Practical IP Law for Indie Developers 301: Plain Scary Edition

[Music] good afternoon everyone and welcome to practical IP law 301 for indie developers plain scary edition before we get started I just want to remind you this will be available in the vault like the previous two and please fill out your session evaluations afterwards I really appreciate the feedback my name is Chris Reid I am the founder at Chris Reid law we're a boutique law firm that works with developers and game industry professionals on a wide range of legal issues before we get started my co-counsel mr. Phoenix Wright would like to remind you that I am NOT your lawyer and this is not legal advice when I did 101 and 201 in years past I kept under estimating how much time we would really need to cover a complex legal issues in detail well this here is IP and that's as complex as they come so let's just for safety say about that much time and unfortunately we only have enough time for a game of pub G so let's get started

my goal today is to teach indie developers how to protect and use their intellectual property what is intellectual property it's real rights for intangible things that sounds abstract so why should you care simple your game is IP for example here are just some of the things in the game industry that are covered by IP so basically everything to that and we're gonna cover the two big ones copyright and trademarks for most of this talk and then I'm gonna spend a little bit of time on patents trade secrets and the right of publicity which sometimes come up for Indies for each type of IP I'm gonna tell you what it is how you can protect it and when and how you should enforce it and how to avoid infringing it we're gonna start with copyright which is by far the most powerful and important IP right for Indies to understand I like to think of copyright

as the pistil from halo 1 you get it instantly it lasts almost forever it's useful in almost every situation and as you know if you played it's massively overpowered so copyright will protect almost every individual aspect of your game that means characters code art music and sound assets animation UI design and writing all of these things are individually protected by copyright and your completed game as a whole is computed as an audio-visual work but there's one important exception for Indies and that is copyright does not protect abstract ideas and what that means for you is your game mechanics your idea your theme that's why you can have a million match 3 games it's why pugsy and fortnight's battle royale mode can coexist if you need to protect your raw concept you want to use probably an

NDA like if you're an example pitching to somebody because copyright is not going to do it what copyright will do is give you a host of exclusive and powerful rights the sole right to reproduce to sell distribute stream and importantly to make derivative works that means anything based off of your original content sequels prequels DLC merchandise of any sort adaptations to other medium so that sounds awesome right how do we get some of that the basic rule and if you remember one thing about copyright it should be this in the u.s. copyright if you make it you own the copyright period you do not need to register you do not need to file you own it instantly that's great if you're an artist but it's a problem for a game studio because you don't want to have to have ten people with owning different pieces of copyright that you have to get permission from to do anything like sell

your game how do we solve this contracts contracts contracts written signed contracts are the single most important way to guarantee the company's ownership over the copyright and to effectively use and license it I went over a lot of these contracts in detail and 201 but today we're just gonna cover some of the specifics for copyright because you cannot transfer the ownership of copyright without a signed written agreement so this is going to be important when we're gathering all the rights into the company from people making the game yes the owners of the company they need to sign contracts too it could be the operating agreement of the company it could be an invention assignment agreements but they need to do it all of the contractors and w-2 employees anyone who contributes to the game or material around it no matter how small they should be signing a written

agreement that provides that it's work made for hire that they're assigning that copyright to the company and that means if you're an artist or someone working for a game studio when you sign one of these you're saying yes my work is owned by the company not by me unless it's specified as a license which does sometimes come up if for example you have a musician and they're merely licensing the tracks to you that's fine but you need to know what the size of that license is what can you use it for in fact while we're talking about licenses you should also note that if you're gonna use things from the unity asset store or if you are using open source software these things might be free for you but it doesn't mean they're not protected by copyright they're almost certainly subject to a license so you need to know what the terms of that are so you know what you're allowed to use it for and what you're not when you are using the rights you have and licensing them out your company is licensing the rights out you also need

