Trademarks

Why DMCA and trademark protection is a no-brainer: the Darkest Dungeon scam

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I just saw an interesting story on Eurogamer: the developer of Darkest Dungeon, a popular new indie game, has hit out at a clearly fake version of its game on the Windows Games Store.  The developer is said to have reached out to Microsoft for help.  I’m sure they will oblige in due course.

I thought I’d take this opportunity to write a quick post because what you probably WON’T read about is what Microsoft, or any other platform which is said to be hosting fake/fraudulent/illegal/infringing content (“content” btw might be games, film, audio, artwork – anything) might say in response to the developer: (more…)

The latest games trademark controversy: S.T.A.L.K.E.R and STALKER

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If you haven’t played the S.T.A.L.K.E.R. series of PC video games, you really should – it’s a glorious first person survival game based in and around a fictional Ukraine where the Chernobyl nuclear plant exploded a second time and changed the world around it (it’s based loosely on the excellent Stugatsky brothers’ short science fiction novel, Roadside Picnic).  Some of my best memories about emergent storytelling in games come from that series.

Anyway, enough of the games nostalgia.  I’m writing about STALKER (as I shall call it, to save my poor ‘.’ key) for cold legal purposes, because it is generating our latest games trademark controversy.  More in a moment, but first I want to credit two articles on the legal issues with STALKER which were influential on me: this Polygon feature on the story more generally and this PC Gamer article on the trademark troubles just now.

One more thing – if you’re not sure what a trademark actually is, read my quick guide to demystifying trademarks and games.

So, here we go: (more…)

Activision resurrects Sierra thanks to good trademark practices

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I just read in Develop that Activision is bringing back its dormant Sierra publishing label.  For those who don’t know: Sierra was once a driving force in games development and publishing in the 1980s and 1990s but suffered a long decline into the 2000s, effect shutting down finally by the late Noughties.

This made me think two things: (1) that’s great news (I have warm feelings from back in the day about Sierra games); and (2) this is another example of how keeping a brand alive legally through its dormant phase means it can spring back to life in the future – as Sierra is now doing.

In particular, I’m thinking that the legal team (at Sierra, its previous owner Vivendi and then Activision) decided to keep Sierra as part of Activision’s trademark portfolio all these years, despite its decline.  That’s ofc good corporate legal practice, but if the Sierra trademark had been allowed to lapse, I strongly suspect that Activision would NOT now be bringing back to life this veteran publishing name in the games industry.  That”s because it would no longer have any exclusive control over ‘Sierra’ in relation to games and that means it could potentially be challenged, or even blocked  from reviving the Sierra games label altogether.  So, if there wasn’t Sierra trademarks still ongoing, there wouldn’t be a return of Sierra now. (more…)

Some thoughts on game trademarks, King and Candy Crush

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This blog (and Gamer/Law generally) represents my personal views, not that of my employer.

The games press and sections of the games community has got hot under the collar (again) over trademark law.  This time around, it’s about news that King.com, maker of Candy Crush Saga and other games, is seeking to trademark ‘Candy’.  Cue lots of (to put it charitably) loose talk about ‘monopolies’ and even ‘patent trolling’.  I’m going to try and talk some sense about this topic. (more…)

A legal guide to Let’s Play and gaming videos

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Let’s Play videos, and gaming videos more generally, are awesome. I started playing Minecraft thanks to Seananners’ very early videos about his love of what was then a quirky indie half-finished game just beginning to gather fans; I’ve played many games (and laughed a lot) thanks to the Let’s Play videos of my friends (and clients) at Yogscast; I enjoy video reviews of games from people like my friend Matt Lees at Videogamer.com; several clients of mine got their big break thanks to Let’s Play videos popularising their games.  But to many people the legal status of gaming videos is unclear and getting pretty controversial, too.

Some early gaming videos were taken down; Nintendo said they wouldn’t permit them at all (though they may have changed their mind later); and most recently and infamously, some licensing companies used the YouTube system to issue many IP infringement notices to gaming videos (more on that later).  To try to clarify what’s actually happening here, I thought I’d write this legal guide. (more…)

Langdell Squared: Edge magazine v Tim Langdell

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This is a guest post by Jonny Mayner.  Jonny Mayner spent most of his 20’s playing games and working in bookshops and the construction industry before getting down to the serious business of being a lawyer. He is currently a trainee solicitor at Osborne Clarke, soon to qualify and join the firm’s Intellectual Property Litigation team. He still plays games though.

Tim Langdell, the man behind Edge Games and long-time botherer of Edge Magazine (among others – read about his US shenanigans here and here) was dealt a critical blow by UK High Court last month, which we’ve just had a look at. In her judgement Mrs Justice Proudman pretty much flatly rejected much of Langdell’s evidence and ruled on various issues which will make it harder for him to assert IP rights in all things Edge-related going forward.  (Jas: plus, now an English court and a US court have ruled that he is a Naughty Man.)

