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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.

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