Willis v. Electronic Arts

U.S. District Court, District of Nevada

Case No. 08-cv-01311, Filed September, 29, 2008

Case Update:

This case was closed on November 18, 2009, following notice of voluntary dismissal by the plaintiff.

Original Post:

This is really more of a straight copyright case than a video game case, so we won't be actively following it. However, if anyone is interested, Gerald Willis (composer of the UNLV fight song Win With The Rebels), has sued EA for inclusion of the song in a slew of EA Sports titles. This looks like a straight copyright infringement issue. If I were a betting man (this case IS in Nevada, after all), I would bet that EA will claim it has some sort of license from UNLV. The license may or may not be valid, and EA and Mr. Willis will settle for a reasonable amount of money in view of the validity of the license. If you're interested in tracking the case yourself, it is Geral Willis v. Eletronic Arts, Inc., case no. 2:08-cv-01311-KJD-LRL, filed Monday, September 29, 2008, in the United States District Court for the District of Nevada.

Win With The Rebels lyrics.
Aristocrat v. IGT
United States Court of Appeals for the Federal Circuit
Decided Sep. 22, 2008

At this stage, this case is more about an esoteric legal issue, rather than any substantive issue of infringement regarding slot machine games or video games, so I will keep it brief. Suffice it to say, the District Court (N.D. Cal.) held that Arisocrat's patent was invalid because Aristocrat did not properly revive the patent after it accidentally went abandoned during prosecution at the USPTO. Specifically, Aristocrat, pursuant to USPTO rules, requested revival because the abandonment was unintentional. U.S. Laws, however, require that the delay be unavoidable. On appeal, the Federal Circuit held that "improper revival" is not a defense to patent infrginement, and that the District Court erred by holding the patent invalid on such grounds. So it's back to the District Court for these two to now get into some substantive issues regarding patent infringements.

Read the Federal Circuit opinion here.
Villian... I suspect.

Its not every day that we see a video game embrace an attorney as a central character. Normally the attorneys are the ridicule of the game, but one game did just that: Phoenix Wright: Ace Attorney. Hollywood, on the other hand, embraces the legal profession almost all too often, whether for ridicule, storytelling, murder, suspense, education, or just plain fun. What Hollywood doesn't do too often is highlight the role that patents play in our society, so it is with some interest that I am awaiting a new film starring Greg Kinnear, Flash of Genius, that tells the story of Robert Kearns' (Kinnear) fight against the auto industry after Mr. Kearns invented the intermittent windshield wiper. I've spoken with people involved on behalf of the auto industry, and suffice it to say that their side of the story comes across as markedly different than I suspect Mr. Kearns' side of it is portrayed in the movie. Nonetheless, it's nice to see Hollywood depicting patent attorneys in film, even if we are most likely the "bad guys" in the movie. Here is some more info from the film's marketing folks. Go and check it out for yourself:




Based on the true story of college professor and part-time inventor Robert Kearns’s (Greg Kinnear) long battle with the U.S. automobile industry, Flash of Genius tells the tale of one man whose fight to receive recognition for his ingenuity would come at a heavy price. But this determined engineer refused to be silenced, and he took on the corporate titans in a battle that nobody thought he could win.

The Kearns were a typical 1960s Detroit family, trying to live their version of the American Dream. Local university professor Bob married teacher Phyllis (Lauren Graham) and, by their mid-thirties, had six kids who brought them a hectic but satisfying Midwestern existence. When Bob invents a device that would eventually be used by every car in the world, the Kearns think they have struck gold. But their aspirations are dashed after the auto giants who embraced Bob’s creation unceremoniously shunned the man who invented it.

Ignored, threatened and then buried in years of litigation, Bob is haunted by what was done to his family and their future. He becomes a man obsessed with justice and the conviction that his life’s work -- or for that matter, anyone’s work -- be acknowledged by those who stood to benefit. And while paying the toll for refusing to compromise his dignity, this everyday David will try the unthinkable: to bring Goliath to his knees.


