Reacting to “React”

Sam sprite forwardMany of you have no doubt already heard about popular YouTubers Fine Bros. trying to get a trademark on the word “React.”  You already know about it, because you are way more in the loop than I am.  But, this morning, I came across this article by attorney Ryan Morrison, and I felt the urge to weigh in on the matter.  So, after a very modest amount of research, including the Trademark Office records, here is an alternate take on the situation.  For the record, I do not know Mr. Morrison, and nothing that I say here is any sort of attack on him.  For all I know, he is an excellent lawyer.  And I appreciate his enthusiasm on this matter, but I want to offer a more nuanced presentation of the law.

First, as a general matter, this whole things doesn’t seem intrinsically evil.  Fine Bros. have apparently been using “REACT Channel” on YouTube since October 16, 2010.  That’s a long time, as far as these things go.  And, as a professional who deals with these exact issues all day for a living, the mark “React” for “an on-going series of programs and webisodes via the Internet” doesn’t strike me as so egregious that I would tell the client that he’s out of his mind.  It seems weak, especially since the people in the videos are just “reacting” to things, but I’ve seen worse cases get through the Trademark Office.  In this case, I’m surprised, but not grossly appalled.  And even if React, as applied to their videos, is merely descriptive (and therefore not inherently protectable); after five years, mark-holders can try to show that they have gained enough awareness and notoriety in their descriptive mark that they should get the federal registration for it, anyway.  (We call this “secondary meaning,” as some of you may know.)  This issue of secondary meaning is the same reason that anyone named Joe McDonald can’t open a restaurant and call it McDonald’s.  Wendy Smith can’t have a fast-food place called Wendy’s.  An airliner that does flights in the southwestern U.S. doesn’t get to be “Southwest Airlines.”  Etc.  (If anyone needs an explanation on the strength of trademarks, I just so happen to have written one.)

Second, the filing date for this mark was July 10, 2015.  This means that anyone who was using “react” for Internet videos before that date will not be affected by this registration.  Trademark rights accrue from being used.  It is a separate matter whether Fine Bros. have any rights in “React” apart from the trademark application at issue.  Maybe they do, and they could possibly enforce those rights against any other “React” video series that came up after October 16, 2010 (or maybe some middle date, depending an a number of factors that aren’t worth getting into here), even without the federal rights.

Third, trademark law protects words used in a trademark sense.  This might be hard to explain.  Some of you are probably aware of a cereal called “All-Bran.”  All-Bran is the name of that cereal.  Now, let’s say that you made a competing cereal.  You can’t name the cereal All-Bran, because that’s taken.  So, let’s call it Murphy Flakes.  Now, Murphy Flakes is composed of 100% bran flakes.  Therefore, you could legitimately state that your cereal was, quite literally, “all bran,” and you could say that right on the box.  As long as you don’t make the words “all bran” look like this cereal box produced by Kellogg’s, then you have done nothing wrong.  So, if people use the word “react” to legitimately describe their Internet videos, then they aren’t running afoul of trademark laws, as long as they aren’t trying to make it seem as though said videos actually came from Fine Bros.  For the record, you could also have called the cereal “React Flakes” and not run afoul of the Fine Bros.’ trademark, because marks only protect the term in question for a specific set of goods and services.  And Internet videos are not close enough to cereal to cause any trouble.

Finally, I do have to flat-out disagree with the claim that “[t]rademarks are much more broad and powerful protection than copyright.”  I don’t think that trademarks are more powerful than copyrights, and certainly not in this case.  A trademark on “React” for Internet videos will not stop anyone from making reaction videos.  You are still free to film anyone reacting to anything without running afoul of this trademark application (although other laws might still apply (e.g. trespass, stalking, etc.))  You just have to use a different name, and then you are free to produce the exact same goods and services as Fine Bros.  You could have a series of videos called “Wow!” or “Shocking!” or maybe even “Wendy’s” or “Southwest,” for that matter.  Trademarks are only concerned with words, not content.  Specifically, the words that a business uses to identify its products.  I think that any trademark claims or copyright claims would be rather thin on protection, in this case, but I can’t agree that a trademark offers “much more broad and powerful protection than” a copyright.  Especially not as a general matter, as Mr. Morrison seems to be alleging.  So, when Mr. Morrison says, “These guys didn’t come up with the idea of filming funny reactions from kids. And they certainly don’t own an entire genre of YouTube videos. It wasn’t their idea, and it’s not theirs to own or police,”  in charity, I’m going to assume that he’s accusing Fine Bros. of trying to use their trademark to claim ownership over an entire genre of YouTube videos.  Otherwise, he is expressing a gross misunderstanding about what trademarks do and don’t cover.  (For the record, copyright wouldn’t cover the blanket idea of “reaction videos” either.)

And on the matter of the other trademarks (“DO THEY KNOW IT?, KIDS VS. FOOD, LYRIC BREAKDOWN, PEOPLE V. TECHNOLOGY, and TRY NOT TO SMILE OR LAUGH),” again, I don’t see those as awful.  Some of them strike me as somewhat weak, some don’t.  “Lyric Breakdown” seems like a decently strong trademark to me; “People v. Technology” less so, but I wouldn’t be shocked if a trademark examiner let it through.  And, for the record, speaking in legal terms, a mark cannot be both generic and descriptive at the same time.  To be fair, I think that “Kids React” and “Elders React” are even weaker than just plain “React,” and I agree that those never should have gotten through application process.

Now, with that said, this trademark does seems to be evil as applied in this case.  If Fine Bros. are sending out hundreds of cease-and-desist letters to YouTubers who have posted reaction videos, then this might be one of the first cases of trademark trolling that I’ve heard of.  I’ve dealt with patent trolls and copyright trolls before, but not trademark trolls (although I can think of one notable prior case).  Just because a YouTuber is totally justified in giving his video the title “My sister reacts to a werewolf attack,” I fully understand that Fine Bros. aren’t going to play nice, regardless.  Even if the YouTuber in question would ultimately win the resulting trademark infringement lawsuit, that lawsuit would still be really expensive to fight.  If Fine Bros. are hoping to use this mark to bludgeon anyone who posts a reaction video to YouTube, or to extort unnecessary licensing fees from them, then I wish Mr. Morrison all the best in his efforts to oppose them.  However, it doesn’t seem like this will be necessary, since, according to Trademark Office records, the mark was expressly abandoned yesterday.

As always, this is just legal information, not legal advice, and (unless you hired me recently) I am not your lawyer.

© 2016 Sam Castree, III
SamCastree [a.t] crawfordpatents [d.o.t] com

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Game Business Review – IELG BRIEF: What is Defamation?

SuzanneThe Games Industry is no stranger to mudslinging.  Putting aside #GamerGate (and we should, as often as possible), we’ve seen several cases where games or industry figures were targeted for lawsuits in recent years: 2014 saw Lindsay Lohan sue Rockstar Games and Panama dictator Manuel Noriega sue Activision, both alleging defamation of character.

More recently, The Escapist drew attention in its recent piece concerning the alleged business practices of Cloud Imperium Games, the studio behind the crowdfunded Star Citizen. The article’s content compelled Cloud Imperium to issue a formal response letter, demanding a retraction. You can read the full article here. These incidences of verbal attack and legal counter-attack should give rise to similar questions for everyone working in or on games—when have you gone too far when it comes to someone else’s character? What is defamation, and when does one cross the free speech line and enter actionable territory? Continue Reading…

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DMCA Update

IshThe Library of Congress recently issued a new list of exemptions under the DMCA. Every three years the act allows the Library of Congress to issue exemptions to allow legal uses of works. Under the computer programs categories, the DMCA allows an exemption where “video game software ‘for which outside server support has been discontinued,’ so that they can still be played by individuals as well as preserved by libraries and archives; preservationists can also jailbreak game consoles…”For those of you out there that love your retro games but no longer have server support, you are officially protected. You can now develop ways and in order to make your game functioning again. However, if there is still server support for any part of the game, like a multiplayer function, you are not exempt from the DMCA. The language also allows one to jailbreak a console system as well in order to run your game properly.

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Loading Law and GameDevLaw Speak: OGDE 2015

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Hello readers! This coming weekend, November 6-8, the Ohio Game Developers Expo will be held in Columbus, Ohio at COSI – Center for Science & Industry. I am happy to announce that I will be contributing to two panels: Law in the Games Industry: Things to Know and Video Games: The Artistic Medium of the 21st Century. Additionally, Suzanne will be moderating a panel entitled Perspectives: Women in Gaming. If you are interested in learning more about legal protections for your game, the legality of ESports, diversity in games, or the video game art scene, this event is a must!

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An Interview with Game Designer/Lawyer Craig Stern

The-Messiahs

Craig Stern is a Chicago-based game designer best known for his game studio Sinister Design, and Telepath Tactics, his turn-based strategy RPG. Craig also organizes a regular meeting of Chicago game design students, appropriately titled, Indie City Games. If that were not impressive enough, he’s also a lawyer. Clearly,  Craig’s real life character class is Renaissance Man. I got the chance to talk to Craig, and he was gracious enough to answer a few questions about his work and his games.

Ross A. Hersemann: Being an attorney and a game designer is a very unique skill set. What made you decide that you wanted to make games, what made you decide that you wanted to be an attorney, and how do you manage to do both at once?

Craig Stern: I have two parts of my brain that were involved in the decision: the part of my brain that has a burning need to create, which all but forced me to pursue game design; and the part of my brain that likes stability and not starving to death, which influenced my decision to enter law. I manage to do both at once through an innovative combination of high stress and inadequate sleep.

Continue reading at Loading Law…

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Sam Talks with Unqualified Gamers

Sam sprite forward

Last weekend, I sat down for an interview with Cody Gough of Unqualified Gamers.  We talk about a number of things, including copyright assignments (i.e. Superman), trademark families (Candy Crush), trademark registration coverage (Metal Gear Solid V), the First Amendment (GTA: San Andreas), and why I was sworn in as a lawyer on the most appropriate day possible.

Come listen to me talk shop for a while: http://wgnplus.com/2015/09/24/video-game-law-basics-sam-castree-iii-ace-attorney-at-law

As always, nothing here or in the podcast legal advice, and (unless you hired me recently) I am not your lawyer.

© 2015 Sam Castree, III

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Chicago Video Game Law Summit Video Online

Hello readers! Today I have some exciting content updates for you. Earlier this year, the first ever Chicago Video Game Law Summit was held at the Chicago Bar Association in Chicago, Illinois. The Summit drew a sold-out crowd of lawyers, game developers, and industry professionals. It also drew a horde of diehard gamers! In case you missed it, I am very happy to announce that the video footage of the Chicago Video Game Law Summit is now available online! You can access it on the CVGLS YouTube Channel, or at Loading Law.

I am also very happy to announce that Loading Law has greatly expanded its media offerings. You can now access a wide variety of game law related content, including: Chicago Video Game Law Summit footage, Ross and Zed Talk Games podcasts, lecture footage, and photos from the road. Be sure to stop by regularly to see the latest updates as we publish our backlog  of content!

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Do Your ‘Let’s Play’ Videos Violate Federal Advertising Laws?

Sam sprite forwardGreetings, readers.  First, I know that I’ve been absent for a while, but I have been busy with a new job (hooray for steady paychecks!). Knee-deep in trademark filings and game developer business contracts.

But now I’m back, and it’s time to turn to a new topic: advertising law.  Earlier this month, the Federal Trade Commission reached a settlement with Machinima, Inc. regarding videos created as a part of a marketing campaign for the Xbox One.  Machinima paid certain video creators, referred to as “influencers,” up to $30,000 to endorse the Xbox One in their videos.  Others were paid per view, up to a total of $25,000.  Influencers were also given pre-release access to the console and certain games.  Now, you might think that there would be nothing wrong (or at least, nothing illegal) with things like that, and you would be right, except that none of the influencers disclosed the money and other perks that they received in exchange for the positive reviews.

The FTC has rules regarding endorsements and what constitutes misleading advertisements.  They actually have a good (and pretty easy to read) set of guidelines here, but it more or less boils down to this: anyone who endorses the goods and services of another must disclose any “material connections” between the endorser and the provider.  A material connection means “a connection between the endorser and the seller of the advertised product that might materially affect the weight or credibility of the endorsement.”  That would include, for example, being paid $25,000 to say nice things about Microsoft. But it also includes lesser benefits like a free copy of a game or early access to a new console.  i.e. “Of course he’s going to say nice things about the game; he wants to keep getting free stuff.”

These guidelines apply even if the material connections didn’t actually influence your opinion at all.  If Nintendo gave you a million dollars to review Super Mario Maker, but you would have called it the best game of the century even if you had gotten nothing at all, you still need to disclose the money.  As the guidelines make clear, this applies no matter what medium you’re using to communicate: newspapers, magazines, blogs, YouTube, Facebook, even Twitter (“#ad”).  Your “Let’s Play” video could very well end up on the wrong side of the law, if you aren’t careful.

Well, Machinima wasn’t careful.  Its influencers didn’t make the necessary disclosures.  Nevertheless, Machinima uploaded their videos, anyway, all as part of an advertising deal with Microsoft’s advertising agency (Starcom MediaVest Group).  The FTC caught wind of all this, and cracked down on Machinima.  So now, under the terms of the settlement with the FTC, Machinima may not upload any video unless the video maker adequately discloses all of its material connections to the viewers.  Machinima also must have a system in place to monitor compliance with uploaded videos, and to continue to monitor those videos for continued compliance.

The FTC also investigated Microsoft and Starcom, but ended those inquiries without taking action.  Although both Microsoft and Starcom were also responsible for the influencers’ failure to make the required disclosures, the FTC determined that these were “isolated incidents that occurred in spite of, and not in the absence of, policies and procedures designed to prevent such lapses.”  So, I guess we can also learn that having a well-written policy in place can be a good defense, even if someone falls down on the job at some point.

The take-away point is, when in doubt, mention the special benefit that you received.  I know that it might impact your credibility in the eyes of someone out there, but it sure beats a federal investigation.

As always, this is just legal information, not legal advice, and (unless you hired me recently) I am not your lawyer.

© 2015 Sam Castree, III
now at SamCastree [a.t] crawfordpatents [d.o.t] com!

Disclosure: I have not received anything from anyone to write this article.  However, Mario Maker is super-awesome.

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The Legality of eSports

scifipulse2smallRecently I was interviewed by Nicholas Yanes, a contributor to SciFi Pulse, on the subject of eSports. Given the increased visibility of eSports on platforms like Twitch and YouTube, as well as the unique financial and legal aspects involved, eSports are a very hot topic right now. Here is a taste of what we discussed, with the remainder of the interview after the jump.

Nicholas Yanes: First, as the Founder of Loading Law what are some of the cases that people dealing with videogames should know?

Ross Hersemann: Currently, cases that deal with the right of publicity and celebrity likenesses are all the rage. In particular, gamers should keep an eye on Lindsay Lohan’s current lawsuit in New York against the makers of Grand Theft Auto V. She has claimed, among other things, that characters in that game are based on her and that she should be compensated for the alleged use of her likeness. The outcome of her case could impact how celebrities, or characters based on celebrities, are featured in games. The financial impacts, and free speech implications could be very interesting.

Continue reading here

 

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Indie Revolution Expo

Hello readers! This Sunday I will be participating in a live webcast as part of the Indie Revolution Expo. Organized by Indie Game Riot!, the Expo will feature 3 days of online programming dedicated to sharing the spirit of creativity which supports the indie game community. I will dialing in via Skype with my esteemed colleague Suzanne Jackiw to lend my expertise in the area of video game law.

We will be describing some highly relevant legal basics for game developers and discussing a variety of topics including: copyright protections, trademark, the right of publicity, and a variety of game related contracts.

Check out the Expo’s website and panel schedule here. Tune in here to watch all the panels. Suzanne and I go live on 07/19 at 12pm EST.

 

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