Recently in Trademark Category

Client Alert: Evolving Case Law on the Fair Use of Famous Trademarks in Video Games

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A recent spate of cases has generally upheld, on First Amendment grounds, a developer's right to include unlicensed trademarks in video games. However, until the body of case law becomes so prevalent that trademark owners recognize that they cannot possibly succeed in an action involving use in a video game, it may be wise for developers to be circumspect in what they include. In many cases, the costs of licensing a trademark may be much less than demonstrating rights under the First Amendment.

For more information, please read our Client Alert.

The Trademark "Twist"

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chubby conversion.jpgJudge Alsup out of the Northern District of California recently issued a decision relating to HP's App Catalogue's (its online store) sale of an app called "Chubby Checker," an app that estimates the size of a male's anatomy (yes, it is a "vulgar pun," as the court noted).   The artist known as Chubby Checker was not amused, and sued HP and Palm (not the app maker) for federal and state trademark infringement and right of publicity violations under various state laws.  HP and Palm moved to dismiss the complaint for failure to state a claim of contributory liability and because the Communications Decency Act (CDA) barred the plaintiff's state law claims.  

HP and Palm successfully argued that the state law claims, including the right of publicity claims, were barred by the CDA, which states that "[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider," and expressly preempts any state law to the contrary. 47 U.S.C. 230(c)(1), (e)(3).  Section 230(f)(3) defines a content provider as "any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service."  The complaint didn't (and couldn't) allege that HP or Palm created the app.  The court concluded that the HP App Catalogue was not a "content provider," but instead, for the purposes of the distribution of the Chubby Checker app, it was an internet service provider that hosts third-party content (apps).  The ruling is one of the first to extend the CDA's protections to an online store that sells apps

HP and Palm were less successful in their attempt to dismiss the complaint's allegations that they were liable for "contributory infringement" for selling the infringing app on the HP App Catalogue.   Looking at the four corners of the complaint and taking "all of the factual allegations in the complaint as true," the court found that the complaint plead that "Chubby Checker" was well-known and a registered trademark, that HP "advertised" the app on its HP App Catalogue, "maintained primary control over the use of the name" on the app on the app store, and that Palm had a "detailed application and approval process for the app."   The complaint alleged that after HP received a C&D letter, it continued to sell the app (specifically, it said that at the time of suit, and four months after it sent a C&D letter, "infringement continues").  Somewhat surprisingly, the court's analysis did not refer to the allegedly continuing sale of the app (after receipt of the C&D letter) in concluding that the complaint satisfied the pleading requirements of Iqbal and Twombly. Thus, it is unclear whether the court took that into account when determining that Palm and HP had "actual knowledge of the infringement," which is necessary to sustain a contributory infringement claim.

Catch Phrase or Trademark Infringement? A Trap for the Unwary

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Richard Kirkpatrick and Laura Gustafson will co-present during a one-hour PLI webinar briefing entitled "Catch Phrase or Trademark Infringement? A Trap for the Unwary," on June 19 at 1:00pm EST.

The recent 2nd Circuit opinion in Kelly-Brown v. Oprah Winfrey, _F3d_, 2013 WL 2360999 (2d Cir 2013) highlights a potential trademark "trap for the unwary" and the need for vigilant clearance. Companies regularly make use of catch phrases and other short phrases, terms, and images in connection with advertising their primary brands. Often such phrases are merely intended to catch the attention of consumers, and are not intended to function as company trademarks or slogans. The Oprah case is a good reminder, however, that even seemingly tertiary and incidental phrases should be evaluated and properly cleared.

Topics to be discussed include:

  • A detailed analysis of the district court and 2nd Circuit court decisions in Kelly-Brown v. Oprah
  • The legal fine line between a mere "catchphrase" and a trademark use
  • Practical implications for clearance

SPEAKERS
Richard Kirkpatrick
, Pillsbury partner
Laura Gustafson, Pillsbury counsel

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Global Trademark Search and Application Workshop 2013

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Pillsbury Partner, Richard Kirkpatrick, will be a featured panelist at the upcoming Global Trademark Search and Application Workshop.  The seminar will be providing practical guidance for the trademark search and application process in the U.S. and abroad. 

Using real-world examples, this practice-based, hands-on workshop will get attendees involved and provide takeaway tips that can be put into use in daily practice immediately.  Learn about the differences and similarities of differing search strategies here and abroad using interactive techniques and explore the application process and beyond.

