Upload
gameslondon
View
114
Download
4
Embed Size (px)
Citation preview
osborneclarke.com Private & Confidential
1
Conclusion
1
Games Finance Summit - 5 April 2016IP 101
Paul Gardner
osborneclarke.com
2
Why IP?
• IP is a key component in any games finance transaction
• Poor housekeeping may delay or lose a deal
• You should be doing this stuff anyway
osborneclarke.com
3
Overview
• A 2 minute introduction to IP
• A 7 step IP strategy
• IP in games finance transactions
osborneclarke.com
4
A 2 minute introduction to IP
• Key IP rights
‒Copyright (in software, artistic works, music)
‒Trade marks (in brands and logos)
‒Domain names
‒Patents (for novel and inventive steps)
‒ [Confidential information]• Copyright arises automatically and (in the UK) is not capable of registration
• Copyright and unregistered trade marks requires evidence of ownership
osborneclarke.com
5
A 7 step IP strategy
• Development of games
• Arrangements with business partners
• Protection against third party infringement
osborneclarke.com
6
Development of gamesStep 1. Assignments from all contributors
• Founders
‒Assignment to the company (particularly copyright and domain names)
• Employees
‒ IP created "in the course of their duties" owned by employer
‒Usual to reflect and enhance position in employment contracts
‒ Include confidentiality provisions
‒Adopt a personal projects policy?
‒Restrictive covenants?
osborneclarke.com
7
Development of gamesStep 1. Assignments from all contributors
• Contractors
‒no concept of "work for hire" in the UK
‒beware of conditional assignments
osborneclarke.com
8
Development of games Step 2. Choose names carefully
• Avoid descriptive names
• Make searches to check availability
‒Relevant app stores
‒Google searches
‒Simple trade mark search tools e.g. https://www.tmdn.org/tmview/welcome
osborneclarke.com
9
Arrangements with business partnersStep 3. Retain core IP
• Tools and technology
‒beware "as at the date of this Agreement"‒may need an assignment of any modifications and enhancements by
publisher
osborneclarke.com
10
Arrangements with business partnersStep 4. Watch out for contractual restrictions
• Scope of licences / assignment
‒careful definition of rights licenced and excluded (consider platforms, operating systems, delivery technologies)
‒distinguish between exclusive and non-exclusive rights
• Reversion of rights
‒on termination (check survival clause)
‒non-use (and try to limit length of term)
• Non-compete provisions
• ROFRs
osborneclarke.com
11
Arrangements with business partnersStep 5. Protect confidential information
• Use an NDA where appropriate
‒sensitive information
‒where a patent application is to be made
• Check terms of your NDA, e.g.
‒definition of "confidential information" (which can sometimes be too narrow)
‒should limit use to specified purposes
‒should provide for the return or destruction of confidential information
osborneclarke.com
12
Protection against third party infringementStep 6. Apply for registrations where appropriate
• Copyright
‒US and China
• Trade marks
‒Applications in key jurisdictions
• Patents
osborneclarke.com
13
Protection against third party infringement Step 7. Protect against cloning
• Build cloning protection into the design
• Develop a process for dealing with clones (typically low cost actions for the vast majority of clones and focus resources on clones that pose a higher level of concern)
osborneclarke.com
14
IP in games finance transactions
• Poor housekeeping may delay or lose a deal
• IP will be assigned or subject to a charge
• Some IP may be used in other projects (and therefore should not be subject to that assignment or charge)
• Need ability to get back / have charge removed
• Need ability to use the IP during the intervening period
osborneclarke.com
15
Speaker
Paul GardnerPartnerCommercialT +44 20 7105 7066M +44 7768 [email protected]
[insert photo here]Height = 6cmWidth = 6cm
osborneclarke.com Private & Confidential
16
Conclusion
16
Games Finance Summit - 5 April 2016IP 101
Paul Gardner