United States - Trademark - It's Dangerous To Go Alone! Take This (2024)

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28 April 2017

F Fenwick

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United States - Trademark - It's Dangerous To Go Alone! Take This (1)

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With the annual Game Developers Conference spectacular in our rearview mirror, and the NBA's partnership with Take-Two to launch an esports league for the NBA2K game on the horizon...

United States Intellectual Property

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With the annual Game Developers Conference spectacular in ourrearview mirror, and the NBA's partnership with Take-Two tolaunch an esports league for the NBA2K game on the horizon, gamedevelopers and professional gamers should consider how to bestprotect themselves and their intellectual property as they enterthe new arenas of VR and esports.

More Reality, More Problems

The development of more realistic games comes with the potentialfor more real trademark and copyright infringement problems. Undercopyright law, developers can accurately reflect the exterior ofbuildings in their virtual reality or augmented reality games. Section 120 of the Copyright Act provides thatthe copyright in the architectural design of a building does notcover representations of the building if the building is ordinarilyvisible from a public place. This exception allows developers toaccurately represent the new Salesforce Tower in San Francisco andOne World Trade Center in New York City.

But the same exception may not apply to the interior ofbuildings or other copyrighted works inside or outside of abuilding. If, for example, an augmented reality game places avirtual game token on a sculpture inside a building, has the gamecreated a derivative and infringing version of the sculpture? In asimilar context, some graffiti artists have already sued for thereproduction of their works on clothing or in restaurantdécor, such as Tierney v. Moschino (allegingcopyright infringement based on the use of a graffiti artist'swork on clothing; case settled while there was a pending motionregarding whether graffiti was copyrightable) and Berreau v.McDonald's, No. 2:16-cv-07394 (C.D. Cal.) (allegingcopyright infringement of a graffiti artist's work by puttingcopies of the graffiti on the décor of a McDonald's;case dismissed on personal jurisdiction grounds). These graffitiartists could file a claim against a game developer who recreatedtheir works in a hyper-realistic virtual reality game or if anaugmented reality game modified the graffiti enough to create aderivative work. We have already seen similar copyrightinfringement claims against the NBA2K game for its realisticreproduction of NBA players' tattoos in Solid Oak Sketchesv. Visual Concepts, No. 1:16-cv-00724 (S.D.N.Y.).

For trademarks, the Rogers defense continues to allowgame developers to use a third party's trademarks without alicense where the use of the trademark has artistic relevance tothe game and is not explicitly misleading. Accordingly, a gamedeveloper can generally use the Starbucks mark in therepresentation of a coffee shop to show a realistic version ofdowntown Seattle. The Rogers defense has recently beenused to knock down trademark claims both in advertisem*nts for thegame and advertising in the game in cases like Mil-Spec Monkey v. ActivisionBlizzard (granting summary judgment on trademarkinfringement claims against a commercial showing a clip of gameplay that included the third-party mark) and Virag v. Sony (dismissing trademarkinfringement claims regarding in-game advertisem*nts).

But Rogers is not a cure-all. Developers should becautious about using another's trademark in the name or logo ofthe game itself. In CI Games v. Destination Films, No.2:16-cv-05719 (C.D. Cal.), the plaintiff alleged trademarkinfringement based on confusion between its movie, Sniper:Ghost Shooter, and the defendant's game, Sniper: GhostWarrior. The defendant asserted a Rogers defense in amotion to dismiss, but the court punted the decision, findinginstead that the Rogers defense is better evaluated at thesummary judgment stage. The court reasoned that if a plaintiffcould show that a defendant intentionally named its game somethingsimilar to the plaintiff's movie, then this intent would failthe "not explicitly misleading" prong of theRoger's defense. CI Games potentially takesthe teeth out of a Rogers defense because defendants couldbe forced to wait until summary judgment—and incursignificant costs in discovery and motion practice—beforeknowing whether the defense is available.

Our Trade Secret is in Another Castle

A trade secret is information that (1) is not generally known tothe public, (2) provides economic benefit as a direct result of itssecrecy and (3) is subject to reasonable efforts to maintain thatsecrecy. The classic example of a trade secret is the recipe forCoca-Cola.

If professional gamers have special techniques or methods thathave brought them competitive and financial success, they shouldnot expect those techniques to receive protection under the lawonce those moves are shared with the public. Broadcasting gamingtechniques removes them from trade secret protection because theybecome known to the public. To protect a gaming technique as atrade secret, gamers should limit disclosure and requirenondisclosure and/or confidentiality agreements within gaming teamsand with third parties when possible. An esports team's secretplaybook or specific combination of multiple players'moves—if properly protected from publicdisclosure—could be considered a trade secret. And a tradesecret misappropriation claim might arise if one of those teammembers switched teams mid-season and shared their knowledge of thefirst team's playbook with the new team.

All Your Publicity Are Belong to Us

The right of publicity is the right of an individual to controlthe commercial use of the person's name, image, likeness orother identifiable personality aspect. Generally, the right ofpublicity works to prevent unscrupulous use of an individual'simage in advertisem*nt without permission. For example, a companycannot use a celebrity's image to create the false impressionof that celebrity's endorsem*nt for its product.

Professional gamers may find themselves embroiled in publicitybattles similar to those of professional athletes. Signingsponsorship deals or a team agreement may affect a gamer'sright of publicity to the extent it requires a gamer to appear incertain advertisem*nts or if it permits the sponsor or team to usethe individual gamer's image for advertisem*nts in theircapacity as a gamer. This is similar to the limited right ofpublicity enjoyed by professional football players. The EighthCircuit ruled in Dryer v. National Football Leaguethat the NFL is permitted to use players' names and likenessesin game footage and interviews for historical documentaries becausesuch films "represent speech of independent value and publicinterest." Additionally, the Ninth Circuit recently ruled inMaloney v. T3 Media, Inc. that former NCAAathletes' right of publicity claims are preempted by theCopyright Act "when a likeness has been captured in acopyrighted artistic visual work and the work itself is beingdistributed for personal use."

By contrast, NCAA college football and basketball players havesued Electronic Arts for using their likenesses in video games thatreplicated the athletes' height, weight, build, skin tone, hairstyle, facial features and other individually identifyinginformation in In re NCAA Student-Athlete Name & LikenessLicensing Litigation (holding that EA's unauthorizeduse of student-athletes' likenesses in its video games was nottransformative and not protected by the First Amendment; theplaintiffs' class action suits eventually settled). Use of aprofessional gamer's likeness or name without his or herconsent in advertisem*nts, videos, or video games could createsimilar right of publicity issues, as in Lohan v. Take-Two Interactive and Gravano v. Take-TwoInteractive.

Player Used CDA 230: It's SuperEffective!

Section 230 of the Communications Decency Actstates that "[n]o provider or user of an interactive computerservice shall be treated as the publisher or speaker of anyinformation provided by another information content provider."This statute creates a defense for companies that provide a stagefor speech in the United States from liability coming from theactions or speech of their users.

Under § 230, a gamer's controversial speech on asharing service or a message board generally cannot be used to holdthe service or message board responsible. However, this does notmean that gamers can say whatever they like without consequences. Agamer's speech might still be subject to contractualobligations under the sharing platform's terms of service/use,which could lead to severance of the platform's relationshipwith the gamer or even the banning of the gamer from the service ifhis or her speech is abusive or otherwise improper. Recently, apopular YouTube vlogger had the second season of his originalgaming video series canceled by YouTube and his relationship with aDisney-owned network severed as a result of his controversialspeech. Gamers may also be subject to additional behavioralstandards under contract if they are on a gaming team or receive asponsorship.

As powerful as § 230 is, there has been a recent pullbackin its protections at the motion to dismiss stage. Message boardoperators, especially those that actively curate their users'communications, should not presume that a court will hold they havecomplete immunity under § 230's safe harbor. For example,in Enigma Software v. Bleeping Computer,the court held that § 230 may not bar defamation and falseadvertising claims against a message board operator based onconduct of a moderator. And in Darnaa v. Google, a federal court inCalifornia held that § 230(c)(2) immunity did not bar a claimfor breach of the implied covenant of good faith and fair dealingwhere YouTube removed a video based on suspicion that the uploaderinflated view counts.

With these recent developments in the gaming world, gamedevelopers, professional gamers and other players in the virtualreality and esports space should be mindful of how to protect theirown intellectual property rights while not infringing on the rightsof others.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circ*mstances.

United States - Trademark - It's Dangerous To Go Alone! Take This (2024)

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