[Guest post] Virtual wars: Exploring legal boundaries in the gaming world

The IPKat has received and is please to host the following contribution by Katfriends Jakob Plesner Mathiasen and Paul Sina (both Gorrissen Federspiel Denmark) concerning IP and gaming. Here’s what they write:

Virtual wars: Exploring legal boundaries in the gaming world

by Jakob Plesner Mathiasen and Paul Sina

The HBO series "The Last of Us" has taken the world by storm, as it explores a post-apocalyptic world ravaged by the Cordyceps fungus. The captivating series is actually based on a successful video game of the same name, developed by Naughty Dog. Among the many aspects that made the game stand out there was its young female protagonist, Ellie, whose striking resemblance to actress Ellen Page sparked a heated debate about the limits of intellectual property rights in the gaming industry. While Page never pursued legal action against the game developer, Naughty Dog, her claim that they "ripped off her likeness" raises intriguing questions about the fine line between inspiration and infringement, and the challenges of navigating intellectual property law in the rapidly evolving world of video games.

Grab your controllers and put on your headsets, because we're about to embark on a journey into the pixelated realm of intellectual property rights in computer games. That's right: buckle up and press start, because this adventure is packed with trade marks, copyrights, and a good dose of legal action.

The gaming industry has exploded and is predicted to reach a whopping USD 327 billion in revenue in 2023. As the virtual world expands, so does the number of questions that arise regarding the protection and use of intellectual property rights in games.

Can game developers simply race through the world of IP without hitting any legal roadblocks? Or will they face a dreaded "game over" when they infringe upon the rights of others? We'll find out as we press start in this thrilling quest for answers. Along the way, we'll take a Ferrari for a spin, while the Battlefield-helicopters zoom around the skies.

So, dear Katreaders, ready your legal potions, equip your most powerful argument swords, and summon your trusty sidekick (preferably a cute and witty IP lawyer). We're about to embark on a wild ride through the land of IP in computer games – and it's sure to be one for the high score books.

Leveling up on trade marks in the gaming world

As game developers strive to create increasingly immersive and realistic experiences, the question arises: when can trade marks be used in computer games, and when are they off-limits?

Enter the realm of the Humvee in Call of Duty, the helicopter in Battlefield, and the Ferrari in GTA. These vehicles not only add an extra layer of authenticity to their respective games, but they also bring their real-life trade marks along for the ride.

Take the case of the Humvee in Call of Duty. AM General, the automobile manufacturer responsible for producing the iconic off-road vehicles known as Humvees, sued the creators of Call of Duty for featuring their vehicles within the game without permission.

Interestingly, the court chose to focus on the core purpose of trade mark protection. AM General's primary objective in holding their trade mark was to sell vehicles to military units, while the creators of Call of Duty aim to provide gamers with a realistic virtual warfare experience. To determine if the use of the Humvee trade mark in the game was indeed an infringement, the court employed the so-called "Rogers test." The test allows courts to dismiss claims of trade mark infringement, if the trade mark in question is being used for artistic purposes and does not mislead consumers.

Ultimately, the court concluded that there was no infringement in this case, as the Rogers test criteria were met. The use of Humvees in Call of Duty was deemed to serve an artistic purpose and did not mislead consumers, allowing the game to continue featuring these off-road warriors in their virtual battlegrounds.

There is no cheat code for avoiding trade mark disputes, and sometimes even the most skilled developers can find themselves in a legal bind. For instance, Ferrari was not too thrilled when they discovered their luxury cars speeding through the streets of GTA, leading to a legal showdown.

Ferrari accused the game's publisher of unfair and parasitic competition and infringement of the company's image rights. They argued that various elements of the game's car, such as the luxurious allure, logos, and even the font, misled gamers into believing that Ferrari had endorsed the game. However, the court found that these elements did not evoke associations with Ferrari or mislead gamers, and thus the claim was dismissed. The court emphasized that notable differences existed between the two cars, particularly in their profile, air intakes, wheel shapes, windows, and rear features. For French speakers, the judgment can be found here.

In a case involving helicopters in the Battlefield video game, Textron Inc., the company holding trade mark rights to Bell-manufactured military helicopters, sued Electronic Arts (EA) multiple times for their use of the helicopters in the game. Textron argued that EA's use of their marks and images would likely cause confusion among consumers regarding the source, affiliation, and/or sponsorship of the depicted helicopters.

