Legal Geek No. 98: What's That Smell? Will Play-Doh Reinvigorate the field of Scent Trademarks?

Welcome back to Legal Geek.  This week, we review an interesting field of trademark coverage, that being coverage of scents and smells, based on a recent application filed by game and toy giant Hasbro.

https://archive.org/details/LegalGeekEp98

Trademarks are granted federal registrations based on distinctiveness and whether the mark properly serves as a source identifier for goods and services, in the mind of an average consumer.  Word marks like company or product names, and the designed logos used by companies and products, are typically where the vast majority of registrations and coverage appears in this legal field.

However, there are some potential frontiers for expansion to other types of source identifiers, and scent is one of those that could be poised for a boom. 

Hasbro filed an application to register the smell of Play-Doh this month, arguing that the scent of the child toy has acquired distinctiveness over the last 60 years sufficient to make that smell identify the product and the source, AKA Hasbro.  The application describes this scent as "a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough."  That paints a mental picture fairly well for the scent Hasbro intends to cover, at least in the field of toy modeling compounds.

Since the first smell-based registration was issued in 1990 for a flower scent on yarns, only about 10 more scent registrations have successfully followed in the last 3 decades.  Most of these have been deemed to not be distinctive enough for the Principal Register where most trademarks go, leaving only some secondary rights for such scent marks.

Thus, Hasbro faces some significant hurdles in obtaining an allowance on this trademark registration.  First, proving that consumers actually associate that scent with the Play-Doh product can be difficult because of a high burden of proof required.  Second, many scent mark applications have been rejected based on being functional, or an inherent aspect of some or all of the ingredients used, as such functional parts are only covered in the U.S. by patents, not copyrights and trademarks.  A scent chosen to make a product more desirable to consumers may be deemed functional rather than source-identifying, for example.

Some experts who have opined on Hasbro's recent application indicate that while these hurdles are tough to overcome, the Play-Doh scent has a better chance than most products of succeeding at the Trademark Office.  After all, the scent is recognizable and pretty distinctive, and there's no functional reason to make modeling clay smell that particular way with cherry and vanilla overtones.  If it does register, there are some interesting hurdles in how Hasbro would actually provide a specimen to the USPTO that could be stored for future reference, and how would this be enforced by a court or evaluated objectively against the scents of competing products.  Nose experts would be needed.

The Bottom Line is, Hasbro has a good chance here to obtain a rare registration of a scent of a product, and if that happens, enough other big companies will likely take note and will try to cover their own scents.  It could lead to an interesting arms race trend in geek culture and beyond, as we expand the frontiers of possible coverage in intellectual property.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 97: Give Me a (C)! Supreme Court decides Cheerleader Uniforms are Copyright Protectable

Welcome back to Legal Geek.  This week, we cover one of the biggest IP cases of this Supreme Court term, which was decided this week, Star Athletica v. Varsity Brands.  The subject matter: whether cheerleader uniform design elements are copyright protectable, which is fitting given the March Madness sports season we are in right now.

https://archive.org/details/LegalGeekEp97

Varsity Brands is the largest supplier of cheerleader uniforms in the U.S., and it registered copyrights in many designs they sell on cheerleader uniforms.  These registrations purport to cover specific stripes and chevron designs on uniforms, which are fairly well-known design elements of such uniforms.

An up-and-coming competitor named Star Athletica was sued in 2010 for copyright infringement by Varsity Brands.  Star Athletica argued in court that cheerleader uniforms were useful goods, which are disqualified from copyright protection because useful goods are typically covered in the patent realm.  The counterargument was based on an argument that the expressive design elements intertwined with a useful apparel item were "conceptually separable" enough to be eligible for separate protection under copyright.

This issue of what is conceptually separable from a useful item has confounded lower courts, with the regional Courts of Appeal having about 9 different tests with varying factors for determining when designs on a useful item can be copyrighted.  The reason this determination is so important is that design patent protection lasts for only 15 years, while copyright protections often exceed 100 years.  For a company like Varsity Brands, copyright protection offers a decades long monopoly against competition.

The Supreme Court ruled 6-2 that the tests for conceptual separability needed to be harmonized into one test, that being whether a feature can be perceived as a 2D or 3D work of art separate from the useful article.  The feature must still qualify as a protectable expression when imagined separately from the useful article into which it is incorporated.

As great as that test sounds for adding consistency across the country, the actual application of the test could still prove contentious in fields like apparel.  Indeed, the dissent applied the same test as the majority and came to the opposite conclusion, that the chevrons and stripes were not conceptually separable as protectable expressions apart from the uniforms.  The majority's decision was not a major landmark in either direction, as courts will still need to wrestle with the facts in fields such as apparel, which do not fit neatly into any branch of IP protection under U.S. law.

So Varsity Brands wins this battle, as the Supreme Court says their registered designs are separable enough to be eligible for copyright.  But before Varsity Brands can successfully argue "Give me a (C)" and block the competition, another hurdle must be overcome in ongoing litigation.  The Supreme Court was not presented and did not decide whether the chevrons and stripes are original enough to merit copyright, which is another requirement above and beyond being conceptually seperable from the useful apparel item.  Legal experts still think this will be a tough battle for Varsity Brands to win, regardless of the win this week on separability.

The Bottom Line is, the Supreme Court often steps in when regional courts cannot agree on how to resolve a legal issue, as was the case in this copyright rule.  However, they typically do not go beyond the specific issues presented, and as discussed here, that means the legal competition continues in the courts for fields like cheerleader uniforms.  Maybe the legal teams can bring their own spirit squads to help cheer them on to victory.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 96: Mario Kart and League of Legends hit the Legal Airwaves

Welcome back to Legal Geek. This week, we leave politics and go back to the field of gaming to do a news update on two interesting cases for top brands of this field.

https://archive.org/details/LegalGeekEp96

We begin with Nintendo, which has returned to form with Breath of the Wild and the Switch console receiving good reviews this week. But Nintendo has also returned to the courts, with a lawsuit against a company in Tokyo which offers real life Mario Kart rides. With Mario onesies, LED shoes, and mustaches.

Yes, you heard that right. Real life Mario Kart rides. Excuse me while I go purchase my tickets to Japan.

Returning to the law, MariCar is accused of using Nintendo's IP and characters without permission. The closeness of the name and the use of the characters could indeed raise some trademark or copyright issues.  While MariCar says they had legal advice saying they were clear, it looks like a bit too much content copying without the small adjustments knockoffs usually make to be clear.

Plus, MariCar sounds like it has no interest in going to court with the game giant.  That means this fun folly will either disappear, change, or acquire a license.  I'd guess disappear.  However, with Nintendo finally licensing some theme park areas in Osaka, Hollywood, and Orlando, perhaps you will still be able to live a Mario Kart fantasy without having to brave the streets of Tokyo.

The other game giant with news in court is Riot Games, makers of top MOBA League of Legends. A court ruling granted Riot with an injunction and $10 million in damages against the makers of a software product called LeagueSharp that was alleged to hack the League game.

LeagueSharp was alleged to violate the Digital Millennium Copyright Act because it circumvents the anti-cheating technology in the League of Legends game software. Even though League is free to play, LeagueSharp was a paid monthly service that allowed players to see hidden information and play automated bot versions of the game to build up swords and supplies to unlock game content faster than normal. That circumvention and botting harmed the game according to Riot Games, and LeagueSharp also hacked and released some confidential employee information from Riot.

This is precisely the type of company and bad actors that video game companies like Riot and Blizzard often try to stop.  By obtaining a huge judgement and injunction only 7 months after this lawsuit was filed in August, Riot has quickly protected the League of Legends game and players, and the courts have sent a strong message to other companies that want to try and profit off of or attack other big game titles.

These parties reached a confidential settlement which will avoid the millions in damages, but the result was still exactly what Riot wants.

The Bottom Line is, profitable game giants will almost always act to protect their property and players, and it usually works. We'll see if Nintendo and Riot can continue their hot streak in the court of public opinion as the games continue to develop.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy