Protect Your Rights: Managing Intellectual Property Risks
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I presented as part of a panel at PAX Dev 2015 that discussed intellectual property risks for video game developers and producers, and how to manage those risks. My focus was on the availability of insurance coverage to protect against IP infringement claims, and how to maximize your insurance once you have it.
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Protect Your Rights: Managing Intellectual Property Risks
- 1. PROTECT YOUR RIGHTS: MANAGING INTELLECTUAL PROPERTY RISKS Scott M. Kelly Sara Owens Erin L. Webb
- 2. SPEAKERS Scott M. Kelly Sara Owens Erin L. Webb Scott is a patent attorney with Banner & Witcoff, LTD and a former patent examiner with a background in computer science. Scott helps large and small game studios protect their intellectual property by applying for patents, registering copyrights, and assessing risks presented by asserted IP rights. He is a contributing author to PatentArcade.com and the ABA Legal Guide to Video Game Development, 2nd Edition. skelly@bannerwitcoff.com (202) 824-3158 Sara is the leader and champion of Game Guard, a first of its kind risk management and insurance program specifically tailored to the unique needs and risks of the video game industry, and workshops across the country. Thanks to Sara’s pioneering efforts in risk management and insurance services, she and her team at HUB International are proud to be the official insurance broker for the International Game Developers Association. Sara.owens@hubinternational.com 818-257-7465 Erin is a Senior Managing Associate at Dickstein Shapiro LLP. She helps companies, including those in the video game industry, recover funds under their insurance policies. Erin has been named as a “Rising Star” for Insurance Coverage in Washington, DC by SuperLawyers since 2013, and has written, been quoted, and presented on cutting-edge insurance coverage issues, such as cybersecurity and intellectual property. webbe@dicksteinshapiro.com (202) 420-2607 @erinlwebb
- 3. DISCLAIMER The materials in this presentation are provided for informational purposes only and do not constitute legal advice. These materials are intended, but not promised or guaranteed, to be current, complete, or up-to-date and should in no way be taken as an indication of future results. Our presentation of this information is not intended to create, and the receipt does not constitute, an attorney-client relationship. The content herein is offered only for general informational and educational purposes. It is not offered as and does not constitute legal advice or legal opinions. You should not act or rely on any information contained in this presentation without first seeking the advice of an attorney.
- 4. INTELLECTUAL PROPERTY RISKS FOR VIDEO GAME COMPANIES Scott M. Kelly Banner & Witcoff, LTD
- 5. IP RISKS FOR VIDEO GAME COMPANIES Three Questions: • What types of IP apply to video games, and what does each cover? • How can I protect my game from copying and imitations? • What IP rights may others assert against me? What can I do?
- 6. INTELLECTUAL PROPERTY OVERVIEW • Copyrights – Protect creative expression • Patents – Protect new, non-obvious inventions and some designs • Trademarks – Protect your BRAND • Trade Dress – Protects look and feel associated with source if distinctive and nonfunctional • Trade Secrets – Protect ideas, methods, formulations if kept confidential • Others (domain names, right of publicity, etc.)
- 7. COPYRIGHT BASICS Copyright protects creative works of original authorship that are fixed in a tangible form. • A copyright grants the exclusive rights to reproduce, distribute, perform, display, and create derivative works • No registration required (but has advantages), though necessary for enforcement
- 8. COPYRIGHTS – EXAMPLES Tetris Holding, LLC v. Xio Interactive, Inc., 2012 WL 1949851 (D.N.J.): • “Abstract idea” of the game of Tetris not protected by copyright • Expressive choices in implementing the game are protected by copyright • Size of playing field • Choices in graphical effects
- 9. COPYRIGHTS – EXAMPLES Spry Fox, LLC v. LOLApps, Inc., et al., No. 12-147RAJ (W.D.Wash. Sept. 2012) Triple Town (original) Yeti Town (alleged infringer)
- 10. COPYRIGHTS – EXAMPLES • Spry Fox registered copyright in their source code and screen shots.
