 Welcome to the wide world of eSports, a show devoted to all things eSports. I'm your host, Katharine Norr. Today we're talking about eSports intellectual property law. With me is my fellow attorney, Kimberly Kulp. Hi Kimberly. Hi Katharine, it's good to be here. It's great to have you here. And Kimberly and I met when we did, when we taught a webinar, actually I flew to Wisconsin and she had to do hers remotely. I think my inspection was about four and a half hour. Yeah, COVID ruined my trip, but you just squeaked in under the wire. Absolutely, just barely. That is a very memorable experience. Well, Kimberly, I understand you practice eSports law as well, and you focus in with intellectual property? That's right. I'm an intellectual property and advertising lawyer, which essentially means I work with players, teams, a lot of studios in particular on their intellectual property issues. So that's patents, trademarks, copyrights, trade secrets, and advertising issues, which is really what you tell the world about your product or your service. Okay. Why don't you tell us what a copyright is? Yeah, so a copyright is essentially an idea that's been reduced to a tangible medium that has originality. Think of Mickey Mouse. Mickey Mouse on a movie is copyrightable. The idea of a mouse that is animated is not itself copyrightable because you have to put it down in a medium, Mickey Mouse movies. And then from there, it turns into Mickey Mouse on toys and the other things. But all of that reduced to the medium of the movie or the toy becomes a copyrightable expression. Okay. And a trademark, what is that? Yeah, so trademarks are something that most folks are really familiar with, but it's your brand. It's the thing that people see where they say, aha, that's a company. So we were talking before we went live about Coca-Cola, very famous trademark. You think about the Coca-Cola script, that is a trademark. You can also have a related idea to a trademark is trade dress. And trade dress is the look and the feel that also tells you that that's a particular product. So again, think about Coca-Cola, the red and the white and the particular design around that. So trademarks and trade dress are concepts that you see a lot of in video games. In esports, trademarks are really important because you're really often thinking about team names, player tag names, things of that nature are trademarkable and become the thing that a player is known by or a team is known by. Okay, and on your screen you see the ThinkTorpe Tech Hawaii trademark, right? That's right. Okay, so let's get right into some questions. Is there any one intellectual property issue that esports teams need to understand above all others? So the teams need to understand who owns the copyright to the game. Right, so the studios that develop the video game own the copyright to the game. Who has rights to use the video game depends on the license that's in the game, which is these days, most often terms of service. When you think about digital games, you're downloading your game on a PlayStation, you're downloading the game on your phone, you're downloading your game through Steam, something like that. But the terms of service around the game, what can you do with it? Teams need to understand who owns the copyright because it defines what they can do with the game or what they can't do with the game. Because at the end of the day, the publishers do control those rights and what rights they do or do not give out. They do so by contract. How do they find out about who owns the copyright? Do they need to read something? Yeah, I mean, so the assumption is, and the assumption should be the publisher owns the copyright. So you can certainly, if you wanted to get into the weeds to find out who owns the copyright, you can do a search. You can certainly read the terms, the terms will tell you who owns the copyright. But from the team's perspective, the assumption should be the publisher owns the copyright. There may be contractual agreements behind the scenes that you don't know about as to who owns what rights around the copyright, but from the player team perspective, assume the publisher owns the copyright. Okay, so if someone wants to post a tournament, do they need to get the publisher's approval in advance? You know, so from a lawyer's perspective, yes, you do. Now, there are permissions that are given oftentimes in the terms as to what you can and cannot do in terms of tournaments. A high school that was doing a nonprofit fundraiser, for example, is probably not in risky territory, even if the terms don't say that you have permission to run such an event. But on the flip side, if an event promoter was going to have a large tournament at the stadium, I live in the Bay Area. So, you know, think Chase Stadium in San Francisco where the Warriors play. And Chase Stadium and the promoters there were going to do this enormous tournament playing a video game that is owned by copyright without permission of the game publisher and sell tickets and stream it and everything like that. There will be problems. Okay, one of the things I think about when I think about copyrights is enforcement of copyrights. And one of the most famous companies or entities that enforces their copyrights is the Olympic Games. And they're very strict enforcement. When you say that perhaps a charity event, they don't have to worry so much about it. Is that because there would be a less likelihood of enforcement in that situation? Or why would you say that? So that's a great question. And March Madness on the trademark side is another one that is very, very heavy in terms of the enforcement work. So informal March Madness