During a panel discussion organized by Asia Law Network and PIXEL, Adrian Kwong (managing director of Consigclear LLC), Jeremiah Chew (senior associate at Ascendant Legal) and Deitrich Mohan (Game room and 3Bode media) discussed intellectual property issues surrounding the gaming and media industry.
The panel answered a range of questions, from broad categories of:
- Basic information on copyright and trademarks
- Licensing issues
- Protecting IP rights
- Infringement of IP rights
- Enforcing IP rights
- Seeking Legal advice
Here’s a breakdown of what was discussed during the event.
Basic Information on Copyright and Trademarks
#1. The types of trademarks
Adrian shared that trade marks can be either registered or unregistered. Unregistered trademarks are commonly denoted by a “TM” notation (or for services, a “SM”), both also used in superscript. These are used to indicate that a mark is used to serve as a badge of origin for distinctive products and services respectively. Upon registration of a trade mark, the (R) symbol can also be used. Adrian noted that it is a criminal offence in Singapore to use the (R) trademark if the mark is not registered. Still, he recommended people consider using the TM and SM to put people on notice that a trademark is being claimed to serve as a “badge of origin” for a product/service.
#2. What does the “©” symbol represent? How is it useful?
Adrian clarified that this symbol functions to “put the world on notice” that there is copyright claimed over the relevant work. The symbol “©” is not strictly required and simply the word “copyright” can also be used. These are useful to place people on notice, where it makes it difficult to claim unawareness that there are rights claimed over a work. This serves a protective function.
When claiming copyright over products or online content, Adrian commented that copyright notices are often used “judiciously”. Copyright notices are often present on each piece of work produced and in numerous locations. For instance, in online videos, copyright details are sometimes included in the description boxes, and on the packaging of physical games. Adrian shared that it would be good to use these notices on certain important and distinctive content.
#3. What is the effect of trademark and copyright on the commercial value of a work?
Jeremiah explained that while copyright is not registrable in Singapore, a registered trademark can increase the commercial value of a piece of work. For instance, a registered trademark is an IP asset and may add to a company’s value in the case of an acquisition.
#4. What are the types of IP rights in a game? How are they being used?
Adrian, using various samples of video games as an example for the audience, demonstrated that a single product may involve different IP rights. For example, there are various trademarks or copyright notices on the packaging or displayed within the game itself.
Adrian highlighted that games may have very distinctive in-game characters and, for mobile games, application icons which may also be the subject of copyright. This would help prevent companies who are trying to break into the same game genre or make similar games from approximating these characters as representations of their new game.
#5. What is “fair use”? Is it “fair use” to use publically available video and music resources for your own use?
“Fair use” was introduced by Jeremiah as a legal doctrine which is available in many jurisdictions including Singapore. It allows one under certain specific circumstances, to use a copyrighted work such as to reproduce it or distribute it, but only within those prescribed circumstances. For instance, an example of fair use is for the purpose of reporting to provide news coverage of an event. Should a news agency wish to report on a new novel or play, it is difficult to say that copyright has been infringed as they are simply reporting on a current event.
The boundaries of fair use are non-exhaustive, and may arguably include many types of uses. However, Jeremiah suggested that a critical criteria would be the purpose of the use of the material being not for profit. For example, the nature of using publicly available music for a commercial is distinct from using it to promote a charitable cause.
Adrian clarified that “fair use” is distinct from the term “fair dealing” which are the words used in Singapore’s statutes. “Fair use” is a concept used more commonly in America, and what is considered to be “fair use” in America may not necessarily be “fair dealing” in Singapore.
#6. Is it possible to copyright the process of creating a product?
Adrian shared that a method of production generally does not come under copyright and suggested that perhaps a patent would be the closest to protecting creative methods. However, he noted that obtaining a patent over a method is difficult to obtain, and potentially controversial as it prevents all others from using that method. In addition, patents can be expensive to obtain.
Adrian suggested another form of protection in ensuring confidentiality of trade secrets, using the law of confidence as a protection. By ensuring that crucial trade secrets known only by a selected few, a method may remain secret. If disclosed publicly, this would then amount to a breach of confidence.
#7. What is a license? How is it distinct from an Assignment?
