Show You All the Moves Like… Fatal1ty? Doublelift? Trick2G? Flash? MadLife?

Could you trademark behaviors of a professional esports player?

I came across an interesting question online a while ago (from Ryan Fairchild): “If an esports player did some recognizable set of actions at the beginning of each match, and fans could recognize who the player was just from those actions, could the player eventually claim inherent distinctiveness and claim trademark rights in those actions?”

My opinion is that it would be very difficult to get trademark protection for such “signature moves” in esports—but it would be very interesting to try.

1) What does a trademark need? Can this idea of “signature moves” meet the minimum requirements?

A trademark has to be connected to some good or service in commerce. It would be novel to present streaming and esports as the good or service, but not out of the question. You probably wouldn’t be able to stop other people from doing the same move, but you might be able to sue someone for using the signature moves if it makes people confused about the identity of the player and the impostor profits from it. (That’s not exactly the statutory requirement, but it’s the most favorable set of conditions for someone trying to sue in this case.)

Another important requirement is that the signature moves not have functionality. Optimized pathing, strategically advantageous positioning, etc. are all likely to be out of the question. Trademarks, generally speaking, cannot have a functional purpose. If something functional were protected by trademark, it could prevent people from using or accessing that functionality. Trademarks last indefinitely, provided that they remain in use in commerce and the registration is renewed, so any functionality would be protected indefinitely. Patents are the category of IP that is meant to handle functional subject matter, and patents have the shortest lifespan of the four primary categories of IP (about 21 years, depending on the patent type).

 

2) How does trademark law intersect with identity?

Trademarks are usually about brands, which have usually been associated entire companies. Trying to tie a trademark to an individual is somewhat more tricky, but not unheard of.

After popularizing a pose of kneeling and placing a closed hand against his forehead, athlete Tim Tebow registered his trademark in 2012, (but he apparently decided not to renew it, so it is now cancelled under Section 8—see trademark Reg. No. 4263370). From the perspective of trademark law, there was no confusion about whether someone else doing the Tebow-ing move was, in fact, Tim Tebow . The question was whether merchandise referencing the move was affiliated with or authorized by Tim Tebow. So, a signature move, by itself, really doesn’t qualify for trademark protection – whether it’s on the football field or on a screen depicting a football field. But Tebow’s main concern in getting his trademark had more to do with preserving some measure of authenticity. Because it was a deeply personal matter for him, he was trying to use trademarks to protect something about his identity, reputation, and public persona. It’s not the primary role of trademark law to offer that kind of protection, but there might be a way to make that work.

Fortnite cases drew a line about the copyright protections around dances- particularly length (and, even though the courts and copyright office didn’t say it, let’s say “complexity”). I still hypothesize that trademark protection had more potential, though it would require “building a brand” around the dance. For example, “The Carlton” is a dance actually known by the name of the character who performed it on a long-running tv series, and the performance of it generally evokes that character. In contrast, “flossing” doesn’t really evoke… backpack kid? Or whomstever?

 

3) Is the persona of the player/athlete a character? (Or Does it depend on a philosophical reconciliation of identities?)

There aren’t a lot of federal laws protection one’s right to public persona or right to likeness. But California and New York have a lot of celebrities, who tend to be the most frequently involved in cases about right to likeness.

So, here’s where the thinking gets experimental: What if we think about the persona of the esports player or streamer as both the mechanism by which monetization occurs, and as the likeness subject to protection? There is probably an entire thesis’ worth of content in unpacking the splitting and merging of identities, but I think that there could be cases where the identity of the streamer/player could be sufficiently closely connected with commerce to satisfy the requirements of the USPTO. This might be the best case for the necessary connection between “a good or service in commerce” and the “signature moves” that an esports player might be looking to protect by trademark. I don’t know how the USPTO might react to streaming as a good or service in commerce, but I think there is enough evidence to draw upon to present a sufficiently persuasive case for the point that streaming and esports meet the threshold of interstate commerce.

 

Conclusion

As far as I can tell, the real challenge to getting trademark protection for a signature move in esports is monetizing it in a way that satisfies the requirements for a trademark. I think the association and the distinctiveness are comparatively small challenges. There might be something to the idea of a special emote that only the members of a particular esports organization have—and then any use of it might reasonably be presumed to be an authorized use, which would help make the case for an esports organization preventing the unauthorized use of the emote.

Making Offensive Trademarks Legal, If Not Fashionable (Incau v. Brunetti)

Some of the most challenging cases in law (and in political philosophy) are questions about the limits of freedom. It is generally accepted by all but the most extreme anarchists that some level or order and constraint on behavior must be maintained in a society. Opinions differ greatly as to methods, reasons, and applications more specific than this.

For Americans, finding the limits on the freedom of speech found in the first amendment is a perennial challenge.

 

I) The Case

Brunetti makes a clothing line called “Fuct.” Like many people who make something, he wanted to register a trademark for his brand. However, the 1946 law that governs trademarks in the US (the Lanham Act) prohibits “immoral… or scandalous” trademarks. The US Patent and Trademark Office rejected Brunetti’s application for a trademark because they found that the mark “Fuct” is “scandalous or immoral.” Brutnetti brought the USPTO to court (the court case is named for the director of the USPTO, Andrei Incau). The Supreme Court found that Brunetti cannot be denied his trademark registration on the grounds given by the USPTO, and declared that the section of the Lanham Act that prohibits immoral or scandalous trademarks is unconstitutional as a violation of the first amendment.

This case follows a previous ruling on disparaging trademarks. In 2017, the Supreme Court decided that an Asian-American music group called “The Slants” could not be denied their trademark on the grounds of the offensive nature of the name. This ruling found that another part of the Lanham Act was unconstitutional: the prohibition of trademarks which are disparaging.

