How multimedia trade marks could kill cloned games

Harbottle & Lewis' Kostya Lobov believes a new form of IP protection will greatly benefit developers - as shown by Rebellion's Sniper Elite 4

Adding 'multimedia' in front of anything is usually a good way to make it sound dated, but the recent introduction of new-style multimedia trade marks for the EU could be an important development for the games industry.

The change comes about as a result of new legislation which relaxed the registrability criteria for EU trade marks last year, by removing the requirement for marks to be capable of being represented graphically.

Non-traditional trade marks (like sounds, 3D shapes, or even smells) have been available for some time, but the 'graphical representation' requirement was always a hurdle. It usually meant that applicants had to resort to using convoluted combinations of still images and explanatory text. Now, trade marks can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

This has paved the way for new types of trade mark application, including fully rendered gameplay videos with sound. An example of these is EUTM application number 017282203 for the following video clip:

Video credit: Christopher Kingsley, Jason Kingsley and Rebellion Developments

Essentially, this is an application to register a 25-second video clip depicting the 'kill cam' mechanic from the Sniper Elite series. The application covers various goods and services in Classes 9, 28, 41, including a broad list of game types in class 9, and 'entertainment' services in Class 41.

This is an exciting prospect for a few reasons. Gameplay mechanics are notoriously difficult to protect, because they tend to fall through the gaps between various IP rights. Patents can be very powerful, but have stringent requirements as to novelty and the fact that the invention must contain an inventive step, not to mention that "a scheme rule or method for ... playing a game" is excluded from patentability by law. Patents can also be expensive and take a long time to obtain, as a result of which many (though not all) patents in the games sector tend to focus on underlying technologies and hardware.

Copyright is great for protecting source code, images, videos, text, music and other creative elements within a game, but it generally does not extend to protecting underlying ideas or mechanics. Similarly, designs (whether registered or unregistered) generally only protect the visual appearance of a product or in-game element, as opposed to how it works.

"Trade marks are quick and cheap to register, easier to enforce, protect against confusingly similar marks, and can potentially last forever"

This, in part, is the reason for the game cloning epidemic which exists today.

Trade marks, on the other hand, are relatively quick and cheap to register, easier to enforce than unregistered rights, protect not only against identical but also confusingly similar marks, and can potentially last forever if properly maintained. A trade mark which covers rendered video of an essential gameplay mechanic could be a powerful tool in the Intellectual Property armoury of any developer or publisher.

It should be said that registering trade marks of this sort is not going to be plain sailing (it is interesting to note that this one is still under examination despite having been filed in October last year, which suggests that it may have encountered some resistance from the registry). The mark being applied for still has to meet the basic requirement of being a 'sign' capable of distinguishing between the products or services of different businesses. In other words, consumers who see the mark must be able to recognise the product or game to which it is applied as coming from a particular commercial source.

This means that visuals of gameplay/mechanics which are already in widespread use by others in the industry are unlikely to be able to be registrable (and, even if you get over the threshold for registratibility, those competitors may oppose the application). Because trade marks are effectively a qualified monopoly right, and can potentially last forever, registries tend to be cautious in accepting trade marks which can potentially be used to prevent lawful uses and stifle creativity. It may therefore take some effort to convince the registry that a visual of a gameplay mechanic is sufficiently distinctive.

It also remains to be seen how trade marks like this will be treated when they are used in anger - i.e. in takedown notices to platforms and app stores, cease and desist letters, and ultimately legal proceedings. Until a few test-cases have been established we will not know for sure, but it is safe to assume that the first few takedown notices based on a multimedia mark of this sort are going to cause some head scratching and internal emails to decide how they should be dealt with.

Despite the outstanding uncertainties, with appropriate tweaking of the mark and specification, and some supporting evidence, in principle there is no reason why a multimedia trade mark for a visual representation of a gameplay element should not be granted.

Because of the relatively modest investment which it represents, we can expect to see a lot more applications for marks like this in the future, as rights-holders will be keen to take advantage of the increased flexibility of the EU trade mark regime.

Kostyantyn Lobov is a Senior Associate at London-based law firm Harbottle & Lewis, specialising in IP and Advertising issues. He is an avid gamer (when life allows it) and sometimes tweets games-related things on @IPLawyerKostya.

