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On July 23, 2010, Judge William Alsup of the U.S. District Court for the Northern District of California entered an order denying Facebook Inc.’s motion to dismiss a second amended complaint alleging that Facebook is guilty of contributing to the copyright infringement of a video game. Judge Alsup denied Facebook’s argument that, as the Plaintiff had failed to properly allege direct infringement by its Co-Defendant, no claim against Facebook for contributory infringement could be made. A copy of the decision can be found here: Miller v Facebook

Background

The pleadings allege that Plaintiff, Daniel Miller, created the video game Boomshine in 2007 and was granted a copyright registration by the U.S. Copyright Office. Boomshine is a game in which players click on floating circles which cause them to expand resulting in the expansion of any other circles which come into contact. Miller’s second amended complaint accuses Defendant,Yao Wei Yeo, of direct infringement by arguing a similar “look and feel” between his video game, ChainRxn, and Boomshine but provides no further evidence of copying. According to the allegations in Miller’s filings, “ChainRxn copies the look and feel of Boomshine by incorporating almost every visual element of the game”. Moreover, the second amended complaint accuses Facebook of contributing to the infringement of the video game by allowing Yeo’s game to remain on its website after being notified that it infringed the copyright of Boomshine.  Miller alleges that “[a]fter defendant Yeo published ChainRxn on defendant Facebook’s website, members of the public were deceived regarding the origin of ChainRxn.”

The Court’s Denial

Facebook filed a motion for dismissal of the suit on June 21, 2010. Its argument was founded on the position that, as Miller had not properly first pled direct infringement by Yeo, he could not sustain a claim for contributory infringement by Facebook. The basis for Facebook’s argument was that Miller’s mere allegation that ChainRxn “looks and feels” identical to Boomshine without further proof of copying was insufficient to allege direct copyright infringement of Boomshine’s source code. Moreover, Facebook argued that the copyright registration Miller had obtained for the source code was limited to its literal elements and not audiovisual elements of Boomshine. Judge Alsup denied the first element of Facebook’s motion as premature noting that a “plaintiff can rarely examine the underlying source code of an accused infringing software program without resorting to discovery.” Specifically, Judge Alsup said it would be “unreasonable, if not impossible” for Miller to know with “exacting detail” how Yeo copied the Boomshine source code so early in the case. Additionally, Judge Alsup denied the second portion of Facebook’s motion by clarifying that the Court’s earlier order “did not hold that copyright protection for source code was limited to the literal elements of the work” but rather that “plaintiff’s copyright appears to be limited to the source code rather than the audiovisual aspects” and further determination is necessary to decide if the audiovisual elements of the game were also protected.

Finally, the court reminded Miller to address the disputed service of the second amended complaint on Yeo by the July 30, 2010 deadline or suffer a “potentially fatal defect” to his case.

Comments

The above action is interesting for several reasons. Platform companies like Facebook generally rely on the “safe harbor” protections the Digital Millennium Copyright Act provides when an infringement claim is made for the postings of a third-party. In fact,YouTube recently obtained a favorable decision providing it with DMCA protection in a potentially billion-dollar copyright infringement suit brought by Viacom. Moreover, while the Courts may differ on copyright protection for audiovisual “screen displays” in video games, the Copyright office’s consistent position is that “a single registration is sufficient to protect the copyright in a computer program and related screen displays, including videogames, without a separate registration for the screen displays or a specific reference to them on the application for the computer program.” For further discussion you can review the Copyright office’s Circular 61

That said, this case continues to demonstrate that social networking platforms and other websites displaying user generated content must be ever vigilant or potentially face suits arguing various copyright theories. As technology advances (as well as the means of infringement) it is likely the pleading requirements will remain relatively low and defer the need to demonstrate the how, when and why of the alleged infringement until the completion of discovery. Since this will likely increase the cost of litigating these matters, Platform operators and creators of user generated content need to understand and avail themselves of copyright (and other IP) protection, enforcement techniques and available defenses.

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According to a press release today, the Walt Disney Company has agreed to acquire Playdom Inc., one of the leading
companies in the fast-growing business of online social gaming for $563 million plus an earn out of up to $200 million more.

