In a move reminiscent of the CBC v. MLB case over use of baseball players' names and statistics in fantasy football leagues, CBS Interactive sued the NFL Players' Association over the rights to use NFL players' names and statistics without having to pay a license fee. As you may recall, CBC Marketing and Distribution recently won a lawsuit against Major League Baseball on what appears to be a very similar, if not identical, issue. I would love to know what arguments the NFL is making as a basis for still being able to charge licensing fees. The lawsuit was filed Wednesday, September 3, 2008, as CBS Interactive Inc. v. National Football League Players Association, case number 08-cv-05097, in U.S. District Court for the District of Minnesota.

My gut reaction is that NFL will lose this one, regardless of being in a court that has, in the past, been very favorable to NFL players. But if there is one thing I have learned over the years, its that trying to predict the outcome of litigation has about the same success rate as trying to predict the weather. Stay tuned...

Sep. 12, 2008 UPDATE: On Sep. 9, 2008, the NFLPA fought back, filing its own suit in the Southern District of Florida, asserting that CBS forum shopped to get in Minnesota in the first place. (Recall that Minnesota is in the 8th Circuit, which gave the favorable ruling to CBC Marketing regarding similar facts for fantasy baseball). The NFL Players disagreed with the Eight Circuit's reading of the [fantasy baseball] case, calling it “unique and erroneous.” The new case is National Football League Players Inc. v. CBS Interactive Inc., case number 1:08-cv-22504, in the U.S. District Court for the Southern District of Florida. We'll keep you posted.

Before the introduction of sprawling virtual environments, ragdoll physics, and parallel GPUs, the video game industry lived in an 8-bit world. As is still the case, the creative content of games was and is limited by the machines of the day. If multiple developers wanted to bring an alien-invasion game to the market in the early 80’s, there was a high likelihood that they would all resemble something close to a Space Invaders “clone” due to the restrictive 8-bit, 2D video game capabilities. Examples of Space Invader “clones” include games like Galaga, Galaxian, and Gaplus.

One of the legal doctrines that allowed game to coexist is the scenes a faire principle of copyright law. This doctrine states that the expression of an idea that is “as a practical matter indispensible, or at least standard, in the treatment of a given [idea],”[1] is not protectable under copyright law. When applied to Space Invaders and its so called “clones”, the “clones” can make a case for not infringing on Space Invader copyright because the idea of an alien-invasion game includes scenes of a protagonist firing weapons towards incoming alien antagonists. Thus, it’s easy to see how strikingly similar games were able to go to market without copyright liability issues. Scenes a faire protects the indispensible aspects of creative expression because indispensible aspects of a topic do not bring anything new to the topic, and therefore do not warrant protection under copyright laws.

An explicit example of the scenes a faire principle was seen in the case of Frybarger v. IBM, in which a former employee, Anthony Frybarger, of the Gebelli game development company sued the company for infringing the copyright of his creative work, the game Tricky Trapper. IBM contracted with Gebelli to develop video games for the IBM PC Jr. computer. Mr. Frybarger had the idea for a game called Tricky Trapper in 1982, and constructed a working copy, which he demonstrated to his company that same year. Gebelli later released a similar game, Mouser, which Frybarger believed was copied from his original plans for Tricky Trapper. Once Frybarger registered the copyright to his Tricky Trapper game, he brought a lawsuit against IBM and Gebelli for copyright infringement.

According to the Ninth Circuit Court of Appeals, “[t]o establish a claim for copyright infringement, plaintiff must show that 1) she owns the copyright in the allegedly copied work; 2) defendant had access to the work; and 3) plaintiff's and defendant's works are substantially similar.” IBM conceded that Frybarger owned the copyright to Tricky Trapper and that Frybarger had shown IBM the plans to Tricky Trapper before Mouser was released. However, IBM was confidant that the court would not find Mouser and Tricky Trapper to be substantially similar. After the court was presented with the two works, the court concluded that the two games had “numerous” similarities, but that each similar feature “constitutes a basic idea of the videogames,” and the expression of these basic ideas are precluded from copyright protection under the scenes a faire principle. The similarities found by the court include there being a single protagonist that has legs and a face, and that the single protagonist moves vertically and horizontally between rows of pivot points. Also, the two games have more than one antagonist, and each antagonist moves toward the general location of the protagonist. These similarities seem basic and simple, but in an 8-bit environment, these similarities are necessary to making an a mousetrap game in a two-dimensional maze. The Circuit Court sided with IBM and dismissed Frybarger’s copyright infringement claims on summary judgment.

