Let’s Play with Trademarks, Sony!

If you hadn’t already heard, Sony filed a trademark application for the phrase “Let’s Play,” and the Internet was not happy about it. I had the opportunity to give my $0.02 on the subject to Gamasutra recently, and now that the whole thing is more or less dead in the water, I thought I’d go ahead and put the rest of my thoughts down and help clear things up for anyone who might still be wondering about the whole trademark situation.

What a Trademark Is, and What it Isn’t

Whenever some vague trademark filing makes headlines, invariably there will be a number of angry people who incredulously wave their pitchforks at the notion that an evil corporation would have the audacity to try to claim ownership over a common English word or phrase. In these situations, I usually advise restraint, as much of the hostility against such filings is often due to a misunderstanding of what trademark law is meant to accomplish.

Contrary to what some people may think (including some trademark holders), getting a trademark on a word, phrase, or logo doesn’t mean you “own” that word, phrase, or logo; rather, it just means that you have the exclusive right to use that mark “in commerce” in connection with the specific type of goods or services you specified when you applied for the trademark.

How trademarks are seen by many people.

Unlike a copyright (which gives an author exclusive rights over their creative work) or a patent (which gives an inventor exclusive rights over their invention), a trademark is meant to protect the general public from confusion as to the source of a good or service by giving the trademark holder the exclusive right to use the mark “in commerce” in connection with a particular type of good/service.

The most obvious example is “Apple.” Apple Inc. obviously has a trademark on the word “Apple,” but the rights that trademark gives them are limited to the use of the word Apple to promote and identify the source of their consumer electronics (e.g., MP3 players, notebook computers, etc.). That trademark doesn’t stop anyone from using the word “Apple” in any other context, it really only prevents people from trying to market their own competing consumer electronics as “Apple” products.

Apple’s trademark attorneys aren’t going to be very happy with Timmy and Tommy Nook selling this in their store.

So no, it’s usually not a cause for great concern when, for example, a company like Google tries to trademark “Glass” – it doesn’t mean Google can stop everyone else from using the word “glass,” or even using the word “glass” to market their products, it just means they could try to stop someone from marketing a product named “Glass” or some variation thereof that falls within the same category of product/service as their trademark on “Glass.” So, a product named “Eye Glass” for replacement glass eyes would be just fine, but “iGlass” for a competing wearable Internet-connected pair of eyeglasses could be found to be infringing on that Google trademark.

That’s the biggest thing to keep in mind with regard to trademarks: they are generally applied to a narrow. There are currently 45 defined “classes” of products/services recognized by the USPTO and internationally, and generally a trademark holder only has rights to the word or phrase of their trademark within the class(es) that they are using in commerce.

This is why Taylor Swift can go ahead and file trademark applications on words and phrases like “1989,” “Blank Space,” and “this sick beat,” and I won’t bat an eye. The average Internet commenter’s reaction is likely to be something like “OMG Swift trieing to buy English wordz WHYYYY,” but in reality, all it prevents me from doing is selling competing products/services with those words or phrases such that a consumer might think my pop music merchandise was actually coming from Taylor Swift. And I’m confident enough in my pop music chops that I don’t feel the need to ride Swift’s coattails onto the charts.

Sony Wants to Trademark What Now?

In this case, however, I was definitely fully onboard the “this is a bad idea” bandwagon. Sony was trying to trademark the phrase “Let’s Play” in connection with the:

Electronic transmission and streaming of video games via global and local computer networks; streaming of audio, visual, and audiovisual material via global and local computer networks.

So, in a nutshell, this trademark would be in the context of sharing and streaming gameplay video online, which is exactly the context in which the phrase “Let’s Play” has been commonly used in the gaming community for years now.

“What If”

If this trademark application were successful, Sony could have theoretically stopped any future gameplay videos from having “Let’s Play” in its title. That alone would’ve been bad, but it could’ve also been bad for everyone who currently has Let’s Play videos up on YouTube for other reasons.

To see how bad it might’ve been, we can ask the “What If Machine,” an invention I’m sure Professor Farnsworth would have patented. He probably would have trademarked the phrase “What If Machine” too.

Yes, prior use is a potential defense to an allegation of trademark infringement. If Party A was already using a word, phrase, etc. to market their product before it was officially trademarked by Party B, Party A can continue to use that mark even after that trademark is granted to Party B. However, the problem with a defense to allegations of infringement is that by definition you have to assert them after you’ve already been accused of infringement. For the vast majority of video content creators, that’s probably already too late.

A trademark on the phrase “Let’s Play” could have been disastrous for anyone who relies on Let’s Play videos for their livelihood. Theoretically, if Sony did end up getting this trademark, they could try to assert their trademark against all existing Let’s Play videos on YouTube. While the DMCA is meant to be used in cases of copyright infringement, it is also commonly (though incorrectly) used in trademark infringement cases as well. Sony could conceivably issue DMCA takedown requests to every video on YouTube, Vimeo, etc. that has “Let’s Play” in the title, and the current system for handling DMCA takedown requests on most video sharing sites would automatically take down the contested videos until the uploader responded to Sony’s allegations.

While the vast majority of these videos could assert a prior use defense and argue against Sony’s DMCA takedown requests by virtue of having existed before Sony had the trademark for “Let’s Play” or for other reasons, people who make their living from YouTube ad revenue generally heavily rely on the views garnered in the immediate aftermath of uploading their video. Therefore, even if they did eventually get their videos back online, having them taken down for the first week or two would be incredibly damaging to their income.

In addition, many companies employ automated IP enforcement systems to automatically issue DMCA notices to anything matching certain search criteria, and such systems are often hilariously mistaken. For example, such a system once led Microsoft to issue a DMCA takedown notice to remove the Microsoft Store website from Google’s search results, and another such system being used by Columbia Pictures to stop piracy of Pixels led to them issuing a DMCA takedown notice against their official trailer for Pixels on Vimeo. It’s easy to imagine Sony using a similar automated system to try to enforce their “Let’s Play” trademark, and such a system resulting in a great deal of collateral damage.

If only Columbia Pictures had managed to issue a successful DMCA takedown of the entire movie, from all theatres everywhere.

All these factors together paint a very bleak “what if” picture for Let’s Play video makers if Sony were to receive the “Let’s Play” trademark. Thankfully, it doesn’t look like it’s going to come to that.

It’s Moot, the USPTO said “No” (Twice)

As of this writing, the USPTO has sent two official responses (called “office actions”) to Sony regarding this trademark application. Contrary to much of the reporting on the USPTO’s “rejections,” an office action from the USPTO isn’t exactly a final, definitive rejection (which the applicant must then appeal). Depending on the particular reason cited by the USPTO for the office action, often they can be more accurately described as the USPTO saying “we have some issues with this, let’s talk about it” rather than a flat “no” without further discussion.

Round One: Similar Existing Trademark

The primary purpose of a trademark is to protect the consumer from confusion as to the source of a good or service. As such, when the USPTO gets a trademark application, one of the things they do is look for any existing registered trademarks that are within the categories being claimed that may be too similar trademark being applied for, lest the buying public be confused by the existence of two very similar competing trademarks.

Could a consumer conceivably confuse “Bamblebee, The Changeable Robot” for another well-known yellow transforming robot?

The first office action Sony received from the USPTO stated that the “Let’s Play” trademark application was too similar to an existing trademark on “LP Let’z Play” that also pertains to video games, and would thus likely cause confusion in the marketplace. However, the “LP Let’z Play” trademark pertains to “[e]ntertainment services, namely to provide online and offline opportunities for video game enthusiasts to meet and participate in live video game tournaments and on-demand console gaming,” so Sony could very well argue that their application for “Let’s Play” is sufficiently different because it pertains to online transmission and sharing of gameplay rather than live video game tournaments.

If things were left at that, it’s very likely Sony could have changed the USPTO’s mind on this issue before the deadline of June 26, 2016 (six months from the date of the office action).

Round Two: “Merely Descriptive”

Another thing the USPTO looks out for in trademark applications is whether a term is actually distinctive enough to be recognizable in the marketplace as a uniquely identifiable trademark, or if it is “merely descriptive.” Generally, the USPTO will not grant a trademark when a term’s dictionary definition pertains to the good or service – you could name your new video game “Video Game,” but it might be difficult to convince the USPTO that you deserve a registered trademark on that name, since you shouldn’t have the right to prevent every other video game on the market from being described with those words.

I’d be pretty surprised if Costco managed to get a trademark on “Light Beer” brand light beer. (It looks like what TV/movie set designers use when they don’t want to deal with trademark issues.)

Getting a descriptive trademark isn’t impossible, but it is a fairly high bar to overcome. The USPTO will only approve a descriptive trademark if the applicant can show that the mark has been extensively used in the marketplace by the applicant such that it has achieved “distinctive character.” In other words, even though the mark is descriptive, it’s use in the marketplace by the applicant is so prevalent and well-known by the general public that the average consumer would associate the mark with the applicant’s products/services.

