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.
]]>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:
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.'"
]]>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.
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This Greenpeace article about Monsanto's international patent applications for pigs crossed my desk today. That's right, Monsanto is patenting pigs. "Curious," you might say, "but what does this have to do with Intellectual Property Rights in the game industry?"
I'm glad you might have asked.
WO 2005/015989 "METHOD FOR GENETIC IMPROVEMENT OF TERMINAL BOARS" appears (to a layman like myself) to be a patent on a selective breeding process that uses artificial insemination and DNA testing to produce pigs with superior genes for a certain trait, and then releases those pigs into a herd to breed and spread the genes.
WO 2005/017204 "USE SINGLE NUCLEOTIDE POLYMORPHSM IN THE CODING REGION OF THE PORCINE LEPTIN RECEPTOR GENE TO ENHANCE PORK PRODUCTION" appears (again, to a layman like myself) to be a patent on using DNA testing to see which of a herd of pigs has a certain gene, and picking the best one of those for breeding.
Here's my first point: any person with a vested interest in controlling pig breeding could tell you why these alleged inventions are unique and should be "owned" by companies like Monsanto, or even by individuals - but any person with a background in the basic sciences, and without a vested interest, could tell you why they should not be "owned" by anyone. I'll volunteer, as someone with no vested interest: Claim 1 of each of these patent applications, when stripped of technical jargon, looks a lot more like common sense use of available tools than like the spark of genius.
It gets better though.
2005/015989, Claim 7: "The method of claim 1 wherein the selected elite sire is selected for as having germplasm favorable for providing offspring having at least one of the following: one or more desired qualitative or economic trait locus/loci; one or more desired quantitative trait locus/loci a desired estimated breeding value (EBV); a desired genotype or phenotype; one or more desired health trait (s), one or more desired meat quality trait (s), one or more desired reproduction trait (s); or one or more desired efficient growth trait (s)."
Second point: since when are inventors excused from their obligation to disclose specifics? In laymen's terms, this claim is equivalent to "anything relevant you think of in the future, we own." Maybe you can sneak that kind of language into an employment agreement; it has no place in a patent.
Now let's look at 2005/017204. The Greenpeace article cited above takes issue with Claims 16, 17, 23, and 30. In these, Monsanto requests an exclusive license not only to the (arguably obvious) method and apparatus for producing genetically engineered pigs, but also to the resulting pigs themselves. In effect, the resulting pigs are licensed and not sold, and Monsanto retains control of their use.
Third point: anyone who's ever bought pure-bred, breeding livestock has probably already encountered this kind of restriction - but in a commercial contract, not in a patent. In my opinion, there is no public benefit (the patent system exists ultimately for public benefit, remember?) to allowing this kind of patent claim, and commercial contracts already provide a viable equivalent mechanism.
To summarize:
1) Quit trying to patent common sense.
2) If you want to patent it, teach it. Lay out all the details. Don't try to claim speculative futures.
3) The patent system exists for public benefit. If there's no public benefit to granting your claim, you shouldn't claim it - and if you do, the examiner should strike it. To bind someone, use a contract.
"Curious," you might say, "but what does this have to do with Intellectual Property Rights in the game industry?"
Genetic engineering, game engineering and pharmaceutical engineering are close industrial cousins. All three make money from the painstaking and often expensive initial creation of easily-reproduced arrangements of information. Intellectual Property precedents set in any one of these fields carry over, in my opinion, very quickly to any of the others.
Patent applications in each of these three disciplines show similar patterns of abuse: over-broad claims, attempts to obtain patent rights in what should rather be established contractually, attempts to patent common sense. Surely, we've seen these abuses in game industry patents as well.
I believe that Patents, Trademarks, Copyrights, and other forms of intellectual property have genuine public benefit and create genuine incentives to innovators. When applicants abuse the law by trying to get away with as much as they can, including asking for rights they know full well they shouldn't be allowed, and nobody smacks them down, they undermine industry confidence in the system and sow the seeds of...
revolution.
So what hotter topic than "hot coffee", right? If you're in games you've heard a lot of furor and debate about "hot coffee" - censorship, freedom of speech, truth in advertising, responsibility, politicians, ethics. But if you're reading this, I bet what you really want to know if how it all relates to Intellectual Property Rights!
Who owns "hot coffee"?
Back when the word was that it was a player originated mod, we'd be right in one of the most controversial topics in IP for games. Who owns the mods that people create based on off the shelf use of commercially available games? Is it a derivative work? Or is it a new work, like the books that are written using Microsoft Word?
But wait, that's not the issue at all, because next we hear, there was the speculation that the mini-game was created by a team member, unbeknownest to management. And just put in, or left in, the game by that person without anyone knowing. Wait, hold the skepticism, and just consider for a minute: Who owns things someone puts into a game without anyone knowing? Well if they're an employee, they probably have a contract that assigns all their copyrights and moral rights to their employer. For work related to their job. Even if the employer claims it wasn't work they commissioned or approved, my guess is that it would still be among the things agreed to be assigned to the employer. But that begs the question of who owns unrelated things that are snuck into a game. What if it was just a game demo by an aspiring designer, unrelated to the "host game"? And not created with company resources? We'd have to get out the person's contracts with the publisher, and start reading ... hmmmm ... just gotta get out my legalese-to-english translator here ...
Except, wait, now it getting easier. Now the word is that the creation of the mini-game was known by Rockstar, and was created in the normal course of business by employees, using textures and models owned by Rockstar. Except it was supposed to be removed for the final published version. That makes the copyright question a lot easier, now it's just like any other game content in GTA: San Andreas.
But, wait, "hot coffee" sounds like a great trademark! Great word of mouth, appeal to anti-establishment youth. Who owns that?
]]>While there can be an endless debate over the pros and cons of the various forms of IP protection, this SIG is taking a more pragmatic approach in accepting these legalities as a current reality for better or worse. As such, the SIG aims to provide the information and tools necessary to empower developers to make informed decisions with respect to the protection of their IP.
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