I was asked by the amazing IndieGamerChick to post on legal issues for indie game developers (and the people who love and/or hate them) over at IndieGamerTeam.com. My first post, “Stupid Legal Tricks, Chapter 1,” is on trademarks and video games. Check it out here:
The next post will be on design patents and video games. A theme may be developing.
Consider the following quote from Friedrich II, King of Prussia, often referred to as Frederick the Great:
“He who defends everything, defends nothing.”
Consider also this quotation from Mark Twain’s Pudd’nhead Wilson:
Behold, the fool saith, “Put not all thine eggs in the one basket”—which is but a manner of saying, “Scatter your money and your attention”; but the wise man saith, “Put all your eggs in the one basket and — WATCH THAT BASKET.”
These were two pretty clever fellows, and when two clever fellows try to tell us the same thing*, it behooves us to listen. And I am certainly not averse to riding on their clever coattails to try to make a specific point along these lines. Specifically, regarding the registration of trademarks.
When one registers a trademark, one must specify both at least one class of goods and services – often referred to as the “IC,” for International Class, which is a series of 45 numbers that designate the truly bizarre divisions trademark offices like the United States Patent and Trademark Office use to categorize things – and the specific goods and/or services in association with which one is claiming exclusive rights to use the mark. Here’s an example:
| Word Mark | BLIZZARD ENTERTAINMENT |
| Goods and Services | IC 009. US 021 023 026 036 038. G & S: COMPUTER GAME SOFTWARE AND INSTRUCTION MANUALS SOLD AS A UNIT; MOUSE PADS. FIRST USE: 19940517. FIRST USE IN COMMERCE: 19941115 |
From: https://tsdr.uspto.gov/#caseNumber=75894167&caseType=SERIAL_NO&searchType=statusSearch
This is what I would refer to as a “good example.” The registration has one class: IC 009, which is the class including computer software, hardware and accessories. It has two listed goods: computer game software, and mouse pads. Simple. Elegant, even. Well done, Blizzard Entertainment. (Tangent: IC 028 is for toys and games. It’s a common mistake for people to register computer games in IC 028 because they see “games,” and that’s just one extremely straightforward example of how confusing this gets.)
A little explanation is in order before we do a bad example. You pay for trademark registrations according to how many classes you want to protect. Each class is a flat fee – usually $225.00 in the US, but it varies. You can file for any number of classes in one application: you don’t get a discount for multiple classes, but if you’re paying an attorney (which, and I acknowledge I’m biased, you really, really should) you may save some in legal fees if you have them do all the classes at once.
However, what’s protected is not the class you register, but the goods or services you list in that class. For instance, this is for computer game software. If I wanted to make, say, a spreadsheet program, and use the mark “Blizzard Entertainment” in association with it, that would theoretically be okay (in this case it would be a very foolish thing to do but let’s not get into that) even though spreadsheets and games are both computer software and therefore both in IC 009. There is no theoretical limit to the number of particular goods and services you can list in a given class.
And now we get into defending egg baskets.
Here’s a bad example. At least, in my opinion. I apologize in advance for the wall of text: just scroll down to resume the article. If you are the impatient sort, click here to skip it.
