Trade-marks and Video Games - PowerPoint Presentation

Slide1

Trade-marks and Video Games

David

Spratley

October

1, 2014Slide2

The Plan

trade-mark basics

trade-marks and video games

traditional issues

non-traditional issues

recapSlide3

Trade-mark BasicsSlide4

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 othersSlide5

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 anotherSlide6

So, what is a trade-mark?

word(s), design or combination

registrable

;

used

national rightsSlide7

Products, services and use

each mark registered with products/services

protection extends to those products/services

…

and beyond

fame complicates everythingSlide8

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.Slide9

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)Slide10

Infringement

prevent use of identical or confusingly similar mark

depends on “use” and “confusion”

unchecked infringement can invalidate brandSlide11

Copyright?

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

brings a different set of issues from TMsSlide12

Protecting a trade-mark

clearance searches

application, objections, oppositions, registration

registered vs. unregistered marksSlide13

Trade-marks and Video GamesSlide14

Video Game SuppliersSlide15

Video GamesSlide16

In Video GamesSlide17

Video Game Trade-mark Issues:

TraditionalSlide18

November

15,

2001Slide19
Slide20
Slide21
Slide22
Slide23
Slide24
Slide25

Is this infringement?

traditional circumstances and analysis

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

nothing really video-gamey about itSlide26

Video Game Trade-mark Issues:

Not so traditionalSlide27
Slide28
Slide29

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”?Slide30

What can we learn from the movies?

George of the Jungle 2

villains use Caterpillar bulldozers

Caterpillar

Inc.

sues

temporary injunction application dismissedSlide31

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 movieSlide32

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 activitySlide33

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)

.Slide34

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 dismissedSlide35

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)Slide36

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

productSlide37

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)Slide38

Video Game Trade-mark Disputes:

Just WeirdSlide39

Pokemon!

POK

Erythroid

Myeloid

ONtongenicSlide40
Slide41

RecapSlide42

Recap

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

clearance searches, registrations, disputesSlide43

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)Slide44

THANK YOU!

David Spratley

604.643.6359

dspratley@davis.ca

Follow us @

DavisLLP