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Studios and designers: How to protect the intellectual property of your video games?
Behind every video game, there is intellectual property (IP) which is worth protecting to optimize monetisation of the game. As discussed in Studios and designers: Are you sure that you own the intellectual property rights to your video games, the first step for studios and designers is to make sure that they own all IP rights on the video game. The next step is to identify what type of IP protection is available between trademarks, copyrights and patents and then put in place an IP strategy to protect these assets in Canada and abroad. Below is a summary of the types of protection to consider to fully protect a video game. Trademarks The name of a video game is a valuable asset, with a potential to become internationally famous. Just think about Call of Duty, Fortnite, Minecraft and Assassin’s Creed or, for the more nostalgic, classic games such as Super Mario. Pokémon and Pacman. Trademarks have this power to evoke unique and captivating experience in the gaming world. In this industry, experience shows that a video game may become an instant international success, since it is an online market with powerful gaming influencers. For this reason, being proactive with trademark protection is key. What does it mean? First, clearance searches should be made as soon as you decide on the name of your game, in the most important markets where you anticipate sales. The idea here is to make sure that your brand is not conflicting with other marks so that you may use it and register it in your main market. Once the mark is cleared, you may then proceed with filing. Here again, the earlier the better as trademark protection is, in most countries, granted to the first-to-file. Filing before your project becomes public is therefore strongly recommend. As for the scope of the application, it should of course cover the game itself but also potential merchandising goods, either because it is part of the business plan to monetize the brand, or as a defensive strategy. Apart from the main brand, other aspects of the game may qualify as trademarks and be protectable. For instance, a sound or sequence of sounds associated with starting a console or a game could potentially be registered as trademarks. The names and image of characters in a game may also be protected, especially for merchandising goods. In short, for studios and designers involved in the video game industry, trademark registration is key to getting the most value out of a video game. This begins with a well-orchestrated protection strategy to minimize risk of conflicts and to build a solid and valuable brand. Copyrights A video game is a mix of literary, artistic and musical works which are protected by copyright, including computer program behind a game’s architecture is also explicitly protected by law.1 The protection offered by the Copyright Act (“CA”) applies as soon as a work is created, without the need for registration. This protection extends to the 176 member countries of the Berne Convention. Although the protection of a work by copyright is automatic, copyright owners may register their right with the Canadian Intellectual Property Office (“CIPO”) at any time. In particular, registration makes it easier to prove ownership of the right in the event of a dispute in that it creates the presumption that the person named in the registration owns the copyright. Copyright protection applies to the entirety of the game, as well as to its various components. Any infringement of these rights by a third party may give rise to a copyright infringement claim if the work or a substantial part of it is copied, unless a defense such as fair dealing is applicable. In this respect, the following activities may qualify as fair dealing: research and private study, education, parody as well as criticism or review and news reporting. Is video game live streaming copyright infringement? In recent years, the phenomenon of video game live streaming has really taken off. Video gamers film or record their computer screens and broadcast them on platforms such as YouTube and Twitch to show their characters, strategies and tactics for completing certain levels of a game. Some live streaming video gamers, who make this their living, have achieved celebrity status and have thousands of followers. Is live streaming a video game without express permission copyright infringement? The courts have yet to rule on whether live streaming games online constitutes a copyright infringement to communicate the work to the public by telecommunication under section 3(1)(f) of the Act. Faced with this widely popular trend, some studios accept this practice because positive reviews from such gamers can boost game sales. Others criticize the fact that they profit from video games without copyright owners receiving any compensation. Chances are that live streaming is not the highest priority of the video industry who is more concerned by the illegal downloads and counterfeits, which may explain why the courts have not yet had the opportunity to rule on video game live streaming. Patents Patents protect the functional aspects of an invention. The owner of a patent may prevent anyone from making, using or commercializing the patented innovation from the date the patent is obtained. Three aspects are taken into consideration before granting a patent:2 Novelty – The invention must be different or be innovative compared to anything that has been done before, anywhere in the world. Utility – The invention must have a useful function and economic value. Inventiveness – The invention must not be obvious to a person skilled in the field. In Canada, it is not possible to patent an abstract idea, but it is possible to patent the physical embodiment of that idea, provided that it meets the criteria of novelty, utility and inventiveness. Canadian patents in the video game industry Patents obtained in the video game industry mainly relate to consoles, controllers, headsets and other gaming accessories. The video game industry has proved to be innovative