Jeremiah explained that “assignment” means that the right is ‘given away’, while a “license” means to ‘lend’ or to give a person permission to use the right. A license is thus temporary, and the original owner of the IP right still retains ownership. However, an assignment is permanent.
There are many types of licenses, and the panel addressed the general types. Jeremiah introduced the concept of an exclusive license, which is a license given to a single party and no others while a non-exclusive license would permit the owner to license to multiple parties. This is important so far as IP rights are commercialised, where an exclusive license has to take into account a reduction of income as to that IP right for a period of time, which should have proper remuneration. Adrian identified the sole and exclusive license, which inhibits the ability of the owner of the property to use it, where the holder of the license would have the full use of the representation of the product for the period of the license.
Adrian emphasised the importance of distinguishing between licenses to ensure that one does not give away more than intended and to maximise revenue. Still, licensing is a good way for companies to share IP and generate new revenue. A good example Jeremiah identified is the collaboration between Star Wars and Lego, which is particularly significant for allowing Lego to appeal to an older age group with higher spending power.
When obtaining licenses, Jeremiah cautioned that it is important to ascertain the owner of the copyright. For instance, pop singers may not hold the copyright to their song if they have an arrangement with their company which will affect their right to grant a license for the use of their song.
#8. When should a creator seek Legal advice for licensing?
There is a need to gauge the financial resources available to obtain legal advice. Adrian commented that not many companies will have the resources to seek advice for the whole process.
Adrian commented that when using other’s work, taking note of guidelines and criteria to use of the work can be done independent of a lawyer. However, when creating an original work, Adrian suggested that spending time with a lawyer may be useful in order to protect what has been created, such as to document the creative process. This is as upon commercialization, it is important to be able to enforce IP rights where necessary with the appropriate branding and technical protections in place.
Protecting IP rights
#9. Do Digital and analogue reproductions of artwork count as evidence of copyright?
Comparing digital to analogue works, Adrian explained that digital works may actually be easier to date accurately due to meta-data (data which describes and gives information about other data). For instance, a Microsoft word document is dated with the date of creation automatically, which is more conclusive. However, in physical works like paintings, dates of creation can be easily added on as is convenient. In the past, people would use more extreme methods such as mailing a novel to themselves in order to have a receipt of the date of creation. Thus, he concluded that in today’s context, a more official documentation of the creation of an analogue work would be useful. It may be helpful to take pictures of an analogue work that will be dated automatically.
Adrian also commented that there does not seem to be any distinction between an electronic or physical piece of evidence today in court provided that either can be shown as legitimate and authentic. In some ways, it may be easier to find and produce digital copies of evidence especially if it is uploaded onto the internet.
#10. Protecting IP rights to a cartoon character
There are various ways of protecting IP rights to a created character. Jeremiah emphasised the importance of documentation of the creative process, although copyright protection arises automatically in Singapore. If a character is prominent, one may consider applying for a trademark as an additional layer of protection.
Infringement of IP rights
#11. Is selling photographs of famous landmarks infringement?
Jeremiah commented that there may be copyright over the architecture and design of a building. Some buildings may also have their silhouettes trademarked. Jeremiah suggested that if a photograph or picture is very close or similar to the silhouette, it may potentially be infringement. However, when a photograph or picture of a building is taken/made in a more artistic manner that contains more elements or is transformative, it may not necessarily be copyright infringement. Still, this will depend on the nature of the copyright or trademark if present.
#12. Is taking an unauthorised film of a rehearsal of a live performance and posting it online before the release of the performance infringement?
There may be some form of infringement. Jeremiah raised the example of a play, wherein the script as a dramatic work may be copyrighted. Another element he shared was the potential breach of confidence where the contents of a performance are confidential, and another person takes a recording and publishes it without permission.
#13. Which IP issues should be considered when video streaming and using another person’s work in the video or reproducing it in full?
Jeremiah explained that multiple parties may hold IP rights to the various elements in a video. For instance, person A may have written the lyrics to a song featured, while company B holds the rights to the recording, while person C holds the rights to the videography featured. These rights may be infringed if a person goes ahead and re-produces components/the entirety of a video’s content without seeking permission.
