In an unlikely matchup, a new trademark infringement lawsuit pits a 165-year-old brand against the maker of one of the hottest video games on the market. The case shines a spotlight on two key issues: the duration of trademark rights and the notion that infringement claims require “trademark use.”
In less than three months, Red Dead Redemption 2 became the highest selling video game of 2018. Set in the 1800’s U.S. Wild West, Red Dead 2 is as much a film (with a main storyline that unfolds over more than 60 hours) as it is an interactive action-adventure game with over a hundred “missions” for the player to navigate the story. It was released to universal acclaim and several “perfect” scores from leading critics, due in large part to the game developers’ creation of an immersive and complex environment with a relentless commitment to historical accuracy and detail. Red Dead 2‘s developers, Take-Two Interactive Software and Rockstar Games, spent over seven years with the efforts of more than 2,000 people to create a game with more than 500,000 lines of dialog and 300,000 animations.
Red Dead 2 is widely celebrated for its realism and historical accuracy. The Guardian noted that the developers aim to provide players with a wild west fantasy so authentic that “you can forget it is not real.” Other historically and geographically accurate details (including flora and fauna, music, technology, and wildlife) contribute to the game’s believable and authentic experience. Even the birds are location-appropriate and sing with accurate pitch. Such commitment to realism has garnered attention from unlikely sources: the Audubon Society praised the game’s inclusion of 200 distinct, interactive species of animals and 40 different plant species.
In one of the 100+ “missions” throughout Red Dead 2‘s story, fact meets fiction when the game’s protagonists rob a train. The owner of the train hires Pinkerton security agents to find the culprits. In a cinematic cut-scene, two men introduce themselves to the main character as agents of the “Pinkerton Detective Agency, seconded to the United States government,” and tell him he’s a “wanted man” with a bounty on his head. The detectives are dressed in bowler hats, red vests, ties, and grey coats – apparel typical of the real Pinkerton detectives. They also wear silver shield-shaped badges on their chest, and at times, the “Pinkerton” name can be seen. It is the same badge that the Pinkerton National Detective Agency used from 1850 to 1925. The Pinkerton detectives make appearances in ten of the 100+ game missions. (more…)
We’re all familiar with video games involving computer-generated depictions of real-life athletes; they are a multi-billion dollar industry. Under pressure from consumers to make such games more and more realistic, software companies like Electronic Arts, Inc. have mined team rosters to allow gamers to field virtual versions of their favorite sports teams: a virtual Peyton Manning with the same height, weight, jersey and number, skill set and even facial features as the real Peyton Manning can be fielded alongside the rest of the virtual Denver Broncos®. The NFL Players Association receives roughly $35 million annually from EA to compensate NFL players for consumers’ ability to tackle a virtual Tom Brady with a virtual Terrell Suggs. Video games depicting college athletes and teams similarly utilize the likenesses and characteristics of those athletes. Unlike the pros, though, student athletes are not paid for this.
That is, until last week, when a class-action suit brought by several NCAA athletes settled against the last remaining defendant, the NCAA, for $20 million. Last week’s settlement followed a $40 million payout by EA and the Collegiate Licensing Co., the organization authorized to manage licensing rights on behalf of NCAA institutions. (more…)
Popular author L.J. Smith of the Vampire Diaries series was terminated by her publisher and replaced with a ghostwriter. Some fans are content to continue reading the now ghostwritten series. Other fans are buycotting. What did L.J. Smith do? She is writing new Vampire Diaries stories as “fan fiction”. Fan fiction is understood as meaning stories written by amatuer writers based on their favorite book, television or movie characters.
While some media companies routinely prosecute copyright infringement lawsuits against fan works, others have embraced fan fiction, such as the publisher of Fifty Shades of Grey series. Originally fan fiction (or slash fiction)based on the Twilight series, Random House successfully published the books after the author removed the Twilight characters.
The Wall Street Journal reports that Amazon has been making deals with publishers and fan fiction writers for the rights to use characters and fan writing to identify new blockbusters like Fifty Shades.
“Happy Birthday to You” is protected by copyright? The song is based on the tune from “Good Morning to All,” written in the late 1800’s. Over the years families adapted the tune for singing birthday greetings. Vexed with paying synch fees for use of the song in a film, producer Jennifer Nelson of Good Morning Productions asked a court to determine that “Happy Birthday to You” is in the public domain. Read her story at the NY Times. The case is great news! The “Happy Birthday to You” copyright claim begs several important public domain questions. (more…)
Did you hear the roar? Opening Day is not until Friday in Baltimore, but Maryland’s film and television crew base and hundreds of small businesses are cheering the General Assembly for extending the film production the tax credit, and approving an additional $17.5 million in tax credits for eligible televison and film projects in 2014. The story was different in 2009 when the then-existing film incentive program had all but lost its funding. Maryland’s storied crew base scattered to jobs on productions in Louisiana, Michigan, Ohio and other states with active incentive programs because no film or television projects came to Maryland. The Maryland Film Production Employment Act of 2011 converted Maryland’s incentive program from a grant program to a better-funded tax credit program, with special incentives to attract television series. The new program was immediately successful, bringing Maryland’s film and television crew members home to work on great projects like HBO’s VEEP and Netflix’s House of Cards. Senate Bill 183, sponsored by Senator Ed Kasemeyer and passed today in Maryland’s General Assembly, maintains the current program of up to $7.5 million annually in film tax credits through 2016 and increases the ceiling to $25 million for 2014. OberIPwatch contributor and Maryland Film Industry Coalition chair, E. Scott Johnson, quoted in yesterday’s Business Monthly, said that the increase is
“really a testament” to how successful the previous bill, the Maryland Film Production Employment Act of 2011, has been.” How successful is that? “It’s worked so well that it tapped out,” said Johnson, “and we had to borrow some funding from future years to keep ‘VEEP’ and ‘House of Cards’ shooting here this year.”
