Famous Last Words April 2011

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DISCLAIMER: This column is intended for general educationaland entertainment purposes and is not legal advice. Every situation is unique. Anyone entering into a contract should have a lawyer who can provide counsel.

Jim Charne,

Attorney at Law

April, 2011

Famous Last Words

By Jim Charne, Attorney at Law

Clearances in Video Games

Dear Readers:  

I have been very fortunate to be part of interactive games pretty much since the early days of the first Atari systems. 

Along the way, as hardware has become more powerful, graphics more detailed, music more complex and detailed, game play more realistic, game makers and publisher have had to become more aware and detail oriented to make sure their products do not infringe on third party rights, and become subject to claims.  The potential financial hit arising from an infringement (even if inadvertent) is enormous. 

This is a game developer concern as much as a game publisher concern.  Every game dev deal requires the developer to warrant that the developer’s work does not infringe.  While the extent and detail of this warranty can be negotiated, in the end, if a claim is made, the developer will almost always be dragged into its defense, and incur some sort of liability, one way or another. 

So … what steps should a developer take to protect itself? 

In the motion picture business, scripts, and then productions go through a process called “clearance.”  Game development keeps inching closer and closer to movie production in cost and process.  It is to be expected that clearance should become a part of every game development plan. 

How can a game infringe?  There are ways to do so that might be surprising to you.  Let’s start a list: 

1.  Does your game contain any recognizable buildings or locations?  Architectural features are protected under copyright law.  Years ago, a client received a strong letter from a lawyer for the J. Paul Getty Trust, which owns and operates the Getty Museum in Los Angeles.  The client had utilized the inner courtyard of the Getty as a location in a game.  Screen shots had been posted in a pre-release look at the game.   

Fortunately (and I really mean that!), the Getty had noticed the shots and written at that time – BEFORE release of the game.  At that point, it was easy to remove the location, or redesign it so it was no longer the Getty courtyard.  If we had not received the letter until AFTER the game release, the cost and disruption, and potential damages for this unauthorized use, would certainly have been many times greater. 

While recognizable locations or buildings may incidently appear in a game (for example, as a car drives past), caution must be exercised before such sites are used for game play purposes.   

2.  Does your game contain famous faces or recognizable characters?  People individually control the right to use their likenesses for commercial purposes.  This individual right has expended over the past several decades, and generally flows from efforts by the estate of Elvis Presley to control use of his likeness for commercial purposes.  The length of time this right persists varies state by state – in California it is 75 years from death.  The trend nationally is to increase the duration of these rights.  

You may be able to use a likeness if it is for informational, not commercial purposes, or if the use amounts to a parody.  That is why celebrity likenesses or caricatures can appear on magazine covers, in news articles, or on television shows like “South Park” or “The Simpsons.”  But when such a use moves across from informational to commercial, it becomes way more complicated.  There is a long line of court cases dealing with this issue. 

Some developers may have had the experience where a movie license did not include the right to use the likenesses of the stars in the game.  This is an issue related to the actors’ rights to control the commercial use of their likenesses.  Unless the movie studio secured those rights when it negotiated its deals with the actors, it cannot pass them along to the games licensee. From the movie producer’s or studio’s standpoint, it would have cost more to get these ancillary likeness rights.  With movie producers and studios under pressure to hold down the cost of their productions, there is no justification on their part to pay more for rights they, themselves, will not use. 

3.  Brand names, name brand products, posters, photographs, and other material subject to copyright or trademark, generally should not be used in your game without permission.  Unauthorized use can result in claims.  Examples of such material may include identifiable car models and brands (Porsche, Ferrari, Lotus, Cadillac), military aircraft and weaponry (F-16 Hornet, FA-18, B-1 bomber), and recognizable products (Coca-Cola, Wheaties, Budweiser beer).  Note that military ships owned by the US armed forces (like the aircraft carrier George H.W. Bush or Ronald Reagan), are not generally subject to this restriction.  

Even use of copyrighted material as source material to develop your own “original” art may result in infringement.  In a well-reported case, not in a games context, but certainly applicable to our discussion, the artist Shepard Fairey created the Obama “Hope” poster, it turns out, from an AP freelancer’s photograph.  The photographer sued over copyright infringement, claiming the poster was a derivative work of his photo.  After a 2-year litigation, the parties settled out of court.  Financial terms of the settlement are confidential. 

Clearance is an area where the services of an experienced intellectual property lawyer can be extremely helpful.  You may also want to consult with your publisher producer before any material that maybe questionable is integrated into a game.  And always keep a written journal of each query and the result.  And confirm in writing when you get an “OK.” 

Going forward, as games become more and more integrated into, and recognized as, mainstream media, the risk of these kinds of claims will increase, not decrease.  But through proper planning and oversight, the risk can be managed. 
 

Jim's Bio

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, composers and other clients in the games industry.  Jim has been a frequent speaker at GDC, is active in IGDA from whom he received an “MVP” Award at GDC 2006, in 2010 will chair the Practicing Law Institute video game law segment the week after GDC at its annual Entertainment Law Symposium in New York, and is a member of the Advisory Board of G.A.N.G.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

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Famous Last Words is intended for general educational and entertainment purposes and is not legal advice.  Every situation and circumstance is unique.  Anyone entering into a software-related contract should have an experienced lawyer who can provide counsel throughout the process.

©2011 Jim Charne.  All rights reserved.