IP Jiu-jitsu: a self-defence class for developers Vincent Scheurer Sarassin LLP London vincent@sarassin.net © Sarassin LLP 2006

Introduction Speaker Games industry legal consultant based in London Industry experience since 1997

Disclaimer! This is not legal advice

Purpose of this lecture Self defence … … against accidental infringement Four parts: Introduction to IP rights in games Consequences of infringement Common examples in the games industry Practical steps: the moves Questions

So why is this important? Rising costs of development, particularly for next-gen projects Increased stakes mean increased risks Risks are transferred to developers Developers (and their insurers) are keen to mitigate those risks as much as possible

Part 1: IP rights Copyright Trade marks Patents Confidential information Miscellaneous

Copyright Protects creative works Allows the author of a work (such as a computer program) to stop other people from copying or distributing her work to the public

Trade marks Protect brand names and logos (and their associated reputations) Allow the owner of a trade mark (such as a logo or brand name) to stop other people from trading under his trade mark

Patents Protect inventions (such as the electric light bulb) Allow an inventor to monopolise a new invention (such as the electric light bulb) for a limited period of time

Confidential information Protects trade secrets (such as technology processes and customer lists) Allows one person to stop others from using his trade secrets (including ideas) Not strictly an “IP Right”

Miscellaneous Design rights, moral rights, personality rights, publicity rights, privacy rights, authors’ rights, passing off, unfair competition … Different countries, different laws

Part 2: Consequences IP rights are “property” Western society is based on the respect for property: “that sole and despotic dominion which one man claims and exercises over the external things of the world, in total exclusion of the right of any other individual in the universe” (Blackstone, 1763) No defence of accident or good faith

In practical terms: Damages Punitive damages Profits Product recall Landfill in Nevada Criminal liability Seizure of equipment

Part 3: Common examples Former employers Real world Open source Accident Weak content partner

Example 1 Rights belonging to a former employer Usually code Could include confidential information

Example 2 Deliberate (but unauthorised) use of a feature of the real world Buildings Cars or other vehicles Weapons People Advertising hoardings

Example 3 Open source Breach of open source agreement by developer or publisher

Example 4 Accident Trade marks Real names Patents

Example 5 Weak content partner Outsourcing company Middleware

Part 4: The moves Offence Defence

Moves: offence Know the rules, the consequences and the examples Train all staff Staff should have a complete, coherent overview Create internal sign-off system Single, named contact with responsibility for all external content

Moves: offence (continued) Investigate all content providers Credit Internal training and clearance processes Experience Insurance

Moves: offence (continued) Allocate risk properly in all contracts Warranties Indemnities Limitations of liability (including “as is” disclaimers) Applies to: Publishing agreements Middleware agreements Outsourcing / subcontractor agreements

Moves: offence (continued) Search the web Trade mark and registered design databases http://webdb4.patent.gov.uk/tm/text http://www.uspto.gov/ Google Character names Worlds Weapons Gamasutra and other news outlets

Moves: offence (continued) Keep dated records Concepts, design documents, code, assets – everything Contracts

Moves: offence (continued) Sanity check a completed game Separate person Works with publisher’s clearance processes

Moves: offence (continued) Hollywood disclaimer: any similarity between persons living or dead and characters in this game is entirely coincidental Use NDAs to protect your own position Create written policy of all “dos and don’ts” Insure

Moves: defence Take particular care in high risk areas (sports, movies and the real world in general) Don’t copy or use (or come close to copying or using) known logos, people, music or scenarios unless this is formally approved Don’t use a former employer’s code or trade secrets

Moves: defence (continued) Don’t use ideas volunteered by the public Don’t suggest specific sources of inspiration

Moves: defence (continued) Don’t sign onerous third party NDAs unless absolutely necessary Don’t sign submission agreements unless absolutely necessary Don’t use ideas that are the subject of known disputes (e.g. gameplay ideas covered by existing patent litigation)

Principal project stages Project start: identify main risk areas Project duration: apply offence and defence moves Project completion: independent verification Post completion: review the above as part of ordinary post mortem

Principal employment stages Start: communicate rules as part of induction process First six months: IP course Every twelve months: IP refresher Every appraisal: two-way discussion on the application of self defence moves by both the company and the employee

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