events, particularly in March, often see enforcement action. You know, the reason why I would say that the idea of doing a nonprofit again, by example, was a high school fundraiser is less risky is to some extent the games benefit, sometimes benefit greatly from the exposure and the goodwill that's created by teams of fans getting together, being excited, getting their friends in, taking Instagram posts and Snapchat and putting it all out on social media about how wonderful the game is and how much fun they had and they raised money for charity. That's a lot of fabulous press for a game studio. And they might be willing to say, you know what, that fits within our terms close enough. We're okay with that. The incentive to shut something down from a business perspective creeps up as the infringement on the rights that the game studio might have and might want to exercise. So if the studio wants to do a tournament at Chase Stadium themselves and Chase is doing their own, that's very different from then a studio that says we weren't ever going to do a base sale eSports game anyways, so we're okay with it. Sure. Okay. And when I say enforcement, I am talking about litigation. Is that what you infer from my use of that word. Yeah. Yeah. And just for everyone who's not a litigator Catherine I know you're up bringing us as a litigator byness to enforcement takes many flavors that ends with litigation which is a lawsuit. It often starts with a letter or an email that is what we call a cease and desist letter, and it says stop. You have done the following things we have these rights and we are asking you, or we are demanding that you stop and then it escalates from there. And so if you were to get a cease and desist order, and you felt that the company would benefit from that use of their copyright or their trademark. Then would you explain that in an effort to try to get them to back down. Yeah, so it depends on who my client is if my client is the promoter let's say the high school, and they received a cease and desist letter from a publisher. The strategy would be to try and find a way to work it out. And maybe there would be a subsequent event that's approved in the profits from that go back to the publisher but there'd be an effort to find a work around if my client was the publisher. And you would be talking about things like risk to the brand. What does this look like. If you go after a high school, for instance. And how does that impact on what your what else you're doing in the eSports space if you're being litigious right here let's just being threatening a lawsuit. And so the dynamics are different depending upon who your client is, and you're both talking about the law and the business issues associated with the legal issues. And I would think that a company should have a vision of what they want a company culture so that they would look at those kind of things so that where it was a high school or something that is consistent with their culture their vision for their brand that perhaps they wouldn't do that is that correct. And this is by no means a rubber stamp to the high school administrators and teams that are listening thinking about we're going to do this you know it might be worthwhile to think about which games and what do the terms of service for those games say about do I have more rights with this game than I do with that game because they've been more permissive and drafting the term so I would think about it. I would just be worried about the issue if it was our hypothetical of the fundraiser versus our hypothetical of the for profit event at a large public stadium. Okay, and I'm sure that we'll have streamers, you know, those who scream esports, and, and others that will be watching. Who has the rights to stream league games online. So we're back to copyright right the publisher owns the copy right the the terms oftentimes permit some amount of streaming without monetary benefit associated with it so if a streamer isn't say streaming on a channel that is you've got to pay 10 bucks to sign in and see their stream personally and they're sort of generating that revenue putting aside the ad revenue that one might get on a platform for the streaming service. It's generally as long as you're not monetizing it in that way the terms will permit permit the streamer to do that an interesting. IP issue and I'm not aware of any resolution in the law on this issue you may be Catherine is whether or not a particular style of play is itself a copyright such that the streamer can claim that the way they play a video game. And the way they editorialize and all of that is itself a performance that for listeners gives them a defense. The defense being I've created a new, a new copy right by streaming the game in a particular way. And I'm not aware of any litigation that's answered that question, but I am aware that from the streamer's perspective that's a theory that's been tossed out there as a defense for streamers if they butt up against a publisher that says you're not allowed to stream sure and eSports popularity is fairly new in our society so we don't have a lot of case law or even statutory law that addresses a lot of these issues so a lot of it is coming up with theories and arguments that may or may not work well. So what about players do they have a right to stream themselves playing a game. So, yeah, it comes it comes back to the terms that comes back to the question about whether or not their performance is essentially a derivative copyright under us law or, you know, some similar laws of countries. The answer right now is for all intensive purposes, publishers are allowing it, they're allowing it in their terms and they're, they're