ProCloud Media Invest AB v. Paramount Pictures Corporation
U.S. District Court, Central District of California
Case No. 2:2012cv05192, Filed on June 14, 2012

Courthouse News has recently reported that ProCloud Media Invest AB has brought a suit against Paramount Pictures Corporation for breach of contract and unjust enrichment when Paramount allegedly walked away from an agreement between the two companies.  ProCloud is suing for $10 million dollars, claiming that it had an agreement with Paramount for the exclusive right to develop video games for the media giant.  ProCloud claimed that it paid a $500,000 license fee for the rights to develop video games based off of Paramount movies on two occasions: once as part of the original agreement, and again when this agreement was amended.  The head of Paramount Digital Entertainment was fired, however, after the agreement was amended, and the Digital Entertainment division was shut down.  ProCloud claimed that since Paramount had changed its organizational structure, it has been difficult to speak to anyone knowledgeable of the agreement and ProCloud has been unable to fulfill its part of the agreement.  Regardless, ProCloud alleges that "Paramount unequivocally indicated it did not intend to continue with the deal."

More information will be added as it becomes available to us.
Bissoon-Dath et al v. Sony Computer Entertainment America, Inc. et al
U.S. Court of Appeals, Ninth Circuit
Case No. 10-15783, Filed On April 9, 2010

Back in 2008, Plaintiff Jonathan Bissoon-Dath and Jennifer-Barrette-Herzog filed a lawsuit against Sony, alleging that the games "God of War" and "God of War II" infringed upon their copyrights for five pieces of work.  According to the District Court opinion, these works include: "two treatments, 'Theseus: A Screenplay Treatment' and 'The Adventures of Owen', and two screenplays, 'Olympiad Version A'  and 'Olympiad.'  'Owen' included an original illustrated map of the 'Island at the Edge of the Living World.'"

Dath, the author of the works of fiction, claimed that he submitted his work to agents who did business with Sony, and submitted at least one piece of work, "Olympiad," to an affiliated Sony entity. Herzog created the map for "Owen" that was sent with Dath's written work.  The plaintiffs pointed to the similarities between their work and "God of War" to support their claim of copyright infringement. For example, the plaintiffs claimed that both "Owen" and "God of War" focused upon a hero chosen by Zeus and Athena to save Athens from its destruction by Ares.  The plaintiffs also believed that the main characters in both works were similar since they feel partially responsible for the deaths of their families even though they are not really to blame.  

The District Court Judge was not convinced by these arguments and granted Sony's motion for summary judgment. The Judge applied an "extrinsic test" examining " “articulable similarities between the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events" in order to find substantial similarity and copyright infringement.  The court found that the dialogue and naration between the two works was dissimilar while the plots were only similar at a very generalized level.  In connection with this finding, Judge Patel noted that plots and ideas are not protected by copyright, and the elements that plaintiffs' used in their works had been used countless times throughout history. Since the judge did not find "God of War" to be substantially similar to any of plaintiffs' works, Sony's motion for summary judgment was granted.  

On July 29, 2011, a judge for the Ninth Circuit of the United States Court of Appeals affirmed the district court's opinion.

OG International, LTD. et al v. Ubisoft Entertainment et al
United States District Court, Northern District of California
Case No. 3:2011cv04980, Filed On October 7, 2011

Both OG International and Ubisoft create games that focus upon the user performing dance steps.  Using dance in games is not a new concept and it has been featured in games such as Konami's "Dance Dance Revolution."  OG developed its own dancing game, "Get up and Dance," in 2011. This game taught users how to perform dance steps through an avatar displayed upon the screen, similar to Ubisoft's "Just Dance" series.  After OG's game debut at the Electronic Entertainment Expo, Ubisoft contacted OG claiming it had infringed upon its copyright and trade dress.  Ubisoft asserted that OG's avatars infringed upon its copyrights, however OG countered that these avatars were generic and not entitled to protection.

On October 7, 2011, OG filed a suit for declaratory judgment.  Ubisoft followed by filing a motion for a temporary restraining order and preliminary injunction.  The court refused Ubisoft's motion, however, stating that Ubisoft "failed to make a clear showing that it is entitled to [a restraining order and preliminary injunction]...[and] has not demonstrated a clear likelihood of success on the merits, nor a clear showing of irreparable harm."

This page will be updated when we receive new information.
In March this year, Swedish Minecraft developer Mojang and Zenimax/Bethesda Softworks settled a lawsuit over the trademark "Scrolls."  Mojang had filed a trademark registration for this mark on May 17, 2011, intending for it to be used as the title of Mojang's latest game.  Mojang's founder Marcus "Notch" Persson revealed through twitter that he had received a letter from Zenimax/Bethesda alleging that the name "Scrolls" infringed upon Bethesda's trademarks for The Elder Scrolls.  Meanwhile, The USPTO issued a letter on September 13th, 2011, that refused the trademark, stating that it was likely to be confused with The Elder Scrolls trademarks: "The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods and services, so resembles the marks in U.S. Registration Nos. 2634683, 2861127, 3375520, 3421731 and 3584564 (THE ELDER SCROLLS) and 4010219 (SCROLLS) as to be likely to cause confusion, to cause mistake, or to deceive."  Zenimax/Bethesda ended up filing suit against Mojang on September 27, 2011, in Swedish court.

In this high profile case, trademark issues were highlighted by individuals on both sides of the fence.  In his blog, Perrson stated "The implication that you could own the right to all individual words within a trademark is also a bit scary. We looked things up and realized they didn’t have much of a case, but we still took it seriously. Nothing about Scrolls is meant to in any way derive from or allude to their games."  As reported by Kotaku, Vice president of Bethesda Pete Hines explained that   "This is a business matter based on how trademark law works and it will continue to be dealt with by lawyers who understand it, not by me or our developers...Nobody here enjoys being forced into this. Hopefully it will all be resolved soon."  What both Perrson and Hines are alluding to are the nuances in Trademark law.  Trademark infringement can occur if a company uses a mark that would cause confusion, mistake, or deception regarding another mark.  Furthermore, if a mark holder does not act to protect his trademark, his mark may become weakened or he may lose rights over the mark.

