©iStockphoto.com/Gerald Senger 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? . Psycho Monkey subsequently sued Playdom and 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 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 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 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))). Elsewhere, the features of a Volkswagen Microbus constituted protected design due to the association that Volkswagen had created between the shape of its vehicle and its source through advertising (Volkswagen v Verdier (2009 US Dist LEXIS 33708 (ND Cal 2009))). Similarly, in Nevada, a used car retailer that developed and sold car kits that looked like General Motor’s Hummer was enjoined from continuing with these activities (General Motors v Let’s Make a Deal (223 F Supp 2d 1183 (2002))). Like these products, the design of a social game can be made up The platform used by social games is a consideration in likelihood of of the “composite tapestry of visual effects” that covey messages to confusion proceedings the users about the source of the game.

66 World Trademark Review April/May 2011 www.WorldTrademarkReview.com Applying the three-part test of inquiry and will vary depending on the specifics of each case. After identifying a game’s trade dress, it is necessary to establish • Actual confusion – to what extent do copied components create that it is legally protected. A trade dress is protected when: confusion in the minds of gamers? In Mob Wars, there were • it is inherently distinctive or has acquired distinctiveness numerous blogs and community posts, boards and chat rooms through secondary meaning; where gamers expressed confusion over the source of the games • it is not functional; and in question. This kind of virtual evidence is helpful when • there is a likelihood of confusion between the developer’s considering this factor. trade dress and the competitor’s. Is the packaging or design non-functional? On the question of whether the packaging or design of social The second element of trade dress protection is dependent on it not games is distinctive, it is important to note that trade dress is being functional. A product feature is functional if it is essential to inherently distinctive if the total impression it gives the consumer is the use or purpose of the item or affects its cost or quality. It is not one that identifies it as coming from a specific origin or source. This protected if the developer incorporated it into the game packaging comes from the presumption that the very purpose of encasing the or design out of necessity or to gain a utilitarian advantage. In product in a distinctive packaging is to identify its source. contrast, a non-functional feature is arbitrarily affixed or included In Mob Wars, the Facebook and MySpace invitations were in all for aesthetic purposes. likelihood viewed by gamers in this manner. The placement of the As social games are a creative product, the visual aspects of the developer’s name and logo on the other visual components may games are important to their success. In this regard, social games are also have increased the odds of having them deemed to be an ideal product for establishing the non-functionality of packaging inherently distinctive, since they were clearly source identifiers. and design. Additionally, trade dress acquires secondary meaning after An important consideration under this element is whether prospective purchasers identify the product with a single source. there is a choice of other game designs available. Using the Mob There is no particular length of time for which a trade dress must Wars model, one could argue that the layout was a convenient way be used before it acquires a secondary meaning, which is helpful of arranging the game components and not a protectable design. given the speed at which the virtual market moves. After all, a However, the counterargument is that there were a number of developer can launch a game and capture an audience within days. different ways in which the sequencing and flow of the game could In this analysis, a number of factors are considered: have been arranged. There was no absolute necessity, for example, • Intentional copying – did the competitor intentionally copy the to have the games levels arranged identically. look and feel of the game? If so, this creates a strong inference of secondary meaning. Once a game is published, it becomes Likelihood of confusion available for competitors to play and copy. In Clicks Billiards, the In addition to establishing the game’s distinctiveness and non- competitor’s employee testified as to the lengths his employer functionality, a developer must also be able to demonstrate a had gone to in order to copy the original pool hall’s atmosphere, likelihood of confusion between its game’s dress and a competitor’s. which aided in establishing this factor. If there is no concrete In this regard, the following questions should be considered: evidence of copying, then this may be proven circumstantially • How strong is the dress? To what extent do players recognise the by comparing the original games components with the game’s packaging or design as an indication of origin? This competitor’s. In the Mob Wars games, the commonalities stresses the importance of prominently placing the developer’s between the three, including their sequence and flow, could trade name and logo throughout the game. have been used to argue intentional copying. • What is the proximity of the original game to the competitor’s • Purchaser perception – do players associate the game’s game? The extent to which the games in question are published packaging and design with the developer’s products? Evidence on the same platform is important to this consideration. If both in support of this factor can be found within the community games are published on Facebook, they are virtually side by side. created by the users of the game such as chat rooms, discussion If one is published on MySpace and the other is published on a boards and, in some instances, conventions. mobile phone site, there is an argument that they are not • Demonstrated utility – how effective are the developer’s efforts competing within the same marketplace. However, as platforms to use its packaging or design to increase sales? In the online continue to develop and become more accessible to one another, community this can be easily tracked by the success of the game this will become less of an argument. and generated revenues. • What is the similarity of dress? If the games are placed alongside • The extent of use – how is the developer using the trade dress to each other, are they so similar that consumers would likely be further develop its business? In the social gaming world, this confused? The use of similar dresses to offer similar products, can be measured by the use of a flagship game to create a like the Mob Wars games, weighs heavily in favour of the community of users and then to create an on ongoing series likelihood of confusion. or franchise of related games • What evidence is there of actual confusion? Have any statements • Exclusivity – has the developer allowed others to copy been made within the online community indicative of player components of the game without preserving its rights? This confusion? Surveys can be very helpful in establishing this factor. factor stresses the importance of policing rights and quickly • Are the same marketing channels used? Analysis here is fact acting upon possible acts of infringement. Even if it appears that specific to the marketing plan used by the developer. Common a small developer has incorporated aspects of the game without marketing channels such as banner advertising or cross- much financial success, it is important to preserve all arguments marketing via other game sites should also be looked at. of exclusive use for possible future litigation. • What is the degree of care that is likely to be exercised by • Advertising – what resources has the developer allocated towards gamers? This factor is based on the premise that buyers of costly promoting the packaging and design? This is a fact-specific area goods will be more discriminating in exercising caution when www.WorldTrademarkReview.com April/May 2011 World Trademark Review 67 Feature: Taking on the mob