| Word Mark | SUPER |
| Goods and Services | IC 009. US 021 023 026 036 038. G & S: Downloadable computer game software for video and computer games; Downloadable computer game programs offered via social media Computer peripheral devices; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games offered via social media; Downloadable music files; Downloadable ring tones for mobile phones; Downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, and podcast transcripts in the field of computer and video games; Headphones; Musical juke boxes; Microphones; Baby monitors; Mouse pads; Portable media players; Portable telephones; Sound recording, transmitting and reproduction apparatus; Spectacle cases; Spectacle frames; Sunglasses; Telephone apparatus; Blank USB flash drives; Video game cartridges; Cases for mobile phones, tablets, laptop computers and netbooks, portable media players, cameras and other photographic equipment; Downloadable electronic game software for use on mobile phones, tablets and other electronic mobile devices; Video game software; Downloadable interactive multimedia computer game programs; Downloadable interactive multimedia computer game programs offered via social media ; Downloadable computer software for mobile phones, tablets and other electronic mobile devices in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable software in the nature of a mobile application for use in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable computer application software featuring video and computer games; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games offered via social media; Mobile phone accessories and charms, namely, danglers for mobile phones; Eyewear; Eyeglasses; Mobile phone accessory charms; Mobile phone covers; Radios incorporating alarm clocksIC 041. US 100 101 107. G & S: Educational services, namely, conducting classes, seminars, workshops in the field of games; Training in the field of games; Entertainment, namely, providing on-line games; Entertainment, namely, providing on-line computer games available on social media; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment, namely, providing non-downloadable computer games online; Entertainment services, namely, providing online video games available on social media; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing online video games; Organizing sporting and cultural activities, namely, conducting tournaments, contests and competitions in the field of computer games; Amusement parks; Arranging and conducting workshops for educational purposes in the fields of computers, graphic arts and video games; Entertainment services in the nature of providing casino and gambling facilities; Electronic desktop publishing; Entertainment services, namely, production of live, televised and movie appearances by a professional entertainer; Film production services, other than advertising films; Gambling services; Providing on-line computer games via a computer network; Operating lotteries; Organization of electronic games competitions; Party planning services for others; Production of music; Entertainment, namely, production of television shows; Providing amusement arcade services; Hosting social entertainment events, namely, karaoke parties for others; Non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, blogs, podcasts and mobile applications in the field of games; Publication of books; Publication of electronic books and journals on-line; Scriptwriting services for non-advertising purposes; Writing of texts for others; Electronic games services provided by means of a global computer network; Entertainment services, namely, providing online electronic games; Entertainment Information; Entertainment services, namely, providing online electronic games for use on mobile phones, tablets and other electronic mobile devices; providing information on-line relating to computer games and computer enhancements for computer games; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network and on social media; Multimedia publishing of software, specifically of computer game software, electronic games and video game software |
From: https://tsdr.uspto.gov/#caseNumber=86968772&caseType=SERIAL_NO&searchType=statusSearch. By the way, this is the same trademark registration I wrote a post for Indie Gamer Team about. See: https://indiegamerteam.com/2017/03/27/stupid-legal-tricks-chapter-1/
Look at that listing of goods. Look at it. That is nonsensical. Now, I was young and inexperienced once too. Don’t ask me about my first interaction with the NFL’s trademark counsel: it still aches on rainy days. But whoever did this ought to be ashamed of themselves. (I know who did it. It’s in the TSDR listing. But let’s be gracious.) This is obviously a trademark attorney unfamiliar with Fred’s advice: they are trying to defend everything, and they are running a very real risk of defending nothing.
Never mind the ethics of running the meter while all that redundant nonsense was entered into the PTO’s online filing system. (Many firms charge flat fees for filing trademark registrations, which would avoid that issue altogether.) The first problem is that now they have an obligation to monitor the stream of commerce for all this stuff. There’s no point in registering a trademark for goods and services you don’t sell. Once you do, if you don’t watch out for people selling similar goods and services with a confusingly similar mark, you can lose your exclusive right to use it in various ways. That is a lot of eggs to watch. The costs, both monetary and opportunity costs, of doing so are not trivial. But more on that later.
Because the real problem is that when you enter your listing of goods and services, you are affirming to the PTO that you really do sell all the goods you are listing**. This is to prevent people from trying to stake out territory which they aren’t entitled to protect. The purpose of trademarks is to allow the public to associate goods and services with a particular source, and if you’re not a source of those goods and services you shouldn’t be allowed to prevent other people from offering them under the guise of trademark protection.
Now, King.com Limited is a successful company, a veritable mighty oak of industry whose branches spread far and wide, sheltering vast fields of commerce ‘neath their benevolent shade. But do they really make baby monitors with this mark on them? Is there really a “Super-With-Colorful-Fruits”-brand amusement park somewhere, perhaps adjacent to their sprawling corporate headquarters on Malta? I am willing to be proven wrong, but I hope you’ll forgive me if I’m somewhat dubious that this listing of goods and services is entirely accurate.
“But the Patent and Trademark Office gave them the registration,” you might say. “Isn’t it just smart lawyering to try to get what you can? If you cut a little bigger slice of cake than you should have, can’t you just put some back on the plate if need be?”
No.
If you list goods and services you don’t sell and/or have no specific intent to sell on a registration, you may have committed a “fraud on the Office,” as the legal term of art goes. And one potential sanction for committing a fraud on the Office is having your registration cancelled. Not just the part that was in error. Not just the class which was in error. The whole registration. Which makes it much harder to protect your trademark. Not impossible: we’re not going to punish the public for your mistake. But much harder. Also, it makes the lawyer who filed it look extremely bad. But that’s their problem. We’re worried about King.com, who theoretically do have a valid interest to protect here.
By trying to defend everything, they have put themselves at risk of defending nothing. Imagine the fun opposing counsel would have putting somebody from King.com on the stand at a hearing and listing out all the alleged goods. “Do you really make baby monitors? Is there a Super-with-colorful-fruits brand roller coaster in your parking lot?” Assuming they may have been a little overbroad in their listings, their credibility would be destroyed. Now, either they make a particular thing with the mark on it or they don’t, and that wouldn’t be hard to prove. But whoever’s conducting the hearing is only human, and that kind of thing leaves an impression. Plus of course there’s the whole “Did you commit perjury or are you just ignorant?” thing to contend with. Again, makes people look extremely bad. Don’t do that.
Now that Fred has had his due, let’s talk about Mark’s egg basket.
Aren’t I being contradictory? Wasn’t King.com, through its attorneys, trying to put all its eggs in one basket? In a sense, the sense that they put everything they could think of in the registration listing, they were. But in the broader sense, they were not. The eggs in question here are not the marks, nor the individual goods,*** but the valuable associations between the mark and any individual good offered by the registrant. A solid association is the essence of a trademark. And by scattering what one assumes are the actual associations (i.e., the real goods which are important products to King.com’s business and which are sold in association with the mark) in that giant morass of stuff, they have taken them out of the basket and chucked them all over the field. They are scattered far and wide, and instead of a tidy basket of business-critical marks to protect you have a giant field covered with a few important marks and dozens of trivial ones which you must guard ceaselessly. Not the best approach, in my humble opinion.
And, in the not-so-distant future, a much more hazardous one as well.
Here’s why: Under the current procedures, an applicant is only required to submit one specimen (proof that they are using the mark in association with the goods, h/t @proofofuse) per class. That means that for the registration I cited above, King.com may have only had to submit two specimens, because all the marks are either for IC 009 or 041. So they could, theoretically, find things they really do make, like a computer game, submit proof of use for that, and they’re covered for, say, online newspapers. Now, again, I’m not saying that King.com has done anything wrong. For all I know they have Super baby monitors installed on each and every Super roller coaster marketed in Malta’s finest Super online newspaper. The fact that they’re using an international registration as the basis for their US registration also complicates things and again, let’s not get into that. But as an example of the potential for abuse of the system by submitting cherry-picked specimens for each class, it does the job.
The PTO is well aware that people (not pointing any fingers) can do this, and it’s getting worse as the number of registration applications increase and people, pardon my old, get stupider. They have initiated a new rule which allows them to audit registrations. Under the new rule:
...the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part.
From: https://www.gpo.gov/fdsys/pkg/FR-2017-01-19/html/2017-00317.htm
This is right now still sort of a limited test program, but the final rule has been adopted. They can do this to any registration at any time, and they could require it for all registrations at any point. I for one could not be more pleased at this prospect. But attorneys who prefer what I call the “shotgun” approach to trademark registration listings are going to be in a world of hurt when this kicks in. They need to stop, and they need to stop now. They need to find the important eggs, put them in a nice strong basket, and watch that basket. Not only because it’s the right and legal thing to do, but because it will endanger their clients’ interests not to do it.
