the District of New Jersey by the Third Circuit Court of Appeals after the Court of
Appeals held that the grant of summary judgment was in error and that further
proceedings were necessary. The case
arises from Plaintiff Ryan Hart (individually and on behalf of all others
similarly situated) alleging that Electronics Arts (EA) NCAA Football series of games violated his right of publicity by
appropriating his likeness in NCAA
Football 2004, 2005, and 2006. Hart was a successful quarterback for Rutgers
University from 2002 through the 2005 season, taking his team to their first
Bowl game since 1978. The case was
originally dismissed after EA filed a motion for summary judgment; the district
court held that EA NCAA games were
protected under the First Amendment.
conducted a balancing test when coming to its decision to decide whether
First Amendment rights superseded the right of publicity. In conducting this analysis, the court looked
to three tests: the predominant use test, the Rogers test, and the transformative use test. The predominant use test maintains that,
“If a product is being sold that predominantly exploits the commercial
value of an individual’s identity, that product should be held to violate the
right of publicity and not be protected by the First Amendment.” The court did not, however, that if the
predominant purpose is to comment on or about a celebrity (such as parody) more
weight would be given to the expressive values.
The court ultimately declined this test stating that at best is was very
subjective, but at worst is was arbitrary forcing judges to not only be,
“impartial jurists” but also, “discerning art
critics.” The court then turned to
the Rogers Test from Rogers v. Grimaldi. This test relies on a theory of trademark
law, specifically false endorsement, and it holds that the use of celebrity
likeness is acceptable as long as it is not simply, “a disguised
commercial advertisement for the sale of goods and services”. The court also rejected this test stating
that it would be unwise to determine that Hart was unable to retain his right
of publicity because his likeness was being used in the very same arena from
which it was derived. The court reasoned
that it made sense that any use of Hart’s likeness would be in a football
setting since that is where his celebrity came from. After rejecting the predominant use and Rogers test, the court adopted the
transformative use test. This test
requires that an artist adopting the likeness of another must contribute
something more than a “merely trivial” variation to be protected
under the First Amendment. However, the
threshold to meet this test is rather low, a work is transformative if it adds
“new expression”. That alone
is sufficient to fall within the boundaries of the transformative use
test. Ultimately, the Court of Appeals
decided that NCAA Football was not
sufficiently transformative to attain First Amendment protection because it
adds nothing creative to Hart’s likeness.
EA argued that all player avatars could be customized, therefore
satisfying the transformation requirement.
However, the court held that the main appeal of Hart’s likeness was
maintaining it as is so that fans could play as him. Furthermore, any customization was not a
transformation of Hart’s likeness allowing the use, but was instead a new
creative product that caused the use to cease to exist.
Third Circuit’s opinion was filed on May 21, 2013. If, after further proceedings, the District Court
determines that Hart’s right to publicity was affected, it could have a
substantial effect on EA NCAA
series. Because NCAA athletes cannot
receive compensation that in any way relates to their athleticism, it is
unlikely that players would sign away their likenesses to EA as there is little
benefit to be gained. This would make
the game series a potentially huge liability for the company, putting them in a
position that would require they either risk litigation or lose the
distinctiveness of the athletes that fans of the series purchase the game for.
as they become available.
Yesterday there was an Op-Ed in the New York Times presenting the opinion that District Court Judges should use already existing portions of the law more often to shift fees in patent troll litigation. The writers point out that in 3000 cases analyzed, in only 20 of them were fees shifted to the plaintiff. Fee shifting refers to when the court requires the Plaintiff to pay all or some of the Defendant’s legal fees to defend the lawsuit in the first place. Its an interesting, and quick, read. But what makes it REALLY interesting is that it was penned by Judge Randall Rader, Chief Judge of the Federal Circuit Court of Appeals (which hears all patent lawsuit appeals), along with two others. If you are a defendant that appeals a patent case and part of your appeal is fee shifting, cross your fingers that Judge Rader is on your panel. I also wonder how many District Court judges will see the op-ed and give it any consideration in future fee shifting analyses.
It will be interesting to watch as Congress begins to hold hearings to reform copyright law. The Verge recently posted a couple informative articles on the topic. There will likely be much debate over a wide range of topics. If its anything like the negotiations that let to the Copyright Act of 1976, I look forward to seeing what the Copyright Act of 2023 looks like…
WIRED has an interesting article regarding Microsoft’s inclusion of badges as rewards for developers in Visual Studio. As developers write code, an Achievements extension grants badges in much the same way a video game does. Badges are associated with certain accomplishments — both good and bad — and many of the good badges also come with points. The hope is that these virtual rewards will spark competition, and that competition will improve the quality of the work. Read more at WIRED.com.
Microsoft has acquired Twisted Pixel Studios, according to a recent Microsoft press release:
As a step in continuing to deliver Microsoft Studios’ innovative game and entertainment offerings, Microsoft has announced the acquisition of Austin, Texas-based game developer Twisted Pixel, the creative minds behind Xbox LIVE Arcade titles such as “Splosion Man” and the recent Kinect for Xbox 360 title, “The Gunstringer.”
Ross A. Dannenberg publishes new book: “The American Bar Association’s Legal Guide to Video Game Production”
- Patents, Copyright and Trademarks
- Business and Finance Issues
- Risk and Insurance
- Intellectual Property Agreements
- The Children’s Online Privacy Protection Act
- Publishing Your Game
- Licensing and Open Source Material
Mr. Dannenberg is an adjunct professor of copyright law at George Mason University School of Law. Mr. Dannenberg is also the Editor-in-Chief of the Patent Arcade website, a legal blog discussing intellectual property protection of video games.
There’s an interesting article on Law360 today:
Virtual-World Conflicts Lead To Real-World Suits.
Here’s an excerpt from the article:
Law360, New York (June 08, 2010) — As the market for online games expands and the debate over who has the right to control the virtual content heats up, website operators, their users and third parties could find themselves locked in real-world legal battles.Disputes stemming from ownership of virtual property and operators’ terms of service agreements are starting to pop up more often, leading intellectual property experts to speculate that they may become the next hot-button issues to be played out in the courts.
The complete article can be found here.
This patent claims “A squad-based shooter video game [that] allows players to dynamically join and leave the game, while that game is in progress, without the players having to save and restart the game. When a new player joins an in-progress game, a new squad member is allocated to the new player and the screen is split to present a viewing panel for the new player that depicts scenes from the perspective of the new squad member. When an existing player leaves the game, the screen is unsplit to remove the viewing panel for the exiting player and that player’s squad member becomes part of the squad being controlled by the remaining player(s).”
According to Co-Optimus, “[f]rom the patent description, timing and pictures, it appears to be for the 4 player co-op game Brute Force from the original Xbox… Other details in the patent include the ability to switch between squad members on the fly, AI controlled squad mates when not in player control, and hardware details of how it functions.”
It will be interesting to see if Microsoft licenses or asserts this patent against developers of other squad-based games using split-screen where players can join and drop out, or whether they decide to just keep this one in their portfolio.
Penny Arcade Expo (PAX) is a three-day game festival for tabletop, videogame, and PC gamers. They call it a festival because in addition to dedicated tournaments and freeplay areas They’ve got nerdcore concerts, panel discussions, the weekend-long Omegathon event, and an exhibitor hall filled with booths displaying the latest from top game publishers and developers.
I will be speaking on a panel with Seth Krauss (GC of Take Two Interactive), Greg Boyd (attorney), and Thomas Buscaglia (the self-proclaimed “Game Attorney”). It will be a lively discussion of hot legal issues, including events ripped from the headlines to intellectual property to anything else the audience wants to discuss.
Learn more about Penny Arcade Expo and Registration here: http://www.paxsite.com/registration.php.
An entertainment licensing company has begun legal combat with bankrupt video game producer Midway Games Inc. over the licenses for movies, television shows, live action productions and other properties based on the blockbuster game “Mortal Kombat.”Threshold Entertainment Inc. filed an adversary complaint Wednesday in the U.S. Bankruptcy Court for the District of Delaware challenging Midway’s proposed $33 million sale of substantially all of its assets, including all previously released titles and games based on the hit Mortal Kombat series, to Warner Bros. Entertainment Inc. That deal was announced in late May.Threshold claims that it holds perpetual exclusive rights to develop derivative works in film and television based on Mortal Kombat as well as rights to licenses on certain characters that appear in both the video games and the films and TV series based on them.
Its a peripheral issue, so I doubt we’ll track it closely, but will let you know if anything significant comes of it…
Here’s the complaint.
Today the United States Supreme Court granted certiorari in the case Bilski v. Doll. As many readers may know, the case In re Bilski is the case in which the Federal Circuit court of appeals held that business methods are not patentable unless: 1) they transform matter into a different state or thing, or 2) they are tied to particular machine. This will be the first time the U.S. Supreme Court has addressed statutory subject matter under 35 U.S.C. sec. 101 since the 1981 case of Diamond v. Diehr where the Court held that the execution of a physical process, controlled in part by the running a computer program, was patentable.
It will take some time for the case to go through the briefing stage, and then to schedule oral arguments, before the Court will render a decision. In view of the fact that the Court is about to recess for the summer, we probably won’t get a decision on this case until late 2009 or early 2010. We’ll keep you posted nonetheless, as this case could have a major impact on patents for video games and other interactive entertainment and media.
On this day in history, as reported by Wired.com, on May 26, 1981, the USPTO granted the first pure software patent, U.S. Patent No. 4,270,182, to Satya Pal Asija. Video games are computer software, so the ‘182 patent really was a groundbreaker for the industry. The software was a natural-language-interface program called Swift-Answer, an acronym for the contrived name Special Word-Indexed Full-Text Alpha-Numeric Storage With Easy Retrieval.
1) Square Enix reportedly kills Chrono Trigger fan project based on alleged copyright infringement.
The San Francisco Chronicle ran a nice article today about virtual law, including quotes from yours truly. The high point (at least in MY opinion):
But some attorneys set up virtual offices in the world as a kind of advertisement. Intellectual property specialists Banner & Witcoff did just that, and their virtual presence led to their attorney Ross Dannenberg representing one of the highest-profile virtual law cases so far. Like the sex bed case, the Sailor’s Cove case was not unlike many real-world disputes: It was an ownership conflict based on an alleged oral contract. Dannenberg represented two users who assisted a virtual real estate developer in running a large group of islands in Second Life called Sailor’s Cove. When the three parted ways, Dannenberg argued that the owner had previously made his two managers full partners and co-owners in the venture. But the owner of record claimed full ownership. The case was settled out of court, with Dannenberg’s clients receiving a financial settlement.
You can read the entire article here.
On April 10, 2009, Nadya Suleman, who became famous in January when she gave birth to octuplets, filed a pair of trademark applications at the USPTO. She wants to use the mark for disposable diapers, cloth diapers, dresses, pants, shirts and entertainment in the nature of ongoing television programs in the field of “varity” [sic].
Sounds logical, right?
The only problem is that Austin, Texas-based Super Happy Fun Fun Inc. had already filed an application on March 12 for OCTOMOM for computer game software; downloadable mobile entertainment software such as ring tones, screen savers and wallpaper graphics; toy action figures and accessories; puppets; balloons; chess sets; golf balls; snowboards; and even Christmas tree ornaments.
Super Happy Fun Fun, Inc.’s trademark application is serial number 77689864.
Nadya Suleman’s trademark applications are serial numbers 77711852 and 77711827.
On a related note…
If you haven’t already heard, the four men connected to The Pirate Bay, the world’s most notorious file sharing site, were convicted by a Swedish court Friday of contributory copyright infringement, and each sentenced to a year in prison.
Pirate Bay administrators Fredrik Neij, Gottfrid Svartholm Warg and Peter Sunde were found guilty in the case, along with Carl Lundström, who was accused of funding the 5-year-old operation.
In addition to jail time, the defendants were ordered to pay damages of 30 million kronor ($3.6 million) to a handful of entertainment companies, including Sony Music Entertainment, Warner Bros, EMI and Columbia Pictures, for the infringement of 33 specific movie and music properties tracked by industry investigators…
Read more at WIRED.com.
Cloud computing has been a hot topic lately. Just ask Dell, whose application to register the trademark CLOUD COMPUTING was refused because the term is already generic. Amazon, Google, and other service providers also offer cloud computing services. More recently, however, at GDC 2009 OnLive.com made their public launch. On it’s web site, OnLive has this to say:
OnLive is launching the world’s highest performance Games On Demand service, instantly delivering the latest high-end titles over home broadband Internet to the TV and entry-level PCs and Macs. Founded by noted technology entrepreneur Steve Perlman (WebTV, QuickTime) and incubated within the Rearden media and technology incubator, OnLive spent seven years in stealth development before officially unveiling in March 2009. OnLive, together with its Mova subsidiary, lies directly at the nexus of several key trends, all of which are reshaping the way we think about and use digital media:
- The shift to cloud computing, displacing the limitations, cost and complexity of local computing;
- An explosion of consumer broadband connectivity, bringing fast bandwidth to the home;
- Unprecedented innovation, creativity and expansion within the video game market.
Pioneering the delivery of rich interactive media to the home, OnLive will change the way that entertainment applications are created, delivered and consumed.
Anyone who stopped by OnLive’s booth at GDC got a real treat. Solid game play and no lag (let’s hope it stays that way when millions of people start playing at once, instead of 20 people in the booth).
And perhaps (not?) coincidentally, on the same day that OnLive made their public debut, Sony filed a new trademark application for PS CLOUD.
It looks like cloud gaming is here, folks. I can’t wait to see how this plays out…
It appears that congress is again going to try to pass patent reform legislation. Rather than recreate the wheel, and based on other deadlines I have today, feel free to read the summary article over at Patently-O. Dennis does a fine job summarizing it and provides copies of the house and senate versions of the bill (which are somewhat different–so this might take a while… again).
Sorry for the short post, but I at least wanted to get the information out there.