IP Law Daily Casino slot machines’ artwork not infringed by images used for online games
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Tuesday, November 13, 2018

Casino slot machines’ artwork not infringed by images used for online games

By Thomas Long, J.D

GC2 Inc.—a developer of videos and images for games displayed on physical wagering machines, such as slot machines—cannot go forward with claims that game maker International Game Technology and other companies engaged in copyright infringement by taking images created by GC2 and licensed for use in certain physical casino games, and then using them without authorization for online versions of the games, the federal district court in Chicago has ruled. No reasonable factfinder could determine that GC2’s copyrighted images and the challenged images in the online games were substantially similar. To the extent that GC2 could proceed with other infringement claims against the various defendants, it could only seek awards of profits from each individual defendant, based on its own profits, and not jointly and severally, the court also decided. The defendants were not partners or "practical partners" such that joint and several liability for profits was warranted. Finally, the court allowed CG2 to go forward with its claims that the defendants falsified copyright management information in violation of the Digital Millennium Copyright Act, but only in part (GC2 Inc. v. International Game Technology PLC, November 12, 2018, Kennelly, M.).

In addition to International Game Technology (IGT), the defendants were various other IGT entities, including casino game producer IGT NV. Also named as a defendant was DoubleDown Interactive LLC (DDI), which sold digital slot machine games for "social" play—that is, not with real money—and game publisher Masque Publishing, Inc. Plaintiff GC2 created artwork for slot machines and licensed the works to IGT NV for physical-gaming equipment but not for use in mobile or Internet-based games. According to GV2, IGT NV, with the other defendants, used GC2’s artwork without authorization for online games, including two games called "Kitty Glitter" and "Maid of Money." The defendants moved for partial summary judgment.

Substantial similarity—"Kitty Glitter" and "Maid of Money." The defendants were entitled to summary judgment in their favor on the infringement claims regarding "Kitty Glitter" and "Maid of Money" because no reasonable factfinder could find that the images in IGT’s games were substantially similar to the protectable expression in GC2’s copyrighted material, the court determined. The works were similar only with respect to conceptual elements that were common features of slot machine games, such as three rows and five columns of spinning squares, with images that correspond to high-value playing cards. In the court’s view, they likely qualified as scenes a faire or otherwise nonprotectable elements.

With respect to With respect to "Kitty Glitter," both parties’ games had images of cats, but the similarities ended there. The cats in each game did not look alike. For example, in GC2’s game, the cats were shown as full bodies, cartoon-like, and active and playful, whereas the cats in IGT’s game were realistic, static images, consisting only of headshots, with cats wearing "dour and serious" expressions. Although the background colors, borders, font design, colors, animation, and other decorative elements could be copyright-protected, these elements were not at all similar in the two sets of Kitty Glitter images, let alone substantially similar. Even though IGT might have copied something from GC2, at most what it copied was the concept of a slot game called "Kitty Glitter" with cats and diamonds, and not the particular expression of that idea, the court said.

The same was true of "Maid of Money." GC2 did not strenuously dispute IGT’s contention that its game had an entirely different look and feel from GC2’s work. The maids in both had very different appearances. Any similarities were limited to noncopyrightable game concepts.

Recovery of profits. The defendants moved to limit GC2’s recovery of profits from any given defendant to that defendant’s own profits. GC2 argued that it was entitled to seek from each defendant profits generated by other defendants and from other entities, such as online casino operators that offered IGT’s games. The court pointed out that the general rule in copyright infringement cases was that liability for damages was joint and several, but liability for profits was several, not joint. There was, however, an exception to the latter rule when defendants acted as partners, either explicitly as such or in practical terms, in which case they would be jointly and severally liable for profits that they collectively derived from the infringing activity. In the court’s opinion, GC2 failed to offer evidence from which a reasonable jury could find that the IGT defendants were engaged in a partnership or practical partnership with the online casino operators. There was no evidence of revenue sharing, shared expenses, or joint control of business activities. The IGT parties were paid royalties based on revenues, which did not suggest the existence of a partnership. The same was true with regard to Masque’s and Encore’s development and sales of games originating with the IGT defendants. Additionally, there was no evidence that would permit GC2 to recover from DDI the profits earned by its payment processors because those entities were simply paid a fee based on revenues generated. Therefore, the defendants’ motion for partial summary judgment on recovery of profits was granted.

DMCA claims. GC2 asserted that the defendants altered, removed or provided false copyright management information (CMI) with the intent of facilitating or concealing infringement, in violation of the DMCA. According to a set of charts submitted by GC2, it alleged nearly 50 separate violations purportedly implicating multiple provisions of the DMCA, meaning that it was trying to "stuff" as many as 100 claims into a single count of its complaint. This, the court said, was "rather inconsistent with Federal Rule of Civil Procedure 10(b)." However, the defendants had not raised that objection. From a more practical standpoint, the court expressed difficulty in understanding whether GC2 or its counsel had considered how the court could instruct a jury on these claims, or how a reasonable lawyer would argue them to a jury in a coherent and succinct way. Therefore, the court reserved the right to sever some or all of the DMCA claims (or "sub-claims") for purposes of trial.

The defendants moved for partial summary judgment with respect to a few points, some of which the court found persuasive. The court agreed that GC2 gave up any DMCA claim with respect to false CMI regarding "Kitty Glitter" when it answered an interrogatory by stating that it had not alleged a DMCA violation regarding that work. The court rejected, however, that DMCA claims regarding certain other games failed because of GC2’s failure to affix its mark to those games. That failure did not preclude a claim for providing false CMI, the court explained. Displaying copyrighted images without any reference to the copyright owner may constitute falsification of CMI. The court also was not persuaded by the defendants’ contention that GC2 could not sustain a DMCA claim based on the alleged removal of its logo from glass artwork. DMCA claims regarding the use of logos on a "lobby" screen for a particular slot machine—that is, the screen where the user selected the game to play—failed because those logos were not "conveyed in connection with" the copyrighted works. There was not a close enough association between the referenced CMI and the GC2 works in question. Accordingly, the motion was granted in part and denied in part with respect to the DMCA claims.

This case is No. 1:16-cv-08794.

Attorneys: John E. Petite (Greensfelder, Hemker & Gale, PC) for GC2 Inc. Eric Neal Macey (Novack and Macey LLP) for International Game Technology PLC, International Game Technology, and DoubleDown Interactive LLC.

Companies: GC2 Inc.; International Game Technology PLC; International Game Technology; DoubleDown Interactive LLC

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