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IP rights relating to game development (a brief guide)

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 This is not official advice and it is quite possible that I got some things wrong and/or I’m out of date on some stuff.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

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

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.

Ownership

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.

Abandonware

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.

Jurisdiction

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.

General advice

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).

Good luck :slight_smile:

A useful place to search for patents, worldwide (includes US, Europe): http://worldwide.espacenet.com/
European trade mark search: https://www.tmdn.org/tmview/welcome
European registered design search: https://www.tmdn.org/tmdsview-web/welcome
USPTO trade mark search: http://www.uspto.gov/trademarks-application-process/search-trademark-database

NB just because you can’t find something with these doesn’t mean it doesn’t exist, there or anywhere else.

This post might also help a little:
https://answers.unrealengine.com/questions/293492/trademark-my-game-name-and-logo-and-copyright-the.html

thanks…
but, how about the game itself, something like camera position for 3rd person view game, item name (potion, elixir, …), battle system, is that copyrighted?
from wiki:
“… , but they cannot easily protect software design and game mechanics. A patent for the mechanics is possible, but acquiring one is expensive and time-consuming.”
is this mean they are can be protected, but still, why there are still many game has a clone?

I think you refer to the wiki entry on game clones here: Video game clone - Wikipedia

The rationale for refusal differs between different patent systems in different countries, but patents are generally NOT possible for game mechanics. As a general rule, patents will only be granted for technical innovations of various types. Under UK law, for example, software-related patents are usually only granted if they cause a useful technical effect outside the computer which the software is running on (process control type inventions), or result in an improvement in the computer architecture (as opposed to specific programs running on it). On the other hand, things like image processing software has been found patentable in Europe at least, and there is an interesting case where a patent was granted for software that designed drill bits, so there’s some grey areas so long as you’re dealing with essentially technical subject-matter. The situation has been tightened up a lot in the US - the law is still a bit nebulous, but the USPTO is doing all it can to avoid granting ‘soft’ software patents.

Generally speaking, copyright applies to the expression of ideas, not the ideas themselves. So a 3rd person camera system is not covered (and also not original - another requirement for copyright), nor a battle system and so on.

HOWEVER a portion of text (e.g. a potion name) may be protected by copyright, if it is original, and may also in extreme cases be covered by trade mark law (I’m pretty sure a ‘Zelda/Mario/etc power-up potion’ may cause problems in theory). To infringe copyright, you have to take a substantial part (at least, that’s the position in the UK, likely similar elsewhere), so it becomes an issue for the lawyers - so play safe if you can because no-one wants the lawyers to get involved…

(Edited to add: there are some unusual and somewhat inconsistent cases where computer game patents HAVE been granted in Europe (and the US), including a way of indicating where a football pass is going, highlighting a target in a race game, and so on. To be safe, do a quick search for a particular feature or for a particular applicant, but it’s effectively impossible to search every aspect of a game.)

thanks fatmarrow.
Im asking this because Im really afraid about camera angle for 3rd view game, and item name.

may I asking more?
about this:
“Developers can copyright the graphics, title, story…”
what their mean by graphics?
and the story, I believe story is come from ideas, I’m shocked when know its can be protected. or is this same like UE4 Faq about source code, Epic says: “Code is copyrighted but knowledge is free”, so “story is copyrighted but ideas of story is free”. (the story here I refer to the text of document itself)

I can’t see how a particular camera angle could possibly attract copyright (just possibly patent protection if it is a technical improvement allowing a better view of this or that, blabla - but that’s a real long shot).

When someone says a story may be protected by copyright, they will be referring to the actual words used (if copied in full or in identifiable chunks of original text), in the same way that song lyrics and the content of books can be protected by copyright. The idea behind the story is generally not protectable (which is not to say that if you do a straight lift of it, you won’t be threatened anyway, and there is a bit of grey area depending on the jurisdiction).

So I could write a story about three bears finding coming home to discover a young girl had broken into their house and eaten their porridge and in theory I’d be ok so long as I didn’t use any of the sentences from any of the versions of that story, but in practice I would both give serious consideration to changing some of the facts (the young boy ate all their flapjacks, etc) and the character names - as there is a bit of ‘wiggle room’ and interpretation of copyright varies by jurisdiction - and also to whether I really wanted to invest my time and effort into recreating something so closely when there were so many new things I could do. Basically, if there is enough at stake financially (i.e. the thing you are copying is very successful and/or well known), the fact that you can make a case for non-infringement of copyright doesn’t mean that you won’t get sued.

With regard to item names, in the UK at least you infringe copyright if it is an original work (a new name) and you’re taking a substantial part (a given if you copy the whole name), though it is a pretty extreme case given the small amount of text. It would have to be a pretty unique and/or long name to be of concern, but I think if you’re copying lots of item names like that the bigger risk is being sued for passing off (or equivalent), which is essentially a suggestion that you’re trying to make your product look like it comes from someone else (the original authors), or facing a more general ‘look and feel’ action - which may have a low theoretical chance of success but may still be an effective loss because you won’t have the resources to fight it.

