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The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

Video Game Technology and IP Law: New Video Game Commerce meets Old School Trademark Law

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Following our previous articles on video game patents[1] and video game copyrights[2], we are now examining the role of trademark law in video game technologies. Where trademark law may be the oldest intellectual property right[3], the use of trademarks within video games has thus far received little attention by courts and legal scholars. While trademark law has typically provided protection for tangible goods and services, commerce in the digital age poses new problems for this legal right, especially among online video game communities. While current trademark statutes are applicable to video game technologies other special issues place limits on a trademark owner’s rights, such as constitutional protections that provide freedoms of speech and personal expression. 


To understand how video games operate today within intellectual property (IP) rights, it is important to understand the evolution of video games. From the arena of single and multiplayer games arose the first computer arcade games in the early seventies, i.e., Computer Space in 1971 and Pong in 1972. From these early arcade games evolved games for personal computers, television gaming consoles, and handheld gaming devices, such as Nintendo’s Game Boy. Later, the Internet introduced video gaming to online gaming communities that included massively multiplayer online role-playing games (MMORPGs) and various online gaming environments. For example, the gaming site Roblox offers a cohesive online community for developing and sharing games as well as “digital assets” that are files containing content for in-game use. To illustrate the scope of these online communities, Roblox had 43.2 million daily active users in 2021.[4] With the Internet, video games stopped being static personal entertainment vehicles, and became evolving marketplaces for exchanging virtual goods and performing consumer transactions. 

With this backdrop, the best introduction to the relevant trademark issues is an interesting district court case, Fortres Grand Corp. v. Warner Bros. Entertainment[5], which is focused on trademark usage in movies rather than video games.  In Fortres Grand, a company manufactures a real software product, “Clean Slate,” that is used to protect the security of computer networks by erasing all evidence of user activity so that subsequent users see no evidence of a previous user's activity.  In Batman movie, The Dark Knight Rises (DKR movie), a character named Selina Kyle, aka, Catwoman, attempts to procure a fictional software program, also called “Clean Slate”, that will erase her criminal history from every computer database in the world. In the promotional campaign for the DKR movie, Warner Brothers also setup several online websites that used the term “Clean Slate” in connection with the DKR movie. Subsequently, the company, Fortres Grand, filed a trademark infringement lawsuit against Warner Brothers, the producer of the DKR movie over their use of this fictional software program.

The Fortres Grand court articulated the trademark issues as follows: (1) is there a likelihood of confusion among consumers as to the source or origin of Fortres Grand’s real software product and the fictional “clean slate” software program; and (2) assuming a likelihood of confusion exists, is Warner Brothers exempt under the U.S. Constitution’s First Amendment that protects freedom of speech and other expression. Here, the Court noted that consumer confusion may relate to "forward" confusion, i.e., classic trademark infringement, in which a junior user attempts to capitalize on a senior user's good will and establishes reputation by suggesting that his product comes from the same source as does the senior user's product.[6] On the other hand, the consumer confusion may also be “reverse confusion” where a junior user uses its size and market penetration to overwhelm the senior, but smaller, user.[7] 

Because the parties agreed that no forward confusion had occurred, the Fortres Grand court analyzed whether Warner Brothers’ acts constituted reverse likelihood of confusion of the “Clean Slate” trademark by using “Clean Slate” in the DKR movie. Ultimately, the court emphasized an important distinction that the analysis must be between Warner Bros’ real product (i.e., a movie) and not its fictional product (i.e., software in the DKR movie). This distinction makes a world of difference because so much of the consumer confusion analysis depends on a comparison of the products at issue.  By restricting the analysis to fit this requirement, the court found there was no reverse confusion.[8] An appellate court affirmed this finding, but further clarified that the consumer confusion analysis is directed to the question “whether the products are the kind the public attributes to a single source”, which still requires a complete analysis of all relevant factors applicable to trademark infringement.[9]

