Category: intellectual property

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intellectual property internet law

NFTs: Investing in Virtual Real Estate and Other Digital Assets.

Disclaimer: This article is not investment advice, tax advice, or legal advice. It is for informational and promotional purposes only. Do not take any action (including investments) until you have consulted with a professional about your specific situation.

I have previously written about investing in cryptocurrencies through a self-directed retirement portfolio and about using them in day-to-day business transactions. There is no doubt that crypto and blockchain technology is here to stay. As evidence of this, the U.S. government will increase reporting of and tax enforcement for cryptocurrency transactions, which are currently treated like property for tax purposes, but not the same as stocks or securities. Increasing regulation and taxation certainly indicate how much the technology is being used and adopted across the world.

What about NFTs or non-fungible tokens? There was a lot of buzz in early 2021 about NFTs after Christie’s auctioned off a digital-only artwork for $69 million and suddenly everyone from Nike, to Hasbro, to Cervelo (a racing bike manufacturer) was selling digital-only versions of their collectibles or attaching NFTs to physical world assets. The hype has since subsided, at least from the mainstream media sources. However, spend enough time on the various social media platforms, and NFT proponents (sellers) will be quick to offer “virtual estates,” “one-of-kind avatars,” “priceless digital art,” and various other exotic and futuristic-sounding assets. Often, you will be directed to an auction site where you will have to place bids on the NFT, sometimes even using a native cryptocurrency or token like MANA or SAND.

Suppose you got caught up one night, cashed out your 401k, and bought $100,000 worth of NFTs – a virtual castle in Decentraland, some art tapestries to decorate, and a digital collection of Luka Doncic basketball cards. The next morning at breakfast you have to explain to your spouse – NFTs? WTF did you just buy? Read on.

  1. NFTs as personal or business investments.

Before investing in anything, it is generally a good idea to understand exactly what you are buying. NFTs are digital representations of unique items based on the Ethereum blockchain. When you buy an NFT, you basically just bought computer code. The simplest description of blockchain is that it is a decentralized public ledger or database. Data is entered into a block – in the case of an NFT, it is specific code that signifies the “object” and its owner – and then that data becomes part of the public ledger that is replicated and stored across a vast, decentralized computer network. An NFT can have a real world counterpart, but it does not have to. As will be discussed below, an NFT can be sold together with or separate from the work’s copyright. The “non-fungible” aspect of the token means it is unique and not interchangeable with other items. Traditional fiat currency is inherently fungible because a dollar bill is interchangeable with other dollar bills. Cryptocurrency is also fungible – one Bitcoin is the same as another and has the same value. On the other hand, an original Monet, your grandmother’s jewelry, or even a pair of Nike shoes are all non-fungible because they are unique.

One big difference between NFTs and cryptocurrency is liquidity. One of the reasons why crypto is so popular right now is accessibility. Exchanges like Coinbase make it easy for anyone to buy and sell cryptocurrency right from their phone, while keeping records, and facilitating exchange of almost any cryptocurrency. Whether you want to cash out into fiat dollars to cash out or exchange cryptocurrencies for other cryptocurrencies, you can do it on your phone or computer in a very simple and quick process. NFTs are not as liquid – to sell one you have to find a willing buyer and negotiate a price. For example, OpenSea is a large marketplace for NFTs, allowing listings at auction, fixed price, or declining price settings. The market determines the price of NFTs, meaning supply and demand. In the NFT market, there may be only a couple of willing buyer and sellers, which is quite different from the millions who buy and sell cryptocurrencies every day. Also, tthe Securities and Exchange Commission does not regulate NFTs or most cryptocurrencies at this time. While a company selling stock or bonds on the open market must follow filing and disclosure requirements to ensure a transparent public offering, crypto and NFTs offerors do not. Proceed with caution.

2. What are the legal implications of this “wild west” of NFTs?

NFT investors face two areas of legal issues: copyright law and tax law. Copyright law protects the creator’s rights in computer code, as well as art, music, and other creative works. Tax law is involved whenever you buy, sell, or invest in anything.

A. Copyright.

NFT ownership is not copyright ownership.

When buying or investing in an NFT, it is absolutely essential to understand what it is you are buying – in other word, what “bundle of rights” are you getting in exchange for your cash? In the physical world, when you buy an asset like a painting or a car, you are at least getting the physical thing. In the all-digital world of NFTs, it gets a little bit complex.

Under U.S. copyright law, the creator of art, music, movie, or other creative work owns the copyright, which attaches at the moment of creation. Transferring the physical object alone does not necessarily transfer the copyright with it – a written agreement transferring copyright is required to separate the creator from the copyright. In other words, the physical work and the copyright to that work are distinct and separate. NFTs are no different – the fact that the work is digital or consists of computer code does not matter. There is still the ownership of the original work (piece of code) and the copyright to that work. Do not assume that you are buying the copyright to the NFT when you purchase it on an online auction site unless there is a specific agreement to assign the copyright to the buyer.

If you bought an NFT without the copyright, you essentially bought a unique piece of computer code that you cannot display, duplicate, or republish without the original creator’s permission. You need the copyright to reproduce, copy, license, and otherwise do pretty much anything with the NFT. Creating derivative works based on the NFT likewise requires the copyright. In short, know what you are actually buying, as copyright gets particularly complex in the digital world. An attorney may be needed to review the agreements, especially if the transaction involves a substantial sum of money.

B. Tax.

The IRS issued guidance as far back as 2014 that cryptocurrency is taxed like property and subject to capital gains tax. But there has been no guidance on taxing NFTs. Because NFTs and cryptocurrency rely on the same underlying blockchain technology, it is likely that NFTs will also be taxed like property and subject to capital gains tax. That means if you buy an NFT for U.S. Dollars, you do not pay tax on that transaction (unless a state decides to enact a sales tax on digital assets). But when you sell that NFT in exchange for cash or cryptocurrency, or trade it for another NFT, you have a taxable event. Any “gain” will be treated as reportable taxable income.

It can get especially complex if you involve cryptocurrency in the transaction. Some NFTs can only be purchased in exchange for a specific token – for example, virtual real estate in Decentraland can be purchased only for MANA tokens, which are an Ethereum token. The price of the MANA token fluctuates, just like the price of BTC or ETH or DOGE. If you pay cash for MANA, that transaction is not taxable. But then when you exchange MANA for an NFT, you are “selling” the MANA, taking a capital gain or loss, and then acquiring the NFT at the market price, which establishes the NFT’s cost basis for future transactions. When you sell the NFT for cash, you have a capital gain based on the difference between the cost basis and the sale price. But if you trade the NFT for another NFT or for Bitcoin, you again have a double tax event because you are selling “property” (subject to capital gain at the time of exchange) and acquiring “property” (subject to capital gains at the time of subsequent sale or exchange) at the same time. This is why good record keeping is an absolute must and is especially critical if you are engaging in a large number of transactions.

All of this assumes that NFTs will be taxed like cryptocurrency. But it is possible that NFTs will be taxed differently based on what the NFT represents. Will the sale of digital land be treated as a sale of physical real estate? All of a sudden state transfer taxes may come into play. Will the sale of digital art or collectibles be treated the same as physical art of collectibles and subject to special tax rates? There are many unanswered questions at this time, but as the IRS zeroes in on crypto and blockchain assets as sources of tax revenue, there will certainly be regulation and litigation on this subject.

3. Future applications for NFTs beyond collectibles and investments.

One of the most fascinating things about NFTs and blockchain tech in general is unlimited potential. The decentralization and immutability aspects are extremely potent in a number of applications. For example, in the business setting, smart contracts that automatically enforce performance and payment can eliminate many costs and inefficiencies related to international trade. Escrow accounts and associated fees may very well be a thing of the past. If performance under a contract can be reduced to code and automated, costly contract disputes can be avoided.

Blockchain can also be used in software licenses as well as licenses for other intellectual property. Concert or other event tickets are another application. Corporate governance and shareholder meetings can be accomplished through blockchain – for example, a corporation could issue a token for each share and then ask its shareholders to vote by transferring the voting tokens to a specific address. The transparency and security of the blockchain are especially valuable in this context. Some commentators have even suggested blockchain as a way to secure and democratize political elections. With a publicly-verified chain, election fraud would virtually be eliminated and election results would become indisputable.

