Beware the Berner Convention: Terms of Use and Social Media

Nearly everyone uses social media. It is difficult find people who do not. There are many platforms with different concepts and target audiences. But across them all, there are questions about privacy, copyright, and contracts. This arose when a makeshift legal declaration recently trended on Facebook:

In response to the new Facebook guidelines, I hereby declare that my copyright is attached to all of my personal details, illustrations, comics, paintings, crafts, professional photos and videos, etc. (as a result of the Berner Convention).

For commercial use of the above my written consent is needed at all times!

Facebook is now an open capital entity. All members are recommended to publish a notice like this, or if you prefer, you may copy and paste this version.

There are so many things wrong with that. It is a remarkable word to red ink ratio. But, this is an opportunity to think about social media from different angles. So many sites are “free". What’s the real cost of use? We will look at some of the legal issues.

First, there is no Berner Convention. There might be a Bernie Convention where people do this dance and wear cool sunglasses. No Berner Convention. There is a Berne Convention covering copyrighted works, and the United States and many other countries are parties. It is relevant to Facebook, but differently than the statement suggests.

“Declaring" your copyright to the world is meaningless. The Berne Convention directs that copyright exists when an idea takes form. Whenever a creative work becomes fixed, so do rights in the creator, regardless of any “declaration." However, there are things creators can do to improve the protection that copyrights grants. For example, filing for a registered copyright can be a great investment for something that shows a potential to generate revenue (and might be taken by someone else for that purpose): a video game, a book, a movie, a song. Vacation photos might not be worth the fee, since there’s likely no value to third parties.

Second, things like this come far too late, and don’t change the basic proposition of Facebook. Facebook’s easily accessible Statement of Rights and Responsibilities makes clear that, “you own all the content and information you post on Facebook," and:

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.

As long as your things are up on Facebook, Mark Zuckerberg is free to do what he pleases based on that license, but you still own the rights to the work in question. This is one of the click-wrap licenses we mentioned before. As long as the agreement is not unreasonable or unconscionable a court is unlikely to strike it down. If you are uncomfortable with this, you are not alone. But deciding whether these agreements are fair should happen before you click “I Agree". Moreover, without the clickwrap license, Facebook would be unable to function. They would have no legal ability to share the photo you uploaded with anyone, be that friends, family, random strangers, or that ex you’re trying to make jealous.

When you join Facebook or any other social media site, you enter a contract. A contract needs an offer, acceptance and consideration. Facebook offers to let you use their platform to connect with friends, share photos, and so on: those services are consideration. In return, you offer the consideration of letting them use your intellectual property. It is important to be realistic about how they might use it. Maybe one of your photos ends up in an ad. But what is much more valuable is information about you.

By tracking your behavior, sites get an idea of who you are and what you like. They turn to advertisers with this information and sell the opportunity to reach consumers who are apt for certain products. Some companies have figured out how to turn this into a sustainable business models, but many observers remain skeptical on its long-term viability. Warren Buffet’s investment partner Charlie Munger said pointedly, “I don’t invest in what I don’t understand. And I don’t want to understand Facebook."

The challenge of developing a new kind of business is risk. Facebook became ubiquitous rapidly. It remains to be seen whether that growth means they will be profitable in the future. No matter the era or the business, there is no free lunch. Money does not change hands when you sign up for sites like these, but they would not make the service if there was no cash involved. On balance, most people would probably decide that they are OK with sites using their information, provided it stays within certain bounds.

If you are not OK with it, take your profile and your content down. You cannot alter your agreement with Facebook by just saying so. Contracts can be modified, but both parties need to consent. The Facebook Terms of Use were unacceptable to the federal government, so the Government Services Administration negotiated different parameters with Facebook and many other sites. Like a copyright application for your vacation photos, this would probably not be worth your time and money. Even if it were, it seems unlikely you would be able to compel Facebook to negotiate these points.

This hoax did some good: it created a conversation about where these platforms fit in our lives. We share deeply personal things in ways that were not possible fifteen years ago, accessible around the globe. This convenience has its price. Is it right for you? Maybe, maybe not. Whatever you do, do not expect the Berner Convention to bail you out.



Zack Bastian is an official contributor to Law of the Game. A a recent graduate of George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

Don’t Forget to Read the Manual: Apple v. Samsung and the Challenge of Jury Instructions

A jury has enormous responsibilities. The judge decides all questions of law, using their legal expertise to interpret the problem presented by the case and determine which law or laws apply. The jury’s job is to resolve all questions of fact. Sometimes it’s simple. Is there enough evidence to show that the accused committed a crime beyond a reasonable doubt? Sometimes it’s difficult. This is particularly true in patent cases. A group of ordinary people is called to reach a shared conclusion on complex technical issues. That’s not a slight to the intelligence of the jurors. These questions are challenging for the attorneys and engineers that work in the field all their lives. Thus, jury instructions become very important. Today, we will consider the jury instructions in the recent Apple v. Samsung case and some post-verdict statements by the foreman that highlight just how hard it can be to follow the directions. The case is far from over, but its eventual resolution could determine the biggest hardware supplier in the mobile gaming market.

Within jury instructions, the court sets specific parameters on what questions the panel must answer and the legal rules they must follow. For common cases, model instructions are available. There has been a lot of debate on how to tailor these rules so that the jury receives the best guidance possible. Even if they are written perfectly, there are numerous variables that are impossible to eliminate. Jurors, just like everyone else, have biases and opinions that frame the way they look at the world. They also come in with different levels of education and expertise. No one is a professional juror. Most people have things they would rather be doing, so there’s a risk that they might gloss over more complex problems to save time.

In Apple v Samsung, there were no model instructions available. This case involved a mountain of issues. Apple commands serious market share and enormous customer loyalty, but Samsung’s recent smartphone offerings have shown they’re unafraid to challenge the house Jobs built. Steve was apparently so infuriated by the November 2007 announcement of Google’s Android (the operating system for the disputed Samsung phones) that he promised "thermonuclear war" over what he considered a “stolen product." There will be many books written about this battle, but we will focus on the jury instructions.

First, they were incredibly long: 109 pages. These had to be read aloud by the judge, which took hours. They listed roughly 700 separate questions the jurors had to answer to reach a verdict. One important detail was underlined. This jury could not include punitive damages. These damages typically come up in tort cases where the defendant did something especially terrible. To deter that type of behavior in the future, punitive damages are awarded. States have discretion on what types of cases can offer them and how high they can go. This is a contentious topic. Perhaps most infamously, it arose in Liebeck v. McDonald’s, where a woman sued the burger chain after suffering third degree burns from their coffee. That touched off a vigorous debate over tort reform: laws designed to limit civil judgments and discourage lawsuits.

But whatever your opinion is about punitive damages, they were not available in Apple v. Samsung. If the jury concluded that a patent was violated, their judgment was to put the holder in the place they would be had the infringer paid an appropriate licensing fee. Sending a message or discouraging future violators wasn’t to come into the equation. The jury instructions made this crystal clear, stating, “You should keep in mind that the damages you award are meant to compensate the patent holder and not to punish an infringer." But recent comments by the foreman, Velvin Hogan, cast serious doubt on whether the jury internalized that rule. In a Reuters interview, Mr. Hogan said, “We wanted to make sure the message we sent was not just a slap on the wrist. We wanted to make sure it was sufficiently high to be painful, but not unreasonable." That could easily be interpreted as intent to punish Samsung.

Mr. Hogan also made some comments on prior art that throw into question whether the jury followed their instructions. Prior art is a bedrock concept in patent law. It is all knowledge available to the public that can impact a patent’s claim of originality. To take an extreme example, let’s say you decided to sue Huffy for violating your patent on a “two wheeled rider propelled vehicle with shifting gears and handlebars." Huffy would easily defeat your claim, because they would point to the fact that bicycles and how they work has been freely available public knowledge for over a century. This principle reins in many patent claims by asking whether the invention in question is truly an original work, or an idea that is already making the rounds.

Prior art was an important piece of the smartphone lawsuit. Which of the features available on the iPhone were wholly original, and which were concepts that others had already explored and published? But on a Bloomberg TV interview with Mr. Hogan, he made a statement that could indicate confusion on the topic. The specific item was the “bounceback" patent, dealing with the way your phone screen “bounces" when you scroll down to the end of the page. According to the foreman, what convinced him that prior art didn’t apply was that, “The software on the Apple side could not be placed into the processor on the prior art and vice versa." But this is a misinterpretation. Prior art does not hinge on whether it can run on the same system, but instead on whether the invention has been used or even explained elsewhere.

This is not meant to suggest that the jurors in Apple v. Samsung did a bad job. Patents are an incredibly difficult subject, and equally qualified scientists can reach opposite opinions on the validity of a case. Even if the jury had followed every instruction perfectly, this case was going to be appealed. Smartphones are big business, and companies with skin in the game would logically spend large sums to settle who would decide the future of the market. Some influential legal scholars have pointed to cases like these as a sign that patent law is overdue for reform. Whatever the result, Apple v. Samsung shows just how hard these cases and their instructions can be. You can read the manual, sure, but 109 pages mean things might slip through the cracks.



Zack Bastian is an official contributor to Law of the Game. A a recent graduate of George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

New Law Review Article

I just had a new article published in Cybaris, the Intellectual Property Law Review at the William Mitchell College of Law.  The piece is titled "Intellectual Property 2.0: Revisiting the Copyright and Trademark System for a Digital Reality."

It's available for download here.  The full listing of articles can be found here.

Many thanks to the staff over there for everything, particularly Brian Bender, the co-Editor-in-Chief.

Your Nostalgia, While Charming, Is Illegal: the Problem with Fan Remakes

Some experiences are hard to reproduce. Things come along at a unique moment in your life and make an indelible mark on your brain. They become a standard by which you measure every other piece of art in that genre. There are albums that will always remind you of a wonderful summer, books that evoke the magic of new ideas, or paintings that give you life changing beauty. Revisiting art of this caliber can fuel you. It can inspire new creations, or place others in context. Truly special work is flexible, durable, and available for appreciation across generations.

Great video games are no different. Among RPG fans, there is a contingent that pines for the mid-to-late 90s, a golden era of console gaming. The genre was moving away from card tables in basements and into living rooms. The development art was incredible. Storytelling shifted from standard fantasy templates, to nuanced epics. Plots touched on mature themes like religion, corruption, and death. This reverence inspires animated adaptations, sequels, and re-releases.

Some take their fandom further. When it comes to fan-fiction, (writers using the original games’ plots to create sequels, alternate realities, and etc.,) rights-holders generally look the other way. (The Wikipedia article on the topic is not authoritative, but gives a good broad look at the issues.) First, fan-fiction is traditionally free. The writers do not make money. They just want to share their appreciation for the source material with others. The other problem with legal action against fan fiction is public relations. Someone who takes the time to write because of your work will be one of your biggest supporters, until you sue them.

