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3 June 2024

Beyond copyright and Hollywood: IP rights in gaming media

When it comes to the entertainment industries, everyone is aware of the importance of copyright from headline grabbing Hollywood court cases. It is easy to see why when blockbuster hits like Disney’s Pirates of the Caribbean franchise is sued for copyright infringement. With revenue from the franchise being $4.5 billion, it indeed makes the Californian Circuit court case[1] a game of high stakes. With revenue from the gaming sector being multiples of that of Hollywood, gaming studios are all too aware of the importance of ascertaining their rights in coding by copyright.

Notwithstanding the above, other forms of IP play just as an important role when it comes to commercialising a new game, and it is vital to take a holistic approach to best protect all your IP rights. The collaborative effort that goes into the making of a modern game inevitably creates a nexus of IP rights that include database rights, patent, trade marks, designs, literary works, and artistic performances to name but a few.

Trade marks

A registered trade mark provides a monopoly right over a mark and the corresponding registered goods. The registered right provides a more robust cause of action to prevent third parties from using a confusingly similar mark for similar goods when compared to the tortious claim of passing-off.

A trade mark registration for just the game title cannot protect the entire game, and without consideration given to the wider context in which logos, icons, and villains and protagonists are commercialised, gaps in protection will remain.

A recent example of where thinking further than just registering the game title proved beneficial was in the opposition heard at the EUIPO[2] whereby the owners of the Tomb Raider franchise, at the time Square Enix, exercised their EU trade mark registrations for “LARA CROFT” to prevent the use of “Lora Craft” for ropes by a third party. It is interesting to note that in this case, Tomb Raider’s owners lost on the grounds of likelihood of confusion as their registration did not have goods that were similar to ropes. However, the opposition was also based on the “LARA CROFT” mark having a reputation owing to its extensive use in film and popular culture.  Marks with a reputation extend the scope of protection to prevent use to a wider set of goods where the average consumers could draw a mental link to these otherwise unsimilar goods.  In this case, the EUIPO ruled the average consumer would form such a link. Given Lara Croft’s panache for swinging on ropes through caves and jungles, this would have been an easy submission to make. Along with proving the remaining particulars of the cause of action for marks with a reputation, the “Lora Craft” mark was ultimately prevented from being registered on that ground.

Design rights

Registered design rights offer monopoly rights over 2D and 3D shapes. It is easy to see the pertinency of this when it comes to gaming and its rich design process. UK and EU design law indeed recognises this with the protection of GUIs and HUDs falling under the bolded in the non-exhaustive list of design items able to be protected by design registration:

any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product[3].

For more information on design rights, in particular on GUIs, see here.

Confidential information

Not an IP right per se because confidential information is not considered property, but like with IP rights, trade secrets in the form of confidential information can be critical in terms of commercialisation. For example, the information associated with gaming algorithms and game development notes may be protectable under contract or tort and provide your company crucial competitive advantages. For the information to qualify as confidential, it must pass the three-stage test as set out in case law[4]:

  1. the information must possess the quality of confidentiality
  2. the information must have been imparted in circumstances importing an obligation of confidence
  3. there must have been unauthorised use of that information to the detriment of the owner of the confidential information.

For more information on confidentiality, see here.

Patents

Patents provide monopoly rights over novel inventions. Although UK patent law[5] provides that computer programs “as such” are excluded from patentability, it is possible to obtain such registered patents where the software provides a technical solution to a technical problem. Therefore, a modern game, which is effectively a program with a set of rules executed by hardware, may contain patentable subject matter where a new technical solution has been developed. In addition to software patentability, there may also be patentable subject matter in auxiliary gaming equipment.  In 1983, Nintendo patented the now ubiquitous d-pad[6], and more to the present, there are more than 10,000 VR related patent applications.

Conclusion

The Tomb Raider case exemplifies how looking beyond just registering a gaming title as a trade mark helped protect the key character’s reputation by preventing third parties taking unfair advantage.  But as this article goes on to show, other forms of IP should also be carefully considered.

[1] Alfred v Walt Disney Co., 2020 United States Court of Appeals for the Ninth Circuit No. 19-55669

[2] Square Enix Newco Limited v Wuhan Shuncheng Electronic Commerce Co., Ltd. 2023 EUIPO Opposition Division Nо B 3 180 999

[3] Registered Designs Act 1949 s1(3)

[4] Coco v AN Clark (Engineers) Ltd 1969 RPC 41

[5] The Patents Act 1977 s1(2)

[6] United States Patent Number US4687200

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