WIPOD – Make IP Your Business: Transcript of Episode 4

Videogame Development: A Quest for IP 
Level 3 – IP in the launch phase

Yan Perng: Because we're looking for great talent and great ideas, IP, you know, sits front and center both what we're looking at and what we hope, you know, help the developer.

Allison Mages: Today we Make IP Your Business. It’s a podcast that explores how intellectual property positions a company to succeed or stumble. I’m Allison Mages, Head of the IP Commercialization Section at the World Intellectual Property Organization (WIPO).

We call this season “Videogame Development: A Quest for IP”. Join our adventure through five levels of game development, where you'll hear from industry experts about how these rights will help your business “level up” or reach "game over". 

Micaela Mantegna: Hi. I'm Micaela Mantegna, a videogame researcher at the Berkman Klein Center at Harvard, and I will be this season co-host.

We are on Level 3: IP in the launch phase. Today we dig up into the process of launching again, including managing IP, sometimes on a global scale.We also take a closer look at building video game brands that get the attention of the market. In short, we will hear why IP matters from video game giant Tencent.

Our guest today is Yan Perng. Yan is Senior Legal Counsel at Tencent. She looks after legal issues for the global games business where international games are developed and publishes outside of Mainland China. Welcome Yan, it's a pleasure to have you.

Yan Perng: Great to be here.

Micaela Mantegna: So, just to break the ice, how did you start in the video game industry?

Yan Perng Yeah, I was, you know, I was really lucky. My start in the video games industry was e-sports. This is 2014, I just graduated law school and League of Legends was exploding in popularity. So for e-sports, it was the perfect culmination of my interest and background.

I'll probably go into a little bit more later as well. But you know, technology: I have a biotech background; entertainment: I had work on an off screen and TV and radio. It's a truly global business. My life, I had weaved back and forth between US and Taiwan.

But not only that, was it kind of, you know, I fell into this area that touched upon all of my interests but it was also this new frontiers, cutting edge. It was, you know, being at the starting line of a new industry, a new legal field. I don't know how many, you know, law school students, newly grads, get that opportunity. But I really thrived in kind of this wild wild west, I guess, landscape and I think, you know, e-sports video games continues to be so just because of so much innovation and creativity and I think, you know, like you guys working kind of in IP, being able to devote my legal expertise into something that's ultimately about creativity and innovation, you know, I think that's just really special.

Allison Mages: That's awesome, Yan. And I think, you know, it's so cool to be on that cutting edge and being able to figure things out from the ground up as we go. So one question I always ask, you know, when it comes to intellectual property. Was it on purpose or by accident that you ended up doing IP stuff?

Yan Perng: Another happy accident. Kind of the story of my life. I mean, I had always really loved innovation, even before I knew there was this whole system called IP. I don't know if you guys remember, I think this is 2000 or maybe the nineties, there was a picture with a mouse with a human ear growing on its back. That completely blew my mind, you know, as a kid. I developed this, you know, deep conviction that science could really change the world, and it caused me to pursue a major in biotech.

However, you know, quickly, I think you know, before I graduated I kind of knew research wasn't where I wanted to go; I thought maybe, you know, I'll go to business school, I'll be on the business side of a tech company.

But I had a good friend from, you know, by my biotech major. She went to law school, she loved it, she would not stop talking to me about it, convincing me that I would love it to you, and I'm sure I'm exaggerating it in my head, but, you know, at some point I was like “Okay, you know, here's the ultimatum, we'll make a deal:  I will take two, you know, two summer courses at your law school. If I like it, great, you know, those credits turn into, flow into the degree. If I don't like it, you know, you promise to shut up, and we'll never talk about this again”. Lo and behold, you know, I took the summer classes; one of them was IP Law and, you know, it was love at first sight.

I couldn't believe there was this whole, you know, legal system devoted to defining, protecting, encouraging, you know, all kinds of innovation. At that time, you know, patent law, I think, was particularly interesting and captivating for me. And again, you know it, it was, you know innovation is important, but it's not until IP law that it kind of explicitly tells you innovation is just as valuable as any other tangible asset.

