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Pinning Down Your Brand: Pinterest Issues of Consideration to Brand Owners
We’ve all heard of it. It’s been in the news. You’ve seen it on Facebook. Charlie Sheen is probably even getting in on it. The latest buzz in social media: Pinterest (#Pinning!). Pinterest describes itself as a virtual pinboard. Users of the site “pin” images they discover on the internet to their own pinboards. Other users can view the images pinned to someone’s pinboards, click through those images to the original site where the content was found, and share those images with others (“Repinning”). Pinterest has enjoyed an enormous increase in popularity over the last year, rising to over 17 million users as of last month—hitting the 10 million user mark faster than any independent site in history, according to one study. Alexa shows that Pinterest.com is now the 16th most popular website in the U.S., and the 62nd most popular worldwide. And it drives significant referral traffic… Continue Reading
Peeved with Biebs: Justin Bieber Sued over Joustin’ Beaver Game App
Last Friday, app developer RC3, Inc. sued Biebs, aka pop star Justin Bieber, seeking the court’s declaration that RC3’s game “Joustin’ Beaver,” available for Android devices and the iPhone/iPad, is protected under the First Amendment. In a February 13, 2012 demand letter to RC3, Bieber’s counsel asserted that the app is a blatant infringement of Bieber’s right of publicity and constitutes trademark infringement, trademark dilution, and other violations. The game features a beaver sporting Bieber’s (in)famous hairstyle. The beaver also wears a purple sweater which, as every Bieber fan knows, is his favorite color. (Important! We don’t admit to being Bieber fans.) Joustin’ Beaver must float down the river while signing “Otter-graphs” and knocking evil “Phot-Hogs” into the river with his jousting lance. A press release for the game noted, “We wanted to create a game that appeals to Justin Bieber’s fans. He’s a hero and adored by millions. It’s important… Continue Reading
All A-Twitter: When Someone Else Owns the Twitter Username for Your New Brand
You’ve selected the perfect brand. Trademark counsel has cleared it. You even have the domain. Everything’s coming along, but then you get the bad news: someone else owns the corresponding Twitter username. It happens. In September 2011, Netflix was roundly mocked for failing to secure the Twitter handle for its much-ballyhooed QWIKSTER DVD-to-mail service – a problem that was solved only when Netflix abandoned its plans for the DVD-only option. In a perfect world, companies would ensure that a new brand is available on key social media sites before launch. Otherwise, at least as far as Twitter is concerned, you might be out of luck. If the owner of the Twitter account acquired the username before you established rights in the trademark, typically there’s no infringement claim to be made. You also can’t simply offer to buy the username from the owner – Twitter explicitly prohibits selling or buying usernames.… Continue Reading
>Trademark Clearance and Mafia Wars
>As a reminder to us all of the reason for a good trademark clearance search, game developer Digital Chocolate, Inc., has filed a trademark infringement suit in the Northern District of California against Zynga Game Network, Inc., creator of popular Facebook games like Farmville and Mafia Wars. The complaint alleges that Zynga, which released Mafia Wars in 2008, has “hijacked” the Mafia Wars name from Digital Chocolate. Although Digital Chocolate never registered the Mafia Wars mark in the U.S., it claims Zynga is violating the common law trademark rights it has had since it started selling its own Mafia Wars game in 2004. For the careful entrepreneur, this case highlights the importance of an adequate pre-launch trademark clearance search to minimize the risk of problems in the future.A pre-launch trademark clearance search might encompass, for example, federal and state trademark registrations and applications, common law rights, web searches, and domain… Continue Reading
>Bethesda Sues Interplay Over Fallout IP Purchase
>The purchase of intellectual property is always a complicated transaction, which can easily blow up on the participants if not handled carefully. Bethesda Softworks found how easily things can go wrong last month when it sued Interplay over the purchase of the Fallout IP. Bethesda’s suit accuses Interplay of breach of contract and trademark infringement for not abiding by various provisions in the purchase and license agreements detailing Bethesda’s purchase of the Fallout IP from Interplay in April, 2007. Under these purchase and license agreements, Bethesda bought the exclusive rights to the Fallout game and associated trademarks for $5.75 million. Interplay then licensed back several types of limited rights from Bethesda. One provision in the agreements said that Interplay would have the right to develop a Fallout MMORPG if it could raise $30 million in funding by the end of March 2009. Bethesda claims such fund-raising did not occur, but… Continue Reading