with the development of inventions that are both fun and useful. In 2012, Nike patented an invention to encourage physical activity among video game players.3 The patent describes a device placed in a gamer’s shoe when the gamer is physically active and connected to a video game. The energy spent by the gamer gives energy to the virtual character. Once the character’s energy is depleted, the gamer must engage in physical activity again. Are game play mechanics patentable? Certain aspects of a video game are less easy to patent, in particular the game play mechanics, which are a distinctive aspect from the standpoint of gamers when choosing a video game. The game play mechanics consists in the virtual experience of a video game: character movement, the interaction of the player with the game, the way the player moves through the levels of the game, etc. Unique and well-developed game play mechanics can be a great asset for a developer wanting to market new versions of a game. Gamers will go back to a familiar game to get immersed in a new experience. This makes patenting such an experience appealing for a studio. Given that game play mechanics are developed using computer code, it might seem that even if the criteria of novelty, utility and inventiveness were met, this type of invention could not be physically embodied and thus could not be patented. To be patented, game play mechanics must have a physical component in addition to the code itself. Consider a patent describing a video game in which a gamer’s heartbeat is integrated into the game,4 which is a good illustration of physical embodiment. Such transposition of a gamer’s vital signs is done physically through a heart monitor worn by the gamer and connected to the game. As all these aspects were described in the invention, this type of inventive game play mechanics was considered patentable. In the United States, the criteria for patents are similar to those in Canada, meaning that abstract game play mechanics would have to be linked to a physical aspect in order to be patentable. Conclusion Implementing an IP protection strategy prior to launching a video game can prevent conflicts, increase the value of assets and strongly position a company in the market to maximize profits. Copyright Act, section 2. “A guide to patents,” Canadian Intellectual Property Office, Government of Canada, 2020-02-24. Patent No. 2,596,041, issued February 9, 2006. Patent No. 2,208,932, issued June 26, 1997.
Studios and designers: Are you sure that you own the intellectual property rights to your video games?
The year 2020 will have been difficult for the vast majority of industries, and in particular for the arts, entertainment and recreation industry. The video game industry, however, is growing in leaps and bounds. For example, Nintendo and PlayStation have each set record sales for their games released in 2020, including Animal Crossing:New Horizons and The Last of UsPart II. Over the past few decades, the number of video game players has never stopped increasing. The year 2020 will surely be no exception, especially considering the COVID-19 pandemic. Playing a video game is not only a way to have fun: it is also a way to stay connected with a community that shares the same interests. The world of video games is so popular that the Government of Canada teamed up with the Entertainment Software Association of Canada (“ESAC”) to launch the #CrushCOVID campaign, using ESAC’s and its members’ social media platforms to share mobilization and awareness messages about public health measures. The video game industry is an economic powerhouse in Canada. According to the latest ESAC report, the industry contributed an estimated $4.5 billion to Canada’s GDP in 2019 — up 20% from 20171 — and these figures will likely continue to rise. This video game boom has a decisive impact on the value of companies innovating in this field. A number of recent transactions illustrate this. For instance, last September, Microsoft acquired Bethesda Softworks, one of the largest video game publishers, for US$7.5 billion. Microsoft also bought the Swedish company Mojang Studios, which designed the legendary game Minecraft, for US$2.5 billion in 2014. Closer to home in Montreal, Beat Games was bought by Facebook following the launch of its virtual reality game, Beat Saber, while Typhoon Studios was bought by Google. A successful video game may be lucrative in various ways, between the sale of video games themselves and merchandising goods, such as clothing and accessories, figurines, as well as game-inspired TV series with giants such as Netflix, Amazon Prime, HBO and Hulu, which are always on the lookout for hit TV series. Protecting its intellectual property (“IP”) on a video game is key to monetize all investment put into the development of a game. Doing so is even more crucial in the context where video game commercialization knows no borders, and a game can become an international success overnight. In short, any company should ask itself the following questions before launching its video game, to better position itself in relation to potential investors, licensees or partners, as well as competitors and counterfeiters: Does my company own all of the IP rights on the video game? What kind of IP protection applies and where should IP be protected? Let’s look at the first question. Does my company own all of the IP rights on the video game? Designing a video game usually involves a team of creators, including ideators, programmers, writers, visual and sound effects designers. All these people contribute to the creation of the work that is the video game and the underlying IP. For instance, Ubisoft worked with muralists and graphic designers for its recent game, Watch Dogs: Legion. They designed nearly 300 works to create a post-Brexit urban London. The initiative earned Ubisoft praise even before the game’s release last October.2 Depending on their contribution to the game’s design and their status as employees or consultants, these creators may qualify as authors. As such, they may be considered co-owners of the copyright on the video game. Generally, the copyrights