[Editor’s Note: This is a guest post by David Bailey, a partner at Kauth, Pomeroy, Peck, & Bailey LLP.]
The saga of the Facebook hit game Mafia Wars has made the issue of intellectual property obvious to any serious social game creator. But given how these laws have developed in the rest of the gaming industry, many games likely contain intellectual property. This will gradually reshape social gaming.
In 2008, Mob Wars creator David Maestri — a developer at top social gaming company SGN — left to launch the game on his own. He was sued by SGN, and settled amicably: He owns the game but SGN has some rights. Then, he sued top social gaming companies, Zynga and Playdom, for creating quite similar games called Mafia Wars and Mobsters. Those cases were settled earlier this year. Meanwhile, these companies and many others have continued building mafia role-playing games and expanding them to other platforms, like the iPhone.
Today, social game developers are increasingly focusing on strategies to prevent imitators from luring away potential users.
A mixed IP history
Unfortunately, games inspired by the successes of others have plagued the entire industry since its inception and the courts have rarely intervened. This inability to prevent imitation, however, has led mainstream game developers to devise a number of successful strategies for preventing imitators from gaining a significant user base. More “traditional” strategies pioneered by console gaming developers are based upon copyright and trademark law, and are equally applicable to social games. Newer strategies are also emerging in the Massively Multiplayer Online (MMO) and social gaming industries that leverage innovation in underlying technical infrastructure as the basis for seeking patent protection for game features.
A great deal of experience in preserving the distinctiveness of a title was obtained in the arcade and console gaming space during the 80s and early 90s. Developers of successful games initially attempted to stop imitators by claiming violation of copyrights in the successful game concepts. However, the courts were persuaded that no copyrights existed in the game concepts under the scenes a faire doctrine — it prevents copyright in incidents, characters, or settings that are common in the treatment of a given topic. These rulings and subsequent affirmation by the courts have green-lighted imitation in a succession of titles including Asteroids, Street Fighter II, and Golden Tee. Even in the most egregious cases, where an imitator specifically set out to create a game so similar that users could switch without difficulty, the courts were willing to permit the imitation. Only the copying of distinct characters from a game was considered sufficient for the courts to intercede.
Starting a franchise
Console and arcade game developers frustrated in their attempts to prevent competition from imitators turned to releasing new titles tied to built-in audiences in hopes of rising above the noise and achieving commercial success. The majority of top-selling games on almost every console gaming platform are part of a series or franchise and many also include a tie-in to a television show, movie, comic book, sports league, or celebrities. The current notable exception is the Wii, where the platform itself has been disruptive. Accordingly, Wii game developers, much like social game developers, are enjoying a window in which success can be achieved via an innovative game concept. The prediction can be made, however, that as the market for Wii games and social games becomes increasingly crowded franchises and tie-ins will play a larger role in game success.
Turning a successful game into a franchise involves a title becoming recognizable enough to drive engagement with future titles. Consequently, branding is an important component of establishing a franchise. Trademark law grants powerful rights in brands that are distinctive. A game with a distinctive name or characters more readily lends itself to becoming a franchise, because trademark rights in the name or characters can be used to keep others from offering games using a similar name or characters. The ability to protect the distinctiveness of the title is ultimately more likely to result in a user playing the next title in a series instead of being lured away by a title with a similar sounding name, and look and feel.
When the broader entertainment industry took a greater interest in video games as an additional way to derive revenue from its intellectual properties, game developers were provided with opportunities to adapt television shows, movies, and comic books into video games. Developers were also able to obtain exclusive rights to use the likenesses of athletes in professional sports leagues. Many states grant individuals publicity rights to control the use of their name, signature, voice, or likeness in advetising. Securing an exclusive license to copyrights or publicity rights proved extremely lucrative. As one example, PGA Tour Golf was originally developed to imitate the game play of Golden Tee. However, the developers of PGA Tour Golf secured the rights to feature golf courses and the likenesses of professional golfers from the PGA tour. Tiger Woods PGA Tour has gone on to become an extremely successful franchise for EA Sports. Social game developers may find that the presence of existing licensing agreements with console game manufacturers complicates their ability to access the copyrights, publicity rights, and associated trademarks that have traditionally been licensed to the video gaming industry. However, opportunities exist where social game developers can form partnerships within the video gaming industry or exploit tie-ins to content that is not already licensed either because the content is too new or was unsuited to adaptation for console games.
What about patents?
Patents have not traditionally played a role in preventing imitation of video games. While hardware manufacturers held many patents, game developers submitted very few applications as their games were largely tethered to platforms created by hardware manufacturers. The landscape began to change with the advent of MMOs and to a lesser extent Internet-connected console gaming systems.
Starting around the 2003-2004 time frame, MMO developers began to realize the potential for obtaining patents with respect to features within their MMOs. The implementation of many of the features involved overcoming technical challenges that had not previously been encountered, which meant that the solutions to those technical challenges and the resulting game features were candidates for patent protection. Delays inherent to the patent system have meant that, to date, very few of the patent applications have actually issued.
Assuming the Patent and Trademark Office grants the applications at some point, the developers holding the patents will be at a significant advantage with respect to their competitors and the overall effect will likely be to significantly raise the barrier to entry in the MMO space. A similar opportunity exists for social game developers to “own” features of their games. A new feature that could only be implemented by overcoming a technical challenge is, more often than not, capable of receiving patent protection. The decision to seek patent protection should hinge upon whether securing exclusive rights to the feature preserves a core part of the distinctiveness of a particular title’s game play. Unfortunately, the ability to obtain patents in a space means that there is a greater risk that social game developers will become targets for patent trolls as has been the case in the MMO space. Therefore, maintaining accurate records and code base backups to preserve prior art today could be vital to proving the invalidity of someone else’s patent at some point in the future and avoiding a costly lawsuit.
Ultimately, the history of the video gaming industry is one of innovation and imitation. While the copyright laws continue to permit the imitation of successful social games, the developers of those games should seriously consider imitating the manner in which copyrights, patents, and trademarks have been used in other contexts to build successful game franchises.
David Bailey is a founding partner of KPPB, a California-based intellectual property boutique law firm that services a global clientele across a broad range of industries and technologies. David has extensive experience in representing clients in all aspects of the video game and digital video industries and his current practice focuses on developing IP strategies for rapidly growing start-up companies including social gaming, social application, iPhone and Android developers. David holds degrees in electrical engineering and law and is admitted to practice in California, New York, and before the United States Patent and Trademark Office.