Official Trailer in Mobile, HD, Quicktime and Windows


Official One-sheet



Now the only question that remains is this: How do they turn this movie into a video game???
As previously reported, Gibson asserts that Activision's Guitar Hero franchise infringes on some Gibson patents. Gibson's patent claims a "musical instrument" that produces an "instrument audio signal." Naturally, in view of Guitar Hero only useing a controller SHAPED like a musical instrument, and only producing inputs based on button presses, construction of these terms is critical to this case. Well the claim construction order is in.

Gibson proposes a broad construction of the terms that would require that a “musical instrument” need only “indirectly produce music” and perhaps have no more than a mere appearance “that corresponds to a specific type of instrument used in the musical performance.” In Gibson’s view, the musical instrument need only be capable of producing an “instrument audio signal” that is “representative of the sounds intended to be made by operating the musical instrument” or “corresponds to the instrument used to create a separated soundtrack.”

Activision proposes a much narrower construction. It would define “musical instrument” as a “traditional musical instrument,” though Activision never provides a coherent definition of “traditional.” Under Activision’s construction, an “instrument audio signal” must be both “audible” and representative of the sounds made by the instrument.

The Court held that the patent requires that a “musical instrument” must be capable of (1) making “musical sounds,” (“musical sounds that would be made . . . by a specific musical instrument”); and (2) either directly, or indirectly through an interface device, producing an instrument audio signal representative of those sounds. (“musical instruments which either directly, or indirectly through an interface device, will produce electrical audio signals”). The Court also determined that the patent establishes that the two requirements are distinct; and, in particular, that the instrument must be capable of making musical sounds independent of the mechanism that outputs the instrument audio signal.

Given this detailed definition of “musical instrument” (and its inherent constraint on the signals produced), the Court found that an “instrument audio signal” need only be construed as “an electrical signal output by a musical instrument.”

Unless Gibson can get this claim construction overturned, or unless they can prove that a Guitar Hero controller makes ACTUAL SOUND, this case appears to be effectively over.

Here is a copy of the claim construction order: 146.pdf
In Bally Gaming Inc. v. IGT, case number 3:06-cv-00483, in the U.S. District Court for the District of Nevada, Bally Sued International Game Technology (IGT) for infringement of U.S. Pat. No. 7,100,916. Claim 1 of the '916 patent reads:

1. An electromechanical indicator comprising: a rotary body having an axis of rotation and which is provided with a plurality of segments radiating from said axis of rotation, wherein said segments are associated with at least two different indicia; a motor coupled to said rotary body such that said rotary body is adapted for a rotating mode and a stationary mode about said axis of rotation; a pointer associated with said rotary body to point to a predetermined segment of said plurality of segments when said rotary body is in said stationary mode; and a segment detector for detecting a rotary position of each of said plurality of segments whereby said motor rotates said rotary body to point said pointer to said predetermined segment which is determined before said rotary body enters a stationary mode.

The Judge (Edward C. Reed, Jr.) found all but one of the 22 claims of Bally's slot-machine patent to be prima facie obvious, based on a summary judgment motion filed by IGT. The judge apparently gave little consideration to secondary factors of nonobviousness, such as the huge commercial success of the patent in games like Wheel of Fortune. That could be a wedge to hammer in on appeal. But this case definitely demonstrates a post-KSR casualty. We'll watch this case and let you know whether it gets a final judgment or a settlement (my money is on settlement, because there is other patent litigation between these two companies, and IGT might want to save its own patents from a similar fate).
Merit Industries Inc. v. JVL Corp.
case number 03-1618 (E.D. Penn - Settled)

Merit Industries and JVL Corp. have settled their ongoing litigation over countertop arcade games. Merit sued JVL back in 2003 for patent infringement of U.S. Pat. Nos. 5,575,717; 5,743,799 and 6,082,887. Fastforward to June 2008, where a jury held that all of the asserted claims of the '799 patent (claims 1,3, and 7) were invalid, both for anticipation and obviousness. The jury judged five of the seven asserted claims in the '717 patent to be invalid, but rejected JVL's contention that four claims of the '887 patent were invalid due to indefiniteness. Thus, although the jury found infringement with respect to all three patents, JVL was liable only for infringement of the two valid claims of the '717 patent and the four asserted claims of the '887 patent.

