Last December, the Quebec Superior Court issued its decision in Seggie v. Roofdog Games Inc.[1], in which it attempted to clarify the notion of co-authorship (and by implication, copyright ownership) of a videogame. This case marks the first time that the issue of authorship of a videogame was ever considered by a Canadian court (and one of the very few Canadian cases to consider authorship of software more generally).
Given that videogame development is typically a team-based activity, not to mention the emergence of collaborative platforms which facilitate joint development of software by multiple contributors, any lawyer working in copyright law or in the software industry will encounter co-authorship issues with increasing frequency. Seggie v. Roofdog Games Inc. decision will therefore help to provide guidelines on these issues although, like many ground-breaking decisions, it answers some questions while raising others.
What Happened in Seggie v. Roofdog Games Inc.
The case concerned authorship of two works: Extreme Road Trip and Extreme Road Trip 2.[2] In both games, the user controls a car and executes stunts in order to earn points and prolong their gameplay session. The games are distributed for free, and generate profits through micro-transactions in which users purchase digital items like power-ups or different cars.
The code for both games was written by Mr. Germain, a programmer and the owner of Roofdog Games. Germain estimated that he spent 1200 hours working on Extreme Road Trip, and that he spent about $20,000 in the process (to hire a composer to provide a soundtrack, etc.). In addition to writing the code which allowed the games to operate, Germain was also responsible for many of the graphical elements, level design, the overall conception of the game, and its monetization strategy. As the trial judge noted, without Germain's efforts, there would have been no videogame.[3]
Mr. Seggie was a friend of Germain and worked as an artist in the videogame industry. When Germain left his existing job to start working on Extreme Road Trip, Seggie volunteered to help with artwork, eventually contributing the image files for five cars (each of which took about a day of work), a background scene, and pictures of accessory items like fuel cans and trees. Seggie also proposed the title for the game. Throughout this time, Germain lamented the fact that he could not afford to pay Seggie for his services, and Seggie responded by repeatedly reassuring him that he did not mind working "pro bono." [4]
When Extreme Road Trip was released in August 2011, it became a massive success, and quickly accumulated over a million downloads. At this point, Seggie asked Germain for 25% of the profits, a request which Germain rejected. Things escalated quickly, with Germain making various settlement offers in the hopes of resolving their disagreement without a lawsuit, eventually offering Seggie $10,000. Germain also removed Seggie's images from Extreme Road Trip, and replaced them with other images. None of Germain's offers satisfied Seggie, who began litigation before the Québec Superior Court.
Decision
Justice Claudine Roy made short work of Seggie's claim that there was a express profit sharing agreement between himself and Germain, then turned towards the only remaining issue: did Seggie's contributions to Extreme Road Trip make him a co-author of the game, and thus a co-owner of copyright who was entitled to share in the profits generated by the game?
The court adopted the following test for determining whether a work is jointly authored by two or more persons: (1) each of the alleged co-authors must make a substantial contribution to the work, beyond mere suggestions and ideas; (2) the co-authors must have worked collaboratively in the pursuit of a common goal; (3) the co-authors must have intended to create a jointly-authored work; (4) the contributions of the co-authors must be blended together, and not distinguishable one from the other.[5] This last requirement flows from the definition of a "work of joint authorship" in the Copyright Act, which requires "the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author[s]".
Applying this test to the facts before her, Justice Roy found that Germain was clearly an author of Extreme Road Trip. He had devoted 1200 hours to programming the game, and without his programming work there would have been no videogame. Germain had also designed the tutorial, user interface, and icons. Interestingly, Justice Roy also considered Germain's organizational and economic contribution, such as hiring a composer to write a soundtrack, coming up with a monetization strategy, and placing the Extreme Road Trip in various app stores.[6]
By contrast, Seggie's contributions were minor, being limited to discrete graphical elements. The game could have been put online without Seggie's artwork, while the converse was not true for Germain's programming and organizational work. Justice Roy also found that there was no common intention to create a joint work, since neither Germain nor Seggie discussed the work as a joint project, and Seggie's conduct was not that of a co-author (at least not before the game's surprise success).
Finally, Justice Roy noted that Seggie's contribution remained distinguishable from Germain's contribution, which meant that Extreme Road Trip could not be a work of joint authorship under the statutory definition contained in the Copyright Act.[7]
As a result of the above analysis, Justice Roy concluded that Seggie was not a co-author of Extreme Road Trip. Since Seggie had no involvement at all with the sequel, she found that he was not a co-author of Extreme Road Trip 2 either.
