If and how to restrict the distribution of bot-programs for online-games – The “World of Warcraft II” Decision, Germany

Early in 2017, the German Federal Court of Justice (FCJ) rendered a judgment in relation to the distribution of automation software (“bot-programs”) for the computer game “World of Warcraft”. The claimant developed and owns all rights to the popular online computer game “World of Warcraft”, which it distributes on the Internet. Furthermore, he is the owner of the trademarks “WORLD OF WARCRAFT” and “WOW”. To play the game, users have to acquire client software and register on a server. In the course of registration, the user has to accept the general license terms as well as terms of use of the claimant. The terms of use of the claimant prohibit the use of bot-programs by the user.

Bot-programs autonomously perform certain tasks in a computer game without requiring any interaction with a human user.

The defendant distributed bot-programs for World of Warcraft online and used the term “World of Warcraft bot” and “WOW bot” for its offerings on its Internet website. By using the defendant’s bot-programs, the user did not have to perform time-consuming and “easy” tasks on its own as all the other players had to do. Instead, he skipped game levels to a more advanced level.

The FCJ ruled that the distribution of bot-programs for online games infringes Sec. 4 Nr. 4 of the German law on unfair competition. As the use of bot software was explicitly prohibited under terms of use and as the bot-programs directly impinged the course of the game and the equal opportunities of players, the court ruled that this deliberately hinders the claimant.

The court rejected the argument of the defendant that the distribution of bot-programs is only an additional product for users as it allows them to skip time-consuming levels. Generally, under German law, the distribution of such additional products is not prohibited as they may usually serve an additional need of the consumer. However, that does not apply if the additional product exploits the products of the competitor and therefore impacts his economic success. According to the FCJ, this was the case here as the use of bot-programs was clearly against the terms and could stop honest and fair players from playing. By prohibiting the use of bot-programs in its terms of use, the claimant made clear that it does not accept any unfair means and that the game has to be played fair. Therefore, the distribution of such additional products must not be accepted by claimant.

Furthermore, the court ruled that the use of the terms “World of Warcraft bot” and “WOW bot” on the Internet page of the defendant infringed the trademarks “WORLD OF WARCRAFT” and “WOW” of the claimant (Art. 9 para 1 lit. b EUTMR). The use of a third-party trademark as part of an own identification is a use of the trademark in the sense of Art. 9. Such use was not exempted as the mere identification of goods (Art. 12 lit c EUTMR) as the use here did not comply with honest practices in commercial matters. Instead, the defendant misused the claimant´s trademarks for its unlawful offering of bot-programs.

The judgment is a landmark decision for the computer industry and allows them to defend themselves against the distribution of bot-programs. However, bot-programs are not per se prohibited since it will always depend on the facts of each case. For example, if the terms of use would have been invalid here, the decision could have been different.

Source: www.bundesgerichtshof.de

By Dr. Julia Goetz and Klaus Schubert