On March 29, 2018, the New York State Court of Appeals, New York’s highest court of appeal, rejected actress Lindsay Lohan’s contention that the character “Lacey Jonas” from Grand Theft Auto V (“GTAV”) appropriated her likeness. A similar suit by Karen Gravano (a “Mob Wives” personality) regarding the “Andrea Bottino” character from GTAV was rejected on the same day.

Lohan alleged that at least two parts of GTAV unlawfully duplicated her likeness. First, in an “Escape Paparazzi” event, a female character named “Lacey Jonas” (who describes herself as a “really famous” “actress slash singer” and a “voice of a generation”) hides from the paparazzi. Second, a “Beach Weather” splash screen in GTAV allegedly duplicated Lohan’s likeness. That image is duplicated below.



The Court rejected Lohan’s argument, finding that both “Lacey Jonas” and the woman depicted in “Beach Weather” were “indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman that are not reasonably identifiable as [Lohan].” This is arguably a formal way of saying that self-important blonde actresses aren’t exactly in short supply in Los Angeles.

Karen Gravano similarly asserted that GTAV’s character “Antonia Bottino”–in the game, the daughter of a mobster planning to go on a television show–unlawfully duplicated her likeness. The Court similarly found that Gravano was “not recognizable from the images at issue.”

Though Lohan and Gravano lost, the Court’s ruling did hold that an avatar, such as a videogame character, may unlawfully misappropriate the likeness of an individual. Developers may want to be cautious in view of this holding–the wrong cutting edge satire could invite a lawsuit, no matter how poorly-founded.

On March 27, 2018, Hybrid Audio, LLC (“Hybrid Audio”) sued Nintendo of America Inc. and Nintendo Co., Ltd. (“Nintendo”) for alleged infringement of RE 40,281, a reissue of U.S. 6,252,909.  The allegedly infringing products include the Nintendo Wii and the Nintendo DS.  RE 40,281 generally relates to signal processing and is part of technology used for MP3 technology, and Hybrid Audio’s argument is that Nintendo infringes via practicing various parts of the MP3 technical standard (ISO/IEC 11172-3:1993).


As part of Hybrid Audio’s complaint, it notes that Nintendo may enter a Reasonable and Non-Discriminatory (“RAND”) agreement to license RE 40,281 as part of the MP3 Standards. Hybrid Audio also indicates that products supplied by Microsoft Corporation are not part of the allegedly infringing products, suggesting that Microsoft has possibly already entered into such an agreement.

RAND agreements, sometimes called FRAND agreements (for “Fair, Reasonable, and Non-Discriminatory”), are commonly used in patent pools. In industries where standards (e.g., audio standards like MP3 and cellular communications standards like 3G or LTE) are important, patent owners often collectively pool “standards-essential” patents and mutually agree to license those patents on FRAND/RAND terms. For patent owners, this can be a good deal: once their patents become standards-essential, users of the standard must license their patent, albeit on RAND/FRAND terms. For licensees, this can also be a good deal: because all patent owners must license their standards-essential patents on RAND/FRAND terms, they can usually acquire licenses to the standard fairly easily and with reasonable terms.

Strangely, Hybrid Audio's complaint specifically identifies the Nintendo Wii and Nintendo DS as infringing products.  The Nintendo Wii was launched in 2006, whereas the Nintendo DS was launched in 2004.  35 U.S.C. § 286 limits damages to six years prior to the filing of a complaint, meaning that Hybrid Audio's recovery will be limited to the period from 2012 to 2018.  During that period, Nintendo was marketing different a next generation of game consoles (the Wii U and the 3DS), which are not referenced in Hybrid Audio's complaint.  Potential damages related to sales of the Wii and DS are likely to be extremely small.

On Mar. 9, 2018, Epic Games, Inc. (“Epic”) sued Joseph Sperry (a/k/a “Spoezy”), yet another alleged distributor of cheats for the popular online game Fortnite.



Similar to previous cases (discussed here, here, here, and here), Epic alleges that Spoezy made, used, and sold cheating tools for Fortnite.  Much unlike previous cases, however, to acquire jurisdiction against Spoezy, Epic merely argues that Spoezy purposefully availed himself to the privileges of conducting activities and doing business in North Carolina, rather than using the YouTube DMCA process.  This may be because Spoezy is a resident of New York, unlike previous, non-American defendants.

As a fun side note, Spoezy’s website formerly listed him as a “Cheater[,] Designer[, and] Editor,” though it now lists him as a “Gamer[,] Designer[, and] Editor.” 

On January 29, 2018, FaZe Clan, Inc. (“FaZe Clan”) , an online gaming team, was sued by FAZE Apparel, LLC (“FAZE Apparel”) for trademark infringement, false designation of origin, and unfair competition.  The case, originally filed in the Northern District of California, was transferred to the Central District of California on Mar. 13, 2018.  The case is now undergoing court-directed alternative dispute resolution.


When FaZe Clan is not sponsoring energy drinks (“FaZeberry”) or awkwardly self-promoting in Gamestop stores, FaZe Clan sells merchandise promoting their brand.  FAZE Apparel asserts that FaZe Clan is an “admitted past infringer” of its marks which simply attempted to “steamroll [FAZE Apparel] and improperly profit off its brand.”  According to FAZE Apparel, FaZe Clan has been well aware of FAZE Apparel for at least four years: in 2013, the USPTO refused to register various trademarks for FaZe Clan, finding that such marks would be confusingly similar to those owned by FAZE Apparel.  Since then, per FAZE Apparel, FaZe Clan has repeatedly attempted to market “FaZe” materials, only to (allegedly) back off when confronted by FAZE Apparel.

Cases like these underscore the importance of careful brand planning.  FaZe Clan is now in an awkward position: if FAZE Apparel’s assertions have any merit, FaZe Clan will be forced to either re-brand or seek some form of license from FAZE Apparel.  Even if FAZE Apparel’s assertions are not meritorious, FaZe Clan will likely have to spend significant sums to defend themselves from this lawsuit. 

Either or both of these issues could have been avoided had FaZe Clan taken a more informed and/or conservative approach when selecting its name.  This case evidences that an ounce of prevention is worth a pound of cure.

Plaintiffs Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC (“Lucasfilm”) have challenged attempts by defendant Ren Ventures Ltd. and Sabacc Creative Industries Ltd. (“Ren”) to dismiss a lawsuit by Lucasfilm alleging that Ren infringes Lucasfilm’s copyrights and trademarks and has violated unfair competition laws.  The game at issue is Ren’s “Sabacc,” a mobile card game which allegedly infringes Lucasfilm’s Star Wars trademarks.



“Sabacc” is the fictional game of chance in the Star Wars universe that was played by Han Solo to win the Millennium Falcon from Lando Calrissian.  Lucasfilm has sold various real-life versions of the Sabacc card game, though Ren disputes the significance of such sales.  According to Lucasfilm, on the eve of the release of the movie Star Wars: The Force Awakens (Dec. 18, 2015), Ren–without permission from Lucasfilm–released the mobile card game “Sabacc.”  Videos of the game available online suggest that it contains imagery which allegedly depict Han Solo, Lando Calrissian, and a holographic Millennium Falcon.  Lucasfilm sued Ren on December 21, 2017.

Ren’s Motion to Dismiss argues, in part, that because Sabacc is a “fictional good,” it cannot be amenable to trademark protection or an unfair competition violation.  Lucasfilm’s Opposition to Ren’s Motion to Dismiss calls Ren’s arguments “specious,” asserting that Ren “ignore[s] all cases that have granted common law trademark protection to fictional elements of expressive works.” 

As many franchises sell real versions of in-universe games (Star Trek’s Tri-Dimensional Chess and The Witcher’s Gwent come to mind), the ruling in this case may have implications far beyond Sabacc.

Konami, no stranger to invalidity challenges against their video gaming patents, recently had four more patents directed to slot machines struck down as directed to abstract ideas.

