Hidden Image Technology Solutions v. Thomas L. Barnhart
U.S. District Court, Northern District of Georgia
Case No. 11-cv-02415, Filed July 22, 2011

6,296,900: “Method of making hidden image game piece.” Granted 10/2/2001.
5,984,367: “Hidden image game piece.” Granted 11/16/1999.
7,747,472: “Hidden image game piece.” Granted 6/29/2010.
6,629,888: “Hidden image game piece.” Granted 10/7/2003.

These are physical game patents, consisting of printed pieces, that when held against pre-programmed colors on a television or computer screen, reveal hidden messages. The first use of this patent by Brooks, in the early 1990s, was for a hidden printed message distributed in newspapers, called the “Red Reveal Game Piece.” When held against a red part of the screen set to appear during a Dallas Cowboys football game, the game piece would reveal a hidden message or advertisement. The idea garnered interest from television outlets like MSNBC, and Brooks also worked to adjust the invention to the growing opportunity of the internet. Brooks developed a WebDecoder® based on the patents above, and shared his idea for marketing it with Barnhart. According to Hidden Image’s complaint, Barnhart cajoled himself into the position of co-inventor of these patents by convincing Brooks that this was necessary for Brooks’ own “protection.” In reality, according to Hidden Image, Barnhart was not an inventor of the patents, and Brooks was the true sole inventor.

The complaint alleges that Barnhart not only forced his way into the co-inventor position on three of the patents, but without Brooks’ knowing, he had himself listed as the sole inventor of the ‘888 patent. Barnhart also attempted to license these patents giving Brooks only 10% of the royalties. Brooks in 2003 licensed his rights, title and interest in these patents to a subsidiary of Hidden Images. Hidden Images now seeks to have Barnhart’s name stricken from the records of the USPTO, and to instate Brooks as the sole inventor of all four patents. Hidden Images also seeks an injunction barring Barnhart from using the patents, and to recover damages, profits, and attorney’s fees.

Because this is a physical game patent, we won’t follow this one further. You can learn more about the case filings at PriorSmart.

In a previous post we reported on the internet buzz surrounding the issuance to Facebook of U.S. Patent No. 7,669,123, entitled “Dynamically Providing a News Feed About a User of a Social Network.” Many users were outraged that the patent system would allow businesses to register such patents. You can read our analysis here.

Facebook has certainly continued to legally enforce its patents, and last November it filed suit against Phoenix Media, a Boston-based alternative newspaper publisher, for infringing one of its database search patents. The patent-in-suit is U.S. Patent Number 6,199,157, which covers a system for configuring an item such as a machine that can have a multitude of optional components. Facebook claimed that Phoenix Media infringed the patent by operating websites that allowed users to search for information by filtering data according to multiple criteria.

Last Friday, July 29th, 2011, Phoenix Media asked a Massachusetts federal court for summary judgment in the case, arguing that the '157 patent is invalid. According to Phoenix, the technology claimed by the patent was widely in use when the patent application was filed in 1998. According to Phoenix's motion, "...at least in the area of database searching (the field at issue in this case), such methods are anything but novel. The prior art shows they were known and in use long before the application." Phoenix cites several articles that described similar systems before the application for the Facebook patent was filed, including one from 1996 discussing features of then-popular search engines AltaVista and Lycos Inc.

Since this isn't strictly a video game patent case, we won't follow it further, but if you'd like to learn more, visit Law360.

On July 15, 2011, Activision filed a complaint with the National Arbitration Forum in an attempt to get control of the domain name www.modernwarfare3.com. The website, which uses visuals from Activision’s Modern Warfare 3 game, and which at first glance appears to be related to Modern Warfare, actually directs to users to a site in support of Electronic Arts’ competing Battlefield 3 game. Of late the website has also hosted videos with titles like “Modern Warfare 3 is a Joke.”

The National Arbitration Forum administers the Uniform Domain Dispute Resolution Policy which was established in the late 1990s to protect trademark holders from third parties that registered a domain name that could be construed as being an official source of information. Here, the domain ModernWarfare3.com was registered by an unnamed person on March 26, 2009, via GoDaddy.com—long before Modern Warfare 3 was announced by Activision. In its complaint, Activision argues that the Modern Warfare brand was famous prior to the registration of the ModernWarfare3.com domain name, and at that time the brans was already a highly distinctive and famous trademark that symbolized substantial goodwill. As such, even though Modern Warfare 3 was not yet launched, the brand itself was famous enough to establish Activision’s trademark rights to related domain names.

Under the rules of the UDRP, Activision must establish that the ModernWarfare3.com domain is identical to a trademark it has the rights to, that the person who registered it has no rights to the domain name, and that the individual in fact is using it in bad faith. The first two factors appear to hold in Activision’s favor. As to the third factor of bad faith, Activision's complaint says that "it appears that the [site owner] supports the game Battlefield from the game developer Electronic Arts," citing that not only did the domain at one time redirect to the Battlefield website, it also urged visitors to "grow up and forget about Modern Warfare 3 (because it looks just like Modern Warfare 2) and buy Battlefield 3 instead," all while having the logos and appearance of a Modern Warfare 3 site that Activision says was confusing to consumers. In addition, Activision asserts that the site hosted advertisements, indicating that the unknown owner was profiting from their trademarked brand. Activision is asking that the National Arbitration Forum give it ownership of the domain name immediately. We note that, as of July 20, 2011, the modernwarfare3.com site is no longer loading.

U.S. District Court, District of Minnesota

Case No. 11-cv-01928, Filed July 15, 2011

Fantasy Flight Publishing, owner of the war strategy board game BattleLore, has filed suit against European company, Puffin Software, for copyright infringement and unfair competition. Puffin allegedly sells a computerized version of a game almost identical to BattleLore online, through Apple’s App Store and its own website. According to the complaint, BattleLore was created by famous board game designer, Richard Borg, and Fantasy Flight acquired all copyrights in the BattleLore game from him in September 2008. Fantasy Flight registered its copyright to the game with the Copyright Office on June 15, 2011, one month before filing this suit.

Both games are set during a European medieval period, but Puffin’s version limits troops to Vikings. In addition, both games have three sectors at the player’s left, center and right, and the abilities of the troops or Vikings are determined by a color-coding system: green for fast, blue for average and red for strong, according to the complaint. Fantasy claims that Paivinen first approached them with a prototype for a computerized version of BattleLore, but when they were slow to respond, he went ahead and created his own version, launching it on the App Store.

In addition to copyright infringement, the suit raises claims of unfair competition under the Lanham Act and deceptive trade practices and unjust enrichment under state law. Fantast Flight asserts that it asked Puffin to cease and desist from its infringing activities, without success. It claims the unlawful activities are putting its reputation at risk because it has no control over the nature, quality and direction of the computer adaption of the game and how the unauthorized work is developed or distributed. Fantasy is seeking a permanent injunction, damages, pre- and post-judgment interest, and attorneys’ fees and costs.

U.S. District Court, District of Delaware

Case No. 11-cv-00586, Filed July 1, 2011

Impulse Technology, an Ohio-based company, sued Microsoft Corp in Delaware yesterday, alleging that the Xbox Kinect game console infringed on seven of Impulse’s patents for technology that tracks users’ movements and lets them play video games without a controller. The patents in suit are U.S. Patent Nos. 6,308,565; 6,430,997; 6,765,726; 6,876,496; 7,359,121; and 7,791,808 describing a “System and method for tracking and assessing movement skills in multidimensional space,” and U.S. Patent No. 6,749,432 covering an “Education system challenging a subject’s physiologic and kinesthetic systems to synergistically enhance cognitive function."

In addition to Microsoft, a slew of other companies who make games for Xbox were named as defendants. Eight video game makers, including EA, Sega, and Konami, stand accused of making exercise games, sports games and other games designed for the Kinect system that violate Impulse’s technology. Impulse alleges that like Microsoft, these companies are guilty of making, selling and importing into the U.S., games that infringe several of their patents.
Impulse is seeking a permanent injunction, damages, treble damages, interest, attorneys’ fees and costs. According to Law360, a representative for Microsoft said the company is reviewing the complaint and had no comment.

United States Court of Appeals for the Second Circuit

Case No. 10-2690-cv, Filed February 20, 2009

As comics often serve as sources for developing video games, we note with some interest a ruling by the second circuit on Friday, June 24, 2011, concerning whether the 2008 film You Don’t Mess with the Zohan infringed a comic book creator’s copyright in his story. Robert Cabell filed suit in 2009 alleging that his comic character, Jayms Blonde, a gay ex-US Navy SEAL wielding an Uzi disguised as a hair dryer, was the unauthorized basis for the film’s Zohan character, a former Israeli counterterrorism agent who leaves the Mossad to become a hairdresser.