Regarding the constitutional issues, the Fortres Grand court also found independently that the lawsuit should be dismissed because Warner Bros.'s use of term "clean slate" is also protected by the First Amendment to the U.S. Constitution. In reaching this conclusion, the Fortres Grand court used a test called the Rogers test after a federal court case of the same name[10]. The Rogers test is a two-pronged analysis that determines whether the Lanham Act is applicable to "expressive works" based on whether the usage of the mark is (1) "artistically relevant" to the work and (2) not "explicitly misleading" as to the source or content of the expressive work.[11] However, it is very difficult for an expressive work to fail the Rogers test, where the closest example is Gordon v. Drape Creative, Inc.[12] Various courts and scholars have criticized the Rogers test as being too dismissive of trademark rights.  For example, a district court in Colorado alleges that the Gordon opinion makes its point through an awkward attempt to avoid looking like it is overruling what it does not have the power to overrule [i.e., previous Ninth Circuit precedent].”[13] In particular, the Colorado district court found that “the Rogers test, as it had been interpreted up to that point, opens the door to free use of trademarks for ‘artistic’ goods and services, even on precisely the same goods and services for which the trademark was granted.”   With respect to video games, the Rogers test was used to successfully dismiss trademark and trade dress claims based on the video game, Grand Theft Auto: San Andreas.[14]

In application to video game technologies, the traditional consumer confusion analysis and constitutional protections made enforcement of trademarks difficult in offline games prior to the advent of the Internet marketplaces. In the Grand Theft Auto: San Andreas example, the game is an off-the-shelf item offered in a single player format or a multiplayer format where two gamers play simultaneously on a single screen in their own room.  However, these player formats are no longer the standard in many video games.  Under a micro-transaction business model, many gamers can now purchase virtual goods with micropayments made after receiving and installing the actual game on a computer or console.  Where the “Clean Slate” program in the DKR movie is clearly a fictional product, virtual goods are very real commercial products even if only found in a digital medium. Thus, the door is opening for more traditional trademark rights to being enforced in virtual worlds operated by video game developers and inhabited by video gamers.   

In conclusion, video games have moved away from a primary storytelling mode where gamers were restricted by a preconceived story analogous to novels and movies, and deserving of similar legal protections.  Now, many video games have made the actual gamers become designers of an ever-changing video game world. This video game world both engages in video game commerce involving virtual goods and virtual services.  As with any goods or services, both the players and the proprietors of these online gaming environments will need to respect trademark law. 

 

[1] An article on video game technology and patents may be found here, https://www.obwbip.com/newsletter/video-game-technology-and-ip-law-problems-in-patents-.

[2] An article on video game technology and copyrights may be found here, https://www.obwbip.com/newsletter/video-game-technology-and-ip-law-now-youre-playing-with-copyright-law.

[3] See Rogers, E. S., “Some Historical Matter concerning Trade-Marks,” Michigan Law Review, Nov., 1910, Vol. 9, No. 1 (Nov., 1910), pp. 29-43. 

[5] 947 F. Supp. 2d 922 (N.D. Ind. 2013).

[6] 947 F. Supp. 2d at 926.

[7] 947 F. Supp. 2d at 927.

[8] See 947 F. Supp. 2d at 931.

[9] See Fortres Grand Corp. v. Warner Bros. Entertainment, 763 F. 3d 696, 703, 706 (7th Cir. 2014).

[10] See Rogers v. Grimaldi, 875 F. 2d 994 (2nd Cir. 1989).

[11] See 947 F. Supp. 2d at 931.

[12] See 909 F. 3d 257 (9th Cir. 2018). ). In Gordon, the appellate court found “[t]here is at least a triable issue of fact as to whether defendants simply used Gordon's mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it—to identify the source of humorous greeting cards in which the bottom line is ‘Honey Badger don't care.’” See id. at 271.

[13] See Stouffer v. National Geographic Partners, LLC, 460 F. Supp. 3d 1133, 1142 (D. Colo. 2020).

[14] See ESS Entertainment 2000 v. Rock Star Videos, 547 F. 3d 1095, 1099-1101 (9th Cir. 2008).