On Feb. 21, 2018, the U.S. District Court for the District of Nevada granted summary judgment for defendant High 5 Games, LLC (“High 5”) against plaintiff Konami Gaming, Inc. (“Konami”).  The Court, dismissing Konami’s case, found all four of Konami’s asserted patents invalid as directed to unpatentable subject matter.



In the case, Konami alleged infringement of four patents: U.S. Patent Nos. 8,096,869, 8,366,540, 8,662,810, and 8,616,955. All asserted patents generally relate to slot machines, and High 5’s allegedly infringing products included various online and “land-based” slot machine games featuring a “Super Stack” feature (including, inter alia, “Bah, Humbug,” “Bollywood Bride,” “Dangerous Beauty,” “Diamonds of Athens The Dream,” “Shadow of the Panther,” and many others).
Claim 1 of the ’869 Patent reads:

1. A gaming machine comprising:
   a processor configured to execute a game displaying a matrix of symbol containing elements having a plurality of rows and a plurality columns;
   at least one column of said matrix comprising a portion of a simulated rotatable reel of a plurality of said symbol containing elements;
   said simulated rotatable reel comprising sections of symbol containing elements displaying a plurality of symbols that are fixed for each game played on said gaming machine;
   said simulated rotatable reel including at least one section in which a consecutive run of three or more of said symbol containing elements is populated by an identical symbol so that, as the simulated rotatable reel rotates, a consecutive string of said same identical symbol is sequentially displayed within said consecutive string of symbol containing elements; and
   said identical symbol is randomly selected anew for each play of said game, wherein said identical symbol is selected by virtually spinning a notional, non-visible, inner reel comprising a subset of said plurality of symbols.

After a lengthy discussion of claim construction, the Court found Konami’s patents’ claims “individually and collectively” invalid for abstractness.  Per the Court, the claims “perform the functions of what may be described as an aesthetic variation on a play of the game” because “the primary focus of the patents, as acknowledged even by Konami, is displaying a consecutive run of a randomly selected identical symbol in one reel of the simulated digital reels in each iteration of a game as a means of increasing interest in the game and ‘increasing probability of a winning outcome.’”  The Court was unpersuaded that the claims recited more than this idea: “[c]hanging how often a symbol appears and where it appears in a slot game without more is simply altering the manner of display of random symbols – i.e. changing the rules of the game.”

This decision underscores the continued impact of the Supreme Court’s 2014 decision in Alice v. CLS Bank.  In this case, the Court was clear: “changes to game rules of a generic slot machine using conventional technology are not patentable.”  Such a ruling may suggest that patents directed to game play rules may also be invalid as directed to abstract ideas.  Patentees may improve their likelihood of surviving similar challenges by, where possible, tying their claimed inventions to technology and technical problems.

Hello Patent Arcade readers. Something a little different today. An old friend from law school has published his own book:

What They Don't Teach You in Law School | How to Get a Job: The Six-Step Process for Landing a Great Legal Job Even if You Don't Know Where to Start
February 13, 2018, by Adam Gropper

On Feb. 8, 2018, Pure Data Systems, LLC (“Pure”) sued Electronic Arts, Inc. (“EA”) and Ubisoft, Inc. (“Ubisoft”) for alleged infringement of U.S. Patent Nos. 5,999,947 to Zollinger et al. and 6,321,236 to Zollinger et al.  



Claim 1 of the ’947 Patent reads:

1. A method of distributing database differences corresponding to change events made to a database table located on a server computer to client copies of the database table located on one or more client computers comprising the steps of:
  creating and storing on the server computer one or more sequentially versioned updates, each update containing database differences in a generic format, the database differences corresponding to database change events made to the database table since the preceding update;
  receiving, from a client computer, a request for all the database differences needed to make the client copy of the database table current;
  determining which updates are necessary for making the client copy of the database table current;
  ascertaining a client database engine type wherein the client copy of the database table is held;
  generating and translating specific database differences, selected based on the necessary updates, into instructions based on the ascertained database engine type prior to transmission; and
  transmitting the specific database differences to the client computer so that the client computer may execute the instructions on the client database engine, thereby making the client copy of the database table current in response to the specific database differences translated into the instructions.

