This is one of presentations from the 2009-2010 Game Industry Start Up Workshop Series. The first workshop topic was "How to Form and Protect Your Business" and it took place on 9/15/09.

1. Game Industry Start Up 101
Workshop #1: Legal
IP Protection
www.GameStartUp101.com
Twitter@WINetwork
Workshop Sponsored by:

2. INTELLECTUAL PROPERTY BASICS
FOR
GAME INDUSTRY START-UPS
William Rava
Perkins Coie
wrava@perkinscoie.com
206.359.6338
Twitter @willrava
16934008

3. AGENDA
 Why IP?
 What is IP?
 How do I get IP?

4. WHY IP?
 Prevent competitors from adopting
your technology without your
permission
 Facilitate business deals
 Get access to another company's
technology

5. WHY IP?
 Increase company valuation at
financing or acquisition (and may
be the only valuable asset at
dissolution)
 License, for additional revenue
streams
 Credibility and marketability to
your company

6. WHAT IS IP?
 User interface
 Game play
 Plot, characters
 Music
 Name
 Code
 Packaging
 A-V aspects of game
 And more . . .

7. WHAT IS IP?
Trademarks (= source identifiers)
Patents (= new ideas that have utility)
Copyrights (= original works of authorship)
Trade Secrets (= valuable secret information)
Other (= web, domains, contracts, etc.)

8. HOW?
TRADEMARKS:
 Consider pre-clearing a mark before use
 Use of a mark in commerce establishes
certain rights in the mark in the
geography of use
 Trademark applications
 Cheaper than patents by an order of
magnitude
 Approx $1.5k for each trademark
 Establish policies for trademark use and
police your marks on the web

9. HOW?
TRADEMARKS:
Frosty Treats v. Sony, 426 F.3d 1001 (8th Cir. 2005)

10. HOW?
TRADEMARKS:
Romantics v. Activision Pub., Inc., 574 F. Supp. 2d 758
(E.D. Mich. 2008)

11. HOW?
PATENTS:
 You have one year after a public
disclosure, use, or sale in which to file
a patent application in the US (foreign
rights may be lost, however)
 Consider provisional patent
application
 Often less than $2k
 Must be converted to regular
application within 1 year

12. HOW?
COPYRIGHTS:
 Mark all works with symbol ©, year of
first publication and legal owner
 Archive all versions of works
 Consider registration of key works
($35 per application; check out
www.copyright.gov)

13. Microstar v. Formgen, Inc., 942 F. Supp. 1312 (S.D.
Cal. 1996)
HOW?
COPYRIGHTS:

14. HOW?
COPYRIGHTS:
Lewis Galoob Toys, Inc. v. Nintendo of America Inc.,
964 F.2d 965 (9th Cir. 1992)

15. HOW?
TRADE SECRETS:
 Control access and disclosure of
financial data, lists, formulas
 Consider NDAs, confidentiality
agreements and other contracts to
protect valuable information

16. HOW?
OTHER:
 Domains: track renewal dates;
register defensively
 Contracts: consider IP impact in all
contracts
 Employees: assignments of IP and
non-compete agreements
 Web: use legal notices and
appropriate EULAs/TOUs

17. HOW?
EULA:
MDY Indus., LLC v. Blizzard Entertainment, Inc., 2009
WL 223631 (D. Ariz. Jan 28, 2009)
Hernandez v. Internet Gaming Entertainment, Case
No. 07-21403-Civ-Cohn/Snow (S.D. Fla.)

18. HOW?
FOREIGN PROTECTION:
 Patent and trademark rights only
extend to the country in which they
are issued or registered
 Foreign protection is expensive
 Pick your foreign IP markets
carefully

19. SUGGESTIONS
 Strategize with your IP attorney now!
 Accurately identify and strategically
manage your IP assets.
 Even if you don't intend to pursue
formal protection now, put a plan in
place for the future.
 Make decisions today that minimize
expense but still preserve the right to
pursue broad IP protection in the
future.

20. INTELLECTUAL PROPERTY BASICS
FOR
GAME INDUSTRY START-UPS
William Rava
Perkins Coie
wrava@perkinscoie.com
206.359.6338
Twitter @willrava
16934008