to pay attention to contracts so if your studio is doing a development agreement where you're making a game for a client you don't want them to own everything they may own the completed game but they shouldn't own your core code libraries your engine these sorts of things are things you want your company to maintain copyright ownership over so instead that contract should specify but these developer tools are merely licensed to your client so that you can use them in future projects if you're going to do a publishing agreement that means that your licensing one of those rights to distribute and sell to a publisher but there's a lot of special settings that you need to think about is that licensed forever is it limited in time is it exclusive does it cover worldwide what platforms does it cover are they involved in things like derivative works and merchandise are they involved in sequels is there any chance based on this

agreement that you might actually end up assigning your copyright all of these things are important and you need to pay attention but no contract no matter how good is going to enforce itself and stop people from infringing copyright copyright infringement is when someone uses your stuff without your permission it comes in the obvious bad form of people stealing your assets and using them pirating your game directly and some forms of cloning might also be copyright infringement but there's a lot of things that go on with your content that most developers are pretty okay with so things like machinima streaming fan art let's play videos most indie devs are great about this stuff they like it so how do we make sure that we can allow that while stopping the bad stuff well good news copyright gives you a very powerful and arbitrary right to drop the hammer whenever and wherever

you want so you can selectively stop just the stuff you want to stop for example if someone is streaming your game and that's awesome and then you decide maybe it's not so awesome then you can specifically enforce against just that person and let everyone else keep going that's very helpful how do we do this enforcement well first off a preventative measure register your copyright I know I said you don't have to do that to own it and that's true but it's useful it is cheap about 65 bucks it's fast you can do it online and when you do it it upgrades your rights especially if you ever need to sue it means you can sue for ridiculous amounts of money and that is a very potent threat so do it within three months of launching your game for the maximum coverage or afterwards you know as soon as you can and then we need

to think about when people are actually infringing what do we do well the first step could be to decide hey maybe what they're doing is okay as long as I can control it and that means you might offer them a license look you can use this material but only under these certain terms it's on your terms but if you just want to stop them the first step would be to send a cease and desist letter that's a formal letter that says look you're infringing the following things you need to stop or else the next step would be to get that content pulled you might send a DMCA takedown notice to the content hosts so YouTube or steam these companies take it very seriously they will comply almost immediately and they will pull that content it's a very potent tool to send a message and the final step if you really are still having a dispute is to sue this is expensive especially for Indies it's gonna be thousands if not tens of thousands of dollars to prosecute a federal trademark or a football

trademark case as well but a copyright lawsuit so it has to be worth it but the damages you can ask for are enormous so it is a potent and scary threat which is why you need to avoid infringing other people's copyright so I know it's nice to use other things to reference things but let's talk about a couple ways you can be relatively safe first off we said that the same idea or mechanic is not protectable so go for it feel free to be inspired by other people's mechanics that you see anything that's really just generic is not specific enough to be protected by copyrights so having giant swords in your game or huge shoulder pad armor I mean that's not going to be protected by copyright there's the public domain which means anything that never had copyright protection or has already fallen out of copyright protection basically it means old stuff mythology Alice in Wonderland these are

great sources of material because anyone is free to use them and then of course we have fair use which you all know about of course from arguing about it on the Internet there is a core rule that I have for fair use just because it's cool doesn't mean it's fair use fair use is what we lawyers call an affirmative defense to copyright infringement that means three things for you one you're only gonna get to raise it if you're already standing in court and that means you've spent a ton of money to you have to admit that you committed copyright infringement which you might not want to do especially if you end up losing and three you don't know if you're going to lose because every case is decided differently based on four factors by a judge it's case by case and there is absolutely no way to be certain do not buy into the myth that there are specific easy buckets you can

fit into and you're totally safe oh it's parody no that's not always a safe bet don't buy the myths and finally I know that was a lot let's sum it up it protects almost all of your content but you want to show that ownership and gather it using contracts license your copyright using contracts your enforcement ability is powerful and you can be selective but you need to respect it and don't get cute using other people's stuff let's move on to the second big area of IP that I think is relevant for indie developers and that is trademarks trademarks protect game and company names logos and slogans it is the power of your brand in the minds of consumers when connected with the goods and services that you sell but not when connected with unrelated goods I mean unless you also sell bungee cords

