Canada: Get Your IP Game On: Intellectual Property Protection And Video Games

Last Updated: September 20 2017
Article by Jordana Sanft

Most Read Contributor in Canada, December 2017

The video game industry around the world and in Canada is booming. Not only does this market create new and varied forms of entertainment, it also creates jobs and generates staggering sales revenues. Industry statistics for the United States show sales of computer and video games having increased from $10.1 billion in 2009 to $24.5 billion in 2016.1

In Canada, the Electronic Software Association of Canada 2015 Industry Report states that it identified 472 active studios in operation across Canada in 2015, compared to 329 studios in 2013.2 Such increases are fast and substantial. Over the years we have also seen accessibility to gaming increasing via different platforms from consoles to mobile and we have seen the gaming industry attract a wider audience across the ages of children, men and women.

With all this industry growth comes increased creativity and technological advancement. As a result, there can be great value in the intellectual property associated with video games and/or gaming companies. Knowing what intellectual property is, how it applies and how to protect it are critical considerations for those involved in the development and commercialization of video games. This article will discuss the key areas of Canadian intellectual property that are relevant to the gaming industry.

What is Intellectual property?

Intellectual property ("IP") relates to intangible assets, including inventions, brands, new technologies, source code and artistic works. More specifically, IP pertains to patents, trade-marks, copyright and industrial design. IP also extends to trade secrets and confidential information; however, these latter two categories are not governed by a specific statute, unlike the other kinds of IP in Canada. Outlined below is a brief description of some of the main characteristics of each of these areas of IP.

Patents: Patents provide a time-limited protection for an invention.3 A patent entitles the patent owner to the exclusive right to make, use and sell his or her invention in exchange for full and clear disclosure on how to work the invention.4 This is often referred to as the quid pro quo that is required in order to obtain the fixed term patent monopoly. An invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.5

A patent essentially places a fence around your invention in an effort to prevent others from using your intellectual property during the life of the patent, which is 20 years from the date of filing in Canada. Unlawful making, using and selling of an invention can result in a finding of patent infringement and relief including damages and injunctions. By obtaining a patent, a patent owner benefits from the presumption of validity.6 Patent rights can be a valuable asset to the patent owner and/or any licensee.

Trade-marks: A trade-mark is unique and identifies the source of the goods and services with which it is associated.7 It may consist of a combination of letters, words, sounds or designs that distinguishes one company's goods or services from those of others in the marketplace.

A trade-mark may come to be recognized and associated with more than the goods and services of a company – it may become associated with the company's reputation or goodwill.8 It is part of your brand.

By registering a trade-mark, you protect your mark from misuse by others. A registered trade-mark entitles the trade-mark owner to exclusive right to use that trade-mark in association with the identified goods and services throughout Canada for 15 years.9 The term for trade-mark protection is renewable. Trade-mark rights may also arise through use of a trade-mark at common law. Although certain IP protection exists for non-registered trade-marks, registration provides additional benefits to the owner including additional remedies in the event of trade-mark infringement10 and passing off.11

Copyright: Copyright relates to new original artistic, literary, dramatic or musical works.12 It provides for the exclusive legal right to produce, reproduce, publish or perform an original literary, artistic, dramatic or musical work.13 The owner of the copyright is usually the creator of the work but this is not always the case, where for example an employer has the copyright in work created by employees.14 These relationships and ownership issues may be governed by law and contract. Copyright automatically subsists in the work created.15 Copyright may also be registered, which provides further support for the presumption of validity.16 The general term for copyright protection is the life of the creator plus 50 years.17 This term is not renewable unlike with trade-marks; but similar to patents once the term of copyright ends, the intellectual property that had been subject to exclusive rights then becomes part of the public domain.

Industrial design: Industrial design relates to the features of a product that appeal to the eye. This includes things like the pattern on a clothing garment, the shape of a computer console, the contour of a bottle. Distinctive and attractive features may give a product marketplace advantages and as such can be an important part of your IP assets.18

Registration of an industrial design provides exclusivity for your use and protection in the design for up to 10 years in Canada.19 As with other forms of IP, you may sell, assign or license your IP rights to others to make, use and sell your industrial design.20 Improper use of an industrial design may result in infringement and relief may be sought by the proprietor of the design.21

It is important to appreciate that registration of an industrial design does not protect what the product is made of, how it is made or how it works. It is all about the product design appeal.22

As with the case of patents, you need to apply for your industrial design early because as soon as the design is published in Canada or elsewhere, you have one year within which to file the application for registration in Canada. If you miss the deadline, you miss the opportunity to obtain registration and to protect your industrial design.

Trade secret and confidential information: Trade secret typically refers to things like formulae, processes and patterns and more generally to valuable technical information that is kept confidential. Confidential information typically refers to valuable information that is not public and is kept confidential and may apply to things like price lists, client lists and other customer information.

The value of the trade secret and confidential information is maintained as long as the relevant information remains confidential. This can be a valuable asset to the owner of the secret or confidential information. However once the "cat is out of the bag" the value cannot be restored and the "secret" is exposed. There are various kinds of remedies, available through legal action, to recover from the damage of unintentional disclosure and/or breach. As such, care and caution must be exercised to diligently and properly protect this information in order to keep its value and to ensure secret information is used properly.23

In the world of video games there is a convergence of various kinds of IP.

How does intellectual property apply to video games?

