Hasbro and Mattel Hoping to Make Best Move in Standoff over Word Game
Filed Under General | Posted on March 25, 2008
By: Shmuel Honig
The United States of America is facing a crisis. People across the country are distraught by the warning signs of a potentially imminent disaster. No, I am not referring to the sub-prime mortgage crisis. I am talking about the potential demise of Scrabulous.
Scrabulous, of course, is an immensely popular online game that is the object of addictions all over the country. The game challenges players to spell words using a set of randomly selected letters and to place the words on a grid to receive point values. The point values are based on the letters used and the spot on the game board where a word is placed.
The creators of Scrabulous now face the threat of legal action from Hasbro, which owns the rights to Scrabble in the U.S. and Canada, and Mattel, which owns the rights everywhere else. The makers of the Scrabulous, Rajat and Jayant Agarwalla of Calcutta, India, are not alone in their predicament. Also being confronted is Facebook, the prominent online social-networking website, which has maintained a Scrabulous application since June, 2007. The availability of Scrabulous on Facebook has been a major contributor to the incredible rise in the game’s popularity; there are currently more than 2 million active Scrabulous users, most of whom play the game via Facebook. Not surprisingly, Hasbro and Mattel sent letters to Facebook in January asking for the removal of the Scrabulous application from the Facebook website.
Also not surprisingly, many fans of the game have been less than amenable to the idea of shutting it down. A handful of groups devoted to saving Scrabulous have emerged on Facebook since news of the story broke in January, garnering threats to boycott Hasbro and Mattel products and to stop using the social-networking site. Tens of thousands of the Scrabulous faithful have joined forces to defend against what they perceive as a gross injustice, a bad marketing decision, and an impending calamity.
Notwithstanding the public outcry, the legal issues facing Scrabulous and Facebook are serious. A potential lawsuit would likely focus on claims of both copyright infringement and trademark infringement. To prove that Scrabulous infringes the copyrights in Scrabble, Hasbro would have to prove that the Agarwalla brothers actually copied from Scrabble, and that the similarities in the copyrightable portions of the game are substantial enough to be considered infringement. See, e.g., County of Suffolk, N.Y. v. First Am. Real Estate Solutions, 261 F.3d 179, 187 (2d Cir. 2001).
The brothers openly admit that they copied Scrabble in developing Scrabulous, a fact immediately apparent to anyone familiar with the two games. The similarities are striking, encompassing not only the uncopyrightable aspects, such as the rules, but also the copyrightable elements such as the design, layout and color patterns. The game boards are not identical, but identity is generally not required to establish infringement. Ultimately, the extent to which the copyrightable aspects are similar, and thus whether there is an infringement, is a question for a jury to decide.
For Facebook, the copyright question is likely one of secondary liability. Facebook may face claims of contributory infringement for facilitating the distribution of Scrabulous through its website. Facebook may also be accused of vicarious infringement for profiting from the distribution of Scrabulous, in the form of increased advertisement sales on its website, while doing nothing to limit the distribution.
If the fair use defense is raised, it would be interesting to see it play out. On the one hand, both the Agarwalla brothers and Facebook have commercial interests involved. On the other hand, it is not obvious that the popularity of Scrabulous has negatively affected the Scrabble market. On the contrary, some argue that Scrabble has actually benefited from the Scrabulous craze, widening its fan base and selling classic versions to people who would not have bought the game but-for their “addiction” to Scrabulous.
Assuming that the name “Scrabulous,” the Scrabulous game board and the Scrabulous letter tiles are similar enough to “Scrabble,” the Scrabble game board and the Scrabble letter tiles to be considered use of the latter game’s trademark and trade dress, Scrabulous faces another legal challenge. If a trademark claim is pursued, the court would be asked to determine whether the Scrabulous game satisfies the “use in commerce” requirement for trademark infringement. 15 U.S.C. §§ 1114, 1125, 1127. This question would focus on the use of paid third-party advertisements on the Scrabulous website and Facebook application to generate revenue. While there is much debate over the intended meaning and scope of the phrase “use in commerce,” some recent cases in the circuits governing Facebook’s two U.S. offices suggest an expansive reading of the requirement. See Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677–78 (9th Cir. 2005); SMJ Group, Inc. v. 417 Lafayette Rest. L.L.C., 439 F. Supp. 2d 281, 286–87 (S.D.N.Y. 2006).
The court would also need to determine whether the use is likely to cause consumer confusion regarding the source of Scrabulous. See 15 U.S.C. §§ 1114, 1125. The argument that the similarities between Scrabulous and Scrabble are sufficient to cause confusion amongst Scrabble consumers is certainly a strong one. Considering the strength of the Scrabble marks and the fact that the two games are played in a virtually identical manner, it is not difficult to imagine a Scrabulous player assuming that the game was either created or licensed by Hasbro. On the other hand, however, the wide publicity generated by the dispute may actually supply the defendants with evidence tending to show that actual confusion is, in fact, minimal.
Regardless of the strength of the claims against Scrabulous and Facebook, some argue that Hasbro and Mattel would be unwise to take legal action, because doing so will further irritate and alienate many of their own consumers. Instead, some argue, the companies should reach an agreement with the Agarwalla brothers to exploit the marketing phenomenon and allow the game to continue growing online.
In reality, it seems that Hasbro and Mattel might be trying to have their cake and eat it, too (or, as the saying should go, eat their cake and have it, too). Reports have indicated that RealNetworks, one of two companies licensed to produce an online version of Scrabble, has been trying to reach a deal with the Scrabulous founders to put an official version of Scrabble onto Facebook. Why would Hasbro and Mattel threaten legal action against those with whom they have a potentially significant financial relationship? The answer is clear: to avoid setting a precedent that would encourage other techno-savvy game addicts like the Agarwalla brothers to produce unauthorized internet imitations of their products. When the dust from this standoff finally settles—whether in court or not—the challenges facing Hasbro and Mattel may very well prove to be more difficult than the legal hurdles facing Scrabulous and Facebook.
