On September 27, 2018, Nintendo’s blue-shell finally reached the Japanese go-karting company MariCar. The Tokyo District Court ruled in favor of the video game giant and awarded it damages for Maricar’s copyright infringement. MariCar, a popular service in Tokyo since 2011, must now pay ¥10 million (nearly $89,000 USD) in compensation and cease its use of Nintendo-related cosplay to promote its business.
MariCar is a well-known tourist attraction in Tokyo that offers street-legal go-kart rentals to users who wish to tour the streets of the city. The company also gave customers the option of renting out costumes to wear during their go-kart adventure. These options included costumes that mirrored characters like Mario, Luigi, Princess Peach, Bowser, and other characters from the classic Nintendo title Mario Kart, undoubtedly in an effort to make the virtual game a reality for fans.
The game developer filed the lawsuit in February 2017 alleging copyright infringement and a violation of Japan’s Unfair Competition Prevention Act. In its filing, Nintendo stated that MariCar provided users of the service with copyrighted Nintendo character costumes and often posted photos and videos of the customers in said outfits in an effort to promote its business. Nintendo believed the go-kart company’s actions were a violation of Nintendo’s intellectual property rights, since MariCar had been using the characters’ likeness without a license. The Tokyo District Court agreed with Nintendo and ordered MariCar to stop using Nintendo-related outfits in connection with its services and awarded Nintendo the requested amount of 10 million yen. Interestingly enough, the company still offers its customers the option of wearing other character cosplay like Superman and Spiderman – for now.
This lawsuit was not the first time Nintendo legally opposed MariCar. Prior to filing its lawsuit against the go-kart company, Nintendo filed an objection with the Japan Patent Office over MariCar’s registered trademark. In its objection, Nintendo argued that the MariCar trademark beared a striking resemblance to Nintendo’s Mario Kart franchise, and that MariCar directly intended its trademark to confuse the public. Nintendo went on to assert that the public widely interpreted MariCar to be nickname for Mario Kart, much like other abbreviated Japanese nicknames for game titles, such as “Pokemon” for “Pocket Monsters,” “Pazudora” for “Puzzle & Dragons” and “Sumabura” for “Super Smash Bros.” This colorful argument did not appeal to the authoritative body, as the Japan Patent Office maintained that there was no connection between the two trademarks, handing Nintendo a rare legal loss.
Nintendo has a long history of aggressively defending its trademarks and copyrights. The publisher recently opposed a United States couple's “Poké Go” trademark that was intended for use in connection with clothing. Predictably, Nintendo stated that the trademark would be confusingly similar with its Poké trademarks. More recently, the game developer sued a website operator over two websites that allowed anyone to play and download a number of Nintendo games for free. Over the years, Nintendo has shaped the gaming industry through its zealous fights to protect its intellectual property against copyright infringement.
At first it may be hard for passionate Nintendo fans to understand why the publisher has taken such an aggressive approach in defending against copyright and trademark infringement. From their perspective, the Japanese company is simply preventing supporters from living out their fantasies of a real life video game like Mario Kart and stopping others from making its older games more available to the masses. However, Nintendo is only doing what is necessary to protect its property and brands that have taken years, and substantial sums of money, to build. Without opposing similarly confusing trademark registrations, Nintendo, in time, could potentially lose a trademark that it previously held. Additionally, by allowing others to use its copyrights for their own businesses, the publisher would be losing out on creative control over similar opportunities it may have planned to provide at a later date and any profits that would be associated. Still, companies that wish to use Nintendo’s copyrights may do so legally by obtaining a license from the game developer, though the price for a license may be steep. In the mean time, fans will have to wait for Nintendo to make their dreams come true with a theme park containing all their favorite characters.
(Image used under creative commons license from Cory Denton)
Trademarks are the foundation of branding, as they protect the rights holder from third parties using any protected words or logos for their own pecuniary gain. Fnatic, Fatal1ty, and Overwatch League, are a few of the many examples of trademarks utilized in the esports and streaming industries. Trademarks are extremely valuable assets to those who own them because they provide heightened protections and rights to owners. These benefits are not only available to companies, like when a streamer or influencer creates a company to provide their services through, but also to individuals who can prove that their name, or pseudonym, has acquired “secondary meaning”. Secondary Meaning is a legal term used to mean that the mark owner can show that the individual’s name or pseudonym is indicative of the producer of the services and not the services themselves. Popularity certainly plays a role in whether Secondary Meaning can be proven. Athletes like LeBron James and Cristiano Ronaldo have trademarked their names, nicknames and even their commonly-used phrases to provide themselves with exclusive use of these words and phrases for their own pecuniary gain. Streamers and influencers should follow in these athletes’ footsteps with respect to their intellectual property.
What are trademarks?
Trademarks are words, symbols, or phrases, used to identify and distinguish the specific source of goods or services. A trademark provides its registrant with the exclusive right to use a registered word, symbol, or phrase in connection with the goods or services specified in its registration. This means that the use of confusingly similar words, symbols or phrases in the same or similar industries could be unlawful. Trademark registration provides owners with a number of other benefits as well.
