Taking on the Mob – Protecting Your Social Game with Trade Dress
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©iStockphoto.com/Gerald Senger ©iStockphoto.com/Gerald Feature By Theodore K Stream, Emma D Enriquez and Ben A Eilenberg Taking on the mob – protecting your social game with trade dress Social game developers operate in a fast-moving, competitive marketplace, where traditional applications of trademark law may no longer provide comprehensive protection. However, recent disputes involving Mafia-themed games suggest that all is not lost 64 World Trademark Review April/May 2011 www.WorldTrademarkReview.com The popularity of social games has boomed over the past few years. As revenue is generated by capturing an audience of gamers and The more distinctive a game selling products to them, early entry is often critical to establishing a developer’s foothold. Once an audience is captured for a particular arrangement, the more likely game, the opportunity to cross-advertise other games and products is effectively created. Equally important is protecting the intellectual that the look and feel of the property inherent in the offering – requiring new approaches to trademark law application. game will be protected under Trademark law is designed to protect the identification of a game with its source. In an ideal world, all games and developer trade dress theories marks would be so distinctive that there would be no likelihood of confusion between them and their sources; but amid the explosion of games and the rush to bring them to market, this simply isn’t always the case. In addition to natural confusion resulting from industry growth, competitors sometimes intentionally replicate successful games in an effort to capitalise on their popularity. But how effective is trademark law in offering protection in this industry and what else can a developer do to protect its game and intended audience? Facebook. Psycho Monkey subsequently sued Playdom and Zynga It is worth noting that video game cases can be very difficult to for trademark and copyright infringement. litigate. There are objective and subjective factors involved, with Exhibits to the complaints showed that screenshots for Mob games made up of several moving parts. Under existing law, certain Wars, Mobsters and Mafia Wars were almost identical. The graphics parts warrant legal protection, while others do not. How, then, are and font types differed, but the colour schemes and page layouts damages to be calculated based solely on components of the game were very similar. Additionally, the game levels were all arranged that are deemed to be legally protected? in an identical fashion. The cases settled, with confidential terms, Further complicating the issue is the fact that a social game within a year of the suit. But what if they hadn’t? Could trade dress is effectively a cross between a video game and a business site. have been applied to the games during the course of litigation? Transactions specific to the game take place there, as well as other And what lessons can be imparted to other social game developers? goods and services through advertising links or mini-sales sites which run along the screen. Identifying components Yet social games are particularly easy to change, given the ease To answer these questions, it is important to consider the basic with which they can be launched and then modified. A competitor components of the games, which are essentially made up of the can easily reverse-engineer a game, capture as much of an audience following basic elements: as possible and then dispatch a team to modify the game with • Invitation (item 1) – on the Facebook and MySpace platforms, different graphics or to add additional layers, complicating claims. players invite friends to play the game. For the recipients, this A theft may have occurred, but what was stolen? is often the first introduction to the game. Copyright law protects only the unique expression of ideas. • Graphic user interface (item 2) – the graphic user interface is the Stringent filtering doctrines and the vast amount of published home page or menu that players use to manoeuvre through games and stories make copyright claims challenging, and evidence the game. For example, if a player wants to earn points by of intentional copying is of little assistance. Turning to trademark committing a crime, the correlating page can be accessed from law, more traditional applications of trademark law may protect the menu. the game’s name and developer’s logo. While this may be extremely • Levels – items 3 to 13 represent 11 pages or levels that make up helpful, a competitor will usually take at least some steps to change the core of the Mob Wars games. From these pages, players the name and identifying marks before publishing a copy of a game. engage in various mobster activities and accumulate points. Developers are left with the question of how to protect enough components of a game to preserve its integrity. In the Mob Wars cases it was alleged that each of the components (items 1-13) was copied in the exact same sequence and flow. Since The Mob Wars the Mob Wars lawsuits, their structure and those of other social Protecting the look and feel of a game through trade dress may games have become more varied and complicated (so, in evaluating be the best answer. Unlike for copyright, evidence of intentional other games, the identification of the game components that make copying can be an important part of a trade dress infringement up their look and feel may be more complicated). case. To advance this theory, it is necessary to do a bit of game deconstruction and then apply trade dress concepts from outside Trade dress and packaging theory the virtual sphere, as developed in the worlds of Mexican In making the case for trade dress under a packaging theory, the two restaurants, pool halls, Volkswagen vehicles and Hummer car kits. elements to consider are the business image and the invitation element. Reviewing recent cases involving mobster-themed social games is Turning to the first, a social game can be considered packaging when its a useful starting point. components constitute the total image of a business. In 2008 Psycho Monkey LLC launched a mobster-themed game, In 1992 a brightly coloured Mexican restaurant chain, Taco Mob Wars, on Facebook. It was an immediate success and, within Cabana, successfully sued a competitor, Two Pesos, for stealing its months, two other mobster-themed social games appeared. appearance and motif. The restaurants were both vying for market First, Playdom Inc launched Mobsters on MySpace. This was shares in three Texas markets. The US Supreme Court confirmed quickly followed by Zynga Game Network Inc’s Mafia Wars on that Taco Cabana’s packaging included the exterior of the restaurant, www.WorldTrademarkReview.com April/May 2011 World Trademark Review 65 Feature: Taking on the mob sign, interior kitchen floor plan, décor, menu, serving equipment, uniforms and any other features reflecting on the total image of the restaurant (Taco Cabana v Two Pesos (505 US 763 1992)). The games in Mob Wars are comparable to the Mexican restaurant in that they are businesses in which virtual transactions take place. Similarly, like patrons associating the consumption of tacos and beers with a distinctively festive source, social gamers may associate a particular role-playing experience from a distinctively mobster-themed source such as that created by the first Mob Wars game. From accepting an invitation to setting up an account, exploring the main menu, advancing through levels, purchasing goods and engaging in mobster-related activities, gamers are immersed in the aesthetic features that distinguish the game from all other social games in the virtual world. If a competitor copied enough of the original game’s components, it could have copied the look and feel of the game and the game’s business image. The business image packaging theory can also be helpful in constructing damages in the environment of emerging platforms in Psycho Monkey LLC launched Mob Wars on the Facebook platform in 2008 which developers must compete. In Taco Cabana, damages flowed, in part, from an argument that the chain was pre-empted from certain Texas markets in which its competitor built restaurants using Taco Cabana’s business image. In Mob Wars, the original developer could have sought damages from infringing competitors for pre-emption from building audiences on MySpace, iPhone or any other social gaming platforms. A social game’s invitation may also constitute packaging. For many social networkers, an invitation from a friend is the first introduction to the game. Given the number of available games, it is not uncommon for a social networker to receive several invitations to play games. Like two boxes of soap placed side by side on a grocery store shelf, users expect the markings and arrangement on the invitation to act as an identifier of the game’s source of origin. If a competitor copies a sufficient amount of a successful game’s markings, it could create a likelihood of confusion. This is of particular significance when the original game and copy are both published on the same platform. Trade dress and design theory The dispute between mob-themed social games centred on the similarity in Turning to the potential to make a case for trade dress under a the game components design theory, it is useful to consider a more diverse range of real- world cases. So, can a social game be a protected product design? It would seem so when its non-functional features such as size, shape, colour combinations, texture or graphics create a visual impression in a player’s mind. This visual impression is then associated with the developer as the source of the game. In California, a pool hall’s general décor, arrangement of tables, placement of logos, unique entrance and high ceilings were found to constitute elements of trade dress when considered collectively, the court defining trade dress as “the composite tapestry of visual effects” (Clicks Billiards v Sixshooters (251 F 3d 1252 (9th Cir 2001))).