Industry attorney Zach Bishop of Hunton & Williams LLP works closely with game companies, among them Epic Games and Gearbox, specializing in intellectual property law, and at the 2007 Independent Game Conference in Austin, Bishop discussed the key issues surrounding IP rights and how to protect them.
“The first thing I’m going to stress is the importance of written agreements with all of your employees and contractors," began Bishop, outlining the "work-for-hire" doctrine: as long as work is made in the scope of the employer, it belongs to the employer.
However, continued Bishop, who owns creative property can sometimes be a difficult distinction to make. And work for hire only applies to copyright: not patents or trademarks.
“Enter into written agreements with everyone you work with,” he stressed. "If you haven’t done it yet, don’t worry, it’s not too late... Usually it’s done when someone is hired, or during an employee review or a bonus.”
Bishop discussed non-compete clauses, a common contract component, and he cited his client Epic, whose VP, Mark Rein, was recently quoted in a local paper saying Epic doesn't use non-competes. "We don’t put these clauses, because if they can find a better company to work for, then go for it, and we don’t want them anyway," Bishop confirmed.
Bishop also spoke at length about engine licensing agreements. “You’ll see flat fees, or royalties based on revenues," he described. And there are other elements as well. For example, Epic requires a splash screen that says “Powered by the Unreal Engine.”
When speaking about intellectual property, he noted that there’s a very fine line between where the game ends and the engine begins. If you develop new technology for your use on someone else’s engine, you might not own that IP at the end of the day. Negotiating that line takes a long time. “It’s just about ownership and that’s always a sensitive [point],” Bishop added.
Bishop described how, a few weeks ago, one of his firm's clients called with an issue. A programmer told them he used a piece of code that was under the GPL license for a game that was coming up against the publisher's deadline. They got the programmer on the phone to find out what he did with the code to determine if it was a violation.
“It turns out, we did have to worry about the GPL,” Bishop said. "We had to tell them, look, sorry, you have to take that code our of your game. Maybe that was a little conservative, but it was the right thing to do. You can be sued by the Free Software Foundation who own the GPL.”
He also noted that actual characters can be copyrighted -- Pac-Man, for example. If people are printing Pac-Man t-shirts, you can show that to a judge. Violations can be much simpler than having the entire copyrighted game, loading a level, and showing the character in play.
Epic, for example, obtained a separate copyright for the chainsaw gun from Gears of War
. "It’s unique enough that it’s likely to knocked off or copied,” explained Bishop.
From a business of view, he said that most developers are concerned with the game selling. But there’s more to it than just initial sales. “Keeping the rights to your IP is really important,” Bishop stressed, pointing out that more and more games are made into movies, or receive sequels. Or, if your contract specifies, developers can be obligated to make sequels for a publisher.
He also talked about the pitfalls of becoming successful and well-known as a developer. People post cheat codes on the internet, which ruins the online gameplay, and damages the brand. He says such cheats are created “mostly by European kids,” and do things like auto-aiming, or "god-mode." They can be stopped by contacting the ISPs, but most will just pop right back up.
Bishop found that the most effective way to thwart these junior cheaters is to telephone the kid’s parents. “It’s pretty funny," he said. "The parents have no idea what you’re talking about. And the kids are amazed that you’ve found them.”
Gamasutra did ask Bishop about the Silicon Knights lawsuit
, for which Gamasutra has obtained
extensive documentation, though Bishop was unable to comment. “I’m under strict orders not to discuss the matter,” he responded. “Pending litigation.”