`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Stephen McArthur (stephen@smcarthurlaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 86928557 - VIDEO GAME LAW SCHOOL - N/A
`
`9/30/2016 5:11:12 PM
`
`ECOM120@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`Attachment - 15
`Attachment - 16
`Attachment - 17
`Attachment - 18
`Attachment - 19
`Attachment - 20
`Attachment - 21
`Attachment - 22
`Attachment - 23
`Attachment - 24
`Attachment - 25
`Attachment - 26
`Attachment - 27
`Attachment - 28
`Attachment - 29
`Attachment - 30
`Attachment - 31
`Attachment - 32
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO. (cid:160) 86928557
`
`(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160)M
`
`ARK: VIDEO GAME LAW SCHOOL
`
`CORRESPONDENT ADDRESS:
`(cid:160)(cid:160)
`(cid:160)(cid:160) (cid:160) (cid:160) STEPHEN MCARTHUR
`(cid:160)(cid:160)
`(cid:160)(cid:160) (cid:160) (cid:160) The McArthur Law Firm
`(cid:160) (cid:160) (cid:160)(cid:160)(cid:160)(cid:160) Suite 200
`(cid:160) (cid:160) (cid:160)(cid:160) (cid:160) (cid:160) 11400 W. Olympic Blvd.
`(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160) (cid:160) LOS ANGELES CA 90064
`
`*86928557*
`
`(cid:160)C
`
`LICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`(cid:160)
`(cid:160)
`(cid:160)
`
`
`APPLICANT: Stephen McArthur
`
`(cid:160) N/A
`
`(cid:160) (cid:160)(cid:160)
`CORRESPONDENT’S REFERENCE/DOCKET NO :(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`CORRESPONDENT E-MAIL ADDRESS:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160)(cid:160)(cid:160)
`
`stephen@smcarthurlaw.com
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`OFFICE ACTION
`
`(cid:160)I
`
`SSUE/MAILING DATE: 9/30/2016
`
`THIS IS A FINAL ACTION.
`
`(cid:160)T
`
`his Office action is in response to applicant’s communication filed on August 26, 2016. (cid:160) In its response applicant, (1) amended the
`identification of services, (2) submitted information about the services, and (3) argued against the Section 2(e)(1) refusal.
`
`(cid:160)N
`
`umber (1) is acceptable and has been entered into the record.
`
`(cid:160)N
`
`umber (2) is not acceptable for the reasons set forth below.(cid:160)(cid:160)
`
`Number (3) arguments have been considered and are found to be unpersuasive.
`
`(cid:160)T
`
`he refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.(cid:160) See 15 U.S.C. §1052(e)(1); 37 C.F.R.
`§2.63(b).(cid:160) In addition, the following requirement is now made FINAL: Information About the Services Required.(cid:160) See 37 C.F.R. §2.63(b).
`
`SUMMARY OF ISSUES:
`
`Section 2(e)(1) Refusal – Merely Descriptive
`Advisory: Supplemental Register Currently Unavailable
`Information about the Services Required
`
`FINAL REFUSAL – SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
`
`Registration is refused because the applied-for mark merely describes features of applicant’s services. (cid:160) Trademark Act Section 2(e)(1), 15 U.S.C.
`§1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
`
`(cid:160)A
`
` mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services. (cid:160)
`TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl &
`Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420,
`
`1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents , 252 U.S. 538, 543 (1920)).(cid:160)(cid:160)
`
`Determining the descriptiveness of a mark is done in relation to an applicant’s services, the context in which the mark is being used, and the
`possible significance the mark would have to the average purchaser because of the manner of its use or intended use.(cid:160) See In re The Chamber of
`Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960,
`963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).(cid:160) Descriptiveness of a mark is not considered in the abstract.(cid:160) In re Bayer
`Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
`
`(cid:160)T
`
`he applied-for mark, VIDEO GAME LAW SCHOOL, is descriptive of applicant’s services (“ducational services, namely, conducting
`programs in the field of intellectual property and legal services; Educational services, namely, conducting presentations in the fields of
`intellectual property and legal services and distribution of training materials in connection therewith; Educational services, namely, providing
`online instruction in the field of intellectual property and legal services; Educational and entertainment services, namely, a continuing program
`about legal services accessible by means of the Internet; Providing on-line videos featuring intellectual property and legal issues, not
`downloadable” and “Intellectual property consultancy; Legal services, namely, intellectual property consulting services in the field of
`identification, strategy, analytics, and invention; Legal services, namely, preparation of applications for trademark registration; Legal services,
`namely, trademark searching and clearance services; Providing information in the field of intellectual property; Providing information in the field
`
`(cid:160)
`(cid:160)(cid:160)
`(cid:160)(cid:160)
`(cid:160)
`(cid:160)
`
`
`of business law, litigation and intellectual property; Providing on-line information in the field of intellectual property”) because this wording
`describes features of applicant’s services.