According to the release, in just two and a half years of operation, Playdom has established itself as
a pacesetter in building popular games for social networks enjoyed by consumers
around the globe. Through well-known titles like Social City, Sorority Life,
Market Street and Bola, Playdom engages an estimated 42 million
active players each month.

Disney President and
CEO, Robert A. Iger stated:

“We see strong growth potential in bringing together Playdom’s talented team
and capabilities with our great creative properties, people and world-renowned
brands like Disney, ABC, ESPN and Marvel.” said Robert A. Iger, President and
CEO, The Walt Disney Company.

This deal is just the latest in what has been a rapidly growing and evolving industry segment.

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hermes.jpgInternet businesses that are more that passive host sites should take note that a French court found that eBay is a “publisher of online brokering services” because it goes beyond “purely
technical, automatic and passive [site host] services.” As a result it ruled that eBay did not qualify for the host services infringement liability exception.

For example, the court found that eBay suggests purchases based on
visitors’ previous purchases, and it enables sellers to employ
cross-merchandising and to obtain litigation settlement services for payment or
delivery disputes.The court found that eBay profited from the sale of counterfeit Hermès bags because it received commissions on such sales amounts and that its site did not  have a passive
and automatic role. The court highlighted the fact that eBay “exercises a determining action on the content
of advertisements, in that it reuses, on its own initiative, information aimed
at attracting buyers” and that it misused Hermès trademarks by allowing users to list items, present them in an attractive way
and route potential buyers to other Hermès offers.

The court found that as a publisher, eBay did not ensure the site was not used for unlawful sale of
counterfeit products.

This decision could have significant ramifications for other site operators that are proactive in assisting sellers such that they are deemed to be a service publisher rather than just a internet host.

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We recently reported on the Facebook v. Power Ventures case, in which Facebook alleged, among other things, that Power.com using automated tools to populate a portal that aggregates a user’s social networking profiles violates its terms of service and the Computer Fraud and Abuse Act and an analogous provision of the California Penal Code. On July 20, 2010, the court said it was unclear whether Power.com was a “user” for purposes of the terms of service, but even if it was, feared that finding all user violations of a terms of service as access “without permission,” would create
constitutional problems with the statute. The Court added that terms of service are not well equipped to inform users of what activities might subject them to criminal penalties. The court, in part, relied on the fact that site operators can unilaterally change the terms of service at anytime.

The court did find that Facebook has a potential claim under the California law based on Power.com accessing Facebook’s site by circumventing technical or code-based measures. That claim will go forward.

The court rejected Power.com’s argument that Facebook did not even have standing to bring the suit because it did not incur any damage or loss. The court found that because Facebook took steps to prevent access, even “a few clicks of a mouse” was sufficient to satisfy the requisite damage or loss for it to have standing, noting that the statute authorizes claims if there is “any amount of damage or loss.”

This decision could have significant ramifications for social media platform providers. It highlights the need for a comprehensive strategy, including both legal and technical measures to prevent unwanted activity on their sites.

Here is a copy of the Facebook Decision

 

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An appellate court ruled that an employee’s agreement to assign “inventions” to Mattel may not cover “ideas” the employee had for the Bratz line of dolls. This ruling may impact many companies ownership of certain rights if their IP or invention assignment agreements are not clear enough.

In vacating the lower court ruling, the court stated:

Prior to trial, the district court held that Bryant’s employment agreement assigned his ideas to Mattel, and so instructed the jury. What was left for the jury to decide was which ideas Bryant came up with during his time with Mattel. It found that Bryant thought of the names “Bratz” and “Jade” while he was employed by Mattel, and that MGA committed several state law violations by interfering with Bryant’s agreement as well as aiding and abetting its breach. After trial, the district court imposed a constructive trust over all Bratz-related trademarks….

