Ce diaporama a bien été signalé.
Nous utilisons votre profil LinkedIn et vos données d’activité pour vous proposer des publicités personnalisées et pertinentes. Vous pouvez changer vos préférences de publicités à tout moment.

Don’t Touch My Brand!

1 014 vues

Publié le

When can a video game include your brand without
your permission to sell clothes, or feature handbags
that copy your “real world” products? We will review
the Activision Call of Duty decision and other recent
decisions, as well as the interplay among the First
Amendment, the Lanham Act and the Copyright Act
to study this tricky situation and examine how you
can best protect your valuable brands.

Publié dans : Droit
  • Soyez le premier à commenter

Don’t Touch My Brand!

  1. 1. Don’t Touch My Brand! Carol Anne Been Partner Dentons Chicago +1 312 876 3122 carolanne.been@dentons.com CLE Seminar for In-House Counsel June 5, 2015 Chicago, Illinois Samuel Fifer Partner Dentons Chicago +1 312 876 3114 samuel.fifer@dentons.com
  2. 2. Do You Recognize These Brands? 2
  3. 3. Do you Recognize These Brands? (Cont’d) 3
  4. 4. Fighting Unauthorized Use in the Real World… 4
  5. 5. Policing Virtual Infringement 5
  6. 6. Video Games Then… 6
  7. 7. Video Games and Virtual Worlds Now… 7
  8. 8. Video Games and Virtual Worlds Are Big Business 8
  9. 9. Video Games and Virtual Worlds Are Big Business 9
  10. 10. 10 Mobile Games Are Also Big Moneymakers
  11. 11. • Mercedes slide 11 Hyper-Realism and Brands
  12. 12. Balancing Trademark Rights and the First Amendment 12 Fritz Lanham James Madison George Mason Ginger Rogers
  13. 13. 13 Landmark Trademark/First Amendment Case – Rogers v. Grimaldi Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) •Landmark Second Circuit case balancing First Amendment rights against claims under the Lanham Act. •Defendant created film, “Ginger and Fred”, about two fictional Italian dancers. •Ginger Rogers brought trademark claims, arguing the film title falsely implied that she endorsed or was featured in the film. •In ruling against Rogers, the Court read the Lanham Act narrowly to avoid impinging on speech protected by the First Amendment. Because the title was artistically relevant to the film and there was no evidence of explicit misleading as to source, the risk of confusion was outweighed by the interests in artistic expression as to preclude application of the Lanham Act “The slight risk that such use of a celebrity's name might implicitly suggest endorsement or sponsorship to some people is outweighed by the danger of restricting artistic expression.”
  14. 14. 14 The Rogers Test • Title of an expressive work will be protected by the First Amendment if it has at least some artistic relevance to the work and is not explicitly misleading as to the source of the work. • Widely adopted among circuit courts. • The “artistic relevance” prong ensures that the defendant intended an artistic — i.e., noncommercial — association with the plaintiff's mark, as opposed to an intent to exploit the mark's popularity and good will. • Low threshold. Any connection whatsoever is enough for a court to determine that the mark's use meets the low threshold of minimal artistic relevance • To be "explicitly misleading," the defendant's work must make some affirmative statement of the plaintiff's sponsorship or endorsement, beyond mere use of plaintiff's name or other characteristic. • Courts also have applied Rogers in cases where trademark law is used to attack the content — as opposed to the title — of works protected by the First Amendment.
  15. 15. 15 Videogames and Virtual Worlds = Literary Works • Brown v. Entm't Merchants Ass'n, 131 S.Ct. 2729 (2011): Video games are core speech entitled to the full protection of the First Amendment.
  16. 16. 16 Grand Theft Auto & Trademark E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) •Defendant's video game, “Grand Theft Auto: San Andreas” depicted a dystopian, cartoonish L.A., mimicking the neighborhoods of the city. •Plaintiff claimed the game's fictional strip club named Pig Pen infringed its trademark and trade dress associated with its Play Pen mark for a club. •Although the developers took inspiration from photographs of the neighborhood, the name was changed, aspects of the logo were different and the Play Pen building was altered.
  17. 17. 17 Grand Theft Auto & Trademark E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008)
  18. 18. Grand Theft Auto & Trademark •Applying the Rogers test: •Artistic relevance: Including a strip club that is similar in look and feel to the Play Pen has "some artistic relevance" to a realistic, dystopian video game. • Very Low Threshold: Only the use of a trademark with “no artistic relevance to the underlying work whatsoever” does not merit First Amendment protection. “[T]he level of relevance merely must be above zero.” •Explicitly Misleading: Defendant's use of the trademark did not explicitly mislead as to the source or content of the video game, and thus warranted First Amendment protection. • The relevant question is whether the game would confuse its players into thinking that the Play Pen was somehow behind the Pig Pen or that the plaintiff sponsored defendant's product. • Court found that nothing indicated the buying public would reasonably believe that Play Pen produced the video game or that defendant operated a strip club. 18
  19. 19. Military Logos and Trademark – Novalogic, Inc. v. Activision Blizzard, 2013 WL 8845232 (C.D. Cal. June 18, 2013) • Plaintiff video game maker claimed that Activision used its DELTA FORCE mark and logo in “Call of Duty: Modern Warfare 3” game (MW3), which takes place in the near-future 2016. The U.S. is at war with Russia, WWIII is imminent and a terrorist group has obtained Russian nukes and is threatening the world. • Plaintiff had published a series of Delta Force military video games. • Call of Duty displays several logos and symbols of U.S. Military special operation units, including Delta Force, and branches of U.S. Government. • TM not used in title, packaging, disc label or advertising. 19
  20. 20. Military Logos and Trademark – Novalogic, Inc. v. Activision Blizzard 20
  21. 21. Military Logos and Trademark – Novalogic, Inc. v. Activision Blizzard •Applying the Rogers test: •Artistic relevance: Use of the phrase “Delta Force” and altered Delta Force Logo easily met the artistic relevance requirement because was not wholly unrelated to the content of the work and increased the realism of the game, as an “authentic simulation” •Explicitly misleading: Mere use of a trademark alone cannot suffice to make such use explicitly misleading. • MW3 does not claim or suggest in any way that it was made with the participation or endorsement of Plaintiff and the game’s packaging is very clear as to its origin and source. • “Delta Force” and its insignia have an established prior meaning and connotation – as a unit in the U.S. Army – unrelated to Plaintiff and pre-date Plaintiff’s use of the its trademarks. Highly unlikely consumers would be misled into believing that plaintiff was the source of MW3 or was affiliated with or sponsored the game. • No evidence that consumers were misled into believing plaintiff was the source of the game. 21
  22. 22. Novalogic, Inc. v. Activision Blizzard - Waiver Argument • Novalogic argued that Activision had waived its free speech rights because a predecessor, Vivendi Games (later acquired by Activision), signed a license to use the mark in 2005 for distribution of plaintiff’s games and pay royalties on revenue generated from plaintiff’s games. • Court found argument was “unpersuasive and borders on the frivolous,” because the 2005 Vivendi license did not restrict Vivendi (or Activision) from depicting the real-life Delta Force or using its logo; royalties were due to plaintiff only on revenue generated from plaintiff’s games. • See also Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 2014 WL 6655844 (N.D. Cal. Nov. 24, 2014) (depiction of the military supply and outfitting company’s trademarked “angry monkey” military morale patch (among hundreds of others) in Call of Duty game fit the authentic universe of the military virtual world, was not misleading and was protected by First Amendment; brief depiction among four other patches in a pre-release trailer showing how players could customize avatars not dispositive since it had artistic relevance, wasn’t a “crass marketing tool”, and game was clear as to its source) 22
  23. 23. Fashion in the Fictional World •Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172 (S.D.N.Y. 2012) •Trademark claims based on Warner Bros.' use of knockoff Louis Vuitton bag in the film "The Hangover: Part II" •In one scene at an airport, the Zach Galifianakis character, Alan, puts down what appears to be a Louis Vuitton bag. When his friend gruffly moves the bag and almost sits down on it, he quips “Careful that is…that is a Lewis Vuitton.” •Bag is supposed to be a Louis Vuitton but the character is actually holding a Diophy knockoff. •LVM did not object to Warner Bros.' unauthorized use of its marks or reference to the name Louis Vuitton in the film. Rather, LVM claimed that many consumers believed the Diophy bag used in the film was a genuine Louis Vuitton and that Louis Vuitton consented to Warner Bros.' "misrepresentation" • Significance of the airport scene relies on Alan's bag — authentic or not. 23
  24. 24. 24
  25. 25. Louis Vuitton Mallatier v. Warner Bros. -- Applying the Rogers Test • Artistic relevance: Alan’s remark is funny because he mispronounces the French "Louis" like the English "Lewis," and ironic because he cannot correctly pronounce the brand name of his expensive possessions, adding to his image of a comically misinformed character. • Explicitly Misleading: Rogers test frames the applicable standard in terms of confusion as to sponsorship of the defendant's artistic work (i.e., the film), not someone else’s goods (i.e., the knockoff bag). • LVM contended that the explicitly misleading prong extends to confusion as to the source or content of a third-party's goods. • “Louis Vuitton does not allege that Warner Bros. used the Diophy bag in order to mislead consumers into believing that Louis Vuitton produced or endorsed the Film. Therefore, the complaint fails to even allege the type of confusion that could potentially overcome the Rogers protection.” • Even if the court assumed LVM stated a cognizable claim of confusion, its claim would fail anyway – since court concluded it was highly unlikely that an appreciable number of viewers would even notice that Alan's bag is a knock-off, making a claim of confusion “simply not plausible.” 25
  26. 26. 26
  27. 27. Use of Brand in Video Games - Dillinger, LLC v. Electronic Arts, Inc., 2011 WL 2457678 (S.D. Ind. June 16, 2011) • Claims by Dillinger brand against EA for using its "Dillinger” mark (registered for guns) to name certain machine guns in its Godfather video game series about a fictional world, based on the Godfather novel and movies where criminals use an array of weapons, including Tommy Guns associated with John Dillinger. • Plaintiff claimed EA gave false impression that the Dillinger brand approved the association of John Dillinger with the games 27
  28. 28. Use of Brand in Video Games - •Dillinger, LLC v. Electronic Arts, Inc., 2011 WL 2457678 (S.D. Ind. June 16, 2011) •Applying the Rogers test: • Artistic relevance: Flashy gangster who spray-shot Tommy Guns has some relevance to game whose premise enables players to act like part of the mafia. • Court stated that it was immaterial that the defendant offered no testimony as to why it named the gun Dillinger – no bearing on the artistic relevance inquiry. • Explicitly misleading: Court noted that the challenged use was single line of text used to identify one of many weapons within a visually complex video game comprised of countless artistic elements. • “Plaintiff points to no explicit misrepresentation – that fact alone is dispositive of this issue.” • Use is incidental and no documented harm: plaintiff presented no evidence that any consumer bought the Godfather games because of the Dillinger name, or was otherwise confused. 28
  29. 29. Licensing Weapons for Videogames is So 2012… 29
  30. 30. No Licensing Strategy Hits First Bump •Electronic Arts, Inc. v. Textron Inc., 2012 WL 3042668 (N.D. Cal. July 25, 2012) (case settled in 2013) •Trademark claims brought by helicopter manufacturer over EA’s depiction of its copters in “Battlefield 3” military combat game that portrayed weapons used by the U.S. military. •Depictions were used in game and packaging and promotional materials. (“Fly your squad straight to the action or engage enemy targets directly from your heli”) •Years earlier, the parties had settled similar claims over the depiction of other Bell vehicles in earlier games in the “Battlefield” series, resulting in license agreements for use of certain Bell vehicles. •But perhaps given its judicial successes, EA and plaintiff couldn’t reach an agreement for ”Battlefield 3”, with EA contending its use was protected by the First Amendment 30
