At GDC last week, Sheridans' games lawyer Tim Repa-Davies took a deep dive into publishing contracts.
A follow up to a GDC 2021 talk on the same theme, his presentation entitled 'What's wrong with your publishing contract?' covered everything from negotiations, licensing, payment terms, publishers' obligations, warranties, and more.
Most of the advice he shared can also be found in a series of articles called 'Contract Killers' that he published on his Linkedin page.
But Repa-Davies also discussed IP, and more particularly how to protect yours, particularly in the context of signing a publishing deal, with an entire section dedicated to trademarks. It's a topic GamesIndustry.biz recently touched upon in an article about clone culture and its continuous impact on indie developers.
So how do trademarks actually work? What do they encompass? Should you file for a trademark yourself or let your publisher do it? What are the pros and cons? Tim Repa-Davies answered all these questions and more in his GDC talk.
- Filing for trademarks
- Trademarks in your publishing contract: what to look out for
- Should you let your publisher register your trademark for you?
Filing for trademarks
Before getting into the heart of the topic, Repa-Davies recommended those who want a "good IP summary" to watch lawyer Christopher Reid's talks from previous GDC editions. He then moved on to giving a definition of what a trademark is.
"A trademark is anything that identifies goods and services of one business to that of another," he explained. "In the UK, the US and elsewhere, trademark rights can be both registered -- that's normally where you get the R in the little circle ® -- or unregistered and that's where you might see the little ™ sign on words, logos, and various other things that are capable of graphic representation.
"It's important to know that trademarks are more effective if they're registered, but that registration comes with a cost: you have to pay filing fees to the trademark registry in the country that you're registering for. That also means, because trademarks are territorial, that for them to be effective you have to register them in [any] country that you want to enforce them in."
The fees of course vary depending on the country. For reference, here are a few links to registration fees in various English-speaking territories:
But even if you're not filing for a trademark in each country your game is available in, the ones you do register might still be efficient to protect you, Repa-Davies continued.
"Now because everything's more online, and games are more online, actually having a trademark in one territory comes to be quite powerful against copycats and clones [elsewhere]. But normally you would want to register in various territories. If you're a developer in the US, you would naturally want a trademark for your game name in the US. But you might also want to register in other key territories where your game is selling particularly well, so that might be the EU, Brazil, Japan, or elsewhere in Asia. I'd advise to register in those key territories fairly early on, as far as your budget allows."
"I would advise prioritising game names over studio names, if you have to pick one over the other"
Repa-Davies was asked by a member of the audience what he would recommend particularly for an indie studio: should you register the game's name? The studio's name? Which territory specifically should you prioritise if you can't afford multiple countries?
"For trademarks, it can be studio specific [or] game specific, and you can also register logos or you can just register the word mark. Now, for most developers, I'd say look for word marks first, purely because any logos or stylised versions that you've created are most likely going to be protected by copyright in the first instance anyway. And normally it's the game name that gets used in any sort of clone or copycat. So I would advise prioritising game names over studio names, if you have to pick one over the other.
"In terms of territories, definitely focus on where you're based now. So if you're based in the US, definitely look at a US trademark, and largely you're going to be able to enforce that if you do find copycats on Steam or any platform, purely because of their online nature, it's going to invariably mean that those games are made available for sale within the US. So you should be able to rely on that, even if it's in different territories as well."
Trademarks in your publishing contract: what to look out for
The topic of trademarks comes up in publishing contracts all the time, Repa-Davies continued, so developers should be aware about what rights they potentially give up when signing a deal.
"The publisher is going to want to have rights to use your name, your studio name, branding and logo for the game, so that they can publish and promote the game, and they might also want to do some enforcement. They want to have those rights, so that they can do their job."
Usually, this takes the form of a publishing licence, which typically is exclusive and gives the publisher the sole right to use your property.
"You need to be really careful that the publishing licence does not attach the trademarks that are specific to your studio because that's going to prevent you from using them for other things, even if that's not the intention, and [that includes] any of your other games that the publisher is not publishing as well."
Repa-Davies addressed the potential issues with exclusivity earlier in the talk, mostly the fact that these clauses are usually very binary, potentially excluding you as the developer from using the name of your own creation.
"The publisher using your game specific marks is all well and good, as long as you've marked those studio specific marks out from the exclusivity"
"In the context of a publishing deal, you're giving those rights solely to the publisher," he continued. "The unintended consequence of that exclusivity is that it's going to prevent you as the developer potentially from referring to your own studio name or even referring to the name of the game in your own community, social media channels and things like that.
