United States: How Trade Dress Can Help Game Developers Level Up

As game developers continue to face both the threat of having their games cloned and accusations that they too are cloning games, it is increasingly important for developers to understand the safeguards that intellectual property law can provide. Knowing early on what protections IP law provides can ensure wise design decisions that can strengthen a brand and stop clones. This knowledge can also help game developers steer away from costly lawsuits that can easily be avoided, or better yet, defend against aggressive plaintiffs alleging infringement.

What is Trade Dress?

Trade dress protects a product's overall image, look, presentation, and packaging.1 The theory behind trade dress is to protect a company's reputation and goodwill by preventing competitors from trying to confuse consumers into thinking that the original company made or sponsored the competitor's game.2

Copyright, Patent, Trade Dress—What's the Difference?

Trade dress is different from other IP in four key ways. First, where copyright and patent rights exist at the time of creation and registration respectively, trade dress rights arise from a consumer's recognition of the trade dress as identifying who made the game.3 Second, trade dress rights can be unlimited in time, for as long as they are in use. Patents and copyrights have limited exclusivity.4 Third, trade dress rights do not cover functional elements – that is patent territory. Finally, trade dress does not require the "creative originality" that is required in copyright. Instead, trade dress protects the distinctive combination of elements such as colors, shapes, texture or graphics, and style in which a game is presented or packaged to the public.5

What You Need to Make a Trade Dress Claim

In order to claim trade dress protection for a game's look and feel, a plaintiff must prove three elements:

1. The trade dress is non-functional;

2. The trade dress has secondary meaning; and

3. There is a substantial likelihood of confusion between the plaintiff's and defendant's products.6

The nonfunctionality element highlights that trade dress is not about a customer's preference for a functional quality of a game. Instead it is about a consumer's recognition that a game's look is associated with a particular company that made the game.7

In determining functionality, four factors are weighed collectively: (1) whether the design yields a utilitarian advantage; (2) whether alternative designs are available; (3) whether advertising touts the utilitarian advantages of the design; and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.8 A developer asserting trade dress protection must, therefore, establish that a game's design does not yield a utilitarian advantage by demonstrating that "the product feature serves no purpose other than identification of the game developer."9 A developer must also identify alternative designs that offer the same functional features as the asserted trade dress. Alternative designs available to competitors ensure that a developer is not monopolizing a useful or aesthetically pleasing game feature.

Tetris Holding v. Xio Interactive is an example where a developer successfully protected its brand through trade dress.10 The owners of the Tetris game asserted trade dress rights for their "brightly-colored Tetriminos, which are formed by four equally-sized, delineated blocks, and the long vertical rectangle playfield, which is higher than wide."11 Although the defendant argued that these features were functional, the court found a valid trade dress because the color and style of the pieces were not related to the reason the game works, protecting the elements would not thwart competition, and there was an unlimited number of ways to design the game that would not affect the cost or quality.12

To establish the second element, "secondary meaning", a plaintiff must prove "a mental recognition in buyers' and potential buyers' minds that products connected with the mark are associated with the same source."13 In a recent case, Christian Louboutin successfully argued secondary meaning for his signature red soles in women's high fashion footwear.14 Louboutin's evidence included advertising expenditures, media coverage, sales success, consumer surveys, and his substantial investment in building reputation and good will.15 As a result, the court found that Louboutin had "created an identifying mark firmly associated with his brand, which, 'to those in the know,' 'instantly' denotes his shoes' source."16

Defeating a Trade Dress Lawsuit

Developers should also be prepared to defend their game against cloning accusations. A developer can first dispose of a trade dress lawsuit by arguing that the plaintiff has not adequately alleged the specific trade dress elements.17 A plaintiff must clearly state the specific elements that constitute the claimed trade dress; a vague description is normally not enough to support a claim.18

A defendant should also attack a claim by asserting that the plaintiff's trade dress is functional.19 That is, the claimed trade dress serves more than a source-identifying role and actually contributes to the mechanics or aesthetic value of the game. The defendant in Incredible Tech successfully defeated a trade dress claim by making this functional argument.20 The owners of the classic coin-operated video golf game, Golden Tee, claimed trade dress rights for various features including a control panel and track ball that was used to roll back and forward to complete a golf swing.21 Not surprisingly, the court agreed with the defendant and found no trade dress right because the features directly contributed to the mechanics of the game.

