News – Patent Arcade

Dec

2021

U.S. Patent No. 8,425,325: Automatically generating a book describing a user’s videogame performance

Issued April 23, 2013, to Apple Inc.
Filing/Priority to February 6, 2009

A comic book of your video game life? A unique narrative based on your own in-game experience.

Overview:

U.S. Patent No. 8,425,325 (the ‘325 patent) relates to the automatic generation of a book, comic book, or e-book to record a user’s experience or choices in playing a video game. The ‘325 patent details generating a narrative structure by reading data from a user’s experience playing a video game. The recorded data serves as a basis to automatically select narrative text, separate from, and narrative of, the recorded data. It inserts one or more portions of the recorded data into the narrative as well as the narrative text, to implant user input into the narrative. This can generate a book, an e-book, or a combination of the two which can include gameplay screenshots. The recorded data can be gleaned from dialogue or be the results of a user’s interaction with the video game, and can include information on one or more characters from the game. The narrative can be considered to have various placeholders where recorded data is inserted to create the unique narrative.

The ‘325 patent may be familiar as implemented in Mass Effect: Genesis, or the interactive comic in the Mass Effect 3: Special Edition. These were used to allow players to have narratives generally only available to players who played previous installments in the Mass Effect series. This was important because some consoles did not have Mass Effect, but only Mass Effect 2, and the ‘325 patent prevented players from being locked into only one narrative state in the vastly branching Mass Effect universe.

Abstract:

Systems and methods are provided that record data in a videogame, such as a user’s character and performance in the videogame, and generate a book, e-book, or comic book based on the recorded data. A narrative data structure generated from the recorded data may include pregenerated text and images, and may provide for insertion of the recorded data into the narrative data structure. The recorded data may be converted into natural-language text for insertion into the narrative data structure. In some embodiments, the system may record screenshots of the videogame and insert the screenshots into the narrative data structure as illustrations. The narrative data structure may be provided to a location for printing as a book or other publication or may be electronically formatted and provided as an e-book.

Illustrative Claim:

A method, comprising: recording data from a user’s experience of playing a video game on an electronic device; and generating a narrative data structure, further comprising: using the recorded data as a basis to automatically select narrative text that is separate from and narrative of the recorded data; and inserting one or more portions of the recorded data into the narrative data structure; and inserting one or more portions of the narrative text into the narrative data structure.

Sep

2021

Recent Video Game Patent Trends at the EPO

Friend of the blog Tom Hamer, of European IP firm Kilburn & Strode, recently posted an article exploring patent filing trends at the EPO related to video game technologies. He found that the EPO granted 245 video game patents in 2020 (up from 235 in 2019), and published 415 video game patents in 2020 (up 8% over 2019). As part of the review, he identified three technology areas with upward trends:

AR/VR controllers that incorporate cameras and light sensors.
Management and protection of an online playerbase and community.
Tech that facilitates esports and video game streaming.

These trends certainly align with what we’re seeing in US patent activity. The full article includes several examples of interesting patents in each area. You can read the article here.

Sep

2021

Electronic Arts Pledges to Share Innovative Technologies Which Help Disabled Gamers

Electronic Arts (“EA”) has pledged to help breakdown barriers for players with disabilities or medical issues through sharing technologies which help such individuals. EA has promised to not enforce its patent rights in (as of 9/8/2021) five patents, in hopes of these technologies being used by other developers to accommodate players. The only exception to this rule is if someone files a lawsuit against EA, it reserves the right to defensively terminate the pledge for only that party/individual.

This decision by EA to share technologies which help accommodate disabilities could help make the gaming space more accessible. It also comes at a time in which there has been a recent influx in patents which help accommodate disabilities or medical issues in gaming. An example of a similarly helpful patent (which we will cover soon) is U.S. Patent No. 10,977,872, which allows graphical style modification and is assigned to Sony Interactive Entertainment Inc.

“Patent pledges” like this are seen as ways to make beneficial technologies available to other industry players while still reserving defensive rights. For example, Tesla made a pledge in 2014 to allow anyone to use their patented technologies for electric vehicles, so long as they have not come after Tesla or any third parties with their own patent infringement claims on electric vehicles.

Overall, decisions like this may benefit the gaming community in becoming a more inclusive place. Experiences once unavailable to some may become available, and sharing technologies may mean that individuals will have access to more game experiences outside of just one publisher.

Check back here for future posts covering game related patents, trademarks, copyrights, and more!

Feb

2021

Warner Brothers Granted Patent for Nemesis System from Middle Earth Video Games

**Warner Brothers Granted Patent for Nemesis System from Middle Earth Video Games**

The United States Patent and Trademark Office (“USPTO”) today (February 23, 2021) granted Warner Brothers Interactive Entertainment’s (“WB”) patent on the nemesis system from Middle Earth: Shadow of Mordor and Middle Earth: Shadow of War. U.S. Patent No. 10,926,179 (“the ’179 Patent”), titled “Nemesis characters, nemesis forts, social vendettas and followers in computer games” was filed in March 2015, after the September 2014 release of Middle Earth: Shadow of Mordor. The ’179 Patent was rejected and revised six times before the USPTO allowed the case on October 23, 2020.

The nemesis system is a game mechanic in WB’s Middle Earth games that makes unique antagonists out of otherwise ordinary reoccurring orcs a player encounters during the game. If an orc survives an encounter with a player, whether that be escaping to fight another day, or killing a player, that orc may level up, become more powerful, and/or acquire new abilities. In its next encounter with the player, that orc’s dialogue may reference the previous encounter as it taunts the player.

Claim 1 of the ’179 Patent reads as follows:

“A method comprising:

controlling, by a processor, game events in a computer-implemented game, the game events involving an avatar that is operated in response to input from a player, and a first non-player character that is controlled by the processor to respond to and automatically oppose avatars based on first character parameters defined in a computer memory;

detecting, by the processor, occurrence of a predefined one of the game events involving an interaction between the avatar and the first non-player character;

changing, by the processor, second character parameters defined in at least one of the computer memory or a second computer memory for control of a second non-player character in the game based on the detecting, wherein the second non-player character is controlled by the processor to respond to and automatically oppose avatars based on the second character parameters defined in the at least one of the computer memory or the second computer memory; and

outputting, to an output device, an indication of the second character parameters that are changed by the changing.”

In order for the application to be approved, WB made several amendments to its claims. For example, in Claim 1, WB changed “occurrence of a predefined game event involving the first non-player character” to “occurrence of a predefined one of the game events involving an interaction between the avatar and the first non-player character.” Additionally, WB added “and automatically oppose avatars” to the language in Claim 1. More detail was also added with the addition of “wherein the second non-player character is controlled by the processor to respond to avatars based on a second set of character parameters defined . . . .”

In previous rejections, the U.S. Patent & Trademark Office noted that the nemesis system is similar to Crusader Kings II, and Warner’s own Batman: Arkham series. The USPTO also initially rejected many of the claims as unpatentable as obvious under 35 U.S.C. § 103 over U.S. Pub. 20070129418, titled “Method and System for Allocating Resources in a Video Game,” U.S. Pub. 20080139318 titled “Virtual Environment with Formalized Inter-Character Relationships,” U.S. Pub. 20040259613 titled “Gaming machine and computer-readable program product,” and U.S. Pub. 20150238862 titled “Game control method, system, and non-transitory computer-readable recording medium,” among others.

Oddly, WB did not submit any information disclosure statements (“IDS”) to the USPTO during prosecution—all art cited during prosecution was raised by the USPTO. An IDS is a submission disclosing relevant prior art that the applicant is aware of. WB is a sophisticated video game developer with knowledgeable software engineers, so it is somewhat surprising that by omission, it claims that it had no knowledge of any prior art even remotely related to the invention claimed in the ’179 Patent.

The ’179 Patent is valid until 2035, and gives WB the right to enforce its patent against others. However, any enforcement action would inherently expose the ‘179 patent to validity challenges based on prior art not identified while the application was pending at the USPTO.

Since the Alice v CLS Bank case, the USPTO has been trending away from granting patents on video game play mechanics. Whether the granting of the ‘179 patent is a reversal of that trend, an oversight, or an anomaly remains to be seen.

Feb

2021

EA Sports College Football is Coming Back

On February 2nd, Electronic Arts (“EA”) announced that it is bringing back its EA Sports College Football video game in partnership with the Collegiate Licensing Company to license the use of over 100 schools and their uniforms, stadiums, and mascots. EA is promising to release the title while navigating an ever-evolving landscape of name, image, and likeness rights for student athletes. While EA has promised that the game will return in either case, it is presently unclear if new laws and regulations will permit them to obtain player likenesses for inclusion in the game, or if the game will have to be made without such likenesses.

Under current NCAA rules, student athletes who receive any compensation for their name, image, or likeness are rendered ineligible from play. Due to those rules, EA was able to license rights for schools, conferences, and bowl games, but not individual players. EA’s annual NCAA Football series thus rendered football players on each team as nameless avatars represented by vague physical characteristics such as their height, their jersey number, and the team logo on their uniform.

The NCAA Football series was originally cancelled in 2013, after players brought a class-action lawsuit against EA for violating their right of publicity and antitrust law by using their names and likenesses without compensation. In the suit, In re: NCAA Student-Athlete Name & Likeness Licensing Litigation, the Court applied the transformative use test to assess whether the Plaintiffs’ right of publicity was violated. As we detailed in our previous coverage of the suit, the five factors in the transformative use test are whether: (1) the celebrity likeness is one of the raw materials from which an original work is synthesized; (2) the work is primarily the defendant’s own expression if the expression is something other than the likeness of the celebrity; (3) the literal and imitative or creative elements predominate in the work; (4) the marketability and economic value of the challenged work derives primarily from the fame of the celebrity depicted; and (5) an artist’s skill and talent has been manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit the celebrity’s fame. The Court held that the use of the players’ likeness was not a transformative use because EA did not go beyond merely directly copying real-life people, reasoning that, though EA never used any names, they represented the named Plaintiff as “what he was: the starting quarterback for Arizona State and Nebraska, and the game’s setting is identical to where the public found [Keller] during his collegiate career: on the football field.” EA and the Collegiate Licensing Company settled with the athletes for $40 million, and the NCAA settled with the players for $20 million.

