Tags: card game, card games, china, copyright, copyright protection, videogame
add a comment
Discussion: The plaintiff in DaVinci Editrice v. ZiKo Games (S.D. Tex. 2016) published Bang!, a role-playing card game with Wild-West themes that became a world-wide success. Bang! players are assigned one of four roles – Sheriff, Deputy, Outlaw or Renegade – each with its own “winning condition” (e.g., the Sheriff wins by outliving the Outlaws and Renegades). Each player also gets assigned a card evoking a familiar Wild-West character (e.g., Calamity Janet) with its own unique ability and 1-to-5 “life points.” Players also draw “weapon cards” (enabling them to reduce competitors’ life points) and “mount cards” (enabling them to gain distance from competitors, making them harder to attack).
One defendant, Yoka Games, based in China, produced the card game Legends of the Three Kingdoms, distributed in the U.S. by the other defendant, ZiKo Games, LLC. Despite the different setting (Ancient China) and accompanying different artwork, the four roles in LOTK – Monarch, Minister, Rebel and Turncoat – had the same abilities, functions, goals and winning conditions as the comparable roles in Bang!; players were subject to nearly identical rules of play; players drew Chinese hero cards with similar abilities and life points as the Bang! character cards; and similar action cards were used.
Notwithstanding procedural wrangling over the lay vs. expert status of a witness and arguments about the significance of various similarities, this was an easy summary judgment for the Court: “Bang!’s characters, roles, and interactions are not substantially similar to those in LOTK. The aspects of the roles, characters, and interactions that are similar are not expressive, and aspects that are expressive are not substantially similar. ZiKo and Yoka are entitled to summary judgment of noninfringement.”
An Interlude for Copyright Aficionados: The Court’s reasoning begins with the black letter principle that copyright protects expression, not ideas. Therefore, “Copyright does not protect game rules because they fall within the section 102(b) exceptions for an ‘idea, procedure, process, system, method of operation’.”
On the other hand, the Court acknowledges that “courts have found expressive elements copyrightable, including game labels, design of game boards, playing cards and graphical works.” The present dispute focuses on the roles and characters and their interactions, which are very similar in both games. Thus, the key issue is: Are the characters’ similar interactions “unprotectable game play,” as the defendants argue, or “protectable expressive content,” as the plaintiffs argue?
The Court begins by distinguishing two types of games: (1) those like books and movies, which have a progression of events (plot) and developed characters (who interact following a script) “that make the game expressive” (e.g., The Legend of Zelda), and (2) those like NBA games, which consist of “loosely prescribed progression” (“teams trade offensive possessions over four quarters”) between players with assigned roles (guard, forward, center) but without predetermined interactions, which are therefore neither expressive nor copyrightable.
Bang!, says the Court, “has no specific plot or detailed information about the characters that tells us what these characters will do or how they will interact with other characters.” Rather, like basketball, Bang! has created a number of roles, defined their alignment with and opposition to other roles, and created rules for their interaction, but has not created a scripted or detailed performance for each game. Thus, Bang! is more basketball than novel, and its character interactions are not protected by copyright.
The Court also addresses character copyright and explains why LOTK wasn’t infringing, despite the near-identity of the 4 main roles (excluding their look and labels). The answer lies in the “distinctiveness” requirement: To earn copyright protection, characters cannot be stock, generic or indistinct, but must embody enough original expression to attain copyrightability. However, “Bang! has no specific plot or detailed information about the characters… LOTK’s alignment of roles tracks Bang!’s, which in turn was drawn from the general alignment of stock characters in ‘spaghetti Westerns.’”
The Court also considers and rejects the plaintiff’s argument that, even if the characters themselves are not copyrighted, their special abilities may be: “The Bang! characters’ abilities are largely drawn from stock-character abilities. Like a punch or kick in a karate game, Bang! characters’ abilities are common in games in which the object is to kill the other players.” Moreover: “Even if the Bang! characters’ abilities were not stock, they are still not expressive because they are essentially rules of game play.”
