First off, I am definitely not a lawyer. So please do not take any of this information as legal advice.
However, I am a producer at Heavy Cat Studios, and I have a fair amount of experience in merchandising, licensing, intellectual property management and production. Our studio has variously developed or co-developed graphics, writing, voices, sound and animation for 31 game projects under a variety of different licensing terms, and we've had the opportunity to evaluate those projects from concept to distribution.
If you do need legal advice, it really isn't as expensive to hire an intellectual property attorney as you might think. An intellectual property attorney will be able to advise you on the specifics of copyright, trademark and patent law and how those different categories of intellectual property can affect your game project. Even an hour-long consultation with a good IP attorney is worth the cost, even if you are only looking for general advice on the best way to manage development.
Believe it or not, all three major categories of intellectual property can and do affect your game project, even if you haven't given them a great deal of consideration or filed any paperwork yet. Despite the (often correct) protests of many programmers, software can be patented. Software is copyrighted the moment it hits your computer's RAM or hard drive, and if you have a title for your game, it is a candidate for a trademark.
It is also not just your intellectual property you have to be concerned about. Your game project must be managed so it doesn't infringe on some other company's patent, or violate another company's trademark or copyright either. Fortunately, the finer points of intellectual property law are unlikely to have any major effect on the average indie game project unless you appropriate someone else's source code or artwork without permission. Even that is completely unnecessary in a world where there are six open source alternatives available for whatever you might need.
So let's talk some basics.
The last major overhaul of copyright law in the United States took place in 1976. That legislation made a number of changes that affect every creative project. It also made a lot of things much easier for authors, programmers and musicians, among others.
First, and most important, everything you create is copyrighted the moment it is "fixed in a tangible medium." That means if you save a file to disk, write on a pad of paper, record a sound or perform a dance routine on video, that qualifies as a "work" which is now copyrighted. You now have certain exclusive rights in that work, such as the right to make copies and the right to distribute those copies.
An exclusive right is one that only you can exercise. If someone else wants to exercise those rights, you have to give them permission or they are "infringing" on your copyright.
Now most people believe that a copyright must be "registered" with the government in order to be effective. That's partially true. Copyright vests the moment any copyrightable work is fixed in a tangible medium (yes, that means that grocery list you wrote on the back of a Taco Shack coupon is copyrighted). However, in order for you to file suit and recover damages, that copyright must be registered.
Registering a copyright is an extraordinarily simple process. For a small fee, you file a form with the Librarian of Congress along with two copies of your work. The Library of Congress will then send you a certificate. You now have a registered copyright. If you so choose, you can now file suit and recover damages including statutory damages (essentially a 'fine') from anyone who infringes on your registered copyright.
But what if it's you and three of your best buddies working on a game together? Who owns the copyrights? Well, this is where the fun begins.
If you so choose, you can grant permission for another person or company to exercise your exclusive rights under copyright law. This is called a "license." In most cases when three people (Yes, girls and women make games too. Look up Roberta Williams if you don't believe me) are working on a game, they are tacitly granting permission for everyone else to make use of their work during development. But once the game is done, the ownership issue can get very murky legally.
Technically if three people have contributed source code to a project, for example, there are three people with exclusive rights in portions of that work. Any one of them could prohibit distribution of their work and bring the project to a halt. They would be completely within their rights to do so. The way to avoid problems like this is to make use of one of the provisions of copyright law to assign the copyright to a single entity. Then it is that entity which owns the rights to the entire work. This is known in the industry as "securing" rights.
Depending on how serious you are about your game, it might be worth your time to look into setting up a company to "own" the copyrights to your game. That can bypass a lot of the difficulty and make provision for each of the people who work on the game to own a share of the company itself instead of one game. The specifics of this are outside the scope of this article but it is something your IP attorney might be able to help you with.
Under the Copyright Act of 1976, there is a category of copyright assignment called a "Work Made for Hire." This is a provision of copyright law where if an employer hires an employee or contractor to produce a copyrightable work, the employer gets the copyright once it is produced. Technically, the copyright vests in the employer instead of the employee the moment it is "fixed in a tangible medium".
Work for Hire only applies to certain kinds of works, so it is important that you do your homework ahead of time. If a work doesn't qualify, calling it a Work for Hire may not secure any rights. In such a case, the copyright may "revert" to the original author (employee or contractor) and give the employer no rights.
In cases where a Work for Hire isn't practical, an author can "assign" their copyright to another party. This is essentially selling the right, or transferring title to the right. Assignment of a copyright is subject to certain legal restrictions. Generally it can only be done with a written contract.
It is vitally important that a group of people working on a project make provision to assign the copyrights (through either process) to some entity, whether it is a company or the manager of the project. This prevents all kinds of potential hang-ups and obstacles later, especially if that project starts earning any significant revenue.
Copyright and Game Art
The moment pencil touches paper (or stylus touches Wacom, or mouse clicks in Photoshop), the art is copyrighted. That copyright vests with the artist and stays with the artist unless there is an agreement between the game developer and the artist for assignment or license of those rights.
Artists who are knowledgeable about copyright law often grant licenses to developers to make use of their work. This is something we offer at Heavy Cat Studios through our distribution company Palace in the Sky Productions. The least expensive option is for a developer to commission art under a commercial license. They can then make use of that art in their game project and even sell the game at retail. However, our studio retains the copyright.
Some developers want full rights to their work. For those clients, we offer to assign the copyright in the works we produce for an additional fee.
If you are a game developer this is something you must be cognizant of before you start commissioning artwork from any third party, especially a studio. You should prepare a written agreement (this is an excellent time to bring in an IP attorney) and make sure the artist or studio signs it before they begin work.
A verbal agreement isn't enough. Your artist owns the copyright to the art they produce regardless of any agreements you made ahead of time unless those agreements are in writing and they are appropriate for the rights you want to exercise. This is crucially important. Failure to secure rights in the art for your game can sink your entire project.
Once you start the process of securing your rights, also be aware that copyright law can vary depending on the part of the world you are operating in. By and large, you will need to obtain worldwide rights to any work you want to make available on the web, since national borders do not prevent a work from being transmitted from one place to the next. Copyright licenses can be divided in any way a rights holder chooses. This means they can say "you can copy my work, but not in Canada." Make sure you have rights for every territory you plan to sell your work in.
International copyright law is largely governed by a treaty called the "Berne Convention." The specifics of this treaty are outside the scope of this article, but suffice to say that any country that is a signatory to this convention will have strong protection for copyright holders. You will need to secure rights in all of these territories in order to avoid running into possible problems in other countries. The easiest method, of course, is to obtain worldwide rights to any copyrighted work you need to include in your game.
In most cases, art for a game qualifies under the "Works made for Hire" rules as contributions to an "audiovisual work." Again, consult with an IP attorney on the particulars. If a work doesn't qualify, you can always have your artist assign their rights in the work.
A trademark is a word, icon or visual representation that uniquely identifies your company or product in the marketplace. Game art can most definitely be trademarked. The most obvious candidates for trademark protection are your game and company logos.
There are two kinds of trademarks. One is often referred to as a "common law" trademark. It is used to secure protection for a mark in commerce while registration is pending. It is identified by the "TM" next to the mark. This means the word, icon or visual representation is a trademark, and that trademark protects that mark, but that is has not yet been registered.
A registered trademark is one that has been filed with the United States government. It is identified by the "circle R" ® symbol. Only a registered trademark can use the registered trademark symbol.
Filing a trademark registration is a project that absolutely requires the assistance of a qualified attorney. Attempting to do this on your own without significant study and care can be both expensive and time-consuming and there is no guarantee of success. The Patent and Trademark Office can and often will reject applications with even trivial errors or omissions. Better to get help with this one.
Trademark in Game Art
We know a logo is often the best candidate for a trademark. However, in some cases, your character art can qualify as a trademark. The most recognizable trademarked character is Mickey Mouse. Disney Corporation is uniquely identified by the "mouse ears" motif and by the character itself, so that character can qualify for protection under both copyright and trademark law.
Trademark law is written to prevent the buying public from confusing one company with another. It prevents one company from using the good will and reputation of some other company to sell its own products. This is unfair competition because the first company may not have earned such a reputation with customers who trust the trademark. Essentially using another company's trademark is tantamount to impersonating them in the marketplace.
Once you have trademarked your game logo, for example, if some other developer uses a logo that is too similar to yours, you have the right to stop them because that other developer could confuse your audience and customers into thinking they are somehow affiliated with you. You might not want that, so trademark law gives you a way to stop them from inviting the public to draw the wrong conclusion.
While you are securing rights, be sure to consider registering a trademark for your game's logo and for your iconic characters if you so choose. It is a valuable way to protect the quality and reputation of your product in a competitive market.
You probably think I'm not going to come up with a way to apply patent law to games, but you might be surprised at how easy it is to stumble into patent problems without even thinking about it.
For most projects, copyright is more than enough protection. Preventing some third party from taking your game, slapping a new logo on it and selling it is the key protection in copyright law.
But copyright only protects your specific expression. Patent law protects the method or process embodied in that expression. It is somewhat more abstract than copyright law.
Many programmers object on a number of bases to the idea of a software patent. In some cases, there may be a consensus there is only one right way to do something in software, and if that is patented, that means any programmer who doesn't have the patent must violate someone else's rights in order to write their program, even if it is original work that doesn't infringe on the other programmer's copyright.
Patent and Game Art
Leaving aside for the time being the controversy over whether software should be patented, just be aware that computer games and games in general are not immune from patent law. The board game "Mouse Trap" for example, was a candidate for a patent, since the little plastic Rube-Goldberg machine that dropped the cage on the mouse was a working mechanism with a commercial application.