Whatever the future holds, blockchain is exciting technology. As with all emerging technologies, the law is an a state of flux. Government regulators are playing catch up to address the application of existing law to new tech and to propagate new laws to address emerging problems. If you are investing in NFTs or using blockchain in your business, contact an experienced attorney to answer your questions and ensure that you are being proactive with your regulatory and tax obligations.

Contact Dan Artaev by email or call or text to set up your initial consultation.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
business law gaming law intellectual property internet law trademarks

Do I need a Metaverse Trademark?

Luxury goods company Gucci recently bought a plot of LAND in the Sandbox Game, an Ethereum-based play-to-earn game. This LAND is a virtual real estate plot (in the form of an NFT or non-fungible token) where Gucci plans to sell in-game clothing and collectibles. As futuristic as this seems, Gucci is not the only major company looking to get into the Web3.0 space. Walmart, McDonalds, Panera, Victoria’s Secret, Nike, and L’Oréal are just a few of the big players that recently filed trademarks specifically to protect their intellectual property in the Metaverse.

Nike has become particularly active. The company created a Nikeland experience in the popular Roblox game world (along with companies like Vans, Chipotle, and Hyundai, which also have staked out territory on Roblox). Nike also recently acquired RTFKT, a studio that specializes in NFT development and in January 2022, Nike announced the formation of Nike Digital Studios to create and deliver Metaverse and blockchain-based user experiences. Additionally, Nike has filed for dozens of trademarks to protect its virtual brand, including the use of its name and logo in online art, virtual goods, video games, and avatars. With a multi-billion dollar company like Nike trademarking dozens of its NFTs, many game developers, NFT collectors, traders, crypto bros, and others wonder whether they, too, should file for trademark protection within the Metaverse for their brand.

Do Gaming Developers Need Trademark Protection?

Absolutely. Games, gaming, and software in general are highly-competitive industries. Unfortunately, there is not much stopping a third party from copying your design and profiting off of it. This can create – not only marketplace confusion – but irreparable damage and dilution of your valuable brand. This can happen to companies big and small. Additionally, if you fail to trademark your game, brand, logo, catchphrase, etc., your competitor can come in, copy your brand, and then accuse you of violating their rights. While it is possible to file for retroactive trademark protection and win eventually, the easiest (and cheapest) protection is filing a trademark right away.

Do I Need to Trademark my NFT?

Yes. It is essential for you to trademark your NFT in order to protect it from copycats. The United States is a first-to-use country, which means your NFT will already have some automatic protections after minting. However, it would be very tough protecting your unregistered “common law” trademark in the worldwide NFT marketplace. Additionally, it would be very difficult to defend an unregistered NFT trademark in any sort of legal dispute should a third party copy your idea. Filing a trademark with the USPTO ensures validity and protection within all fifty states.

Trademarking your NFT creates a brand identity that is uniquely yours. Trademarking a unique slogan, logo, or design can be a valuable marketing tool for you going forward and add tremendous value to your project. After all, intellectual property rights are what you actually own when it comes to non-physical property like NFTs (and software or computer code in general).

Copyright is another important intellectual property right for NFT owners, users, buyers, and sellers. For example, it is critical to ask what rights you are actually buying when purchasing an NFT? Is there an agreement to transfer the copyright? A license? Nothing at all? Lack of clarity in the NFT transfer process can and will lead to litigation, more so as NFTs become more and more widespread.

How Do I Protect my NFT Internationally?

You can protect your NFT internationally, provided that you also apply for international registration during your initial trademark filing. Under the Madrid Protocol (which is an international treaty for the uniform protection and registration of trademarks), a registration through the USPTO can also be registered in other countries with a single application.

What is a benefit of international registration? International registration allows you to use a foreign country’s laws and judicial resources to enforce your mark in that country. A USPTO registration still allows enforcement through a U.S. based court, even if the infringer is in a foreign country. However, even if you prevail, you might not be able to enforce the U.S. court’s judgment abroad. An international trademark registration opens up a number of other enforcement options. If you are interested in international trademark registration, this is something to discuss at your initial consultation.

What Types of Things Should I Trademark?

Here is a non-exhaustive list of items that could potentially qualify for trademark protection:

  • Avatars
  • Logos
  • Game Name or Gaming Development Company’s Name
  • NFTs
  • Virtual Goods (avatar skins, digital art, etc.)
  • Color Schemes
  • Particular Sounds (The coin grab ding from the classic Mario Brothers game comes to mind here.)
  • Slogans

What Cannot be Trademarked?

The United States Patent and Trademark Office (USPTO) has a set of guidelines that lists some of the following reasons for trademark rejection:

  • Likelihood of Confusion – If you create a game called GranD Turismo 7, you could not trademark that name because people could confuse it with Gran Turismo 7, the newest addition to PlayStation’s highest selling video game franchise. Sony owns the trademark to protect against competitors who seek to profit off of its name recognition by creating a similarly named game. Thus, you cannot trademark GranD Turismo 7.
  • Merely Descriptive and/or Intentionally Misleading – For example, you can’t trademark the words “fun and entertaining.” Even though your game is both fun and entertaining, these only describe the game itself and don’t necessarily make your game unique, so you can’t trademark them. Likewise, the USPTO will reject your trademark if it is intentionally misleading. For example, if your game’s name is “Play with Cryptocurrency,” but the game does not play with cryptocurrency, the USPTO reviewer could consider this game name intentionally misleading and deny your trademark.
  • Primarily a Surname – For example, Smith’s Play-to-Earn Game is primarily a last name (and merely descriptive) would not be suitable for a trademark.

How do I file a trademark for my game or NFT?

Whether you’re filing a trademark for an NFT, a digital avatar, a slogan, or your business name, Artaev at Law has the professional expertise to help you do it right. Artaev at Law, together with the specialized trademark attorneys at Mighty Marks, now offers a fixed fee, all-inclusive trademark service. Contact Dan Artaev at dan@artaevatlaw.com for additional information.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional. Any link to or reference to any specific project is not an endorsement of or validation of that project and is for solely informational purposes.

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business law gaming law intellectual property internet law trademarks

Does My Game or Gaming Company Need to Register a Trademark?

Yes! A trademark is an essential part of protecting your business and is especially critical for high-tech innovators in the competitive gaming industry. Best of all, a trademark registration does not have to be expensive or time-consuming. Artaev at Law has partnered with the expert trademark attorneys at Mighty Marks to offer a fixed fee, all-inclusive trademark service.

But what is a trademark exactly? And why do you need one? Do you need one now or later? Can you rely on a U.S. trademark in other countries? Read on:

So what is a trademark?

A trademark is your brand. It can be the name of your company or your product, a slogan, or a logo. Designs or other unique brand elements can also be trademarked. Trademarks, along with patents and copyrights, comprise valuable company intellectual property rights that distinguish and protect your unique product and innovation. The purpose of trademark law is to prevent brand confusion – for example, to stop unscrupulous competitors from copying your brand name and misappropriating your customer goodwill. In the highly competitive gaming space, this is particularly critical, and as explained below, a registered trademark is essential to an effective legal response.

How do I pick a trademark?

There are different “strengths” of trademarks that vary as to the level of protection they provide. In general, the law does not favor trademarking generic terms or product descriptors. For example, if you made a solitaire game and called your game “Solitaire,” your trademark application would likely be rejected. Descriptive marks are those that literally describe the product – for example “Fun” puzzle games or “Challenging” platformers. These descriptive trademarks generally cannot be registered unless they have acquired a secondary (distinct) meaning.

Suggestive marks are those that are not merely descriptive, yet hint at the nature of the product. For example, the name “Playstation” suggests that the brand is home gaming console – and is sufficiently distinct from the generic or descriptive category of marks to be given protection. The strongest category of trademarks are arbitrary and fanciful marks. Arbitrary marks are those that use a word out of context or to describe something completely different than the word’s ordinary meaning. Blizzard to describe a software company is a good example. Blizzards are weather phenomena that have nothing to do with games – and therefore the mark “Blizzard” has acquired a distinct, protectable association with computers. Fanciful (or “coined”) marks are completely new words that have no separate meaning other than their brand. For example, NVIDEA graphics cards or perhaps the xBox home console (although it could be argued that xBox is suggestive.)