With the advent of modern graphics, developers nowadays have to be more careful to respect copyrights. The amount of new features added to games in the past two decades and the potential to create unique three-dimensional universes makes it very hard to copy the premise of another game and claim the similarities are scenes a faire. Nevertheless, the scenes a faire principle has been brought up in modern court cases and still applies today. As a result, it is good practice for developers to understand that scenes a faire may limit the scope of copyright protection that video game content may receive.

Thanks to Mike Harkness for his assistance with this post.

400 F.3d 1007 (7th Cir. 2005)

If someone familiar with Golden Tee, the ubiquitous pub golf video game, was asked to describe its unique characteristics, he or she would undoubtedly mention the giant trackball that sits in the center of the game board. This ball is rolled forwards and backwards with the palm of your hand to swing your virtual golf club and sink shots only Tiger Woods could make in real life. Golden Tee, made by Incredible Technologies, Inc., has achieved massive success based on this gameplay, and this detail has not eluded Incredible Tech’s competitors.

Due to the integral function of the trackball in Golden Tee’s gameplay, if a competitor released a golf game that also used a trackball with the same function as in Golden Tee, an ordinary observer might think the competitor’s game infringes on Incredible Tech’s rights. However, this scenario did occur and was determined not to be infringement in the lawsuit of Incredible Tech, Inc. v. Virtual Technologies, Inc. (7^th Cir. 2005). This particular case is an important study of the different protections offered to video game developers under copyright law versus patent law.

After witnessing the sensation caused by Golden Tee and the profits that accompanied the game, Virtual Technologies developed a similar game that used the same entertaining controls as Golden Tee. Virtual did this specifically to make it easy for players to switch from one game to the other. Virtual Tech’s product, PGA Tour Golf, was released as an alternative bar golf game to Golden Tee, with licensed players and famous courses (Golden Tee used generic golfers and courses). Incredible Tech sued Virtual Tech in 2003 for copyright infringement, asking for a preliminary junction to stop the sales of PGA Tour Golf.

In determining copyright infringement, a court must decide “whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression by taking material of substance and value.” The 7^th Circuit court initially decided to check whether Incredible Tech’s argument included copyright claims that are legally protectable.

Because Golden Tee and PGA Tour Golf are both golf games, it was unavoidable that a majority of the game content would be exactly the same or at least very similar, i.e., golf! Each game must include a golfer trying to hit a golf ball into a hole on a golf course for the game to be a golf game. In the legal world, the scènes à faire doctrine holds “incidents, characters, or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic” as not protectable content under copyright law. Therefore, the content of PGA Tour Golf does not infringe on Golden Tee, unless there is near exact copying of the specific artwork used.

The real substance of Incredible Tech’s argument called for the protection of Golden Tee’s unique trackball system under copyright law. The trackball embodied Golden Tee’s ease of play and separated the game from other golf games. However, under copyright law, functional elements of a work are not protectable. Also, the “method of operations” detailing how to use the trackball and dictating how the trackball is to be used to play golf are not protectable under copyright law. The court did note, though, that the function of using the trackball to play Golden Tee is patentable subject matter, and the patent laws are the mechanism through which Incredible Tech would get the protection they desire. But, because Incredible Tech did not have a patent, they were forced to make their argument with respect to copyright law. The court determined that Incredible Tech’s argument had little merit under copyright law, and the court would not grant a preliminary injunction against Virtual Tech.

