Famous Last Words August 2010

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DISCLAIMER: This column is intended for general educationaland entertainment purposes and is not legal advice. Every situation is unique. Anyone entering into a contract should have a lawyer who can provide counsel.

Jim Charne,

Attorney at Law

Copyright and Trademarks – Considerations for IP Protection

(August 2010)

Dear Jim:

We’ve got a really unique character in our new game. Can we get it trademarked?

Thinking Strategically in WA

Dear WA:

We’re in an intellectual property business. Control of intellectual property is what builds value in a company.

In order to decide the best way to protect your character, we should more fully understand how it is being used in the game.

1. Trademarks.

A trademark (or service mark) provides protection to a name or graphic image (or in a few cases, a sound) that is used for purposes of identifying the origin of goods or services.

Examples of well known trademarks are the words “Microsoft,” “Activision,” “Chevrolet,” or “Coca-Cola.”

Further examples are the golden arches of McDonalds, the shape of the Coca Cola bottle, the Nike “swoosh” shape, the shape or silhouette of the Starship Enterprise, a Star Wars Tie Fighter, or X-Wing Star Fighter.

On the audio front, the Intel “bling,” and the Law & Order distinctive signature “dum dum” sounds may also be considered trademarks!

In each case, the word, shape, item, or sound is used to distinctively identify the source of the associated goods or services.

It would be misleading for Pepsi-Cola to be sold in a bottle with that distinctive Coca-Cola shape.

Adidas cannot be sold using the Nike Swoosh. And the image of the Starship Enterprise cannot appear in any story except Star Trek.

Trademarks represent the continuation of law that started in the middle ages. At its most basic, a blacksmith would affix a “hallmark” to a sword or armor what would tell a buyer who made the item. This represented a statement of quality that could be relied on by a purchaser. This gave the mark, and the associated item, value.

Today, marks, similarly, tell a consumer about the producer of the goods or provider of the associated services. Marks create goodwill for their owners by identifying their goods or services.

With this in mind, seeking to protect your character by registering it as a trademark, should be considered.

However, before you do so, an analysis must be undertaken to determine whether the character truly is being used in a trademark context. Is it the primary or a major distinctive visual image associated solely with your game? Is it an element that a consumer would consider a defining part – like the Starship Enterprise in Star Trek, or the Tie fighter in a Star Wars movie. Does it say loudly, “This is a game from WA’s studio?” If not, then your use may not meet the requirements to be a trademark.

An alternative exists, however, that can help protect the character.

2. Copyrights.

We have discussed in previous columns that copyright subsists in any original work of authorship from the moment it is fixed in any tangible form.

The character exists in the form of 3-D or 2-D works of art. Examples can be registered in the United States Copyright Office.

Once registered, if anyone takes your character and uses it in any form, they will be subject to an action for infringement. Infringement of a registered work will subject the infringer to possible “statutory damages” under the United States copyright law, without proving actual monetary damages; plus you may be awarded attorneys fees in bringing and prosecuting the action.

While copyright protects only your expression of the idea, and not the idea itself (**for example, registering your copyright in an 8-armed gunfighter character would protect the graphic depiction of your character – but not the idea of an 8-armed gunfighter**), if the creator of a noticeably similar 8-armed gunfighter character could be shown to have had access to your registered work, and there is a substantial similarity, the other work could be found to be a derivative work of your character, and infringing.

Copyright protection through registration is a solid and low cost step that any developer can take to protect its characters and other distinctive elements of its games. While it does take a while for a registration to wind its way through the Copyright Office, the effective date of registration protection is the date that application materials are received in Washington DC.

Registration can be handled online.

For more information on copyright registration, talk to your lawyer, and/or see:

http://www.copyright.gov/help/faq/

Using copyright and trademark registration, a developer can put together an effective IP protection strategy for its work. Your games industry lawyer can assist in this and provide guidance along the way.
 

Jims Bio

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, composers and other clients in the games industry.  Jim has been a frequent speaker at GDC, is active in IGDA from whom he received an “MVP” Award at GDC 2006, in 2010 will chair the Practicing Law Institute video game law segment the week after GDC at its annual Entertainment Law Symposium in New York, and is a member of the Advisory Board of G.A.N.G.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

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Famous Last Words is intended for general educational and entertainment purposes and is not legal advice.  Every situation and circumstance is unique.  Anyone entering into a software-related contract should have an experienced lawyer who can provide counsel throughout the process.

©2010 Jim Charne.  All rights reserved.