Ownership of Domain Containing Trademark Not Considered Trademark Infringement
Filed Under General | Posted on March 19, 2008
By: Jeffrey Dicker
The Lanham Act provides that a trademark is infringed when it is used in commerce. 15 U.S.C. § 1125. With the rise of e-commerce and internet business, defining how something is used in commerce has become more difficult. This problem becomes even more difficult when dealing with a trademark used in a domain name. The question arises, is holding a domain without creating an accompanying website considered using the mark in commerce?
In Carey Licensing, Inc. v. Erlich, 2007 WL 3146559 (E.D.Mo. 2007), a recent case in Montana District Court, the court found that simply holding a domain name that includes a registered trademark does not constitute using the mark in commerce.
The plaintiff, Carey International (Carey), a limousine company, sued the defendant, International Chauffeured Services (ICS), for trademark infringement. The two parties entered into a consent judgment to be enforced by the court. As part of the consent judgment, ICS was prohibited from possessing any domain name containing the word “Carey”.
Two years after the consent judgment, Carey became aware that ICS possessed the domain “careylimousine.net”. Carey sued ICS to enforce the consent agreement and also sued for liquidated damages relating to trademark infringement. In its ruling, the court found ICS in contempt for violating the consent agreement. However, the court did not award Carey liquidated damages. The consent agreement provided that liquidated damages would only be awarded for any infringement of Carey’s trademark. The court reasoned that simply owning the domain “careylimousine.net”, without setting up a webpage, would not be considered trademark infringement. ICS’s use of the mark in the domain name was not considered use in commerce and was therefore not considered trademark infringement.
The Anti-Cybersquatting Consumer Protection Act provides an alternative to reclaiming one’s mark when it is wrongfully used. It allows an owner of a trademark to sue someone who has used that trademark in filing for a domain name registration. 15 U.S.C. § 1125(d). If the trademark owner can prove that the party who registered the domain name had a bad faith intent to profit from the trademark, then the remedy provided in these cases is transfer of the domain name to the rightful holder of the trademark. However, what would happen if the registering party doesn’t have a bad faith intent to profit, but only intends to prevent the rightful trademark holder from registering that domain by keeping a blank webpage?
The Carey ruling will have far reaching implications in just such a situation if it becomes accepted doctrine. Before this ruling, there were two legal methods of protecting one’s trademark in relation to domain names. One could bring an action against a party wrongfully using the trademark in a domain name either under traditional trademark infringement, or under the Anti-Cybetsquatting Consumer Protection Act to transfer control of the infringing domain to its rightful owner.
If this ruling is widely adopted, however, there may be no options for enforcing one’s trademark rights in certain situations. The Carey court held that ownership of a domain by itself is not considered use in commerce under the Lanham Act. Therefore, unless there is an element of bad faith intent to profit from the domain name, as required under the Anti-Cybersquatting Consumer Protection Act, the rightful owner of a trademark would have no recourse under United States Trademark law to prevent others from using his trademark in this context.
Legal Magic: Can J.K. Rowling Make Unauthorized Companion Books Disappear?
Filed Under General | Posted on March 12, 2008
By: Risa Drexler
In 2004, J.K. Rowling gave the Harry Potter Lexicon (“Lexicon”), a web site devoted to analyzing and cataloging all things Harry Potter, her annual FanSite award. “This is such a great site,” she wrote, “that I have been known to sneak into an internet café while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing).”i When Lexicon creator Steve Vander Ark announced plans to turn the site into a book, however, Rowling was decidedly less enthusiastic. On October 31, 2007, Rowling filed suit against RDR Books (“RDR”), the publisher of the Harry Potter Lexicon, in the Southern District of New York, claiming copyright infringement and stating that “[i]t is not reasonable, or legal, for anybody, fan or otherwise, to take an author’s hard work, re-organize their characters and plots, and sell them for their own commercial gain.”ii In the complaint, Rowling, who plans to create her own “definitive” Harry Potter encyclopedia, asserts that she has the “sole right” to control the distribution of the “descriptions, character details and plot points” found in her beloved books.iii In its reply, RDR maintains that the Lexicon does not infringe upon Rowling’s copyrights and is protected by the doctrine of fair use.iv
Copyright law grants copyright holders the exclusive right to copy and adapt their works,v but this power is not absolute. The fair use doctrine recognizes that in order for copyright law to fulfill its constitutional mandate —“to promote the Progress of Science and useful Arts”vi —unauthorized copying of copyrighted works is often necessary. Without fair use, for example, critics would not be able to quote dialogue from films or books without authorization. The doctrine is codified in Section 107 of the Copyright Act, which provides that the fair use of copyrighted works is not copyright infringement and gives a non-exclusive list of fair uses of copyrighted material including criticism, comment, scholarship, and research.vii It also delineates four factors for courts to consider when confronted with potential fair use: “1) the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work.”viii These factors are to be “weighed together, in light of the purposes of copyright.”ix
While all four fair use factors will be considered, it is likely that the Lexicon decision will turn upon the court’s interpretation of the first factor, “the purpose and character of the use.” Here, the relevant inquiry is whether the work-at-issue is “transformative” or whether it merely serves as a substitution for the original work. In other words, does the work-at-issue add “something new, with a further purpose or different character, altering the first with new expression, meaning, or message?”x This factor is particularly important because it colors the court’s findings as to the remainder of the test: “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”xi Likewise, if the court finds that the Lexicon is not transformative, it will be extremely difficult for RDR to establish fair use.