The appellate court added that:

A constructive trust would be appropriate only if Bryant assigned his ideas for “Bratz” and “Jade” to Mattel in the first place. Whether he did turns on the interpretation of Bryant’s 1999 employment agreement, which provides: “I agree  to communicate to the Company as promptly and fully as practicable all inventions (as defined below) conceived or reduced to practice by me (alone or jointly by others) at any time during my employment by the Company. I hereby assign to the Company . . . all my right, title and interest in such inventions, and all my right, title and interest in any patents, copyrights, patent applications or copyright applications based thereon.” (Emphasis added.) The contract specifies that “the term ‘inventions’ includes, but is not limited to, all discoveries, improvements, processes, developments, designs, know-how, data computer programs and formulae, whether patentable or unpatentable.” The district court held that the agreement assigned Bryant’s ideas to Mattel, even though ideas weren’t included on that list or mentioned anywhere else in the contract.

In its legal analysis the appellate court stated:

Mattel points out that the list of examples of what constitutes an invention is illustrative rather than exclusive. Ideas, however, are markedly different from most of the listed examples. Cf. People ex rel. Lungren v. Superior Ct., 926 P.2d 1042, 1057 (Cal. 1996) (courts avoid constructions that would make “a particular item in a series . . . markedly dissimilar to other items on the same list”). Designs, processes, computer programs and formulae are concrete, unlike ideas, which are ephemeral and often reflect bursts of inspiration that exist only in the mind. On the other hand, the agreement also lists less tangible inventions such as “know-how” and “discoveries.” And Bryant may have conveyed rights in innovations that were not embodied in a tangible form by assigning inventions he “conceived” as well as those he reduced to practice.

As a result the court concluded that the agreement could be interpreted to cover ideas, but the text doesn’t compel that reading and that therefore the district court thus erred in holding that the agreement, by its terms, clearly covered ideas.

This case will get sent back to the District Court for further determination. However, regardless of the result, it may be a good “idea” to consult with an IP attorney to make sure that your IP assignment agreements give you the maximum benefit and ownership of all rights that you want to own.

Mattel Bratz Decision

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Venture Beat recently reported on the results of a virtual goods study that showed about 75% of online games users have bought virtual goods and that many users surveyed plan to spend more in the next 12 months.

This survey is one more confirmation of the rapid growth of virtual goods. There are a number of conferences this fall that will focus on the virtual goods industry. Members of our team will be speaking at Virtual Goods World Europe 2010 in London and the Virtual Goods Conference ’10 in Santa Clara.

We hope to see you at one or more of these conferences.

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Augmented Planet Ltd. indicates that as of the end of June 2010, a search of the App Store revealed nearly 400 applications found by searching “augmented reality” and nearly 100 more that were augmented reality apps but didn’t use those words. In comparison, prior to September 2009, there were less than 100.

This is one more indicator of rapid growth of augmented reality.

This data confirms the the sense of optimism that our team members experienced while we attended the Augmented Reality Event conference in early June this year.

Of course with the rapidly expanding business opportunities in this space come legal issues of which companies should be aware. Our team has prepared a Legal Issues with Augmented Reality fact sheet which highlights some of the common issues faced in this space.

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A German data protection official has initiated action against Facebook for its use and storage of information about people who are not members. The actions result in part from the ability for registered users to use a tool provided by Facebook that scans a user’s existing email contacts and retrieves and stores that contact information, including information about non-user contacts.
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Facebook faces potential fines for storing personal information of people who don’t use the site and have not granted Facebook permission to access or store their details.

Facebook has until Aug. 11 to respond to the legal complaint.

This is another example of how certain technology, which may be useful to users of a social media site may adversely affect the rights of non-users.

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gucci.jpgIn Gucci America, Inc. v. Frontline Processing Corp., No. 09 Civ. 6925 (HB) (S.D.N.Y. June 23, 2010), a New York court denied a motion to dismiss contributory trademark infringement claims brought against the defendant credit card processing companies by Gucci. The court held that credit card processing companies may be held liable for contributory trademark infringement under the relevant Supreme Court test. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844 (1982).

The court held that defendants (and others) who provide service to websites that sell counterfeit goods can be liable if the plaintiff can show that they:

(1) intentionally induced the website to infringe through the sale of counterfeit goods; or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability.

The court’s decision relied on the “willful blindness” standard set forth in Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010) and distinguished the Ninth Circuit’s decision in Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir. 2007) due to the fact that in this case, unlike in Perfect 10, the infringement relied on credit card services because the infringement was based on the sale of tangible counterfeit products.