  31. 31. No Licensing Strategy Hits First Bump – Electronic Arts, Inc. v. Textron Inc. • On motion to dismiss, court focused on the “explicitly misleading” prong of Rogers • Unlike incidental use in Grand Theft Auto case, here court found it plausible that consumers could think Textron provided expertise and knowledge or sponsored the game in order for EA to create its realistic simulation of the Bell-manufactured helicopters. • Not just “mere use.” Court noted helicopters were given “prominence” and were a main selling point of the game. • Bare allegations at motion to dismiss stage were sufficient. • Disclaimer on packaging not dispositive. “DEPICTION OF ANY WEAPON OR VEHICLE IN THIS GAME DOES NOT INDICATE AFFILIATION, SPONSORSHIP OR ENDORSEMENT BY ANY WEAPON OR VEHICLE MANUFACTURER” • Contrast to Novalogic case, where disclaimer was cited positively • Was this case an outlier? Would the outcome have been different on summary judgment, especially if plaintiff couldn’t show any harm? • Lessons: Was EA’s use too prominent in the game, packaging, and promos? 31
  32. 32. Easier to Bring Suit Over Gun Design in the Real World… 32
  33. 33. Latest Trademark Dispute Falls Flat on Appeal – The Dark Knight Gets ‘Clean Slate’ •Fortres Grand Corp. v. Warner Bros. Entm't Inc., 763 F.3d 696 (7th Cir. 2014) (cert. denied Jan. 2015) •In the Batman movie, The Dark Knight Rises, the film uses the term "clean slate" to describe a fictional hacking software that cleared criminals' rap sheets and was a small part of the plot. •Term also was mentioned in promotional websites in advance of the movie •Court found that fictional software product (which used the general term, “clean slate”) was not confusing as to plaintiff’s real-life security software program named "Clean Slate" • “Warner Bros.' use of the mark is not a traditional use in the marketplace, but in the dialogue of its movie and in extensions of its fictional universe -- "the area and manner of concurrent use” makes confusion unlikely. 33
  34. 34. User-Generated Infringement in the Virtual World • Game makers typically have a Trademark Abuse policy and will respond to takedown requests for virtual stores where users sell or create infringing virtual goods. • Second Life: “We will act on such [trademark abuse] notices in our sole discretion. Any user of the Service that fails to respond satisfactorily to Linden Lab with regard to any such notice is subject to suspension or termination.” • Also, Terms of Service typically prohibit users from infringing third-party IP rights and disclaim liability for conduct of users. • Not easy to conjure evidence of contributory infringement -- that a game maker knowingly facilitated specific instances of user infringement in vast spaces of a virtual world. • Second Life: “Linden Lab is NOT liable for its users' actions, and you release Linden Lab from any claims relating to other users.” • “We are not responsible or liable for the conduct or content of any user. We reserve the right, but not the obligation, to monitor or become involved in disputes between you and other users.” 34
  35. 35. 35 Taser Int’l v. Linden Research 2:09-cv-00811 (D. Ariz.) (settled 2009) • Taser claimed trademark infringement, unfair competition and tarnishment (proximity to porn) for unauthorized sale of user-generated virtual stun guns imitating Taser products
  36. 36. 36
  37. 37. Trademark Actions Face An Uphill Battle… What about Design Patents? • A design patent, unlike a utility patent, limits protection to the ornamental design of the article • Scope of design patent limited to the “overall ornamental visual impression, rather than to the broader general design concept.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) • To show infringement under the ordinary observer test, “[t]he patentee must establish that an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” 37
  38. 38. Trademark Actions Face An Uphill Battle… So Do Design Patents •P.S. Products Inc. v. Activision Blizzard Inc., No. 13-00342 (E.D. Ark. Feb. 21, 2014) •Issue: Whether the virtual stun gun weapon (named Galvaknuckles) used in “Call of Duty: Black Ops II,” which allegedly was a representation of the plaintiff’s design, constituted patent infringement. •Court found “no reasonable person would purchase defendants’ video game believing that they were purchasing plaintiffs’ stun gun.” •Trade dress infringement claim was insufficiently plead, as plaintiff failed to adequately outline the trade dress and describe its distinctiveness and non-functionality. •Appears to be one of the first cases, so we’ll wait and see if future litigants can craft more successful arguments in the future. 38
  39. 39. "Personal Brands": Right of Publicity & Video Games 39 • Predominant Use Test • "If a product is being sold that predominantly exploits the commercial value of an individual's identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some 'expressive' content in it that might qualify as 'speech' in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive value could be given greater weight." • Criticism • Forces judges to simultaneously act as "art critics" and "impartial jurists" by "analyzing select elements of a work to determine how much they contribute to the entire work's expressiveness." Hart v. Electronic Arts, Inc., 717 F.3d 141, 154 (3d Cir. 2013).
  40. 40. ROP Transformative Use & Video Games 40 • Hart v. Electronic Arts, Inc., 717 F.3d 141, 154 (3d Cir. 2013) • Facts: Class action filed in New Jersey alleging violation of right of publicity against video game publisher for use of avatars representing college football players • Held: Not transformative: Ability of users to change the appearance of digital avatar is not enough, especially since interactivity is main aspect of any video game and to hold otherwise allow blatant misappropriation of likeness if users could simply just change the likeness. Must look to whether the "type and extent of interactivity" is sufficient to transform a likeness into new expression. 8. Here, game's main purpose, experience, and value lie in the unaltered representation of the athletes being used in the identical real-life activities.
  41. 41. ROP Transformative Use & Video Games 41 • In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268 (9th Cir. 2013) • Facts: Class action filed against video game publisher alleging violation of right of publicity for use of avatars representing college football and basketball players • Held: Not transformative: Similar to the No Doubt case, users manipulate realistic avatars of these athletes (i.e., height, weight, hair color) in the very activities for which they gained notoriety. Defendants created the most realistic digital representations of these athletes playing in replicas of real-life venues because they realized the value in having users "mimic" these actual persons.
  42. 42. ROP Transformative Use & Video Games 42 • No Doubt v. Activision Publ'g, Inc., 192 Cal.App.4th 1018 (2011) • Facts: After contract dispute, musical group, No Doubt, sued publisher of Band Hero video game for violation of right of publicity through the use of digital avatars representing them in game. • Held: Not transformative: The avatars were "immutable images of the real celebrity musicians." The avatars performed rock songs, "the same activity by which the band achieved and maintains its fame." Although videogame had other creative elements, such as playing in outer space venues, no transformation of the avatars into anything "other than the exact depictions of No Doubt's members doing exactly what they do as celebrities." Realistic depictions were motivated by an economic desire to have consumers feel like they were playing as or alongside the group.
  43. 43. ROP Transformative Use & Video Games 43 • Kirby v. Sega of Am., Inc., 144 Cal.App.4th 47 (2006) • Facts: Musician Kierin Kirby claimed that video game publisher violated her right of publicity by using her likeness and catchphrases in creation of space- like character, Ulala, in game. • Holding: Transformative Use - Despite similarities, there were substantial differences in appearance and movement in the creation of an entirely new fantasy character that added "new expression" to the work, even if there was no new meaning or message.