Attempting to port, update, or create your own version of an existing game is not similarly tolerated. 1UP posted last week about an HD remake of Chrono Trigger. (Mark previously covered the related issue of fan sequels on Joystiq.) A group of programmers previously attempted to publish Chrono Resurrection in 2004. Everything was going fine, until they received a cease and desist letter from Square Enix. 1UP reached out to Mark and asked about Chrono Trigger HD. They wanted to know, what type of legal difference does it make if the programmers do not attach their names to the project or make a website? As he said, none, it is illegal. We will discuss this type of creation, a derivative work, and the options available for fans to keep things on the up and up.

Derivative works are an important branch of copyrightable material. They are based upon one or more already existing copyrightable works, and can include “translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted." That was a mouthful, so why not check out an example? If Halo is the copyrighted work, then the (late, lamented) film version is derivative, as is Red vs. Blue.

Protecting this class of copyrighted works provides a powerful incentive for people to create, because the rewards from creating are not limited to the work itself. If you find an audience, you have the option of expanding your creation into different genres, or continuing your story or universe in sequels. On the other hand, you can choose to not expand. Some people want to make a game and brand it on everything from paper plates to mobile apps. Some people do not. If you own a copyrighted work, it is your choice, and no one else’s. The absence of a lunchbox displaying your creation does give people the right to fill that hole in the market.

Since Chrono Trigger HD would be a derivative work, we will look at a case where the concept was applied to the gamespace, Lewis Galoob v Nintendo. Nintendo was unhappy with Galoob’s very popular Game Genie. For our younger readers, the Game Genie was a cartridge made for the Nintendo and other systems with a slot to insert another game. Once you turned on your console, the game would be ‘unlocked,’ allowing you to skip levels, gain invincibility, and so on. Previous cases had established that video games were copyrightable, so Nintendo hoped they could nip this type of modification in the bud, and maintain tight control over their products.

The Ninth Circuit disagreed, and concluded the Game Genie did not violate Nintendo’s copyrights. The court compared it to someone buying a book and then reading ahead to the end, or skipping to the credits of a movie. Just because your work is copyrightable does not give you unlimited control over how your customers use it. As Judge Fern M. Smith put it, “Having paid Nintendo a fair return, the customer may experiment with the product and create new variations of play, for personal enjoyment, without creating a derivative work." Since Nintendo had received a preliminary injunction banning sales of the Game Genie during the lawsuit, Galoob received $15 million along with legal fees.

While this gave some breathing room for the Game Genie, it is not a green light for Chrono Trigger HD. Galoob’s product allowed end-users to tweak their console titles without permanently altering the game. That is fundamentally different than releasing an upgraded version of an old title with better graphics. Nor does it help that the would-be programmers will not be selling their work at retail. Allowing that to be determinative of liability would be unfair to the creators. If they ever decided to release an HD port, their market would be harmed by the existence of a free version.

Keeping things anonymous and not building a website does not change the situation. It would certainly slow down the process of enforcement. But as Mark pointed out, Square Enix has other options available to protect their work. Cease and desist letters could be served on hosting companies, catching innocent users in the crossfire. That brings up a larger point about the direction of gaming culture and the internet at large. Torrents are a clever, 21st century solution to the challenge of mass file distribution. They, like the cloud, have many incredible legal uses.

They can be abused, and everybody gets hurt when that happens. Yes, it is frustrating to feel a company has let a title you love lie fallow. Many gamers have daydreamed about how they would make their favorites better. But trying to sidestep the law by torrenting an illegal derivative version shows why many rights holders are queasy about new file sharing techniques. The internet went crazy over the Stop Online Privacy Act. You could not go anywhere without being told, in all caps, that the law would turn the web into a police state or break the Internet completely.

If you think those types of laws are heavy handed, then please do not use torrents to share an illegal game. Every time we see BitTorrent and unlawful activity associated in the same sentence, it is a step backward for the technology. If you miss the golden era of 16-bit gaming, why not get together with some friends and make a title of your own? The market is there, as Xbox Live Arcade and the Playstation Store have shown. Legitimate distribution options are reasonably open; from Steam, to iOS and Android, to the Xbox Live Arcade Indie Marketplace, there is no shortage of ways to get a creation out there. To be blunt, if you are talented enough to make Chrono Trigger HD, you are talented enough to make an original game.

Many share your frustration that developers have not taken full advantage of their old games or localized every game overdue for translation. Using means that highlight the unsavory uses of useful technology is not a solution. In fact, recent examples like The Last Story show that developers and publishers may be listening now more than they ever have been in the past. Move forward, not backward.



Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

Tween Pop Stars, Cartoon Animals, Parody, and the Right of Publicity

At Law of the Game, we pride ourselves on being fans of popular culture, games, and terrible puns. Imagine our glee when the following story emerged. Justin Bieber’s legal team is embroiled in a lawsuit with app developer RC3 over their game Joustin’ Beaver. The app features JB, a cartoon beaver with a stylish shag haircut and purple hooded sweatshirt. Players fight off greedy “Phot-Hogs" with a lance as they travel downstream signing “Otter-graphs." Bieber’s lawyers sent RC3 a cease and desist, claiming they had violated the pop star’s right of publicity by using his name and likeness in the game. In response, RC3 has filed suit in the US District Court for the Middle District of Florida. They are seeking declaratory judgment that their game does not infringe on Bieber’s rights, and that the app is protected as parody. To get a better idea of what is going on we will discuss the right of publicity, the Lanham Act, parody, and then examine the facts of the case.

The right of publicity will typically arise in cases involving advertising or merchandising. It is “the right of every individual to control any commercial use of his or her name, image, likeness, or some other identifying aspect of identity," limited by the bounds of the First Amendment. The image of a celebrity can be enormously valuable. Many companies will pay top dollar for a celebrity to associate themselves with their product. The right of publicity exists to stop people from getting a free ride on a celebrity’s name. It is important to remember there is no federal right of publicity. Nineteen states currently recognize it, although the level of protection varies. One of the strongest states is California: their Celebrities Rights Act extends it to seventy years after the death of the individual in question.

A great deal of the jurisprudence on the issue can be traced back to Elvis. After his death, mountains of “commemorative" merchandise appeared, but none of it had his estate’s endorsement. So, some courts began to acknowledge that letting places like the Franklin Mint pay bills using Elvis’s face was not fair. This has come up in the gamespace before, in cases involving Kurt Cobain in Guitar Hero 5 and the flash games involving politicians. As usual, there is no hard and fast rule for how these suits play out, they are fact specific. Mark had a good summary of the right of publicity. Think of it like a trademark for a famous person’s likeness.

Related to this is the Lanham Act, which codifies our national standards for trademark. Trademarks can be infringed when someone creates a mark that is the same or confusingly similar. This hinges on the “likelihood of confusion," or whether a consumer could see the allegedly infringing mark and assume the products or services are from the trademark owner. These cases will typically involve similar goods. For example, if you put an Apple logo on your laptops hoping they will sell faster, that is infringing.

Trademarks can also be diluted. Dilution happens when someone uses a mark “in a way that would lessen its uniqueness." Trademark dilution cases often involve unrelated goods. Considering our Apple example, this could happen if someone placed an Apple logo on a placemat. Not a related product, but still a case of someone attempting to gain commercial benefit from associating with a famous mark. The Lanham Act arose in the gamespace during 2009’s James “Jim" Brown v. Electronic Arts, Inc.. Jim Brown sued EA in the Central District of California for creating a player using his likeness in the Madden series. The court held that EA’s rights under the First Amendment “immunized" them to liability.

What about parody? Parody in trademark is fundamentally different from it in copyright. The elements are an original work, famous and known to the target audience, being used to create a new original work, but only taking so much of the source as to bring to mind the original. (You can read more about it here.) A useful way to think about it is that trademark infringement and parody are branches from the same tree. Both bring to mind a separate work and draw on the fame of that famous mark to be identifiable. What makes parody different than infringement is it takes an extra step to distinguish itself from the original. A successful attempt at trademark parody will go so far as to leave no doubt that it is a humorous take on a famous trademark. This standard gives people room to create humorous takes on trademarks, but the law also works to keep in mind the integrity of a mark and not let the parody go too far. When a parody starts inserting elements that could be considered scandalous, anyone trying to protect their trademark has a much stronger case.

Applying this web of rights and limitations to the case of Joustin’ Beaver is tricky. Taking Bieber’s perspective into account, he certainly has rights of publicity and an interest in maintaining some kind of control over his image. He is an international celebrity, and his career demonstrates that his name has value. Florida (where RC3 filed suit) does indeed have a right of publicity statute. You might remember that Lindsay Lohan sued E*TRADE for violating her right of privacy (New York’s right of publicity) and got the company to settle.

This segues into the Lanham Act issues of trademark. The offending beaver certainly uses elements of Bieber’s signature outfit (although he appears to have given up the bangs) so the outcome could depend on whether a court looks at the game and believes consumers could be misled into purchasing the game thinking that Bieber signed off on it. Considering dilution, it does not appear Bieber is attempting to market games using his likeness, so if infringement fails, his legal team could argue the game lessens the unique quality of his brand. We are still not far from filing, so it is tough to say where this will head. Maybe the suit could have been avoided entirely by placing a disclaimer on the game. (This is how Elvis impersonators can imitate the King without paying his estate.) That option could still be there, but considering how famous this case has become, it may be beyond an amicable solution.

So what about Joustin’ Beaver as trademark parody? The game certainly creates an immediate association with Bieber, evoking his famous persona. However, and this may depend on your appetite for puns, there is a solid argument to say the game goes far enough to be a humorous riff on Justin’s worldwide fame. The mop-topped beaver does bring to mind his Canadian counterpart, but it is arguable that it goes just far enough, and does not create confusion. It does not use any of his songs or other intellectual property. The game also does itself a favor by being non-controversial. There are no lascivious or scandalous elements…it is just a simple app where a beaver rides a raft down the river. This could turn on whether the court believes consumers are likely to be confused, but it seems that RC3 has a fairly strong argument here for trademark parody.

This type of celebrity-based game is not a big genre. The outcome of this case could give developers an estimate of the leeway allowed when incorporating a celebrity into their work. If RC3 can get judgment in their favor, we might see an uptick in these apps. Regardless of how this turns out, it is hard to believe this will ever be a substantial part of the industry. What makes a game truly valuable is its ability to build its own brand, not piggy back off of someone else’s. You might gain immediate recognition by association with someone or something famous, but whatever you create will always be tied to them. One of the most exciting things about the Xbox Live, PlayStation Network, and mobile game markets has been the explosion of titles made by independent developers. One of the all time successes, Angry Birds, took game mechanics we have seen before but created a unique world so popular it became a Halloween costume. For a lasting presence in this industry, that will always be the way to go.



Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

Zynga vs Everybody: The Battle Over Online Game Intellectual Property

As we have pointed out before, it is always useful to examine any game industry lawsuits by considering what they say about the business of buying and selling games. The longer you have been playing, the more you know how much things have changed. As the pixel count climbs upwards, so have the costs of development. It used to be possible for a few friends in a basement to build a console-quality title from scratch. Now, if you want to take full advantage of the power of the PS3 or the Xbox360, this is not realistic. Big games are now big business, with million dollar budgets and advertising campaigns to match.