- 11. COPYRIGHT REGISTRATION • Must provide details about work and creation date • Must provide a deposit of the copyrighted work • Can have attorney prepare and file • Or use Copyright Office’s eCO system yourself – www.copyright.gov • Double check ownership issues – works made for hire
- 12. PATENT BASICS Patents protect inventions (new, non-obvious ideas, devices, methods, and some designs). • Patents provide the right to exclude others from making, using, selling, or importing the claimed invention. • Patents are granted by the US Patent and Trademark Office after substantive examination. • Utility Patents protect functional inventions, both animate and inanimate • Design Patents protect new, original, and ornamental designs
- 13. UTILITY PATENTS – WHY? Incredible Tech. v. Virtual Tech., 400 F.3d 1007 (7th Cir. 2005) • IT makes Golden Tee Golf • VT made Tiger Woods PGA Tour Golf • VT purposefully copied user interface mechanics of Golden Tee Golf, in order to reduce learning curve for new players. • Court said copyright protection not enough • “The exclusion of functional features from copyright protection grows out of the tension between copyright and patent laws. Functional features are generally within the domain of the patent laws.”
- 14. UTILITY PATENTS Patents represent a “quid pro quo” with the public: tell us how to use your invention and we’ll let you have a patent for up to 20 years. Requirements • Subject Matter eligibility (35 USC 101) • Novelty (35 USC 102) and Non-Obviousness (35 USC 103) • Written description and definiteness (35 USC 112)
- 15. UTILITY PATENT – WHAT IS IT? • Specification - • An instruction manual of how to make and use the invention. • Drawings - • Illustrate the features of the invention • Claims - • Define the scope of the legal right sought to be patented • The claims are the most important part of the patent! • Generally not recommended to “patent it yourself” • Patent law is complex and filled with traps for the unwary
- 16. UTILITY PATENTS – WHAT? • Technology – YES • e.g., AI, graphics, communications • User Interface - YES • e.g., input mechanisms, controls • Hardware - YES • e.g., console, game controller, etc. • Methods, goals, and objectives – Perhaps (see Alice v CLS Bank) • e.g., gameplay, scoring • Support programs – YES (but see McRO) • e.g., level editors, motion capture, animation software
- 17. VIDEO GAME PATENTS – EXAMPLES
- 18. VIDEO GAME PATENTS – EXAMPLES
- 19. DESIGN PATENTS Design Patents protect new, original, and ornamental designs for manufactured goods • Must be new and non-obvious • Must be ornamental (not primarily functional or dictated by function) • Single claim, scope of protection defined by drawings
- 20. DESIGN PATENTS User interfaces on devices can be protected with design patents • User Interface Example – D699,259 (Sony)
- 21. TRADEMARK BASICS Trademarks protect your brand and identify the origin of goods and services. • Main concern in trademarks is likelihood of confusion • Trademark Strength = Distinctiveness • Trademark registration not necessary but advisable
- 22. TRADEMARKS - EXAMPLE E.S.S. Entertainment 2000 v. Rock Star Videos [Rockstar Games], Case No. CV 05-02966 (C.D. Cal. 2006)
- 23. PROTECTING YOUR GAME • Copyright your game (source code or screen captures) • Major releases of the whole game • Artwork • New content • Content likely to be copied by others • Trademark your brand • Company name • Name of your game • Prominent characters or emblems
- 24. PROTECTING YOUR GAME • Apply for utility patents on novel and non-obvious systems and gameplay • With a focus on technological details • Interaction with the user • Technical hurdles overcome by novel approaches • Apply for design patents on novel ornamental designs • User interfaces • Vehicles, weapons, etc.
- 25. DEALING WITH LEGAL ASSERTIONS What IP rights may others assert against me? What can I do?