In the end, Zenimax/Bethesda and Mojang reached a settlement agreement.  In the settlement agreement, Bethesda Softworks obtained ownership over the trademark to "Scrolls" and Mojang retained the ability to use the name for its video game.  Bethesda agreed to license the mark to Mojang so that it could use the name "Scrolls" in relation to its game and any add-on material for that game.  Perrson tweeted "The settlement is that we give them the trademark, get to keep the name, and won't make an Elder Scrolls competitor using the name."  On March 14, 2012, Zenimax filed its own trademark registration for the "Scrolls" mark.  Its status is currently "NEW APPLICATION - RECORD INITIALIZED NOT ASSIGNED TO EXAMINER."
John L. Beiswenger v. Ubisoft Entertainment et al.
U.S. District Court, Middle District of Pennsylvania
Case No. 1:12-cv-00717-CCC, Filed On April 17, 2012

Case Update: May 2012

Following a settlement with Game Trailers out of court, John Beiswenger has voluntarily dismissed his lawsuit against Ubisoft for copyright infringement regarding the Assasin's Creed series.  The author filed for voluntary dismissal without prejudice on May 29, leaving the door open for him to reinstate the charges against Ubisoft at a later date.  Beiswenger's lawyer, Kelley Clements, stated in a recent press release that "My client's decision to exercise his right to voluntarily dismiss the action, without prejudice, in no way diminishes his stalwart conviction in the merit of his claims against Ubisoft. He is unwavering in his belief that many key components of the Assassin's Creed video game franchise infringe on many key components of his novel, Link."

Beiswenger has decided to drop his lawsuit against Ubisoft at this time in order to focus his attentions elsewhere.  According to his official statement, "I filed the Complaint and Motion for Preliminary Injunction in federal court because I believe authors should vigorously defend their rights in their creative works; otherwise, the laws protecting them simply have no purpose.  Regrettably, the resources required to defend those rights are unavailable to many individual creators. As a result, rampant infringement is occurring with impunity."  This news comes just in time for the October 30, 2012, release of Ubisoft's next title in the franchise, Assassin's Creed III.  Stay tuned, this is not the end of the story.

Original Post:

John Beiswenger has sued a whole slew of Ubisoft entities for copyright infringement regarding Ubisoft's Assassin's Creed franchise. Mr. Beiswenger is the author of the book "Link", which has been sold on for a while. The lawsuit is John L. Beiswenger v. Ubisoft Entertainment et al., court docket 1:12-cv-00717-CCC, Middle District of Pennsylvania, filed Tuesday, April 17, 2012.

According to the Complaint, in Link, the Plaintiff’s plot includes the conception and creation of a link device and process whereby ancestral memories can be accessed, recalled, relived, and re-experienced by the user. Link apparently further describes a bio-synchronizer. The Complaint further alleges that Assassin's Creed's "Animus" and "Animus 2.0" device and process, among other portions of the game, are infringements of Plaintiff's Link copyright. Allegations are made against different editions of Assassin's Creed, as well as related publications and trailers.

This case, if it goes the distance, would provide some additional guidance regarding the idea/expression dichotomy. That is, the ultimate question will likely be something to the effect of: Does Assassin's Creed only use the "idea" of a device that accesses ancestral memories, or does the Assassin's Creed franchise go to far and copy the "expression" penned by Mr. Beiswenger in describing its own Animus technology.

We will watch this case and keep you posted.
Evony, LLC v. Philip Holland
United States District Court, Western District of Pennsylvania
Case No. 2:2011cv00064, Filed On Januaru 18, 2011

Evony, LLC is a company that develops, publishes, and operates the game "Evony," a massively multiplayer online real-time strategy game.  This game requires no subscription fee and instead, users can buy items for the game using real money.  To gain access to the game, users must register for an account that allows the Evony client game code, or game client, to be played online.  This game client should only work with Evony servers authorized by Evony's system before the user can gain access to the game. Users must also agree to the Terms of Use that prohibits access to the servers by unauthorized game clients and prohibits reverse engineering of the game.  Evony claimed that the defendant operated a website ("") where he published an unauthorized copy of the "Evony" game.  According to the complaint, defendant allegedly operated an independent server, copied the game client, and published a version of the game titled "Evony Second Opinion."  Evony brought suit against Holland alleging copyright infringement, infringement of trademark, infringement of trade dress, and breach of contract among other claims. Evony further asserted that the website operated by the defendants was “devoted to cheating, hacking, and publishing unauthorized copies of the Evony Game using the EVONY trademark and Trade Dress.”

Evony filed its verified complaint on January 21, 2011.  Holland failed to return and answer within 21 days after service of the summons.  On February 22, 2011, Evony filed a motion for default judgment.  The judge granted this motion on March 31, 2011 and awarded Evony $300,000 in statutory damages.  Whether Evony ever collects that money is another matter entirely...

A recent decision coming from the Southern District of New York raises important implications about the usage of trademarks without permission in artistic works.  While this case concerns the usage of unauthorized trademarks in film, the reasoning may be applied to video games as "artistic works."  Electronic Arts is engaged in a similar legal battle with Textron over its usage of helicopters in Battlefield 3.  Electronic Arts' First Amendment defense is comparable to that of Warner Brothers in a case with film as the medium instead of a video game.

In Louis Vuitton Mallatier S.A. v. Warner Brothers Entertainment Inc., the court declared that Warner Brothers did not infringe upon Louis Vuitton's trademarks when it used a knock-off Louis Vuitton bag in "The Hangover: Part II."  Warner Brothers admitted that it had used a knockoff bag from Diophy, a company that makes knock-off bags that imitate the Louis Vuitton Toile monogram, however claimed that it was protected by the First Amendment and filed for a motion to dismiss.  In the contested scene of the film, the main characters are walking through an airport.  One of the characters, Alan, carries the knock-off bag while a porter transports several luggage pieces behind him.  As the characters sit down, Alan puts the knock-off bag on a chair between him and "Stu," another main character in the film.  Stu moves the bag and Alan quips, "Careful that is ... that is a Lewis Vuitton."

