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What Can Scarlet Johansson Do About the Similarity of ChatGPT’s Sky voice to Her Own? 

Brett Trout

Background
According to Scarlet Johansson’s agent OpenAI, the owner of ChatGPT, was engaged in discussions with the Black Widow actress to use her voice as the voice of their latest AI project Sky. This may, or may not have been influenced by Johansson’s voice acting in the movie “Her,” where she played an increasingly sentient AI girlfriend. Johannsson eventually passed on the project and OpenAI hired a different actress to train their Sky project. The problem, according to Johansson’s team, is that the new Sky voice sounds like Johansson’s voice. Johansson’s team has now asked OpenAI to “slow down” the launch of Sky with the new voice.

Voice Misappropriation
What are your options if someone uses your voice without your permission? Whereas your freedom of speech is protected by the Constitution, your right of publicity is protected by a mix of different state laws. Depending on which state you bring your right of publicity lawsuit, you may have a lot or only a little protection. Even though state laws vary, some general tenets underlying the right of publicity emerge across these various state laws. One area of right of publicity protection covers your name, image, and likeness. Certain states, like California have specific statutes that allow you to sue anyone who knowingly uses another person’s voice to market their goods or services.  

Imitating Your Voice
What if instead of using your actual voice, someone uses an imitation of your voice? Since they are not using your voice, state statutes that require use of your actual voice no longer apply. So can you avoid liability by simply hiring an actor to imitate your favorite actor’s voice to sell your widgits? Possibly, but it depends. If someone uses an imitation of your voice to sell things in California, you have to be famous and have a distinctive voice to successfully sue for use of an imitation of your voice.

This was the case when the Ford Motor Company used an imitation of Bette Midler’s voice, in a song off of Midler’s album, to sell cars. In that case, the California court held that if you deliberately imitate a distinctive voice of a professional singer who is widely known, to sell your product, that singer may recover damages from you for appropriating their right in their own voice. 

This type of imitation is a species of violation of the “right of publicity,” in this case the right of a person whose identity has commercial value, typically a celebrity, to control the commercial use of their identity.  In California, if a voice is a sufficient identifier of a celebrity’s identity, this right of publicity provides a cause of action against anyone who would imitate the voice for commercial purposes without consent of the celebrity. 

Voice vs. Style
Even if you are famous with a distinctive voice, you only have rights in your voice, not your style of speaking. If someone imitates the prosody of your style (rhythm, speed, pitch, emphasis, etc.) without imitating your voice to the point someone would mistake it as your own, you do not, without more, have a cause of action against them. 

False Endorsement
In addition to claims of voice misappropriation, you may have a claim for false endorsement. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prohibits the use of false designations of origin, false descriptions, and false representations in the advertising and sale of goods and services. The Lanham Act expressly prohibits the use of any symbol or device which is likely to deceive consumers as to the association, sponsorship, or approval of goods or services by another person. This was the case when singer Tom Waits sued Frito-Lay for imitating his distinctive voice in an admitted parody of a Tom Waits song to sell SalsaRio Doritis. Waits argued that Frito-Lay was misrepresenting to consumers that Waits endorsed SalsaRio Doritos. The question was whether “ordinary consumers . . . would be confused as to whether Tom Waits sang on the commercial . . . and whether he sponsors or endorses SalsaRio Doritos.” In this case the jury found that Frito-Lay had indeed falsely implied Waits’ endorsement of the chips in direct violation of the Lanham Act.  

Damages
So assuming you do successfully sue someone for using or imitating your voce, what kind of damages can you recover. If they take your actual voice in California, you are allowed to recover the greater of $750 or the total damages you sustained as a result of the use and any profits the other party made as a result of the use. To show profits, you only have to submit gross revenue numbers and the burden shifts to the person who used your voice to prove any deductible expenses. California’s statute also allows for punitive damages and attorney’s fees and costs.  

What if they just imitated your voice so the state statutory damages do not apply? In the Waits case, where they imitated his voice, Waits was awarded $375,000 in compensatory damages for imitating his voice ($100,000 for the fair market value of his services, $200,000 for injury to hipeace, happiness and feelings,and $75,000 for injury to his goodwill, professional standing and future publicity value), $2 million in punitive damages, $100,000 damages for violation of the Lanham Act, and attorney’s fees under the Lanham Act. The appellate court ultimately eliminated the $100,000 damages for violation of the Lanham Act as duplicative, but kept the attorney’s fees award intact. 

So is the award in the Waits case typical? No. The large punitive damage award was the result of Waits’ well-known strong stance against ever using his voice to sell products. He felt it would be selling out, undermining his artistic integrity. As a result, commercial use of his voice was particularly offensive to Waits, allowing the jury to award damages for mental distress. While merely taking offense is an insufficient basis for awarding mental distress damages, in California you may recover mental distress damages for shame, humiliation, embarrassment, and anger. 

Because Waits’ character and personality and image was that he did not endorse products, the Doritos commercial humiliated Waits by making him an apparent hypocrite. As a result, the jury was allowed to include in its damage award damages for injury to Waits’ goodwill and future publicity value (advertisers would likely pay him less if the believed he was a hypocritical “sell out”). 


Waits also recovered punitive damages of $1.5 million against the advertising firm that created the ad, Tracy-Locke, and $500,000 against Frito-Lay. In California, these damages are recoverable if the plaintiff can prove, by clear and convincing evidence, that the defendant was been guilty of oppression, fraud, or malice. Cal.Civ.Code § 3294(a)  Malice in this context, is despicable conduct carried on by the defendant with a willful and conscious disregard of the rights or safety of others.  § 3294(c)(1) 

In upholding the punitive damages award, the appellate court found that in going forward with the commercial using Waits’ imitated voice, the defendants knowingly undertook the risk, consciously disregarding the effect of these actions on Waits’ legally recognized rights. One of Waits’ star witnesses at the trial was the Waits’ impersonator used in the radio ad. The impersonator told the defendants before the ad aired that Waits had a policy against doing commercials and would not like having an imitation of his voice used in this manner. This damning testimony likely led to the large punitive damage awards.

Finally Waits recovered his attorney fees. Although the appellate struck the damages Waits recovered under the Lanham Act (as duplicative of his other recovery), the appellate court upheld the award of attorney’s fees under the Lanham Act. 


Conclusion
So how does the foregoing apply to the Johansson case? Given that OpenAI did not use Johansson’s voice, the California statute likely does not apply. The tougher question is whether OpenAI owes Johansson damages for imitating her voice. OpenAI’s position is that the actress it used to train Sky was not told to imitate Johansson and that the voice used was the actual speaking voice of the actress they hired. While Scarlett Johansson’s voice is much less distinctive than Bett Midler’s or Tom Waits’, it is debatable whether it lacks sufficient distinctiveness to merit protection? However, if OpenAI can show many people have a voice similar to Johansson’s, it may be able to avoid liability for imitating her voice. 

Even if OpenAI can avoid liability for imitating Johansson’s voice, it still may be liable under the Lanhan Act for deceiving customers into thinking Scarlett Johansson endorses the new Sky AI. If Johansson can prove false endorsement, she may be able to recover her losses, OpenAI’s profits, triple damages, and attorney’s fees. Unlike the Waits case, however, Johansson does not have a policy against using ads to endorse products. Indeed, Johansson was in talks with OpenAI to accept this exact job. As a result, the large damages recovered in the Waits case would likely not be available to Johansson. A more likely award would be in the neighborhood of what Johansson was demanding to accept this job during the negotiations. 

A trial on this dispute would certainly be interesting, especially the aspects pertaining to the use of someone’s likeness in AI. However, the damages are likely small enough and the optics of a trial loss bad enough for both parties that keeping this matter in the limelight a little longer for publicity’s sake, then quietly and confidentially settling the case will likely be in the best interests of both parties. 

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How Do I Patent My Invention?

Brett Trout

The Search
While you may jump right into the patent application process, it is a good idea to first search to see if anyone has already patented your invention. A patent search may be anything from a Google search, to a Google Patents search, to a full patent search and legal opinion undertaken by your patent lawyer. As a full patent search and legal opinion can get expensive, many inventors opt for either no search or an online search they conduct themselves. While Google Patents is a simple and free option to search for similar patents, it can be difficult to navigate, increasing the likelihood that you might overlook existing patents and patent applications that could prevent you from obtaining your own patent. 

