Celia Lerman, Intellectual Property Lawyer in California & Argentina.

Intellectual Property in the Gaming Industry

I am happy because lately we’ve been having quite a few consultations from clients in the gaming industry. Some of the games are software based, ingenious labyrinths of online screens. Others rise from the Internet of Things, combining classic games with new technologies, integrating physical pieces with software in smooth interactions and creating exciting experiences for users.

Here are some common situations I’ve noticed in advising new gaming companies, both in protecting their IP and also in making sure they don’t infringe others’ IP:

(1) IP Protection: The client has developed a creative game and is about to launch the game. Sometimes the software is already built. Other times the main sketch is defined and a kickstarter campaign is launched but the prototypes are still being built. In most cases, in one way or another, the idea has been revealed and shared with others. The client wants to know — Is there anything protectable out there? How can we best protect their creations?

Art design: screens, user interfaces (UIs), characters, look & feel —> Copyright: Copyright is the cheapest way to obtain some protection over the game. The artistic features of the game (it’s storyline, its characters, its art design, images and screens) and the software code can all be protected with simple copyright registrations that are obtained quickly and inexpensively.

The plus: a single copyright registration gives international protection in most countries of the world, so it is especially useful for games with international projection. The minus: technical features may not be protected by copyright – one may need to complement with design or patent rights.

Technical aspects –> Patents: Not everything is patentable in the gaming world. As a matter of fact: most things are not patentable in the gaming world. The trick is to find the ways in which the game not just provides “more fun” or “better fun”, but the way in which its improvements could enjoyed by what I call a most “boring person”. With this “boring person” test, I invite clients to think about it in a way in which the game would be used by someone who does not engage in playing the game. If they simply use the game without playing – could they still get some technological benefit from the game? Does the game improve the state of the art in any area of technology? Is there any potential to use the technology beyond this specific game?

This will help determine if there is something patentable (improving the state of the art) and if that something if worth patenting (if it will ever have economic value for potential licensees, competitors, or future purchasers of the company). Patents are expensive and time-consuming, and thus patenting should be a well-thought decision.

Andry Bird(2) IP Cleareance: This is crucial for gaming companies, however, it can be hard and expensive to do because there are many fronts to consider.

Copyright: This is generally the most obvious need for clearance noticed by game makers. If the game uses the characters or the storyline from a movie or a book, one must ensure that the rights are cleared. Obtaining permission not as hard as it seems: if the game is of good quality, the owners of the original IP are usually happy to license its use for games on reasonable conditions.

Trademarks: When choosing a name, make sure it has not been previously registered or used by another company. Unfortunately, it’s not enough to check just if the domain is available – the best way to find out is though searching the national trademark office + also googling for local uses. Choosing the right fresh name from the start helps avoiding a lot of headaches later.

Patents and designs: This can get trickier because a good search is best done with the help of an IP agent, and its frequently too burdensome to perform upfront. If the game was inspired by other companies’ software/hardware, then it does make a lot of sense to see what is protected in the area. Many times one only learns about patent rights from the rights holder (or a troll) once the game is developed and a cease and desist letter is on the table. To mitigate this, keep in mind that patent clearance goes hand in hand with a company’s own patenting strategy: protect on your end to have patents to cross-license or negotiate on.

Gaming companies and users are early adopters of new technologies, and the fun part as counsel is working with the legal challenges of future gadgets. IP can give strong legal building blocks to new amusing experiences.


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Hat Tip 🎩 to Morgan Friedman & The Marketing Scientist