Micaela Mantegna: And going a bit more about your work. Tencent is a force of nature in the video game industry. For those people who may not know, how is Tencent related to video games? What would you say makes Tencent special?  

Yan Perng: Yeah, yeah, I think, you know, what's incredible is, by revenue Tencent is, you know, the world's number one video game company. But when you start working, you know, at the company, or you partner with the company, you can really tell it's not by accident.

If I had to summarize it under one reason, I would say that, you know, Tencent has been able to make and invest in great games by centering around this corporate philosophy of bringing value to the users and technology for good. I think that's driven the company, since it's small, and you know even so now, when it's a giant.

What makes Tencent so special today, I think, is in part of this kind of breadth and depth. You know, Tencent is so much more than a gaming company. You know, gaming is kind of one of its seven businesses so it's really a world kind of leading technology company, creating valuable IP and innovative products, you know, and markets around the globe. We're not focused in, you know, only established markets like EU, Canada, US; but also in markets like South America, West Africa, sorry Africa and West Asia.

So because Tencent, I think, is not limited by geography or these specific products or services, we can really look at bringing value to users and tech for good from a more diverse and holistic approach. And that's why we want to be, you know, a good partner for the industry as a whole, and I think that's kind of the part that really makes, you know, Tencent special.

Maybe again, I think we'll probably go through some of these later. But just to really briefly highlight three maybe manifestations of kind of this bringing value to the users: I think, you know, the first is diversity: great games, you know, should bring meaningful connections to players. To do this we really need to reflect more of the world, the people around us. Tencent does that by investing in game companies around the world, you know Canada, Sweden, Czech Republic, Japan, New Zealand, Brazil, Uruguay.

We do this because we want to tell the stories that might be overlooked and create online spaces that foster that belonging and a sense of community. A couple of stats that I had looked up, you know, in preparation for this this interview: In the 100 top games released over the fast, sorry, past five years, they had a preset or authored characters. So almost 80% of the main protagonists in games were male, only 21% were female, even though, you know, 45% of gamers are women. 54% of main characters are white, even though, you know, 29% of gamers are people of color. And then, if we look at the segment of main characters and games who are female and non-white, that's, you know, down to 8.3%.

So I think creating kind of diverse characters and video games is something that, you know, both our homegrown studios like TiMi Montreal as well as our investee studios, are, I think, are, you know, actively focusing on. 

Micaela Mantegna: Absolutely. And I think that creativity and diversity in the stories that you are telling are the saving grace for the industry, because you don't want to play the same stories over and over again.

Allison Mages: It's super cool. I mean, I think it's nice that you have that like, within one system, you have some sort of flexibility to build out. Let's talk a little bit about IP. So when you're launching a game, what issues are you thinking about when it comes to IP?

Yan Perng: So all, I guess all of the above. So I think, you know, really at the launch stage, and maybe we can also go a little bit before launch. So I think, you know, harping on the vertical slice stage and why kind of that sticks out or is important, it is because I think that's kind of when legal formally gets involved.

You know, there's enough of a functional game, you know. You can see the quality. You can see the features and functions kind of working correctly. You know, if the team hasn't kind of already begun to talk to us beforehand, I think that's when we kind of come in, and we say “Hey, you know, have you thought about, you know, what your game title is? You know, these things need to be cleared. These things, you know, need to be protected. So we need some bandwidth”.

So we kind of walk them through. We've done a really good job of kind of creating this systematic, methodical game compliance review process and so we're kind of able to walk them through “Hey, you know - especially for IP - the review dimensions kind of include patents, trademarks copyright, you know, open source software, different copyright or legal notices”.

So we're able to kind of walk them through that, have them understand the importance. We have, you know, guidelines for each kind of questionnaire, so that they can at least be fill it out, we can easily assess. And also, I think, importantly as well, because this is all available to them, and we do have regular trainings, I think the teams are able to kind of think about this and be cognizant of respecting other people's IPs, of how to protect their own IP.

