Using the Copyright Force May Help LucasFilm to Win Sabacc Lawsuit

Lucasfilm Ltd. and Lucasfilm Entertainment Company Ltd. LLC recently filed a trademark infringement and copyright infringement suit in the Northern California District Court against Ren Ventures Ltd, Sabacc Creative Industries Ltd., which created and released in 2015 the “Sabacc” mobile game app, shortly before the release of the Star Wars The Force Awakens movie. The case is Lucasfilm Ltd. v. Ren Ventures Ltd, 3:17-cv-07249.

Han Solo cunningly used his Sabbac skills to win his spaceship, the Millennium Falcon, from Lando Calrissian. The game was played, a long time ago, in a galaxy far, far away, using cards, while we seem to play in the 21^st century mostly on our phones.

Defendant Ren Ventures also owns the “Sabacc” U.S. trademark, in class 09 and 41, for computer games software and entertainment services. As this blog is about copyright, I will not discuss the trademark infringement claim in detail.

The complaint alleges that Defendants used protected works owned by Plaintiffs, such as  images and quotes from movie dialogues, on their website, Facebook page, and other social media sites in order to promote their app, such as “From a Cantina far, far away to your mobile device, welcome to the world’s largest Sabacc site.” Defendant’s “Ren Ventures” name is inspired by the Star Wars The Force Awakens character Kylo Ren.

 What is the Sabacc game?

“Sabacc” is a fictional card game which first appeared in the 1978 draft screenplay, Star Wars Episode V: The  Empire Strikes Back, under the name “Sabacca” , which was later changed to “Sabacc.” The game then appeared in three novels about Lando Calrissian published in 1983. One of these novels, Lando Calrissian and the Mindharp of Sharu, describes Sabacc’s rules, as stated as such in the complaint:

“The Sabacc deck comprises a number of face cards (including the Idiot, the Evil One, and the Star) and four suits of fifteen pip cards (Flasks, Sabers, Staves, and Coins). It is a betting game in which the goal is to finish with a hand as close as possible to positive or negative 23 without going over. At various intervals, the cards in a player’s hand change at random (the “Sabacc shift”) unless they are placed in an “interference field” that reveals their value to the other players.

The only hand that defeats a hand of positive or negative 23 (“Pure Sabacc”) is a hand comprising the Idiot, a 2 card, and a 3 card (the “Idiot’s Array).”

A Sabacc card game was published by Plaintiffs in 1989 and again in 2015. The game was also referenced in Star Wars comic books and in the television series Star Wars Rebels “Idiot’s Array” episode in 2015.

Can a card game be protected by copyright?

Could these rules be protected by copyright? Section 102(b) of the Copyright Act excludes protection of ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries, “regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Therefore, the mere rules of a game cannot be protected by copyright. However, the Second Circuit explained in Affiliated Hosp. Prod., Inc. v. Merdel Game Mfg. Co. that “arrangement of the rules and the manner of their presentation, [but] not their content” can be protected by copyright. Therefore, the way the cards or the board game are designed, even the way the instructions are written and presented, can be protected by copyright.

However, the rules themselves cannot be protected, as explained by the Southern District Court of Texas in DaVinci Editrice SRL v. Ziko Games because, “[u]nlike a book or movie plot, the rules and procedures, including the winning conditions, that make up a card-game system of play do not themselves produce the artistic or literary content that is the hallmark of protectable expression.”

Can a third party register as a trademark a word protected by copyright?

The answer if no, but… Is it possible for a single word to be protected by copyright? Titles, names, short phrases, and slogans are not protected by copyright, and it can be argued that ‘Sabacc’ is the name of a game. Plaintiffs do not claim that they own the copyright in ‘Sabacc’, but that the app:

“mimics the fictional Sabacc game… as well as the physical Sabacc card games previously licensed and authorized by Plaintiffs. The names and values of the suits (Coins, Flasks, Sabres, Staves), face cards (e.g., the Evil One, the Star), and hands (e.g., Pure Sabacc, Idiot’s Array) are identical.”

Plaintiffs seem to claim they own the common law ‘Sabacc” trademark. One can argue that it was an oversight on their part not to register the federal ‘Sabacc” trademark. Do. Or do not. [register a federal trademark] There is no try.

Image is courtesy of Flickr user Camille Rose under a CC-BY-NC-ND 2.0 license.

The CopyKat Strikes Back - May the Festivities be With You!

It is that time of year again folks. People are celebrating, children are overcome with excitement and everyone can't stop talking about it. All waiting for that time when we can gather round with our loved ones and watch STAR WARS!

With the launch of the latest film in the franchise, the Disney production engine has been in overdrive. This has led to a number of related interesting stories which we will share with you in this copykat alongside our regular helping of non-Star Wars related copykat content.

Star Wars lawsuits: who has Lucasfilm sued and why?

This first piece is an oldie but a goodie from late 2016. This article highlights the commercial power of Lucasfilm and Star Wars. Also it is important to point out that Star Wars, or more specifically a storm trooper helmet, was the key point of contention in the regularly cited case of Lucasfilm Ltd v Ainsworth (2011). The Supreme Court ruled in 2011 that the helmets were indeed functional props, and not sculptures for the purpose of copyright protection, meaning that that Ainsworth was free to continue manufacturing the replica outfits.

