22 May 2018

More Games, More Trademarks

Why should INTA hold a session on video games? That question was answered thoroughly by Christopher Parent, Director of Intellectual Property and Enforcement at Nintendo of America (USA), in yesterday’s Session IM20 Industry Breakout: Legal-Up! Implications of Video Games in the 21st Century.

According to the Entertainment Software Association (USA), 64 percent of households in the United States own at least one device for video games.

“Consumers interact with video game brands in a very different way than consumers in other industries. They’re not passive observers of the products they use, but active participants,” Mr. Parent explained.

The competitive landscape has changed with the advent of the Internet and especially mobile apps, which have lowered barriers to entry for young and inexperienced developers.

“This means more games, more trademarks, and a more crowded field,” he said, adding that this lowering of barriers has enhanced competition and consumer choice but also created a tension for attorneys in clearance and enforcement.

For Vineeta Gajwani, Managing Counsel of IP at Electronic Arts Inc. (USA), the first thing to keep in mind when undertaking title clearance is that “there’s really no one-size-fits-all approach.”

“The range of different types of games you have in the industry is vast; there’s everything from free games on your phone to US $70 titles,” she said.

There are approximately 30,000 live U.S. trademarks for computer game software, added Ms. Gajwani. To narrow the scope if you need to do a trademark search, she suggests focusing on the particular platform the game is intended for, such as mobile apps or consoles.

She added that there’s an increasing trend for reviving old games, so it’s good practice to see if there are any “dead” trademarks for old games that may be “brought back to life.”

In the United States, the title of a single creative work is not eligible for trademark protection, meaning that the titles of books, movies, and TV shows can’t be registered. But this doesn’t apply to video games, which are viewed more as software products and allowed trademark protection.

Moving to the other side of the Atlantic, Alexandre Rudoni, Partner at Allen & Overy LLP (France), explained that, despite efforts toward harmonization, there’s a disparity in the protection available for titles across Europe.

To illustrate one of the potential quirks of video game litigation, Mr. Rudoni pointed to the case of ZeniMax Media vs. Mojang in Sweden.

ZeniMax Media had sued Mojang over the company’s card game Scrolls. In response, Mojang said: “Let’s settle this! I challenge Bethesda [a subsidiary of ZeniMax Media] to a game of Quake 3. If we win, you drop the lawsuit. If you win, we will change the name of Scrolls to something you’re fine with.”

Mr. Rudoni added that this was a “surprising way of making an offer for settlement,” and that it’s of “huge consequence if a game can’t use the title for which investment has been made.”

John Crittenden, Senior Counsel at Cooley LLP, outlined relevant video game litigation in the United States.

There’s a conflict when designing video games, he said, because, while the real world is generally available to be used as a virtual location for a game, there are some exceptions.

“What happens if a movie character works in a STARBUCKS coffee shop? Do you need a license? Do you have to do this for every brand? This could make it very impractical,” he said.

Fortunately, in the United States, there’s case law outlining the position and robust First Amendment protections, added Mr. Crittenden.

The video game industry pulls in US $100 billion in revenue annually, added Ben Golant, Chief Counsel for Intellectual Property Policy at the Entertainment Software Association.

The Association has set up Video Juegos MX, a contest that allows individual creators to make their own games and encourages them to think about IP.

“We’ve learned that to make people respect IP we have to involve them in the IP marketplace,” he concluded.

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