so trademarks give you the right to stop other people from using the same or a similar mark name logo for the same kind of goods this is pretty important because you don't want to have to change the name your game at the last minute and Brigade you also don't want to have to spend a lot of money if you have it to buy the rights to a game that was already there when you didn't notice this is because trademark law is based on first-come first-serve we call this priority it means whoever gets trademark rights first is able to stop anyone who comes afterwards from using that name or that logo for the same kind of goods how do we get that you sell your game if you remember one thing about trademarks it's this you have no trademark rights until you sell

your game that means that there's a lot of cool stuff you might do that doesn't count as selling your game and it doesn't give you any trademark rights for instance registering social media accounts or website domains running a dev blog where you talk about it having a hugely successful Kickstarter being reviewed glowingly in the press having a big closed beta none of these things count as selling your game none of these things give you trademark rights maybe early access but it's not exactly clear so I wouldn't rely on it so wow that means there is a lot of time when you're working hard on your game during development and you've got no guarantee of your trademark rights if only there were a way we could call dibs that is what filing a trademark registration will let you do it reserves that priority date from the moment you file the registration you still have to

sell your game eventually that's when you get your rights but it lets you reserve the date so to be clear if you haven't registered and someone sells a game for the first time three days before you launch you're out of luck if they're using the same name as you they beat you if you've registered months before you beat them so how do we do this registration we go to the Patent and Trademark Office where you have to file an app location it lets you reserve those rights for up to three years though you have to pay a fee every six months and keep filing it is still not going to be final rights until you sell that game so you do have to launch eventually it's not forever the process will cost you around fifteen hundred bucks it's strongly recommended to use an attorney to navigate the system once you get the registration though it gives you some neat benefits obviously it's led us reserve that priority date so anyone who

came after when we filed they're out of luck but the rights you do get are upgraded from just normal trademark rights they're going to be much stronger if you ever need to sue someone it's much harder for other people to contest your trademark and that means that yes it's still worth registering your trademark even after launch if you've seen this now and you think oh I didn't register before it's still worth it for the upgrade in rights and finally of course it let's use the cool are in the circle symbol which everyone loves that you're gonna have a couple of things to consider during registration especially on a limited indie budget if you can only pick one thing to register I would go with your game name especially early on why because that's your brand that's what it's more likely someone's going to beat you out too later on you can register your studio if you want you also have to choose if you're only doing one between a word mark which is plain text or a design mark which is like a logo the word mark is almost always broader protection so

start with that if you can only register one thing and besides your logo may change over time but I know Indies are usually strapped for cash at a bare minimum if you don't register here's what you should do Google early Google often search the patent and trademark database these things are free it's not going to guarantee that the name is definitely available there might be something you didn't find but it will certainly help you avoid obvious pitfalls also you can use the TM symbol unlike the are in the circle which you must be registered to use the TM symbol anyone can use it it doesn't really have any legal force but it acts like a no trespassing sign it lets the world know hey we intend to protect this name and that can keep people away in a practical sense ideally though just register your mark as soon as you can if the name is important and also protect against infringement once you have those rights

you need to stop trademark infringement what is trademark infringement it's when people use the same name or logo or something confusingly similar doesn't have to be identical to sell the same kind of goods or services and before you get clever about it I'm really sorry the trademark law filthy casual it does not understand the difference between genres meaning all video games are the same product as far as trademark protection is concerned so if anyone is using the same name or a similar name as you are to sell a video game of any kind that's a problem how do we do this enforcement well we've got some preventative measures register your trademark as we said that's helpful puts people on notice when you need to stop someone or deal with infringement that's out there you've got a couple of steps first off consider whether what they're doing is okay with you as long as you control it's similar to copyright you