(more…)

Apple v Amazon over the ‘App Store’

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Last week news broke that Apple is taking legal action against Amazon over the latter’s forthcoming opening of its “Appstore for Android“.  Apple argued it constituted trade mark infringement of its well known iOS “App Store“.

I spoke with Pocketgamer.biz about what all this means – here’s the article reproduced below:

“Apple’s move to block Amazon’s use of the ‘Appstore’ name on the day before it launched was an aggressive move, even in the context of the ongoing battle between Apple and Microsoft over the App Store moniker.

On a legal basis, however, Apple isn’t looking for a quick win over its newfound rival.  The attempt to protect the ‘App Store’ name is the kind of tussle that has the potential to roll on for some time to come.
That’s the view of Olswang LLP lawyer Jas Purewal who told PocketGamer.biz he thinks the case could become a complex legal battle.

Take the stand

“This lawsuit is really about the application of trade mark law to the fast changing world of mobile purchases,” Purewall, who is also the writer behind games law blog Gamer/Law, says.

“Briefly, a trade mark is a sign – like a logo or brand name – which a business uses so that its customers can recognise its goods and services and distinguish them from the goods and services of a competitor.

“Trademarks can generate significant brand value and, therefore, protecting them is important. In this case, Apple is suing Amazon on the basis that Amazon’s Appstore will ‘confuse and mislead customers’ – for example, that customers may buy an app from the Amazon App Store thinking that it is in fact created, sponsored or approved by Apple.

“In effect, Apple wants to stop Amazon from benefiting from the value which Apple says it has built up in that phrase via its iOS App Store.”
Problem precedent

Apple’s case against Amazon, however, is complicated by its ongoing efforts to register its App Store trademark with the USPTO.

“There are potential difficulties for Apple in pursuing this case,” explains Purewal.

“Firstly, Apple does not itself yet have a fully registered trade mark over ‘App Store’ – in fact, Apple’s trade mark application is reportedly being contested by Microsoft on the basis that it is too generic to be protectable – which has the potential to turn this into a three-way battle between Microsoft, Apple and Amazon.

“This is by no means fatal to Apple’s case against Amazon, but it may complicate it. Secondly, Amazon will no doubt argue that there is no likelihood of confusion between the Amazon Appstore and the Apple App Store because they will presumably run on completely different devices.

“Further details of the lawsuit are not clear at the moment, but it is possible that Apple may seek a temporary ban on Amazon rolling out its Appstore until a full trial of the lawsuit – though Amazon would no doubt contest this.

“If the case does reach trial in due course, the court will then need to decide upon the relative merits of Apple’s and Amazon’s cases and rule whether or not Amazon may proceed with its Appstore plans.”

You can read more about trade marks and games here: demystifying trademarks and games.



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Demystifying Trade Marks and Games

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Trade marks are one of the most important ways to protect a game legally, but they are frequently misunderstood – as much through ignorance as anything else.  So, this post explains what trade marks are, what they do, when you can protect them and when you can’t.

Usual caveat applies: this post just signposts some of the key legal issues – if you actually have trade mark issues you need to talk about, let me know.

What is a trade mark?

Trade marks are signs (like logos or brand names) used so that customers can recognise your goods and services and distinguish them from the goods and services of your competitors.  Here’s an example:

 

 Trade marks are important to a business because they prevent competitors from confusing customers into thinking that they are buying products and services from a trusted, known source when in fact they’re not. In other words, they can be used to stop your rivals stealing your customers.

Example: You’re a developer and release a game called TrademarkVille, over which you register a trade mark. A rival developer then releases a very similar game called Trademark City. If customers purchase your rival’s game Trademark City because they wrongly conclude that you made it, or that it is actually your game TrademarkVille, then in principle you may have a trade mark infringement case.

Four key points you need to know about trade marks:

  • To be fully effective, they need to be registered. This is complex, so you should take legal advice to register and keep them.
  • If you operate internationally, you may need to get foreign trade mark protection too.
  • They can last indefinitely, but need to be renewed every 10 years.
  • Practically, trade marks are helpful in two situations: (1) you can sell/assign/leverage them; and (2) you can use them to stop trade mark infringement by a rival (aka ripping you off).

I’m going to explore this last point about trade mark infringement further today, because that is what often generates the most heat.

Trade mark infringement

As a broad summary:

  • If you use an identical or similar trade mark to sell identical or similar goods and services to a trade mark which has already been registered,
  • then you may be infringing that registered trade mark if your trade mark creates a likelihood of confusion on the part of the public (whether that confusion is mistaken or not).

