Videogames are complex products to develop. From story, game engine, software code and artwork over the character models, level structure and design to the music, sounds and voiceover—there are numerous components, which, in the end, form the final product.
As a player, you might not notice the importance of each of these components for the overall enjoyable experience. However, when the music doesn’t move you, the locations are uninspiring or the camera gets stuck in the geometry, you will realise that each component contributes to the overall experience in a significant manner.
Intellectual property protection pertaining to games is, in a sense, quite similar to the development of a game. There are several important IP aspects that have to be carefully considered and each of these aspects is important for overall protection.
The tutorial: available IP rights for videogames
Under German law, a game is not deemed to be work that per se is protectable under an IP right. When it comes to protecting a game with IP rights, one has to assess the specific work results created during development.
In light of this fact, it is not possible to protect the general concept of a game such as a multiplayer online battle arena, the art style such as 8-bit retro design for modern games, or specific game mechanics such as Gears of Wars’s active reload system.
Under the German Copyright Act, copyright is automatically conferred to its creator upon completion of the work. The only requirement is that the work displays a certain level of creativity.
Unlike other countries, it is not necessary in Germany to have copyright registered in an official register.
Copyright protection can, be obtained for music, software code, story, characters, art and box design.
Trademarks/company name/business signs
Trademark protection pertaining to Germany is available either by filing for a German trademark, or by applying for a Community trademark that covers all of the member states of the EU. In both systems, so called ‘trademarks acquired by use’ are available, but the threshold for obtaining such marks is high.
Trademark protection can, inter alia, be sought for a company logo, game title or game logos.
In addition, the company name, business signs and the game title enjoy protection in Germany merely by being used. The scope of protection for game titles that are not protected by an additional trademark, however, is narrow.
While a registered German design grants protection for Germany, protection for all EU member states can be obtained by a registered or unregistered Community design.
A design protects the appearance of a product, or part of it, and can be utilised in relation to games to protect, inter alia, the graphical interface of the game or game icons.
For example, Electronic Arts has several registered Community designs depicting separate elements of the The Sims menu bar. Additionally, Nintendo has protected the Wii and Wii U menus with a number of registered Community designs.
The German Unfair Competition Act provides, in Section 4(9), manufacturers and exclusive distributors with the means of initiating legal steps against competitors that slavishly copy their products and distribute them on the German market.
It is important to note that protection under the German Unfair Competition Act can be sought in parallel with traditional IP rights, but is even more attractive if the original product is not protected by any IP right.
To claim a violation, the game must possess “individual character”, ie, it must have aesthetic or technical features that distinguish it from the competing games. Furthermore, the imitation of the game must be an identical copy, a nearly-identical copy, or be discernibly based on the original. Lastly, special circumstances that constitute an “unfair act” have to be argued, eg, a risk of consumers confusing the imitation with the original product or the exploitation or impairment of the good reputation of the original.
If one is interested in protecting a technical invention in Germany, patent protection can be obtained by filing a German patent or a European patent with Germany as a designation. In addition, German utility models are also available. These grant rights to the owner identical to those of a patent, but for a shorter protection term and not for methods.
Patent and utility model protection might be obtained for hardware solutions and technical innovations. So called ‘software patents’ are generally not available in Germany.
Call of duty: securing IP rights
The first challenge pertaining to IP rights arises at the onset of the development: having to ensure that all of the work by the people involved in the development belongs to the company.
In practice, this aspect of proper IP assignment is highly underestimated. The contracts between the company and its general managers, employees and freelancers often lack adequate or valid assignment provisions, which later results in disputes over the ownership of the works and problems when pursuing infringers.
Without contractual certainty, questions have to be answered as to which law is applicable to assess a statutory transfer of rights, and to what extent rights to the works were assigned to the company. The questions get even more complicated when developers from different countries collaborate.
Detailed answers to these questions would go beyond the scope of this article. It should therefore only be mentioned that statutory provisions may not provide for a complete transfer of rights, eg, in Germany. Legal certainty can only be ensured with appropriate contractual arrangements.
Irrational games branding: brands and brand recognition
Browsing the AppStore and Steam, it appears that some developers deem naming a company or a game to be a necessary evil. The true value of a distinctive brand and an effective brand strategy is highly underestimated.
The rule of thumb for creating a strong company name or brand is: the less descriptive and the more imaginative the name or mark is, the easier it will be to obtain strong rights and enforce a mark’s rights against infringers.
As an example, Hello Games or Electronic Arts as names for game companies are by default not very strong, as they have descriptive or suggestive elements. By contrast, Zynga can be deemed to be a strong company name, as it does not suggest any connection with games. In fact, Zynga was the name of the dog of the founder of the company.
Creating a trademark series, ie, using several trademarks with an identical component, is also an effective and inexpensive strategy for reinforcing trademarks and building brand recognition with customers.
For example, gamers automatically associate a new ‘Ville’ game, such as FarmVille, CityVille and ChefVille, with Zynga, and a new Mario game with Nintendo.
Once consumers are familiar with a developer’s naming regime, they also tend to mistrust games that look the same and use the same game elements as the original they are looking for, but which do not fall under the naming regime (so called “clones”).
Clone Wars: enforcing IP rights
It does seem to be the general tendency that developers associate the notion of enforcing IP rights automatically with court proceedings when, in fact, there are a variety of other measures available.
Dispute resolution tools
Almost all of today’s distribution platforms have some kind of dispute resolution tool available. These tools provide an inexpensive means to make the operator of the distribution platform aware of the potential infringement and provide relief.
For example, Apple’s iTunes Content Dispute tool will, in a first step, connect the IP rights holder and the potential infringer. If both parties cannot come to a solution, Apple’s legal team will, in a second step, assess the request of the IP rights holder.
Similar tools are also available from other platform operators such as Google and Amazon.
Enquiry of authorisation
An enquiry of authorisation is the mildest form of an aggressive action against an infringer. The possible infringer is informed about the fact that the IP rights holder is aware of the allegedly infringing game, and is asked to explain why it feels entitled to use the IP right, eg, certain assets of the game or a similar trademark.
With a warning letter, an IP rights holder asserts its rights and requests the infringer to sign a cease and desist declaration according to which the infringer undertakes to cease all infringing actions and to desist from selling the game.
This measure is often successful, and has the direct effect that court proceedings can be avoided.
Preliminary injunctions are most commonly used in IP infringement cases that deal with trademarks, copyright or design rights. Preliminary injunctions in Germany require urgency of the case, ie, require that the IP rights holder did not learn about the infringement more than four to six weeks prior to the filing of the application for the preliminary injunction.
Generally, it takes a German court of first instance between six and 12 months to render a judgement in the first instance. This judgement is provisionally enforceable if a security is deposited. The enforcement of the judgement in first instance leads, in many cases, to a favourable settlement.
Uncharted: developing the right IP strategy
These are exciting times for small and mid-sized developers. With the new publishing platforms such as app stores for mobile games, Steam and the growing support of hardware manufacturers such as Sony, developers are able to reach a large audience with their games.
In addition, virtually anyone is in a position to publish their own games now, as support from bigger publishers is no longer a requirement.
However, these significant changes in the gaming landscape have brought back the Wild West mentality.
It is therefore highly recommendable for small and mid-sized developers to also develop knowledge about their IP rights.
As explained above, many IP rights are conferred to their creators simply by developing or publishing a game without further financial investment or paperwork.
These IP rights provide a good foundation to build an IP strategy on.
Ideally, an attorney who is familiar with the gaming industry will provide the necessary support along the way in developing an IP strategy that evolves with a company and its games.