The panel will include the following:

CO-CHAIR(S)
Richard L. Kirkpatrick, Pillsbury Winthrop Shaw Pittman LLP
Anne Hiaring Hocking, Hiaring + Smith, LLP

ADDITIONAL SPEAKERS
Mary Bagnall, Charles Russell LLP
Paul Kretschmar, Vossius and Partner

LOCATION
PLI California Center
685 Market Street
San Francisco, California 94105

Facebook Attempts to Control Use of "Book"

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MP900439452.JPGFacebook has previously filed over 80 trademark applications on variations of its name and other terms such as "POKE", "WALL" and "LIKE".  Facebook now seems to be attempting to claim some level of ownership/protection over the word "book" as well.  In a recent revision to Facebook's "Statement of Rights and Responsibilities," which is the agreement all users must accept when accessing Facebook, language was inserted which states (emphasis added) "[y]ou will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission."

While there is no record of a current US trademark application on "BOOK", Facebook does have a pending application in the European Union's trademark database.  Moreover, Facebook has brought several suits against online sites incorporating the word "BOOK" in their domain name, with mixed results.  Several of these suits have settled while others are still pending.  Under US law a certain level of trademark protection can be gained merely by use of an unregistered mark.  Generally, such unregistered use is referred to as having "common law" trademark rights.  While these "common law" rights do not provide the same level of protection as a registered mark, they are still quite useful.  Moreover, including the above-referenced clause in its "Statement of Rights and Responsibilities" could provide Facebook with ammunition for future suits against any of its users who attempt to wrongfully use the "BOOK" mark.  Given that approximately 50% of all internet users have registered for Facebook, this provides Facebook with fairly wide-reaching (but not all-encompassing) protection.  
Historically, Facebook hasn't shied away from protecting what is seems to consider its right in the term "BOOK".  Only time will tell how Facebook plans to utilize any new rights it has gained from users by updating the "Statement of Rights and Responsibilities".



Social Media for Nonprofits: Leveraging the Opportunities and Avoiding the Legal Pitfalls

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Many nonprofits are using social media to create awareness of their cause, raise funds, develop closer connections with existing constituents and engage with new ones.

On April 14, 2011, at The Kreeger Museum in Washington, DC, Jim Gatto delivered a compelling presentation on top social media legal issues targeted to nonprofits. His presentation explored examples of how nonprofits are using social media today, including a focus on virtual goods, virtual currencies and gamification and the associated legal issues. For a copy of his presentation, please click here.

Restaurant, Food & Beverage Legal Briefing Series: Top Social Media Legal Issues

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Leveraging social media technologies and applications is critical to the success of any marketing campaign, consumer outreach program or research plan.

Social media tools can be used to shed light on your target market and consumer decision making process. These tools can also be used to engage in a two-way conversation with your consumers and allows customers to communicate your messaging on your behalf. Restaurants are ahead of the curve:  81% are currently using social media, compared with 60% in other industries. Companies in these industries cannot ignore the powerful impact of social media. Companies in this space also face a host of new legal risks and concerns from virtually all sides. The key to success is staying on top of these laws and emerging trends.

On March 22, 2011, Jim Gatto delivered an exciting webinar presentation on top social media legal issues targeted to the restaurant, food and beverage industries. For a copy of his presentation, please click RFB Legal Briefing Series.pdf.

Around the Virtual World

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A weekly wrap up of interesting news about virtual worlds, virtual goods and other social media.

UC Legend Sues NCAA Over Trading Cards

Oscar Robertson, former University of Cincinnati and National Basketball Association Hall of Fame inductee, has joined a class-action lawsuit against the NCAA for using his name and image without his consent.

CloudCrowd: An Assembly Line for Content

"We're doing to service industries what China did to manufacturing," CloudCrowd CEO Alex Edelstein tells me. CloudCrowd collects tasks from clients--currently translation and proofreading jobs--via its Serv.io site, and then distributes them to waiting workers via a Facebook app.

"CSI" Facebook Game Offers Bonuses for Watching the Show

Thursday night's episode of CSI will have something extra for fans of the show's Facebook game: clues to unlock in-game bonuses.