That does not mean that there is no more room for the little guy. One of the biggest cost barriers to market entry is distribution, and the explosion in broadband has whittled down that block, bit by bit. Also, people have gradually figured out that a game does not need to knock your socks off with incredible graphics and effects to be popular. If people enjoy playing it, the design can be a throwback and still do quite well. The smaller development costs make such games ideal for slim, streamlined teams of programmers. And if it becomes a hit, the lower overhead means you could see a profit much quicker. The growing popularity of social media games gives you another venue to reach potential customers.

But where there is opportunity, there is bound to be competition. With competition comes conflict. At the center of many of these conflicts has been Zynga. The company has published popular games for social media and mobile phones, including Mafia Wars, FarmVille, and Words with Friends. Along the way, they have also amassed their fair share of critics, particularly smaller studios who argue that Zynga has ripped off their work. For example, see this graphic depicting similarities between NimbleBit’s Tiny Tower and Zynga’s Dream Heights. Or, this one from Buffalo making similar complaints about Zynga Bingo. But is what Zynga does illegal? Probably not. In this post, we will discuss why that is the case, and examine a pending cases with a stronger potential for success.

To understand the nature of copyright infringement, you first must grasp the difference between an idea and an expression. For example, an idea would be a “game about farming." The expression of that idea would be the game itself, complete with source code and unique graphics. Ideas are not available for copyright protection, but expressions are. (Ideas are protected by patents, which have been used to protect game designs in the past.)To summarize, you could not sue someone simply because they made a “game about farming" after you did, but if their game substantially copied your source code you would have a strong case. Our fearless leader Mark outlined a lot of these issues in interviews with Opposable Thumbs and Industry Gamers, along with a previous post on similarities between Dante’s Inferno and God of War. To put it bluntly, So many of the new social games have created their own “sub-genres" that are narrowly defined such that similarity is inevitable.

It is worth noting that copyright protects traditional board games as well as video games. Board game aficionados have created some legal resources on the issue, but the basic concept is the same. The copyright protects the expression (for example, the design of the board), not the game’s mechanics. Some of you may remember this issue in the Scrabble and Scrabulous dispute from 2008. The issue there was not only the trademark similarity, but the direct copying of the game board itself. Words with Friends avoided this design mistake, and therefore avoided an infringement suit.

Copyright law is far from perfect, but there are reasons to believe this level of protection is appropriate. Copyright is intended to serve twin goals that sometimes are in opposition. Ideally, it will reward creativity by protecting the right for creators to be compensated for their work. At the same time, it will encourage innovation, leaving room for people to experiment using work that has come before as inspiration. A great example of this dichotomy is the mechanical license. Over the history of music, one of best ways for a new artist to reach a large audience is by playing a popular song the listening public already knows, called a “cover". Some of the best covers are not direct reproductions of a classic, but instead add their own quirks and sounds to the mix. For instance, compare Pavement’s original Spit on a Stranger with Nickel Creek’s more folky take.

Where does the mechanical license come into play? Imagine you are a young, developing artist with only a little money in the bank, and the song you want to cover is by an established band. If you tried to negotiate with them directly, the bigger band would be at a huge advantage. They could either refuse to let you use their work, or make the license prohibitively expensive. The mechanical license solves this problem by allowing you to cover a copyrighted song provided you pay a set statutory rate per copy, distributed by the Harry Fox Agency. While there is not a parallel concept in the gamespace, the theme of encouraging innovation crosses into both formats. As Mark pointed out in his interview, if a game company had received intellectual property protection (patent) for the concept of a “platform game" in general, games today would be much less rich and diverse. That basic concept has been repeated (or “covered") millions of times, and the successful titles that borrowed that concept added their own innovations bit by bit.

So where could Zynga be in trouble? First, there is the case of Personalized Media Communications suing for patent infringement. A patent is very different animal, as noted above, protecting an actual idea. The subject of a patent must be the invention of a “new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, and claims that right in a formal patent application." So, for Personalized Media Communications to succeed, they would need to show that Zynga treaded on their inventions that use “control and information signals embedded in electronic media content to generate output for display that is personalized and relevant to a user." We here at Law of the Game love engineers, but we are not engineers. So all we can do at the moment for this particular case is pledge to monitor it and pass along information once it has been translated for our liberal arts educations. Another case was filed by GameTek, LLC, and Mark offered some commentary on this case on Ars Technica, which you may want to take a look at. Generally speaking, as he notes, there will be a question of fact as to whether this patent was filed before the invention was used in the real world, and there is some question about the patent’s validity for this reason. More importantly, as the claims in the patent go beyond the games space, there is a potentially big impact for a victory by GameTek. It presents an interesting situation where the idea of FRAND licensing may be applied outside of the standards setting process based on the potential impact for the whole mobile app ecosystem, not to mention the potential antitrust issues, either of which may lead to compulsory licensing.

Another case that could spell trouble for Zynga is the lawsuit by SocialApps LLC. This involves the enormously popular Farmville game. SocialApps alleges that after releasing their title myFarm on Facebook in November 2008, they were approached the following spring by Zynga, apparently interested in acquiring the intellectual rights and code to their work. As part of the negotiations, SocialApps shared their source code, at which point they claim Zynga became non responsive. Zynga then released Farmville in June of 2009. In early February, the suit survived an attempt by Zynga at dismissal. If it progresses further, Zynga may be faced with the choice of either settling out of court to cut their losses, or letting it go to trial with the risk of extended bad publicity and potentially greater damages. Obviously, taking source code would likely be an infringement, and the facts of this case present that as a real possible finding.

