More than just a game - IP and interactive entertainment

Yesterday afternoon I had the pleasure of attending the Queen Mary University of London More Than Just a Game Conference London IV.

The afternoon panel on IP was chaired by Ros Lynch (UK IPO).

The speakers gave a wide variety of perspectives on IP and interactive entertainment from the publisher and developer point of view as well as from the UK and US legal perspective.

Juliette Auverny-Bennetot (Paradox Interactive) discussed the ownership of IP in the gaming industry and getting the balance between developers and publishers right, particularly the importance of retaining sequel rights. She noted that self publishing has led to a more comprehensive contractual negotiation as developers have more options.  In her experience, while in the past developers would immediately sign a 60 page agreement, nowadays they are much more picky and less willing to sign without at least some push back. Juliette noted that this is ultimately in everyone's interests as developers enter into agreements with their eyes open and understand the commercial agreement they are signing up to.

She explained that IP rights are typically structured whereby the classic gaming IP rights such as trade marks and copyright belong to the publisher but ownership of the game engine and any associated patents remains with the developer (although the developer would of course want to take an unrestricted licence which would cover use in any sequels).

In Juliette's view, patents aren’t suitable for the game industry as they are expensive and time consuming and involve a public disclosure which many gaming companies are unwilling to share. [Ross Dannenberg, another panelist, who described himself as making his living patenting games was less convinced with this approach!]  She considered that it's best to use trade secrets law to protect games but was aware of the obvious downside to this approach i.e. there is no sharing of ideas.  The inevitable question: do we need a new IP right was raised but there was little appetite for complicating the available IP rights in games even further.

Canon Pence (Epic Games), noted that ownership of rights is simply a matter of negotiation. Once developers have more money they will hire counsel who know what they’re doing and thus keep a larger slice of the rights. He has similar concerns regarding software patents, particularly with them being used in an aggressive way to stifle development. One important concern was due to the lack of a copying requirement for patents. He discussed the controversies around policing content on the platform, particularly where to draw the line as far as preventing the copying of real world items is concerned.

Ross Dannenberg (Banner & Witcoff, Ltd) discussed the 10 types of lawsuit that have shaped the games industry in the US.  Watch out for a separate IPKat post on this.

P.S. Products' Design Patent D561,294

The "brass knuckles" virtual item

Before getting into the detail of these decisions, he started with a bonus example of a US law suit based on the issue Canon raised regarding real world items. Activision was sued for design patent infringement for using a game item which was also a brass knuckles with a built in taser. The two designs didn’t look similar and the judge recently dismissed the lawsuit on a summary judgment on the basis that no one would confuse a real world item like brass knuckles with a video game (see here for more details).

This suggests that it will be hard for third parties to rely on design patents in the US to stop real world items being used in games.

Alexandre Rudoni (A&O) considered in game content on the basis of French case over GTA 4. He described how was that the game included the opportunity to obtain a car that bore a striking similarity to a Ferrari. Ferrari S.p.A. was concerned about their brand image being damaged as a result of the game and issued proceedings in 2010 based on registered design infringement, copyright infringement, unfair competition and free riding.  The first instance just found infringement but this was reversed on appeal based on the appeal judges' view that the public would clearly recognise that there was no affiliation - this was despite evidence of player confusion/association. In 2017, the French Supreme Court confirmed the appeal court's decision.  France is often seen as more rightsholder friendly so if Ferrari could not succeed in France it is a good sign for the game industry that this sort of real world "inspiration" will be acceptable elsewhere in Europe.

Kostantyn Lobov (Harbottle & Lewis) - discussed the removal of the requirement that trade marks must be graphically represented on 1 October 2017 with the EUTMR coming into force. This has led to a flurry of multimedia trade marks being filed at EUIPO including one for a 25 second clip from Sniper Elite in classes 9, 28 and 41 (EU trade mark number 017282203).  The mark was filed on the first day the requirement for graphical representation was removed but (unsurprisingly) is still being examined.  The mark in question is the entire video below.  It includes some fairly gory images so more squeamish readers should resist the temptation to press play!

Whether the EUIPO will consider this clip to be a distinctive sign remains to be seen but even if it makes it to publication, it will need to get through the opposition phase.  Further, even if granted, it is vulnerable to a non-use claim in five years.  As someone in the audience pointed out, even if the mark is successfully registered, it will be very difficult to rely on the mark in infringement proceedings as having similar gameplay within a game will not be enough to infringe the mark.  In Konstantyn's view, they may be helpful in persuading third party platforms to take down similar content.  Whether this will work in practice remains to be seen (assuming any multimedia marks are actually granted for games!)

As Konstantyn noted, these types of marks may be more useful for mobile gaming as the game play elements tend to be simpler.