Regarding graphics, you infringe copyright if you make a substantial copy - i.e. directly rip the art assets or make only minor changes thereto (changing the colour of things in photoshop, cropping out bits or adding bits, say). What is not copying, in theory, is making your own drawing of a turtle if the original game includes a turtle (but if it’s Mario, I’m not saying you don’t have to worry :slight_smile: ).

I hope that helps - it’s hard to be more specific without some specific examples of what we’re talking about.

Also bear in mind that working out your legal position is one thing, but game clones are most people’s first port of call when learning to make games, so there are a phenomenal number of them out there, including straight lifts of art and other assets, and it’s not feasible for game companies to stop them all (also not necessarily a good PR move to crush amateur developers making games which are no commercial threat, though you are obliged to try and protect trade marks). I’m not encouraging you to cross the line into infringement, but it is a fact that the chance of getting into trouble with a game clone is generally proportional to the size and influence of the game company, and the success and visibility of your game - but of course the latter can change over time.

I think I would conclude by suggesting that you take as little as possible from an original work as a general principle, and that if you make enough money from a game clone to afford formal advice from an IP lawyer, it’s the time to take formal advice from an IP lawyer (it may be too late by then of course if you are in trouble). If you’re going looking for investors, you’ll need it anyway.

DMCA takedown is the first step? and if I don’t counter-strike that, am I safe? other than loosing the hard worked game.

Let me explain, Lets say If I do anything wrong (of course unknowingly, as I’m not going to do willingly) and It’s on steam, is not DMCA takedown is the only first legal thing that the claimer can do? in such case Steam is going to shut the game down unless if I file counter-strike, in such case this will be court case if claimer want to carry forward with it, otherwise I’d just loose the hard work game & maybe steam acc without loosing anything else, or even if I don’t counter-strike (The game taken down from store), the claimer still can take any further action in the court?

Also wondering, what steps are possible to take against me? as I’m from India.
Also how would forming a legal firm better safeguard than publishing with the real name.

These concern me most, as I’m middle of making a game, that working hard and I know that I’m not copying ANY GAME but using unreal assets though (what happens, we play games, infects so many, so something may have inspired unknowingly xD)

I’m afraid I couldn’t tell you how big dev studios are most likely to resolve IP infringement issues - a cease-and-desist letter might be a typical first step - and DMCA takedowns are not my specialist subject. Certainly you being in India raises a jurisdictional issue but killing things off in the US and/or Europe will be sufficient to stop your game having mass appeal/reach. But certainly (if you had deep enough pockets) there are ways to challenge allegations of infringement. If you feel you’re uncomfortably close to a AAA game, and there is a lot of money at stake, get some formal legal advice, I would suggest. In the meantime, if any insiders have a particular handle on how IP infringements are usually dealt with within the games industry, feel free to chip in.

Tip for the budget-less indy developer:

If you are working on original content and need to at same time publicize your ideas, but fear someone may “steal your awesomeness”, you’d want to register legal documents to ‘secure’ your stuff; that costs moneis…
But a good and simple way of have legally recognized “registered documentation” of your creations is:

-Pack some original physical files and mail them to yourself. Then just archive the signed mail bill. :wink:

Sorry, there are a few misconceptions here that I need to correct.

If we’re talking about copyright, you don’t need to register that for money (outside US: not at all, and within US: only to pave the way for claiming damages in an infringement action). If we’re talking about patents and the like, you need to sort that out and get it filed before you disclose your idea, or offer it for sale (with regard to US requirements). Registered designs you also need to file before you disclose, but there is usually a grace period of up to a year.

You may want to keep track of when you developed things, of course, especially if you’re worried about being ripped off. To this end, keep detailed, time-stamped records of some sort as you go along (code repositories and the like may suffice for this purpose). For patents in other areas, typically you are encouraged to keep signed and dated lab books and so on. If credibility/proving things is an issue, don’t post stuff to yourself; find a sympathetic lawyer (of any kind) who is prepared to make a note of when he or she received your disc/papers/whatever, and then stuff them down the back of their metaphorical sofa in case you ever need to get it back.

I search and found that -

  • Wikipedia

That’s how it co-relate with DMCA takedown or similar first step procedure, that actually the first step before lawsuit, that mean if the accused obey that notification and take down his game from every online sites that were distributing the game, then the case closed (accused loose the game, but don’t have to face any further legal action). In case of steam or any other distribution platform, they have to face the legal action instead of the actual dev, so the step steam would take - they take down the game, then let you counter-strike if possible but wait I don’t know about steam but that seems generic and works for youtube.

But anyway I’m just being conscious, my game is way much original than all the clone games, that keep doing pretty good :slight_smile:


I’d like to know who are “them”