A similar conclusion applies to the plaintiff’s key claim, namely, that the Bang! characters’ interactions via the game rules are themselves subject to copyright. But that argument fails here for the same reason it failed at the higher level of character copyright: “Bang! characters do not have delineated personalities, temperaments, back stories, or other features typical of characters in movies and books that contribute to making those characters’ interactions protected.”
Conclusion: The Court was mindful that game rules are generally not copyrightable, a principle that anchored its holding in favor of the defendants. However, the Court did recognize at least three game elements that could potentially give rise to copyrights:
- expressive graphics or other original visual elements;
- a relatively fixed progression of themes, dialog, mood, setting and character; or
- well-delineated characters themselves.
Still, if a character (whether in a novel, film or videogame) is not sufficiently distinct to be copyrightable – which may be because it is a “stock” character defined only by generic traits, or because it is a positional player guided only by rules of play – then its interactions with other characters will not be copyrightable, unless these interactions are at least partly fixed or scripted.
In short, despite displaying some of the artistry of its namesake, DaVinci’s characters (and their traits and interactions) were too stock and generic to be copyrightable … and thus its suit failed to produce more bucks for its Bang!.
For more information on this topic, please contact Howard Zaharoff.
MBBP’s Howard Zaharoff Will Be a Panelist in Boston Bar’s 17th Annual Intellectual Property Year in Review 12/19/2016Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, MBBP news.
Tags: attorney, boston bar association, copyright, copyrights, Intellectual Property, ip, IP Attorney, IP Litigation, law review, panel, patents, trade secrets, trademarks
add a comment
MBBP’s Howard Zaharoff will be a panelist at this year’s Boston Bar Association Intellectual Property Year in Review, one of Boston’s premier annual IP events. Howard will be discussing some of the most important copyright developments of the past year, with his co-presenter, Attorney Lucy Lovrien.
This annual panel has been organized for intellectual property specialists to discuss the latest developments with practitioners in the field. Howard and his fellow panelists will discuss patents, copyrights, trademarks, and trade secrets, and the event will close with a networking opportunity for all attendees.
The event is scheduled for Thursday, January 26th, 2017 from 3:00 PM to 6:00 PM at the Boston Marriott Long Wharf. See the event details for more information.
Copyright Alert: New Copyright Office Electronic System to Register Designated Agents Under the DMCA 12/02/2016Posted by Morse, Barnes-Brown Pendleton in Intellectual Property.
Tags: copyright, copyright infringement, copyright office, digital millennium copyright act, DMCA, safe harbor
add a comment
Effective December 1, 2016, the US Copyright Office rolled out a new electronic system for the online registration of designated agents under the Digital Millennium Copyright Act (“DMCA”). Consequently, all online service providers who want the benefit of the safe harbor against copyright infringement claims are required to register under the new electronic system or, if they’re already registered under the old paper system, to submit fresh designations under the electronic system by December 31, 2017. Thus, agents who previously filed hardcopies of their DMCA agent designations must now do so again online, within the next 13 months, in order to keep the benefits of the safe harbor.
To learn more about the DMCA and necessary compliance, read the full alert.
Privacy & Data Security Video: Privacy & Data Security Issues for Service Recipients and Service Providers 11/01/2016Posted by Morse, Barnes-Brown Pendleton in Client News, Intellectual Property, Privacy and Data Security.
Tags: consumer privacy, Data Security, privacy, Privacy and Data Security, privacy laws, service providers, service recipients, Video, youtube
add a comment
In our eighth and final Privacy & Data Security video clip, MBBP attorney Faith Kasparian discusses how companies sharing information with third-party service providers can create liabilities, both because many data breaches arise from third-party access, and because companies fail to oversee these third parties as required by law. Faith will guide you through a few key points relevant to both service recipients and service providers.
Tags: cloud, cloud computing, cloud customer, cloud provider, cloud storage, Data Security, privacy, Privacy and Data Security, privacy laws, Video
add a comment
In our fifth Privacy & Data Security video clip, MBBP attorney Howard Zaharoff identifies the legal and practical measures that both cloud providers and cloud customers should take, including the critical terms each should require in their contracts.
Tags: data privacy, data protection, Data Security, Intellectual Property, m&a, M&A transactions, privacy, Privacy and Data Security, privacy laws, Video, video clip, youtube
add a comment
Watch Attorney Howard Zaharoff in New “High-Level Overview of U.S. Privacy/Data Security Landscape” Video 09/12/2016Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property, Privacy and Data Security.
Tags: data privacy, data protection, Data Security, privacy, Privacy and Data Security, privacy laws, Video, video clip, youtube
add a comment
For the next several weeks we will be releasing a series of eight videos of our attorneys discussing key privacy and data security considerations. In our first video, Howard Zaharoff discuss the privacy and data security landscape, and provides an overview of the complex patchwork of state and federal laws governing privacy and data security in the United States.
You won’t want to miss our second video about Privacy in M&A Transactions! Stay tuned and subscribe to our YouTube channel to ensure that you don’t miss any posted videos!
Tags: commonwealth, entrepreneur, entrepreneurs, grant, innovation, massachusetts, massachusetts technology collaborative, MassDevelopment, metrowest, military veterans, startup, startups, technology incubator, techsandbox, veteran, Veterans
add a comment
Morse, Barnes-Brown & Pendleton sponsored organization and client, TechSandBox, announced its partnership with MassDevelopment and the Massachusetts Technology Collaborative (“MassTech”) in the launch of a new program for military veterans. The Military Veteran Entrepreneurs in Technology program (“VET”) is for veterans who are starting and growing new ventures in innovation-focused sectors and will provide support via mentoring, networking, and advising, among other services.
Through its involvement with VET, TechSandBox will supply veterans with the necessary resources to create and foster successful startups. Specifically, TechSandBox will document the needs of the veterans, deliver programming for entrepreneurial development, and provide a network of other entrepreneurs in which the veterans can interact.
The VET will serve veterans in the MetroWest region and the Commonwealth. The program will begin with a pilot phase, which will last for 18 months. MassDevelopment and MassTech provided a combined grant of $53,101 for the pilot program. For more information about the program, view TechSandBox’s website.
TechSandBox is a technology incubator for innovation-driven companies. Its mission is to accelerate the success of science and technology entrepreneurs. MBBP is proud of its client’s community-focused approach and the commitment to veterans through this new program.
Tags: biomedical, biotech, biotechnology, Diabetes, diabetes cure, disease, Harvard, insulin, Semma Therapeutics, stem cells, technology
add a comment
A group of Boston-area health institutions, known as the Boston Autologous Islet Replacement Program, are teaming up to develop, test and deploy stem cells to cure diabetes. The group includes the Harvard Stem Cell Institute, Brigham and Women’s Hospital, the Joslin Diabetes Center, Dana-Farber Cancer Institute and Semma Therapeutics.
The innovation began when Doug Melton, Co-Director of Harvard Stem Cell Institute and Co-Founder of Semma Therapeutics, developed a way to turn embryonic stem cells into insulin-producing beta cells without needing to put the cells into mice to mature. After this discovery, he knew he had to get these beta cells into humans but that it was going to take a group with the proper qualifications.
Melton explains, “No one institution anywhere has the expertise and technical abilities to make this kind of clinical trial possible, but in the unique Harvard biomedical ecosystem, we are able to bring all the necessary expertise and infrastructure to bear.” This new organization has the goal of testing the created beta cells in human patients within three years.
Congratulations to our client Harvard on these exciting new developments! For more information, read the full article.
Interview with MBBP Client Valeritas Included in Wall Street Transcript Medical Devices Report 08/09/2016Posted by Morse, Barnes-Brown Pendleton in Client News, Intellectual Property, Life Sciences, Medical Devices.
Tags: Diabetes, insulin delivery, Intellectual Property, ip, John Timberlake, medical device, medical devices, medical technology, patent, type II diabetes, V-Go, Valeritas, wall street transcript
add a comment
The most recent Wall Street Transcript Medical Devices Report includes an interview with Valeritas, Inc.’s CEO, John Timberlake. Timberlake discusses in detail Valeritas’s V-Go Disposable Insulin Delivery Device. The V-Go is a wearable basal-bolus insulin delivery device that allows patients to deliver insulin at a continuous preset basal rate, with bolus delivery as needed. The V-Go has been cleared for use in the United States and in Europe. The fact that V-Go is a wearable product with scheduled insulin delivery enables patients to more easily go about their daily routines without having to stop to deliver insulin, and also allows them to discreetly deliver insulin during mealtimes without drawing attention to the act.
