10 Nov

IP Law for Dummies and Game Designers

An apology and a disclaimer: This post is way, way, longer than usual. I’m not a lawyer. You figure out which is the disclaimer.

I quite often come across questions on BoardGameGeek’s Board Game Design forum along the lines of “do I need a patent?”, “if I mail myself the game in a sealed envelope will that give me copyright?” and “can I copy a game?”. Here’s one recent example:

“Just How Different Does a Game Have to Be?”

So, like the subject asks: Just how different does a game have to be, for it to safely comply with intellectual laws? And as far as I’ve described, does it sound like my game is far enough from this book?

Answer #1: Which IP laws? They differ by country and sometimes by state as well.

Answer #2: Not very.

TLDR answer:

IP (Intellectual Property) laws come in three main flavors:

  1. Copyrights, which protects a specific expression of “art”
  2. Trademarks, which protects a specific name and/or logo and
  3. Patents, which protect a specific technical solution to a problem.

There are some more, like Trade dress, but these are the main ones. Until you know these inside out you don’t need to worry about learning the special cases.

Copyright

Copyright_SymbolCopyright is what most of the fuss is usually about when people talk about IP infringement. That’s what pirating music or movies runs afoul.

Copyright only protects the expression, not the content. So it protects a particular string and combination of notes or a particular painting, but not “songs about love” or “pictures of flowers”. If two painters paint a picture of the same flower neither is infringing on the other’s copyright. If, however, a photographer takes a picture of a painting he’s infringing on the painter’s copyright. On the other hand if an artist paints a picture of the picture he isn’t infringing (if he’s only using the original picture for inspiration, if he’s copying it by the numbers he is infringing).

Since copyright only protects expression, not content, you can take an existing game, rewrite the rulebook from scratch, use different art and different graphic design and you’re in the clear regarding copyright. This is one of the reasons why so many different clones of Monopoly by different companies can exist (as long as they don’t run afoul of trademarks, more on that below).

A note for computer game designers: the thing protected by copyright in a computer game is the art, music and code. That’s right, you’re getting copyright on all those if-then statements. And yes, that means that you’re not getting any copyright protection for your game if someone else codes it themselves.

Which makes it interesting to consider what happens with people who use standard libraries, or game makers such as Construct 2 or Gamesalad, in order to make their games.  Since they’re assembling blocks of previously written code they don’t get copyright protection for that code. It’s like a gallery owner not getting their copyright protection for their exhibition because the copyright rests with the individual artists (the gallery owner might get copyright for a book about the exhibition, if it had enough artistic merit) .

There’s a movement to change this, more about this under “Making derivative games” below.

Copyright is automatic, you have it as soon as you create something original containing enough “artistic merit”. Which makes one wonder how some artists can get away with having copyright on an aquarium full of human urine. But that’s for another post.

What constitutes artistic merit differs from jurisdiction to jurisdiction (most call it something else, too). There’s a different version as well, mainly in the US, where the effort put into reproducing something grants artistic merit. So that if you take a photo you’re not making enough of an effort but if you paint a picture you are. Which may explain why Andy Warhola could get away with painting copies of Marylin Monroe photos or Campbell’s Soup cans.

Trademarks

Trademarks protect a certain name or logo (I believe the definition is “a recognizable sign that distinguishes the source of a product or service”). They’re business oriented and branch specific so if you’ve got the Coca Cola company manufacturing soft drinks you might get the Coca Cola Mining company without trademark infringement (although you could bet on Coca Cola contesting that on the grounds of diluting the trademark, more on that later).

Trademarks need to be registered and you have to pay a registration fee each year to keep them active (this differs between countries though, in some you pay a registration fee for a certain amount you years and then renew). Since you need to pay for the trademark it can also lapse and someone else can get it. This happened to Coca Cola in the 90’s and they took the new registrant to court. I believe that they settled though, effectively having to buy back their trademark.

Trademarks have to be defended or else a competitor may charge that they’ve lapsed into common use and you’ll lose them. This is what has happened with Xerox, which has become synonymous with “to photocopy” in a number of nations. Thus if you get a Cease & Desist letter (meaning “stop using our IP or we’ll sue) it doesn’t automatically mean that its from an evil, bad, money grubbing company. It just may be that they’re showing that they’re defending their trademark (they don’t actually have to take you to court in order to defend their trademark, mostly a C&D is enough).

