Part two in a series of three provided by noted multimedia lawyers, J. Dianne Brinson and Mark F. Radcliffe. Excerpted from the book "Intellectural Property Law Primer for Multimedia and Web Game Developers".
August 19, 1997
Author: by Dianne Brinson
While copyright law is the most important intellectual property law for protecting rights in multimedia works, a game developer needs to know enough about patent, trademark, and trade secret law to avoid infringing intellectual property rights owned by others and to be able to take advantage of the protection these laws provide.
Works Protected
Patent law protects inventions and processes ("utility" patents) and ornamental designs ("design" patents). Inventions and processes protected by utility patents can be electrical, mechanical, or chemical in nature. Examples of works protected by utility patents are a microwave oven, genetically engineered bacteria for cleaning up oil spills, a computerized method of running cash management accounts, and a method for curing rubber. Examples of works protected by design patents are a design for the sole of running shoes, a design for sterling silver tableware, and a design for a water fountain.
Obtaining Patent Protection
There are strict requirements for the grant of utility patents and design patents. To qualify for a utility patent, an invention must be new, useful, and "nonobvious." To meet the novelty requirement, the invention must not have been known or used by others in this country before the applicant invented it, and it also must not have been patented or described in a printed publication in the U.S. or a foreign country before the applicant invented it. The policy behind the novelty requirement is that a patent is issued in exchange for the inventor's disclosure to the public of the details of his invention. If the inventor's work is not novel, the inventor is not adding to the public knowledge, so the inventor should not be granted a patent.
To meet the nonobviousness requirement, the invention must be sufficiently different from existing technology and knowledge so that, at the time the invention was made, the invention as a whole would not have been obvious to a person having ordinary skill in that field. The policy behind this requirement is that patents should only be granted for real advances, not for mere technical tinkering or modifications of existing inventions.
It is difficult to obtain a utility patent. Even if the invention or process meets the requirements of novelty, utility, and nonobviousness, a patent will not be granted if the invention was patented or described in a printed publication in the U.S. or a foreign country more than one year before the application date, or if the invention was in public use or on sale in the U.S. for more than one year before the application date.
Scope of Protection
A patent owner has the right to exclude others from importing, making, using, or selling the patented invention or design in the United States during the term of the patent. Anyone who imports, makes, uses, or sells a patented invention or design within the United States during the term of the patent without permission from the patent owner is an infringer - even if he or she did not copy the patented invention or design or even know about it.
Example: Developer's staff members, working on their own, developed a software program for manipulating images in Developer's games. Although Developer's staff didn't know it, Inventor has a patent on that method of image manipulation. Developer's use of the software program infringes Inventor's patent.
Utility patents that were either issued or filed before June 7, 1995 were granted for a period of 17 years after issuance but a change in the law gave them a potentially longer term. For patent applications filed after that date, patents are issued for the term of 20 years after filing date, but that term may be extended under certain circumstances. Design patents are granted for a period of 14 years. Once the patent on an invention or design has expired, anyone is free to make, use, or sell the invention or design.
Trademark Law
Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.
Example: The trademark Myst is used by the Cyan to identify that company's game and distinguish that game from other vendors' games.
For trademarks used in commerce, federal trademark protection is available under the federal trademark statute, the Lanham Act. Many states have trademark registration statutes that resemble the Lanham Act, and all states protect unregistered trademarks under the common law (nonstatutory law) of trademarks.
Availability of Protection
Trademark protection is available for words, names, symbols, or devices that are capable of distinguishing the owner's goods or services from the goods or services of others. A trademark that merely describes a class of goods rather than distinguishing the trademark owner's goods from goods provided by others is not protectible.
Example: The word "corn flakes" is not protectible as a trademark for cereal because that term describes a type of cereal that is sold by a number of cereal manufacturers rather than distinguishing one cereal manufacturer's goods.
A trademark that so resembles a trademark already in use in the U.S. as to be likely to cause confusion or mistake is not protectible. In addition, trademarks that are "descriptive" of the functions, quality or character of the goods or services must meet special requirements before they will be protected.
Obtaining Protection
The most effective trademark protection is obtained by filing a federal trademark registration application in the Patent and Trademark Office. Federal law also protects unregistered trademarks, but such protection is limited to the geographic area in which the mark is actually being used. State trademark protection under common law is obtained simply by adopting a trademark and using it in connection with goods or services. This protection is limited to the geographic area in which the trademark is actually being used. State statutory protection is obtained by filing an application with the state trademark office.
Scope of Protection
Trademark law, in general, whether federal or state, protects a trademark owner's commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services for which the owner is using the trademark. Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion is an infringer. Trademark owners can obtain injunctions against the confusing use of their trademarks by others, and they can collect damages for infringement.
Example: Small Multimedia Co. is selling a line of fantasy games under the trademark Raptor. If Giant Multimedia Co. starts selling games under the trademark Raptor, purchasers may think that Giant's works come from the same source as Small Multimedia's works. Giant is infringing Small's trademark.
Trade Secret Law
A trade secret is information of any sort that is valuable to its owner, not generally known, and that has been kept secret by the owner. Trade secrets are protected only under state law. The Uniform Trade Secrets Act, in effect in a number of states, defines trade secrets as "information, including a formula, pattern, compilation, program, device, method, technique, or process that derives independent economic value from not being generally known and not being readily ascertainable and is subject to reasonable efforts to maintain secrecy."
Works Protected
The following types of technical and business information are examples of material that can be protected by trade secret law: customer lists; instructional methods; manufacturing processes; and methods of developing software. Inventions and processes that are not patentable can be protected under trade secret law. Patent applicants generally rely on trade secret law to protect their inventions while the patent applications are pending.
Six factors are generally used to determine whether information is a trade secret:
The extent to which the information is known outside the claimant's business.
The extent to which the information is known by the claimant's employees.
The extent of measures taken by the claimant to guard the secrecy of the information.
The value of the information to the claimant and the claimant's competitors.
The amount of effort or money expended by the claimant in developing the information.
The ease with which the information could be acquired by others.
Information has value if it gives rise to actual or potential commercial advantage for the owner of the information. Although a trade secret need not be unique in the patent law sense, information that is generally known is not protected under trade secrets law.
Obtaining Protection
Trade secret protection attaches automatically when information of value to the owner is kept secret by the owner.
Scope of Protection
A trade secret owner has the right to keep others from misappropriating and using the trade secret. Sometimes the misappropriation is a result of industrial espionage. Many trade secret cases involve people who have taken their former employers' trade secrets for use in new businesses or for new employers. Trade secret owners have recourse only against misappropriation. Discovery of protected information through independent research or reverse engineering (taking a product apart to see how it works) is not misappropriation.
Trade secret protection endures so long as the requirements for protection - generally, value to the owner and secrecy - continue to be met. The protection is lost if the owner fails to take reasonable steps to keep the information secret.
Example: After Sam discovered a new method for manipulating images in games, he demonstrated his new method to a number of other game developers at a game developers conference without a non-disclosure agreement. Sam lost his trade secret protection for the image manipulation method because he failed to keep his method secret.
This primer is based on the Multimedia Law and Business Handbook (1996) from Ladera Press, which has been praised by the Interactive Multimedia Association. This summary of the law should not be viewed as "answering" most questions (the book discusses these issues in more detail in 320 pages and includes twenty -two sample agreements to show how these issues are dealt with in actual transactions) You can order the book by calling 800-523-3721 or faxing 810-987-3562.
BIOGRAPHIES
J. Dianne Brinson has a Bachelor of Arts in Political Science and Russian, summa cum laude, from Duke University and a law degree from Yale Law School. She is a former tenured law professor at Georgia State University and has taught at Golden Gate Law School and Santa Clara School of Law. She is now in private practice as a consultant in Menlo Park, California. She may be reached at [email protected].
Mark F. Radcliffe is a partner in the law firm of Gray Cary Ware & Freidenrich in Palo Alto (formerly Ware & Freidenrich). He has been practicing intellectual property law, with a special emphasis on computer law, for over fifteen years. He is on the Board of Directors of the Computer Law Association and is the Editor-in-Chief of the "Journal of Internet Law." He can be reached at [email protected].
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