I Want to Build an App for My Job and Sell It to Them—Can I?

frontI’m not a licensed attorney (yet), and none of this should be considered as legal advice–just general information.

A buddy of mine used to work as tech support for a software company which did not, at the time, have an app (he’s now in the dev dept. for the same company). He approached me and asked my thoughts about developing an app for the company, and then selling it to them.

My initial reaction? Of course not!

Obviously, he required a bit more explanation than that, so I figured I’d discuss it just a little bit here as well. See, my buddy thought that because he wasn’t (yet) in the development department, developing an app wouldn’t be within his job description, so he’d be in the clear for doing something like that and then own the rights such that he could sell the app to his company.

 

So, why couldn’t he? In brief, his employment agreement.

Granted, he never got me a copy of the agreement, so either he never found it and he just moved on, or he found it and read what I assumed he would find in it: a clause stating that he, the employee, agreed that any intellectual property he developed in relation to his employment would be the property of his employer.

Now, some employers—particularly those in the IP development industries—have much broader language (meaning it encompasses a lot more situations) that could include literally any intellectual property you develop, whether or not related to your work, on your own time, or with your own tools. Those agreements mean that the stuff you create would belong to them, and they’ll thank you for your hard work on their way to the bank.

When I worked at Barnes & Noble, there was similar, albeit far more limited, language stating that I agreed any intellectual property I developed at or for work would be the property of the company. Since I wasn’t into tech development, I couldn’t care less. But, it made even more sense for them to include it when I started because that was right before they launched the Nook eReader device. While it wasn’t specific to me, I know that they wouldn’t have wanted their employees, who would have access to the device and its software, creating competing products.

Myth: If what I want to create has nothing to do with my job description, my employment agreement doesn’t cover it and it’s my IP.

This is a toughie, because it’ll always depend on the language of your specific employment agreement. As game developers, you have a further difficulty in coming to a job with previously developed intellectual property, and that’s something you’ll need to address when reading over your development or licensing agreement. This applies both to whether you’re working as an independent contractor or as an employee. If you don’t know the difference, check out the video I did for New Media Rights on the topic here (2nd video).

As a developer, particularly in the app or games industry, you are frequently going to be entering into agreements with people to develop technology for them. In return for paying you to do that work, they will likely expect to be the owners of that end product or technology, because they need that ownership to function as a business—either for promoting it on their own or to sell it later on down the line.

Trouble arises when the language of the contract is vague with regard to PRIOR TECHNOLOGY or tools. Since you’re not about to reinvent the wheel every time you go work on a project, you’re bound to have your own tools and techniques to make work go faster so you can be sure to pay your internet bill on time. But, you want to be on the lookout for clauses in a contract that purport to grant ownership rights in literally ALL the technology included in the end product, as that could potentially mean that you’re giving away your rights to your own intellectual property (tools, software, etc.) to your client.

How to deal with it? You guessed it: ask a lawyer to look over you agreement and see if the phrasing creates any grey area in which they could argue ownership over your stuff in court. Phrasing like that can generally be negotiated out, unless the point of the agreement is that you’re developing the product like an engine or something for which they intend (and pay big bucks) for you to transfer your prior technology rights to them.

 Myth: No one reads the contract anyway.

Now, I know you’re likely too savvy to be swayed by this myth, but it bears at least a few sentences of warning (or, after having written it, a few paragraphs).

It can take months to years to finalize a contract, true. And it’s also true that after everything’s inked and signed, no one reads the dang thing because…well, because it’s an 80 page contract full of legalese! BUT…you know who does read it? The person looking for a way out.

It could be a client who, nine months and several hundreds of thousands of dollars in, realizes that their idea is complete crap and they don’t want to foot the bill for the rest of the project. That’s right, it could be that it has nothing to do with you, the developer, who has met all the milestones and even surpassed expectations. But, when one party (person in the contract) wants out of the deal, they’re going to have their lawyers scour the contract and find some loop hole or technicality (e.g. ‘all modifications must be in writing and signed by both parties’, and some weren’t) to get them out of the deal.

Then again, it could be that the client is difficult to work with, communicate with, or maybe they want to add on things which weren’t in the original deal, and are incredibly difficult/expensive to add. Oh, and, of course, they don’t want to pay extra for it. At that point, you may want to just cut your losses and move on to a better-looking gig that’s guaranteed to pay you. But, you’ll run into problems if you’re in breach (violating the terms of the agreement), so you’re going to want to know that your interests (and exit plan) are accounted for in the agreement, among many other things.

Finally, a jury or judge would be potentially a reader of the contract (or, more likely, an arbitrator). You probably want to avoid that when you can, since it’s highly doubtful that they will have any experience in your industry, let alone understand the trends or customs in which you conduct business, so they’ll only have the contract for reference. This is another reason to make sure it says what you want it to say.

 

Take-Aways:

  1. Read your employment (or development) agreement & see what it says about IP.

Especially for prior technology, if that’s an issue for you. If you work for a tech or software company, it’s highly likely that there will be broad language in there transferring rights to your employer for things you develop. It may be that you just wait until you’re no longer employed by them to make that project (depending on whether there are other provisions in there, such as a non-compete clause), because you don’t want to chance them owning your work.

On the other hand, you could also request to add into the agreement something like a list of your previous technology or intellectual property, so that it’s clear where the boundaries are of their ownership, at least so far as the IP you’ve already developed.

There are many ways to approach it, but the best way is with an attorney who will look out for your interests.

  1. Read your employment agreement for an exit strategy.

You may be surprised by what you agreed to way-back-when. Discuss with your lawyer about exit plans in the event something goes south so that you have a tolerable way out of the deal, as well as ensuring that you won’t be totally screwed if the other side backs out.

 

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Legal Issues of #GamerGate

SuzanneLet me start off by saying the game industry is good. It’s full of good people doing good things. I’m fortunate enough to live and work within a community that offers an immense amount of inclusion and respect. I’ve somehow managed to surround myself with people that personify the best aspects of our industry. I’m a woman making, writing about, and endeavoring to work in games – which can sometimes, in less supportive places, be a complicated endeavor. However, I’ve found endless support.

In the past couple weeks, I’ve seen a lot of the bad side of the games industry that indicates we should be improving. Individuals that make, play, write about, and involve themselves in games became embroiled in a lot of online nastiness. It stemmed from fraud, ethics, misogyny, or the sense that none of these should be present. If we’re going to discuss these issues, we should do so in a less violent or hostile way, and legal recourse is one way to handle these issues and reign in negative behaviors.

I’m not a lawyer, and none of the following is advice. If you have concerns, you should talk to a lawyer licensed to practice in your area. Beyond that, a topic this sensitive is going to be colored by my perspective and experience. I will do my best to keep the information accurate and not to make moral judgments, but in some cases my bias will show.

#GamerGate has been an online movement with no single basis, perhaps related to feminism, misogyny, or journalistic integrity. The issue may have begun with a blog post that mentioned a sexual relationship between a developer and a journalist, which the author implied resulted in positive press coverage. As a result, some assumed that these kinds of relationships were not rare in the games community. Some responded that these relationships were a breach of journalistic integrity. Others felt that the alleged sexual history of a female developer was not a valid source of conversation. Some started making threats, doxxing, and responding to critiques with obscenity. Much of this negative activity was directed at women, and those that supported them, in the industry, leading many to believe that it was misogynistic in origin. Even after the FBI became involved those concerned about journalistic integrity and those suffering from misogynistic attacks were left dealing with fall out.

An initial issue is journalistic integrity. There is no legal cause of action for breach of journalism ethics. Recourse in that space is left to the market. There may be some space for claims of fraud, which is “the intentional use of deceit, trickery or some dishonest means to deprive another person of their property or legal right.” But, given what I can understand of the claims against games journalists – that developers were engaged in inappropriate relationships with developers – fraud does not seem applicable in this case.

Defamation is a civil area of law that offers remedies when your reputation is harmed by someone’s words. Libel occurs when these words are written or published. To prove defamation, a plaintiff must prove that a statement that is false and injurious is published somewhere nonprivileged. For any statements made by a journalist to be considered defamation, they must be false facts, not unfavorable opinions. The journalist must know that the information is false and not care or try to determine its validity. If the statement is about a public figure, the falsity must be intentional. Defamation claims are not limited to journalistism. Anyone who published a false statement that meets these criteria can find him or herself in civil court.

The bulk of the issue is whether all the harassing behavior online is illegal, and, by extension, who is at risk of legal repercussion. Assault, within the Common Law, is “an intentional act by one person that creates an apprehension in another of an imminent harmful or offensive contact.” Assault does not require that a harmful or offensive contact be made, but rather only requires an intentional action that would cause a rational person to fear imminent harmful or offensive contact. Some of the language online was threatening to a rational person, but much of it also came from individuals that posed no imminent threat.

Laws regarding cybercrimes (e.g. cyberbullying, cyberharassment, cyberstalking) usually vary by state but occasionally fall under federal law. It is a federal crime, punishable by up to five years in prison and a fine of up to $250,000, to transmit any communication across state or national lines containing a threat of injury. Federal law also criminalizes certain forms of cyberstalking as misdemeanors. It is a federal crime, punishable by up to two years in prison, to use a telephone or telecommunications device to annoy, abuse, harass, or threaten any person at the called number, so long as the caller remains anonymous. The Interstate Stalking Act makes it a crime for a person to travel across state lines with the intent to injure or harass another, if the action creates a serious risk of injury or harm to that person or their family.

Most states have individual laws which deal directly with threats made online. These laws vary wildly amongst the states, but almost all require that the person making threats intends to harass the victim. Some specifically criminalize messages that are obscene, sexual, or target the victim’s family. Some include distribution of photos as acts of harassment. Some are felonies with mandatory jail time, while others are misdemeanors. Some states have additional laws to protect minors from cyberbullying. Predominantly, each state applies their laws differently.

Those making threatening comments are sometimes protected by claims of free speech. However, First Amendment rights do not extend to libel, slander, obscenity, true threats, or speech that incites imminent violence or lawbreaking. With such a wide range of criminal statutes, language on the internet should be used carefully. Hacking or collecting information without authorized access is also often criminal. On the other hand, creating a parody account on social media is not criminal, but does often violate terms of service. Hosting or promoting harassing content may land a website in hot water, usually through loss of readership or civil legal action, but the laws have not been created to make such behavior a clear criminal offense.

It should be obvious that anyone who feels unsafe or threatened should reach out to the authorities. Even where there is no immediate cause of action, the report will create a record of behaviors and may influence lawmakers to take new situations into account. Knowledge of local laws can be empowering in stressful situations. In an ideal world, our community wouldn’t need to rely on criminal statutes to create a safe environment.

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Protecting Your Game

SuzanneReaders! I hope you’re having productive summers. I remain, as always, very busy, but an interesting story came across my desk today and I felt the urgent need to repeat that copyright registration is an effective way of protecting game, sometimes even from blatant failure.

As always, nothing I say is legal advice. I’m not a lawyer, just a dedicated student.

Duke Nukem, a series often of legal interest, apparently registered code and some images from an unreleased Duke Nukem PSP game. David Gibson was going through recently acquired video game registrations when he stumbled across the find. The game was registered after, and likely not released due to, the critical miss of the DS game Duke Nukem: Critical Mass.

As readers know, copyright registration is key to legal protection of copyright against infringement. It seems that in addition to these traditional protections, registration can protect a game from being lost due to being unreleased.

Mr. Gibson is still engaged in uncovering the secrets the game from registration materials, bringing up the question of whether his actions going forward could constitute an instance of infringement. More to come.

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Real Jail for WoW-Crimes?

Sam sprite forwardRecently, a British politician suggested that theft of virtual items in online games should be punished like real theft.  Mike Weatherley – by day the chief adviser on intellectual property to the Prime Minister, by night a mighty hero of Azeroth in the MMORPG World of Warcraft – asked the British Minister of State for Justice to propose legislation “to ensure that cyber criminals who steal online items in video games with a real-world monetary value received the same sentences as criminals who steal real-world items of the same monetary value.”  So if you steal an in-game magic item worth a real-life $100 (or £50, since we’re talking about England), you would get charged with theft of £50.

If this does become a real thing, I’d like to propose that this area of law be dubbed “WoW-Crimes.” (“World or WarCrimes” has a clever ring to it, but it also sounds too much like a Rwandan genocide simulator, and the world really doesn’t need that to exist.)

Mr. Weatherley tells it like this, “The perception from some people is that if you steal online it’s less of a crime than if you steal physically.”  I imagine that most of us would agree that such a perception is a faulty one.  As in-game purchases become a bigger and bigger thing, there might be a need for these kind of law.  Heck, the amount of time that my 3-year-old son and I spent playing Pokémon Y together is staggering (and well worth it).  I’d be furious and heartbroken if someone robbed the Pokémon Bank.  But, like just about everything to do with computers, the law is not well equipped to deal with . . .  [Continue reading on the highly prestigious Cardozo Arts & Entertainment Law Journal]

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Dictator Objects to Black Ops II

Sam sprite forwardIn the latest in a series of lawsuits over likeness rights in video games, former Panamanian dictator Manuel Noriega has sued Activision Blizzard in California state court over his name and likeness being used in Call of Duty: Black Ops II.  Noriega claims that, by including him in Black Ops II, Activision “receive[d] profits they would not have otherwise received,” due to portraying him “as the culprit of numerous fictional heinous crimes, creating the false impression that [Activision] are authorized to use [his] image and likeness.”

Noriega is currently in prison in Panama.  One has to wonder how he found out about this in the first place.  I’d like to imagine him sitting in his cell with an Xbox, a look of rage coming over his face as he realizes that he has to hunt himself.  But I digress.

On the one hand, this is a much more clear-cut case of likeness appropriation. The character in Black Ops II is explicitly Manuel Noriega.  Unlike Lacey Jonas from Rockstar’s GTA 5, there is no way for Activision to wiggle out of this case by claiming coincidence, and nothing about Black Ops II makes the use of Noriega seem like a parody.  This case actually fits decently with a recent case in which NCAA athletes sued over their likenesses appearing in EA Sports games.

On the other hand, Black Ops II is a historical fiction. Many actions that Noriega takes in the game are undoubtedly fictional, but the setting is very much based on real-life events, and Noriega is a real-life figure who ruled Panama during the time that the game’s action takes place.  The need to depict him is clearly important to accurately representing Panama in the 1980s.  Historical figures and especially political leaders have precious little power when it comes to depicting them in historical events.  And this doesn’t even get into the issue of whether he, as a citizen of Panama, even has any sort of likeness rights in the United States.  I don’t see this one going very well for poor Pineapple Face.

Ultimately, the lesson to be learned here is, be careful about whom you choose to put in your game.  Even if the law is on your side, it won’t always stop you from getting sued.  Especially by someone who has the need to feel important.

As always, this is just legal information, not legal advice, and (unless you hired me recently) I am not your lawyer.

© 2014 Sam Castree, III

P.S. Also be on the lookout for a similar lawsuit, over the same game, by former CIA director Gen. David Petraeus, coming soon to a courthouse near you.

