Youthful Exuberance (TM)

Posted on by Suzanne Jackiw

It’s been all over the news. The video game industry is having a problem with trademarks because the idea of ownership doesn’t seems to align well with the goals of creativity. This is particularly evident in the recent media coverage that started with King’s attempts to trademark Saga and Candy, and now continues with Ultimate Arcade’s claim on Flappy. There hasn’t been recent comparable coverage about disputes in similar industries – like movies and books – bickering over ownership of title words.

This discrepancy is in part because books and movies are more established industries– with expected group norms that keep most participants in line. These industries have already experienced the growing pains of a developing industry and created an implied contract of expected behaviors to which participants must adhere. For example, publishers and film companies tend to understand that your Lincoln movie will not be the only Lincoln production in a given year. Further, they tend to be more lenient with the content created to follow the industry trends. In the games industry, each new game can feel like an entirely new creation entitled to a higher degree of protection. Realizing that a broad range of games with similar titles can exist will be part of the growing process. With age comes maturity, something the games industry is still working toward.

The examination process limits trademarks in other industries. For a game company to trademark a title, all they must do is release one game (and meet the other general trademark requirements). For a movie or book to receive a trademark registration, they must create a product line or family of goods, otherwise known as a brand, in the mind of the consumer. While today no movie exists in a vacuum, and is additionally protected by common law and unfair competition standards, the rule remains that a brand is required. You can’t own “Terminator” because you made one movie with “Terminator” in the title. You have to make several movies or release some action figures before you approach the USPTO. You can, however, own “Candy Crush Saga” because you made one game called “Candy Crush Saga.”

Another problem is hubris – other industries limit their marks to actual uses. While most game registrations are in international class 28, and further specified through a written description that describes them as a video game, some applications include intended uses or potential uses. The most recent example of such an over reaching application is King’s CANDY application, which included claims for things like RAM, baby monitors, and TV shows. The US Patent and Trademark Office requires that applications be limited to actual uses, a restriction that other entertainment industries have acquiesced to due to experience.

A final problem is the difference in copyright coverage for each of these industries. Copyright protects the expression of an idea. For example, I can film a movie about murderous robots from the future, but the more my movie resembles Terminator, the more likely that I’m infringing. Similarly, I can write a book about wizardng school, but need to be careful not to make it too much like Harry Potter. In both these cases, the copyright covers the overall creation, adding a layer of protection to trademark. Copyright does not cover game mechanics (match 3, fps, walk over to pick up), control configurations (roller ball, button locations), or instructions or rules. Games are covered only if the expression of a theme is almost visually indistinguishable to the average consumer or substantial pieces of copyrightable expression are actually copied; and, as a result, game developers need to rely more heavily on other forms of protection. Since games are a different from other products the entertainment industry, they’re treated differently. They are the only entertainment media that can actively express patent, copyright, and trademark protection; so their reliance on each of these differs from other entertainment products.

The games industry is still young, and growing up can be difficult.

International Video Game Law Summit

Posted on by Mark Methenitis

I’m sure many of you noticed the absence of Game Business Law this January.  I won’t get into the details of why that event wasn’t held this year, but I am glad to announce that there will be a video game law conference in Dallas this June.

I am pleased to announce that the International Video Game Law Summit will be held June 23-24, 2014 in Plano, Texas.  It is being put together by a joint effort of the Center for American and International Law and the Electronic Entertainment and Online Gaming Committee of the International Bar Association.  More information is available at the official summit website, and additional details will be posted soon once the entire schedule is finalized.  I will be speaking at the event, as will a number of other major names in the video game industry.  If you enjoyed Game Business Law, plan to attend the International Video Game Law Summit this June.

Patently Protected

Posted on by Suzanne Jackiw

Riot Games, creator of League of Legends, recently secured the patent for their spectator mode. The initial response was less than positive. Between King attempting to block the Banner Saga over trademark concerns and ongoing concerns over patent trolls, the development community was understandably wary of anyone trying to establish an intellectual property monopoly. Riot responded with a public statement making it clear that it has no interest in using its patent offensively but is primarily interested in defending itself from patent trolls. Being a well-respected company, Riot’s statement has been generally accepted as the end of the matter.