The Application
Once you are satisfied no one else has patented your invention, the next step is to draft and file a patent application with the United States Patent and Trademark Office (USPTO). While any inventor may file a patent application directly with the USPTO, it is nearly impossible for an untrained layperson to obtain a broad patent covering all protectable aspects of a particular invention. This is because it takes a very special set of skills to describe the invention broadly enough to cover the full scope of the invention, but narrowly enough not to encompass some combination of prior inventions, known as the “prior art.” The task is so difficult that not even ordinary attorneys are allowed to file patent applications on behalf of their clients. Only a patent lawyer, skilled in the art of patent drafting and having passed the rigorous “patent bar,” is allowed to file patent applications on behalf of others.  

All Patents Are Not Created Equal 
So, while it is possible to file your own patent application, it is not recommended. Even if you were somehow able to obtain a patent on your own, it is likely your patent will be too narrow to defend against competitors. If a patent is poorly drafted, it is easy for competitors to change a single element of the design and avoid infringement. Conversely, if a patent is properly drafted it can be very difficult for competitors to produce a competitive design that does not infringe the patent. 

What makes on patent better than another? In short, scope. Narrow patents make it easy for a competitor to circumvent the patent by making a minor change. Broad patents are more difficult to circumvent without the competitor having to remove a key element of the invention. Interestingly, if you have 100 patent lawyers all draft a patent on a single invention, no two of the patents will be the same. Some will be narrow, some broad, and some in between. The best way to know whether your patent lawyer is drafting a broad patent or a narrow patent is to inquire about the patent lawyer’s experience. How many patents has the patent lawyer drafted? How many patents has the patent lawyer defended in court? While these questions are not foolproof, they will give you an idea of the patent lawyer’s background and expertise. 

Prosecuting Your Patent Application
Prosecuting a patent application sounds like you are fighting in court, when in reality prosecuting your patent application means fighting back and forth with the Patent Office over the scope of your patent and the prior art. During prosecution of your patent application you are “patent pending.” While you are patent pending you cannot sue anyone until your patent is formally granted. During prosecution, if your patent application is broad enough to cover items in the prior art, then you must narrow the scope of your patent application until it no longer covers obvious combinations of items already in the prior art. So even if your patent application starts off broad, you may have to narrow it to obtain patentability. Prosecuting your patent application can take two years or more, depending on the scope of your patent application in comparison to the prior art. 

Granting Your Patent
Once you have narrowed your patent application enough to define around the prior art, the Patent Office will grant your patent. Once granted, your patent is good for twenty years from the filing date. You do, however, have to pay ongoing “maintenance” fees during that twenty years to keep your patent in force. Failure to pay a maintenance fee will cause your patent to become abandoned.

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How do I trademark the name of my business?

Brett J. Trout
Registered Legal Name vs. Trade Name vs. Trademark
What is the difference between a registered legal name, a trade name, and a trademark? It is important to know the difference as they are all used differently for different purposes, and using them incorrectly could cause a company to lose the rights to at least one of them. First, a registered legal name is the legal name of your business such as ACME Corp. or SmithCo, LLC. It is the name a company uses in formal legal agreements and government filings. A registered legal name is a noun (this will be important later).

Second, a trade name is the name a company usually goes by, such as ACME (without the “Corp.”) or SmithCo (without the “LLC”). Although it may, a trade name does not have to, match the registered legal name. For instance, the registered legal name of your company may be ACME Corp. but the customer-facing name you use for your company may be something like KewlTewls. In cases like this, companies typically must register the trade name as a “d.b.a” (doing business as) with their state. The d.b.a links the trade name to the registered legal name so anyone harmed by the company may determine the registered legal name of the company to pursue legal action. Like a registered legal name, a trade name is also a noun.

Third, a trademark is something that indicates to consumers the source of particular goods or services. A trademark may be a word, name, phrase or symbol. Trademarks can even be colors, sounds, or even smells. The Nike “swoosh” is an example of a trademark. By identifying the source of goods or services, trademarks allow consumers to see the trademark as a symbol of trust, indicating the quality good or service they have experienced in the past. Unlike registered legal names and trade names, trademarks are not nouns, but adjectives. While a trademark may be similar to a company’s registered legal name and trade name, unlike registered legal names and trade names, you should always use trademarks as an adjective in conjunction with a noun identifying the generic good or service associated with the trademark. An example of a company using its various types of names might look like this:

Registered legal name: Acme Corp. has entered into a lease agreement with SmithCo, LLC. (used as a noun)
Trade name: Acme has just opened a new store at 123 Main Street. (used as a noun)
Trademark: Acme widgets are guaranteed for life. (used as an adjective modifying the noun “widgets”)

It is important to always use your trademark as an adjective rather than a noun. Using your trademark as a noun may cause your trademark to become generic, leading to the loss of your trademark rights. Valuable trademarks like escalator, aspirin, and cellophane were all lost as a result of their owners failing to prevent them from becoming unprotectable generic nouns.