The complaint states that the Harry Potter Lexicon book, which is apparently the web site in book form, does not build upon Rowling’s original work—that it merely “rearranges the furniture that Ms. Rowling created.”xii Rowling also claims that the Lexicon contributes nothing to the understanding of the series and lacks “originality and invention.”xiii RDR, on the other hand, argues that the Lexicon is clearly transformative: by cataloging and indexing information spread over seven novels, five films and other media, the Lexicon serves as a valuable reference tool. Moreover, RDR claims that the Lexicon contains a large amount of original commentary and analysis, including a discussion of various historical and geographical references which draws upon material from various outside sources. RDR also points to a section of the book which reveals errors and inconsistencies in the Harry Potter series as evidence that the Lexicon creators are not merely free-riding on Rowling’s coat-tails.xiv
Second Circuit precedent falls squarely in Rowling’s favor. In 1998, Castle Rock Entertainment brought suit against creators of The Seinfeld Aptitude Test (“The SAT”) for copyright infringement.xv The creators of The SAT cataloged jokes and facts from the Seinfeld series and turned them into a popular trivia book, consisting of multiple choice trivia questions. The court held that “[a]ny transformative purpose possessed by The SAT is slight to non-existent.”xvi The court rejected The SAT’s arguments that the book educated Seinfeld viewers or helped illuminate their understanding of the show. In its brief, RDR attempts to distinguish the Lexicon from The SAT on the grounds that the Lexicon contains significant research and commentary and draws upon outside sources in an effort to augment the reader’s understanding of the Harry Potter series.xvii Regardless, the Castle Rock holding is controversial and was criticized by the Seventh Circuit in Ty, Inc. v. Publications International Ltd., a decision addressing similar facts to those of the Lexicon case.xviii In Ty, the Beanie Babies’ manufacturer sued the publisher of a series of beanie babies collectors’ guides that contained photos of beanie babies, claiming copyright infringement. The court found that collectors’ guides are protected by fair use and that the publication of pictures of beanie babies in their entirety is necessary for the creation of a comprehensive reference tool.xix
A cursory examination of the Lexicon reveals that although it copies some of Rowling’s passages verbatim, the site is more than simply an alphabetized catalogue of characters, places, and spells. An entry on Draco Malfoy, for example, not only discusses his personality and relationship to other characters, but includes a timeline of his life, examines his motivations, contains an etymology of his name, and notes that Rowling had chosen a different name for him in earlier drafts. While this is but one of many Lexicon entries, it indicates that the site does not serve as a substitute for the Harry Potter series, but rather as a supplement and reference.
Copyright law is meant to be “an engine of free expression.”xx In exchange for the exclusive right to copy and adapt original works, copyright holders relinquish the right to control public criticism and analysis of their creations. With countless unauthorized fan web sites, user-generated encyclopedias, and reference books already in existence—many of which generate profits for their creators—the outcome of the Lexicon case could reach far beyond Hogwarts and Hogsmeade. If the Lexicon is published, fans will still no doubt purchase J.K. Rowling’s authorized Potter companion and delight in its addition to the Harry Potter oeuvre. If Rowling obtains an injunction, however, fan generated web sites and companion books run the risk of being exiled to Azkaban—a dark fate for their creators and fans worldwide.
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i Fan Sites: The Harry Potter Lexicon, J.K. Rowling Official Site, http://www.jkrowling.com/textonly/en/fansite_view.cfm?id=14 (last visited March 7, 2008).
ii News: Companion Books, J.K. Rowling Official Site, http://www.jkrowling.com/textonly/en/news_view.cfm?id=102 (last visited March 7, 2008).
iii Complaint at 18, Warner Bros. v. RDR Books, No. 07-CV-9667 (S.D.N.Y. Oct. 31, 2007).
iv Memorandum of Law in Opposition to Plaintiffs’ Motion for Preliminary Injunction, Warner Bros. v. RDR Books, No. 07-CV-9667 (S.D.N.Y. Feb. 8, 2008).
v 17 U.S.C. § 106(1), (2) (2006)
vi U.S. CONST. art. 1, § 8, cl. 8.
vii 17 U.S.C. § 107 (2006).
viii Id.
ix Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).
x Id. at 579.
xi Id.
xii Memorandum of Law in Support of Preliminary Injunction at 6, Warner Bros. v. RDR Books, No. 07-CV-9667 (S.D.N.Y. Jan. 16, 2008).
xiii Id.
xiv Id.
xv Castle Rock Entm’t Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132 (2d Cir. 1998).
xvi Id. at 142.
xvii Memorandum of Law in Opposition to Plaintiffs’ Motion for Preliminary Injunction at 11, Warner Bros. v. RDR Books, No. 07-CV-9667 (S.D.N.Y. Feb. 8, 2008).
xviii Ty, Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512 (7th Cir. 2002).
xix Id. at 521.
xx Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985).
More than a Game: Fantasy Sports Industry Wins Recent Legal Battle Over Use of Player Stats
Filed Under General | Posted on March 6, 2008
By: Matthew Stark
Fantasy sports have emerged as an immensely popular means of supplementing fans’ enjoyment of sports. As the 2008 baseball season approaches, millions of fans are preparing to draft their fantasy baseball teams. The Fantasy Sports Trade Association estimates that 20 million people participate in fantasy sports in North America and that the market size of the industry is approximately $1.5 billion.i Some fantasy leagues, such as those operated by Yahoo! or ESPN, allow fans to play for free. However, many others charge a fee to join or to access additional features, such as expert analysis. The result is a highly lucrative industry.
To play fantasy baseball, users create customized teams by selecting players from the rosters of all thirty Major League Baseball (MLB) teams. Points are then awarded based on the individual performance of those players in such categories as home runs, batting average, and earned run average. Users compete against each other in leagues of approximately ten participants, and the winner is the team with the highest point total at the end of the season. Because fantasy baseball revolves around the individual performance of actual players during the course of the major league baseball season, the names, biographical data, and statistics of those players are indispensable. This information lies at the center of an ongoing intellectual property debate.
