LEGAL PROTECTION FOR GAMES
Ivan Hoffman, B.A., J.D.
Although you may have a copyright (hopefully a registered copyright) in a game, exactly what do you have rights to? Not everything within the 4 corners of a copyright is protectable.
In DaVinci Editrice S.R.L. vs. Ziko Games, LLC, et al., the United States District Court was faced with this issue.
Plaintiff claimed a copyright in a card game called “Bang!” and brought suit against defendants for allegedly infringing on that copyright with its game called “Legends of the Three Kingdoms.” The Court stated:
The parties ask this judge—not known for expertise or experience in playing cards —to decide whether the plaintiff's copyright in its role-playing game, with characters and themes from "spaghetti Westerns," is infringed by the defendants' role-playing card game, which uses essentially the same rules, methods of play, and roles but substitutes characters and themes from ancient China.
The Court went on to describe the similarities and differences between the games including the characters, rules and other elements. Although those differences are key to the Court’s decision, they overly complicate the essence of this article so I will not go through those differences except as they relate to the issues discussed here.
The Court stated:
DaVinci included with its brief in support of its preliminary injunction application a chart identifying 64 similarities between the two games. (Docket Entry No. 3-7). ZiKo and Yoka responded with a chart of dissimilarities. (Oleksiuk Decl. ¶ 51).
These alleged similarities fall into four general categories: 1) the overall concept and physical layout of the games; 2) the roles and winning conditions of each role; 3) characters and their abilities; and 4) rules of play.
For purposes of this article, the Court stated the overall issues regarding the scope of copyright protection as follows:
Section 102(a) of the Copyright Act provides copyright protection to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102. Section 102(b) explicitly limits this protection: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." Id.
"To prove copyright infringement a party must show that `(1) he owns a valid copyright and (2) the defendant copied constituent elements of the plaintiff's work that are original.'" Baisden v. I'm Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012) (quoting Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 367 (5th Cir. 2004)). "In judicial proceedings, a certificate of copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to the defendant to demonstrate why the copyright is not valid." Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir.1990). "[A] side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as `substantially similar.'" Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004) (citation omitted). "[N]ot all copying is legally actionable. To support a claim for copyright infringement, the copy must bear a substantial similarity to the protected aspects of the original." Peel & Co. v. The Rug Market, 238 F.3d 391, 398 (5th Cir. 2001). This involves a determination of whether there are articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in the two works. The court must "determine the scope of copyright protection before works are considered `as a whole.'" Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (citing Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475-76 (9th Cir. 1992)).
Copyright law does not protect an idea. Only "the expression of an idea" is protected. Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996). A party claiming infringement may place "`no reliance upon any similarity in expression resulting from' unprotectable elements." Apple Computer, 35 F.3d at 1446 (quoting Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987)).
The Court went on to first discuss issues about the rules of games.
Historically, the rules of games have not been protected by copyright. See, e.g., Whist Club v. Foster, 42 F.2d 782, 782 (S.D.N.Y. 1929) ("In the conventional laws or rules of a game, as distinguished from the forms or modes of expression in which they may be state[d], there can be no literary property susceptible of copyright."). "[G]ame mechanics and the rules are not entitled to protection, but courts have found expressive elements copyrightable, including game labels, design of game boards, playing cards and graphical works." Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394, 404 (D. N.J. 2012) (citations omitted); see also Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir. 1980) ("copyright protection extends only to the artistic aspects, but not the mechanical or utilitarian features, of a protected work.").
The Court referred to Copyright Office Factsheet FL 108 which states in part:
Copyright does not protect the idea for a game, its name or title, or the method or methods for playing it. Nor does copyright protect any idea, system, method, device, or trademark material involved in developing, merchandising, or playing a game. Once a game has been made public, nothing in the copyright law prevents others from developing another game based on similar principles. Copyright protects only the particular manner of an author’s expression in literary, artistic, or musical form.
Material prepared in connection with a game may be subject to copyright if it contains a sufficient amount of literary or pictorial expression. For example, the text matter describing the rules of the game or the pictorial matter appearing on the gameboard or container may be registrable.
