Use of Likeness in Video Games

demolivenow.png Former basketball star Ed O’Bannon and former quarterback Sam Keller have now joined forces in a multimillion-dollar federal class action lawsuit that is proceeding in the US against the National Collegiate Athletic Association (NCAA). The lawsuit has been joined by 15 former NCAA basketball and football athletes.  Collegiate sports is big business in the US and the NCAA generates significant revenues from merchandising and licensing. The NCAA’s defence is that athletes like O’Bannon waived all their commercials rights when they signed a form authorizing the NCAA to use their images for promotional activities.  The lawsuit alleges that the NCAA is improperly profiting by using athletes’ images in video games such as the Electronic Arts title NCAA Basketball ’09. 

If you are considering using any personality or likeness in a video game or smartphone app, ensure you get proper legal advice on well-drafted written authorizations.

Link to: Consolidated Class Action Complaint (PDF) 

Related Reading: Video Games & Free Speech  

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Business Method Patents: Amazon Clicks Through

Many companies in Canada and the US are waiting for clarity on the software and business-method patent debate.

Patent offices on both sides of the border are issuing rejections, but one (in)famous software patent has been re-examined and upheld.  The USPTO recently completed in lengthy review of Amazon’s controversial 1-click patent and confirmed the patentability of many of the original claims.  Amazon has avoided the defeat of a re-examination and rejection and has in fact emerged with a narrower but arguably more defensible set of claims.  This is good news for Amazon, but does little to settle the wider debate, since the 1-click patent has become a poster-child for patent reform, and this decision merely fuels the debate further. The patent is set to expire in September, 2017.  

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Google AdWords: Can’t Beat ‘Em?

Google generates serious revenue ($20 billion+) from its AdWords program and “Keyword Suggestion Tool”. Yahoo! has its equivalent Sponsored Search service, and so does Microsoft through Bing Search Advertising.

All of these internet advertising services allow advertisiers to buy “keywords” to appear in online ads within sponsored search results.  Advertisers can buy words, phrases, or even a competitor’s trade-mark to ensure that their ads appear in the sponsored results. This practice is common… and so is the frustration of brand owners when they Google their own brand and then see competitor’s ads popping up.  If you’re one of those brand owners, what can you do about it?  If Rescuecom’s experience is anything to go by, then the answer might be … if you can’t beat ’em, join ’em.

Rescuecom’s attempt to sue the mighty Google (Rescuecom Corp. v. Google, Inc., 562 F.3d) achieved some success – a US appeal court determined that Rescuecom could proceed with its trade-mark infringement lawsuit based on the sale of Rescuecom as a “keyword”.  But Google (predictably) fought back tooth-and-nail, and Rescuecom recently dropped its suit altogether.  Now, it is Rescuecom that is in trouble for its own AdWords use of a competitor’s mark: Best Buy’s “geek squad”.   Rescuecom is trying to convince the court that its use of a competitor’s mark in AdWords is legitimate.   Everyone else is buying up their own brands as keywords, to prevent competitors from getting there first.

Meanwhile, Google continues to cash cheques.

Related Reading: a list of current AdWords Lawsuits

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IP Infringement & Director Liability

imageloader.gifA popular Chinese night market in a suburb of Vancouver became the arena for an intellectual property infringement case involving trade-marks and copyright. 

In a recent Federal Court decision (Target Event Production Ltd. v. Cheung and Lions Communications Inc., 2010 FC 27), Target, the original operator of the Richmond night market, sued a rival event operator for infringing on the registered mark RICHMOND NIGHT MARKET (in English and Chinese), as well as infringing copyright in the layout and site plans for the night market.  One important element in the decision relates to the distinctiveness of the marks. 

The Court acknowledged that the marks including RICHMOND NIGHT MARKET were “originally merely descriptive” but over time they became “valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness…”  But the judge went on to say that “this acquired distinctiveness was not, in my view, durable. Once Raymond Cheung and Target failed to open a night market in 2009, it is my view that Target’s Names, which were inherently weak, lost their distinctiveness and the associated goodwill.”

The lessons for business? 

  1. Weak, descriptive marks can acquire distinctiveness over time through advertising and use, but that distinctiveness can easily be lost.  Unique, distinctive marks will always be much stronger and easier to protect.
  2. Remember: directors can be liable for infringement.  In this case, the director of the defendant company was personally liable for the infringement since he was aware of the copyright and still went ahead with the unauthorized copying. As described in the well-known case Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co., a director will be liable where there is “deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or … an indifference to the risk of it.”

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Internationalized Domain Names – Part 2

In late 2009, ICANN (the Internet Corporation for Assigned Names and Numbers) announced plans to implement internationalized country-code top-level domain names (ccTLDs) using non-Latin characters. See our previous post: Internationalized Domain Names.

Four ccTLD requests are moving along the process and are now ready for the final step in the process, the application for string delegation. The four countries and the corresponding internationalized ccTLDs are:

SA Saudi Arabia


AE United Arab Emirates
EG Egypt
RU Russian Federation

Canadian trade-mark owners who have a brand presence in these jurisdictions are advised to monitor developments to ensure that their domain name and trade-mark protection strategies are harmonized when the new top-level domains become active.  Contact us for advice on trade-mark and domain name strategies.

Related reading: IDN ccTLD Fast Track Process.

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