Once a trademark is federally registered, the registration serves as notice to the rest of the United States that the word, mark or phrase is being utilized in commerce by the mark’s owner. This means that if someone tries to utilize that mark, or a confusingly similar mark, for the same service or product, even if they were unaware of the registered mark, the prior registration precludes that mark from being utilized in commerce.
The federal registration also allows the mark holders to use the ® symbol. This symbol appears after the registered mark, in the upper right hand corner, when the mark is being used in connection with the goods and services listed in its registration. It gives constructive notice to potential infringers that the mark has been registered with the United State Patent and Trademark Office (“USPTO”) and that the mark holder has the exclusive right to use and license the trademark.
Oftentimes, the registration and use of the ® symbol alone will prevent users from creating marks that are confusingly similar. However, if a third party infringer utilized a mark that is confusingly similar, a mark owner can demonstrate their ownership by directing any infringers to their registered trademark, which is publicly viewable on the internet. Federal registration also allows a mark owner to obtain statutory damages up to $200,000 (in counterfeit cases), treble damages (for willful infringement), and attorneys fees, should the mark owner need to pursue any infringement of its trademarks through litigation. For these reasons, trademarks can act as both a sword and a shield for the registrant.
Why Trademarks are Important for Streamers
A trademarked alias will provide you with complete control over the use of your name in connection with the goods and services in which your trademark is registered. For instance, if your alias is “CKNdinner”, and you file a trademark registration for that phrase in connection with Class 25 (clothing, footwear, headgear, etc.), you will be the only person or business that is able to sell t-shirts, hats, etc. with that name on it once the mark is registered. These goods will also show the ® symbol after the mark, which will help deter potential infringers before they even think about utilizing the registered mark, or a confusingly similar one, on their own goods. Further, if someone were to infringe on their registered marks, they would have a strengthened position to pursue a claim through court due to the potentially increased damages and ability to be awarded attorney’s fees.
Without the trademark on your alias, it is much more difficult to protect against a third party trying to profit off of your established brand. It sounds uncommon, but this happens more frequently than you may think. A few years ago, professional athlete Johnny Manziel was forced to take legal action against a man who sold t-shirts using his popular moniker, "Johnny Football". Although Manziel did not have formal trademark protection for the nickname, he still had common law rights to use the phrase and the opportunity to plead his case in court. Plaintiffs in these types of actions may still be successful without a registered trademark, but in order to receive a monetary award, they would have to demonstrate actual damages, which can be in difficult in many cases. Nonetheless, the federally registered trademark would grant streamers and influencers the right to sue in federal court, and due to the statutes which govern trademarks, the bar to recover monetary damages would be much lower.
As online streaming viewership continues to grow, individual brands are becoming increasingly more valuable by the week. Subscribers and companies alike are willing to pay a great deal of money to streamers and influencers in the hopes reaching their audience and showcasing its brand. In order to make sure that their brand is adequately protected, streamers and influencers should consider the benefits a trademark can provide to them. In addition to the benefits described in this blog post, trademark registration in the US may also serve as the basis for a foreign trademark registration, which is especially helpful given the increasingly global esports and streaming industries. Sophisticated streamers and influencers should follow in the footsteps of the entertainers before them, and their massive brands, in order to shield themselves from any potential infringers while they grow their brand.
If you are a streamer or influencer and you would like to discuss how our attorneys can help you with this process, please contact us.
Its Super Bowl week, and the Seattle Seahawks are back to defend their title against the New England Patriots. However, the Seahawks have made the news for some of their off-field business endeavors this week. The Seattle Times has reported that the Seahawks have filed applications for multiple trademarks since their Super Bowl victory last year. One of these applications is for "12".
The Seahawks refer to their fans and their stadium as the 12th man, largely due to the noise of the crowd not allowing opposing teams from hearing each other on the field. The team has previously attempted to trademark "12" twice, to no avail. Their applications for "12" were previously denied due to a conflict with a NASCAR team trademark and a hotel's trademark. Currently, the Seahawks are attempting to trademark "12" in the font that appears on their jerseys.
But what is a trademark? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from another.
Effectively, the Seahawks application for "12" in their jersey's font is asserting that it identifies and distinguishes its source as the Seahawks. However, this mark is likely not distinctive enough for trademark registration. Instead, this mark would likely be found as generic. The block letter jersey font, as shown in the picture above, is strikingly similar to many other football teams' fonts, at every amateur and professional level. Because a trademark must identify and distinguish its source, and the term "12" is not distinctive enough on its own, the font's similarity to other team fonts weakens the strength of the mark.
Generic marks can be trademarked if the mark has acquired secondary meaning. That would mean that despite its prima facie generic qualities, that consumers have come to associate the mark with the source of the goods. Although there may be an argument that Seahawks fans may associate articles bearing "12" as having originated from the Seahawks, that argument seems somewhat tenuous. The strong generic nature of the mark may be difficult to overcome and achieve secondary meaning.
Although it should be encouraged for sports teams and athletes to pursue trademark opportunities to protect their brands, the Seahawks attempt to trademark "12" appears to be an overreach.
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