IP

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Conclusion
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Games Finance Summit - 5 April 2016
IP 101
Paul Gardner

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Why IP?
• IP is a key component in any games finance transaction
• Poor housekeeping may delay or lose a deal
• You should be doing this stuff anyway

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Overview
• A 2 minute introduction to IP
• A 7 step IP strategy
• IP in games finance transactions

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A 2 minute introduction to IP
• Key IP rights
‒Copyright (in software, artistic works, music)
‒Trade marks (in brands and logos)
‒Domain names
‒Patents (for novel and inventive steps)
‒[Confidential information]
• Copyright arises automatically and (in the UK) is not capable of registration
• Copyright and unregistered trade marks requires evidence of ownership

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A 7 step IP strategy
• Development of games
• Arrangements with business partners
• Protection against third party infringement

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Development of games
Step 1. Assignments from all contributors
• Founders
‒Assignment to the company (particularly copyright and domain names)
• Employees
‒IP created "in the course of their duties" owned by employer
‒Usual to reflect and enhance position in employment contracts
‒Include confidentiality provisions
‒Adopt a personal projects policy?
‒Restrictive covenants?

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Development of games
Step 1. Assignments from all contributors
• Contractors
‒no concept of "work for hire" in the UK
‒beware of conditional assignments

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Development of games
Step 2. Choose names carefully
• Avoid descriptive names
• Make searches to check availability
‒Relevant app stores
‒Google searches
‒Simple trade mark search tools e.g. https://www.tmdn.org/tmview/welcome

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Arrangements with business partners
Step 3. Retain core IP
• Tools and technology
‒beware "as at the date of this Agreement"
‒may need an assignment of any modifications and enhancements by
publisher

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Arrangements with business partners
Step 4. Watch out for contractual restrictions
• Scope of licences / assignment
‒careful definition of rights licenced and excluded (consider platforms,
operating systems, delivery technologies)
‒distinguish between exclusive and non-exclusive rights
• Reversion of rights
‒on termination (check survival clause)
‒non-use (and try to limit length of term)
• Non-compete provisions
• ROFRs

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Arrangements with business partners
Step 5. Protect confidential information
• Use an NDA where appropriate
‒sensitive information
‒where a patent application is to be made
• Check terms of your NDA, e.g.
‒definition of "confidential information" (which can sometimes be too narrow)
‒should limit use to specified purposes
‒should provide for the return or destruction of confidential information

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Protection against third party infringement
Step 6. Apply for registrations where appropriate
• Copyright
‒US and China
• Trade marks
‒Applications in key jurisdictions
• Patents

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Protection against third party infringement
Step 7. Protect against cloning
• Build cloning protection into the design
• Develop a process for dealing with clones (typically low cost actions for the
vast majority of clones and focus resources on clones that pose a higher level
of concern)

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IP in games finance transactions
• Poor housekeeping may delay or lose a deal
• IP will be assigned or subject to a charge
• Some IP may be used in other projects (and therefore should not be subject
to that assignment or charge)
• Need ability to get back / have charge removed
• Need ability to use the IP during the intervening period

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Speaker
Paul Gardner
Partner
Commercial
T +44 20 7105 7066
M +44 7768 711810
Paul.gardner@osborneclarke.com
[insert photo here]
Height = 6cm
Width = 6cm

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Conclusion
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Games Finance Summit - 5 April 2016
IP 101
Paul Gardner