Experienced trademark counsel can assist with choosing the right trademark for you and evaluate strengths and weaknesses.

Why do I need a trademark and do I need it now?

Early registration translates to stronger protection.

Games, gaming, and software in general are highly-competitive industries. Once you have your game or product out there, there is not much precluding a competitor from blatantly copying your design and profiting off your hard work. In the wrong hands, your brand can suffer irreparable damage and dilution of your business reputation. For example, if you have a game called Minecraft that you painstakingly developed, and someone copies your game and calls it “MineRcraft” what are you supposed to do? What if MineRcraft is a terrible product, but customers mistakenly leave negative reviews for Minecraft? Or worse – what if MineRcraft takes off and becomes more popular, simply because of your investment into the original game?

Another nightmare scenario for any developers is receiving a cease-and-desist from a competitor attacking your brand. Trademark registration with the USPTO is critical evidence in any sort of priority dispute that may arise. Also, while it is technically possible to register a trademark and obtain priority after-the-fact (retroactively) – it is much cheaper and simpler to do it at the outset. Therefore, it is best practice to file for a trademark registration as soon as possible. The benefits of a properly registered mark far outweigh the negligible costs.

Can my trademark protect my brand in other countries?

Yes, provided that you also apply for international registration. The USPTO provides the forms and application process for an additional fee. Under the Madrid Protocol (which is an international treaty for the uniform protection and registration of trademarks), a registration through the USPTO can also be registered in other countries with a single application.

What is a benefit of international registration? International registration allows you to use a foreign country’s laws and judicial resources to enforce your mark in that country. A USPTO registration still allows enforcement through a U.S. based court, even if the infringer is in a foreign country. However, even if you prevail, you might not be able to enforce the U.S. court’s judgment abroad. An international trademark registration opens up a number of other enforcement options. If you are interested in international trademark registration, this is something to discuss at your initial consultation.

Want to know more? Contact Dan Artaev by email or call or text with any questions.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2022 Artaev at Law PLLC. All rights reserved.

Categories
business law intellectual property internet law

What is a Security Token Offering (STO) and How Do I Use It In My Business?

Photo by Alesia Kozik on Pexels.com

A security token offering (or STO) is a 21st century blockchain-based alternative to a traditional equity or debt sale to raise company funds. Instead of selling units or shares, a company sells digital tokens to investors. Instead of selling SAFE (simple agreement for future equity) notes, companies can offer a SAFT (simple agreement for future tokens).

But why would a company want to sell tokens in the first place? STOs and traditional equity offerings fall within securities laws and must either be registered with the SEC or comply with exemptions (Regulation A+, D, or S for example). State-level “blue sky” laws may also apply. Also, like traditional securities, STOs represent fractional ownership in a tangible asset, either an equity interest in the company, a profit share, or debt instrument.

An STO does have certain benefits over selling traditional securities:

  • Unlike traditional securities, the STO eliminates third parties and middlemen inherent in a traditional securities offering, leading to greater efficiencies, lower costs, and a faster issuance process.
  • Blockchain technologies are inherently transparent, as the digital ledger is public. This makes the offering inherently more secure.
  • By selling tokens, companies can tap into financial markets across the world that would not be normally accessible. An investor from Asia or Europe can easily buy into a company STO, just as an investor from the United States.
  • Security tokens are considered more liquid because investors can buy, sell, and trade tokens around the clock.
  • The digital nature of the tokens makes corporate governance and voting easier and more transparent.

Another distinguishing characteristic of an STO is that a company can tokenize and sell fractional ownership in almost any real world asset – such as real estate, a machine, or even intellectual property. This opens up a host of possibilities and financing options that would otherwise be limited or unavailable with traditional securities. This is especially attractive to high-tech startups whose business model is already based on or related to the blockchain.

STOs should not be confused with ICOs (initial coin offerings). ICOs boomed in 2017, as some companies turned to unregistered token sales to raise funds outside of the traditional securities disclosure, registration, and other legal requirements. In 2017, the SEC issued an investor bulletin and clarified that these digital token sales constitute “investment contracts” that meet the SEC v. W.J. Howey Co., 328 U.S. 293 (1946) test and therefore must be registered as securities under federal law. ICOs also are associated with several high-profile “exit scams,” where cryptocurrency promoters claimed big plans for a new crypto project, collected funds from investors, and then simply disappeared with the funds. Other ICOs purported to be “high-yield investment programs” that turned out to be nothing more than Ponzi schemes.

As cryptocurrency, NFTs, and other blockchain-based technology became more mainstream in 2021, it is important to recognize that the STO is a new way for innovative companies to raise funds. While these are still securities offerings that must comply with applicable regulations, the flexibility, transparency, and efficiency that these digital instruments offer are certainly attractive.

Want to know more? Contact Dan Artaev by email or call or text to set up your initial consultation.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2022 Artaev at Law PLLC. All rights reserved.

Categories
business law esports gambling law gaming law intellectual property internet law

Are Real-Money Video Game Tournaments Legal?

Video games are quintessential contests of skill and online multiplayer modes are a must in most modern video games. And yes, playing skill video games for real money prizes is legal in the majority of U.S. states. Some of the most popular video games (Call of Duty, Fortnite, Magic: Arena, and others) frequently feature official in-game tournaments with real-money prizes for the top finishers. Fueled by the global popularity of esports, there is also a growing number of third-party esports tournament sites and apps. These third-party offerings are essentially on-demand, which means that there are always head-to-head challenges waiting and frequent “cash cups” with winners able to win a hundred dollars or even more.

Real-money game tournaments and contests serve as a more casual alternative to professional esports. Not everyone has the time (or the reflexes) to go pro or even compete at the collegiate level. But, you may be skilled enough to dominate your local group of friends at Call of Duty or FIFA and there are plenty of offerings to let you win real money prizes against online opponents. Some of the most innovative companies even integrate streaming (for example through Twitch) to add an exciting “audience” element to real money play. Anyone can feel like an esports pro. There is also a growing opportunity for market crossover, with streamers getting involved in real-money play and adding a whole new dimension to their entertainment potential, audience, and branding opportunities.

What kinds of legal issues will a contest or tournament organizer/developer encounter? As with any business, there are several distinct legal areas in play.

Esports competitions or tournaments are not expressly regulated or prohibited under U.S. federal or state law.

First, from a government regulation perspective, no states expressly prohibit esports or video game tournaments. However, there are several jurisdictions that prohibit any sort of real-money gaming. This is the case even if the game involves a pure contest of skill (even offline, like a hole-in-one contest). Accordingly, tournament organizers and app developers stay away from those restrictive jurisdictions.

In the remaining states, game contests, tournaments, and esports are not licensed under any sort of “gambling” or “fantasy sports” regulatory scheme. The largely unregulated market means that there are a number of service providers out there that disagree on where their product can be offered. Some are more conservative than others, but there is not a definitive list of where gaming competitions are legal or illegal. At least one state – Nevada – passed legislation to create an esports advisory board (within its Gaming Commission), to recommend best practices for maintaining integrity of esports competitions and related betting. According to Nevada lawmakers, they recognize the value in the esports competition industry and want to ensure Nevada remains an attractive investment environment for this burgeoning industry. At this time, the potential advisory committee is the closest any state has come to any sort of esports-specific legislation.

A lot depends on the specific competition and tournament model, as well as the types of games being played. For instance, are shuffled cards involved (Magic: The Gathering)? Or some other element of randomness (like team or opponent selection)? Are bots or AI players involved? How do all these elements interact and do they introduce a significant chance element that may affect the outcome? Does the randomness element render the game illegal “gambling”?

Third-party video game websites and apps implicate the intellectual property rights of the underlying game’s developers and may be subject to DMCA takedown notices or federal trademark lawsuits.

