In our previous article “Pokémon GO Shows How to Augment Reality and your Intellectual Property”, we discussed the value and diversity of the Pokémon Intellectual Property (“IP”) portfolio. Pokémon GO was used as an interesting example of the evolution of IP protection to cover integration of the Pokémon brand with new augmented reality technology. Trademarks, copyrights, trade secrets and patents all played an important role. This article will provide a high level overview of certain key agreements used to further protect augmented reality IP, with specific reference to the Pokémon IP. The use of agreements to control IP is similar whether the IP is computer-related, mechanical, or life sciences.
Other Negotiated Agreements
Pokémon GO is the result of the collaboration between The Pokémon Company and Niantic. The Pokémon Company is jointly owned by Nintendo, Game Freak and Creatures, and is responsible for licensing the Pokémon IP. Niantic is a Google spin-off with expertise in augmented reality and location-based mobile gaming from their earlier works Field Trip and Ingress. We are not privy to the agreements between the co-owners of the business, but they undoubtedly deal with confidentiality, IP ownership, and sharing of proceeds. For example, Nintendo is licensing its Pokémon GO trademarks to Niantic, but retains control over the mark and how it is used. It is good to have agreements in place early on before revenue starts to flow, so that parties’ entitlements and obligations are clear. Undoubtedly, there are also confidentiality and IP ownership agreements in place with the employees, independent contractors and outside companies that help develop and promote the games. These contracts ensure that all IP ownership, for example, in graphic design, software code, game functionality and other work product, is transferred to the appropriate owner, regardless of which outside party is the author or inventor.
As this augmented reality example shows, while identifying and registering IP is a good practice, the IP also has to be carefully controlled. This control should be exercised not just with respect to competitors, but also end users and business partners. Use this strategy with all types of IP, not just the latest technology. Using clear and strong agreements will ensure that a company can retain, maintain and profit from its investment into IP.