The Very Hungry Caterpillar: Is Caterpillar Going Too Far To Protect Its Trademarks?

A thousand years from now, the legends will say that cats invented the internet as part of their plan. Of course, sophisticated scholars will snort, scoff and explain, “Actually, cats only invented the meme.”

If that is funny, it’s mostly because of the ubiquity of cats in 21st century culture. Domesticated felines have been a dominant, widely-recognized force on the internet. My evaluation of the Caterpillar v Cat & Cloud trademark dispute is that it shows how the internet affects trademark strategies (a break from the persistent and well-established analysis of how the internet has affected copyright strategies). I think it also raises an interesting, esoteric question about truncated marks and interpretation of meaning.

I think Caterpillar has two problems: 1) Cat is a really terrible mark in a cat-crazed culture, 2) The truncated mark foists cat troubles on them

Caterpillar’s Trademarks

It’s important to protect trademarks. Trademarks, arguably more so than other IP, have a way of slipping away if you leave them unattended. Copyrights and patents eventually expire, but trademarks last as long as they are used, maintained, and defended. A trademark can become generic, or it can be slowly encroached on in ways that make it harder to defend later. Caterpillar understands the importance of trademark vigilance, and has initiated at least two major trademark proceedings in the last few years, following a significant number of new trademark registrations in 2015. (See CAT Registrations: 4804263-275. All filed in 2014 and issued in 2015.)

PetraCat, An Energy Services Company

In April 2015, Caterpillar and PetraCat argued before the Trademark Trial and Appeals Board (TTAB) on the question of whether PetraCat’s trademark was too close to Caterpillar’s trademark. Caterpillar opposed the registration of PetraCat’s mark out of concern that consumers would be confused by the similarity of the marks. It was an interesting question with reasonable arguments from both sides, but the TTAB ultimately concluded that there was enough similarity to be concerned about consumer confusion.

 

Cat & Cloud, a Coffee Shoppe

In August 2018, Caterpillar filed a cancellation proceeding against Cat & Cloud, a coffee shop based in Santa Cruz, CA. The easy criticism to make is that there is no likelihood of confusion between the goods or services of these companies, but that criticism would be misguided. Trademarks are registered with the USPTO according to categories (called “classes”). Caterpillar is not concerned about the use of trademarks with respect to providing beverages; Caterpillar is concerned about the class of goods that the two companies share: shoes, hats, t-shirts, and other merchandise. This at least establishes some overlap about which there is even fathomable confusion or contention—but is Caterpillar reasonable for pursuing a cancellation proceeding?

 

When discussing any trademark dispute, two subjects are virtually unavoidable: the strength of the marks and the likelihood of confusion.

 

Trademark Strength: Ranking Your Advertising Department’s Imagination

Trademark strength (or distinctiveness) can be thought of as existing along a spectrum that runs from “weak” on one end and “strong” on the other.

Fanciful – When you make up a word that has no other meaning in the language (Xerox, Frisbee)

Arbitrary – When you pick a word that already exists and has a meaning, but has nothing to do with your goods or services (Apple, for a computer company)

Suggestive – When you use words that are related to your goods or services, but don’t quite describe them.

Descriptive – When your trademark more or less describes your goods or services.

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Generic (no protection) – When your trademark is the word everyone uses for your product, and then you lose trademark protection because the language has claimed your trademark as its own. This happens most tragically when a fanciful mark dominates the market too well. Aspirin is the seminal example of a trademark lost to genericism. Xerox corporation fights this risk, as does Google. Marks frequently at risk for this include Band-Aid, Frisbee, Velcro, and anything that everyone you know calls by its trademark name even when referring to the general good or service.

So, how do we rate these marks?

I would argue that Caterpillar’s full mark is descriptive, as it describes a style of tread-and-wheel movement for heavy machinery. (I could also see the argument that Caterpillar is a suggestive mark, because it could be said to suggest to the mind the slow and steady motion of a grub… but I’m not entirely convinced.) On the other hand, the mark “CAT” is… well, truncated. It wouldn’t even be part of Caterpillar’s trademark portfolio if it weren’t for the fact that it’s just the first three letters of the word “caterpillar.”  But “cats,” conceptually, have nothing to do with Caterpillar’s business.

And this is where Caterpillar’s problems start.

Caterpillar is not interested in aligning their branding with felines- Caterpillar is interested in the first three letters of their company name. As a mark, it’s arbitrary (insofar as cats have no conceptual relationship with bulldozers or cranes—though maybe there’s a long-shot argument that cats sometimes dig, and some of Caterpillar’s machines dig). But it’s only an arbitrary mark if Caterpillar can claim the feline meaning of “cat.” The recurring question that determines a lot about Caterpillar’s mark is what the mark actually means.