Second, esports competitions and tournaments do implicate intellectual property rights, specifically the rights of the game developers. A game’s developer (like Blizzard, Riot, or Epic) owns the copyrights in its games and underlying code. Third-party apps and websites operate without any sort of license from the developers, which may be a violation of copyright or trademark law. Disclaimers alone may not be enough – using game imagery, logos, or even gameplay footage may constitute copyright or trademark infringement. A player or streamer may be protected by the “fair use” copyright law exception, but a company that organizes and monetizes game tournaments is unlikely to prevail on this argument. At the same time, a properly run game tournament organizer may not have sufficient interaction with the game itself to violate IP rights. After all, the players are the ones playing. Each situation is highly fact-specific and there is certainly no bright line rule.

As real-money video game tournaments become more widespread, expect to see pushback from the game studios. At least one studio – Epic – has announced an aggressive stance towards third-party platforms that facilitate playing Epic’s games for real-money prizes (particularly Fortnite). However, as of the date of this article, no lawsuits have been filed.

Combining real-money tournaments with streaming is an attractive business model, but may involve complex licensing and contract issues.

Third, streaming tournaments and competitions, as well as partnering with known streamers, involves a number of contract law and licensing issues. Each streaming service has its own set of terms. Players (and organizers) streaming real-money game content must ensure that they are compliant with the terms or risk being banned from the platform. Further, who owns the streaming content? Normally, the creator has the intellectual property rights to their own content, but it is not so clear-cut when streaming a tournament or other organized contest. Tournament organizers should ensure that rights and expectations are clear from the outset, especially if a well-known esports streamer or player is involved. If the streamer is granting the organizer a license to showcase their gameplay, the license should at a minimum be in writing. Any royalties, cross-promotions, and sponsorships likewise need to be negotiated ahead of time. Even the best intentioned relationships go awry when money becomes involved.

For developers looking to launch a new esports or game tournament app or website, an experienced gaming attorney is a must-have. Artaev at Law has worked with a number of gaming companies from across the world and has the expertise you need. Reach out today to set up a meeting with Dan.

Contact Dan Artaev by email or call or text to set up your initial consultation.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
business law esports gambling law gaming law intellectual property internet law

The Facts About Real-Money Skill Gaming: Dispelling 5 Common Internet Myths.

Artaev at Law advises companies looking to launch new technologies and tap into the skill-based real-money game market in the United States. In keeping up with the latest legal and regulatory trends, we do a lot of research, and we have seen a lot of misleading and downright false information on the internet. Do not be deceived and get the facts backed up by legal analysis – Artaev at Law is the trusted, experienced, and accurate source to answer your questions and dispel the most common myths about real-money skill gaming.

1. MYTH: Online gambling games are the same as “real-money games of skill.”

FACT: No. Words matter. “Gambling” is term of art used in state laws across the United States to define heavily-regulated casino-type activities, usually with reference to an element of “chance.” Federal laws like the Unlawful Internet Gambling Enforcement Act (“UIGEA”) also regulate and prohibit banking institutions from facilitating unlawful gambling. But paying an entry fee to a cash-prize tournament or wagering on yourself in a head-to-head contest is not the same thing as “gambling.” These real-money games of skill rely on the relative skill of the players to determine the outcome and do not involve any element of chance, so they cannot be considered “gambling,” which has a specific definition under the law. I have even seen other law firm websites make this mistake and misuse the term “gambling” to refer to anything that involves the wagering of real money. There are also a lot of questionable websites that attempt to equate online casinos to video games or pure-skill games in an attempt to confuse and generate clicks and get people to transfer money to off-shore operations. Do not be deceived – and contact a knowledgeable lawyer if you have questions.

2. MYTH: States only regulate “games of chance” and if the real-money game does not involve “chance,” the game is automatically legal everywhere.

FACT: No. There are 50 states in the United States and each one of them has their own laws that regulate gambling. Each state has its own definition of “gambling” and what exactly is and is not allowed depends on the nature of the game offered, as well as specific regulations. Some states specifically allow participants to wager real money on “bona fide contests of skill.” Others prohibit wagering any real money on any game, even if chance is not involved. Note that wagering on the play of others, even if they are involved in a contest of skill, is prohibited as gambling. After all, that is how sportsbooks work – wagering on the competition of others. This is a constantly evolving regulatory area – the major real-money gaming websites themselves disagree where to offer real-money gaming – some offer cash games in 45 states, others in 41, others in 35, etc. Whether your particular game is legal (and where) is a case-by-case analysis that requires an up-to-date legal opinion.

3. MYTH: Real-money games of skill are those shifty-looking slot machines that you see at truck stops or those internet cafes that offer sweepstake games.

FACT: No. Those slot machine looking things are in fact slot machines (with some extra features added to attempt to claim that they involve “skill”) and internet cafes try to disguise game of chance gambling as sweepstakes. Law enforcement in many states have used existing gambling laws to shut down these establishments. Real-money games of skill are in fact played predominantly on mobile devices or computers at home. They are nothing like slot machines or sweepstakes and allow players to compete head-to-head for real cash prizes. There are card based games (like Solitaire that awards points based on speed to completion), bubble shooter games, Tetris clones, knife throwing games, and many others. The head-to-head (or tournament) contests are more akin to entering a pool tournament for a chance to win a cash prize, rather than any sort of randomized game of chance.

4. MYTH: Skill games or are just a different type of gambling video game that Las Vegas using to try to appeal to Millennials who are not interested in the traditional casino games.

FACT: No. Skill-based real-money gaming is not something that involves or depends on land-based casinos. While the regulatory bodies in states like Nevada and New Jersey did adopt regulations to encourage a new type of slot machine that involves an element of skill, there is no indication that these types of machines enjoy any sort of popularity. Like many other forms of entertainment in 2021, skill-based real-money games are based online. Advanced internet and mobile phone technology and accessibility is making these games an especially lucrative business.

5. MYTH: There are no legal implications for organizing or running a real-money video game tournament (FIFA, Tekken, Magic: The Gathering, etc.) because the outcome depends on the skill of the players.

FACT: No. There are two distinct problems with this assumption. One, is that legality depends on the nature of the game being played. Is there an element of chance? This could be determined by not only the nature of the game, but how the match-making or team selection function works. If chance is present, how much, and does it predominate over the skill element? That will determine whether the particular game passes the state-level “gambling” test. Two, there are intellectual property issues. The game studios own copyright and trademark rights in their games and do not endorse third party websites that enable real-money wagering on their games. Studios like Epic Games have publicly announced their view that these websites are misappropriating their intellectual property, and legal action is likely forthcoming.

Skill-based real-money gaming is an exciting and emerging form of entertainment worldwide. But there is a lot of misinformation online. The regulatory landscape is always changing, and Artaev at Law are the experts on the facts, trends, and the law about real-money skill-based (or pure-skill) gaming.


Contact Dan Artaev by email or call or text to set up your initial consultation.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
business law intellectual property internet law

Can a Self-Directed IRA (“SDIRA”) Invest in Cryptocurrency and NFTs?

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Self-directed IRAs (“SDIRAs”) can be a powerful investment tool when used the right way. Instead of relying on a bank or brokerage to hold and invest your retirement accounts, the SDIRA gives you direct control over what to invest in for your retirement. Best of all, the SDIRA is not limited to the traditional stock and bond market portfolios. Savvy and knowledgable investors willing to take on high levels of risk can direct their tax-advantaged savings into private companies, debt portfolios, real estate, and other non-traditional assets. While the personalized control and expanded investment opportunities may sound great, SDIRAs are subject to complex tax rules and other pitfalls, including extreme volatility and investment risk. The government rules and regulations ensure that individuals are not abusing the tax advantaged status of their retirement accounts. The Internal Revenue Code (“IRC”) governs what retirement accounts (including SDIRAs) can and cannot invest in.