can offer a license for them to use use it on your terms that counts as enforcement you can send a cease-and-desist letter just like with copyright to tell them to stop and you can send a takedown request to the content host so now this won't technically be a DMCA notice but most of these companies also have trademark policies in place and they will respect trademark claims as well and finally of course you can sue it's still very expensive to sue for trademark infringement but if your rights are registered you're in a very strong position and you're likely to win and I should note you can enforce your rights even if they're not registered so if you've started selling your game you have trademark rights in that name they're called common law rights the registration upgrades them and makes it better if you have to sue but you can enforce either way and you should because trademark law me it says that if you don't enforce your marks over time the protection that they

give you narrows and could disappear unlike copyright copyright you can sit on your copyright for 10 years and do nothing and one day Justin stop and force against one person with trademark it shrinks over time can eventually disappear you must enforce it doesn't mean you have to be a total jerk to everyone it just means you need to notice who's infringing and you need to ask them to stop you need to maybe offer them a license and of course you want to avoid infringing other people's trademarks first step is easy before you use a name Google it's not that hard make sure that clearly isn't someone already using this name for a game as far as using trademarks deliberately maybe you want to reference someone doing homage whatever just get permission don't assume that they're ok with your use yes you can use people's trademarks in a comparative sense but if they don't like what you did they might decide that they want to challenge it in

court and nothing stops them from suing you that's an argument you're gonna make in court just like fair use that's expensive argument to have the safest don't use it without permission if you're really going to ignore me and do it at least put clear disclaimers that say we don't own this we're not endorsed by them we're not associated with them so to sum up trademarks you should plan and search ahead so that you know that name is available because you have no rights until you sell your game you can reserve that priority ahead of time by registering and you absolutely should and you need to enforce your rights to keep them strong so those are the two big ones now let's cover a couple types of IP that occasionally come up for Indies but aren't nearly as relevant first we're gonna start with patents patents are a type of IP that protect novel useful and non-obvious inventions you can only get a patent by successfully applying to the Patent and Trademark Office it's gonna cost you around $20,000 probably it takes about 2

to 3 years and when you eventually get it you get 20 years of protection but that protections really specific and narrow and it might be really easy for people to design around it there are certainly examples of patents in the game industry some kind of business methods like monetization strategies certain parts of software algorithms might be patentable and of course famously some game mechanics have been patented but and of course also rock band guitar novel hardware interfaces these things can all be the subjects of patents but first off it's usually big companies that have them because of the cost and you don't know that they've actually been that helpful in enforcing so for Indies is it worth it nope it's just too much money and effort for not enough guaranteed protection your your time and your money are better spent elsewhere so let's move on to trade secrets which are easily the coolest sounding type of IP trade

secrets are any information that you can keep secret and that gives you a competitive advantage because you kept it secret it's your special sauce so things in the game industry like customer mailing lists game design documents a marketing strategy in-app pricing models that sort of thing if you protect them then the law will let you sue someone who misappropriates them without your permission how do we get that protection that's easy you listen to Gandalf I mean that's just good life advice in general but specifically that means you need to make reasonable efforts to keep the information secret and you show this by limiting access to who can see it using technical security precautions you know encrypted email don't just leave printouts lying around and by showing that you have contracts ie NDA's with people before they get access to it that's how you keep your trade secret safe but you also need to be careful about not being exposed to other people's trade secrets

it sounds great to learn what your competitors are doing but if an employee or a new contractor tells you trade secrets from a previous job and they don't have permission to do that they've dragged you into a fight you're now liable from his appropriation of trade secrets you don't want to hear that so you tell them not to share it you don't look at it if they try to share it and you have a contract in place that makes sure that they are obligated not to share these things if they don't have permission finally we have the right of publicity this is right that individuals all have in the commercial use of their name or their likeness in the game industry we have some famous examples NCAA student athletes sued EA for their use of their name and some of the sports games Lindsay Lohan sued rockstar for the alleged use of her likeness and some marketing materials it's also a messy

