Sergiy Barbashin is an attorney at law, managing partner at the Trustme Law Firm, described in detail the regulation of intellectual property (IP), its features in the field of gambling, and the operator’s procedure in case of existing violations.
Sergiy, how often do you have to deal with intellectual property in the field of gambling?
The issue of intellectual property is becoming more and more popular every day. In my opinion, this is due to two aspects.
First, business becomes more “conscious”, so everyone wants to protect their own product, brand, process, or technology. This is a desire to establish a “monopoly” on their own property because enormous efforts and budgets are spent on both development and promotion.
Secondly – a practical necessity. We live in a digital world, where almost every activity is related to IT solutions (programs, codes, mobile applications, etc.), development of our own brand (TM, patents, etc.), work in social networks and the Internet. Without proper protection, permission to transfer rights to IT solutions, and copyrights, businesses are effectively deprived of the right to own, dispose of and protect such rights.
Of course, gambling is no exception. The relevance of intellectual property for the industry is due to the variety of products, brands, IT solutions, and technologies, activities with copyright and licenses.
In general, to what extent is the IP sphere in the gambling business regulated by law?
As a rule, each business sphere is regulated by general IP norms, laws, and conventions. And characteristic branch features can be regulated by profile laws.
The gambling business is similar to the grocery IT business in terms of intellectual property. Most IT products have a brand and the product itself, consisting of intellectual property that needs protection.
There are specifics in determining which and how objects are protected, but the legal protection of the bookmaker application will not differ from, for example, the protection of the dating application.
One of the conditions for licensing online gambling business in Ukraine is the presence of a domain name in the UA zone, which will be used for the website. Today, the registration of a domain name in the UA zone requires the presence of a registered trademark in Ukraine.
Does gambling have its own features of copyright and intellectual property law?
Firstly, brand protection is an essential thing. The name of the developer and the name of the product itself can be protected as a trademark and monopolize the word, image, or a combination thereof. In practice, we register several trademarks: verbal in regular font to the graphic. Over time, there may be rebranding or design changes, sometimes graphic brands can be unique, and the brand name itself will be unprotected.
As the trademark operates on a territorial basis, it is necessary to identify critical protection areas. For example, if you have registered a trademark in Ukraine, its protection will not extend to the US and the EU and vice versa. When determining the areas of registration, we usually take into account where the activity and the registered company, the location of customers, their partners or developers, and development plans.
Secondly, it is necessary to pay attention to developers’ rights transfer to IT solutions.
The author of a code, design, or script is an individual (employee, freelancer, etc.). Care should be taken to ensure that all facilities developed are owned by the company and not by the employee or contractor. We are often approached by customers with a ready-made product but without its rights. In such cases, we recommend “gathering” freelancers and employees involved in the development and agreeing on transferring rights to the company. Sometimes this is extremely difficult (lack of communication, contractor’s desire to sign something, etc.), so the general recommendation is to include IP warnings and obtain intellectual property rights before cooperating or accepting “works/services.”
Third, we recommend that you register the copyright for finished products. Although copyright registration is not required by law, there are some benefits. These include the official identification of the object and the receipt of confirmation from the competent authority. In our practice, foreign partners and investors will usually ask for a copyright certificate, and then the company will be able to provide it immediately. In addition, it is a must for some countries, such as the United States. After all, it is sometimes difficult to prove a deliberate infringement of copyright by other companies (the logic is that registration = official publication and that everyone is “aware” of it). Without registration, it is impossible to recover legal aid in litigation.
Generally, clients are advised to register at the site development site (for example, Ukraine) and at the Library of Congress.
There are many types of copyrights and ways to protect them, so it’s essential to identify the proper methods for each product. Some solutions need protection through patenting (technology), and some can be protected by simply filing or registering the copyright.
Of course, companies need to take care of the amount of transfer of rights to other companies. We often find that product companies do not give operators the right to use their products in total. Businesses need to clearly understand what they are transmitting or receiving, on what terms, and for how long. In addition, the “purity” of copyright is essential. In the case of borrowed decisions, it is necessary to ensure that you obtain a license for such borrowing to not receive claims from the authors or copyright holders.
As you can see, many objects need protection and the nuances of such protection, and it is necessary to take into account the provisions of international law, so we advise you to have the constant support of professionals in the field.
In your practice, how often do IPR infringements occur in this area?
The question is rhetorical because there are always violations or attempts to oppose the rules where intellectual property is created.