EA countered that the use of helicopters in the game was justified due to fundamental rights, such as freedom of expression, enshrined in the U.S. Constitution, arguing that the use of the Bell helicopters had no relevance to the purpose of the Bell-trade mark However, the judge found it plausible that consumers could believe Textron had provided expertise and knowledge to create a realistic simulation of the actual workings of Bell helicopters, given that the use of Bell helicopters was not incidental and could be one of the game's selling points. Read EA’s motion to dismiss here.

Ultimately, the case was settled out of court, and the details of the settlement remain undisclosed.

In conclusion, the use of trade marks in computer games often does not constitute infringement, as it typically does not involve trademark-related use, as demonstrated by the arguments in the Humvee case. As courts consider factors like artistic purposes and potential consumer confusion, many instances of incorporation trademarks does not infringe upon existing protections.

Avatars and Athletes: The Use of Real Names and Faces in Computer Games

As we move on to the next level of our IP adventure, we find ourselves in the realm of real names and faces. In a world where game developers strive to create engaging and authentic experiences, using real-life personas seems like an attractive option.

The world of sports games, such as the popular FIFA series, often relies on the use of real players' names and faces to create an immersive experience. However, as we've learned, even the most skilled players can find themselves in a legal showdown.

Take, for example, the case of Swedish superstar Zlatan Ibrahimovic, who wasn't too pleased to find his name and face featured in FIFA without his consent. In this particular match, however, it was revealed that the use of Ibrahimovic's name and image had been agreed upon through an agreement with FIFPro (that had acquired the right to license the players’ image rights via player unions) and game developer EA. Zlatan's controversy wasn’t with EA, but rather his own union.

Generally, commercial use of well-known individuals' names and images in games requires permission, as it falls under commercial exploitation. However, there may be exceptions to this rule.

What about online (fantasy) manager games that rely on real-life, non-fictional achievements? Well, the rules change slightly when it comes to these types of games. In a Danish High Court decision (U.2015.2936Ø), it was found that the game developer was entitled to use players' names without permission, as their real-life achievements were crucial to the online manager games' premise. The use of the players' real names was considered a necessary and natural part of the game.

This ruling indicates that there can be exceptions to the general principle of requiring permission for commercial use of celebrities' names and images in games. In the context of online manager games, where real-life achievements play a critical role in the game's concept and appeal, the use of actual names may be deemed acceptable.

Pixelated Portraits: The Use of Historical Figures in Computer Games

As we reach the final stage of our IP odyssey, we encounter an intriguing challenge: the use of historical figures in computer games. From controversial politicians to famous actors, these characters can add depth and authenticity to virtual worlds. However, as with any IP quest, there are pitfalls to avoid. Now, we know that films and books often depict historical figures, even when there's a commercial incentive behind the publication. This artistic freedom stems from a deep-rooted respect for the principles of free speech and expression. Nevertheless, can the same be said for computer games?

Picture this: you are playing the popular game Call of Duty, when suddenly you come face-to-face with Manuel Noriega, the former dictator of Nicaragua. While it may seem like an exciting plot twist, it turns out that Noriega wasn't exactly thrilled about his virtual cameo.

In a lawsuit against the computer game company, Noriega claimed that his right to his own name and image had been infringed. However, the court found that Noriega's rights had to yield to the company's freedom of expression. The ruling highlighted that Noriega's appearance in the game was limited in scope and that the game wasn't marketed using his name.

In the past, video games might have been dismissed as lesser art forms, unworthy of the same protections afforded to films and books. However, the winds of change have blown away this outdated notion, as the medium has matured and garnered widespread recognition as a legitimate form of creative expression. Today, video games can be as complexly crafted and thought-provoking as any film or novel, employing rich storytelling and immersive worlds that hold players spellbound.

In conclusion, our IP odyssey reveals that game developers, like filmmakers and authors, have every right to draw from history's wellspring of fascinating characters, so long as their incorporation is meaningful and fitting within the game's universe. And with that, our epic IP journey through the captivating world of computer games comes to an end. But remember, in the realm of intellectual property, there's always a new adventure waiting just around the corner. Stay informed, stay vigilant, and most importantly, stay entertained!