Imitation, Originality and Genres

Jennifer L. Kelly

Litigation Partner, Fenwick & West LLP

UBC Law450 Video Game Law | March 6, 2013

Overview

Who I am and why I’m here

Kinds of IP disputes that commonly arise in video game industry

Copyright

Trademark

Right of publicity

Discussion of Noteworthy Cases

Analysis of Potential Claims

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Introduction

My practice

Dispute avoidance

Dispute resolution

From the gamer’s perspective …

From the litigator’s perspective …

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IP Claims That Arise: Copyright

Overview of 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,” graphics, 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

Key Issues in video game disputes:

Is what was copied original to the claimant or did they copy it from someone else?

Is what was copied part and parcel of the genre?

Noteworthy Disputes:

Atari v. North American, 672 F. 2d 607 (7th Cir. 1982)

Capcom vs. MKR, 2008 WL 4661479 (N.D. Cal. Oct. 20, 2008)

Hasbro v. RJ Softwares, S.D.N.Y. Case No. 08-cv-06567

Zynga v. Vostu, 816 F. Supp. 2d 824 (N.D. Cal. 2011)

Nimblebit/Zynga

Tetris v. Xio Interactive, 2012 U.S. Dist. LEXIS 74463 (D.N.J. May 30, 2012)

Electronic Arts v. Zynga, N.D. Cal. Case No. 12-cv-04099

Spry Fox LLC v. Lolapps, W.D. Wash. Case No. 12-cv-00147

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

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Capcom v. MKR(Dawn of the Dead & Dead Rising)

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Hasbro v. RJ Softwares (Scrabble vs. Scrabulous)

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Zynga v. Vostu(Cityville & MegaCity)

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Nimblebit/Zynga(Tiny Tower and Dream Heights)

Open Letter to Zynga

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Tetris vs. Xio Interactive(Tetris and Mino)

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EA v. Zynga(Sims Social & The Ville)

Spry Fox v. Lolapps(Triple Town v. Yeti Town)

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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

Starting to see some disputes (gripes) relating to keywords in AppStore

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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

Blingville v. Zynga, N.D. W. Va. Case No. 11-cv-00004

The Learning Company v. Zynga, D. Mass, Case No. 11-cv-10894

ESS Entertainment vs. Rock Star Videos, 547 F.3d 1095 (9th Cir. 2008)

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Blingville v. Zynga (the “Ville”)

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The Learning Co. v. Zynga (the “Oregon Trail”)

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ESS Entertainment vs. Rock Star (The Play Pen vs. The Pig Pen)

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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

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 (transformative)

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

Relevant Examples:

RC3 v. Justin Bieber, M.D. Fla. Case No. 12-cv=00193

Dillinger v. Electronic Arts, 795 F. Supp. 2d 829 (S.D. Ind. 2011)

Kirby v. Sega, 50 Cal. Rptr. 607 (2006)

No Doubt v. Activision, 192 Cal. App. 4th 1018 (2011)

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RC3, Inc. v. Justin Bieber(Beaver & Biebs)

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Dillinger v. Electronic Arts (John Dillinger & “Dillinger Tommy Gun”)

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Kirby vs. Sega of America, Inc. (Lady Miss Kier & Space Channel 5/U-La-

La)

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No Doubt vs. Activision Publishing, Inc. (No Doubt & Band Hero)

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Analysis of Potential Claims: Copyright

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

What were developers inspired by? What were they aware of?

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

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

Were developers inspired by anyone in particular?

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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