Archiwa: trademarks

Recent days have brought us another interesting news in the video games industry. Media report that Ubisoft sued Google and Apple. The case concerns a mobile game called Area F2, made by Chinese developer Ejoy.com, which belongs to the Alibaba company. According to the lawsuit, the mobile game is a “carbon copy” of popular Tom Clancy’s Rainbow Six: Siege game, released on consoles and PC. Ubisoft’s statements are hard to deny – the similarity is striking. In this article I will present, which legal arguments could be used by Ubisoft against Chinese developer and why we see Apple and Google on the defendants side and not Ejoy.com and Alibaba.

Games cloning is a phenomenon which has existed almost as long as the video game industry itself. There are numerous cases of games being blatant copies or imitations of popular titles. First disputes regarding such games appeared as early as in the ‘70s and are related with the legendary game Pong. Nowadays, the problem of clones is particularly noticeable on the mobile games market. Lower costs of production, as well as easier and cheaper process of releasing games on Google Play or AppStore have caused these marketplaces to be flooded with games openly “inspired” by other popular titles.

Games cloning is an issue particularly complex to address from copyright’s point of view. The border between legal inspiration and illegal infringement is very fluid. Copyright does not give protection to ideas, methods or rules. Only specific, creative expression of an idea is protected. Therefore, copying the mechanics of one game in another does not infringe copyright as long as no protected elements of the game are copied, such as art, music, assets or source code.

Not every element of the game normally protected by copyright will be protected in a particular case. It may turn out that apart from the mechanics of the original game, the creators of the clone only copied elements typical for the genre, such as first-person view in the shooter or spellcasting in the fantasy game. These elements are not usually protected by copyright. In the US, such elements are known as scènes à faire, elements almost mandatory in a particular genre. In Poland, we would probably recognise such elements as not creative because of their prevalence in numerous works.

Other intellectual property rights

Other intellectual property rights may be more appropriate to protect a video game from cloning. Clone creators often use similar or even identical names and icons for their productions to lure the consumer to their game. One way to protect yourself against such practice may be to register the name of the game, its logo or icon, and even the names and images of game characters as trademarks. This may effectively discourage cloning or provide for an easier way to prove an infringement in a case when a clone is created. If the game mechanics are truly innovative, it is also worth to consider registering them as a patent (this is what Techland has done with the movement mechanics in Dying Light).

Unfair competition

In a situation when clone developers have not infringed upon copyright or any other intellectual property rights, there is one more legal weapon in clone wars – unfair competition law. Release of the clone may be considered as an act of unfair competition. Clones often try to mislead the consumer that the game comes from a developer which is particularly renowned on the market, either by misleading label on the platform or by passing off. Such behaviour is prohibited. The developers of the original game are entitled to claims for stopping the infringement, remedy, damages or a declaration of an infringement from the clone developers.

The liability of Apple and Google

Based on the rules of the liability of clones’ developers and publishers for infringing rights of game developers and publishers why then in the case of Area F2 Ubisoft sued Apple and Google, not Ejoy.com and Alibaba?

Apple and Google are Internet service providers, AppStore and Google Play respectively, which enable users to buy or download for free games (in this case, clones) directly from their platforms. According to reports, Ubisoft has sent notices to both companies, demanding the takedown of the game from their services. Tech giants did not react to the French publisher’s demands. According to the US Digital Millennium Copyright Act (analogous act in Europe is the so-called e-commerce directive), in case of no reaction to the notice regarding takedown of copyright-infringing materials (e-commerce directive is not limited only to copyright infringements), Internet service providers are liable for the infringement like the direct infringer French publisher probably hopes for the lawsuit to force the giants to react to the emergence of such clones in the future.

Clone wars – a battlefield report

As I mentioned in the introduction, disputes regarding clones have been present in the US almost from the beginning of the video games history. At the beginning of the’80s there was a dispute regarding the cult arcade game– Asteroids. The company called Amusement World created, in the opinion of its author, Stephen Holniker, a superior copy of the game, called Meteors. Atari, the publisher of Asteroids, saw Meteors at the trade fair and decided to file a lawsuit against Amusement World for copyright infringement. To a surprise of many, Atari suffered a defeat. Thanks to this case we got a precedent ruling that the idea for a video game is not protected and as long as there is no copying of particular protectable elements of the game, there is no infringement. The decision in this case opened the doors for the creation and publishing of copies of famous video games. For decades, courts have not really departed from the argumentation presented in this judgement.

Asteroids (left) and Meteors

Chances for a change have appeared at the turn of the first and second decade of the 21st century. The case that expressed a different approach to games cloning concerned a different legend – Tetris. In 2009 a company called Xio published a Tetris clone – a game called Mino. Xio’s production was indistinguishable at first sight from Tetris, even though all its elements which were protected with copyright– art and sounds – have been substituted. Deviating from the accepted practice, the court decided to make an overall assessment of the “impression” that a clone makes on its recipients. Following the court’s line of reasoning, it is therefore not enough to make minor changes to the original to avoid liability for video game’s copyright infringement.

Tetris vs Mino (source)

Similar conclusions can be drawn by looking at Spry Fox v. 6Waves case. The dispute concerned a game called Yeti Town, which copied the game mechanics of a title called Triple Town, however significantly changed the art and setting of the game. Although the case has ultimately ended with a settlement, the court’s decision which allowed for the trial suggested a similar approach as in the case of Mino game. The court has drew his attention not only to the protected elements of the game, but also to the game mechanics and the impression of the recipients, supported by bloggers’ opinion who have pointed out the striking similarity between both titles. The decision of the court has been also influenced by the name of the disputed game and the fact, that the publisher of Yeti Town was initially supposed to publish Triple Town at social media platforms, but the negotiations between the parties have failed.

Triple Town vs Yeti Town (source)

Summary

Games cloning is a morally wrong, but incredibly lucrative business and unfortunately it does not seem like it could end soon. Clone developers save time on the process of designing games, which allows them to make quick money. Clones may sometimes even be used as a tool for defrauding personal information or offences against minors, which has been shown by recent example of Club Penguin clones. Apple and Google, as the “gatekeepers’ of their ecosystems do not want to create an image that it is hard for developers to access their platforms, which could discourage devs to create games for their platforms.

It is hard to tell what would be the final result achieved by Ubisoft in a case which has become an inspiration for publishing this article. Proving a copyright infringement, which is required for tech giants’ liability might be very hard. For sure, the publisher counts on a similar outcome as in the Triple Town case. As in the case of this simple game, the cloning is evident, and the opinions of Internet users are unequivocal. No matter the end result, Ubisoft has managed to score a first win – Ejoy.com decided to delist the Area F2 from App Store i Google Play to „carry out improvements in order to deliver a better experience to players”. It is very likely that this result will satisfy the publisher and the suit will be withdrawn, and the controversial game will come back online thoroughly changed.

Not everyone is “lucky” to be as big and as respectable as Ubisoft. It is therefore worthwhile to discourage others from cloning our game in advance, for example by securing rights to some of its elements. Regardless of the legal measures, it is also important to be aware of the danger and prepare for possible cloning of our title, for example by planning the game’s release cycle in such a way that the original game will appear on key markets first.

The video games industry has had a troublesome relationship with the arms industry for quite some time. Companies like Electronic Arts or Activision Blizzard used to get into license agreements with gun manufacturers and include special thanks to them in game credits, which sparked controversies connected with the American debate on gun violence. At least from 2013, EA stopped entering into licenses with gun manufacturers, however it emphasised that it still has a right and intention to use them. Around the same time, EA has settled its case with the makers of Bell Helicopters regarding the use of the their machines in the Battlefield 3, where it held that the US Constitution’s First Amendment gives it a right to depict these machines in the game without obtaining licenses.

Last week (on March 31st), United States District Court for the Southern District of New York has issued a decision which confirms the view held by EA, however in a case involving another big publisher – Activision Blizzard. Almost three years ago, Activision has been sued by AM General, the manufacturer of the iconic military vehicle – the Humvee. AM General has asserted that Activision has used the Humvee without its permission in several Call of Duty titles, which meant it infringed upon AM General’s intellectual property rights. As it now turns out, it did not.

In short, the court has decided that because the use of the Humvee in the Call of Duty franchise has an artistic purpose, the First Amendment’s freedom of speech prevails over the trademark rights granted to the Humvee manufacturer. It has also compared the use of trademarked goods in video games to such use in other works of art, such as movies.

In its analysis, the court has applied the two-pronged standard test introduced in the Rogers v. Grimaldi case for the use of trademarks in works of art. Under the first prong of the Rogers test, court had to decide whether the use of the trademark has any „artistic relevance to the underlying work whatsoever”. The court said that it does, as Call of Duty games aim to provide players with a sense of realism, and featuring real-life military vehicle certainly helps that.

Under the second prong of Rogers test, the court had to analyse whether the use „explicitly misleads as to the source of the content of the work”. To decide this issue, the judge applied another standard test – eight-factor Polaroid test. Once again, the court sided with Activision stating that the use of Humvees in the games is not explicitly misleading. Although the strength of Humvee mark weighed in plaintiff’s favor, Activision prevailed regarding all other seven factors. AM General failed to prove that the consumers may confuse its’ products with Activision products. The judge has also pointed out that Call of Duty is not a product which competes with AM General’s products. Activision’s clients are consumers, whereas Humvees are addressed and sold mainly to armies.

According to a survey conducted by AM General, only 16% of consumers were confused as to the AM General’s association with Call of Duty. As the judge stated in the decision, “less than 20 percent confusion regarding two companies’ ‘association’… is at most some confusion”, not compelling enough to say there has been an infringement. Judge has also invoked the case regarding the use of a knockoff Louis Vuitton bag in the Hangover II movie, where it has been said that “moviegoers are sophisticated enough to know that the mere presence of a brand name in a film, especially one that is briefly and intermittently shown, does not indicate the brand sponsored the movie”. As the judge said, „there is no reason to believe that video game players are any less astute”.

As a result, the decision stated that the use of Humvees was legitimate. It was artistic in nature, because it enhanced the games’ realism, and the „realism can have artistic merit in itself”. There is also no substantial confusion as to the source the marks depicted in Call of Duty games. In a case of moderate risk of confusion, the First Amendment rights prevail.

Although it does not create any precedent, the US District Court decision is a great win for the video games industry. It is an important example of how to apply the Rogers test and how video games in the United States earn the same status as works of art as books, games or movies, in case of which you do not need to ask for a permission if you want to briefly show the trademarked product. The decision also shows that the First Amendment once again proves to be a very powerful tool in protecting the artistic expression in the USA. It is interesting to briefly consider how the case would be decided in Poland – it could be argued that such short incidental display of a trademark does not use the mark in its trademark functions. In Poland, however, the case law on the protection of artistic expression is not as widely developed as in the US.

The situation regarding this case could develop, as the decision could be appealed by AM General. The full text of the decision can be found here.

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