As previously reported, Gibson asserts that Activision's Guitar Hero franchise infringes on some Gibson patents. Gibson's patent claims a "musical instrument" that produces an "instrument audio signal." Naturally, in view of Guitar Hero only useing a controller SHAPED like a musical instrument, and only producing inputs based on button presses, construction of these terms is critical to this case. Well the claim construction order is in.

Gibson proposes a broad construction of the terms that would require that a “musical instrument” need only “indirectly produce music” and perhaps have no more than a mere appearance “that corresponds to a specific type of instrument used in the musical performance.” In Gibson’s view, the musical instrument need only be capable of producing an “instrument audio signal” that is “representative of the sounds intended to be made by operating the musical instrument” or “corresponds to the instrument used to create a separated soundtrack.”

Activision proposes a much narrower construction. It would define “musical instrument” as a “traditional musical instrument,” though Activision never provides a coherent definition of “traditional.” Under Activision’s construction, an “instrument audio signal” must be both “audible” and representative of the sounds made by the instrument.

The Court held that the patent requires that a “musical instrument” must be capable of (1) making “musical sounds,” (“musical sounds that would be made . . . by a specific musical instrument”); and (2) either directly, or indirectly through an interface device, producing an instrument audio signal representative of those sounds. (“musical instruments which either directly, or indirectly through an interface device, will produce electrical audio signals”). The Court also determined that the patent establishes that the two requirements are distinct; and, in particular, that the instrument must be capable of making musical sounds independent of the mechanism that outputs the instrument audio signal.

Given this detailed definition of “musical instrument” (and its inherent constraint on the signals produced), the Court found that an “instrument audio signal” need only be construed as “an electrical signal output by a musical instrument.”

Unless Gibson can get this claim construction overturned, or unless they can prove that a Guitar Hero controller makes ACTUAL SOUND, this case appears to be effectively over.

Here is a copy of the claim construction order: 146.pdf

In Bally Gaming Inc. v. IGT, case number 3:06-cv-00483, in the U.S. District Court for the District of Nevada, Bally Sued International Game Technology (IGT) for infringement of U.S. Pat. No. 7,100,916. Claim 1 of the '916 patent reads:

1. An electromechanical indicator comprising: a rotary body having an axis of rotation and which is provided with a plurality of segments radiating from said axis of rotation, wherein said segments are associated with at least two different indicia; a motor coupled to said rotary body such that said rotary body is adapted for a rotating mode and a stationary mode about said axis of rotation; a pointer associated with said rotary body to point to a predetermined segment of said plurality of segments when said rotary body is in said stationary mode; and a segment detector for detecting a rotary position of each of said plurality of segments whereby said motor rotates said rotary body to point said pointer to said predetermined segment which is determined before said rotary body enters a stationary mode.

The Judge (Edward C. Reed, Jr.) found all but one of the 22 claims of Bally's slot-machine patent to be prima facie obvious, based on a summary judgment motion filed by IGT. The judge apparently gave little consideration to secondary factors of nonobviousness, such as the huge commercial success of the patent in games like Wheel of Fortune. That could be a wedge to hammer in on appeal. But this case definitely demonstrates a post-KSR casualty. We'll watch this case and let you know whether it gets a final judgment or a settlement (my money is on settlement, because there is other patent litigation between these two companies, and IGT might want to save its own patents from a similar fate).

Merit Industries and JVL Corp. have settled their ongoing litigation over countertop arcade games. Merit sued JVL back in 2003 for patent infringement of U.S. Pat. Nos. 5,575,717; 5,743,799 and 6,082,887. Fastforward to June 2008, where a jury held that all of the asserted claims of the '799 patent (claims 1,3, and 7) were invalid, both for anticipation and obviousness. The jury judged five of the seven asserted claims in the '717 patent to be invalid, but rejected JVL's contention that four claims of the '887 patent were invalid due to indefiniteness. Thus, although the jury found infringement with respect to all three patents, JVL was liable only for infringement of the two valid claims of the '717 patent and the four asserted claims of the '887 patent.

The jury awarded Merit $1,616,123 in royalties for willful infringement of the patents, but denied the request for an injunction and $24 million in lost-profits on the ground that JVL discontinued the infringing products when the suit was filed in 2003. However, facing the possibility of treble damages (for willful infringement) anda demand for $6M in attorney fees, JVL settled with Merit for an undisclosed sum, and the case was dismissed on Sept. 8, 2008. The case is Merit Industries Inc. v. JVL Corp., case number 03-1618, in the U.S. District Court for the Eastern District of Pennsylvania.

The patents in suit covered a variety of features. For example, claim 1 of the '717 patent (System for creating menu choices of video games on a display) reads:
1. An apparatus for providing menu choices of video games on a display, the apparatus comprising:

(a) a mode selector for setting the apparatus in one of either a programming mode for selecting video game menu options or a menu choice selection mode for selecting video game menu choices for game activation;

(b) a video display for displaying and selecting the video game menu options and video game menu choices, the video game menu options being available for selection as video game menu choices; and

(c) a display controller for simultaneously displaying video game menu options and video game menu choices on the video display when the mode selector is in the programming mode, and for displaying video game menu choices when the mode selector is in the menu choice selection mode.

Claim 1 of the '799 patent (Method for setting game credits in a gaming machine and tallying a total currency amount fed into the machine) reads:
1. A method for tallying a total currency amount fed into a gaming machine which accepts a plurality of different types of coins, each coin type representing a different number of currency units, the method comprising the steps of:

(a) displaying a setup screen on a video display showing a representation of the plurality of different coin types and the total number of currency units associated with each coin type;

(b) selecting the total number of currency units to be associated with each coin type while displaying the setup screen, wherein the selection is made individually for each coin type, a coin type/currency unit ratio being established for each different type of coin; and

(c) tallying the total currency amount fed into the machine based upon the number of coins deposited in the gaming machine and the total number of currency units selected for each coin type.

And claim 1 of the '887 patent (Game machine with automated tournament mode) reads:
1. An automated tournament system for use with a game machine, the game machine implementing the system when placed in a tournament mode, the system comprising:

(a) a plurality of tournament games playable by a plurality of players on the game machine, each of the plurality of tournament games generating a total player score upon completion of game play, the player scores being used to determine the tournament winners;

(b) means for preprogramming at least one sequence of tournament games from the plurality of tournament games; and

(c) means for programming a tournament period for each tournament game, the preprogrammed tournament game for each sequence being playable during the programmed tournament period for the respective sequence.

While the jury ultimately decided that some of the claims were invalid, without a final judgment in this case Merit's claims may just very well live to fight another day...

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.)