This is useful if, for example, you want to produce merchandise related to your game or licence out your rights to third parties to create affiliated merchandise. You can also take action to enforce your registered trade marks against unauthorised use by third parties. This is harder to do if you only have unregistered trade mark rights since you would then have to prove ownership of goodwill in the brand and that the unauthorised use is likely to cause harm to your goodwill under the trade mark.
Contractual protection
Confidential information concerning the IP rights in a game and any associated trade secrets need to be protected from unauthorised disclosure through well-drafted non-disclosure agreements. You should also limit access to confidential information to only certain employees on a need-to-know basis. Physical documents should be stored in a secure locked location and digital information should have up to date cybersecurity protection including strong passwords, firewalls and encryption.
You should also ensure that you have contracts and agreements in place with any joint owners of your IP rights and any potential collaborators, setting out how the IP rights are to be owned and used between the parties.
Monitoring for misuse
Even if you have taken action to protect your IP rights and confidential information, you will need to know as soon as a breach has occurred so that you can take immediate action to stop any further infringement or disclosure.
First, you should manage the information that you disclose, by numbering and labelling any copies that you distribute and keeping a log of what has been disclosed and to whom. You should conduct due diligence on any third parties that you intend to work with to make sure that they are genuine and do not have a history of court orders against them. You should monitor the market regularly and train your employees to watch for potential infringements and report anything suspicious.
Enforcement of intellectual property rights
Copyright is infringed if someone copies the whole or a substantial part of the protected work. This could be by reproduction, distribution, rental, public performance, broadcasting or adaptation of the work. Cloning is a particular problem in the mobile gaming world and involves making games that are virtually similar to existing games, to attract the existing game’s customers. Posting unauthorised hacks and modifications are also examples of copyright infringement in the online gaming world. These can be tackled by submitting copyright infringement notices to App Stores and online platforms and taking further action for infringement in the courts if necessary.
Design infringement occurs if someone replicates the design or uses a design which does not create a different overall impression. Use of a design can be through making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied; or stocking such a product for those purposes.
Trade mark infringement occurs when someone uses a trade mark in the course of trade that is the same as or confusingly similar to a registered mark for the same or similar goods or services and there is a likelihood of confusion as a result of the unauthorised use. Or, if the registered trade mark is well-known, infringement can occur if someone uses a similar mark for similar or different goods and services and the unauthorised use is likely to take unfair advantage of or tarnish ordilute the reputation of the registered mark.
Issues can arise when virtual reality or 'real world' games include the branded assets of other businesses in their gameplay. For example, a particular brand of drink or a particular make of car may be displayed in the game. Courts in the USA have ruled in the past that such use is ‘artistic’ use and was not misleading to consumers so did not constitute trade mark infringement.
Developers will also need to ensure that they have the requisite licences in place to be able to incorporate into their games any third party contemporary music or characters or settings from other 'cross-over' games. The length of the term of the licence should be considered carefully if the developers intend to market the game for a number of years without re-release.
Patent infringement occurs when a third party copies the patented product by manufacturing it, putting it on the market, importing or exporting it, or stocking it for any of these purposes.
Once you become aware of a potential infringement, you will need to take action quickly to recover any stolen information and take appropriate action to prevent unauthorised use of your IP. You may need to go to the courts to obtain an injunction to prevent any further misuse and send 'cease and desist' letters warning that you will take further action against the infringement if it continues.
Possible remedies for infringement can include injunctions against further infringement, damages or an account of profits, orders for delivery up and/or destruction of any infringing items, costs orders for reimbursement of the winning party’s legal fees and tracing (ordering the infringing party to reveal details of suppliers or manufacturers of the infringing goods).
How can developers generate revenue from their intellectual property rights?
Publishing the game
When the owner of a game has taken all the necessary steps to protect and register their IP and confidential information, they can then think about exploiting their rights and bringing the game to market, through self-publishing or through selling, licensing or franchising their IP assets. Game developers who have protected their IP can attract valuable investment opportunities and strategic partnerships and collaborations.
The developer could sell its IP rights to another business to publish the game for them. This could be a small publishing house or a games studio. The publisher may distribute the game and finance further development of it. The developer should decide what type of publisher to assign its rights to as some may allow the developer to retain some creative control over their game in the form of collaborations and some may instead want a complete assignment of all rights related to the game.
Alternatively, a developer could licence its IP rights in a game as a whole or various aspects of the game to third parties to develop games and other merchandise based on them. Licensing is an approach now taken by Games Workshop, the owner of IP rights in the Warhammer 40,000 series. Rather than licensing out the whole of its IP portfolio to one publishing company, it negotiates separate, bespoke licences with individual developers and/or publishers relating to one or more of its assets so that they are more likely to be used and developed rather than sit unused in a vast portfolio. As developers can now self-publish games on platforms such as Apple, Steam and Google, there is more variety in the type of games and products that can be produced and in turn, create revenue for the licensor. With a business model based on licensing various IP rights to different businesses to exploit, the terms of the licence agreements must be clear and comprehensive so that the licensor can maintain as much control over the IP being licensed as necessary to ensure that the brand image is protected and kept integral. A key question is whether a licence is to be exclusive or non-exclusive since the former will mean that no one else, including the initial developer, will be able to use the IP rights that are covered by the licence.
What happens to intellectual property rights when a development studio is acquired or shut down?
If a developer shuts down voluntarily, it may decide to sell the rights to its games, in order to generate funds for the shareholders. Or it may have already sold its IP rights to a publisher, in which case the publisher may continue to exploit them. If the developer has licensed any of its rights, the licence agreement should set out what is to happen to the IP in the event of one party ceasing to exist.
If the assets are sold off to third parties, they may decide to continue the games by way of new instalments or re-releases, depending on what rights have been acquired.
Summary
Games are complex when it comes to IP rights and their ownership, protection and exploitation. As this is a fundamental area for game developers and other stakeholders in the games industry, professional advice from an IP lawyer is nearly always required and should be sought at the initial concept design stage so that adequate registrations and protections can be put in place as early as possible.
