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9 August 2018Copyright

The reality of IP in a fictional world

“IP is everything when it comes to video games,” says Alexandre Rudoni, partner at Allen & Overy.

As PwC projects industry revenues to surpass $90 billion by 2020, it’s absolutely crucial for video game makers and publishers to understand the value of their IP and how to use it.

The rise of the internet, along with the development of mobile apps, has lowered the barriers which historically prevented video game developers from entering the marketplace. These developments have led to the creation of more games and developers, resulting in a more crowded field.

Games are becoming increasingly realistic, taking the outside world and placing it within the gaming environment, but how much ‘taking’ is too much? Unfortunately, there’s no clear position; whether the taking has resulted in some type of infringement depends on the precise facts of the case.

Rudoni cites the example of a game where you play a soldier in World War 2. “The developer wants to be able to reproduce an exact copy of weapons used during that time so the players have an accurate experience of the war,” he says.

This ultimately creates tension between the video game publisher and the owner of the IP right (in
this case, the owner of the gun’s design and trademark).

While there’s little case law in Europe on this topic, a dispute between car maker Ferrari and video game publisher Take-Two Interactive highlights the friction.

Set in a warped version of New York City, the fourth “Grand Theft Auto” game contains vehicles that imitate Ferrari’s cars, with a “prancing rabbit” logo instead of Ferrari’s “prancing horse” logo and the name “Grotti” in a font similar to the car maker’s.

According to Ferrari, the uses amounted to copyright and design infringement, unfair competition, and tarnishment of its image due to the violent nature of the game.

The Paris Court of Appeal rejected Ferrari’s claims, including its unfair competition claim, holding that the allegedly infringed elements were commonly used in the car industry and the “Grotti” logo could only be perceived as “humorous” by the players. The court also found that the game couldn’t tarnish Ferrari’s image as players would be not confused.

“Cases like this indicated that we’re moving closer to what’s happening in films—you can use copyright and trademark-protected items as long as the use isn’t too extensive and such use serves a particular purpose, eg humour,” says Rudoni, adding that whether the use is adequate is evaluated on a case-by-case basis.

Meanwhile, over in the US, there’s an ongoing tug of war between athletes and video game publishers, says Jason Gordon, partner at Reed Smith.

On one side, athletes are claiming that they should be paid for the use of their likeness and persona because the video game makers are using them for a commercial purpose without permission.

On the other side, video game makers contend either that they’re using fictional individuals in a team or that the use of these athletes is newsworthy because you need the athlete’s likeness to have them play in a fictional team.

Gordon is confident that there will be one of two results in these cases: either they are litigated to the very end or there will be some sort of monetary settlement.

Reaching the next level

In 2017, the registrability criteria for EU trademarks was relaxed, with the requirement for marks to be “capable of being represented graphically” being removed.

Soon after, the Kingsley brothers of Rebellion Software filed an application to register a 25-second video clip depicting the ‘kill cam’ mechanic from the “Sniper Elite” series, covering various goods and services in classes 4, 9, and 28.

Granting the trademark would create a 25-second monopoly, claims Rudoni. He believes that if the mark is registered and others follow suit, there’s the potential that publishers will try to enforce against small companies. But that doesn’t mean a registration like this is not an exciting prospect.

“This is a registrable right which could, in theory, fill in the gap left by other IP rights and offer an affordable way of protecting gameplay mechanics. But there are some hurdles,” says Kostyantyn Lobov, senior associate at Harbottle & Lewis.

The trademark must be a ‘sign’ which is capable of distinguishing between goods and services of different businesses, but this isn’t straightforward when it comes to a video depicting a section of the gameplay.

Lobov explains that consumers tend to rely on the name of a product and its manufacturer as the identifier of origin, which is why non-traditional trademarks sometimes struggle with this requirement, as witnessed by Nestlé’s struggle to maintain its registration for the shape of a four-fingered Kit Kat chocolate bar.

Multimedia trademarks can serve a useful role in the video games industry.

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