Finally, a developer can challenge the "secondary meaning" requirement by showing that the plaintiff failed to provide sufficient evidence that consumers associate the alleged trade dress with the plaintiff's brand. The court in Art Attacks, for example, rejected the plaintiff's advertising and consumer testimony evidence because he failed to show that his advertising efforts were actually successful in establishing consumer recognition of his brand.22

Key Takeaways

Here are just a few ideas on how developers can strengthen their game's trade dress:

  • Develop a theme using a specific color scheme and style across multiple games to establish the overall "look and feel" of your brand of games23
  • Add features, aspects, and designs that serve no purpose or function to the game24
  • Use a consistent design, style, shape, and color combination to package your game
  • Use your theme not just in the game but in your advertising too25

The more a developer consistently uses and develops its brand's theme, the more likely a court will find a trade dress right. Establishing a game's trade dress also helps build brand recognition with the consuming public.

On the other hand, if a developer is sued for trade dress infringement, the developer should look for ways to show that the plaintiff did not adequately allege all of the trade dress elements. A defendant can often dispute the nonfunctionality requirement by arguing that the alleged trade dress is related to the game's function, and thus is not protected.

There are numerous advantages to keeping trade dress in mind when developing your next game. The extra effort could translate into valuable design decisions that may add protection against potential cloning or help you stay clear of infringement accusations. Better still, it can set you apart from your competitors.

Footnotes

1 International Trademark Association, http://www.inta.org/TrademarkBasics/FactSheets/Pages/Trade-Dress.aspx (last visited August 1, 2016).

2 Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d, 1134 (N.D. Cal 2014).

3 Cf. Art Attacks Ink v. MGA Entertainment Inc., 581 F.3d 1138, 1146 (9th Cir. 2009) ("[e]vidence of use and advertising over a substantial period of time is enough to establish secondary meaning") (internal citations omitted).

4 Pedro I. Rencoret Gutierrez, Restricting Trade Dress Protection: The Case of Video Games, Social Science Research Network (May 20, 2013), http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2372899&download=yes.

5ArcSoft, Inc. v. Cyberlink Corp., No. 15-cv-03707-WHO, 2015 WL 9455516, at *7 (N.D. Cal Dec. 28, 2015); Int't Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993).

6Art Attacks Ink, 581 F.3d at 1145.

7Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786-87 (9th Cir. 2002).

8Id. at 1130.

9Apple Inc. v. Samsung Elec. Co., 786 F.3d 983, 992 (Fed. Cir. 2015).

10 Tetris Holding v. Xio Interactive, Inc., 863 F. Supp. 2d 394 (D. N.J 2012).

11 Id. at 415.

12 Id.

13 Id. (internal citations omitted).

14 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 226-27 (2nd Cir. 2012).

15 Id.

16 Id.

17 Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002).

18 Arcsoft, 2015 WL 9455516 at *9.

19 Arcsoft, 2015 WL 9455516 at *8 (citing 15 U.S.C. § 1125(a)(3)).

20 Incredible Tech, Inc. v. Virtual Tech., Inc., 400 F.3d 1007 (7th Cir. 2005).

21 Id. at 1015.

22 Art Attacks Ink., 581 F.3d at 1146-47.

23 See Arcsoft, 2015 WL 9455516 at *8.

24 See Tetris Holding, 863 F. Supp. 2d at 415-16.

25 2 McCarthy, supra note 8.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Sep 2018, Conference, California, United States

We're excited to introduce Women's IP Strategy, a 2-day conference that tackles both the IP, legal as well as broader career development obstacles, risks and rewards for women lawyers working in male-dominant industries.

2 Oct 2018, Webinar, California, United States

This CLE webinar will offer suggestions to litigators to help them comply with the new GDPR during e-discovery.

10 Oct 2018, Webinar, California, United States

For the past years, 3D printing has significantly revolutionized the business industry as it provides innovations and improvement to pre-existing processes.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions