This is a guest post by my friend and fellow lawyer, Jonny Mayner. IP law is pretty important to the games industry, since it governs the stuff that games are (legally) made of. Being a clever IP expert as he is, I thought I’d ask him to explain what the UK government is doing to update IP law… Continue reading What does UK IP reform mean for the games industry?
This is a post from Jonny Mayner with additional input from Jas Purewal. The Star Wars’ theme to the post is the fault/genius of Jonny (depending on how you feel about Star Wars, ofc).
This is a quick post looking back on some high profile IP cases in the UK on which we saw rulings in the first half of this year. Read on for a brief round-up of what the cases were about and how they’re relevant to games and tech. Continue reading IP Round-up: Newzbin 2, Copyright Infringement and Stormtroopers
Hi everyone. Earlier this week I went along to Dundee, Scotland for the Digital Spark conference and delivered a session on a beginner’s guide to IP in games. I made a Prezi for the session and thought you might like to see it, so here it is: http://prezi.com/ynsvjg5hgpc6/a-beginners-guide-to-ip-in-games-jas-purewal-osborne-clarke/.
Please feel free to have a look over it and by all means drop me a line if you have any questions, would like to use it, think it’s good/bad/awesome/needs work etc.
Last month, news emerged that Blizzard will introduce an homage to Popcap’s hit game Plants vs Zombies in the forthcoming World of Warcraft expansion, Cataclysm. Apparently there will be a Plants v Zombies themed quest chain in the game, including the ability to…well, fight zombies with plants. It seems that Popcap had collaborated closely with Blizzard on the project.
All well and good. But this got me thinking: what if hypothetically it had been reported that PopCap had known nothing of Blizzard’s plans and was unhappy with them? What could Popcap have done then, legally?
My view is this: if Blizzard did it right, then PopCap couldn’t have done much legally – and I’ll explain why in this post.
But first, a couple of caveats. One: this is not a complete legal analysis – it is an opinion piece, in which I take you through my views of the key legal issues that would be encountered (though if you do want a careful legal analysis about these kinds of issues, let me know!) Two: this is not intended to cast any aspersions on Blizzard or PopCap – I’m just using a convenient recent example to discuss the limitations of copyright and trademark law as regards games. There is a tendency sometimes to think that, just because someone has copyright and trademark protection in their games, that somehow that makes them invulnerable to copying etc. Not at all – as I’ll show you.
These are real basics: a game is really just a bundle of different components : images, audio, video, code, databases etc. Virtually all those components are intellectual property (i.e. intangible stuff you can own, as opposed to tangible stuff you can own – such as a house) and therefore protected by intellectual property law. The games components outlined above will usually be protected by a branch of IP law called the law of copyright (more on that below). Told you it was the real basics…
Separately, your name, the name of the game and the names of some its key features (e.g. its characters) can potentially be protected by trademark law. For example, Nintendo and Super Mario are trademarked terms (again, more on that below).
In addition, there can be a whole bunch of other intellectual property rights in or around your game – e.g. rights in databases forming part of the game or in its packaging or ‘get up’. For the purpose of this post, they’re not as relevant so I won’t discuss them.
The copyright bit
As I said much of the game components, like audio and graphics, will be protected by copyright law. But really that just protects the actual images you’ve drawn or audio you’ve actually recorded. Copyright law does not give you a monopoly over every other kind of similar image or audio.
Example: if Alan draws a picture of a fat grey zombie attacking a plant, then he can’t stop Bob entirely separately drawing and selling another image of a fat grey zombie attacking a plant. This is a critical principle of copyright law: it protects the expression of an idea, not the idea itself. Two people drawing that picture entirely separately have just drawn on a common idea, so neither of them has the right to stop the other from drawing or exploiting their picture. Copyright law does this in order to strike a balance between rewarding hard work and protecting intellectual liberty.
Ah, you say, but what about if Alan saw Bob’s picture first? That’s where it gets tricky. If Alan can prove that Bob had access to his picture, and can prove that Bob made a replica picture that copies all or (to use some legalese) a “substantial part” of Alan’s picture, then in principle Alan could sue Bob for copyright infringement on the basis that Bob’s inspiration was Alan’s picture, not the abstract idea of a fat grey zombie attacking a plant.
BUT, suing for copyright infringement is not as easy as just looking at the two pictures. Judges have to look very closely at every aspect of the two copyright works, comparing and contrasting every part of them in order to reach to a decision as to whether there are enough detailed points of similarity to justify a finding of copyright infringement. This is a very, very hard test to meet. On top of that, it is often hard to prove that the person who made the alleged replica work actually had access to, and copied, your copyright work. All lawsuits ultimately involve a degree of chance, but copyright lawsuits often go beyond that.
