Esports and IP Rights Series 2: What Protections Are Out There?

May 5, 2023

As we’ve previously discussed, rapidly evolving industries like gaming and esports are exciting spaces to foster innovation and creativity. However, it’s important that individuals and companies take the necessary steps and precautions in order to protect their overall brand. Now that you’ve made the first move and decided you need to protect your intellectual property (IP) rights, it can be tough to know what you can protect and what methods you use. IP refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

Trademarks, Copyrights and Trade Secrets

Of particular relevance to the esports and online world are trademarks, copyrights, and trade secrets. A trademark is a word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services. Trademarks date back to ancient times when artisans used to put their signature or “mark” on their products, and this original method can now be used in the digital world. Registering a trademark protects it from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.

Whereas a copyright is artistic, literary, or intellectually created works, such as text, music, software code, and pictures that are original and exist in mediums such as paper, canvas, film, or digital format. The copyright describes the rights creators have over these works. The copyright protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.

Trade secrets, on the other hand, are IP rights on confidential information which may be sold or licensed. The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to honest commercial practices by others is regarded as an unfair practice and a violation of the trade secret protection. Protecting trade secrets helps to prevent employees and/or partners of your company from disclosing sensitive information to competitors or using it for personal gain. Esports organizations constantly need to protect trade secrets, such as sponsorship discussions, licensing deals, expansion strategies, and roster changes.

Qualifying as a Trade Secret

Out of this list, companies may consider trade secrets the most important to guard, but this category rests almost entirely with the company itself. The United States Patent and Trademark Office (USPTO) grants patents and registers trademarks, and the U.S. Copyright Office at the Library of Congress registers copyrights. Unlike these forms of IP, trade secrets are not registered with any government or regulatory body. The trade secret right is automatic, as long as the criteria for protection have been fulfilled.

Three steps must be met for information to qualify as a trade secret: secrecy (obviously), commercial value, and reasonable measures to protect. Secrecy means the information you’re trying to protect must be sufficiently secret and not generally known to the public or easy to collect. Next, the information must have a commercial value that provides its owner with a competitive advantage or economic benefit because it is secret. Finally, the owner of that information must take reasonable measures to protect it and maintain that secrecy.

The Importance of Effective Contracting & Proper Team

Here is where effective contracting and keeping the proper team around you is most important. The owners of trade secrets must understand that trade secrets are only protected from improper acquisition, not from being acquired through a competitor’s own development or reverse engineering. A trade secret is not a monopoly on the information like a patent.

Thus, esports and gaming organizations face the unique dilemma of deriving income from constantly being visible to, and interacting with, the public, but needed to set up proper channels to protect their trade secrets. This is most effectively accomplished through proper contracting and secrecy measures.

For further information regarding protecting your Esports intellectual property, contact KJK attorneys Paige Rabatin (PMR@kjk.com; 216.736.7270) or Scott Norcross (SAN@kjk.com; 216.736.7264).