making a purchase. They may be less likely to be confused by The speed at which online markets and related products are similarities in trade dress. There are two ways of looking at this changing creates legal challenges for social game developers. It also factor in the world of social gaming. A casual gamer may not be creates opportunities to apply trademark concepts, such as trade too attentive because the game is free to download and dress packaging and design, in new ways. represents a way to pass time or connect with friends. A serious A developer should therefore fully consider the distinctiveness gamer, on the other hand, may be very attentive because the of each aspect of its social game prior to launch. A game’s name, game is of a technical interest, is a hobby or is part of a colour combinations, texture, graphics, and sequence and flow should community that is important to him or her. create a visual impression in a player’s mind and an association • What was the competitor’s intent in selecting the dress? Did the between the experience of playing the game and its source. The more competitor intend to create confusion and capitalise on a successful distinctive a game arrangement, the more likely that the look and feel product packaging or design by copying the game? Again, this of the game will be protected under trade dress theories. requires a very case-specific analysis of facts. In Mob Wars, the fact Incorporation of the developer’s marks, such as its name and that the games were so similar in colour scheme, arrangement and logo, throughout its game would also be helpful in establishing this make-up formed the basis of this kind of argument. connection. Finally, developers should diligently safeguard against • What is the likelihood of expansion of the developer’s product the unpermitted use of its dress in order to preserve all possible lines? Under a traditional analysis, when products differ but have arguments of ‘exclusivity of use’ in future litigation. WTR similar dresses, the possible damages are limited. For example, if one party is selling beverages and the other is selling automobiles, it is possible, but less likely, that the original trade dress holder will expand into the competitor’s line of products and vice versa. With social games, however, there is a strong possibility of continuing to Theodore K Stream is a shareholder and the litigation department expand product lines with successive game series or social games chair, Emma D Enriquez a senior associate and Ben A Eilenberg an on other platforms. Additionally, as the lines of traditional business associate with Gresham Savage in California and market models continue to blur through collaboration and [email protected] hybrid approaches to manufacture and distribution, so may the [email protected] application of this factor to trade dress analysis. [email protected]

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