Alex Tutty joined Sheridans Solicitors at the start of this year, and principally advices developers, publishers and distributors in the videogame business on the exploitation and development of software, games and media products.
Prompted by recent discussion and the ever-present issues of protecting original ideas, intellectual property and products, Tutty has written this article for GamesIndustry.biz on the realities of protecting software and games with trademark, copyright and patents.
Success breeds imitation and this is especially the case on the internet. For every person developing a new and interesting website or game there are countless others ready to pounce on whatever looks like the next successful thing and create their own version (whether of good or poor quality). The quote attributed to Mark Pincus, CEO of Zynga, in which Pincus stated "I don't fucking want innovation. You're not smarter than the competitor. Just copy what they do and do it until you get their numbers" succinctly sums up one of the approaches adopted by some companies.
The speed at which copies of a successful product appear depends to an extent on the barriers to entry, whether that be by way of a technological barrier or installed user base. If the barrier to entry is low the market becomes inundated with similar products before the market settles down and the less successful ones drop away. However if before competitors can emerge a huge market share has been built up it can be incredibly hard for potential competitors to claw back or establish a foothold in the market as the sheer dominance of the central player creates an effective barrier to entry, at least in the short term.
This is especially the case with games. One game will catch the popular imagination and gain a huge user base (be it Mafia Wars, Farmville, Guitar Hero or Call of Duty). Others will notice this popularity and try to create alternatives with subtle and not so subtle variations in order to try and gain users, either new ones or those disaffected with the original. The obvious question which arises as a result of this is that if a developer does create a new and original concept for a game how can they legally protect their position it in order to make money from it, stop poor imitations or just simply stop people ripping it off? The flip-side to this is what level of copying or imitating is acceptable and can be expected before it steps over the legal line and leaves the competitor open to a successful claim?
In order to illustrate this and provide a working example it is helpful to go back in time and pretend that I have had an idea for a revolutionary new game played on Facebook that involves users having a virtual farm which they tend and grow crops on. Users can then trade their farm's produce with other users. My game is called Farm Ranger and in order to monetise it I have envisaged small payments being made to buy upgrades, nothing big so it hardly seems like you are spending money, just some different seeds or some livestock.
As the developer I am interested in protecting my idea so that I can exploit it successfully. There are a number of potential legal solutions to assist me, each has some benefit but also may be inadequate for my needs.
Patent the software
A patent gives the holder a monopoly right to the use of the invention for a specific period. Obviously this is incredibly useful if you can get it, but the tests for patentability are stringent and moreover in the UK computer software per se is excluded unless it has an inventive 'technical effect' on hardware (in which case it is the hardware and the technical effect on it that is patentable). This necessarily begs the question of "What is a technical effect?" A technical effect can otherwise be described as the process which the computer operates to achieve the effect, such as an industrial process. This is not of much help for most games where there is no obvious inventive technical effect (other than in Farm Ranger's case of causing players to wile away hours tending virtual crops). The more inventive and different the technology the more likelihood there will be a technical effect on hardware and that a patent can be obtained. For example, aspects of the Microsoft's Kinect project have been patented in the US and certain games being developed for the platform are subject to patent applications. The US patent system is different to the UK one in that it allows patents for computer programs but it does give a good illustration of the sort of things that can be patented.
It is unlikely that in the UK that Farm Ranger would be considered to have a technical effect on hardware so a patent is unlikely to be able to help protect my game.
Trademark the name of my game
A trademark for my game 'Farm Ranger' protects the name in its function to indicate the origin of goods as produced by me. It can exist to stop anyone else calling a game 'Farm Ranger' or anything similar enough to cause confusion to try and ride on the coattails of my games popularity. The requirements for trademark registrations are that they cannot be descriptive, must be capable of distinguishing goods and services of one business from those of another and needs to be registered against the class of goods for which the trademark is used.
There are 45 classes in which a trademark can be registered so it is important to ensure you get the right classes relevant to your product as it will only be protected from infringement in these classes and whether it is descriptive will depend on what classes it is registered in. By way of example, I couldn't for instance trade mark the name 'Soap' for a Soap (class 3) as its descriptive. I could however, trademark a computer game called 'Soap' (class 9) assuming no-one else had done it first, which would prevent others from calling a game 'Soap' or something confusingly similar, 'Soapie' for instance. On the face of it this is great and if Farm Ranger is registered I can stop others using the name.
The problem would then be if another company enters the virtual farm genre but doesn't call it anything similar enough to Farm Ranger, which would infringe my trademark - a game entitled 'World of Farms', for instance. The answer would depend on how closely this new game copies Farm Ranger and whether it copies it closely enough to infringe my copyright.
Copyright is an automatic right that attaches to various types of original creative works. There are a number of categories of protected works but for simplicity I am going to work through this example using the two main and established rights used for computer games. These are the copyright in literary works as computer source code and the protection of the images generated by the game as artistic works (the same right that also protects paintings and photographs). Continuing with the example of the supposed rival and upstart World of Farms, assuming the developer and publisher haven't seen and copied my source code (which is unlikely), whether an infringement exists will depend upon the similarity of individual artistic works (which may be screenshots or single graphics) between the two games. In order to demonstrate copyright infringements I need to demonstrate World of Farms has copied the whole or a substantial part of the artistic work. In other words it will need to show in that there are still frames in World of Farms which copy a substantial part of still frames in Farm Ranger or other graphical components. It is worth noting that the protected elements are not what could be expected, such as the functionality of the command structures (which are not protected) but the still screens as viewed as if they were pictures in a separate right.
If I can demonstrate World of Farms have copied screen stills, I can consider putting them on notice of the infringement and take steps to protect my idea. If they are not infringing I'm left with what could be an incredibly similar game to my own but with no legal remedy.
This might not be too surprising a conclusion given the huge amount of similar games available. Some may consider this inadequate especially with the constant interactions of games, which mean that games can skirt the lines of what is copying knowing that should they get too close they can always pull back. Others may consider this a current reworking of the idea that all art is imitation and that imitating and drawing on other games is acceptable and usual. This is certainly true to the extent that reworking ideas or drawing on pre-existing ideas is a fundamental part of artistic expression but it is the crossing over from inspiration to outright copying that is the concern and which is rightfully protected. Where there is copying the remedies and even the threats of remedies are incredibly powerful and useful. Apple for instance will remove potentially infringing content pending resolution of the issue. Where the game is distributed via either digital download, via Facebook or streamed, or by boxed product the distributors can be informed they are distributing infringing material and asked to stop distributing or risk of being deemed liable themselves. This effectively puts pressure on the infringing game publisher and developer as it affects their revenue stream. Such actions can result in the game being removed or even the payment of a licence fee to use the infringing content by the infringing developer.
While the above demonstrates that there are legal remedies that are potentially useful to the protection of games it is also clear that in some cases these protections may not be adequate. While the quote attributed to Mark Pincus is illuminating it does not address the issue that while simply copying a successful game may be easier than creating a successful game yourself, it is often the originators of an oft copied idea that enjoy the greatest success, and so arguably without some innovative difference the copying product will not achieve the same success as the original.