How to protect your IP from clones

How to protect your IP from clones

Last week we published a post by Dr Tom Phillips of the University of East Anglia summarizing the findings of his research on game clones and the relationship between indie developers and IP. His article is available HERE. This week we have asked Ms Arty Rajendra, Partner in IP law firm Rouse Legal and one of MCV's Top 100 Women in Games 2015, to share her expert advice on the steps you can take as a games studio to protect your IP. On to Ms Rajendra:

Tom Philips' article explains that indie developers are using self-regulation to combat game cloning, i.e. taking the moral high ground and publicly shaming cloners via social media.  They are taking this unusual step because copyright law is regarded as ineffective.  However, there are adverse publicity risks associated with playing out IP disputes in public.  Furthermore, game cloning doesn't just affect indies - big companies are not immune and are often the first to be targeted.  And while Tom Philips is right that current UK copyright case law provides little comfort unless any text, graphics, music and sound recordings have been copied, there are steps all developers can take to deter cloning or take action when it occurs.  Here are the top tips:

1. File a trade mark application.  If you have long-term plans for your game, register your game name, and other elements which make your game distinctive, as trade marks.  Trade marks last indefinitely provided they are renewed every 10 years.  You should then be able to stop cloners using the same name.  Of course, cloners often pick names similar, but not identical, to the game being copied.  If that's the case, you need to prove that the names are confusingly similar for there to be trade mark infringement.  However, even if the names are not similar enough for gamers to be confused, you may be able to stop the use of a similar name if your game is well known and the clone's name takes unfair advantage of that.  If you don't want to apply for a trade mark, use the ™ sign for any names which are being used to signify the origin of the game.  These steps will act as a warning.

2. Think about designs.  Register your app icon or other clever graphic elements, such as game characters, as designs.  European designs take around four weeks and cost about £250 to register (excluding legal fees) and last for 25 years.  You can wait for up to 12 months after you make your design public before you apply to register, so you can wait to see if the game is successful first - but see below about delay.  If the cloned product uses a design which produces the same overall impression as your registration, that should amount to infringement.  Get advice on what designs to register to give you the broadest protection.

3. Use a copyright notice.  Put copyright notices prominently in the game.  Using the © symbol and the year of first publication of the work, e.g. © 2015 [your company name], is prima facie evidence of your ownership of copyright.  An additional general notice saying you own all IP rights in the game can also act as a deterrent.  Generally speaking, educating your audience that you assert your IP is a good thing.  The copyist will move on to a game by someone less IP-savvy.

4. Search for and retain evidence of confusion.  Keep a record of any social media comments about the game clone, especially any that indicate gamers are confused and think it's your game.  There could be goodwill in the look and feel of the game or its name.  If the cloner has misrepresented that their game is yours or connected with your company, this could amount to passing off.  Evidence that gamers have been deceived and bought the clone thinking it's yours (and not just a cheeky knock-off) is crucial. 

5. Take action quickly.  File your takedown notice asap to start the clock ticking.  If you want to take a more legally sophisticated route, seek advice and get a lawyers' letter sent out soon.  The longer you sit back, the less seriously your objection will be taken.  Even if you don't get a response to the letter, it can help create a reputation that you enforce your IP and the copyists may steer clear next time.

6. Keep good records and assignments.  If your copyright ownership is challenged, it is handy to have good records of who created what, when, their employment status and nationality.  Save and date all design documents.  If you employ third parties to do creative stuff, make sure you have IP assignments from them.  Copyright law isn't perfect but it definitely won't be of any help if you don't actually own, or can't prove that you own, copyright in the game's elements.  It sounds simple but time and again (small and big) publishers fail at this basic hurdle.

7. Only try to protect the best stuff.  Before launching your game, think about what is special and creative about it.  If your game consists of simple iterative improvements on previous games or consists of generic elements, the likelihood is you have little to protect.   Conversely, if you have put in a lot of time and effort skilfully creating something which is genuinely new, different and not generic, you may have something that is protectable and enforceable against third party copyists.  Define and record what that is.  When it comes to enforcing your rights, think about the elements you really care about and enforce those.  Forget about the rest.

8. Know your enemy.  If a clone appears, find out who is behind it.  Evidence of repeat copying or other general lack of respect for IP rights can be prejudicial against a target.  Knowing your target will determine what action to take.  If the cloner is operating in an unsophisticated legal jurisdiction or is likely to be out of reach, e.g. in China, the simplest route is to file a takedown.

9. Suing might be your only option.  Litigation is a last resort but don't dismiss it out of hand.  Most IP infringement cases settle with the copycat signing undertakings, often after receiving a stern warning letter, but even if you have to go to trial, your costs exposure can be limited if you choose the right court.  The Intellectual Property Enterprise Court was created with SMEs in mind and has a £50,000 costs recovery cap - in other words, even if you lose, that is all you will have to pay to the other side.   Set aside a fighting fund to deal with any litigation.

10. Think outside the box.  The UK courts have been imaginative about using existing laws to cover new technological advancements.  With the rise of the video game as an art form in itself, and the increased costs of producing new games, it is worth a renewed test of the boundaries of UK copyright law for the right type of case.  Don't give up on IP enforcement altogether.  

Picture Source: Wikimedia Commons: