Copyright Aid

I have been a leading member of a development team working on a computer game for over 6 years. This is the first product created by this team and all members work on a voluntary basis. Up until now, we have not given much thought to the legal aspects of our company and game name (neither of which have we registered). However as we are approaching release, we are trying to straighten out any potential problems now. Two different potential copyright/trademark issues have come to our attention as a result of this:

1. The company name that we’re using is very similar to that used by a very well-known international gaming developer who has made some online games in the same genre as ours. This might seem like an incredible mistake to make on our part, however there are other details which may be important. I’m afraid I’m not comfortable giving any names, so I’ve changed them below. Apologies if this makes answering my questions any more difficult.
   
   In 2006, this gaming developer, Oaken Interactive, was bought out by another company, which changed the name of this company to a completely different one. In 2007, we unknowingly named our company in a very similar way to the old name of this developer; I’ll call us Oak Interactive (i.e. the difference is a two-letter suffix on the first word which does not significantly alter the meaning of the word). As I mentioned, we have not registered this name in any official way. In 2008, that developer was then renamed back to Oaken Interactive. In 2010, this developer was merged with another developer: DISplay and this group renamed to: DISplay Oaken, which is the current name that they are using. Using ipo.gov.uk I found no trademark seems to be registered for either Oaken or Oaken Interactive, but DISplay is registered. Is this something we should be worried about?
2. A different developer is also making a computer game with the exact same name as ours. The name is one word long, and also the name of a Greek god. Our game styles are entirely different genres, however I think it’s fair to say that we are somewhat uncomfortable with this. We have been using this name for more than 6 years of development. I have not yet been able to find more information about how long this developer has been working on this project as their site is currently down for maintenance, although I very much doubt it is longer than 6 years.

I should probably mention that we have had a website and public forum for the game online since 2006 which backs up all the statements above.

Many thanks,
Rob

Hi Rob,
Although you included 'Copyright' in the title of the thread, it is worth making it clear from the outset there is no copyright involved in the issues you have raised. Names are too short to be seen as creative literary works. You have pretty much shown you understand that this is largely a matter of trade marks.

You need to look at this from two perspectives. Firstly that you don't want to be sued by any other company over an allegation of infringing their intellectual property, and secondly you need to consider the potential damage to your product if the public are confused between it and that of a competitor.

Company name.
If you register your existing company name at Companies House they will check to make sure it isn't the same as another registered company and advise you accordingly. But of course you don't have to trade under that registered name, you can adopt an overall brand name under which you trade. A good example of this is Dr Martens footwear which actually manufactured by a company called R Griggs Group Ltd. In that way you can operate without confusing the buying public who will be largely unaware of the company name. There are some rules about this, mainly to be found in the Business Names Act 1985 and subsequent regulations which Companies House can advise you on. Basically company names are registered on a first come first served basis, although a very long established business which is not not registered may be able to challenge your registration if the company names are virtually identical. You can register your company through incorporation - normally as a limited liability company, or as a limited liability partnership. This is not really the place to go into the advantages/disadvantages of each. Also if the domain name you already own is based on your company name, having a registered company strengthens your case if a dispute over domain names should arise.

Trade Marks.
As the name of your game is going to be a major part of the branding process, you need to think hard about the implications of staying with a name which could easily be confused with another manufacturer's game. Do you want some of your potential customers to mistakenly buy the wrong product after you invest lots of money in promoting it? Do you want to run the risk of the other game getting a bad reputation and so affecting your game's sales? Even if you register your name first as a trade mark, that doesn't stop the other company from bringing out their game with the same or similar name (with the consequences I have outlined) and it would then be up to you to take some sort of legal action to stop them. This could be expensive, and the sort of distraction a young start-up can do without. Alternatively if the other company attempt to register the name first, you have fairly weak grounds for objecting because you have not actually been making your product available to the public during the past six years, so you have no prior reputation in the market place which is the normal grounds for an objection. You don't mention if the other game is also being developed by a large international company, but you need to consider their ability to fund litigation (if it comes to it) compared to yours. Sometimes these matters are resolved more by who has the deepest pockets, rather than who has the moral high ground!

And finally as you have not so far registered either the company or the trade mark, I suspect you may not have given much thought to securing the intellectual property you already own, namely the code in your game. You should draw up an agreement which spells out whether the copyright in the code, and any graphics which have gone into it, is owned jointly by the coders or is owned as an asset of the company. The law says that where an employee produces something in the course of his employment, the employer owns the copyright, but this may be difficult to resolve if your company is actually a sort of co-operative.
It will be essential to have clarity over this in the event that one or more members want to leave the team at some stage. Sorting these things out after the event is much more difficult than agreeing the details amicably in advance. Depending on how many people are involved and who has put backing money into the business etc, you may need to consult a lawyer in order to have an agreement which will cover all the relevant areas.
Good luck with your project

Many thanks Andy, you've been a great help.