November 17, 2006

ESA Gets Cute with Kotaku

Uber gaming blogger Kotaku got some interesting flak for the Entertainment Software Association (ESA), the organization that gives ratings to video games. Kotaku had a posting about a guy selling t-shirts that said: "Your Mom - Rated "E" for Everyone". The phrase "Rated E for Everyone" is what the ESA uses for its rating/tagline regarding "kids games" like Cars or SpongeBob Squarepants.

The ESA is posturing that the post is an advertisement, and that the posting will create consumer confusion, and "a substantial likelihood that the ESRB certification marks will face tarnishment and dilution." that has commercial purposes and tarnishes their mark. Kotaku posits that it is merely editorial content, and protected as expression. In all probability, ESA would have an easier time going after the maker of the t-shirt than Kotaku (a site that merely commented on it). Regardless, the rules regarding this action are described briefly below.

For the ESA to prove their claims they must first establish that there is a likelihood of confusion. To do so the court will evaluate the claim under the following factors: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) sophistication of the typical purchaser; (7) intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

ESA has a strong mark. Their ratings appear on every video game made both domestically and internationally. However, the goods are not in actual proximate markets (video games v. clothing), but it is likely that most people who would be interested in the shirt would be gamers. The marks are very similar, and the t-shirt looks very much like the ESRB rating mark, except for the words "Your Mom" above the rating. The most significant factor to me, however, is that neither Kotaku nor the maker of the shirt are seeking to designate the rating mark of their own. Rather, the are using it for its parody value.

The real heart of the ESA's claim is that the shirt dilutes their mark. Any use of an owner's mark that dilutes the distinctive quality of it can be actionable by the owner of the mark. They would typically claim either "blurring" or "tarnishment" of that mark, and unlike infringement, likelihood of confusio is not necessary. Blurring, is not argued here, but it occurs when the strenght of the mark is weakened by identification with dissimilar goods. For example, Microsoft brand tires or Cocacola brand vaccum cleaners. Each of these examples dilutes the distinctive quality of the marks, regardless of a lack of confusion. Tarnishment may be claimed when a mark is associated with inferior or unseemly products and services that case it in a negative light. ToysRUs claimed successful tarnishment against "adultsrus.com", a porn site. Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. 1996).

In defending against a dilution claim, a defendant would want to assert either fair use or parody (not "go to hell" like Kotaku did). Here, Kotaku is claiming that the shirt is a parody that they are merely reporting on. Certain parodies are permissible so long as they are not to directly associated with a commercial use. The law plays a tension between free expression and marketable IP, since artistic and editorial parodies can serve a valuable critical function, which is protected as free expression.

To analyze this, some court's use a general likelihood of confusion test with the First Amendment as an extra analytical factor. Others balance likelihood of confusion against First Amendment interests, while others find the First Amendment trumps the IP right. Overall, courts tend to be more sympathetic of parodies that are not aimed at solely commercial use.

Some examples of the function of dilution include a sexual parody of the L.L. Bean catalog found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987); but posters with a logo "Enjoy Cocaine" were found to violate the rights of Coca-Cola in the slogan "Enjoy Coca-Cola". Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972).

Here, it is likely that Kotaku served as a the reporter of a parody, and is more akin to the L.L. Bean case. They are in a more protective position than Drake Publishers, b/c they did not create the shirt. The creator of the shirt, however, is more closely aligned ot the defendants in the Coke case, and to the extent that he/she is making money off of the shirt, may be enjoined from selling it.

Posted by MikeMintz at 09:22 AM | Comments (0)

April 21, 2006

Microsoft Sued by Lucent Over Xbox 360 Decoding

(April 5th 2006) - An old fued between the two tech producers has been reignited. Lucent filed suit against Microsoft in U.S. District Court in San Diego. The complaint alleges breach of Patent No. 5,227,878, which referes to Adaptive Coding and Decoding of Frames and Fields of Video. Lucent maintains that Microsoft infringed on their IP by using this technology in the XBox 360 console. Read more.

Posted by MikeMintz at 09:43 AM | Comments (0)

April 18, 2006

Does World of War Craft (WOW) Fan Game Guide Violate Publisher's Copyright?

(From March 30 2006) Game Spot News reports about a 24-year old self-publisher filing a law suit CA federal court against video game publishing giant Blizzard Entertainment. 24 year old Brian Kopp sold an unofficial game guide titled, "The Ultimate World of Warcraft Leveling & Gold Guide" on Ebay for $15 a piece. World of Warcraft is Blizzard's epic Massive Multiplayer Online Role Playing Game (MMORPG) that has record sales and membership across the globe. Blizzard and Vivendi repeatedly filed to have the guides stripped from the bidding marketplace, to which Ebay complied. He also has an independent website that sells the guides.

According to Game Spot, "Weeks after his first auction went live, Blizzard, Vivendi, and the ESA began sending repeated takedown notices under the Digital Millennium Copyright Act (DMCA), asking eBay to yank the auctions because of copyright and trademark infringement concerns. The auction giant's general policy is to halt auctions when it receives such complaints and to suspend a user's account after it racks up a certain number of warnings." Kopp filed counter-notices protesting the take downs. In his complaint he alleges that the guide does not violate copyright laws b/c it has a disclaimer notice on the first page stating that it is an unofficial guide and it's use of selected screen shots falls within Fair Use.

Kopp seeks three forms of relief in his suit:

  1. Compensatory damages to cover certain expenses including lost profits from halted sales
  2. Injunction preventing others from interfering with his right to publish such guides
  3. Declaratory judgment that his book is protected by the First Amendment

About this suit, Kopp's lawyer said: "In effect, if the video game industry's actions are upheld, 'then selling a how-to book about Microsoft Word would infringe Microsoft's copyright, especially if the book contained one or more screenshots of Word's user interface,' said Paul Levy of the public-interest advocacy group Public Citizen, which joined in filing the suit on behalf of Kopp. 'We think this cannot be the law.'"

Posted by MikeMintz at 11:15 AM | Comments (0)

Ubi-soft in Court Over Use of Starforce Copy Protection

(03/31/2006) - A $5 million class action lawsuit has been filed against Ubi Soft for the use of DRM in their video games. The complaint stated: "the DRM can compromise Windows operating systems’ security. Any virtus or trojan can control a computer by and through the Stareforce DRM installeed on the computer, despite the security measures taken in newer versions of Windows." Read more.

Posted by MikeMintz at 11:12 AM | Comments (0)

Leap Frog Patent Suit Dismissed

(03/31/2006) - A DE court dismissed Leap Frog's patentlawsuit against Mattel over their Fisher-Price line of Power Touch talking books. The court found that the Mattel's technology did not infringe. Read more.

Posted by MikeMintz at 11:08 AM | Comments (0)