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[A Curious Programmer]

I have an interesting question on Trademark Law for all of you. I've done a search through the archives of this forum, and not come to a satisfactory answer. The closest thread I've found is this one, but the topic is never explored in detail.

Since many of the questions appear to be unanswerable without details, I'll be pulling a real world example out for discussion. I realize that what is said here is not legal advice, and may not pertain to other circumstances. At the moment, I am merely asking out of curiousity. I realize that I should contact a real lawyer should I ever chose to follow this (probably unwise) course of action.

With that out of the way, my question is this: What sort of trademark protection can modern companies expect on classic games for which they've abandoned the trademark? Can a "clone" of a video game successfully reuse the mark, despite similarities to the original?

Copyright alone can be an issue.  For the purposes of this discussion, though, I would like to assume that the "clone" is a from-scratch rewrite that falls under the US Copyrights protections that ...the idea for a game is not protected by copyright.

The specific example I'm going to cite is a game from the 1980's produced by Sierra Entertainment. It was called Crossfire. While it was popular for its time, it is not well known, even among classic gaming enthusiasts. The USPTO cancelled the Trademark in 1991 and now lists it as dead. A search of Sierra's homepage shows no results for the game. Even a Google search for the game shows no activity in over a decade, save for a few classic gaming catalogs that track the existance (and sometimes illegal disk images) of the original titles.

Basically, this mark is about as dead as it gets. You'd need a time machine to erase it from history to make it any deader.

With that in mind, the law would seem to indicate that the use of the mark is acceptable. However, let's hypothesize that Sierra is anal retentive about their old titles (which I've heard that they are) and wouldn't appreciate a new version of Crossfire being released. So they send a C&D, and are willing to take the matter to court.

I'm curious how you readers out there would rate their chances. Do you think they'd have a case, or are they simply out of luck for failing to maintain the brand? If you feel they have a case, on what grounds do you feel that is so? If not, would it change anything if Sierra were to argue that they had plans to revive the mark? Even if such plans are not evident at the point of the alleged infringement?

Again, this is currently just curiousity on my part. So this can all be speculated as a hypothetical case based on real facts.

Thanks!

[wallflower]

Copyright alone can be an issue.  For the purposes of this discussion, though, I would like to assume that the "clone" is a from-scratch rewrite that falls under the US Copyrights protections that ...the idea for a game is not protected by copyright.

I don't think creating a "from-scratch rewrite" will eliminate your potential copyright infringement issues if you are creating a clone.

[Isaac]

"I'm curious how you readers out there would rate their chances. Do you think they'd have a case, or are they simply out of luck for failing to maintain the brand? If you feel they have a case, on what grounds do you feel that is so? If not, would it change anything if Sierra were to argue that they had plans to revive the mark? Even if such plans are not evident at the point of the alleged infringement? "

Links to the results of PTO searches may not stay good forever.   In this case I believe your link is already broken  :-/

Sierra's plans to revive the mark definitely matter.   Abandonment of a mark comes from non use with no intent to resume use.   The PTO cancels registration but cannot actually cancel the mark itself.

[A Curious Programmer]

I don't think creating a "from-scratch rewrite" will eliminate your potential copyright infringement issues if you are creating a clone.

While I understand your point, it is incredibly difficult to prosecute clones in the current legal situation. The key cases in the matter are ATARI v. MAGNAVOX and CAPCOM v. DATA EAST. In the former, the initial trial was found in favor of Magnavox. However, the matter was overturned in an appeal. The generally agreed upon reason for the overturn is that Magnavox failed to pay sufficient attention to the appeal, and thus their arguments were not well represented.

In the latter case, Data East produced an incredibly similar clone to Street Fighter II called Fighter's History. Data East was successful in defending themselves against claims of copyright infringement.

While the nuances of these two cases may or may not apply to other cases, the fact remains that there is a thriving community of popular-game clones that have not been shut down. The statement I linked to in the original post states that the Copyright Office does not consider the "idea behind a game" to be protected. Which means (caution: I'm not a lawyer) that anyone is free to create a "clone" game, such as a Pacman replica. Most C&D letter today instead address the matter of naming. Pacman, for example, is still being produced by Namco in a variety of forms. So the trademark is rigoursly defended.

I'm sure you could argue on the matter of "derivitive works", but that has always been a difficult argument when relating to computer software. (Including video games.) I don't remember the case-law off the top of my head, but there are several instances of non-game software where attempts to argue similar functionalty to be "derivitive" have failed.

Links to the results of PTO searches may not stay good forever.   In this case I believe your link is already broken

Sorry about that. Do a boolean search for "Crossfire" AND "Sierra". You'll get two results, the second of which is the correct one. The serial number is 73373255.

Sierra's plans to revive the mark definitely matter.   Abandonment of a mark comes from non use with no intent to resume use.   The PTO cancels registration but cannot actually cancel the mark itself.

This is where the second part of that question comes into play. The mark has been abandoned for well over a decade. Now if Sierra suddenly marches into court and states that they are planning to revive the brand, why should a judge believe them? Will the matter require subpoenas of records to resolve, or will a judge take them at their word? If he takes them at their word, what if that usage never materializes? Can the mark be forever protected on the say-so of the original owner? I thought that interstate commerce was required?

[Isaac]

This is where the second part of that question comes into play. The mark has been abandoned for well over a decade. Now if Sierra suddenly marches into court and states that they are planning to revive the brand, why should a judge believe them? Will the matter require subpoenas of records to resolve, or will a judge take them at their word? If he takes them at their word, what if that usage never materializes? Can the mark be forever protected on the say-so of the original owner? I thought that interstate commerce was required?

Sierra would have to offer proof to overcome the presumption of abandonment.   Your hypo does not say anything about the presense of absence of such evidence.   The fact that the evidence might be contained only in meeting minutes and internal communications at Sierra does not mean that the evidence won't be persuasive.

As for the copyright issues, I don't think the facts as posted are sufficient to dismiss them without seeing the clone, and knowing the details of how the cloning occured.   For example, there can be non literal infringement based on look and feel.   The last look and feel case to make it to the Supreme Court split the court 4-4 with one Justice abstaining.

Also even without copying the code, a copying of displayed images might infringes copyright even if those images are generated by completely different software.

[A Curious Programmer]

Sierra would have to offer proof to overcome the presumption of abandonment.   Your hypo does not say anything about the presense of absence of such evidence.   The fact that the evidence might be contained only in meeting minutes and internal communications at Sierra does not mean that the evidence won't be persuasive.

So basically, claiming such plans exist is not a defense unless such plans can be proven, even to the slightest degree? I presume that a judge would want the dates on the material to show that such plans didn't suddenly begin as a result of the new claim to the name.

As for the copyright issues, I don't think the facts as posted are sufficient to dismiss them without seeing the clone, and knowing the details of how the cloning occured.   For example, there can be non literal infringement based on look and feel.

Certainly. For the purposes of this argument, however, one of two things can be assumed:

1. The clone would target a modern system and use modern graphics. By this I mean that 3D or highly realistic 2D graphics would be used. They would be a far cry from the simplistic graphics of the original.

2. The clone would target a "retro" system where a port was never made. Technical considerations may make it impossible to produce similar graphics. Instead, the graphics would be replaced with something simpler than the original.

Either way, I think it's safe to assume that the graphics (which in this case means just sprites) of the game would be changed to resemble something other than the pod, spider, furby, and mask of the original.  In the former case the concept might be extended to be animated, walking robots that hoist cannons on their shoulders. In the latter case, the concept might be reduced to geometric shapes like diamonds, stars, and triangles.

To further extend the case, both options allow for significant changes to the gameplay. In the case of the former, the gameplay could be tremendously extended with scrolling, zooming, more complex playfields, and powerups. In the case of the latter, the same technical limitations may further reduce or change the game. For example, the Odyssey 2 has a fixed 10x10 background for creating game boards like the one in the Crossfire. So a port to this system would require 5 squares on and 5 squares off, reducing the game to 25 squares instead of the original 42.

The last look and feel case to make it to the Supreme Court split the court 4-4 with one Justice abstaining.

Would you happen to know the case offhand? I'm curious what created the split.

BTW, I dug up a reference for my statement about look and feel. The cases I had in mind were Apple vs. Microsoft and Lotus Development Corp. v. Borland Int'l., Inc.

Thank you for your comments!

[Isaac]

Would you happen to know the case offhand? I'm curious what created the split.

The case producing the split at the Supreme Court was Lotus v. Borland.