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).

Copyright Infringement

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.

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.

I recently wrote a series of short articles for LinuxInsider regarding IP issues as they arise in virtual worlds and video games. Each article was necessarily short, so there wasn't room to go into a lot of detail, but it provides some basic IP information regarding patents, copyrights, and trademarks for those that are interested:

The Rocky Legal Landscape of Virtual Worlds, Part 1: Trademarks (Nov. 12, 2008)
The Rocky Legal Landscape of Virtual Worlds, Part 2: Patents (Nov. 19, 2008)
The Rocky Legal Landscape of Virtual Worlds, Part 3: Copyrights (Nov. 26, 2008)

Well, as is often the case, the cost to settle far outweighs the cost to litigate to prove a point. It appears that is true here. As we previously reported, THQ sued Activision over the cover artwork that Activision was going to use for its baja racing game. Instead of litigating to determine whether it was copyright infringement (or trade dress infringement) or not, Activision appears to have agreed to simply change the artwork, shown at left. The artwork was taken from a court filing by Activision, after which THQ filed papers on Nov. 18, 2008, dismissing the lawsuit with prejudice (meaning they cannot refile with respect to this issue).

Would it have been infringement by Activision? Who knows. But reasonable minds definitely prevailed in this case, as both sides realized that litigation would have far outweighed the cost to simply change the artwork before the game is released. Case closed.

Its not every day that we get to report TRADEMARK news, so this is a refreshing change from the norm. On Nov. 11, 2008, the United States Patent & Trademark Office granted what is believed to be the first trademark registration for a user's avatar as an indication of the source of goods & services. Registration number 3,531,683 is for Computer programming services, namely, content creation for virtual worlds and three dimensional platforms. The interesting part, however, is the mark itself (pictured at left), which is an actual avatar in the virtual world of Second Life. The mark was registered on the Principal Register, meaning that the mark inherently has secondary meaning as a source of origin of goods and/or services (i.e., the mark is not generic or descriptive). The description of the mark reads: "The color(s) black, white, green, peach and blue is/are claimed as a feature of the mark. The color blue appears in the wings and the hair accessories. The color green appears in the shirt and skirt. The color black appears in the hair, eyes, eyebrows, lips, glasses, necklace, bra, waistband, in the striped pattern on the arms and stockings, as well as the toe and calf areas of the boots. All the elements of the drawing are also outlined in black. The color white appears in the eyes, the striped pattern on the arms and legs, as highlights on the black toes of the boots, on the front of the boots, and in the laces. The color peach appears in the skin."

As the boundary between virtual world and real world continues to blur, trademark owners are now more likely than ever to consider enforcing trademark rights across real/virtual world boundaries. It's also nice that the USPTO considers use of a trademark in a virtual world to be a use in interstate commerce (a requirement for obtaining a federal trademark registration, because federal trademark rights originate under the commerce clause of the United States Constitution).

Score 1 for virtual world IP rights.

Well, it looks like Nintendo has been sued for patent infringement again. This time by Motiva LLC, for infringement of U.S. Pat. No. 7,292,151, which is directed to a "Human Movement Measurement System." The patent appears to relate to "a system and methods for setup and measuring the position and orientation (pose) of transponders. More specifically, for training the user to manipulate the pose of the transponders through a movement trajectory, while guided by interactive and sensory feedback means, for the purposes of functional movement assessment for exercise, and physical medicine and rehabilitation." The '151 patent has 91 claims, so there might be a bit of work to do in this case, unless Motiva only asserts a few claims.

The title and above description would make one think this has something to do with Wii Fit, but the claims are not so limited. For example, claim 1 recites:

1. A system for tracking movement of a user, comprising: a first communication device comprising a transmitter for transmitting signals, a receiver for receiving signals and an output device, said first communication device adapted to be hand-held; a processing system, remote from the first communication device, for wirelessly receiving said transmitted signals from said first communication device, said processing system adapted to determine movement information for said first communication device and sending data signals to said first communication device for providing feedback or control data; and wherein said first communication device receives and processes said data signals from said processing system and wherein the output device provides sensory stimuli according to the received data signals.

Claim 1 indicates that the first communication device is hand-held, which would appear to relate most closely with the Wiimote, not the Wii Fit. Claim 50 (the only other independent claim), also appears to be describing the Wiimote:

50. An apparatus for use in tracking movement of a user, comprising: a transmitter for transmitting signals; a receiver for receiving signals wirelessly from a remote processing system; wherein the apparatus is hand-held; wherein the receiver is adapted to receive feedback or control data signals from the processing system, the feedback or control data signals derived from processed information including movement information of the apparatus; and wherein the receiver receives the data signals from the processing system and wherein the apparatus processes the received data signals to provide feedback or control information to the user.

The '151 patent was filed July 22, 2005, and the earliest possible priority date of the '151 patent is July 29, 2004. The Nintendo Wii was launched November 19, 2006, and was certainly in development for quite some time before that, so I am willing to bet that the validity of the '151 patent is a major issue in this case (in addition to the alleged infringement). Nintendo is sure to argue that the independent claims read on any motion sensor system, and Nintendo was not the first to use such a system (although Nintendo was arguably the first to "successfully" incorporate such a system into a popular game console, which is why they are being sued).

Here is a representative figure from the patent:


The case is Motiva, LLC v. Nintendo Co. Ltd. et al., docket 6:08-cv-429, filed Nov. 10, 2008, in the Eastern District of Texas (Tyler Division). We will add the case to our tracker list and keep you posted.

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.