This and other recent cases highlights the need for credit card companies and other payment providers to carefully assess the steps they can and should take to limit liability for trademark infringement and other liabilities.

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Many people routinely click on the Agree button without reading the terms of service. Doing so can be perilous for many reasons. A pending case highlights another potential reason to read and abide by the terms of service – potential criminal liability. Granted, there are some unique facts here as discussed below, but it is to everyone’s benefits to read and understand terms of service. For example, for users of a social media site, it is crazy to not understand what personal data is being collected and how it is being used and make an informed decision whether to use that site. For businesses (and investors in businesses) that interact with social media sites, it is critical that you understand and abide by the terms of service to assess whether your business model is “legal” and in compliance with the relevant terms of service. If not, your business (or investment) may be in peril, and in a worst case scenario you may face personal liability. Such was the case for the CEO of MDY when it created a tool that engaged in unauthorized access to Blizzard’s World of Warcraft client software in violation of the relevant terms of service and EULA. In addition to the company being found to infringe, the CEO was held personally liable for $6 million in damages.

In a pending case, Facebook v. Power Ventures dba/Power.com, Facebook is relying on its terms of service and the Computer Fraud and Abuse Act and an analogous provision of the California Penal Code to prevent Power.com from using automated tools to populate a portal that aggregates a user’s social networking profiles. This is deemed beneficial by many users, but not by Facebook. In its complaint, Facebook alleges that it grants a limited license to create applications that interact with Facebook’s proprietary network subject to various terms of use agreements which prohibit, among other things, requesting, soliciting, or otherwise obtaining access to user names, passwords or other authentication credentials.

Facebook alleges that Power.com induces visitors to surrender their Facebook user names and passwords in order to “integrate” their Facebook account into the Power.com website, in violation of the Facebook’s terms of service.

After notification from Facebook. Power.com allegedly initially agreed to cease the activity and purge the “ill-gotten data,” but apparently later changed its mind and continued its practices. In response, Facebook claims to have implemented technical measures to block access to the site by Power.com but Power.com then allegedly circumvented the technological security measures without authorization in violation of the Computer Fraud and Abuse Act. Facebook also alleged violation of CALIFORNIA PENAL CODE 502(c), the “COMPREHENSIVE COMPUTER DATA ACCESS AND FRAUD ACT” (including Sections 1-4 and 7) and the anti-circumvention provisions of the DMCA, among other claims.

Additionally, Facebook alleges that Power.com used the names to send unsolicited email messages to Facebook users that contained false header information in violation of the CAN-SPAM (CONTROLLING THE ASSAULT OF NON-SOLICITED PORNOGRAPHY AND MARKETING) Act.

Even though this is a civil action the penalties that can flow from a finding of violation of the Computer Fraud and Abuse Act include: (A) a fine or imprisonment for not more than ten years, or both (for a first conviction) and (B) a fine under or imprisonment for not more than twenty years, or both, in the case of a repeat offender. Violation of the relevant sections of the California Penal Code can result in fines and imprisonment up to three years.

The Electronic Frontier Foundation filed an amicus brief in support of Power Ventures; arguing:

Facebook argues that by offering these enhanced services to users, Power violated California’s computer crime law. It grounds its claim in the fact that Facebook’s terms of service prohibit a user from having automated access to a user’s own information and that Power continued to offer the service to Facebook users even after Facebook sent Power a cease and desist letter demanding that it stop. Yet merely providing a technology to assist a user in accessing his or her own data in a novel manner cannot and should not form the basis for criminal liability.

Many commenters have pointed out that taken to an extreme, any online service provider can create ridiculous terms of service and allege that there is a violation. While this may theoretically be true, in reality a court could strike down a frivolous clause if that were the case. However, when a company has a legitimate business interest to protect, and the terms of service relate to that business interest, an argument can be made that such terms should be upheld. Here Facebook appears to be alleging that it has a legitimate right to prevent third party application developers from requesting, soliciting, or otherwise obtaining access to user names, passwords or other authentication credentials. Perhaps this case will shed some light on this issue. Check back as we will provide updates on this case as it progresses.

Facebook Complaint