Also, you may license your trademark openly. This is what George Lucas did when he said that any fan may create fan fiction or fan art about Star Wars, as long as it wasn’t canonical and was not-for-profit. This didn’t wipe out LucasArt’s trademarks as it was a clear, limited license, albeit granted to a large number of unnamed people. This differs between jurisdiction though (I’ll be writing that phrase quite a lot in this post, be warned).

Trademarks are country specific and area specific so you might need to register them in many places in order to have full protection. Also, it’s easier to register a trademark for a specific branch or area before getting into trouble than trying to defend that your game doesn’t infringe on someone else´s trademark. In some jurisdictions you can be granted “de facto” trademark protection, that is you can have a trademark on the basis of having been in business for a length of time and having built up a user base, but that’s often up to the judge in the nation in question so it’s an unsure method.

As for the games, as long as you don’t call your version of Monopoly “Monopoly” or use the “Uncle Moneybags” logo on it then you’re in the clear, trademark wise.

Patents

Patents protect a specific solution to a technical problem, which can be a process or a product. In terms of games this is what might be used to protect game mechanics (Wizards of the Coast took out a patent on the idea of “tapping” cards) but usually game mechanics fall under prior art, that is, that they or their parts have existed before the current product. If so they’re not patentable (which is why it was impossible to patent the water bed as Robert Heinlein had written about a water bed in one of his SF novels a couple of years earlier – it wasn’t a technical description of a water bed, but a writer’s description of how it was to sleep in one was enough to constitute prior art).

Patents come in two main forms: Utility patents, which are automatic provided that they inventor teachers/shows others in the field how to create their invention, and “regular” patents which need to be filed with a patent’s office. Most nations use “regular” patents with some form of a patenting process.

Patents are expensive, with registration costs running into the tens of thousands of dollars (depending on country) and you need to register them in each country individually, just like trademarks. Also, if you make a single mistake in a patent it’s usually enough to either throw it out based on prior art or to make it inapplicable to the solution you’re trying to patent. That’s why there are patent lawyers who write up the patent for you (for a hefty charge) in such a way that it should hold up in court.

For our game analogy: if your game uses parts that were used before that game, such as dice, cards, boards or anything really, then it’s prior art and you’re in the clear to copy it (alternatively you can’t patent it).

A word for the wise: patents are worthless for tabletop game designers. Either the game will fall under prior art, or it will sell in low enough volumes that the patent costs will completely overshadow any profits from the game. Also, patents don’t mean a thing – anyone can copy your solution as IP doesn’t protect anything, see below.

You should note that some countries allow patents for anything and let the courts sort out which are valid and which are not. For example, an man in Australia gained his 15 minutes of fame after patenting the wheel. Another then quickly patented fire. Both patents were approved, and exposed as examples of the absurdities of the system. In the USA there’s legalities that require the patent office to examine patents for suitability but since the patent office became a revenue generating organization the requirements have in practice been lowered substantially. Now you can get a patent for almost anything in the US and the patent office generates about 2.2 billion dollars in revenue, of which about 200 million comes from patent fees (the rest are trademark fees). This has led to numerous non-up-holdable patents. Also, there are often prior patents on the same subject, which makes the new patent fail due to prior art, and it’s the patent holder’s duty to make sure, the patent office doesn’t do that (more than cursory).

Enforcing IP

Owning an Intellectual Property doesn’t protect you. Not in the least. You can have the IP on anything and still not get a penny from others who copy it.

That’s because IPs must be upheld in a court of law in order to be effective. There’s no “IP police” which enforces them the way the cops patrol the streets. Instead it’s up to the IP holder to A) find the IP violation and B) sue the violator.

This costs loads of money and there’s no guarantee that you’ll win. Håkan Lans held the undisputed US patent for color graphics but after spending 20 years in court against a large number of huge computer companies he finally lost on a technicality (the patent was owned by his company but his lawyer had filed the lawsuit in his name, I believe) and ended up owing more than a billion dollars in court and penalty costs. That’s one of the reasons why the most common strategy isn’t to sue violators but to send them a “Cease & Desist” letter. Even so, many companies won’t sue as it takes too much money and in the end its often the company with the most money that wins (by letting the court costs either bankrupt the other company or force it to settle). Thus a C&D is a bit like a Mexican standoff or a suicide attack: “we’re willing to seriously harm ourselves in order to harm you so back down now”.