kind of right because it's different in every state it's different in every country so you don't know exactly what's going to apply and that's all the more reason why the core rule is simple just get permission or don't reference people don't use their name don't use their image because while it's true that you can use a public figures name or likeness for newsworthy purposes or for historical purposes that's one of those arguments you're gonna be making in court and that's right you spent a lot of money and guess who's gonna have a lot more money and a lot more lawyers than you the celebrity if they want to sue they will so if you absolutely feel that you must be parroting a public figure you know that you're taking a risk and make sure that your reference to them is as far away as possible so that you can plead deniability and never ever admit in writing or out loud that that's what you're doing that is a surefire way to lose a lawsuit if they

want to bring it maybe just stick to original characters and that's it we made it so are you scared you don't have to be remember your product is IP the rights are powerful but they're complex that means you need to gather the ownership with contracts and protect it with registration and use those contracts to license those rights and remember that your rights don't enforce themselves you have to be vigilant and diligent about enforcing and that's the end I want to thank my paralegal for all his hard work and please please fill out your session evaluations I really really appreciate the feedback now I am happy to take some questions as long as every single one is not about fair use Thanks hello hello I really enjoyed it

as a fellow lawyer I learned a lot of good things thankfully we were doing things correctly I just didn't understand the technicalities but my question to you is can you have trade secrets sort of in something that doesn't belong to you like if I'm working within Sony's hardware you know my company makes themes and we do things that other people don't can I have trade secrets when that software maybe doesn't belong to me or so are you asking if you personally so you're asking can our company protect our sort of techniques via trade secrets if they're in other people's material because you're working for them yes interesting yes in fact that's that's one of those places where you want to protect trade secrets right and that's going to be taken care of in the contract that might actually get lumped in when I said the developer tools were important right if if you do work for someone else I was talking about copyright there but oftentimes that clause in a contract will cover more than just copyright it's you kind of

broadly define any of our special things proprietary techniques we do not assign ownership over them and you make sure that that later in that contract there's probably confidentiality so it says look we're gonna use some of our special trade secret techniques you can't disclose them and you don't own them but you have a license to use them inside this product that we're making for you so if I'm working with like a larger company that has their own like sort of terrifying you know giant contract is this something that I need to insist that we just have in there because there have been some people that have tried to sneakily be like we need this code and usually we've gotten around it like no like you can just have the package but oh well that's I mean I think it's probably a good idea that so there's there's the practical world in the legal world right practically not giving them the code is a good way for them not to steal it you're basically giving yourself a right hey you're scaring them by saying hey you're promising in writing you can't disclose this so that's a good idea to say you can have it but you need if they

don't already have that that feature then maybe have an NDA specifically for it but also it gives you recourse if they do end up sealing it you can at least sue you can ask for an injunction yeah thank you no problem thank you so in order to enforce trademark you have to have sold the game doesn't matter is there like a certain remote copies or can you just like have like a one copy sold with the receipt here so you're asking in order to get your trademark protection it doesn't matter how many copies you sell or can it just be one if you were truly selling it and you've released it and it's out on Steam then the from the moment of the first copy that's when when you get your rights that's your rights are dated as of that if you haven't registered those rights are going to be what are called common law rights so the more you sell the more powerful your brand the better the enforcement ability if what you're asking is hey I really want to reserve the date can I just like sell a copy to my gonna ask me look good trademark law definitely does not let you do that and they know that people

