Thursday, May 23, 2013

Sins of a trademark owner: Rogers applies regardless of intent

Rebellion Developments Ltd. v. Stardock Entertainment, Inc., 2013 WL 1944888 (E.D. Mich.)

H/T Eric Goldman.

Rebellion sued Stardock alleging that Stardock’s game, Sins of a Solar Empire: Rebellion infringed its registered trademark for a game development company.  The court dismissed the complaint under Rogers v. Grimaldi.

Rebellion is a well-known British games company that has developed more than forty video games for major gaming consoles.  REBELLION is registered for, among other things, “entertainment and amusement machines and apparatus, namely, video games and electronic games.”   

Stardock, reviewers, and players sometimes refer to Sins of a Solar Empire: Rebellion as simply Rebellion (one can see why from the cover/posters).  There was “some evidence” of consumer confusion: a YouTube user mistakenly referred to Rebellion as the developer of Rebellion. 

Rebellion argued that Rogers didn’t apply because Stardock was a competitor labeling its commercial good with a confusingly similar mark; Stardock even filed a trademark application for the mark.  Thus, Stardock was using Rebellion solely to identify a source.

Video games are expressive works, and the Sixth Circuit has adopted Rogers, so that was the standard. Rogers itself recognized that titles could acquire secondary meaning and become eligible for trademark protection, but didn’t ask in its test whether a title can or did function as a source identifier.  Artistic and commercial elements are intwined in titles, and the commercial nature of artistic works doesn’t diminish their First Amendment protection.  Likewise, the fact that a title “attempts to attract public attention with stylized components” was irrelevant. 

Next, Rebellion argued that Rogers cases must involve defendants who were directly referring to the plaintiff, but there was no such reference here: Stardock was just using a suggestive trademark to brand its product, and limiting such expression via trademark didn’t violate the First Amendment.  Also no!  Reference is not required by either prong of Rogers.  Many cases have applied Rogers to uses that didn’t refer to the plaintiffs.

Moreover, Rogers could be applied on a motion to dismiss.  “Courts are cognizant of vindicating First Amendment protections through early dispositive motions to avoid chilling speech.”  Rebellion argued that the court shouldn’t make its own conclusions at the pleading stage, especially without the opportunity to examine the underlying work (which, not for nothing, I think the court could do, given that the game is incorporated by reference).  There’s no reason not to grant a motion to dismiss “where the undisputed facts conclusively establish an affirmative defense as a matter of law.” 

Now it’s all over but the crying.  “Rebellion” had some artistic relevance to Stardock’s game.  Within the game, players could choose to align with “loyalist” or “rebel” factions in the context of a civil war.  The requisite level of artistic relevance need only be above zero.  Stardock described the game as follows: “The time of Diplomacy is over. The length of the war and differing opinions on what should be done to bring the war to an end has led to a splintering of the  groups involved. The controlling powers-that-be have depleted arsenals and seemed to have exhausted all efforts of diplomacy. Trapped in a stalemate, sub-factions have rebelled and broken off the main alignments. Rebellion is upon us.”  This was clearly enough to meet the low threshold of relevance. (Although this was from Stardock’s website, the text was included in the complaint as screenshots.)

Nor was the title explicitly misleading as to source or content.  Pleading that the title was willfully misleading wasn’t enough.  Even if members of the public are misled, that’s not actionable without an overt misrepresentation.  Under Rogers, “factors that might establish likelihood of confusion—such as the Defendants' intent—are irrelevant.”

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