I just had a new article published in Cybaris, the Intellectual Property Law Review at the William Mitchell College of Law. The piece is titled "Intellectual Property 2.0: Revisiting the Copyright and Trademark System for a Digital Reality."
It's available for download here. The full listing of articles can be found here.
Many thanks to the staff over there for everything, particularly Brian Bender, the co-Editor-in-Chief.
Showing posts with label Trademark Law. Show all posts
Showing posts with label Trademark Law. Show all posts
Tuesday, June 26, 2012
Tuesday, March 13, 2012
Tween Pop Stars, Cartoon Animals, Parody, and the Right of Publicity
At Law of the Game, we pride ourselves on being fans of popular culture, games, and terrible puns. Imagine our glee when the following story emerged. Justin Bieber’s legal team is embroiled in a lawsuit with app developer RC3 over their game Joustin’ Beaver. The app features JB, a cartoon beaver with a stylish shag haircut and purple hooded sweatshirt. Players fight off greedy “Phot-Hogs" with a lance as they travel downstream signing “Otter-graphs." Bieber’s lawyers sent RC3 a cease and desist, claiming they had violated the pop star’s right of publicity by using his name and likeness in the game. In response, RC3 has filed suit in the US District Court for the Middle District of Florida. They are seeking declaratory judgment that their game does not infringe on Bieber’s rights, and that the app is protected as parody. To get a better idea of what is going on we will discuss the right of publicity, the Lanham Act, parody, and then examine the facts of the case.
The right of publicity will typically arise in cases involving advertising or merchandising. It is “the right of every individual to control any commercial use of his or her name, image, likeness, or some other identifying aspect of identity," limited by the bounds of the First Amendment. The image of a celebrity can be enormously valuable. Many companies will pay top dollar for a celebrity to associate themselves with their product. The right of publicity exists to stop people from getting a free ride on a celebrity’s name. It is important to remember there is no federal right of publicity. Nineteen states currently recognize it, although the level of protection varies. One of the strongest states is California: their Celebrities Rights Act extends it to seventy years after the death of the individual in question.
A great deal of the jurisprudence on the issue can be traced back to Elvis. After his death, mountains of “commemorative" merchandise appeared, but none of it had his estate’s endorsement. So, some courts began to acknowledge that letting places like the Franklin Mint pay bills using Elvis’s face was not fair. This has come up in the gamespace before, in cases involving Kurt Cobain in Guitar Hero 5 and the flash games involving politicians. As usual, there is no hard and fast rule for how these suits play out, they are fact specific. Mark had a good summary of the right of publicity. Think of it like a trademark for a famous person’s likeness.
Related to this is the Lanham Act, which codifies our national standards for trademark. Trademarks can be infringed when someone creates a mark that is the same or confusingly similar. This hinges on the “likelihood of confusion," or whether a consumer could see the allegedly infringing mark and assume the products or services are from the trademark owner. These cases will typically involve similar goods. For example, if you put an Apple logo on your laptops hoping they will sell faster, that is infringing.
Trademarks can also be diluted. Dilution happens when someone uses a mark “in a way that would lessen its uniqueness." Trademark dilution cases often involve unrelated goods. Considering our Apple example, this could happen if someone placed an Apple logo on a placemat. Not a related product, but still a case of someone attempting to gain commercial benefit from associating with a famous mark. The Lanham Act arose in the gamespace during 2009’s James “Jim" Brown v. Electronic Arts, Inc.. Jim Brown sued EA in the Central District of California for creating a player using his likeness in the Madden series. The court held that EA’s rights under the First Amendment “immunized" them to liability.
What about parody? Parody in trademark is fundamentally different from it in copyright. The elements are an original work, famous and known to the target audience, being used to create a new original work, but only taking so much of the source as to bring to mind the original. (You can read more about it here.) A useful way to think about it is that trademark infringement and parody are branches from the same tree. Both bring to mind a separate work and draw on the fame of that famous mark to be identifiable. What makes parody different than infringement is it takes an extra step to distinguish itself from the original. A successful attempt at trademark parody will go so far as to leave no doubt that it is a humorous take on a famous trademark. This standard gives people room to create humorous takes on trademarks, but the law also works to keep in mind the integrity of a mark and not let the parody go too far. When a parody starts inserting elements that could be considered scandalous, anyone trying to protect their trademark has a much stronger case.