Going back to our game example: yes, you might get a C&D, yes, it might be on completely false grounds (that’s what IP trolls do), and yes, you might have to desist simply to avoid having yourself locked up in court and waste time and money. Or you might do what one writer (whose name I’ve unfortunately forgotten) did and send a reply stating that her entire wealth consisted of an eight-year-old computer and four cats. Needless to say she didn’t hear from the IP trolls again. Of course you might be in violation; if you suspect that you are, get legal advice before brushing it off or surrendering (yeah, it will cost money, check if it’s worth it before deciding to look into fighting the C&D).

As for sending out C&Ds of your own, you can find samples and templates online, just adapt them and send them out – all it costs is a stamp. On the other hand, if you do send out a C&D, you might want to keep it civil and ask them nicely instead. Perhaps you might get into a lucrative collaboration instead of a fight.

So it’s all right to copy?

Base mechanics aren’t actually protected by IP. So if you want to, it’s more than likely that you could copy a game outright. What’s stopping you?

Well, for one, there’s the question of why. Why would you want to copy a game outright? The most likely answer is “because the original sells well” and you want to make money.

Forget that. It’s been tried and it doesn’t work. The original sells well because of either A) brand recognition (i.e. Monopoly), which is protected by trademarks, B) special content (think the questions in Cranium or TP), which is protected by copyright and/or patents (like Mouse Trap) or C) it was the first one of its type, in which case you’re likely to have loads of competitors already and will run into market saturation in short notice (think Magic and the CCG boom, or Dominion and deck builders).

Making derivative games

Flash Duel box coverNothing says that you can’t use a game’s mechanics and develop them further. IP doesn’t protect mechanics and if you’ve got an idea that would work great with someone else’s mechanics chances are you can create a new, non-derivate game. After all, building on previous ideas is the definition of incremental development and how most (I’d say all but there might be a truly original game out there) games are created.

Of course, you might run into a storm in a water glass if you do it. Just look at brawl (pardon the pun) about Knizia’s En Garde and Sirlin’s Flash Duel. Sirlin copied En Garde, added some twists and while he was legally in the clear he was faced with outrage from Knizia, Knizia-supporters, and some publishers and gamers alike. Of course that generated loads of free publicity for him and he probably sold more games as a result but for a fraction of the gaming hobby he’s a pariah. So consider the possible consequences before taking your chances.

As a side note, you might want to read David Sirlin’s article on Penny Arcade about the subject of “good” and “bad” copying. (This statement is nether in support of Knizia, nor in support of Sirlin. Check out their games and decide for yourself.)

Another thing it keep in mind regarding derivative games is that there’s a movement for granting copyright and IP rights to the form of the game (i.e. the mechanics). There have been some work done by the German Game Designer’s Guild (the SAZ) to recognize game authors as originators of a game the same way novel authors are recognized. There have also been some legal disputes in the US, mainly between major companies, but these have all come down on the side of the IP “violator” so far. But there’s a possibility that things will change in the near future.

Edit: Since I originally wrote this there has been a couple of interesting cases, for example the Magic vs. Hex case and the Bang! vs. Legend of the Three Kingdoms case which may open up for copyright protection to some parts of board game rules and would in fact make it illegal to outright copy a design. They might also make it illegal to copy individual mechanics, but we’ll see.

Common misconceptions

There are loads of misconceptions about IP. For example:

If I attribute the original work it’s all right to copy.

Nope. Attribution doesn’t do squat. This misconception probably comes from the academic world where you’ve got to attribute where you’ve got your ideas from in order to avoid being accused of plagiarism. The reason that academics can quote each other in their works is that they’re using portions of somebody else’s work, which falls under “fair use”, rather than full works. Also, quoting and attributing is the standard way to spread your results and gain recognition so academics aren’t likely to sue even if the quoted portions of their work are larger than what’s legal under fair use. But legally, whether you attribute or not has no effect on what you can or can’t use.

Plagiarism is illegal.

Another one from academia. Plagiarism can get you thrown out of university. It can’t (usually) get you sued. As long as you stay within the bounds of fair use (which vary from jurisdiction to jurisdiction) or copyright (i.e. rewrite rather than copy), you’re in the clear legally. Not only isn’t plagiarism against the law, it’s alive and thriving: every fantasy work from WWII (-ish) to the second wave in the mid 70’s is plagiarizing Tolkien to some extent.

IP protects my games

Yes and no. IP law gives you the tools of protecting your games, but not the means. There’s no “IP police” that will do your work for you (in most countries, some like Sweden have folded to Big Music and put up resources for anti-copyright violation units – of course, they only hunt those who violate major label’s copyrights, so no real help there). In most countries IP infringements are a matter of civil law (as opposed to criminal law), that is between two civil parties, not the state and another party. Thus you’ve got to put up the resources and do the work in tracking down and suing violators. In most cases, at least in the hobby gaming industry, this will be impractical as well as uneconomic.

IP law is consistent

This is what we’re lead to believe, especially since it’s “law”. But in reality IP suits are quite often a gamble and the law is hashed out not only in every jurisdiction but also in every single case. So you might win once and lose once, even though the situations are very similar (they’re never exactly alike, if nothing else the suits will be formulated differently and be put before different courts or judges). The consequences also vary, from a slap on the wrist to a few hundred dollars in fines to hanging by the neck until dead (in Malaysia copyright infringement is a capital offense).

No one will ever come after me

Err… Look at the points about trademarks and consistence above. Chances are no one will come after you, just like chances are no one will come after you for twisting your cards 90 degrees to show that they’re used (the M:TG patent). But they just might. And you just might get a US $17 billion claim directed against you (as one DC hub owner had a few years back).

IP violators are caught

Mostly not. In fact, judging from statistics and anonymous surveys, about 40-80% of the entire population in the western countries (varies by internet usage in the nation), commit IP violations on a weekly basis. Most of them are never discovered, nor prosecuted.

It’s possible to buy and sell copyright

This is a common one and the answer is “partially”. Copyright is divided into two parts: economic and moral. The economic copyright pertains to who has the rights to copy (and sell) the work. The moral one pertains to who has the right to be called the creator of the work. You can sell your economic copyright but no one can strip you of the right to be called the creator of your work.

Corollary: yes they can. If you sign up to do a work for hire it’s the work of your employer in its entirety. So if you ghost write a novel it’s whomever paid for you to do it that’s going to be the “creator” of the work. Yeah, it’s messed up. And it doesn’t work that way in all countries.

Derivate works are illegal

No. Simply no. Unless the characters, places and/or names are trademarked there’s nothing that prohibits you from creating derivate works. It’s not alway that clear cut though.There was an international uproar when a judge in Germany banned the book “Lara’s Daughter”, an unofficial sequel to “Dr. Zhivago”, for copyright violations. In the end I believe that the book was withdrawn by the publisher rather than trying to contest the suit (margins in book publishing are too small to allow such frivolous spending).

Mailing the game to myself in a sealed envelope grants me copyright.
No. Or rather, mailing the game to yourself does nothing. It might help you settle when you created it but probably not. As for copyright, you’ve got it the moment you create the game. No need to do anything else.

This one comes from the time (until 1989 I believe) when the USA had a requirement that you had to register your work at the patent office in order to get copyright for it. This has now been removed and you get your copyright automatically in the US just like in every other country that has ratified the Bern convention.

Public Domain means I can take it

Not quite. Works in the public domain are available to everyone free of charge (i.e. they lack economic copyright). They’re not freed from copyright, that is, you can’t claim them as your own, claim you’ve created them or remove the rights of the original creator to be identifies as such. You may, however, freely create derivate works, which will then be copyrighted by you. For example, you can’t claim to have written Hamlet but you could make a movie using Hamlet as a script, and the movie would then fall under your copyright entirely (as opposed to making a movie from a play under license).

I can copy the questions in Trivial Pursuit

Yes and no. This is a variation on the “can’t copy the rule book”. You can’t copyright facts either – but you can copyright the specific way they’re formulated. So the questions and answers in TP are copyrighted but you could rewrite them all and thus just use the facts and you’d be in the clear.

If there is no copyright holder then the work is public domain

No, it’s an orphaned work. For example a news photo taken from the Internet or a painting found on the street. It’s still protected by copyright and you can’t use it. This varies by country though. Canada, for example, grants license to use orphaned works.

Conclusions

If you’ve read this far: Kudos to you! You may have figured out my views that the current IP laws are rather flawed, protecting those with the means against the artist and inventors. Basically it’s a big shell game where large companies can get away with stuff that would put an ordinary Joe in jail (or in debt for the rest of his/her life).

As for games: if you want to build upon someone else’s game, please do. That’s development for you. Don’t use their text, art, or any other copyrighted expression. Don’t violate their trademarks. Try not to violate patents (not very easy since no one knows what patents exist where – quite often even approved patents are discovered to have been patented already) unless they’re ridiculous (Wizards of the Coast, I’m looking at you!). But please do take elements from different games and put them together in new and imaginative ways.

That’s what inspiration is all about.

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