This document discusses intellectual property and game development. It summarizes that game developers need to secure ownership of all intellectual property that goes into a game, including code, text, art, music, ideas and gameplay, to have the legal right to develop and sell the game. It also advises registering trademarks to protect the game's name. Failure to properly secure ownership of intellectual property puts the developer at risk of legal issues and inability to sell or profit from the game.

1. Who owns your
game?
Intellectual property
and
game development
Presented by:
Michael Boughey
Special Counsel

2. Who owns your game?
… and why does it matter?

3. iPhone Developer Program Licence
Agreement
• You agree that your app does not and will not violate,
misappropriate or infringe any third party copyrights,
trademarks, rights of privacy and publicity, trade secrets,
patents, or other proprietary or legal rights
• You indemnify Apple against infringement of 3rd party IP
• You agree that Apple can stop downloads if it ‘reasonably
believes’ the app infringes IP

4. If you don’t own all of your game …
• You don’t have the right to sell it
• You may be sued if you try to sell it
• You can’t stop anyone else from using, selling or copying it
• You won’t have anything to show potential investors
• If you get a deal then someone claims you don’t own the
game – and you can’t prove you do – your publisher or digital
distributor may drop you
• You may be held to ransom by someone who owns the
tiniest part of it

5. What’s in the box?

6. What’s in the box?
• Code

7. What’s in the box?
• Code
• Text

8. What’s in the box?
• Code
• Text
• Art

9. What’s in the box?
• Code
• Text
• Art
• Music and sounds

10. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue

11. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue

12. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue
• Ideas

13. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue
• Ideas
• Gameplay

14. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue
• Ideas
• Gameplay
• Name and logos

15. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue
• Ideas
• Gameplay
• Name and logos

16. What’s in the box?
• Code
• Text
• Art
• Music and sounds
• Dialogue
• Ideas
• Gameplay
• Name and logos
• Credits

17. Code
• Protected by copyright as a ‘literary work’
• Who owns it?
• Creator is owner:
– even if someone else came up with the ideas
– or hired them to write it
• UNLESS creator:
– is an employee; or
– has signed a contract assigning copyright

18. What is copyright?
• Does not protect ideas – protects the expression of ideas
• Must be something put down in a substantial form – eg
written on paper or stored in computer memory
• Must be original – in expression, not ideas
• Can be transferred, sold or licensed
• No registration necessary

19. Infringement of copyright
• Owner has exclusive rights including:
– copying or reproducing;
– publishing;
– authorising others to do all of these things.
• Copyright infringement = doing these things without
permission
• Must involve ‘all or a substantial part’ of the copyright work

20. Copyright also covers … more or less:
• Text – dialogue, subtitles, in-game documents
• Art
• Music and sounds
– musical work, lyrics, performers’ rights, sound recording
– EMI vs Def Jam Rapstar
• Dialogue
– script, sound recording, performers’ rights
• Motion
– cinematograph works, performers’ rights

21. ‘I’ve got this great idea for a game …’
• No protection for ideas unless they’re kept confidential
• Keep ideas confidential by:
– not telling anyone
– ensuring anyone you tell is subject to a duty of confidentiality
• Non-disclosure agreements
• May be implied duties of confidentiality on employers and
employees, directors, partners etc – but still confirm in writing
• General law: If you know information is confidential, you
must keep it confidential – so tell people it’s confidential

22. ‘I’ve got this great idea for a game …’
• No protection for ideas unless they’re kept confidential
• Keep ideas confidential by:
– not telling anyone
– ensuring anyone you tell is subject to a duty of confidentiality
• Non-disclosure agreements
• May be implied duties of confidentiality on employers and
employees, directors, partners etc – but still confirm in writing
• General law: If you know information is confidential, you
must keep it confidential – so tell people it’s confidential

23. NCSoft (Lineage) vs Bluehole (TERA – The
Exiled Realm of Arborea)
• Bluehole = ex NCSoft employees
‘Their business plan was simple and audacious: creating a
competing product using the very work they had done while at
NCsoft, launch it themselves to great fanfare and acclaim, and in the
process, deal a crippling blow to their former employer.’
• NCSoft claimed novel races, combat system, political system
• Sought fines and prison sentences in South Korea,
injunctions in the US

24. Gameplay
• Game cloning – copying the ‘look and feel’
• Almost impossible to protect game mechanics, user
interfaces
• Copyright won’t work unless the code or art or music or text
is substantially the same
• Law of ‘passing off’ is not enough – need to prove people are
actually misled

25. Game vs Game – 1994
• Capcom (Street Fighter II) vs Data East (Fighter History)

26. Court case finally protects gameplay?
Tetris vs Xio – 2012 US case
"Xio is correct that one cannot protect some functional aspect of a work
by copyright as one would with a patent. But this principle does not
mean, and cannot mean, that any and all expression related to a game
rule or game function is unprotectible. Such an exception to copyright
would likely swallow any protection one could possibly have; almost all
expressive elements of a game are related in some way to the rules and
functions of game play. Tetris Holding is as entitled to copyright
protection for the way in which it chooses to express game rules or
game play as one would be to the way in which one chooses to express
an idea"

27. The name of the game
• Names are too short to be protected by copyright, even if
made up
• Common law trade marks/passing off may protect
• Essentials:
1: Make sure no-one else is using it!
2: Make sure it’s distinctive
3: Register it where your market is – USA?
4: Register it in the right classes of products
5: Don’t wait too long

28. Registering a trade mark
Search and register online:
• In Australia: www.ipaustralia.gov.au
• In the USA: http://www.uspto.gov/trademarks/
Note that once you apply, you may receive fraudulent invoices
from eg Patent & Trademark Organisation LLC – take care.

29. Most important long term IP?
A trade mark:
•may take the least effort to create
•is easiest to protect
•is not platform-specific
•is something people may recognise without even playing the
game
•can be used in sequels, spin-offs and merchandising
•can be sold

30. Credits
• Who gets their names at the end of the game?
• Moral rights:
–

31. How to secure ownership?
• Get ownership rights assigned in writing
• Define IP broadly; cover confidential information and get
specific moral rights consents
• Assignments and consents in writing from everyone who
contributes – contractors, employees, shareholders and
directors, writers, composers, musicians, motion capture
actors, voice talent
• Include licence of background IP – things that people bring to
the project
• Include warranty that it’s all their own work

32. Who should own the IP?
• It depends …
• Centralise it as much as possible
• Basic ideas:
– If there’s a corporation, assign everything to the corporation
– If there’s a partnership, assign everything to the partnership
– If it’s a looser arrangement, look at cross-licensing structures
• Think about what happens to the IP if the business breaks up

33. If you have these things in place, you’ll …
• Actually have something to sell
• Be able to show investors you’re serious
• Have at least some ammunition against clones
• Be able to bring IP forward into your next game
• Be able to deal with that bloke who had some ideas at the
start, wandered off, then came back with his hand out when
things took off

34. Michael Boughey
Special Counsel
Hynes Lawyers
michael.boughey@hyneslawyers.com.au
General disclaimer
This presentation is for general information only and should not be relied upon as legal advice.
You may not alter or edit this presentation it in any way, nor may you claim it as your own work or charge for it.