We often receive inquiries about infringements, such as trademark infringement, design and code claims from developers, or reluctance to transfer rights to objects to a customer.
We are increasingly receiving inquiries in the gaming industry. To date, there are few lawsuits against IP in gambling in Ukraine. In my opinion, there are several factors for this. First, the industry has recently been legalized. Second, much of the industry operates online, where there are many mechanisms to combat infringements without litigation, such as the UDRP (Domain Name Dispute Resolution Policy) procedure or blocking content through a hosting provider.
What should be the algorithm of the operator who found that his brand is illegally used by other companies? What tools are commonly used to solve such issues?
First, it is necessary to record the relevant violation.
If such use takes place on the Internet, the fixation can be done both independently and with the help of special services or experts. It all depends on the type of violation or further action. If the offense is offline, the tools can be photo/video capture, control purchases, etc.
A prerequisite for brand protection is the presence of brand registration as a trademark. In some cases, you can protect a trading name that does not require registration, but the process is much more straightforward with a trademark.
As lawyers, we propose a further action plan to end the violation. Such actions depend on the specific situation and customer expectations.
You can file pre-trial complaints or letters of claim against the violator, send requests to the site’s providers regarding content removal, UDRP procedures, and other measures. Typically, the purpose of such actions is to define one’s position, try to resolve the dispute through negotiations, get feedback from the other party, or resolve the dispute promptly, if possible, without going to court.
With violations on the Internet, many disputes can be resolved out of court.
If extrajudicial measures do not bring the desired result, you can protect your rights by suing. Depending on the situation, it is necessary to assess in advance the chances, case law, available evidence, and those that should be prepared, for example, examinations, fixing of the violations.
Is there a difference in the specifics of intellectual law in the online and terrestrial spheres?
In short, protecting the intellectual property of online gambling is faster, cheaper, and often more effective, as we have tools to protect and remove online content that can take days.
I would like to draw your attention to the fact that when resolving a court dispute, it is possible to claim recovery from the guilty party of legal expenses and consideration of the dispute (fees, examinations, and other expenses). If we talk about judicial protection, the process may be delayed. At the same time, if rights are violated, we are convinced that they need to be protected.
Such processes are independent of the field of activity for other functions, such as registration or transfer of rights to objects.
How common in the gambling vertical is patent trolling? What should a Ukrainian operator do if he faces such a situation?
I think there will be precedents for trolling, as gambling is a highly competitive field. Patent trolling is also common in any area where intellectual property is available. For example, IP-trolling was announced by the new owners of the Dnipro Hotel, resulting in the Dnipro Casino trademark being registered.
If such a situation occurs in the business, it is worth assessing the risks, legitimacy of the requirements, and options for action. Such risks can often be avoided by taking preventive measures to register your own brand, IT solutions, or technologies, among the protection tools – the invalidation of security documents of trolls, the opening of criminal proceedings, and recovery of legal costs as a result of such disputes.
In your opinion, should gambling incidents or lawsuits be expected in Ukraine?
Definitely, we are already receiving inquiries from clients about infringements and claims from other rights holders. To date, these disputes have been settled pre-trial. With the industry’s growth, the number of conflicts in intellectual property will naturally increase, so it is worth protecting your own products now.
Illegal casinos often use pirated software that is not officially purchased from providers. Do the providers have any opportunities to combat the illegal use of software?
In short, yes, they do. The rightsholders can stop violations both out of court and in court. In addition, they have the right to collect compensation from the violator. It all depends on the nature of the infringement and what rights are infringed (copyright, patent rights, etc.). An essential condition for the protection of rights is the sufficiency of the evidence that the rights belong to the official provider and the correctness of registration and registration of such rights.
What advice can you give to Ukrainian licensed operators?
I recommend working ahead of time and building an intellectual property portfolio before anyone infringes on it. This will provide an opportunity to record that it is “yours,” respond quickly to violations, reduce costs (speed up registration, inability to protect interests quickly or online, etc.).
Depending on the product, the recommendations may change, but the “must-have” is the registration of trademarks and developers’ transfer of rights to IT solutions. Registration of copyrights, patents, or technologies, and valid licenses and derivative agreements for the use of other owners’ rights should be considered separately.
The material is prepared for Login Casino
The author of the material is
Sergiy Barbashin – the IT attorney, managing partner at Trustme Law Firm, Intellectual Property Expert