One of my most frequently encountered – and important – jobs as a digital entertainment lawyer is to advise on intellectual property ownership: who owns which bits of this great game/software/artwork/video/audio etc? This comes up so often, and from time to time can cause such controversy in the press, that I thought I might write some quick pointers about it, which I hope you’ll find useful.
TL;DR: to make sure you own your stuff, here’s some tips about IP and contract law. I’ve also given you a free template document, too!
THE 10 IP LAW ESSENTIALS:
- You need a working understanding of IP law, otherwise you’re shooting yourself in the foot right from the start. Start with my quick guides to copyright, trademarks and patents (they were written a while ago now but explain the fundamentals).
- Most parts of a game are subject to and protected by IP law, but IP law does not cover everything. For example, copyright law does not protect the abstract idea of a game. In the EU and many other countries, the functionality of software cannot be protected (though in the US arguably it can right now).
- Some IP needs to be registered to be fully enforceable. Copyright does not (though in the US, copyright registration confers certain advantages in litigation). Trademarks, patents and some IP rights do require registration, so if you don’t register them it’s much harder to enforce them.
- If you work for yourself directly, you own your own original IP. If you work for yourself via a company or some other legal entity, that company/entity owns your original IP unless a contract says differently.
- If you work as an employee, your employer owns your original IP unless a contract says differently.
- If you work under a contract for someone (whether that’s a contractor agreement, a development/publishing agreement or some other deal) you own your original IP unless the contract (or possibly local law) says differently.
- If you work with other people on an original IP, each of you has to look at the above tests individually. In theory, original IP can be owned jointly by multiple persons. Again, what a contract says is very relevant.
- Regardless of who you are working for, if you are working directly or indirectly off someone else’s IP there is at least a risk that they may be able to object legally to you using the work, possibly even to claim your work as their own. Like it or not, that’s the legal position. This is where an industry lawyer is super useful.
- Even if your original IP is owned by someone else, in some countries you may still have residual rights in it. In particular, in EU countries you may have ‘moral rights’ which, very briefly, are high level rights to protect your association with your work (eg to be credited with it, possibly even to object to derogatory treatment of it). In some countries you can be asked to waive these rights by contract (eg the UK) but in others legally you cannot (eg France).
- Finally, some IP rights (eg trademarks) can be lost or legally challenged if the owner does not actually use them.
See a theme here? Yes, it’s contracts: the second most important element to who owns an IP (after IP law itself) is contracts.
THE 10 CONTRACT LAW ESSENTIALS:
- A contract is simply an agreement between 2+ persons in which they agree what to give each other and in return for what. For more information, read my (still ongoing) guide to contracts.
- As shown above, a contract can usually be used to change the basic IP ownership position under IP law.
- However, how the contract is drafted is CRITICAL. I can’t stress that enough: whether and how IP actually changes hands under a contract is absolutely critically affected by how well or badly that contract is written. Some key (but non-exhaustive) pointers follow.
- Is there a proper, industry-oriented definition of “Intellectual Property Rights”?
- Is the game/software/art etc itself properly defined and does it cover it fully? For example, if you’ve made a game, does it cover the gameplay mechanics? Artwork? Code? Sequels and prequels and do forth? Again, using an industry lawyer here is super useful.
- How is the IP referred to in the contract? In the US, “work for hire” has a specific meaning that implies strongly the work under the contract is owned by the commissioner, not the doer.
- Is the IP actually “assigned” (ie transferred) across to the person who is meant to own it? If not, the contract might not actually transfer ownership of the IP at all.
- Are there any restrictions on the use of the IP? For example, do the owner and creator have to agree on the IP’s usage?
- Is the transfer permanent or is it time limited, revocable or otherwise restricted?
- Is there anything under the applicable law of the contract or country of the owner or creator which in any way modifies the IP position? A contract can say anything it likes, but if that would breach applicable law it may be useless.
ACTIVATE LEGAL POWER: if in doubt, talk to an industry lawyer, seriously. IP ownership is one of the most important things for any creative business and the ones who care about it will be much better set up over the longhaul. You can’t always get what you want, a deal is a deal, hindsight is 20/20 and so forth, but it’s never too late to have a chat with a friendly legal eagle.
A QUICK CHECKLIST TO MAKE SURE YOU OWN YOUR IP:
- Read this guide. Ask me any questions.
- Read any applicable contracts: contractor, employment, development etc. Ask me any questions.
- If there is no contract, but everyone is happy that you should own the IP…
HERE’S A FREE IP OWNERSHIP AGREEMENT!
I’m going to give away a basic template IP assignment document for you to use, for free, under Creative Commons. Here it is (please read the notes at the start, they’re important). Hope you find it helpful and that it, and this guide, help at least a few people getting into IP problems. If this is popular, I hope to keep this guide, and the template, updated and developed over time. So, if you like this and would like more of it, please let me know via comments or @gamerlaw.
UPDATE 24-03-15: updated, shortened and ironed out some bugs in the document thanks to comments from @nickhallsa!
Sorry, this is the lawyer in me truly being unleashed, but in closing I have to repeat here the usual disclaimer (also in the template document itself): this is not legal advice and not a substitute for it. There’s no replacement for talking to a lawyer properly about your specific situation, mkay? You know where I am…