What about if there are no obvious technical examples of copying but there is overall a very similar ‘look and feel’ to the two works? For example, what if there are two GUIs or menus that are not exactly the same but overall give the same or similar effect – could there be copyright infringement there? Answer: it is going to be very, very hard under UK (and US for that matter) law to prove that someone has copied your game or any other copyright work just based on a similar ‘look and feel’.
A good example of how hard all this is to prove is the Da Vinci Code case (aka Baigent and Leigh v Random House). Two authors claimed that Dan Brown had plagiarised their book, The Holy Blood and the Holy Grail, when writing his massive hit The Da Vinci Code. Brown quite clearly had taken a huge amount of inspiration and plot details from their book, but he was not found liable for copyright infringement because he hadn’t actually copied any text from Baigent’s and Leigh’s book. There were not enough painstaking points of similarity between the two books, and any general similarities or ‘look and feel’ were not sufficient, to find Brown liable for copyright.
Another example: Navitaire Inc v easyJet. Navitaire had developed an airline booking system, which easyJet instructed software engineers to replicate down to the last detail, partly by reverse-engineering it through repeated use of the system. Navitaire tried to sue for copyright infringement and failed because, even though easyJet it couldn’t show that the relevant copyright works had technically been copied in the word-for-word sense and its ‘look and feel’ argument failed.
That key point again: it’s actually quite hard to prove copyright infringement regarding software, including games. Ever wonder why (naming no names) some social games look, sound and and have names remarkably similar to each other? It’s partly because the above shows how hard a lawsuit over any alleged copying would be.
- Popcap will (unless it has assigned it to someone else) own the copyright in all the visual, audio, video, code etc in Plants vs Zombies
- But that does not give Popcap a monopoly over the idea of a cartoony tower defence game in which the player builds plants to fight off zombies
- Nor does it give Popcap a monopoly over the ‘look and feel’ of that kind of game
- Done correctly, Blizzard could quite properly look at Plant v Zombies and – without actually copying any of the copyright works in that game – make its own version which looked very similar and played very similar
- In other words, if Blizzard had decided to include a game-mode very like Plants v Zombies in its game, and did it correctly, I think Popcap would have great difficulty in arguing copyright infringement against Blizzard
- Having copyright and trademark protection for your game is helpful, but it doesn’t necessarily make it invulnerable to being copied/ripped off
- Copyright protection isn’t going to be a complete shield if someone is determined to exploit your game cleverly
- Trademarks won’t help you either if they deliberately call the game something else which is sufficiently different so that it wouldn’t cause consumer confusion
- BUT, litigation isn’t just about winning a lawsuit when you’re absolutely right, it’s also about applying commercial pressure to the other side – so you shouldn’t necessarily be swayed by just these legal arguments
- And don’t take of this as a licence to go ripping someone else off – obviously, it’s never a good idea to do that
Image credit: PopCap Games/Wikimedia
The recent US case of Vernor v Autodesk has caused a storm of controversy over whether you actually own the software that you purchase, or just license it (meaning that you can’t then sell it on to others). This has garned a lot of tech press attention, from Wired to Cnet.
“It’s testing times for the EULA, but what hasn’t been tested is whether EULA’s can be used to prevent second hand sales in the UK altogether. Obviously the point in this case is that those arguments are now being made in the US – and the decision from the courts at the moment seems to be that a EULA can be used to prevent second hand sales, which has a very wide potential application, not just to games but to all forms of software, as well as to books and music.
“Very much the future of the second hand market lies in the balance…It’s very complicated and it’s very early. Certainly as an off the cuff observation, is that this sounds, potentially, like an absolute goldmine for the US games industry if they can actually use it and push for a stop to second hand sales, but that’s going to be incredibly litigious.”
Purewal was keen to stress that there is no immediate threat to the sector, however, as there is no way to directly transfer the ruling outside of the US.
“This is very much going in the states at the moment. The decision was made upon detailed provisions of US law, it relates to consumers who are buying software in the US, it has no bearing on people in the UK or Europe, although if there is any similar litigation on similar issues, brought here, then you could see similar arguments being made.
“Whether or not that would actually wash is far too much like gazing into the crystal ball. It’s far too premature. What I would say is that the consumer protection laws are much stronger in the UK than they are in the US, it may be that a more consumer friendly approach may be advanced. “
Game rental companies could potentially be affect by the longterm ramifications of the ruling, too, as they would be covered under the same EULAs as regular consumers.
