Legal Aspects of Originality

UBC Law School : “Course 1337”

Jennifer L. Kelly, Fenwick & West LLP

November 18, 2015

Overview

Who I am and how I got here

Why is video game law such a big deal?

Major and recent cases, focusing on copyright and ROP

Elements/defenses of claims

Interactive discussion of cases

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IP Claims That Arise: Copyright

Overview of U.S. Copyright Law

What copyright protects:

Expression of ideas, not the ideas themselves

In games: overall look and feel; layout; game sequencing and progression; instructions/text (verbatim); storyline (not plot); developed characters; code; sounds; music

What it does not protect:

In games: general concepts, themes and genres; scenes a faire; method of play; stock characters; real life elements (e.g., sports moves); other elements “driven by genre”; functional aspects; content not original to the author

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IP Claims That Arise: Copyright (cont.)

Elements of claim for copyright infringement

Ownership of a registered work + copying of protectable elements

Defenses: Independent creation, not original, not substantially similar

Relevant Examples:

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

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

Tetris v. Xio Interactive (Tetris/Mino)

Spry Fox v. 6Waves (Triple Town/Yeti Town)

Electronic Arts v. Zynga (Sims Social vs. The Ville)

King v. 6Waves (Farm Heroes/Farm Epic; Pet Rescue/Treasure Epic)

Glu v. Hothead (Deer Hunter 2014 vs. Kill Shot)

Lilith v. uCool (Sword & Tower v. Heroes Charge)

Machine Zone v. Ember Entertainment (Game of War vs. Empire Z)

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K.C. Munchkin & Pac-Man

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Dead Rising & Dawn of the Dead

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Tetris and Mino

Triple Town and Yeti Town

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Sims Social & The Ville

Farm Heroes Saga and Farm Epic

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Pet Rescue Saga and Treasure Epic

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Deer Hunter 2015 and Kill Shot

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Sword & Tower v. Heroes Charge

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Game of War v. Empire Z

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What is the Right of Publicity?

A personal claim arising out of privacy law, which varies by state, but generally is the right of an individual to prevent another from making unauthorized commercial use of his or her name or likeness for its advantage.

Person does not have be famous – or even alive

• Many states, including CA, have statutes providing for the RoP to survive death

• CC Section 3344.1 (rights last 70 years after death, and are fully transferable)

Goes beyond use of name/appearance – look-alikes, sound-alikes, use of phrase associated with a person, use of signature – and potentially more

Primary Defense: First Amendment

• Public affairs/new reporting/non-commercial

• Transformative use test: whether the work “contains significant transformative elements that do not derive primarily from the celebrity’s fame.” Comedy III (2001).

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Davis v. Electronic Arts

Background : Keller v. EA, 724, F3d 1268 (9th Cir. 2013)

EA, publisher of NCAA Football games, sued by college athletes who claimed the avatars violated their ROP

Player names not used, but avatars used their height, weight, position, skin color, handedness, jersey number, and other identifying details

District court denied EA’s motion to strike based on 1st Amendment

9th Circuit affirmed. Relying on No Doubt, court ignored other creative elements in game and focused on fact that the avatars themselves were not transformative

“EA was alleged to have replicated Keller’s physical characteristics . . .just as the members of No Doubt are realistically portrayed in Band Hero. . . .users manipulate the characteristics in the performance of the same activity for which they are known in real life—playing football”

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Davis v. Electronic Arts – cont’d

Davis v. Electronic Arts, 9th Circuit January 6, 2015

Involved Madden NFL games

Claims brought by three retired pro football players

Affirmed denial of motion to strike (2012) on basis that the players’ likenesses are not sufficiently different to meet transformative test

Not at all surprising in light of Keller

Also rejected EA’s argument that its use of the players’ likenesses was merely an “incidental use.” Concluded that players’ likenesses had “unique value that add to the commercial value of Madden NFL,” and were featured prominently in the game and in a way that was substantially related to the primary purpose of the video game – to create an accurate virtual simulation of an NFL game.

Meanwhile …

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Noriega v. Activision/Blizzard

Activision/Blizzard’s Call of Duty: Black Ops II featured Manuel Noriega as a character in its game (see images next slide), set in Cold War and future

Noriega 1 of 45 characters in game; appeared in 2 of 11 missions

Name not used in title; image not used in advertising

Noriega sued in L.A. Superior in July 2014; A/B (via Guiliani) filed motion to strike arguing the use of Noriega’s name and likeness was protected by the 1st Amendment

Motion granted:

Noriega’s right of publicity outweighed by the defendant’s First Amendment right to free expression

No evidence of harm to Noriega’s reputation (“Indeed, given the world-wide reporting of his actions in the 1980s and early 1990s, it is hard to imagine that any such evidence exists.”)

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Call of Duty/Black Ops comparison

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What is Significant About Noriega?

Court rejected 9th Circuit’s reasoning, in prior cases involving NCAA athletes, that the court should look only at the degree to which likeness had been “transformed,” and ignore game as a whole

“to the extent that Keller suggests that the entirety of the disputed work should not be considered under the second prong of the Anti-Slapp analysis [likelihood of P prevailing on the merits], such reasoning is in conflict with the controlling California authorities cited herein and relied upon by this Court.”

Relying on prior CA caselaw (including Winter v. DC Comics, Kirby v. Sega, No Doubt v. Activision), court found use was transformative because the Noriega character was a small part of the work and was not used in advertising (hence, “the marketability and economic value of the challenged work in this case comes not from Noriega, but from the creativity, skill and reputation of defendants.”)

Could signal a shift in transformative use cases, bringing back into play the context and elements of the work as a whole.

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Lohan v. Take-Two, Rockstar

Lohan sued Take-Two, Rockstar in NY state court in July 2014, claiming GTA5 has a bikini clad character, Lacey Jonas, that evokes her image and persona (image on next slide)

Lohan no stranger to RoP litigation

Sued E-Trade over ad that featured a “milkaholic baby” named Lindsay

Sued Pitbull for rapping “I got it locked up like Lindsay Lohan”

She filed amended complaint, adding complaints about use of character on mugs, t-shirts, other advertising

Defendants’ response:

Only similarity is both are young, blonde women

LL only suing for publicity

SOL: suit filed over a year after materials featuring Jonas were published

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Grand Theft Auto 5/Lohan comparison

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Cases To Watch

Blizzard v. Lilith, uCool, filed September 8, 2015

EA v. Davis – S. Ct. cert petition

Garcon v. Fanduel, filed Oct. 30, 2015 (ROP class action, alleging Fanduel violated player’s rights of publicity through the unauthorized commercial use of their name and likeness)

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