- 26. MEDIAN COSTS OF ENFORCEMENT* Disputed Amt. <$1M $1M-$10M $10M-$25M >$25M Trademark $300K $800K $1.0M $1.5M Copyright $300K $563K $1.0M $1.625M Patent $700K $2.0M $3.325M $5.5M Trade Sec. $425K $800K $1.4M $2.95M Through end of Discovery: Inclusive, all costs: *Source: AIPLA Report of the Economic Survey 2013 Disputed Amt. <$1M $1M-$10M $10M-$25M >$25M Trademark $150K $350K $500K $750K Copyright $150K $350K $600K $775K Patent $350K $1.0M $2.0M $3.0M Trade Sec. $250K $500K $850K $1.9M
- 27. LEGAL ASSERTIONS – COPYRIGHTS Some things that can get you in trouble with copyrights: • Using preexisting or stock visual material such as artwork, models, sprites, effects, etc. • Using music or sound effects • Copying expressive elements of gameplay • Digital Millennium Copyright Act (DMCA) claims • Without permission of the copyright holder
- 28. LEGAL ASSERTIONS – COPYRIGHTS • Copyright generally protects a level of abstraction above the actual expression, and a copyist will be liable for making anything “substantially similar” to the copyrighted work. • Even if you created something new, if you did so using the copyright holder’s work as “inspiration” then you’re not necessarily in the clear. • Defenses • No copyright exists in copied material • Fair Use or Parody • Independent creation (no copying-in-fact) • Scènes à faire, De minimus copying, Merger • Public Domain • Statute of Limitations
- 29. LEGAL ASSERTIONS – PATENTS Some things that can get you in trouble with patents: • Your game implements a patented gameplay method • Your game copies part of a patented user interface • Your game/company makes use of patented distribution techniques • For example, Lodsys – iOS in-app purchases
- 30. LEGAL ASSERTIONS – PATENTS • The patentee must show that your product includes every feature recited in the claim (or substantial equivalents thereof) • One primary hurdle in trial is determining what exactly the language of the claims means • Defenses • Noninfringement – my product is missing at least one step of the asserted claim • Invalidity – the patent is invalid and should never have been granted • Others
- 31. LEGAL ASSERTIONS – TRADEMARKS Some things that can get you in trouble with trademarks: • Use of another’s trademark in your game • Your company’s name is too similar to another company • Main issue is likelihood of confusion • Defenses – no trademark, no confusion, fair use, et al • An ounce of prevention is worth a pound of cure
- 32. DEALING WITH LEGAL ASSERTIONS Initial Steps – REACT • Review the letter or complaint • Assess your case • Consider your options • Take action
- 33. DEALING WITH LEGAL ASSERTIONS • Attack the IP Right • Attack the infringement argument • Pass the buck – Indemnification and Insurance
- 34. DEALING WITH LEGAL ASSERTIONS The main question is always going to be what the bottom line is for your company. Can you afford to fight? Can you afford not to fight?
- 35. INSURANCE AVAILABLE TO PROTECT AGAINST INTELLECTUAL PROPERTY CLAIMS Sara Owens HUB International
- 36. INSURANCE AVAILABLE TO PROTECT AGAINST IP CLAIMS • Risk Management • Contracts, Best Practices, Polocies • Having the RIGHT Insurance Policy • Errors and Omissions Insurance • What’s covered? • General Liability • Patent Insurance
- 37. INSURANCE COVERAGE ISSUES RELATING TO INTELLECTUAL PROPERTY CLAIMS Erin L. Webb Dickstein Shapiro LLP
- 39. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Making a Claim – How Do I Know If I Have a Claim? ¯_(ツ)_/¯
- 40. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Making a Claim – Give Notice Right Away • Example: General Insurance Company of America v. Marvel V.
- 41. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Making a Claim – Include All the Details
- 42. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Making a Claim – Get Your Best Defense Team On Board • Panel Counsel and Approval Issues • When Does an Insurer Have to Hire Independent Counsel To Defend You?
- 43. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • CGL Coverage and the Narrow “Advertising” Space CGL Coverage B Advertising Infringement
- 44. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Common Insurance Policy Exclusions Relevant to the Industry • To ISP or not to ISP? The DMCA v. Your Insurance Policy
- 45. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Common Insurance Policy Exclusions Relevant to the Industry • The Prior Publication Exclusion: Which Policy Covers Me? • Example: Street Surfing v. Great American
- 46. INSURANCE COVERAGE ISSUES RELATING TO IP CLAIMS • Non-CGL Policies: Other Coverage Issues • Media Liability – Errors & Omissions – Specialty • Directors & Officers • IP Insurance
- 47. OTHER RESOURCES
- 48. THE ABA LEGAL GUIDE TO VIDEO GAME DEVELOPMENT, 2ND EDITION Ross Dannenberg, ed. 2nd Edition Forthcoming, Fall 2015
