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Dr Michaela MacDonald
Lecturer, The School of Electronic Engineering and Computer
Science
Queen Mary University of London
Interactive
Entertainment
Law 4
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Trade Marks – Overview
• Purpose
• give an indication of origin
• give an indication of quality – for example Tesco Value, Rolls-Royce
• advertising function
• investment – it can be sold, assigned, licensed, and be subject to security
• Justification
• the basic function is to denote the origin and quality and to reward the
manufacturer who consistently produces goods of a particular quality
• the monopoly granted can be unlimited, Bass plc registered a mark in 1876,
the first mark to be registered in the UK and it is still valid today
• personal property right
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Trade Marks – Subject matter
A trade mark may consist of any signs, in particular words, including
personal names, or designs, letters, numerals, colours, the shape of
goods or of the packaging of goods, or sounds, provided that such signs
are capable of:
a) distinguishing the goods or services of one undertaking from those of other
undertakings; and
b) being represented on the register in a manner which enables the
competent authorities and the public to determine the clear and precise
subject matter of the protection afforded to its proprietor.
(Directive 2015/2436 (Trade Mark Directive), Article 3)
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Trade Marks and Video Games
• TMs include names, logos, colours, sounds, shapes, slogans, symbols
or non-traditional signs
• TM considerations are relevant regarding:
• Protection of assets connected with both physical and digital products and
services
• Trade mark infringement claims to pursue creators and distributors of
emulators and ROMs, cheat software, or video game clones
• The use of third-party TMs within video games, with or without authorisation
(under the doctrine of the First Amendment, US, whereby video games have
the same free speech protections as other “expressive works” such as films,
books and music)
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EUTM Application Number 017282203
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J.W. Spear v Zynga (UK)
(Scrabble v Scramble with Friends)
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Trade Marks and Free Speech (US)
Brown v. Entertainment Merchants Ass'n, 131 S.Ct. 2729 (2011) – the
Supreme Court held that video games have the same free speech
protections as other “expressive works” such as films, books and music
and thus invalidating a California statute that prohibited the sale of
violent video games to minors
• Rogers test (Rogers v. Grimaldi), determines if an artistic work is
protected under free speech by looking at whether:
1. the use of another's trademark in an expressive work has some “artistic
relevance” to the underlying work; and
2. the use “explicitly misleads as to the source or the content of the work.”
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The Use of Third-party TMs (US)
E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.
• Trade mark protection is limited to confusion regarding the origin of a
product, the use of a trade mark within a video game does not
amount to consumer confusion
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Design Law – Overview
• Registered and unregistered designs (UK / EU), trade dress and design
patents (US)
• Protects the appearance of a product (both physical and digital), from
static icons to dynamic animated characters, interfaces, virtual
spaces, etc. such as :
• Box design
• 3D models and environments
• GUIs and icons
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Registered Designs
• Legal requirements:
• It must be novel
• It must have an individual character
• Designs do not protect features of appearance of a product which are solely
dictated by its technical function
• Significance – potential protection against cloning
IELR 3.1: Rosie Burbidge, ‘A lost destiny or world of warcraft? Unlocking the hidden power of designs’
IELR 4.2: Emmanuelle Sarlangue, ‘Registered Community designs in the video game industry: a neglected yet
potent tool’
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King (Candy Crush Saga)Nintendo (Mario Kart)
(Diep.io)
Supercell (Boom Beach)
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Confidential Information / Trade Secrets
• Most legal systems do not recognise trade secret as exclusive rights as
such, but rather a specific legal remedy designed to protect the
secrecy put up by the rightsholder, which is based on different legal
principles, such as unfair competition, general principles of tort law,
contract law or breach of confidence in common law jurisdictions
• The Trade Secret Directive establishes a minimum standard of protection
• It specifically states that trade secrets are not considered intellectual property
rights, which also precludes the application of the Enforcement Directive
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Trade Secrets
• Defend Trade Secrets Act (DTSA) 2016 US
• Directive 2016/943 (Trade Secrets Directive) EU
• Objective is to harmonise the legal framework in order to boost innovation
and competitiveness, minimum standard
• Article 2(1) defines trade secret through the following requirements:
• is secret – in the sense that it is not (as a body or in the precise configuration and
assembly of its components) generally known among or readily accessible to persons
within the circles that normally deal with this kind of information
• has commercial value because it is secret
• has been subject to reasonable steps (under the circumstances) to keep it secret by
the person lawfully in control of the information.
• Oculus v. ZeniMax
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Rights of Publicity
• A property right that protects against the misappropriation of a
person’s name, likeness, or other indicia of personal identity – such as
nickname, pseudonym, voice, signature, likeness, or photograph – for
commercial benefit
• US
• State law level, statute or case law
• Rogers test, transformative use analysis
• Outside US
• Personality and image rights, different legal regimes
• Related protection: trade marks
• Related claims: copyright claims, privacy and defamation claims
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Kirby v. Sega of America [Court of Appeals,
Second District, 2006]
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No Doubt v. Activision [Court of Appeal, Second
District, 2011] [settled in 2012]
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Ryan Hart v. Electronic Arts [3rd Circ, 2013]
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Lindsay Lohan v. Grand Theft Auto V
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Key Points
• Managing the specifics of video games presents a real challenge when
it comes to IP protection
• From an IP law perspective, numerous aspects of video games remain
unclear, which can cause problems for video game developers,
publishers, and even players
• Each type of IPR plays a specific role in the overall business and IP
strategy and it is important that stakeholders carefully consider all
aspects of protection, management and enforcement
• Commercialisation = ownership of your assets + access to third-party
assets + IPRs + licensing
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In-class Exercise
• Work together in small groups of 3-4 students.
• Imagine you are the legal team in an established video game company.
• The company is planning to launch a new feature, which allows users to
purchase NFTs as part of the gameplay, that represent known brands,
products and celebrities. Consider the legal implications.
1. Nike Air trainers
2. Lamborghini Aventador
3. Marta Viera da Silva (Brazilian footballer)
4. Kim Kardashian’s clothing line SKIMS
5. Apple logo
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Thank you!
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