On March 29, 2018, the New York State Court of Appeals, New York’s highest court of appeal, rejected actress Lindsay Lohan’s contention that the character “Lacey Jonas” from Grand Theft Auto V (“GTAV”) appropriated her likeness. A similar suit by Karen Gravano (a “Mob Wives” personality) regarding the “Andrea Bottino” character from GTAV was rejected on the same day.

Lohan alleged that at least two parts of GTAV unlawfully duplicated her likeness. First, in an “Escape Paparazzi” event, a female character named “Lacey Jonas” (who describes herself as a “really famous” “actress slash singer” and a “voice of a generation”) hides from the paparazzi. Second, a “Beach Weather” splash screen in GTAV allegedly duplicated Lohan’s likeness. That image is duplicated below.

The Court rejected Lohan’s argument, finding that both “Lacey Jonas” and the woman depicted in “Beach Weather” were “indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman that are not reasonably identifiable as [Lohan].” This is arguably a formal way of saying that self-important blonde actresses aren’t exactly in short supply in Los Angeles.

Karen Gravano similarly asserted that GTAV’s character “Antonia Bottino”–in the game, the daughter of a mobster planning to go on a television show–unlawfully duplicated her likeness. The Court similarly found that Gravano was “not recognizable from the images at issue.”

Though Lohan and Gravano lost, the Court’s ruling did hold that an avatar, such as a videogame character, may unlawfully misappropriate the likeness of an individual. Developers may want to be cautious in view of this holding–the wrong cutting edge satire could invite a lawsuit, no matter how poorly-founded.

On March 27, 2018, Hybrid Audio, LLC (“Hybrid Audio”) sued Nintendo of America Inc. and Nintendo Co., Ltd. (“Nintendo”) for alleged infringement of RE 40,281, a reissue of U.S. 6,252,909.  The allegedly infringing products include the Nintendo Wii and the Nintendo DS.  RE 40,281 generally relates to signal processing and is part of technology used for MP3 technology, and Hybrid Audio’s argument is that Nintendo infringes via practicing various parts of the MP3 technical standard (ISO/IEC 11172-3:1993).

As part of Hybrid Audio’s complaint, it notes that Nintendo may enter a Reasonable and Non-Discriminatory (“RAND”) agreement to license RE 40,281 as part of the MP3 Standards. Hybrid Audio also indicates that products supplied by Microsoft Corporation are not part of the allegedly infringing products, suggesting that Microsoft has possibly already entered into such an agreement.

RAND agreements, sometimes called FRAND agreements (for “Fair, Reasonable, and Non-Discriminatory”), are commonly used in patent pools. In industries where standards (e.g., audio standards like MP3 and cellular communications standards like 3G or LTE) are important, patent owners often collectively pool “standards-essential” patents and mutually agree to license those patents on FRAND/RAND terms. For patent owners, this can be a good deal: once their patents become standards-essential, users of the standard must license their patent, albeit on RAND/FRAND terms. For licensees, this can also be a good deal: because all patent owners must license their standards-essential patents on RAND/FRAND terms, they can usually acquire licenses to the standard fairly easily and with reasonable terms.

Strangely, Hybrid Audio's complaint specifically identifies the Nintendo Wii and Nintendo DS as infringing products.  The Nintendo Wii was launched in 2006, whereas the Nintendo DS was launched in 2004.  35 U.S.C. § 286 limits damages to six years prior to the filing of a complaint, meaning that Hybrid Audio's recovery will be limited to the period from 2012 to 2018.  During that period, Nintendo was marketing different a next generation of game consoles (the Wii U and the 3DS), which are not referenced in Hybrid Audio's complaint.  Potential damages related to sales of the Wii and DS are likely to be extremely small.
On Mar. 9, 2018, Epic Games, Inc. (“Epic”) sued Joseph Sperry (a/k/a “Spoezy”), yet another alleged distributor of cheats for the popular online game Fortnite.

