A complaint was filed against 35 respondents with the U.S. International Trade Commission by Midway Mfg. Co. alleging common law trademark infringement and copyright infringement with respect to the games Rally-X and Pac Man.

The subject of the copyright claim was the audiovisual work of the two games. It included the screen display of mazes and characters along with their sounds, but did not include the circuit board that stored the audiovisual work or the pattern of game-play. To prove copyright infringement, Midway had to prove ownership and copying by the respondents. Within the ownership prong, among other factors, the audiovisual work must be subject matter that is copyrightable. Artic, one of the respondents, argued that the audiovisual work was not proper subject matter because it was not fixed, meaning that a user could not know or predetermine the sequence of images and sounds since they were dependent upon interaction with the user. The commission rejected this argument stating that the audiovisual worked was fixed in the fact that it was stored in memory and the repetitive appearance of characters and sounds was sufficient regardless of whether the exact audiovisual sequence was displayed each game. Artic further tried to rebut Midway’s copyright by alleging lack of notice. Midway was able to produce printed circuit boards that had the required copyright information. Artic testified seeing the games earlier outside the U.S. without such information, but the commission held the physical evidence as more persuasive and stated that Artic may have seen a counterfeit version. Concerning the copyright’s deposit, the commission made it clear that a videotape was sufficient for audiovisual work even though the typical requirement was a complete copy. Once ownership was established, copying subsequently was easily found as the two games were nearly identical to the respondents’ games.

Artic opposed the common law trademark infringement claims on three grounds. First, they said that Midway had not established its mark in all fifty states, but the commission cited the nationwide advertising to reject this defense. Second, Artic claimed that “Pac Man” and “Rally-X” were titles and thus, could not be proper trademarks. The commission rejected this because they were not merely descriptive of the content of the games, but were names by which the games were traded and sold. Lastly, Artic argued that the names described functional aspects of the game, but the commission concluded that the terms had not gained generic status and remained arbitrary and distinctive.

In determining remedies, the commission found that there was a domestic market for Pac Man that had been efficiently operated and that the infringing games did substantial harm to the market. Conversely, they found that there was no longer a domestic market for Rally-X, as it had permanently declined in popularity in sales and the infringing goods did not substantially affect the market. Thus, concerning Rally-X, the commission did not reach the injury phase due to the lack of a domestic industry. However, concerning Pac Man, the commission issued a general exclusion, agreeing with Midway that cease and desist orders would be insufficient as many new infringers would otherwise likely import games into the U.S. market.

Thanks to Adam Trost for his assistance in the preparation of this case summary.

Microsoft chairman Bill Gates has hinted that the company is considering licensing the software underlying the Xbox games console to outside companies, in a bid to expand its market share.

Read the full story on Gamasutra.

I would be remiss for not mentioning it.

Read the opinion here.

I. Background

In late 1980, Konami Industry Co., Ltd. developed a video game titled “Scramble,” to which, in early 1981, Stern Electronics, Inc., a video game equipment manufacturer, obtained the exclusive right to distribute in North and South America. Stern quickly met with success after the start of sales on March 17, 1981, selling approximately 10,000 units and generating about $20 million in revenue within two months. In April 1981, the United States Copyright Office granted a copyright to Konami for the audiovisual work “Scramble,” based on video tape recordings of the game submitted by Konami.

Scramble:


Also in late 1980, Omni Video Games, Inc. developed and began marketing a video game product, which allowed for playing different games on the same unit. The program for each game could be transferred to a programmable read only memory (PROM), such that playing a particular game on a unit merely required substituting in the PROM containing that game’s program. Prior to March 17, 1981, Omni ordered ten silk screen nameplates, and sold five video game units, bearing the name “Scramble.” In April 1981, Omni began selling a video game unit bearing the name “Scramble,” in which the game was virtually identical to Stern’s Scramble game, i.e., Omni’s game was a “knock-off.”

Stern brought suit against Omni, and the trial court granted a preliminary injunction enjoining Omni from infringing the Stern’s copyright in “Scramble” and from using the trademark “SCRAMBLE” in connection with video games. Omni appealed, arguing that the sights and sounds of a video game should not be afforded copyright protection because the work is neither “fixed in any tangible medium of expression” nor “original” within the meaning of 17 U.S.C. § 102(a) because the sequence of images and sounds vary depending on the actions taken by the player during each time the game is played.

II. Issue

The primary issue before the United States Court of Appeals for the Second Circuit was whether copyright protection extended to the visual images electronically displayed by a video game. The Second Circuit also considered whether Omni was entitled to use the trademark “SCRAMBLE.”

III. Analysis

1. The Copyright Issue

The Second Circuit noted that, without player participation, the display of the video game would undoubtedly be eligible for copyright protection because the display would clearly be an original “audiovisual work” and the memory devices would constitute a “copy” in which the work is “fixed.” The court concluded that “the player’s participation does not withdraw the audiovisual work from copyright eligibility.” Even though the player affects the sights and sounds of the video game, many of the sights and sounds stay the same, such as, in the case of “Scramble,” the appearance of the spaceships, enemy crafts, ground missile bases and fuel depots and the sounds of destroying enemy crafts and dropping bombs. Therefore, the court held that “[t]he repetitive sequence of a substantial portion of the sights and sounds of the game qualifies for copyright protection as an audiovisual work.”