try to do that and there's all sorts of case law about not being it that's why I said that early access is kind of maybe like if it's early access where the game's basically done and you're selling a finished copy and you maybe will make some tweaks that you have a good argument if it's like a really early unstable alpha or beta and it's totally gonna change they're not gonna see that as selling the game right so it just has to be honest or whether yeah yeah it has to be launched yeah available and also by the way it can be free I said sell but it needs to be just available in the normal channels of trade whatever that means so if it's free on GOG or whatever as long as it's out and it's finished and you're distributing it and the way the same place that you would normally sell if the price is zero that's that's okay that's okay okay thank you yeah no problem hello hello I had a question about submitting a copyright claim for your game okay so when you to the to the Copyright Office yes that's correct yeah how much material do you have to submit to them so do you need to provide your entire code base and all your art

assets so this is why we often even though I say it's fairly straightforward like a of clients end up doing it with us just to avoid the headache they do have instructions on there I think with the code they want like the first I want to say first 20 and last 20 of the source code and by the way linking it up to trade secrets they actually have a thing where they say look if your code involves what you consider trade secrets you can redact those portions and they've got pretty good instructions it's just not fun to read through them all okay thank you yep oh and by the way a pro tip if you're submitting the finished game you know along with art assets and all in the code and all that it's a pretty good idea to also submit some footage of gameplay this has come up in some cases where judges do not understand video games right so you need there to be stuff for them to look at so the fact that the registration had some gameplay the judge was able to look at and say oh I see this looks pretty similar to this so it's it's not a bad idea to put like 30 30 seconds of like

core gameplay in there just you know doesn't hurt yeah thank you hi Chris [Music] so a quick question or hopefully quick question regarding the protection of trademark abroad as far as different countries and also potentially different languages especially you have a title that doesn't necessarily translate right into other languages and just let you go with that okay so at to two questions one what do you do about protecting your trademark in other jurisdictions and two what if your title doesn't really translate into the other language in a meaningful way so first off I should I should just make doubly clear that this this presentation is based mostly on US law I mean there's some general principles that are good I mean contracts are always good but the especially the IP law is country by country you can use a trademark registration in the US or in another country as the basis for like grabbing

that priority date and applying it to other countries now that gets expensive you have to find attorney counsel in in every individual jurisdiction to do it for you but there is a treaty that that allows for a process where you can kind of use it to apply elsewhere I mean you're not going to do it unless you really think you're gonna be launching in those in those places as far as translation I'm not sure how it works in all the many other jurisdictions but in the u.s. we have a we have a principle that basically says if the name of your game is totally fine except that it means something else in a foreign language and if you translated it it would totally be infringing something that already exists right like it's a foreign word and there's nothing in the database with that name except that it means something and there's definitely someone there they actually have a principle that generally they will assume that it infringes they assume that people would stop and translate because I guess they assume everyone speaks every language but that's just yeah so there's there's a lot more detail there but that's great

thanks yeah thank you I'm not I don't have all the right term so I hope I can get this across sure problem the trademark office rejected our request because they said the name was too close to a general term yeah but there was some secondary list that we were able to get on and I'm wearing what the difference in protection is yeah sit and secondly can we use the our because we're on the secondary list yeah I don't believe you can use the are in the secondary register this is you got a rejection and I didn't have time to go into this but you all you shouldn't you can't infringe on other people's existing rights but you also have to have a name that's not what they call generic or descriptive so if your if your game is to descript or the title is too descriptive of what the goods are like if Apple were a you know fruit apple company that would be they

would they would probably reject that trademark you can say look we still want to use it we know we can't get protection now they put you in a secondary list and you can come back in a number of years and say look we've been so successful that even though it initially was generic people have really started to associate and you'd have to prove it with all this stuff I'm not a hundred percent I'll look but I don't believe you can use the the registered symbol for the secondary register and the difference in level of protection I mean you less protecting appear on secondary list yeah I mean it's not it's not a registered trademark it's something that you're basically you're you're there so that you can come back later and prove why or do you think what's that you're just alerting people that you're using yeah and you're planting a flag so that you can upgrade it later at with the patent trademark office thank you no problem and I think we're we're done thank you so much I've got time in the overflow room if you want thank you