However, Justice Roy also found that Seggie maintained copyright ownership of the drawings which he had provided to Germain (i.e. the cars, background, and accessories). Since it was unclear whether Seggie had permanently renounced any right to compensation for the use of these images, she ordered Germain to pay $10,000.[8]
Implications for Copyright Counsel and Software-industry Professionals
Seggie c Roofdog Games provides the first Canadian guidance on determining authorship of a videogame under the Copyright Act. Following the Seggie case, we now know that a person who makes a relatively limited contribution to a videogame cannot claim co-authorship of that game, at least not when there is no common intention to create a joint work and where that person's contribution remains distinct from the work as a whole.
However, the facts in Seggie are fairly extreme, since Germain contributed almost all of the work involved in Extreme Road Trip and also retained considerable organizational control over how the components of the game were put together. In cases where the respective contributions of the two alleged co-authors were more equal, or where their joint intention was less obvious, it remains uncertain who might qualify as an author of a videogame or other piece of software.
In light of this uncertainty, we offer three practical ways to protect yourself and your company against these unanswered questions:
- As with all important business issues, copyright ownership and licensing should be addressed explicitly in a formal legal contract. Here, the court struggled to reconstruct the parties' intentions from text messages, emails, out-of-court behaviour, and in-court testimony. In the end, despite Seggie's repeated assurances that he "didn't mind working pro bono" he was awarded $10,000 for the temporary use of a dozen image files representing about a week's work on his part. A formal licence or copyright assignment could have avoided both the co-authorship claim and the payment for use of the images.
- The second lesson is the benefit of registering copyright for important works. Registration creates a presumption that copyright is owned by the person listed in the registry.[9] Absent registration, there is a complex and cascading series of ownership presumptions created by the Copyright Act.[10] These presumptions are not necessarily favourable for the plaintiff or would-be copyright owner, which makes registration a powerful tool for copyright ownership or enforcement proceedings, especially when co-authorship issues are involved.
- The third lesson is to consider copyright issues not only for the videogame as a whole (i.e. joint authorship issues), but also with respect to all distinguishable copyrightable components incorporated into the work (i.e. components like Seggie's image files). As Germain discovered at the cost of $10,000, authorship or ownership of the work as a whole does not carry with it authorship or ownership of separately-copyrightable components.
[1] Seggie v. Roofdog Games, 2015 QCCS 6462.
[2] See the official website for Extreme Road Trip and Extreme Road Trip 2 can be found at http://www.roofdog.ca/road-trip/ and http://extremeroadtrip2.com/ respectively. An example gameplay video which purports to be the global highscore for ERT2 can be found at https://www.youtube.com/watch?v=yl1Bf7j5efY.
[3] Seggie v. Roofdog Games, 2015 QCCS 6462 at paras 64-65.
[4] Seggie v. Roofdog Games, 2015 QCCS 6462 at paras 19-29,
[5] Seggie v. Roofdog Games, 2015 QCCS 6462 at paras 59, 67, 70.
[6] Seggie v. Roofdog Games, 2015 QCCS 6462 at paras 64-65.
[7] Seggie v. Roofdog Games, 2015 QCCS 6462 at para 70.
[8] Seggie v. Roofdog Games, 2015 QCCS 6462 at para 94. The basis for this award is unclear, since Justice Roy found that the images were used with Seggie's consent and were replaced with new images created by a different artist before Seggie had a chance to revoke his consent (paras 82-91), which rules out damages for copyright infringement; given her finding that it was unclear whether there was any agreement to pay Seggie for the images, this would rule out a contractual claim since no meeting of the minds occurred on whether Seggie would be paid at all, let alone what the quantum of that payment would be (paras 82, 91). In light of her reference to "fair compensation" for the use of the artwork, Justice Roy may have proceeded on the basis of unjust enrichment.
[9] Copyright Act, RSC 1985, c C-42, ss 53(2), 53(2.1) read together with Interpretation Act, RSC 1985, c I-21, s 25(1).
[10] Copyright Act, RSC 1985, c C-42, ss 34.1(1)(b), 34.1(2), 53(2), 53(2.1).