>Tip: Shutting Things Down… But Not For Good
>Are you thinking about phasing out a studio? Are you shelving a project? Sometimes that has to happen, but one thing to be careful of is how you handle the company/project name. If you announce to the world “Studio XYZ is ending development and shutting down”, do you really want someone else in the marketplace to form a new studio with the name “XYZ”?If you want to try and prevent a competitor from adopting your former project’s or studio’s name, you need to find a way to keep using that name in connection with your business. Consider keeping a description of it on your web site or other marketing materials. Avoid a broad, all-encompassing press release describing your intention to “abandon” a project. There’s a bit more detail to process to keep the name alive, but the key component is that you need to find some way to keep using… Continue Reading
>Trademarks in Virtual Worlds
>Taser International, Inc., recently filed a trademark infringement lawsuit against the publisher of Second Life claiming that the publisher is illegitimately selling virtual Taser stun guns. Specifically, Taser says that these virtual stun guns are being sold next to pornographic material, which harms its brand. The suit states that, by associating Taser products with such content, the defendants have damaged Taser’s reputation. This concept is known in trademark law as “tarnishment.” Taser complains that the defendants sell virtual Taser stun guns and also sell adult-only explicit images and scenes, thus attaching such content to the Taser mark.While there have been a number of cases addressing tarnishment of a mark used without authorization in the context of sexual activity, obscenity, or illegal activity, providing virtual explicit materials within the same virtual environment as the virtual use of the trademark may not be enough to establish trademark tarnishment. Taser is also using… Continue Reading
>What’s in a name?
>Nadya Suleman made big news last week when she sought to register the “Octomom” moniker with the U.S. Trademark Office. Ms. Suleman’s two trademark applications indicate that she intends to use the mark “Octomom” in connection with a reality TV show and disposable diapers, among other things. However, it turns out that video game company Super Happy Fun Fun, Inc., (I love the name) out of Austin, Texas, had already filed an intent to use application last month for the mark “Octomom” in connection with computer game software, toys, and entertainment services. So who gets the right to use the mark? Generally speaking, the first-filer gains the upper hand by winning the race to the Trademark Office. We talked a little about the advantages of filing for trademark protection as early as possible in a previous post. So, to the extent that the Trademark Office views Ms. Suleman’s reality TV… Continue Reading
>Tip: File Early. File Often?
>Want to be the first to hear about a new game? Just monitor the filings at the U.S. Trademark Office. Smart game companies know that it’s important to apply to register the IP associated with a new game even though the game itself is still in secret development. Otherwise these companies risk unpleasant surprises down the road, such as someone else filing the trademark or registering the domain name. Failing to take appropriate steps to protect IP early enough can result in costly changes late in the development and marketing stages of a new game. So, who’s filing these early applications? Well, Activision-Blizzard, the publisher behind Guitar Hero, has just filed a trademark application for “Sing Hero” for “interactive video game programs.” Or, check out the newest application for “Your Game Here” from Take-Two Interactive, publisher of the Grand Theft Auto series. Their new trademark for “Your Game Here” is… Continue Reading
>Master Chief is Back! (Sort of…)
>Ok. I admit… the headline is over the top. No one has announced a Halo 4 (yet?), although The Halo franchise development director Frank O’Connor was quoted as saying “I doubt we have seen the last of Master Chief.” So, why do I bring that up? I want to highlight a different facet of intellectual property protection. The name “Master Chief” resonates with consumers, as well as pictures of the iconic character, and both the name and photographs are available for intellectual property protection. In fact, if you search the Copyright Office web site and the Trademark Office web site, you’ll find filings for each by Microsoft. Sometimes the focus on protection is on the guts of a game (e.g., the code, the trade secrets) while losing sight of protecting the intellectual property that faces your customers. Filing for copyright and trademark protection on elements of the game may be… Continue Reading
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