Video game companies holding patents is not a new phenomenon. Entire websites have been dedicated to tracking the patents of the industry. Electronic arts, Activision, Zynga, and others all have extensive patent portfolios. As a general rule, these companies don’t use their patents to create lawsuits. They likely use them as defense against patent trolls and to increase the value of their companies; even useless patents increase a company’s valuation.

The initial reaction to Riot’s patent belies a misunderstanding of patents and how they are susposed to function. A patent is a set of rights granted to an inventor so the inventor can protect her invention. These rights last about 20 years. They form a monopoly by allowing the inventor to keep others from making, using, importing, offering for sale, or selling the invention; but, they don’t guarantee the inventor can do so. The USPTO will issue patents on inventions that are illegal. The invention is patented but cannot be made. Similarly, if I invented a new disk drive for the Xbox, I would have to license the rights to build the Xbox before I could manufacture my Xbox with new disk drive.

An invention must meet four criteria to receive a patent. The invention must be useful in some way; the patent office assumes an invention is useful unless there’s evidence to the contrary. The invention must be novel, meaning no one else has thought of it. Relatedly, it must be non-obvious, meaning no one else who was skilled in the art could have easily thought of it. For example, if someone who makes video game system hardware could have easily thought of my new disk drive design, it’s probably unpatentable. Lastly, the subject matter of the invention must be patentable.

Most video game patents are either machines or processes. In the video game industry, machine patents refer to the hardware of gaming, from systems to controllers. Most systems are composed of several patents, each covering a different component. The mechanics of a game, including spectator modes, are covered by process patents. Most of the patents owned by software companies are process patents.

Another type of patent is a design patent. A design patent covers the way something looks or the ornamental features. If I made a game system in the shape of a spiked sphere, I could patent the shape so that no other game company could make a spherical system with spikes. Design patents can only apply to real things. Activision Blizzard was recently challenged by P.S. Products over a set of stun gun brass knuckles. P.S. Products had a design patent on a stun gun in the shape of brass knuckles. Activision included stun gun brass knuckles, called galvaknuckles, in Call of Duty, Black Ops II as a virtual in game item. The court dismissed the patent infringement case because no one who purchased the game would think they were purchasing stun gun knuckles – and because a virtual item cannot infringe a design patent on a real item.

Having a patent doesn’t make a company a troll. Most video game companies have at least one patent, with most having many more. Using a patent to stifle the creativity of the industry, hinder competition, or make a quick payday are hallmarks of being a troll. Differentiating between patent trolls and patent holders begins with a clear understanding of patents and their limitations, particularly within the variety of spaces in the video game industry.

Candy Coated Parody

Posted on by Suzanne Jackiw

With the King candy trademark saga winding down, it’s an appropriate time to work through some developer reactions and their possible legal implications. Many took to the internet to voice their concerns, frustrations, confusion, and rage at the situation. Others participated in game jams, gatherings of developers where a game is produced within set parameters including a time limit, that protested the application by making a game with “candy” in the title. King recently abandoned the mark, but had the application passed USPTO scrutiny, many of these developers could have faced serious consequences. Developers seem secure in the thought that even if King achieved registration, and, even if King were so bold as to challenge their games, King could not possibly win. After all, these games are protests and parodies of the “candy” mark, and it’s obvious that a parody isn’t a crime- it’s free speech.

Parody is most often cited as a defense in copyright infringement cases. In copyright, parody is a subcategory of fair use. Fair use is an affirmative defense to copyright infringement that “permits other people to use copyrighted material without the owner’s consent in a reasonable manner for certain purposes.”In cases where a work would otherwise be infringing, the fair use doctrine can exempt the author from liability. The primary purpose of fair use is “to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” Within this framework, parody is the transforming of a copyrighted work in such a way as to poke fun at the original. For example if some creative developers were to take a well known educational game about pioneers making their way west and use the same graphics and style in a game about escaping a zombie invasion.

Most candy jam developers, however, were not parodying the copyrightable material within the game Candy Crush Saga. They were, instead, making use of the “candy” mark to protest King’s trademark application. Trademark parody always involves a change to the existent mark so that the original mark and the parody are not identical. For example, a creative development team could name their game “Organ Trail” as a zombie themed parody of the well-known educational game “Oregon Trail.” The courts have not established that parody is a foolproof defense to trademark infringement, but have instead offered a patchwork of decisions giving guidance as to whether or not your parodic title will stand up to scrutiny.