“The American Library association, the Electronic frontier foundation and the association of college and research libraries all made submissions in relation to this litigation. They were essentially saying the same thing, that the precedent which this sets could be very harmful to all forms of resale, not just software, but books or any other kind of works because similar logic could apply,” Purewal argued.
“The court saw the force of those arguments but they said it didn’t affect the legal decision. What they usually mean when they say that is that it’s up to the legislature, congress in the states or parliament here, to actually decide the issue one way or the other.”
- “The notification costs of ISPs and Ofcom as regulator are to be split 75:25 between copyright owners and ISPs…
- There should be no fee for subscribers to appeal against a notification letter. However the Government retains the power to introduce one at a later date should it become clear that a large number of vexatious appeals result.
- The deadline for Ofcom to complete the initial obligations code will be extended by 3 months to reflect the need to notify the cost regulation separately under the Technical Standards Directive.”
Oh and, as importantly, Ofcom is given another bit more time in which to finalise the actual legal framework in which DEA will have to operate.
So, at this point, let’s have a quick look at what we know of the Scapegaming case.
Image credit: Activision-Blizzard/Wikimedia
It seems that Nintendo is on a mission to gun down modchip sellers at the moment. I posted in May 2010 that Nintendo was suing New York-based modchip seller NXP Games, Inc. The 1709 Blog has just reported that Nintendo has successfully just sued another modchip seller in Holland. And, last week, Nintendo won a UK High Court claim against modchip seller. This post is about the UK decision.
Here’s a quick summary:
Nintendo v Playables, the UK High Court decision on modchips delivered last week, was not a groundbreaking decision. It simply reinforces the fact that previous caselaw has already found that the sale and distribution of modchips breaches UK copyright laws and is therefore illegal. So, this decision did not make modchips illegal for the first time under UK law. It is still an important decision, however, because it forms part of a continuing move in the US/UK towards outlawing modchips altogether – an approach which is not shared in certain other countries, particularly in Europe (more on that at the end of this post).
So, now read on the clever(ish) legal analysis. Oh, and for more background on modchips you can read my previous post ‘Are Modchips Illegal?’…
Nintendo manufactures and sells its handheld Nintendo DS among other consoles. Playables, a UK company, imported and sold devices which when connected to a Nintendo DS could be used to play pirated games (either using inbuilt memory or through inserting memory cards into the device). In other words, Playables sold modchips.
HM Revenue & Customs and Trading Standards seized about 165,000 of these modchips en route to Playables, which led to Nintendo finding out about them and deciding to commence High Court proceedings against Playables and one of its directors. As it turned out, prior to trial Nintendo agreed a partial settlement with Playables (the terms of which are unknown and no doubt secret) but nonetheless sought summary judgment of the case to court in order to obtain legal vindication of its position.
Fundamentally, Nintendo argued that the modchips infringed its copyright in: (i) the source code for the boot up software; (ii) the Nintendo Logo Data File (which assist the DS to run); (iii) the Nintendo ‘Racetrack’ logo. In legal terms, the arguments being run were:
(i) circumvention of ‘Effective Technical Measures’ (essentially, they deliberately circumvented technology put in place by Nintendo to stop copyright infringement); and
(ii) pure copyright infringement.
More on that below.
The ETM argument
This is where we get a bit legal. Nintendo relied upon two provisions in the Copyright Designs and Patents Act 1988 (the “CDPA”), section 296 and section 296 ZD.
Section 296 prohibits anti-circumvention devices that have been applied to computer programs. To establish a breach of this provision, Nintendo had to prove that:
- there was a “technical device” which had been applied to a computer program; and
- that the defendants had manufactured it/sold it etc for the sole purpose of the unauthorised removal or circumvention of the technical device.
In addition, for one of these sections Nintendo also have to prove that the defendants actually knew or had reason to believe the technical device would be used to make infringing copies.
Nintendo easily could prove Test (1), since the modchips physically are inserted into the Nintendo DS and can then be used to run pirated games etc.
As to Tests (2) and (3), Playables advanced the same arguments that pretty much all modchip sellers have advanced in these cases:
- modchips are not just sold for circumvention purposes but can have legitimate uses, e.g. if you wanted to play your own game on the console; and
- the modchip sellers don’t know that their devices would be used by people to make/use pirate games.
In the UK, these arguments had already been put forward (and failed) in several cases, in particular one called Sony v Ball and separately in R v Gilham (more on that below). Here, again, the judge gave these arguments pretty short shrift. He said “I do not think that the defendants have a realistic prospect of asserting that they did not know of the unlawful uses to which the devices would be put” and that Playbles had “no realistic prospect of success” in arguing the modchips were for legitimate purposes.