Applying this web of rights and limitations to the case of Joustin’ Beaver is tricky. Taking Bieber’s perspective into account, he certainly has rights of publicity and an interest in maintaining some kind of control over his image. He is an international celebrity, and his career demonstrates that his name has value. Florida (where RC3 filed suit) does indeed have a right of publicity statute. You might remember that Lindsay Lohan sued E*TRADE for violating her right of privacy (New York’s right of publicity) and got the company to settle.
This segues into the Lanham Act issues of trademark. The offending beaver certainly uses elements of Bieber’s signature outfit (although he appears to have given up the bangs) so the outcome could depend on whether a court looks at the game and believes consumers could be misled into purchasing the game thinking that Bieber signed off on it. Considering dilution, it does not appear Bieber is attempting to market games using his likeness, so if infringement fails, his legal team could argue the game lessens the unique quality of his brand. We are still not far from filing, so it is tough to say where this will head. Maybe the suit could have been avoided entirely by placing a disclaimer on the game. (This is how Elvis impersonators can imitate the King without paying his estate.) That option could still be there, but considering how famous this case has become, it may be beyond an amicable solution.
So what about Joustin’ Beaver as trademark parody? The game certainly creates an immediate association with Bieber, evoking his famous persona. However, and this may depend on your appetite for puns, there is a solid argument to say the game goes far enough to be a humorous riff on Justin’s worldwide fame. The mop-topped beaver does bring to mind his Canadian counterpart, but it is arguable that it goes just far enough, and does not create confusion. It does not use any of his songs or other intellectual property. The game also does itself a favor by being non-controversial. There are no lascivious or scandalous elements…it is just a simple app where a beaver rides a raft down the river. This could turn on whether the court believes consumers are likely to be confused, but it seems that RC3 has a fairly strong argument here for trademark parody.
This type of celebrity-based game is not a big genre. The outcome of this case could give developers an estimate of the leeway allowed when incorporating a celebrity into their work. If RC3 can get judgment in their favor, we might see an uptick in these apps. Regardless of how this turns out, it is hard to believe this will ever be a substantial part of the industry. What makes a game truly valuable is its ability to build its own brand, not piggy back off of someone else’s. You might gain immediate recognition by association with someone or something famous, but whatever you create will always be tied to them. One of the most exciting things about the Xbox Live, PlayStation Network, and mobile game markets has been the explosion of titles made by independent developers. One of the all time successes, Angry Birds, took game mechanics we have seen before but created a unique world so popular it became a Halloween costume. For a lasting presence in this industry, that will always be the way to go.
Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.
The right of publicity will typically arise in cases involving advertising or merchandising. It is “the right of every individual to control any commercial use of his or her name, image, likeness, or some other identifying aspect of identity," limited by the bounds of the First Amendment. The image of a celebrity can be enormously valuable. Many companies will pay top dollar for a celebrity to associate themselves with their product. The right of publicity exists to stop people from getting a free ride on a celebrity’s name. It is important to remember there is no federal right of publicity. Nineteen states currently recognize it, although the level of protection varies. One of the strongest states is California: their Celebrities Rights Act extends it to seventy years after the death of the individual in question.
A great deal of the jurisprudence on the issue can be traced back to Elvis. After his death, mountains of “commemorative" merchandise appeared, but none of it had his estate’s endorsement. So, some courts began to acknowledge that letting places like the Franklin Mint pay bills using Elvis’s face was not fair. This has come up in the gamespace before, in cases involving Kurt Cobain in Guitar Hero 5 and the flash games involving politicians. As usual, there is no hard and fast rule for how these suits play out, they are fact specific. Mark had a good summary of the right of publicity. Think of it like a trademark for a famous person’s likeness.
Related to this is the Lanham Act, which codifies our national standards for trademark. Trademarks can be infringed when someone creates a mark that is the same or confusingly similar. This hinges on the “likelihood of confusion," or whether a consumer could see the allegedly infringing mark and assume the products or services are from the trademark owner. These cases will typically involve similar goods. For example, if you put an Apple logo on your laptops hoping they will sell faster, that is infringing.
Trademarks can also be diluted. Dilution happens when someone uses a mark “in a way that would lessen its uniqueness." Trademark dilution cases often involve unrelated goods. Considering our Apple example, this could happen if someone placed an Apple logo on a placemat. Not a related product, but still a case of someone attempting to gain commercial benefit from associating with a famous mark. The Lanham Act arose in the gamespace during 2009’s James “Jim" Brown v. Electronic Arts, Inc.. Jim Brown sued EA in the Central District of California for creating a player using his likeness in the Madden series. The court held that EA’s rights under the First Amendment “immunized" them to liability.
What about parody? Parody in trademark is fundamentally different from it in copyright. The elements are an original work, famous and known to the target audience, being used to create a new original work, but only taking so much of the source as to bring to mind the original. (You can read more about it here.) A useful way to think about it is that trademark infringement and parody are branches from the same tree. Both bring to mind a separate work and draw on the fame of that famous mark to be identifiable. What makes parody different than infringement is it takes an extra step to distinguish itself from the original. A successful attempt at trademark parody will go so far as to leave no doubt that it is a humorous take on a famous trademark. This standard gives people room to create humorous takes on trademarks, but the law also works to keep in mind the integrity of a mark and not let the parody go too far. When a parody starts inserting elements that could be considered scandalous, anyone trying to protect their trademark has a much stronger case.
Applying this web of rights and limitations to the case of Joustin’ Beaver is tricky. Taking Bieber’s perspective into account, he certainly has rights of publicity and an interest in maintaining some kind of control over his image. He is an international celebrity, and his career demonstrates that his name has value. Florida (where RC3 filed suit) does indeed have a right of publicity statute. You might remember that Lindsay Lohan sued E*TRADE for violating her right of privacy (New York’s right of publicity) and got the company to settle.
This segues into the Lanham Act issues of trademark. The offending beaver certainly uses elements of Bieber’s signature outfit (although he appears to have given up the bangs) so the outcome could depend on whether a court looks at the game and believes consumers could be misled into purchasing the game thinking that Bieber signed off on it. Considering dilution, it does not appear Bieber is attempting to market games using his likeness, so if infringement fails, his legal team could argue the game lessens the unique quality of his brand. We are still not far from filing, so it is tough to say where this will head. Maybe the suit could have been avoided entirely by placing a disclaimer on the game. (This is how Elvis impersonators can imitate the King without paying his estate.) That option could still be there, but considering how famous this case has become, it may be beyond an amicable solution.
So what about Joustin’ Beaver as trademark parody? The game certainly creates an immediate association with Bieber, evoking his famous persona. However, and this may depend on your appetite for puns, there is a solid argument to say the game goes far enough to be a humorous riff on Justin’s worldwide fame. The mop-topped beaver does bring to mind his Canadian counterpart, but it is arguable that it goes just far enough, and does not create confusion. It does not use any of his songs or other intellectual property. The game also does itself a favor by being non-controversial. There are no lascivious or scandalous elements…it is just a simple app where a beaver rides a raft down the river. This could turn on whether the court believes consumers are likely to be confused, but it seems that RC3 has a fairly strong argument here for trademark parody.
This type of celebrity-based game is not a big genre. The outcome of this case could give developers an estimate of the leeway allowed when incorporating a celebrity into their work. If RC3 can get judgment in their favor, we might see an uptick in these apps. Regardless of how this turns out, it is hard to believe this will ever be a substantial part of the industry. What makes a game truly valuable is its ability to build its own brand, not piggy back off of someone else’s. You might gain immediate recognition by association with someone or something famous, but whatever you create will always be tied to them. One of the most exciting things about the Xbox Live, PlayStation Network, and mobile game markets has been the explosion of titles made by independent developers. One of the all time successes, Angry Birds, took game mechanics we have seen before but created a unique world so popular it became a Halloween costume. For a lasting presence in this industry, that will always be the way to go.
Zack Bastian is an official contributor to Law of the Game. A third year student at George Washington University Law, Zack works at the Woodrow Wilson Center's Science and Technology Innovation Program and is a member of the American Intellectual Property Law Association. The opinions expressed in his columns are his own. Reach him at: zack[dawt]bastian[aat]gmail[dawt]com.
Monday, February 6, 2012
More on Social Game Cloning
I was interviewed for a piece on Ars Technica, which went up this afternoon. It's another good read.
Check it out!
Check it out!
Sunday, February 5, 2012
Piece on IndustryGamers
I was recently featured in an interview on IndustryGamers regarding the recent social games "infringement" issues (Zynga/Nimblebit, SpryFox/LOLApps, etc.).
Tuesday, August 3, 2010
Wednesday, January 20, 2010
Wednesday, July 22, 2009
LGJ: Fan Sequel? Still not legal.
This week's LGJ talks about fan sequels, fan art, fan fiction...basically a ton of different kinds of derivative works.
Read on!
Read on!
Thursday, May 14, 2009
Intellectual Property 2.0: Convergence of Copyright and Trademark
In discussions I’ve had with various others in all aspects of the intellectual property realm, I’ve continually run across points where the law has lagged behind the practicality of intellectual property management. This has been an ongoing problem in the IP realm with respect to issues created by technology, but issues do extend into other areas as well. In order to outline some of these issues and possible solutions, I will be occasionally posting articles in my Intellectual Property 2.0 series.
I can’t imagine that those who created our copyright and trademark laws envisioned the world we live in today, where the entertainment industry has become a megalith dominated by ongoing brands as much as it is by individual works. It is to this end that we have seen some unforeseen consequences. Copyright continues to be extended, negating much of the original intent that works pass to the public domain. However, should these works ever pass into the public domain, a new issue would immediately be born. To the extent that many of these works are also the matter of trademark for the company, they are, in essence, still not in the public domain. By the same token, should Congress continue to extend copyright, they never will be. But is there a solution? Within the practical bounds of intellectual property as we know it, not exactly. However, if the legal system is willing to move forward into a more modern intellectual property scheme, then we can solve both issues simultaneously.
This new idea is something I would refer to as ‘Copymark.’ In short, to the extent a copyrighted work is also the subject of a registered trademark, the copyright remains intact until the trademark lapses. By creation of this new category of intellectual property, you resolve two issues. One, copyright need never be extended for a concern related to the ‘brand.’ Two, those with copyrights that overlap with their trademarks no longer need to be concerned with the fate of the brand once the copyright expires. In order to balance rights, though, there would of course be a catch. To register for copymark, one must forego traditional copyright and trademark filings, and as a result, should the copymark lapse, the work would go immediately into the public domain regardless of the ‘life of the author plus 70 years’ or other expiration provisions of copyright law. More than likely, copymark status would be a filing once both the trademark and copyright are established, and the filer would have to forego their existing copyright and trademark rights in order to secure the new registration.
The concept would really only have appeal or application to those within the entertainment realms. After all, the IP is only applicable to instances when both copyright and trademark to the same IP. Unless you are already in an industry which deals in copyrighted works, then the copymark would never even be an issue. Conversely, unless you develop products and a brand that associate with a copyright, then copymark would never be available. Whether or not a ‘famous’ element would be a consideration is yet to be seen. In short, this is more or less a solution for the Disneys, the Microsofts, the Nintendos, and other big players whose copyrighted characters are also synonymous with the brand itself.
Taking a practical example from the world of gaming, let’s look at Mario. Mario is the subject of many of Nintendo’s trademarks and is more or less synonymous with the Nintendo brand, much like Mickey Mouse and Disney. Well into the future, is there any major benefit for the original Super Mario Brothers to pass into the public domain when the original Mario 8-bit sprite is still the subject of trademark? Similarly, would it be practical for Steamboat Willie to enter the public domain while Mickey Mouse is such a closely protected trademark? From a practical standpoint, not really. Assuming the rights holder is looking to aggressively protect the brand, use of the public domain character would be attacked on trademark grounds, and potentially with good reason. Any game you encounter with Mario in it is expected to be a Nintendo creation. Brand identity has moved beyond traditional trademark notions with respect to entertainment properties. Copymark resolves the incongruity of copyright and trademark with respect to entertainment products.
I can only imagine that many on the intellectual freedom side would, on principal and face value, oppose this idea. However, it is worth pointing out that much like the source intellectual properties, copymark would require fair use provisions. What exactly those provisions would entail would likely be the subject of a lengthy debate, however, elements of both copyright and trademark fair use theory would need to be present. Elements like critique, news reporting, and brand identification would be easily preserved under a copymark regime. In fact, it may even be an opportunity to introduce newer fair use provisions that are appropriate to these IPs.
It may be expecting a lot to see a tectonic shift in well established intellectual property regimes, but it is inevitable that new problems will require new solutions. The entertainment brand as we know it did not exist decades ago, but it is a near certainty that it will continue in this manner for decades to come. The printing press gave rise to copyright, and the guild system gave rise to trademark. It only seems to follow logically that the changes to the entertainment ‘brand’ would give rise to a new intellectual property regime, since intellectual property is the backbone of the industry itself. I can only imagine that companies like Microsoft and Disney might jump at the opportunity to see some of their most prized IPs protected throughout their useful life, rather than having to re-lobby Congress before certain copyrights are set to expire. It's difficult to predict whether an idea like this might ever truly be implemented, but unless people are willing to think outside the traditional intellectual property box, problems like these will be perpetual.