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Lacey Jonas… I mean Lindsey Lohan sues Rockstar

SuzanneRecently, Lindsey Lohan made headlines for her suit against Rockstar for “borrowing” her likeness for a character in GTA V. She’d been threatening to sue for some time, so Rockstar was unsurprised; but, even without the threats, Rockstar should have known the Grand Theft Auto franchise was putting it at risk for a lawsuit. History tends to repeat itself.

In 2006, a court found that the Pig Pen gentlemen’s club in Grand Theft Auto: San Andreas did not violate trademarks belonging to the Playpen gentlemen’s club. The clubs were similarly located in real life and in the game world, and both logos included the silhouette of a nude female dancer inside the first P. The court found that even though Rockstar artists relied on pictures of the area for inspiration in creating the animated fanciful world that was San Andreas, they changed enough of the look and feel and design aspects to not infringe on the marks. The court found that the parody strip club was not a major draw in the game. That the club was not a major component of the game informed the court’s decision that there was no infringement.

Earlier this year, Karen Gravano, Mob Wives star, filed a $40 million suit against GTA V claiming they used her likeness in the “Burial” random encounter mission. The suit claimed that the in game character, and her family, directly copied the actual life events of Gravano. Rockstar responded that the case has no merit, and beyond that, the character is thinner than the real life Gravano.

Lohan will have her hands full going up against Rockstar.

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Double Dose of Game Dev Law Speakers

Sam sprite forwardThis weekend is the Midwest Game Developers Summit in Oconomowoc, Wisconsin.  For those who attend, you will have the chance to see not one, but two presentations by the friendly folks at Game Dev Law.

The schedule is still a bit in flux, I’m told, but at the moment, this is how things look.  On Saturday July 12, from 3:00 – 3:50 p.m., I will be giving my hit presentation, “Intellectual Property Basics for Game Developers.”  Then, on Sunday July 13, from 11:00 – 11:50 a.m., Suzanne will be giving a talk entitled “Video Game Law Dungeon Crawl.”  It’s sure to be a great time, so come on by.  We’ll be around for most of the Summit, so feel free to talk to us before and after the presentations, too.  You will know me by my hat.

© 2014 Sam Castree, III

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Summer is a Busy Time

SuzanneReaders!

I’d like to explain my recent lack of postings. I’m spending my summer interning with an amazing law firm out of L.A., and, while they’re keeping me reasonably busy, I’m also teaching video game development at a camp and writing for another blog.

A close friend of mine shared a recent post from Kotaku, which included this image, which provides the ideal opportunity to point out that trademarks are always adjectives.

ijqzgsqfsslrfylg1v6jAs much as you’d love to google that, and perhaps xerox a photoshopped summary of your results, you shouldn’t. Doing so puts those trademarks at risk. The owners of the respective marks can only maintain their registration so long as common language continues to treat  that mark as an adjective.

The argument can, of course, be made that if your trademark reaches the point where it becomes a colloquialism or common expression, you’ve achieved success. However, the time and money put into promoting and marketing the registered mark are then effectively lost. Once the mark is no longer registered, it loses much of its protection.

Per Mario’s request: Be careful how you use trademarks. (and enjoy your summer!)

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Take (Almost) as Long as You Like

Sam sprite forward(I really wanted to title this post something cheesy like “Supreme Court K.O.s MGM in Raging Bull case,” but I showed admirable restraint. You’re welcome.)

The U.S. Supreme Court recently decided a case called Petrella v. Metro-Goldwyn-Mayer, Inc. This case involves Raging Bull, the classic 1980 Robert De Niro film about boxer Jake La Motta. To set the scene, Paula Petrella, the daughter of the screenwriter who wrote Raging Bull, had regained the copyright to the script in the early 1990s. She subsequently informed MGM of this fact, and claimed that the movie was a derivative work that infringed her copyright in the script. Heated letters were exchanged. Threats were made. Then nothing happened for nearly a decade, until Petrella ultimately filed a lawsuit against MGM for copyright infringement in January 2009. Overall, 18 years had passed between Petrella regaining the right to Raging Bull and the filing of her lawsuit.