Lego Wins Its First Copyright Court Case in China Against Bela

Lego A/S, Europe’s biggest toymaker, said it won its first copyright court case in China.

The China Shantou Intermediate People’s Court has ruled that products under the name Bela, sold by two Chinese companies, infringed upon Lego’s copyrights, the building block maker said in a statement Thursday. The ruling was made in September, but the appeal window only ended last month, Lego said.

FCC Chairman Ajit Pai Faces Multiple Copyright Infringement Lawsuits — Starting With ‘Harlem Shake’

FCC chairman Ajit Pai shot a cheeky video about net neutrality on Thursday.  He now faces the possibility of multiple copyright infringement lawsuits and millions of dollars in damages. This morning, at least one copyright owner vowed to launch a major lawsuit against Pai, the Federal Communications Commission, or both. 

The video has already amassed millions of views across Facebook, YouTube, and other outlets. The video also uses iconic music from both Game of Thrones and the Star Wars franchises. Both franchises are obviously worth immense amounts of money, with Star Wars holding billions of dollars in copyright IP.

Dr. Seuss and Star Trek Mashup Comic Isn’t Fair Use After All, Judge Says

Okay this one is not strictly Star Wars, though we feel it is close enough to merit inclusion.

A judge has allowed a lawsuit to proceed against the creators of Oh, the Places You’ll Boldly Go!—a nearly page-for-page remix of the Dr. Seuss classic Oh, the Places You’ll Go! and Star Trek. This decision reverses an earlier ruling.

After receiving a new court filing, US District Judge Janis Sammartino found that ComicMix, the company behind the new work, could not so easily have the case dismissed: “Thus, after again weighing the fair use factors, the Court finds Defendants’ fair use defense fails as a matter of law,” Judge Sammartino wrote in a December 7 order.

Steam Purged of Pepe Emoticons After Creator Files Copyright Claim

If, for some godforsaken reason, you’ve been trying to collect every achievement and emoticon featuring Pepe The Awful Meme Frog on Steam, I’ve got some bad news for you: many of them are gone. Pepe images that players could earn by playing games like Fergus The Fly and, tellingly, Make America Great Again: The Trump Presidency have been replaced with a simple message: “Emoticon art currently unavailable due to DMCA takedown notice submitted on behalf of Matt Furie.”

Google, Tech Firms At Odds With Content Creators Over Australian Copyright Safe Harbour Ruling

Google and members of Australia's technology sector have urged the government to reconsider excluding them from changes to safe harbour, while the content sector has applauded the decision to not extend the copyright provisions to digital commercial entities.

The government's reforms, revealed by The Australian Financial Review last Wednesday, seek to extend safe harbour provisions to education institutions and libraries as well as the disability, archive and culture sectors.

Safe harbour provisions give immunity to service providers when users upload copyright-infringing material as long as they are taking reasonable steps to remove infringing content from their platforms.

Houston Jury Awards Energy Publisher $585,000 For Copyright Violations

A federal jury in Houston awarded $585,000 to the publisher of an energy newsletter that accused an investment house of passing around unauthorized copies of its pricey publication.

Energy Intelligence Group, the publisher of 15 newsletters for the oil and gas industry, sued Kayne Anderson Capital Advisors for sharing its five subscriptions of "Oil Daily" with others in the investment firm who did not have their own subscriptions. The jury found that the Los Angeles-based investment firm, which manages $24.5 billion in assets, was liable for copying 39 issues and determined the damages for each instance was $15,000, according to the jury verdict. The trial began Monday, and the jury reached its verdict Thursday.

US Court Dismisses Copyright Infringement Complaint Against GAIN Capital

Online trading services provider GAIN Capital Group LLC has secured a judgement in its favor on Friday, December 15, 2017, as a part of a copyright infringement case launched against it by Tibco Software Inc. Judge Edward J Davila of California Northern District Court has granted GAIN Capital’s Motion to Dismiss the claims for breach of the implied covenant of good faith and fair dealing and copyright infringement.

The Court sided with GAIN Capital, with the Judge noting that the copyright infringement claim does not distinguish between Gain Capital’s alleged use of Tibco’s software while a valid license was in effect and the alleged use of the software after the licenses expired. The copyright infringement claim was accordingly dismissed with leave to amend.

Gain Capital has also moved to dismiss the breach of the implied covenant of good faith and fair dealing claim as superfluous of the breach of contract claim. The Court agreed that the two claims are nearly identical, and the breach of implied covenant claim was accordingly dismissed with leave to amend too.

Tibco is set to file and serve an amended complaint no later than December 29, 2017.

Playerunknown On Copyright Infringement: 'There's No IP Protection In Games'

Our final story for you copyright fans today poses more of a question for discussion rather than a legal update.

Are computer games being let down by current IP legislation?