A district court in New York had granted summary judgment to the defendants on May 26, 2010. The court found that at the base of both works was the unprotectable idea of a crime fighting hairdresser, and any protectable expression of that idea was only superficially similar between the characters concerned in the suit. The district judge elaborated that the characters were easily distinguishable beneath the surface-level similarities. For example, while the Jayms Blonde comics were rife with humor “based on gay double-entendre,” Zohan “derives much of its humor by exaggerating Arab and Israeli stereotypes." Also, while both works were filled with sexual humor, in Zohan the character’s exploits with members of the opposite sex, and the “average lay observer would not mistake Zohan’s escapades with his elderly female clients for any of Blonde’s amorous activities.”

Campbell tried to prove that Adam Sandler, the film’s star and co-writer, had access to his work because they were MySpace friends. The judge found the submitted evidence, a screenshot of a MySpace page displaying an Adam Sandler profile picture, to be unconvincing as many MySpace users frequently put up publicly available images to impersonate celebrities. In addition, Sandler said in a sworn declaration that he never had a MySpace account. Judd Apatow, who wrote the screenplay, also swore that he finished the screenplay in July 2000, well before Cabell’s comic was published in 2002.

In a summary order on June 24, the 2nd Circuit affirmed the lower court’s order of summary judgment as “thorough and well-reasoned.” The 2nd Circuit opinion reiterated that “aside from the unprotectable ideas of brandishing a blow dryer as a weapon, and the characters’ fighting poses, there is no plausible basis for a reasonable jury to find that the parties’ respective expressions of the concept of a crime fighting hairdresser are substantially similar.”

Wildcat Intellectual Property Holdings, LLC v. 4Kids Entertainment, Inc. et al
U.S. District Court, Eastern District of Texas
Case No. 11-cv-305, Filed July 1, 2011

Wildcat’s complaint alleges that a number of video games and online trading card games infringe the ‘216 patent. These include EA’s Battleforge, Konami’s Marvel trading card game, Nintendo’s Pokemon trading card game, and Zynga’s Warstorm. The complaint alleges that the defendants not only directly infringe the patent, but that they knowingly induced infringement by making these games available to their customers online, and/or by importing these games to the United States and making them available here. Wildcat requests relief in the form of a permanent injunction, damages, costs, expenses, and attorney’s fees. We’ll keep an eye on this case and keep you updated.

SocialApps LLC v Zynga Inc. et al
U.S. District Court, Central District of California
Case No. 11-cv-00919, Filed June 17, 2011

Achates Reference Publishing, Inc. v. Symantec Corporation et al.
U.S. District Court for the Eastern District of Texas
Case No. 11-cv-00294, Filed June 20, 2011

Especially relevant to video games are the claims that EA’s Sims games and Valve’s Left4Dead and HalfLife games infringe these patents. Achates alleges that “defendants have infringed the '889 patent and the '403 patent by making, using, selling, and offering for sale software that uses the product activation technology described and claimed in the '889 and '403 patents, without authority of Achates.”

This is the third time in four years that Achates has brought suit to defend these patents. The first suit, in November 2007, was brought against Microsoft, and was dismissed in December 2008, at request of the parties. The second suit was filed in November 2009 against nine software companies, including McAfee and Intuit. Those cases were all dismissed by August 2010, again by request of the parties, after they reached an undisclosed agreement.

In this latest suit, Achates is seeking a determination of infringement, treble (triple) damages for willful infringement, attorneys’ fees and a permanent injunction. This case isn't exactly focused on video games, so our updates may be minimal.

For more on this case, visit Law360.

Zynga Inc. v. Vostu USA Inc.
United States District Court, Northern District of California
Case No. 3:11-cv-02959-MEJ, Filed June 16, 2011

Datel Holdings Ltd. v. Microsoft Corporation
United States District Court, Northern District of California
Case No. 2009-cv-05535, Filed November 20, 2009

This case concerns an area of law in relation to the DMCA that it still in flux—can there be a breach of the DMCA even though the circumvention in question had no infringing intent or purpose? One major case on point is the Lexmark decision coming out of the Sixth Circuit, where the court found that a company that made microchips unlocking Lexmark printers to enable them to use unauthorized ink cartridges, was not liable under the DMCA. Another major case, going in the opposite direction, was the World of Warcraft case coming out of the Ninth Circuit where the court found that a bot that automatically played the lower levels of WWC for the user was a violation of the DMCA because the bot circumvented a measure that “effectively controls access to a copyrighted work” even though the circumvention had no infringing purpose. The distinction, however, is that in Lexmark the alleged infringer was producing a compatible product, whereas in the WoW case the alleged infringer only produced software that allowed you to cheat the game.

