Regulation
Regulation
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.
136 iGamingBusiness | Issue 112 | September / October 2018