The (in)famous Grand Theft Auto series, produced by Rock Star Games, has become synonymous with legal entanglement. As noted by the appeals court, the series “is known for an irreverent and sometimes crass brand of humor, gratuitous violence and sex, and overall seediness.” The latest installment of the Series, San Andreas, is centered in East Los Santos, a fictional urban environment that depicts Los Angeles, California. The environment is populated with “virtual liquor stores, ammunition dealers, casinos, pawn shops, tattoo parlors, bars, and strip clubs. The brand names, business names, and other aspects of the locations [were] changed to fit the irreverent ‘Los Santos’ tone.” One such virtual business was a strip club named “Pig Pen,” in which players could interact with strippers. ESS operates a real-life strip club in East Los Angeles under the name Play Pen Gentlemen’s Club. ESS claimed that San Andreas’ Pig Pen infringed its trademark and trade dress associated with the Play Pen. Rock Star denied infringement and further argued that any infringement would be protected under the First Amendment. The lower court granted summary judgment in favor of Rock Star based upon the First Amendment. The appeals court affirmed the lower courts ruling. While the ruling was based upon the First Amendment defense, the opinion seemed to focus on whether infringement existed. Setting a humorous tone, the opinion noted that “besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage. Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.” ESS argued that because San Andreas players could spend as much time as they wanted at the Pig Pen virtual strip club, it could be considered a significant part of the Game, thereby leading to confusion. The court rejected the argument with the observation that: fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher’s shop. In other words, the chance to attend a virtual strip club is unambiguously not the main selling point of the Game. It is interesting to note that the test for determining whether the trademark or trade dress rights were trumped by First Amendment considerations has been traditionally applied by the court in instances where trademarks were used in the titles of artistic works, not to alleged use of a trademark in the body of the work. Nonetheless, the court thought that such an application logically followed and the parties did not dispute it.
On October 23, 2008, THQ filed a new lawsuit against Activision Blizzard for trade dress and copyright infringement regarding Activision’s planned release of “SCORE International Baja 1000 The Official Game” in late October 2008. THQ alleges that Activision’s game infringes the trade dress and copyrights in THQ’s game “Baja Edge of Control,” which was released in September 2008 (with package art available since June 2008).
Here is an image of THQ’s cover art:
And here is the cover art for Activision’s game:
We’ll add this lawsuit to our tracking system and keep you posted as things progress.
The case is THQ Inc. v. Activision Blizzard, Inc. in the Central District of California, case number CV08-06999, filed October 23, 2008. A copy of the complaint may be downloaded here:
thq-activision.pdf
Case number 08-cv-907
U.S. District Court for the Western District of Washington
Nintendo of America filed a lawsuit on June 10, 2008, against Nyko Technologies, in the Western District of Washington, alleging patent and treademark infringement. The patents at issue are U.S. Patent Numbers D556,201 and D556,760, both issued in 2007. The trademark at issue is Reg. No. 3370921, registered on Jan. 15, 2008.
This case concerns Nintendo’s design patents on the Nunchuk controller, and Nyko’s similarly appearing wireless controller, which Nyko refers to as the Nunchuck. Nintendo has two design patents covering the appearance of the Nunchuck, D556,201 and D556,760. The ‘201 patent is the broader of the two, and FIG. 1 is shown below:
The input areas are disclaimed, as is the region where the cable extends from the Nunchuk to the Wiimote.
Fig. 1 of the ‘760 patent is shown below:
This patent more narrowly claims the controller, including the input regions. At issue in this case, I am sure, will be to what extent the shape of the controller is to make the controller contoured to fit comfortably in a user’s hand, i.e., has function, versus what portion of the design is merely aesthetic.
The trademark issue stems from Nintendo obtaining a trademark on NUNCHUK (Reg. No. 3370921, Jan. 15, 2008) for computer game controllers; electronic game controllers; video game controllers and joysticks for video game machines, whereas Nyko is calling theirs a NUNCHUCK (note the additional ‘C’).
We will watch this case and keep you posted of future developments.
DEC. 17, 2008: SETTLED!
Somehow this well reported case got overlooked here at the Patent Arcade, and that appears to be because I thought I’d already written about it. In any event, it now gets its own post…
On October 24, 2007, six content owners in Second Life sued Thomas Simon, aka Rase Kenzo, for infringing their copyrights in various online goods. Also included in the complaint were counts for unfair competition and false description of origin, conspiracy, and counterfeiting. The goods included clothing and scripted furniture (aka, sex beds), among other things. After only two months it appears that Mr. Simon saw the light and the plaintiffs proved their point–the case settled in December, 2007, for about $525, and an agreement by Mr. Simon to cease his questionable activities.
At the very least this case is important because it demonstrates the seriousness that many Second Life content creators give to their businesses, treating their intellectual property just as any other business would. The stakes will only get higher as virtual worlds such as Second Life get bigger, and the players have even more money at stake.
Documents:
Complaint-07_10_24_eros_et_al_v_simon_complaint.pdf
Settlement-ecf.nyed.uscourts.gov_cgi-bin_show_temp.pdf
As Second Life matures, they are taking some fairly customary steps, one of which is to take a more proactive role to protect their own intellectual property. In this vein, Linden Labs has created the Second Life Brand Center, which details the proper and improper use of Linden Labs trademarks. In addition, Linden Labs has created the “inSL” mark for users to use under certain conditions to signify their presence in Second Life. The Brand Center is online here.