Similar to previous cases (discussed here, herehere, and here), Epic alleges that Spoezy made, used, and sold cheating tools for Fortnite.  Much unlike previous cases, however, to acquire jurisdiction against Spoezy, Epic merely argues that Spoezy purposefully availed himself to the privileges of conducting activities and doing business in North Carolina, rather than using the YouTube DMCA process.  This may be because Spoezy is a resident of New York, unlike previous, non-American defendants.

As a fun side note, Spoezy’s website formerly listed him as a “Cheater[,] Designer[, and] Editor,” though it now lists him as a “Gamer[,] Designer[, and] Editor.” 
On January 29, 2018, FaZe Clan, Inc. (“FaZe Clan”) , an online gaming team, was sued by FAZE Apparel, LLC (“FAZE Apparel”) for trademark infringement, false designation of origin, and unfair competition.  The case, originally filed in the Northern District of California, was transferred to the Central District of California on Mar. 13, 2018.  The case is now undergoing court-directed alternative dispute resolution.

When FaZe Clan is not sponsoring energy drinks (“FaZeberry”) or awkwardly self-promoting in Gamestop stores, FaZe Clan sells merchandise promoting their brand.  FAZE Apparel asserts that FaZe Clan is an “admitted past infringer” of its marks which simply attempted to “steamroll [FAZE Apparel] and improperly profit off its brand.”  According to FAZE Apparel, FaZe Clan has been well aware of FAZE Apparel for at least four years: in 2013, the USPTO refused to register various trademarks for FaZe Clan, finding that such marks would be confusingly similar to those owned by FAZE Apparel.  Since then, per FAZE Apparel, FaZe Clan has repeatedly attempted to market “FaZe” materials, only to (allegedly) back off when confronted by FAZE Apparel.

Cases like these underscore the importance of careful brand planning.  FaZe Clan is now in an awkward position: if FAZE Apparel’s assertions have any merit, FaZe Clan will be forced to either re-brand or seek some form of license from FAZE Apparel.  Even if FAZE Apparel’s assertions are not meritorious, FaZe Clan will likely have to spend significant sums to defend themselves from this lawsuit. 

Either or both of these issues could have been avoided had FaZe Clan taken a more informed and/or conservative approach when selecting its name.  This case evidences that an ounce of prevention is worth a pound of cure.
Plaintiffs Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC (“Lucasfilm”) have challenged attempts by defendant Ren Ventures Ltd. and Sabacc Creative Industries Ltd. (“Ren”) to dismiss a lawsuit by Lucasfilm alleging that Ren infringes Lucasfilm’s copyrights and trademarks and has violated unfair competition laws.  The game at issue is Ren’s “Sabacc,” a mobile card game which allegedly infringes Lucasfilm’s Star Wars trademarks.

“Sabacc” is the fictional game of chance in the Star Wars universe that was played by Han Solo to win the Millennium Falcon from Lando Calrissian.  Lucasfilm has sold various real-life versions of the Sabacc card game, though Ren disputes the significance of such sales.  According to Lucasfilm, on the eve of the release of the movie Star Wars: The Force Awakens (Dec. 18, 2015), Ren–without permission from Lucasfilm–released the mobile card game “Sabacc.”  Videos of the game available online suggest that it contains imagery which allegedly depict Han Solo, Lando Calrissian, and a holographic Millennium Falcon.  Lucasfilm sued Ren on December 21, 2017.

Ren’s Motion to Dismiss argues, in part, that because Sabacc is a “fictional good,” it cannot be amenable to trademark protection or an unfair competition violation.  Lucasfilm’s Opposition to Ren’s Motion to Dismiss calls Ren’s arguments “specious,” asserting that Ren “ignore[s] all cases that have granted common law trademark protection to fictional elements of expressive works.” 

As many franchises sell real versions of in-universe games (Star Trek’s Tri-Dimensional Chess and The Witcher’s Gwent come to mind), the ruling in this case may have implications far beyond Sabacc.
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