In a similar case, Hart v. Electronic Arts, Inc., Rutgers University quarterback Ryan Hart sued EA for creating a nameless quarterback character in his likeness, using his height, weight, number, hair color and style, body type, skin tone, and even his choice of accessories in its NCAA Football video game. The Court found that EA’s use of players’ likenesses was non-transformative because the realistic depictions of players in the game are the “sum and substance” of these digital facsimiles” because the goal of the game was to “create a realistic depiction of college football for the users.”

The use of NCAA players’ likenesses also raises antitrust issues. The NCAA mandates very specific rules on what compensation may be offered to student athletes, such as tuition, meals, board, and a cost-of-living allowance adjusted by location, all of which must be provided by the universities themselves. In O’Bannon v. NCAA, basketball player Ed O’Bannon sued the NCAA and Collegiate Licensing Company for licensing his name, image, and likeness to EA without his consent or compensation. O’Bannon argued that the NCAA had total control over players’ rights because players do not have a proper bargaining position. The Ninth Circuit found that the NCAA’s amateurism rules barring student athletes from compensation for use of their names, images, and likeness violate the Sherman Antitrust Act.

However, this legal landscape continues to evolve. While there is currently no practical way for the upcoming College Football game to include the likenesses of any players, there are some emerging paths that may allow EA to license players’ likenesses in the future. First, legislative action may provide new avenues. For example, Florida passed legislation to mandate that student athletes can receive payment for use of the name, image, and likeness that is set to take effect on July 1, 2021, and California passed a similar law that will take effect on January 1, 2023. Further, the Supreme Court itself may rule current NCAA restrictions illegal. The Court announced in December that it will soon hear a consolidation of two cases, National Collegiate Athletic Association v. Alston and American Athletic Conference v. Alston, following a May decision by the 9^th Circuit that NCAA limits on education-related benefits for student athletes violate antitrust laws.

Second, in view of these legal challenges, the NCAA itself may adopt new rules and regulations that allow for at least some player compensation without threatening eligibility. The College Football Nerds YouTube Channel explained several possibilities for licensing in the future. For example, players could potentially unionize, and the players’ union could negotiate on behalf of players to license their likenesses. Currently, each player would have to be contracted with individually, resulting in thousands of contracts, and the NCAA amateurism rules do not allow endorsement deals. If the NCAA were to allow a Collective Bargaining Agreement, then players could possibly be compensated as a group rather than as individuals, with money spread equally across all players in the sport. The NCAA could also create a clearinghouse that would license the likeness of a player. There is a fear that individual endorsements could become a backdoor to paying players to attend a certain school. College football has open recruitment with no player draft, so this could enable boosters of the wealthiest schools to simply outbid for all the best players by funneling money through guaranteed endorsements. This could be mitigated by having endorsements run through the clearinghouse, which keeps a small portion of the money (to incentivize it to make deals), and gives the rest as a portion to the player, a portion to the general scholarship fund, a portion to the NCAA, and a portion that is distributed across all players. However, if players are not given a substantial cut for their personal endorsement deals, with the money instead only being distributed to other players, then that may cause freeloader or incentivization problems.

Analysis:

EA is positioning itself well in response to a quickly-evolving set of circumstances. A few years ago, there was no possible way to contract with players for their likeness, and that created a largely impossible situation given jurisprudence requiring player compensation. However, it appears increasingly likely that name, image, and likeness payments will be permitted in the near future (possibly within a year). For example, the July 1, 2021, date upon which the Florida law goes into effect has the NCAA rapidly moving to get ahead of the law and create new guidelines for player compensation and/or collective bargaining that will be legally compliant in order to avoid a free-for-all. Given that the last college football game, NCAA Football 2014, was developed for gaming consoles now two generations old, it is likely that EA will need a few years to develop an all-new game with the 4K graphics that gamers expect. By starting on the game now, EA positions itself to be ready if and when any route to pay players to user their actual names and likeness becomes available. While we have no reason to question EA’s assertion that they will release a game regardless, one has to think the current timing is no coincidence.

Thank you to our colleague and College Football Nerds host Josh Davenport for his expertise and analysis. College Football Nerds is one of the largest YouTube channels covering college football, with over twenty-five thousand subscribers, and is known for their unbiased, analytics-heavy approach to the sport.

Jan

2021

Court Sends Jurors Steam Controllers in First Zoom Patent Jury Trial

Ironburg Inventions Ltd. v. Valve Corporation
Case No. 2:17-cv-01182
United States District Court for the Western District of Washington
Filed December 3, 2015

Ironburg Inventions Ltd. (“Ironburg”) is suing Valve Corporation (“Valve”) in the first patent jury trial to be held over Zoom. Ironburg claims that Valve’s Steam Controller infringes its U.S. Patent Nos. 8,641,525 and 9,089,770 for controllers with back controls operated by a user’s middle fingers, which conventional controllers do not have.

To aid the jury in its determination, the Court ordered that each juror be mailed a Steam Controller so that they may reference it during the Zoom trial. The Court instructed jurors “not to open the boxes or inspect the devices until told to do so.” In its response to the Court’s order, Ironburg stated that it does not object to this plan, provided that it may also view the devices to “ensure all parties agree the correct devices are sent to and received by the jurors . . . in an attempt to mirror the procedure for physical evidence that would likely be employed for an in-person jury trial.” Valve did not submit a response objecting to the Court’s order.

Jan

2021

Join us in raising money for the Extra Life charity!

Our thanks to Andreas Lober and the team over at Beiten Burkhardt for continuing to host regular virtual games law meetups! Yesterday was a great event, sharing good vibes all around. Of course, Ross and I couldn’t keep our mouths shut and embraced the verboten words (covid, corona, pandemic, trump, brexit, and others) as a sort of madlibs challenge.

Under the rules, we will generate even more good vibes by donating to charity. And we invite you to join us in raising money for a good cause! The Patent Arcade has started a fundraising team for the Extra Life charity:

https://www.extra-life.org/team/56436

Extra Life is a popular charitable organization in the games community, and they raise money for the Children’s Miracle Network Hospitals across the US and Canada. Donations fund critical treatments and healthcare services, pediatric medical equipment and charitable care.

Banner Witcoff joined us in matching our initial donations. Let’s see what the game law community can do!

Oct

2020

Twitch Deletes Content for Copyright Infringement Without Warning

On October 20th, many Twitch streamers received an email from Twitch notifying them that content on their channels was subject to Digital Millennium Copyright Act (“DMCA”) takedown notifications for copyright infringement, and that the infringing content had been deleted. Twitch did not identify which content received takedown notices, or give streamers an opportunity to dispute the claims or save the content to their personal storage prior to it being removed. Because of this, streamers are unsure of what content was deleted, as well as what copyrighted material the deleted content contained.

The safe harbors in Section 512 of the DMCA require that Twitch “responds expeditiously to remove, or disable access to, the material that is claimed to be infringing” once it is notified by a copyright owner of claimed infringement. Otherwise, Twitch could potentially be liable for any copyright infringements occurring on its services.

This follows a wave of takedown notices issued in June over copyrighted music that we previously covered. Since then, Twitch has implemented Audible Magic, a content identification service, to identify clips that may potentially contain copyrighted music and automatically delete them without penalizing streamers with a copyright strike to their account. Additionally, Twitch has created “Soundtrack by Twitch,” a music library that streamers can use during their streams for free without worries of copyright infringement. Twitch has also upgraded its management for clips (small portions of live streams that can be saved, typically of highlights from the stream) to include a better way to sort and delete clips (including all at once), as well as controlling who may create clips of a stream.

Although Twitch had paused its processing of DMCA takedown notifications following the June influx, its normal policy is to record a strike to a streamer’s account for each violation, and ban a user after three strikes, However, in Twitch’s October 20th email, it referred to this latest round of takedown notifications as “a one-time warning,” and noted that it will “resume the normal processing of DMCA takedown notifications” on October 23rd.

Overzealous and opaque DMCA handling remains one of the most controversial problems in copyright law. Many see a disturbing trend in content owners abusing automated takedown systems to improperly restrict de minimis use or other fair uses.

Oct

2020

Microsoft Purchases ZeniMax Media, Parent Company of Bethesda Softworks, id Software, Arkane Studios, and MachineGames

On September 21st, Microsoft announced that it is acquiring ZeniMax Media, the parent company of Bethesda Softworks, id Software, Arkane Studios, MachineGames, and more, for $7.5 billion. These studios produce many high profile games, such as Elder Scrolls, Fallout, Dishonored, Quake, Wolfenstein, Doom, Starfield, The Evil Within, and Prey.

Notably, Microsoft’s ownership of Bethesda means that Microsoft will now own the studio publishing PlayStation 5 exclusives Deathloop and Ghostwire: Tokyo. Although Microsoft will honor the exclusivity of the PlayStation 5 exclusives, it is possible that other future games produced by the acquired studios could be exclusive to Xbox and PC. Microsoft has also stated that games produced by its studios will be available on its Game Pass service from launch.

This acquisition may play a role in forward thinking consumers’ decisions whether to purchase an Xbox Series X or a PlayStation 5. The possibility of games such as Bethesda’s long awaited Elder Scrolls VI being an Xbox exclusive may sway some consumers to Team Xbox.

These latest acquisitions follow Microsoft’s purchase of Minecraft for $2.5 billion in 2014. After its purchase of Minecraft, Microsoft continued the tradition of the MineCon event. Now that Microsoft owns Quake, we will have to see if QuakeCon continues as well.

Sep

2020

U.S. Patent no. 9,555,334: System and method for managing virtual worlds mapped to real locations in a mobile-enabled massively multiplayer online role playing game (MMORPG)

Issued January 31, 2017 to Qualcomm Inc.
Priority Date December 13, 2006

Summary:
U.S. Patent No. 9,555,334 (the ‘334 Patent) relates to wireless communications on a mobile device for interacting with the virtual world in an MMORPG. MMORPGs are games designed to be played by a large number of people at once. In these games players can customize their character’s appearance and attributes. In these MMORPG video games players are able to interact with other players to advance their progress as well as engage in social and other events in the game world. MMORPGs exist in a persistent state where the game world is always active and other players are constantly playing the game. These games also typically feature Player versus Player as well as Player vs. Environment mode which allows players to play in either multiplayer or single player settings. The ‘334 Patent provides a method and apparatus for MMORPG players to access an aspect of the gameplay while using a mobile device. The wireless device runs a mobile version of the MMORPG server which would support at least one game mode available in the full version of the game. This system could also support location based gaming. The invention allows for new gameplay opportunities previously not possible before the advent of mobile gaming.

Abstract:
Apparatus and methods provide a player of a massively multiplayer online role playing game (MMORPG) to participate in at least one aspect of the MMORPG while using a wireless device. The wireless device executes a mobile MMORPG client, which interfaces with the game server(s) of the MMORPG via a mobile MMORPG server. A location based gaming mode for use with the wireless device is disclosed.

Illustrative Claim:
1. A method for location based gaming in a massively multiplayer online role playing game (MMORPG) supporting a virtual world, comprising: administrating, via a game server, a travel task portion of a quest by a player character in said MMORPG, said travel task portion requiring said player character to travel from a virtual world location A to a virtual world location B, said administrating comprising: receiving a real world location in a real world of a player of said player character; mapping, based on said real world location of said player a real world location A′ corresponding to said virtual world location A, a real world location B′ corresponding to said virtual world location B, wherein said real world locations A′ and B′ satisfy one or more distance criteria associated with said quest, wherein the mapping selects the real world location B′ for mapping to said virtual world location B based at least in part upon the real world location B′ being a point-of-interest for the player in the real world; monitoring said real world location of said player until said real world location of said player corresponds to said real world location A′; notifying said MMORPG that said player has reached the real world location A′; monitoring said real world location of said player until said real world location of said player corresponds to said real world location B′; notifying said MMORPG that said player has reached the real world location B′; and advancing the player character directly from the virtual world location A to the virtual world location B after said MMORPG is notified that said player has reached the real world location B′.

Jun

2020

Mass DMCA Takedown Requests Issued on Twitch

? This week, we've had a sudden influx of DMCA takedown requests for clips with background music from 2017-19. If you’re unsure about rights to audio in past streams, we advise removing those clips. We know many of you have large archives, and we're working to make this easier.

— Twitch Support (@TwitchSupport) June 8, 2020

Twitch streamers received copyright strikes en masse over the weekend of June 5th due to an influx of copyright infringement claims under the Digital Millennium Copyright Act (“DMCA”) by an entity that claims to represent the Recording Industry Association of America (the “RIAA”). These copyright strikes risk causing many popular streamers to be banned from the website, as Twitch permanently bans accounts once they reach three strikes.

Twitch allows streamers to save portions of their live streams as “clips,” which may be viewed on the Twitch website. Some streamers have large clip archives with hundreds, or even thousands of clips.

The DMCA takedown requests received by Twitch allege that background music in certain clips from 2017-2019 infringe the RIAA’s copyrights. At the time of the takedown requests, Twitch did not have a method in place by which to sort through or delete clips all at once. In a June 10th update, Twitch indicated that it will be implementing a way to allow streamers to sort through and delete large clip archives. Twitch also plans to extend its use of Audible Magic, a content identification service, to identify clips that may potentially contain copyrighted music and automatically delete them without penalizing streamers with a copyright strike to their account. Twitch indicated that it will take a few weeks for these new features to become available, and that in a few months Audible Magic will also apply to newly created clips (and not just past clips) as well.

Twitch asserts that this is the first time it has received mass DMCA claims, but these sorts of DMCA requests are far from new on other websites. YouTube, for example, has been dealing with large quantities of DMCA requests for years. To avoid having to delete YouTube videos that might potentially include copyrighted audio, YouTube has a function that mutes the audio track of a video for a period of time when the audio track allegedly contains copyrighted material. Twitch might have a harder time implementing such a feature: because Twitch clips can be no longer than 60 seconds, it seems likely that an entire clip might have to be muted if a streamer was playing music in the background.

May

2020

Determining the Article of Manufacture in Augmented Reality and Virtual Reality Design Patents

There’s a super interesting article just published in the AIPLA quarterly journal by one our (Banner Witcoff’s) law clerks, Sonia Okolie, on design patents within augmented and virtual reality. She does a great job analyzing the relevant issues and proposes some interesting solutions.

This article has further applicability in the wake of the Supreme Court’s ruling in Apple v. Samsung, which held that the article of manufacture (for purposes of determining infringer’s profits) could be the entire article, or could be something less than the entire article.

Based on the increasing popularity of AR/VR systems, applications, and games, this is an important issue that will need to be addressed, either by courts or by congress. Sonia does a great job laying the foundation for such a discussion.

Here’s the Abstract:

Augmented and virtual realities provide users with multisensory immersive experiences. As the technology involved in augmented and virtual realities continues to develop, so too does the likelihood of copying, given how lucrative and innovative this technology has proved itself to be. Design patents are an obvious choice for protecting the aesthetic appearance of these dynamic three-dimensional digital models. Design patent eligibility statute 35 U.S.C. § 171 protects the ornamental appearance of a design applied to an article of manufacture, without elaborating further on the scope of the term. A thorough analysis of the statutory and judicial constructions of the term article of manufacture, as well as the subsequent risks to finding patentability, yield the same conclusion: either congressional or judicial action must be taken to ensure proper protection for these designs. This Note proposes a two-part approach for addressing the article of manufacture for augmented and virtual reality design patents. The first step proposes that courts consistently construe the article of manufacture broadly, while the second step, in the alternative, proposes an amendment to the language of § 171 in an effort to ensure protection for augmented and virtual reality designs, by making deliberate statutory allowances for future technologies.
https://www.aipla.org/detail/journal-issue/quarterly-journal-48-1

The article itself is paywalled, but if you have access to the journal, I highly recommend giving it a read.

May

2020

Nintendo Escapes Digital Pre-Order Dispute in EU

Nintendo’s digital pre-order policy has been found to not violate EU consumer rights laws.

Following hearings in December 2019, the EU court dismissed the lawsuit in favor of Nintendo. The German Consumer Protection Authority has already appealed the ruling.

This lawsuit, brought by the Norwegian Consumer Council, accused Nintendo of violating European consumer rights law because Nintendo refused to cancel digital orders. Specifically, the Norwegian Consumer Council alleged that Nintendo’s no-cancelation policy violated the Consumer Rights Directive, which provides that customers in the European Union have the right to withdraw and refund purchases if distribution has not begun.

As more video games move towards predominantly digital distribution it will be interesting to see how consumers, the market, and video game publishers respond to the new paradigm.

We will provide more updates as the case continues.

May

2020

Blizzard Takes New Stance on Custom Game IP

Following the release of the remastered edition of Blizzard Entertainment’s classic real-time strategy game “Warcraft 3” as “Warcraft 3: Reforged,” Blizzard also updated its Custom Game Acceptable Use Policy. There were two notable changes to this policy that has caused a reaction among long-time fans of the franchise.

The new policy bans any custom games that use copyright material. This is not an unusual requirement in games which permit users to submit in-game modifications, but fans have reacted negatively to the change given the history of Warcraft 3. Originally, Warcraft 3’s map editor was heralded as revolutionary, as it allowed users to creative complex and breathtaking scenarios using the Warcraft 3 engine. Warcraft 3’s map editor also allowed users to modify the textures of the game, and users quickly began to add content from their favorite franchises, such as Super Mario, Dragon Ball Z, and Lord of the Rings. While Blizzard’s approach to protect itself from intellectual property infringement liability is not surprising, it is notable that when Warcraft 3: Reforged was announced at Blizzcon a few years ago, it was announced that all custom maps compatible with the original game (that is, Warcraft 3) would be playable in the remastered version of the game (that is, in Warcraft 3: Reforged). In practice, users’ experiences have been quite different: any users that dare play maps comprising content from other franchises (e.g., Nintendo games) is swiftly banned, even if those maps had previously been playable in Warcraft 3.

Furthermore, the much larger issue that has drawn the ire of Blizzard fans online has been the change to Blizzard’s policy detailing the ownership of custom games in the Warcraft 3: Reforged engine. According to the new policy, all custom games created in Warcraft 3: Reforged belong to Blizzard, not the creators. In the same vein, Blizzard has stated that they own an instant and total copyright ownership of all custom games created in Warcraft 3: Reforged. While this move is also unsurprising, it does mark a distinct shift from Blizzard’s more relaxed attitude with respect to original Warcraft 3 custom games.

The latter policy change may be the direct result of the overwhelming success of the Defense of the Ancients custom games in Warcraft 3, which later became the wildly successful stand-alone MOBA games Dota 2 and League of Legends. Because Blizzard did not maintain a property right over the original Defense of the Ancients custom games, competing developers Valve and Riot Games both made monumental profits from these games while Blizzard was left with nothing. Going forward, it appears Blizzard does not want to lose out on the battle for new and hugely profitable game designs that emerge using their tools.

While it does not appear any new legal issues will emerge from this change, it will be fascinating to see how video game companies adjust to the new IPs their games create and how they can try to monetize the inventions they helped make possible.

May

2020

Crytek Delays Launch of Lawsuit Against Star Citizen Devs Before Suddenly Settling

Crytek GMBH v. Cloud Imperium Games Corp. and Roberts Space Industries Corp.,
United States District Court for the Central District of California, Western Division
Case No. 2:17-cv-08937-DMG-FFM

Crytek, a video game developer and creator of the CryEngine, has decided to temporarily dismiss its lawsuit against Cloud Imperium Games and Roberts Space Industries, the developers of the video game “Star Citizen.”

Crytek originally sued the developers of Star Citizen back in 2017 for a breach of contract claim as well as copyright infringement. Specifically, according to Crytek’s complaint, the developers of Star Citizen breached an agreement which permitted the developers to use CryEngine to develop Star Citizen but barred those developers from using CryEngine for any standalone products (such as a separate title, “Squadron 42”). According to Crytek’s complaints, Squadron 42 may have been developed using CryEngine. Cloud Imperium Games maintained that such an allegation was “meritless.”

During the pendency of its case, Crytek took steps to delay the lawsuit until the release of Squadron 42. This, it seems, was an attempt to ensure that Crytek could claim damages for the sale of Squadron 42. But, unexpectedly, in mid-February, both Crytek and developers Cloud Imperium Games and Roberts Space Industries agreed to settle the case. The details of the settlement have not been made public. Given the rapid settlement after Crytek’s maneuvers around filing and dismissal, it is possible that Crytek discovered facts that made its case less strong than they had initially thought.

This marks the end of this legal dispute that had continued for years and exemplifies some of the complexity that can arise in video game engine licensing schemes.

Apr

2020

Video Game Chic

In a totally unexpected twist, luxury fashion brand Louis Vuitton has announced a partnership with video game developer Riot Games to design in-game champion skins for the game League of Legends.

In addition to the in-game champion skins, Louis Vuitton will be releasing a capsule collection designed by director Nicolas Ghesquiere and a Louis Vuitton-designed traveling case for the League of Legend’s World’s Championship trophy. This is not the first time Louis Vuitton has designed a trophy traveling case: they also designed a traveling case for the World Cup soccer trophy.

Riot Games stated that eSports is “the next frontier for a lot of brands who have been in the traditional sport space.” This partnership is planned ahead of the upcoming League of Legends World Championship, which ends on November 10 in Paris this year.

This is not the first partnership Riot Games has engaged with outside the video game space. Earlier this past year, Riot partnered with a number of K-Pop stars to release a music video called K/DA – POP/STARS. That music video has already achieved more than 260 million views on YouTube. Riot has also partnered with other music celebrities, such as Imagine Dragons and Zedd.

This is far from the first major partnership in the video game world. For example, recently, Epic Games’ Fortnite featured NFL-branded content. As eSports continues to gain prominence and popularity, it seems only natural for partnerships with brands hoping to reach new consumers will begin to emerge and become more common.

Developments like these are exciting: the video game industry has expanded into many new and unfamiliar areas over the past couple years! Of course, game companies and potential sponsors should still exercise caution: even the best-intentioned brand deals require careful negotiation and thoughtful contracts.

Apr

2020

Hot Sauce Dismissed in New York Court

Champion v. Take-Two Interactive Software, Inc.,
Supreme Court of New York, New York County
Decided May 10, 2019
Case No. 158429/2018

Celebrity entertainer Phillip “Hot Sauce/Hot Sizzles” Champion sued video game developer Take-Two, alleging a violation of his right to privacy for Take-Two’s use of his name and likeness in the basketball videogame NBA 2K18. The Court eventually dismissed the lawsuit, but in doing so considered interesting questions regarding New York’s publicity statute and its application to the eSports and video game industries.

New York’s publicity laws provide criminal charges and civil liability for the use of a person’s name, portrait, or picture when used for advertising or trade purposes without prior written permission. This right can extend to any likeness that has a “close and purposeful resemblance to reality.” New York courts have previously held that video game avatars can satisfy this element.

Take-Two moved to dismiss Champion’s lawsuit, making three arguments:

First, that the name and image of the “Hot Sizzles” avatar in NBA 2K18 did not sufficiently resemble Plaintiff such that the use was not actionable under New York Civil Rights Law 50 and 51;
Second, that the use of the “Hot Sizzles” avatar in NBA 2K18 was not actionable because it fell within the incidental use exception; and
Lastly, that NBA 2K18 is protected speech and expression such that it did not fall under the definitions of “advertising or trade” as required by New York publicity laws.

In this case, unlike the resemblances in the Lohan and Gravano Grand Theft Auto cases, the “Hot Sizzles” avatar in NBA 2K18 bore no resemblance to Champion. This did not bode well for Champion’s case: even in the Lohan and Gravano cases, where the avatars were much more similar to the real individuals, the uses of those avatars were still not actionable as a matter of law. Champion asserted that the use of his name further increased the resemblance but, for this to be true, his actual name would have to be used in the video game. Nicknames do not qualify for this same level of protection. Stage and theatrical names may qualify for protection, but the Court strangely solves this problem as well.

The Court, using sources such as Wikipedia and IMDB, concluded that Champion was not commonly known as “Hot Sizzle” – rather, Champion was more often known by the nickname “Hot Sauce.” As such, at most, “Hot Sizzle” was a secondary nickname. This led the Court to further conclude that such a use of “Hot Sizzle” was definitively incidental in nature. Based on these findings, the Court dismissed Champion’s complaint.

This case provided an interesting dive into the development of the right of privacy, especially in video games. It will be interesting to see how this right develops as games become increasingly complex, and the ability to add a multitude of new characters increases the probability that such characters may infringe on a right of privacy.

