Protection of video games: Industrial design, patent, or trade secret?
When the concept for a video game takes shape, and an unprotected idea becomes a protected form of expression, the developer can consider how best to protect the game or elements of the game against copying by competitors. When thinking about legal protection of a video game, it is natural to refer to copyright law. But that is not the only potential source of protection. It is worth examining whether and to what extent elements of the game can be protected through industrial designs, patents, or perhaps trade secrets.
Copyright—what can be protected?
A video game comprises numerous, varied elements, such as graphics, music, narrative, software, and the graphical user interface. The debate under copyright law on how to protect a video game (as a computer program, each element as a separate work, or combined as a multimedia work) does not appear to be definitively resolved. But it seems most important in practice to determine whether a given element of the game constitutes a work, i.e. a creative, individual product of human activity. Any manifestation of creativity of an individual nature, fixed in any form, can be the subject of protection, regardless of its value, intended use, or method of expression.
Thus, in a game, copyright protection may extend for example to:
- Appearance of characters, worlds and objects (weapons, costumes, obstacles etc), architecture of towns and other locations, and so on
Registration is not required to obtain copyright protection. Generally speaking, copyright protection expires 70 years after the death of the creator of the work. It should be borne in mind that an idea alone is not subject to copyright protection.
Industrial design to protect appearance—but is it always available?
The appearance of a product or parts of a product may be protected by an industrial design. As a rule, an industrial design protects the external, observable form of a product. This might include, for example, the particular appearance, shape, contours, ornamentation, structure, or specific external features of the material (see judgment of the Polish Supreme Administrative Court of 7 July 2017, case no. II GSK 3072/15). Protection on the basis of industrial design is used across many industries for a wide range of products.
In video games, an industrial design might protect for example the appearance of a character in the game, the appearance of the gaming devices, or the graphical user interface.
For a design to be protected, it must be novel (i.e. not previously made available to the public) and must have an individual character, which means that the overall impression it produces on an informed user differs from the overall impression produced on such a user by a design previously made available to the public.
If a design meet the conditions for protection, it may obtain national protection (e.g. in Poland or China), EU protection (in the European Union a design may be registered with EUIPO and obtain protection in all member states), or international protection.
It should be borne in mind that like other intellectual property rights, an industrial design provides protection limited exclusively to a given territory. An industrial design will be protected where it is registered, and thus registration in China or the US will not provide any protection in Poland.
An industrial design is a temporary right, as protection is given for a definite period—in Poland, 25 years. At the end of this period, the design ceases to be protected and enters the public domain, which means that anyone can use it in any manner, commercial or not.
Although it is easy to register a design, the effectiveness of the protection depends on what the applicant seeks to protect. If the registration is not well-targeted, the design may prove to be little more than art for art’s sake, formally augmenting the game development studio’s assets but not necessarily securing them against infringement.
Patent for a game invention
Regardless of the industry, obtaining a patent for an invention is neither easy nor fast, as fulfilling the conditions for patent protection poses a significant organisational, legal and financial challenge. But examples from the Polish market show that it is possible to obtain patents for inventions in the game industry, which is encouraging and provides hope for an increase in the number of patents issued in this industry.
When deciding to seek patent protection, it should be borne in mind that to obtain protection, the invention must:
- Have a technical nature
- Be novel
- Possess an inventive dimension
- Be suitable for industrial application.
Each of these requirements is separate and independent, and they must all be fulfilled for a solution to be eligible for patent protection (judgment of the Province Administrative Court in Warsaw of 8 March 2017, case no. VI SA/Wa 1554/16).
A method of operation or production may also constitute an invention. For example, in the US, Bloober Team SA obtained a patent for an invention called “Method of simultaneous playing in single-player video games.”
According to the description, the key feature of the invention is a method for a single player to function in multiple virtual realities at the same time by simultaneously controlling avatars for more than one character.
An invention might also be for example:
- A device
- A chemical composition
- An application (e.g. of a substance) to achieve a certain purpose.
However, schemata, rules and methods for conducting intellectual processes, game play, and computer programs are not regarded as inventions. Thus generally the rules of a game cannot be patented. But it cannot be excluded that the method of applying the rules of a game may fulfil the conditions for patent protection, as demonstrated by the case of Nintendo. Nintendo applied to the European Patent Office for protection of an invention entitled “Game machine and storage medium therefor,” which essentially involved a game (in this case, the example given was Pokémon), in which the player moves around a map, encountering various characters, which arise according an “appearance probability” (differing from character to character).
Application no. EP 00116115.7
In the game, the “appearance probability” of a given character would vary over time, which increased the unpredictability of these encounters and of the game itself. Initially a patent for the invention was denied because of the ban on patenting game rules. But in considering an appeal, the Technical Board of Appeal at EPO held in 2009 that the essence of the invention was not so much concerned with a game rule per se, as the particular manner in which the rule is realised, namely the way events are generated in the game. The board found that the other prerequisites for patent protection were also met, and thus issuance of a patent was warranted.
A patent is a right that gives exclusivity in the use of the patented invention, an innovative solution of a technical nature. Patent protection is also territorial, and in Poland it lasts 20 years.
In some instances it is more advantageous not to seek formal protection of certain aspects or elements of a game. After all, when applying for a patent, for example, the applicant must disclose the essence of the invention, and thus anyone can examine the solution and after the end of the patent protection period can freely use the solution in their own business.
Sometimes certain elements of a video game do not fulfil the conditions for protection under copyright or industrial property law. In that situation, it should be considered whether the prerequisites are met for regarding these creations as a trade secret for purposes of the Unfair Competition Act (see the article “Harder to protect trade secrets in commercial relations”). Essentially, information or data, organisational or commercial, technical or non-technical, can be a trade secret so long as it remains a secret—confidentiality is a key condition for legal protection. Thus it is essential to take appropriate steps and introduce adequate security measures to maintain the confidentially of commercially valuable information. A typical example is the recipe for Coca-Cola. The various measures supposedly employed to protect access to the formula are the stuff of legend. Trade secrets are generally protected indefinitely (as long as they remain confidential). Moreover, there is no obligation to register trade secrets.
Selection of the method of protection is an important and difficult decision which may pay off only in the future. Thus the decision should be carefully considered and consulted with a specialist.
Dr Monika A. Górska, attorney-at-law, Intellectual Property practice, Wardyński & Partners