The document provides an overview of key legal issues for software, app, and video game development including intellectual property protection strategies, entity formation and funding considerations, employment and contractor agreements, licensing intellectual property assets, and exit strategies. It also discusses common pitfalls and resources available for software, app, and video game entrepreneurs. The speaker Jim Chester is an attorney and founder of a technology law firm who will discuss these topics.

1. LAWYER’S GUIDE TO
Software, App & Video
Game Legal Issues
WED, SEPTEMBER 14, 2016
NOON- 1PM

2. JIM CHESTER, SPEAKER
 Entrepreneur & Founder/CEO
 Technology Attorney & Managing Partner
 Adjunct Professor of Law
 214.997.1750
 jim@chester-law.com

3. Introduction
 Compared to other types
of ventures
 Lots of similarities
 IP-based offers unique
opportunities and risk

4. Formation and Funding
 Entity Structure
 Choices
 State
 Entity Type
 LLC, Inc., GP, sole prop.
 Tax Considerations
 Common Pitfalls
 “So-and-so says I need to be a DE corp”
 Not completing the process

5. Formation and Funding
 Funding
 Self
 Equity
 Debt
 Royalty
 Common pitfalls
 Not properly documented
 Loss of control
 Getting value (& Valuations)

6. SAVaGE Development
 DIY (including co-owners)
 Employees
 Contractors
 Common pitfalls
 Outsource (outside US)
 Failure to secure IP
 Clear benchmarks

7. 1. Only large “high-tech” companies have IP
- EVERY business has IP Assets
- A significant amount of innovation comes from individual inventors & small and medium
enterprises
2. Securing your IP rights in the US will give you protection
in other countries as well
In most cases, US IP rights mean nothing outside US
3. IP law protects “ideas”
Law protects the “tangible manifestations” of ideas
Intellectual Property
Common IP “Myths”

8. “I. S.U.E.” IP Protection Strategy
Identify
Secure
 Direct
 Indirect
Use
Enforce

9. Trademarks
 Any name, symbol, figure, letter, word, or mark
adopted and used by a business to designate its
goods/services and to distinguish them from those of
others
 Common law rights automatic, but USPTO
registration grants broader rights
 Initial term 6 years, but can be renewed indefinitely
 Can file multi-international – but must prosecute
separately.
 Convention gives 6 months to claim priority.
IDENTIFY: Types of IP

10. Patent- the exclusive right to an inventor to
manufacture, use, or sell an invention.
- Can only come from the US govt.
- Must meet statutory requirements
novel, useful, non-obvious, etc.
- Expire after 20 years from filing – NO renewal
 (Design patents – 14yrs. From issue)
 PCT allows for foreign filing/priority – but must prosecute
each country
Types of IP

11. Trade Secrets- Secrets secrets kept
from the world that relate to how
to manufacture, use, or sell
something (i.e., give a competitive
advantage)
- No registration required
- Does not expire
- Must be protected (e.g., limited
access, NDAs, etc.)
Types of IP

12. Copyright- exclusive right to make copies,
license, and otherwise exploit a
literary, musical, or artistic work,
whether printed, audio, video, etc
 Can last long time:
 Author’s life + 70 years
 Up to 120 years for “work for hire”
 Under Berne Convention, this is the
one type of US IP right that gets
automatic protection in other
countries
 Don’t need registration, but registration
gives additional rights/benefits
Types of IP

13. Intellectual Property - Software
COPYRIGHT
- Source Code
- Images created by
code (GUI,etc.)
- Web design/Layout
- Web content,
photos, graphics,
text, etc.
- Databases
PATENT
- Systems/Methods
- Hardware
TRADEMARK
- Company Name /Logo
- Product/ Service
Brand/Logo
- Slogans
TRADE SECRETS
- Confidential graphics
- Source & Object code
- Algorithms
- Programs or other
Technical Descriptions
- Data & Logic flow
charts
- User Manuals
- Data Structures
- Database Contents
- User data

14. Intellectual Property - Apps
COPYRIGHT
- Source code
- Images created by
code (GUI, etc.)
design/layout
- App content, photos,
graphics, text, etc.
- Databases
- Music
- Characters
- Storyline
PATENT
-Systems/Methods
- Hardware
TRADEMARK
- Company Name /Logo
- Product/ Service
Brand/Logo
- Slogans
TRADE SECRETS
- Confidential graphics
- Source & Object code
- Algorithms
- Programs or other
Technical Descriptions
- Data & Logic flow
charts
- User Manuals
- Data Structures
- Database Contents
- User data

15. Intellectual Property - Games
COPYRIGHT
- Music
- Code
- Story
- Characters
- Art
- Box Design
- Website Design
- Manuals/Instructions
PATENT
- Hardware Technical
Solutions
- Inventive game play or
game design elements
- Technical innovations
such as software,
networking, or database
design
TRADEMARK
- Company Name
- Company Logo
- Game Title
- Game Subtitle
TRADE SECRETS
- Customer Mailing Lists
- Pricing Information
- Publisher Contacts
- Middleware Contacts
- Developer Contacts
- In-house Developer
tools
- Deal Terms

16. • NDA’s/Confidentiality Agreements
• Partner/JV Agreements
• Assignments/Transfers
• Employment/Contractor
Agreements
• “Work for Hire” and development
agreements
SECURING IP Rights - Directly

17. State & Federal U.S.
-TM, SM, trade dress – USPTO/State
-Patents – USPTO
- Copyrights – US Library of Congress
- Trade Secrets (no registration)
International
-Treaties: WIPO/PCT (Patent); Madrid Protocol (TMs)
-Berne Convention (Copyright)
-Foreign Gov’ts
SECURING IP Rights - Indirectly

18. • No “cookie-cutter”
• Type of agreement will depend on
type of IP, value, etc.
• Often start with prior agreements,
but each transaction will need to be
evaluated individually
• EULA/Terms
USING IP Assets
Licensing & Assignment

19. • Investigating claims/potential
infringement
• Drafting letters of inquiry &
“Cease & desist” letters
• Negotiating settlements &
consent agreements
• Prosecuting & defending
infringement lawsuits
ENFORCING IP

20. eCommerce
 Terms of Use/EULA
 Warranties
 Limits of Liability
 DMCA Policies
 IP ownership
 Limits of license/grounds for termination
 Privacy Policies
 Governed by an array of state, local,
foreign laws
 Special rules may apply (HIPAA, PCI, etc.)
 Common Pitfalls
 Cut and Paste
 Not following PP terms

21. Other Agreements
 SLA’s
 SaaS
 MSAs
 Advertising
 Publisher
 Distributor/Reseller
 Merchandising
 Character/content licenses

22. • International IP protection
• Use of “Open source” code
• US trade laws
• Tax issues
Special Issues

23. Exit
 Selling the company / Assets
 Housekeeping
 Due Diligence
 Common Pitfalls
 IP ownership
 LT employment agreements
 Contingent Liability

24. SAVaGE Resources
Free SAVaGE Knowledge Base available at: www.chester-law.com/se-kb
Join Texas SAVaGEs
Linked In: https://www.linkedin.com/groups/8530939
MEETUP: http://www.meetup.com/Texas-SAVaGEs-Software-App-Video-Game-Entrepreneurs/
Web: www.TexasSavages.com
Facebook: https://www.facebook.com/TexasSavages/