- 50. SPEAKERS Scott M. Kelly Sara Owens Erin L. Webb Scott is a patent attorney with Banner & Witcoff, LTD and a former patent examiner with a background in computer science. Scott helps large and small game studios protect their intellectual property by applying for patents, registering copyrights, and assessing risks presented by asserted IP rights. He is a contributing author to PatentArcade.com and the ABA Legal Guide to Video Game Development, 2nd Edition. skelly@bannerwitcoff.com (202) 824-3158 Sara is a Vice President at Hub International, a division of GNW Evergreen Insurance Services. She is a broker with extensive experience placing insurance for companies in the entertainment software industry, and designing risk management strategies for the game industry. Sara is the creator of Game Guard, a proprietary insurance and risk management solution for video game publishers and developers. sara@gnw-eg.com (818) 257-7465. Erin is a Senior Managing Associate at Dickstein Shapiro LLP. She helps companies, including those in the video game industry, recover funds under their insurance policies. Erin has been named as a “Rising Star” for Insurance Coverage in Washington, DC by SuperLawyers since 2013, and has written, been quoted, and presented on cutting-edge insurance coverage issues, such as cybersecurity and intellectual property. webbe@dicksteinshapiro.com (202) 420-2607 @erinlwebb
Editor's Notes
- Adapted from http://www.dicksteinshapiro.com/disclaimer
- Idea/Expression Dichotomy Copyrightable works include: Literary works, Musical works, Dramatic works, Pantomime and choreographic works, Pictorial graphics and sculptural works, Motion pictures and other audiovisual works, Sound recordings, Architectural works Copyright protection does not extend to any: Idea, Procedure, Process, System, Method of Operation, Concept, Principle, Discovery Copyright does NOT protect: Works that have not been fixed in tangible form of expression Titles, names, short phrases and slogan; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices Works consisting entirely of information that is common property and containing no original authorship (e.g. standard calendars) Computer Software Copyright protection is available for computer programs and databases. Protection also extends to graphics and text produced by programs. Copyright protection does not extend to the idea behind the program or the method of running or interacting with the program. Notes Registration not required; but necessary for enforcement Statutory Damages Attorney’s Fees Duration: Life of author + 70 years, or Shorter of 95 years from pub. or 120 from creation, if anon./pseud./WFH The Author is presumed the owner of copyright (typically not the party paying for the work), unless a work made for hire.
- “[T]he idea underlying Triple Town is that of a hierarchical matching game, one in which players create objects that are higher in the hierarchy by matching three objects that are lower in the hierarchy. Frustrating player’s efforts are antagonist objects; aiding the player are objects that destroy unwanted or ill-placed objects.” “A video game, much like a screenplay expressed in a film, also has elements of plot, theme, dialogue, mood, setting, pace and character. Spry Fox took the idea underlying Triple Town and expressed it with its own characters, its own setting, and more. These objective elements of expression are within the scope of Spry Fox’s copyright.” The situation involves Spry Fox, makers of the popular match-three/village-building game Triple Town. They brought a case against 6waves Lolapps, which cranked out the extremely similar Yeti Town after backing out of negotiations to make an iOS Triple Town port. The games are practically identical from a basic gameplay and progression perspective, right down to the prices of analogous items in the in-game stores and similar language in explanatory dialogue boxes. Yeti Town's main innovation seems to be small cosmetic differences—the enemy characters are changed from bears to yetis, the graphics are rendered in 3D polygons rather than 2D sprites, etc. http://arstechnica.com/gaming/2012/10/legal-landscape-gets-tougher-for-blatant-game-clones/
- Low costs, $35-$55 government filing fee Processing takes anywhere from 4-18 months Ownership Issues Employee creating work within the scope of employment is a “work made for hire” and the employer is considered the author. Ensure outside parties have work made for hire agreement.
- Other reasons Protect Against Infringers Exclude others Generate royalty income by licensing Defensive Purposes Prevent another from procuring a patent on same invention Deter others from bringing suit in view of ability to counterclaim Obtain Rights of Others by Cross Licensing Recognition as Leader in Developing New Technology Remedies Damages (Reasonable Royalty, Lost Profits) Increased damages for “Willful Infringement” Injunctive relief
- Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014) McRO Inc. v. Bandai Namco Games America Inc. et al., case no. 15-1080 (Fed. Cir. 2015) Sued many of the major video game developers/publishers McRO’s patent dealt with rules for automating the lip syncing animations associated with speech. District court found the claims directed to an abstract idea because rules were recited generally Appealed to Fed. Cir. (decision pending) McRO argues that the lower court's decision went far beyond other recent Federal Circuit decisions that used Alice to invalidate patents that claim on "mere business methods implemented using only generic computer functions." McRO further states that the lower court's ruling "threatens all software patents.” The entire industry is (or at least should be) watching this case.
