Combating infringements of game’s IP – a French law perspective

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Combating infringements of game’s IP – a French law perspective

Combating infringements of game’s IP – a French law perspective

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August 9, 2023

Video gaming has become a mainstream leisure activity in France and this position has only been solidified during the COVID-19 pandemic as many people turned to online gaming not only for entertainment but also for socializing purposes. Video gaming revenues in France are projected to reach nearly US$4.44 billion in 2026, up from US$2.87 billion in 2021.¹

Under French law, video games may be subject to two main forms of legal protection, namely:

Copyright; and
Unfair competition and parasitism.

Producers and studios are also seeking protection by other types of intellectual property rights, mainly for the components of video games, to preserve their rights and to combat infringements.

Protection of videogames by copyright

Under French law, all works of intellectual creation are protected by copyright law, based simply upon their creation, without any formal requirements. The following conditions must be satisfied in order to benefit from copyright protection:

the work must be fixed in a material form (tangible or intangible); and
the work must be original. A work is considered original if it is endowed with the personality of its author: therefore, if the work is the "fruit of the creation of its author", it is original.

It should be remembered that under the French law, copyright protection is not subject to any formalities.

Video games are clearly eligible for copyright protection in France as long as the game fulfills the two conditions of materiality and originality.

Copyright protection was extended to video games in France as early as in 1986 by a precedential French Supreme Court ruling concerning a video game produced by Atari Games.² The Court has found that “on the one hand, a set of images arbitrarily animated according to a rule of game itself created, and accompanied by chosen sounds consequently constitutes in itself a work of the spirit eligible to benefit from the protection of copyright law; (…) on the other hand, the application of the copyright law is not subordinated to the aesthetic merit of the work.”

There comes the question as to which type of legal protection is applicable to video games that are composed of different elements: software, drawings, sounds, scenario, original music, databases, audiovisual works, etc.

It was only in 2009 that the French Supreme Court finally defined video games as “multimedia works” or “complex works” in a case concerning the action taken by the French collective management organization for music works, SACEM, against a liquidated French game studio, Cyro, for the mechanical reproduction rights on the musical compositions incorporated in the video games. The Court found that video games “cannot be reduced to its software dimension alone, so that each of its components is subject to the regime applicable to it according to its nature.”³

This definition was confirmed by the Court of Justice of the European Union in its decision of January 23, 2014 in the Nintendo case, according to which “videogames constitute complex matter comprising not only a computer program but also graphic and sound elements.” The Court further clarified that these elements “are protected, together with the entire work, by copyright in the context of the system established by Directive 2001/29”⁴, after noting that Directive 2009/24 about the protection of computer programs constitutes a lex specialis in relation to Directive 2001/29.

French courts have followed this case law ever since. In a recent decision of the Paris Judiciary Court in 2019, the judges have specified that both “the provisions of Directives 2001/29/EC and 2009/24/EC are applicable to video games, the latter directive constituting a lex specialis in relation to the former”.⁵

Consequently, producers and studios of video games may seek copyright protection under French law against infringements.

Protection of games by unfair competition and parasitism

Another protection mechanism under French law which is also very efficient in combatting copying or imitations, is that of unfair competition and parasitism.

Under French law, copying or imitating the original product of others may constitute unfair competition and/or parasitism that is sanctioned on the basis of the rules of civil liabilities as set out in Article 1240 of the French Civil Code.

Producers or studio of video games may thus seek financial compensation of the losses suffered by dint of wrongful conduct of its competitors.

Although based on the same legal text, unfair competition and parasitism have distinct criteria:

unfair competition is based on the risk of confusion, since a product that is not subject to in-tellectual property rights can be freely reproduced provided that it does not create in the mind of the customer a risk of confusion about its origin;
parasitism sanctions free riding whereby a legal entity or natural person draws inspiration from or copies another's economic value or work, in order to profit from the efforts, invest-ments and know-how of the latter, without making its own economic or intellectual efforts.

