How to protect your game from cloning? — VERSUS.legal column

Nika Vartanova, lawyer VERSUS.legal

To better understand the legal aspects of cloning games, we will decompose an abstract game into two “elements” that can be copied by another developer:

• name of the game;
• look and feel games (graphics, plot and game mechanics).

We are struggling with copying the name of the game

Cloning a name is the easiest way to get to the top of search results and force the user to download a clone game by mistake.

However, it is just as easy to protect the name of your game from such unfair use. It is enough to register a trademark. The presence of a trademark will allow you to block copies that use the same or very similar name to mislead users.

What should you first pay attention to before registering the name of the game as a trademark?

1. The name of the game should be “fantasy” and not refer directly to the games. This means that the name should not be the usual one to describe the genre of the game – like, for example, “farm” or “shooter”. Or should not consist only of a pair of letters or numbers. This name, most likely, will not be remembered by users.
2. The name of the game must be original. It should not be protected as someone else’s trademark on the same territory. It is important to note here that a trademark is protected only in the countries in which it was registered. Therefore, if a trademark exists, for example, in Russia, there are no obstacles to registering the same trademark in the UK (this rule applies in most cases, but there are exceptions – see the next paragraph for this).
3. The name of the game must not be a copy of someone’s commercial designation or the so-called “unregistered trademark” – a designation that is used as a trademark, but has not yet been registered as a trademark. For example, if someone on the market has been using such a name for a long time, then the absence of a trademark does not mean that the registration of your trademark cannot be effectively challenged.

Protecting the name of the game with a trademark – FAQ

• When is it better to apply for trademark registration?

As soon as possible. If your game has a unique name that will surely be remembered in the user environment, then it is better to “fix” it for you before the release. So the entrepreneurs-imitators will not apply for trademark registration before you.

• In which country to register a trademark?

You can first register a trademark in “your” country, and then extend its protection to other important countries in terms of coverage using the Madrid Trademark Registration System. Or initially apply for trademark registration in several countries.

More information about trademark registration in Russia can be found here, and around the world – at this link. State registration sites: in Russia, Ukraine and Belarus.

• What if someone else applies to register my name before me?

Unfortunately, this is possible. And if the registration of the sign is successful, there is a risk that you will already be the violator.

But you can fight. If the application is under consideration, you can submit your objections (the “opposition” procedure). This is what Sony did in relation to the application for the trademark “PS5” in India. It was filed on October 29, 2019 by an individual – three months before Sony decided to do the same. Today, the application is in a contested state and is displayed as “Contested”.

But even if the sign is registered, not everything is lost. For example, if the copyright holder does not use this designation for more than three years, the trademark can be revoked in court for non-use. For example, Microsoft did this with respect to the Minecraft sign. The corporation did not have time to register the sign in Russia – it was overtaken by a company from Yekaterinburg in 2014, but it did not use the designation. As a result of the court proceedings, the protection of the Minecraft trademark was prematurely terminated in respect of Class 25 goods and Class 41 services (case No. SIP-853/2020).

But even if the mark is used, there is a chance to invalidate the registration of the mark if it was made in violation of the requirements of applicable law. For example, Rospatent recently invalidated the registration of the Lord of War trademark at Sony‘s request, as it resembles the well-known brand and trademark of God of War and may mislead consumers about the game manufacturer.

We are struggling with copying the “heart” of the game – graphics, plot and game mechanics

The problem with these three elements is obvious. In most cases, graphics, plot and game mechanics cannot be registered as trademarks (unless we are talking about original characters or other graphics that should be protected by trademarks, as, for example, the copyright holder of Angry Birds Rovio did).

But this does not mean that the law cannot offer effective ways to protect such elements.

Graphics, plot and game mechanics are protected by copyright, which gives the author of a creative work or another copyright holder the exclusive right to make copies, create derivative works and use such work in many other ways.

If these elements of the game are protected by copyright, which does not even need to be registered, then what is so difficult in the fight against clones?

The main problem lies in the differentiation of the idea and the form of its expression. Now let’s explain what this means.

In most countries of the world, copyright protects only the specific expression of an idea, its form, but not the idea itself. And this is quite reasonable, since the main function of copyright is to promote creativity. If it were possible to monopolize the genre and prevent all other authors from creating similar works using the same images, this would deprive authors of the opportunity to draw inspiration from other works or create similar works themselves. Since this would be contrary to the very purpose of copyright protection, courts in many countries reject copyright infringement claims based on the similarity of concepts or ideas underlying the two works.

At the same time, it is quite difficult to prove that the clone game violates the copyright of the original developer, and not only uses similar images and similar elements inherent in the genre itself. This problem is especially typical for game genres that are limited in their visual expression.

Let’s look at some examples.

