The Basics of Intellectual Property

    Intellectual property is intangible. It is not fungible. Intellectual property law is complex, varied, and often overwhelming. However, it is absolutely necessary that developers, publishers, and others who work with game properties understand their legal rights with relation to that property.

Basics of Intellectual Property

Intellectual property law concerns copyright, trademark, and patent law. It also addresses trade secrets, trade dress, name & likeness and right of publicity. Some state laws also protect ideas. Game developers and publishers must be aware of all of the rights associated with a game product. This isn’t limited to the code, software, and artwork contained in the game itself. This includes any storyline or script used, any film or creative property upon which the game is based, any music, any actors or models used in the creation of characters—every single aspect of a game touches on intellectual property issues. Over the weeks I’ll go into specifics about licensing, but for now we’ll just cover the basics.

***One thing to ALWAYS keep in mind. It is ALWAYS smarter to create your own work than use someone else’s. Even if your use of another person’s work toes the line of fair use, LEGAL FEES ARE EXPENSIVE, and having to pay the costs of defending yourself in an infringement action will almost always be greater than just coming up with something on your own.***

Copyright

Your copyright attaches the moment to put your work in a fixed, tangible medium. This includes but is obviously not limited to saving script to your hard drive, printing out your design document, or burning 3D character models to a CD. According to 17 U.S.C. §102, the categories protected by copyright include:

"(1) Literary Works

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion picture and other audiovisual works;

(7) sound recordings; and

(8) architectural works."

Copyright protection does not extend to ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries. In other words, it doesn’t protect inventions or "useful" works. Inventions and useful works are discussed in the "patent law" section, below. 

Software has been a tricky area of copyright for decades. It is undisputed that the literal elements of a computer program (i.e. the script/code, written in computer language) are protected– that is to say, all courts who have ruled on the issue (i.e the 3rd and 9th Circuits) have agreed that writing code in computer language constitutes a literary work. However, the non-literal elements are a bit more problematic—the structure, sequence, and organization of computer programs may or may not be protected by copyright. It is almost certain that some non-literal aspects of the program will not be protected because of their generality—they will possibly be categorized as abstract ideas and not actual expression.  As technology advances, we’re getting closer to a consensus, but new technology also means new intellectual property issues and disputes are popping up and may vary from jurisdiction to jurisdiction. 

As for graphical displays, images, game models, quicktime events, and the like, they may be protected as distinct graphical, audio, or audiovisual works separate from the underlying literal work (the code). see Stern Electronics, Inc. v. Kaufman, 669 F.2d 852 (2d. Cir. 1982). 

A copyright gives you an exclusive bundle of rights. Under US law, those rights are freely alienable, which means you can sell or license those rights to another person or company. There are 5 enumerated rights, each or any of which are severable. In other words, you can sell a narrowly tailored aspect of one right (for instance, exclusive right to distribute Game X in Z territory) without giving up any of your other rights, or your remainder in the right you sold. The rights include:

1) Distribution;

2) Reproduce (copy);

3) creation of derivative works;

4) publicly display;

5) publicly perform.

Giving someone an exclusive license or assignment of a right (for instance, the exclusive right to publicly display a work) will also prohibit you from displaying that work, so it’s important to pay attention to what rights you are licensing or assigning. A non-exclusive license gives someone permission to use your work in accordance with the terms of the license, but you retain the rights to the work and you have the ability to license that work to other buyers. For example, if you assign all of your rights your work to a publisher, you can’t turn around and distribute the work on your own without the publisher’s permission. However, if you grant a fully non-exclusive license to a distributor, not only can you turn around and distribute that work on your own, but you can license the same rights to other distributors.

Your copyright triggers once you publish your work. Prior to publication, that work is covered under your state’s IP laws. Therefore, registration is not required once you’ve published the work. However, registration IS required if you plan on suing for infringement, and it’s generally advisable if you ever plan on selling, licensing, or assigning your rights, as smart companies and business people will want those transfer/sales documents recorded with the Copyright Office for chain of title purposes. Copyright registrations are currently $45 a pop, so it’s worth getting registered. If registration occurs within three years from first publication, there is a presumption of copyright validity. 