As this protection mechanism is not subject to the justification of any intellectual property rights, studios or producers may act against unauthorized copies or imitations without having to establish the originality of the copyright.

This being said, in practice, the French courts are usually strict in the assessment of faults with regard to the risk of confusion and take a concrete and detailed approach by taking into account in particular, the more or less slavish, systematic or repetitive character of the reproduction or the imitation, the age of use, the originality, the notoriety of the copied product.

This means that although the originality is not per se a condition to the protection by unfair competition or parasitism, one must be able to demonstrate that the characteristics copied or appropriated by the other party present a certain distinctiveness and are not common features of a genre.

In a recent ruling by the Paris Commercial Court, the claim of unfair competition and parasitism filed by a French studio VOODOO against a competitor concerning a hyper-casual shooting mobile game was dismissed on the ground that: “the analysis of the functionality and playability of the two games shows that the original elements put forward by VOODOO are not sufficiently distinctive or appropriate because of their banality and their presence on other similar games before or after”.⁶

The same position was confirmed by the Paris Court of Appeal in June 2021⁷ in another case involving VOODOO concerning a hyper-casual wood-cutting mobile game on the ground that “a game studio cannot appropriate elements from the common background of a type or a genre of video game in order to claim a risk of confusion”.

Game producers need to assess before taking actions what is protectable against competitors and what is in the public domain.

The positive side is that as video games industry is becoming more and more competitive, when facing a claim of such kind, one is not without defense to argue on the basis of the freedom of trade.

Other types of protection of elements of games

Recently there is a trend of several market players seeking complementary protection by filing selected components of video games as trademark or industrial design (“dessin et modèle”) in France and in the European Union.

This strategy allows game producers to build up an IP portfolio and is more efficient in seeking enforcement, in particular, for take-down purposes with hosting services providers and app platforms.

However, how to select the right component and how to choose the right type of filing in order to effectively obtain an IP registration require prior assessment and evaluation, as it might be risky to get a refusal or an opposition stating that the element for which the protection is pursued is not “distinctive” or not “novel”.

For example, two recent applications filed by a game studio seeking registration of clips of video games, were rejected by the EUIPO.⁸ The EUIPO justified its refusals on the following grounds: “although the sign contains several elements, the Office maintains that they are essentially easily understandable functional or decorative attributes which will not be interpreted, individually or in combination, by the targeted consumer as indicating a commercial origin but only as elements of a video game.”

Interim measures and enforcement against infringement

The French judicial system offers a large range of measures available for the prevention or the enforcement of infringement, in particular interim measures that are available even before the proceedings on the merits start, with or without the registration of an IP right.

One of the most efficient tools is infringement seizure which may be obtained on an ex parte basis in order to collect evidence and create a surprise effect.

A right holder may file a seizure request before a judge without notifying the adverse party if it succeeds to demonstrate that the infringement of an intellectual property right is likely. The seizure that will be carried out by a bailiff may allow, depending on the judge’s order, to seize all documents relating to the alleged infringement, especially accounting documents (order forms, invoices, catalogues, advertisements) at the premises of a third party where the infringing products may be found, including conferences, fairs, and events.

It is worth specifying that if the seizure request is filed based on copyright, which is not subject to registration under French law, the right holder does not have to, at the time of filing the seizure request, justify, beforehand, the originality of the work on which they declare to be invested with the copyright", as confirmed by a recent case law of the French Supreme Court.⁹

Game producers or studios may also proceed with summary proceedings for obtaining interim measures, such as provisional prohibition, even without having to establish an IP right as long as they justify an urgency or the existence of an imminent damage or a manifestly illicit disturbance.

As the commercialization of videogames is often very time sensitive, the possibility to enforce provisional and interim measures against infringers before engaging a legal action that will potentially take some time in obtaining a definitive decision is very effective and efficient to combat infringements and to preserve rights and interests in the games at issue.

Author of the article:

Loïc Lemercier, Partner, Paris, France

More insights together with some numbers and statistics in our Video games industry report.