What about cryptocurrency like Bitcoin? Can an SDIRA invest in cryptocurrency? Yes. In general, the IRC prohibits any IRAs (including self-directed ones) from owning life insurance, S-Corporation stock, and collectables. 26 USC 408. The term “collectable” includes art, antiques, collectable stamps, coins, alcoholic beverages, and “any other tangible personal property” specified by the IRS. Pursuant to Notice 2014-21, the IRS considers cryptocurrency to be intangible property for the purpose of taxation. This means it is treated the same as stocks or bonds – if you sell at a profit, you are paying capital gains tax. Note that cryptocurrency is not treated the same as cash – this also means that if you are paying for a product with Bitcoin, it is a taxable event. For the purposes of an SDIRA and retirement investment, you can certainly buy and hold (or HODL) cryptocurrency. Or sell it for a gain – the tax consequences are the same as they would be with a stock or bond portfolio (depending on whether you have a 401k or Roth-type setup). Remember that any profits that an SDIRA makes go right back into the SDIRA and may only be withdrawn for the benefit of the individual under certain conditions (like being 59 and a half years old) to retain the tax advantage. With cryptocurrency, it is critical to set up an SDIRA-owned LLC to establish and own the cryptowallet in conjunction with a bank account. The LLC structure allows the SDIRA beneficiary to act as a manager and direct investments right from the bank account rather than going back to the SDIRA custodian and waiting for an approval of a particular transaction. However, remember that the manager cannot receive compensation or commingle personal and SDIRA assets, accounts, or cryptowallets.

What about non-fungible tokens or NFTs? Can an SDIRA invest in those? Maybe. NFTs are digital property that exist only online, but unlike “traditional code,” NFTs are unique and cannot be copied. More accurately, they can be copied (like a print of the Mona Lisa can be copied), but there can be only one original. In that sense, they are like real-world property and their non-fungibility creates scarcity, and theoretically value. Although NFTs are based on the Ethereum blockchain (and Ethereum is a cryptocurrency like Bitcoin), cryptocurrency and NFTs are not necessarily treated the same way. As explained above, the IRS treats cryptocurrency the same as intangible property for the purposes of taxation – meaning like stocks, bonds, and mutual funds. Section 408 of the Internal Revenue Code prohibits any IRA from investing in art, antiques, collectable stamps, coins, alcoholic beverages, and “any other tangible personal property” specified by the IRS. 26 USC 408. Will the IRS treat NFTs like cryptocurrency and therefore permitted SDIRA investments? Or will NFTs be treated like restricted collectables?

The IRS has not issued guidance on this matter. Some commentators (including the top search result on Google as of the writing of this article) have concluded that the IRS treats NFTs as collectibles and therefore they subject to a “higher minimum gains tax rate of 28%.” This is simply not true. While the IRS certainly treats NFTs as taxable property, it remains uncertain exactly how the IRS will tax these digital assets.

At its core an NFT is code. Cryptocurrency is also code, which the IRS expressly treats like “property” for the purpose of taxation. It follows that NFTs are also “property” for the purpose of taxes. But what kind of property? Are NFTs always considered art or collectibles? Or are they cryptocurrency and can be owned by an SDIRA? What about NFTs that represent virtual real estate in “worlds” like Decentraland, Cryptovoxels, Somnium Space, Sandbox? What if the NFT is an avatar, a name, a virtual outfit? There are several possible ways for the IRS to treat NFTs:

  • One, the IRS can take a pragmatic approach and tax them in accordance with what they would represent in the real world. Some NFTs have real-world counterparts – for example, Forbes reported that a digital collectible startup called Ethernity is set to auction limited edition real world baseball bats that include an NFT counterpart. Nike also patented something called “CryptoKicks,” which presumably will tie real sneakers to some sort of digital authentication certificate. If an NFT represents art, then it is treated like art for tax purposes. If an NFT is a trading card, then it is treated like a collectible. If the NFT represents virtual real estate, it is treated and taxed like real estate (which raises a whole different set of questions).
  • Two, the IRS can take a simple approach and classify NFTs as “property” that is treated exactly like cryptocurrency regardless of what the NFT “represents.” This second approach avoids litigation over what how a particular NFT should be taxed – for example, is an in-game avatar “art”? The second approach also would give SDIRA investors the flexibility to invest in virtual assets, including virtual real estate.

Finally, is the IRS really going after unreported cryptocurrency and NFT transactions? Absolutely. In 2020, the IRS established the Office of Fraud Enforcement and announced in 2021 that a special investigative team was conducting “Operation Hidden Treasure” to identify individuals who failed to report cryptocurrency (and presumably NFT assets).

Investing in cryptocurrency and NFTs is a hot trend in 2021. Although these digital assets may “exist” only as part of the virtual blockchain, the IRS considers them very real and very taxable. This is a constantly changing and developing area, so it is especially critical to consult a tax and legal professional before making any investment decisions. As I pointed out in my earlier post about SDIRAs, even if you are right, you may still end up litigating against the IRS in Tax Court.

More questions? Thinking about investing in cryptocurrency or NFTs? Funding your retirement through an SDIRA? Contact Dan Artaev by email or call or text to set up your initial consultation.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
intellectual property internet law

I Don’t Want to Wait…For My Rights to Be Over: Licensing and Streaming.

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If you are a fan of 1990s and early 2000s TV shows like Dawson’s Creek, X-Files, Scrubs, etc., and you’ve revisited them on a streaming platform, you may have noticed that the music is not quite how you remember it. Sometimes the problem is obvious, like Dawson’s Creek is missing its iconic intro theme song! Other times, missing music creates plot holes (read more about the X-Files “Beyond the Sea” episode below”). While the beloved characters and stories remain the same, the music is not – and no, you are not imagining it.

The issue is copyright and licensing. Certain technologies like streaming simply did not exist at the time that intellectual property rights were determined and licenses were negotiated for those particular shows. Producers did not foresee the need for more expensive perpetual licenses when DVDs barely existed and streaming services were more than a decade away. Wanting to use a particular song but not having the budget led to compromises, such as limited-scope and duration licenses. It was not uncommon to get a particular song for “broadcast-only” play for 5 years. The license was sufficient to cover the show’s initial run (and any near-term reruns) and made it possible to feature some instantly recognizable tunes.

The limited scope licenses created unforeseen issues with streaming technology. A new market emerged for old TV shows through on-demand services like Netflix and Hulu. Simply put, the creators trying to negotiate the release of their series on streaming did not have the right to license the music. For example, a 5-year license for a 2001 show expires in 2006. In 2021, the show’s producer wants to release the show on Hulu, but the owner of the them song rights (most likely a corporation like Sony and not the individual artist) sees this as an opportunity to demand a significantly higher royalty fee. The creator then has a choice – pay whatever the licensor demands or replace the original song with something different (i.e. cheaper).

Predictably, fans are not happy with the alternatives. After all, music is an integral part of nostalgia, branding, and the viewing experience is just not the same without it. Theme songs, like Dawson’s Creek’s famous “I Don’t Want to Wait” by Paula Cole, are inextricably tied to the show. For instance, I have never seen an episode of the show, nor have I ever heard of Paula Cole, yet I have heard that particular song and know that it is the Dawson’s Creek theme song. That’s powerful branding.

In other cases, music copyright issues create nonsensical plot points. A 1994 X-Files episode titled “Beyond the Sea” featured a psychic serial killer who, during interrogation, sings a few bars of Bobby Darin’s “Beyond the Sea” – a song that was played at Scully’s father’s funeral earlier in the episode. The scene is meant to be disconcerting and leave the audience wondering whether the killer really possesses otherworldly powers. But in the streaming version, the song played at the funeral is “La Mer,” a jazzy tune sung in French. The killer singing “Beyond the Sea” (as well as the episode’s title) suddenly makes no sense – and instead of feeling spooked, the audience is left confused and questioning Scully’s reaction.

Cross-licensing and copyright considerations should be front and center for any modern content creator. Certain shows, like “Freaks and Geeks,” decided at the outset that the vintage soundtrack would be an integral part of the show and the producers invested in perpetual licenses. If you are a content creator, it is a good idea to decide whether the music is an integral part of your final product, and if so, whether you are willing to negotiate and pay for the right license. More expensive “in-perpetuity” licenses are now the industry standard and music budgets have expanded accordingly. If you are independent creator without a budget, look for independent artists, royalty-free or fixed-cost options, or be prepared to invest in the right intellectual property at the outset.