On June 15, 2011, the Electronic Frontier Foundation filed an amicus brief in support of Datel. EFF believes that letting users use a third party memory card does not put Microsoft at risk of copyright infringement, and their brief alleges that Microsoft is misusing the DMCA to quash competition in the Xbox 360 memory card market.

For its part, Microsoft indicated in its filings that Datel’s source code used for the chip authentication is strikingly similar to Microsoft’s, and that if the Datel devices are found to be infringing, “Datel can claim no antitrust injury with respect to them.” In a related suit, Microsoft is also suing Datel for patent infringement over an Xbox accessory controller.

Square Enix Limited v. Does 1-15
U.S. District Court, Western District of Washington
Case No. 11-cv-01045, Filed June 22, 2011

According to the complaint, and as is common in the video game industry, Square Enix arranged a limited preview of an unpublished version of the game for select members of the video game press. These selected entities could access the game distribution platform through a secret, protected Internet portal. The reviewers were required to sign non-disclosure agreements, prohibiting any distribution of the game preview, and limiting the information they were allowed to disclose about the game.

One of the video game reviewers authorized to view the game preview was an Italian video game review magazine, GMC. Unknown individuals logged into the restricted internet portal to view the game preview using GMC’s access information. According to the complaint this was done without the permission or knowledge of the GMC reviewer, and came from an IP address not associated with GMC. The unknown defendants then proceeded to copy the game preview, and distribute it to other unknown third-party defendants using peer to peer file sharing.

Square Enix is claiming direct, contributory, and vicarious copyright infringement. It has also brought claims under the Computer Fraud and Abuse Act, citing a provision that allows for claims against unlawful access to information on a “protected computer” used in interstate or foreign commerce. Square Enix contends that its protected internet portal satisfies the description of “protected computer” found in the act. They cite damages in excess of $5000, and are seeking a permanent injunction of copying and republishing against defendants, as well as actual and statutory damages, and attorney’s fees and costs. We’ll update you on future developments in this case.

Tomita Technologies USA LLC v. Nintendo Co.
U.S. District Court, Southern District of New York
Case No. 11-cv-04256, Filed June 22, 2011

A technology company based in Japan and the U.S. brought suit against Nintendo for allegedly infringing on their stereoscopic (3-D) patent with its new 3-D gaming system. According to the complaint, Tomita Technologies was founded by a former Sony engineer, who after retiring from Sony after 30 years, went on to research and invent nearly 70 patents, and over 100 patent applications, since 2002. Among these inventions is U.S. Patent No. 7,417,664 (the ‘664 patent) titled “Stereoscopic Image Picking Up and Display System Based Upon Optical Axes Cross-Point Information.” According to the complaint, the ‘664 patent deals with “technology relating to displaying stereoscopic images on-screen for viewing with the naked eye, i.e., without utilizing glasses or other devices.”

Tomita alleges that Nintendo's 3DS system, which launched in the U.S. in March, infringes on the ‘664 patent. The 3DS system allows for gameplay featuring real 3-D graphics, with no need for special glasses. According to the Sony website, as cited in the complaint, 3DS achieves this by using two outer cameras to see the world in 3-D, mimicking the human eye. Tomita alleges that Nintendo is willfully infringing on its ‘664 patent in order to make 3DS possible. The complaint does not detail how 3DS, a hand-held gaming system, infringes the patent.

According to the complaint, Tomita applied for the patent in 2003 and the U.S. Patent and Trademark Office issued it in August 2008. This is not the first time Nintendo's DS series of hand-held systems has attracted attention from other patent litigants. Law360 reports that, in late May, Japan-based Milestone Co. sued the company over the camera lens system its DSi system. And, in February, a Texas patent-holding company accused Nintendo of infringing a patent on motion-sensitive video game controllers.