developed by employees in the course of their employment belong to the employer,3 while a consultant remains the owner of the copyrights, unless otherwise agreed upon in writing. Thus, a company behind a video game must make sure that its consultants assigns their IP rights to ensure that it retains full ownership of the copyright. What happens if a consultant has not assigned the copyrights to the company? Can the consultant claim co-ownership of the entire game, or are the consultant’s rights limited to the part he created, such as specific drawings, or music for a particular scene? This is an important question which may have an impact on profit sharing. In Seggie c. Roofdog Games Inc.,4the Superior Court held that a person (non-employee) whose contribution to a game is minimal cannot be considered as a co-author of the entire video game, insofar as: The contribution is limited to a few images; These images are distinguishable from the rest of the work; and The parties had no common intention of creating a collaborative work. Seggie was therefore denied the compensation of 25% of the profits generated by the game that he had claimed. However, the court recognized that Seggie held a copyright on the works he specifically created and which were incorporated into the game, and granted him a compensation of $10,000. Incidentally, this compensation is in our opinion arguable, given that Seggie had agreed to work pro bono for his friend. This decision shows how important it is to have a copyright assignment signed by any person contributing to the conception of a work, regardless of the extent of their involvement. Waiver of moral rights In addition to the assignment of copyrights, the company owning a video game should also ensure that the authors sign a waiver of their moral rights, so as not to limit the potential to modify the game or to associate it with another product or a cause. Indeed, the authors of a work have moral rights that enable them to oppose the use of their work in connection with another product or a cause, service or institution to the prejudice of their honour or reputation. An example would be the use of music or a character from a video game to promote a cause or product, or a television series derived from the game whose script could potentially harm the author’s reputation. To make sure you have plenty of leeway to exploit the commercial potential of the game, a waiver of moral rights should be signed by any employee and consultant involved in the creation of the video game. Conclusion Launching a video game requires a huge investment in terms of resources, time and creativity. In order to develop an effective protection strategy, the first step is to make sure that you own all rights. Then, you are in a position to fully protect and enjoy your IP rights. The next article in this series will discuss the significance and application of these IP rights—i.e., trademarks, copyrights and patents—to the video game industry. “The Canadian Video Game Industry 2019,” Entertainment Software Association of Canada, November 2019, [online]. CLÉMENT, Éric, “Le talent montréalais en vedette dans un nouveau jeu d’Ubisoft,” published in La Presse+, October 21, 2020, edition. Copyright Act, subsection 13(3). Seggie c. Roofdog Games Inc., 2015 QCCS 6462.
Use of patents in artificial intelligence: What does the new CIPO report say?
Artificial intelligence is one of the areas of technology where there is currently the most research and development in Canada. To preserve Canada's advantageous position in this area, it is important to consider all forms of intellectual property protection that may apply. Although copyright has historically been the preferred form of intellectual property in computer science, patents are nevertheless very useful in the field of artificial intelligence. The monopoly they grant can be an important incentive to foster innovation. This is why the Canadian Intellectual Property Office (CIPO) felt the need to report on the state of artificial intelligence and patents in Canada. In its report titled Processing Artificial Intelligence: Highlighting the Canadian Patent Landscape published in October 2020, CIPO presents statistics that clearly demonstrate the upward trend in patent activity by Canadian researchers in the area of artificial intelligence. However, this increase remains much less marked than those observed in the United States and China, the champions in the field. Nevertheless, Canada ranked sixth in the world in the number of patented inventions attributed to Canadian researchers and institutions. International patent activity in AI between 1998 et 2017 Reproduced with the permission of the Minister of Industry, 2020 International patent activity by assignee's country of origin in AI between 1998 and 2017 Reproduced with the permission of the Minister of Industry, 2020 Canadian researchers are particularly specialized in natural language processing, which is not surprising for a bilingual country. But their strengths also lie in knowledge representation and reasoning, and in computer vision and robotics. We can also see that, generally speaking, the most active areas of application for artificial intelligence in Canada are in life sciences and medicine and computer networks, followed by energy management, in particular. This seems to be a natural fit for Canada, a country with well-developed healthcare systems and telecommunications and energy infrastructure that reflects its vast territory. The only shortcoming is the lack of representation of women in artificial intelligence patent applications in Canada. This is an important long-term issue, since maintaining the country's competitiveness will necessarily require ensuring that all the best talent is involved in the development of artificial intelligence technology in Canada. Regardless of which of these fields you work in, it may be important to consult a patent agent early in the invention process, particularly to ensure optimal protection of your inventions and to maximize the benefits for Canadian institutions and businesses. Please do not hesitate to contact a member of our team!