`
`(cid:160)T
`
`he previously attached evidence shows that the Merriam-Webster Dictionary defines “video game” as “an electronic game in which players
`control images on a television or computer screen” and it defines “law school” as “a school that trains people to become lawyers.” (cid:160) In the
`context of applicant’s services, this wording means educational services that train people to become lawyers in the field of law relating to
`electronic games in which players control images on a television or computer screen.(cid:160) Additionally, the attached Internet evidence shows that
`“video game law” is a specialized field of law that includes topics in intellectual property, such as trademarks, copyrights, and patents. (cid:160)
`Therefore, the wording VIDEO GAME LAW SCHOOL is descriptive of applicant’s services.
`
`(cid:160)G
`
`enerally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a
`composite mark that is itself descriptive and not registrable.(cid:160) In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP
`§1209.03(d); see, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE
`merely descriptive of theater ticket sales services, because such wording “is nothing more than a combination of the two common descriptive
`terms most applicable to applicant’s services which in combination achieve no different status but remain a common descriptive compound
`
`expression”). (cid:160)(cid:160)
`
`Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in
`relation to the services is the combined mark registrable.(cid:160) See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A.
`1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
`
`(cid:160)A
`
`pplicant argues that the wording in the applied-for mark “creates a new and unique commercial impression” that competitors do not need to
`“describe Intellectual Property content related videos.” (cid:160) In this case, both the individual components and the composite result are descriptive of
`applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. (cid:160) Specifically, the words
`“video,” “game,” “law,” and “school” retain their descriptive meanings and do not create a non-descriptive meaning when used together.
`wording merely describes features of applicant’s services.
`
`(cid:160) This
`
`(cid:160)A
`
`pplicant argues that the applied-for mark is not descriptive because its services pertain to intellectual property and not to video games.(cid:160)
`However, the attached Internet evidence shows that video game law is a specialized field of law that includes topics in intellectual property.(cid:160) The
`attached article from WIPO Magazine, published by the World Intellectual Property Organization, states “While questions of privacy and data
`security, content regulation and monetization are key considerations . . . (cid:160) developing a proactive IP strategy to secure appropriate IP rights is
`essential to the success of a developer’s enterprise” and “IP is the lifeblood of the industry.” (cid:160) This evidence shows that intellectual property is
`such a prominent area within video game law that, in the context of applicant’s services, applicant’s applied-for mark is descriptive.
`
`(cid:160)F
`
`urther, the examining attorney has attached applicant’s prior registration, U.S. Registration No. 4953261 THE VIDEOGAME LAWYER for
`“Legal services; Legal services, namely, intellectual property consulting services in the field of identification, strategy, analytics, and invention;
`Legal services, namely, preparation of applications for trademark registration; Legal services, namely, trademark searching and clearance
`services; Licensing of intellectual property; Providing legal services in the field of intellectual property,” which is registered on the
`Supplemental Register.(cid:160) Registrations featuring services the same as or similar to applicant’s services are probative evidence on the issue of
`descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or
`registered on the Supplemental Register.(cid:160) See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co.
`, 958 F.2d 1574, 1581-82, 22 USPQ2d
`1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621
`(TTAB 2006).
`
`(cid:160)A
`
`pplicant states that it is “unaware of any other party currently using the words found in its mark to denote similar or related products.” (cid:160) The
`fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or
`distinctive; as in this case, the evidence shows that VIDEO GAME LAW SCHOOL is merely descriptive.(cid:160) See In re Phoseon Tech., Inc., 103
`USPQ2d 1822, 1826 (TTAB 2012); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); TMEP §1209.03(c).
`
`(cid:160)A
`
`(cid:160) E.g., In re Merrill Lynch,
`pplicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.
`Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d
`1152, 1156 (TTAB 2006).(cid:160) However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.