In CBC Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., the United States Court of Appeals for the 8th Circuit recently addressed the issue of whether use of this information without a license violates the rights of publicity of major league baseball players.ii CBC sells fantasy sports services through its website.iii CBC purchased a license from the MLB Players Association from 1995 to 2004 to use players’ names, biographical information, pictures, and statistics in its fantasy baseball services.iv In 2005, the Players Association granted an exclusive license to Advanced Media to use players’ names and information.v They did not offer CBC a license, and CBC brought the suit due to the apprehension that Advanced Media would sue them if they continued to offer fantasy baseball services with this information on their website.vi
Advanced Media argued that use of the players’ names and statistical information in conjunction with fantasy baseball was a violation of the players’ right of publicity.vii The elements of a right of publicity action are “(1) [t]hat defendant used plaintiff’s name as a symbol of his identity (2) without consent (3) and with the intent to obtain a commercial advantage.”viii CBC argued that its use of the information did not violate the players’ right of publicity, and that even if the court concluded that it did, the First Amendment supersedes such a right.ix While CBC acknowledged that it used the names without the players’ consent, the court held that the other two conditions had also been satisfied. In this case, the “name alone [was] sufficient to establish identity” and these identities were being used in CBC’s “fantasy baseball products for purposes of profit.” x
Although Advanced Media had established a valid cause of action for violation of the players’ rights of publicity, the court agreed with CBC’s argument that First Amendment considerations trump such a cause of action.xi The court stated that because the information about the players’ performance in games is a form of speech and is readily available in the public domain, CBC has a right to use it.xii It is speech that both entertains and informs, so the First Amendment protects it.xiii The court also emphasized the significant public value of statistics and records to fans.xiv Fans enjoy closely monitoring the progress of their favorite teams and players throughout the season, and the pursuit of breaking long-standing records garners particular interest. Limiting fans’ access to such information would significantly change the experience of watching sports.
In addition, players are largely unaffected by the use of their information in fantasy sports leagues. Use of statistics in fantasy baseball will not impair a player’s ability to earn a living, and the appearance of players’ names in the context of the game will not confuse consumers into believing that the players are endorsing CBC’s fantasy services.xv Due to these important considerations, the Court of Appeals affirmed the district court’s grant of summary judgment for CBC.
A favorable decision for Advanced Media would have contributed to a dangerous slippery slope. Other professional sports leagues, such as the NFL and the NBA, would have likely followed MLB in bringing suit against fantasy sports leagues that do not possess an official license. Like MLB, the professional leagues would surely choose to become the sole providers of fantasy services, establishing a monopoly on the fantasy sports industry. The prohibition on using statistics in fantasy sports would also raise questions about the legality of publishing this information in newspapers and magazines. If the court had ignored CBC’s First Amendment argument, the media might eventually be proscribed from printing box scores or from running stories on teams and players without first obtaining a license. Sports television programs would be unable to show highlights and recaps from the previous day’s games without infringing on players’ rights of publicity. Such a ruling would blur the line between using a name for news purposes and using it for a commercial profit.
A ruling for the players would be disadvantageous to the sport as well. Fantasy sports generate interest in the actual game. Because participants in fantasy sports customize their teams to include players from around the league, they are much more likely to watch games or highlights that feature one of their players, even if their favorite team isn’t involved.xvi Keeping the number of fantasy sports participants high will ultimately contribute to higher ratings. Fans might also buy jerseys or other merchandise because a particular player performed well for their fantasy team. The 8th Circuit’s decision allows fans to continue to enjoy an increasingly popular hobby, encourages the growth of a burgeoning industry, and helps maintain high levels of interest in the sport itself.
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i Fantasy Consumer Behavior Analyzed, FANTASY SPORTS TRADE ASSOCIATION, http://www.fsta.org/news/pressreleases/beasonpr.php.
ii CBC Distribution and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 820 (8th Cir. 2007).
iii Id.
iv Id. at 821.
v Id.
vi Id.
vii Id. at 820.
viii Doe v. TCI Cablevision, 110 S.W.3d 363, 369 (Mo. 2003).
ix See Michael B. Cassidy, What’s in a Name? Examining the Rights to Players’ Names and Playing Records in Fantasy Sports, 10 NO. 7 JINTLAW 1, 8 (2007).
x CBC, 505 F.3d at 822-23.
xi Id. at 823.
xii Id.
xiii Id.
xiv Id. at 823-24
xv Id. at 824.
xvi See Cassidy, supra note 9, at 11.
Next Volume’s Board Has Been Selected
Filed Under Journal Updates | Posted on March 3, 2008
After a full day of interviews and deliberation the Volume XVIII Editorial Board was able to select next year’s board. The pool of candidates was very strong and there was a tight race for every position. Congratulations to the new Board. Check out the Volume XIX Masthead.
First Felony Spammer
Filed Under News | Posted on March 3, 2008
On Friday, the Supreme Court of Virginia upheld a conviction for spamming charges that were brought against Jeremy Jaynes before Congress passed the CAN SPAM act. Among the failed defenses was a claimed First Amendment right to “anonymous speech.” Read more here.
- Maxim Price
Violence in Sports and the Prospect of Federal Regulation of Professional Leagues: Should Punishment Come in Yards or Years?
Filed Under General | Posted on March 3, 2008
By: William Burke
The prospect of increased federal regulation of professional sports is a growing concern in the field of sports law. Such regulation is openly invited by some and fervently opposed by others. However, all involved are debating essentially the same question: should the federal government have any say in the punishment of incidents which occur within the scope of a professional sports contest and which would pose potential legal consequences if the immunity that has typically come with professional athletic status were to be abrogated?
Although infamous athletic transgressions have been creeping, or perhaps bursting, into headlines since professional leagues have been extanti, events of recent years have unfortunately left the nation’s sports-page aficionados progressively more acquainted with terminology like “criminal charges,” “federal investigation,” “congressional hearing,” and “government regulation.” A wide range of issues that court governmental intervention, including but not limited to steroid abuse (think Barry what’s-his-name), ethical coaching practices (think the New England Patriots and the Spygate incident), and contest-fixing (think Stevin “Headache” Smith’s point-shaving scandal), have engaged the public’s awareness. Existing alongside these issues is a discouraging trend that has also provoked genuine concern: increasing violence in sports and the veil of legal immunity provided in most cases by baselines, sidelines, and uniformed attire. Just what is, or should be, “out of bounds,” and to what extent, if any, should the federal government answer that inquiry?