As the creative owner of a work, such as a video game, it is never safe to assume your complete work is protected by copyright. Although copyrights are automatic—copyrights exist as soon as you fix your original work in a tangible medium of expression—the extent of protection afforded to you may vary, depending on the nature of the copyrighted work. What Incredible Tech thought was protected by copyright was determined by the 7^th Circuit to be ineligible for copyright protection—only patent law would suffice. Incredible Tech failed to realize that the idea behind its trackball Golden Tee game was not protected under copyright law, because only the expression of ideas are eligible for copyright protection. Had Incredible Tech patented the functional process of using a trackball to swing a virtual club in a golf video game, it might have been able to defend their product in litigation. This case serves as an invaluable lesson for copyright owners in computer software and shows the power of patent laws compared to copyright laws for protecting software functionality.

Thanks to Mike Harkness for his assistance in the preparation of this post.

In the ongoing dispute between Anascape, Ltd., an invention and license-holding company, against Nintendo of America regarding Nintendo's use of three patents a jury had found the video game company to infringe, the judge on July 23, 2008, granted a permanent injunction in his final decision. The injunction was stayed with certain conditions.

The injunction prevents Nintendo from selling its Wii Classic controller, GameCube controller and GameCube Wavebird wireless controller in the U.S. until the expiration of the earliest of the three patents, at least through 2012.

Judge Clark stayed the injunction, however, pending appeal, but Nintendo must deposit 7% of the sales price of each of the three controllers sold and 5% of the sales price of each Wii Remote sold into an escrow account. The number of Wii Remotes that Nintendo must deposit money for the sales of maxes out at twice the number Wii Classic controllers sold. Nintendo must deposit the funds for the controllers regardless of whether they're sold individually or bundled with other products. The money can be released to either party by either a court order or a settlement between the two companies. Clark also awarded costs to Anascape and denied all other pending motions.

Judge Clark had indicated that the case "presented the classic 'battle of the experts,' and the jury clearly chose to believe Anascape’s infringement expert.”

The patents in the case were U.S. Patent Numbers 5,999,084; 6,102,802; 6,135,886; 6,208,271; 6,222,525; 6,343,991; 6,344,791; 6,347,997; 6,351,205; 6,400,303; 6,563,415; and 6,906,700.

The case is Anascape Ltd. v. Microsoft Corp. et al., case number 9:06-cv-158, in the U.S. District Court for the Eastern District of Texas.

An appeal is sure to follow.

Banner & Witcoff Secures Favorable Settlement for Client Regarding Intellectual Property and Land Dispute in Second Life

(Washington, D.C., July 22, 2008) - Banner & Witcoff Ltd., one of the largest law firms in the United States dedicated solely to the practice of intellectual property law, is pleased to announce they have secured a favorable settlement on behalf of its client regarding a dispute in Second Life regarding ownership of regions of virtual land, and associated intellectual property. Second Life is an online virtual world, owned by Linden Research, Inc., and created by its millions of residents around the world.

The land in dispute is Sailor’s Cove, a collection of twenty-one regions (private islands) within the virtual world of Second Life. Sailor’s Cove was developed by three parties and designed as a waterfront community that allows avatars to purchase land, participate in virtual yachting and sailing events, and become active in the community of residents of Sailor’s Cove.

The property and ownership dispute was between Patrick Leavitt, owner of record of Sailor’s Cove with Linden Research, Inc., and Izabella Bentham and Tasha Kostolany. While not owners of record with Linden Research, Inc., Bentham and Kostolany were each publicly acknowledged within Sailor’s Cove as “Owner and Sailor’s Cove Partner,” and were instrumental in the development and success of Sailor’s Cove. Patrick Leavitt had subsequently asserted sole ownership of Sailor’s Cove.

Ross A. Dannenberg, partner at Banner & Witcoff, represented Bentham and Kostolany. Dannenberg successfully avoided litigation and secured financial compensation for Bentham’s and Kostolany’s contributions to Sailor’s Cove. Dannenberg states “while Second Life may be a virtual world, the intellectual property is real, the contracts are real, and residents are still subject to real world laws.”