- USPTO argued claims directed to abstract idea of natural movement DDR Holdings case – feature is tied to a computer specific problem
- Design Patents protect new, original, and ornamental designs for manufactured goods Protects the ornamental appearance of articles of manufacture Right to exclude others for 14/15 years from grant Must be new and non-obvious Must be ornamental (not primarily functional or dictated by function) Scope of protection defined by drawings Dashed lines are disclaimed
- Example Types of Trademarks: Single or Multiple Words (CARBIMET, TRIVIAL PURSUIT ) Letters or Numbers (OTB, PICK-6) Slogans (“Have It Your Way”) Designs: Rich Uncle Pennybags Colors: Owens Corning Product Shape (iPhone) Container Shape (Coke Bottle) Building Appearance (McDonald’s Golden Arches) Sounds (NBC Chimes) Fragrances if unrelated to function of goods (e.g. scent added to embroidery thread) Can be perpetual as long as its in use
- Both San Andreas and PlayPen offer a form of low-brow entertainment; besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the PlayPen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage. Nothing indicates that the buying public would reasonable have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club. A player can enter the virtual strip club in Los Santos, but ESS has provided no evidence that the setting is anything but generic. It also seems far-fetched that someone playing San Andreas would think ESS had provided whatever expertise, support, or unique strip-club knowledge it possesses to the production of the Game. A reasonable consumer would not think a company that owns one strip club in East Los Angeles, which is not well known to the public at large, also produces a technologically sophisticated video game like San Andreas. But fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher's shop. In other words, the chance to attend a virtual strip club is unambiguously not the main selling point of the Game.
- Copyright Do I need to register? Not required to protect copyright Required in order to file lawsuit for infringement Should register early to achieve rights to statutory damages and attorney’s fees Should I register? What to cover
- Patents Consider the following when deciding what to pursue in a patent: What aspects and combinations of aspects are: 1) novel and 2) arguably non-obvious Analyze all aspects of products and processes What features would an infringer have to copy for you to say “they stole my idea”? Other considerations and strategies Single infringer focus Alice – Statutory subject matter Design Patents Typically the best approach to protect the look and feel of the visual experience Strategy is a mix of science and art Appreciate the uniqueness in the user experiences provided Attempt to predict branding and usability effects Other factors
- Copyrights – use of stock or preexisting material, music, gameplay rules Patents – gameplay patents, technology potentially unrelated to game itself Trademarks and Trade Dress – names, likenesses, parody issues
- It’s important to determine exactly what it is that the copyright holder is upset about. Does the copyright holder believe that you copied its entire game? If so, you have a long road ahead. Or is the copyright holder upset because you used a single piece of artwork, a photo, or a short sound clip in your game? If you received a letter in the mail, it might even just be a Digital Millennium Copyright Act (DMCA) notice requesting that you remove content from your game that a user might have generated or uploaded without your direct knowledge. If the copyrighted work can easily be removed or swapped out of your game, breathe a sigh of relief because the issue is more likely a bump in the road rather than an insurmountable mountain of legal headache.
- Fair Use is an affirmative defense to infringement (17 U.S.C. §107). Reproduction of a copyrighted work may be considered “fair use” in certain situations such as criticism, comment, news reporting, teaching, scholarship and research. FAIR USE - §107 Factors The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes The nature of the copyrighted work The amount and substantiality of the portion used in relation to the copyrighted work as a whole The effect of the use upon the potential market for, or value of, the copyrighted work Examples Quotation of excerpts in a review…for purposes of illustration or comment Quotation of short passages in a scholarly or technical work for illustration or clarification… Use in a parody of some of the content of the work parodied Summary of an address or article in news report Reproduction by a teacher or student of a small part of a work to illustrate a lesson Independent creation. Independent creation is a complete defense to copyright infringement. The problem with this is that it is often hard to prove that you were never influenced, at any time in your life, by the copyrighted work. If music, did you hear it on the radio at some point and its just stuck in your head? If a previous video game, have you ever played it before? If a copyrighted work has received widespread, open and notorious distribution in any place you’ve ever lived, chances are you’ve been exposed to it at some point or another. In these situations a court will presume you had access to the copyrighted work, and will proceed to determine whether your work is substantially similar to the copyrighted work. Scènes à faire. The scenes a faire doctrine states that objects, characters, or other elements of a creative work are not protected by copyright when they are mandated by or customary to the genre of the work. For example, one would expect to find knights of the round table, King Arthur, and Camelot in a video game set in medieval England. Others are free to use these elements without infringing someone else’s game that also includes them. De minimus use. Under the doctrine of de minimus use, if you use only a negligible amount of the copyrighted work then a court may dismiss the case. Essentially, it’s a waste of the court’s time and the likely damages are going to be minimal, if anything. However, some courts have said that if you sample even one note from another’s audio recording, you need a license or you infringe. Merger. The merger doctrine states that if there are only one or a limited number of ways of expressing a particular idea, then copyright law protects none of them. This is so that one person or a few people cannot get a monopoly over all expressions of a particular idea, and this is also so that copyright law does not impinge on the First Amendment. Parody. Parody is really a particular type of fair use defense, but we call it out separately because many people think about it as an afterthought. One thing to think about, however, is whether your work is actually a satire rather than a parody. A parody makes fun of the underlying work from which it borrows, whereas a satire uses a copyrighted work to make fun of something else entirely. Accordingly to copyright law, parody supports a finding of fair use under the first fair use factor, whereas satire typically supports a finding of infringement. Public Domain. If the material you allegedly copied was already in the public domain (i.e., no one can protect it via copyright), then you do not infringe the work because public domain material is not a protectable element of a work. Statute of Limitations. How long has your game been out? A copyright owner must bring a civil lawsuit within three (3) years of when a claim first accrues. If you have been doing what you’ve been doing for more than 3 years, you may have a safe harbor. However, the copyright owner might still be able to sue you for damages accrued within the last 3 years.
