First thing's first: if you want to replicate a car in a game, you have to have the manufacturer's permission. I think this has become relatively obvious over time, as the racing games have long standing licensing arrangements with car manufacturers, and in many cases parts manufacturers as well. Other games, such as Grand Theft Auto, either avoid licensing for cost savings or for concern (either by the developer or the car manufacturer) that use in the game might not go over well in the media if someone blames the game for their crime spree right down to the model of car involved. But it's not just cars. Many of the music games now include references to gear manufacturers. Many games include actual models of guns. And of course, many games contain clothing from actual clothing companies. All of these items are licensed, and they're all licensed on the basis of trademark.
"To have a 'fair use' of a trademark, you have to be referring to the actual product, not an in-game recreation of it."
Trademark, as you may remember from previous discussions, is the means of protecting the brand. That protection can extend to the brand's name and/or logo. A previous LGJ
covers trademark in about as much depth as anyone would ever need. In the case of in-game use of these items, the first major hurdle is always the use of the trademark. Many people think this isn't the case if the car is being replicated in the game, because it's the same car. After all, if you owned a Ford Mustang, you would be allowed to use the trademarks in an ad on eBay to sell the car. So, why would putting that car in the game be any different?
The difference is one of who made it. Even though it's Ford's design, Ford didn't make the game and therefore there's no right to use the trademark. To have a 'fair use' of a trademark, you have to be referring to the actual product, not an in-game recreation of it. The same concept applies whether you want your charater to drive a BMW, shoot a Glock, wear Nike, or play a Fender. All of these require a license to use the trademark, and it's at the discretion of the trademark owner to allow that license and determine its terms. The terms will include some sort of payment, whether that's a flat fee, a percent of sales, or just the benefit of the advertising the game provides. That's at the discretion of the licensor.
I do want to take a moment to address the general follow up question about movies, even though it's not a game-based question. The answer is no, movie makers do not license the cars, for example, in their movies because they're using the actual product, much like in the selling on eBay example. In fact, because having a car show up in a blockbuster film can be good for sales of that car, most manufacturers make some cars available for free or even pay to feature their products in movies and TV shows. It's a process that's commonly referred to as 'product placement
.' As games continue to grow, it's possible that even game manufacturers may be asked to include products or even paid for it, but for now, it's generally the licensing descibed above.
There are a few other intellectual property theories that may apply in some cases. First, there is 'trade dress.' Trade dress, in short, is where a particular style or design in the product or its packaging is so iconic that it is completely identified with the product and the manufacturer. Probably one of the best examples is the Coca-Cola bottle, which incidentally is also covered by a trademark (as a logo) and was also covered by a design patent. Other examples are the interior design of Taco Cabana
restaurants or the distinctive grill of a Rolls Royce. If you wanted to include it, a license might be required, but there are still the potential fair use lines to consider. For example, Nuka-Cola in Fallout 3
would likely be allowed (under a number of possible theories), even with the similar bottle shape. I'm also not aware of any trade dress cases that deal with the virtualization of goods, so the outcome could be somewhat different than a traditional trade dress case.
"A design patent protects a stylistic element, while a normal patent protects utility or function."
On a related note, it's possible design patents could be applied to vitrualized products. Design patents do expire, so items like the Coca-Cola bottle have long since expired design patents. In any case, a design patent protects a stylistic element, while a normal patent protects utility or function. Design patents, in fact, can only cover ornamental, non-functional elements. So, in theory, a design patent could be the source of in-game licensing, much like trade dress.
Finally, there's always the possibility for copyright infringement. An in-game t-shirt provides a pretty solid example. In the real world, the t-shirt itself can't be copyrighted. In fact, nothing functional can be protected by copryright. However, the design on the t-shirt can be protected by copyright just like any other image. Transferring this to a game, if you re-created a t-shirt in the game with the same copyrighted image, the copyright holder does have a case for infringement based on the design. After all, that's just a reproduction of their copyrighted work.
In summary, the in-game car issue is basically one of trademark law, and isn't the same as in-movie product placement because it isn't the actual product. Even the most painstaking digital reproduction isn't truly a product made by the company that owns the trademark, unless EA were to buy GM out of bankruptcy or something. I wouldn't be surprised, however, as in-game advertising keeps growing and as more companies see in-game product placement as another viable advertising source, to see more and more in-game product recreations. I would anticipate the barriers to licensing will decrease over time, as they have already decreased significantly over the past 20 or so years.
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. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.
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