How to transfer the rights to a work from an author to a development company?
Large development companies in the gaming segment are wondering how to competently interact with individual developers and how to formalize the alienation of all exclusive rights in their favor. About what kind of contractual structures mediate the transfer of exclusive rights to a work created for a video game, which will be discussed in this article.
Сontents
- What is a video game?
- What is the intellectual property of creating a video game?
- Contractual instruments mediating the disposal of rights to a video game and its elements
What is a video game?
A video game by its nature is a multi-component multimedia product, which follows from paragraph 1 of Art. 1240 of the Civil Code of the Russian Federation. This provision calls a multimedia product a complex object consisting of several elements protected by intellectual property rights. However, the Russian courts recognized that a multimedia product should be understood as a database or program for electronic computers (ECM) (Resolution of the Ninth Arbitration Court of Appeal dated February 8, 2010 No. 09AP-28436/2009 in case No. A40-92328 / 09- 87-526; Resolution of the Ninth Arbitration Court of Appeal dated August 3, 2009 No. 09AP-12653/2009-ГК in case No. А40-93933 / 08-51821). According to Art. 1261 of the Civil Code of the Russian Federation, a computer is a complex of commands and data with the help of which a computer operates in order to achieve a certain result.
We believe that the essence of a video game is correctly reflected in article 1240 of the Civil Code of the Russian Federation. This is a multimedia product, that is, it is clothed in digital view of an object consisting of several RIA - computer programs, works that have a graphic form, soundtrack, etc. This provision leads us to the fact that each of the elements of a video game must be competently individualized both in the contract and in the act of transfer and acceptance.
Due to the many contradictions between the Civil Code of the Russian Federation and judicial practice regarding the concept of "video game", one should treat this RIA with due caution in order to avoid all possible risks of the developer's claims against the acquirer of the exclusive right to a video game or a part of it.
What is the intellectual property of creating a video game?
To give a competent assessment of the legal nuances of intellectual property in the process of developing a video game, it is necessary to determine which RIAs exist in the field of video game development.
Intellectual property objects for a video game can be divided into two groups:
- The results of intellectual activity required to create a video game.
This group includes the interface, the "open world" of a video game (that is, the universe in which all actions and events take place), sound sequence, video sequence, character voice acting, video game colors, all graphics, including created 3D models of characters, architecture, etc., the program code and, of course, the plot of the game. It should be noted that according to paragraph 4 of Art. 1259 of the Civil Code of the Russian Federation, the author's rights to a work arise from the moment this work is created; their protection does not require registration of the work or compliance with any other formal requirements. - Intellectual property created for the optional protection of the results of intellectual activity.
This group includes industrial designs, trademarks and other means of individualization of the protected object. In relation to these objects of intellectual property, there is a rule according to which their protection is established from the moment of their registration (for example, Article 1484 of the Civil Code of the Russian Federation establishes the protection of a trademark from the moment of its registration).
Contractual instruments mediating the disposal of rights to a video game and its elements
In total, there are 4 contractual structures that mediate the transfer of exclusive rights and part of the exclusive rights to works:
- Service assignment
- Agreement on the alienation of exclusive rights
- Copyright contract
- License agreement
Large development companies usually have enough specialists on their staff who create individual elements of a video game and then combine them into a single object. In this case, the relationship between the parties is formalized in the form of an employment contract, which provides for the employee's obligation to create service works. The package of local legal documentation of the developer must contain the Regulation on official works in order to transfer to the specialist the creation of all or part of the video game (development of a 3D model, creation of video sequences, etc.). Then you should draw up and issue a service assignment (SA), which is the same technical assignment (TOR), which is given to the author as part of the author's order. The employee starts work and, as he goes through the stages of creating a work established by the SA, provides a report on the completion of part of the service assignment (or, if the service assignment provides for its delivery after its complete completion, provides a single report on the performance of the service assignment). As a result, the developer and his employer sign the RIA Acceptance and Transfer Act, developed as part of the employee's performance of his labor functions, and an agreement on the payment of remuneration.
The agreement on the alienation of the exclusive right provides for the transfer by the author or other rightholder of all exclusive rights to the work to the customer. Such an agreement must be concluded in writing, otherwise there may be a risk of invalidation of the agreement. The agreement must provide for a provision containing a list of works and rights to them to be transferred in full. An agreement on the alienation of an exclusive right, as a rule, is compensated, therefore, attention should be paid to a competent wording about the right to alienate which rights to what extent the remuneration is established.
The author's order agreement has its own characteristics. The party creating the work - the author - undertakes to perform the work on the instructions of the customer - to create the object of intellectual property specified in the contract. In practice, the contract always includes a clause on the alienation of the rights to the author's works in favor of the customer. After completing the order for a development company planning to further refine the video game and sell it through special marketplaces, it is also recommended to draw up an act of acceptance and transfer of the object of the author's order. This will reduce to zero the risk of an individual developer making a claim against the company for using his RIA.
According to the provisions of civil law on a licensing agreement, the parties to the agreement are the licensor - the rightholder of the RIA and the licensee - the person in favor of whom the temporary and partial or complete alienation of the rights to use the RIA is carried out. A feature of this agreement is that the licensee has the right to use the work only to the extent stipulated by the agreement. The license agreement must be very clear about the subject - that is, those specific works that are subject to transfer, and the limits of their use. For example, an individual developer has created a video game, selected a color scheme, created characters, and selected voice acting. An investor who is ready to finalize the video game and then put it up for sale has become interested in this work. These relations can be formalized by a license agreement, the subject of which will be all those elements that are listed above and the scope of use of these elements, in this situation - revision and distribution in order to make a profit.
Within the framework of the article, the legal subtleties of the definition of the concept of "video game" were considered and the contractual structures through which the transfer of exclusive rights to a video game and its individual elements can be formalized. Do not forget about additional documents that are drawn up in addition to the main agreement and provide certain guarantees to the developer company. The lawyers of A4 Law Firm are ready to provide clients engaged in the development and commercialization of video games with all the necessary documentation and minimize the risks of a dispute regarding the use of RIA.
QUESTIONS?