The Jurisdiction angle
One interesting/new question which came up during this part of the case was what happens when a modchip seller is exporting modchips outside the UK as well as selling them within the UK. Does just exporting modchips outside the UK fall foul of the CDPA as well?
Mr Justice Floyd said yes, it does. He said that one of the CDPA sections being relied on, s296 ZD, is concerned with dealings in the UK in devices capable of circumvention. Nintendo did not need to prove actual circumvention.
So what? Answer: on this reasoning, if in the future a modchip seller was to import modchips into the UK and then export them out (e.g. to Europe), that would be illegal even if the modchip is not actually sold/used in the UK. It also means that the claimant (in this case, Nintendo) could seek greater financial damages.
The copyright argument
As I said above, as well as an ETM argument, Nintendo also brought a plain old vanilla copyright argument, based on the DS source code, the NLDF and Nintendo’s logo (well, actually, Nintendo’s argument was that Playables should be liable for copyright infringement because its device authorised others to infringe Nintendo’s copyright, most likely because it would be hard to prove that Playables itself had actually infringed Nintendo’s copyright). These arguments met with more limited success: Nintendo only won on the NLDF authorisation point.
The court’s judgment
We already know that Nintendo/Playables itself had settled but Nintendo wanted a judgment in its favour. So, it went off seeking summary judgment from Mr Justice Floyd, who found in its favour on the ETM argument and partially in its favour on the copyright argument. The Judge also found there was enough evidence to find Mr Chan, the Playables director, jointly liable with Playables.
Also, just to emphasise, the court’s judgment was directed at whether Playables had in fact breaches the relevant sections of the CDPA. This case did not seek to establish as a general principle that modchips are illegal, as that had already effectively been achieved by a combination of the CDPA provisions and previous caselaw. Obviously though this case will act as further precedent to be used in any subsequent cases against modchip sellers in the UK.
As I said, this was not a groundbreaking decision, but it does have some interesting aspects:
- It forms part of the continuing trend in the US/UK towards outlawing modchips altogether, by finding that they have no legitimate purpose other than to facilitate copyright infringement/games piracy. For example, the case follows hot on the recent UK criminal case of R v Gilham, in which a modchip seller was convicted of offences relating to his sale of modchips (you can read my thoughts on that case here).
- It contrasts with the view on some other countries that in fact modchips can be used for legitimate purposes and that the games companies should not have ‘their own way’ of controlling the consoles in the way they want, rather than what consumers want. For example, you read here about recent modchip decisions in France and Spain which moved in that direction.
- It shows that the directors and employees of modchip sellers can be personally liable, not just the company. Here, Mr Chan was found financially liable as well as Playables. In Gilham, Mr Gilham himself was prosecuted and convicted. This is must be a serious deterrant factor, but…
- The fact that the case was taken all the way to judgment shows that the console manufacturers clearly do still regard modchips as a serious concern, so deterrants are needed.
- HMRC were involved. We don’t know exactly how, but clearly there was (and has been for some time) cooperation between HMRC and the console manufacturers to tackle copyright infringement/piracy of all kinds, including modchips.
- Why didn’t Nintendo go for criminal prosecution of Mr Chan and/or Playables? We know from Gilham that console manufacturers have done this before against modchip sellers. Instead Nintendo relied on a civil suit. Why? I can speculate, but really it’s a mystery…
So what next?
In the UK, Playables will likely be shut down, Nintendo’s position has been vindicated, now it and the other console manufacturers will need to focus on the next modchip threat.
However, modchips are used all over the world, with the console manfacturers being forced on jurisdictional grounds to fight legal battles under the legal systems of several different countries to outlaw modchips (for example the New York and Holland lawsuits mentioned above). It is by no means clear that the same result achieved here would be achieved in say France, China or Brazil. All of which unfortunately means continued legal expense and uncertainty for the console manufacturers.
Speculation alert: in the meantime, as far as I am aware there has been no or very little consideration of the use of modchips from a consumer law perspective in Europe, certainly in the UK. Perhaps a consumer law argument could help to change the nature of the argument away from pure copyright considerations? Sounds like a tough gig, but you never know. Watch this space…
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A quick summary of Tetris:
- In June 1985, Alexey Pazhitnov created Tetris on an Electronica 60 while at the Moscow Academy of Science’s Computer Center. It was soon after ported to the IBM PC and then to the Apple II and Commodore 64.
- During the mid 80s, the game found its way to the West, where a UK developer tried to acquire the rights to Tetris and (even though he was unsuccessful) he ‘sold’ the rights on to Mirrorsoft in the UK and Spectrum Holobyte in the USA (both companies were controlled by the infamous Robert Maxwell). The game was released in the West to rave reviews.