The licensing issue is not confined to TV shows. Similar problems exist with gaming – video games, music, and streaming rights are not all necessarily compatible, even though they intersect on online content platforms like Twitch and YouTube. Players broadcasting their games across the world, with commentary, personas, and other embellishments (like yes, music and sound effects) creates a whole host of potential issues. New technology breeds new intellectual property problems.

Finally, why does it matter? Even if you are not concerned about a DMCA takedown notice or litigation under the Copyright Act, licensing issues can impede the distribution and monetization of your creation down the line. A buyer, publisher, or distributor will be much more interested in your product if you have all the rights. In other words, as a businessperson, you should seriously consider investing in intellectual property at the outset, rather than trying to resolve issues only when they arise.

Have additional questions? Need a licensing deal reviewed or negotiated? You can email Dan or call or text him to set up your initial consultation.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
esports gaming law intellectual property

FAQ: Can Playing Music on Twitch Get Me Sued?

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Yes it can. As the popularity of internet streaming soars, content creators are encountering unique legal issues related to the media that they use. In June 2020, Twitch received thousands of so-called “takedown notices” under the Digital Millennium Copyright Act (“DMCA”) related to multiple archived clips that contain copyrighted music. The Recording Industry Association of America (“RIAA”) owns the copyrights to many popular songs and is responsible for this DMCA blitz. This situation has prompted many questions from the streamer community, and so I have created this FAQ in response. If you have more specific questions regarding your situation, please reach out directly to set up a personalized consultation.

Q: What exactly is the issue with playing music that I paid for?

A: The issue is copyright law and the fact that that most streamers don’t have the right license. When you purchase a CD, download a song from iTunes, or subscribe to Spotify, you are only buying a personal use license for the songs. Remember how making bootleg CDs is “piracy” and illegal? That’s because your “ownership” of a song does not include the right to reproduce it. It also does not include the right to play the music for the public. When you hear music a gym, restaurant, or retail store, they have obtained special “public performance” licenses, which are more expensive.

Q: Are they really going to sue me? Even if I’m not making any money?

A: They might. Under U.S. copyright law, the copyright owner may sue to get an injunction (an order to stop doing something from the court), and in addition to actual damages, get statutory damages, as well as costs and their attorney fees. Under the law, infringement is still infringement even without profit or monetary gain. If a court finds that the infringement was willful, statutory damages can be up to $150,000.00. Also, under the Twitch terms of service, three DMCA notices against your account is grounds for a permanent ban from the platform.

Q: Why is Twitch so concerned with what I am doing?

A: Because they may be liable as the host of the copyrighted content. Under the DMCA, Twitch can avoid liability as the host if they act in response to a “takedown notice.” That is why they have been actively mandating mass clip deletions in response to the DMCA notices they have received. It is generally easier for a copyright holder to target the host like Twitch or YouTube than the streamer. The host has incentive to act in order to take advantage of the “safe harbor” under the DMCA, and if the host doesn’t act, the host has money to pay any adverse judgment obtained by the owner of the copyright.

Q: Isn’t my playing music “fair use”?

A: Probably not. The “fair use” exception to copyright infringement generally protects reproduction for criticism, comment, educational use, news reporting, scholarship, or research. When music is played to accompany a streamer’s gameplay, the music is not being used for any of these purposes. Whether or not something is “fair use” is a fact-specific inquiry, but generally playing a soundtrack to your gameplay is not going to be considered fair use.

Q: Isn’t the video game itself also protected under copyright law? Do I need a special license to stream the game itself?

A: The game content itself is protected by copyright, but streaming it probably qualifies as “fair use” and is protected from infringement actions. Most streamers commentate or critique their gameplay or the gameplay of others, so arguably the use of copyrighted content meets the factors listed in 17 USC 107. Essentially, sharing copyrighted content is the base of the entire streaming industry.

However, as Wisconsin attorney Matthew Harding pointed out to me, the issue is far from settled. On one hand, Amazon’s multi-billion dollar acquisition of Twitch, as well as eight-figure exclusive streaming contracts with top-tier talent, indicate that the industry is confident in its fair use argument against any game companies that would target the game itself. On the other hand, there are prominent industry figures that believe streaming video game content is not fair use and could be targeted via DMCA take-down notice, much like unlicensed music. Mr. Harding also observed that any company that targets streamers of its games with copyright infringement lawsuits or takedown notices will face significant backlash from the community, but the bottom line is that the publisher still owns the copyright and is entitled to enforce the exclusive rights that are attached to that copyright by law.

Q: I’m confused. I have seen rhythm and music game streamers get taken down – why are they not protected by “fair use”?

A: As stated in the response to the previous question, the “fair use” issue is not settled. In fact, each “fair use” situation is fact specific, but it is likely that these rhythm or music game players are not using the copyrighted work for commentary or criticism purposes. It is not enough to simply broadcast yourself playing the game. Running commentary or criticism is needed to make a plausible “fair use” argument.

Q: As a streamer, what can I do?

A: Twitch is actively working to give its streamers options. Recently, it has launched Soundtrack – a product that allows streamers to run a separate music channel during the broadcast. The artists and labels available are limited, but gives indie artists more potential exposure. Of course, the RIAA is fighting Twitch on this product too, claiming that Twitch needs synchronization and mechanical licenses for its Soundtrack tool. The fight continues.

Also, there is a number of websites that sell royalty-free licenses. For example, Tunepocket offers memberships that give streamers access to a range of music and sound effects specifically for public performance.

Q: I am a podcaster. Can I play music during my podcast?

A: Unless you hold the copyright to the music (i.e. it’s original) or have the right license, no. You face the same issue as streamers do when they play music in the background of their game streams. Music you buy on iTunes or stream through Spotify is not licensed for public performance like your podcast.

Dan Artaev is an experienced attorney who is an avid gamer and who has advised gaming companies regarding various legal issues, including intellectual property rights. Have more questions? Contact Dan by email at dan@artaevatlaw.com or by phone or text at (269) 930-0254.

© 2021 Artaev at Law PLLC. All rights reserved.

Categories
business law intellectual property

Who Owns Your Invention? The Concepts and Inventions Assignment Clause, Work-For-Hire, and the Shop Right Doctrine.

In the modern employment context, there are plenty of on-boarding documents, including a handbook, that the employee may be asked to sign as part of getting hired. Lurking in these pages of seemingly innocuous workplace policies may be critical obligations and restrictions that significantly restrict the employee’s rights. For example, non-compete and non-solicitation clauses are becoming more and more common in all industries. Also, there may be another Trojan Horse to watch for, especially in high-tech industries – the so-called “concepts and inventions assignment clause.” This clause essentially assigns all of the employee’s inventions, innovations, and discoveries that they make or create while working for the employer to the employer. And even in the absence of such a clause, the employer may claim rights as work-for-hire, or have limited rights under the “shop right doctrine.”

A “concepts and inventions clause” is a contractual obligation that is becoming increasingly standard in employment documents. It can be stand-alone, part of an employment contract, or even hidden in an employee handbook or manual. The clause gives the employer automatic and exclusive rights to inventions, conceptualizations, and other ideas created during the employer-employee relationship. The idea is that since the employer is paying the employee to dedicate 100% of his or her time to the business, and the employer is also providing the tools, space, and other means for the employee to work, the employer owns all of the fruits of the employee’s labor. The scope and breadth of the contract is up to the parties. However, some states (most notably California), limit the scope of such agreements by law. In those states, the agreement may not cover independent inventions – meaning inventions that are created on the employee’s own time without using any of the employer’s resources. For example, if an employee is a software designer, but goes home and creates a new type of mechanical circular saw in her garage during evening hours. Even if there is a general assignment clause, it likely would not be enforceable. Michigan does not have a law limiting the scope of the assignment clause/contract, which means that a Michigan employer could potentially claim rights to the new saw design, even if the invention has nothing to do with the employer.

In a high-tech context, a “concepts and inventions clause” may also list express exclusions. If Company A is hiring an inventor, the inventor would list all of the prior inventions that Company A has no rights to and the inventor retains. At the same time, the list benefits Company A because the inventor cannot later claim rights to an invention that is not on the list. Additionally, the clause (whether it is stand-alone or part of a broader employment agreement) often contains an integration clause, which prevents parties from claiming they had a side-deal or different understanding. And, there are “teeth” to provide that in case of a litigated dispute, the losing party would pay the prevailing party’s attorney fees, thereby discouraging lawsuits over ownership of an invention.