In order to appreciate how IP applies to video games, the table below sets out the various types of IP discussed above and provides examples of what aspect of a video game may be protected by which area of IP. In addition, the table below also raises the important consideration of licenses and assignments relevant to IP rights. Ownership and licensing interests can arise in the development and commercialization of video games and are key to properly protecting and enforcing your IP.

Copyright Trade-marks Trade Secrets and Confidential Information Patents and Industrial Design License and Assignments
  • Music
  • Story
  • Characters
  • Art
  • Code
  • Box design
  • Website design
  • Manuals
  • Derivative Works
  • Technological Protection Measures "TPM"
  • Personality rights/moral rights
  • Company brands
  • Company name
  • Game branding
  • In game product placements/ advertising
  • Parody/false endorsements
  • Client lists and other contact lists
  • Contracts with Third parties e.g. Developers and publishers
  • Development tools
  • Code
  • Deals and pricing
  • Game design elements
  • Software
  • Network or database design
  • Hardware technology
  • Shape of game accessories e.g. special console
  • Assignments from game designers, programmers, engineers and or contributors
  • Ownership agreements, licenses and assignments
  • Derivative work related licenses
  • User agreements

The above information is intended to facilitate associating key aspects of your video game's artistic and technological content and its identifiable IP interest. Understanding these factors allows for early identification of IP interests thereby making protection of those interests easier.

Because of the creative and technological fusion in video games, certain more complex questions arise in the context of IP, including: how does live game play impact copyright? How to best protect derivative works in game characters? What balance to strike between accessibility to source code while protecting a valuable asset? What licenses and assignments are needed? How can technological protection measures (TPMs) be used in your game? Is there game hardware that should be the subject of patent protection? What about in-game mechanics? How does Canadian IP protection for video games differ from other key target markets?

Many of these considerations will require case-specific application to the legal and factual circumstances of each case. With the ongoing advancement in this space, interesting legal challenges will continue to arise. Being alert to IP issues will assist in identifying your rights and will also help to avoid unintentionally infringing on IP rights of others. In certain cases, knowing where someone else's IP begins will be as important as knowing the scope of your own rights.

How to protect your intellectual property?

The first step in protecting your intellectual property is to recognize what kind of IP rights you or your company may have. You then want to invest in protecting those rights to ensure you do not inadvertently lose them and to ensure you maximize the value of the game and/or company.

In an ideal world you would protect all the various kinds of IP that apply to your video game and company. However the reality for many in the video game industry is that funding can be limited and advances in technology can happen rapidly. Both of these forces can pose obstacles in protecting your IP. In such circumstances you should consider focusing on protecting your core IP assets first, as those will be most important for development and commercialization purposes. You should also consider if you have IP that is time-sensitive, like in the case of patents and industrial designs. Ensuring the necessary filings take place within the relevant deadline is a critical consideration in evaluating what aspects of your IP to protect and when. Understanding your business objectives, plans for further development and consulting with legal experts will ensure the best strategy is adopted.

In conclusion, being proactive in understanding and protecting your IP is a critical part of the gaming industry. While setting out to design and develop a creative new video game, take time to design a coherent IP strategy and get your IP game on!

Footnotes

[1] Stephen E. Siwek, Video Games in the 21st Century: The 2017 Report (Entertainment Software Association, 2017) at 20, online: (www.theesa.com/wp-content/uploads/2017/02/ESA_EconomicImpactReport_Design_V3.pdf).

[2] Nordicity, Canada's Video Game Industry In 2015 (Entertainment Software Association of Canada, 2015) at 3, online: (www.nordicity.com/media/20151210faaebhea.pdf).

[3] A Canadian patent has a term of 20 years from the date of filing. See Patent Act, RSC 1985, c P-4, s 44.

[4] Patent Act, supra note 3, s 27(3).

[5] Ibid, s 2.

[6] Ibid, s 43(2).

[7] Trade-marks Act, RSC 1985, c T-13, s 2.

[8] Ibid, s 22.

[9] Ibid, ss 19-20, 46.

[10] Ibid, s 20.

[11] Ibid, s 7(b).

[12] Copyright Act, RSC 1985, c-42, ss 2-3, 15, 18, 21, 26.

[13] Ibid, s 3. See also Copyright Act, supra note 12, ss 27, 29.

[14] Ibid, s 13.

[15] Ibid, s 5.

[16] Ibid, s 34.

[17] Ibid, ss 6-7, 9, 11.1, 12.

[18] Industrial Design Act, RSC 1985, c I-9, s 2. See also CIPO, "What is an Industrial Design?" (November 16, 2015), online: CIPO (www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03717.html).

[19] Industrial Design Act, supra note 18, ss 9-10.

[20] Ibid, ss 13, 15. See also Industrial Design Act, supra note 18, s 11.

[21] Ibid, ss 17-18.

[22] Ibid, s 5.1.

[23] See e.g. XY, LLC v Canadian Topsires Selection Inc., 2016 BCSC 1095, 140 CPR (4th) 101.


About Norton Rose Fulbright Canada LLP

Norton Rose Fulbright is a global law firm. We provide the world's pre-eminent corporations and financial institutions with a full business law service. We have more than 3800 lawyers and other legal staff based in more than 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.

Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.

Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.

For more information about Norton Rose Fulbright, see nortonrosefulbright.com/legal-notices.

Law around the world
nortonrosefulbright.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions