Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law
By Ross A. Dannenberg, Steve Mortinger, Roxanne Christ, Chrissie Scelsi, and Farnaz Alemi – Editors.
Will provide publication/purchase info when available.
Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law
By Ross A. Dannenberg, Steve Mortinger, Roxanne Christ, Chrissie Scelsi, and Farnaz Alemi – Editors.
Will provide publication/purchase info when available.
Activision has responded in federal court to a lawsuit originally filed in California state court by No Doubt over Activision’s use of the band’s likeness in “Band Hero.” According to Activision, the case implicates federal copyright law, and thus federal court (rather than state court) is the proper place for the litigation.
Previously, No Doubt sued Activision alleging, among other things, that Activision improperly used digital representations of the band members in unauthorized ways in making “Band Hero,” such as the way that the band members sing and dance in-game.
Now, in responding, Activision is denying all accusations of wrongdoing and arguing that all uses of No Doubt’s likeness are within the licensing contracts obtained from the band before the game’s release. Interestingly, there are also allegations that No Doubt’s contract with Activision does not include certain limits on the scope of the license that the licensing contracts of other artists include.
We will continue to follow this case.
Sony Computer Entertainment America v. Bleem, LLC
214 F.3d 1022 (9th Cir. 2000)
Bleem marketed a software emulator that allowed users to play Sony Playstation games on their personal computers. Bleem’s emulator appealed both to gamers who did not want to buy a Playstation console and to those who sought the enhanced graphics and higher resolution offered by PC graphics cards. The program was written and marketed by two men who reverse-engineered the code in the Playstation’s components in order to mimic its functions on a PC.
While Sony would undoubtedly have liked to strike down Bleem’s software itself, the legality of emulation was not an issue before the court. See Sony v. Connectix Corp., 203 F.3d 596, 607 (9th Cir. 2000) (ruling that emulators are not a violation of the copyright laws). The court noted that the availability of emulators such as Bleem may actually increase the sales of games though it hurts the sale of consoles. With most consoles being sold at a loss, one has to wonder if Sony would have been better off with the competition.
The issue before the court was whether the use of screen shots showing scenes from Playstation games in Bleem’s advertising amounted to copyright infringement. Screen shots are often included in video game advertisements in order to convey to a purchaser what the game will look like on-screen. Bleem included screen shots in its advertising and packaging comparing games played on the Playstation console and games played using the Bleem emulator on a PC. The comparison was intended to show that the games looked better when played on a PC.
The district court in the Northern District of California ruled in favor of Sony and entered an injunction against Bleem’s use of the screen shots. Bleem appealed to the Ninth Circuit.
Sony alleged that Bleem’s use of screen shots violated Sony’s copyrighted material. Bleem admitted that its screen shots fell under Sony’s copyright but argued that their use fell under the fair use exception.
Under 17 U.S.C. § 107, the “fair use” of a copyrighted work is not an infringement. The statute provides four factors to be considered in determining fair use:
(a) the purpose and character of the use, including whether such use is of a commercial nature…;
(b) the nature of the copyrighted work;
(c) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(d) the effect of the use upon the potential market for or value of the copyrighted work.
17 U.S.C. § 107. The purpose of the fair use doctrine is to permit “courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994). Although the fourth factor is sometimes thought to be the most important, each factor must be considered, and no single factor is dispositive. See id.
1. Character of the Use
In analyzing the first factor, the court determined that Bleem’s use of the screen shots represented comparative advertising. Bleem’s emulator directly competed with Sony’s Playstation console and the screen shots compared the user experience on the two platforms. Noting that the Ninth Circuit had not dealt with comparative advertising, the court referenced a Fifth Circuit opinion finding fair use where a newspaper displayed a cover of TV Guide for the purpose of comparing it to an analogous publication. Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980). The court also cited the FTC’s stance that comparative advertising is an important source of information to consumers. According to the court, Bleem’s use here helped consumers make rational purchasing decisions and could inspire Sony to improve their product.
Due to the nature of Bleem’s use as comparative advertising, the court found that the first factor favored Bleem. Bleem’s use provided great benefits to the public without a substantial impact on the integrity of Sony’s copyrighted work.
2. Nature of the Copyrighted Work
The second factor is often less important than the others; indeed, the Supreme Court has stated that the second factor is often “not much help.” Campbell, 510 U.S. at 586. The Ninth Circuit found that the copyrighted work here was generally creative in nature, but that screen shots were merely inanimate slivers of the game. Without much discussion, the court decided that this factor neither supported nor detracted from Bleem’s claim of fair use.
3. Degree of Copying Involved
The third factor recognizes that the closer the copied portion gets to the whole of the copyrighted work, the less likely it is to be fair use. The court analogized video games to motion pictures and characterized a screen shot as representing 1/30th of a second’s worth of the video game. The court determined that a screen shot was of little substance to the overall copyrighted work.
The court stated that “the third factor will almost always weigh against the video game manufacturer because a screen shot is such an insignificant portion of the complex copyrighted work as a whole.” Op. at 1028. Here, the third factor supported Bleem’s fair use claims.
4. Effect Upon the Potential Market for the Copyrighted Work
The fourth factor, often the most important factor, looks to the impact of the use upon the market for the copyrighted work. Beyond just the defendant’s use, the fourth factor considers the impact of unrestricted and widespread conduct of the sort engaged in by the defendant. Campbell, 510 U.S. at 590. The court questioned the existence of a market for screen shots but found that, even if such a market existed, any harm to the market would be the result of critique or have a de minimis effect in light of the comparative nature of Bleem’s advertising. Any losses suffered by Sony would not be in the market for its copyrighted material but in its console business.
Finding that Bleem’s use would have no effect on Sony’s ability to do with its screen shots as it pleased, the court ruled that the fourth factor favored Bleem.
Holding and Conclusion
The court, seeing that on balance the four factors favored Bleem, held that Bleem’s use was a fair use and vacated the preliminary injunction imposed by the district court, remanding for further proceedings. The holding was qualified by a caveat that the finding of fair use only applied insofar as the screen shots accurately represented how games looked on the Playstation console. The court made clear that they were persuaded by “the need for Bleem to impose minimally upon Sony’s copyright with respect to these screen shots because there is no other way to create a truly accurate comparison for the user.” Op. at 1030.
This case is a good example and good precedent for the use of comparative advertising with respect to audiovisual works, and video games in particular.
Thanks to Scott Kelly for his assistance with the preparation of this case summary
Well, it has finally happened. Someone got so upset that they filed a class action suit against Linden Research, the owner of Second Life.
Eros, LLC filed the lawsuit. They are a business in Second Life that caters to the … ahem… adult community. On Sep. 15, 2009, they filed a class action lawsuit alleging trademark and copyright infringement. They are trying to get some pretty big classes involved in the case. For example, the complaint requests the following classes be named:
a) The Trademark Owner Class. All individuals and entities in the United States
who own, have owned, or otherwise have the right to enforce licensing rights to
goods and services bearing trademarks or service marks registered with the
United States Patent and Trademark Office, and who engage or have engaged in
commercial transactions in Second Life associated with such registered trademark
or service marks.
b) The Trademark Infringement Class. All individuals and entities in the United
States who (1) own, have owned, or otherwise have the right to enforce licensing
rights to goods and services bearing trademarks or service marks registered with
the United States Patent and Trademark Office, (2) engage or have engaged in
commercial transactions in Second Life associated with such registered trademark
or service marks, and (3) whose trademarks and/or service marks were infringed
in Second Life.
c) The Copyright Owner Class. All individuals and entities in the United States
who own, have owned, or otherwise have the right to enforce licensing rights in
connection with a copyright registered with the U.S. Register of Copyrights and
who engage or have engaged in commercial transactions in Second Life
associated with such copyrighted works.
d) The Copyright Infringement Class. All individuals and entities in the United
States who (1) own, have owned, or otherwise have the right to enforce licensing
rights in connection with a copyright registered with the U.S. Register of
Copyrights (2) engage or have engaged in commercial transactions in Second Life
associated with such copyrighted works, and (3) whose copyrights were infringed
in Second Life.
This case will certainly be of interest to the Second Life community, as well as other virtual world providers who offer similar features. Many believe that a lawsuit of this nature was only a matter of time. It will certainly be interesting to watch and see what happens. Stay tuned…
A colleague of mine, Mikko Manner, recently published an article regarding Pirate Bay in the Entertainment Law Review. The article begins, as you may know:
On April 17, 2009, the District Court of Stockholm, Sweden announced its verdict in the so-called ‘‘Pirate Bay case’’1 against four individuals associated with a file-sharing website and service called The Pirate Bay, directed at the file-sharing community. The court found all four guilty of contributory copyright infringement, and each was sentenced to one year in prison. In addition to imprisonment, the defendants were ordered to pay damages in the amount of 30 million Swedish kronor ($3.6 million, 2.7 million Euros) to a handful of entertainment companies, including Sony Music Entertainment, Warner Bros, EMI and Columbia Pictures, for the infringement of 33 specific movie, music and gaming titles.
Read the entire article here.
On July 7, 2009, Yahoo’s lawsuit against the NFL Players Association was dismissed without prejudice after the two parties entered a settlement. For the time being, this ends litigation that Yahoo commenced at the beginning of June to declare that Yahoo didn’t need authorization to use football players’ images, names and statistics in its fantasy football game. Because the case was dismissed without prejudice, the possibility remains that it may be brought again.
According to the Associated Press, the terms of the settlement haven’t been made public which is unfortunate because, as FantasySportsBusiness.com notes, it would be interesting to see the concessions each side made. Perhaps Yahoo was willing to compromise on licensing fees and forego protracted litigation to protect a business relationship stretching beyond fantasy sports.
The NFLPA is currently appealing the April decision of the similar case National Football League Players Inc. v. CBS Interactive Inc. to the 8th Circuit. The district court found that CBS enjoyed a First Amendment right to use the publicly available players’ names and statistics that prevailed over any right of publicity. In a fantasy baseball case from 2007 (C.B.C. Distribution and Marketing Inc. v. MLB Advanced Media), the 8th Circuit ruled that a fantasy baseball provider didn’t have to pay royalties to baseball players. Because the district court from CBS Interactive relied heavily on the 8th Circuit’s C.B.C. opinion, it seems unlikely that the NFLPA will win its appeal.
Updated: May 29, 2011
To assist you in your research and review of the cases, this post will serve as a continuously updated index of the cases we’re tracking. It provides a chronological listing of video game & related lawsuits broken down into the categories of patent, trademark and copyright with a few miscellaneous cases at the end. As far as we’re aware, this is the most comprehensive and complete listing of video game cases and lawsuits. If you notice any that are missing, please let us know.
Don’t worry, we’ll get to them all… eventually.
So we’ve noticed some buzz on the Internet lately about the backdrop to Conan O’Brien’s Tonight Show set. The guys at Serious Lunch posted the backdrop, and what appears to be a doctored version of the backdrop, adding in various elements from the Mushroom Kingdom from Mario Bros. An animated GIF with the two images can be seen here. Folks are speculating about the similarities, so we thought we’d take this opportunity to discuss what kinds of copyright issues might be present here. And because the issues are different, we’ll treat two possible “defendants” – 1) Conan and 2) the folks who created the doctored version of Conan’s backdrop.In order to prove copyright infringement, a plaintiff must demonstrate two basic elements: 1) ownership of a valid copyright, and 2) copying of protected expression.
The first element, ownership of a valid copyright, is usually an easy element to prove. Copyright protection exists from the moment that an author fixes a work in a tangible medium of expression. So the moment an artist puts brush to canvas, or when a writer puts pen to paper (or hits the “save” button), a copyright exists. The result is the same when the “author” is a computer game artist. At some point the artist drew the Mario images, either on paper or on a computer, both of which are tangible media of express, and both of which would result in a copyright for those images. There might still be some issues of whether the artist that drew those images came up with the original concept himself or herself, as opposed to copying it from yet some other source, but let’s assume the design is original to the author. The author worked for Nintendo (another assumption), and so Nintendo owns the copyright because that was created by an employee in the ordinary course of employment and is therefore a work made for hire under U.S. copyright laws (we’re also assuming U.S. law applies, because we’re not Japanese legal experts :)).
The second element, copying of protected expression, is a little more difficult to prove. Copying is proven by either direct proof of copying (e.g., offering testimony from someone who actually saw the alleged copier copy the protected work – this hardly ever happens), or with indirect proof of copying (which is more common) by demonstrating 1) access to the protected work + 2) substantial similarity between the copied work and the alleged infringing work. Access can even be inferred when the two works are strikingly similar such that no reasonable person would conclude they could be that similar absent some level of copying.
Access can be proven either by direct evidence, i.e., the alleged infringer admits that he or she had access to or otherwise reviewed the copyrighted work, or by circumstantial evidence, e.g., through widespread dissemination of the copyrighted work to the public. Nintendo has certainly sold its fair share of Mario games. Indeed, one web site estimates that Mario games have sold over 160 million copies starting with Super Mario Bros. on the Nintendo Entertainment System (NES). Widespread dissemination appears to be present. However, how many of those copies included the stuff in the images above? We’re guessing the answer is still in the millions.
Ok, assuming there is access to Nintendo’s stuff by both Conan (or his designers) and the folks who created the doctored image, is there also substantial similarity? What amounts to substantial similarity? Different courts have used different tests, but it boils down to a determination of whether there is a remarkable resemblance between the original and allegedly copied works. Here the analysis is a bit different between Conan and the doctorer. Does the Conan backdrop, without the stuff added in the doctored image, look like any Mario game screen or image? How about the version created by the doctorers?Even if there is access + substantial similarly, designers over at NBC, or the creators of the doctored version, might still have some defenses they can rely on. First, independent creation is a complete defense to copyright infringement. If the designers or doctorers can prove that the similarities between their respective images and Mario’s stuff are simply coincidence, then there is no infringement no matter how similar the two works are. In addition, they might be able to demonstrate that their use is a fair use of the copyrighted work. A fair use of a copyrighted work is not infringement. Fair use includes “such use by reproduction in copies or phonorecords…, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. sec. 107. Other uses might also be fair uses of the copyright work, based on an analysis of the following four factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. NBC is a commercial entity whose primary purposes is to air entertaining television shows that draw an audience, allowing them to sell commercials to advertisers for financial gain. The Tonight Show, however, does have a news component to it, insofar as it discusses current events, interviews notable figures, etc. The folks who created the doctored image appear to have done it simply to make an editorial point.
Another possible defense is to argue that the works are not substantially similar at all, but rather Conan’s backdrop and/or the doctored image are so transformative from the original inspiration that they can only be said to contain a similar “idea” but that the “expression” is different. This is known as the idea/expression dichotomy of copyright law. Copyright does not protect ideas; copyright only protects the actual expression of an idea.
What do we think? Well, being that we are attorneys, and that we don’t have all the facts, we will keep our opinions to ourselves. You never know what facts will come to light when two parties get in a dispute, and the game can change in an instant when there is a new development. Could it be a parody and therefore protected by the First Amendment? Could it be independent creation? Could it be de minimus copying? Could it be fair use? It could be any of the above given the right facts. Heck, this could be one giant publicity stunt: NBC or the doctorers might already have a license from Nintendo, and this could all be for the sake generating publicity when the cult of gaming elite inevitably notices the similarity.
Zynga Game Network had filed suit on February 27, 2009 against CLZ Concepts, Jeff Chen and James Zhang asserting copyright infringement. Yesterday a settlement conference was held, and the parties appear to have settled out of court. So it looks like no new case law will come from this one, and we will no longer be tracking this case.
Zynga is a major social gaming developer and now leads the industry as the largest application developer on Facebook with hits like Mafia Wars and Texas HoldEm Poker. Zynga also produces its apps for other social platforms such as MySpace and the iPhone. CLZ Concepts is a smaller social apps developer, acquired by Zynga in early 2008.
Continuing the trend of fantasy sports litigation, Yahoo! Inc., has filed a lawsuit seeking declaratory judgment against the defendants National Football League Players Association, Inc., and the National Football League Players Incorporated (collectively hereinafter “NFL Players”).
