Over the last few years, it can be seen that even the pandemic, the online game industry is one of the sectors that has been growing in leaps and bounds. A successful online game does not only mean that it attracts a large number of users purchasing or paying for the game, but it also means that the game’s owner will have numerous ways to monetize the game in all aspects, such as selling toys, accessories, garment or clothing, and many other items using the character from the game.
Additionally, a game company owning a successful game can also be profitable from licensing the rights to produce game-inspired TV series, advertising campaigns or other online content in social media networks. Thus, protecting author rights, or intellectual property in general, of an online game, is key and crucial for the game’s owner to benefit from its investment put into the development of a game. Obtaining author right protection becomes even more important because of the borderless nature of online game distribution and development.
(i) Which elements of the game can be protected?
Simply speaking, author’s right regime protects the original expression of the creative works. In Viet Nam, like most countries, creative work can be automatically protected by author’s right regime once the work has been created in a certain form and met the standard of originality. With respect to the gaming industry, elements that can be protected copyrighted by the author rights regime may include:
- Game characters;
- Gameplay or stories of the game;
- Sounds and Music;
- Artwork and Visual Design;
- Code or computer program.
Each above element shall require different specific standards to be protected under author right regime. When the said elements meet the condition to be author right protected, the right holder has the exclusive right to, amongst other things, prevent others from reproducing the game, derivative works of the game, distributing copies of the game, displaying the copyrighted protected elements of the game publicly, …
(ii) Who is the real owner of the author right to the game?
Concerning the monetization of the online games, the most important thing is that who is the legal owner of the author rights of the game, whether this is the original creator of the game or the game company investing money in the game production (in the simple scenario). In the world of intellectual property laws, there is a quite simple principle so-called “work for hire” that assumes the game company (generally, the organizations or employers) will hold the author rights to the game if original creator (i.e. coder, designer, …) is the employee of the game company or the game production is funded by the game company. This principle is a famous principle from the US copyright law.
However, applying the above principle to practical cases is not easy that much under the Vietnamese intellectual property laws. According to the laws of Vietnam, there is no exact principle of “work for hire” as seen under some common law jurisdictions like US. Although intellectual property laws of Vietnam still have the rule that has the similar approach, this does not apply to the moral rights of the authors or creators under Article 19 of the Vietnam Law on intellectual property.
In practice, it is common that many coders, designers are working for different game studios as independent contractors or freelancers without a detailed contract. In these cases, the party claiming ownership of the game must incur the burden of proof. This process has never been an easy path, in particular to digital products as online games.
(iii) Author right protection by voluntary registration
Like many countries, under Vietnam intellectual property laws, the author rights protection applies as soon as the work is fixed under a certain form without the need for registration. However, in consideration of the potential disputes on ownership to the game and burden of proof of claimant that is usually complicated and subjective, the common advice is that the owner of the game should voluntarily register the author’s right protection for its right to the game. The registration will provide the presumption that the party whose name is on the certificate is the holder of author rights of the game. This thus makes it easier to prove the ownership of the author’s rights and handle the intellectual property rights infringement.
Furthermore, since Vietnam is a signatory member of the Berne Convention on global protection of author rights of works, when the game (or any of its components) is successfully registered in Vietnam, such registered game will be also protected in 179 members countries of Berne Convention.
(iv) Quick steps to strengthen the protection of author right of online games
- Ensure that you evidence the process of building the game to prove the author right ownership if necessary;
- Identify what intellectual property rights you have and consider to register for protecting (compulsory and voluntary);
- Enter into contracts clearly stating that who has the ownership of author rights with all parties related to the game development process;
- Make sure any trade secrets are protected with NDAs between all parties;
- Monitor the market to early discover the potential intellectual property infringements.
Disclaimer: This article is for general information only and is not a substitute for legal advice. Apolat Legal is a Vietnamese law firm with experience and capacity to advise on matters related to Intellectual Property Rights. Please click here to learn more about our services and contact our lawyers in Vietnam for advice via email info@apolatlegal.com.
