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On April 23, 2018, Epic Games, Inc. (“Epic”) filed a response to a Motion to Dismiss filed by Lauren Rogers, the mother of a teenaged Fortnite hacker (“C. R.”) facing a copyright infringement and breach of contract lawsuit filed by Epic last year.


Epic’s complaint argues that C.R. infringed its copyrights by injecting unauthorized computer code (that is, cheats) into Fortnite.  C.R. allegedly recorded himself cheating in Fortnite and uploaded those videos to YouTube.  Epic filed a DMCA request to take down those videos, to which CR apparently replied: “i did noting rong this strike is all wrong I was modding in a video game that isn’t against youtubes TOS Why was i striked ‼!.”  According to Epic, C.R. had been banned from Fortnite at least fourteen times, but continued to dodge bans using fake names.  Neither C.R. nor his mother have legal counsel.

The suit is extremely similar to Epic’s other Fortnite lawsuits (discussed here, here, here, herehere, here, and here). 

Ms. Roger’s Motion to Dismiss, actually a letter filed by Ms. Rogers, allegedly admits that C.R. was a cheater but argues that the case should be dismissed because (1) Epic “has no capability of proving [that C.R. performed] any form of modification,” because (2) Epic “illegally” released C.R.’s name, because (3) Epic cannot prove “profit loss” from the cheating or that C.R. profited from his cheating, and (4) because Epic’s contracts (e.g., its terms of service) are invalid because C.R. is a minor.  Epic responded by not only moving to seal certain portions of the trial record, but also by arguing that it was not required to make certain proofs at the pleading stage, and that, in any event, Ms. Roger’s arguments were legally unfounded.

These developments appear to put Epic in a useful, albeit awkward, position.  On one hand, this suit provides a clear warning that even minors may find themselves sued for cheating in Fortnite.  On the other hand, Epic is now pursuing a copyright suit against an unrepresented teen and his mother – definitely an interesting position from a public relations perspective.

On April 17, 2018, Catherine Alexander, a tattoo artist from Illinois, sued Take-Two Interactive Software, Inc., 2K Games, Inc., 2K Sports, Inc., World Wrestling Entertainment, Inc. (the “WWE”), Visual Concepts Entertainment, Yuke’s Co., Ltd., and Yuke’s LA Inc. for copyright infringement relating to the tattoos on Randy Orton


Randy Orton is a 13-time world champion professional wrestler for the WWE whose arms are almost entirely covered by tattoos.  Between 2003 and 2008, Alexander tattooed Mr. Orton’s arms.  Alexander’s complaint alleges that various WWE-branded videogames, including WWE 2K16, WWE 2K17, and WWE 2K18, feature “meticulous reproduction[s]” of those tattoos.  Per Alexander, the WWE offered her $450 for the rights to Orton’s tattoos, which she declined.

This is far from the first time that the gaming industry has been involved in a copyright dispute over in-game tattoos.  One suit, still ongoing, involves various tattoo artists suing Take-Two Interactive over reproductions of the tattoos of professional basketball players such as Kobe Bryant and LeBron James.  Similarly, an Arizona tattoo artist once sued THQ over a tattoo in UFC Undisputed, though it appears that case was settled.  In the movie industry, a similar dispute arose over the depiction of Mike Tyson’s tattoo in the movie Hangover II, though the dispute was quickly settled.

One strategy, explored by companies like Electronic Arts, has been to require that athletes acquire the rights to their tattoos if they want them properly represented in-game.  Another option would be for athletes’ contracts to require that they acquire all rights to any tattoos they receive, such that the athletes may grant licenses to use the tattoos if necessary.

In any event, the outcome of these cases are likely to hinge on, among other arguments, whether tattooed individuals like Randy Orton have an implied license to their tattoos, and whether depiction of an individual’s tattoos is fair use.   Another potential issue is whether a tattoo is sufficiently “fixed” to warrant copyright protection in the first place (there is precedent that a living garden is not “fixed” and one might make the same argument about artwork on living skin).  We will monitor the cases and keep our readers informed of any updates.

Summer Intern - Patent Arcade *
Washington, DC

Banner & Witcoff, a recognized leader in the practice of intellectual property law, is seeking a summer intern to work in its Washington, DC office for the summer of 2018.

As a Summer Intern, the student will assist in researching new and historical video game IP lawsuits, writing content for publication on the PatentArcade.com blog, researching and updating our database of video game patents, working with PatentArcade.com attorneys to research developing areas of video game IP law, developing topics and potentially preparing a paper for submission to the Interactive Entertainment Law Review

Successful candidates:

Must be enrolled in an accredited US law school.
Must have an interest in video game and IP law.
Must not be eligible to take the patent bar (i.e., no candidates with engineering or science degrees.  It's an odd requirement, I know, but we have our reasons).

