Intellectual Property: The Game of Swords and Shields

This article is a summary of general principles of patent, copyright, trademark and trade secret law. It is intended as a supplement to the intellectual property rights and remedies presentation at the 2002 Game Developers Conference. The summary necessarily contains generalizations that may be subject to unstated qualifications. It does not constitute legal advice. Legal representation should be obtained in the event you have specific questions relating to a covered topic.

The Game Developers Conference presentation will address particular areas of intellectual property of particular relevance to the independent game developer who seeks to enforce or defend rights encompassed in the array of ideas, storylines, audiovisual elements, characters, names, titles, logos, art, music, text, dialogue, software and products that make up a video game. The available intellectual property choices and strategies are best understood in the context of the operative legal rules. This summary distills the large body of law organized under the heading of intellectual property.

Overview

Patents, trademarks, copyrights and trade secrets present variations on the theme of securing ownership rights to a wide assortment of intangible creations such as inventions, writing, music, drawings, paintings, sculpture, photography, designs, software, brands and the like, known collectively as intellectual property. Each form of intellectual property has its own set of detailed principles and procedures governing protection and enforcement. The rights afforded by each, although distinct, often can be used in combination to secure significant legal protection. Equally, it is important to understand these rights to avoid accusations that you have violated the intellectual property of others.

A patent protects certain inventions having a utilitarian function. The owner of a patent has rights superior to all subsequent inventors, but for a limited term of 20 years (17 years for patents issued prior to June 8, 1995). The rights to an invention are not protected from use by others unless a patent is obtained from the United States Patent and Trademark Office (USPTO). A patent contains full public disclosure of the invention.

Conversely, an invention or other confidential information can be maintained indefinitely as a trade secret. The owner of a trade secret can preclude others from disclosing nonpublic information obtained from the owner, but the owner cannot stop independent discovery and use of such information. It is said the Coca Cola Company elected to keep its syrup "formula" secret rather than obtain a patent because the patent would have only a limited term, after which anyone could use the formula disclosed in the patent. A patent does not protect ideas, only the embodiment of an idea in a new and useful device or method. A trade secret can be used to protect the idea itself from use by others. The protection accorded trade secrets is a matter of federal and individual state laws, the latter of which often are modeled upon the Uniform Trade Secrets Act.

A copyright protects creative expression in any medium. As with patents, it does not protect the idea expressed. The text of the play Romeo and Juliet would be subject to copyright if written today, but its idea of lovers doomed by interfamily prejudice would not preclude the same theme in the musical West Side Story. A copyright protects against only actual copying; therefore, another person can claim rights to identical expression so long as it was not copied. Theoretically, two people working without knowledge of each other could paint the same picture, write the same software, or take the same photograph. Each could copyright their creative work. The concept of copyright "expression" does not include individual words, names or titles. The duration of a copyright currently is the life of the author/artist plus seventy years or a fixed period for anonymous or corporate authors. It is not necessary to register a copyright, although important enforcement benefits are conferred. Copyright registration is the statutory responsibility of the United States Library of Congress.

A design patent relates to one form of artistic expression, namely nonfunctional ornamentation. An example is Mack Truck's three-dimensional "Bulldog" hood ornament. Toy action figures may be the subject of design patents. Like a utility patent, a design patent must be obtained from the Patent and Trademark Office. It lasts for 14 years. Unlike a copyright, which also covers artistic ornamentation, the owner of a design patent can prevent others from using the design even if they create it without copying.

A trademark is any word, symbol or device that serves to identify the source or origin of particular goods or services. MARRIOTT, McDONALDS, and MICROSOFT are examples of famous word marks. The "golden arches" in the shape of the letter "M" of McDonalds Corporation is a design trademark. Unlike a copyright, a trademark can be obtained for a word or title, as long as the word or title signifies the source of the product. For example, the words "star wars" cannot be copyrighted as the title of a book or film, but they can serve as a trademark for a series of films and for merchandise related to the Star Wars movies. (The content of the Star Wars films, including such things as characters, costumes, dialogue, and music, is protectable by copyright.) The first to use a trademark is the owner. It is not necessary to register a trademark to secure exclusive rights but, as with a copyright, registration confers significant benefits. The Patent and Trademark Office registers trademarks, as do the individual states. The federal trademark law is known as the Lanham Act. A trademark lasts as long as it is in use to identify the source of goods or services. A federally registered trademark is renewable every 10 years as long as the mark continues in use.