Finally, yes I am aware that often clients drive a lot of this nonsense. They get hold of the link to the Manual of Goods and Services, or some first-year associate trying to be thorough sends them a ginormous list of potential goods and services listings, and they get all excited. “Yes!” they cry. “Yes, we want all of that! Of course we are going to make roller coasters with baby monitors and advertise them in our online newspapers! Mike, send that list over to Product Development, stat! And in the meantime, put us down for one of each!”
Well, it’s your job as a trademark attorney to stop them. You must make clear to them that that isn’t a good idea, for all the reasons I’ve set forth. (Feel free to crib off me.) Explain to them that overreaching will give them so much to defend that they will divide their attention to the point where they can defend nothing. Don’t give them what they think they want: give them what they need, and tell them why. In the end, they will thank you for it.
Thanks for reading. If you have questions or further thoughts, please feel free to make a comment on this post. Engaged readers are the best!
*Well, okay, according to this article the Mark Twain part originated with Andrew Carnegie, but be that as it may.
**You can file “Intent to Use” registrations which do stake out territory you’re not actively using yet, but among other limitations you’re still affirming that you have a bona fide intent to use the mark with the particular goods and services you’re listing. “Roller coasters are fun, I might build a couple, who knows?” is not a bona fide intent to build an amusement park.
***Fun Fact: There are seventy-six individual goods and services listed in the registration.
(Written for master trademark attorney Ron Coleman’s Likelihood Of Confusion® blog, crossposted with his gracious consent.)
So last Wednesday (March 22, 2017, if you’re joining us late) the Supreme Court of the United States issued its decision in Star Athletica, LLC v. Varsity Brands, Inc, et al.
And a very small, highly specialized subset of LawTwitter went nuts.
Ron Coleman collected some great examples on his post Rah Rah Raw. (Trademark attorneys: Clever names on demand.) On the one hand, we have experienced copyright/fashion lawyers saying things like this:
Supreme Court issued very narrow ruling in #Varsity #copyright case today, solely resolving circuit split on separability test #FashionLaw
— Staci Riordan (@staciriordan) March 22, 2017
On the other hand, we have intellectual property law professors saying things like this:
Huh? The Court overturned decades of circuit court cases without comment and did away with a central & widely accepted feature of doctrine. https://t.co/Q9ypR3FSfz
— Chris Buccafusco (@cjbuccafusco) March 22, 2017
If it’s not clear, that was a response to the prior tweet. Or even things like this:
Everything is now copyrightable, even something patentable. Horrible day 4 copyright law w #SupremeCourt decision on cheerleading uniforms
— Jeanne Fromer (@JeanneFromer) March 22, 2017
…when they really ought to know better. 140 character limit or not, that seems a bit over the top. But is it? Let’s review the decision.
First, a very brief summary of patent law vs. copyright law. Patents protect useful inventions. Copyrights protect artistic creations. In a sense, patents “trump” copyrights, in that you cannot use a copyright to protect a useful invention. (For instance, you cannot copyright the shape of an improved airplane propeller and claim nobody else can make a similar propeller. That’s what patents are for.) Patents are harder to get than copyrights, have much shorter terms, and cost a lot more both to obtain and to enforce. On the other hand, you can usually make a lot more money in a patent infringement suit than in a copyright infringement suit, there are fewer defenses to patent infringement than copyright infringement, and defenses to patent infringement are harder to raise.
Just to make things conf… I mean, interesting there are also what are known as design patents. These protect the “ornamental design of useful articles.” They are sort of a bizarre hybrid of patents and copyrights that have some of the worst (and best) features of both. They are outside the scope of the decision, but keep in mind that they exist when discussing this area of the law, if for no other reason than that “design” does not mean quite the same thing to a (design) patent lawyer that it does to a copyright lawyer, and I think that causes some of the confusion we are seeing.