Because the creators, you know, there's only so much me as a lawyer can do, and there's only so many games that I can play. But I think these developers and creators, they know the industry in and out. They're kind of the front line. And so if they feel like “Hey, I think I've created something new, you know, I've solved latency in a way that I haven't seen other video games do.” You know, there's a good chance they're right, and maybe there's a, you know, patentable kind of invention there.

You know, with copyright, you know, kind of they know exactly if they've added a particular building or painting that reflects, you know, kind of a real world item, you know, on purpose to kind of invoke that city, or, if you know, a character skin was, you know, inspired or borrowed from something else; maybe you know the latest fashion or a movie star that, you know, I may not know of either because I, you know, don't dabble in that area or maybe it's in a different market that I’m not familiar with.

And so I think, really arming the developers and creators with kind of these IP concepts early on, I think, you know, kind of makes my life so much easier. And so when we get to reviewing, you know, kind of the actual IP issues before launch, you know, before, let's say even you, know beta testing, it's a lot easier to kind of work with the developers and let them know why we're suggesting certain changes or why we're seeing certain risks.

Micaela Mantegna: Absolutely. And another thing that I pick up from what you are saying that's really important is that the training, because one of the things you are saying that makes your job easier at lunch is like that you have like this whole path of people like reviewing and understanding, and kind of learning to raise their own red flags as a developer when using an IP asset is allowed on, or why not.

And I think this is like, this is the process in a big company. But what advice can you tell to like smaller teams that are trying to do this in a like an independent studio, or they are just starting. Because I know a lot of video game developers that kind of generally think that they are doing an homage by including like this little item that resembles another people's IP, and they don't realize that they are kind of infringing.

So what can you say to like the studios that doesn't have like that legal team or support?

Yan Perng: Yeah, it's always hard, because, you know, the go-to advice is like “Well, you know, talk to a lawyer.” But, you know, obviously that's not available right to everyone and sometimes I think as well, you know, you don't necessarily have to.

Going back to that maybe that piece of advise, you don't actually have to hire a lawyer. I think, you know, so many attorneys are happy to talk about IP and, you know, innovation and protection. And so sometimes really just reaching out talking to a lawyer. You know, there's a bunch, you know, on Twitter, on Reddit.

I think also, you know, if you're truly really small but you do have the, I guess, genuine interest and intent to really kind of level up your IP, you know, to make a shameless plug for WIPO, you know, I think WIPO has a lot of great resources on their website. And so I think that's kind of a good place to start. You know, oftentimes, you know, anytime there's something I don't understand or want to understand more, oftentimes I go to YouTube and I type in, you know, some key phrases and have someone, you know, lecturing me about it.

So I think the information is out there. There might be almost sometimes too much, but I think taking that initiative and just getting started, you know, just looking at what is the difference between patents and copyrights and trademarks and how does that apply to the different aspects of your video game, and, you know, as you're creating it, what do you think is the most important? What do you think, you know, you have the bandwidth to focus on now? I think, you know, just getting started is already a huge step.

Generally, I think, no matter which platform you launch, or even if it's cross platform, I think the considerations that you have, that tagline of, you know, IP as soon as possible, you know, kind of still applies.

Micaela Mantegna: And I also was thinking about this like different platforms, different markets, and also different countries. So the rules and regulations and rights change from one place to another. And I used to joke about that in video game development you have localization, and I used to joke that localization is like having to adapt your game to the different laws and regulations around the world is also an issue.

But can you talk a little to our audience about how the local nature of IP is playing a role in how you launch a game and internationally?

Yan Perng: You know, oftentimes because of the volume that we have, what we try to do oftentimes is, you know, find the lowest common denominator, which is oftentimes, you know, kind of the strictest law, or maybe we have a couple of groupings of strict law. So just taking an example of let's say, US trademarks. So if the standard, you know, opposition is 30 days, whereas for EU and China those opposition periods are 3 months, therefore, what we do is we say “Okay, well, let's take the longer, you know, 3 months, encourage our teams to submit their trademark materials, think about, you know game titles, and you know currency names and anything else they have as early as possible so we can really push up those timelines and meet kind of that common denominator”.