Your Company’s Most Valuable Asset
While registering a legal name is often necessary, registered legal names are often not particularly valuable. This is because the government agency registering legal names only cares that no two registered legal names are exactly the same. Because such agencies will often allow the registration by different entities of extremely similar names (such as ACME’s LLC and ACMEs’ LLC) registered legal names are not always what a consumer associates with a good or a service they want to purchase. Trademarks, however, must not only be technically different from one another, they must also be different enough to avoid a likelihood that a consumer might be confused that a particular trademark identifies the goods or services of a competitor. This gives the trademark owner wide latitude to keep competitors from using a similar trademark to trade on the goodwill the trademark owner has developed among its customers.

Many companies have multiple trademarks for multiple product lines. Some companies even have “families” of trademarks connected by a common mark. An example of a family mark is McDonalds’ use of the “Mc” trademark to identify several of its products: McMuffin, McRib, McChicken, etc. owning multiple trademarks allow consumers to associate your company with each of its goods and services. Due to their enormous value in differentiating products from those of competitors, trademarks are the most valuable asset of many companies. Your trademark is what consumers think of when they think of your company. Your company’s trademarks embody the goodwill of your company. This is why it is important to not only vet your potential trademarks to make sure they do not infringe anyone else’s trademarks, but to register and enforce your trademarks against infringers trying to use your reputation to trick customers into buying their inferior product.

Protecting your Trademark
Before you invest a large amount of time and money getting consumers to associate a particular name or logo with your company’s goods or services, contact a trademark attorney to make sure you are not running afoul of any obvious trademark no-nos like infringing or unregistrable trademarks. Once you are on track with the right trademark, you can rest easy knowing that your future marketing campaigns are not going toward promoting a brand you may have to change as soon as it gets popular. For more information on trademarks, check out our FAQ.

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Using the Amazon Patent Evaluation Express (APEX) program may subject you to personal jurisdiction in another state

Brett Trout

In 2022, Amazon formally launched its Amazon Patent Evaluation Express (APEX) program, billing it as an efficient way to resolve claims when a seller on Amazon is infringing your patent. Assuming you have signed up for the program and meet all of Amazon’s prerequisites, if you see someone on Amazon selling a product that infringes your patent you may fill out and submit an APEX Agreement to Amazon.

Upon receipt of an APEX Agreement from a patent holder Amazon sends the APEX Agreement to all accused infringers. The seller then has four options: 1) ignore the APEX Agreement; 2) opt into the APEX program and proceed with a third-party determining whether the product likely infringes the patent; 3) resolve the claim directly with the patent owner; or 4) file a lawsuit for declaratory judgment of noninfringement.

If a seller ignores the APEX Agreement, or opts for the third-party review which finds a likelihood of infringement, Amazon will remove the accused products from Amazon. If the parties settle the matter on their own, Amazon will take no further action. Finally, if the accused seller files a declaratory judgment of noninfringement, Amazon will abide by the court’s ruling.

The problem with the last option is that the accused infringer is unlikely to file the declaratory judgment of noninfringement in your home state. The accused infringer is much more likely to file the lawsuit in their own state or a state with courts more favorable to their position. This was the case in SnapRays, d/b/a SnapPower v. Lighting Defense Group. In SnapRays, LDG, a Delaware Limited Liability Company located in Arizona, owned U.S. Pat. No. 8,668,347 covering a cover for an electrical receptacle. Upon receipt of LDG’s APEX Agreement SnapRays, the accused infringer, filed a declaratory judgment of noninfringement in its home state of Utah. The United States District Court for the District of Utah dismissed the declaratory judgment action for lack of personal jurisdiction. The district court ruled in LDG’s favor, finding LDG lacked sufficient contacts with Utah to be subject to personal jurisdiction in an Utah court. The court ruled that submitting the APEX Agreement did not demonstrate LDG purposely directed activities at SnapRays in Utah. The district court’s ruling was based on similar cases and that is well-settled law that a patent owner sending a cease and desist letter to an accused infringer is not, without more, sufficient to justify subjecting that patent owner to personal jurisdiction in the accused infringer’s home state.