Dannenberg is one of several attorneys at Banner & Witcoff that specializes in protecting intellectual property rights for clients in the video game, virtual world, and computer industries. Collectively, Banner & Witcoff attorneys have decades of experience counseling clients and litigating cases involving computers, video gaming and virtual worlds, and electronic arts. Please visit our website at www.bannerwitcoff.com for more information regarding Ross Dannenberg and Banner & Witcoff.

*Please note: to protect individual privacy, all parties involved in the case are referred to by their Second Life avatar name, except Ross Dannenberg (SL avatar: Aviator Kidd).

Please direct all media inquires to Colleen Strasser at cstrasser@bannerwitcoff.com or 312.463.5465

About Banner & Witcoff, Ltd.

Banner & Witcoff, Ltd. is dedicated to excellence in the specialized practice of intellectual property law, including patent, trademark, copyright, trade secret, computer, franchise and unfair competition law. The firm actively engages in the procurement, enforcement and litigation of intellectual property rights throughout the world, including all federal and state agencies, and the distribution of such rights through licensing and franchising. The firm has over 90 attorneys and agents in its Chicago, Washington, DC, Boston and Portland, OR offices.

Please note, the facts of every case are different. Prior results don't guarantee future success.

If you build it, they will come. The tagline from Kevin Costner’s baseball film “Field of Dreams” seems appropriate to describe patent litigation. If the industry builds a successful product type, in this case, music-based rhythm games, then competitors will inevitably jockey for position. Patents, being a quintessential tool for protecting innovative market space, are a classic approach to this jockeying.

This jockeying took another step forward this week when Konami, makers of the upcoming Rock Revolution® musical group rhythm game, filed suit against Harmonix, makers of the popular Rock Band® musical group rhythm game, accusing Harmonix of infringing three of Konami’s patents.

Perhaps because Konami has already established itself in the general rhythm game space, with the popular Dance Dance Revolution® and Karaoke Revolution® series of games, Konami appears to have entered the musical group rhythm game space with patents in mind, filing early patent applications on its concepts, and the three in suit are directed to fairly straightforward elements of such games.

The first, U.S. Patent No. 6,390,923, is entitled “Music Playing Game Apparatus, Performance Guiding Image Display Method, and Readable Storage Medium Storing Performance Guiding Image Forming Program,” and generally appears (reading claim 10 of this patent) directed to dividing the game play screen into sections for different instruments, displaying instruction patterns for each instrument, and outputting a sound corresponding to operation of the instrument. Figure 15 from the '923 patent shows an example screen.

NOTE: Formal interpretation of the patents will require a more thorough legal analysis of the patent and its history. The initial summaries here should not be construed as formal legal opinions of any kind.

Copies of the patents in suit (6,390,923, 6,425,822, and 6,645,067) are available for free from the USPTO web site or from Google patent search.

Copy of the complaint: KonamiComplaint.pdf

If you owned a Sega Genesis at any time in your life, chances are you will NEVER forget the singsong jingle Sega played every time you started up your system. Who would have thought that the unforgettable sound effect you grew to love (or hate) had a secret agenda?

The inclusion of Sega’s logo during the beginning of every game actually started out as part of an anti-piracy measure, and became the flashpoint of an important copyright lawsuit affecting reverse engineering and the gaming industry in 1992. The developer and publisher Accolade, who brought games like “Ishido” and “Turrican” to gamers, wanted to bring their games to the new Sega Genesis system in the early nineties. However, Sega only allowed officially licensed games play on the Genesis system, and used the anti-piracy measure to enforce this policy. After reverse engineering the Sega anti-piracy code, and including the functionality of that code in their ported games, Accolade was able to sell their games without buying an official license from Sega.

Not amused by Accolade bypassing its financially-beneficial licensing program through reverse engineering, Sega filed a lawsuit against Accolade for copyright infringement. Sega alleged that Accolade infringed on the copyrighted anti-piracy code to port Accolade’s games, but Accolade claimed defended itself by saying that this was necessary to make Accolade products compatible with Sega’s console, and thus should be considered fair-use. The Ninth Circuit Court of Appeals agreed.