`
`(cid:160)B
`
`(cid:160)B
`
`ased on the evidence and analysis above, applicant’s applied-for mark is merely descriptive and must be refused under Section 2(e)(1).
`
`ased on the foregoing, the refusal based on descriptiveness of applicant’s applied-for mark is maintained and now made FINAL.
`
`(cid:160)A
`
`(cid:160)A
`
`pplicant should note the following advisory regarding amendment to the Supplemental Register.
`
`dvisory: SUPPLEMENTAL REGISTER CURRENTLY UNAVAILABLE
`
`(cid:160)
`
`
`Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not
`appropriate in the present case.(cid:160) The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the
`Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.(cid:160) 37 C.F.R.
`§2.47(d); TMEP §§816.02, 1102.03.
`
`(cid:160)I
`
`f applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be
`the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.(cid:160) 37 C.F.R. §2.75(b);
`TMEP §§816.02, 1102.03.(cid:160) In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for
`conflicting marks based on the later application filing date.(cid:160) TMEP §§206.01, 1102.03.
`
`(cid:160)A
`
`pplicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant will be required to disclaim
`“LAW SCHOOL” because such wording appears to be generic in the context of applicant’s goods and/or services.
`(cid:160) See 15 U.S.C. §1056(a); In
`re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB
`1986); TMEP §1213.03(b).
`
`(cid:160)T
`
`(cid:160)T
`
`(cid:160)F
`
`he following is the standardized format for a disclaimer:
`
`No claim is made to the exclusive right to use “LAW SCHOOL” apart from the mark as shown.
`
`MEP §1213.08(a)(i).
`
`INAL REQUIREMENT – INFORMATION ABOUT THE SERVICES REQUIRED
`
`(cid:160)I
`
`n its communication filed on August 26, 2016, applicant submitted the following in response to a request for information about applicant’s
`services: “Fields of intellectual property include copyrights, trademarks, patents, and trade secrets. "Video Games" are not a field of IP. "Video
`Games" are not synonymous with IP.”
`
`(cid:160)A
`
`pplicant’s response does not provide information about applicant’s services, therefore, the request for information about applicant’s services
`
`is now made final.(cid:160)(cid:160)(cid:160)
`
`To permit proper examination of the application, applicant must submit additional information about applicant’s services because t he nature of
`such services is not clear from the present record.(cid:160) See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004);
`TMEP §§814, 1402.01(e).(cid:160) Applicant must submit answers to the following:
`
`(1)(cid:160) Does applicant provide educational or legal services in the field of intellectual property, specifically, video games?
`
`Conclusory statements regarding the services will not satisfy this requirement for information.
`
`(cid:160)F
`
`ailure to comply with a request for information is grounds for refusing registration.(cid:160) In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013)
`(citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701-02 (TTAB 2003);
`TMEP §814).(cid:160) Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and
`will not make the relevant information of record.(cid:160) See In re Planalytics, Inc., 70 USPQ2d at 1457-58.
`
`(cid:160)P
`
`ROPER RESPONSE TO FINAL OFFICE ACTION
`
`(cid:160)A
`
`pplicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.(cid:160) 15 U.S.C.
`§1062(b); 37 C.F.R. §2.65(a).(cid:160) Applicant may respond by providing one or both of the following:
`
`(1)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
`
`(2)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
`
`(cid:160)3
`
`7 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
`
`(cid:160)I
`
`n certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
`procedural issues.(cid:160) TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).(cid:160) The petition fee
`is $100.(cid:160) 37 C.F.R. §2.6(a)(15).
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:(cid:160) Applicants who filed their application online
`
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)(cid:160)
`
`
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. (cid:160) See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.(cid:160) TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per
`international class of goods and/or services.(cid:160) 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.(cid:160) However, in certain situations,
`TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring
`
`this additional fee.(cid:160)(cid:160)(cid:160)(cid:160)
`
`/Anna H. Rosenblatt/
`Examining Attorney
`Law Office 120
`(571) 272-4599
`anna.rosenblatt@uspto.gov
`
`(cid:160)T
`
`O RESPOND TO THIS LETTER: (cid:160) Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. (cid:160) Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.(cid:160)
`For technical assistance with online forms, e-mail TEAS@uspto.gov.(cid:160) For questions about the Office action itself, please contact the assigned
`trademark examining attorney.(cid:160) E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`(cid:160)A
`
`ll informal e-mail communications relevant to this application will be placed in the official application record.