For the indie developers without such complex claims, their best option may be exactly what they have done so far – call attention to the issue through publicity. Zynga has an enormous infrastructure and large audience in their corner, but the internet has had a long history of championing the little guy. You may draw customers your way by pointing out that you believe your work has been borrowed. As long as Zynga does well it would be unrealistic to expect their business model to change. Even in new markets with easy opportunities for entry, it is inevitable to see one party become the 800 lb gorilla. Whether Zynga has actually done anything that could hurt their status remains to be seen.



Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

More on Kim Dotcom and the Fight Over Cyberlockers

In late January, Law of the Game took a look at Kim Dotcom and Megaupload. Bloomberg Businessweek released a superb profile of the file-sharing baron. It is worth checking out. The authors fill in Dotcom’s back story, and what a story! For example, the piracy bug bit him young: he was selling copies of computer games to friends before he reached junior high school. This was also not his first encounter with the wrong side of the law: he was convicted in 2002 of insider trading.

The article does not limit the narrative to Kim Dotcom’s, brazen, bizarre antics, although there are enough for a novel. They also include a discussion of whether or not the shutdown was overboard. The parties take the positions you would expect. Cary Sherman, Chairman & CEO of the RIAA calls the story a “powerful message” to infringers. Julie Samuels of the EFF says that creators are seeking to “stem the growth of new business models instead of using their time and energy to compete. They’re working to harm innovation and consumers and artists who are trying to find new ways to connect with those fans.” The authors also point out that there has never been a case of inducing copyright infringement reaching the level of criminal liability. To dig deeper, we will begin by examining one of the most famous inducement liability cases, consider how the available facts compare, and then comment on whether this case really is an attack on cyberlockers.

In 2005, the Supreme Court considered inducement liability for copyright infringement in MGM v Grokster. Grokster was a file-sharing utility, but unlike its predecessor Napster, it was built on a decentralized architecture where no central list of the files was kept. The software acted as a link between you and the user with the songs you wanted. Grokster, playing this passive role, did not have actual or constructive knowledge that infringement was taking place, nor did they materially contribute as users searched for the files. Grokster attempted to claim the Betamax defense, arguing that if the product was capable of substantial non-infringing uses, it could not give rise to contributory liability. Grokster is capable of non-infringing uses, and so the developers claimed they were not liable.

In rejecting that argument, the Court discussed inducement liability. If you distribute a product promoting that it can be used to infringe copyrights, it can be enough to show liability. Promotion of infringement has to be by either clear expression or other steps showing you meant to encourage it. Considering Megaupload, the indictment provides plenty of emails and more that scream inducement, like the incentive program. People have pointed out, that there is a big difference between civil and criminal cases. Jennifer Granick notes that secondary liability has never been enough to create criminal liability. [The pending Rojadirecta case has the Second Circuit considering that very issue. Can linking to an infringing stream be enough for a criminal offense?] The counterpoint to Ms. Granick, Derek Bambauer, says the principals look very guilty, but agrees an expansion of criminal liability is troubling. Ms. Granick also admits that there may be enough proof that Dotcom and his compatriots directly infringed enough to make secondary liability less of a problem.

We also must remember, a money laundering count was included in the indictment, but not fleshed out. The federal government has repeatedly (online poker shutdown, new pre-paid access rules, etc.) made clear they are concerned about technology supporting criminal enterprise. There may be evidence not yet public showing Megaupload “washing” dirty cash, providing heavy ammunition for the prosecution. Beyond that, there is no indication that the government has the intention or appetite for a broad offensive on cyberlockers. It is safe to assume that most companies offering cloud storage are not an insane, self-aware scam run by a James Bond villain. It is good that people are concerned and talking. Emphasizing the civil liberties at play is very important. The issue of what happens to the non-infringing files still on the Megaupload servers raises legitimate questions about the rights of people who were not using the service improperly.

It is possible that this is part of a large push against cloud services. But there is still a great deal we do not know about the Megaupload case. Until things become clear, we will be following closely.


Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

More on Social Game Cloning

I was interviewed for a piece on Ars Technica, which went up this afternoon.  It's another good read.

Check it out!

Piece on IndustryGamers

I was recently featured in an interview on IndustryGamers regarding the recent social games "infringement" issues (Zynga/Nimblebit, SpryFox/LOLApps, etc.).

Check it out!

The Ongoing Legal Battle Over Bit Torrent Gets More Interesting

Since the beginning of its existence, BitTorrent has been a lightning rod for controversy. Comcast choosing to slow down or “throttle” the service’s traffic was one of the first shots fired in the ongoing battle over Net Neutrality.

This is not just a problem here in the States. Canadian provider Rogers ”throttles more than any other internet provider in North America”. This issue is not going away. It speaks to many fundamental questions on the future of the internet, and also the future of video games. BitTorrent has exciting, perfectly legal applications. You can use it to quickly and easily transfer a homemade game to a friend, or share your own machinima. The downside is that, thanks to its ample capacity and dispersed load, pirates have thrived, distributing illegal versions of games for free. That bites into already precarious profits and reduces the incentive developers have to make the new games we love.

