Imitation, Originality and Genres Jennifer L. Kelly Litigation Partner, Fenwick & West LLP UBC Law450 Video Game Law | March 6, 2013

Overview  Who I am and why I’m here  Kinds of IP disputes that commonly arise in video game industry  Copyright  Trademark  Right of publicity  Discussion of Noteworthy Cases  Analysis of Potential Claims 2

Introduction  My practice  Dispute avoidance  Dispute resolution  From the gamer’s perspective …  From the litigator’s perspective … 3

IP Claims That Arise: Copyright  Overview of Copyright Law  Governed exclusively by federal law  What copyright protects:  Expression of ideas, not the ideas themselves  No protection for: general concepts, plots, themes and genres; scenes a faire, ideas “merged” with expression; content not original to the author  In particular to games: basic game concept, rules, method of play, stock characters, common sports moves, other aspects of games “driven by genre”  BUT: overall “look and feel,” graphics, underlying code, storyline, sounds can be protected 4

IP Claims That Arise: Copyright (cont.)  Elements of claim for copyright infringement  Ownership of a registered work + copying of protectable elements  Key Issues in video game disputes:  Is what was copied original to the claimant or did they copy it from someone else?  Is what was copied part and parcel of the genre?  Noteworthy Disputes:  Atari v. North American, 672 F. 2d 607 (7 th Cir. 1982)  Capcom vs. MKR, 2008 WL (N.D. Cal. Oct. 20, 2008)  Hasbro v. RJ Softwares, S.D.N.Y. Case No. 08-cv  Zynga v. Vostu, 816 F. Supp. 2d 824 (N.D. Cal. 2011)  Nimblebit/Zynga  Tetris v. Xio Interactive, 2012 U.S. Dist. LEXIS (D.N.J. May 30, 2012)  Electronic Arts v. Zynga, N.D. Cal. Case No. 12-cv  Spry Fox LLC v. Lolapps, W.D. Wash. Case No. 12-cv

Atari v. North American (K.C. Munchkin & Pac-Man) 6

Capcom v. MKR (Dawn of the Dead & Dead Rising) 7

Hasbro v. RJ Softwares (Scrabble vs. Scrabulous) 8

Zynga v. Vostu (Cityville & MegaCity) 9

10 Nimblebit/Zynga (Tiny Tower and Dream Heights)

Open Letter to Zynga 11

12 Tetris vs. Xio Interactive (Tetris and Mino)

13 EA v. Zynga (Sims Social & The Ville)

Spry Fox v. Lolapps (Triple Town v. Yeti Town) 14

IP Claims That Arise: Trademark n Overview of Trademark Claims  Governed by federal and common law (registered and unregistered marks)  What TRADEMARK law protects  Use of a trademark, name or trade dress in commerce to identify a single source of good or service  Claims involve use of a trademark or name in a title or within an app/game  Starting to see some disputes (gripes) relating to keywords in AppStore 15

IP Claims That Arise: Trademark (con’t)  Elements of Claim:  TM infringement: use of another’s mark (or name) in commerce that causes likelihood of confusion as to source, sponsorship, or association  TM dilution: use of another’s mark in commerce that causes dilution to the strength of the mark  Defenses: classic fair use, nominative fair use, parody, First Amendment (artistic relevance + not explicitly misleading)  Relevant Examples:  Hasbro v. RJ Softwares  Blingville v. Zynga, N.D. W. Va. Case No. 11-cv  The Learning Company v. Zynga, D. Mass, Case No. 11-cv  ESS Entertainment vs. Rock Star Videos, 547 F.3d 1095 (9 th Cir. 2008) 16

Blingville v. Zynga (the “Ville”) 17

The Learning Co. v. Zynga (the “Oregon Trail”) 18

ESS Entertainment vs. Rock Star (The Play Pen vs. The Pig Pen) 19

IP Claims That Arise: Right of Publicity  Overview of Right of Publicity Claims  Governed by state law (usually the law of the residence of the person with the claim)  ROP is a personal claim arising out of privacy law, for an individual to have the right to control commercial use of his or her likeness  Person does not have to be famous, or alive  Some overlap with TM claims  Elements of Claim:  Use of name, voice, likeness or broader in some places  Of a person (potentially deceased)  Without consent (written/oral varies by state)  For defendant’s advantage  Defenses:  Public affairs, First Amendment (transformative) 20

IP Claims That Arise – Right of Publicity (Con’t)  Relevant Examples:  RC3 v. Justin Bieber, M.D. Fla. Case No. 12-cv=00193  Dillinger v. Electronic Arts, 795 F. Supp. 2d 829 (S.D. Ind. 2011)  Kirby v. Sega, 50 Cal. Rptr. 607 (2006)  No Doubt v. Activision, 192 Cal. App. 4 th 1018 (2011) 21

RC3, Inc. v. Justin Bieber (Beaver & Biebs) 22

Dillinger v. Electronic Arts (John Dillinger & “Dillinger Tommy Gun”) 23

Kirby vs. Sega of America, Inc. (Lady Miss Kier & Space Channel 5/U-La-La) 24

No Doubt vs. Activision Publishing, Inc. (No Doubt & Band Hero) 25

Analysis of Potential Claims: Copyright  Step 1: Identify game’s genre and others that fall into it  What were developers inspired by? What were they aware of?  Make a list of all games and common features  Step 2: Identify unprotectable aspects of such games  What is common to, driven by genre?  Other aspects that are not protectable as a matter of law  Step 3: Compare the games  Game to Game comparison  Step 4: For any similarities of protected expression, drill down:  Why was a particular feature chosen?  Can changes be made? 26

Analysis of Potential Claims: Trademark  Step 1: Is any TM used in title or within game?  Step 2: If yes, where is it?  Title or main character vs. subsidiary  Step 3: Analyze how it has been changed or modified, what is the purpose it serves in the work?  Step 4: Practical risk analysis  who owns potential mark?  Is the mark registered? 27

Analysis of Potential Claims: ROP  Step 1: Were any real people the inspiration/source of characters or names?  Famous people as basis for character?  Other real people?  Real people used in motion capture  Were developers inspired by anyone in particular?  Step 2: If yes, was there consent/release? For what?  Step 3: If yes, where is the character name/likeness?  Step 4: Analyze how it has been changed or modified; what is the purpose it serves in the work?  Step 5: Practical risk  Who is it?  Where are they? 28