Approach copyright holders to licence IP for my game

I built an electronic version of a popular board game. I got some good responses on avoiding legal issues, but I went ahead and built it anyway, keeping it private for obvious reasons. Everyone who has seen it, loves it.

I've taken care to avoid using any trademarks or copyrightable content, but I'd much rather licence the use of these officially, which I believe can do well as an official app.

I did find one other developer who received a cease-and-desist for using the IP holder's trademark, so I want to avoid this in the first place. If the IP holder denies my request, I don't want to be red-flagged and sent a cease-and-desist letter "just in case". I am willing to fight for fair-use, but I want to make sure I have a solid footing and am not willfully infringing on anything.

How should I approach the IP holder to get endorsement for my mobile game? How should I represent myself? Should I do it myself or through a lawyer? Via email, fax? Should I show my game? Should I brand an "official version", private version and show it to the copyright holder? Should I show them at all when contacting them?

I would appreciate any guidance in approaching this sensitive issue without just handing over my position.

Update: Based on your excellent feedback, I'm leaning toward first popularising a generic version of my product for this genre of game (don't worry, it could be used for any of the games in this category and I am not using any copyrightable materials or trademarks). Marketing it will be hard, though. Getting a licence deal seems much less likely than a buy-out if I have many users of my generic app. Perhaps they will be interested in buying it later, but until then, I am glad to play it with friends :).

I am a lawyer, but not an IP lawyer, so take this with a grain of salt, but I would NOT show the game or even indicate that you've developed it already. I'd just make the contact and say something like "would you be interested in licensing IP rights?" The less you say about what you've done the better.

My two cents is that if you show your version of the game up front, the IP holder could get defensive and react negatively.

In my opinion, the safer approach is to have an attorney represent you. Your attorney can inquire from a hypothetical perspective (i.e., as though no product exists), asking about whether the company is willing to license the name, the process that is required, what a prospective licensee must do to be granted a license, etc. If the company asks who the client is, the attorney can simply say s/he is not authorized to reveal that information.

Please realize there is no guarantee that the company would consider you a worthy licensee. Typically, a licensor will look for a licensee that (a) has a proven track record in the industry and (b) will pay an up-front license fee as an advance against future royalty payments. Between the up-front payment to the licensor and attorney's fees, you should be prepared to pay at least several thousand dollars - and perhaps much more - before you see any revenue.

You are right to want to protect any fair-use or other common-law right that you might have (I am not opining as to whether you have any such right). I have represented a licensee of one of the major sports leagues. Before the company could become a licensee (and before I started representing it), the company had to sign a license application that, among other things, required that the prospective licensee give away any fair-use rights that it may have - even if a license is never granted! I consider it likely that such a provision is unconscionable, but I doubt that any prospective licensee will incur the expense of a lawsuit to argue that point.

Disclaimer: This information does not constitute legal advice and does not establish an attorney-client relationship.

I've actually tried several of the paths you describe.

My very first game, War! Age of Imperialism was a computer version of a turn-based strategy game. In this case, the publisher was relatively small, so it was easy to get in touch with the owner of the company. I approached them asking if they would be interested in doing a computer version of their board game. They said, not at this time, maybe later. So I went ahead and built it anyway and went back in six months with alpha-quality software. They were sufficiently impressed with the product that they agreed to publish it. It ended up being a finalist in the 2005 Independent Games Festival. In this case, the reason I went ahead and developed the game was to prove that a small developer with zero retail game history could actually build a game. In addition, I figured if the publisher said no, I would still have learned a ton and could apply it to other games. In no circumstance did I contemplate publishing a generic version of the game.

So depending on the size of the company which owns the IP, you could take an approach like this.

I really wanted to build a computer version of Axis & Allies. That IP is owned by Hasbro and I was never able to make much headway getting the rights. They were much more interested in doing a quasi-port of the game rather than a straight port. Since I knew Hasbro was much larger, I never spent any time building out a prototype. A generic version of A&A is also difficult given the amount of things one would have to change.

I also wanted to do an iPhone version of Dominion, but the publisher wasn't interested in just doing iPhones - they wanted consoles, PCs, etc. I don't yet have the chops to do Xbox 360 or PS3 apps, so I walked away. Doing a generic version of Dominion is basically impossible given the nature of the game.

As a software developer that wants to protect my IP, I tend to respect the IP of others. I don't think you are going to make a ton of money off a generic version of the game. Let's say you are doing "UNO". You realize that you would have a hard time marketing your version of UNO without mentioning UNO. Think of CentOS and Red Hat.

If you have a functioning game that is well executed, then my approach would be to try and find someone at the IP owner to demo it to. Where you go from there is a matter of negotiation. In general, I would avoid having to pay any up-front fees. Go through a revenue sharing plan. Unless you are competing with their own version of the game, they may be interested in taking a chance with a new company.