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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 November 17, 2006 09:22 AM