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.

Intellectual Property 101: A (Very) Brief Overview

Some people reading this post might already be familiar with all of this, but recently I’ve been getting enough questions about the basics of intellectual property law that I thought writing up a brief primer would be helpful to some of the game devs, composers, artists, and everyone else out there.

I’m not entirely sure why this image of Mother Brain came to mind when thinking about intellectual property, but here it is.

What Is Intellectual Property?

When people use the word “property,” the image that comes to mind is usually something tangible, like potatoes or iPads. The law recognizes three broad categories of property: personal property, real property, and intellectual property.

• Personal property is stuff that is tangible and “moveable,” like aforementioned potatoes or iPads.
• Real property is tangible but not moveable, like land and buildings.
• Intellectual property is neither tangible nor moveable, like copyrights and trademarks.

People are generally pretty accustomed to dealing with the first two – it’s that third category that tends to get people into trouble nowadays, so here’s a quick overview of the four general types of intellectual property.

• Copyrights protect creative works fixed to a tangible medium, like song recordings, literature, or paintings.
• Trademarks protect words, symbols, or designs that identify a source of goods.
• Patents protect useful, functional inventions.
• Trade secrets are devices or techniques that a company uses to manufacture its goods that aren’t generally known or ascertainable.

Trademarks 101: The Candy Apple Glass Saga

The issue of trademarks came into the spotlight recently when King, the company behind Candy Crush Saga, took action (to put it lightly) to protect their trademarks in the words “candy” and “saga.” (Likely in reaction to the tremendous industry backlash, King has since abandoned its trademark in the word “candy” and has “amicably” resolved its disputes with both Stoic and CandySwipe, and we consumers may once again swipe candies and enjoy banner-related sagas.)

This recent trademark hulabaloo had a lot of people asking how King was even able to register trademarks on common English words like “candy” and “saga.” Meanwhile, Google has filed an application for a trademark in the word “glass,” and people have been asking for years how Apple can possibly have an official trademark on a word as common as “apple.”

This isn’t what I had in mind when I asked you to blend a small apple. Now I know why this juice didn’t turn out at all as I expected.

What’s In a (Trade)Name?

First, it’s important to establish what exactly a trademark is, and what the government’s purpose is in protecting them. Of the four broad swaths of intellectual property law (copyrights, patents, trademarks, and trade secrets), trademarks are unique in that their purpose is ostensibly to protect the consumer, not the holder of the trademark (at least, not directly).

Unlike copyrights (which are meant to protect the rights of authors of creative works) and patents (which are meant to protect the rights of inventors), trademarks are meant to protect those of us in the public who want to go out into the market and buy things. When we prospective consumers go out into the world, we make our purchasing decisions based on a number of criteria, some objective (price, specifications, features/capabilities) and some subjective (aesthetics, status/cachet). The criterion that often holds the most sway for buyers is finding out who exactly is selling a particular product, as it can often encapsulate a lot of information about a product: its design philosophy, its manufacturing quality, its approximate price point, and so on.

This is why the law has an interest in making sure that a buyer can adequately tell who is selling a product; otherwise, if we were to let anyone slap any old label/name (like, say, someone else’s name) on a product and put it on the open market, it could lead to all kinds of shenanigans. Consider the following example:

Company A has been selling widgets for many years and has an awesome reputation for the quality of its widgets. Company B wants to start selling widgets too, but it’s just starting out and has no marketing budget to speak of. Company B decides it would be a great “guerrilla marketing” idea to start selling their widgets as “Company A’s Widgets,” hoping to capitalize on Company A’s reputation for quality widgets. Obviously this is a bit shady of Company B, as the only reason Company B would do this is in the hopes that people will buy Company B widgets thinking that they were actually widgets from Company A.

If Company B is allowed to get away with this, both the consumer and Company A potentially have a lot to lose: 1) if Company B’s widgets are of inferior quality compared to Company A’s widgets, then customers who buy these craptastic Company B widgets thinking they’re Company A widgets will be disappointed because they have a certain expectation of what they’ll get when they buy a Company A widget, and 2) Company A’s reputation for its kickass widgets will suffer the longer these Company B widgets are out there purporting to be Company A widgets.