I can’t imagine that those who created our copyright and trademark laws envisioned the world we live in today, where the entertainment industry has become a megalith dominated by ongoing brands as much as it is by individual works. It is to this end that we have seen some unforeseen consequences. Copyright continues to be extended, negating much of the original intent that works pass to the public domain. However, should these works ever pass into the public domain, a new issue would immediately be born. To the extent that many of these works are also the matter of trademark for the company, they are, in essence, still not in the public domain. By the same token, should Congress continue to extend copyright, they never will be. But is there a solution? Within the practical bounds of intellectual property as we know it, not exactly. However, if the legal system is willing to move forward into a more modern intellectual property scheme, then we can solve both issues simultaneously.
This new idea is something I would refer to as ‘Copymark.’ In short, to the extent a copyrighted work is also the subject of a registered trademark, the copyright remains intact until the trademark lapses. By creation of this new category of intellectual property, you resolve two issues. One, copyright need never be extended for a concern related to the ‘brand.’ Two, those with copyrights that overlap with their trademarks no longer need to be concerned with the fate of the brand once the copyright expires. In order to balance rights, though, there would of course be a catch. To register for copymark, one must forego traditional copyright and trademark filings, and as a result, should the copymark lapse, the work would go immediately into the public domain regardless of the ‘life of the author plus 70 years’ or other expiration provisions of copyright law. More than likely, copymark status would be a filing once both the trademark and copyright are established, and the filer would have to forego their existing copyright and trademark rights in order to secure the new registration.
The concept would really only have appeal or application to those within the entertainment realms. After all, the IP is only applicable to instances when both copyright and trademark to the same IP. Unless you are already in an industry which deals in copyrighted works, then the copymark would never even be an issue. Conversely, unless you develop products and a brand that associate with a copyright, then copymark would never be available. Whether or not a ‘famous’ element would be a consideration is yet to be seen. In short, this is more or less a solution for the Disneys, the Microsofts, the Nintendos, and other big players whose copyrighted characters are also synonymous with the brand itself.
Taking a practical example from the world of gaming, let’s look at Mario. Mario is the subject of many of Nintendo’s trademarks and is more or less synonymous with the Nintendo brand, much like Mickey Mouse and Disney. Well into the future, is there any major benefit for the original Super Mario Brothers to pass into the public domain when the original Mario 8-bit sprite is still the subject of trademark? Similarly, would it be practical for Steamboat Willie to enter the public domain while Mickey Mouse is such a closely protected trademark? From a practical standpoint, not really. Assuming the rights holder is looking to aggressively protect the brand, use of the public domain character would be attacked on trademark grounds, and potentially with good reason. Any game you encounter with Mario in it is expected to be a Nintendo creation. Brand identity has moved beyond traditional trademark notions with respect to entertainment properties. Copymark resolves the incongruity of copyright and trademark with respect to entertainment products.
I can only imagine that many on the intellectual freedom side would, on principal and face value, oppose this idea. However, it is worth pointing out that much like the source intellectual properties, copymark would require fair use provisions. What exactly those provisions would entail would likely be the subject of a lengthy debate, however, elements of both copyright and trademark fair use theory would need to be present. Elements like critique, news reporting, and brand identification would be easily preserved under a copymark regime. In fact, it may even be an opportunity to introduce newer fair use provisions that are appropriate to these IPs.
It may be expecting a lot to see a tectonic shift in well established intellectual property regimes, but it is inevitable that new problems will require new solutions. The entertainment brand as we know it did not exist decades ago, but it is a near certainty that it will continue in this manner for decades to come. The printing press gave rise to copyright, and the guild system gave rise to trademark. It only seems to follow logically that the changes to the entertainment ‘brand’ would give rise to a new intellectual property regime, since intellectual property is the backbone of the industry itself. I can only imagine that companies like Microsoft and Disney might jump at the opportunity to see some of their most prized IPs protected throughout their useful life, rather than having to re-lobby Congress before certain copyrights are set to expire. It's difficult to predict whether an idea like this might ever truly be implemented, but unless people are willing to think outside the traditional intellectual property box, problems like these will be perpetual.