Often, the first consideration is whether the parody is occurring in a commercial context, and, if so, whether the goods are in competition with the goods sold by owner of the mark. If the goods are used in a commercial context, for example a game that is being sold for an initial purchase price or one that offers in app purchases, it raises the bar for how dissimilar from the established mark the new mark must be. Similarly, if the goods are in competition, much like the candy jam apps that are now on the same devices as Candy Crush Saga, the court requires enough dissimilarity to distinguish the marks in the mind of the consumer.

Another consideration is free speech, or first amendment rights. Courts are less likely to allow a trademark holder to silence someone who is expressing a view, engaging in protest, or trying to communicate ideas. However, once free speech is intermingled with a commercial motive, particularly a competing one, the courts become less sympathetic, and hold the mark to a higher standard of dissimilarity to ensure no confusion. A free speech interest or political message or idea is not enough to insulate against claims of trademark infringement.

The marks are typically compared side by side, with the court opining on their similarities and differences before deciding whether the two are “confusingly similar.” This determination must be made based on whether a consumer would be deceived by the infringing parodic mark. The marks are considered in their entireties and their individual elements. It’s the impression which the mark as a whole, and not the individual parts, creates on the average buyer that is important.  The determination on likelihood of confusion is based upon consideration of the respective marks in their entireties.

It’s important to note that titles are not the only possible form of parodic trademark infringement. Registered marks can be used within a product in a parodic manner. For example, if the aforementioned developer were to create a game about being a legal intern within which a variety of parodic titles appeared. These marks would still be infringing if not deemed parody.

Royalties and Copyright Standing

Posted on by Suzanne Jackiw

Employers benefit from the labor of their employees in many ways beyond the day to day tasks assigned that employee. Copyrightable work produced within the scope of employment belongs to the employer as work for hire. Any other intellectual property created by an employee can be transferred to an employer through an assignment. When a contractor, in contrast with an employee, produces a copyrightable work, the rights remain with the contractor unless a signed document transfers some or all of those rights. An author has the right to transfer some or all of her copyright, usually in exchange for payment or royalties.

According to copyright law, a person must own a registered copyright to sue for infringement. Under most circumstances, if an author transfers her interest in a work to another person, for example an employer or publisher, the author no longer has the ability to sue for infringement, called standing; however, if the author receives royalties in exchange for the copyright, then she retains the right to sue for infringement. The courts recognize royalties as an expression of continued interest in a particular work and reward that interest by allowing authors to protect their creations.

Mr. Smith was a composer who transferred his copyright in several existing compositions, as well as future compositions, to Sunshine Sound Entertainment Inc. and its affiliates in exchange for royalties. Smith wrote a composition outside the scope of the agreement. Even though the copyright was not assigned, it was registered with Smith as composer by one of Sunshine Sound’s affiliates, Harrick Music. Mr. Smith acquiesced to the registration. In time, Smith’s relationship to Sunshine Sound deteriorated and they signed a termination agreement, granting Smith continued royalties but saying nothing about ownership of the copyrights. Mr. Smith died having received no royalties post termination from Sunshine Sound and no royalties at all from the Harrick Music. Smith’s estate filed an order of termination with the copyright office and sued the assignees for infringement.

While the trial court found no standing to claim infringement, since Mr. Smith had filed no copyright registrations, the Federal Court of Appeals for the Eleventh Circuit disagreed. In Smith v. Casey et al, the court found, in line with other circuit decisions (see Batiste v. Island Records Inc., 179 F.3d 217, 219-21 & n.2 (5th Cir. 1999); Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984); Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1144 (9th Cir. 2003); Moran v. London Records, Ltd., 827 F.2d 180, 183 (7th Cir. 1987); 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.02[D]), that a copyright filed on behalf of an author gives that author standing to file in court; but, only if the author is, or should be, receiving royalties on the work. Royalties indicate an author’s continuing interest in his or her rights in the work, an interest which the courts respect by granting standing in infringement cases.

This decision is a none too delicate reminder of the difference between a contractor, assignor, and employee. When distinguishing an employee from other relationships, the courts take into account employment status, scope of work, and contractual obligations. Many contracts for any working relationship now transfer or assign rights to all IP created within the scope of the work being done. According to the Restatement of Agency (2nd), an employee’s conduct is within the scope of employment only if “(a) it is of the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the [employer].”