A similar situation occurs when an employer hires an employee for a specific purpose – that is to create a work-for-hire. Even without a contractual assignment clause, the employer will own the rights to any resulting invention where it is the outcome of the specific employment relationship. For example, Company A hires an engineer to invent a new chassis platform to use across Company A’s pickup truck line. The work results in a patentable invention and Company A owns 100% of the rights to the chassis. Even if the inventor did some of the work on his or her own time or otherwise made out-of-work contributions to the project, it would be considered a “work-for-hire” where the employer – or the “hirer” – owns all rights to the resulting innovation. The owner Company A is then free to license, sell, or otherwise assign the patent rights, and keep all of the profit, without providing the inventor with any additional compensation.

What about the situation where there is no “concepts and inventions clause” and there is no specific “work-for-hire” arrangement? Does the inventor always own 100% of the rights to his or her invention, even if created on company time? No, because of something called the “shop right doctrine.” The doctrine is a common-law concept (meaning it is a principle created by the courts, as opposed to the legislature). In general, the doctrine allows the employer to continue using the invention, but precludes the assignment or licensing of the invention to third-parties. In other words, the employer gets a royalty-free limited license to use the invention, but cannot sell it. The doctrine also requires that the invention be created using an employer’s resources, such as a laboratory, computer, or analytical equipment. The shop right doctrine is a defense to patent infringement that the employer can rely on if sued by the inventor – it is not an affirmative or assignable right.

What does this mean for employers and employees? If you are hiring or being hired, and anticipate the relationship may produce a valuable invention, concept, or other innovation, you should consult with an attorney to ensure your rights are protected. After-the-fact litigation is not only costly, but incredibly uncertain in outcome, and should be avoided as much as possible. As an employer, you want to make sure to have solid and well-defined assignment clauses for your employees to sign. And, because at least 9 states have statutory limitations on the scope of the assignment agreement, it is best practice to draft any assignment to be enforceable across the entire United States. As an employee, you need to make sure you are not inadvertently signing away more rights than you intend to, and are fully aware of your respective rights and obligations.

On a final note, these concepts (as well as other intellectual property concerns) also apply in the university context. Professors and graduate students are constantly innovating and creating, but whether they or the university own the final outcome may be something that they have not considered. In a famous example, Larry Page (one of the founders of Google), is listed as an inventor on one of the key patents that served as the foundation for Google. However, Stanford University owns the patent because Larry Page was a Ph. D. student there at the time of the invention. Consequently, Google had to license the patent from Stanford University for a hefty nine-figure sum. So while a university may not claim rights to inventions made by students as a matter of policy, they will likely claim rights to inventions made by employees. A graduate student or a post-doc is like a professor, in the sense that they are often employees of the university. Your specific institution likely has a tech transfer department, as well as its own policies and regulations. Again, an experienced attorney can help you protect yourself and stay informed of your rights and obligations.

Questions or concerns about your situation? Contact Artaev at Law PLLC to set up your initial consultation or call or text Dan today.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.


© 2021 Artaev at Law PLLC. All rights reserved.

Categories
gaming law intellectual property

So You’ve Designed a Board Game. Do You Need a Patent, Copyright, or Trademark?

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Board games are still big business. Even before the pandemic limited entertainment options, the board game industry already accounted for $1.8 billion of sales in 2013 – or almost 10% of the entire toy market in the United States. In the first half of 2020’s lockdown, Hasbro reported a 4% increase in gaming revenue over the same six month period in 2019. The global board game market is projected to grow to over $20 billion by 2025, and the ubiquity of online retail has made board games a truly global industry. And, digitization of board games (making them available on smartphones and tablets) has only increased the popularity and accessibility of these products for mainstream consumers.

Although the board game market is not as big as video games, board games have significantly lower development costs and can be designed without specialized knowledge like graphic design, coding, etc. Like writing a book, anyone can do it, so long as they come up with a good concept, it is entertaining, and the execution works. For example, one of the most popular games that has made millions of dollars is Cards Against Humanity. An R-rated version of Apples of Apples, the design and concept is extraordinarily simple – it consists of questions or concepts on black cards, and words or sentences to create an absurd/funny/offensive response on the white cards. Yet the concept was so well-executed and entertaining that it became an instant hit.

The relative simplicity of board game design however poses a host of unique legal issues. As a developer, you may have already been threatened with legal action, or worse, have had to defend yourself from a lawsuit. Or, perhaps you are considering legal action against a blatant copy of your original idea. Protecting your concepts and business requires an understanding of the three primary forms of intellectual property protections: copyright, trademark, and patent law. So what do you need? As always, the answer is “it depends.”

Copyright

Intuitively, board games should enjoy some sort of copyright protection. After all, they consist of booklets, printed boards, and other materials not dissimilar from literary works. As a general rule, the rules, boards, artwork, and other aesthetic or literary elements to a game are copyrightable and protected as such. These protected elements are referred to as the “theme” of the game. Distinct from the “theme” of the game are the game mechanics, which cannot be copyrighted. “Game mechanics” is the actual gameplay – which can be as simple as roll the dice and move a token. The United States Copyright Act codifies this concept and expressly states that copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 USC 102(b). As an example, the “Monopoly” name, mascot, property names, and token designs would all likely be protected under copyright law. However, the game play concept itself – that is moving around the board, buying up properties, and charging rent to other players who land there – is not. There is no bright line rule however, especially given the increased complexity of board games and card games, and each situation will be driven by its own unique factors.

Trademark

Trademark protection exists chiefly to prevent customer confusion and to protect the integrity of a brand. In the board game context, trademark will primarily protect the name of the game, but can also protect unique “trade dress” elements that constitute unique game board designs, cards, and tokens. For example, in addition to owning the trademark for “Monopoly,” Hasbro also registered recognizable designs from the game, including the railroad symbol, the “jail” and “go to jail” images, and the layout of the “Monopoly” game money. As an aside, the actual status of the “Monopoly” trademark is unsettled, as following years of legal proceedings, a 1983 appellate court case decided that “Monopoly” had become a generic terms and no longer was associated with the source publisher, Parker Brothers. Congress responded to the ruling by amending the Lanham Act to clarify that purchaser motivation is not the test and that a mark can only be deemed generic when its “primary significance” to the general public is the generic description of particular goods or services.

Patent

Patents are most often associated with scientific discoveries and mechanical devices. In the board game context, a patent may be available to protect a game’s unique mechanics. Again, we are not talking about general methods of play here, but rather something truly unique. A so-called utility patent could be available if the mechanics meet the unique and non-obvious test. However, patent protection is fairly expensive to obtain and to police, so while patent protection may be available, it may not be practical. Also, any sort of public disclosure, such as playtesting, may defeat patent claims. “Monopoly” was actually patented in 1935 by Parker Brothers, with the description including the rules, the “apparatus of a board game consisting of a continuous path around the board,” and other claims, including the Chance and Community Chest cards. The patent has little value however, as it expires in 20 years, and is so specific that it likely limits the protective scope of the patent itself.

Other Intellectual Property Concerns

The most two common questions designers ask are: (1) I am making a game; how can I prevent someone from copying it? and (2) I am making a game that is similar to X; how do I avoid getting in trouble for copying? While you may have taken steps to protect your intellectual property, the fact is that board games are especially vulnerable to knockoffs and plagiarism. The low development cost and lack of “trade secret” type secret components make it simple for an unscrupulous developer to simply take a game, rebrand it, and release it as their own. International law may even become an issue if an overseas company takes and repurposes your idea. By hiring an attorney as part of your team, you can ensure that you have taken the right steps to obtain copyright protection for your rules, art, etc., and that you have properly registered your trademarks. An attorney can also ensure that any contractors – such as artists – properly assign all rights back to the game developer through “work for hire” agreements. Licensing agreements with any publisher must also delineate the rights and responsibilities of all parties. Royalties and assignments must be fair, clear, and definite. If you have a co-designer or a business partner, you must absolutely have a business agreement before your idea starts making money, so there are no surprises or hard feelings. If there are copyright concerns or knockoffs, a DMCA takedown notice or demand letter is often an effective tool to dissuade would-be thieves. Conversely, if you are receive a takedown notice or demand from another designer, you need to have an effective and prepared attorney ready to respond.