Friday, February 20, 2009
The Right to Hyperlink
A case that could have not only impacted the game industry, but every gamer, blogger, and person who ever put any content on the internet, has just been settled. The settlement concerned the use of hyperlinks on the internet, and it's one of those rare cases that had the potential to impact everyone. However, since the gaming crowd tends to be more internet-driven than others, it truly had the potential to impact us. Thankfully, because it settled out of court, there was no legal precedent set. Despite that, the outcome is one that casts a dark cloud over the internet, and it's one that should offend most anyone.
Here's the short version of the facts: A real estate web site BlockShopper.com posted notices of the sales of certain properties. Those sale notices often listed the purchaser, and in the case of these specific purchases, the purchasers were attorneys with the law firm Jones Day. In those sales posts, BlockShopper linked to the attorney profiles of the purchasers. The purchaser's name was hyperlinked directly to the Jones Day attorney profile. Jones Day sued, alleging that this made it appear as though Jones Day was somehow affiliated with the site or otherwise diluted its trademark. BlockShopper, not having the money to defend a suit like this, settled out of court and removed all such hyperlinks. You can see how absurd this case is, and arguably, I'm violating the same principal by linking to the firm as I did in this very paragraph. No, this isn't a joke, and the original pleadings are available online.
I cannot fathom how this case was not rejected outright, but more importantly how anyone could possibly have come up with this claim in the first place. Text-based links are a cornerstone of the internet. They act like footnotes, allowing someone to reference something without interrupting the natural flow of the text. More importantly, it is obvious when these links move away from the actual site. First, most browsers display the full URL of a hyperlink when it's hovered over, and certainly once it's clicked on. More importantly, the URL is hard coded into the site. The only way it would be possible for consumers to be confused by a hyperlink is if either the URL or the linking site itself attempted to mimic the site that's being linked to. There are, literally, thousands of examples where similar domain names were quashed due to trademark issues because of actual or potential confusion or dilution of the brand -- examples we've discussed previously on LGJ.
This case, though, fails to present any evidence of actual confusion or even the potential for confusion. No average internet user would have been confused by the use of hyperlinks. More importantly, the allegation in the case that there is some unlawful action by means of a "link to web sites owned by others," is absurd. More importantly, the alleged "wrongdoing," that is, listing these employees as Jones Day employees and linking to their profiles, is one of the most clearly defined fair uses in trademark law. Would Nintendo object if an eBay re-sale of a Wii included a link to Nintendo's website? No. Has anyone objected when news sites like Joystiq link to the companies they are reporting on? No. Do I object when people link to my articles? Of course not. There's no content being taken for a copyright claim, and there's no likelyhood of confusion because people understand how links work.
This lawsuit basically alleges the internet shouldn't be allowed to operate. After all, these "links" might confuse people, and linking to things people make available to the public on the internet should be as strictly controlled as possible, right? Of course not. That's why this case was described as a "new entry in the contest for 'grossest abuse of trademark law to suppress speech the plaintiff doesn't like.'" Should this legal precedent have been established, rather than settling out of court, it would potentially bar pretty much everyone from using text-based links in favor of forcing the use of complete URLs throughout normal paragraphs, something that I can only describe as hideous as a writer, blogger, forum user, and internet resident.
Thankfully, a private settlement sets no such precedent, other than demonstrating that people without the resources to fight such suits may be the subject of bullying. I can only imagine that any subsequent such action would be the object of a greater movement by those on the internet with the resources and abilities to pursue a more comprehensive legal strategy. I also can't imagine, though, that many other people would take the position that a hyperlink can be viewed as trademark infringement. I do foresee that, as a result of this action, more disclaimers will clearly state that links to other sites should not imply association with or approval of content, even though this fact is obvious to the overwhelming majority of internet users.
For the time being, at least, we're all still free to link to sites without having the exact format of those hyperlinks dictated to us. I, however, wouldn't assume this issue will just vanish, either. If you thought net neutrality would be a rallying cry for many internet users, I can only imagine the response if the freedom to hyperlink were to be challenged again, and perhaps publicized better.
This site and its content has no association with Jones Day.
