Profits from computer games and e-gaming over the last decade are so high that many investors do not hesitate to place their capital in this sector. No wonder that games producers tend to exploit them to the greatest possible extent, protecting game titles and other characteristic elements as registered trademarks.
Registration of game titles as trademarks is one of the elements which must be remembered when creating a game. No doubt the issue of using third party trademarks must also be taken into consideration, as their inconsiderate use may substantially reduce the profits that a game producer may obtain from its exploitation.
A ghost affair
In principle there are no reasons to prevent registration of a game title as a trademark. Usually producers are keen to take advantage of this opportunity, the trademark frequently embracing nearly all possible merchandising. For instance Ubisoft Entertainment registered „Assassin’s Creed” as a computer game trademark, but also a trademark for plates, utensils, toys, clothing, bed covers, and all the way up to candy and coffee.
Essentially the same rules will apply to registration of a game title as a trademark as to any trademark registration: first all the trademark must have the distinctive ability in relation to the goods and services of other entrepreneurs and cannot be descriptive (for instant we cannot register a verbal mark „game” for computer games). Similarly, words popular in everyday use in a given industry which would prevent other entrepreneurs from running their business cannot be registered as a trademark. An interesting dispute in the world of computer games took place over the trademark „GHOST” filed in 2015 by Electronic Arts (EA) with the United States Patent and Trademark Office (UPSTO). According to EA’s position the reason for the application was to protect the name of the new developers of the game „Need for Speed”, i.e., the „Ghost Games” studio. The application was challenged by the above mentioned Ubisoft Entertainment, which holds as many as 29 filed or registered trademarks containing the words „GHOST RECON”, mainly in the US and European Union. The main argument of the objection was the risk of misleading potential buyers of the game, who may think that Ubisoft is the publisher of EA’s games. However, it is to be emphasized that Ubisoft is not the only one to have a ghost in its game series, as it is a popular element of computer games titles such as „Ghost Master” and „Call of Duty: Ghosts” Activision or „Ghostbusters” Atari. Registration of these marks by EA could therefore give rise to consequences for the above mentioned entities which use the word „GHOST”. Ultimately Electronic Arts withdrew its application for two „GHOST” marks in the US, following a settlement between the parties.
Interestingly however, since 2015 Electronic Arts has a registered verbal trademark „Ghost” in the European Union, against which Ubisoft also filed an objection, the trademark being nonetheless registered for „designing and developing software for interactive, computer, video and electronic games”. Any disputes between the producers will therefore have to be determined by the courts.
Ronaldo, helicopter and the Mercedes star, that is third party trademarks in computer games
Frequently in computer games, especially those where the depicted world aims to represent reality as closely as possible, we meet third party trademarks and industrial designs. The key question arises therefore whether it is necessary for the producer of the computer game to have a license agreement for use of the trademark.
When considering this issue it is first to be pointed that most computer games producers aim to completely eliminate potential risk by entering into the relevant agreements with trademark owners. The company Electronic Arts mentioned above may serve as an example: it concluded agreements for use of helicopters manufactured by Bell Helicopter Textron in its game Battlefield 1 and 2. In the third edition of the game use of the helicopters was not preceded by an agreement and met with Bell’s protest resulting in a court dispute. Electronic Arts’ line of defense was based on the argument that use of Bell’s helicopters was necessary to represent the battle scenes in the game in the most realistic manner. Ultimately the dispute was not determined by the court as the parties concluded a settlement. An important point in this case is that Bell’s helicopter is a registered industrial design.Significantly, legal acts do not contain express regulations indicating the limit beyond which license agreements ought to be signed. Obviously signing such agreements is an option that eliminates all potential risk, especially if the given trademark appears in the game on multiple occasions or an important episode is devoted to it, as in case of the above mentioned helicopters. Nonetheless it seems if a given trademark appears only as background for fractions of a second it may be concluded it is not being used for its primary purpose. As such in these situations consent for use of the trademark does not seem necessary.
It is to be remembered however, that rights to trademarks or industrial designs are only a part of the set of rights held by their owner. Games producers must also take copyright regulations and personal rights into account. Not every owner will accept use of a mark for instance as a prop in a game promoting violence or a representation of articles of given brand as items that require constant repairs as this may undermine the reputation of the brand and have a direct consequence on product sales. The decision to withdraw consent for use of the Mercedes car make in the film “Slumdog Millionaire” was made by the car manufacturer after it obtained the information that in the film the car will be represented in slum surroundings. Summarizing, the safest option for a games producer is to sign the relevant agreements or to represent the given product in such a way as to make any specific brand indistinguishable.
Finally another interesting aspect worth looking at in the world of games is the issue associated with use of images or names of football players by producers of computer games such as FIFA or Pro Evolution Soccer. The entity responsible for granting licenses in this respect is the International Federation of Professional Football Players with its seat in Holland, FIFPro. Obviously use of a given player depends on his contract with the football club. If the club decides about commercial use of his name or image it must also give its consent for their exploitation in a computer game. It is also advisable to check whether the personal data or other characteristic attributes associated with the football player are registered as trademarks. For instance Ronaldo Luis Nazario de Lima has a registered trademark “Ronaldo” in Spain since 1994, while Cristiano Ronaldo made a much wider registration than his predecessor, including the characters „CR7” as well as his first name and surname. If we mention the above „two Ronaldos” we must also refer to Ronaldinho Gaúcho, who has a registered trademark consisting of his name and surname.