As emphasized by the court's opinion, it is important to distinguish what Louis Vuitton was actually claiming in this suit.  In this case, Louis Vuitton was suing over the usage a third party's product that allegedly infringed upon its trademarks.  Unlike the Hyundai case decided in Louis Vuitton's favor earlier this year, the bag company did not claim that Warner Brothers misled the audience to believe that Louis Vuitton sponsored or was affiliated with the film.  Likewise, Louis Vuitton did not protest the usage of its trademarks in the film or the reference to its name.  Instead, the company alleged that the usage of the Diophy bag would confuse the audience into believing that the bag was a Louis Vuitton product and that Louis Vuitton "sponsored or approved of  Warner Bros.' use and misrepresentation of the infringing Diophy [b]ag as a genuine product of Louis Vuitton in The Hangover: Part II."  In its complaint, Louis Vuitton further asserted that the use of the Diophy bag "is likely to blur the distinctiveness of the LVM Marks" and "tarnish the LVM Marks by associating Louis Vuitton with the poor quality and shoddy reputation of the cheap products bearing the Knock-Off Monogram Design.”

Judge Carter cited Rogers v. Grimaldi in his analysis of Warner Bros.' claim of First Amendment protection.  Under Rogers, artistic works are given protection from the Lanham Act when they include an unauthorized use of a trademark when the usage is "(1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work."  875 F.2d at 999. The court determined that Warner Bros.' usage of the bag was "artistically relevant" to the film since it played a role in defining Alan's personality and relationship with other characters in the movie.  According to the opinion, the usage of the bag "add[ed] to the image of Alan as a socially inept and comically misinformed character."

In the court's analysis of whether the usage of the Diophy bag was "explicitly misleading," Judge Carter brought up the purpose of the Lanham Act and in what scenarios it can be used to limit freedom of expression.  That is, the Lanham Act protects against trademark uses that “dupe[] consumers into buying a product they mistakenly believe is sponsored by the trademark owner.”  In this case, Louis Vuitton did not claim that Warner Brothers misled the audience into believing that it sponsored or was otherwise affiliated with the film.  The Judge continued that even if Louis Vuitton did establish a valid claim of confusion, it would still fail because the likelihood of confusion was "not plausible, let alone 'particularly compelling.'"  The Judge noted that it was unlikely that any person in the audience could tell that the bag in the movie was a knock-off.  Regarding Louis Vuitton's claims that the audience would believe the Diophy bag to be an authentic Louis Vuitton bag based off of what Alan said in the movie, Judge Carter held that the statements made by Alan could not be attributed to the views of the film producer.  He continued by stating that any misrepresentation made by Alan "assumes that the fictional Alan character knew that his bag was a knock-off; otherwise, he would simply be (innocently) misinformed about the origin of his bag."  Thus, Judge Carter determined that there was no likelihood of confusion when the fictional character Alan claimed that the Diophy bag was a Louis Vuitton product in the film.

Since Warner Brothers's usage of the Diophy bag was protected by the First Amendment under Rogers, Judge Carter granted the film producer's motion to dismiss.

Despite Warner Brother's victory over Louis Vuitton, using trademarks without permission in an artistic work is risky business.  For example, Louis Vuitton successfully brought Lanham charges against Hyundai for using its marks in a "luxury" themed commercial.  During the 2010 Superbowl, Hyundai aired an advertisement that included a one second shot of a basketball with a pattern resembling Louis Vuitton's trademarked toile monogram.  The court found that Louis Vuitton had established blurring of its trademark according to six factors that answer “whether an association, arising from the similarity of subject marks, ‘impairs the distinctiveness of the famous mark.’”  The court rejected Hyundai's Fair Use and First Amendment defenses and granted Louis Vuitton's motion for summary judgment.  Contrast this case to Caterpillar Inc. v. Walt Disney Co.  In this case, Caterpillar sued Disney for trademark infringement and dilution for using its bulldozers and trademarks in the movie "George of the Jungle 2."  In this suit, the judge found that Caterpillar in the film was unlikely to succeed in its trademark dilution and unfair competition claims.  In his analysis, the judge asked the question "For example, action movies frequently feature automobiles in a variety of situations. Is the mere appearance of a Ford Taurus in a garden variety car chase scene sufficient by itself to constitute unfair competition?"  He concluded that, in regards to Caterpillar, Caterpillar was unlikely to prove unfair competition because "It does not appear to the Court that an intent to free ride on the fame of Caterpillar's trademarks to spur the sales and awareness for Defendants' George 2 movie is present here."

The usage of trademarks without permission in film is analogous to the usage in video games.  Using real life products and brands in video games may be desirable for game developers to add to the realism or appeal of the digital worlds that they create.  For example, Electronic Arts is engaged in a similar legal battle with Textron over the usage of helicopters in Battlefield 3.  In this case, Textron has claimed trademark infringement and false designation of origin under the Lanham Act, unfair competition and misappropriation, and injury to trademarks.  Electronic Arts believes that its usage is expressive, and therefor protected by the 1st Amendment.  In instances like this, the video game developer's use of a trademark or product without permission opens the door to more realistic and compelling universes, however the trademark owner may wish to be compensated for its product's role in the game.  For example, Electronic Arts paid Textron for a license to use its property for the previous two Battlefield games.  After all, being able to control the trademarked helicopters will surely add to the marketing value of the game.  Will Electronic Arts be able to prevail using a similar argument to Warner Brothers or will the court consider the usage to be commercially motivated?

Given the disparity between the aforementioned decisions, it appears that cases such as these are very much fact based.  However, when using trademarks or products without asking permission, an important distinction should be made between artistic works and works where usage of the mark is commercially motivated.  According to Rogers v. Grimaldi, unauthorized use of a trademark is protected from the Lanham Act if it is artistically relevant and does not mislead the audience as to the source of the trademark.  Thus, the usage of a product in a video game may be protected under Rogers and under the First Amendment if it satisfies these two requirements.  If the usage of the trademark in a video game is deemed to be commercially motivated or "intends to associate with the mark to exploit the mark’s popularity and good will," however, protection may not be granted since the usage would fall outside of an artistic work.  It is important to note, however, that this threshold is very low according to Judge Carter, who stated in the Warner Brother's case that "The threshold for 'artistic relevance' is purposely low and will be satisfied unless the use 'has no artistic relevance to the underlying work whatsoever.'"  In describing the threshold for artistic relevance, Judge Carter quoted another video game case that used the First Amendment defense to ward off trademark infringement charges: E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.  In this case, the owner of the Los Angeles strip club "Play Pen Gentlemen's Club" sued Rock Star for its inclusion of a strip club named "Pig Pen" in the Grand Theft Auto: San Andreas" game.  The court rejected ESS's trademark infringement claim, stating that the game was protected by the First Amendment.  In this case, the court decided that the inclusion of a strip club similar to "Play Pen" was artistically relevant, stating that "the level of relevance merely must be above zero."