You know, other times, where it makes sense maybe there's, you know, a variation. So trademark applications in China, you know, are very likely to be rejected on the grounds of similarity with another registered mark, whereas in the US there's a slightly higher standard of, you know, it's rejected if the other registered mark presents a likelihood of confusion, so “similar, its okay, but, you know, is it confusing?”

Here, you know, we can either say “Hey, product team, let's meet the higher standard and find something that's, you know, nothing similar to the currently registered mark in China.” Or we can say, you know, “Hey, maybe the markets are different.” Sometimes in China, you know, there's a different game name for a different version, or maybe they use the Chinese characters mark. And so in this case it's okay to [inaudible].

So I think, you know, being able to detect when to kind of group them together and have it be more efficient, and when to really focus on the peculiarities of, you know, that local market, I think that's kind of where the judgment and experience, and you know, I think there's so many different ways to do it depending on the company, you know, where you're at, and where your priorities, you know, might be.

Micaela Mantegna: I love that you were talking about trademarks, because this is a great segue for our next question. Talking a little about branding, how do you choose the name of the game?

And you've already said like “IP as soon as possible”, but when should you start like figuring out if the name for your game is going to work, or if you need to change it, and also that give like this little piece of advice for the people that doesn't have the legal department, what are the first steps for ‘Hey, I have this great name for my game!” What should you do next?

Yan Perng: So with respect to kind of the steps.

So you found a name that you think you like. You don't have a legal team. What can you kind of do on your own to get a sense of whether this name will cause you any problems? So for IP kind of review, you can kind of think about it in 2 buckets. So the first one is kind of the clearance portion. Can I use this? If I use this, you know, will I get a nasty gram from someone and I need to stop. The other is IP protection. So, even though you can use it would you be able to protect that to stop others from using it, so if you launch the game today, you know, can someone tomorrow come out with the similar or same game?

So the first I think, you know, the easier one to first do is kind of that clearance one. You know, it's not super precise, but actually a really good kind of common sense check is to use Google search, type in the name of your game, see what pops up, you know. Is there another game that already has that name? You know, what do people associate that word with? Is it kind of a common word? Is there, you know, other meanings? But just based on the Google search you can kind of see what's out there, if you see a lot of different things, or just things that kind of take away from, you know, the special shininess of what might be your game launch. You know, highly recommend just to move on and think of something else.

If there are no obvious blockers, then I think, you know, this is where you kind of conduct the more detailed search against all these different trademark databases to make sure that no one has come before you, and actually already registered that name, or has actually applied for that name.

You know, if you're in the US I think the USPTO has a great website. If you type in “TESS”, you know, that has the US kind of trademark database. The search terms I think can be, you need a little getting used to, but it's all free, it's all very accessible.

There are other kind of databases as well, and again, you know, plugging for WIPO, WIPO has a great resource called the Global Brand Database and it kind of allows you to sift through multiple trademarks from all these different nations, national and international databases. So it's, you know definitely something you can do yourself, and if it comes up clear, you don't see any issues then that, you know, maybe it's safe to proceed.

Allison Mages: You know I want to ask a question because I heard what might be a technical term or a Mortal Kombat reference and I'm not sure which one. What is a knockout search?

Yan Perng: So knockout search is a very quick preliminary search just to figure out, to get a flavor. You know, it's cheap, it's quick. You get a flavor of “Are there similar marks in this region that you're looking at?” you know, “Are they in the same kind of industry you know of entertainment and goods?” So we call it a knockout search just because it can quickly kind of knockout any unviable kind of options.  

Micaela Mantegna: You gave like great advice, talking about like doing a Google search, but also you can like go and see the social media handles if they are open for you and that that's like a good indicative that you have maybe something unique. And I also It's like, if you register in that sense the social media handler for, think in that same way about registering your mark, like, not leave that for to the last minute.

Yan Perng: Yes, yes, excellent point. You know, when you asked me about all the different IP issues to consider before launch, you know, I think the social media handles, especially this day and age is really important. You know your website URL; I think that's something that people forget as well. Even your, you know, app icon is something that you need to think about, and so I think all of these related elements outside of just your game, you know, are important to think about and to plan ahead.