Patent Law

American patent law is based on the United States Constitution and a federal statute, the
Patent Act, as amended. There is no applicable state law.

Types of Works Protected
Patent law protects inventions and processes ("utility" patents) and ornamental designs ("design" patents). Inventions and processes protected by utility patents can be "any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof. . . ." Products of nature and physical phenomena are not patentable. Recently, inventors have applied for so-called "business method" patents covering such computerized activities as Amazon.com's "1-Click" purchase system and Priceline.com's system for submission of binding offers to competing sellers. Concern about the proliferation of business method patents resulted in the passage of the American Inventors Protection Act of 1999 providing enhanced defenses to method patent lawsuits. The patentability of computer software, which is comprised of "mathematical algorithms," is now settled. A mathematical algorithm is not patentable subject matter to the extent that it is merely the embodiment of an abstract idea. However, the practical application of a mathematical algorithm to achieve a useful, concrete, and tangible result is patentable subject matter. Hence, software that enables a processor to convert data into animated figures on a screen-e.g., a video game-comprises patentable subject matter.

In contrast to utility patents, design patents cover only nonfunctional aspects of a product, such as a design for silver tableware or the Academy of Motion Picture Arts and Sciences "Oscar" statuette. Other specialized patents cover certain hybrid plant varieties and the design of computer chips.

Standards
To qualify for a utility patent, an invention must be new, useful and nonobvious. To satisfy novelty, the invention must not have been known or used by others in this county before the patent 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 utility criterion is easily met. The invention must have some practical use and not be merely frivolous. Efforts to secure a patent for the ever-illusive perpetual motion machine fail because they have yet to achieve perpetual motion. To meet the nonobvious requirement, the invention must be sufficiently different from existing technology and knowledge so that, at the time the invention is made, the invention as a whole would not have been obvious to a person having ordinary skill in that field.

To qualify as a design patent, a design must be new, original and purely ornamental.

Procedure
Patent protection is obtained by demonstrating in an application filed with the Patent
and Trademark Office that the claimed invention meets the stringent standards for grant of a patent. Even if the invention or process appears to satisfy 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 United States or abroad 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. The inventor may have no knowledge of the publication or other use, but that is not a defense. A design patent, on the other hand, has attributes of a copyright in that it covers nonfunctional, ornamental aspects of an object that are the applicant's original creation. It is easier to obtain, but is considered relatively weak and difficult to enforce.

Ownership
The inventor is the owner of the patent. A patentable invention created by an employee within the scope of his or her employment is owned by the employee. (Contrast this with copyright ownership rules discussed below.) However, an employee may have a legal obligation to transfer ownership to an employer under patent law's "hired to invent" doctrine. The subject of ownership of employee inventions, as well as other forms of intellectual property, should be addressed in a written employment agreement signed by the employee at the outset of employment.

Exclusive Rights
A patent owner has the right to exclude others from making, using, or selling the patented invention or design in the United States during the term of the patent. A person can infringe the patent even if they did not copy the patented invention or even know about it. A patent covers not only the exact invention claimed but also its functional equivalent that achieves the same result by comparable means.

Duration
A utility patent is granted for 20 years from the date of patent issuance. The previous period was 17 years. There are statutory provisions to extend duration for inventions whose approval is delayed by certain Patent and Trademark Office or Food and Drug Administration action. A design patent is granted for 14 years. Once the patent on an invention expires, anyone is free to make, use or sell the invention or design. Moreover, the patent supplies a detailed description of the invention, facilitating its lawful copying once the patent expires.

Notice
Although not required, notice of a patent may be indicated on a product by the statement that it is patented or by printing the patent number and date on the article or affixed label. There is no patent notice symbol as such.

International Scope
The oldest and most important international treaty on intellectual property is the International
Convention for the Protection of Industrial Property originally signed in Paris in 1883 (Paris Convention). The Paris Convention covers patents, industrial designs, trademarks, trade names and unfair competition. It requires each signatory nation to protect the intellectual property of foreign nationals to the same extent and under the same conditions as that nation protects the intellectual property of its own nationals. The Paris Convention also provides priority rules that enable a filing in one signatory nation to relate back to an earlier filing in another. The Patent Cooperation Treaty goes further and creates an international patent filing system under which patents filed in national and certain regional patent offices may eventually mature into patents in any one or more of the signatory countries. The European Patent Convention establishes a European Patent Office as a single place to file patent applications for member countries.

More Information
The Internet site of the United States Patent and Trademark Office is www.uspto.gov. It contains information, instructions, fees and forms.

Copyright Law

American copyright law is based on the United States Constitution and a federal statute, the Copyright Act of 1976, as amended. There is no applicable state law.

Types of Works Protected
Copyright law protects "original works of authorship," specifically including literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; sound recordings; and architectural works. Software code is considered a work of authorship. The subject matter of copyright includes compilations and derivative works. Copyright protects most multimedia works-e.g., video games-- which are audiovisual works, compilations, or derivative works, or a combination of these. In addition, copyright protects the underlying computer software which implements a multimedia work, as well as the "look and feel" of the user interface in a multimedia work. The Copyright Act expressly states: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery . . . ." It is also impossible to copyright facts apart from the original expression of the facts.

Standards
There are two criteria that must be met for copyright protection: originality and "fixation in a tangible form." The originality threshold is low. The work merely must be the author's own product and not copied. The crucial element of fixation is that there is a physical embodiment of the work. It is irrelevant that the images cannot be viewed without a machine, such as a computer or CD. Unfixed works, such as an untaped live broadcast, are not subject to federal copyright protection. The text of Martin Luther King's "I Have A Dream" speech is copyrighted because it was written in advance. His actual delivery (performance) of the speech is separately copyrighted because it was recorded on film. Had it not been fixed on film, the delivery of the speech could not be copyrighted. The official speeches of government officials are public works that cannot be copyrighted. President Lincoln could not copyright "The Gettysburg Address."

Procedure
Copyright protection exists for any qualifying work without formal action. It is unnecessary to obtain a copyright registration from the Library of Congress in order to claim copyright protection. However, suit to enforce the copyright may not be brought until the copyright is registered. Moreover, the remedies of statutory damages (no less that $500 nor more than $20,000 for each violation as the court determines is just) and attorneys' fees are only available for infringement occurring after registration. Only injunctive relief and actual damages are available for infringement occurring before registration. Registration requires completion of a copyright registration form along with the registration fee (currently $30) and two copies of the work.

Ownership
Ownership of copyright initially belongs to the author or authors of the work. The "author" is generally the individual who created the work, but there is an exception for "works made for hire." The author of a work made for hire is the employer or hiring party for whom the work is prepared. A work created by an employee within the scope of his or her employment is a work made for hire. If outside the scope of employment, the author is the employee unless there is a written agreement giving the employer rights. For specially ordered or commissioned works, the work is only a work made for hire if there is a written agreement so providing and the work falls within one of eight special categories of commissioned works (e.g., translations, compilations, part of a motion picture or other audiovisual work). Where there are two or more authors, and in the absence of a written agreement, each is a joint owner can use or license the work without the consent of the other owner provided the use does not destroy the value of the work.

Exclusive Rights
A copyright owner has five exclusive rights in the copyrighted work: reproduction right (copy, duplicate or imitate); modification right; distribution right; public performance right; and public display right. A visual artist's "moral rights" to object to improper attribution of authorship and to require others to respect the integrity of the work is recognized in the Visual Artists Rights Act of 1990. Nonvisual artists, including creators of literary, musical and audiovisual works, are not covered by this law. They must find protection through other means such as contract. The "fair use" of a copyrighted work, including use for purposes of criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright. What is a fair use depends upon a balancing of factors applied to the particular facts of each case. Another exception to copyright infringement is the so-called "first sale" doctrine that terminates the copyright of the author in a specific embodiment of the work, such as a book, upon the initial sale of the work. The new owner is thereafter free to use, lend, display or sell the work. A number of states have enacted versions of the Uniform Computer Information Transactions Act (UCITA) relating to licensing of computer software. UCITA significantly limits the first-sale doctrine by permitting copyright owners to restrict the rights transferred to a "license" rather than outright sale.

