By David L Yates & Bashi Kumar*
As First Published in ART+law, December 2001
Picture this. You have created a masterpiece. It is a board game that consists of a square piece of cardboard with beautiful ornamental patterns applied to the face of the square, a stack of cards with similar ornamental patterns, some board tokens, a pair of dice and a page of written rules and instructions on how the game should be played.
You want to do everything necessary to protect this creation from unauthorised use by others. That means protecting the name, the game, the patterns on the board, the cards and the rules of the game. There are a number of forms of protection for you to consider.
Trade Mark Protection
The first step is to register the name of the game as a trade mark under the Trade Marks Act 1995 (Cth). If the name is designed or depicted with unusual writing or with logos, you will need to register those images alongside the name. You will then need to look at protecting the remaining elements of the game.
Patent Protection
To receive patent protection under the Patents Act 1990 (Cth), the object has to be an useful invention which is new or novel. A board game, even if considered useful, is not necessarily novel or new within the meaning of patent law. This is because patent law distinguishes between the artistic works and the new ideas behind the game, on the one hand, and the technical invention, on the other. So, while the artistic works and the ideas behind the board game are new, the invention – that is, the method of putting together pieces on a board, throwing the dice and dealing the cards – is not new or novel. What we have is a well-known, age-old method for playing a board game, which is, as a result, not patentable.
Design Protection
Design law protects the look of commercially produced things. For example, you invent a teleporter (that is, a ‘Beam me up Scottie’ machine), which you register as a patent. Then, your marketing manager designs the teleporter in the new season colours of denim teamed with gelato stripe. You will register the look of your teleporter, in its new season colours, as a design.
Design registration may be used to protect the appearance, shape or get-up of
the board game.
Copyright Protection
Artistic Works
The ornamental patterns on the board and cards may also be protected under copyright law as ‘artistic works’. The problem is that sections 74-77 of the Copyright Act 1968 (Cth) state that where copyright subsists in an artistic work and a “corresponding design” is registered under the Designs Act 1906 (Cth), copyright protection will be lost in relation to the artistic work. Effectively, this means that the price of registering the design of the board game is sacrificing the copyright of the design in the artistic work.
Why is it important not to lose copyright protection? Well, for a start, there is no need to register your work in order to receive copyright protection. Also, once published, copyright protection lasts for the life of the author plus 50 years, whereas design registration will only protect the design for up to 16 years. Clearly, if you had to choose, you would probably prefer copyright protection.
As it turns out, you may be able, where your creation is a board game, to have both copyright and design protection.
Sections 74-77 only apply if you have an artistic work, which has been applied as a “corresponding design. A “corresponding design” is defined, in the case of an artistic work, as a design that, when applied to an article, results in the reproduction of that artistic work. It does not include a design consisting solely of 2-dimensional ornamental patterns applied to the surface of an article. In the case of a board game, as the “design” consists solely of a 2-dimensional pattern applied to the surface of the board game, it is outside of the scope of these sections. This means that you can register the design of the board game, and this design registration will not have the effect of preventing copyright protection for the artistic works on the board and cards.
Literary Works
The rules of the game may be protected under copyright law as a ‘literary work’. As indicated above, copyright law protection does not require registration.
So, to fully protect your game, you could register the name of the game as a trade mark and register as a design the look, get up, or appearance of the game. In addition, you may continue to enjoy automatic copyright protection for the relevant literary and artistic works.
For more information on design protection see Arts Law’s information sheet, ‘Protecting Your Designs’ on Arts Law’s website at www.artslaw.com.au.
*David Yates and Bashi Kumar are on Arts Law’s panel of volunteer lawyers.