Here’s the most interesting question in this dispute that I’d like to see the USPTO answer: when a truncated mark happens to spell a new word that has no common meaning with the original mark, does the truncated mark adopt the meaning(s) connected with the truncated mark as though that mark was not a truncated mark? To put that in context: does Caterpillar’s “CAT” mark mean “a feline” or does it mean “short for caterpillar”? If Caterpillar can claim the new meaning, this could elevate their mark strength from “Suggestive/Descriptive” to “Arbitrary.”

On the other hand, “Cat & Cloud” is either arbitrary (because neither cats nor clouds have anything to do with coffee) or suggestive (because cuddly cats and cloudy, overcast whether evoke an image that seems more complete with a warm cup of tea or coffee). If it is suggestive, it is one of the most abstractly suggestive marks I’ve seen. If it is arbitrary, it is one of the more thematically-attuned marks I’ve seen.

 

Likelihood of Confusion: The Quintessence of Trademark Disputes

Almost every trademark dispute comes down to an examination of the likelihood of consumer confusion.

The Likelihood of Confusion Factors Are:

Relatedness of Goods or Services

Similarity of Marks

Similarity In Appearance

Similarity In Sound

Similarity In Meaning

Design Marks

Likely to Deceive

The actual goods and services of these two companies are far apart. However, the subject matter at issue is the merchandise that is ancillary to both businesses. As far as the trademark analysis is concerned, a shoe is a shoe, and a t-shirt is a t-shirt, so the goods are considered related for the purposes of this analysis. I think there is still some argument to be made for Cat & Cloud that the shoes themselves might be very distinguishable (as I understand it, Caterpillar shoes tend to be steel-toed boots designed for rough construction work, while Cat & Cloud makes lighter-wear, everyday walking shoes). A significant distinction between shoes might be enough to argue that there is less likelihood of confusion.

The marks display a weak similarity. Both marks contain the word “cat,” though the shortness and commonplace nature of the word make this barely noteworthy. The inclusion of a substantive element with “Cat” is sufficient to establish the marks as dissimilar. This also addresses questions regarding similarity in sound and in meaning.

Similarity in appearance only seems plausible if the words “& cloud” are significantly smaller than the word “Cat” in the mark of the defendant. Furthermore, to address the design elements, Caterpillar has carefully cultivated a stylized typeface and design that is distinct and recognizable and, to my understanding, this has not been remotely imitated by Cat & Cloud.

To the factor of similarity in meaning: this is sufficiently addressed in my analysis regarding mark similarity, but I think there is an additional point to be made. Given the context of the trademark “CAT” for the company Caterpillar, it is not clear on its face that the plaintiff’s truncated mark is actually intended to mean or signify a member of the taxonomic family felidae. I don’t think this matters much because of the dissimilarity of the marks, but I am not convinced that there is actually any similarity in meaning. I bring this up because I think it points to the central, recurring problem for Caterpillar’s trademark.

Finally, it seems profoundly unlikely that either mark will serve to deceive consumers. It is truly difficult to imagine a serious scenario in which a consumer seeks out a hat or t-shirt sporting the trademark of one company and mistakenly purchases a product from the other company.

 

Bonus Find: Google Hints at a Huge Branding Problem for Caterpillar

While researching for this blog post, Google offered me additional helpful information regarding other inquiries about Caterpillar, Inc. Google indicates that the number one question that average users have about Caterpillar is whether it is also Cat:

 

Caterpillar problem

 

That is a huge problem. That is a failure of branding. That is the “Where’s the Beef?” advertisement all over again. (An enormously popular advertisement, yet consumers failed to correctly identify the advertisement with the correct brand, product, or company.) Maybe Caterpillar is scrambling to bat down other trademarks in the hopes that consumers will know who they are if they are the only company left with a cat-related trademark.

This is a bitterly ironic discovery. This lack of brand understanding isn’t Cat & Cloud’s fault. It isn’t anyone fault besides Caterpillar’s. If consumers don’t connect a trademark to a company, it doesn’t matter how thoroughly that company defends the trademark. Caterpillar doesn’t have a likelihood of confusion problem with competitors or other companies outside of their industry. Caterpillar has a likelihood of confusion problem with itself. Maybe marketing should work on reconciling the “CAT” and the “Caterpillar” before the company invests in aggressive trademark protection.

Perhaps this confusion is the effect of Caterpillar’s own identity crisis: Is this a Caterpillar company or is this a Cat company? Caterpillar might resolve a lot of its problems if it picked one animal and stuck to it. Perhaps Caterpillar set itself up for an IP portfolio headache by stretching its trademarks as far as its goods when it decided to become a clothing and heavy machinery company that is known as two completely different kinds of animals.

 

The Charitable Interpretation

Despite the bad press Caterpillar is getting, I think there is an empathetic viewpoint: Caterpillar is actually in a very weak position, and they are compensating with an aggressive strategy. “CAT” is actually a sub-optimal trademark, and Caterpillar feels stuck with it.

Caterpillar has two facts against them:

1) Their truncated mark spells “cat”

2) Cats are exceptional popular, wide-spread, well-liked, and generally excellent subjects for brands

I don’t think Caterpillar ever wanted to be a cat company; they didn’t name their company after anything remotely feline. The irony is that Caterpillar probably doesn’t want to be defending “cat” as a trademark — after all, the company never really picked it. Caterpillar is unlucky to have a truncated mark that happens to spell “CAT,” and the company is concerned about how difficult that mark is to protect. After careful consideration, the company has decided that their best chance at protecting their truncated mark is to aggressively seek out trademarks that involve the word “CAT” and pursue actions against those trademark holders.

Caterpillar seems to be leaning into the hand they’ve been dealt: the company applied for two more trademark registrations last August that incorporate some honeycomb design into the mark (Serial numbers 88080972 and 88080934). I think we’ll know that Caterpillar has gone too far if the company pursues actions against other companies that make any use of honeycomb lattice designs in their logos, marks, such as Post Foods (for their Honeycomb cereal) or the American Beekeeping Federation.

 

Conclusion: Can’t Own Every “Cat”

The troubling fact for Caterpillar’s IP management is that their truncated mark happens to be an entirely different English word—an extremely common, extremely brand-able (because of the American fondness for cats) English word.

This accidentally expands the range of what Caterpillar has to consider when thinking about IP protection. It turns out that Americans like cats, and associating with something positive is a classic brand-building technique. So a lot of companies are prone to incorporating felines into their branding. This shouldn’t have anything to do with a company named after a butterfly larva, but trademarks are more about language than they are about zoology.

There are 2459 results for live marks in the USPTO Trademark Database with the word “CAT.” Caterpillar can’t deny IP ownership of every “cat.” But Caterpillar can’t idly sit by and let their trademark fade into oblivion because cats got a popularity boost from social media.

The central battle in IP is defining the boundaries of ownership (this is what it has in common with other types of property law). Caterpillar surely understands that no single company can own every instance or usage of the word “CAT.” But Caterpillar just as surely understands its risks: that a mark like “CAT” is extremely difficult to protect, and is likely to become a weak mark without constant vigilance.

There are strategic reasons for defending IP aggressively. But somewhere, there is a line between an aggressive defense and an offensive offense. Although Caterpillar’s strategy is understandable, there has to be a limit to a trademark portfolio. If Caterpillar hasn’t crossed that line with its cancellation action against Cat & Cloud, it surely must be getting very close.

 

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I have to include the caveat that there may be more to this particular case than is apparent. Research on open litigation is challenging. Seemingly insignificant or unimportant details can completely alter the course of a legal analysis. As always, nothing in this post constitutes legal advice and is for educational purposes only.

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Fun Fact: Caterpillar owns the second oldest “Cat” mark in the TESS database.

Second oldest CAT mark: 0564272, issued Sept 1952

Oldest Mark: TOMCAT:  0552420, issued Dec 1951.

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Bonus Background Trademark Knowledge: Two Types of Proceedings

What is an Opposition?

An opposition proceeding is when one party applies for a trademark, the USPTO says, “If anyone doesn’t think we should approve this trademark, speak now or … well, file a cancellation proceeding later.” An opposition is another party speaking up just before a trademark is granted.

Trademark owners sometimes file oppositions that sound egregious. But filing an opposition is sometimes just a way of announcing that you care about your trademark; in some of the more outlandish cases, the opposing party doesn’t really expect the USPTO to deny the application—the opposing party is just establishing a record. Other times, the opposing party really does think that there is a legitimate concern with the applicant’s trademark. The proceeding between Caterpillar, Inc. and PetraCat was an opposition proceeding (and as a result, PetaCat was not granted a registration for their trademark).

 

What is a Cancellation?

After the USPTO has approved an application and given a certificate of registration to a trademark holder, sometimes another party realizes that there is some reason that the trademark registration should be cancelled. A cancellation is different from an opposition in the fact that the defendant has already received a trademark registration. This gives a little bit more of a presumption of legitimacy to the defendant than the applicant has in an opposition proceeding. The proceeding between Caterpillar and Cat & Cloud is a cancellation proceeding.

 

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What Slay the Spire can Teach About Digital Media Access Decisions

When I heard that iTunes was scheduled for destruction, I was baffled and alarmed. I have since learned that the service is being split and re-branded, in a sort of platform-mitosis. But I had several conversations in which my interlocutors were not persuaded of the merits of media ownership over streaming media. Having collected my thoughts, and faced with Google’s Stadia announcement as well as even the phantasmal threat of an iTunes closure, I hope to make a case here that media ownership reduces wildly unpredictable and uncontrollable elements of media consumption.