SnapRays appealed the district court’s ruling to The United States Court of Appeals for the Federal Circuit. As the issue related to personal jurisdiction in a patent infringement matter, the Federal Circuit applied “Federal Circuit Law” affording no deference to the lower court’s ruling. in determining whether or not LDG was subject to personal jurisdiction in Utah, the Federal Circuit examined three factors: (1) whether the defendant “purposefully directed” its activities at residents of the forum; (2) whether the claim “arises out of or relates to” the defendant’s activities with the forum; and (3) whether assertion of personal jurisdiction is “reasonable and fair.”

In finding that LDG submitting the APEX Agreement did indeed subject LDG to personal jurisdiction in Utah, the Federal Circuit held that extra-judicial enforcement activities, such as Amazon’s APEX program, satisfy the “purposefully directed” arm of the personal jurisdiction analysis. The Court held that the brunt of the harm caused by a defendant’s activities need not be suffered in the declaratory judgment state, as long as at least a “jurisdictionally sufficient amount of harm” is suffered in the state. The Federal Circuit likened the APEX Agreement to a copyright owner sending a notice of claimed infringement (NOCI) under eBay’s Verified Rights Owner (VeRO) program or someone sending a letter to Network Solutions, Inc. (NSI) challenging the registration of a particular domain name in a manner that automatically triggers NSI’s dispute resolution process.

The difference between these activities and a cease and desist letter, reasoned the Court, is that is that these activities all trigger an “automatic effect” in the accused infringers state if the accused infringer does not respond. Conversely, if an accused infringer ignores a cease and desist letter, no harm automatically occurs in the accused infringer’s state. In the SnapRays case, if SnapRays ignored the APEX Agreement, Amazon would automatically remove SnapRays’ products from Amazon. In overruling the lower court, the Federal Circuit ruled that this “automatic takedown process” was enough to tip the scales toward a finding of personal jurisdiction.

While the Federal Circuit did state “Parties who participate in APEX by submitting an Agreement will only be subject to specific personal jurisdiction where they have targeted a forum state by identifying listings for removal that, if re- moved, affect the marketing, sales, or other activities in that state.” it is hard to imagine an APEX Agreement that would not potentially affect the marketing, sales, or other activities in that state.

One of the main attractions of the APEX program is its low cost compared to a multi-million dollar patent infringement lawsuit. In light of this recent ruling, however, the APEX program may not only force a patent owner into a full-blown patent infringement trial before they are ready, but it may face them to litigate the matter in a hostile state. For this reason, if you are not willing, or financially able, to fight a patent infringement lawsuit in the home state of your accused infringer, you may wish to rethink filing an APEX Agreement in the first place.

Edit: SnapRays appealed the district court’s ruling

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Can I register a trademark created by Artificial Intelligence?

Brett Trout

Patents require a human inventor and copyright requires a human author, but trademarks require neither a human inventor nor author. There are many reasons the United States Patent and Trademark Office (USPTO) might reject your application for federal trademark registration, such as likelihood of confusion with an existing trademark, being merely descriptive or misdescriptive, being merely a surname, being merely ornamental etc. One reason the USPTO will not reject your trademark application, however, is because your trademark was generated by artificial intelligence.

While you will not be able to copyright your AI-generated trademark, this may work in your favor. You not being able to register the copyright means no one else may register the copyright in the trademark either. This eliminates the problem of the artist you paid to design your logo stealing the logo from somewhere else, resulting in a copyright lawsuit that lands you in federal court.

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Do I own the copyright in the AI images I created?

Brett Trout

In the United States, as of the date of this post, you do not own the copyright in any AI work you create. The United States Copyright office has stated explicitly, that “it is well-established that copyright can protect only material that is the product of human creativity.” In reaching this conclusion, the Copyright Office relies on the case of Naruto v. Slater for the proposition that non-humans, such as monkeys, cannot create a copyrightable work.