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Latest comments (15)

yeah, this will be good for no one except the lawyers.
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Andrew McFain YouTuber 4 years ago
Seems like it would also kill creative use of game mechanics in other games. Imagine if someone trademarked the time rewind mechanic from Prince of Persia, for example. We wouldn’t necessarily have Braid or Life is Strange. This really sounds like opening the door for Trademark Trolls to come up with gameplay demos only to trademark them and hold them hostage.
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Viljar Sommerbakk Game Director, Funcom4 years ago
Of course this gets an IP lawyer excited. This will not help the games industry. Will you be able to trademark jumping onto a platform in a video game? Shooting a weapon in a first-person view? The big companies that have money for lawsuits will abuse this and make life more difficult for smaller companies and indies. This industry has had its share of shady copyright infringement cases in the past. Please don't make things easier for these ambulance-chasing trademark trolls.
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Show all comments (15)
Jeremiah Moss Software Developer 4 years ago
This actually sounds scary and ripe for abuse. Gaming has been superbly innovative without this kind of "protection." There is no reasonable case to be made for enabling businesses to have monopolies on game mechanics.
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Ian Griffiths Product Owner, Hutch4 years ago
This is utterly terrifying. If Wolfenstien 3D had 'protected' the FPS (or some similar game before it) then Sniper Elite 4 wouldn't even exist to apply for their 'kill cam'. And the kill cam is just a twist on the, well, kill cam and the killing blows form Mortal Kombat and others before it. Would it have stopped the latest Mortal Combat's similar beat 'em up death cam mode?

Cloned games really aren't an epidemic, at least not for any game that is remotely difficult to make. Could we do with a little more protection for games like Threes? Well, yes maybe but I can only see new rules being abused by the worst actors.
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James Barnard Founder / Developer, Springloaded4 years ago
Such a nice idealistic view of things... If com2us can trademark "tower defence" then nothing is safe. I wanted to use the word Goliath in the name of my game, turns out an indie company trademmarked it... I really can't believe people can own words...I guess now they can own things like "replay cam"...and as someone said above "jump"....great
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Dariusz G. Jagielski Game Developer 4 years ago
@Todd Weidner: Precisely. Nintendo makes a "multimedia TM" of mainline Mario games? Now suddenly everyone is not allowed to make a platformer and a 3d platformer. id Software trademarks first person shooters (after all, they were first)? Now suddenly CoD and Battlefield are illegal. Microsoft trademarks "voxel block building game?" Say goodbye to Staxel, Ylands, Trove, Blockscape, etc. (the likes of Terraria or Starbound would be OK as they technically don't use voxels).

Extreme examples, but they ilustrate the point that such laws are dangerous and limits creativity.
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Jaakko Maaniemi4 years ago
The article plainly says "visuals of gameplay/mechanics which are already in widespread use by others in the industry are unlikely to be able to be registrable (and, even if you get over the threshold for registratibility, those competitors may oppose the application)".

So pretty much nothing already in wide use won't be trademarkable. Everyone can still keep making platformers and first person shooters.

However, this does sound problematic in regards to future innovations. They do happen every now and then, after all. Once the next innovation comes along, I guess it could potentially be trademarkable, ie. monopolized. So future innovations, or rather the iterations of future innovations, do seem to be at risk.
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Chris Payne Managing Director & Founder, Quantum Soup Studios4 years ago
The Sniper Elite case is a prime example of a novel feature that is REALLY BLOODY HARD to implement. Is the franchise swamped by clones? I'm not aware of any. But what if someone wanted to apply this feature to a boxing game? Would the trademark cover any X-ray mechanic? What if it was in a Superman game, where the concept predates the trademark? This seems like a legal nightmare and not healthy for the industry at all...
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Klaus Preisinger Freelance Writing 4 years ago
So instead of PR departments being the driving force behind more marketing relevant features, it is going to be lawfirms in the future? Lead design by Michael Pachter?
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Ian Griffiths Product Owner, Hutch4 years ago
@Klaus Preisinger: Not really fair to Michael Pachter if he isn't here to defend himself.
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Anthony Gowland Director, Ant Workshop4 years ago
Sniper Elite 2 was the first in the series with the x-ray cam, in 2012. I remember seeing the same effect in the film Romeo Must Die in 2000. It does seem rather flimsy to be able to register this kind of stuff.
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Klaus Preisinger Freelance Writing 4 years ago
Great, now I want to see an Indies & Lawyers game jam. Stop my assumptions, get a measurement. Maybe it does require lawyers and thread of Trademark infringement for games to be more diverse, if only for the sake of not being sued.
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Nicholas Lovell Founder, Gamesbrief4 years ago
@Klaus Preisinger: I don't think Pachter is a lawyer (at least, that is not his job these days)
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Nicholas Lovell Founder, Gamesbrief4 years ago
This sounds terrible. Is it too late for us to fight it as an industry?
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