Slaying The Spire, With Just a Little Luck (Or a Lot of It)

Slay the Spire is a rare case in which combining a lot of ideas into a game doesn’t make the game feel chaotic and confusing. The game consists of progressing through the levels of an eponymous spire, each level consists of some encounter or event—very, very often, a combat event. Combat in this game is a resource-management card game: using a limited pool of “energy,” cards are played that either deal damage or prevent damage from being taken. Each card costs a different amount of energy, so strategic choices have to be made to optimize offense and defense. At the end of a combat, the player is presented with three choices for a new card to add to the deck. The same deck is carried through the spire, so each completed combat presents an opportunity for new cards for future encounters.

Slay the Spire gets its replay value from the unpredictable factors that permeate the game. There is randomness within the combat encounter, as a player’s options are defined by the cards that are drawn from the deck on any given turn. Then there is further randomization in the events themselves (what enemies you fight, if any, on any particular level of the Spire). Slay the Spire adds randomness in the building of the player’s deck: there are no guarantees that you will even have the option to add a certain card to your deck in a particular run of 50 levels in a Spire. (I once spent an entire run through a Spire trying to assemble a deck centered around one specific card that would greatly amplify my defensive capabilities—I never even saw that card, and inexplicably still got to the final level.) And I haven’t even discussed the role of Relics in the game, which can provide small bonuses or fundamentally alter game mechanics. All of these unpredictable, randomly-generated chances and choices give the game replay value and make it interesting, fun, and challenging. Putting choices out of a player’s control can be an element of a great game, but it’s not a part of a great day.

 

Unpredictable Elements

There are a lot of components involved in the everyday digital tasks that fill (and sometimes sustain) our lives. The device has to work properly, it has to connect to a network, the network has to function, and we also rely on the server that hosts the data we want. Anything from dropping a cell phone to a power outage to an unplugged cable somewhere in a distant city can cause the entire process to fail. It is really amazing and awe-inspiring that the entire system works as well as it does. Of course, sometimes, something goes wrong.

For purposes of today’s discussion, I think it’s helpful to divide the possible problems into two categories: those in the user’s control, and those outside of the user’s control. So, whether I charge my cell phone, whether I spill water on my computer, whether I use a program correctly—those are, practically speaking, in the domain of the user. However, the city’s electrical power grid is not something a user can single-handedly maintain or repair. Similarly, the user cannot control conditions at a distant server farm, or control the telecommunications network that links the user to those servers.

This, it seems, is where I diverge from so much of my demographic cohort. I don’t want my access to media to rely on these two additional components (telecommunications and data-holding servers). Maybe I would feel differently if I had better experiences, but I have repeatedly been unable to play games or watch movies because at least one of these components has failed. I have encountered this setback for over a decade- in some cases, I have experienced it daily, over the course of months. In contrast, when I think back to those halcyon days in which I owned my media, the only obstacle was a scratched DVD or a VHS tape that was just too-well-loved (we all have a childhood story of the tape that we watched so many times that the playback became warped and distorted).

Conclusion

The unpredictable nature of the available choices in Slay the Spire keeps an otherwise repetitive game novel and engaging. By forcing the player to consider various probabilities and possibilities, the game creates challenge and the kind of frustration that invites a player to learn, try again, and do better next time. I cannot understand the kind of person who willingly invites this kind of challenge and frustration into the process of trying to listen to music or watch a movie. Conversely, if a player had control over any of these random elements in Slay the Spire, the game would be easier. For both Slay the Spire and media access, generally, the same rule applies: the more control one has over the variables, the less challenging the experience.

There are other issues implicated in this debate that I didn’t touch on: the data privacy questions that come with streaming and DRM protections, the reasonable efforts of artists and publishers to protect their copyrights and profit from their works, the legal status of digital goods, etc. Those issues deserve consideration (which is why I have written about them before and will do so again), but I wanted to keep my focus narrow for the sake of clarity. My perspective on this question can be distilled to one personal point: I do not feel that there is evidence to support the claim that US telecommunications networks are more reliable than I am. I simply trust myself more than I trust those corporations, their services, and their infrastructure. Likewise, I trust myself more than I trust the media companies that provide the platforms and media. This is true on a day-to-day basis (for telecom), and it is true for long-term planning (media providers make no promises that they will last longer than my interest in the media they provide).

I can trust electricity providers—they have proven themselves. Power outages certainly do occur, but their frequency, cause, and duration are within acceptable parameters.* Maybe it comes down to what inconveniences, unknowns, and probabilities we are willing to accept. I can live in a world where my electricity is out for maybe 30 minutes per year. I’m not excited to choose a world in which I can access my own leisure at the leisure of so many other people.

 

 

 

 

*The fact that power failures necessarily cause network failures would be a meaningful riposte if my point were strictly confined to unadjusted uptime comparisons.

