IP AND VIDEO GAMES


agreements with users and how the modifications interact with the game itself.


“IT IS CHEAP AND EFFECTIVE INSURANCE FOR GAMES PLATFORMS TO HAVE NOTICE AND TAKEDOWN PROCEDURES FROM THE DMCA LISTED ON THEIR WEBSITE.”


At the same time, such strong agreements strike to the heart of another major IP issue facing publishers whose games include user-generated content: what happens when content infringes third party rights?


In the US, there are three types of secondary liability (other than for direct infringement)— contributory, vicarious and inducement—which publishers can incur for copyright infringement. Each type of liability could arise for a publisher, says Radcliffe, but claims are most likely to be asserted when platforms are “leveraged to make money”.


also potentially with respect to third parties who are bound by the same terms of service.”


But, she says, the game owner could use these terms of service to enforce its rights, saying any content created on the game is solely for the purpose of the game. In effect, while the user may ‘own’ the content, that ownership cannot be transferred beyond the barriers of the game.


“Te publisher would probably say ‘you, the creator, would be giving us a licence back to use whatever you create in connection with our game,’” she says.


For publishers, however, this approach could be a flimsy one if the terms of service do not set clear limits on the rights granted to users.


“If you want to walk into court and say ‘we have this licence’, that’s a hard argument to make if you’re allowing people to create content without a clear agreement as to what ‘ownership’ means,” Kayser says.


Ed Komen, partner at Sheppard Mullin Richter & Hampton LLP, says that while game publishers can try to regulate potential ownership battles with their terms of use agreements, nobody knows how a challenge to ownership would play out in court.


“Here you are talking about maybe hundreds of thousands of people creating their copyrighted works and adding them to the game-playing universe. When somebody adds something to one of these online role-playing games that might be copyrightable, are they contributing


14 Trademarks Brands and the Internet


a separate work or are we engaging in a jointly authored work, in which, in theory, everyone will be able to claim some rights?


“I don’t think anybody has the answers.” Tere is


virtually no case law in this area,


making the ownership question a tricky one to answer. But, says Komen, there may be a simple answer to explain the lack of litigious behaviour, a theory which may continue to hold weight in the future.


“Most game players are not concerned about copyright. Tey just want to play the game, not create content, and don’t want to be bothered by copyright and trademark lawyers. And those making the games hope people stay within certain general boundaries; if they do, a lot of the questions raised stay academic.”


Tere may be nothing for game makers to worry about.


Tis may be sound theory, but video games publishers are increasingly encouraging users to become more creative and visionary, allowing them to push the limits of what it means to ‘play’ a game. Te virtual world is fast-evolving, so who is to say that more and more avatars won’t step out of the virtual world, attempt to monetise their brands in the real one and even challenge a publisher in court?


While the answers remain hard to come by, in the meantime one option for publishers, says Mark Radcliffe, partner at law firm DLA Piper, is to think thoroughly about how they structure


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Fortunately, US law has provided the Digital Millennium Copyright Act (DMCA), which affords certain safe harbours to online service providers (which some games publishers can be classed as) facing liability for copyright infringement. Falling into this safety net oſten depends, however, on showing that you strive to take down any infringing content when notified about it.


“It is cheap and effective insurance for games platforms to have notice and takedown procedures from the DMCA listed on their website and, more importantly, to make sure they have the capability to remove infringing activity,” Radcliffe says.


“If you can’t take things down, over time you’re going to run into unhappy copyright owners who are going to sue you.


“By and large however, copyright owners are more worried about ending the infringement than extracting their pound of flesh unless they believe you are building your business on infringement,” he adds.


Dave Anderson, counsel at Edwards Wildman Palmer LLP, says the DMCA provides “pretty good protection against copyright infringement claims arising from user-generated content”, adding that while there is no DMCA equivalent in US trademark law, takedown notices can also be used in trademark disputes.


Anderson, who previously worked at games publisher THQ, adds: “Game publishers will generally pull things down if there is a takedown request. I haven’t seen anyone really press the trademark issue and sue a publisher or site where the users are generating the content. It seems as though sites are relying on the DMCA even though it really applies only to copyright law.”


But there have been a number of cases, www.worldipreview.com


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