Trademarks exist to prevent this kind of situation. Company A should have a trademark in “Company A,” and this trademark would allow Company A to prevent any other company from selling widgets with their name on it. Company A’s reputation remains the bee’s knees, consumers get what they expect when they buy a widget that has the Company A name on it, and everyone is happy (except for Company B I guess, but they kinda seemed like douchebags anyway).

Apples and Apple-Branded Apples

That’s the basic rationale behind why trademarks are a thing. And this makes a certain amount of intuitive sense, when it comes to the more esoteric, made-up names for things (like Xerox, Kleenex, or Oreo) – if someone else started using those names on their own products, it would be pretty obvious what they were trying to accomplish, and it makes sense that there should be a way to prevent people from using those labels to market their own products.

The next question people usually have is how companies are able to file trademarks on seemingly common English words like Apple, Candy, or Glass. Well, it’s important to note that the reality of those kinds of trademarks is a little more complicated than simply saying “they can stop any of us from (or charge us money for) using these regular English words!”

First, as explained above, the intent isn’t to completely prevent you from using these trademarked words – rather, a registered trademark simply allows the trademark holder to prevent you from using the trademarked words to sell a competing product. So you won’t be sued for trademark infringement just for using trademarked words in everyday speech or anything like that, but where you start to get into trouble is if you’re trying to use those trademarks to sell your own product, and your use of those trademarks might make someone think your products are actually someone else’s.

Second, trademarks are limited in scope. Apple’s trademark on the word “Apple” doesn’t prevent everyone else from selling any products at all with an “Apple” name – otherwise the apple orchard industry probably would’ve collapsed by now. No, Apple’s trademark only prevents everyone else from selling Apple-branded products that would potentially compete with Apple’s products, which at the moment consists primarily of computers, smartphones, tablets, and the software associated with those products. (The USPTO has an extensive list of classifications of products/services.) So, while Apple might have a reputation as being fairly litigious, they’re not going to be winning any trademark infringement lawsuits against products that are completely out of the scope of personal electronic devices just for being branded “Apple” products (like Apple Brand Rain & Stain Repellent).

“Tree, you are hereby ordered to cease and desist this blatant infringement of the trademark rightfully held by Apple Inc.”

Googling, Xeroxing, and Kleenexes

King was getting quite a bit of flak from the media for their actions against CandySwipe and others in their quest to defend their trademark on “Candy” from any who might misuse it. And while their methods certainly weren’t optimal from a PR standpoint, on some level, as a trademark holder King had a duty to take some action towards defending their trademarks from things that could potentially infringe or weaken that trademark. If they didn’t, down the line King would’ve run the risk of encountering the argument that “well, these people were using ‘Candy’ like crazy and you didn’t do anything, so you can’t assert your trademark against us to get us to stop using ‘Candy’ either.”

One of the ways that a trademark can lose its power is by becoming genericised. In one sense, having a trademark that becomes genericised is a rather good problem to have – it only happens when the product/service attached to the trademark has become so incredibly popular that people now generally associate that trademark with the product/service as a whole. There are a bunch of common examples of this that many people are probably already aware of: Band-Aid, Kleenex, and Xerox are all frequently used to describe the product generally (adhesive bandage, facial tissue, and photocopiers, respectively).

One sign of impending genericization is when a trademark starts to be used as a verb: “Google” is now commonly used as a verb for web searching (nobody is “altavista’ing” or “binging” anything these days), “Xerox” for making a photocopy, “Photoshop” for editing a digital image, etc.

Companies often work very hard to fight this kind of dilution of their trademarks. Google actively discourages the use of “googling” as a synonym for web searching, and Xerox went on an extensive advertising campaign just to let people know that “xeroxing” shouldn’t be used as a stand-in for “photocopying.” In these two instances, the companies’ efforts were somewhat successful in that their trademarks still retain some level of protection; however, in a more general sense it is hard to say that they were wholly successful, as people still commonly use both words as verbs. Other times, companies can yell and scream all they want about the proper use of their trademarks, and they still end up becoming genericised terms: everyone knows the (previously trademarked) word “trampoline,” but you’re likely to get nothing but blank stares if you ever tried to use the term “rebound tumbler” instead.

Nintendo came close to losing its trademark on “Nintendo” when the NES dominated the market in the 1980s and the term “Nintendo” began to be used to refer to game consoles generally. If your parents are anything like mine, they probably called every game console since the mid-80s “a Nintendo.” (It’s a useful thing to keep in mind, just in case.) Just as Xerox did with photocopiers, Nintendo made a great effort to promote use of the more generic term “game console,” and when it came to people of my parents’ generation, Nintendo’s efforts had about as much success as Xerox’s had.

Pictured above: Three Nintendos. Source: My mother.

In this way, trademark protection is much less “solid” than patents or copyrights. When a patent on an invention is issued, it lasts 20 years. A copyright on a creative work lasts for the author’s life plus 70 years. While patents and copyrights generally are only invalidated by a court, trademarks can lose their protection gradually, just by becoming a term used in popular culture. That’s why companies will sometimes make a big deal out of protecting their trademarks – because if they don’t, there’s a good chance they might eventually lose the trademark completely.

Now if you’ll excuse me, I have to go google how to photoshop a band-aid onto this trampoline.

When Game Clones Aren’t Okay (Game Clones 2: Tetris Boogaloo)

As I wrote last week, Candy Crush Saga doesn’t get King into trouble with Popcap because King didn’t copy Popcap’s particular expression of the “match-three” game idea – Popcap and King both made their own separate expressions of a “match-three” game. Obviously, straight up lifting sprites, songs, characters, etc. from another game and putting them verbatim into your game is definitely copyright infringement.

But sometimes, one person’s expression can get awfully close to another person’s expression without necessarily copying it pixel-for-pixel. In those situations, we still might have some copyright infringement on our hands (and IP lawyers may sense a great disturbance in the Law).

“Quiet! Somewhere… a copyright is in trouble. I have to go!”

Tetris by any other name

Tetris was released way back in 1984, and its been immensely popular pretty much ever since. Much of the appeal of Tetris is in its simplicity (e.g., the seven pieces – or “tetrominoes” – represent the seven possible combinations of four squares connected orthogonally, the pieces fall down a 10×20 grid, etc.), but this simplicity also makes cloning Tetris a fairly simple task. They say “imitation is the sincerest form of flattery,” and over the years, Tetris has been flattered over and over again. As such, The Tetris Company, the company that holds the rights to Tetris, has been pretty busy doing its best to stomp out all these Tetris clones like a game of cease-and-desist whack-a-mole. (Someone should make a game called “cease-and-desist whack-a-mole.”)

One recent attempt at Tetris flattery was so flattering that it actually went all the way to a courtroom. In 2009, a company called Xio Interactive released a Tetris clone called Mino on Apple’s App Store. To Xio’s credit, while developing Mino, Xio did contact the Tetris Company in an attempt to get an official license for Tetris. Of course, Mino would be competing with the official Tetris iOS app, so the Tetris Company refused to give Xio a license. Xio’s response was essentially, “Meh, we’re doing it anyway,” and Xio went on to release its own Tetris-esque game for iOS.

“I’ll make my own Tetris! With blackjack! And hookers!” -Xio Interactive

Not surprisingly, Xio was subsequently sued by The Tetris Company. (Tetris Holding, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394 (D.N.J. 2012), if you’re into that sort of thing.) Now, when someone is being sued for copyright infringement, you might expect the defendant to deny copying the plaintiff’s game, or that the plaintiff’s game merely served as inspiration (e.g., Fighter’s History), or something else of that sort.

Not Xio. During the case, Xio openly admitted that its game wasn’t just “inspired” by Tetris, but that “its game was copied from Tetris and was intended to be its version of Tetris.” Yep, that is a direct quote from the record. (Have to give them points for directness, at least.)

Xio’s defense was that while they did copy Tetris, they did it “in such a way so as to not copy any protected elements after diligently researching intellectual property law.” So Xio’s defense wasn’t that they weren’t really copying Tetris, but that they consulted with an IP lawyer to make sure they were copying it in a way that wouldn’t get them into trouble. More specifically, they argued that they only copied the rules of Tetris – essentially, the “idea” behind Tetris – and that their game was merely their own expression of those rules.

Merger Doctrine

Copyright protects expressions of creative ideas (art, literature, music, etc.). Copyright doesn’t protect functional elements (like game rules), because that’s what patents are for.

Copyright protects expressions of creative ideas (art, literature, music, etc.). Copyright doesn’t protect functional elements (like game rules), because that’s what patents are for. To illustrate this difference, consider the 1990 NES game Dr. Mario.  Nintendo actually has a patent on the game mechanics of Dr. Mario, but the expressive elements of Dr. Mario would be protected by copyright (like the particular colors and shape of the pills, the design of the germs, Mario up top hurling the pills into the bottle, etc.). Xio argued that if the Tetris Company wanted to protect the rules of Tetris, they should have gotten a patent.

Most of the time, there’s a fairly distinct difference between a game’s functional elements (game mechanics) and creative elements (artwork, music, story). But sometimes, an idea is so simple that there are only a very limited number of ways it could possibly be expressed. In these instances, the expression and the idea are said to “merge” into each other (hence, the merger doctrine). When that happens, the expression can’t be protected by copyright because it would basically mean protecting the underlying idea with copyright too, and we really don’t want that to happen.

One example of the merger doctrine came up during one of the many fistfights between Microsoft and Apple in the ‘90s. (The citation for this particular fistfight is Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).) Apple accused Microsoft of infringing on Apple’s copyright of the “trash can” icon in their GUI, but the court found that the trash can icon was virtually the only practical way of expressing the idea of deleting (or “throwing away”) files. The merger doctrine meant that the idea of deleting files in a GUI and the expression of that idea as a trash can icon “merged,” such that a trash can icon was an unprotectable element of the GUI. Therefore, Apple couldn’t stop Microsoft from using a trash can (if anything, Apple could only stop Microsoft from using an exact copy of Apple’s trash can).

Xio tried to argue that the rules of Tetris were so simple that there were only a limited number of ways they could be expressed, so the merger doctrine should apply. Granted, there were a number of elements that Xio copied where the merger doctrine might have been applied if evaluated individually: showing the next piece to fall, “garbage” lines of random junk at the start of some games, “ghost” pieces that show where a piece will land, etc. (For example, how many different ways can you think of to show the next piece to fall, other than showing the next piece to fall.)

However, the judge concluded that Xio’s copying of all of those elements in the aggregate constituted “wholesale copying,” the only purpose of which was “to avoid the difficult task of developing its own take on a known idea.” The judge also concluded that Xio copied the overall look-and-feel of Tetris (i.e., the visual expression of Tetris). I mean, hell, many of the pieces in Mino were even the exact same color as those in Tetris.

The fact that I can’t even tell right away which one of these is Tetris and which one is Mino is probably a bad sign for Xio.

Trade Dress

Though most of this case was about copyright, it also briefly touched upon trademark law. Unlike copyrights and patents (which exist to protect creators), trademark law exists to protect the public – specifically, to protect consumers from confusion in the marketplace.

A trademark is “any word, name, symbol, or device, or any combination thereof” used in commerce to identify a specific product or manufacturer. The purpose of trademark law is to protect the fragile minds of consumers like us: if anyone could use anyone else’s company name or logo on their own products, unscrupulous manufacturers could try to trick consumers into thinking a product was made by someone else. For example, a new company could try design or market their product to look like it was manufactured by a more reputable or established company, so as to benefit from the other company’s reputation.

Trade dress is a subset of trademark law that protects a product’s design or packaging that identifies its source: where trademarks refer to a name, logo, or slogan, trade dress refers to a particular “look.”. To qualify for trade dress protection, the design must have acquired a “secondary meaning” in the public: that means it has to be so pervasive in the market that a significant number of consumers would recognize the design and associate it with a particular manufacturer.

Nobody reading this would look at this cardboard box of food and think, “Hey, can you tell me where you got that? Because I have absolutely no idea.”

Tetris has been around for so long and has achieved such a level of brand-awareness that many people can recognize the distinctive visual indications of Tetris (e.g., the specific colors used, the styling of words and game screens, etc.). Xio designed Mino to look so much like Tetris that a consumer browsing the App Store could easily have mistaken Mino for an officially licensed version of Tetris. (A more cynical person might think that was Xio’s intent.) If a consumer bought Mino from the App Store thinking it was a “real” version of Tetris, then Xio would be riding on (and profiting off of) the coattails of the Tetris Company. As such, court concluded that Xio infringed on the Tetris Company’s trade dress.

tl;dr: If you copy pretty much everything about a super popular game, and you make your copy look so much like the original game that people will confuse the two, you’re gonna have a bad time.