The NFL Players Association acts as the exclusive collective bargaining representative for active players in the NFL. The players assign their rights to the Association which, in turn, grants NFL Players Inc. exclusive use of the Group Licensing Rights. Yahoo! provides NFL fantasy football game services to participants throughout the United States. This includes tracking, compiling and posting publicly available NFL player statistics and information to aid game participants in making decisions.
Prior to the upcoming 2009/2010 season, Yahoo! had a licensing agreement with NFL Players to pay for using the statistics as well as “names, likenesses (including, without limitation, numbers), pictures, photographs, voices, facsimile signatures and/or biographical information” of NFL players. However, the license expired in March 2009 and was not renewed. On April 28, 2009 the same court hearing this case decided in CBS Interactive, Inc. v. Nat. Football League Players Inc., 70:08-cv-0597-ADM-SRN (D. Minn.), that the provider of a fantasy football game did not require a license from NFL Players to use player names, statistics, and other information in operation of the game. After that decision, Yahoo! contacted NFL Players to get confirmation that it would not be sued for similarly using the statistics but NFL Players refused to provide confirmation since they were appealing the court’s ruling.
Yahoo! followed up on June 1, 2009 by filing the present suit in which it seeks declaratory judgment (a declaratory judgment action is one filed by someone who fears getting sued by another on an issue, and doesn’t want to sit around waiting to get sued – they file a suit of their own to clear the air and resolve the issue) on three claims:
This suit seems almost identical to CBS Interactive mentioned above, as well as C.B.C. Distribution and Marketing Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007), which dealt with similar publicity issues in fantasy baseball. In both of these other declaratory judgments, the courts found that even if the plaintiff did violate defendants’ publicity rights, the plaintiff enjoyed a First Amendment right to use the publicly available players’ names and statistics that prevailed over any right of publicity. To escape this precedent set in the 8th Circuit, it seems possible that NFL Players may attempt to transfer venue to the Southern District of Florida as the defendants attempted in CBS Interactive (to no avail). Why Florida? In Gridiron.com, Inc. v. Nat’l Football League, Player’s Ass’n, Inc., 106 F. Supp. 2d 1309, 1315 (S.D. Fla. 2000), which appears to be the only other case addressing publicity rights and the First Amendment as they relate to the fantasy sports industry, the court rejected the plaintiff’s argument that a fantasy football provider had a First Amendment right to use players’ names and statistics without a license. This kind of split among jurisdictions may result in a trip to the Supreme Court, so we’ll keep an eye out …
A full version of the complaint can be found here.
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 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.
Dream Games of Arizona Inc. v. PC Onsite
9th Cir., No. 07-15847, 4/2/2009
This is a placeholder post until we can review and provide more info. But in brief…
(From BNA): A company that engages in illegal conduct with its copyrighted video bingo game system is nevertheless entitled to statutory damages in an infringement suit, the U.S. Court of Appeals for the Ninth Circuit said April 2 (Dream Games of Arizona Inc. v. PC Onsite, 9th Cir., No. 07-15847, 4/2/2009).
The creator of a software bot designed to allow users of Blizzard Entertainment Inc.’s World of Warcraft to continue playing the online role-playing game while away from their computers remains on the hook for a $6.5 million judgment, although Blizzard’s request to have MDY Industries LLC pay significantly more in damages was denied.Judge David G. Campbell of the U.S. District Court for the District of Arizona ruled Wednesday, April 1, 2009, that the $6.5 million judgment that had been stipulated following a bench trial was the maximum damages MDY’s founder Michael Donnelly would have to pay the video game giant. That decision, along with a permanent injunction on the sale of the software bot on tortious interference grounds, was reached at the end of January.More info at Law360.The case is MDY Industries LLC v. Blizzard Entertainment Inc. and Vivendi Games Inc., case number 2:06-cv-02555-DGC, in the U.S. District Court for the District of Arizona.
Ok, the case isn’t REALLY Peter Griffin versus a cricket, but it made you look, right? The case is really Bourne Co. v. 20th Century Fox. Bourne is the owner of the copyrights to “When You Wish Upon A Star,” the song made famous by Jiminy Cricket in Walt Disney’s Pinnochio. In an episode of The Family Guy (aptly titled “When you wish upon a Weinstein”), Peter Griffin sings a song called “I need a jew.” Bourne was nonplussed, and sued for copyright infringement.
Because the facts were largely undisputed, the court decided the case at the summary judgment level. Holding that Fox’s use was fair use, the court stated “Defendants have established that their song ‘I Need a Jew’ contains several layers of parody of plaintiff’s copyrighted work ‘When You Wish Upon a Star.’”
According to Fox and “Family Guy” head honcho Seth MacFarlane, also named as a defendant, the song was created as a commentary on the wholesome, “saccharine sweet” lyrics to “When You Wish Upon a Star” and further commented on allegations that Walt Disney was anti-Semitic. In the parody, Peter Griffin sings about “needing a Jew” to help him with his finances to the tune of “When You Wish Upon a Star,” which was originally written for “Pinocchio.”
The court agreed with Fox that “I Need a Jew” was a parody protected by fair use because it was a social commentary on the idealism portrayed by the original song in addition to taking a jab at Walt Disney’s alleged anti-Semitism.“By pairing Peter’s ‘positive,’ though racist, stereotypes of Jewish people with that fairy tale worldview, ‘I Need a Jew’ comments both on the original work’s fantasy of stardust and magic, as well as Peter’s fantasy of the ‘superiority’ of Jews,” wrote the court. “The song can be ‘reasonably perceived’ to be commenting that any categorical view of a race of people is childish and simplistic, just like wishing upon a star.”Bourne argued that the commentary about Disney was weak and far fetched, because Disney did not actually own the song. However, the court’s ruling adhere’s to the principle that it is not for courts to determine whether art is “good” or “bad,” but rather a court need only find that the defendants have demonstrated that “a parodic character may be reasonably perceived” regardless of the strength or clarity of the joke.“Although this joke may not be an obvious one, defendants have established sufficient facts for the court to find that one of their intended comments in parodying ‘When You Wish Upon a Star’ related to the repudiation of Walt Disney as an anti-Semite and that such a comment may be ‘reasonably perceived,’”While not a video game case directly, I find this case interesting from the standpoint that it deals with media and audiovisual works. The case is Bourne Co. v. Twentieth Century Fox Film Corp. et al., case number 1:07-cv-08580, in the U.S. District Court for the Southern District of New York.The entire opinion can be downloaded here.
This isn’t exactly video game related, so I won’t take up much of your time, but if anyone was looking for a side-by-side comparison of the Shepherd Farey Obama poster next to the photo that AP alleges it infringes, here you go. Farey and AP have fired countersuits against each other to try to resolve whether this is copyright infringement or fair use. You decide.
Zynga Game Network on February 27, 2009, filed suit against CLZ Concepts, Jeff Chen, and James Zhang asserting copyright infringement. The case is 3:09-cv-00854-EMC in the District Court for the Northern District of California. We are obtaining a copy of the complaint and have added this case to our watch list. More details to follow.
On February 24, 2009, Square Enix settled another lawsuit. According to its press release, the lawsuit named at least four national wholesalers of unlicensed sword replicas and their principals that have infringed Square Enix’s FINAL FANTASY® franchise of videogames and CG-animated film, specifically its copyright and trademark rights in the swords.
My personal favorite quote is where the defendants issued a statement as follows: “We regret having sold unauthorized replica merchandise based on the Final Fantasy franchise to our customers. We would not have begun importing and selling these swords if we knew that Square Enix would respond so aggressively to stop us. We will never make this mistake again.”
WHAT?!?! They are actually admitting to the “I wouldn’t have done it if I knew I would have been caught” defense?!?! So it’s ok to infringe other’s intellectual property rights as long as you’re not caught? Great. Nice one. Way to fall on that sword you were selling. In any event, the consent judgment includes $600k payment to Square Enix, so yes, the infringers WILL think twice about doing this again.
In another press release dated Feb. 12, 2008, the lawsuit was noted to have been filed and was “a result of cooperation with the United States Department of Homeland Security and Customs and Border Patrol, whose agents seized a crate of counterfeit replica swords.” Nice to hear our DHS guys are on the job. Keep up the good work.
(Thanks to Tim Hsieh at Greenberg Traurig for bringing this to my attention.)
While relatively short lived, this legal battle provides several insights for both video game producers and their legal teams. At issue was whether Capcom’s “Dead Rising” video game infringed any copyright, trademark, or other intellectual property rights of MKR, the owner of the copyrights and trademarks to the 1979 motion picture “George A. Romero’s Dawn of the Dead.” Capcom, a well-established video game developer, contacted MKR in 2004 for potential licensing of the rights. The licensing effort, however, was not pursued further and Capcom developed and released “Dead Rising” in 2006. The box containing the game included a disclaimer reading: “THIS GAME WAS NOT DEVELOPED, APPROVED OR LICENSED BY THE OWNERS OR CREATORS OF GEORGE A. ROMERO’S DAWN OF THE DEAD™[.]” That same year, MKR discovered that Capcom applied to register “Dead Rising” as a trademark with the U.S. Patent and Trademark Office. A dispute ensued and Capcom filed a complaint for declaratory relief on February 12, 2008, seeking a declaration that its video game does not infringe any copyright, trademark, or other intellectual property rights belonging to MKR and subsequently filed a Motion to Dismiss MKR’s claims on June 11, 2008.
In a rare instance, the court dismissed MKR’s allegations against Capcom under Federal Rule 12(b)6. Citing prior precedent, the court understood the rarity in which such motions should be granted, stating that motions to dismiss “generally are viewed with disfavor and are to be granted rarely.” Indeed, such motions are only granted if “it appears beyond doubt the plaintiff can prove no set of facts in support of his claim that would entitle him to relief.” As discussed below, the court granted the motion and dismissed the claims of copyright and trademark infringement, as well as claims under California state law with prejudice (meaning that Capcom cannot refile with respect to these issues).
Capcom did not contest MKR’s copyright to “Dawn of the Dead.” Therefore, the sole issue was whether “Dawn of the Dead” and “Dead Rising” were substantially similar in their protected elements. The court again reiterated its understanding that motions to dismiss should rarely be granted, stating “MKR understandably invokes case precedent that calls into question the propriety of resolving the issue even on summary judgment let alone on an initial pleading motion.” Nonetheless, the court cites prior case law that “[t]here is ample authority for holding that when the copyrighted work and the alleged infringement are both before the court, capable of examination and comparison, non-infringement can be determined on a motion to dismiss.”
The court, however, recognizes that only one prong of the test may be determined by the court. Specifically, the substantial similarity inquiry is comprised of an objective extrinsic test and a subjective intrinsic test, both of which the copyright holder must ultimately establish. “Only in the event that the claim fails when analyzed under the objective “extrinsic” prong is it subject to dismissal, for the intrinsic test, which ‘examines an ordinary person’s subjective impressions of the similarities between two works,’ is exclusively within the province of the jury.”
Under the analysis, the court considers the actual concrete elements that make up the total sequence of events and the relationships between the major characters rather than plot ideas for stories.” As a comparison, the court discussed a prior dispute regarding a motion picture set in the Bronx:
There, the court held that because elements such as derelict cars, drunks, prostitutes, vermin, morale problems of police officers, and the familiar figure of an Irish cop would appear in any realistic work about police officers in the Bronx, those elements represented unprotectable scenes a faire.
Scenes a fair is “where events flow naturally from generic plot-lines or sequences of events necessarily resulting from the choice of a setting or situation constitute one type of unprotectable idea.” Thus, elements relating to “humans battling zombies in a mall during a zombie outbreak” were unprotectable.
The court also found several differences between the sequence of events, characters, setting, and mood of the two works of art. Considerations relating to the “theme” and “pace” may be of special importance to video games developers. First, by its very nature, the “pace” of an allegedly infringing video game may rarely be a factor in determining infringement. Indeed, the pace is often set by the player. As noted by the court:
The pace in Dead Rising is one of constant, fast-paced action depending on the player’s preference. If the player follows the game storyline cues, a fast pace ensues to facilitate completion of the game with the rescue of all survivors within the three day window. By the same token, if the player chooses not to follow the storyline cues, then the pace slackens and the player wanders the mall and confronts zombies. Even if this is viewed as presenting some superficial similarity, “pace, without more, does not create an issue of overall substantial similarity between the works.”
The court also noted the differences in the “theme” of the two works of art. Specifically, as argued by MKR, “Dawn of the Dead” relates to “a satirical social commentary on the excesses of consumerism,” while “[t]o the extent that Dead Rising may be deemed to posses a theme, it is confined to the killing of zombies in the process of attempting to unlock the cause of the zombie infestation.” The court appears to recognize that often players will play a game merely to play it, not for any social commentary. Furthermore, a game that sells for $60 to be played on a console that costs several hundred dollars was unlikely a social commentary of the excesses of consumerism.
The court swiftly addresses MKR’s allegations that the game industry perceives Dead Rising to be an obvious “rip-off” of Dawn of the Dead. The court reiterates that:
the ultimate issue on this motion is whether or not the allegedly infringing work implicates protectable elements under copyright law, regardless of whether or not it is, in fact, a “rip-off.” Moreover, to the extent that the argument eventually would become relevant, it would arise only in the application of the “intrinsic” test, the second prong of the copyright analysis. As MKR must first successfully pass through the extrinsic test, which as set forth above it does not accomplish, the perception in the marketplace that a work has been lifted, accurate or otherwise, simply does not come into play.
Lanham Act Claim
MKR plead that Capcom sought to capitalize on: (1) Romero’s name on a disclaimer; (2) the term “dead” in its title; (3) the zombie head design trademark on Dead Rising’s packaging; and (4) the “plaid boy” costume consisting of a blood stained, plaid shirt, and a zombie mask. The court swiftly rejects each of the arguments.
First, the court finds that Romero’s name on the disclaimer is mere nominative use. Specifically, there is no other way to refer to the movie than by its title, the use of the full title is necessary to identify the movie and differentiating between other different movie titles, and, nothing about using a mark in a disclaimer denying affiliation gives rise to confusion.
Regarding the use of “dead,” the court held that the “shared use of one word and the idea of zombies awakening is not enough to sustain a charge of infringement.” Lastly, the court found that the “zombie presented also appears to be much more lifelike than the half of the zombie head on the cover of Dawn of the Dead.” Regarding the plaid shirts, the court points back to its copyright analysis, in which it found the zombies in Dead Rising “to be stock elements with largely generic attire. While Dead Rising does sport some zombies in plaid and covered in blood, those attributes are too hazy to amount to substantial similarity.”
On November 14, 2008, the parties filed a stipulated agreement with the court. As part of the agreement, Capcom waives its right to seek attorneys’ fees, expenses and costs incurred in relation to the above titled actions and MKR waives its right to appeal the court’s ruling. MKR further agreed to withdrawal its opposition to Capcom’s trademark for “DEAD RISING.” (So far, the court has not approved the agreement)
As discussed below, this case had some interesting points regarding judicial notice.
As video game development continues to increase and thus have issued litigated in court, the concept of judicial notice will need to be addressed. Specifically, courts can take as true those facts which are generally known within the court’s territorial jurisdiction; and those that are “capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned, for example, almanac, dictionary, calendar or similar sources.” In this case, the court took judicial notice of the contents of “Dawn of the Dead” and “Dead Rising,” however, the court did not take judicial notice of the script of “Dead Rising.” The court reasoned that the scripts “authenticity cannot be determined by resort to irrefutable sources because it does not reflect who wrote it, nor when and for what purpose it was written, it was not filed with Capcom’s pending copyright for Dead Rising, and by its nature it may not track exactly how the game itself appears to the player.” Therefore, video game developers may consider indicating the authors on scripts and copyrighting at least portions of the game as they would appear to a player, such as select animations and introduction screens.
The court also did not take judicial notice of several prior movies and video games relating to zombies “especially in light of the fact that many of these movies were made long ago, indeed in some instances as far back as 1932.” Lastly, citing prior precedent that “Wikipedia may not be a reliable source of information,” the court declined to extend judicial notice to Wikipedia articles that allegedly provided synopses of these movies and video games. This is similar to the stance taken by the U.S. Patent & Trademark Office when examining patent applications. Specifically, in 2006 the USPTO indicated that Wikipedia would no longer be used as an accepted source of information. It appears that Wikipedia articles carry little, if any, weight in legal environments.