Here's the short version of the facts: A real estate web site BlockShopper.com posted notices of the sales of certain properties. Those sale notices often listed the purchaser, and in the case of these specific purchases, the purchasers were attorneys with the law firm Jones Day. In those sales posts, BlockShopper linked to the attorney profiles of the purchasers. The purchaser's name was hyperlinked directly to the Jones Day attorney profile. Jones Day sued, alleging that this made it appear as though Jones Day was somehow affiliated with the site or otherwise diluted its trademark. BlockShopper, not having the money to defend a suit like this, settled out of court and removed all such hyperlinks. You can see how absurd this case is, and arguably, I'm violating the same principal by linking to the firm as I did in this very paragraph. No, this isn't a joke, and the original pleadings are available online.
I cannot fathom how this case was not rejected outright, but more importantly how anyone could possibly have come up with this claim in the first place. Text-based links are a cornerstone of the internet. They act like footnotes, allowing someone to reference something without interrupting the natural flow of the text. More importantly, it is obvious when these links move away from the actual site. First, most browsers display the full URL of a hyperlink when it's hovered over, and certainly once it's clicked on. More importantly, the URL is hard coded into the site. The only way it would be possible for consumers to be confused by a hyperlink is if either the URL or the linking site itself attempted to mimic the site that's being linked to. There are, literally, thousands of examples where similar domain names were quashed due to trademark issues because of actual or potential confusion or dilution of the brand -- examples we've discussed previously on LGJ.
This case, though, fails to present any evidence of actual confusion or even the potential for confusion. No average internet user would have been confused by the use of hyperlinks. More importantly, the allegation in the case that there is some unlawful action by means of a "link to web sites owned by others," is absurd. More importantly, the alleged "wrongdoing," that is, listing these employees as Jones Day employees and linking to their profiles, is one of the most clearly defined fair uses in trademark law. Would Nintendo object if an eBay re-sale of a Wii included a link to Nintendo's website? No. Has anyone objected when news sites like Joystiq link to the companies they are reporting on? No. Do I object when people link to my articles? Of course not. There's no content being taken for a copyright claim, and there's no likelyhood of confusion because people understand how links work.
This lawsuit basically alleges the internet shouldn't be allowed to operate. After all, these "links" might confuse people, and linking to things people make available to the public on the internet should be as strictly controlled as possible, right? Of course not. That's why this case was described as a "new entry in the contest for 'grossest abuse of trademark law to suppress speech the plaintiff doesn't like.'" Should this legal precedent have been established, rather than settling out of court, it would potentially bar pretty much everyone from using text-based links in favor of forcing the use of complete URLs throughout normal paragraphs, something that I can only describe as hideous as a writer, blogger, forum user, and internet resident.
Thankfully, a private settlement sets no such precedent, other than demonstrating that people without the resources to fight such suits may be the subject of bullying. I can only imagine that any subsequent such action would be the object of a greater movement by those on the internet with the resources and abilities to pursue a more comprehensive legal strategy. I also can't imagine, though, that many other people would take the position that a hyperlink can be viewed as trademark infringement. I do foresee that, as a result of this action, more disclaimers will clearly state that links to other sites should not imply association with or approval of content, even though this fact is obvious to the overwhelming majority of internet users.
For the time being, at least, we're all still free to link to sites without having the exact format of those hyperlinks dictated to us. I, however, wouldn't assume this issue will just vanish, either. If you thought net neutrality would be a rallying cry for many internet users, I can only imagine the response if the freedom to hyperlink were to be challenged again, and perhaps publicized better.
This site and its content has no association with Jones Day.
Monday, December 1, 2008
LGJ: The Name Game
On the most recent LGJ, I answer the ever popular question: What is it that keeps game makers from being able to use real cars in games without permission?
Read on!
Read on!
Saturday, September 6, 2008
Monday, August 4, 2008
Law of the Game on Joystiq: Trademark infringement? Not like-wii
Thursday, July 10, 2008
Law of the Game on Joystiq: Time for Trademark
There was a bit of a mix up last week, but Law of the Game on Joystiq is back in force this week with an extensive discussion of the trademark registration process and trademarkability.
Read on!
Read on!
Thursday, June 19, 2008
Law of the Game on Joystiq: The Madden Suit
This week's Law of the Game on Joystiq covers the recently filed class action against EA over their football exclusive licenses.
Read on!
Read on!
Thursday, February 28, 2008
Law of the Game on Joystiq: The 'Zombie Suit'
On this week's Law of the Game on Joystiq, who controls the legal rights to reanimated corpses in your local mall?
Find out here!
Find out here!
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