The case law on this subject seems to indicate that the usage of trademarks without permission in a video game is allowed if certain requirements are met.  That is, the usage will be protected by the First Amendment if it is "(1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work."  875 F.2d at 999. Fulfilling these requirements does not grant immunity from being sued, however, and the individual circumstances of the usage will be taken into account by the court.  It is also important to consider whether or not the usage is being made with commercial motivation or in a way that takes advantage of the trademark's popularity and good will. Whether or not Electronic Arts succeeds with its First Amendment claims will be highly dependent upon the above factors, and we eagerly look forward to the court's decision.
 New World IP LLC v. Zoo Publishing Inc. et al
United States District Court, Southern District of New York
Case No.1:11-cv-02532, Filed on April 13, 2011

In April of 2011, New World brought suit against Zoo for violation of a licensing agreement between the two companies.  Law360 reported that under this licensing agreement, New World granted Zoo the rights to produce more than 60 games it owned in exchange for a royalty payment.  New World alleged that Zoo had not provided it with any of the royalty accounting and thus the licensing agreement had been breached.  Moreover, New World believed that Zoo owed a minimum royalty payment of around $1.9 million.  When Zoo refused to pay the minimum royalty payment, New World ended the licensing agreement between them.  After this termination, New World determined that Zoo had not ceased the use of its trademarks.  In its defense, Zoo alleged that 65 out of 69 games covered by the licensing could not be sold or produced since they were not complete.  Zoo further claimed that it had already spent $500,000 on finishing the games so that it could sell them.  Besides, Zoo alleged that it had already paid royalties to New World in the amount of $500,000.

In August of 2011, the case was dismissed since the parties reached a confidential settlement agreement outside of court.  
Paqits, LLC v. Activision Blizzard, Inc.
United States District Court, Eastern District of Texas
Case No. 2:2012cv00013, Filed on January 11, 2012

Activision has been slapped with a patent infringement suit for the operation of the website.  This website serves as Activision's gaming portal where users can purchase games and join Activision's social community.  This service also allows users to access popular games such as "World of Warcraft," "Starcraft II," and the recently released "Diablo III."  In January of 2012, Paquits LLC alleged that Blizzard had infringed upon its patent titled "System using access information set by a user to allow another user to access updated portion of contact and personal information of the user."  In its complaint, Paquits claims that the "Real ID" feature of infringes upon its patent because it "[controls] a second user’s access to a first user's information over a communications network."  According to the website, the Real ID feature of allows users to interact with friends by communicating across Activision games, by sending broadcast messages, and by allowing users to see status information about their friends.  In its complaint, Paqits also alleged that Activision contributed to infringement of its patent because it should have known that would have "induce[d] infringement by its customers."  

This case was later settled on May 7, 2012, resulting in a dismissal of all claims with prejudice.
Shared Memory Graphics, LLC v. Apple Inc. et al
United States District Court,Northern District of California
Case No. 3:10-cv-02475, Filed On June 4, 2010

In June of 2010, Shared Memory Graphics, LLC initiated a lawsuit against Apple, Nintendo, Samsung, and Sony for infringing upon two of its patents.  The patents in question, the '644 and '279 patent, describe a "Shared Memory Graphics Accelerator System."  According to the complaint, the patented graphics accelerator system "enhances utilizing fast embedded memory in conjunction with off-chip memory without sacrificing the ability to expand the frame buffer size, if desired."  Shared Memory claimed that products such as the Apple iPhone, Nintendo Wii, and Sony PS2, included the infringing technology.  For example, Shared Memory asserted that the graphics accelerator systems in Sony products infringe upon its patents because they "incorporate one or more on-chip frame buffer memory elements as well as one or more off-chip frame buffer memory elements." 

In 2011, Sony and Apple reached a settlement with Shared Memory.  According to Law360, Shared Memory voluntarily agreed to drop all charges against Nintendo and the judge issued an order granting joint stipulation for dismissal with prejudice on January 11, 2012. 
Archie Comic Publications Inc. v. Penders
U.S. District Court, Southern District of New York
Case No. 1:10-cv-08858, Filed On November 23, 2010

During November of 2010, Archie Comic Publications filed suit against Ken Penders, a former independent contractor who had worked on the Sonic comics.  Sega had licensed Archie Comic Publications the rights to create Sonic comic books, among other things, in 1992.  Between 1993 and 2005, Ken Penders created content for these comic books, including scripts and artwork, as an independent contractor.   In 2009, Penders began registering copyrights for the work he had done for Archie Comics and sent Archie Comics a letter in 2010 alleging that they were infringing upon his copyrights.  Since Penders was threatening legal action, Archie Comics decided to bring suit against Penders seeking the cancellation of Penders' copyright registrations, declaratory judgment, and remedies for breach of contract and tortious interference.  Penders has since filed suit against Sega and Electronic Arts.

As more information becomes available, this post will be updated.  Stay tuned.

RC3, Inc. v. Justin Bieber
United States District Court, Middle District of Florida
Case No. 3:2012cv00193, Filed on February 24, 2012

A game about jousting beavers has apparently upset Justin Bieber enough to warrant legal action.  RC3, Inc. is the producer of a game titled "Joustin' Beaver" that involves a cartoon beaver who bears some resemblance to the celebrity-defendant.  The player controls the beaver who floats down a river on a raft while knocking paparazzi "phot-hogs" into the river and signing "otter-graphs."  In February of this year, the lawyer's of this teen pop star sent RC3, Inc a cease and desist letter, stating that RC3 had infringed upon Bieber's rights through "trademark infringement, unfair competition under the Lanham Act and under state law, dilution, false designation of origin, passing off, misappropriation of name for commercial purposes, misrepresentation, violation of rights of publicity and interference with [the Defendant's] contractual obligations to third parties."  Bieber's lawyer's further demanded that RC3 stop producing and selling the game and to "provide a complete detailed accounting to [counsel for the Defendant] with respect to sales/revenues generated by the App." 