Please upload your resume with cover letter, law school and college transcripts, and a writing sample. Candidates should redact social security numbers and similar information before submitting materials. Electronic documents should be sent in Microsoft Word or PDF format.

*This is a paid position
Apply here.
On April 11, 2018, Infernal Technology, LLC and Terminal Reality, Inc. (“Infernal”) filed a complaint for patent infringement against Microsoft Corporation (“Microsoft”).  The asserted patents, U.S. 6,362,822 and U.S. 7,061,488, relate to lighting and shadowing methods for graphics simulation. According to Infernal, both patents have already survived an Inter Partes Review challenge filed by Electronic Arts in 2016.



According to the complaint, Terminal Reality was the developer of games such as Nocturne, Bloodrayne, Ghostbusters: The Video Game, Kinect Star Wars, The Walking Dead: Survival Instinct.  As part of their game development work, Terminal Reality developed a graphics engine (“Infernal Engine”).  Infernal Technology has an exclusive license to patents related to the Infernal Engine, including those asserted against Microsoft.

Infernal alleges that games developed by Microsoft on the Unreal Engine 4, CryEngine 3, CryEngine 4, Alan Wake Engine, Renderware Engine, Forge Engine Forzatech Engine, Northlight Engine, Unity Engine, Foundation Engine, Halo 4 Engine, Halo 5: Guardians Engine, and Halo: Reach Engine infringe the asserted patents.  These allegations seem to include the lions’ share of games on Microsoft’s consoles, including but not limited to Alan Wake, Crackdown, Crackdown 2, Crackdown 3, Dead Rising 3, Fable Legends, Forza Motorsport 6, Forza Motorsport 7, Gears of War 4, Halo 4, Halo 5: Guardians, Halo: Reach, Kalimba, Ori and the Blind Forest, PlayerUnknown’s Battlegrounds, Quantum Break, ReCore, Rise of the Tomb Raider, Ryse: Son of Rome, Sea of Thieves, State of Decay, and Super Lucky’s Tale.

Interestingly, Infernal’s case was filed in the Eastern District of Texas.  While that venue was once a hotbed of patent litigation, in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the Supreme Court limited venue in patent infringement actions to where (1) the defendant resides, or (2) the defendant has committed acts of infringement and has a regular and established place of business.  This ruling has generally been seen as a significant limitation on bringing cases in the Eastern District of Texas.  Nonetheless, Infernal alleges that Microsoft is a resident of the State of Texas, has a designated agent for service of process in the State of Texas, and has committed acts of infringement in the State of Texas.  Whether the facts underlying these assertions are sufficient for venue in the Eastern District of Texas after TC Heartland remains to be seen.

We will monitor this case and keep our readers informed of any updates.
On April 9, 2018, the Federal Circuit ruled in favor of defendants Microsoft Corporation, Ubisoft, Inc., Nintendo of America, Inc., Electronic Arts Inc., Harmonix Music Systems, Inc., and Majesco Entertainment in a patent infringement suit brought by Australian individual Richard J. Baker.   The suit relates to Baker’s U.S. Patent No. 5,486,001, which relates to an instructional aid for movements.  The accused products included video games that incorporated an image capturing device (like a camera) connected to a gaming console or personal computer.


The ’001 Patent reads, in claim 1 and as amended during prosecution:
capturing and storing initial visual image signals representative of a particular movement at a first location,

storing preferred image signals representative of a selected preferred movement at a second location remote from said first location in a data base of a computer,

transmitting said captured and stored visual image signals from said first location to said computer at said second location,

. . .

transmitting said regenerated signals from said computer at said remote second location to said first location and stored in image presentation means which permits viewing thereof with dialogue relating to said regenerated visual secondary image signals.

The Federal Circuit affirmed the district court’s finding that “remote,” as used above, requires “more than physical separation at the same location.”  The Federal Circuit found that this amendment prevented infringement by any of the defendants, both literally and under the doctrine of equivalents.

Cases like these emphasize the importance of careful patent prosecution.  Per the Federal Circuit, the “first location” and “second limitation” language used above was added to traverse a reference (U.S. Patent No. 5,184,295 to Mann).  Little changes like these, which invoke the doctrine of prosecution history estoppel, can have significant ramifications during litigation, as demonstrated here.  It’s game over for Mr. Baker in this case.
On April 2, 2018, PUBG Corporation and PUBG Santa Monica, Inc. (“PUBG”) sued NetEase, Inc. and NetEase Information Technology Corp. (“NetEase”) over alleged copyright infringement, trade dress infringement, and unfair competition.  The complaint alleges, in short, that NetEast’s titles Rules of Survival and Knives Out are knockoffs of PUBG’s massively popular Playerunknown’s Battlegrounds.


