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[The following is an extract from my own blog over at www.legalgamer.weebly.com]
News emergedÂ the other weekÂ that Sony Computer EntertainmentÂ ofÂ America attempted to trade mark the phrase âLetâs Playâ. As expected, the internet was not happy.Â Thankfully though for Letâs PlayersÂ aroundÂ the world, this has beenÂ blockedÂ (at least temporarily) on the grounds that it was too similarÂ to a pre-existing trade mark, âLPÂ LetâzÂ Playâ.Â But why did this happen? Could Sony actually do it? What would trademarkingÂ âLetâs PlayâÂ even mean? Read on forÂ a super quick tour through some trade mark law basicsÂ likeÂ what a tradeÂ mark actually is and what types of thingÂ can/canât be protected, as well as a breakdown of some of the legal issues facing Sony in thisÂ specificÂ case.
Boring legal caveats: first thingâs first -Â SonyâsÂ trade mark application was filedÂ in the US atÂ the United StatesÂ Patent and Trademark Office (USPTO) and is therefore subject to US trade mark law,Â which Iâll leave to my US colleagues to analyse. Instead, being a UK/EUÂ lawyer Iâm going to consider the European laws on trade marks and how this would have gone down if Sony had applied in Europe instead.Â Second â trade mark law is complicated and individual cases are fact specific.Â Lastly,Â Iâm not your lawyer, so pleaseÂ remember this isnâtÂ legal advice =)
What is a trade mark?Â
Trade marks usually referÂ toÂ the signs used by companiesÂ (their names, logosÂ etc) toÂ act as a badge of origin andÂ distinguish their goods andÂ services fromÂ their competitorsâÂ â whenÂ you hearÂ iPhoneÂ you think of Apple; when you see the golden arches, you think of McDonalds; when you hear PlayStation, you think of Sony and equally Microsoft for Xbox. Having a registered trade mark effectively lets you stop other people from usingÂ the protected mark,Â therebyÂ preventing customers from being tricked into buying goods which theyÂ thinkÂ are from you,Â when theyâre actually not.Â
One important thing toÂ knowÂ about trade marks is thatÂ youÂ have toÂ register them inÂ respect ofÂ certainÂ âclassesâÂ of goods / servicesÂ â e.g. class 1 includes chemicals, class 6 includes metals and class 9 largely includes software (and in turn, video games). And when youâve pickedÂ your broad classÂ you can specify in more detail exactly what products you want to protect (e.g. handheld consoles, game softwareÂ etc).Â So you donât get a monopoly right over every single use of your mark âÂ youâre only protected in relation to the goods specified in your application.Â Â
This means in practice there can be 2 identical, valid trade marks which are registeredÂ forÂ completely different goods â e.g.Â âBeastModeâÂ couldÂ beÂ both a trade mark for a game and also a separate trade mark for a dog food â thatâs completely okay.
WhatÂ canÂ you trade mark?Â
The best way to answer this is to look at whatÂ canâtÂ be registered as a trade mark â under EU lawÂ thereâs an absolute tonneÂ of things which canât beÂ trade markedÂ â these include marksÂ which:Â (i) are contrary to public policy or principles of morality, (ii) are devoid of âdistinctive characterâ,Â and (iii) signs which have become customary in the current language or in trade practices. You also canât register a mark if itâs identicalÂ /Â similar to an existing trade mark in relation to the sameÂ /Â similar goods or services â what counts as âsimilarâ and âidenticalâ getsÂ a bit technical, so I wonât go into that here.Â
Would Sony have been successful if filing in Europe?Â
If Sony had filed in EuropeÂ they would have applied for a Community Trade MarkÂ (CTM)Â with OHIM (Europeâs trade mark body) which, if granted, would have givenÂ them protection for the term âLetâs Playâ throughout all 28 EU member states.Â We can guess what goods / services they would haveÂ chosen byÂ looking at their US trade mark application,Â which statesÂ âElectronic transmission and streaming of video games via global and local computer networks; streaming of audio, visual, andÂ audiovisualÂ material via global and local computer networks.âÂ In the EU,Â theseÂ services would likely fall within class 38 (communication services).Â
As an aside, even if Sony were granted this trade mark, a developer could still theoretically trade mark the name âLetâs Playâ for a video game itself, since video game software isnât included in Sonyâs description â only theÂ streamingÂ of it is.Â
Anyway, going through the above list ofÂ examples ofÂ things whichÂ canâtÂ be trade marked,Â we start toÂ discoverÂ areas where SonyÂ mayÂ have faced difficulties.Â
(A) Is the term âLetâs Playâ devoid of âdistinctive characterâ?Â
The entire point of a trade mark is to enable the public to distinguish the goods / services of one company from the goods / services of another. The term âLetâs Playâ though has been used across the internet for years by thousands ofÂ differentÂ individuals and companies referring toÂ theirÂ videos and content,Â to the point where whenÂ someone says âletâs playâ, from this alone itâs almost impossible to know whoÂ or whatÂ theyâre talking about.Â The term has simply become a description of a medium of delivering entertainment like âfilmâ, âmusicâ or âstreamâ and gives no indication as toÂ whoÂ has actually made the content.Â
Sony would have to prove that, through their own use, the general public has come to think ofÂ themÂ whenever someone uses the phrase. This would beÂ difficult forÂ anyoneÂ toÂ prove, let alone Sony.Â If youÂ hadÂ to pick someone who was most commonly associated with the term youâd probably think of famous letâs players likeÂ PewDiePie, TheÂ YogscastÂ and Achievement Hunter (the latter actually owning the YouTube channel, âLetâs Playâ), but even then itâs not always a single source. The point is,Â itâs not Sony that springs to my mind at least.