The jury awarded Merit $1,616,123 in royalties for willful infringement of the patents, but denied the request for an injunction and $24 million in lost-profits on the ground that JVL discontinued the infringing products when the suit was filed in 2003. However, facing the possibility of treble damages (for willful infringement) anda demand for $6M in attorney fees, JVL settled with Merit for an undisclosed sum, and the case was dismissed on Sept. 8, 2008. The case is Merit Industries Inc. v. JVL Corp., case number 03-1618, in the U.S. District Court for the Eastern District of Pennsylvania.

The patents in suit covered a variety of features. For example, claim 1 of the '717 patent (
System for creating menu choices of video games on a display) reads:
1. An apparatus for providing menu choices of video games on a display, the apparatus comprising:

(a) a mode selector for setting the apparatus in one of either a programming mode for selecting video game menu options or a menu choice selection mode for selecting video game menu choices for game activation;

(b) a video display for displaying and selecting the video game menu options and video game menu choices, the video game menu options being available for selection as video game menu choices; and

(c) a display controller for simultaneously displaying video game menu options and video game menu choices on the video display when the mode selector is in the programming mode, and for displaying video game menu choices when the mode selector is in the menu choice selection mode.

Claim 1 of the '799 patent (
Method for setting game credits in a gaming machine and tallying a total currency amount fed into the machine) reads:
1. A method for tallying a total currency amount fed into a gaming machine which accepts a plurality of different types of coins, each coin type representing a different number of currency units, the method comprising the steps of:

(a) displaying a setup screen on a video display showing a representation of the plurality of different coin types and the total number of currency units associated with each coin type;

(b) selecting the total number of currency units to be associated with each coin type while displaying the setup screen, wherein the selection is made individually for each coin type, a coin type/currency unit ratio being established for each different type of coin; and

(c) tallying the total currency amount fed into the machine based upon the number of coins deposited in the gaming machine and the total number of currency units selected for each coin type.

And claim 1 of the '887 patent (
Game machine with automated tournament mode) reads:
1. An automated tournament system for use with a game machine, the game machine implementing the system when placed in a tournament mode, the system comprising:

(a) a plurality of tournament games playable by a plurality of players on the game machine, each of the plurality of tournament games generating a total player score upon completion of game play, the player scores being used to determine the tournament winners;

(b) means for preprogramming at least one sequence of tournament games from the plurality of tournament games; and

(c) means for programming a tournament period for each tournament game, the preprogrammed tournament game for each sequence being playable during the programmed tournament period for the respective sequence.

While the jury ultimately decided that some of the claims were invalid, without a final judgment in this case Merit's claims may just very well live to fight another day...
In a move reminiscent of the CBC v. MLB case over use of baseball players' names and statistics in fantasy football leagues, CBS Interactive sued the NFL Players' Association over the rights to use NFL players' names and statistics without having to pay a license fee. As you may recall, CBC Marketing and Distribution recently won a lawsuit against Major League Baseball on what appears to be a very similar, if not identical, issue. I would love to know what arguments the NFL is making as a basis for still being able to charge licensing fees. The lawsuit was filed Wednesday, September 3, 2008, as CBS Interactive Inc. v. National Football League Players Association, case number 08-cv-05097, in U.S. District Court for the District of Minnesota.

My gut reaction is that NFL will lose this one, regardless of being in a court that has, in the past, been very favorable to NFL players. But if there is one thing I have learned over the years, its that trying to predict the outcome of litigation has about the same success rate as trying to predict the weather. Stay tuned...