Federal Court clarifies the assessment of patent-eligible subject matter in Canada
In Yves Choueifaty v. Attorney General of Canada1, the Federal Court of Canada has issued a significant decision concerning the assessment of patent-eligible subject matter, including the approach to be used for such assessment during the examination of Canadian patent applications. Historical perspective In keeping in step with advances in technology, the Canadian Courts have assessed and established certain principles in assessing patent-eligible subject matter. A key decision in this regard related to the patentability of Amazon.com’s “one-click” method for online purchasing. In the Amazon decision2, the Federal Court of Appeal in particular established that the assessment of patent-eligible subject matter requires a “purposive construction” of the claims, utilizing the criteria and approach long established by the Supreme Court3, and notably requiring the assessment as to whether or not a claim element is essential. As summarized by the Federal Court, two questions in particular are to be asked in this regard: Would it be obvious to a skilled reader that varying a particular element would not effect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential. Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element. Importantly, the Supreme Court established that such an assessment should not be based on what is considered to be the “substance of the invention.” Subsequent to the Amazon decision, the Canadian Intellectual Property Office (CIPO) established examination guidelines to assess the patent-eligibility of subject matter in various technology areas. Such guidelines in particular followed a problem-solution approach to determine whether an element is essential and in turn the patent eligibility of a claim. Background The Choueifaty case concerns Canadian Patent Application No. 2,635,393 entitled “Method and Systems for Provision of an Anti-Benchmark Portfolio”, claiming a computer-implemented method for providing an anti-benchmark portfolio. Briefly, the method entails acquiring and processing data regarding securities in a portfolio via particular steps and calculations to generate an anti-benchmark portfolio, the various steps being carried out using a computer. During examination and appeal proceedings at CIPO, the assessment of patentable subject matter was performed via the problem-solution approach set forth in the examination guidelines relating to computer-implemented inventions. Using this approach, it was determined that the solution and in turn the essential elements of the claims were “directed to a scheme or rules involving mere calculations”, and that using a computer was not an essential element of the claims. The claims were thus rejected by CIPO on the basis that: When a claim’s essential elements are only the rules and steps of an abstract algorithm, however, that claim is non-statutory. The Court’s decision On appeal to the Federal Court, it was determined that CIPO did not apply the proper test, noting that the problem-solution approach of CIPO’s examination guidelines not only did not follow the purposive construction test of the Supreme Court, but further is an approach that the Supreme Court established should not be used: The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada ... Notably, the Court noted that CIPO’s approach failed to consider the second factor noted above, concerning the inventor’s intention, which is contrary to the test established by the Supreme Court. The Court thus allowed the appeal and set aside CIPO’s decision to reject the application, requesting that CIPO undertake a fresh assessment of this issue in accordance with the Court’s reasons. Future considerations This decision brings much needed clarity to the assessment of patentable subject matter in Canada and is a welcome development for patent applicants in a variety of technology areas. The Court’s clear instructions to use the criteria of purposive construction established by the Supreme Court will assist in the analyses of various issues of patentability during patent examination. It will be interesting to see how CIPO will proceed in light of the decision, in respect of its fresh assessment as directed by the Court and also the possibility of pursuing an appeal. Stay tuned and please do not hesitate to contact a professional of our Patents team for more information! 2020 FC 837. Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328. Free World Trust v. Électro Santé Inc., 2000 SCC 66; Whirlpool Corp. v. Camco Inc., 2000 SCC 67
Getting on the fast track: Accelerating patent examination in Canada