This decision also emphasizes the importance of the type of payment made in exchange for copyright rights. The court highlighted the receipt of royalties as signaling an ongoing interest in the copyrighted work. Had the copyright been assigned in exchange for a lump sum payment, the author would not have had a right to claim infringement. While royalties may see less initially expensive or more fair, they have far reaching influence over future interests in the copyright.

The video game industry relies heavily on contractors and assignments. Due to funding limitations, most game companies cannot hire employees in every area of game development. This case reminds developers and those that represent them that when forming contracts, they ought to be careful how the transfer or assignment of rights is handled. Royalties will be less expensive initially but give the author increased control over the work. A lump sum payment ensures the complete transfer of all the right associated with a copyright. Developers ought to be aware of the author’s continuing right to sue for infringement and plan accordingly.

Wildly Flapping to React to Flappy Bird

Posted on by Suzanne Jackiw

Most app developers are well aware of the differences between the curated and heavily controlled market that is Apple’s iOS App Store and the Wild West-style free for all that is Google Play. Each has its charms, but Google often acts as a safe haven or second chance for games that either don’t pass the stringent App Store requirements or are later booted for Terms of Service violations.

Enter Flappy Bird.

Flappy bird was released on both Google Play and the iOS App Store in mid-2013 but didn’t achieve success until early 2014. At its peak, Flappy Bird was earning its creator, Dong Nyugen, $50,000 a day in ad revenue. In the midst of all the success, Nyugen decided to pull the game. He made the announcement through Twitter, and was initially unclear about the reasoning for his decision. He did make it clear, however, that he never expected the level of success, was continuing to make games, had not been acquired, and had not received any legal notices. Nintendo backed up this claim. He later clarified that he removed the game because it was too addictive.

Regardless of his reasoning, the game is gone and people are scrambling to find or recreate the experience. With reports of phones installed with Flappy Bird going for inordinate sums of money on eBay, it’s only natural that developers, legitimate and otherwise, would want a piece of the action. The App Store and Google Play, as well as the Windows Phone Store, were flooded with all manner and type of clone. While many of these clones were legitimate, some using only the mechanics of Flappy Bird, others were fraudulent or even dangerous. The stores also expressed concern about expanding the market too quickly and losing other types of games in a sea of Flappy Bird clones.

Apple responded to these games in the App Store with the expected severity. They’ve banned all new apps with confusingly similar titles. The rejection letters inform developers that Apple believes thier title attempts to leverage the popularity of an existing app. This violates the App Store terms of service. Apple is also rejecting apps that imply they’re associated with Flappy Bird. Apple has a long history of doggedly defending the IP of developers and responding harshly to any claims of infringement; those accused of infringement often feel as though their responses or defenses are ignored. Apple consistently takes the time to carefully curate its ever growing App Store.

Google, contrary to its typically laid back response to infringement claims, has not only banned new apps with confusingly similar titles but has also set upon recently submitted apps that resemble Flappy Bird. In most cases, recently submitted games are only required to change their names or descriptions so they aren’t easily confused with Flappy Bird.

Neither Google nor Apple can rely too heavily on consumer confusion concerns as explanation for removing the apps. Nyugen removed Flappy Bird from the market, and from all ostensible sources, displays no interest in ever re-releasing it. More importantly, this information was widely disseminated through Time, Forbes, and the Wall Street Journal. The consuming public likely knows the original Flappy Bird no longer exists. These new apps are not competing with or taking business from Flappy Bird. Further, it’s unlikely that Nyugen has any interest in going after these games for infringement. Even if he chose to do so most of the games only copy Flappy Bird’s mechanics, which the courts have found to be unprotectable under copyright. Consumer confusion would be his only recourse, and since his game no longer exists anywhere at all, it’s unlikely a court would find in his favor and even more farfetched that they would find damages.

While Apple has always employed heavy oversight and rapid infringement response, this is a notable change in ordinary course of business for Google Play. How much weight given to ordinary course of business, if any, and whether it applies to distribution agreements, varies widely by jurisdiction. In some jurisdictions, when considering contractual obligations, courts take into account not only the contract document, but also ordinary course of business. However, in others like Texas, the only thing that matters is the language of the contract.