"Again, that's unlikely to be the intention -- no publisher is probably trying to use that as 'Aha, gotcha, now we've got your rights', but it's just an unfortunate, unintended consequence of your contract and it needs rectifying."
The way to fix that at the contract stage is to make licences concerning any studio specific marks non-exclusive, giving you the permission to use them as well. Game-specific trademarks can be exclusive, Repa-Davies added, but make sure you include something in the contract that allows you to refer to those trademarks on your own social channels for instance.
"If you were doing any marketing and things like that, the publisher may want to have approval over that, and that's okay, but as long as you can actually still refer to your game without the publisher clamping down entirely on it.
"So the publisher using your game specific marks is all well and good, you can make this work, as long as you've marked those studio specific marks out from the exclusivity."
Should you let your publisher register your trademark for you?
Repa-Davies noted that, occasionally, a publishing contract may include the following mention: "Publisher will file a trademark application for the Game at Publisher's cost and using Publisher's trademark counsel." He said that it's something to be wary of for several reasons.
"At first glance, you're probably reading that thinking: this is probably all right? At the end of the day I just told you that trademarks are more effective if they're registered and then there's a cost associated with that. So, effectively, what it's saying is that the publisher is going to take that cost off you, they're going to register them, so it's going to save you time and money. On the face of it, that is an absolute result. But as with lots of publishing contracts, it's often what's not written here that actually can cause issues. When you're reading a contract it's actually what's not present that's more important than what is there."
The first issue, looking at what's not written here, is that it might not be clear in whose name the publisher is going to register that trademark.
"When you're reading a contract it's actually what's not present that's more important than what is there"
"As it's your game, the publisher should almost certainly be registering any trademarks in your name as the developer," Repa-Davies said. "The risk being that the publisher registers that mark in its own name and then doesn't give that up once the contract has expired or is terminated. This causes effectively you as a developer giving the publisher carte blanche to do that, and giving them permission to go and register that mark."
As trademarks are territorial, it's also worth asking your publisher what countries it's planning to register those marks in. If they're registering it everywhere, that's going to get very expensive, Repa-Davies noted, and it might not actually be necessary anyway. The same applies for the categories of trademarks.
"Trademarks are registered against certain classes of goods and services, which covers things like video games -- unsurprisingly -- but it'll also cover things like merchandise, clothing, and other things.
"In fact, when I was doing research for this talk, I was looking at the registration for Animal Crossing in the EU and that includes things like dog shampoo and diapers for babies. You probably don't need that for your indie game.
"But if the publisher is registering all those different classes, that also includes a cost effect on you as well, so you might actually not need them to be over-registering. The negative effects of any over-registration in certain classes means that it leaves you more open to objection from a third-party because your mark has overreached."
Game services and merchandise are the two main categories you should be looking at, he added.
"The negative effects of any over-registration in certain classes means that it leaves you more open to objection from a third-party because your mark has overreached"
Another thing that might not be mentioned and is worth clarifying with your publisher is whether the cost of those trademarks is going to be recoupable.
"And 100%, I can tell you, it is going to be," Repa-Davies said. "And if it is going to be recouped by the publisher, then to my mind that lends further weight that the trademark needs to be registered in your name as the developer, since those costs are effectively being paid back to the publisher by the sales of the game anyway.
"Generally speaking, I'd always advise a developer just to take charge of their own trademark registrations and brand protection, because it gives you more control over your brand. However, as an indie, if you haven't locked up a publisher's fund, I can completely understand why people do leave this."
He concluded the section with a simple pros and cons list summarising his remarks:
- PRO: "If the publisher's going to register for it, it saves you cash and saves you time. In theory, the publisher's going to take a lot of responsibility, you can just move on and focus on your game."
- PRO: "Registered trademarks are easier to enforce and registering them is a benefit to you as long as they're going to be held by the developer in the future."
- CON: "There's no guarantee the publisher actually does a good job, they might use their lawyer or ask their lawyer to do it, but that doesn't mean that they're necessarily going to do it well. So, it's also worth checking that there's something in the contract to make sure that they've registered it properly. That if it does get opposed for whatever reason, they're also going to help with that enforcement or countering that position, and things like that."
- CON: "Check if the rights stay with the publisher, because if they do, that is a real issue, especially when it's your game and it's your brand."
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