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Technology and Intellectual Property Case Watch

on Thursday, 13 February 2014 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Videogame Voiceover Work Constituted Work Made for Hire


Lewis v. Activision Blizzard, Inc. et al, C 12-1096 CW (N.D. Cal. October 17, 2013).


This case from the Northern District of California involved a dispute between a video game developer and an employee who had provided voice-over work for a character relating to the developer’s popular video game series the “World of Warcraft”. The employee was employed by the developer as a “game master” with her chief responsibilities revolving around customer service for the game’s customers. “Game Masters”, however, were also tasked via their training manual with “assist[ing] with the creation of content” for the developer’s video games. In July of 2005, the employee, along with other “game masters”, was invited to audition for voiceover work related to the “World of Warcraft”. After her audition, the employee’s voice was used for a new character whom the employee was told would be unveiled at a convention and used in promotional advertising for the game. The employee was compensated at her normal hourly rate for her work and did not ask for any additional compensation. The employee, however, was not told whether the voice and character would be used in other capacities, such as within the game itself. Shortly before her termination by the game developer, the employee discovered her voice had been used in the actual video game. She subsequently filed suit against the developer for copyright infringement. In analyzing the case, the district court determined that the voice recordings clearly constituted a “work for hire” and thus the copyright belonged to the game developer and not the employee. The district court based this determination on the fact that developing new content was within the scope of the employee’s duties as evidenced by the training manual. Moreover, the voiceover work performed by the employee was done at the game developer’s offices, with the developer’s equipment, during normal business hours and for the employee’s hourly wage. In light of these factors, the district court found in favor of the developer.


Federal Court Upholds TTAB’s Refusal to Register Washington Beverage Importer’s Marks on Grounds of Confusing Similarity


Vosk Int’l Co. v. Zao Gruppa Predpriyatij Ost et al, Case No. C11-1488RSL (W.D. Wash. Oct. 9, 2013).


Plaintiff and defendant in this case from the Western District of Washington were former business partners. Plaintiff was a Russian beverage manufacturer and distributor. Defendant was a Washington beverage importer and distributor. The parties had an agreement whereby plaintiff would ship beverages to the United States so that defendant could import and sell the beverages therein. The relationship eventually soured and the contract was terminated. Defendant subsequently sought to register three marks with the United States Patent and Trademark Office (“USPTO”). The marks were remarkably similar to those utilized by plaintiff in relation to its beverages. Plaintiff challenged the registration of the marks on the grounds that they were confusingly similar to plaintiff’s and that plaintiff had been using its marks in the United States since 2001 and thus had a superior priority date to defendant. The TTAB agreed with plaintiff and refused to register defendant’s marks. Defendant appealed that decision by arguing that plaintiff’s prior distribution of its beverages under plaintiff’s marks was unlawful and therefore its priority date was invalidated. The basis for this “unlawfulness” claim was that, according to defendant, plaintiff’s beverages both violated the Food and Drug Administration’s (“FDA”) labeling requirements and contained an ingredient prohibited by the FDA. The district court affirmed the TTAB’s decision by finding that the marks were confusingly similar and that plaintiff’s priority date gave it preference over defendant. With regard to defendant’s “unlawful” distribution argument, the district court found that defendant’s argument was meritless because defendant could not point to an actual finding by the FDA that plaintiff’s marks violated any of the FDA’s regulations.


Virtual Content Copyrightable


Firesabre Consulting LLC v. Sheehy et al, Case No. 11-CV-4719, (S.D. N.Y. September 26, 2013).


Second Life is an internet-based simulation in which computer created characters interact with and within a virtual environment. Defendants included a middle school instructor and school district who engaged plaintiff to create content for the Second Life virtual environment. Plaintiff created various virtual items in Second Life for the defendants. These virtually created items included, among other things, a train station, café, music shops, and a volcano. The parties never executed a written contract detailing ownership of the created material and this fact caused confusion when the relationship between the parties eventually unraveled. Defendant subsequently filed copyrights over its virtual creations and prohibited defendants from using them. The parties continued their dispute and plaintiff eventually brought an action for willful copyright infringement against the defendants. While the district court eventually denied both parties motions for summary judgment, it nevertheless made an important finding regarding the ability to copyright virtually created content. Specifically, in the case defendant argued that Second Life creations by plaintiff were not copyrightable because they were not “fixed in any tangible medium of expression” as required by federal law. The district court found this claim meritless. The district court noted that a work is “fixed” if it is stable enough to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. In the case, the virtual content existed in Second Life and was visible for a period of time well beyond a transitory duration. In light of this, the district court rejected defendants’ argument and held the virtually created material to be copyrightable.

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