In the decision in the case of Nintendo v. Elcon (1982) The U.S. District Court in Michigan compared Nintendo’s Donkey Kong game with its absolute clone Crazy Cong and found that in cases where two games are “basically identical”, there is always copyright infringement, regardless of the creative level of the original game.

However, not all cases are so obvious.

A year earlier, the U.S. District Court in Maryland (Atari, Inc. v. Amusement World, Inc., 1981) compared the Asteroids game with its Meteors copycat. Despite the fact that the court identified 22 aspects in which the games are similar or even identical, it ruled that Meteors does not violate the rights of the Asteroids developer. Meteors is only adopting the idea behind the Asteroids game, which, as we discussed above, is not protected by copyright.

The Court pointed out that:

The main conclusion that the gaming industry has drawn from this case is that copying the idea of a game is not a violation. And even if there are significant visual similarities between the games, the court can still dismiss the claim if it finds that there are some differences between the games in the form of expression of the same idea.

However, it is interesting that in 2012, the US District Court in New Jersey issued a completely opposite decision (Tetris Holding, LLC v. Xio Interactive, Inc.) in a very similar case and defended the idea of the game “Tetris”, despite the fact that the copycat game had different graphics, that is, different “the form of expression”. The court ruled that the developer of the game Mino violated the copyright of the Tetris developer, because he copied the same 7 Tetris figures, used the same board dimensions (10 x 20), the same movement of the figure on the board and the same visual cues – horizontal row lines, “ghostly” figures and a preview of the figures.

The above US judicial practice shows that copyright law is not so simple. Similar situations can be assessed as a violation in some cases and as a legitimate use of the idea of the original game in others.

There have also been such cases in our practice. For example, the recent case of a clone of the indie game Worldbox. You can read more about how the case developed in the article by Maxim Karpenko, the author of the game. As a result, the clone application was removed from the store, and now there is a struggle for trademarks under the opposition procedure.

How do I file a complaint about the removal of a clone game to the app store?

The easiest way to deal with such clones is to file a “notice” about the removal of the game to the legal service of the store or online platform in accordance with the DMCA – the US copyright law in the digital age. One of the key provisions of the DMCA concerns the liability of online service providers for copyright infringement by their users. This law protects app stores from liability for the offenses of their users if they comply with certain procedures prescribed by the DMCA. Therefore, the platforms actively comply with the copyright holders’ demands to remove content that violates their copyrights.

The removal procedure in accordance with the DMCA is as follows:

1. The copyright holder sends a notification to the platform. It must meet certain requirements set by the DMCA. As a rule, platforms have special forms with all the necessary details that are required by the DMCA. The developer only needs to fill out everything carefully and add legal arguments. Most often, a description of the violation is assumed, you can add screenshots of the original and the violator so that the similarity is more visual, describe all episodes of violations. If there is confirmation that users are misled by a similar design, it’s great to attach them as well (for example, screenshots of a page with competitor reviews where users swear at scum).
2. After that, the platform has time to evaluate the notification.
3. Next, the platform informs the alleged violator about the notification and waits for his response.
4. After receiving a response from the alleged infringer, the platform can either remove the copyright infringing material or refuse to take action if it agrees with the arguments of the alleged infringer.
5. After that, the copyright holder has the opportunity to file a lawsuit in court. If he wins the case, the copyright infringing content will be removed.

In this procedure, the platform acts as a quasi-judicial body. It can either remove the material if there are serious grounds to believe that there is a violation, or refuse to remove the material without a decision of the State court.

However, the owner of the remote game can appeal such a decision of the platform. But since the legal costs of filing a lawsuit in the United States are very high, most likely, the competitor will not be interested in going to court.

Recommendations: how to prepare for the fight against clones

1. If the name of your game is unique and can be used by competitors to steal your user audience, you should register it as a trademark. This will avoid a situation where a copycat decides not only to use the name of your game to mislead users, but also to secure it for himself in order to deprive you of the opportunity to use your own name.

2. To prepare for DMCA complaints and potential litigation, you must have proof that you own the copyright to the game. Depending on your country and the applicable law, you should make sure that:

• all the requirements of the legal regime for employment are met (for example, you have employment contracts with your employees, as well as internal documents defining what your employees create and how they transmit the results of their work to you as an employer);
• you have properly executed contracts with outsourcers, which stipulate that all copyrights to works created on your assignment are transferred to you.This will help to prove that you are the sole copyright holder of the copied game in case of a dispute in court.

3. Finally, you may want to consider using private registration services such as WIPO Proof. They create evidence that a particular job belonged to you at a certain point in time. Despite the fact that such registration is not a state registration, it creates a rebuttable presumption that you are the copyright holder of the game. This type of evidence can also be useful in the case of a trial.