Not everyone is a fan. The Sun reports that some legislators like Baltimore County Del. Kathy Szeliga felt (more…)
A New York court convicted the “Cannibal Cop” trial in for conspiracy to kidnap, murder and eat women for pleasure based on postings made by the defendant on darkfetish.net. The defendant intends to appeal. The question on appeal boils down to whether the defendant’s online fantasy role play provided the mens rea (criminal intent) to conspire to commit murder. The line of judicial opinions concerning liability for deaths or injuries allegedly caused by violent media stretches back to 1950’s era censorship laws finding such laws are unconstitutional as they place a prior restraint on speech. In today’s user generated content and gamification of nearly everything, when doe role-playing cross the line to real-life crime? (more…)
Banking on a dead celebrity’s right of publicity being public domain is an extremely dangerous advertising practice. Rights of publicity are a suite of legal rights that have developed from invasion of privacy and trademark law since the early 20th Century. There is a web of state and federal laws that can protect dead celebrities– even celebrities from states like New York that specifically do not recognize a post-mortem right of publicity. And the laws can protect rights of publicity for as much as 100 years after death.
As a young lawyer, a common task was determining which state laws apply to a dead celebrity so to determine whether his or her name or image could be used for free. The analysis is extremely detailed. Which law applies, New York (no protection) or California (broad protection)? Does the use violate the celeb’s trademark or constitute a false designation under federal law? An article in Slate today made some stunningly dangerous over-simplifications about how a dead celebrity’s persona is protected.
In my entertainment and sports law seminar, we spend a few classes examining the various ways of protecting a persona. A right of publicity protects the commercial value of a celebrity’s persona. A 1941 Texas case involving Davey O’Brien is my hands down favorite for explaining the basis for protecting a celebrity’s right of publicity. The Texas court gets the analysis wrong, and a dissent by Justice Holmes provides the foundation for modern ROP laws.
All American and Heisman award winner Texas Christian University quarterback Davey O’Brien (more…)
“…their persona is a brand,” Johnson said. “I don’t see it as something to take away from their accomplishments as athletes. They have to continue to do that or no one will care about their trademarks.” Johnson sees the trend as a simple rise in the awareness of athletes and their representation. “As time goes on, there’s more of a perception of a value of intellectual property,” he said.
Under Armor is already cashing in on Nationals rookie Bryce Harper’s fledgling persona with “Don’t be a Clown Bro” tag line t-shirts. Read it at the Daily Record here.
Last Fall on OberIPwatch, Johnson weighed in on Cafe Hon’s catch phrase woes. The owner of Cafe Hon created a firestorm of press coverage when she attempted to police her HON trademark against Baltimoreans claiming cultural ownership of “Hon”, Baltimore’s homegrown term of endearment. The bad press was not good for business. Eventually Gordon Ramsayconvinced Cafe Hon to abandon its HON trademark registrations as a public gesture of goodwill.
With summer around the corner, it is only natural that our thoughts and attention start to shift to the shore. If you are from Mid-Atlantic, you are likely familiar with Seacrets (http://seacrets.com/), one of Ocean City, Maryland’s premiere entertainment destinations. Seacrets, which has nicknamed itself “Jamaica, USA”, started in 1988 as a single cabana type bar and has exploded over the last couple of decades into a huge entertainment complex, complete with 18 separate bars, six stages, a hotel, a private beach, and its own radio station!
During this explosive growth, Seacrets obtained a trademark registration for its name with the United States Patent and Trademark Office. Seacrets did so with the thought that it might expand out of Ocean City and establish franchises throughout the United States and, possibly, in Mexico and the Caribbean. Seacrets was sued for trademark infringement by the Coryn Group, which operates a chain of luxury resorts in Mexico and the Caribbean called “Secrets”. Seacrets countersued for trademark infringement and unfair competition.
The Baltimore Sun’s reported yesterday that, following an 8 day jury trial in the federal district court located in Baltimore, the jury returned a verdict for Ocean City’s Seacrets and awarded it $1 in compensatory damages, $265,000 in punitive damages and, most importantly, a permanent injunction that the Coryn Group could not use the trademark “Secrets” in the United States. Recently, to avoid a re-trial on the punitive damages aspect of the verdict, Seacrets agreed to reduce the damages award to $50,000, but retained the permanent injunction against the Coryn Group.
With this recent victory, Seacrets expansion is even more likely. So, if you are not from the Mid-Atlantic area, watch out — a Seacrets may be coming soon to an area near you!
Baltimore’s Patterson Theater was packed Saturday evening for the Creative Alliance’s Grand Marquee Ball. Costumed patrons jostled for position as the CA honored E.Scott Johnson and Terri Rubenstein for their unflagging support for the arts in Maryland.