Hacker Steals $12M Worth of Zynga Poker Chips

29-year-old IT businessman Ashley Mitchell plead guilty to stealing $12 million worth of Zynga Poker chips in a British court yesterday, and is now facing a substantial jail term.

Internet, Social Media Make Their Mark in Egypt's Crisis

The political unrest exploding across the Middle East is just the latest illustration that social media is no longer just for teenagers to tweet about their lives, play Farmville, and post pictures from last weekend's party. Today, it has the potential to shake regimes and drive leaders from power.

Will Social Media Leaks Or Pokes Win Nobel Peace Prize?

Two years ago, the world wondered how a newly-elected president like Barack Obama could qualify and win the Nobel Peace Prize. Even the president questioned the honor. This year, that same president might also question why WikiLeaks is now a candidate for that same distinction.

Fire Up the Avatars - Educational Virtual World Curricula Launches

Today, WiloStar3D LLC announced a joint collaboration with Exeter Township School District- Reading PA, and Manhattan-Ogden USA, Kansas to pilot Avatar Storytellers, an Immersive Learning virtual world curricula for grades 5-7.

EA Edges Out A Victory

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EA has defeated Edge Games' attempt to broadly assert rights in the word "EDGE" in connection with video games. Edge sued Electronic Arts for trademark infringement, alleging that EA's use of "MIRROR'S EDGE" for video games infringed its trademark rights. EA countered that Dr. Langdell and Edge committed fraud on the USPTO by submitting false/doctored specimens of use and making false representations regarding use of its marks. The U.S. District Court for the Northern District of California denied Edge's motion for a preliminary injunction, finding that all of Edge's "representations regarding the validity and use of the asserted marks are infected by evidence of deceit." Edge Games, Inc. v. Electronics Art, Inc., Civil Action No. c10-02614 WHA (N.D. Cal. October 1, 2010).

The case promptly and on October 10, 2010, the Court entered a Final Judgment (here) and an Order approving the parties' stipulation regarding the disposition of the claims (here). In the Judgment, the Court ordered the USPTO to cancel five registrations owned by Edge. The Order required Edge to notify its licenses that the marks [sic] have been cancelled, and to provide them with a copy of the order denying Edge's motion for preliminary injunction.

Payment Provider Liability for Contributory Trademark Infringement

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gucci.jpgIn Gucci America, Inc. v. Frontline Processing Corp., No. 09 Civ. 6925 (HB) (S.D.N.Y. June 23, 2010), a New York court denied a motion to dismiss contributory trademark infringement claims brought against the defendant credit card processing companies by Gucci. The court held that credit card processing companies may be held liable for contributory trademark infringement under the relevant Supreme Court test. See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844 (1982).

The court held that defendants (and others) who provide service to websites that sell counterfeit goods can be liable if the plaintiff can show that they:

(1) intentionally induced the website to infringe through the sale of counterfeit goods; or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability.

The court's decision relied on the "willful blindness" standard set forth in Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010) and distinguished the Ninth Circuit's decision in Perfect 10, Inc. v. Visa Int'l Serv. Ass'n, 494 F.3d 788 (9th Cir. 2007) due to the fact that in this case, unlike in Perfect 10, the infringement relied on credit card services because the infringement was based on the sale of tangible counterfeit products.

This and other recent cases highlights the need for credit card companies and other payment providers to carefully assess the steps they can and should take to limit liability for trademark infringement and other liabilities.

Zynga Seeks to Shutdown Secondary Market for Virtual Goods and Currency

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On April 8, 2010, Zynga sued Playerauctions.com for operating a website that provides an unauthorized "Secondary Market" for enabling Zynga game users to post and sell "Virtual Currency" and "Virtual Goods" allegedly in violation of Zynga's Terms of Service. According to Zynga, its Terms of Service prohibits users from selling "Virtual Currency" or "Virtual Goods" for real-world money or anything of value outside of its games.

A recent version of the Zynga Terms of Service states:

The Service may include a virtual, in-game currency ("Virtual Currency") including, but not limited to coins, cash, or points, that may be purchased from Zynga for "real world" money if you are a legal adult in your country of residence. The Service may also include virtual, in-game digital items ("Virtual Goods") that may be purchased from Zynga for "real world" money or for Virtual Currency. Regardless of the terminology used, Virtual Currency and Virtual Goods may never be redeemed for "real world" money, goods or other items of monetary value from Zynga or any other party.

