I saw a few IP issues crop up on a thread here and some of the ideas had got a bit confused/confusing, so I thought I would briefly (!) write to clarify the situation, for general edification. I am not an expert on all rights but I am a practising UK/European patent attorney so I at least have patents covered. This is not official advice and it is quite possible that I got some things wrong and/or I’m out of date on some stuff. I’ll try and respond to any queries here but I have other stuff on my plate so can’t guarantee a response. Also IANAGD (games developer) and there may be a lot of conventions/history relating to this that I’m unaware of, so please bear with me.
Different types of IP Right applicable to games
IP rights can be divided into two main types: registered and unregistered. Unregistered rights (e.g. copyright) exist when a relevant work is created, but they are a bit nebulous and difficult to enforce. Registered rights (e.g. patents, registered designs) cost money and require action to be taken (in some cases by a lawyer) to create them, but they are relatively more well defined and easier to enforce (and correspondingly to be caught by). So, we have…
Patents protect technical innovations (inventions). They must be new relative to what went before (the ‘prior art’, usually other patents) and also non-obvious/inventive. There are usually also requirements for the invention to relate to ‘patentable subject-matter’, which is a way of kicking out business methods and other essentially non-technical inventions. A lot of software-related inventions don’t pass the non-obvious/inventive test, especially in Europe where they use that as a catch-all to exclude things that were previously objected to as being ‘non-technical’. In my experience in this field, the most promising inventions usually involve multi-computer interactions (apart from anything else, these can’t be rejected out of hand as just being an ordinary computer apparatus configured to do something non-technical, which is your standard response from the European Patent Office and UK Patent Office these days).
As a quick (and unofficial) rule of thumb, if you want to know if something is patentable, ask yourself whether it would be patentable if you removed all (i.e. game-related) words qualifying what kind of data you’re shuffling round. There is undoubtedly a lot of clever stuff going on with rendering etc, though you have to be careful in constructing a claim that has some kind of external effect (often just outputting data will suffice in Europe).
Patents usually have a term of 20 years from the filing date (in US, the earliest filing date relied on).
Copyright traditionally covers the expression of an idea, rather than an idea itself, and in particular covers computer source code (your C++ listing), object code (the compiled binaries), music and sound effects. Also covered are things like screenshots, screen layouts - but only more or less exact copies (direct reproduction) rather than the concept of how a screen is laid out. Copyright has in the past been relied on to protect the ‘look and feel’ of a user interface/operating system, especially in the US, but that is now best protected via design rights. In essence, copyright protects you against direct copying/pirating, and (in the US especially, thanks to the recording industry and its many lobbying tentacles) there are some pretty hard-hitting laws (e.g. DMCA) to help you - but only for those direct copies.
Unusually, copyright is a registered right in the US (that is, if you want to rely on it later), but only for US citizens - the Berne convention is a wonderful thing (if you are not US-based). More info on US situation here: http://www.copyright.gov/help/faq/
There are different kinds of copyright attracting slightly different terms (which differ by country). The general rule for the US and Europe is “life plus 70”, meaning the copyright expires 70 years after the author’s death, but it’s complicated (see e.g. http://copyright.gov/title17/92chap3.html) - the most relevant exception is at the interface between copyright and unregistered design right (don’t ask). Given the difficulty in ascertaining personal details of authors in game projects (i.e. are they dead yet?) and the long timescales involved (stretching back to before computer game development was ever a thing), just do yourself a favour and assume copyright is still in force.
- Registered designs
Design rights (called design patents in US) essentially cover the shape and appearance of a thing - to the extent that it is not functional. So the curve on the back of a chair is fair game, but the curve on the back of an aeroplane wing (for aerodynamic reasons) is pretty much not. Case law and practice is not well-developed in design rights, and rights are not thoroughly (or at all) examined prior to registration, so no-one is really sure what can and can’t be covered and/or enforced. That said, computer screen layouts and icons seem to be fair game, and you’ll find a lot registered (especially in the mobile phone field).
If you were attempting to protect a user interface, registered designs are probably the best bet at protecting the ‘look and feel’ - then again, I think one of the first three-in-a-row games attempted to protect that look and feel, and see how that turned out… Infringement is assessed (at least in Europe) relative to what an ‘informed user’ considers a commonplace variation in the field, and other stuff like that, which makes it quite a subjective (i.e. uncertain) assessment. Registered designs are by no means cheap, but they are not extortionately priced (at least in some territories).
Thinking about it, registered (and unregistered) design should be applicable to meshes and props which are sold separately, e.g. via the Marketplace, as there is a product involved albeit a virtual one (but this may depend on jurisdiction).
Registered designs have a lifetime of around 15-25 years depending on territory covered.
- Unregistered design right
UDR is basically a copyright-style IP right for designs in Europe and possibly elsewhere. Terms are short (but not insignificant in software terms) and this is probably not relevant to game development (but may apply to virtual prop/mesh design for things which are in some sense a product - but I forget the exact wording of the legislation and it’s quite narrowly defined, so maybe not).