So how can you protect your AI-generated images? Presently, the Copyright Office will allow you to register copyright in material that was only partially AI-generated. So if you create an AI image, then modify it sufficiently to constitute artistic contribution, you own copyright in that portion of the AI-generated image that you authored.

Your contribution may include the addition of human-generated text or images, and/or the selection, coordination, and arrangement of portions of image. You may even register your copyright in an AI-generated image with human-created portions. To do so, you must describe, in the copyright form, the portions of the image that were created by a human and those items that were AI-generated. Those portions of the image that were AI-generated will be specifically excluded from any resulting copyright registration.

Be aware though that this is a rapidly-changing area of the law, and that the rules outlined above may very well change in the near future.

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Do I Need to Trademark the Name of My Board Game? 

Brett Trout

So what is a trademark? A trademark is any word, name, symbol, or device, used to indicate source and to identify and distinguish the owner’s goods or services from those manufactured or offered for sale by others. Trademarks are associated with specific goods or services. That is why one company may own the trademark “Avocado” for mattresses and another company may own the trademark “Avocado” for clothing. While you may own a similar trademark for different goods or services, you cannot own trademarks that are generic or merely descriptive.  So you would not be allowed to own a trademark in “Avocado” or “Green” for avocados.

How do you obtain a trademark? As soon as you offer your board game for sale in commerce with a non-descriptive, non-infringing word or symbol, you automatically have a what is known as a “common law” trademark. While a common law trademark might be sufficient for most board games, if you anticipate competitors trying to sell a similar board game with your trademark, you may want to seek out a trademark attorney to assist you in pursuing federal trademark registration. Assuming there are no other trademarks similar to yours, the cost for federal registration runs less than $1,000. Although you do not have to register your trademark to enforce your trademark against infringers, federal registration does provide many benefits, including constructive notice to everyone in the country that you are claiming the trademark and the possibility of receiving treble damages and having your attorney’s fees paid if the infringer is found to be willfully infringing your federal trademark rights.

What is trade dress? Trade dress is a subset of trademark law that protects the visual appearance of the product or packaging to the extent it serves as an indicator of the source of the product.  

How do I know if I infringe someone else’s trademark? The test for whether you infringe someone else’s trademark is whether there is a likelihood that consumers would be confused that your product originated from, or was authorized by, the trademark owner. Adding more words to an existing trademark will typically not avoid infringement of that trademark. If you incorporate someone else’s entire trademark into your trademark for the same goods, you are likely going to lose the incoming trademark infringement battle. Federally registering your trademark is a good way to not only protect your trademark, but it also gives you some indication of the likelihood you may be infringing someone else’s trademark. Bear in mind, however, the person with the best legal claim against you for trademark infringement is not always the one who actually ends up suing you for trademark infringement and since federal trademark infringement lawsuits can run hundreds of thousands of dollars, even if you win, it is sometimes easier to simply pick a different trademark than to fight trademark infringement lawsuit you are likely to win.  

So do I need to federally register the trademark in my board game? That really depends on your game and your budget. If you are publishing tens of thousands of copies of your “evergreen” board game, the cost of federally registering your trademark, or at least undertaking a trademark infringement analysis, may indeed be warranted. If you are merely publishing 500 copies of your game for little or no profit, however, federally registering your trademark may not be worth the cost. 

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Do I Need to Copyright My Board Game?

Brett J. Trout

Whenever you create an original work of authorship, such as a book or artwork for a board game, you own the copyright in that work of authorship as soon as you fix your work in a tangible medium. So what is fixing a work in a tangible medium and why is it necessary? Fixing the work in a tangible medium basically means that you have recorded your work in a way that allows you to communicate your work to others. This can be making a prototype of your board game, storing the artwork on a thumb drive, printing 3D miniatures, etc. Basically, as soon as you record your artwork in some manner, you obtain copyright in that work.

So why have the fixed in a tangible medium requirement anyway? The requirement of fixation in a tangible medium requirement avoids the intractable issues that would be associated with people claiming copyright in ideas. Without a fixation requirement, anyone could claim they wrote any hit song or a hit movie script and sue for copyright infringement. Simply put, no one is allowed to claim copyright in mere ideas. So what parts of your board games can you protect with copyright? Among other things, you may protect your box art, graphic design, minis, characters, text, card art, etc. Ans which parts of your board games are not covered by copyright? By statute, copyright protection does not apply to “any idea, procedure, process, system, method of operation, concept, principle, or discovery.” For functional aspects of your board game such as the game mechanics you have to use patents, rather than copyright, to protect them.

