We have a series of three blog posts to go over some of the basics of what you need to know about protecting your legal rights for your work.
Liz’s disclaimer: My answers to these questions are for informational purposes and should not be taken as legal advice. Although I answer some commonly-asked questions below in general terms, you should consult a lawyer about your individual situation because there is no “one size fits all” answer to any legal question. Always have your attorney go over any contract with you before you sign it.
Hi Liz, why don’t you introduce yourself to everyone who might not be familiar with you and the Boston scene?
I’m a lawyer based out of Massachusetts who helps studios protect their games by working with them on contracts, IP, employment issues, business formation, etc. I’ve wanted to work in games for as long as I can remember, so I really enjoy serving this community.
1: Shall we start with a brief overview of the differences in copyright, IP, trademarks and patents in how they relate to the games industry?
Sure, this is a question I get a lot. “Intellectual property” is an umbrella term that refers to certain “creations of the mind” that are given legal protection. Trademarks, copyrights, and patents are three different categories of intellectual property. Each of these categories protects certain types of subject matter and each grants the owner of that subject matter certain rights. A game is made of work product that is protected by copyright, and it may also have elements that are patentable. The title of any game is considered a trademark, as is the name of your studio. This is true even if you haven’t registered that trademark with the federal government—although registration has important benefits.
By way of example to look at the differences between copyright, patent, and trademark, we’ll examine Eternal Darkness on Gamecube since it’s a personal favorite of mine.
-A copyright protects the game’s tangible, expressive assets. These can include the art, soundtrack, script, code, or any other creative element that is an original work of the developers. The game in its entirety is also protected by copyright. Because Nintendo owns the copyright to Eternal Darkness, only they have the right to make copies of the game, sell it, and make derivative works such as sequels.
-A trademark identifies the source of goods and services so that a consumer can distinguish between, say, Nintendo’s games and Sony’s games. Game-related trademarks are usually names and logos of the game, the developer, and the publisher that appear on box art, splash screens, websites, etc. “Eternal Darkness” is a trademark because it tells the consumer what they can expect from that game’s content just by looking at it. If Eternal Darkness 2 is ever made (here’s hoping), you will immediately recognize the game as coming from Nintendo and you can immediately expect it to be a horror game with a sanity system that takes place in a Lovecraftian version of Earth. Nintendo owns the Eternal Darkness trademark and is currently re-registering it with the US Patent and Trademark Office. Once that process is complete, Nintendo will be the only entity allowed to use that game title in the US.
-A patent protects new, useful, and non-obvious inventions or designs. Patentable subject matter related to games can include innovative game mechanics, UI/UX elements, peripherals, and of course, console/PC/arcade hardware. Going back to Eternal Darkness, Nintendo owns the patent for the game’s signature Sanity System. The patent was granted on the grounds that it is a method for altering gameplay based on the character’s sanity meter. Although Nintendo has the exclusive right to use the sanity system described until the patent expires, studios like Cyanide (developer of the upcoming Call of Cthulhu) can legally implement sanity effects into their own games either by building systems that are different enough from the one found in Eternal Darkness or by getting a license from Nintendo to use the patented subject matter.
2: If someone was working on a personal project that they believe had potential for success, at what point along the way should they consider protecting themselves and the costs that could be involved?
Before they begin! It’s especially important to be aware of the legal issues present at all stages of game development if you’re working with other people—whether they’re your full partners or people helping out here or there. This is because the early stages are when everyone is more likely to be getting along. Sadly, the moment that significant money or fame is introduced is often the moment when relations between developers start to get ugly. I’ve heard a lot of people say they only need to think about those things if they start to attract a lot of publicity for their game, but you should have the legal formalities such as partnership agreements and contracts for work product taken care of ASAP so that everyone can agree on expectations and have time to get a fair deal. I use the example of Indie Game: The Movie a lot because Phil Fish’s situation (where he was in danger of not being able to show his game at PAX because he didn’t have the other developer’s permission) is a real-life example of why you need a written partnership agreement right from the start. That said, if you’re already working on a game, there are contracts you can sign to protect yourself and the game retroactively depending on the situation.
3: How can an employee of a studio protect their own ideas they have worked on in their own time from their employers? Is there anything to look out for in a typical work contract in that regard?
The answer to this is in the paperwork you signed with your employer when you started working for them. Before starting the work on your game, check any documents you signed for your job and look for language about “Inventions”, “Work For Hire”, and “Non-competition”. This is especially important if you’re in tech or academia because employers in those fields often write their employment agreements in a way that gives them ownership of anything you make—even on your own time and resources. If you have those kinds of clauses in any of your employment paperwork (you should also check previous employers going back a few years), then read them very carefully to see under what circumstances you can make your game without worrying about an employer interfering or saying they own it.
Thanks Liz, for a great Q&A series with your insight into IP, copyright and law in the industry! We’ll continue this Q&A series of legal matters, covering licensing agreements, demoing your idea and more in the following posts, so check back soon!
Liz Surette is an attorney in Massachusetts who helps game studios protect their assets by providing services related to IP, contracts, employment, game content, and business matters. She has spoken on VR at the American Bar Association’s Business Law Section annual meeting, organized and moderated the PAX East 2016 legal panel, and written articles featured on Gamasutra and GamePolitics. Email: liz (at) overclockedlegal.com Twitter: @LizOvcLegal
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