OG International v. Ubisoft Entertainment

Citation
OG Int'l, Ltd. v. Ubisoft Entertainment, 2011 WL 5079552 (N.D. Cal. Oct. 26, 2011), aff'd sub nom. OG Int'l, Ltd. v. Ubisoft, Inc., 468 Fed. Appx. 787 (9th Cir. 2012) (phttp://scholar.google.com/scholar_case?case=1336311780710982986&q=Ubisoft&hl=en&as_sdt=2006 full-text]).

Factual Background
Ubisoft, an independent videogame publisher, is the creator of the "Just Dance" series of videogames, which is distinguished from other dance-based videogames in two key elements &mdash; the "avatar" and "instructor" elements. The "avatar" is the central dancing figure in the game that represents the player, and the "instructor" relays the moves to the avatar. OG International, a recent entrant into the videogame market in the United States and a competitor of Ubisoft, announced the release of "Get Up and Dance," a dance-based videogame.

Both games are instructional-based games which include a main dancer avatar whose dance moves are imitated by the player. These games are developed with real choreographies performed by real dancers.

Ubisoft filed a motion for temporary restraining order and preliminary injunction, in response to OG original suit for declaratory judgment. Ubisoft alleged that OG violated its copyrights and trade dress by copying unique protectable expression in "Get Up and Dance" &mdash; use of its two key elements that distinguished the "Just Dance" series from other, similar videogames.

District Court Proceedings
The court applied the Ninth Circuit's two-part test to determine the existence of copyright infringement by OG. The test "determines between permissible lifting of ideas and impermissible copying of expression." It includes an extrinsic inquiry &mdash; whether the elements/expressions used are protectable depending on the range of possible expressions, and an intrinsic inquiry &mdash; whether an ordinary person would find the works substantially similar.

Copyright infringement
Ubisoft argued that the both the inquiries were met. First, it argued that there is a wide range of possible expressions for those ideas, pointing to different, competing videogames using different ways to express the "avatar" and "instructor" elements. OG, in return, argued that the type of avatars and instructors between the works are not protectable expressions because there is only a narrow range of expressions of avatars and instructors in instructional-based dance videogames. It argued that these are features that necessarily flow from the idea of instructional-based dance videogame. More specifically it argued that the type of avatar used depends on the type of dance game and in instructional-based dance videogames they are based on real-life choreographed human dancers. OG further argued that the color of the avatar's skin did not meet the substantial similarity standard.

The court held that avatars, in contrast some other elements in other games, are not susceptible to the endless possibilities for elements and are entitled to broader protections. However, the court held that the stick figures of instructors get little protection because there is a limited range of possible dance movements and the poses of the instructors are suggested by the activities themselves. Further, it noted that several other dance-based videogames use very similar stick-figure type instructors.

Ubisoft argued that the two games were substantially similar. The court found that the avatars were not substantially similar because of the difference in the prominence and size, the overall appearances, the color choices, and the use of facial features instead of washed out features. The court noted some of the similarities in elements present between the games, but it found no compelling evidence pointing to a likelihood of substantial similarity. The court further found no infringement with regard to the instructors, holding that stick-figure instructors are entitled to very little protection and that other similar games use very similar instructors.

Trade Dress Infringement
For the trade dress claim, the court used the Ninth Circuit's four factors test to assess functionality: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.

The court held that the elements were functional and Ubisoft was not likely to succeed on he merits of this claim. Ubisoft appealed.

Appellate Court Proceedings:
The Ninth Circuit held that the district court did not abuse its discretion in denying Ubisoft's motion for preliminary injunction and affirmed the district court's decision.