Allison Mages: Awesome. Okay, so we're going to shift gears a little bit you had some, OK, great, we're going to shift gears a little bit and ask you again about partnership. So a lot of the studios that are listening, you know, they would love to partner with someone like Tencent. So how does partnership work with small developers at Tencent?

Yan Perng: So there's kind of three ways, I think, we approach our partnership. One is kind of the investment approach. So we invest in these talented companies because we think that, you know, not only will they benefit from our industry experience, expertise, but that capital support will really allow them to scale up. We provide a lot of kind of what I call, you know, wraparound services, like marketing, technology and production, you know, market analysis, e-sports integrations, other publishing capabilities, so that the studio can really focus on what they do best which is develop the game. They don't have to think about all these other things like legal, you know, or finance, all those things; they can really focus on what they'd like. So that's kind of, you know, one kind of partnership approach that we have.

The other is kind of mobile and free to play expansion. So you know, I think Tencent signature kind of success has really come from developing mobile games. Not only with other developers but I think other publishers like Nintendo, you know, with Pokémon Unite; Activision with Call of Duty Mobile; Krafton with PUBG Mobile. You know, Tencent has really become this trusted partner if you want to effectively, from a technical and business standpoint, kind of transform your IP into the mobile platform.

The last is kind of, you know, Chinese version expansion. So again, I think Tencent has become a proven, you know, kind of partner in China if you want to have someone, you know, kind of established and manage the Chinese version of your video game.

So through these three ways, I think we kind of partner with different developers, you know, depending on kind of where their focus is and the support that they really want.

Allison Mages: And how important is IP to these partnerships? Because what you've described is a lot of how do I expand my revenue generation using what I've already thought about and created, you know, through your company?

Yan Perng: From kind of the maybe developers IP side, you know, I think we're always looking out for great talent and great ideas. You know, when you talk to the studio you kind of do naturally get a sense of their approach to IP. And we understand, you know, kind of the sophistication with IP protection may vary, and so it's just kind of one of the factors in our decision about whether to invest or partner.

But I think at the very least, what the developer needs to think about is, you need to ensure that you own that invention, right? That you own that IP so that you do have something valuable that you can kind of show to other people, that you can have other people, you know, kind of help you develop.

So, you know, my recommendation would be focus on, you know, what are the capabilities that you have that kind of sets you apart from others. So is your IP and innovation focused on, you know, a great story? Innovative game play? Or do you have this next generation technology that can, you know, connect players around the world? Are you able to create more realistic, cinematic and immersive experiences? Or are you exploring new frontiers like audio, AI, VR, to advance kind of the art and science of gaming?

You know, I think cross platform play and release, kind of you know, is a trend that's coming up. And so maybe you have, you know, these amazing cross platform mechanics, so that, you know, someone on console can seamlessly play with someone on mobile and have the same experience.

You know, even things that are not focused truly on kind of game development but instead maybe you have data analytic technology that can identify, you know, the performance of game marketing or game conversions or, you know, influencer marketing or maybe you have this unique way to engage with your local market, get feedback and now you're able to create really great ongoing kind of DLC and content.

So, you know, I think because we're looking for great talent and great ideas, you know, IP sits front and center, both what we're looking at and what we hope, you know, to help the developer succeed in.

Allison Mages: Awesome. So I think we're sort of towards the end of our interview here, Yan. And so I wanted to close out and ask: if you put yourself in the shoes of a small developer, what's one piece of advice you would give them to level up their IP?

Yan Perng: I think the advice would be: just start. Just, you know, don't be scared. It can be really daunting. I think, just get started, and then slowly build and perfect it from there.

You know, for example, today your checklist can be as simple as a table with two columns. You know, we talked about IP. You can think about in, you know, IP clearance so that'll be your first column, and then you could also think about in IP protection. And then for the rows for your table, you can have one row for patents, one row for copyright, one row for trademark, you know, maybe trade secrets. And if you're you know you're getting super fancy, you know, maybe something like rights of publicity.

