LGJ: Wait, it's not a derivative?

Mark Methenitis contributes Law of the Game on Joystiq ("LGJ"), a column on legal issues as they relate to video games:

I noticed an interesting point brought up in the comments to the last LGJ: that the new NBA Jam was certainly a derivative work, so even if the trademark issue weren't a problem, the holder of the copyright to the original game could certainly bring suit for copyright infringement. Given that no one seems to know who acquired those rights in the Midway dissolution, I can see why this is brought up as an issue. However, a deeper look at the derivative works analysis suggests that EA's NBA Jam might not be a derivative at all; of course, much of this depends on the final product, which we have yet to see.

The old standby statement that sequels are derivative works is, for the most part, a true one in the broad context of all copyrighted works. After all, sequels to books and movies are derivatives, or at least I cannot think of a single sequel that is not one in those media. And for the most part, game sequels are derivatives as well, but not always. And to understand the difference, you have to look at what a derivative work is, what it isn't, and how sequels are different in a book and movie context than they can be in a game context.
The idea of a derivative work is one that subsequent works can make use of major, copyright protected elements of the original work such that the original copyright owner should be able to control those derivatives. That doesn't mean every work with any relation to the original work is a derivative, nor does it mean there's a set boundary in terms of what's no longer derivative. Instead, the courts have made use of the idea of 'substantial similarity.' Among the tests for substantial similarity are the total look and feel test, which gives the trier of fact the job of looking at the whole to determine the expression has been taken rather than simply the idea, the pattern test, which more objectively compares similar elements with a higher number of correlations tending to suggest a derivative, and the filtration test, which is specific to software and analyzes the system at varying levels of abstraction ignoring those elements which are not copyrightable.

In the most basic sense, book and movie sequels, prequels, and re-makes, not to mention adaptations between the media, are all clearly derivative works. In fact, there's an ongoing lawsuit now over the unauthorized sequel to Catcher in the Rye. Those sequels take directly from the original: the plot continuation, the characters, the world, etc. They take so many elements that it's a clear derivative. Though not all of those derivatives would be illegal if unauthorized, given the exemption for parody and other discreet uses, the rights holder can generally control these derivatives. However, it it important to note that what's being taken are the expression in the original media, not simply the ideas. The rights holder to James Bond couldn't stop other spy movies from being made, even if the spy was British, had gadgets, and was constantly surrounded by attractive women.

Because of the nature of the gaming world, the analysis isn't always so clear cut. Taking Halo as an example, Halo 2 was clearly a derivative work, as was Halo Wars. And in fact, most games with this kind of plot/character continuity would be considered a derivative, even if the engine was not shared. In another sense, games using an identical engine could loosely be seen as derivatives, but engine licenses always resolve any issues that may exist.

Which brings us to the unique issue of sports games, and why NBA Jam may not be a derivative after all. About the closest comparison would be to take another sports game of the same era, say Madden from 1993, and compare it to a current version on a modern console. What commonality is there between the two other than both are 'football video games.' The engines are completely different. The models, sounds, and everything else are different. Even the players, Brett Favre not withstanding, are different as the majority from that era have retired. There's no story to continue, and so the common elements are slim to non-existent. The common element is an idea; not the expression.

Such is the same case with what I expect we will see from the new NBA Jam. It's going to be another arcade style basketball game, but that seems to be where the commonality will end, other than perhaps a few elements that reference the original. Now, it's entirely possible that my expectation may be wrong, and therefore this analysis may not be accurate once we see the final product. But it would certainly seem probable that few to none of the expression elements from the original such that the idea of the new game being a derivative simply wouldn't withstand the scrutiny of the courts. And that, in short, is why the trademark question was the biggest potential issue for NBA Jam rather than who ultimately bought the rights to the original software.

Mark Methenitis is the Editor in Chief of the Law of the Game blog, which discusses legal issues in video games. Mr. Methenitis is also a licensed attorney in the state of Texas with The Vernon Law Group, PLLC and a member of the Texas Bar Assoc., American Bar Assoc., and the International Game Developers Assoc., where he is a board member of the Dallas chapter. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.

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This article was originally published on Joystiq.