Now that you have fixed your work in a tangible medium and obtained your automatic copyright you are all set, right? Possibly. If you ever actually intend to enforce your copyright in court against an infringer, however, you must first register the copyright with the United States Copyright Office. Unlike registering patents and trademarks, when you register your copyright you do not have to prove that you are the first one to create the copyrightable work. The work only has to be original to you. So, theoretically, two people could own the copyright in the exact same artwork. This actually works to your benefit when it comes to registration. Since there is no requirement of that your copyrightable work be unique, the Copyright Office does not have to undertake a search for similar works before registering your copyright. This makes the copyright registration process cheaper and faster than obtaining a trademark registration on the name of your board game and significantly cheaper and faster than obtaining a patent on one or more of your board game mechanics.

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The Right of Publicity in Board Games

Brett J. Trout

Kickstarter recently suspended a campaign for a board game showcasing a well-known intellectual property. The public suspension notice stated the campaign was the “subject of an intellectual property dispute and is currently unavailable.” So did the creators of the game launch their Kickstarter campaign without securing all of the necessary the intellectual property rights? 

Kickstarter did post an additional fact about the issue, namely that the dispute involves “Use of images of Mother Firefly, played by actress Karen Black” and that the infringing materials is the “Likeness of Karen Black.” Even before the dispute was finally settled, Andy Van Zandt of the creator, Trick or Treat Studios, confirmed that their position was that “Our House of 1000 Corpses Kickstarter has been temporarily paused due to an infringement dispute surrounding likeness rights of an individual. Please be assured this is an officially licensed product, and we were diligent in securing all necessary approvals.” While it appears the dispute is settled and the creators may have indeed obtained all of the necessary releases, very little information has been publicly disseminated about the issue, so any opinion on the matter is little more than conjecture at this point.

Although this particular dispute may be one of mistaken allegations, it provides an opportunity to review what it means to “license an IP.” In addition to licensing the trademarks and copyrights, if your game includes names and/or likenesses of actual people you must also consider licensing the name, image, and likeness of everyone you intend to use in your game. Typically, for a movie, the name, image, and likeness rights will have been previously obtained and rolled into one agreement, this is not always the case. Sometimes, while the IP owners may have obtained the name, image, and likeness rights as they pertain to the movie, they may not have obtained the right to sublicense those rights for other projects, such as board games. 

Assume, hypothetically, you are running a Kickstarter campaign. How do you avoid a dispute like this? The best course of action is to have everyone whose name, image, or likeness you intend to use in your game, including the estates of any deceased individuals, (the “Talent”) execute a name, image, and likeness agreement. The agreement should include clauses detailing how long the agreement lasts, how much the Talent is to be paid, whether the Talent has approval rights regarding the final product, governing law, reservation of rights, etc. 

Lets assume though, that you were rash and licensed the intellectual property of a movie for your game, but failed to have one the Talent, sign a name, image, and likeness agreement. Lets also assume that Talent refuses to let your game go forward with her image and likeness. What do you do then? The first thing you do is find out what the Talent wants. Does she want money? Does she want changes to the final product? Does she not want to be associated with the project? Once you know her motivations, you can move toward a settlement. If that is not possible, your only option may be to replace all images of the Talent in your game. 

So just what are name, image, and likeness rights? Name, image, and likeness rights are publicity rights. Publicity rights stem from privacy rights which, in turn, stem from the Fourth Amendment to the Constitution. The right of publicity is of a much more recent vintage than the right of privacy however, dating back only a century or so. Unlike the right of privacy, the right of publicity is a person’s right to control the commercial exploitation of their name, image, likeness, etc. to market third-party goods or services without that person’s consent.