Contact Artaev at Law PLLC to set up your initial consultation. We are Michigan’s gaming law firm and we specialize in the unique concerns that you may encounter as a game designer.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.


© 2021 Artaev at Law PLLC. All rights reserved.

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business law esports gaming law intellectual property internet law

Your Twitch Channel is Worth How Much? Protect Your Right of Publicity in the 21st Century.

Photo by Lucie Liz on Pexels.com

Did you know that celebrities, professional athletes, actors, and other famous people have a valuable property right in their very persona? That property right is called the “right of publicity” and extends to gaming, particularly as streaming platforms like Twitch allow gamers to develop their own brand and following. There is no question that internet personalities like Ninja, Dr. Disrespect, Summit1G, Shroud, and others have their own brands – unique styles that have helped them gain millions of fans. That branding naturally translates into lucrative sponsorships and 6, 7, and even 8-figure exclusive streaming deals that are similar to those enjoyed by celebrities in movies, music, and sports.

However, you don’t have to have millions of followers to develop a brand that has value and should be protected. As a streamer, eSports professional, tournament organizer, or commentator, you may have developed a persona, a unique style, catchphrases, signature moves, and other aspects that may make you especially attractive to your audience. That unique brand is called your “right of publicity.” And protecting that right is protecting your brand – so it is not only critical to protect it from misappropriation (just as you would with a trademarked logo), it is also critical to ensure that you do not unwittingly sign a contract that transfers that valuable right without you receiving appropriate compensation.

The first step to protecting yourself is to educate yourself. Read on.

The International Trademark Association defines the “right of publicity” as:

An intellectual property right that protects against the misappropriation of a person’s name, likeness, or other indicia of personal identity – such as nickname, pseudonym, voice, signature, likeness, or photograph – for commercial benefit.

– http://www.inta.org/topics/right-of-publicity/

Unlike patents, copyrights, and trademarks, the “right of publicity” is not found in any federal statute. Rather, it is a matter of state law and thus varies from state to state. What is more confusing is that some states (like California) have specific laws that expressly protect certain aspects of a person’s identity and set out a statutory process to enforce that right. Other states (like Michigan) do not have statutes that protect the “right of publicity” but recognize that right through the common law (meaning there are court cases that can be cited to support a claim). However, even where a state like California protects only certain aspects of a person’s identity under state law, a person can still raise common law claims to other aspects – in other words, California statutory scheme is not exclusive of the common law. For example, a celebrity’s distinctive voice is expressly protected under California law, but an imitation of that same voice is not. However, a celebrity may still file suit against an unauthorized imitator under the common law even in states where there is a statute. Confused? The main point is regardless of which state you are in, you have rights and remedies to protect your persona from misuse and misappropriation.

So what do you need to prove for a right of publicity claim? Generally, the plaintiff needs to show (1) the use of “identity”; (2) the appropriation of the plaintiff’s “identity” to the defendant’s advantage, whether commercial or otherwise; (3) lack of consent; and (4) resulting injury. The term “identity” is defined broadly and essentially protects any unique personal aspects, such as tone of voice, manner of dress, catchphrases, color schemes, and many other categories. Recently, I wrote about Detroit’s Eastern Market Brewing Co. dealing with a cease-and-desist from Barry Sanders after the brewery released Same Old Lager (a play on the phrase “same old Lions” that describes the teams consistently underwhelming performance and leadership turmoil). The problem was not the slogan or the riffing on the Lions – rather, it was the brewery’s can design featuring a pixilated football player wearing the Lions’ silver uniform with Sanders’ number 20. According to Sanders’ legal team, the brewery misappropriated his “identity” and thereby implied an endorsement or connection that did not exist. In response, the brewery changed the can design to replace the football player with the brewery’s own mascot and Same Old Lager is available once again.

What about parodies and fair use? The right of publicity is not absolute and cannot suppress the right to free speech protected by the First Amendment. Parody, commentary, news, and other so-called “fair uses” are protected from right of publicity claims. Because each situation is different, there is no bright line test, and judges are essentially called on to serve as art critics to determine what merits protection. As a guideline, the courts rely on the “transformative use test” to determine whether the derivative work sufficiently “transforms” the original to acquire its own independent economic value. For example, a t-shirt with a charcoal drawing of the Three Stooges failed the transformative test because the primary value of the t-shirt came from the identity of the Three Stooges. The defendant t-shirt maker misappropriated the economic value associated with their identity, and the fact that the image was a charcoal drawing (as opposed to a photograph) was an insufficient creative element to predominate the work. See Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001). In contrast, a comic book series featuring characters based on Johnny and Edgar Winter as half-human/half-worm villains was sufficiently transformative to defeat the musicians’ right of publicity claim. Despite the similarity in names and depiction with long white hair and pale complexion, the court noted that the primary economic value of the comic book was in the “fanciful, creative characters” and not the actual identity of the Winter brothers. See Winter v. DC Comics, 30 Cal. 4th 881, 66 USPQ2d 1954 (Cal. 2003) (66 PTCJ 210, 6/13/03).

As video games have become more sophisticated, they have also become targets of right of publicity claims. In a recent case, Arizona State’s quarterback prevailed against Electronic Arts when their NCAA football game omitted the quarterback’s name, but used his number, position, height, weight, and other characteristics. Other football game cases against Electronic Arts established amateur and retired athletes’ rights to their likeness, even where the publisher changed the jersey numbers and physical likeness. There are many unsettled questions with regard to the law of publicity, especially as new kinds of celebrities and mediums are examined, and the law is constantly evolving.

What does this mean for streamers, eSports professionals, and tournament organizers? Initially, that means you have a protected and valuable right in your identity. For example, there is little doubt that Ninja (probably the most famous Fortnite player and streamer) has a protected right in his image. That includes not only his name and likeness, but his distinctive hairdo, characteristics of his gameplay, and other aspects. Also, be careful what you sign. The right of publicity, like other intellectual property rights, is assignable and can easily be transferred as a part of a contract. For example, many professional eSports contracts require the player to transfer all rights of publicity to the team organization. As an up-and-coming player you may not necessarily care or gloss over that part, but what happens if you develop an independent celebrity? What if you come up with a move, look, style, catchphrase that goes viral? The team would own it, and even if you left, it is possible that the team could successfully enforce that right to your own creation against you. As one of the more bizarre examples, Twitch suspended Dragonforce guitarist Herman Li for playing his “own” music. While details are murky and Li is back on Twitch, the likely reason is that Li assigned his rights to a label, and the label holds the right to demand a proper license from a streamer for the music’s reproduction. Music streaming licenses are a whole different issue – read my FAQ on playing music on Twitch to learn more.

Now that you are educated, the second step to protecting yourself is is retaining the right counsel who knows gaming. Intellectual property rights and licenses are paramount in the digital age. It is more important than ever to consult with a knowledgeable attorney before signing that team contract or sponsorship deal. And, when marketing a new product, attorney review is likewise essential to avoid legal issues that derail your launch. Remember, sharing your marketing idea, new product, or other money-making scheme with your attorney is confidential and is protected by attorney-client privilege. At the same time, failing to consult an attorney at the start can cost you much more later on in responding to cease-and-desist letters and even dealing with a lawsuit. Finally, if you suspect your persona or brand is being misused by someone else, talk to an attorney who can advise you of your rights, and if there is a violation, send a takedown demand or a cease-and-desist letter.

On a final note, the same principles apply to Instagram influencers, podcasters, Twitter accounts, and essentially anyone else who has built an online brand through an online presence. Protect yourself and your labors by doing it right.

Need an attorney who knows gaming law? Contact Dan Artaev by email or by call or text to set up your consultation.

Disclaimer: This article is not intended to be and does not constitute legal advice. Do not take any action or refrain from taking any action based on this article, and always consult with a qualified professional about the circumstances of your particular case.

© 2020 Artaev at Law PLLC. All rights reserved.

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