Fighting the good fight against game copycats

While success in the games industry is a great achievement, it’s not without its drawbacks. The more notoriety your games get, the more likely it is that you’ll fall victim to copycats.

This is particularly apparent in the mobile games app stores. This cloning can have very detrimental effects on a company’s bottom line. It can also potentially lead to the revocation of trademark rights.

In this post, I’ll discuss a few steps that can be taken to cut down on these copycats from a trademark perspective. Next week, we’ll look at what can be done to protect copyrights.

The need to monitor your trademarks

If you’ve developed valuable business goodwill due to a game title or series of titles, this is protectible by a federal trademark registration (along with international registrations for global brands). One responsibility of a trademark holder, however, is the ongoing need to police the brand.

This policing can include a few things, such as ensuring quality when licensing the trademark and avoiding genericide. One of the big responsibilities, though, is stopping those who are infringing on your famous mark. If you, as the trademark holder, don’t actively try to stop others from using confusingly-similar marks, those rights may be lost.

So this means that a cornerstone of any company’s intellectual property strategy should be a regular search of the Internet, app stores and other software repositories for goods or services that could potentially confuse consumers. If you catch them at the start and begin taking care of it soon, the cost of dealing with it can be much lower than if you let the problematic usage persist.

What can be done about infringing trademarks?

There are a few steps that can be taken to shut down infringing marks when you find them. These range from quick and inexpensive to long, drawn-out and potentially very expensive.

Cease and desist letters

The first line of defense in trademark infringement cases is usually to send a cease and desist letter. This is a letter to the infringer that explains:

In many cases, this letter (preferably from an attorney to give it the weight of legal authority) is enough to scare off the infringer. However, if this doesn’t work, further action should be taken.

Co-existence agreements

In situations where another entity is using a confusingly similar trademark in a way that isn’t quite infringing, such as in another class of goods, it may be a good idea to put a stop to any potential future infringement. This is done by using a written agreement signed by both parties, called a “co-existence agreement.”

A co-existence agreement basically states that, going forward, the two parties will not overlap in their usage of the mark. It could be that an animated cartoon agrees not to create a digital game out of their IP or any other possible crossover. The fact that the agreement was signed is evidence that the trademark holder took steps to protect their brand, as well.

Platform-specific takedown procedures

When confusingly similar titles pop up on the various game and app platforms, there may be good news. If the letter doesn’t work and a co-existence agreement isn’t appropriate (because the games are the same type of goods), it may be time to take legal action.

The most painless way to do this, for the most part, is to use the procedures built into many of the various game publishing and purchasing platforms. Other sites also have similar procedures, so if the infringing game maker also created a Facebook page for their game, you can attempt to take that down too.

Ultimately, it is up to the platform or internet service provider to follow through with the takedown. But if you have a legitimate case, there is a good chance that access to the infringing content will be removed.

Filing a lawsuit

If none of the above actions solve the trademark infringement issue, the next step may be to file a lawsuit against the infringer.

This could also be broken down into steps, with each step giving the other side a chance to settle and take down their infringing game. For instance, you could draft a complaint and send it to the infringer with a letter that says you are ready to file this if they don’t cease their infringement. You could file the complaint and offer to drop the suit if they cease their use of your mark (and possibly cover those attorneys’ fees you’ve already racked up).

Moving forward

In order to file a federal trademark lawsuit, you have to have a federal trademark registration. That’s one of the many benefits of registration and a good reason to get it registered BEFORE the infringers start showing up.

For ongoing assistance in policing your valuable IP portfolio, why not contact a game lawyer? I’m offering a “virtual” in-house counsel service to provide flexible and responsive enforcement of your game copyrights and trademarks without having to have your own in-house legal department.