Speaking of designs, in this context, designs are the key. Both parties in the Varsity Brands case make cheerleader uniforms, including non-team-specific uniforms with a variety of geometric designs on them. Here are examples:
Those are uniforms for which Varsity Brands, Inc. (the original plaintiff, which is why I call the case Varsity Brands, hereafter “Varsity”) had registered copyrights. Star Athletica, LLC (hereafter, “Star”) made some competing uniforms which allegedly infringed said copyrights, and Varsity sued Star for copyright infringement.
Please allow me first and foremost to direct your attention to Footnote 1 on Page 11 of the main opinion:
1We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 358–359 (1991), or on whether any other prerequisite of a valid copyright has been satisfied.
Failure to read/understand/accept the text of that footnote is, in my opinion, behind most of the more sensational tweets/comments such as Professor Fromer’s supra. The assertion that you can now slap a copyrighted design on any old thing and claim the thing itself enjoys the protection of copyright meets its first and highest hurdle in the fact that the design must in and of itself be copyrightable. The opinion is not addressing the question of copyrightability of the underlying design. (I myself, though not familiar with the particulars of the registrations, find them somewhat dubious in that regard.) It is assuming arguendo that the design is copyrighted, and resolving an old and complex circuit split on the legal ramifications of attaching a copyrighted design to a useful article.
And yes, there was a complex split. I have seen people claiming as many as six different tests existed for determining when useful article limitation overcame copyright protection. Many of them considered, to some degree, how functional the article was as an independent factor. And this is not a new idea. It is an old principle, recently re-affirmed in TrafFix Devices, Inc. v. Marketing_Displays, Inc. that you cannot use trade dress to create “perpetual patents.” Similarly, in Kohler Co. v. Moen, Incorporated the same rule was applied to trademarks. All of the tests attempting to do the same with copyright were created by intelligent judges and it is not my intent to dismiss or belittle them.
But I think that Occam’s Razor (the original, not the newfangled version) is very relevant here: “Do not multiply entities beyond necessity.” The intent of copyrights is to protect artistic works (henceforth I will not call them “designs.”) Using functionality as an independent test, in the case of artistic works applied to useful articles, is adding an unnecessary entity. And asking questions about intent versus perception or relative economic factors, as some of the tests did, is definitely adding unnecessary entities.
As a simple example, Justice Breyer’s dissent wants to apply a somewhat different approach:
Can we extract those features as copyrightable design works standing alone, without bringing along, via picture or design, the dresses of which they constitute a part? (Dissent, page 10.)
However, as the main opinion points out, not only does this lead to implausible results (You can’t copyright a square canvas: does this mean any painting made on one can’t be copyrighted?) but it imposes a requirement not found in the Copyright Act. As the first paragraph of the syllabus says:
The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. §101.
There are two “entities,” if you will:
In Varsity Brands, the answer to both questions is clearly yes. The artistic work is the pattern of lines and figures. We could, with a really sharp knife, take the top layer of fabric off and create an independent work without destroying or limiting the usefulness of the underlying article in any way. How artistic it would be is a separate question, but if this:
…is a prized exhibit of one of the world’s great art galleries, who are we to say that Varsity’s works are unworthy of a little protection?
In any event, Justice Breyer’s proposed test, just like all the other tests, includes new entities which are neither necessary nor present in the statute. The test set forth in the opinion puts the burden exactly where the statute set it all along, and just as importantly, where the underlying principle of copyright protection would reasonably set it: on the independent existence and originality of the artistic work. Once they are established the “canvas” upon which artistic work rests, be it an actual canvas, a t-shirt, or a cheerleading uniform, matters not.
So what does all this mean to practitioners on the ground?
Going forward, this test will put a lot more emphasis back on the fundamentals of copyrightability and the doctrines governing it. Copyrightability is a mixed question of fact and law, heavily fact-dependent. Principles of copyrightability determination such as scènes à faire, the merger doctrine, and even the basic requirement of minimal artistic creativity set forth in Feist are untouched by the decision. These principles will form the basis for defense of copyright infringement allegations involving useful articles, rather than elaborate and circuit-dependent tests regarding how the functionality affects the copyright protection afforded the copyright owner.
Likewise, when the useful article itself is ornamental, preemption by the principles of design patent law will still come into play. If the ornamental design and the useful object are irretrievably combined, only design patent protection will be available. And that distinction will still be available as a defense to any claim of copyright infringement in the article as a whole.
For an example of how that could apply to fashion, consider the work of Tomoko Nakamichi:
In the case of clothing such as that made by Ms. Nakamichi, the artistic work is usually not going to be any individual decoration, but rather the article of clothing as a whole. If you remove the “artistic” parts, there is almost nothing useful left. Part of that is the non-two-dimensional nature of the artistic work. You will note that the Varsity Brands opinion talks a lot about applying two and three-dimensional artworks to useful articles. But here the subcomponents are mechanically integrated into the article itself, and removing them would cause the article to be less useful. Distinctions like this will become more important with the alternative tests that existed before Varsity Brands no longer available.
Relatedly, copyright law has an extensive body of doctrine as to how much of a copyrighted artwork must be copied to create an infringement and how much modification an alleged infringer must perform before the alleged infringing work is no longer a copy or an infringing derivative work. Those principles still apply, full force, to any allegation of copyright infringement related to a useful article under Varsity Brands. Along with standard copyrightability defenses and patent/design patent preemption, these provide accused infringers substantial protection from the tsunami of liability some commenters are predicting in the wake of Varsity Brands.
I hope you found this post educational. Even more importantly, to the extent you may have been worried about a sudden surge in potential liability on behalf of creators I hope it has reassured you somewhat. If readers have any questions or comments, I would be delighted to hear them. Thanks for reading!
So I was again invited to be a panelist at MAGFEST, and not being an idiot, I immediately accepted. I again had a marvelous time, hung out with cool people, and hopefully helped a few. Herein, my comments on this year’s amazing-palooza.
Note that that’s from several minutes before the panel started. It was SRO for most of the actual panel, and we kept going for twenty minutes after in the room and another half hour outside in the hall.
It is very flattering to me that one of the comments on the MAGFEST app was “100% the most had-their-sh**-together panel at mag.” However, it is also very funny because one of the other panelists and I literally made up the panel format on the flight from Chicago that morning and the other two agreed to it at lunch. (The panel was at 3.) If you attended the panel and have more questions, or, heck, even if you didn’t, please feel free to contact me and we can continue the conversation.
Friday, we did “The Fall of Overwatch,” a LARP based on some of the game’s backstory. Somehow I ended up not only as a combat engineer, but as head of security for Overwatch Central. Running around yelling “Holographic Display!” and reminding everyone that this was the 21st century and we had portable communicators just never got old, at least for me. (The ST may feel differently. 🙂 ) Despite never having played, I got into the story immediately thanks to the skill and hard work of the storytellers. They made excellent mechanics choices and allowed all of us to become super-soldiers, etc, with just a few key choices and random assignments.
Then, the amazing Jax did “Goth Court.” I don’t know that I can put into words how something so wrong could become so right. 🙂 I played a Normie who accidentally let my Goth neighbor’s pet snake eat her pet rat (One of the highest praises I have ever received: “Are you a Goth? Somebody get this man some eyeliner.”) as well as an expert witness in both Goth Dry Cleaning (of COURSE there is) and Gothic Interpretive Dance (of COURSE there is.) Jax was a little worried in that there were like four or five actual lawyers in the LARP and we’d laugh at her. I knew she was wrong and as usual, I was right. It was fantastic. Extra points also to Lauren the Bailiff (“I sentence you to my bailiff.”) and Abby the Clerk of the Court (“The record will show: Whoa.”)
Saturday, we did “The Witcher: When the Wyvern Wills,” a Witcher-based LARP. I haven’t played any Witcher games, either (yes I am lame shut up) but we did one last year and it was fine, and so was this one. While Ryan may have had the most amazing characterization (“I’m trying to see things from the perspective of the little people”) I consider myself to have won, because a) nobody realized I was the one who woke up the wyvern, and b) the person I wanted to get the throne actually got it, and c) NOBODY REALIZED ANYTHING I WAS UP TO THE ENTIRE GAME. Plus I got to use my magic power which was cool. (“I hit him ba…” “Oh no, you don’t.”)
And in particular: Ryan and Marshall, so good to see you again. Lauren and Aaron, it was like meeting two (awesome) old friends for the very first time. Those of you whose names I didn’t catch or don’t remember (warned you,) you all rock.
I’ll briefly recount the other panels I attended as well. I will be covering the indie game booths I reviewed in separate posts elsewhere, but in general, I was really pleased with what I saw. Keep doing what you’re doing, guys.
“Lights, Sound, Movement: Taking Cosplay to the Next Level with Arduino:” I have mixed feelings about this panel. The description made it seem a lot more intro-level than it was. It was really interesting and gave me some ideas (I really want to make a Diskos. 🙂 ) but the flow was choppy and random, and given the size of the crowd I suspect there were a lot of people for whom they skipped way too many steps before diving into coding the controller.
“The Morality of Worldbuilding:” I really enjoyed this panel. Despite the fact that the panelists were all clearly of a particular position on the issues, they were extremely evenhanded in their approach. As someone who has been dealing with the fact that a few pinheaded players will ruin a massive online game system for everybody if you let them for many years, it’s interesting to see that while the stakes have changed, the basic problems have not.
“Video Games: Unique Among Media (Just Like All Other Media:)” Loved it, and not just because Sam was on it. 🙂 Starting from the old question, “Why do video game movies suck?” the panel explored the differences between pop culture media in what they can and can’t do well, poorly, or at all. Hopefully it gave the creatives in the audience some food for thought about what medium a particular story, or way to tell it, would be best suited for that purpose.
“The Rise of Mobile Gaming:” This panel was… confused. The people on it were fun, and they obviously love gaming. Hard to find fault with that. But I’m not really sure I understood what it was they were trying to accomplish. Certainly some interesting facts and figures (I did not know that the first smartphone was made by IBM) but it needed more specific direction to really be good, in my opinion.
I honestly did not interact with anyone the ENTIRE WEEKEND who I did not enjoy interacting with, so if you got left out, blame my bad memory and eight hours of sleep. (Sounds like a lot… but that was over three days.) Thanks so much, and see you next year!
Software patents are a pretty confusing topic, and that’s if you’re a patent attorney who understands software. If you’re not, it goes way beyond confusing. The situation has been confused since the Supreme Court ruled in a case called Bilski v. Kappos, in which it basically said software patents were okay, unless they weren’t. That caused some problems. So, ever helpful, more recently the Supreme Court ruled on a case called Alice Corp v. CLS Bank International, which could be read as saying that software patents aren’t okay, except when they are. So. That clears that up, right?
No?
Okay. More details are in order.
The problem, fundamentally, is that you can only get a patent for what patent lawyers call patentable subject matter. Ideas, by definition, are not patentable subject matter. (Nor are they artistic creations, which is why, to oversimplify somewhat, you can neither patent nor copyright an “idea.”) The laws of nature, logic, and mathematics are, likewise, not patentable subject matter. To be patentable subject matter something must be a “process, machine, manufacture, or composition of matter.” We usually refer to patents for a process as “method” patents, in that one patents a method which comprises (“comprises” is how patent lawyers say “is made of, consists of, or otherwise is composed of”) a series of specific steps which arrive at a specific result. Software patents are by definition method or process patents: a patent on a machine which is incidentally run by software is not a software patent: it’s a machine (or device) patent.
Many patent lawyers, including the author, will usually include claims on a machine which runs software which embodies the method in a patent application as well as the method itself, to try to obtain the broadest possible protection (and in case later the Supreme Court just says, “You know what? Software patents. Just not okay, period.”) But in the end it’s about the method.
So Alice (You thought I forgot, didn’t you?) set forth a new test which we are supposed to use to evaluate whether a particular method, or software incorporating it, is patentable subject matter. Or rather, it stated that a test it had previously established to determine whether a “law of nature” was patentable subject matter applied to method patents generally. (This case was Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc.) Here are the elements:
First, does the patent claim an abstract idea, like an algorithm, that is entirely separable from any physical embodiment? For software patents, the answer to this is almost always going to be “yes.” Which means the second part of the test applies.
In the second step we try to find out whether the patent adds to the abstract idea”something extra” that embodies an “inventive concept.” If there is not, then the claim does not address patentable subject matter, and the patent fails. If it does, then we go into the normal patent tests of novelty (Is this already known to the world?) and unobviousnes (Would a person of ordinary skill in the relevant art consider this an obvious solution to the problem being addressed?)
Here are a few comments the Supreme Court made to try to make this clearer:
So the question of the hour is, is whatever you, the intrepid software developer, wants to patent an abstract idea, and if so, have you come up with an “inventive concept” which makes it patentable?
Spoiler: It very likely is, and you very likely have not. I hate to be a downer, but them’s the odds. That doesn’t mean you shouldn’t ask a patent attorney to review your invention, nor does it mean that they will automatically tell you it’s not patentable. But prepare yourself for a negative response, and then anything else will be a pleasant surprise.
How do you know whether you have added an “inventive concept?” In the context of software patents, this seems to be evolving in the direction of a “technological improvement,” which of course seems to be somewhat redundant with the “novelty” requirement, but nobody said this has to make sense. Here’s a very, very rough rule of thumb: if your invention performs some task in a way which is different from the way in which that task has historically been done, you may have added an inventive concept. If it performs some task in a way which a person of ordinary skill would see as actively less advantageous than the historical approach, but in fact improves the solution to the task, you have a very good chance of having added an inventive concept. Contrarily, if you are simply doing something which has not been done historically, but which simply implements a straightforward solution to a novel problem, you very likely have not added an inventive concept.
Suppose, for instance, that nobody had ever made a “po-kee-no” computer game. (That is, a computer game which implemented a known game which is a combination of poker and keno.) To make such a game, you would need an algorithm which implemented the rules of po-kee-no in such a way that a computer could evaluate any given po-kee-no “hand” and determine the payout. No matter how clever your algorithm, it in the end would be an abstract idea (“the rules of po-kee-no, evaluated by a computer”) and would not include any inventive concept since you did not invent the rules of po-kee-no nor the traditional approach to converting game rules to compute algorithms. So no patent for you!
However, further suppose you had discovered that while it is not part of the rules of po-kee-no, it is much faster and more efficient to evaluate a po-kee-no hand by first looking to see if there are any jacks in it. Mathematically, this makes no sense (and, I hasten to add, it’s not actually true.) So while it is still an abstract idea (“look for jacks first,”) it contains an inventive concept which is not suggested by either the algorithm (“follow the rules of po-kee-no”) or the traditional approach to implementing game rules on a computer (“turn the rules into mathematical/logical statements and evaluate the statements.”) So there is a good chance that a method of playing po-kee-no on a computer which looked for jacks first would be patentable under Alice.
For those of you who are game developers, here’s a link to another little article on some game-specific Alice-type decisions.
Video Game Patents Are in Deathmatch Mode
Note that more than eighty percent of the patents adjudicated after Alice have been found invalid!
At the end of the day, there is a whole host of other questions which come into the analysis of whether to patent a software method. (Including whether you have the funds to support both the application process and any necessary enforcement proceedings.) But at the heart of it, be honest with yourself about whether you have really created a technological improvement, which is a very high bar to clear, or whether you have just come up with a kick-ass implementation, which is nothing to sneeze at even if you can’t patent it. I hope that gives you a sense of the current thinking of patent attorneys regarding software patents. As always, questions and comments are welcome.
M