PUBG’s lengthy (155 page!) complaint provides a listing of all instances in which Rules of Survival and/or Knives Out allegedly copied Playerunknown’s Battlegrounds.  Some examples, as alleged by PUBG:
  • “Pre-Play Area” – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out feature a pre-play area “where players can meet each other and try out weapons while waiting for other players to join.”
  • Play Map – The layout of the maps in all three games are “strikingly similar.”
  • “Scenes and Locations” – Both Rules of Survival and Knives Out feature, like Playerunknown’s Battlegrounds, locations such as a shooting range, a rural aqueduct, a port with shipping containers, a farm area, two-story hexagonal towers, and the like.
  • Air Jump – In Rules of Survival and Knives Out, as in Playerunknown’s Battlegrounds, players jump at any point from an airplane onto various portions of a map.  Players may then descend in freefall and release a parachute. 
  • Weapons – For example, where Playerunknown’s Battlegrounds features a M416, Rules of Survival features an MA14.  Both games also feature, for example, red dot sights, vertical foregrips, bullet loops, and other similar accessories.
  • Frying Pans – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out feature frying pan weapons. 
  • “Winner Winner Chicken Dinner” – Both Playerunknown’s Battlegrounds and Rules of Survival use this phrase to indicate the winner of a match.  Rules of Survival also has a rubber chicken which may be used as a melee weapon. 
  • Shrinking Gameplay Area – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out have a progressively shrinking gameplay area and a timer which warns players when a next shrinking event will occur.
Individually, all of the above examples could arguably be found in other video games or in real life.  For example, the M416 in Playerunknown’s Battlegrounds is arguably a version of the Heckler & Koch HK416.  As another example, Playerunknown’s Battlegrounds is far from the progenitor of the term “Winner Winner Chicken Dinner,” as the term originated during the Depression. It seems likely that PUBG will argue that the combination of such elements, rather than the individual elements themselves, has been copied by NetEase.

PUBG is far from the first game company to sue creators of alleged copycat game titles.  Tetris Holding, the company that owns the rights to Tetris, won a battle against a copycat app.  In that case, the Court found that the fact that game mechanics and game rules are not entitled to protection “does not mean, and cannot mean, that any and all expression related to a game rule or game function is unprotectable” such that Tetris Holdings was “entitled to copyright protection for the way in which it [chose] to express game rules or game play as one would be to the way in which one chooses to express an idea.”  Similar battles occurred between the creators of The Sims Social and The Ville and between the creators of Triple Town and Yeti Town.  Our firm (Banner & Witcoff), for example, represented Wargaming.net in a similar dispute against Changyou.com involving an alleged knockoff of Wargaming’s World of Tanks.
On March 30, 2018, Universal Entertainment Corporation (“Universal”) sued Aruze Gaming America, Inc. (“AGA”) and Japanese billionaire Kazuo Okada (“Okada”).  The asserted patents generally relate to slot machines.  The accused products include a wide variety of products made by AGA, including the G-SERIES, G-STATION, CUBE-X family of games (e.g., “Fire and Thunder,” “King of Dragons,” and “Mighty Lion”).


This case is interesting not necessarily because of the patents themselves, but rather because of the alleged corporate drama involving Okada, Universal, and AGA.  According to the complaint, Okada was the founder of Universal, which at one point owned AGA as a subsidiary.  Around 2008, Universal allegedly transferred all of its shares of AGA to Okada, spinning off AGA as an independent company.  Around 2009, Okada allegedly instructed Universal employees to license certain patents to AGA, though a license was never executed.  Around June of 2017, Universal purportedly discovered that Okada committed some form of “misconduct in relation to foreign business,” purportedly costing Universal around 2.2 billion Japanese Yen (around 20 million US dollars).  According to the complaint and other news sources, Okada was later voted out of Universal (by, among others, his son, daughter, and wife), and Okada appears to have turned his attention to AGA while he attempts to regain control of Universal.

This case is an excellent example of a danger commonly faced by many companies: founder overreach.  Savvy, charismatic leaders can enable companies to grow fast, but such founders can become overly powerful and dominate company decision-making.  In the intellectual property context, this can easily result in inventorship disputes, questionable licensing practices, and attempted theft of intellectual property (e.g., trade secrets) by departing founders.  Needless to say, such issues can easily be remedied through careful legal counsel.
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