Protecting your back catalogue

Guides & Advice
Published: 23rd March 2022
Area: Intellectual Property

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With the first commercial arcade video game being released over 50 years ago, the ageing games industry is sitting on a potential wealth of dormant intellectual property (IP) waiting to be revitalised for new and nostalgic audiences. So, what rights may still exist in older games, and how can their owners prevent others from exploiting their IP without permission?

The industry appears to be riding on a wave of remakes, remasters and sequels of old classics, with Diablo 2’s resurrection and the remasters of Zelda: Link’s Awakening and Final Fantasy VII just a few successful examples. With many games remaining only in players’ memories, their successful revitalisation requires an understanding of the IP attached to them.

Relying on IP in the video games sector can be controversial though. There’s a difficult balance between using it to genuinely protect creations and using it to stifle the market. However, when used appropriately, IP is a vital business asset enabling developers and publishers to prevent competitors from taking advantage of a game’s reputation and popularity.

How might classic games still be protected?

Registered trade marks are a valuable right to hold in the gaming industry. As long as they are renewed and used, they survive indefinitely, protecting anything from titles, names and music, to sounds, images and colours. By registering for specific goods and services, companies can also protect their mark for alternative income streams, including merchandise.

However, if the mark is unused for a period of five years, it becomes susceptible to being revoked from the register. Even if the mark remains on the register after this time, it will likely be challenged should the owner come to enforce it. If a game is shelved, it is possible that registered marks have been allowed to expire, ending protection.

That said, if a trade mark has expired, there may still be unregistered rights in the UK that can be enforced under the common law of ‘passing off’. Passing off protects a business’ goodwill from damage by third parties seeking to benefit themselves commercially, for example through a similar name or packaging design. Protection can extend to names and logos (brands) as well as aspects of a game such as its look and feel or ‘get-up’.

In some circumstances, goodwill can survive longer than an unused trade mark. Unless the owner has deliberately abandoned its goodwill, if consumers still recognise certain elements of a game, then residual goodwill may still exist even if a trade mark has expired or is susceptible to challenge. For historically popular games, such as Metroid, this would be easier to establish than for a more obscure title with a niche fanbase.

There is also an abundance of copyright within video games, protecting not only the software itself, but other aspects including graphics, sounds and character designs. Usually in the UK, the employer owns the copyright, but where works are commissioned, as is common in the gaming industry, the first owner is the commissioned party. As a result, it’s essential to take assignments from suppliers, whether they be artists, composers, animators or programmers.

If a company is relying on a licence, the terms may not extend to the use of the copyrighted work in reissues, remakes or sequels. Should certain aspects be unusable because of this, it means rights have to be reacquired or risk taking away the nostalgia of a game. For example, imagine a new Sonic the Hedgehog game without the iconic ‘ding’ sound when he collects a ring.

It’s important that companies remember this when buying a business for its back catalogue. By carrying out a full IP due diligence check beforehand, purchasers can ensure they are buying all the rights they need to do what they plan to with the title. For those selling their back catalogue, failing to have IP assignment records could affect the value of the business or even prevent a sale, so it’s vital to document IP ownership.

Copyright is therefore a key tool for companies wishing to protect their historic games. However, using it as a weapon, or being perceived to be doing so, can also be reputationally damaging. In one case, a retrogaming entrepreneur who had purchased the rights to the classic ‘Horace’ game, shut down a super-fan of the largely forgotten title on YouTube, which went down poorly with fans and the media.

While trade marks and copyright are the main forms of IP protection seen in the video game industry, registered designs and patents are also relevant. Registered designs are often used for protecting video game hardware, but can also protect the look of a game, such as its gaming user interfaces and heads up displays. Registrations last for 25 years, if they are renewed every five years, and are simple and cheap to obtain. Proving particularly popular with mobile app developers and publishers, it’s possible that registered designs will be used more commonly to protect vintage games in the future.

In the UK, patents for computer programs are specifically excluded from protection, making them difficult to obtain for video games. However, this is not the case in all territories, such as the United States, where software patents are prevalent. Examples include the ‘ping’ system in Apex Legends, and the split-screen dual reality mode in The Medium. Providing 20 years of protection, they are a powerful IP right to hold, so are worth considering early on in development, despite them being less common within the UK gaming industry.

Best IP Practice

For companies that own a back catalogue of games, it isn’t too late to consider registering new trade marks. It’s also important to secure trade mark protection for all relevant goods and services, such as clothing and merchandise, to provide better protection for these alternative income streams.

For existing trade marks, diversifying the way in which they are used reduces the risk of losing them. For example, Nintendo offers back catalogue NES, SNES, and N64 games via Switch Online. By using the marks, the company is not only reducing the risk of a challenge, but also keeping their goodwill alive.

Registered designs can be useful for filling gaps left by other IP rights. Although unfortunately not an option for protecting old games whose designs have been public for a long time, they are an ideal way to protect aspects of new games long into the future.

Cult games now will one day be vintage, so considering IP protection from the outset is essential. Most importantly, healthy IP rights help to ensure other companies don’t swoop in and take advantage of nostalgic audiences.

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Dan is recognised in the 2021 edition of The Legal 500 as a “Key Lawyer” within Shakespeare Martineau’s Tier 2 ranked Intellectual Property team, and in particular for “[standing] out for his varied caseload, which encompasses IP creation, protection and enforcement mandates.

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