Meme Collective: A Strange Hope

Steve Jobs always wanted Apple to be a large, powerful force. Mark Zuckerberg wanted a way for students at Harvard to know who was single and a way to make plans for parties. Some tech companies, products, and platforms, were made with an eye to global scale—but some weren’t. Because the internet has always been a collection of people forming communities, it has always had hallmarks of organic growth—specifically, it has always had surprising, unplanned successes. In many ways, the internet itself is something of a surprise, unplanned success: it went from a science project, to a nerd hobby, to a general luxury, to a utility. Unplanned success can bring a lot of problems. As the internet got popular, copyright law suddenly took on entirely new scope, meaning, context, and purpose. But just like some tech products and companies struggled under the weight of their own popularity, copyright law has struggled to bear the weight placed on it by an internet of creative, collaborative users.

Meme Union

Instagram is a cultural surprise (except perhaps to Jean Baudrillard) in and of itself, but it’s still surprising to read that the creators of memes are banding together to form a union. The underlying reasoning is understandable: these creators: 1) Make a living by creating content that is uploaded to Instagram, 2) Bring in significant advertising revenue to Instagram as a result of this content, 3) Have no kind of guarantee or assurances regarding Instagram’s behavior. It’s an incredibly interesting scenario that has happened with professional content creators: the overall structure of employment has happened without any agreement or discussion. I interpret the effort to unionize as an effort to formalize an informal, de facto employment.

There is one other very unusual wrinkle regarding this informal, organic employment: a lot of it is probably illegal, and almost no one takes that seriously.

 

Are Memes Legal?

In a TED Talk, Lawerence Lessig pointed out that remix culture that is so prevalent online is a violation of copyright law. Among other problems, he feared that the generation primarily involved with the creation of this media would develop a callous indifference towards the law as that generation became accustomed to ignoring laws that failed to keep up with technology and culture.

Memes function on the idea that a copyrighted work is a blank canvas. The problem behind remixes and mashups is that these new works use existing works of others. I don’t see the distinction between a meme and a remix, except maybe for two things: 1) minimal use, and 2) original additions. However, there are problems with both of these potential justifications for memes. The uses rarely qualify as minimal, and copyright law is unclear (at best) about what kind of original additions would be enough to allow the new work to be declared non-infringing.

Of course, it is possible to make a meme without infringing copyright: using photos from the public domain, or photos to which the creator also owns the copyright, for example.

 

Will Unions Like This Modernize Copyright Law?

This strange moment is exciting because it’s a moment of cultural evolution. The unionizing effort may or may not work out in this case, but that’s almost irrelevant to the larger picture. This is a significant step toward an internet that blends user-generated-content and ecommerce (arguably, two of the biggest buzzwords and applications for the internet from the ‘90s and ‘00s). It’s also exciting to see how quickly new media is commanding economic force. The concept of watching professionals play video games is still surprising and baffling to millions of people—while streamers and pros sign sponsorship deals with Fortune 500 companies.

The most exciting prospect is the effect that the increased economic attention could have on changing copyright laws. Copyright policy has really struggled to find a powerful force that advocates for user-generated-content accommodations. Indeed, the fiercest advocates for copyright policy have been major copyright holders (movie and music studios). Non-profit organizations have made noble efforts to present counter-arguments to the interests of the major copyright holders, but there has not been a concerted effort of content creators on new media to affect policy change. An Instagram Meme Union is a surprising starting point, but it might be a good starting point.

Dancing Carefully Through An Analysis in Intellectual Property Law

Epic Games Dances Into Players’ Wallets

The hit game of 2018 (released by Epic Games in 2017) Fortnite is getting multiple lawsuits from different performers regarding the use of dance moves available for use within the game. The game allows players to command their avatars to dance, and players may select from a range of available “dance emote” options – available for individual purchase by players (generating over billion dollars for Epic). The plaintiffs allege that some of these options are depictions of the dance moves of celebrities and entertainers.

This case hits most of the usual notes of hard cases in intellectual property: where is the line between homage and plagiarism? How much use of a thing violates fair use? What can be protected by intellectual property law? This case is also an example of how easy it is to think incorrectly about an issue in intellectual property. If we focus too much on understanding why Epic might use the dances of famous people, we can fool ourselves into thinking this is a trademark case. When we approach this case by first assessing what subject matter is at issue, we recognize this as a copyright case. The fact that a dance can be understood, culturally, as a kind of signature is what can lead us into an incorrect analysis of this case as one of trademark and not copyright.