Pure claims that EA and Ubisoft infringe their patents via their “game library updates.”  For example, “if a user purchases a game through the [EA’s] Origin website using a browser, the user’s game library is updated on a server” such that “[w]hen the user next logs into the Origin client, those updates are transmitted to the Origin client running on the user’s computer.”

The lawsuits against EA and Ubisoft are different, likely due to venue issues, but the complaints are almost identical. Pure appears to have also filed similar complaints against Valve Corporation, the Fox News Network, Imgur, CNET, CNN, and Pinterest, among others.  

On Feb. 7, 2018, Nintendo Co., Ltd. and Nintendo of America, Inc. (“Nintendo”) filed two petitions for Inter Partes Review of U.S. 6,219,730 to Nguyen, a patent owned by Genuine Enabling Technology LLC (“Genuine”). 

The challenged ’730 Patent relates to user input:

1. A user input apparatus operatively coupled to a computer via a communication means additionally receiving at least one input signal, comprising:
   user input means for producing a user input stream;
   input means for producing the at least one input signal;
   converting means for receiving the at least one input signal and producing therefrom an input stream; and
   encoding means for synchronizing the user input stream with the input stream and
   encoding the same into a combined data stream transferable by the communication means.

According to Nintendo, the ’730 Patent is anticipated at least in part by the practice of “bit-robbing” which, in short, involves combining an existing signal (e.g., an audio signal) with other signals (e.g., input signals) such that a single data stream could be used to transmit multiple types of data from multiple input.  For instance, Fig. 1B of the ’730 Patent depicts plugging a microphone and speaker into the mouse, in effect combining audio and input data streams:



The use of means-plus-function language may make these claims narrower in scope than they look at first glance.  Before granting Nintendo’s IPR petition, the USPTO Patent Trials and Appeals Board (“PTAB”) will have to figure out what structure is required by the claimed means, and whether Nintendo’s prior art shows that structure.

Nintendo’s Petition for Inter Partes review comes on the heel of the case Genuine Enabling Technology LLC v. Nintendo Co., 1:17-CV-00134-MSG, filed in the District of Delaware on Feb. 8, 2017.  In that case, Genuine asserts that Nintendo’s Wii Remote infringes the ’730 Patent. Per Nintendo, Genuine has also sued Sony for infringement of the same patent.

On Feb. 1, Sony Interactive Entertainment, LLC (“Sony”) filed a Petition for Inter Partes Review of U.S. Patent No. 9,503,742 (the “’742 Patent”).  The prosecution history of the ’742 Patent is not something you see every day: a dispute over a typographical mistake followed an allowance because, despite an admittedly valid rejection, “applicant wishes to obtain a patent.”

As described by Sony, the ’742 Patent relates to stereoscopic image decoding via data compression.  It seems likely that Sony’s filing of the Petition for Inter Partes Review relates to their sales of PlayStation VR headsets.

Strangely, the ’742 Patent has only one claim, which Sony claims should have never been allowed.  According to Sony, during prosecution of the ’742 Patent, the patent examiner made a typographical mistake in an office action: forgetting to cite U.S. Patent No. 5,907,364 to Furuhata et al. (“Furuhata”) to reject dependent claim 23, though Furuhata was cited to reject the independent claim from which claim 23 depended.  On appeal, the Board affirmed all of the examiner’s rejections except for claim 23, noting that the examiner’s error was “perhaps inadvertent” and opening the door for a correction of the rejection.  Perplexingly, the examiner then allowed claim 23, noting in the Notice of Allowance:

The omission of the Furuhata reference appears to be a typographical mistake . . . Examiner informed applicant’s representative that claim 23 should have been affirmed by the board for the same reasons as set forth for claim 1. However, applicant’s representative informed Examiner that applicant wishes to obtain a patent since claim 23 was reversed by the board.

It will certainly be amusing to see what the Board has to say about the above allowance.