`
`(cid:160)W
`
`HO MUST SIGN THE RESPONSE:(cid:160) It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).(cid:160) If an applicant is represented by an attorney, the attorney must sign the
`
`response.(cid:160)(cid:160)
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: (cid:160) To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/. (cid:160) Please keep a copy of the TSDR status screen. (cid:160) If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. (cid:160) For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`(cid:160)T
`
`O UPDATE CORRESPONDENCE/E-MAIL ADDRESS:(cid:160) Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
`(cid:160)(cid:160)
`
`
`MUSIC. APPS. MOBILE GAMES.
`HOME
`FILMETV ii> ART MUSIC APPSKGAMES
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`Video Game Law
`Similar to other areas of multimedia, video game law has a significant focus
`on copyright and licensing, It's essential that developers understand the
`imponance of having clearand complete paperwork in an effort to prevent
`
`tegal issues in the future Consider the following questions:
`
`- Where did the concept for a game originate? lf you took the idea from
`your favorite comic book orfilm, you should seek permission before
`moving forward
`Did the person who did voice over work sign a contract making clear
`that he or she has no ownership interest in the final product? You
`
`could geta slew of calls from individuals looking foradditional money
`based on the success of a game or app to which they contributed.
`- Does the person or company providing start—up money to devetop
`your game own a stake in your development company, or are they
`simply giving you a loan that must be repaid when your profits start
`rolling in? it you incorrectly assume that you received a loan, you could
`end up with some unwanted business partners who will not go away
`easily.
`imagine you are at E3, GDC, PAX, or lnidecade, and are presented
`with a publishing deal Do you have someone who can help you
`understand what's in the deal, what revisions you should request, or
`whether you should sign it?
`
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`Please Read '
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`Don’t get stopped in your tracks Jovan Johnson provides common sense
`counsel so that you can get it right from the beginning
`Also of interest:
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`09/30/2016 04 Ol 27 PM
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`WIPOWOHLD INTELLEGTUAL PHOPEHYY ORGANIZATION
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`IP Services
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`WIPO I MAGAZINE
`
`Video Games and IP: A Global Perspective
`Apnl2U14
`
`By David Greenspan, Senior Director ofLegal and Business Affairs, Namco Bandai Games America
`(USA), S. Gregory Boyd, Partner and Chairman of Interactive Entertainment Group, Frankfurt Kumit
`Klein & Selz PC (USA), Jas Purewat, Senior Associate, Osborne Clarke (USA)
`
`Since the launch of the first mainstream game consoie by Nintendo in 1985, video
`games have become a global industry worth an estimated US$65 billion. It is the
`fastest growing sector of the entertainment industry and an important driver of
`economic growth, creating millions of jobs, generating much-needed tax revenues
`and offering exciting opportunities for talented creators and engineers from all
`corners of the globe.
`
`Unlike other creative industries, video games draw on the worlds of both technology and creativity.
`They fuse cutting-edge technology and imaginative artistic expression. The computer code underlying
`a game transforms ideas into rich expressions of visual art which come alive on a range of devices —
`consoles, computers, tablets and smartphones.
`
`
`
`hm: //www WIDO int/WlD0 maqazime/en/2014/02/article 0002 html
`
`O9/30/20i6 04 Oi 27 PM
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`A global phenomenon
`The cultural impact of the industry is being felt across the world. It has become a global phenomenon
`with recent major successes from studios in countries as diverse as Belarus (Wargamingmet), China
`(with Tencent and Perfect World) and Finland (with Supercell and Rovio).
`Over the last 20 years, the demographics of players have changed dramatically. Gone are the days
`when the average video game player was a teenage boy playing alone and firing away at bad guys in
`front of a television screen at home. Today, the average video game player will be thirty something,
`as likely to be female as male, will play on multiple devices and can come from anywhere in the
`world.
`
`
`Dramatic changes, exciting opportun ies
`Advances in technology have also dramatically changed the games themselves, spawning a wide
`range of new formats, stories, and genres. Games are in fact as varied as the imagination of the
`developers, featuring realistic graphics, voice-overs, use of motion capture technology giving
`characters fluid movements, music equal to film scores and original story lines. The development and
`marketing budgets for major game titles often rival those of the movie industry.
