As game developers continue to face both the threat of having their games cloned and accusations that they too are cloning games, it is increasingly important for developers to understand the safeguards that intellectual property law can provide. Knowing early on what protections IP law provides can ensure wise design decisions that can strengthen a brand and stop clones. This knowledge can also help game developers steer away from costly lawsuits that can easily be avoided, or better yet, defend against aggressive plaintiffs alleging infringement.
What is Trade Dress?
Trade dress protects a product’s overall image, look, presentation, and packaging. The theory behind trade dress is to protect a company’s reputation and goodwill by preventing competitors from trying to confuse consumers into thinking that the original company made or sponsored the competitor’s game.
Copyright, Patent, Trade Dress—What’s the Difference?
Trade dress is different from other IP in four key ways. First, where copyright and patent rights exist at the time of creation and registration respectively, trade dress rights arise from a consumer’s recognition of the trade dress as identifying who made the game. Second, trade dress rights can be unlimited in time, for as long as they are in use. Patents and copyrights have limited exclusivity. Third, trade dress rights do not cover functional elements – that is patent territory. Finally, trade dress does not require the “creative originality” that is required in copyright. Instead, trade dress protects the distinctive combination of elements such as colors, shapes, texture or graphics, and style in which a game is presented or packaged to the public.
What You Need to Make a Trade Dress Claim
In order to claim trade dress protection for a game’s look and feel, a plaintiff must prove three elements:
- The trade dress is non-functional;
- The trade dress has secondary meaning; and
- There is a substantial likelihood of confusion between the plaintiff’s and defendant’s products.
The nonfunctionality element highlights that trade dress is not about a customer’s preference for a functional quality of a game. Instead it is about a consumer’s recognition that a game’s look is associated with a particular company that made the game.
In determining functionality, four factors are weighed collectively: (1) whether the design yields a utilitarian advantage; (2) whether alternative designs are available; (3) whether advertising touts the utilitarian advantages of the design; and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. A developer asserting trade dress protection must, therefore, establish that a game’s design does not yield a utilitarian advantage by demonstrating that “the product feature serves no purpose other than identification of the game developer.” A developer must also identify alternative designs that offer the same functional features as the asserted trade dress. Alternative designs available to competitors ensure that a developer is not monopolizing a useful or aesthetically pleasing game feature.
Tetris Holding v. Xio Interactive is an example where a developer successfully protected its brand through trade dress. The owners of the Tetris game asserted trade dress rights for their “brightly-colored Tetriminos, which are formed by four equally-sized, delineated blocks, and the long vertical rectangle playfield, which is higher than wide.” Although the defendant argued that these features were functional, the court found a valid trade dress because the color and style of the pieces were not related to the reason the game works, protecting the elements would not thwart competition, and there was an unlimited number of ways to design the game that would not affect the cost or quality.
To establish the second element, “secondary meaning”, a plaintiff must prove “a mental recognition in buyers’ and potential buyers’ minds that products connected with the mark are associated with the same source.” In a recent case, Christian Louboutin successfully argued secondary meaning for his signature red soles in women’s high fashion footwear. Louboutin’s evidence included advertising expenditures, media coverage, sales success, consumer surveys, and his substantial investment in building reputation and good will. As a result, the court found that Louboutin had “created an identifying mark firmly associated with his brand, which, ‘to those in the know,’ ‘instantly’ denotes his shoes’ source.”
Defeating a Trade Dress Lawsuit
Developers should also be prepared to defend their game against cloning accusations. A developer can first dispose of a trade dress lawsuit by arguing that the plaintiff has not adequately alleged the specific trade dress elements. A plaintiff must clearly state the specific elements that constitute the claimed trade dress; a vague description is normally not enough to support a claim.
A defendant should also attack a claim by asserting that the plaintiff’s trade dress is functional. That is, the claimed trade dress serves more than a source-identifying role and actually contributes to the mechanics or aesthetic value of the game. The defendant in Incredible Tech successfully defeated a trade dress claim by making this functional argument. The owners of the classic coin-operated video golf game, Golden Tee, claimed trade dress rights for various features including a control panel and track ball that was used to roll back and forward to complete a golf swing. Not surprisingly, the court agreed with the defendant and found no trade dress right because the features directly contributed to the mechanics of the game.
Finally, a developer can challenge the “secondary meaning” requirement by showing that the plaintiff failed to provide sufficient evidence that consumers associate the alleged trade dress with the plaintiff’s brand. The court in Art Attacks, for example, rejected the plaintiff’s advertising and consumer testimony evidence because he failed to show that his advertising efforts were actually successful in establishing consumer recognition of his brand.
Here are just a few ideas on how developers can strengthen their game’s trade dress:
- Develop a theme using a specific color scheme and style across multiple games to establish the overall “look and feel” of your brand of games
- Add features, aspects, and designs that serve no purpose or function to the game
- Use a consistent design, style, shape, and color combination to package your game
- Use your theme not just in the game but in your advertising too
The more a developer consistently uses and develops its brand’s theme, the more likely a court will find a trade dress right. Establishing a game’s trade dress also helps build brand recognition with the consuming public.
On the other hand, if a developer is sued for trade dress infringement, the developer should look for ways to show that the plaintiff did not adequately allege all of the trade dress elements. A defendant can often dispute the nonfunctionality requirement by arguing that the alleged trade dress is related to the game’s function, and thus is not protected.
There are numerous advantages to keeping trade dress in mind when developing your next game. The extra effort could translate into valuable design decisions that may add protection against potential cloning or help you stay clear of infringement accusations. Better still, it can set you apart from your competitors.
 International Trademark Association, http://www.inta.org/TrademarkBasics/FactSheets/Pages/Trade-Dress.aspx (last visited August 1, 2016).
 Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d, 1134 (N.D. Cal 2014).
 Cf. Art Attacks Ink v. MGA Entertainment Inc., 581 F.3d 1138, 1146 (9th Cir. 2009) (“[e]vidence of use and advertising over a substantial period of time is enough to establish secondary meaning”) (internal citations omitted).
 Pedro I. Rencoret Gutierrez, Restricting Trade Dress Protection: The Case of Video Games, Social Science Research Network (May 20, 2013), http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2372899&download=yes.
 ArcSoft, Inc. v. Cyberlink Corp., No. 15-cv-03707-WHO, 2015 WL 9455516, at *7 (N.D. Cal Dec. 28, 2015); Int’t Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993).
 Art Attacks Ink, 581 F.3d at 1145.
 Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786-87 (9th Cir. 2002).
 Id. at 1130.
 Apple Inc. v. Samsung Elec. Co., 786 F.3d 983, 992 (Fed. Cir. 2015).
 Tetris Holding v. Xio Interactive, Inc., 863 F. Supp. 2d 394 (D. N.J 2012).
 Id. at 415.
 Id. (internal citations omitted).
 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 226-27 (2nd Cir. 2012).
 Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002).
 Arcsoft, 2015 WL 9455516 at *9.
 Arcsoft, 2015 WL 9455516 at *8 (citing 15 U.S.C. § 1125(a)(3)).
 Incredible Tech, Inc. v. Virtual Tech., Inc., 400 F.3d 1007 (7th Cir. 2005).
 Id. at 1015.
 Art Attacks Ink., 581 F.3d at 1146-47.
 See Arcsoft, 2015 WL 9455516 at *8.
 See Tetris Holding, 863 F. Supp. 2d at 415-16.
 2 McCarthy, supra note 8.