Valeritas is a commercial-stage medical technology company that develops new Type II diabetes technology products aimed at improving the lives of patients with Type II diabetes. For more information about Valeritas and its V-Go product, read the full interview with The Wall Street Transcript.
Good News for Patent Holders 07/22/2016Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
Tags: HTC America, HTC Corporation, Immersion Corporation, inc, patent, patent applications, patent holder, U.S. Court of Appeals
add a comment
By: Lisa Warren
In what has been a seemingly rare occurrence in recent months, the U.S. Court of Appeals for the Federal Circuit recently issued a pro-patentee decision in Immersion Corporation v. HTC Corporation and HTC America, Inc., holding that a continuing application filed on the same day as the parent application issues as a patent satisfies the requirement that the continuing application be filed before the parent is patented. The decision noted the consistent judicial and agency interpretations of the statutory language at issue (35 U.S.C. 120) as supporting its decision, stating that, “…that history, we think, is so weighty as to be determinative.” A cheer undoubtedly arose from patent holders, as, according to the decision, over-turning the PTO’s position allowing priority claims for such filings would have affected the priority dates of more than 10,000 patents currently in force.
Tags: infringement, patent, patent law, seagate, supreme court
add a comment
The U.S. Supreme Court has just issued a decision in two unrelated cases that overturns the 2007 Federal Circuit ruling, known as “Seagate”. The Supreme Court considers Seagate to be “unduly rigid” and overly limiting as to the potential for enhanced damages in patent infringement cases.
Since 2007, under the now-overturned-Seagate-analysis, a patent infringer could more easily avoid paying treble, or otherwise enhanced damages for their infringing activity, by simply demonstrating that they had not acted in an “objectively reckless” manner regarding their infringing activities. This essentially meant that a patent infringer could escape paying higher damages as long as they could present virtually any form of explanation or reason as to why they did not consider their activity to be infringing. This could even, in some instances, include asserting a defense during the patent infringement trial that they ultimately lost, with nothing else such as a non-infringement opinion or other legal analysis.
Now in 2016, based on this overturned decision, a court can assess enhanced damages under 35 U.S.C. §284, including treble damages, for patent infringement activities at the discretion of the court. This decision eliminates the more rigid test requirements of Seagate, which means courts can now assess enhanced damages more often for less egregious infringing activities.
How does this affect you? The Supreme Court decision did not go so far as to specify whether willful infringement is required for an enhanced damages award (vs. a requirement that the infringement be “egregious”). As such, in a patent infringement case where infringement is found, the court will take into account all evidence and at its discretion decide at the end of a trial whether the patent infringer should be on the hook for enhanced damages or not. Many had interpreted the Seagate ruling of 2007 as reducing the need for non-infringement opinions to be drafted by attorneys as a protection against enhanced damages should infringement be found.
Whether or not you had that view in 2007, it is clear that now with Seagate being overruled you may want to more carefully consider whether you should obtain at least a legal memorandum or analysis, if not a full-fledged legal opinion, from your patent attorney if you are concerned about a competitor patent and whether your product may infringe. If nothing else, it appears that in light of this Supreme Court decision such documents from your attorney will now do more to protect you from enhanced damages, including treble damages, if you are found to infringe another’s patents.
For more information concerning this issue, please contact Sean D. Detweiler.
 Halo Electronics, Inc. v. Pulse Electronics, Inc., U.S., No. 14-1513, 6/13/2016; Stryker Corp. v. Zimmer, U.S., No. 14-1520, 6/13/2016
 In re Seagate Technology, LLC, 497 F. 3d 1360
Register Now! Laying the Firm Foundation for Growth: Entity & Equity – Life Sciences Series – Panel 2 05/31/2016Posted by Morse, Barnes-Brown Pendleton in Attorney News, Client News, Events, Intellectual Property, Life Sciences, MBBP news.
Tags: entrepreneurs, equity, Intellectual Property, Life Sciences, llc, llc formation, startup
add a comment
Join us at our Waltham office on June 22nd for the second panel in our Life Sciences Series, Laying the Firm Foundation for Growth: Entity & Equity.
Our expert panel will discuss whether a corporation or a limited liability company is more suitable for building an emerging company, and how to maximize the equity compensation of your team with restricted stock, stock options, or profits interests.
The event will take place from 7-9:30am. A light breakfast will be provided. Seating is limited – please register here.
Tags: career, law school, mentoring, Northeastern University, patent, women in law
add a comment
MBBP Managing Partner Lisa Warren will partake in Northeastern University School of Law’s Annual Women in the Law conference this afternoon. Warren will provide career guidance to attendees in 15-minute intervals during the “Speed Mentoring” breakout session, beginning at 1:45pm.
The Women in the Law conference aims at providing professional development and career guidance to women attorneys and professionals. Session topics include Where Two Trails Converge: Navigating Social Media, Partnering Your Way to the Summit: Public/Private Partnerships, and Expanding Your Personal Public-Private Network to Create Opportunities. It begins this morning and will take place in the law school.
Tags: Communications Decency Act, copyright, Intellectual Property, ip, ip law, MCLE, trademarks
add a comment
Intellectual Property Law 2016: The 19th Annual New England Conference will take place on June 23rd at the MCLE Conference Center in Boston, MA. This conference will focus on new developments, trends, and industry-specific guidance that IP, business, and litigation counsel must know. MBBP attorneys Howard Zaharoff and Erin Bryan are both on the Faculty, with Howard also serving as a Co-chair. Erin will be presenting at the conference on the topic of IP issues in 3D printing and bioprinting.
The conference will also be available by both live and recorded webcast.
Defend Trade Secrets Act of 2016 Signed 05/11/2016Posted by Morse, Barnes-Brown Pendleton in Employment, Intellectual Property.
Tags: dtsa, Intellectual Property, ip, trade secrets
add a comment
Today President Obama signed into law the Defend Trade Secrets Act of 2016 (DTSA), which creates a new federal civil cause of action for trade secret theft. While claims for trade secret theft may still be brought under the various state laws which protect intellectual property, this new law will provide uniform protection on the federal level. The DTSA also provides protection for whistleblowers, granting immunity to parties who disclose a trade secret to the government or an attorney to report wrongdoing, or as part of an anti-retaliation lawsuit. Of particular interest is the requirement that employers must now provide a notice of this immunity protection in any contract or agreement with an employee (or an independent contractor or consultant) that governs the use of a trade secret or other confidential information. To learn more about the DTSA, click here.
MBBP Partner Joseph Martinez Participating in MIT Enterprise Forum’s Spring Start Smart Class 05/11/2016Posted by Morse, Barnes-Brown Pendleton in Attorney News, Client News, Corporate, Employment, Events, Financial Services, Intellectual Property, Licensing & Strategic Alliances, MBBP news.
Tags: classroom, educational, entrepreneur, financing, Intellectual Property, MIT, MITEF, startup
add a comment
Corporate partner Joseph Martinez will take part in MIT Enterprise Forum’s (MITEF) Spring Start Smart Class, which will run from May 23-June 20. He will appear as a Guest Speaker during the third class, which will focus on legal issues for startups. Specifically, Martinez will discuss the employment, financing, and intellectual property legal issues facing startups.
MITEF’s Spring Start Smart Class is an eight session program focused on providing expertise to entrepreneurs on how to launch a successful new business. The program is structured as a hands-on workshop, and features guest speakers whose fields of expertise correlate with each class’s specific topic of discussion.
For more information and to register for the course, see the full details here.
New Federal Law Protects Trade Secrets But Also Requires Changes to Employee and Contractor Agreements 05/05/2016Posted by Morse, Barnes-Brown Pendleton in Client News, Employment, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Public Companies.
Tags: dtsa, employment law, Intellectual Property, president obama, trade secrets
add a comment
By, Sandra E. Kahn
It is expected that President Obama will soon sign into law the Defend Trade Secrets Act of 2016 (DTSA), which creates a new federal civil cause of action for trade secret theft. While claims for trade secret theft may still be brought under the various state laws which protect intellectual property, this new law will provide uniform protection on the federal level.
The DTSA defines trade secrets consistently with the Uniform Trade Secrets Act (UTSA), and applies broadly to any trade secrets “related to a product or service used in or intended for use in, interstate or foreign commerce.” Along with the ability to bring a lawsuit to fight trade secret theft and pursue equitable remedies and the award of damages for the misappropriation of a trade secret, the DTSA also includes a provision for expedited relief on an ex parte basis to prevent the dissemination of misappropriated trade secrets, which may be obtained under “extraordinary circumstances.”
The DTSA also provides protection for whistleblowers, granting immunity to parties who, under certain circumstances, disclose a trade secret to the government or an attorney to report wrongdoing, or as part of an anti-retaliation lawsuit. Of particular interest to our clients is the requirement that employers must now provide a notice of this immunity protection in any contract or agreement with an employee (or an independent contractor or consultant) that governs the use of a trade secret or other confidential information. If this notice is not included in all contracts which are signed or revised after the effective date of the act, the employer will not be able to recover exemplary damages and attorneys’ fees under the DTSA (although the employer may still pursue any available damages under other causes of action). Employers are advised to consult with their counsel to revise all agreements with employees and contractors in order not to run afoul of this requirement.
The DTSA, by itself, may not be used to prevent a departed employee from entering into a new employment relationship with a competitor, and provides that any conditions placed on such employment must be based on “evidence of threatened misappropriation and not merely on the information the person knows,” in effect rejecting the doctrine of inevitable disclosure.
Tags: Intellectual Property, Life Sciences, patent
add a comment
Join us at MBBP‘s Waltham office on Wednesday, May 4th at 7:00am for a look at Building Your Product & Patent Strategy from the Ground Floor. This is the first of four events in the 2016 Life Science Panel Series.
This lively panel of experts will discuss how to structure a well-crafted intellectual property portfolio. They have all built and analyzed multiple portfolios and will share their experiences on the do’s and don’ts in both organically growing an IP portfolio and in-licensing key properties.
- William Edelman Social Entrepreneur and C-Level Executive, Paragonix Technologies, NewVert, VitaThreads, Flexicath, First Light Biosciences
- Molly Hoult Vice President, Fletcher Spaght Ventures
- Michael McDonald, Ph.D. Director of Intellectual Property, bluebird bio
Seating is limited. Register today!
Tags: decision, mayo, patent, petition, Prometheus Lab, scope, Sequenom, supreme court
add a comment
Late last month, Sequenom, Inc. filed a Petition for Writ of Certiorari requesting the United States Supreme Court to clarify the scope of its Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) decision, as applied to Sequenom’s claimed inventions. The Mayo decision, which held that a method correlating a drug dosage regimen and levels of the drug in the blood was an unpatentable law of nature, has had the profound effect of narrowing the scope of patent-eligible subject matter in the United States and has cast doubt on the validity and enforceability of previously-issued United States patents.
Sequenom’s discovery related to the discovery of cell-free fetal DNA circulating in maternal plasma, which was used to invent a test for detecting fetal genetic conditions in early pregnancy, and thereby avoid subjecting the mother to dangerous, invasive techniques such as amniocentesis. The Federal Circuit agreed that Sequenom’s invention combined and utilized man-made tools of biotechnology in a new way that revolutionized prenatal care; however, in view of Mayo, such inventions were deemed patent-ineligible as a matter of law, since their new combination involved only a “natural phenomenon” and techniques that were “routine” or “conventional” on their own.
Despite the Federal Circuit’s reluctant holding that Sequenom’s claimed inventions were not patent-ineligible, multiple judges wrote separately to explain that while this result was probably not intended by Mayo, that decision controlled and only the Supreme Court could clarify Mayo’s reach to prevent a “crisis of patent law and medical innovation.” Sequenom’s petition now asks the Supreme Court to clarify the scope of its Mayo decision in view of Sequenom’s claimed inventions, and to determine whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery.
If the Supreme Court grants certiorari it will have a compelling set of facts before it to clarify the scope of Mayo, and we patiently await its decision, which will have high stakes for the life sciences community.
For more information, contact Patent Attorney Stan Chalvire.