Sep. 12, 2008 UPDATE: On Sep. 9, 2008, the NFLPA fought back, filing its own suit in the Southern District of Florida, asserting that CBS forum shopped to get in Minnesota in the first place. (Recall that Minnesota is in the 8th Circuit, which gave the favorable ruling to CBC Marketing regarding similar facts for fantasy baseball). The NFL Players disagreed with the Eight Circuit's reading of the [fantasy baseball] case, calling it “unique and erroneous.” The new case is National Football League Players Inc. v. CBS Interactive Inc., case number 1:08-cv-22504, in the U.S. District Court for the Southern District of Florida. We'll keep you posted.
Frybarger v. Int'l Business Mach. Corp.
812 F.2d 525 (9th Cir. 1987)

Before the introduction of sprawling virtual environments, ragdoll physics, and parallel GPUs, the video game industry lived in an 8-bit world. As is still the case, the creative content of games was and is limited by the machines of the day. If multiple developers wanted to bring an alien-invasion game to the market in the early 80’s, there was a high likelihood that they would all resemble something close to a Space Invaders “clone” due to the restrictive 8-bit, 2D video game capabilities. Examples of Space Invader “clones” include games like Galaga, Galaxian, and Gaplus.

One of the legal doctrines that allowed game to coexist is the scenes a faire principle of copyright law. This doctrine states that the expression of an idea that is “as a practical matter indispensible, or at least standard, in the treatment of a given [idea],”[1] is not protectable under copyright law. When applied to Space Invaders and its so called “clones”, the “clones” can make a case for not infringing on Space Invader copyright because the idea of an alien-invasion game includes scenes of a protagonist firing weapons towards incoming alien antagonists. Thus, it’s easy to see how strikingly similar games were able to go to market without copyright liability issues. Scenes a faire protects the indispensible aspects of creative expression because indispensible aspects of a topic do not bring anything new to the topic, and therefore do not warrant protection under copyright laws.

An explicit example of the scenes a faire principle was seen in the case of Frybarger v. IBM, in which a former employee, Anthony Frybarger, of the Gebelli game development company sued the company for infringing the copyright of his creative work, the game Tricky Trapper. IBM contracted with Gebelli to develop video games for the IBM PC Jr. computer. Mr. Frybarger had the idea for a game called Tricky Trapper in 1982, and constructed a working copy, which he demonstrated to his company that same year. Gebelli later released a similar game, Mouser, which Frybarger believed was copied from his original plans for Tricky Trapper. Once Frybarger registered the copyright to his Tricky Trapper game, he brought a lawsuit against IBM and Gebelli for copyright infringement.

According to the Ninth Circuit Court of Appeals, “[t]o establish a claim for copyright infringement, plaintiff must show that 1) she owns the copyright in the allegedly copied work; 2) defendant had access to the work; and 3) plaintiff's and defendant's works are substantially similar.” IBM conceded that Frybarger owned the copyright to Tricky Trapper and that Frybarger had shown IBM the plans to Tricky Trapper before Mouser was released. However, IBM was confidant that the court would not find Mouser and Tricky Trapper to be substantially similar. After the court was presented with the two works, the court concluded that the two games had “numerous” similarities, but that each similar feature “constitutes a basic idea of the videogames,” and the expression of these basic ideas are precluded from copyright protection under the scenes a faire principle. The similarities found by the court include there being a single protagonist that has legs and a face, and that the single protagonist moves vertically and horizontally between rows of pivot points. Also, the two games have more than one antagonist, and each antagonist moves toward the general location of the protagonist. These similarities seem basic and simple, but in an 8-bit environment, these similarities are necessary to making an a mousetrap game in a two-dimensional maze. The Circuit Court sided with IBM and dismissed Frybarger’s copyright infringement claims on summary judgment.

With the advent of modern graphics, developers nowadays have to be more careful to respect copyrights. The amount of new features added to games in the past two decades and the potential to create unique three-dimensional universes makes it very hard to copy the premise of another game and claim the similarities are scenes a faire. Nevertheless, the scenes a faire principle has been brought up in modern court cases and still applies today. As a result, it is good practice for developers to understand that scenes a faire may limit the scope of copyright protection that video game content may receive.

[1] Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982) (quoting Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y. 1978))

Thanks to Mike Harkness for his assistance with this post.
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