2. The Trademark Issue

Regarding the trademark issue, the Second Circuit upheld the district court’s finding that Omni’s prior use was not bona fide, but instead a “bad faith attempt to reserve a mark.” The Second Circuit reasoned that it was too remarkable of a coincidence that Omni independently thought of the name “Scramble” only to develop a few months later a game virtually identical to Stern’s “Scramble.” The court thought it more likely that Omni appropriated the trademark with the expectation of imitating the audiovisual display. The court also determined the equities justified an injunction because Stern had made a substantial investment and achieved commercial success using the “Scramble” mark, whereas Omni had only placed the “Scramble” mark on five units that were not “Scramble” game “knock-offs.”

The Second Circuit therefore affirmed the district court’s preliminary injunction enjoining Omni from infringing Stern’s copyright and using the trademark “SCRAMBLE.”

Thanks to Brandon Rash for his assistance in the preparation of this case summary.

Want to play massively multiplayer online games, but don't want to spend time building up your character's stats? A new service, GamePal.com, gives anyone the ability to bypass the countless hours it can take to advance deep into online games like World of Warcraft by renting the use of such characters by the month.

Read more here.

From today's Washington Post Express:

"GAMERS: In an apparent first, the Kansas City T-Bones and Schaumburg Flyers will let the results of two people's X-Box [sic] baseball game count for the first two innings of a July 18 game. Then the minor league teams will take the firld in the third."

A friend of ours forwarded us this link to "A Gamer's Manifesto." It's an interesting read, and I agree with some of it's "20 things gamers want from the seventh generation of game consoles." Item 15 includes commentary on "Short-Sighted Business Bull$%!&" and refers to patenting video games.

(Warning: foul-language is used generously throughout the article like an episode of Penn & Teller's Showtime show. The authors might be taken more seriously if they approached the issue with a little more decorum, as many of their points are valid... although not number 15.)

CNN is running a story with some interesting speculation regarding the future of gamemaker Atari.

Midway, the creator of the games Pac-Man, Rally-X, and Galaxian, sued Omni for copyright infringement of these games. During the course of this suit, Midway filed a motion for an ex parte hearing seeking to impound any infringing items in Omni’s possession. A single machine, holding an allegedly infringing version of Pac-Man, was seized from Omni and impounded. However, several days later, the District Court vacated this impound order and not only returned the potentially infringing machine to Omni, but also suppressed this machine from evidence admissible at trial and ordered Midway to pay the attorney’s fees incurred by Omni as they sought return of this machine.

Illustrative authentic Pac-Man units (not the allegedly infringing version):


Midway immediately appealed to the 1st Circuit Court of Appeals, requesting reversal of the decision disallowing impoundment of the machine, suppressing it as evidence, and the award of attorney’s fees. However, Midway’s brief and oral arguments failed to address the main legal issue of this case, appellate court jurisdicion under the “collateral order” doctrine.

Under the “collateral order” doctrine, an interlocutory appeal, or an appeal to a higher court before the lower court has issued a final judgment, is rarely allowable. Such an appeal is proper only when (1) the order being appealed is a final order on an issue of law, rather than judicial discretion, (2) the issue is separable from the other issues to be presented at trial, and (3) that the appeal cannot wait until after the final judgment of the court, because irreparable harm would be probable.

Thus, the question in this case was not whether Midway’s arguments had merit, but whether Midway could appeal while its trial was still in progress. The Court of Appeals held that Midway could not appeal the orders of the District Court until after final judgment of the case.

The Court reasoned that the interlocutory appeal was improper because no irreparable damage would be done if Midway was forced to wait until after trial to appeal. At this time, Midway appeared likely to find more evidence of copyright infringement during discovery, therefore the appeal might ultimately be unnecessary. Further, even if Midway were to lose at final judgment, and Omni’s allegedly infringing machine had since disappeared, Midway could still rely on the accounts of the individuals involved in the seizure. These individual accounts, in lieu of the machine itself, would be credible evidence because they were from the neutral agents of the court who had performed the seizure. These agents had also been accompanied by a Midway engineer who could verify the technical details of the machine.

The Court further noted that under 17 U.S.C. s 503(a), the statute authorizing impoundment, a judge “may” order impoundment if he deems it reasonable. The Court interpreted this statute to establish discretionary power on the trial judge to order an impoundment, which would make an interlocutory appeal improper on this issue. Similarly, the Court reasoned that the order to suppress the machine from admissibility at trial, and the award of attorney’s fees to Omni were discretionary and reparable decisions of the District Court. Therefore, the Court denied Midway’s interlocutory appeal, and allowed the trial to resume in District Court.

Thanks to Brian Brisnehan for his assistance in the preparation of this case summary.

The 8th Circuit Court of Appeals in St. Louis will hear arguments at 9 a.m. today in this case that may decide how the Digital Millennium Copyright Act, or DMCA, applies to computer software and the important practice of reverse engineering. As you may recall, the charges center on "bnetd," free software developed to allow individuals to run servers for hosting online versions of popular Blizzard games such as "Diablo II" and "StarCraft." Blizzard runs its own online service, Battle.net, for those games, but many people have claimed the service is erratic, buggy, and riddled with players who cheat.

Read more here.