Copyright, Trademark Laws Evolve With The Internet And Video Games

Saturday, November 1, 2008 - 00:00

Intellectual property rights in trademarks and copyrights have enjoyed protection under United States law since the nation's inception. The means and methods of enforcing these valuable rights have evolved. Such evolution has been assisted by the development of modern industries such as the video game industry. In representing clients in a broad range of industries such as the "traditional" industry of automotive parts and the "modern" industry of video games, the attorneys at Hiersche, Hayward, Drakeley & Urbach have been fortunate to practice in a challenging and unique practice area.

Trademark/ICANN Dispute Resolution

Disputes are a part of business, and the economical resolution of disputes is an important and necessary goal. In this time of expanding e-commerce, the Internet is often the battleground for business disputes. One "non-traditional" dispute relates to the ownership and use of Internet domain names.

In today's marketplace, companies need to not only protect and maintain the marks and brands identifying their goods and services, but they also need to protect their goodwill from harm or diminishment through the use of unauthorized domain names.

As an example, if Company X markets a good sold under the brand WIDGET, and a third party makes an unauthorized registration of the domain widget.com, this could lead to consumer confusion and a loss of goodwill to Company X. The third party is often referred to as a "cybersquatter" which is an entity that registers a domain name similar to the mark of another for the bad faith purpose of selling the domain name to the rightful mark owner for a fee. This is a long recognized problem and one which the United States attempted to address in 1999 with the signing into law of the Anti-Cybersquatting Piracy Act (which may be found at 15 U.S.C.S. 1125(d)).

While Company X may be able to file a lawsuit in federal district court under the Anti-Cybersquatting Piracy Act, the Internet Corporation for Assigned Names and Numbers, or "ICANN," provides an alternative dispute resolution process that is generally far less expensive and is often an attractive option. ICANN is a private-sector, non-profit organization that is responsible for the management of Internet domain names. Because ICANN coordinates the assignment of all Internet domain names and IP address numbers, it can serve as a clearing house for these potential disputes.

Company X may file an arbitration proceeding challenging the widget.com domain name under ICANN's Uniform Domain Name Dispute Resolution Policy, known as "UDRP." The proceeding will be resolved in a matter of months, unlike a court action which will likely take years. The cost of the proceeding will be far less than a court action as well.

To prevail under ICANN's dispute resolution procedure, the complainant must meet certain prescribed burdens. Company X will need to demonstrate that: (i) it has legitimate rights in the WIDGET mark; (ii) that the registered domain is the same or substantially similar to the WIDGET mark; and (iii) that the third party registered the widget.com domain in bad faith. In a cybersquatting case, if the third party has attempted to sell the domain, this can be evidence of a bad faith registration (i.e., that the third party did not intend to utilize the domain for a legitimate business purpose, but instead merely intended to capitalize on the goodwill of others).

Most filing fees will be limited to around $1,500 for a single domain in dispute. Generally, from the date of filing a UDRP complaint a decision can be reached within 60 days. This is a terrific advantage for companies and individuals looking to resolve a bad faith domain name registration in a timely fashion.

Copyright

Historically, copyright protections have extended to printed material such as books, and multi-media properties, such as motion pictures. While copyright is the well-established right of an author to control the duplication and other uses of its original or copyrightable expressions, advancements in technology have raised issues about the means and extent of copyright protections in these new properties.

As a general statement of the protections provided, copyright only extends to original expression and not to mere ideas. The copyright arises at the time of creation and the author of the copyrightable expression owns the copyright in the work whether or not the copyright in the work is actually registered with the U.S. Copyright Office.

The Internet and the development of electronic communication created questions of how copyright law may pertain to such modern means of expression. As an example, copyright is a significant intellectual property right in the copyrightable expression found in video games. Likewise, copyright will extend to traditional works associated with video games, such as printed strategy guides for the games.

Under the Copyright statute (found at 17 U.S.C. 101 et seq ), employers own the copyrightable developments created by its employees. In addition, when a company uses independent contractors for copyrightable developments, the company can be the owner of the copyright for the development as a "work made for hire." However, to qualify as a work made for hire, the company and the contractor must enter into a written agreement (prior to the commencement of work by the contractor) confirming that the development is being created as a work to be made for hire, with the hiring company identified as the owner of the created development. For additional protection, it is also recommended that the hiring party require an outright assignment (in a signed writing) from the independent contractor.

Video games present some interesting copyright issues. The U.S. Copyright Office has developed specific rules for registering the copyright in video games that are considered software programs. The required filing steps are provided in Circular 61, which can be found at the web site of the U.S. Copyright Office (http://www.copyright.gov/circs/circ61.pdf).

Video games are essentially a combination of software programs and data such as art and graphics , which are often referred to as screen displays. The copyright exists in each element of the work, namely to the underlying code, but also to the extent copyrightable expressions are generated and displayed. The U.S. Copyright Office takes the position that a single registration of a video game has the effect of registering the copyright in the underlying code and the screen displays, although this may not be settled law. The filer may elect to file the video game as a single registration or may elect to file the code separately from the screen display images. Circular 61 provides instructions for the filer in regard to these two filing options.

As noted above, a copyright will arise at the time of creation, even without a formal filing. However, registration is advisable because registration affords the owner valuable rights under federal law.

A copyright owner should register the copyright within 90 days after first publication in order to receive maximum statutory protection. A video game owner should register the copyright in its video game so it may pursue claims against infringers under 17 USC Section 101. Registration is a pre-condition to suing under the copyright statutes. The current filing fee for registration is $35 to $45.

Source code is often proprietary trade secret material and cannot be disclosed or revealed without the owner losing not only competitive advantage but the very trade secret protection itself. This could be a deterrent to any copyright owner in pursuing registration protection. As a result, the U.S. Copyright Office has created special rules to deal with copyright applications dealing with trade secrets. In the video gaming industry, this typically involves (pursuant to U.S. Copyright Office guidelines) the filing of samples of the source code for the games being protected, with redactions of certain trade secret codes as necessary or appropriate.

Our firm began providing legal services in the video game area in 1991, and since that time has worked on hundreds of licensing and other video game related contracts as well as trademarks and copyright matters (with our work including dealing with the copyrights and trademarks of various well-known game titles, including, without limitation, DOOM , WOLFENSTEIN, and QUAKE ). The work has included the protection of copyright interests in video games, including working with federal government agencies such as U.S. Customs in the case of preventing the importation of illegal game copies into the United States.

First Amendment

Far removed from the practical, day-to-day practice of copyright and trademark as it pertains to video games and non-traditional industries is the work we have performed in the area of First Amendment. The cases on which we have worked, although involving important First Amendment protection afforded to video games as constitutionally protected speech, have also involved tort and other non-constitutional issues. For examples of some interesting cases in which our firm has provided representation, you may want to read the following: James v. Meow Media, Inc. , 90 F. Supp.2d 798 (D. Ky. 2000) (U.S. District Court Western District of Kentucky 2000) ; James v. Meow Media, Inc. , 300 F.3d 683 (6th Cir. 2002) (U.S. Court of Appeals 6th Circuit 2002); and Sanders v. Acclaim Entertainment, Inc. , 188 F. Supp.2d 1264 (D. Colo. 2002) (U.S. District Court District of Colorado 2002).

D. Wade Cloud, Jr. and James S.Patterson are Shareholders in the Dallas-based firm of Hiersche, Hayward, Drakeley & Urbach. P.C. They have more than 30 years of combined experience in the area of trademark and copyright law.More information about the authors and firm is available by calling (866) 240-5197 or visiting www.hhdulaw.com.

Please email the authors at wcloud@hhdulaw.com or jpatterson@hhdulaw.com with questions about this article.