Instead of complying with the terms stated in the cease and desist letter, RC3 decided to sue for a declaration of rights, seeking a determination that RC3 did not violate any of Bieber's rights through its mobile application.  In its complaint, RC3 stated that its game is a parody and thus protected by the First Amendment to the Constitution.  

According to TMZ, Bieber's lawyers have since filled for a motion to dismiss the suit, claiming that it should not have been filed in Florida.

We will track the case and keep you informed of significant developments.
Promotional Technologies LLC v. Facebook, Inc. et al
U.S. District Court, Northern District of Texas
Case No. 3:2011cv03488, Filed On December 15, 2011

In addition to the numerous other legal battles that Facebook has been fighting in court, Promotional Technologies has sued Facebook and Zynga for infringing one of its patents regarding an online game designed to promote websites.  The relevant patent, titled "Website Promotional Applet Process," covers a game application accessed through a host web site that launches the promotional applet.  The user is required to browse through sponsor websites that have paid a fee to be included in the promotional system, looking for and matching certain indicia.  At the end of the game, the user would receive a prize. The purpose of this system appears to be to provide a method for promoting websites while encouraging users to revisit and browse through them.  In its complaint, Promotional Technologies alleged that Facebook and Zynga infringed upon this patent through several games including Farmville, MafiaWars, and "other online games in which users can earn virtual prizes." Promotional Technologies further alleges that at least claim 13 of its patent has been infringed, covering "a system for promoting a plurality of sponsor sites in communication with a communication network."  Very little about the Plaintiff company is known except that it registered with the Texas Secretary of State on December 14, 2011.   
Impulse Technology Ltd. v. Nintendo of America, Inc. et al. 
 U.S. District Court for the Northern District of Ohio
Case No. 1:11-cv-02519

On November 11, 2011, Impulse Technology Ltd filed a complaint against Nintendo, EA, Ubisoft, THQ, Konami, Majesco, and Namco Bandai, alleging that they infringed upon its patent for an "interactive system measuring physiological exertion."  According to the complaint, each of the defendants has already received a letter giving notice of the patent and is allegedly willfully, deliberately, and intentionally infringing upon its rights.  Thus, Impulse alleged that each should be held liable for direct infringement, contributory infringement, and inducing of infringement.  In its complaint, Impulse claims that several of Nintendo's Wii products, including the Wii console,Wii Remote, the Wii Balance Board, and the Wii Fit Plus, include the patented technology.  Impulse also identified several games made by the defendants that "incorporated technology for measuring physiological exertion for use with the Wii."  The accused games include titles such as EA Sports Active Personal Trainer, Gold’s Gym Dance Workout, The Biggest Loser, Dance Dance Revolution Hottest Party 3, Zumba Fitness 2, and ExerBeat.  Impulse argued a system covered by at least one claim of the patent is created when one of the accused games is played on a Wii and displayed on a monitor. As a remedy, Impulse requested a permanent injunction and other damages.  

We will continue to follow this case and post updates as they become available to us.

The application period for new generic top level domains (which will supplement existing gTLDs like “.com”) closed on May 30, 2012. On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), the Internet’s primary governing body, announced the applied-for gTLDs and their applicants--view the list here.

In summary, 1930 new gTLD applications were received. Due to the unexpectedly large number of applications received, ICANN has decided to evaluate the applications in 500-lot batches.

The list’s publication triggers the start of the formal objection period to applications. Objections can be based on a wide variety of grounds, including:

  • Legal Rights: the applied-for gTLD violates the objector’s intellectual property rights;
  • String Confusion: the applied-for gTLD is too similar to an existing top level domain or another applied-for or existing gTLD (objector must be a gTLD applicant or existing TLD operator);
  • Limited Public Interest: the applied-for gTLD violates generally accepted international legal norms of morality and public order; and
  • Community: substantial opposition to the applied-for gTLD exists within the applied-for gTLD’s targeted community (objector must be an established institution associated with a clearly defined community).

Generally speaking, the objection process is an inter partes process adjudicated by arbitration centers. In addition to objections, public comments regarding applications can now be submitted. The current version of the official applicant guidebook for the entire new gTLD process is available here.

Banner & Witcoff’s Richard Stockton will summarize and suggest next steps in the gTLD process in a podcast prepared in connection with the American Marketing Association. The podcast will be made available on Banner & Witcoff’s website on June 21. In the interim, please feel free to direct questions to Richard ( or other Banner & Witcoff attorneys.

U.S. Patent No. 5,310,192: Shooting Game and External Storage Used Therefor
Issued May 10, 1994, to Nintendo Co. Ltd.


The ‘192 patent describes a shooting game system for shooting targets. The system uses a controller for shooting which features a scope and a trigger. A photoelectric converter converts light which shot an electric signal towards the television, thus allowing a player to shoot a target on the screen. Whenever a player hits a target, the target is changed and reacted in whatever way it was designed to do after being struck.  This is one of the older "light gun" patents around.


A video game set (1) displays a sighting mark on a television receiver (4). A player shoots this sighting mark by a shooting scope (5). At this time, the shift between a coordinate position of the sighting mark and a coordinate position which is shot is operated by the video game set (1) and is stored as a correction value. When the player shoots a target in a game mode, the coordinate position which is shot is corrected on the basis of the correction value stored in the video game set (1).

Illustrative Claim:

1. A shooting game system for shooting a target displayed on a raster scan type display in a position spaced apart from the display to play a shooting game, comprising:

game processing apparatus being connected to said display for performing processing for the shooting game;

a shooting scope, having a light receiving axis, used in a position spaced apart from said display for shooting the target displayed on said display; and

a sight attached on said shooting scope and defining a sighting axis having a predetermined angle with respect to the light receiving axis of said shooting scope, whereby said sighting axis intersects the light receiving axis of said shooting scope on said display when the distance between said shooting scope and said display is a predetermined distance;

said shooting scope comprising;

a trigger signal generator for generating a trigger signal in response to an operation performed by a player,

a photoelectric converter for converting light from a position which is shot on said display into an electric signal which is synchronized with raster scanning of said display, and

a control signal transmitter for transmitting by optical space communication a control signal based on the electric signal outputted from said photoelectric converting means to said game processing apparatus in response to said trigger signal from said trigger signal generator,

said game processing apparatus comprising

a control signal receiver for receiving the control signal transmitted from said control signal transmitter,

shot coordinate position determining means for detecting a coordinate position which is shot by said shooting scope on said display on the basis of a raster coordinate position on said display at the time of receiving of said control signal by said control signal receiver,

reference mark display controlling means for displaying a reference mark in a predetermined fixed position on said display before starting the game,

an error detector for operating, when said reference mark is shot by said shooting scope, to detect an error between the coordinate position detected by said shot coordinate position detecting means and a coordinate position of said reference mark,

an error storing device for storing the error detected by said error detector,

a target display controller for displaying the target on said display while the game is played,

correcting means for correcting, when the target on said display is shot by said shooting scope, the relative positional relationship between a coordinate position of the target and the coordinate position detected by said shot coordinate position detecting means on the basis of the error stored in said error storing device, and

hit judging means for making a hit determination in a case where said target is shot by said shooting scope on the basis of said relative positional relationship after being corrected by said correcting means.

Bethesda Softworks LLC v. Interplay Entertainment Corporation 
United States District Court, D. Maryland
Case No. 1:2009cv02357, Filed On September 8, 2009

Bethesda and Interplay reached a settlement agreement regarding the "Fallout" trademark back in the January of 2012.  The origins of this dispute trace back to September 8, 2009, when Bethesda filed a complaint alleging that Interplay had, among other things, participated in trademark infringement, unfair competition, false designation of origin, and breach of contract.  Interplay filed its answer in October of 2009 along with counterclaims that include breach of contract, breach of the implied covenant of good faith and fair dealing, and tortious interference with prospective economic advantage.

When the "Fallout" mark was first issued on August 8, 1998, Interplay had ownership and developed, manufactured, and distributed three games using the mark: "Fallout," "Fallout 2," and "Fallout Tactics: Brotherhood of Steel."   Interplay entered an Exclusive Licensing Agreement with Bethesda during June 2004 which gave Bethesda the exclusive license rights "to future uses of the Fallout property and its associated trademark."  On April 4th of 2007, Bethesda and Interplay entered an Asset Purchase Agreement ("APA") and a Trademark License Agreement ("TLA").  Under the APA, Bethesda could purchase the rights to the Fallout mark for $5,750,000 while Interplay retained its exclusive right to manufacture, have manufactured, sell, and distribute the preexisting Fallout games.  The TLA allowed Interplay to create a Massively Multiplayer Online Game around the Fallout franchise under two conditions: 1) Interplay must begin the "full-scale development of its FALLOUT MMOG" and 2) Interplay must have "secured financing for the FALLOUT MMOG in an amount no less than $30,000,000" by April of 2009.  If Interplay failed to meet these two conditions, the TLA provided that Interplay would have to forfeit its license rights.  When Interplay refused to relinquish its licensing rights and insisted on creating a Fallout MMOG through Masthead Studios, Bethesda initiated this lawsuit.

In the January of this year, Bethesda and Interplay finally reached a settlement in this trademark dispute.  Bethesda now owns the rights to create a Fallout MMOG and Interplay has forfeited any right to Fallout intellectual property.  Interplay will be allowed, however, to manufacture, sell, and distribute the preexisting Fallout games through 2013.

Friedrich v. Marvel et al.
U.S. District Court Southern District of New York
Case No. 08-cv-01533

Case Update: May 2012

After 2 years of legal dispute between Gary Friedrich and Marvel, Marvel filed a counterclaim against Friedrich in December 2010.  Marvel claimed that Friedrich had violated its copyright and trademark ownership when he sold Ghost Rider merchandise.

Both Friedrich and Marvel filed for summary judgment during December of 2011.  Judge Katherine Forrest granted the defendant's motion for summary judgement on the issue of ownership of the Ghost Rider character.  It was determined that Friedrich had no legal ownership of the character since he was first paid to create the work with a check containing language assigning all rights to Marvel.  Furthermore, Friedrich and Marvel had signed a contract in 1978 assigning copyright renewal rights to Marvel.

Regarding Marvel's counterclaim against Friedrich, the court determined that Friedrich had infringed Marvel's copyright and he was ordered to pay $17,000 for profits realized from the sale of Ghost Rider merchandise.  Friedrich is also enjoined from future uses of the Ghost Rider character.

Case Update: June 2011
This case has been transferred from the Southern District of Illinois, to the Southern District of New York.

Original Post:

Ghost Rider creator Gary Friedrich has apparently sued a whole host of people, including Take2 Interactive, over his rights in the Ghost Rider character. He claims to have rights to the character since 2001, yet there is a movie, merchandising, video game (that's where Take2 got sucked in), etc.

Sounds like the details are still a little fuzzy, but we'll add this case to our list and keep you posted as we hear more.

In the meantime, read more here.
Case Update: May 2012

During August of 2011, US District Court Judge Stanley Chester granted the plaintiff's motion for entry  of default judgment on the count of patent infringement.  The plaintiff's requested an award of attorneys fees, however this request was denied.  The case was remanded to Magistrate Judge Shipp for a hearing on damages.

Original Post:

On January 21st, LottoTron, Inc. filed a complaint against eleven Costa Rican entities alleging infringement of U.S. Patent No. 5,921,865 entitled “Computerized Lottery Wagering System.” As previously reported, LottoTron has asserted infringement of the same patent against other entities over the past few years. The Complaint, filed in the District of New Jersey, does not specifically identify which claims were infringed, but alleges that the operation of “interactive gaming websites directly infringes the claims of the ‘865 patent in violation of 35 U.S.C. §271(a).” The Complaint further alleges that the Costa Rican entities have “also induced and contributed to the infringement of the claims of the ‘865 patent by others.”

