In defence of ideas

Original ideas are critical to success in any creative industry but proving ownership of those ideas can be difficult. Michael Browne uncovers the extent to which the law can offer protection.

The protection of intellectual property (IP) is a key concern for many online gaming companies. But IP is a term that is often used loosely and without a proper understanding of the collection of disparate legal rights to which it refers.

Some businesses might be surprised to learn that certain aspects of their casino games that they regard as their IP cannot be easily protected under English law.

Protection of the general look and feel of a game often falls into this category. Conversely, there might be aspects of a game that can be protected with the benefit of the necessary legal insight and forward planning.

Copyright isn’t the only game in town
Copyright is often the first IP right that comes to mind when considering the protection of ‘visual’ material such as online games. In the UK, copyright protection extends to original graphic works, which can include the graphical output of online games.

The entirety of a game’s GUI, as well as the individual graphic elements that comprise it, may well be protected in copyright. However, there are also important limitations to the protection afforded by copyright that games developers ought to be mindful of.

For one thing, copyright protects the expression of an idea only and not an idea in and of itself. This means that the general concept, format and mechanics of a game (which, together, often contribute significantly to the overall look and feel) are unlikely to be protected by UK copyright in many cases.

Moreover, the protection of graphic works has been given a limited scope by the English courts in the specific context of electronic games. In particular, the court has stated that while the individual frames/images produced by a computer program are individually protectable as separate copyright works, the visual effect of a number of images displayed one after the other is not.

This effectively excludes copyright protection for ‘motion’ effects in electronic games. These limitations to the potential scope of copyright protection for front end visuals in online games highlight the need to take a more holistic approach when considering IP protection.

It’s (not just) the name of the game
Most businesses will be aware that the primary way to protect trading names in the UK is to obtain a registered trade mark. However, it is important to bear in mind that, in principle, any sign capable of being represented graphically and which is also capable of distinguishing goods and services can be protected as a registered trade mark.

That means that not only is a business or trading name or the names of individual games or a games series potentially protectable, but so too are many other aspects of a game’s front-end user interface, such as static or moving logos, colours, icons and characters. Sounds have long been protectable so long as they can be represented by graphical notation.

Many of these aspects of online games are traditionally associated with copyright or design protection, rather than trade mark protection, which demonstrates the extent to which different IP rights can overlap and offer various layers of complementary protection.

A central issue to think about when assessing if registered trade mark protection is available is whether consumers will consider the relevant ‘element’ to be an indication of trade origin.

To educate consumers that a particular sign is being used as a trade mark in this way, it can help to consistently use the unregistered ‘TM’ symbol. ‘Out of game’ use of the relevant mark, such as on promotional items and in games advertising can also help to reinforce the perception that a particular in-game element is to be considered a trade mark.

Once obtained, a registered trade mark represents a powerful right to prevent the unauthorised use of identical or confusingly similar signs by third parties.

Where a registered mark is deemed to enjoy a ‘reputation’, a yet wider scope of protection to prevent third parties gaining an unfair advantage from, or causing detriment to, the reputation of that mark arises.

This broader scope of protection might be particularly useful in the case of copycat game content, where the intention is to piggyback a game’s success by adopting some of its protected elements.

All is not lost for those companies that have not managed to register their trade marks before encountering a potential infringer.

In the UK, unregistered rights under the law of passing off might also help if it can be shown that the use of certain visual elements in a game give rise to an impression that it has been created or offered by a particular business, when it has not.

While passing off claims based on ‘get up’ such as in-game visuals alone are certainly not easy, especially where the name of the relevant company is clearly displayed, they can nevertheless succeed where there is clear evidence of consumer confusion in the marketplace, which might extend to a misapprehension that a game has been produced under licence.

Designs on your game
Registered designs are another possible option for protecting the appearance of a GUI as well as other graphic symbols and images appearing in an online game.

While an application specifying the particular design or designs to be protected must be made to the relevant intellectual property office (unlike copyright, which arises automatically in the UK), there is no need to demonstrate that consumers consider the design to be an indication of trade origin.

Moreover, unlike trade marks, registered design applications are not examined, which means they can be granted in a matter of days.

Once obtained, a registered design prevents the use of any design which does not produce a ‘different overall impression’ on an ‘informed user’ for a period of up to 25 years.

Importantly, there is no need to demonstrate copying for a finding of infringement. Having a design registration ready to deploy in connection with a competitor game that is considered ‘too close’ can therefore send a powerful message to the market.

Design protection might also offer an answer to the difficulties of enforcing copyright in ‘movement’ aspects of online games, because the definition of design under UK and EU registered design law as well as EU unregistered design law does not limit protection to static images only.

It is therefore quite possible to apply for a single registered design which comprises a series of images that, together, give the impression of movement.

Indeed, there are a number of movement designs already on the registers which appear to relate to GUIs. The overall impression infringement test applicable in registered designs cases might therefore succeed, where a frame-by-frame copyright comparison would not.

IP is a broad catch all term which covers a variety of intangible rights that may arise or potentially apply in the context of online games.

While many of these rights overlap, the circumstances in which they may arise and/or be infringed differs and so it is important to have a clear understanding of the full scope of rights available when seeking to protect and enforce IP.

This is all the more the case in a constantly changing and evolving industry, such as online gaming.

For example, the increasing popularity of ‘live action’ casino games now opens the door to the possibility of protecting aspects of the ‘human’ element of the game as dramatic copyright, a category of IP that has not previously been relevant to entirely computer generated output.

Similarly, the potential availability of multimedia trade marks and registered designs covering movement designs may plug the gaps traditionally left by other rights such as copyright.

Businesses therefore need to think carefully and take specialist advice in order to develop an appropriate IP strategy for their particular business and online offering.

Michael Browne is a partner at Wiggin. He advises on the enforcement and exploitation of all forms of intellectual property, as well as competition law issues. He was assisted in producing this article by associate Nick Allan.