Unsurprisingly, it has been difficult to apply a law that relies on such an amorphous and malleable concept as “offensive.” Since the Lanham Act was passed over 60 years ago, the USPTO has accepted and rejected trademarks that could be considered immoral or scandalous.

 

II) Potential Problems and A Public Safety Possibility

With disparaging and offensive trademarks no longer prohibited by the Lanham Act, what constraints remain?

One of the few things that consistently beats out freedom of speech in American law is public safety. The iconic example from a case in 1919 is that the act of shouting “fire!” in a crowded theater (where there is no actual fire) and causing a panic in which people could be injured or die is not an act protected by the first amendment.

One of the foreseeable problems with opening up trademarks to offensive and scandalous terms is the potential for trademarks which seek to harm people (for example, promote violence). There are already restrictions on trademarks that prevent some confusion with official government symbols. I think there is a line of reasoning that such existing restrictions serve the purpose of promoting public safety, and therefore rejecting trademarks that threaten public safety may be permitted.

Trademarks which are grossly offensive but do not threaten public safety may be more difficult to oppose or cancel. The 2017 Matal v Tam case ended the litigation around the cancellation of the trademark for the Washington, D.C. football team. Such is the difficult and challenging nature of creating and applying law: it is always a balancing act of various competing interests, and it is very difficult to create winners without creating losers.

 

III) You Can’t Be Refused Your Trademark, But I Can Refuse To Say It

I think there’s an Easter egg in this case: a hidden, subtle lesson that I’m not sure I fully grasp. As far as I can tell, for the entire proceeding of this case, none of the justices actually used the word that “Fuct” imitates. They did not say it during oral arguments and it does not appear anywhere in 44 pages comprising five different opinions.

That word, and the use of it, is fundamental to this case. The Court handed down an opinion that required the government to not prohibit the use of a word that the Court thoroughly (almost pointedly) declined to use. This suggests interesting things about language, culture, and law. Maybe this lack of usage underscores a point about the chasm between what is legal and what choices people can make. Maybe it illustrates a kind of objection-by-performance, demonstrating that people can act and speak in ways that differ from mere legal requirement.

Although this case changes the law to permit offensive language in trademarks, the cultural sensibilities and sentiments that once prohibited such speech remain. Tension between culture and law is rarely sustainable.

 

 

Elderwood Academy’s Dicey Trademark Application

Elderwood Academy (technically, Three Frog LLC) has filed an application for a trademark on one of its products. It’s an interesting trademark because it is for the design and shape of the product, rather than a word, mark, or image associated with a good or service. It is the kind of trademark that IP attorneys describe as “trade dress,” which has a special niche place in the world of intellectual property.

A fundamental role of trademarks is to prevent consumer confusion. I actually have two of these products. The first time I saw this product, I believed the manufacturer was Wyrmwood. I was confused about this for over a year—until I tried to buy one from  Wyrmwood’s booth at PAXUnplugged. This is the kind of anecdote that suggests a need for trademark protection.

How Competitors Can Respond to a Trademark Application

When a trademark is filed, it is reviewed by a Trademark Examiner. If there are no problems, the examiner publishes it for opposition from the public. If there are no filings in opposition, the trademark is granted. Wyrmwood is one company that might have an interest in this trademark application; if Wyrmwood wants to eventually make hexagonal dice vaults, this trademark would present a problem for them. Wyrmwood will likely have an internal meeting to decide how to respond to this, and select one of three actions: 1) do nothing and forfeit entry into the hexagonal dice container market, 2) file an opposition with the USPTO explaining why the trademark should not be granted to Elderwood Academy, 3) contact Elderwood Academy and negotiate a co-existence agreement.

The “do nothing” option always has the appeal of being the easiest. However, it is much more difficult to undo that choice later. Even if Wyrmwood has never before thought about making hexagonal dice vaults, and even if they currently have no plans or designs for future production of them, it is good business to imagine the possibility of one day getting in to that market.

The option to file a notice of opposition with the USPTO has some challenges. First, the application is pretty strong. I think there are some weaknesses that could reasonably be highlighted in an opposition filing, but I doubt the trademark would be denied on the basis of the problems I can see. Regardless of the result of the opposition filing, the act of fling it may create tension between Wyrmwood and Elderwood. Preserving positive business relations is important, even between competitors. (In my view, especially between competitors!)

The third option is to work together and negotiate a co-existence agreement. These kinds of agreements are contracts made by parties that have competing or potentially competing interests when a trademark is filed. Sometimes the agreement includes an acknowledgment that a trademark does not infringe or create a likelihood of confusion. Sometimes the agreement will effectively relinquish the use of a trademark in a certain area, or will include a promise to not attempt to enter a certain market or create a certain kind of product.

In this case, Wyrmwood might offer to promise to never make hexagonal dice vaults in exchange for Elderwood’s promise to never make dice towers or deck boxes. There are many promises and exchanges that the two companies might offer in order to avoid any opposition or conflict over the trademark. The two companies (or their attorneys) might create the agreement collaboratively, or they might enlist the services of a mediator to help them explore value-creating opportunities.

Cooperating Competitors

The products made by both Wyrmwood and Elderwood are used by tabletop game players- especially D&D players. The game D&D works best when everyone at the table cooperates, even when characters have conflicting goals/drives/motives. The Dungeon Master likes it when players and characters can work through their differences to cooperate. Otherwise, the DM has to make a ruling and that usually makes at least one player unhappy. In the same way, the Trademark Trial and Appeals Board (the authority that adjudicates trademark disputes) likes it when competitors can reach their own agreements and get along without needed a ruling.

Will Wyrmwood file an opposition? It depends a little on their business philosophy, their future plans, and their relationship with Elderwood. It’s certainly best if they work together.