Duration
The duration of a copyright depends upon the date the copyright was created because statutory changes over the years have created differing rules. Under current law, the copyright term for works created by an individual on or after January 1, 1978, is the life of the author plus 70 years. Anonymous works and works made for hire have a term of 95 years from the date of first publication, or 120 years from the date of its creation, whichever is sooner. Pre-1978 copyrighted works in their first term of copyright under the prior statute are granted a 75-year copyright term from the date of registration of the work.

Notice
The use of copyright notice is optional for works distributed after March 1, 1989. Copyright notice is beneficial to establish willful infringement. It can take any of these three forms: © followed by a date and owner's name; "copyright" followed by date and name; or "copr." followed by date and name. It is also customary, but not required, to add such words as "all rights reserved."

International Scope
The United States is a member of The Berne Convention for the Protection of Literary and Artistic Works, an international copyright treaty for the protection of works of authorship administered by the UN World Intellectual Property Organization (WIPO). The Berne Convention is based on principles of national treatment with the result that copyright registration is done on a country-by-country basis. Signatory nations to the Berne Convention agree to uphold the copyright of foreign authors pursuant to their respective national copyright laws. Nonetheless, enforcement vigor varies considerably among member nations. The North American Free Trade Agreement (NAFTA) provides multilateral copyright protections among the United States, Canada and Mexico.

More Information
The Internet site of the United States Library of Congress is www.loc.gov. It contains registration forms, instructions, and other useful information.

Trademark Law

American trademark law is based upon the common (judge-made) law, the federal Lanham Act, and various state laws.

Types of Works Protected
Any word, symbol, name, slogan, picture, design, shape, color, sound or smell that
serves to identify the source or origin of goods or services can be a trademark. There are actually four types of trademarks. A trademark is a mark (brand, logo) used on goods (e.g., DELL for computers and peripherals). A service mark simply is a mark used in connection with services (e.g., ROCK OF GIBRALTAR symbol for insurance and investments). A certification mark is used by the owner to certify qualities or characters of the goods or services of others (e.g., VIDALIA for onions grown exclusively in Vidalia, Georgia). A collective membership mark is used by the owner to signify membership in a group or organization (e.g., TEAMSTERS for a labor union). This Guide discusses only trademarks and service marks, and refers to them collectively as trademarks.

Standards
The word, name, symbol or device must be capable of distinguishing the owner's goods or
services from the goods or services of others. There are four categories of trademarks that are subject to varying degrees of protection. In ascending order of strength:

Arbitrary and suggestive marks can be a trademark immediately upon use. A descriptive mark can only be a trademark after some period of exclusive use in which the mark acquires a "secondary meaning" in the minds of consumers apart from its descriptive connotation. It was on this basis that Microsoft Corporation ultimately prevailed in its effort to register WINDOWS for computer operating systems using "window" information panels. Generic terms can never serve as a trademark, no matter how long in exclusive use. An example is the unsuccessful effort by Miller Brewing Co. to use "Lite" as a trademark for low calorie beer. A term originally valid as a trademark can become generic through indiscriminate public use. "Cellophane," "aspirin," "thermos," "refrigerator," and "Murphy bed" are among famous examples of lost trademarks.

Procedure
Trademark rights are created by adoption and use of a distinctive mark or brand. The most effective trademark protection is obtained by filing a trademark registration application in the U.S. 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 used. To qualify for federal protection, the trademark must be used in interstate commerce. Federal registration is available not only for trademarks in current use in interstate commerce but also for trademarks whose owners have a bona fide intent-to-use the mark at a future date in commerce. Registration will not be granted until the trademark is in actual use. The current fee for federal registration for each category of goods or services is $325. State trademark protection exists under common law simply by adoption and use. Protection is limited to the area of actual use within the state. State statutory registration is also available.

Ownership
A trademark is owned by the first party to use it in connection with goods or services, or the first to apply to register it under the federal intent-to-use procedure if the mark was not previously in use.