The statute of limitations for copyright infringement is three years, but each individual act of infringement is its own separate issue. So Petrella was suing over all copies of the film (DVDs pressed, HBO streaming, etc.) made between January 2006 and January 2009. However, MGM countered with a defense called laches (pronounced like the latches on your doors). Laches says, basically, that the plaintiff waited too long to bring her lawsuit. Laches is like the stature of limitations, except that there is no set amount of time for laches; it’s a fuzzy, gray-area, equitable doctrine. It could be any amount of time, as long as the delay is “unreasonable” and the defendant would suffer “unjust hardship” as a result of the delay.

Ultimately, however, the Supreme Court said that laches does not apply to copyright infringement cases. There are several reasons for this, some much less convincing than others, and a lot of it is based on the quirks and history of our legal system that would probably require some formal legal education to fully grasp (i.e. way more time and space than I have in a blog post about Raging Bull). So, let’s talk about what this means on a practical level. Someone could make a work based on a popular movie/TV show/video game/etc. and puts it on the Internet. Maybe it’s fan fiction. Maybe it’s an online wiki database. Maybe it’s an otherwise-original video game that misappropriates music from Mega Man 6. For simplicity, let’s call it “the fan work,” although this applies to all works, not just fan-made creations. The copyright owner learns about the fan work but does nothing. It’s not worth suing over. Then, five years later, the fan work has become very popular. It’s even making money after a publishing deal. Now it’s very much worth suing over. The copyright owner can’t sue over the initial creation of the fan work; it’s two years too late for that. But, according to the Supreme Court, she can absolutely sue over all the new copies being made, the ones that are making money. That’s basically what happened with Raging Bull. Petrella waited to sue until the film started making money again.

However, there are some limitations. First, if copies are never made, then the statute of limitations kicks in after three years, and that’s the end of it. If MGM hadn’t made a bunch of new Raging Bull DVDs, there wouldn’t have been DVD copies to sue over. Second, the trial court may still take the copyright owner’s delay into account in determining what relief the copyright owner actually gets, such as how much money in damages and any court orders, e.g., to stop selling the fan work. Third, the defendant can still rely on the law’s “no take backs” rule (the technical term is “estoppel,” which admittedly sounds more like a goofy Dragon Quest magic spell). Thus, a copyright owner can’t mislead the fan about how it’s totally cool if he sells his fan work, and then turn around and sue him for selling his fan work. Finally, the copyright owner still needs to prove copyright infringement. It’s just that she gets the chance to do so, even after so many years of delay.

Ultimately, if you’re a copyright owner, this case is great news. If you’re the creator of the fan work, you’re probably distressed, and understandably so. Either way, it’s something that you need to take into account moving forward.

As always, this is just legal information, not legal advice, and (unless you hired me recently) I am not your lawyer.

© 2014 Sam Castree, III

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr

Analyzing Fandom: Cosplay

SuzanneContinuing the exploration of fandom, and its associated legal snares, we turn to cosplay. Costumed play, cosplay for short, is the hobby, and sometimes profession, of dressing up as a character from fantasy, comics, tv, movies, video games, or any inspirational material. In the past two years, I have prowled local conventions in a custom homemade set of Halo armor,  dressed as Chell from Portal, as Aria from Mass Effect, Ray from Ray’s the Dead, and, most recently as Lady Loki, horned helm and all. Cosplay is how I share the things I love with the world, and it’s a much appreciated break from being a law student. Like most cosplayers, my costumes are homemade but are an homage to the creations of others. These creations exist in the world of copyright; cosplays are derivative works…Continue Reading

Share on FacebookTweet about this on TwitterShare on RedditShare on LinkedInShare on Tumblr