For various reasons, internal league sanctions may remain as the most appropriate mechanism by which players are penalized and in-game violence thereby deterred.ii First, it has been suggested that the various leagues and their officials have the best understanding of the rules and customs of their respective sports.iii Lawyers, judges, and juries are simply not as knowledgeable as league officials when it comes to determining whether a violent act “crosses the line” and exceeds the norm.iv Similarly, league executives are probably more familiar with precisely what risks their players have assumed.v Second, league judgments are likely to be “swift, certain and severe.”vi Where such punishments provide finality in a relatively quick fashion, they may be better suited to ensuring consistent, predictable sanctions.vii
On the other hand, it appears as though league-crafted punishments in the form of fines and suspensions have not sufficiently deterred sports violence.viii Though it is undoubtedly appropriate for sports leagues to impose their own punishments for certain incidentsix, the continuing trend of violence suggests that the leagues’ efficacy may be limited and that some governmental regulation may be needed to effectively control and punish cases of extreme misconduct.x
Currently, athletes who commit acts of excessive violence during sporting contests are generally not accountable for those actions beyond the aforementioned sanctions often imposed by the league. Although civil liability within the paradigm of conventional torts has been tested as an additional or alternative form of punishment for excessive on-field violence, this avenue has not been realized as an effective punishment or deterrent due to obstacles such (1) as the inherent difficulty in proving recklessness or an intent to cause harmful or offensive contact where such contact occurs in settings that permit and even encourage intense physical confrontations,xi (2) the ever-present assumption of risk defense,xii and (3) a general hesitancy on the part of many athletes to sue other members of their professional organization.xiii Accordingly, civil lawsuits have provided little, if any, relief to plaintiff athletes who have been victimized by the violent behavior of other professional competitors.
Similarly, criminal culpability has also floundered in addressing or deterring excessive violence in sports. Though many favor the prosecution of athletes for violent conduct (upon the theory that certain conduct is criminal whether it occurs on Madison Avenue or in Madison Square Garden), courts have been used infrequently for this purpose and garnering convictions has proven immensely difficult.xiv Proving the requisite mens rea has been a seemingly insurmountable burden for prosecutors, seeing as defendants’ actions usually took place within the context of fast-pace physical activities that involve split-second decision-making and substantial bodily contact as fundamental aspects of accepted play.xv Since aggressive contact lacking an accompanying intent to injure routinely occurs between players in many sports, proving the mens rea “beyond a reasonable doubt” has been a formidable hurdle for prosecutors to overcome. xvi
Conclusively, the futility of attempts at establishing civil or criminal liability for on-field violent behavior, coupled with the increase in detestable incidents on the various fields of play, fuels speculation that perhaps internal league sanctions and available legal remedies are not enough. Statutes may be needed to authorize governmental impositions of punishment for excessive on-field violence. Although the contemplation of such legislation is not entirely newxvii and has spurred little real action up to this point, the underlying problem of sports violence is as acute now as ever. Given the extent to which depressing instances of athletes’ violent misconduct have permeated recent sports news, the lack of real legislative action may soon be history. Federal regulation of punishments for excessive on-field violence may not be far off: don’t be surprised to see the shift from six-game suspensions to six-month prison terms.
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i Scholarly sports historians and well-informed laymen alike may recall, among others, these shamefully malign incidents: “Shoeless” Joe Jackson and the rest of the 1919 Chicago White Sox, who conspired to fix the 1919 World Series; Wilbanks Smith’s 1951 on-field, jaw-breaking blow to Drake University star Johnny Bright, which prompted fervent speculation as to the potentially racial motivation for the attack; and, Kermit Washington’s near-fatal cheap-shot on Rudy Tomjanovich during a 1977 Lakers-Rockets contest. Digging far deeper into the annals of the sports violence, the Nika riots in Constantinople in 532, which cost some 30,000 rioters’ their lives amidst chaos spawned by allegiances tied to chariot racing, provide further evidence that sports often escalate into more than “just a game.” However, the Nika riots did not revolve around any detestable actions taken by the athletes themselves. In that sense, they are distinguishable from the type of incident around which this piece revolves: athletes’ actions within the scope of their profession that produce potentially legal consequences.
ii Kevin A. Fritz, Going to the Bullpen: Using Uncle Sam to Strike Out Professional Sports Violence, 20 Cardozo Arts and Ent. L.J. 189, 219 (2002) [hereinafter Fritz].
iii Id.
iv Id.
v Id.
vi Id.
vii Id.
viii Id. at 222.
ix Id.
x Id.
xi Clete Samson, No Time Like the Present: Why Recent Events Should Spur Congress to Enact a Sports Violence Act, 37 Ariz. St. L.J. 949, 954 (2005) [hereinafter Samson].
xii Fritz, supra note 2, at 198.
xiii Id. at 202.
xiv Id. at 203.
xv Id at 204.
xvi Id.
xvii In 1980, Ohio Representative Ronald M. Mottl proposed the Sports Violence Act of 1980 to members of the House of Representatives, but it ultimately failed. Samson, supra note 11, at 959-60.
Nobody Owns Katonah: Martha Stewart’s Attempt to Trademark the Name of her Westchester Village
Filed Under General | Posted on February 26, 2008
By: C. Briccetti
In January of 2007, it became public that Martha Stewart Living Omnimedia (MSO) intended to trademark “Katonah” to be used for a line of furniture, paints, and other home furnishings.i Katonah is the name of a tony Westchester County hamlet of the Town of Bedford located about 40 miles north of New York City. Martha Stewart, the founder of MSO, has owned and lived in a 153-acre estate in Katonah since 2000.ii There was a large uproar in Katonah; residents objected to the use of their town’s name for commercial purposes, and feared it may harm local businesses.iii Some Native Americans like the Ramapough Lenape Indian Nation also objected finding the trademark attempt offensive, as the hamlet was named after a 17th-century Indian Chief.iv
A spokeswoman said Stewart “seeks to honor the town and the hamlet by using the word Katonah,” and a lawyer for Stewart said the trademark “will not stop Katonah residents, or anyone else, from using the name Katonah exactly as they always have.”v These statements did not satisfy the disgruntled residents, and the Katonah Village Improvement Society (KVIS) launched a campaign called “Nobody Owns Katonah” to fight the mark,vi and held a fundraiser on June 29, 2007 featuring live music by local musicians to raise the money needed for “research, filing fees, court fees, expenses associated with publicity, and more.”vii KVIS, founded in 1878, is an all-volunteer community organization “which sponsors, supports, and maintains projects and programs to foster an appreciation for the history and traditions of the Village of Katonah.”viii The group filed an opposition to the mark with the Trademark Trial and Appeal Board of the U.S. Patent and Trademarks office in April, 2007.ix
“Nobody Owns Katonah” was part of an impressive grassroots effort to oppose the mark by Katonah residents and others interested in the cause. One local resident, Bill Tisherman, put out a satirical newsletter called “The Martometer,” with the tagline “an unofficial journal covering one large, stubborn corporation’s attempt to trademark the name of one small, feisty village.”x The articles in the newsletter have tongue-in-cheek titles like “Katonah Braces for Life After Trademark,” and “Rumor Spreads: Martha to Preside Over Annual Church Rummage Sale,” while advertising for t-shirts with the slogans like “Katonah?: the furniture formally known as a village.”xi When asked about his motivation to put out the newsletter, he replied, “it’s very frustrating to have been part of a process trying to get Martha Stewart’s people to engage in a dialogue and they simply shut down. This was my way to try to keep it in the public eye in an entertaining way.”xii He was referring to a meeting in March, 2007 when Stewart addressed residents (armed with freshly baked chocolate chip cookies), which Tisherman found to be “completely one-sided. Stewart talked and had no interest in listening” to their concerns.xiii
Another interesting grassroots opposition effort was a song called “The Katonah” by the Advance Placement Band, which is made up of two local college-age musicians.xiv The song, while satirical in tone like The Marthometer newsletter, captures the spirit of the opposition movement with lyrics like “First we’d like to compliment your cooking skills,/ But when it comes to real estate, keep out of our grills. . . . We love your quotes and all that jazz,/ But we don’t want you to change what our town already has. . . . Hey Martha, Katonah is not for sale./ Hey Martha, sorry we didn’t post bail./ Hey Martha, if you could leave that would be nice./ Hey Martha, we’re sugar and we need no spice.”xv
Katonah residents’ main fear was that if MSO owned the “Katonah” mark, local businesses would be burdened by having to ask permission of the corporation every time they wanted to use their town’s name.xvi However, obtaining a trademark with a geographical indication is not a new concept: consider Philadelphia Cream Cheese, Boston Market, or Nantucket Nectars, just to name a few.xvii So what protections are there in place for the consumer or local business owner? According to TRIPs,xviii geographical indications are “indications which identify a good as originating in the territory of a Member . . . where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”xix Therefore, there must be a link between the geographical indication and the good. This is the concept truly at the heart of the Katonah residents’ objection; Martha Stewart only moved to Katonah a few years ago, and the locals, who have a fierce loyalty to their town’s unique history,xx take offense to her intentions to, in effect, “own” their town.
TRIPs goes on to say that the geographical indication may not be used in a way that “misleads the public as to the geographical origin of the good,” and that a trademark may be refused or invalidated if the examiner believes it may mislead purchasers.xxi In MSO’s application for the mark, they wrote, “Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah.”xxii
In the end, MSO and KVIS agreed out of court that MSO would pursue the trademark to apply only to for furniture, mirrors, pillows and chairpads, and drop applications for additional goods such as hardware, paint, lighting and home textiles.xxiii KVIS would in return drop their opposition to MSO’s application.xxiv The statement went on to say that the “registration of the name ‘Katonah’ as a trademark in association with [MSO’s] particular products in no way interferes with the rights of [local] businesses . . . to continue to use the name ‘Katonah’ for their stores,” and MSO “would only challenge a use of the name if a product (like furniture) were branded with the name ‘Katonah’ in a way that infringed the company’s trademark rights, which could cause confusion for consumers.”xxv
It’s hard to say for whom this is a victory. Martha Stewart shares “fell as much as 5.6 percent on news of the accord, falling 78 cents to $12.35 in New York Stock Exchange composite trading.”xxvi However, it doesn’t appear that the “Nobody Owns Katonah” campaign quite triumphed either. A Katonah resident who authored a protest song performed at the KVIS fundraiser, did say the settlement “seemed reasonable,” and added “the town is still the town. It’s not Marthaville. I think that the settlement is fair and in good community spirit.”xxvii As the parties said in their press release, they were all pleased to have “resolved any misunderstandings” and “join in mutual appreciation of the Westchester County hamlet of Katonah.”xxviii So in the end it seems it was, as Martha would say, “a good thing.”