Therefore, there may be a need to seek permission from multiple parties before content can be re-produced legally. Jeremiah mentioned organisations in Singapore which have permission from content creators to sell licenses on their behalf, such as the Composers and Authors Society of Singapore (COMPASS) and the Recording Industry Performance (RIP). These organisations are an important resource, which may sell licenses for content which one wishes to use.
Mohan commented that streaming platforms may also have their own rules as to how content is used.
Enforcing IP rights
#14. What is the significance of enforcing IP rights?
Adrian identified the key advantage in having IP rights lies in the ability to control the usage of a work. For example, one may send a cease and desist letter, start a lawsuit, or by seeking an injunction from the court for urgent matters as remedies for infringement. The specific action taken to enforce an IP right will vary according to the situation.
#15. What is the distinction between infringement and enforcement of IP rights?
Adrian pointed out that it is not given that a content creator will always take legal action against IP infringement. Particularly, where it is not practical, a party may decide not to enforce his legal rights. However, he cautioned that one should not deliberately seek to infringe IP rights just because one feels it is unlikely the other party will not enforce them.
In infringement, there may also be some benefit to the content creator. Jeremiah commented that it is very possible for GIFs made from clips of popular TV shows, or fan-art to be considered infringement. Still, taking the example of fan art, these forms of infringement can help to spread the popularity of a game and the content creator may choose not to enforce his or her rights through legal action. However, Jeremiah clarified that where the infringement is detrimental or defamatory, such as a GIF showing that a TV show is poorly made or contains falsehoods, it may be in the content creator’s interests to commence an action against the infringement.
#16. Licensing in the gaming industry
Adrian shared two potential ways where licensing is relevant to the gaming industry.
The first was “licensing in” the necessary technology or content to create a product. For instance, to create a Star Wars game, one would have to obtain a license for the Star Wars content going into the product, and to create a VR game there may be a need to obtain a license for the VR technology and tools to create the game. This will depend on the type of resources chosen to create the game.
The second type of licensing Adrian identified was “licensing out”, which would be approaching the market with a product for bidding, which will allow developers to obtain the financial resources necessary to cover costs of creating the game.
Seeking Legal advice
#17. When consulting a lawyer, how and when are fees payable?
Jeremiah explained that the rates and way in which fees are charged vary from firm to firm. Most firms would require that a letter of engagement be signed before a person signs up with them. Fees for consultations depending on firm may be waived if the client continues to sign up with the firm after an initial consultation. However, Jeremiah cautioned that it is important to ascertain the fees for relevant firms and lawyers. Informal questions and meetings, such as should you meet a lawyer on the street and ask a question, would generally not be chargeable. It is important for clients and lawyers that lawyers be upfront with their fees.
When lawyers draft letters, the price and length varies based on the complexity of the matter. While the letter itself does not have any legal effect, Jeremiah shared that it may give the other party a chance to deal out of court.
#18. Issues to consider when deciding to seek litigation or other solutions such as mediation or using a cease-and-desist letter
As an alternative to mediation, Jeremiah suggested mediation, a form of Alternative Dispute Resolution (ADR) which allows parties to resolve disputes out of court. This is available in various places as the Singapore Mediation Centre. It involves a mediator, who as a neutral third party will seek to assist parties to come to a resolution and settle the matter. Jeremiah also commented that is common that the courts will try to encourage parties to pursue mediation in the early stages of a dispute.
Adrian added that it is likely that many IP issues can be resolved through mediation, which can be a more commercially viable solution where licencing is an issue. It is a solution that allows the possibility of an amicable resolution, making it easier for future business relations such as licensing agreements.
Conversely, litigation is costly and lengthy and is a more extreme option with severe effects. Adrian also noted that even a cease and desist letter can be handled delicately and creatively to achieve a better result. He raised the example of Netflix’s letter (to the organisers of a ‘Stranger Things’ pop up bar in London) which took a friendly approach rather than threaten. The letter generated a lot of positive publicity for the company. Jeremiah added that litigation would not be the best solution in situations where the publicity from a lawsuit is undesirable. The full circumstances should be considered in making a decision whether to sue.
Have a question on Intellectual Property?
If you have any questions regarding intellectual property, you may request a quote with Jeremiah Chew or Adrian Kwong. You can also get a Quick Consult with other lawyers with similar expertise from a transparent, flat fee of S$49 and expect a call back within 1-2 days to get your questions answered.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.