 

It Might Be Your Signature Move, But You Don’t Sign Checks With It And You Don’t Get a Trademark Registration For It

Movements or motions can act as a kind of signature for people—especially those in the public view who want to be remembered. Carol Burnett ended her show with a tug on her ear.  Johnny Carson imitated a golf swing after delivering punch lines in his nightly monologue—Conan O’Brien made a joke of trying to incorporate overly elaborate “signature gestures” into his show during his debut monologue. YouTube performer PewDiePie has made a point to regularly associate himself with a “BroFist” gesture. Politicians often have an associated hand gesture—like Bill Clinton’s half-fist-with-thumb-on-top. A person’s idiosyncrasies make it easy to identify, imitate, and remember them—and imitating a celebrity’s signature movement can invoke an audience’s positive attitudes towards that celebrity. Invoking the goodwill associated with a person for the benefit of someone else sounds strikingly similar to a case of trademark infringement.

So, can dance moves be protected by trademark? If we think of dance as a signature, then it sounds like a kind of source indicator– people associate the dance with an entertainer. But it’s not really used to indicate the origin of a good or service:  NBC doesn’t use Turk’s dance to inform viewers that they’re watching the show Scrubs. And this is why the trademark analysis is the wrong way to think about this case: although the reasoning in the infringement looks like the reasoning involved in trademark infringement (to take advantage of the fame of a celebrity), the subject matter (a dance) is not normally in the domain of trademark law.

It might not be impossible to get a trademark registration for a dance, but it would be difficult. Maybe a dance submitted to the trademark office as part of widely-run marketing campaign could meet a trademark standard. Or a product or service is actually provided with – or because of—the dance might qualify for a trademark registration. I’m not sure if either would earn a trademark registration (it would depend lots of other facts in the trademark application), but it would take a very high level of creativity and ingenuity to secure a trademark registration for a dance.

 

So It’s a Copyright Question?

When we start with the question of subject matter (and not by wondering why someone might copy a dance), we recognize that a question about the depiction of a dance is most likely a question under copyright law. Copyright law recognizes dance as a medium of artistic expression. It makes sense that, if plays and scripts can be protected by copyright, (and copyright protects musical compositions and performances), then copyright can protect the work of dancers and choreographers in ballets, musicals, etc.

Copyright attorney Shanti Sadtler Conway explained, “The U.S. Copyright Office views individual steps the same way it would individual colors or words.” This is interesting for a few reasons, one of which is that colors and words are better defined and understood than the concept of “an individual dance step.” In this case, there are certainly at least several “steps” depicted in each of Fortnite’s dance emotes- the dances appear to last at least 10 seconds. Is that a paragraph’s worth of content, when converted from choreography to prose? A paragraph can be enough to be punishable infringement.

 

The Seminal Question of the Internet: “Is it FAIR USE?”

The two misconceptions I see most often about fair use are 1) “it’s fair use if I don’t make money off it,” and 2) “it’s fair use if I only use a little bit.” Those two things are often among the things that a judge might consider when evaluating whether a use is protected under 17 USC 107, but using even a small percentage of a work might still infringe a copyright.  So, Epic might try to claim fair use, but I’m skeptical about how the court might receive that argument. It might work, but a for-profit, non-transformative, non-parody use of a work does not point to fair use – and, indeed, it likely concedes the point that Epic used someone else’s work.

 

Is This Appropriation of Personal Likeness?

It’s worth reflecting on how easy it was to think of this case as a trademark issue. The reason the case looked like a trademark question was that the alleged infringement appears linked to the fame and celebrity of certain individuals. There is another area of law that can address this kind of claim: right of publicity. These state laws touch on ideas in both copyright and trademark law, and apply them specifically to the depiction or representation of a person.

In 1988, Ginger Rogers lost her case against a filmmaker who made a movie referencing her in the title (though the film was not about her, some general elements evoked her career as the Hollywood dance partner of Fred Astaire). She brought claims under trademark law as well as claims regarding her right of publicity. Sadly for her, the court held that “minimally relevant use of a celebrity’s name in the title of an artistic work” was not a violation of Rogers’ rights. Although it wasn’t a Supreme Court decision, the case became the landmark for the use of celebrity references in artistic works that are not about that celebrity. (Maybe this loss is why Rogers did not even bother suing Madonna for the mention of Ginger Rogers’ name in the 1990 song “Vogue.”)

Legal questions of the use of personal likeness in video games are getting more attention in recent years, especially for athletes in sports games. (This, in turn, has caused questions of the copyrights of the tattoos of those athletes.)  It’s not clear whether a depiction of a dance associated with a performer infringes a right of publicity. If the court can accept the legal concept of a “signature dance move”, then the claim seems to meet the test given in the Rogers case. It would be very interesting to see if this litigation expands the claims that can be brought under right of publicity laws.

 

Conclusion: Trademark, Copyright, and Right of Publicity Have Similarities, but They’re Still Legally Distinct

Thinking about the use of someone else’s fame makes it easy to think of a trademark issue, but in this case, a fundamental analysis precludes trademark and points to copyright. However, remembering the role of fame leads to thinking about possible claims under right of publicity laws.  In legal analysis, it’s important to address the most fundamental questions before speculating on motive or intent.