generally allowing it and that does seem to be the better answer from a copyright perspective. Again, so long as the streamers not doing it in a way that it becomes an infringing act beyond just I'm on YouTube. I'm commenting about how I play. I get some ad revenue in the background but really I'm just running a YouTube channel or pay for service situation might be different and might be viewed differently by a publisher. Sure. So now looking at things like skins are competitors allowed to bring their own elements such as skins into tournament play. It depends on the tournament. And to some extent it overlaps as well with the relationship between the skin and the promoters at a tournament. So there may be agreements between those who are promoting the tournament and the tournament organizers that say that players can't use specific skins. So let's take our Coca Cola example. Let's assume Coca Cola is a large promoter of a tournament. Their agreement with the tournament organizer might say no other soda, you know, company and we're really talking Pepsi, right, can, you know, have any of their material displayed. Well, let's say someone has a skin, you know, is a, you know, giant Pepsi symbol that might not be permitted. And so those issues come in, you know, you need the tournament organizer would have to think about its agreements with its promoters. And then some tournaments may take a hard line position that you can't bring anything into the game. And the reason being obviously cheat spots, anything that can give an unfair advantage. Some tournaments say you must use our keyboard, our mouse, our everything. There's actually no question about fairness. So depending upon how those rules are set up, it might prohibit someone from bringing in a skin because it's just a hard line rule we control the entire environment. You show up in your jersey and you sit down and play versus here, here, here's, here's lines you can cross and here's lines you can't cross. And that brings to mind where in television, various television shows or even races, where there are sponsors and that would include the Olympics play the sponsors. You know, there are many sponsors and you can't like let's just say that you are sponsored by Nike, and like say your tiger woods and you're sponsored by Nike and you wear, you're going to wear your Nike hat your Nike shirt but if you were an Adidas hat or something, you'd either have to replace it with a Nike hat or you'd have to black out the, the logo. So I would expect that with these sports televised events that, you know, there are situations where something you wear some gear, some logo has to be blacked out because it is a competitor of a sponsor or it wouldn't properly be there. That's right. And if you're any tournament organizers that are listening, you know, certainly that's something you should expect to see or, you know, negotiating an agreement with someone who's going to sponsor the tournament someone might want to say we own the hardware space. So everything that is hardware related, we will supply it and you will only advertise us there can't be anyone else who's doing monitors keyboards, mice, maybe cable, the whole thing we own that space, even if perhaps their main product is keyboards. It's not all of those other things they they might still insist they own the hardware space and if you want their dollars. That's that's what they're buying the right to and it's a negotiation but certainly that is an ask to be expected. And in all of these, it's negotiation right. Okay, that's right. So, is there one intellectual property issue that eSports players need to understand above all others. Yeah, trademarks. You know, so we go back to our example of Coca Cola. Coca Cola is a trademark, but let's sort of bring it into sports face clan. They have done a really good job of trademarking the brand for the team and enforcing their trademark they have litigated the trademark phase in California they've had some litigation over apparel where there's a company in San Francisco that had phase on their clothing and face clan had their own clothing and they they you know, went to went to litigation over the issue. Players just like teams can have trademarks and the trademark you're thinking of is your player attack. You know, so Ninja player tags are something that players should be thinking about getting a trademark around because the persona of the player becomes something that has value long beyond being part of an eSport team being in a particular tournament. There are a number of players already even as nice and as nice for eSports are that have decided they'll make more money if they stream and stop competing in tournaments. And what they're taking with them is this persona that they've created this fan base that they've created and part of the intellectual property that the player creates for themselves is around their player tag who they are identified to in in the community. Sure, and and that player tag might have been developed when they're quite young to right. Yeah, you know, and that might be something that that they thought little of in protecting until they became professional player. That's right. And there are things in intellectual property law where you have to move quickly patents in order to to secure the right to the intellectual property trademarks is not one of those. In so far as you have a common law trademark so you can develop the right to the trademark through without a registration. So if you're that that young player who's now matured a bit, and it matters about a trademark, you know, don't fear that it's too late. It's not too late. The time is to talk to an attorney who can help you with your trademarks and see whether or not the player tag you chose long ago when you weren't thinking about it is one that no one else has taken. Assuming it you know is one that hasn't been taken whether or not you can secure a trademark to it now a registered trademark. Have you seen much litigation or, you know, conflict involving players that have the same tag. I haven't. You can certainly think of. We now have famous players right who have famous player tags. So you could see, you know, one of those players bringing in enforcement action if someone, you know, coming up through the ranks happen to have the same player tag. I haven't seen any examples of individuals doing that, and it might be because the essence of the player tag itself is to be unique. And so there's some, you know, harmony and so far as people are trying to use it as a name more than they're trying to confuse others that they're this other player, because that's the, that's the essence there, you know, with companies is someone who wants you to think you're buying a Coca Cola, even though you're not really buying a Coca Cola. That's not the incentive here the incentive for the players is I am this person, and you want everybody to know it. Right, there has to be an intent right, or something similar. So what is the right of publicity. So the right of publicity is a common law right, and it's different in every state. And, you know, there's a lot of litigation around right of publicity in California. And there's a lot in New York, and the laws in California in New York, just by way of example are different. I've seen cases come out of New York that I think would have gone differently had they been litigated in California. So it's important one to ask this question of your lawyer in the state you're in for starters, and then start thinking beyond, beyond the state. Essentially, it comes from the right of privacy that we have in our, that comes to us from our individual states, and the idea being that the public can't interfere that another person can't interfere with our right of publicity are right, essentially to make money off of ourselves and our identity. And so your image, your voice, your likeness. So in the video game space we've seen litigation over avatars that look very similar to pictures that have been taken of real people. The question being whether that avatar infringes the right of publicity of that real person. But essentially it's your right to monetize. Now that right, as I said, differs a little bit, depending upon which state you you're looking at when you come to the point of saying you have infringed my right of publicity. Okay, now let's move to sponsors, what should sponsors keep in mind in relation to their advertising activities at these sports events. Sponsors should be thinking about what they're getting and what they're giving. So we have that example of a sponsor who wants to own the particular space at the tournament. So that's one consideration. Another consideration is what are you giving? Are you giving sort of in kind services or in kind products? Are you giving cash? And what's the exchange? What are you trying to get out of it? When are you going to be promoted? What's the reach of the tournament in particular? Is it reaching your right audience? Because the sponsor is really coming back to, am I getting a good business deal? For the sponsor it's advertising. I am promoting my product, usually it's a product but it could be a service. I am promoting my product to potential buyers of my product. So the question is, am I getting good value for my money? Even if your money is supplying all of the keyboards or supplying all of the mice or supplying all of the jerseys or it could just be money. Sure, sure. And what issues should brands think about when working with players on social media advertising? Yeah, so players are probably most familiar with the idea of the disclosures that are required by the Federal Trade Commission. The disclosures are, and we've seen them in the social media advertising space a lot, hashtag ad. It's not fun, it's not sexy, but brands need to be thinking, am I contracting with a player who's going to follow the rules and disclose that we have a relationship that is of a material kind? And so a material relationship can be, you've gotten free access to a game two weeks before everybody else. If that's the case, the player that's streaming the game two weeks early should be disclosing that that relationship exists. Certainly if you've paid the player, the player must disclose the relationship. So brands should be thinking about, am I getting into a relationship with somebody who's going to play by the rules? Because the FTC can go after the brand just as much as the player for violating those rules. Sure. Okay. And one last question before we wrap it up. Are there any IP issues that a player should consider if they're planning to retire from tournament play? And for example, if they earn their income primarily through social media and streaming? So they should be thinking about their trademarks. They should be thinking about their right of publicity. They should be thinking about whether they've given it any of those rights away, perhaps in the contracts that they have with their team. And they should understand what rights they have going forward. They should have an attorney, frankly, review their contract so they know what they can and cannot do in the future. All right. Well, it's been wonderful having you here today, Kimberly. It's been fun. All right. And next week we will have Sergeant Jones with the U.S. Army Esports team. And I look forward to seeing you then. See you next time. Aloha.