Then, you know again, at the start of your game, you know, think about these issues. If you're cognizant of them, you know, I think you'll be mindful and you won't kind of overlook something. Again, you know, maybe a vertical slice is when you feel ready to kind of really roll up your sleeves and think about IP issues, but just go through this, go through this checklist and start writing down: Okay, for you know, let's say, trademarks, Have I done the clearance? What have I found? Okay, you know, things look good, now I want to protect it. You know, where do I go? Maybe jot down notes about Madrid, or maybe you want to file in the US first.

You know, keep notes and slowly your, you know, your simple table will kind of row into, you know, what we have now at Tencent, which is a multi-step, multi review kind of you know compliance, process, and strategy.

Micaela Mantegna: That's fantastic advice and thank you so much, Yan, for joining us today and sharing these thoughts on IP, games and cats as well, for the day. And I think that our audience is going to take a little, a lot of golden nuggets of information from this. So thank you so much for showing us and sharing all these thoughts.

Allison Mages: So what does it take to launch a game from an IP perspective? Pulling it all together with us, is Prof. Gaetano Dimita in his PowerUp introduction.

Gaetano Dimita: So you finally reached the launch phase, congratulations. Now it is time to finalize your IP strategy and clear and correct any mistake in precision and whatever you have been postponing in order to avoid discussing the IP legal issues.

You need to run a compliance review in order to be sure that you have all the IP license you need and you have registered all the IP you want. If you followed the previous episode, you are already a step ahead, but you will still need to make an asset-by-asset assessment to determine the risk that might be involved in the length of your video game.

Starting from the beginning, do you have all the proper license for all the software used in the creation of your video game? Do you use any open source software? Did you use any IP from third parties? Did you use real person and objects such as architectural historical building?

At this stage, all your assets should be finalized. So you will have two key objectives for launch.

First, you want to get the strong possible protection for your IP and secondly, you want to make sure that you have all the permission to use the IP that belongs to others before including them in your video game.

Remember the compliance into your process. When it comes to compliance, a lot of the issue will not be straightforward or black and white and you will need to conduct a risk assessment and determine whether or not it's more appropriate to apply for a license or something else.

Having a clear table of assets, their IP, the risk assessment could be very useful as well as having had regular IP audits. We will get back to this next time.

At this stage you will have to take a lot of business decision. For instance, do you know in which countries you want to distribute your game and in which countries your competitors are? Because this will determine where to focus the most for both compliance and for protection.

Basically, where do you want to register your trademark and design?

When it comes to copyright in some countries, such as the US, there is a registration system and you want to register your copyright, because this will strengthen your position in the unlikely case of someone infringing your right. But you do have a limited budget. Beyond the name and the company and the title of the video game, what do you want to register and where?

You have to make a full economic assessment of the advantages of registering trademark design and copyright when available, or applying for a patent where they are more important to you.

Registering everything, everywhere, might be too expensive, time consuming, and resources are not infinite. For instance, the common favorite countries for registration for trademark are the big markets. The US, the EU, the UK, China, and the countries where potentially infringements are more likely to occur.This process might look tricky and time consuming, and it is.

Luckily there is a lot of information out there and you shouldn't be afraid to ask questions and to ask for help. I strongly suggest having legal counsel, as any mistake can be extremely costly or even kill the project.

That's all for this episode. See you next time. Good night and good luck.

Micaela Mantegna: And that’s a wrap for this level 3!

Stay tuned for the next episode of Videogame Development: A quest for IP! We’re going to talk about the role of IP in acquisitions and investments with the CEO of Green Horse Games from Romania, which was recently acquired by Miniclip in one of the biggest transactions in the European gaming industry.

Allison Mages: Thanks for listening to Make IP your Business. This podcast is brought to you by WIPO, the UN Agency for IP that enables innovation and creativity for everyone, everywhere.

You can find all the episodes, download the PowerUPs, and join the community on our website. Check out the show notes for the links!

See you on the next level!