If your game includes any written element, such as instructions or directions, the Copyright Office recommends that you apply to register it as a literary work. Doing so will allow you to register all copyrightable parts of the game, including any pictorial elements. When the copyrightable elements of the game consist predominantly of pictorial matter, you should apply to register it as a work of the visual arts.
The Court stated:
See Russell v. Ne. Publ'g Co., 7 F. Supp. 571, 572 (D. Mass. 1934) ("[A] complainant can acquire no exclusive rights in the particular distribution of the fifty-two cards, in the problem of play or the principles of contract bridge applicable to its solution. The most that can be claimed is protection against the copying of the language used in presenting the problem."). But these constraints are much less apparent in newer forms of card games not subject to the limits of a 52-card deck. More recent cases involving newer forms of card games and electronic games indicate that the protection for game content in these contexts may be more extensive than the earlier card-game cases suggest. [emphasis added]
Yoka and ZiKo rely on Incredible Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d 1007 (7th Cir. 2005), in which the Seventh Circuit held that copying an arcade golf game's control panel and instructional guide did not constitute copyright infringement because the copied materials were functional elements of the allegedly infringed game. Id. at 1015. But the Seventh Circuit has also held that "sequences" and "arrangements" in games can "provide something `new or additional over the idea'" and are entitled to copyright protection. [emphasis added] Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 617 (7th Cir. 1982) (citing Goodson-Todman Enters., Ltd. v. Kellogg Co., 513 F.2d 913 (9th Cir. 1975).
Tetris Holding highlights a key problem underlying copyright disputes over games: "almost all expressive elements of a game are related in some way to the rules and functions of game play." 863 F. Supp. 2d at 405. That case examined similarities between Tetris, "a facially simple puzzle game in which the player is tasked with creating complete horizontal lines along the bottom of the playing field by fitting several types of geometric block pieces (called tetrominos) together," and Mino, a Tetris-inspired game that could be described in the same fashion. Id. at 396. The court found "the dimensions of the playing field, the display of `garbage' lines, the appearance of `ghost' or shadow pieces, the display of the next piece to fall, the change in color of the pieces when they lock with the accumulated pieces, and the appearance of squares automatically filling in the game board when the game is over" to be protectable, despite the fact that all these elements were related to game functionality. Id. at 413. The court emphasized that merely because rules, standing alone, are not copyrightable "does not mean, and cannot mean, that any and all expression related to a game rule or game function is unprotect[a]ble." [emphasis added] Id. at 404-05 (emphasis in original). Yoka and ZiKo may have infringed DaVinci's copyright in Bang!, even though the game labels and artistic features of the playing cards in LOTK are not similar.
As to the characters contained in the game, the Court stated:
Characters can be protected by copyright, although "stock" characters (stereotypical archetypes that audiences may readily recognize) are not entitled to protection. See Gaiman v. McFarlane, 360 F.3d 644, 659-60 (7th Cir. 2004); Rice v. Fox Broad. Co., 330 F.3d 1170, 1176 (9th Cir. 2003); Cavalier v. Random House, Inc., 297 F.3d 815, 821-22 (9th Cir. 2002) ("[S]tock characters are not protect[a]ble by ©"); Williams, 84 F.3d at 588; Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986). Copyright law protects "not only the [character's] visual resemblance but also the totality of the character's attributes and traits." Warner Bros., Inc. v. Am. Broad. Cos., 720 F.2d 231, 241 (2d Cir. 1983) (citations omitted).
[NOTE: The reader should also read “The Protection of Fictional Characters” on my site.]
However, to further complicate matters, the Court said:
DaVinci alleges infringement because "[LOTK]'s characters Lu Bu, Zhao Yun, Ma Chao, Zhou Yu, Zhang Fei, Zhang Liao, and Huang Gai have the same capabilities as the Bang! characters Slab the Killer, Calamity Janet, Rose Doolan, Pixie Pete, Willy the Kid, Jesse Jones, and Chuck Wengam respectively." (Corbelli Decl. ¶ 57). Yoka and ZiKo argue that these common capabilities do not give rise to a copyright claim for two reasons: 1) character capabilities are part of the game's rules of play, which are not protected; and 2) the Wild-West-themed artwork on the character cards in Bang! is very different from the ancient-China-themed artwork on the character cards in LOTK. (Docket Entry No. 25 at 7).
The characters of Bang! are distinctly marked and have been assigned a specific set of abilities. They are sufficiently defined and described to be entitled to copyright protection. See Gaiman, 360 F.3d at 660. The question is whether LOTK's characters, translated from the Wild West to ancient China, are substantially similar to the corresponding characters in Bang!.
The capabilities are part of each character's "attributes and traits" and are protectable with the characters' names and visual depictions. See Midway Mfg. Co. v. Strohon, 564 F. Supp. 741 (N.D. Ill. 1983) (holding that the "literary" works in a PAC-MAN game could be infringed without infringing the game's audiovisual component). Even though the specific capabilities that a character may have or use are in themselves an unprotectable part of the rules of play, these specific capabilities are relevant to determining whether the protectable expression of the characters in the two games are substantially similar. [emphasis added] Id.; see, e.g., Capcom U.S.A., Inc. v. Data East Corp., 1994 WL 1751482 (N.D. Cal. Mar. 16, 1994); Hogan v. DC Comics, 48 F. Supp. 2d 298, 309-10 (S.D.N.Y. 1999) ("In determining whether characters are similar, a court looks at the `totality of [the characters'] attributes and traits' as well as the extent to which the defendants' characters capture the `total concept and feel' of figures in [plaintiff's work]." (citations omitted)); Cory Van Rijn, Inc. v. Cal. Raisin Advisory Bd., 697 F. Supp. 1136, 1140 (E.D. Cal. 1987) (Considering the characters' "developed personalities and particular ways of interacting with one another and their environment.").
As to another element, the Court added:
A related issue is whether the players' roles are protectable. The players in both games play virtually identical roles. Yoka and ZiKo argue that the players' roles are an unprotectable rule of play. The four specific roles that DaVinci chose for its game define how the players interact and are fixed in a tangible medium of expression. Under the case law, such roles and their expression are not merely rules that prescribe what the players may do; the roles and their expression also describe how the players may do it. If the roles describe the content of the players' interactions in ways that are "sufficiently original or creative to merit © protection," players' roles can be protectable. Incredible Techs., 400 F.3d at 1013.
And finally, as if things were not unclear enough, the Court stated:
The players' roles in Bang! are analogous to the object hierarchy in Spry Fox. The roles are distinguishable from game rules such as requirements for the order in which players move or for scoring. Game rules that set the order for players to move or a scoring system are not protected. By contrast, copyright does protect the "sequence of [a work's] events [and] the development of the interplay of its characters." [emphasis added] Miller v. Universal City Studios, 650 F.2d 1365, 1368 (5th Cir. 1981). The descriptions of the players' roles in Bang! establish the sequence of the game's events and the interplay of the characters. The roles dictate how players interact with one another. The descriptions of the roles express the underlying creative idea that is the essence of Bang!. Just as the progression from grass to bush to tree to hut was protectable expression in Spry Fox, so the interplay between the Sheriff, Deputies, Outlaws, and Renegades is protectable expression here.
The “Take Away”
Every case will be decided upon its own merits and the above rules can result in different decisions depending on the facts. In the copyright application and the accompanying deposit material, the material in which copyright is to be claimed should be described in as much detail as possible so that the copyright claimant can claim that the allegedly copied material took that detail and made cosmetic changes only but such cosmetic changes still infringe upon the protectable elements.
This article only deals with copyright issues in games. There may be other bases for claiming legal rights to games.
You should consult with an experienced copyright attorney before proceeding.
Copyright © 2014 Ivan Hoffman. All Rights Reserved.
This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.
No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.