Contracts, like the distribution agreement between Google and developers, also include an implied condition that neither party will do anything that will inhibit the completion of the contract. For example, a developer won’t purposely make a game Google can’t distribute and Google won’t take any steps that make it impossible for the game to sell. This is referred to as good faith and fair dealing, and can be thought of as honesty in business transactions. If a party to a contract fails to act in good faith then, depending on how much the failure impacts the contract, the other party can sue for damages. By changing how it handles possible infringement, Google may be impacting how it defines fair dealing in distribution.

Google has potentially introduced a dangerous precedent of oversight- if your game is very successful, Google may actively block new games and ask old games to change their titles or descriptions to prevent consumer confusion. Google has in this case a new standard for dealing with confusingly similar apps, even when the apps are confusingly similar to something that no longer exists. Of course, Google has also acted differently in previous instances, and that inconsistency could itself be a problem

Flappy Bird changed expectations for the app market in a number of ways. Developers have fretted that players aren’t interested in play style or innovation, but are instead easily fixated on impossibly difficult tasks. Others have mused that players don’t know what they want, and are behaving in an entirely trend-driven way.  In addition to these concerns, there’s a reasonable concern that Google may become a less open market, no longer a safe haven for the games rejected by Apple.

 

Amazon Affiliates

Posted on by Mark Methenitis

You may have noticed the new Amazon widgets and banners on Law of the Game.  Law of the Game is, as you may have guessed, now participating in the Amazon Services LLC Associates Program, and I’m sure many of you may be wondering why.  I wanted to take a moment to explain.

Law of the Game was a project I launched on a free platform, but even there, I was personally footing the bill for the few costs we encountered (for example, domain registration).  And because Law of the Game is something I’ve always thought was important, I didn’t mind these expenditures, or the new expenditures on things like hosting and branding for Law of the Game 2.0.

I do not, however, have unlimited funds, and therefore the contributors to Law of the Game remain unpaid, other than in my gratitude and the exposure this platform offers their work.  They are all working hard, and they’re doing it because they also think this is important.

So, all I would ask is this.  If you like what you see on Law of the Game, and you do from time to time already shop at Amazon, it would be great if you might think about using the search box on the right side of the screen to find what you’re looking for on Amazon sometime.  Or, if you’re thinking of joining Amazon Prime (a service I personally subscribe to and enjoy), try doing so by clicking through the banner at the bottom of the page.  If enough people do it, then the contributors might be able to see a small payment for their efforts, and maybe Law of the Game will even break even on hosting.  If you don’t shop on Amazon, don’t feel obligated to because of us.  Hopefully, the couple banners aren’t too intrusive as to ruin anyone’s reading experience on Law of the Game.

The Cost of Free Labor

Posted on by Suzanne Jackiw

In most industries, game development and legal included, internships are an important part of the educational process and offer a unique opportunity to spend some time in a field prior to making a full-time commitment. Many companies receive countless emails from students looking for a foot in the door. More than half of all college students participate in an internship prior to graduation; and for good reason – internships provide the type of experiences and connections simply not available in a purely academic setting. A third of all students are willing to forego a paycheck for these benefits; but, in many cases the costs outweigh the benefits for all parties involved.

As a developer, the siren song of free labor is tempting. Many college students possess impressive skills, boundless energy, and a willingness bordering on desperation. However, taking advantage of this resource could crash your company into litigation. Recent lawsuits against Fox Searchlight Pictures, Warner Music Group, and the New Yorker indicate the flaws in assuming interns are little more than free labor. Even though the interns at Searchlight were only doing typical entry level chores, as opposed to highly skilled labor, they were not receiving any obvious educational benefit from their internship. Similarly, Warner’s intern claimed that in addition to gaining no educational benefit from his unpaid internship, he regularly worked more than forty hours a week. The New Yorker interns received a small stipend (about $12 per day), but clearly less than minimum wage. They also performed chores with no educational or vocational value. The common factor in all these cases is a lack of any benefit, financial, educational, or otherwise, to the intern.

