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Fan's Enthusiasm Can't Excuse Trademark Infringement; Terminator Signs Violent Video Law Act
December 6, 2005
FAN'S ENTHUSIASM CAN'T EXCUSE TRADEMARK INFRINGEMENT
When does a fan's enthusiasm for his favorite team cross the line? Apparently, when that enthusiasm leads to an unauthorized use of a trademark. According to the World Intellectual Property Organization (WIPO), a racing fan cannot use the trademarks of a newly announced F1 racing team as a domain name for his fan site.
In this case, the fan registered just prior to an official announcement from BMW and Sauber Motorsport AG that the two companies would create a new, Formula One racing team.
Although the panel ruled that the fan could not properly use that domain name, at least one panelist opined that a true fan would understand. "The panel can understand that some people can be carried away in their enthusiasm and establish websites to honor their favorites," said Panelist Jette Robsahm. "However, when having been notified that it is not in interest of the favorite that their trademark is being used, a true enthusiast would probably comply and either cancel the domain name and close the website, or at least close the website."
But the panel held that the fan had no legitimate interest in using the term as a domain name because "[i]t is absolutely possible to demonstrate enthusiasm on a website without using others' trademarks as a domain name." The panel suggested, for example, that the fan could make descriptive use of the terms in articles appearing on the Web site.
WIPO ordered the transfer of the domain name.
Despite this ruling, there is little consistency on the point. Panels are split on the issue, with some holding that the use of marks in domain names of fan sites is permissible so long as the site is active, non-commercial, and clearly distinctive from the official site.
Other panels have held that such use of marks in domain names is never proper because it misrepresents the identity of the site and denies the mark owner the opportunity to manage its presence on the Internet.
While it would seem that any confusion over the sponsorship of the site could easily be addressed with an appropriate disclaimer, it may be a good idea for fans to modify proposed URLs to avoid a WIPO proceeding.
TERMINATOR SIGNS VIOLENT VIDEO LAW ACT
A recently enacted California law that restricts the dissemination of "violent" video games violates the First and Fourteenth Amendments to the United States Constitution, according to a recently filed suit in federal court for the Northern District of California. The suit, filed by associations representing video game makers and retailers, seeks a preliminary injunction against the enforcement of the Act, which is set to go into effect on January 1, 2006.
The California suit is the latest in a series of constitutional challenges to similar laws in Illinois and Michigan that penalize the sale or rental of so-called "violent" video games. Because the new laws are due to become effective by the beginning of next year - and Michigan's law will go into effect even earlier, on December 1, 2005 - decisions in this latest round of legislative targeting of video game expression are expected soon.
The California Act was signed by Governor Schwarzenegger (the star of the Terminator series, does anyone besides me see the irony here?) on October 7. The law imposes substantial penalties on anyone who sells or rents to minors video games meeting the law's definition of "violent" video games. The Act also requires that any game imported into or distributed in California that meets the statutory definition of a "violent" video game be labeled with a large black and white sticker bearing the number "18." According to the statute, a "violent" video game encompasses any game that "appeal to a deviant or morbid interest of minors," as well as any game that enables "the player to virtually inflict serious injury upon images of human beings or characters with substantially human characteristics in a manner which is especially heinous, cruel or depraved in that it involves torture or serious physical abuse to the victim."
Two trade associations - the Entertainment Software Association ("ESA") and the Video Software Dealers Association ("VSDA") - filed suit shortly after the law was signed. The lawsuit alleges that the Act violates the First and Fourteenth Amendment because, among other things, it imposes content-based restrictions on the dissemination and receipt of protected speech, unconstitutionally compelling government speech through the labeling requirement, and employing a definition to regulate video game expression that is unconstitutionally vague.
The Plaintiffs also filed a motion to preliminarily enjoin the law before it goes into effect. Plaintiffs allege in their pleadings that the law will have a significant chilling effect on protected speech throughout the State of California - as well as outside its borders. The motion for a preliminary injunction is currently set for a hearing on December 2.
In prior cases, federal courts, invoking the First Amendment, have invalidated statutes seeking to restrict "violent" video game content. In cases arising from laws enacted in Indianapolis, St. Louis, and Washington State, respectively, the courts recognized that video games are entitled to full protection under the First Amendment. One case, for example, compared violence in video games to "violence" in works of "[c]lassic literature and art," which "are saturated with graphic scenes of violence, whether narrated or pictorial," and concluding that "[t]he notion of forbidding not violence itself, but pictures of violence, is a novelty." In so holding, the courts refused to accept the government defendants' arguments that the laws could be justified under existing precedent on obscenity. The courts noted that “depictions of violence cannot fall within the definition of obscenity for either minors or adults." The Washington case held that the statute there, which defined the prohibited video games as those containing images of "aggressive conflict" against "a human form in the game who is depicted, by dress or other recognizable symbols, as a public law enforcement officer," id. at 1190, was void for vagueness. The court noted that that the statute on its face may well have applied to games "built around the Simpsons or the Looney Tunes," and observed that because retail clerks could not possibly know which games were covered by the law, they would likely steer far clear of the prohibited zone, to the detriment of free speech. Id. at 1190-91.
While comparing video games to classic works of literature may be a stretch, these cases show that the First Amendment reaches places our founding fathers could never have imagined.
Graydon Head & Ritchey Opens New Office in West Chester!
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This Newsletter is a periodic publication of Graydon Head & Ritchey LLP and should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult your own advisor concerning your situation and any specific legal question you may have.