(B) Existing similar marks and similar goodsÂ Â
Itâs possible Sony would have faced some objections from companies holding existing similar trade marks. Thereâs actually already a trade mark forÂ âLetâs Play!â, but this is largely in relation to advertising services, so likely wouldnât be a problem.Â More worrying for Sony would be the similar trade marks such as âslots.com Letâs Playâ, registered in relation to the âtransmission of information over a global computer network such as the internet includingâŚinformation pertaining to sporting events such as gamingâ â not exactly the same mark or services as Sony, but enough to be âsimilarâÂ and confusing to the public? Maybe.Â SoÂ ifÂ the owners of these existing similar marks decided to challenge Sonyâs (currently hypothetical) CTM application, Sony would have to prove to OHIM that thereâs no real chance of confusion between the customers of their different companies.
If you want to know a little more about this issue Iâve writtenÂ an entire pieceÂ about a recent trade mark application by Black Forest Gamesâ (Giana Sisters) for their new game, then titledÂ âDieselstormersâ,Â which was rejected due to its similarity with the DieselÂ clothingÂ trade mark.
(C) Has the term âLetâs Playâ become customary to the industry?Â
YouÂ alsoÂ canât trade mark something which has become common vocabulary in the relevant industry for those goods / servicesÂ â SonyÂ mayÂ struggle here in proving that âLetâs PlayâÂ hasnât.Â A simple Google searchÂ (which is of course the full legal test) ((not really))Â showsÂ thousandsÂ of different people all describing what they do as letâs plays andÂ SonyÂ doesnât even appearÂ near the first several pages of results (barring of course stories about thisÂ incident).Â Itâs at least arguable thatÂ the termÂ âLetâs Playâ has become the common terminology for watching someone else play a video gameÂ largely because of popular YouTubers, rather than because of Sony itself.Â
WhyÂ botherÂ and whatÂ happensÂ now?Â
If Sony was granted its CTM it wouldÂ (in theory)Â enable them toÂ tryÂ andÂ stop anyone else within Europe from using the phrase to describe what we commonly refer to as letâs plays.Â Â I emphasiseÂ tryÂ becauseÂ the realities of actuallyÂ enforcingÂ a trade mark arenât always that straight forward. For one, the person on the receiving end of a cease and desist letter or lawsuitÂ may have certain defences available to them, primarily that thereâs no confusion on behalf of the public (e.g.Â when people watch aÂ PewDiePieÂ letâs playÂ theyâre not thinking itâs aÂ Sony video).Â There could also be PR implications for Sony which could limit their enforcementÂ â cast your minds back to the difficulties Bethesda faced in the court of public opinion when enforcing their trade markÂ âThe Elder ScrollsâÂ againstÂ MojangâsÂ game,Â âScrollsâ. All of that said though, if Sony everÂ wasÂ granted and decidedÂ to enforce a âLetâs Playâ CTM, those in a position to actually fight this wouldÂ probablyÂ be few and far between.Â
So why did Sony apply for their US trade mark?Â Honestly,Â your guess is as good as mine here. Sure, weâve had some controversial trade mark filings in the past like when King trade markedÂ âcandyâÂ andÂ âsagaâ, but at least these were in relation to games that actually existed and they wanted to protect at the time of filing. If Sony had a prominentÂ letâs play YouTube channel or were planning on extending their âLive from PlayStationâ service (which lets you watch streams of peoplesâ PS4 games) this would make a lot more sense. It all just seems quite out of the blue for Sony to try to trade mark something which it doesnât seem all that involved with at the moment.Â
Sony has until June 29 to appeal the USPTOâs decision so itâs possible the story isnât over yet, but for nowÂ letâs players around the world can rest easy.Â Â
Thanks for reading!