The court recognized the possible fair use implications, and proceeded to determine whether Accolade’s actions, while detrimental to Sega’s anti-piracy practices, may have a greater “public benefit” and be considered a fair use. In order to determine whether a use of a copyrighted work is a fair use, a court considers 1) the purpose and character of the alleged infringing use (e.g., commercial, educational, research, etc); 2) the nature of the copyrighted work (creative versus factual/functional); 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole (e.g., did the alleged infringer take 90% of the copyrighted work; did the infringer take the “heart” of the copyrighted work; or was only a de minimus amount used); and 4) the effect on the potential market for the copyrighted work. Judge Reinhardt stated that the actions of Accolade would not hurt Sega’s game sales, for the important part of the game is the content, not the compatibility code segment that Accolade reverse engineered. An individual will purchase one game over the other based on content and creativity, neither of which was copied by Accolade. Accolade, by standing up to the licensing fees demanded by Sega, essentially represented the independent gaming community.

The court understood that if more game developers were able to bring their products to market because of a lack of licensing fees, the increase in suppliers would have a two-fold impact on the market. The more companies supplying video games, the lower the price of video games will fall. Also, with the influx of new games in the market, the content of every game will have to improve to separate each game from the others.

In addition, the court believed that Accolade had no way to make their product compatible with the Sega Genesis other than to reverse engineer Sega’s copyrighted code. The unique nature of machine code meant that the only way to make the code human-readable was to disassemble it, and only then could one study the code and understand the functional ideas behind it (functional aspects and ideas contained in a work are never copyrightable).

For these reasons, Reinhardt’s decision declared that “[w]here there is good reason for studying or examining the unprotected aspects of a copyrighted computer program, disassembly for purposes of such study or examination constitutes a fair use.” Accolade could disassemble Sega’s code and copy it to study the anti-piracy measures. As long as Accolade’s actions were beneficial to the public, the court saw no reason to uphold Sega’s copyright infringement claim. Accolade, by standing up to the licensing fees demanded by Sega, essentially represented the independent gaming community. Software and hardware developers soon began to reexamine their anti-piracy measures and licensing fees in view of this ruling, which established initial legal guidelines for reverse engineering as fair use.

(With thanks to Mike Harkness for his assistance in the preparation of this post.)

As indicated in a previous post, Anascape Ltd., an invention and license-holding company, sued Microsoft and Nintendo for patent infringement over their controllers for their respective video game console systems. Microsoft settled before trial. Nintendo went to trial and lost. On Thursday, June 26, 2008, District Judge Ron Clark of the U.S. District Court for the Eastern District of Texas denied Nintendo's claim that the payment to Anascape was excessive, for damages related to patent infringement of Nintendo's WaveBird and Gamecube controllers for the GameCube and Wii Classic controller for the Wii (the jury decided that the Nunchuk did not infringe Anascape's patents). Clark also tossed Nintendo's request for a new trial.

The patents in the case were U.S. Patent Numbers 5,999,084; 6,102,802; 6,135,886; 6,208,271; 6,222,525; 6,343,991; 6,344,791; 6,347,997; 6,351,205; 6,400,303; 6,563,415; and 6,906,700.

The case is Anascape Ltd. v. Microsoft Corp. et al., case number 9:06-cv-158, in the U.S. District Court for the Eastern District of Texas.

We'll keep you posted of further developments.

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!

So this blog tracks video game IP law updates, but here is a morsel that I just had to comment on: Sandra Day O'Connor (yes, THE Sandra Day O'Connor, i.e., the first woman ever appointed to the United States Supreme Court) is collaborating with Parsons The New School For Design on an online, interactive civic education project for seventh- and eighth-graders, and recently gave a presentation on the topic at the Games for Change conference (hosted at Parsons).

O'Connor said that the No Child Left Behind act of 2001 has "effectively squeezed out civics education" from public schools. "We can't forget that the primary purpose of public schools in America is to produce citizens who have the skills and knowledge to sustain our form of government," she said. "Public education is the only longterm solution to preserving an independent judiciary and constitutional democracy."

That's why, O'Connor said, she wanted to work alongside James Paul Gee (a prof at UW-Madison) to create Our Courts, which will begin rolling out in September 2009.

Read more here, at Wired.com.