Trade-marks and Video Games David Spratley October 1, 2014

Trade-marks and Video Games

David SpratleyOctober 1, 2014

The Plan

• trade-mark basics

• trade-marks and video games

• traditional issues

• non-traditional issues

• recap

Trade-mark Basics

What is a trade-mark?

Trade-marks Act:

• a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others

So, what is a trade-mark?

• indicator of source - everything branded with the mark comes from the same source

• distinguish products or services of one business from those of another

So, what is a trade-mark?

• word(s), design or combination

• registrable; used

• national rights

Products, services and use

• each mark registered with products/services

• protection extends to those products/services … and beyond

• fame complicates everything

Products, services and use

• 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

• (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

Infringement

• unauthorized use → consumer confusion and unfair competition

• free-riding on someone else’s reputation

• “dilute” the strength and value of the mark and its reputation (“depreciation of goodwill” in Canada)

Infringement

• prevent use of identical or confusingly similar mark

• depends on “use” and “confusion”

• unchecked infringement can invalidate brand

Copyright?

• logos may also be protected by copyright if they are original artistic works

• brings a different set of issues from TMs

Protecting a trade-mark

• clearance searches

• application, objections, oppositions, registration

• registered vs. unregistered marks

Trade-marks and Video Games

Video Game Suppliers

Video Games

In Video Games

Video Game Trade-mark Issues:Traditional

November 15, 2001

Is this infringement?

• traditional circumstances and analysis

• are the marks too similar? would their use cause confusion?

• nothing really video-gamey about it

Video Game Trade-mark Issues:Not so traditional

Is this infringement?

• product placement? infringement?

• using a well-known brand in a game might give impression that the brand owner endorses or is affiliated with the game

• but is merely displaying a brand “use”?

What can we learn from the movies?

George of the Jungle 2

• villains use Caterpillar bulldozers

• Caterpillar Inc. sues

• temporary injunction application dismissed

What can we learn from the movies?

• infringement claim not likely to succeed

• no indication that Disney had used Caterpillar’s trade-marks and products to “poach or free-ride” on marks’ fame and goodwill to drive sales or consumer awareness of the movie

What can we learn from the movies?

• dilution claim not likely to succeed

• nothing suggested that Caterpillar’s products were shoddy or cast the products in a poor light

• movie was fictional work with fantastical elements, and the Caterpillar products were merely “inanimate implements” of the villains’ nefarious schemes and were not directly responsible for any unsavoury activity

What can we learn from the movies?

• “common phenomenon” for branded products to appear in movies and television shows

• this in itself is probably not trade-mark infringement or unfair competition

Caterpillar v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003).

What can we learn from the movies?

Dickie Roberts: Former Child Star

• David Spade’s character injures himself by improperly using a Slip ‘N Slide

• Wham-O, Inc. sues for TM infringement and dilution

• temporary injunction application dismissed

What can we learn from the movies?

• anyone watching would understand that Spade’s character was using the Slip ‘N Slide improperly, and would not think less of the brand because of it

• trade-mark formed part of the movie’s “jumble of imagery” but was not highlighted so as to exploit the mark’s value

Wham-O v. Paramount Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003)

What can we learn from TV?

Heroes

• character injures hand in InSinkErator™

• Emerson Electric sues NBC for trade-mark infringement and dilution

• show cast the disposer in an unsavoury light, irreparably tarnishing product

What can we learn from the movies and TV?

• merely displaying a mark (probably) not “use”

• nominative fair use (US): can use TM to describe a product; in Canada, just a question of “use”

• people will still sue you (at least in the US)

Video Game Trade-mark Disputes:Just Weird

• Pokemon!

• POK Erythroid Myeloid ONtongenic

Recap

Recap

• TMs apply to video game developers, publishers and products the same way as any other businesses or products

• clearance searches, registrations, disputes

Recap

• display of TMs in a game is more interesting

• authorized (product placement) or not?

• if unauthorized, may still not be TM infringement (consider copyright for logos)

THANK YOU!

David Spratley604.643.6359

dspratley@davis.ca

Follow us @DavisLLP