- In 1988, Mirrorsoft sub-licenced Bullet Proof Software to make Tetris games in Japan, while Spectrum sub-licenced Atari with the same rights for Japan and North America. Cue infighting between the two Maxwell companies (which reportedly Maxwell himself had to be involved in to sort things out).
- Atari’s subsidiary Tengen released arcade and NES versions of Tetris (known as “TETЯIS: The Soviet Mind Game”). Bullet Proof also released a Tetris game for the Famicom (the Japanese version/name for the NES). Nintendo became very interested in releasing Tetris for the forthcoming Gameboy and in controlling Tetris on the NES, too.
- There was by this stage a big licensing mess over who controlled which rights in the Tetris game across different platforms. In early 1989, all the interested parties started negotiations with each other and with the Russian entity (known as Electronorgtechinca, or Elorg) which now asserted it owned all the Tetris rights. Various offers were put forward to control the Tetris IP.
- Nintendo cut the Gordian knot by reportedly making a massive offer to Elorg for all the rights in Tetris (as well as Elorg’s support in the inevitable future lawsuits). Elorg accepted.
- In March 1989, Nintendo then served a cease and desist letter on Tengen to force it to stop selling its versions of Tetris on the NES. Tengen responded in kind.
- Tengen, Atari and its parent (the Maxwell empire) didn’t take this lying down. They began lobbying for control of the IP and, at the same time, Tengen applied to register its copyright of the Tetris IP.
- April 1989: Tengen sued Nintendo of America (NOA), and NOA countersued, over the issue of ownership of the Tetris IP.
- June 1989: the Tengen v NOA court case began in the USA. The issue essentially was the proper interpretation of one of the original contracts signed by Elorg which licenced out some of the Tetris IP rights.
- The US court decided that, since Mirrorsoft nor Spectrum never had held rights in the Tetris IP (see above on that one), they did not have any Tetris rights to grant to Atari/Tengen. The court therefore found in NOA’s favour and granted an injunction requiring Tengen to halt sales of its Tetris games.
- July 1989: Nintendo released Tetris for the NES and (soon after) for the Gameboy. The Gameboy version alone sold over 33 million units. In financial terms, Nintendo had comprehensively won the battle for Tetris.
- The legal issues dragged on for some time, focusing in particular on Atari’s release of a Tetris arcade machine. Other game companies also came on to the scene from time to time (such as Sega’s release of a Tetris game for the MegaDrive) but over time the link between Ninteno and Tetris became well-estabished.
- A quick footnote: in 1996 Pazhitnov, who famously had made virtually no money from the exploitation of Tetris so far, put together The Tetris Company LLC to control the Tetris IP going forward. It still operates today (most recently, it forced Google to remove Tetris clones from the Android market).
- PROPER LICENCING IS ESSENTIAL. The problems arose largely because several people realised that Tetris was hot stuff at the same time and tried separately in different ways to get the rights, which resulted in differing agreements saying different things. Cue legal uncertainty -> lawsuits.
- What should have happened: the first person on the scene or the highest bidder (as appropriate) should have secured a comprehensive and exclusive licencing agreement, covering all territories and all platforms using a combination of specific and general language, stating expressly what the licencee can and cannot do, setting out clearly the operative provisions (royalty payments etc), a dispute resolution mechanism and – crucially – a series of warranties, representations and indemnities to give the licencee comfort that he has an exclusive licence and can sue both the licencor and the third party if any other licences are handed out without his approval.
- If you do find that an infringing licence has been granted, or that a third party is straightforwardly knocking off your IP without a licence, then – as Nintendo did here – you will need to take legal action promptly to protect your IP/contractual rights.
- Leaving the legal battle to one side, make sure you win the financial battle (selling more units of your game than the other guy does with his) as well as the PR battle (making sure everyone knows the game is yours, not his).
I’ve thought for some time that it would be interesting to write a post about the legal implications if someone was deliberately to delete someone else’s avatar, or for that matter to steal it.
As it turns out, over at Terranova they’ve been having a similar discussion. This from Richard Bartle:
“So, this is a video a woman made in which she deletes her boyfriend’s World of Warcraft characters. It rather upsets him.
So, if he sued her, what would the legal arguments involve?”
It’s well worth having a read of the comments if you are interested in the legal arguments regarding virtual goods. I’ve previously discussed the legal debate over virtual goods ownership and will write another post when I’ve had a chance to digest this interesting Terranova discussion, so watch this space…
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