Exclusive Rights
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 any way that is likely to cause confusion or mistake or to deceive is an infringer. The trademark owner can obtain injunctive relief and damages against the infringer. If the trademark is not registered, then the geographic area of exclusivity is the actual area of use and any adjacent area of natural expansion. A key advantage of federal registration is that it expands the geographic area to nationwide protection regardless of the area of actual use. State registration extends the borders of protection statewide. Federal registration also confirms advantages of additional enforcement remedies, including treble actual damages and attorneys' fees in appropriate cases. Congress enacted the Anti Cybersquatter Protection Act in 1999 to afford protection to the owners of trademarks from the bad- faith registration of the same or confusingly similar designation as a domain name.

Duration
A trademark continues as long as it remains in use. Federal registrations are subject to
renewal every 10 years from the date of issuance. The duration of state trademark registrations varies by state.

Notice
While notice of trademark ownership is not required, it is advisable and aids in the
establishment of willful infringement. Only a trademark for which federal certificate of registration has issued may use the notice symbol of ®. All other trademarks, including state-registered trademarks use the superscript letters "TM" for trademarks and "SM" for service marks.

International Scope
The Paris Convention provides for reciprocal treatment of trademarks and priority filing dates among signatory countries. However, it is necessary to apply for trademark registration in each such country in which the trademark is in use. The United States is not a party to the Madrid Agreement Concerning the International Registration of Trademarks (Madrid Convention), the principal international agreement pertaining to trademarks. The Madrid Convention provides for international registration of trademarks in the International Bureau of WIPO (World Intellectual Property Organization), a UN agency. The North American Free Trade Agreement (NAFTA) provides multilateral trademark protections among the United States, Canada and Mexico.

More Information
The Internet site of the United States Patent and Trademark Office is www.uspto.gov. It contains information, instructions, fees and forms.

Trade Secret Law

Trade secret law is governed by the individual states. A growing number of states have enacted versions of the Uniform Trade Secrets Act.

Types of Works Protected
The Uniform Trade Secrets Act (UTSA) defines "trade secret" as information, including but not limited to, a formula, pattern, compilation, program, device, method, technique, or process, that:

Standards
Under the UTSA definition, any type of information of any subject matter can be a trade secret. Unlike copyright, there is no requirement that information exist in some tangible form in order to be a protectable trade secret. Nor does the trade secret have to be novel, original or creative. Instead of novel, the information must be secret. Secrecy is the crucial factor in most cases. Most clearly, information generally known to the public is not entitled to trade secret protection. The general business experience, memory, and skill that inure to an individual over the course of employment also cannot be claimed as a trade secret. Matters which are completely disclosed by the goods are not be deemed to be secret if determinable upon inspection. The owner of a trade secret may disclose it to others, so long as disclosure is accompanied by an enforceable pledge of secrecy. There is a secrecy test has two prongs: (1) whether the information is generally known or available; and (2) whether the trade secret owner takes affirmative steps to safeguard the confidentiality of the information. Customer lists present a special case. They are likely to constitute trade secrets in situations in which the trade secret owner can demonstrate that customers are not generally known and that the customer list is not one that may be compiled easily from a telephone directory, trade association member list, or other readily available public documents.

Procedure
There is no registry or other direct government regulation of trade secret information.

Ownership
An employer or hiring party generally owns trade secrets developed by employees and by independent contractors who are hired to invent or create such information. Explicit language protecting the employer's trade secrets in employment contracts is highly recommended.

Exclusive Rights
The UTSA protects trade secrets from "misappropriation." Misappropriation is defined in the Act to cover situations in which the information is knowingly acquired, disclosed or used by improper means. "Improper means" is not defined in the UTSA, but would include acting without the consent of the trade secret owner and using the information in a manner adverse to the interests of the owner.

Duration
A trade secret lasts as long as it meets the definitional test. The UTSA provides a 3-year statute of limitations in which to sue for misappropriation.

Notice
There is no notice practice given the secret nature of the trade secret. Internal procedures within an organization to assure maintenance of trade secret treatment is advisable by stamping documents and restricting access.

International Scope
There are no multinational treaties or agreements specifically pertaining to trade secret law.