"Famous Last Words"

IP 101 (September 2002)

Dear Jim,

I am a student in my gap year and I am currently writing the design document for my game. What I would like to know is how I go about securing my IP? As I'm a student I can’t pay big legal fees...What do I do?

Alex

Dear Alex,

Protecting IP doesn’t have to be expensive. Every creator should have a strategy to protect his or her work. The five most widely used methods are copyright, trademark, patent, trade secret, and what I call “self-help”. It’s a bit of a “Chinese Menu” system – choose one from column A, one from column B, etc. as you see fit. None of them alone can do the whole job.

Here's a basic breakdown of the five methods.

1. Copyright

Copyright is the most basic step. Be sure to register your copyrights, and use the copyright notice (© 200x Your Name) on all materials. When you’ve sent off the forms, registration fee, and deposit to the Library of Congress, you’ll receive back a certificate. Hold on to it. The copyright registration certificate is the deed to your work. And no lawsuit for infringement can be brought unless the copyright has been registered.

Registration is easy and cheap. Are you in the United States? Check http://www.copyright.gov/pubs.html for forms and information. If you are registering a software demo, take a look at Circular 61, Copyright Registration for Computer Programs; if you are registering a design document, you might want to use Form TX for a non-dramatic literary work. Graphic images can be protected as visual art works using form VA.

The limitation with copyright registration is that it protects the expression of an idea, but not the idea itself (see Copyright Office Circular 31). In software, there may be many ways to express an idea that all achieve the same result. However, unless you are particularly concerned about protecting only your exact expression of the ideas contained in your design, copyright by itself is probably insufficient.

2. Trademark

Trademarks can provide powerful protection – but only if the public associates your marks with your game.

There are many adventure games about characters, but only Nintendo has Mario.

While a trademark gives monopoly power over your characters, brand names and other protectable assets, it has no value without public awareness. And as a new designer, the investment required to create such awareness is likely beyond reach.

3. Patent

Computer software traditionally has not been the subject of patent; but we have from time to time seen patents granted for software applications, interfaces, or processes. Patent law is a speciality and others may want to comment further on its usefulness in these circumstances. At best, I see very narrow protection if there are truly unique elements to your designs, and the potential of costly patent litigation if others feel you are trying to protect processes that add value to their own work.

4. Trade Secret

Software in development, and game designs, are often treated as trade secrets. But a trade secret must be continuously policed or protection is lost forever.

If you were to maintain your design as a trade secret, it could not be shown unless the recipient signs a trade secret/confidentiality agreement in which he or she recognizes the submission is to be treated as a trade secret, and agrees not to disclose the work or use it for his or her own benefit without consent. Many designers require non-disclosure agreements before anything will be submitted. But publishers have their own forms (often called “Submission Forms”) that limit these rights and may specifically reject any obligation to maintain the submission in confidence.

Access to trade secrets must be limited. This is why many development studios require sign-in sheets for visitors, and lab doors are locked.

As soon as it can be shown that the work was seen without such restrictions, then it is no longer a trade secret and protection can be lost.

5. Self Help

Self Help is a system of ongoing documentation and archiving of your own work in progress. The value of self help is that it creates a paper trail that can show how your ideas and materials developed over time. Its greatest value arises after you’ve been sued or filed suit for infringement.

If someone sues you, you can show the history of your work, where it came from, how it evolved, and that it may predate the existence of what is claimed to be infringing elements.

If you are the one to bring suit, your own documentation/paper trail can show how your ideas and materials developed over time. By keeping track of all meetings, conversations, and other distribution of your work, you may be able to show how your materials were received by a potential infringer and then made their way into the infringer’s project.

This overview is the most basic look at an enormously complicated subject. But consider that if you’re planning to use your designs to showcase your abilities in looking for a job, too much protection (aside from copyright registration and self help archival) may not be a good thing.

Many publishers will not sign broad non-disclosure or trade secret agreements with inexperienced developers. They have their own labs developing games – some of which may already contain elements of your work – and see such agreements as sources of potential liability. Their own submission agreements are designed to protect them, not you and your IP.

But if you decide, as a business decision, that the exposure you’d receive as a result of circulating your work is worth the risk, then take all self help steps, protect yourself through copyright registration, and consider not demanding anything more than a brief non-disclosure for your work.