Trademark law has a lot of purposes and roles. One function of trademark law is to protect the goodwill, fame, and celebrity that a person or company worked to build up, and prevent other people from taking advantage of that work without permission. However, not every case of using someone else’s fame is a trademark case.

 

 

Endnote- Patents

Can dance moves be protected by patent? This is a non-starter. 35 USC 101 outlines eligibility for patentable subject matter as “new and useful process, machine, manufacture, or composition of matter.” Obviously, choreography isn’t considered an invention or discovery that fits those categories.  Debates about patentability are fierce and complicated, especially as humanity explores new territory in medicine  and computer science.  I wonder whether dance will be considered for patent when it is programmed into a hologram’s performance (the choreography itself will likely be exempt from any patent) or when it is created by an AI system that is patented (I think this will be a more complex argument over whether this is a process for creating choreography).

 

Popularizing Formats For Sitting At a Table and Having a Spirited Discussion

Mediation has a surprising amount in common with the tabletop game Dungeons and Dragons.

1) Most people know very little about either one.

2) People who have heard of it often think it’s a waste of time, and may deride those who support it.

3) Neither are promoted in mainstream culture.

4) The formats bear some similar appearance: Several people sit around a table. One person seems to be “in charge,” but really, that person is just helping the other people at the table actually make meaningful decisions by providing structure and clarity for the process.

5) Neither one has a final, decisive ending that declares a winner. Rather, the purpose for both activities is to have a mutually satisfying experience and outcome; everyone wants to walk away from the table feeling like it was a worthwhile investment of 3 hours (… or 5 hours… or 18 hours…).

6) The enemy that must be defeated is abstract in both cases. For D&D, it’s the… well, the Dungeons and Dragons that must be overcome (it’s extremely clear naming). In mediation, it’s the conflict itself that is the enemy– not the other person.

More people than ever are playing D&D- and even filling theaters to watch professionals play it. Can mediation find the same increased acceptance in our culture?

 

The Wizardry of Brand Management

D&D surged in popularity in the last few years. The owner of the game and the brand, Wizards of the Coast (WotC), has rebuilt and redesigned the rules and format several times since taking over the trademark in 1993. When launching the 5th edition of the game in 2014, WotC leveraged social media to demonstrate how the game worked. The 5th edition was easier to understand, easier to play, and easier to watch than any previous edition. These changes made it more inviting for new players and also made it much more of a spectator event, which fit with the use of streaming services like Twitch and YouTube. Enthusiasts started to publish their own gaming sessions online, effectively turning their gaming product into a TV show—sort of a strange inverse of how most children’s cartoons worked in the 80s and 90s to sell toys. Like so many video games that now comprise the esports corpus, D&D became a game that collected an avid fan base and consistent spectators to fill streams and theaters. Podcasts, streams, and live performances have introduced thousands of new players to the game, as well as rekindled the imaginations of those who have not rolled a twenty-sided die in decades.

Despite their broad similarities, mediation has not exactly kept pace with D&D’s surge in popularity. Despite the overwhelming difference in cost, time, end (arguably) effectiveness, litigation remains the gold standard for dispute resolution in matters of legal consequence in the US.

Courtroom drama television shows, (and “procedurals,” generally) have done well in the US. A regular program centered on mediation could easily do as well as any long-running legal procedural show. Wizards of the Coast brought D&D out of derision and obscurity (even dismissing alleged satanic affiliations) by making it comprehensible and accessible. They used every possible tool to present an alien an esoteric game structure in a way that was engaging and entertaining, while at the same time gently informing viewers who simply watched the process.

 

Two Obstacles To Mediation’s Popularity

There is a snag in the economics of promoting mediation:  Wizards of the Coast is financially incentivized to promote their D&D product. A lot of wealthy people and companies are not necessarily incentivized to promote mediation as a primary form of dispute resolution. Trials can be incredibly expensive, and their complexity and cost often favors the side with more money to hire more experienced attorneys. Those with advantages of any kind, in any setting, are typically unwilling to give up those advantages. If the US legal system creates any advantage for those with power or wealth, it is easy to see why power and wealth would not be used to promote an alternative method of dispute resolution.

The other primary obstacle is the lack of cohesive ownership over mediation. D&D is a gaming product owned by a single company, and so decisions surrounding its brand management are made by a single entity. Mediation is a broad structure of dispute resolution, not owned by any particular body. Indeed, it is not the kind of thing that is subject to trademark or patent protection. There are trade groups and individual specialists who would like to see mediation increase in popularity, but there is no single entity with resources and authority over mediation. It is not comparable to the relationship of a company with its product. The lack of a trademark or ownership makes branding extremely difficult. Wizards of the Coast is able to manage D&D carefully, shutting down counterfeit products and distinguishing itself in the gaming market. Mediation is not the kind of thing that is subject to trademark protection.