Would you like to obtain a Canadian patent quickly? You’re in luck – mechanisms are available to accelerate patent examination at the Canadian Intellectual Property Office (CIPO), depending on the technology, the situation and your particular needs. Benefits Such acceleration of examination greatly reduces the time to receive an Examiner’s report from CIPO – down to within a few months, as opposed to about a year or more depending on the technology area. Subsequently, the accelerated “rhythm” of examination is maintained throughout examination, assuming all requirements are maintained. The overall result is that a Canadian patent may be obtained significantly faster than if the application was examined under the regular track of examination. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> How does it work? Choice of three mechanisms In all cases, the first requirement is to request regular examination of the patent application, which may be done at filing or up to 5 years later. For a Canadian national phase of a PCT application, the deadline to do so is 5 years from the PCT filing date. Once regular examination has been requested, there are three mechanisms for acceleration: 1. “Special Order” accelerated examination Requesting “Special Order” accelerated examination pursuant to subsection 28(1)(a) of the Patent Rules entails filing the request for acceleration together with payment of an official fee. Interestingly, the request may be made by “any person”, i.e. the Applicant or a third party (the latter being extremely rare), if failure to advance the application is likely to prejudice that person’s rights. Further, if the application has not yet been published, a request for early publication, which may only be made by the Applicant, is required. CIPO often shortens the delay to file a response to an Examiner’s report for “Special Order” applications (typically 3 months instead of 6 months for regular examination), which means that the Applicant must be ready to act more quickly when an Examiner’s report is issued. This mechanism is the most broadly applicable of the three. It does not depend on the area of technology, and offers the greatest flexibility in the claims which can be presented, as any number or type of claims may be presented as long as their subject matter finds sufficient basis in the application as filed. It should be noted, however, that this mechanism is unavailable or lost if an extension is requested, or if the case undergoes a period of abandonment, after April 30, 2011. Overall, this mechanism is a good option if flexibility in claiming is important and/or the other mechanisms are unsuitable. 2. “Green-tech” accelerated examination As the name suggests, this mechanism is directed to patent applications in green technologies, falling under the following broad definition: “technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources” Requesting “Green-tech” accelerated examination pursuant to subsection 28(1)(b) of the Patent Rules entails filing a request for acceleration together with a declaration that the application relates to a green technology as defined above. No official fee is required. Otherwise, this mechanism is similar to “Special Order” accelerated examination, in that there is flexibility in the claims that may be presented, the accelerated track is unavailable/lost in cases of extension or abandonment, and publication or a request to that effect is required. Overall, this mechanism is a good option if the application relates to a green technology. 3. Patent Prosecution Highway (PPH) The PPH is based on a series of agreements between CIPO and partner patent offices, under which an accelerated examination may be carried out by CIPO based on a positive “work product” of the partner patent office in their counterpart application. The “work product” typically refers to claims allowed or granted by the partner patent office, but may also refer to claims defined as being novel and inventive by the partner patent office when acting as a PCT International Search/Examination authority (including CIPO) in a counterpart PCT application. Currently, CIPO has PPH agreements with over two dozen partner patent offices (the list may be found here), and is constantly adding more. While requesting PPH accelerated examination does not require an official fee, it typically requires submitting an amendment together with the request, to bring the Canadian claims in line with those of the partner patent office on which the request is based. Various formalities of Canadian practice may also be addressed at that time. Further, publication of the application or a request to that effect is required. However, unlike the mechanisms described above, a PPH request can no longer be made if CIPO has already issued a first Examiner’s report. The main difference between the PPH and the other mechanisms noted above is that under the PPH, the Canadian claims must “sufficiently correspond” to those of the partner patent office, thus resulting in reduced flexibility of claiming in the Canadian case. While extension or abandonment does not preclude/terminate use of the PPH (in contrast to the other mechanisms), PPH accelerated status will be lost if the claims are subsequently amended to no longer “sufficiently correspond” to those of the partner patent office. Overall, the PPH is a good option if the counterpart allowed/granted claims cover all the claims of interest to be pursued in Canada. We invite you to read our previous newsletter on the double-patenting practice in Canada for potential pitfalls of PPH accelerated examination in cases where multiple claim sets are being pursued in multiple related applications in the foreign jurisdiction (a common strategy in the US, for example). Ready, set, go! So if you have a need for speed, please contact us to determine the mechanism to accelerate examination that best suits your case, and fasten your seat belt!