U.S. Game Litigation Imitation, 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 2

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 3

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) 4

K.C. Munchkin & Pac-Man 5

Cityville & MegaCity 6

7 Tetris and Mino

Triple Town and Yeti Town 8

9 Sims Social & The Ville

Farm Heroes Saga and Farm Epic 10

Pet Rescue Saga and Treasure Epic 11

IP Claims That Arise: Trademark n 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 12

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) 13

Blingville v. Zynga 14

The Learning Co. v. Zynga 15

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 16

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) 17

Lady Miss Kier and Space Channel 5 18

Beaver & Bieber 19

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? 20

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? 21

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? 22