This topic is of particular importance to this writer as he is regularly finding himself explaining this sorry state of affairs to up and coming game developers. It seems that in every creative industry where money has flowed, IP protection has found a way to adapt in order to provide some security to those revenue streams. However in the case of computer games or even software, we are left in a situation where the concept of a game can be copied in its entirety, albeit with entirely different physical content, and the original creator is left with little recourse. Though the idea/expression dichotomy weighs heavy in this writers mind, there must be a compromise to be found. Without it we are left in the very poor situation described in the article: "Some amazing games pass under the radar. Then someone else takes the idea, has a marketing budget, and suddenly has a popular game because they ripped off someone else's idea. I think it's something the industry needs to look into. You're protecting the work of artists basically. Games are art for a large part, and so I think it's important they're protected."

This CopyKat by Matthew Lingard

Wiill the Poke be the test parody piggie?

The annual 'John Lewis' Christmas advert is much admired by some here in the United Kingdom - although loathed by others for the schamlatzy undertones  - but no one can deny its been an amazing marketing idea for the department store as its always a much anticipated and much talked about 'national event'. But every year the advert lends itself to parody - which of course in the past might have been a tad tricky here in the United Kingdom - but maybe not now, with our newly installed exception for parody, pastiche and caricature. This year's advert is based on the idea of the 'man in the moon' and a little girl's plan to cheer up a lonely old man by sending him the gift of a telescope. All lovely, and sent to a haunting version of rock band Oasis's "Half The World Away" performed by Norweigian teenage newcomer Aurora Asknes. Cue the Poke ...... whose strapline is 'time well wasted': 

With the imminent release of the new Star wars film 'The Force Awakens' on the cards - why not produce a 'Dark Side' version of the soft and gentle John Lewis tale - but this time replacing the Moon with the Empire's Death Star, and the old man with the evil Darth Vader. Cue a very different, and to this writer anyway, very humerous take on both the John Lewis advert and and Star Wars films. But how will the department store and the Disney and 20th Century Fox, who own various copyrights in the films, take this? The spoof  uses extensively uses footage from the advert itself, and also from the orginial 1977 Star Wars film and the 2015 latest outing - as well as the song and sound recording. So how will copyright owners take this - are we going to see 'take downs' gfrom YouTube and elsewhere  (none as yet I could find) - or even legal action? This writer suspects not - at least not from John Lewis who are surely benefitting from the publicity - and perhaps not even from the film companies - its all good publicity after all. But you never know. What do readers think. Your COMMENTS would be much appreciated. 

You can view the Poke's video here  - Topicalol's take here (which is a spoof of mars based science fiction outing with Arnold Schwarzenegger's Total Recall) and the original John Lewis ad here

Star Wars at London Fashion Week

As we all know, Stormtrooper helmets are neither works of artistic craftsmanship nor are they sculptures, therefore are not protected by copyright (see here). Their presence backstage at the Preen's London Fashion Week show is therefore not something that Disney, owner of the Star Wars franchise, is likely to be able to do anything about.

Rodarte on the left; Preen on the right

Preen took the Star Wars theme a step further however, as their collection includes a series of dresses featuring Darth Vader. Similarly, at New York Fashion Week, Rodarte's collection included silk dresses featuring Luke Skywalker and C3P0 prints. Preen and Rodarte may be licensed by Disney, however if they are not they could be in hot water: Rihanna famously succeeded in stopping Topshop from selling t-shirts with her image on them by claiming passing off (see here), however if Disney own copyright in the Darth Vader, Luke Skywalker and other images its claim could be more straightforward.

Disney is fiercely protective of its brand; given that Preen's show in particular coincides with  Disney's release of teasers for a new animated series, Star Wars Rebels (which documents the early days of the rebellion against the Empire), this blogger wonders whether this a case of clever advertising or a copyright claim waiting to happen?

Appeal of Star Wars helmets

Three judges yesterday told the creators of Star Wars that their Stormtroopers simply didn’t have the X factor (judgment here).

Andrew Ainsworth, who made the helmets and uniforms for the 1977 film Star Wars IV – A New Hope, subsequently set up a business selling replicas. In 2006 a US court granted Lucasfilm an injunction against Ainsworth and $20m damages. In the Chancery Division it was held last year that:

1) The US judgment could not be enforced in England.
2) Although the uniforms were based on paintings and drawings by Ralph McQuarrie (example shown here) in which Lucasfilm owned copyright, the replicas did not infringe that copyright in UK law because they were not ‘artistic works’. Under s. 51 CDPA ‘it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.’
3) Even if the uniforms were copyright works, the copyright would have been impliedly assigned to Lucasfilm.
4) However, the US copyright claim was justiciable in England.

The Court of Appeal agreed except on the last point, with the effect that Lucasfilm is left with no cause of action against Ainsworth in England.

Why didn’t the court think that the helmet is an artistic work, a ‘sculpture’? It said it was impossible to define sculpture but it must at least be ‘intended to be a work of art’, to have ‘visual appeal’ as part of its purpose. It affirmed that the helmets were ‘no different from and serve the same purpose as any real helmet or armour used in a film’, they were ‘utilitarian and lacking in artistic purpose’. Really? The helmets and uniforms are clearly designed to produce an imaginative and emotional response in the viewer – something they do very well.

No viewers’ votes in this contest but an appeal on appeal may appeal...?