Apr

2020

Duke Nukem Goes Retro in Music Copyright Suit

Robert C. Prince v. Gearbox Software LLC et. al.
United States District Court for the Eastern District of Tennessee, Northern Division
Case No.: 3:19-cv-00380
Filed: September 27, 2019

Bobby Prince, the composer of the soundtracks for the video games Doom, Wolfenstein 3D, and Duke Nukem 3D, has filed a copyright infringement suit against developer and publisher Gearbox, developer Valve, and Gearbox’s CEO Randy Pitchford. Prince asserts that Gearbox used Prince’s work in a recent rerelease of the video game Duke Nukem 3D. Prince says he was not notified or compensated for this use of his work.

Prince asserts that Gearbox and Randy Pitchford were aware and admitted that they lacked a valid license to the music but proceeded to use the music in the game’s re-release anyways. Prince further alleges that the defendants subsequently refused to remove the music from the game. It appears that Prince’s allegations against Valve relate to it distributing Gearbox’s re-releases: according to Prince, Valve ignored takedown notices and continued to distribute the game on its popular video game marketplace, Steam, despite being notified and aware that the music in the game had not been licensed.

Prince first composed the soundtracks for Duke Nukem 3D back in the 1990s while working for developer Apogee. The agreement Prince had with Apogee stipulated that the music would remain with Prince as the composer. The agreement also provided that Prince would be entitled to royalties for its use in-game. The rights to the Duke Nukem series were later acquired by Gearbox, and Gearbox then rereleased the game Duke Nukem 3D during the game’s 20^th anniversary of its 1996 release.

The suit alleges that Gearbox was both aware that the music was still owned by Prince and that its use would require Prince’s permission. In fact, according to the complaint, the digital files for the music note that Prince had retained the copyright in the music. According to Prince’s complaint, Prince shared a copy of the original copyright agreement between Prince and Apogee and was later assured by Pitchford that he would be “taken care of.” However, Prince was never compensated nor was the music licensed for its use in the 20-year rerelease of Duke Nukem 3D.

We will continue to provide updates as they become available for this case.

Mar

2020

Summer Job with the Patent Arcade

Summer Intern – Patent Arcade Washington, DC

Banner Witcoff, a recognized leader in the practice of intellectual property law, is seeking a summer intern to work in its Washington, DC office for the summer of 2020. As a Summer Intern, the student will assist in researching new and historical video game IP lawsuits, writing content for publication on the PatentArcade.com blog, researching and updating our database of video game patents, working with PatentArcade.com attorneys to research developing areas of video game IP law, developing topics and potentially preparing a paper for submission to the Interactive Entertainment Law Review

Successful candidates:

Must be enrolled in an accredited US law school.
Must have an interest in video game and IP law.
Must not be eligible to take the patent bar

Please upload your resume with cover letter, law school and college transcripts, and a writing sample. Candidates should redact social security numbers and similar information before submitting materials. Electronic documents should be sent in Microsoft Word or PDF format.

*This is a paid position

Banner Witcoff is an Equal Opportunity Employer and provides employees with a work environment free of discrimination and harassment. The Firm will not discriminate against any applicant for employment because of race, color, religion, national origin, sexual orientation, sex, pregnancy, age, mental or physical disability, genetic information, legal citizenship or any other status protected by law.

Apply here.

Mar

2020

False Start for Paparazzi in Copyright Suit

Xclusive-Lee Inc. v. Hadid,
Case Number 1:19-cv-00520,
United States District Court for the Eastern District of New York

A copyright infringement lawsuit against supermodel Gigi Hadid by the paparazzi group Xclusive-Lee Inc. was recently dismissed because the plaintiff failed to formally register a copyright for the allegedly infringed photograph.

Hadid was sued by Xclusive-Lee Inc. (“Xclusive”) for posting a photo on Instagram which was allegedly originally taken by a member of Xclusive’s paparazzi. The suit alleged that Hadid posted the photograph to Instagram without a license or permission from Xclusive.

Hadid posted the allegedly infringing photo photo online in October 2018, but subsequently deleted the photo. Xclusive’s complaint against Hadid alleged that she had used the photo without permission and had copied it to her Instagram page.

The District Court granted Hadid’s motion to dismiss the suit after it was determined that Xclusive had applied for, but had not actually been granted, a copyright registration for the photo. According to the Court, an application for a copyright alone is not enough to meet the Supreme Court standard set forth in Fourth Estate Public Benefit Corp. v. Wall-Street.com, 139 S.Ct. 881 (2019), which states that “copyright owners can’t sue for infringement until the work at issue is formally registered by the U.S. Copyright Office.” Xclusive was unsuccessful in arguing that, because Fourth Estate was decided after Xclusive filed its complaint, Fourth Estate should not apply to the case.

This case is similar to the many cases filed against Epic Games, Inc. relating to in-game dances in the popular video game Fortnite. Like Xclusive’s case, the many Fortnite dance lawsuits were dismissed because the plaintiffs failed to register their copyright. In the case of Fortnite, it appears that the various plaintiffs plan to refile suits if and when they receive copyright protection for their dances. It is unclear whether Xclusive has similar plans.

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Video Game Chic

Hot Sauce Dismissed in New York Court

Duke Nukem Goes Retro in Music Copyright Suit

False Start for Paparazzi in Copyright Suit

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**Warner Brothers Granted Patent for Nemesis System from Middle Earth Video Games**