U.S. Game LitigationImitation, Originality & Genres

UBC Law School: Video Game Law

Jennifer L. Kelly, Fenwick & West LLP

October 30, 2013

Overview

Kinds of IP claims that commonly arise

Copyright

Trademark

Right of publicity

Analysis of Potential Claims

Elements of claims; defenses

Recent cases

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IP Claims That Arise: Copyright

Overview of U.S. Copyright Law

Governed exclusively by federal law

What copyright protects:

Expression of ideas, not the ideas themselves

No protection for: general concepts, plots, themes and genres; scenes a faire, ideas “merged” with expression; content not original to the author

In particular to games: basic game concept, rules, method of play, stock characters, common sports moves, other aspects of games “driven by genre”

BUT: overall “look and feel,” game progression, graphics, instructions (verbatim), underlying code, storyline, sounds can be protected

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IP Claims That Arise: Copyright (cont.)

Elements of claim for copyright infringement

Ownership of a registered work + copying of protectable elements

Defenses: Copyright invalidity, independent creation, fair use

Relevant Examples:

Atari v. North American (Pac-Man vs. K.C. Munchkin)

Zynga v. Vostu (various)

Tetris v. Xio Interactive (Tetris/Mino)

Spry Fox v. 6Waves (Triple Town/Yeti Town)

Electronic Arts v. Zynga (Sims Social vs. The Ville)

King v. 6Waves (Farm Heroes/Farm Epic; Pet Rescue/Treasure Epic)

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K.C. Munchkin & Pac-Man

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Cityville & MegaCity

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Tetris and Mino

Triple Town and Yeti Town

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Sims Social & The Ville

Farm Heroes Saga and Farm Epic

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Pet Rescue Saga and Treasure Epic

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IP Claims That Arise: Trademark

Overview of Trademark Claims

Governed by federal and common law (registered and unregistered marks)

What TRADEMARK law protects

Use of a trademark, name or trade dress in commerce to identify a single source of good or service

Claims involve use of a trademark or name in a title or within an app/game

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IP Claims That Arise: Trademark (con’t)

Elements of Claim:

TM infringement: use of another’s mark (or name) in commerce that causes likelihood of confusion as to source, sponsorship, or association

TM dilution: use of another’s mark in commerce that causes dilution to the strength of the mark

Defenses: classic fair use, nominative fair use, parody, First Amendment (artistic relevance + not explicitly misleading)

Relevant Examples:

*Hasbro v. RJ Softwares (Scrabble vs. Scrabulous)

*Blingville v. Zynga (“ville”)

*The Learning Company v. Zynga (Oregon Trail)

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Blingville v. Zynga

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The Learning Co. v. Zynga

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IP Claims That Arise: Right of Publicity

Overview of Right of Publicity Claims

Governed by state law (usually the law of the residence of the person with the claim)

ROP is a personal claim arising out of privacy law, for an individual to have the right to control commercial use of his or her likeness

Person does not have to be famous, or alive

Potentially quite broad, though recent cases have shown inclination to narrow scope

Some overlap with TM claims

Elements of Claim:

Use of name, voice, likeness or broader in some places

Of a person (potentially deceased)

Without consent (written/oral varies by state)

For defendant’s advantage

Defenses:

Public affairs, First Amendment

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IP Claims That Arise – Right of Publicity (Con’t)

Relevant Examples:

*Kirby v. Sega (Lady Kier/Space Channel 5)

*RC3 v. Justin Bieber (Joustin’ Beaver)

In re NCAA v. EA (EA NCAA Football)

Brown v. EA (Madden NFL)

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Lady Miss Kier and Space Channel 5

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Beaver & Bieber

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Analysis of Potential Claims: Copyright

Step 1: Identify game’s genre and others that fall into it

Ask developers what they were inspired by, other games they were/are aware of; do your own independent survey

Make a list of all games and common features

Step 2: Identify unprotectable aspects of such games

What is common to, driven by genre?

Other aspects that are not protectable as a matter of law

Step 3: Compare the games

Game to Game comparison

Play the games if possible!

Step 4: For any similarities of protected expression, drill down:

Why was a particular feature chosen?

Can changes be made?

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Analysis of Potential Claims: Trademark

Step 1: Is any TM used in title or within game?

Step 2: If yes, where is it?

Title or main character vs. subsidiary

Step 3: Analyze how it has been changed or modified, what is the purpose it serves in the work?

Step 4: Practical risk analysis who owns potential mark?

Is the mark registered?

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Analysis of Potential Claims: ROP

Step 1: Were any real people the inspiration/source of characters or names?

Famous people as basis for character?

Other real people?

Real people used in motion capture

Talk to developers about inspiration

Step 2: If yes, was there consent/release? For what?

Step 3: If yes, where is the character name/likeness?

Step 4: Analyze how it has been changed or modified; what is the purpose it serves in the work?

Step 5: Practical risk Who is it?

Where are they?

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