Unpaid internships are subject to strict regulation by the US Department of Labor. For example, the work performed by the intern must be “similar to training that would be given in an educational environment” and “for the benefit of the intern.” The regulations prohibit the employer from any immediate benefit from employing the intern, forbid an intern from taking the place of a paid position, and limit the amount of work an intern can do for an employer. Unless these regulations are met, the intern must be paid at least minimum wage for his or her contributions. It’s noteworthy that the Department of Labor does not accept receipt of college credit as an explanation for why the internship is unpaid.

Since unpaid interns aren’t technically employees according to the US Department of Labor, it’s likely they aren’t employees for the purposes of work for hire. A work made for hire is “work prepared by an employee within the scope of his or her employment.” An employee’s conduct is within the scope of employment only if “(a) it is of the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the [employer].” When work for hire disputes reach the courts, they take into account employment status and compensation. An unpaid intern is not receiving compensation and is of questionable employment status, so any work product is likely not work for hire. In game development, many work for hire products, such as code, art assets, or music, are incorporated into the final game. If these are created by interns, the company may not actually own the rights necessary to integrate them into the product.

The typical and appropriate response to work for hire concerns is employment contracts, which usually include a confidentiality or non-disclosure provision. However, the enforceability of these contracts is questionable where an intern is receiving nothing of value, referred to as consideration in contract law. Put simply, for a contract to be enforceable the people signing the contract must be receiving some benefit. A non-disclosure agreement gives the company the benefit of having its secrets kept and an employee the benefit of employment. It’s unclear what benefit unpaid interns receive, so it’s unlikely, or at the very least questionable, whether or not a judge would uphold the agreement.

As a student, particularly in a competitive job market, doing anything to get exposure or a leg up in the market is a tempting proposition. However, the evidence consistently indicates that an unpaid internship doesn’t improve your chances of securing a job. Employment rates post graduations for students who engaged in unpaid internships were no more likely to find a job than those who had no internship at all. Even more unsettling, after entering the workforce, unpaid interns make substantially less than students with paid internship experience. These students make less than even those students who abstained from internships all together. This may be due to an expectation that these students are willing to work for less, but regardless of the reasoning, unpaid internships offer little economic advantage.

Although unpaid internships, when viewed as educational opportunities are not necessarily harmful, the studies and the news both seem to indicate there may be better ways to spend your time. Even a small but reasonable hourly wage gives a student a financial stake in your business and a sense of ownership over their work. As a student, holding out for a paid position both shows pride in your work and increases your chances for employment post-graduation as well as higher wages.

The Candy Trademark Saga

Posted on by Suzanne Jackiw

By this point, nearly everyone has an opinion on whether or not King should be able to register a trademark for dictionary terms like “candy” and “saga.” This is, in part, because both words have long histories in the video game industry and are generally perceived as common words. “Saga” means “a long and complicated series of events” – a description aptly applied to any number of video games. But, Zynga has successfully registered “Ville,” which means “a place, category, or quality of a specified nature.” Any number of games live up to that description as well. Zynga also successfully used an unregistered trademark to force a settlement over Bang with Friends.

Protecting your intellectual property is important for success in any industry, including the game industry. Through registration and enforcement, IP owners can increase product recognition, discourage clones, and create a franchise. Many developers, however, are concerned that when a well-known, well-established developer primarily uses a trademark to discourage creativity and competition in the marketplace. This is the image that jumps to mind when considering King’s recent actions in response to Stoic’s attempt to trademark the title of their upcoming game The Banner Saga.

In talking about the ongoing candy saga, I’ve encountered a lot of confusion about what a trademark is and what makes it eligible for protection. Before delving into the validity of King’s marks, there are a few things to note about trademarks. A trademark is a source identifier used in commerce. Put more simply, a trademark helps the consumer know from where a good or service came. Everyone has a pretty good idea of what a Halo game is and how it differs from a Call of Duty game, and that’s why the respective developers have an interest in protecting the names of their games. In the mind of players, “-ville” games are produced by Zynga.

Trademark rights are acquired through use, or, less often, through registration based on the intent to use. When considering the validity of a trademark, the court will consider the extent of the use, the recognizability of the mark, and the association between the mark and a particular product within the public mind. Zynga’s repeated, national, well known use of  “with friends” in the titles of their games reinforced their interest in that mark. Once a trademark is established, it can be lost through “abandonment” by failure to use the mark in commerce.