It further states:

Transfers of Virtual Currencies and Virtual Goods are strictly prohibited except where explicitly authorized within the Service. Outside of the game, you may not buy or sell any Virtual Currency or Virtual Goods for "real world" money or otherwise exchange items for value. Any attempt to do so is in violation of these Terms and may result in a lifetime ban from Zynga Service and possible legal action.

Zynga alleges that the Playerauctions.com has committed copyright and trademark infringement (along with false designation of origin, unfair competition and other claims) by displaying and/reproducing images and code from the games and using various Zynga trademarks with authorization.

The Complaint identifies unlawful sales in connection with Zynga's Poker, Mafia Wars and FarmVille games. A recent review of the Playerauctions.com site showed over 750 Mafia Wars related items alone available for sale ranging in unit price from 25 cents to $900 and 84 entire "accounts" for sale ranging in asking price from $30 to $5,000 with one listed at a whopping $492,000!

Interestingly, Zynga does not specifically allege impropriety with or seek to prevent the outright sale of accounts.


University Rattled By Dorm Porn Video

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Florida A&M University (FAMU) recently filed a law suit against the maker of a porn video that depicted multiple individuals engaging in sexual acts in a setting that allegedly represented a dorm room on the FAMU campus. FAMU claims that such association constitutes false or misleading descriptions and misrepresentations under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), federal trademark dilution under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c), disparagement and injury to business reputation and trademark dilution under Florida Statute § 495.151(2009), and common law trademark infringement under Florida law.

Although this suit does not relate directly to virtual worlds, we are writing about it because this type of fact pattern commonly occurs in virtual worlds where famous brands are used in seedy portions of virtual worlds. Like this case, such uses can be actionable to prevent brand disparagement and tarnishment and other harms.

FAMU claiims that the defendant used FAMU's trademarks in the registered mark "FAMU", its tradename, "Rattlers," and its orange and green color scheme, which was chosen to represent Florida's major industry (citrus). FAMU alleges that it has produced and sold merchandise bearing the "FAMU" mark since 1953 and the "Rattlers" mark since 1985.

The Complaint alleges that Defendant RK operates the website "daredorm.com," which depicts individuals engaging in sexually explicit activities in what appears to be dorm rooms at various college campuses throughout the United States and charges a fee to internet consumers who wish to view the videos depicted on its "daredorm.com" website.

The Complaint alleges that on or about March 1, 2010, RK posted a full-length video entitled "BigRattler77" on its "daredorm.com" website depicting no less than eight (8) individuals engaging in multiple acts of sexual intercourse in what is intended to appear to be a FAMU dorm room, that the video contains several visual depictions of and oral references to the FAMU and "Rattlers" marks and depicts the orange and green color scheme in connection with the "FAMU" and "Rattlers" marks. The Complaint further alleges that the caption for the "BigRattler77" video states that it was filmed 'at a historically black college in Florida" and that the individuals were FAMU students and contains derogatory and highly offensive racial innuendo and visual depictions of gang signs purportedly associated with FAMU.

FAMU complains that "BigRattler77" is a transparent attempt to trade on the good name and identity of Florida Agricultural and Mechanical University and its marks by wrongly insinuating that its students routinely engage in the debasing and degrading behavior depicted therein, that it is likely to deceive, confuse and mislead prospective purchasers and viewers of the video into believing that the video was produced, authorized or is in some manner associated with FAMU.

FAMU seeks a preliminary and permanent injunction to prevent such use.

The caption of the case is Florida Agricultural & Mechanical University Board of Trustees v. RK Netmedia Inc. et al., No. 10-0100, complaint filed (N.D. Fla., Tallahassee Div. Mar. 16, 2010).


Virtual Goods = Real Lawsuit Against Virtual World Execs

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A virtual world operator and its executives were sued for trademark and patent infringement over the unauthorized sale of virtual goods. The owner of a famous brand of goods sued the corporate operator of a virtual world, including the executives who run that corporation, for trademark infringement, design patent infringement and racketeering violations. Among other things, the brand owner noted the adult content of the website and the unauthorized use of both the name and the shape of the product as causes for concern. In what is a growing trend, the brand owner also targeted the individuals who make operative decisions for the corporate defendants. The owner subsequently dismissed the case without prejudice to re-filing in the future.

Click here for more information on this Virtual Goods Infringement Suit