The INTA Young Practitioners Committee hosted a panel discussion and reception on March 22, 2017, called “Trademarks and Video Games (or: How I Learned to Stop Worrying and Love the Lanham Act).” The event was held at the social mobile game company Zynga in San Francisco, California, and featured as panelists Deborah Davis Han (Senior Counsel at Zynga and Chair of the INTA Young Practitioners Committee), Vineeta Gajwani (Senior IP Counsel at Electronic Arts), Frank Goldberg (Associate General Counsel of IP at Zynga), and Ira Lam (General Counsel at Kabam). The presentation was held in Zynga’s in-house movie and gaming theater. The event began with an overview of INTA and the Young Practitioners Committee, with the leaders pointing out some of the opportunities for young trademark lawyers within INTA.
Following the INTA introduction, the panel engaged in a lively discussion about the role of trademarks in video games, sharing some of the issues they have faced in advising their companies on how to navigate the relatively sparse and murky judicial precedent on trademark use in video games. Among the unique challenges in the video game space is the ever-changing nature of the games, even after consumer purchase. The panel highlighted the “Rogers test” for protecting trademark use in works of creative expression, established in the case Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under this test, courts determine whether a trademark has “no artistic relevance to the underlying work” or, if there is some artistic relevance, whether the trademark “explicitly misleads as to the source or content of the work.” Rogers, 875 F.2d at 999. The panel noted that while this case allows for relatively expansive creative leeway in artistic works in general, it is not adopted by all courts, and certain concepts remain particularly complicated in the video game space.
Certain challenges facing the panelists include registering the name or title of a video game as a trademark, given that the title of a movie or book is not registrable, for example. Further, beyond the title are issues with respect to actual objects or scenes featured within the game itself. Interesting examples include the use of depictions of a tommy gun in a mobster game and of the Eiffel Tower or the Space Needle as a backdrop for a game scene. The panel shared experiences and war stories from their dynamic careers to paint the scene of the interplay between trademark and copyright law, as well as the right of publicity, as considerations for an attorney in the gaming space.
After the panel discussion, the group continued the conversation over food and drink at the reception in Zynga’s cafeteria, which was fittingly outfitted with arcade games. Coblentz Patch Duffy & Bass LLP, Cooley LLP, Hanson Bridgett LLP, Owen Wickersham & Erickson P.C., Shartsis Friese LLP, and Sideman & Bancroft LLP co-sponsored this entertaining and informative event.
Source: TM NEWS