 

The Cultural Boost for Competitive over the Cooperative

If popularity is about brand management, mediation seems condemned to obscurity because that brand can’t be effectively managed.

But how did litigation get popular without a trademark and a livestream? Perhaps the adversarial attitudes in litigation fit naturally with a competitive culture. Litigation so often becomes about beating the other side, rather than beating the conflict itself. Mediation is most successful when each side sees the obstacle as the conflict itself, and everyone works together to defeat that problem—not to defeat each other.

Despite the epithet of “rules lawyer” to describe many D&D players, a society that played more cooperative tabletop games would probably be less litigious. Taking a few hours to learn to work with someone who has different personal objectives from your own is an unusual activity in our culture, but learning to listen and cooperate might have value in an increasingly interconnected and networked society.

Evil Vines Choking Out Unenumerated Protections (An Afterthought on Legislating for Changing Technologies)

Legislation always faces a problem of enforcement. That problem can take many shapes: lower courts or police may refuse to enforce the law, citizens may refuse to obey the law en masse, or crafty schemers may look for loopholes and technicalities so they effectively break the law without penalty. There are multiple laws, cases, opinions, and all other legal indications that children merit special and particular protection online and in digital interactions. However, there is no law specifically forbidding inflicting digital violence on a child’s avatar in a game until the child pays non-digital money— and I’m almost surprised it took so long for someone to find that opportunity. I think Penny Arcade misunderstands the problem. The problem is that all of those legal efforts to protect children could never cover every possible way that someone might try to exploit a child in a digital setting. When someone wants to exploit people for money, they only worry about the law in three ways: not getting caught, not getting tried, and not getting convicted.

This kind of example raises concerns not just in the video game industry, but across industries affected by the new General Data Protection Regulation. It would be unfairly cynical to even hypothesize that every company is nefarious, of course. A good many companies have a genuine desire to uphold the GDPR rights of their users, and their task is to work toward official compliance with the GDPR requirements– a few will even go beyond that minimum and take further measures for privacy and security. Notwithstanding, some controllers and processors still want to exploit their users, and their task is now to figure out how to sneak over, around, or through the GDPR.

 

In Both Overcooked And The GDPR, Execution Matters More Than Ingredients

I deliberately avoided playing Overcooked for a long time because so many review joked about the fights it causes with friends. Now that I’ve played it, I barely understand why it’s such a divisive experience for so many people. The game is charming and delightfully fun. Players work together in kitchens filled with obstacles (food and tables often move during the round, forcing players to adapt) to prepare ingredients and assemble meals for a hungry restaurant– though the diners are sometimes floating on lava floes and sometimes… the diners are penguins. The game is about coordinating and communicating as you adapt to changes within the kitchen. Maybe the reason so many people throw rage fits during this game is that they are not good at coordinating an effort and communicating effectively. In any case, the game isn’t about food so much as it’s about kitchens (especially in restaurants). So the game doesn’t focus so much on the ingredients as it teaches the importance of working together in chaotic situations.

People are focusing  a lot on the ingredients of the new EU data privacy law– particularly the consumer protection rights enumerated in it. However, there is very little talk about the bulk of the law, which is aimed at the effort to coordinate the enforcement and monitoring mechanisms that will try to secure those consumer rights. The rights listed in the GDPR are great ingredients– but as Overcooked teaches, it takes both execution and ingredients to make a good meal.

Supervisory Authority: How We Get From Ingredients to Meal

I’ve read a lot of articles about the General Data Protection Regulation, and I notice two common points in almost all of them: 1) the GDPR lists data privacy rights for consumers, 2) this is a positive thing for consumers. However, after reading the entire law, I think this is a gross oversimplification. The most obvious point that should be added is overwhelming portion of the statute that is devoted to discussing “Supervisory Authorities.” The GDPR may list a lot of consumer rights, but it also specifically details how these rights are to be enforced and maintained. This law prescribes a coordinated effort between controllers, processors, supervisory authorities, and the EU Board.

As described in Article 51, 1, a supervisory authority is a public authority “responsible for monitoring the application of this Regulation, in order to protect the fundamental rights and freedoms” that the GDPR lists. Each member of the EU is required to “provide for” such an authority. I can only speculate that this would look like a small, specialized government agency or board. This supervisory authority is required to work with the various companies that hold and process data (“controllers” and “processors” in the GDPR) to ensure compliance and security. The supervisory authority is responsible for certifications, codes of conduct, answering and investigating consumer complaints, monitoring data breaches, and other components of a comprehensive data privacy program. The supervisory authority must be constantly and actively ensuring that the rights in the GDPR are made real.

If the supervisory authority can’t coordinate the effort with the controllers and processors, the rights in the GDPR are just delicious ingredients that were forgotten about and burned up on the stove.