Mouse Trap is a tremendous example of just how far intellectual property law can stretch when applied to a game project. Theroetically, that colorful plastic trap mechanism qualifies under all three major categories of intellectual property: The pieces themselves can be copyrighted as unique sculptures. The entire trap mechanism can qualify as a separate unique sculpture distinct from its pieces. The entire mechanism could qualify as a unique symbol of the company that markets the game, making it a candidate for trademark protection and, since it is a working mechanism with a commercial purpose, it could also qualify for a patent.
That's a lot of rights for one game, but that level of protection could be considered appropriate given the iconic nature of the game for the Ideal Toy Company. It likely took a lot of work to get that game to work as well as it did, so it was also advisable the authors of the game do what is necessary to protect their invention.
Patents can be licensed or assigned just like any other intellectual property. If you own a patent, you have a series of exclusive rights just like a copyright or trademark holder. However, a patent has a short term. It also requires the assistance of a qualified attorney to file. Patents are very technical and specific.
For most game developers, patents are not going to be a major concern unless you find yourself up against a litigant who claims you violated their patent. The overwhelming majority of game software is very similar from a technical standpoint, so the likelihood of a patent claim, while possible, is still fairly remote.
Any 21st century discussion of intellectual property would not be complete without covering the world of free software and open source software.
Be aware that free software and open source software are not "un-copyrighted" works. Those works are still covered by and protected by copyright. In fact, the copyrights in those works are what gives their authors the legal authority to enforce licenses like the GNU General Public License.
The only works that are not covered by copyright law are those that are placed in the public domain by their authors. Public domain software is free for the taking. You can do anything you want with public domain works.
Publically licensed works, such as those under the GNU General Public License and its equivalents should be considered copyrighted software with a permanent license attached. That license gives you stable, permanent permission to exercise certain rights of the copyright holder under certain conditions, but that permission is contigent on you fulfilling those conditions. Remember that permission can be withdrawn as well as granted, and that if permission is withdrawn, your right to exercise the copyright holder's exclusive rights is also withdrawn. The same is true of works you might find in the Creative Commons.
Very often, with a little work, you can assemble a great majority of what a game project needs from publically licensed sources and supplement the rest with commercial works. This can often reduce costs in areas where even with significant expenditures, you will not exceed the quality of what you can obtain for low cost or no cost anyway.
There are a number of stock art services available. For most game purposes, these sources can be hit or miss with regard to quality or technical limitations. Art is subjective. It is evaluated on style as much as utility, and graphics that are cobbled together from numerous sources often look like they were cobbled together from numerous sources.
Some kinds of art, however, can look presentable, even attractive if they are assembled from multiple sources. Many of the projects we do at Heavy Cat Studios make use of pixel art, and our Indie Game Art Store features pixel art for RPG and sidescroller-style games. Because of its style, pixel art is a bit more forgiving when it comes to looking like it all fits together. Two different styles of illustrated art, on the other hand, might not look quite as attractive.
The key to the intellectual property side of indie game development is to be aware of the details and to make sure you have your bases covered. The best example of the hazards you face if you don't do your due diligence is the Spider-Man property.
For decades, the Spider-Man movie rights languished at Marvel because there were up to ten different companies with various rights to make a film. Since these licensees could not agree on how to make a movie, it just didn't happen.
The reason is if one of them went off and started production, any of the others could have used their license to say "this producer is exercising the legal exclusive rights I obtained from Marvel to make this film" and thereby stop production. They were all within their rights to say no. Trust me when I tell you getting ten people to agree in Hollywood is like trying to get a unanimous vote in Congress. It ain't happening, no matter how much money you have. Ronald O. Perelman was a multi-billionaire when he owned Marvel Entertainment. He didn't make much progress on Spider-Man movies either.
It took nearly 40 years for Spider-Man to escape from the rights mess.
Marvel filed for bankruptcy in the late 1990s. During that case, the company managed to unravel all the licenses. That's why we got to see a Spider-Man film series starting in the early 2000s. All the copyrights and licenses reverted to Marvel after the company emerged from bankruptcy. Because they now had their exclusive rights back, they could then proceed to make their film. They exercised their right to make a "derivative work" under copyright law.
If you are an indie game developer, my advice to you is very simple. Unless you want your game to be tied up in a copyright dispute for 40 years, protect and manage your rights. It will make your project that much more valuable and have a much better chance of success.
Theodore Jefferson is a producer at Heavy Cat Studios and Palace in the Sky Productions and a managing editor at Hikousen Enterprises. He has produced and directed over three dozen commercial computer game projects on both the Flash and PC platforms and has written several books, including "Making Money with Project Wonderful" and "You Will Never Be Fired Again if you Follow the Advice in This Little Book."