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trademarks

Do I need a Metaverse Trademark?

Luxury goods company Gucci recently bought a plot of LAND in the Sandbox Game, an Ethereum-based play-to-earn game. This LAND is a virtual real estate plot (in the form of an NFT or non-fungible token) where Gucci plans to sell in-game clothing and collectibles. As futuristic as this seems, Gucci is not the only major company looking to get into the Web3.0 space. Walmart, McDonalds, Panera, Victoria’s Secret, Nike, and L’Oréal are just a few of the big players that recently filed trademarks specifically to protect their intellectual property in the Metaverse.

Nike has become particularly active. The company created a Nikeland experience in the popular Roblox game world (along with companies like Vans, Chipotle, and Hyundai, which also have staked out territory on Roblox). Nike also recently acquired RTFKT, a studio that specializes in NFT development and in January 2022, Nike announced the formation of Nike Digital Studios to create and deliver Metaverse and blockchain-based user experiences. Additionally, Nike has filed for dozens of trademarks to protect its virtual brand, including the use of its name and logo in online art, virtual goods, video games, and avatars. With a multi-billion dollar company like Nike trademarking dozens of its NFTs, many game developers, NFT collectors, traders, crypto bros, and others wonder whether they, too, should file for trademark protection within the Metaverse for their brand.

Do Gaming Developers Need Trademark Protection?

Absolutely. Games, gaming, and software in general are highly-competitive industries. Unfortunately, there is not much stopping a third party from copying your design and profiting off of it. This can create – not only marketplace confusion – but irreparable damage and dilution of your valuable brand. This can happen to companies big and small. Additionally, if you fail to trademark your game, brand, logo, catchphrase, etc., your competitor can come in, copy your brand, and then accuse you of violating their rights. While it is possible to file for retroactive trademark protection and win eventually, the easiest (and cheapest) protection is filing a trademark right away.

Do I Need to Trademark my NFT?

Yes. It is essential for you to trademark your NFT in order to protect it from copycats. The United States is a first-to-use country, which means your NFT will already have some automatic protections after minting. However, it would be very tough protecting your unregistered “common law” trademark in the worldwide NFT marketplace. Additionally, it would be very difficult to defend an unregistered NFT trademark in any sort of legal dispute should a third party copy your idea. Filing a trademark with the USPTO ensures validity and protection within all fifty states.

Trademarking your NFT creates a brand identity that is uniquely yours. Trademarking a unique slogan, logo, or design can be a valuable marketing tool for you going forward and add tremendous value to your project. After all, intellectual property rights are what you actually own when it comes to non-physical property like NFTs (and software or computer code in general).

Copyright is another important intellectual property right for NFT owners, users, buyers, and sellers. For example, it is critical to ask what rights you are actually buying when purchasing an NFT? Is there an agreement to transfer the copyright? A license? Nothing at all? Lack of clarity in the NFT transfer process can and will lead to litigation, more so as NFTs become more and more widespread.

How Do I Protect my NFT Internationally?

You can protect your NFT internationally, provided that you also apply for international registration during your initial trademark filing. Under the Madrid Protocol (which is an international treaty for the uniform protection and registration of trademarks), a registration through the USPTO can also be registered in other countries with a single application.

What is a benefit of international registration? International registration allows you to use a foreign country’s laws and judicial resources to enforce your mark in that country. A USPTO registration still allows enforcement through a U.S. based court, even if the infringer is in a foreign country. However, even if you prevail, you might not be able to enforce the U.S. court’s judgment abroad. An international trademark registration opens up a number of other enforcement options. If you are interested in international trademark registration, this is something to discuss at your initial consultation.

What Types of Things Should I Trademark?

Here is a non-exhaustive list of items that could potentially qualify for trademark protection:

  • Avatars
  • Logos
  • Game Name or Gaming Development Company’s Name
  • NFTs
  • Virtual Goods (avatar skins, digital art, etc.)
  • Color Schemes
  • Particular Sounds (The coin grab ding from the classic Mario Brothers game comes to mind here.)
  • Slogans

What Cannot be Trademarked?

The United States Patent and Trademark Office (USPTO) has a set of guidelines that lists some of the following reasons for trademark rejection:

  • Likelihood of Confusion – If you create a game called GranD Turismo 7, you could not trademark that name because people could confuse it with Gran Turismo 7, the newest addition to PlayStation’s highest selling video game franchise. Sony owns the trademark to protect against competitors who seek to profit off of its name recognition by creating a similarly named game. Thus, you cannot trademark GranD Turismo 7.
  • Merely Descriptive and/or Intentionally Misleading – For example, you can’t trademark the words “fun and entertaining.” Even though your game is both fun and entertaining, these only describe the game itself and don’t necessarily make your game unique, so you can’t trademark them. Likewise, the USPTO will reject your trademark if it is intentionally misleading. For example, if your game’s name is “Play with Cryptocurrency,” but the game does not play with cryptocurrency, the USPTO reviewer could consider this game name intentionally misleading and deny your trademark.
  • Primarily a Surname – For example, Smith’s Play-to-Earn Game is primarily a last name (and merely descriptive) would not be suitable for a trademark.

How do I file a trademark for my game or NFT?

Whether you’re filing a trademark for an NFT, a digital avatar, a slogan, or your business name, Artaev at Law has the professional expertise to help you do it right. Artaev at Law, together with the specialized trademark attorneys at Mighty Marks, now offers a fixed fee, all-inclusive trademark service. Contact Dan Artaev at dan@artaevatlaw.com for additional information.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional. Any link to or reference to any specific project is not an endorsement of or validation of that project and is for solely informational purposes.

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Business Law Essentials for the Modern Video Game Company.

As a game developer, unless you are working on the new Ace Attorney game, law and lawyers are the last thing on your mind. But no matter how high-tech, innovative, and cutting-edge your product, video games and mobile apps are still a business and there are industry-specific legal areas to consider. Doing it right will protect your investment and ensure that your business grows in the right direction with minimum risk and liability. Artaev at Law specializes in legal issues facing video game and mobile app developers and also has extensive general business experience to help you run your company the right way.

The Fundamentals.

1. Form Your Corporation or LLC.

When starting your business, the first thing to do is to form a business entity. It is important to choose the right type of entity depending on your future goals and needs in mind. For example, if you are planning to solicit investors and venture capital, a Delaware corporation is likely your best option. In other situations, a limited liability company (“LLC”) may be a simpler approach, but at the same time may create unintended tax consequences in the future if you decided to merge, reorganize, or consolidate your company with others. Whatever form you choose, incorporation is critical for all business owners because it creates a separate business entity with its assets and liabilities independent of its owners. A formal business organization also helps address important governance, financial, and succession issues right at the outset.

To officially form your company, you file articles of incorporation (or organization) in the state where you want to be registered. An experienced business attorney can advise you on the right type of entity, as well as the advantages and disadvantages of incorporating in various states (i.e. should you form a Delaware corporation?) Every state requires an initial registration fee, an in-state registered agent to serve as your official point of contact, as well as an annual filing and renewal fee to keep your company current and in good standing.

2. Have an Attorney Draft Your Bylaws or Operating Agreement.

The next step is to have an attorney draft the bylaws or operating agreement. This internal governance document is absolutely critical. It spells out who owns the company, how decisions are made, how money is distributed, how shares are transferred, what happens if an owner dies, and many other important considerations. Even if you are a one-person business, the bylaws or articles of organization are still necessary when you want to open a bank account, obtain a business loan, sell all or part of your business, and otherwise ensure that you are running your business the right way. Having formal documents and procedures, as well as keeping written records of corporate meetings are also critical to maintaining the corporate form for liability protection purposes. Aggressive creditors have successfully argued that a business that does not observe such formalities is a “sham” and that a court should “pierce the corporate veil” to allow them access to an owner’s personal assets.

3. Separate Your Business Money and Assets.

Maintaining a separate bank account and finances for your business is another vital step. Virtually all business problems are linked to money. A separate business finance setup (including a bank account) avoids commingling personal and business funds, which is another circumstance that could expose you to liability. Further, failing to separate business and personal expenses and properly account for distributions creates a very difficult and unpredictable tax situation at the end of the year. For example, if you use personal credit cards for business expenses, make sure to keep records and promptly and accurately reimburse yourself. Also, if you apply for an SBA or other loan, make sure that the loan is disbursed to your business account and not to your own personal account (yes, this actually happened with one of my clients). Otherwise, you are creating an accounting, tax, and legal nightmare – and risking an IRS audit.

Make sure to reserve adequate money for income taxes from any operational income. Also, state and federal taxes must be paid on a quarterly estimated basis, since as a business owner there is no employer automatically withholding taxes from your paycheck. If you have employees, you will need to make sure to pay the appropriate payroll, worker’s compensation, and unemployment taxes. If you do not have employees, self-employment tax is still something that must be calculated and paid periodically.

Finally, on cryptocurrency or “crypto.” If you are planning on using crypto as part of your business, there is a whole separate set of considerations. The IRS considers crypto taxable property, including stablecoins. Taking payment in crypto may be innovative and position your business as “high-tech,” but there are obstacles to using crypto instead of fiat currency in running your business. For example, even if a vendor allows you to pay them for goods or services in crypto, each transaction is a taxable event. The IRS considers you to have sold crypto and incurred capital gains tax liability each and every time. There are also state and federal laws that preclude you from paying wages in crypto, but bonuses and other discretionary pay are another story. Crypto may have promising implications for the future, but there are many practical obstacles for business owners interested in integrating crypto into their day-to-day business.

Intellectual Property.

Intellectual property or IP law is of paramount importance to game developers and designers. On one hand, you want to protect your own creations and inventions against unscrupulous competitors seeking to copy your product. On the other hand, you have to be able to protect yourself from others’ IP claims, including DMCA copyright takedown notices and cease-and-desist letters.

Intellectual property generally consists of three main categories: (1) patent; (2) copyright; and (3) trademarks.

1. Patents.

Patents are most often associated with scientific discoveries and mechanical devices. In the video game context, a so-called utility patent may be available to protect a game’s unique mechanics or a specific gameplay methodology. The protected design must be unique and non-obvious. But patents do not protect the code itself, the game concept, or idea. For example, Skillz.com, a leader in the real-money skill-game market, has over 50 patents, including a patent for technology that ensures fair and level asynchronous play. Skillz does not have a patent for any specific game played on their platform and in fact, there are a lot of copycat apps on the Apple App Store that are essentially the same games as those available through Skillz. The downside of patents is that patent protection is fairly expensive to obtain and to police, involves publication and public disclosure of the technology, and may even be waived by playtesting certain concepts.

2. Copyright.

Copyright law protects creative works like books, movies, music, and yes, video games. The underlying code for a game is also protected by copyright and pirates who illegally copy the code and sell copies of the game are violating federal copyright law. Most recently, copyright claims have come up in the context of streaming and whether streamers are allowed to use certain music and other creative elements during their broadcasts.The creative concepts – or the “theme” of the game – are also protected. This means the storyline, the characters, art, music, box design, and other distinct creative and thematic elements. But not everything is protected by copyright.

Distinct from the “theme” of the game are the game mechanics, which cannot be copyrighted. “Game mechanics” is the actual gameplay – this can be as simple as moving the joystick to move an avatar around in a virtual environment. The United States Copyright Act codifies this concept and expressly states that copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 USC 102(b). The distinction between the copyrightable theme and the non-copyrightable game mechanics is not always clear and there may be some overlap. Additionally, the concept of “fair use” protects certain commentary, criticism, and parody from an infringement claim.

3. Trademarks.

Trademark protection exists chiefly to prevent customer confusion and to protect the integrity of a brand. In the video game context, trademark will primarily protect the name of the game, but can also protect unique “trade dress” elements that constitute unique menu or box designs, or user interface elements. A trademark can also protect a slogan or recognizable phrase associated with a game.

Trademarks are relatively easy to obtain and the USPTO website allows you to search for existing trademarks to ensure that your branding does not infringe on existing products. Trademarks also vary in strength depending on whether they are more generic and descriptive, or unique and arbitrary. For example, the game name “Grand Theft Auto” is also the term for a certain felony associated with vehicular theft. The name literally describes a core game concept (stealing cars), so it would be considered either a “suggestive” or “descriptive” mark. On the other side of the spectrum, an entirely unique “fanciful” or “coined” mark enjoys the strongest protection – for example the terms “Skyrim” or “Warcraft” (at least arguably) do not have any other meaning outside the game context.

4. Other Intellectual Property Issues.

The most two common questions facing game developers are: (1) How can I prevent someone from copying my game? and (2) How do I avoid getting in trouble for copying someone else’s game? While you may have taken steps to protect your intellectual property, the fact is that games are especially vulnerable to knockoffs and plagiarism. International law may even become an issue if an overseas company takes and repurposes your idea. By hiring an attorney as part of your team, you can ensure that you have taken the right steps to obtain copyright protection for your user interface, graphics, art, etc., and that you have properly registered your trademarks. An attorney can also ensure that any contractors – such as artists, coders, or composers – properly assign all rights back to the game developer through “work for hire” agreements. Licensing agreements with any publisher must also delineate the rights and responsibilities of all parties. Royalties and assignments must be fair, clear, and definite. If you have a co-designer or a business partner, you must absolutely have a business agreement before your idea starts making money, so there are no surprises or hard feelings. If there are copyright concerns or knockoffs, a DMCA takedown notice or demand letter is often an effective tool to dissuade would-be thieves. Conversely, if you are receive a takedown notice or demand from another designer, you need to have an effective and prepared attorney ready to respond.

Regulatory Concerns.

Most game developers are not going to encounter regulatory issues or attract the attention of state or local prosecutors. However, if you are considering real-money play (such as skill games) you will need a legal opinion as to where your game may be offered. Payment processors, advertisement platforms, and distributors may all require additional information and assurances as part of their internal review and approval process.

Finally, if you are distributing internationally, you need to be aware of the region-specific laws and regulations. Some regions are more friendly to gaming than others – for example, real-money skill-games are popular and abundant in India, but there is no uniform national-level law. Hong Kong is a haven for real-money gaming, yet at the same time, China does not allow them. Plus, there are international tax treaties and financial regulations to navigate.

Whatever your game and whether you are a veteran or just starting out, an experienced gaming attorney can be a great asset to your business.

Contact Artaev at Law PLLC to set up your initial consultation. We are Michigan’s gaming law firm and we specialize in the unique concerns that you may encounter as a game developer.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.


© 2021 Artaev at Law PLLC. All rights reserved.

Who Owns Your Invention? The Concepts and Inventions Assignment Clause, Work-For-Hire, and the Shop Right Doctrine.

In the modern employment context, there are plenty of on-boarding documents, including a handbook, that the employee may be asked to sign as part of getting hired. Lurking in these pages of seemingly innocuous workplace policies may be critical obligations and restrictions that significantly restrict the employee’s rights. For example, non-compete and non-solicitation clauses are becoming more and more common in all industries. Also, there may be another Trojan Horse to watch for, especially in high-tech industries – the so-called “concepts and inventions assignment clause.” This clause essentially assigns all of the employee’s inventions, innovations, and discoveries that they make or create while working for the employer to the employer. And even in the absence of such a clause, the employer may claim rights as work-for-hire, or have limited rights under the “shop right doctrine.”

A “concepts and inventions clause” is a contractual obligation that is becoming increasingly standard in employment documents. It can be stand-alone, part of an employment contract, or even hidden in an employee handbook or manual. The clause gives the employer automatic and exclusive rights to inventions, conceptualizations, and other ideas created during the employer-employee relationship. The idea is that since the employer is paying the employee to dedicate 100% of his or her time to the business, and the employer is also providing the tools, space, and other means for the employee to work, the employer owns all of the fruits of the employee’s labor. The scope and breadth of the contract is up to the parties. However, some states (most notably California), limit the scope of such agreements by law. In those states, the agreement may not cover independent inventions – meaning inventions that are created on the employee’s own time without using any of the employer’s resources. For example, if an employee is a software designer, but goes home and creates a new type of mechanical circular saw in her garage during evening hours. Even if there is a general assignment clause, it likely would not be enforceable. Michigan does not have a law limiting the scope of the assignment clause/contract, which means that a Michigan employer could potentially claim rights to the new saw design, even if the invention has nothing to do with the employer.

In a high-tech context, a “concepts and inventions clause” may also list express exclusions. If Company A is hiring an inventor, the inventor would list all of the prior inventions that Company A has no rights to and the inventor retains. At the same time, the list benefits Company A because the inventor cannot later claim rights to an invention that is not on the list. Additionally, the clause (whether it is stand-alone or part of a broader employment agreement) often contains an integration clause, which prevents parties from claiming they had a side-deal or different understanding. And, there are “teeth” to provide that in case of a litigated dispute, the losing party would pay the prevailing party’s attorney fees, thereby discouraging lawsuits over ownership of an invention.

A similar situation occurs when an employer hires an employee for a specific purpose – that is to create a work-for-hire. Even without a contractual assignment clause, the employer will own the rights to any resulting invention where it is the outcome of the specific employment relationship. For example, Company A hires an engineer to invent a new chassis platform to use across Company A’s pickup truck line. The work results in a patentable invention and Company A owns 100% of the rights to the chassis. Even if the inventor did some of the work on his or her own time or otherwise made out-of-work contributions to the project, it would be considered a “work-for-hire” where the employer – or the “hirer” – owns all rights to the resulting innovation. The owner Company A is then free to license, sell, or otherwise assign the patent rights, and keep all of the profit, without providing the inventor with any additional compensation.

What about the situation where there is no “concepts and inventions clause” and there is no specific “work-for-hire” arrangement? Does the inventor always own 100% of the rights to his or her invention, even if created on company time? No, because of something called the “shop right doctrine.” The doctrine is a common-law concept (meaning it is a principle created by the courts, as opposed to the legislature). In general, the doctrine allows the employer to continue using the invention, but precludes the assignment or licensing of the invention to third-parties. In other words, the employer gets a royalty-free limited license to use the invention, but cannot sell it. The doctrine also requires that the invention be created using an employer’s resources, such as a laboratory, computer, or analytical equipment. The shop right doctrine is a defense to patent infringement that the employer can rely on if sued by the inventor – it is not an affirmative or assignable right.

What does this mean for employers and employees? If you are hiring or being hired, and anticipate the relationship may produce a valuable invention, concept, or other innovation, you should consult with an attorney to ensure your rights are protected. After-the-fact litigation is not only costly, but incredibly uncertain in outcome, and should be avoided as much as possible. As an employer, you want to make sure to have solid and well-defined assignment clauses for your employees to sign. And, because at least 9 states have statutory limitations on the scope of the assignment agreement, it is best practice to draft any assignment to be enforceable across the entire United States. As an employee, you need to make sure you are not inadvertently signing away more rights than you intend to, and are fully aware of your respective rights and obligations.

On a final note, these concepts (as well as other intellectual property concerns) also apply in the university context. Professors and graduate students are constantly innovating and creating, but whether they or the university own the final outcome may be something that they have not considered. In a famous example, Larry Page (one of the founders of Google), is listed as an inventor on one of the key patents that served as the foundation for Google. However, Stanford University owns the patent because Larry Page was a Ph. D. student there at the time of the invention. Consequently, Google had to license the patent from Stanford University for a hefty nine-figure sum. So while a university may not claim rights to inventions made by students as a matter of policy, they will likely claim rights to inventions made by employees. A graduate student or a post-doc is like a professor, in the sense that they are often employees of the university. Your specific institution likely has a tech transfer department, as well as its own policies and regulations. Again, an experienced attorney can help you protect yourself and stay informed of your rights and obligations.

Questions or concerns about your situation? Contact Artaev at Law PLLC to set up your initial consultation or call or text Dan today.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional.


© 2021 Artaev at Law PLLC. All rights reserved.

Your Twitch Channel is Worth How Much? Protect Your Right of Publicity in the 21st Century.

Photo by Lucie Liz on Pexels.com

Did you know that celebrities, professional athletes, actors, and other famous people have a valuable property right in their very persona? That property right is called the “right of publicity” and extends to gaming, particularly as streaming platforms like Twitch allow gamers to develop their own brand and following. There is no question that internet personalities like Ninja, Dr. Disrespect, Summit1G, Shroud, and others have their own brands – unique styles that have helped them gain millions of fans. That branding naturally translates into lucrative sponsorships and 6, 7, and even 8-figure exclusive streaming deals that are similar to those enjoyed by celebrities in movies, music, and sports.

However, you don’t have to have millions of followers to develop a brand that has value and should be protected. As a streamer, eSports professional, tournament organizer, or commentator, you may have developed a persona, a unique style, catchphrases, signature moves, and other aspects that may make you especially attractive to your audience. That unique brand is called your “right of publicity.” And protecting that right is protecting your brand – so it is not only critical to protect it from misappropriation (just as you would with a trademarked logo), it is also critical to ensure that you do not unwittingly sign a contract that transfers that valuable right without you receiving appropriate compensation.

The first step to protecting yourself is to educate yourself. Read on.

The International Trademark Association defines the “right of publicity” as:

An intellectual property right that protects against the misappropriation of a person’s name, likeness, or other indicia of personal identity – such as nickname, pseudonym, voice, signature, likeness, or photograph – for commercial benefit.

– http://www.inta.org/topics/right-of-publicity/

Unlike patents, copyrights, and trademarks, the “right of publicity” is not found in any federal statute. Rather, it is a matter of state law and thus varies from state to state. What is more confusing is that some states (like California) have specific laws that expressly protect certain aspects of a person’s identity and set out a statutory process to enforce that right. Other states (like Michigan) do not have statutes that protect the “right of publicity” but recognize that right through the common law (meaning there are court cases that can be cited to support a claim). However, even where a state like California protects only certain aspects of a person’s identity under state law, a person can still raise common law claims to other aspects – in other words, California statutory scheme is not exclusive of the common law. For example, a celebrity’s distinctive voice is expressly protected under California law, but an imitation of that same voice is not. However, a celebrity may still file suit against an unauthorized imitator under the common law even in states where there is a statute. Confused? The main point is regardless of which state you are in, you have rights and remedies to protect your persona from misuse and misappropriation.

So what do you need to prove for a right of publicity claim? Generally, the plaintiff needs to show (1) the use of “identity”; (2) the appropriation of the plaintiff’s “identity” to the defendant’s advantage, whether commercial or otherwise; (3) lack of consent; and (4) resulting injury. The term “identity” is defined broadly and essentially protects any unique personal aspects, such as tone of voice, manner of dress, catchphrases, color schemes, and many other categories. Recently, I wrote about Detroit’s Eastern Market Brewing Co. dealing with a cease-and-desist from Barry Sanders after the brewery released Same Old Lager (a play on the phrase “same old Lions” that describes the teams consistently underwhelming performance and leadership turmoil). The problem was not the slogan or the riffing on the Lions – rather, it was the brewery’s can design featuring a pixilated football player wearing the Lions’ silver uniform with Sanders’ number 20. According to Sanders’ legal team, the brewery misappropriated his “identity” and thereby implied an endorsement or connection that did not exist. In response, the brewery changed the can design to replace the football player with the brewery’s own mascot and Same Old Lager is available once again.

What about parodies and fair use? The right of publicity is not absolute and cannot suppress the right to free speech protected by the First Amendment. Parody, commentary, news, and other so-called “fair uses” are protected from right of publicity claims. Because each situation is different, there is no bright line test, and judges are essentially called on to serve as art critics to determine what merits protection. As a guideline, the courts rely on the “transformative use test” to determine whether the derivative work sufficiently “transforms” the original to acquire its own independent economic value. For example, a t-shirt with a charcoal drawing of the Three Stooges failed the transformative test because the primary value of the t-shirt came from the identity of the Three Stooges. The defendant t-shirt maker misappropriated the economic value associated with their identity, and the fact that the image was a charcoal drawing (as opposed to a photograph) was an insufficient creative element to predominate the work. See Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001). In contrast, a comic book series featuring characters based on Johnny and Edgar Winter as half-human/half-worm villains was sufficiently transformative to defeat the musicians’ right of publicity claim. Despite the similarity in names and depiction with long white hair and pale complexion, the court noted that the primary economic value of the comic book was in the “fanciful, creative characters” and not the actual identity of the Winter brothers. See Winter v. DC Comics, 30 Cal. 4th 881, 66 USPQ2d 1954 (Cal. 2003) (66 PTCJ 210, 6/13/03).

As video games have become more sophisticated, they have also become targets of right of publicity claims. In a recent case, Arizona State’s quarterback prevailed against Electronic Arts when their NCAA football game omitted the quarterback’s name, but used his number, position, height, weight, and other characteristics. Other football game cases against Electronic Arts established amateur and retired athletes’ rights to their likeness, even where the publisher changed the jersey numbers and physical likeness. There are many unsettled questions with regard to the law of publicity, especially as new kinds of celebrities and mediums are examined, and the law is constantly evolving.

What does this mean for streamers, eSports professionals, and tournament organizers? Initially, that means you have a protected and valuable right in your identity. For example, there is little doubt that Ninja (probably the most famous Fortnite player and streamer) has a protected right in his image. That includes not only his name and likeness, but his distinctive hairdo, characteristics of his gameplay, and other aspects. Also, be careful what you sign. The right of publicity, like other intellectual property rights, is assignable and can easily be transferred as a part of a contract. For example, many professional eSports contracts require the player to transfer all rights of publicity to the team organization. As an up-and-coming player you may not necessarily care or gloss over that part, but what happens if you develop an independent celebrity? What if you come up with a move, look, style, catchphrase that goes viral? The team would own it, and even if you left, it is possible that the team could successfully enforce that right to your own creation against you. As one of the more bizarre examples, Twitch suspended Dragonforce guitarist Herman Li for playing his “own” music. While details are murky and Li is back on Twitch, the likely reason is that Li assigned his rights to a label, and the label holds the right to demand a proper license from a streamer for the music’s reproduction. Music streaming licenses are a whole different issue – read my FAQ on playing music on Twitch to learn more.

Now that you are educated, the second step to protecting yourself is is retaining the right counsel who knows gaming. Intellectual property rights and licenses are paramount in the digital age. It is more important than ever to consult with a knowledgeable attorney before signing that team contract or sponsorship deal. And, when marketing a new product, attorney review is likewise essential to avoid legal issues that derail your launch. Remember, sharing your marketing idea, new product, or other money-making scheme with your attorney is confidential and is protected by attorney-client privilege. At the same time, failing to consult an attorney at the start can cost you much more later on in responding to cease-and-desist letters and even dealing with a lawsuit. Finally, if you suspect your persona or brand is being misused by someone else, talk to an attorney who can advise you of your rights, and if there is a violation, send a takedown demand or a cease-and-desist letter.

On a final note, the same principles apply to Instagram influencers, podcasters, Twitter accounts, and essentially anyone else who has built an online brand through an online presence. Protect yourself and your labors by doing it right.

Need an attorney who knows gaming law? Contact Dan Artaev by email or by call or text to set up your consultation.

Disclaimer: This article is not intended to be and does not constitute legal advice. Do not take any action or refrain from taking any action based on this article, and always consult with a qualified professional about the circumstances of your particular case.

© 2020 Artaev at Law PLLC. All rights reserved.

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Beer, the Lions, and Intellectual Property: An Updated Cautionary Thanksgiving Tale.

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Update: Since I originally published this article, Eastern Market Brewing has resolved its issues with Barry Sanders and no longer uses his likeness on the beer can. Same Old Lager is available again, and instead of a Lions player wearing the number 20, the brewery’s mascot graces the can against a pixilated, video-game style football field. The marketing and slogans still stand and continue to play on the Lions’ reputation for mediocrity – and perhaps Eastern Market can capitalize on the Lions’ recent coaching and GM change to push their cleverly branded lager.

Still, many lessons here for any enterprising business owner. Intellectual property law has many hidden pitfalls, and falling into one not only will cost legal fees to defend against a cease-and-desist, but also disrupt your marketing and sales.

Detroit’s own Eastern Market Brewing Company came up with a genius marketing idea: a beer called “Same Old Lager,” a clever play on the “same old Lions” saying that has become familiar to Detroit football fans after years of mediocre results. The slogan for the crisp 4.5% ABV lager is “don’t set your expectations too high” and the beer itself was announced the same day the Lions suffered a crushing 20-0 defeat to the Panthers, and just about a week out from the Lions’ annual Thanksgiving game. Clever marketing, impeccable timing, free media attention. Hit product, right?