The patent has two independent claims (claims 1 and 8) and fifteen dependent claims. Claim 1 is directed towards a wagering system and claim 8 is directed towards a method of automatically accepting different wagering formats. The two independent claims are reproduced below.

1. A wagering system for automatically accepting wagers comprising:

a) communications means for receiving communications from subscribers, said communications means including computer means and a wireless link;

b) message means connected to said communications means for receiving the incoming communications routed from said communication means and for providing a series of messages requesting subscriber information particular to one of the plurality of wagering formats; and

c) computer means having storage means connected to said message means for receiving and storing said subscriber wagering information, and assigning a reference number to a wager.

8. Method for automatically accepting a plurality of different wagering formats over a computer system, comprising:

receiving incoming communications from prospective wagerers and routing each of said communications according to which one of said plurality of different wagering formats is requested by a subscriber;

providing a series of messages requesting subscriber wagering information particular to one or more of said plurality of wagering formats;

requesting identification information from said prospective wagerers; and

requesting said prospective wagerers to enter a wager.
The case is LottoTron, Inc. v. SBG Online Casino et. al.,Case 2:10-cv-00337-SRC –MAS, 2:10-cv-0337 (D.N.J. filed January 21, 2010). We will continue to follow this case and the related cases.
IA Labs CA, LLC v. Nintendo Co., Ltd. et al. 
District of Maryland
Civil case No.: 8:10-cv-00833-PJM.

Case Update: May 2012

In March 2012, a Maryland District Court judge dismissed IA's suit against Nintendo alleging that several of Nintendo's peripheral accessories infringed upon its patents. Rick Flamm, Nintendo of America’s senior vice president of Legal & General Counsel, announced "Nintendo has a passionate tradition of developing innovative products while respecting the intellectual property rights of others. We vigorously defend patent lawsuits when we firmly believe that we have not infringed another party’s patent. We refuse to succumb to patent trolls."  This victory marked the third consecutive win for Nintendo in patent litigation.

Original Post:

Nintendo’s Wii gaming system is again the subject of patent infringement lawsuit. IA Labs, LLC recently filed a Complaint in the District of Maryland against Nintendo alleging infringement of U.S. Patent Nos. 7,121,982 and 7,331,226. Nintendo’s allegedly infringing activities and products relate to the “Wii console video game machines and related ‘Wii Fit’, Wii Fit Plus’, Wii Balance Board’, ‘Wii Remote’, Wii Nunchuck’, 'Wii Motion Plus’, ‘Wii Zaper’ peripheral devices and software.”

On their face, both patents are assigned to Powergrid Fitness Inc. According to the Complaint, IA Labs acquired the patents from Interaction Labs, which is “also known as Powergrid Fitness.” The ‘982 patent recites two independent claims (claims 1 and 9). Claim 1 recites:
1. An isometric exercise system serving as a peripheral to manipulate a virtual reality scenario of a host processing system in accordance with user exercise, comprising:
a frame to support a user;
an effector to provide an isometric exercise for said user, wherein said effector is fixedly secured to said frame and includes an elongated rod;
at least one sensor coupled to said rod and responsive to at least one force applied by said user to said effector to perform said isometric exercise, wherein said applied force effects a measurable deformation of said rod that is measured by said at least
one sensor; and
a processor coupled to said at least one sensor and including a data processing module to receive and process data corresponding to applied force information measured by said at least one sensor and to transfer information to said host processing system to control said virtual reality scenario of said host processing system in accordance with performance of said isometric exercise and manipulation of said effector by said user.
The Complaint alleges that “Intereaction Labs developed several products incorporating the technology of the ‘982 Patent. These products include the Kilowwatt Sport, the Exer-Station controller, Exer-Station PRO, and the PowerSquad Leg Joystick, among others.” The ‘226 patent recites three independent claims (claims 1, 10 and 19). Claim 1 recites:

1. A force measurement system comprising:
an effector device including a hollow interior;
an inner support disposed within said hollow interior of
said effector device; and
at least one sensor secured at a selected location to said inner support and configured to measure a force applied to said inner support; wherein at least one outer surface portion of said inner support is coupled with at least one interior surface portion of said effector device such that forces applied to said effector device are at least partially transferred to said inner support for measurement by said at least one sensor.
IA Labs further alleges that Nintendo’s infringement was willful. Specifically, IA Labs alleges that Nintendo met with representatives of Interaction Labs in December 2007 to discuss their “force feedback technology” and communications continued until at least November 4, 2008.

The case is IA Labs CA, LLC v. Nintendo Co., Ltd. et al. Civil case No.: 8:10-cv-00833-PJM. We will continue to monitor this case.
iCloud Communications LLC. v. Apple Inc.

United States District Court, District of Arizona

Case No. 11-cv-01158, Filed June 9, 2011

Case Update: May 2012

In September of 2011, iCloud Communications filed a motion for a voluntary dismissal with prejudice of its trademark infringement suit against Apple's iCloud.  iCloud Communications has since changed its name to PheonixSoft and may not bring suit against Apple again for the same subject matter.

Original Post:

On Thursday, June 9, just one week after iCloud’s debut at the Apple Worldwide Developers Conference (WWDC), Apple was sued for trademark infringement in the iCloud mark. iCloud Communications, an Arizona-based company, has been using the iCloud name since 2005 in conjunction with its own cloud-based service. The company focuses primarily on VoIP solutions for business and residential customers but also provides cloud computing services for customers and asserts that it has spent significant amounts of money building the infrastructure to do this, as well as “tens of thousands of dollars” annually in advertising its cloud computing services. In its complaint iCloud Communications alleges that Apple willfully infringed on its mark, that this action is representative of a pattern of willful trademark infringement by Apple, and that this infringement has led to consumer confusion as to the origin of its services.

iCloud Communications asserts that Apple was either aware, or was willfully blind to its rights in the iCloud trademark and that this reflects a pattern by Apple of “act first, worry about the [trademark] consequences later.” The complaint cites other examples like the use of iPhone (similar to Cisco's iPhone), the iPad (to which a trademark application has been filed by Fujitsu Frontech North America), iAds (a trademark owned by Innovative Media Group), and now iCloud as evidence that Apple regularly tramples on the marks of others.

In addition, iCloud Communications has put forward a reverse confusion argument that "due to the worldwide media coverage given to and generated by Apple's announcement of its 'iCloud' services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the mark 'iCloud' with Apple, rather than iCloud Communications," causing irreparable harm to iCloud Communications’ trademark. The VoIP company also cites instances of actual confusion where consumers have called in to inquire whether the company is associated with Apple now.

This case is reminiscent of Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998.) There the 9th Circuit held that DreamWorks studios reverse infringed on the trademarks of the smaller Dreamwerks company. Despite the fact that DreamWorks was a movie production studio, and Dreamwerks organized sci-fi conventions, the 9th circuit held that both companies belonged to the entertainment industry and that the “reasonably prudent consumer” would likely be confused as to the source of the service provided. In the case of the iCloud, both companies engage directly in cloud-computing services, adding to the apparent strength of a reverse confusion argument.

The twist here is that, although it has used the iCloud name for six years, iCloud Communications never registered the term as a trademark. Apple actually owns the rights to the iCloud trademark through registration at the USPTO. According to Cnet and USPTO records, Apple recently spent $4.5 million to acquire the domain and corresponding Federal trademark registration no. 3,744,821 from the Swedish cloud computing company Xcerion, and filed for additional trademark rights to the iCloud name in May 2011, listing various classifications, including one for "electronic storage of data, text, images, audio, and video; storage services for archiving electronic data; information and consultation in connection therewith." This is all very reminiscent of the now infamous Burger King dispute between the Burger King fast-food chain and the mom-and-pop Burger King restaurant in Mattoon, Illinois.

We’ll continue to follow the case and bring you updates.
Thorner et al v. Sony Computer Entertainment America LLC et al
U.S. Court of Appeals for the Federal Circuit (On appeal from the U.S. District court, District of New Jersey)

Case No. 2011-1114 (originally 09-01894), Filed December 13, 2010 (originally April 21, 2009)

Case Update 05/23/2012:

On February 2, 2012, the U.S. Court of Appeals for the Federal Circuit vacated the New Jersey District Court's decision previously reported below.  The Federal Circuit reviewed the district court's interpretation of the terms "attached" and "flexible," noting that the general rule is that claims must be given their ordinary and customary meaning unless the patentee acts as his own lexicographer or the patentee disavows the full scope of the claim.  Since the term "attached" met neither of these exceptions, the Federal Circuit determined that it should be given its ordinary and customary meaning that includes both internal and external attachment.  The  Federal Circuit also disagreed with the district court's interpretation of the term flexible ("capable of being noticeably flexed with ease").  Thorner argued that this term should be given its ordinary and customary meaning that only requires the pad to be "capable of being flexed."  The  Federal Circuit accepted Thorner's interpretation and has remanded the case for further proceedings.  

Case Update:

We previously reported (see original post below) about a spinoff from the Sony v. Immersion case dealing with haptic feedback technology. Craig Thorner had previously developed patents for Immersion and had also received payments from Sony for his work on vibrating touch technology. As we reported, Thorner sued Sony claiming that Sony's lawyers induced him to accept less than favorable terms for his license. He sued Sony for monetary compensation for infringement on his vibrating touch feedback patent.

Specifically at issue was Thorner’s U.S. Patent # 6,422,941 (the ‘941 patent) titled “Universal Tactile Feedback System for Computer Video Games and Simulations.” According to Judge Brown, “attached to said pad” is construed to mean “affixed to the exterior surface of the flexible pad,” and as a result Sony does not infringe the ‘941 patent. He wrote that under the court’s construction of the phrase “attached to said pad” Sony did not infringe because “the patent claim limitation is not met with respect to their products.”

On November 4, 2010, the charges against Sony were dismissed in district court. The court’s judgment as to whether Sony’s technology infringed Thorner’s patent was determined by its construction of the phrase “attached to said pad.” After conducting Markman hearings over the disputed claim phrase, Chief Judge Garrett Brown of the New Jersey District Court dismissed all of Thorner’s patent claims against Sony without prejudice. The judge noted that he was dismissing the claims without prejudice in light of Thorner’s specific objection to the district court’s construction of “attached to said pad.” The parties also agreed to a stipulation of dismissal without prejudice, and Sony acknowledged that dismissal of the claims would not prejudice Thorner’s ability to assert those claims in the future, in this same case. The court noted that if the Federal Circuit reverses its construction of “attached to said pad” or applies a different construction, the parties may reassert all claims and issues on remand.

Original Post:

The dust has long settled on the Sony/Immersion haptic feedback suit, right?

Not quite. According to a complaint filed in Thorner v. Sony Computer Entertainment America, Inc., Case No. 09-01894 (NJ filed April 21, 2009), and amended recently, a witness from that case claims he was tricked into cooperating and signing away his own patent rights for a fraction of their worth.

According to the complaint, Craig Thorner was an engineer who held several patents that were also directed to haptic feedback technology, similar to those asserted by Immersion against Sony, and his patents were part of Sony's after-trial attempt to invalidate Immersion's patents.

The complaint alleges that days after the verdict against Sony, Thorner was contacted by another company that had also been targeted by Immersion. This other company, Performance Designed Products LLC (PDP), was a game distribution company, and (according to the complaint) needed Thorner's help.

Thorner claims that in working with PDP, he ended up negotiating with them to license his own patents to them, and that in that negotiation process he sought help from the same attorneys that represented Sony. According to the complaint, those attorneys helped him with the license, and they encouraged him to accept terms that were less than favorable to Thorner (including a provision that could grant a patent license to Sony, and another one accepting royalty payments that were much less than he had originally sought).

Thorner now alleges that all that time, those attorneys were actually helping Sony get a better deal out of him, and that Sony and PDP were actually working together to get that deal. He has sued them for legal malpractice, and has sued Sony for infringement of his patents.

This case is just beginning, so we will have to wait to see the other side of the story, and to see how it all turns out. Stay tuned ....
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