- Patents asserted by NPEs are frequently very broad in what they are asserted to cover. They may claim that the patent covers relatively basic technology. The features they target may be ancillary or unrelated to the main features your company developed. For example, a company named Lodsys went after game developers who made iOS games for their use of Apple’s in-app purchase technology. Further, complaints of patent infringement by NPEs might be based on a very cursory review (or no review at all) of what your product does. See, for example, Ars Technica, “Patent troll shakes down iPhone app programmers” (May 13, 2011), available at http://arstechnica.com/apple/2011/05/patent-troll-shakes-down-iphone-app-programmers/. In that case, Apple was already licensed to the technology, but Lodsys went after the customers (app developers) directly. Apple attempted to step in on behalf of the developers, but Lodsys was able to extract settlements from the developers before Apple was able to join in. See Ars Technica, “Judge tosses Apple motion, allows patent troll Lodsys to continue rampage” (Sept. 29, 2013), available at http://arstechnica.com/tech-policy/2013/09/judge-tosses-apple-motion-allows-patent-troll-lodsys-to-continue-rampage/.
- The patentee must show that your product includes every feature recited in the claim (or substantial equivalents thereof) One primary hurdle in trial is determining what exactly the language of the claims means Defenses Noninfringement – my product is missing at least one step of the asserted claim Invalidity – the patent is invalid and should never have been granted Prior Art Unpatentable Subject Matter (Alice) Indefiniteness Others – License, Laches, Inequitable Conduct, et al
- Example Causes of Action Use of another’s trademark in your game Your company’s name is too similar to another company Dilution, unfair competition, false designation of origin, False advertising Cyber squatting State law and federal law claims may apply Trademark owner must establish that: It has protectable rights (e.g. a trademark registration or prior common law [use-based] rights) It has priority There is a likelihood of confusion Infringement – whether another’s use of a mark is likely to cause confusion, mistake or deception in the minds of relevant consumers Confusion includes confusion as to the source of the products and services as well as the confusion as to endorsement, sponsorship, or connection with the trademark owner An ounce of prevention is worth a pound of cure It’s much easier and preferable to avoid a dispute in the first place than it is to fend one off after you’ve launched your company or product that is the subject of the dispute. Defenses No trademark rights exist Prior use No likelihood of confusion Fair Use, though different from copyright Parody
- Cease and Desist Letters versus Lawsuits Did you actually get sued? If you just received a letter that says that your products are using patented technology (or other intellectual property) and demands that you license one or more patents, then you probably have not been sued yet. Cease-and-Desist letters are a threat to sue and seek resolution without involving the courts while placing you on notice regarding the patent. The letter will typically request that you take a license to the intellectual property in question and make royalty payments. In contrast, an infringement lawsuit is a lengthy and expensive court battle to determine whether infringement took place and if monetary damages or another remedy should be awarded. When you get sued for infringing someone’s intellectual property, you will be formally served with a complaint and summons.
- Business realities frequently dictate the outcome of IP infringement issues. Paying up now to avoid the costs associated with fighting may be the best option in some circumstances. In others, you may choose to go all out and preemptively file a declaratory judgment action to force the issue to a conclusion and gain certainty.