So trade mark infringement DOESN’T just mean that if your trade mark is similar to another guy’s registered trade mark, then you are automatically infringing his trade mark (or vice versa). There would have to be that ‘likelihood of confusion’.  What happens in practice when one developer claims another has infringed his/her trade mark? To explain this, I’m going to look at two examples, with which I was personally acquainted, that generated some heat – Lima Sky and Edge Games.

Lima Sky and the ‘Doodle Jump’ trade mark

Lima Sky, developer of the hit mobile game Doodle Jump, registered a US trade mark for “Doodle Jump”. But soon after Doodle Jump became a huge hit, rival games with the word ‘Doodle’ in their title began to appear (a quick look at the iOS App Store shows such games as Doodle Hockey, D.O.O.D.L.E and – slightly worryingly – Doodle Dump, among many others). Lima Sky were not happy.

But things really exploded when (according to Igor Pusenjak, founder of Lima Sky) a rival applied for a US trade mark over the phrase ‘Doodle’. Lima Sky felt it had no choice but also to apply defensively for a trade mark over ‘Doodle’. On top of that, Lima Sky’s lawyers advised it to ask Apple to take down some of the Doodle type games on its App Store. All this caused just a bit of a ruckus (more on that later) and two of the questions levelled at Lima Sky were (i) ‘how can you claim you own the word “Doodle”’ and (ii) ‘how can you try to stop other Doodle type games?’

As to the first question, registering a trade mark doesn’t mean you own the word ‘Doodle’ or ‘Face’ or ‘Apple’ to do with as you please. It simply means that, provided you can meet the trade mark infringement test outlined above, you can use your registered trade mark to stop a rival ripping you off or even shutting you down.

As to the second question, actually I think there was some legal force in Lima Sky’s arguments:

  • The rival Doodle games were using a trade mark which is arguably ‘similar’ to Lima Sky’s (e.g. compare Doodle Hockey and Doodle Jump) for ‘similar goods and services’ (i.e. they are all casual mobile games sold on the iOS App Store).
  • There is at least some ‘likelihood of confusion on the part of the public’ because Doodle Jump is a massive hit on the App Store and customers may be fooled into thinking that a game with ‘Doodle’ in the title is either Doodle Jump itself or was at least made by Lima Sky.
  • Plus, once Lima Sky became aware of these rival Doodle games, if they didn’t try to stop them they ran the run of weakening or even losing their own trade mark.

(Obviously, that’s not to say that Lima Sky were definitely right, since trade mark cases are never this straightforward in reality.  However, in this case Lima Sky came in for a deal of criticism from the typically vocal games industry and, as a result, appear to have withdrawn at least some of their claims. Who ends up owning the ‘Doodle’ trade mark remains to be seen.

Edge Games and the ‘Edge’ trade mark

Tim Langdell probably needs no introduction to you. Over the last few years, he spent a lot of time and money attempting to shut down seemingly any and all uses of the phrase ‘Edge’ in the games industry – from the games magazine Edge to Mobigames’ game also called Edge. In 2010, Langdell sued EA over its game Mirror’s Edge. It didn’t work out well for him: he received a stinging verdict from a US court which found that, not only was there no likelihood of confusion between his Edge trade mark and EA’s, but Langdell had actively falsified the material which he used to obtain his trade mark in the first place. Cue public embarrassment and ridicule in the games industry, plus probably a hefty legal bill.

The moral of the story: just having a trade mark doesn’t mean you and you alone control anything to do with it. And if you take your claim all the way and lose, it can have serious consequences for your business. It also means it is vital to get your trade mark registered properly in the first place.

Top tips for developers

So, hopefully that has given you an idea about what trade marks are and how they work. To round this post off, here’s some top tips for developers:

  • Do your homework: when you’re designing your game, check to see if there are already released games with similar content/names/logos to your designs. You can do some of this yourself both on the Web and (in the UK) using the IPO database here, or…
  • Have a word with a friendly games lawyer: a little legal advice early on can save a lot of time and money later, especially since the process of registering and defending trade marks is complex. 
  • If you have a problem with another developer misusing your trade mark (or vice versa), you must act, but think carefully first. Is the other developer just making an innocent mistake which you can talk through with them? Or are they actively trying to copy your product and take your customers such that a fight is inevitable? Can you use third parties, like Apple, to make your life easier via takedown requests? Can you enlist your player base or the games press to help?
  • BUT, don’t just be guided by legal factors alone. Think about how much a legal fight would cost, how much time you have to devote to it, what your player base or partners would think of you. It may be a result that a negotiated settlement is better than an all out fight.
  • Don’t forget your safest bet is to make sure your games are better than your rivals’. The legal steps outlined above can be a defence to attacks against your business, but only good products can grow your business and ensure your player stay with you rather than go to a rival.

One last thing: where one game copies another, it usually raises issues of copyright as well as trade mark law. So, next month, I’ll be writing about demystifying copyright and games…

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