Additional trademark rights are accessed through registration, either as “in use” or as “intent to use,” as mentioned before. “Intent to use” is for marks not yet in use, and can be extended for about 3 years before the USPTO pulls the plug. “In use” means the mark is current in use in commerce for the goods described by the class number. There are 45 classes, and you can only register for classes in which you use the mark, for example networked software and video games are two separate classes. To ensure a mark won’t be misused in other categories, many companies, such as Coca Cola and Apple, have company stores that sell goods from many (or every) class so they can maintain registration across multiple classes. In addition to these stores, some marks are so well known, for example, “Disney,” that anything using “Disney” would be assumed to be associated with the Walt Disney Company.

Not every mark is eligible for registration. The strongest trademarks are fanciful, made up words, like “Google” and “Kodak.” Likewise, arbitrary words are strong marks; these are unrelated to the product or service, such as “Amazon” or “Apple.” Suggestive terms are less strong as trademarks; these terms are evocative of a quality of the product without describing the product itself, for example “Q-Tips” or “Habitat.” Less strong, and often ineligible for registration, are descriptive marks, which describe the goods or services, for example “Timely Watch Repair.” Descriptive marks can only be registered if the owner can prove that the mark is associated with a particular product in the mind of the consumer, this is known as acquired distinction. Acquired distinction is most often shown through consumer surveys, evidence of use, or a long and thorough history of advertising and media coverage. Generic marks, marks that describe a class of product, for example “Shoes”, are almost never eligible for registration.

While it may initially seem that “candy” is descriptive and “saga” is generic, that isn’t necessarily true. Much like “Amazon” and “Apple,” “candy” has no inherent connection to video games. King created that connection through their use of candy in a well-known and widely played game. Similarly, “Saga” is mostly suggestive; describing a style of game, rather than describing gaming generally.

Where King will encounter resistance is that both these terms have been used by a myriad of games prior to King’s initial formation. Trademark law recognizes rights in the first to use a particular term or mark in commerce and it seems obvious that King is not the first. But as mentioned before trademarks are use it or lose it. King’s marks can be challenged by any game released before “Candy Crush Saga” with a title that includes “candy.” The similar proliferation of games with “saga” in their titles will create an uphill battle for any continued attempt by King for registration.

While King may have a difficult time registering the trademark “candy,” it is by no means an open and shut case. Even without registration, King is entitled to certain rights under “Candy” ™ and “Saga” ™. Unregistered marks are protectable within their area of influence. King’s game is nationally known; so, its marks achieve the same scope as federally registered marks. Any similar marks could be challenged as causing consumer confusion or misrepresenting the source or origin of goods, resulting in approximately the same result as a similar litigation with a registered mark. With a vested interest in the social gaming space, King will no doubt do everything within their power to protect their IP.

Welcome to Law of the Game 2.0

Posted on by Mark Methenitis

There’s still some cleaning up to do, but by and large, Law of the Game Phase 2.0 has begun.  Yes, Law of the Game has been relatively quiet as of late, and while I’ve been busy speaking (rather than blogging), this new era of the blog aims to fix that.  But what does that mean?  A few things:

1. I, Mark, will be moving into more of an Editor-in-Chief role and less of an author role.

2. Law of the Game will have a small staff of writers putting together new content.  This is something the WordPress platform handles much better than Blogger does, and so that was a driving reason behind the move.

3. Law of the Game will be a lot more active as a result of points 1 and 2 above.

In the mean time, I will continue cleaning up some of the tag issues that arose from moving from Blogger to WordPress, while also adding some new areas to the site. You should already be able to see the new branding and new look.  With a little more time and effort, everything will be up and at 100% efficiency.

This also means something else to my readers who may be lawyers or law students looking for some exposure.  I’m currently seeing a handful of writers to be official Law of the Game contributors.  Some of those slots are filled, but others remain open.  If you are interested, please e-mail me at mark at lawofthegame dot com.  Be sure to include a bio and a writing sample.  Again, this is only open to law students or licensed attorneys, and content (for now) will be limited to English language (although covering non-US jurisdictions is acceptable).

I would be remiss not to thank Zack Bastian, the original Law of the Game contributor, for his work over the past few years.  It was actually his contributions that made me decide to move Law of the Game in this direction.

Our first contributor posts should be coming in the next few days, so stay tuned!