Brown et al. v. Entertainment Merchants Association et al.
United States Supreme Court
Case No. 08-1448

The Supreme Court ruled on Monday, June 27, 2011, that a California law regulating the sale or rental of violent video games to children was unconstitutional on First Amendment grounds. “No doubt a state possesses legitimate power to protect children from harm," said Justice Antonin Scalia, who wrote the majority opinion, "But that does not include a free-floating power to restrict the ideas to which children may be exposed." The California law bars the selling or renting of video games to people under 18 when the games involve killing, maiming, dismembering or sexually assaulting a human being. Retailers who violated the act would have been fined up to $1,000 for each infraction.

In ruling that the California law restricted free expression without valid justification, Justice Scalia was joined by four justices, while Chief Justice Roberts, and Justice Alito filed concurrences, and Justices Thomas and Breyer dissented. This is the first emphatic statement from the nation’s highest court that video games qualify for full First Amendment protections. The court noted that “Like the protected books, plays, and movies that preceded them, videogames communicate ideas—and even social messages…That suffices to confer First Amendment protection…Whatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment’s command, do not vary when a new and different medium for communication appears.”

In addition to confirming video games as free speech, the court drew a line between committing violence, and depicting violence. Citing last year’s 8-1 decision in U.S. v. Stevens, 559 U.S. (2010), striking down a federal law making it a crime to buy and sell depictions of animal cruelty like dog fighting videos, the court found the California statute to be an impermissible content-based restriction on speech, and that “there was no American tradition of forbidding the depiction of animal cruelty -- though States have long had laws against committing it.... As in Stevens, California has tried to make violent-speech regulation look like obscenity regulation by appending a saving clause required for the latter. That does not suffice."

The court also rejected California’s attempt to create a wholly new category of content-based regulation that is permissible only for speech directed at children. “That is unprecedented and mistaken... No doubt a State possesses legitimate power to protect children from harm... but that does not include a free-floating power to restrict the ideas to which children may be exposed. California's argument would fare better if there were a longstanding tradition in this country of specially restricting children's access to depictions of violence, but there is none.” Scalia then went on to cite Grimm’s Fairy tales as examples of gory material we already feed to children. Specifically he talked about the punishment for the evil stepmother in Snow White, who is made to dance in red-hot slippers till she fell dead on the floor. (This is definitely not in the Disney version!)

Justice Thomas’ dissent specifically disagreed with the majority on the point of regulating speech for minors. His dissent asserted the drafters of the First Amendment did not understand it to protect minors’ free speech rights—“The freedom of speech, as originally understood, does not include a right to speak to minors (or a right of minors to access speech) without going through the minors’ parents or guardians.” Justice Breyer also dissented, saying the statute survived First Amendment scrutiny. He relied on studies that he said showed violent video games were positively associated with aggressive behavior, arguing that the court should defer to legislatures, and expert opinions in such cases.

This is a landmark ruling, with implications for more than just violence in video games. As the court noted, this case is the latest in a series of attempts by the California legislature to regulate entertainment content. Industry experts predict that as gaming companies continue to expand their footprint and increasingly use digital distribution methods, including social networking games and mobile titles, legal action relating to privacy and security in games will increase. For more industry analysis, see Gamasutra.

As of June 14, 2011, the rights to the hit 2005 adventure game, Psychonauts, have reverted to its original publisher Double Fine. Previously, Double Fine could produce new games in the Psychonauts series (which they haven’t because of a lack of funds) but could not re-publish or financially benefit from the original. The rights to the original Psychonauts had been signed over to Majestic Publishing, but that contract has now expired. While there are some contractual obligations that need to be worked out before Double Fine gets the full financial benefit of ownership and sales in Psychonauts, fans are hoping this will lead to the long awaited development of Psychonauts 2. Double Fine has no plans to develop a sequel for now, but they assure fans they have “some [other] fun stuff to announce” in the near future.

For full coverage see Gamasutra

Developments at the USPTO earlier this month indicated that Microsoft had plans for a new, interactive advertising platform utilizing the Xbox 360 Kinect camera controller. On June 6, 2011, Microsoft filed a trademark application for the term “NUADS” for “advertising services, namely, promoting and marketing the goods and services of others through online interactive video games by enabling consumers to interact with third-party advertising content through voice or body gestures via computer game console and sensor devices.” See full trademark application here.

Parallel Processing Corporation v. Sony Corporation of America
United States District Court, Eastern District of Texas
Case No. 07-353, Filed July 26, 2007