  44. 44. Art Imitates Life – Former Panamanian Strongman Falls Again 44
  45. 45. While Rosa Parks Rises • While not in the video game context, Parks v. LaFace Records, 329 F. 3d 437 (6th Cir. 2003), represents another out-of-bounds line. • The Sixth Circuit determined that under the Rogers test, the title of Outkast's hip-hop song ”Rosa Parks” was not protected by the First Amendment because it had no artistic relevance whatsoever to the content of the song and because it was likely to confuse the public about the content of the work. • In striking contrast to Rosa Parks, whom the court noted was an "international symbol of freedom, humanity, dignity and strength,” the court deemed the Outkast song "nothing more and nothing less than a paean announcing the triumph of superior people in the entertainment business over inferior people in that business.” • Moreover, the court noted evidence of actual confusion from consumers about the misleading title. 45
  46. 46. EU: Fashion Brands & Video Game Titles 46 • Diesel filed an opposition to Germany video game maker Black Forest Games application for DIESELSTÖRMERS for a shooter- themed game within a virtual world, where the inhabitants fight hordes of orcs. • The Diesel brand holds many marks in classes beyond fashion, including, apparently, video games. • According to the game maker, the term Dieselstörmers refers to a fuel element in the game, and is not a parody of Diesel. • David & Goliath dispute: Dieselstörmers was a Kickstarter- funded game that is still being built.
  47. 47. EU: Fashion Brands & Video Game Titles 47
  48. 48. Where Are We Now? • Trademark owners generally have an uphill battle successfully bringing claims where their marks are incorporated into video games and other works protected by the First Amendment. • The Rogers test is designed to favor free expression – and brand owners have quickly learned that the universe of relevance in realistic video games can be vast. • Game maker need not offer compelling testimony as to why it chose to use the mark in the game – relevance inquiry is objective • That being said, video game makers are generally careful with including only trademarked goods or weapons (and by analogy, other products) that are relevant to the game or virtual world • However, sometimes the manufacturers may go "too far" • Right of publicity transformative use test is better developed, and more protective of plaintiffs 48
  49. 49. Where Are We Now? •Examine the role of mark in the disputed game • Is the game sufficiently developed to deserve protection under the First Amendment? • Are parties in related industries? • Is the use of the mark incidental (E.S.S.- Pig Pen strip club) or prominent (Textron – Bell helicopter)? • Is there a disclaimer on the package or displayed elsewhere? • Is the mark used only within the game, or is it also used in the title, in promos, websites, and marketing materials and packaging? • Is there evidence of actual consumer confusion? • Has the game maker offered any explanation for its use that would indicate use of the mark was for “crass marketing”? 49
  50. 50. If You Can’t Beat ‘Em… • If it’s a popular game that is not antithetical to your business and image, perhaps offer a wide license for your marks or pay for “product placement” which can be less expensive than traditional placement in film. • For example, automakers are very keen to place their new cars in video games 50
  51. 51. 51
  52. 52. If You Can’t Beat ‘Em… • If it’s a popular game that is not antithetical to your business and image, perhaps offer a wide license for your marks or pay for “product placement” which can be less expensive than placement in film. • For example, automakers are very keen to place their new cars in video games • Look outside the game: Offers for licensed apparel based on the video game franchise or even riff of video game culture to come up with new styles • Create your own fashion brand-inspired mobile or video game *** SPOILER ALERT *** 52
  53. 53. 53
  54. 54. Just Tweet About It . . . #MadMen
  55. 55. Thank You! We are very interested in your feedback - please take a moment to leave a note about this class and presenter(s) on the back side of your evaluation form. © 2015 Dentons. Dentons is an international legal practice providing client services worldwide through its member firms and affiliates. This publication is not designed to provide legal or other advice and you should not take, or refrain from taking, action based on its content. Please see dentons.com for Legal Notices. Carol Anne Been Partner Dentons Chicago +1 312 876 3122 carolanne.been@dentons.com Samuel Fifer Partner Dentons Chicago +1 312 876 3114 samuel.fifer@dentons.com