Unlike the right of privacy, which is protected by the Constitution and specific federal statutes, the right of publicity is a patchwork of state and common law. This means your rights to your name, image, and likeness vary depending on which state law applies. Even if what you want to do is legal in your state, it may not be legal in another. So if you plan to sell your game nationwide, it is important that you comport with the publicity rights of every state.  The best way to do this is to have a name, image, and likeness agreement drafted to cover all aspects of your project in compliance with the law of every state. Make sure to anticipate all of your intended use of the name, image, and likeness, so you do not have to go back later. Plan on having expansions to your game? Make sure that is covered in the agreement. Plan on creating an online version of your game or spinning off a video game? Make sure those are covered as well. Given the complexity and potential issues with these types of agreements, it is important to retain a lawyer who has the requisite experience dealing with intellectual property and the right of publicity.

The right of privacy is an ever-changing minefield that can easily land you and your game in court facing down and injunction that could send your game into development hell. Be aware that what constitutes the right of publicity today may be different tomorrow. To avoid third-party lawsuits it is important to educate yourself as to what laws govern your particular intended use of other-people’s names, images, and likenesses. Be prepared to spot right of publicity issues before they arise, so you can get all of the proper licenses in order. Even if you have obtained all of the proper licenses, be sure to quickly address all accusations of infringement to clear up any potential misunderstandings. Being technically right will be of little solace if your game gets confiscated at your warehouse due to a lawsuit by a model or an actor who may have less knowledge of image rights than you do. 

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Posted in Board Games, Copyright Law, Trademark Law.

Can I Patent my Board Game?

Brett Trout

The short answer is “yes.” Many board game designers have patented their board games. Given that board games are indeed patentable, the better question might be “Should I patent my board game?” With the cost of patenting a board game running $12-$25K or more and the cost of suing someone for infringing your board game patent running up to seven or eight figures, unless you are planning on making large profits from your game, you may want to forego patent protection. Conversely, if you do anticipate large profits from your game, patent protection may dramatically increase those profits. The extreme example would be the patent on Magic the Gathering that carved out a monopoly allowing the owners of that patent to sell over 20B cards to over 20M players. So while patenting your board game is a good idea, it likely only makes sense if: 1) you plan on your game being in the top 5-10% in overall game sales; and/or 2) you have a publisher willing to pay you a large fee to license your game.

Say your game is the exception, rather than the rule, and you do want to pursue patent protection. What does it take to get a patent on a board game? Board game patents do not protect the entire game. They only protect a narrowly-defined combination of elements that make up a certain mechanic or part of the structure or play of your game. A patent cannot protect the name of your game, your logo, your text, your artwork, or your graphic layout. Those items may instead be protected by trademark and copyright. You also cannot obtain a patent on simply an idea or a concept for a game. To obtain a patent, you have to describe in detail exactly how to make at least one actual embodiment or mechanic of your game.

To obtain a patent, your board game must be new, useful, and nonobvious. Proving your game is new and useful is not as difficult as proving your game is nonobvious. To be nonobvious, your game must be more than simply a new combination of old mechanics. Your game has to either employ a new mechanic, or a combination of existing mechanics in a way that your average skilled board game designer would not have thought of combining. In denying your patent application, patent examiners are allowed to combine mechanics from several other games to show your game is merely an “obvious” combination of old elements and therefore unpatentable. Factors weighed in this determination include: the commercial success of your game, long-felt but unsolved needs in the industry for a game such as yours, failure of others to design similar game, and unexpected results of your particular combination of pre-existing mechanics. None of these factors are dispositive, however, meaning that the determination of the patentability of your game will depend on your specific game, the specific games that preceded yours, and the desire in the industry for a game such as yours.

Unlike trademark and copyright registrations, patent registrations are more detailed and complex. One small error may invalidate your entire patent. Moreover, if you had fifty patent attorneys draft a patent covering your board game, no two of the patents would be the same. They would all have a different scope of protection, varying from narrow to broad. The more narrow your patient, the easier it is for competitors to change one or two items to circumvent your patent. The broader your patent, the better able it is to carve out a larger monopoly. So picking the best patent attorney for your game is extremely important. While disclosing your new board game design does not necessarily prevent you from later applying for a patent, if you wait a year or more after such a disclosure, your game design may be in the public domain and, therefore, unpatentable. If you have disclosed your game to playtesters, publishers, or anyone else, it is important to contact a patent attorney as soon as possible to determine the deadline for getting your patent application on file.



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Posted in Board Games, Choosing the Best Lawyer, Patent Law. Tagged with .