Famous Last Words January 2011

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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

January, 2011

Famous Last Words
By Jim Charne, Attorney at Law

Protecting the Next Killer App

Hi Jim!

I have this, I'm pretty sure, pretty common scenario. It goes like this:

I have an idea that I'm pretty sure is akin to a 'killer app'. Yes, yes.. everyone says that... but I've been in the industry for about 30 years and haven't said it all that much! Anyway, the idea is simple, and can be accomplished many ways. Thus it can't really be protected legally.

I'd like to present the idea to potential publishers. But the problem is, they obviously aren't going to commit to the idea till I tell them what it is, but once I tell them, they don't need me anymore! And this is an idea that requires a recognizable publisher (for a unique reason) to accomplish, so I can't do it by myself, or even collect a team to do it!

The word 'trust' comes to mind... but I've done business enough to know that word is rarely applicable in negotiating situations. How have you handled this in the past?

An NDA isn't going to hack it...

Thanks for reading this... even more for a response!

Peter

Dear Peter:

I am sorry to say there is no sure-fire, iron-clad way to protect your idea.

Intellectual property law offers an imperfect mosaic of protection. It’s a patchwork of protection methods, but provides nothing that can offer the certainty for which you are looking.

Let’s look at the alternatives.

1. Copyright. The most fundamental concept of copyright is that it cannot protect an idea. This makes it of little use for your killer app. Copyright protects the expression of an idea, but not the idea itself.

That means if you have documentation or a presentation or a demo or a flow-chart of your app, that work can be protected – it is the expression of the idea. But copyright does not protect the undeveloped app itself.

Generally, I recommend registering the copyright of creative or technical works. But in this case, that is not a good idea. Registration gives the owner additional rights. But registration also requires providing a deposit of the works that are being registered. The deposit is a public document. That deposit discloses to the world all the details of your app!

So copyright provides no meaningful protection.

Note that there are ways to register the copyright of computer software without depositing the compete source. But that presumes you have developed your app, or portions of your app, and there is code to protect. But note, again, even if you protect your code, the idea of the app – what it does, is not protected by copyright!

2. Trademark. The purpose of a trademark is to identify to the world the originator of the goods or services to which it is attached. In our own games business, “Electronic Arts,” “Activision,” “Bungie,” “Naughty Dog” and others are powerful brands used to identify the origin of games and other products. Similarly, marks like “Halo,” “Grand Theft Auto,” “Call of Duty,” and “Super Mario” when used on games, identify the origin. None of us could title a game “Halo” or “Haleoh” or some other variation that is confusingly similar to “Halo.” That would be an infringement of Microsoft’s trademark in its game franchise. It would confuse the customer who might think the mislabeled game is part of the Microsoft franchise!

While Microsoft owns the “Halo” mark, Bungie, creator of Halo, owns its own “Bungie” mark. In the future, unless Bungie continues to develop Halo games, Microsoft will be able to continue with its Halo franchise, but will not be able to use the Bungie mark in association with those games. The Bungie mark is widely seen as a mark of quality and will, in all likelihood, be used by Bungie on its own future games. Will Microsoft be able to be as successful when the Bungie brand is no longer attached to the Halo games? Will Bungie be as powerful a brand when attached to a game other than Halo? The public will decide.

In the case of your own app, having a trademark associated with your work may identify you as the creator, but does nothing to protect the app or your ideas associated with the app.

3. Unlike a copyright, a patent is a monopoly. If you could get a patent on your app, or certain elements of your app, this might afford you the protection for which you are looking.

The difficulty here is that the standard for patent protection is that something must be original and not obvious. Patent applications require meticulous descriptions of the claims that are being made, and research to make sure those claims and your item have not already been claimed (no “prior art”).

This means a patent application can be very expensive, complicated, and time consuming to pursue.

Software patents have always been disfavored – but increasingly they are issued.

The first step in seeking patent protection is to prepare, and file for, a “provisional patent.” This is a simple and streamlined procedure. However, you will have only a year from the time of your provisional to file for full patent protection. If you fail to do so, the protection lapses.

Patent work is highly specialized and this has been only the most bare bones description. If you believe patent is the way you want to go, it is strongly recommended that you locate an experienced patent lawyer who has worked in technical and software fields.

4. In your question, you told us that an NDA would not work – but never explained why. The final leg on the IP law table is trade secret. A trade secret can be protected so long as it remains a secret. That means the owner must take reasonable steps to protect it – including requiring anyone to whom it is disclosed sign a trade secret – non-disclosure agreement. A properly drafted trade secret agreement can protect an idea.

A trade secret can be anything – even ideas and methods that are commonly used – so long as the application or combination of those ideas and methods has value.

An attorney with experience in IP fields can help draft a good trade secret disclosure agreement.

In the end, however, the agreement is only as good as the good faith of the parties who sign and to whom you disclose your app.

A final piece of advice, here, then, is to carefully weigh with whom you have discussions.

Good luck with it! I am hoping you will be successful! Everyone benefits when a killer app is launched!

Jim's 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.

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