Wrong. Apparently someone forgot to run the new product by their lawyer or if they did, their lawyer missed a big problem. The day after the new lager was announced, it was removed from sales in response to Barry Sanders’ cease-and-desist for unauthorized use of his likeness on the cans. The retro-video-game-style logo featured a pixelated football player in a Lions uniform with the number 20 (Barry Sanders’ famous number) carrying a football against a gridiron backdrop. Mr. Sanders quickly took to social media to disclaim any affiliation with the product and announced that his image was being used without his permission. As quickly as the new beer was announced, production and sales were halted. Opportunity lost and a genius marketing plan derailed.

I have previously written about Peloton and how the billion-dollar publicly-traded behemoth was facing millions dollars in liability for unlicensed use of music in their workout videos. In today’s digital world, intellectual property rights are more critical than ever, and the Eastern Market snafu is just the latest example of how (presumably inadvertent) infringement can happen. So what did the company do wrong? And how could they have done it right?

What did they do wrong?

The brewery’s marketing ploy was actually very clever. Nothing in the slogan or description expressly referred to the Lions. The Detroit Lions is a valuable trademark, along with the logo, so Eastern Market obviously did not want to pay for its use or licensing. A marketing campaign that riffs on the Lions’ reputation for consistent mediocrity, but does not expressly reference the Lions does not violate the trademark itself. In a nutshell, trademark law prohibits unauthorized use of a mark in a manner that is likely to cause confusion about the source of the goods or services. When something is clearly parody, let alone does not use the actual mark, there is no trademark violation. In other words, no one can reasonably claim that they think a beer called “Same Old Lager” is somehow actually endorsed by the Detroit Lions.

The problem was not trademark law – rather, it was the “right to publicity.” A pixelated video-game likeness of a Lions player wearing Barry Sanders’ famous number 20 jersey graces the front of the can. Generally, a celebrity like Mr. Sanders owns the rights to his own image and has the right to control its distribution. Here, the brewery used Mr. Sanders’ likeness on the beer, implying his endorsement. Accordingly, his legal team took action, which lead Eastern Market to take down its new product, likely pending a new can design. Even if Eastern Market decided to make the case in court and fight back, the campaign momentum has been disrupted, and even so, Mr. Sanders’ case appears to be fairly strong and supported by decades of caselaw. The “right to publicity” is a concept dating back to the 1950s and is related to copyright law, although they two are not the same. There are cases that have protected everything from Vanna White’s likeness that Samsung tried to replicate as a robot, to Bette Midler’s voice, to Johnny Carson’s catchphrase “Here’s Johnny,” to a human cannonball circus act. And, of course, there is a number of exceptions, including when a likeness is used for educational purposes, news items, public issues, and even “entertainment and amusement concerning interesting aspects of an individual’s identity.”

How could they have done it right?

The brewery should have requested a legal opinion from an attorney approving the marketing as well as the packaging. Once the attorney flagged the right to publicity issue and the possible misuse of Barry Sanders’ likeness, a minor redesign would have likely taken care of the issue. Changing the number of the player, removing the number, changing the uniform colors, or any other number of tweaks are possible options. Another potential issue is the design’s likeness to the beloved retro football game “Tecmo Bowl” – and an attorney should have researched and cleared that issue (potential copyright infringement) as well before the design went to print.

The bottom line is that the marketing team can get ahead of the legal team. Copyright, trademarks, patents, licensing, and the “right to publicity” are all important concepts that all business owners should be aware of. Doing it right may cost a little bit more in the short run, but can avoid significant costs down the line.

Need a legal opinion about your marketing campaign? New logo? Design? Product? Contact Dan Artaev by email or by text or call today to set up your free consultation.

Disclaimer: This article is for general informational and promotional purposes only. Nothing herein constitutes legal advice and is the author’s individual opinion. Every business is different and faces its own unique set of challenges. Do not take any action with respect to your business until you have obtained specific guidance from a qualified professional.

© 2020 Artaev at Law PLLC. All rights reserved.

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