This profound problem got a new wrinkle when TorrentFreak recently claimed they traced BitTorrent downloads to the Recording Industry Association of America and US Department of Homeland Security. Using YouHaveDownloaded.com, TorrentFreak alleges they found that six unique IPs within the RIAA and more than 900 at DHS downloaded illegal materials from BitTorrent. TorrentFreak is undeniably partisan. The blogger who provided these claims uses an alias (presumably due to fears of reprisal). But, it is not hard to believe that employees at large organizations get copyrighted materials for free. To be fair, we don’t know why these files were downloaded or what was done with them. It’s possible it was for personal use as most coverage of this has implied, while it’s also possible it was downloaded as part of an investigation, which may have even been at the request of the rights holder. All we know is the files were likely downloaded by someone at those IP addresses.

There is no consensus on how to deal with the issue. RIAA abandoned the idea of suing individual downloaders long ago. Not so in Europe, where CD Projekt served settlement offers on Germans accused of pirating a copy of The Witcher 2. Others have chosen to focus on communities like the Pirate Bay in order to make a bigger dent in the infringement. Pirate Bay has been cited by supporters of the Stop Online Privacy Act as proof of how necessary the legislation is. (Legislation which, incidentally, may also ”break the internet.”)

TorrentFreak’s claim they have found foxes in the henhouse is interesting, it does not answer any questions. Is it embarrassing for the RIAA? Yes. Regardless of what the real reason may be here, the publicity’s implications have been negative in a pretty much universal manner. But, it does not solve the unresolved problem of how to confront the clash between copyright owners and the easy sharing the internet allows. Law of the Game will keep you updated of new developments as they become available.

Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

Things to Watch for in 2012: O’Bannon v. NCAA

Here at Law of the Game, both Mark and myself are big college sports fans, particularly of the burnt orange and white. (Hook ‘em!) For those of you out there with similar obsessions, you have probably played one of EA’s NCAA Sports games and enjoyed coaching your alma mater to (imaginary) glory. You might have used one of the classic teams and enjoyed the golden years of Michael Vick at Virginia Tech, or Julius Erving at the University of Massachusetts. But does the fact that these games do not use player names mean they have the right to make similar characters without paying royalties?

That is the fundamental question asked by UCLA basketball great Ed O’Bannon in his lawsuit against the NCAA. The original filing was back in 2009, and multiple plaintiffs have joined since. They argue the NCAA’s behavior amounts to unlicensed use of their image and likeness. Taylor Branch highlighted the dispute in October. The Atlantic published his exhaustive and powerful article The Shame of College Sports, and some quotes from O’Bannon get to the heart of the issue:

“Once you leave your university,” says O’Bannon, who won the John Wooden Award for player of the year in 1995 on UCLA’s national-championship basketball team, “one would think your likeness belongs to you.” The NCAA and UCLA continue to collect money from the sales of videos of him playing. But by NCAA rules, O’Bannon, who today works at a Toyota dealership near Las Vegas, alleges he is still not allowed to share the revenue the NCAA generates from his own image as a college athlete.

Branch also spent time with Michael D. Hausfield of Hausfield, LLP to get a better grasp of the plaintiffs’ argument. (Also from The Shame of College Sports):

“Let’s start with the basic question,” he said, noting that the NCAA claims that student-athletes have no property rights in their own athletic accomplishments. Yet, in order to be eligible to play, college athletes have to waive their rights to proceeds from any sales based on their athletic performance. “What right is it that they’re waiving?” Hausfeld asked. “You can’t waive something you don’t have. So they had a right that they gave up in consideration to the principle of amateurism, if there be such.”

These rights are lucrative. EA Sports paid $35 million last year to the NFL Players Union to compensate players who appear in their enormously popular Madden and NFL Street franchises. Former collegiate players haven’t seen any money to date. A ruling against the NCAA could mean big changes for the way these games are developed and financed going forward.

The plaintiffs in O’Bannon v. NCAA are seeking an injunction against further use, damages, and an accounting for profits made by the NCAA from the licenses they’ve already sold. The suit has had slow going so far. The latest update is that the case is in Dallas Federal Court over a discovery dispute with Conference-USA. The plaintiffs have managed to fend off attempts at dismissal by the NCAA so far, but we should expect both sides to fight this one as far as they possibly can. An accounting of profits, if a court found the NCAA liable, could be a deep, painful stab at their continued financial viability. It could also be a powerful precedent for current players to sue on similar grounds.

The NCAA’s position is not completely without merit. Their rules, flawed as they may be, have been applied consistently for decades. Among professional leagues, these rights are typically handled collectively (like the NCAA) to simplify licensing agreements. There are arguments for this simplicity, and it is difficult to say what percentage of the license fee paid to the NCAA is for current players versus the retired players. Historic rosters bring value, but to subdivide that by the value of a given year’s team and further separate it by player is difficult. Moreover, the percentage of historic inclusions at the college level is substantially lower than at the pro level since there are many more teams in the NCAA.

This is not the only dispute over player likenesses in the past few years. The Madden franchise has been the target of similar suits discussed previously by Law of the Game. That incident led to a $28 million verdict in 2009, requiring the players’ union to pay the retirees who went uncompensated. Yet another suit was filed in July 2010 over a similar issue, but targeting EA rather than the NFLPA.

We will continue to watch the progress of O’Bannon with a close eye. As gamers and sports fans, it could forever change the games we have enjoyed so much.


Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.

LGJ: Blizzard, Cheating, and Copyright Infringement

This LGJ looks at Blizzard's latest use of copyright infringement to thwart cheaters.

I did want to note, after a few comments about this, that I unfortunately haven't had a chance to play StarCraft II (other than the beta), so I didn't talk specifically about the cheats built into that game. The end is more a big picture analysis of inclusion of cheats, not a condemnation of Blizzard as some have taken it.

Read on!

LGJ: The 'Kinect' story, a case study in international trademark trickery

This week's LGJ is about trademarks, international trademarks, and the Kinect.