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i See Martha Stewart Furniture with Bernhard – The Katonah Collection, http://www.bernhardt.com/marthastewartfurniture/collection.php?COL=Katonah (last visited Feb. 16, 2008); Indians Protest Use of ‘Katonah’ for Martha Stewart Product Line, NEW YORK TIMES, May 30, 2007, available at http://www.nytimes.com/2007/05/30/nyregion/30martha.html?_r=1&oref=slogin.
ii Indians Protest, supra note 1.
iii Jim Fitzgerald, Settlement in Stewart Trademark Feud, NEWSVINE, Nov. 14, 2007, available at http://www.newsvine.com/_news/2007/11/14/1097238-settlement-in-stewart-trademark-feud.
iv Id.
v Village to Martha: ‘Nobody Owns Katonah’, WCBS NEWSRADIO 880, May 29, 2007, available at http://www.wcbs880.com/pages/515327.php?contentType=4&contentId=551980.
vi Id.
vii Taking Back Katonah, HUDSON VALLEY MAGAZINE, July 3, 2007, Web Feature available at http://www.hvmag.com.
viii See Katonah Village Improvement Society, http://www.kvis.typepad.com/ (last visited Feb. 16, 2007).
ix Katonah Village Improvement Society v. Martha Stewart Living Omnimedia Inc., 91176691, U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Trademark application, KVIS opposition, and subsequent filings of both parties available at http://ttabvue.uspto.gov/ttabvue/v.
x The Marthometer, available at http://www.themarthometer.com/ (last visited Feb. 16, 2007).
xi Id.
xiii Posting of Robert to Suburbarazzi Blog, http://suburbarazzi.lohudblogs.com/2007/04/06/the-man-behind-the-marthometer-speaks-since-when-does-martha-stewart-live-in-katonah/ (Apr. 6, 2007, 11:30 EST).
xiii Id.
xiv Advanced Placement Band, http://www.purevolume.com/advancedplacementband (last visited Feb. 16, 2007).
xv Advanced Placement Band, http://www.purevolume.com/advancedplacementband/lyrics/1797732 (last visited Feb. 16, 2007).
xvi Pallavi Gogoi, Katonah vs. Martha Stewart, BUSINESSWEEK, July 4, 2007, available at http://www.businessweek.com/bwdaily/dnflash/content/jul2007/db2007073_268098.htm.
xvii Posting of Susan Gunelius to MarketingBlurg Blog, http://www.marketingblurb.com/2007/07/martha_stewarts_neighbors_rall.html (July 18, 2007).
xviii The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) is an international agreement administered by the World Trade Organization (WTO) in 1994 that set down minimum standards, procedures and remedies for the enforcement of intellectual property rights. See TRIPs – Introduction, http://www.uspto.gov/web/offices/dcom/olia/globalip/trips.htm.
xix Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Part II, §3, Art. 22.1, available at http://www.uspto.gov/web/offices/com/doc/uruguay/finalact.html.
xx For a history of Katonah, see http://www.katonahny.com/AboutKatonah.html; Taking Back Katonah, supra note 7.
xxi See TRIPs – Introduction, supra note 18; see also Trademark/Service Mark Application Help Instructions, available at http://teasplus.uspto.gov/teahelp.htm.
xxii See Application, supra note 9.
xxiii Press Release, Martha Stewart Living Omnimedia, Inc. and the Katonah Village Improvement Society, Joint Statement Regarding “Katonah” Trademark (Nov. 2, 2007), available at http://kvis.typepad.com/kvis/2007/11/joint-statement.html
xxiv Press Release, supra note 23; see also Katonah: Compromise over Stewart Brand, N.Y. Times, Nov. 15, 2007, available at http://www.nytimes.com/2007/11/15/nyregion/15mbrfs-stewart.html.
xxv Press Release, supra note 23.
xxvi Erik Larson, Stewart Gives Up Trademark Bids in `Katonah’ Fight, BLOOMBERG.COM, Nov. 2, 2007, available at .
xxvii Sean Gorman, Katonah trademark settlement won’t stop Martha Stewart roast, THE JOURNAL NEWS, Nov. 13, 2007, available at http://www.bloomberg.com/apps/news?pid=20601205&refer=consumer&sid=awfHxSILFE_8 .
xxviii Press Release, supra note 23.
Metatags and Trademark Infringement
Filed Under General | Posted on February 19, 2008
By: A.M.
In 1999, the Ninth Circuit in Brookfield Communication v. West Coast Entertainment held that the intentional use of a company’s trademark as a metatag on a competitor’s website constituted trademark infringement. This landmark case relied upon the doctrine of initial interest confusion, as articulated by the Second Circuit in Mobile Oil Corporation v. Pegasus Petroleum Corporation more than a decade before. Numerous courts have since relied upon Brookfield, using the doctrine of initial interest confusion to sustain trademark infringement claims in the internet context.
In recent years, however, some courts have criticized the finding of trademark infringement based on a metatag, an invisible label applied to a website that is used by some search engines in generating results pages in response to a query. Last year in Fragrancenet.com, Inc. v. FragranceX.com, the Eastern District of New York held that metatags could not support a claim of trademark infringement because they did not constitute “use” of a trademark, a mandatory element of trademark infringement, as set out in the Lanham Act. The court focused on the invisible nature of the metatag, stating that as the trademark is never seen by the consumer, it is not being “used” as that term is meant by the Lanham Act. The court went on to liken the use of a metatag to an individual’s private thoughts on a trademark, which would never constitute infringement.
While the Eastern District grounded its objections to the Ninth Circuit’s reasoning in the use element of trademark infringement, the invisibility of a metatag is also relevant in terms of the likelihood of confusion that might result from an infringing metatag. Liability for trademark infringement hinges upon the use of a trademark in commerce in a way that is likely to confuse the consumer. While an individual might append a metatag to their website that is identical to a competitor’s mark, the average consumer will never see the tag. The mark will only be seen by a search engine that reads metatags. Consumers will simply see the results page generated by the search engine. Typically, a search results page will list the names of the websites called up by the search, and a brief description of each site. It is the names of the different websites and these brief descriptions that a consumer will see, not any metatags an individual may attach to their website. As a consumer will most likely be presented with a list of websites that includes the one they were originally searching for, it is unlikely they would be confused or diverted to a website with a different name and description because of an invisible label.
Critics have also focused on the practical inadequacies of the Brookfield ruling. Primary among these considerations are the realities of internet traffic. In Brookfield, the Ninth Circuit drew an analogy to the brick and mortar world, where a sign to a major video store off a highway would induce a customer to leave the road, only to find a different store when they got there. That customer, having already left the highway would be likely to remain at this other store and make a purchase, rather than leave again with nothing. However, this analogy does not take into account the simplicity of movement on the internet. There is no equivalent to driving off the highway. An individual led to a website by a metatag can simply hit the back button to return to where they were and continue searching for what they were originally looking for. The initial interest confusion doctrine exists to prevent the use of a mark to lead consumers towards one product when they are seeking another. Even if the consumer realizes that they have encountered a different product or service prior to making a purchase, they have expended considerable energy in reaching the product of the infringer, and may not wish to backtrack to obtain the originally sought-after product. While this reasoning is clearly applicable to the brick and mortar analogy drawn by the Brookfield court, it does not apply to cases on the internet. There is no overwhelming burden on the consumer to try and undo the damage caused by a confusing metatag. Any consumer looking for a specific product does not have to take great pains to rectify being lead to a competitor’s website.
Furthermore, current cases that rely on the Ninth Circuit’s holding in Brookfield ignore the changes that have taken place in search engine technology. In recent years, the majority of search engines have stopped using metatags as a relevant factor in the algorithms used to generate search results. Most search engines, including Google, have moved towards ranking sites on search results pages based on their popularity, or how many other websites link to that site. As metatags fall further into disuse, the likelihood that any consumer is going to be confused by the application of these invisible labels drastically decreases.
These criticisms of the Brookfield decision and its progeny correctly identify the flaws in allowing a metatag to support claims of trademark infringement. Courts should not afford trademarks such strong protection as to prevent their invisible use as a largely antiquated search engine tool. Lanham Act sections 1114 and 1125, under which metatag cases have been filed, were not intended to prevent this kind of use, but the public misappropriation of a mark in a way that was likely to confuse a consumer and result in a purchase, or an expenditure of energy so great that the consumer was unlikely to go back and seek out the product they originally desired. Legislative history, as reflected in Senate Report No. 1333, shows that the intentions of trademark law were to protect the consumer from relying on a mark and getting a different product. Metatags do not, however, pose such a risk, and as such, should not be seen as a basis for a trademark infringement claim.
Counterfeit Tiffany Jewelry on eBay
Filed Under General | Posted on February 14, 2008
By Kathryn Newman
Luxury jeweler Tiffany & Co. has filed suit against eBay Inc., alleging that eBay has failed to properly police its online auction Web site to stop the sale of counterfeit Tiffany jewelry, since being put on notice about the sale of counterfeit jewelry in 2003.i Tiffany argues that eBay has a responsibility to actively police the site since the firm is profiting from the frauds. According to Tiffany, “Tens of thousands of counterfeit Tiffany items are sold through the eBay website each year, and eBay charges hundreds of thousands of dollars in fees in connection with the sale of this counterfeit merchandise on an annual basis.”ii eBay Inc. defends its “hands off approach,” though, arguing that it is not a retailer, but merely a service provider.iii
Intellectual property experts and commentators believe that the case will come down to knowledge— whether eBay had “reasonable notice of problems and are they not willing to do anything about it.”iv EBay will be held liable if Tiffany can prove that the Web site knew that a particular listing infringed a trademark. Based on court filings, eBay will argue that even if they had the ability to monitor the thousands of auctions going on all at once, they still have no way of knowing when a listing violates a trademark.
According to eBay spokesman Hani Durzy, aside from the sheer number of auctions that take place every day (there are 3.5 million new auctions every day on it–1.25 billion each year!),v the fact that eBay does not own or take possession of any of the allegedly counterfeit products makes it impossible for eBay to know whether something violates trademark or intellectual property rights unless it is informed by the rights owners.vi Thus, while eBay does not dispute that there is fraud on eBay, it contends that all it can do to minimize the number of frauds that are committed is “work with trademark owners to give them easy and efficient ways to alert us to specific sales.”vii
To this end, both sides agree that eBay has removed 19,000 auctions at Tiffany’s request.viii Additionally, eBay does regularly conduct its own keyword searches for suspicious items.ix When the company comes across obvious fake auctions, it takes these auctions down and notifies rights holders of the suspicious items. One could argue that this ‘takedown’ procedure implemented by eBay is all that should be required of the company to root out fraud. Moreover, one could argue that the fact that counterfeiting of Tiffany-branded items not only exists, but is rampant, is not compelling enough to begin blanket removals of such items. According to Durzy, “Just because an item happens to be listed, it doesn’t mean it’s fake because there have been similar items on the site that were…We can’t make that kind of assumption and maintain an open and free marketplace, and we won’t.”x
Still, counterfeit sales have persisted. In their complaint, Tiffany alleges that the “overwhelming majority” of jewelry items sold and offered on eBay’s Web site using the Tiffany name are counterfeit.xi In fact, their research has found that 95 percent of the items are fakes.xii In light of that statistic, perhaps eBay’s takedown procedure is not enough. The question thus becomes, how much longer should eBay be allowed to continue to hide behind its ‘bigness’? I believe that a Tiffany victory, however narrow, will alert eBay that they can no longer take a blind eye because of their size. Moreover, a narrow victory may go a long way in preventing the erosion of valuable brand equity, not only for Tiffany, but for other well-heeled brands as well.
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i Tiffany Calls Out eBay on Sales by Chad Bray. http://online.wsj.com/article/SB119500454117892190.html
ii Tiffany and eBay Clash Over Sales of Fake Goods by Michael Bobelian. http://www.law.com/jsp/article.jsp?id=1090180362167
iii EBay Fights its Toughest Legal Battle by Bob Sullivan. http://www.msnbc.msn.com/id/6030048/
iv Id.
v Id.
vi Id.
vii Id.
viii Id.
ix Id.
x Id.
xi Tiffany and eBay Clash Over Sale of Fake Goods by Michael Bobelian. http://www.law.com/jsp/article.jsp?id=1090180362167
xii Id.