Dissecting intellectual property for gaming companies
Reuben Portanier, partner at Afilexion Alliance, outlines the key intellectual property elements the industry should not neglect
Huge efforts in getting gaming operations licensed, maintained and marketed could easily lead the legal and commercial teams to mainly focus on compliance, sales and marketing at the expense of also focusing on how and whether intellectual assets are truly protected. Gaming companies are also inherently creative legal beings, that invest heavily in their intellectual property (IP). Over the years our firm came across many gaming clients that were so focused on their operations that they overlooked the effort required to protect their IP. Which are the key IP elements that gaming companies should not neglect?
Copyright – probably the most important IP right in gaming
Copyright protects creative manifestations and arises automatically on the creation of eligible work. Source code of games is eligible for copyright protection as “literary works”, while other features can generally be eligible for protection as “audiovisual works”. When third parties are engaged such as developers to create a game, it is important to make sure that appropriate clauses are in place to ensure that the respective rights belong to the gaming company.
The versatility of copyright as an IP means that various elements of a game, platform etc can be eligible for protection under copyright. Copyright is a national right, arising under national laws, but it is recognised in other countries via the Berne Convention. This should be kept in mind as gaming contracts typically have an international dimension.
Trademarks – the most important IP right after copyright in the gaming industry
Trademarks protect the source of a good or service, through the registration of a distinctive sign (eg. logo), mark, words or other elements that specifically identifies the source of such product/service.
Trademarks can be national, EU or international and are useful in gaming mostly to protect company names/logos, game names/logos, and in some cases certain in-game features and looks. Trademarks require registration, although there also is the concept of unregistered trademark rights arising through use.
Patents
Unfortunately patents are not really relevant in the EU as software is not patentable as such. For an invention to be patentable, the invention must consist in a novel product or process.
The source code itself is not patentable at an EU level, unlike in the US. Still, it is something to look out for if an operator is seeking to be licensed and operate in countries such as the US. It is important to look out for what is already patented in such countries before even applying for a gaming licence, as it is surprising how third parties would have already patented certain algorithms or other elements normally present in game engines.
Trade secrets – very relevant on matters relating to technical specification and code
Trade secrets require protection due to their commercial value and secrecy of the information (and in EU countries due to the lack of patent law coverage for software inventions). Trade secrets provide protection against unlawful acquisition/disclosure from persons who were exposed to the secret, through various measures including contractual arrangements. Thus, trade secrets should be protected in employment contracts, outsourcing and subcontracting contracts and other commercial agreements. Other steps to protect the secrecy of information should also be considered.
Key take home points
- Online gaming is inherently cross border, while copyright has a national dimension, thus it is key to see to this matter.
- IP litigation is always dealt with by national courts, subject to national laws on infringement.
- Clearance searches can be costly and sometimes inaccurate, yet highly suggested especially before new game releases.
- A right to use any IP (a “licence”) requires an agreement in writing for validity.
- Some jurisdictions require certain prior IP registration as part of the gaming licensing process.
- Domain name protection is usually achieved through trademark registrations.
Having a portfolio of registered trademarks, in conjunction with copyright and trade secrecy, is probably the strongest shield online gaming companies have in the EU, in terms of protecting their IP, in view of the void in EU Patent law for software inventions. On the other hand, it is recommended that European gaming companies looking to access markets such as the US should dedicate attention and resources to patent matters before even applying for a licence.
Reuben Portanier is a partner at the regulatory and gaming advisory firm, Afilexion Alliance, which forms part of the GTG Advocates group. He is an IMGL member and is a former CEO of the Malta Gaming Authority and former board trustee on the International Association of Gaming Regulators. Portanier holds an honours degree in Economics and a Masters in financial services. For this article Portanier was supported by Dr Terence Cassar, head of IP at GTG Advocates.