`
`
`
`hm: //www WIDO lrlt/WlD0 maqazlne/en/2014/02/article 0002 html
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`O9/30/20l6 04 Ol 27 PM
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`While still dominated by multi-billion dollar hardware companies such as Sony, Nintendo, Microsott,
`Apple, and Samsung and publishers such as Activision, Electronic Arts (EA) and King (mobile), new
`technologies have opened up the gaming industry to many new independent developers. W|PO‘s
`recent publication, Mastering the Game: Business and Legal Issues for Video Game Developers
`provides established developers as well as new market entrants with infonnation about how to
`develop a proactive strategy to secure the IP rights in their work for its distribution and use. The guide
`explores, in very practical ten'ns, the range of legal and business issues facing developers at various
`stages of the process of developing a game and transtonning it from a concept into a marketable
`product. It further underlines the importance of negotiating contracts to define who owns the IP rights
`in a work.
`
`While many have cashed in on the public's seemingly insatiable appetite for video games, and there
`is still huge potential tor growth, there are also significant risks and uncertainties. These are related,
`in particular, to the rising costs facing the industry — a major flop can severely impact a publishers or
`developers business - and the need to keep pace with constantly evolving tastes in tem1s at the
`games consumers want to play, how they want to play them and how they want to purchase them.
`
`The Lord of the Rings and derivative works
`Acquiring the right to make a derivative work — a new work derived from an existing copyright
`work can be a complex process.
`To make The Lord oft.he Rings trilogy. Peter Jackson had to obtain a license from the Saul
`Zaentz Company which holds movie rights to To|kien’s work. As a derivative work the trilogy was
`copyrightable as a newwork and licensable in its own right.
`In 2001, Electronic Arts (EA) developed the first Battle for Middle Earth game on the basis of a
`license from Peter Jackson filrns. Under this license EA could only produce game content, or a
`derivative work that came from the Jackson films. However, in 2005 while creating the sequel to
`Battle Ibrllliddle Earth and other Rings games, EA acquired a license to produce a game based
`on Tolkien‘s published works. This opened up a great deal of new territory for creativity.
`
`Just a few years ago, games (played on consoles) were sold mainly through retail outlets, and while
`physical console and computer sales still generate a substantial proportion of industry revenue,
`mobile gaming (games played using mobile devices) has become the fastest growing sector of the
`industry. Digital distribution is expanding as a result of lower entry barriers and costs. At the same
`time, the marketplace is becoming ever more crowded, making it ditticult to distinguish one game
`
`
`
`hm: //www WIDO ll‘It/WlD0 maqazlHe/en/2014/02/article 0002 html
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`09/30/2016 04 Ol 27 PM
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`from another.
`
`The video game industry is constantly evolving creatively (how a game looks), technologically (the
`hardware and software that bring the games to life) and commercially (the business models used
`distribute games to consumers). With such innovations, come new challenges.
`
`Defining the rules of the game
`The core legal issues facing all entities involved in the video game ecosystem - developers,
`financiers, publishers and distributors - locus on ensuring that appropriate legal arrangements are in
`place to enable the development, financing and distribution of games. While questions of privacy and
`data security, content regulation and monetization are key considerations (and are covered in the
`publication), developing a proactive IP strategy to secure appropriate IP rights is essential to the
`success of a developefs enterprise.
`Game Project and IP Law
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`IP is the lifeblood of the industry. IP rights are associated both with the tools used to develop games
`and the content included in a game. For example, copyright safeguards the creative and artistic
`expression that goes into the software (the code), the artwork and the sound (and music) of a game.
`It developers want to create a new work on the basis of an existing copyrighted work, a so-called
`derivative, then they must first secure the appropriate licenses from the copyright holders. An
`
`
`
`htlll //www WIDO ll‘It/WlD0 maqazlme/en/2014/02/article 0002 html
`
`O9/30/20i6 04 Ol 27 PM
`
`example of a derivative work is Shrekthe game which was based on Shrek the film. The process can
`also work the other way. When filmmakers want to develop a film on the basis of the story line of a
`successful game they too must secure rights from the right holders of the original work, for example,
`Doom the movie was based on Doom the game.
`
`Trademarks protect the names and logos associated with a game and its characters and can be used
`to set a company and its games apart from others in the minds of consumers; patents