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)

February 22, 2006

I ♥ Trademarks

With the games industry increasingly becoming big mainstream business, trademark and copyright issues are increasing in importance. As a great example of this, here are two items regarding use of the Red Cross ® trademarked symbol in games:

Basically the Canadian Red Cross and British Red Cross have brought up their concerns about the use of their Red Cross trademark as a generic symbol for health or health pick-ups in games. Use of trademarks in games is covered in the IP Rights White Paper and Wiki entry but this example has some interesting twists.

For one, certain marks, such as the Red Cross, the Olympic mark and some police organizations enjoy statutory protection. That means their use is governed not just under normal trademark law, but also under special legislation in some countries that specifically protects those marks. For instance 18 USC 706 was passed in 1905. As another example of how far reaching statutory protection can be, Canadian law is pretty broad on this point, prohibiting adoption of the Red Cross emblem "in connection with a business, as a trade-mark OR OTHERWISE." And these statutes are enforceable – for instance see the US Supreme Court case, San Francisco Arts & Ath. v. United States Olympic Comm., 483 U.S. 522 (1987) which enjoined the Gay Olympics from use of the Olympics trademark.

You might wonder, given all of these laws, why is the First Aid aisle in your local pharmacy is filled with products with a red cross on them. The answer here is that any usage of the red cross before the statute was grandfathered in -- so companies like Johnson & Johnson, who started using that symbol way back in 1887, still preserved the right to continue to use it. You can go to the USPTO site and type in "red cross" under the TM search to find several red cross registrations that pre-date the statute. Go ahead, I know you want to.

But exceptions aside, when a trademark also has statutory protection it means that the anti-trademark argument that it is a generically used term (the common Kleenex ®, Jell-O ® or Coke ® examples) is no longer relevant. No matter how generic the common usage is, the mark is still protected by a specific law.

The other thing to watch for is when a mark is not just trademarked but also copyrighted. Mickey Mouse ® is a good example of this. Then we're in the category of graphics IP, and using that mark is no different than replicating the copyrighted Flatiron building in a game. In other words, don't do it without permission from the copyright owner.

However the other twist is the difficulty of enforcement if the mark has already been broadly used. For instance the use of the image of the red cross in the feature film and TV series M*A*S*H ® would, under a broad statutory protection, be actionable. So the question here would be whether it could be selectively enforced against the video game industry but not the film and TV industries. It might be difficult for the Red Cross to enforce this other than in clearly fraudulent use where some business was using the mark to imply endorsement or claim to be related.

Normally trademarks are relevant only in cases where there could be consumer confusion. For instance if there were FedEx ® trucks in a game, the consumer might see FedEx as endorsing the game in some way. It's much easier for FedEx to argue against the unauthorized use of the logo in connection with providing shipping services. So from that standpoint one big trigger of any trademark usage would be using a mark in a way that suggests sponsorship or endorsement. For instance, let's say you're in a Simpsons ® game and there are Nike ® ads posted on all of the billboards. Even though the publisher is not using the Nike trademark to sell its game, there is a suggestion that Nike sponsored or endorsed the game, which could trigger liability. However the mere appearance of a Nike trademark in a game could be argued to be "fair use." Here it's hard to predict what would be the outcome, as fair use is generally a category used for personal or non-product related use (eg, I draw a picture of Mickey Mouse for my own enjoyment).

"Fair use," free speech or free press rights can come into conflict with trademark rights. A recent example is when Fox News Network claimed that Al Franken infringed its trademark by using "fair and balanced" (a phrase trademarked by Fox) in the subtitle of his book, "Lies, and the Lying Liars Who Tell Them" and Fox attempted to block publication of the book. For more info, check out "You Decide: Trademark v. Free Speech."

But some would say that trademark holders shouldn't have any exclusive rights over controlling the sale of products that use those marks for their ornamental or intrinsic value, rather than as indicators of source or official sponsorship. In other words this argument would hold that as long as we weren't implying that McDonalds ® was sponsoring the game, we could use their Golden Arches in our game. However this approach is by no means the prevailing view, so don't do this unless you want to spend a lot of time learning a lot more about IP rights.

So, based on everything above, is the title of this blog a trademark infringement? You might be surprised to learn that states and companies who have used variations of "I ♥ ..." logos, have faced close to 3,000 trademark objections filed to-date by New York state. In case you're wondering, I'm claiming the blog title is a parody.

Luckily for game designers and Valentines everywhere, the Red Heart symbol by itself truly is generic and not protected by trademark or statute.

Posted by TobiSaulnier at 09:16 AM | Comments (0)