Finally, it’s important to note that the Copyright Act provides a safe harbor for reverse engineering. To promote freedom in the market and interoperability, competitors are able to reverse engineer software and circumvent copyright protection software and systems (DRM) without running afoul of the Copyright Act. 

There are also matters of digital rights (under the DMCA) and the First Sale Doctrine, not to mention fair use, but for now, those are the basic principles of a copyright.

Trademark

Federal Trademark protection is granted when a brand name or logo is first used in interstate commerce. It is covered under the Lanham Act. Brand names and logos used in intrastate commerce (for instance, a law firm solely doing business in the state of California) are protected under state trademark laws. So what is a trademark? It is a brand name, identifying mark, name or logo that identifies the origin of goods in commerce. A service mark serves the same function for the sale of services in commerce. Trademarks are fairly straightforward. They must be unique, and prior to registering your trademark or even settling on a trademark, you should first make sure that you’re not infringing on someone else’s trademark. A trademark is infringing if the conflicting marks are so similar as to create a likelihood of confusion in the marketplace. While the laws concerning unfair competition and trademark infringement is rich, the basics are just that—very basic. Infringement of a trademark typically results in equitable relief in the form of an injunction. An injunction prohibits the infringer from continued use of the mark in commerce. For basic purposes, it’s just important to make sure that no one else is using your mark. Many law firms and companies will conduct trademark searches for you for a fee. Google is also an option. For federal trademark searches, check out the USPTO.

 

Patents

Software is unique in that can, to a certain extent, be protected by both patent and copyright law. There has always been some dispute as to whether or not this should be the case, but the fact remains that computer processes may be protected as a utility patent, while the underlying code can be protected by Copyright. Patents are unique from Copyright and Trademark in that they give the patent holder the right to exclude others making, using, selling, or offering to sell the patented work for a certain period of time. There are three kinds of patents: utility patents, design patents, and plant patents.

Utility Patents: Utility patents include any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. To qualify for a utility patent, the work must be novel (new), non-obvious, and useful. A utility patent’s duration is 20 years from the date the patent application was filed. The term does not begin, however, until the patent is issued. Therefore, if a patent is issued two years after application, the duration of the patent is 18 years. The application process can take that long, and a complex patent application is next to impossible to complete without a patent attorney. I’ll go more into utility patents in later entries, when discussing new technology.

Design Patents: Protects ornamental designs of articles of manufacture. The duration of a design patent begins at issue and continues for 14 years.

Plant Patents: Protects plants that are discovered or invented and can be asexually reproduced. I seriously doubt this will have any application on the future of game development, but I’ve certainly been wrong before.

Right of Publicity/Name and Likeness

Privacy rights aren’t spelled out in the Constitution, contrary to popular belief. They are "penumbral rights", in other words a mish-mash of interpretations taken from Articles and Amendments of the Constitution, and plenty of Supreme Court Justices treat them with the utmost caution. The Right of Publicity and Name & Likeness rights are the bastard children of privacy rights and intellectual property rights. They usually come up in tort claims either at common law or under a state statute. The right of publicity laws in California are spelled out in §3344 of the California Civil Code, and protect an individual’s "name, voice, signature, photograph or likeness." In other words, you can’t use a person’s name, voice, signature, photograph, or likeness without that individual’s permission. A right of publicity arises when an (typically famous) individual’s likeness is used in association with a product or service in commerce without that person’s authority. Damages for the improper use are typically determined by the profits earned as a result of associating the individual with the product or service. Name & Likeness damages are a bit trickier, particularly if the individual in question isn’t famous or does not contribute to the profitability of the product or service. Typically damages will be equitable—in other words, the injured party can try to get an injunction to prohibit continued use or distribution of the product or service while the name and likeness are still attached to the product or service.

 

That’s IP in a nutshell. Trade secrets were discussed in an earlier entry, and for the sake of software development it’s worth reading. Otherwise, these issues will be addressed more specifically in later entries.

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