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LGJ: Wait, it's not a derivative?

This week's LGJ takes another look at NBA Jam and examines a rare example of a sequel potentially not being a derivative.

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LGJ: Nagging Trademark Questions

In the latest LGJ, we look at a few nagging trademark issues in the context of NBA Jam.

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LGJ: IP Police, Arrest this man, He talks in torrents

This week's LGJ goes into the reported 'Pirate Finder General' in the UK and what could follow in the US.

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LGJ: Come As Your Avatar, Smells Like Lawsuit? Nevermind

In the latest LGJ, a discussion of the right of publicity as it relates to the Kurt Cobain in Guitar Hero 5 dust up.

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LGJ: Fan Sequel? Still not legal.

This week's LGJ talks about fan sequels, fan art, fan fiction...basically a ton of different kinds of derivative works.


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LGJ: Is the NDA still viable?

In what's becoming a bit of an E3 tradition, the latest LGJ talks a little more about the non-disclosure agreement, and some of its shortcomings.

Read on!

Intellectual Property 2.0: Convergence of Copyright and Trademark

In discussions I’ve had with various others in all aspects of the intellectual property realm, I’ve continually run across points where the law has lagged behind the practicality of intellectual property management. This has been an ongoing problem in the IP realm with respect to issues created by technology, but issues do extend into other areas as well. In order to outline some of these issues and possible solutions, I will be occasionally posting articles in my Intellectual Property 2.0 series.

I can’t imagine that those who created our copyright and trademark laws envisioned the world we live in today, where the entertainment industry has become a megalith dominated by ongoing brands as much as it is by individual works. It is to this end that we have seen some unforeseen consequences. Copyright continues to be extended, negating much of the original intent that works pass to the public domain. However, should these works ever pass into the public domain, a new issue would immediately be born. To the extent that many of these works are also the matter of trademark for the company, they are, in essence, still not in the public domain. By the same token, should Congress continue to extend copyright, they never will be. But is there a solution? Within the practical bounds of intellectual property as we know it, not exactly. However, if the legal system is willing to move forward into a more modern intellectual property scheme, then we can solve both issues simultaneously.

This new idea is something I would refer to as ‘Copymark.’ In short, to the extent a copyrighted work is also the subject of a registered trademark, the copyright remains intact until the trademark lapses. By creation of this new category of intellectual property, you resolve two issues. One, copyright need never be extended for a concern related to the ‘brand.’ Two, those with copyrights that overlap with their trademarks no longer need to be concerned with the fate of the brand once the copyright expires. In order to balance rights, though, there would of course be a catch. To register for copymark, one must forego traditional copyright and trademark filings, and as a result, should the copymark lapse, the work would go immediately into the public domain regardless of the ‘life of the author plus 70 years’ or other expiration provisions of copyright law. More than likely, copymark status would be a filing once both the trademark and copyright are established, and the filer would have to forego their existing copyright and trademark rights in order to secure the new registration.

The concept would really only have appeal or application to those within the entertainment realms. After all, the IP is only applicable to instances when both copyright and trademark to the same IP. Unless you are already in an industry which deals in copyrighted works, then the copymark would never even be an issue. Conversely, unless you develop products and a brand that associate with a copyright, then copymark would never be available. Whether or not a ‘famous’ element would be a consideration is yet to be seen. In short, this is more or less a solution for the Disneys, the Microsofts, the Nintendos, and other big players whose copyrighted characters are also synonymous with the brand itself.

Taking a practical example from the world of gaming, let’s look at Mario. Mario is the subject of many of Nintendo’s trademarks and is more or less synonymous with the Nintendo brand, much like Mickey Mouse and Disney. Well into the future, is there any major benefit for the original Super Mario Brothers to pass into the public domain when the original Mario 8-bit sprite is still the subject of trademark? Similarly, would it be practical for Steamboat Willie to enter the public domain while Mickey Mouse is such a closely protected trademark? From a practical standpoint, not really. Assuming the rights holder is looking to aggressively protect the brand, use of the public domain character would be attacked on trademark grounds, and potentially with good reason. Any game you encounter with Mario in it is expected to be a Nintendo creation. Brand identity has moved beyond traditional trademark notions with respect to entertainment properties. Copymark resolves the incongruity of copyright and trademark with respect to entertainment products.

I can only imagine that many on the intellectual freedom side would, on principal and face value, oppose this idea. However, it is worth pointing out that much like the source intellectual properties, copymark would require fair use provisions. What exactly those provisions would entail would likely be the subject of a lengthy debate, however, elements of both copyright and trademark fair use theory would need to be present. Elements like critique, news reporting, and brand identification would be easily preserved under a copymark regime. In fact, it may even be an opportunity to introduce newer fair use provisions that are appropriate to these IPs.

It may be expecting a lot to see a tectonic shift in well established intellectual property regimes, but it is inevitable that new problems will require new solutions. The entertainment brand as we know it did not exist decades ago, but it is a near certainty that it will continue in this manner for decades to come. The printing press gave rise to copyright, and the guild system gave rise to trademark. It only seems to follow logically that the changes to the entertainment ‘brand’ would give rise to a new intellectual property regime, since intellectual property is the backbone of the industry itself. I can only imagine that companies like Microsoft and Disney might jump at the opportunity to see some of their most prized IPs protected throughout their useful life, rather than having to re-lobby Congress before certain copyrights are set to expire. It's difficult to predict whether an idea like this might ever truly be implemented, but unless people are willing to think outside the traditional intellectual property box, problems like these will be perpetual.