Due to an objection filed by the McArthur Law Firm, the USPTO recently issued a second office action to Sony, this time claiming that the term “Let’s Play” is “merely descriptive” with regard to video games. This makes sense, since the term Let’s Play has been used to describe a particular type of gameplay video since 2006, and today most people immersed in the culture of video games probably know what a “Let’s Play video” is without further explanation.

Unlike the first office action, this one will be much more difficult for Sony to overcome, so chances are good that the Internet can safely stop worrying about Sony’s claim to these words now.

Bonus Round: Being Published for Opposition

It’s extremely doubtful that Sony will end up getting a trademark on the phrase “Let’s Play” at the end of this whole ordeal, but even if Sony did somehow overcome the issues in both office actions, there’s still a chance they could be denied the trademark.

When a trademark application is approved by the USPTO, before it is officially registered it is first “published for opposition” for 30 days, giving any member of the public who believes they may be negatively affected by the trademark a chance to oppose the trademark (or file for an extension of time in order to file an opposition later).

Even though the USPTO does a search on existing registered trademarks before approving a new trademark application, their resources aren’t infinite, and they may very well miss a similar trademark. This publishing for opposition gives the general public the chance to see pending trademarks and chime in if one may be too similar to a mark already in use, or harmful to their brand for another reason.

Additionally, not every reviewing attorney at the USPTO may be fully up to speed on the conventions and nomenclature of every industry, so what might sound distinctive to them might actually be descriptive or generic to people “in the know.” (This was likely the case in this situation.)

So, rest assured that even if the USPTO were to ultimately approve Sony’s application for some reason, I think it’s safe to say there are a great many prominent people in the gaming community who would opposite it given the chance.

My Opinion: Why Would Sony Even Try to Do This?

It was a bit troubling to some that Sony even filed this trademark application in the first place, which not surprisingly has people guessing as to Sony’s motives. This application represents one of two possibilities that I can come up with. It’s either: 1) a very bold (and dubious) attempt to assert control over a large swath of a rapidly growing sector of the gaming community, or 2) one or more people at Sony in charge of trademarks is a little out of touch the current state of the way the average gamer plays, shares, watches, or otherwise “consumes” video games.

While some will certainly point to this application as evidence of Sony’s malicious intent to take over the very concept of “Let’s Play” videos, I think it’s more likely someone just didn’t realize what they were getting into and thought the phrase “Let’s Play” would be a good name or slogan for use in marketing the integrated sharing/streaming capabilities of the PS4. For example, Sony already has trademarks on the phrases “Greatness awaits” and “The best place to play.” Stripped of the context of Let’s Play videos, the phrase “Let’s play” conceivably sounds like it falls in line with that sort of marketing language.

While Let’s Play videos and streams have been around for over a decade at this point, Sony is a very big company – it’s not entirely unlikely that one or more people employed by Sony hadn’t yet heard of the concept of Let’s Play videos, and that one or more such people had the authority to file trademark applications on behalf of Sony.

If anyone doubts that anyone working at a major video game company could possibly have not heard of a concept as common as Let’s Play videos, I offer the following anecdote: imagine if the head of the legal and business affairs department of a video game company needed to be told what Minecraft was – and this was after Microsoft bought Mojang for $2.5 billion and proceeded to install Minecraft on every electronic device on the face of the Earth. To clarify, the situation was not, “I haven’t played Minecraft yet and I don’t know much about it,” it was, “I have never in my life heard mention of this game that is literally the single best selling PC game of all time (at over 22 million sales and counting), and the third highest selling video game in history (at over 72 million sales across all platforms).”

“I have also not set foot in any store that sells toys in several years.”

If that were possible, then it’s certainly possible someone at Sony had never heard of Let’s Play videos. Compared to the cultural phenomenon that is Minecraft, Let’s Play videos seem downright obscure.

Summary

The intent of trademark law is to help protect the consumer from confusion as to the identity of the source of a good/service. To get an official trademark registered with the USPTO, a trademark application must at the very least: 1) not be too similar to an existing trademark, and 2) be distinctive (rather than merely descriptive).

P.S. Shameless Plug

This current trademark debacle aside, there are still a lot of unresolved issues with Let’s Play videos and streams, considering that they ultimately amount to recordings and public performances of a copyrighted work (namely, the video game being played). If you’re attending SXSW, I’ll be speaking on this subject with a few awesome geeky attorneys on a panel titled “Can We Just Play? The Legalities of Let’s Play Video.”