In my previous article, I’d written about how different aspects of the video game (story line, source code, characters, background music, screen shots, packaging) can be protected under the laws of copyright. In addition to this, there are different aspects of the trademark law that a game developer will have to keep in mind while creating a game is a world of unending possibilities.

Of the many scenarios there may be, I can think of two – one is protecting your own brand by filing trademark applications and the other is obtaining license/written consent for use of any third party trademarks to be used in the game.

Protection of your own trademarks

Competition exists in every field and the gaming world is no exception. Protecting the name of the game and any catchy phrases which are solely associated with the game, may prove advantageous in the long run. When anything gets popular, the risk of it being unauthorised use by third parties is very high. People could start making merchandise of not only the name but also use phrases and any fictional material that is a part of the video game. Having said that, it isn’t possible to foresee and protect everything as an intellectual property, but to begin with protecting what’s abundantly necessary is definitely advisable.

Indian law on use of third-party trademarks

Secondly, unauthorised use of third party trademarks or even deceptively similar trademarks may prove to be a costly affair if the other party find out and decides to take action. For instance, there may be places or products in the game that have a great resemblance to a real world product – would that amount to infringement? Looking at it purely from the point of view of the law, since it does create association of an existing trademark in the minds of the players it may amount to infringement. However, it would be a business decision on part of the trademark owner to decide on whether they want to take action or not. In order to avoid any possible dispute, it is better to be cautious (get permission), or even better, just be creative!

US law on use of third-party trademarks

Interestingly so, the law in the US on this point is quite different. To begin with, video games are protected under the First Amendment Rights as freedom of speech and expression. In case of use of third party trademarks, most Courts have applied the Rogers test, which determines whether use of a mark bears some artistic relevance to the underlying work and the use explicitly misleads as to source or content of the work. However, when it is a case concerning publicity rights, then Courts have found that the Rogers test is very narrow. Further, for publicity rights there is no necessity to show likelihood of confusion and therefore the parameters would be very different from trademark infringement.

This is a very brief overview of the position in the US on use of third party trademarks and there are a number of judicial precedents on this issue. For those of you who are interested, there’s plenty of material on this to read!

Creating real trademarks based on the game

The other scenario I can think of is the places and products from the video game being created in the real world and whether that would amount to infringement. I’d written about this in my article on Intellectual property cross-overs in the real and fantasy worlds. So if someone other than the creators of GTA opened Taco Bomb or started selling Sprunk (which to me looks a lot like Sprite), that may amount to infringement in India.

There is a great deal of protection that’s available to game developers who are looking to protect their intellectual property. Copyright and trademark protection is probably the first step. For those who have not only created the software but also hardware to be used with the game, there’s a lot that can be protected as patents!

This article has been authored by Nikita, an IP Law practitioner.