- Registered trade marks
Trade marks protect brands. They identify the origin of a product/service, and are identified with the (R) symbol. A trade mark registration provides a list of goods and services which it is intended to cover. In Europe at least, it is an infringement of a registered trade mark if you use a similar or identical mark in respect of the same goods/services, or the same mark for similar goods/services. RTMs can be words, in which case reproducing the words within any part of the mark is a bang-to-rights infringement for the same goods/services (e.g. “GOLDEN APPLE COMPUTERS” will infringe the “APPLE” mark). You can also protect a graphical mark, in which case infringement requires that the word is presented in the same way - these are much less powerful marks. Trade marks cannot be descriptive of the product (to avoid unfairly blocking all competitors wishing to sell that product), or ‘lauditory’ (e.g. “GREAT computers”, “SUPERB games”, “THE BEST games”).
Trade marks can theoretically last forever if you keep using the mark and keep paying the renewal fees.
You will see a lot of uses of ‘TM’ (especially in the US). Trade mark attorneys I know have explained that TM stands for ‘totally meaningless’. It is not a registered right - more a marker that the company considers it theirs and is prepared to sue you for using it. In the US that is a reasonable deterrent because being taken to court can bankrupt you even if you win. So be wary at least of anything with TM next to it.
- Database rights
This is a niche right in Europe (possibly elsewhere), covering the data held in databases. It is an infringement to take a substantial part of that database, even if the individual items do not attract copyright as such (or that, more or less - it’s hardly a common right in practice). This may be of use against people who suck up databases and re-present them with ads, etc - but good luck with jurisdiction (see below).
Another right of sorts relates to the common law of passing off (in the UK at least - there are similar provisions in other territories, often under the heading of unfair competition and the like). This is a bit like an unregistered trade mark right. You can stop someone trading under your brand, but you have to provide a lot more evidence than for registered TM actions.
You can also get done (to varying degrees) for ‘dilution’ of a trade mark for actions which are not straight RTM infringements but which cause damage to the brand. There’s some interesting case law there - one involves a coke bottle and the other involves the Dallas Cowboys. You have google.
When to apply
Some rights don’t need to be applied for (mostly copyright, if not in US). Other rights can be applied for after using (e.g. trade marks), and some must be applied for before they are disclosed (patents especially, also registered designs but a grace period of 6-12 months normally applies).
However, you need to get your branding (i.e. RTMs and domain names) sorted well before launch because a re-brand (e.g. because you hadn’t done a check to see if there were relevant third party rights, or didn’t think whether you could get a registered trade mark for ‘GREAT GAMES’) can be very expensive. Basically, you should be in the habit of sorting out, or at least thinking through, your IP quite early on in the process.
Generally inventions (patents) automatically belong to the employer (if made in the course of normal activities) and other rights too (e.g. designs), but copyright is a slippery fish and often needs to be explicitly assigned; normally it exists as soon as the relevant work is created and attaches to the author of the work. There’s plenty of other wrinkles with ownership - for big/serious projects get proper advice on this.
Of course a lot of games development is done by contractors - generally speaking, rights will be attached to the contractor unless explicitly covered by the contracting contract, and it’s legally very inefficient/unworkable to have most IP rights but not all. So contractor contracts need to have robust IP terms - often you will have all relevant IP rights licensed perpetually to the person commissioning the work, rather than rights assigned. That’s fine, but may restrict onward sale of the work / company.
I can only speak for the UK, but rights (especially copyright, which is the main enduring right covering old games) do not evaporate when a company folds. In the worst case scenario, rights pass to the state and are disposed of. It may be difficult or impossible to track down rights, and there may be essentially zero chance of ever being done for copying anything, but it is not strictly correct to say that the rights are abandoned or destroyed. If you’re going to press on regardless you may well be fine, and you may have the blessing of the original developers or owners (which is nice but legally irrelevant), but bear in mind that you may not get serious investors/players interested in your business because it is strictly speaking a legal risk.
Most rights are national (in some cases regional: e.g. Europe), and must be obtained within a country and can be enforced/have effect only within that country. This is complicated enough if you’re selling physical things, but software is a strange beast. How do you resolve infringement of a US patent if the server is in Canada but users are in the US? (The Blackberry/RIM case gave one answer, but it wasn’t a very satisfactory one.) It’s also effectively impossible to protect all possible countries - only big pharma does that and finds it worthwhile to do so.
The usual solution is just to go for your biggest markets - which usually means US, Europe, maybe Japan, China, etc. It depends on the product and how worthwhile it is getting a right in view of how easy it will be to enforce (did I mention China?). US only protection will usually do fine (bearing in mind DMCA etc) to be able to shut down most reputable software sources (e.g. Apple Store), Europe only (or major country within) is a reasonable and credible alternative. But of course there’s f all you can do about hookey websites in Nicaragua and torrents, etc, so don’t expect IP to save you from all infringement.
Q: I can see IP in the US but I’m based in Europe, so I’m ok to do something that would otherwise infringe it? A: I’d advise not - who is going to sell it (now or in future), via servers in which country? Which app store in which country is going to host it? Is Apple/whoever going to give much of a **** about complex jurisdictional issues when they receive a take-down notice under the DMCA…? Will potential investors be sophisticated enough on IP to feel safe with this investment? etc
Basically, jurisdiction gets very complicated for software. Seek advice if you need it.
There are two main questions you should normally ask in relation to IP rights:
- How can I protect my product?
In a small number of cases it may be appropriate to consider patent application(s) for especially innovative technical aspects, but this is rarely possible and/or justified on cost grounds. Some justifications are: (1) you have deep pockets and want to plant a ‘keep off the grass’ sign, bearing in mind that patents can keep going for several years even if they’re unlikely to be granted, or (2) you’re looking to build value in your business (i.e. with a sell-out in mind) and are aware that investors (rightly or wrongly) have massive hard-ons for patent protection of any quality.
Certainly make sure you have a verifiable/credible ‘paper’ trail for all of: (1) what was created, (2) when it was created, (3) by whom it was created, (4) any agreements governing automatic assignment of relevant IP rights, and (5) explicit assignments of relevant IP rights. If you can’t demonstrate, several years down the line, that the IP right exists from a certain point, and is conclusively owned in full by you, you may as well pack up your bags and go home.
Also bear in mind that, at least from the patent side of things, you need to be able to determine whether something is an infringement - if the clever bit is on the server or a low level bit of code, how easy will it be to determine whether someone else is infringing?
The issue of clones (and protecting yourself therefrom) is a common concern. This article addresses this pretty well (albeit with a fairly tight US perspective) on the issue of clones. You’ll note that the suggested defences are all pretty much non-legal in nature: http://www.gamesindustry.biz/articles/2012-05-31-how-to-protect-your-game-from-clones
- Do I infringe anyone else’s IP rights?
This one is often overlooked!
Patent rights can certainly exist, and I’ve been tasked with obtaining a fair few software patents in the past (generally crud, often refused, but see above for reasons why that may not matter), but this is not often a direct threat in games development - while there are often very clever things going on behind the scenes, they are indeed behind the scenes - often on servers - and thus difficult to enforce against.
Designs are difficult to search, but consider looking into filings by industry leaders in particular genres of game, especially with regard to novel UI.
Trade marks are the easiest to search and this should be done as a matter of routine, early in the process. Get advice on this if you’re not sure but you can have a quick look e.g. for US marks at http://www.uspto.gov/trademarks-application-process/search-trademark-database.
Copyright can be registered in the US but the copyright situation is otherwise clearly hard to determine. If you’re directly (or near direct) ripping off an image, icon, or chunk of computer code (script or binary) then you’re probably infringing, but also probably being a bit of a ****, so don’t do it.
As a general rule, be aware of the main players within a particular genre and search for stuff registered in their name, rather than trying to work out how to search for icons relating to bananas, or whatever.
Returning to the issue of game clones from the other side, a very common subsidiary question is: will X sue me for making a copy of their game Y? Well, a direct copy of any art asset is a no-no. How similar can you go? UK copyright law requires taking a ‘substantial part’ of the work. UK design law requires the difference in designs to be assessed by a notional ‘informed user’, taking into account various nebulous factors. So who really knows - there is case law in different countries to help clarify this, but I can’t at this moment lay my finger on the one I wanted (involving a match-3 game I think).
Q: I think someone is being unreasonable about letting me make a copy of their game/use their assets/it’s just a tribute!/I’m not making any money off this; can I go ahead and do it anyway? A: No
Finally, of course, a lot of material is available for use essentially for ‘free’ (the stuff Epic provide with UE4), and for cheap (the Marketplace assets). The terms and conditions are very reasonable IMO but they still apply, so you don’t have carte blanche to do what you want with this stuff. Basically, the point at which you start selling things for money or giving things out to other people, you need to have a good think about what you are allowed to do with these assets (if using).
As a general rule, you want to be aware of what’s out there (but not spend a fortune on infringement clearance searches without a good reason) and consider obtaining at least a token amount of IP (e.g. registered design, and RTM almost always a good thing to get) so as to create a ‘keep off the grass sign’ and to create an asset to hang licensing deals off and to generate value for your company (and IP can increasingly be used as collateral for a loan). That latter bit more of interest to ‘serious’ developers - hobbyists will mostly need to concentrate on not stepping on the toes of big companies.
You do also get odd things like this cropping up, but I’ll just note that it’s basically free (and in some senses encouraged) to oppose the registration of a trade mark, and just because someone does something it doesn’t mean they’re right: http://kotaku.com/candy-crush-saga-makers-go-after-the-banner-saga-for-1506188958
There’s a lot I’ve covered in brief there, but also a lot I haven’t. Bear in mind that I’ve written from a UK/European perspective, and I’m writing a lot of that off the top of my head - I may be wrong or out of date. Bottom line - if you have a serious project, get professional legal advice on your IP situation (and no, I’m not touting for business - don’t take direct clients anyway).