The Perseverance of a Trademark Troll

Sockatume writes "Eurogamer has published an article on Tim Langdell's battle against the Edge iPhone game. Langdell, a British entrepreneur, founded Softek (later renamed The Edge, Edge Games and Edge Interactive Media Inc.) in the 1980s as a venture to fund game development, with profits to be split 50/50 with the developers. He moved to California in the 1990s in the wake of accusations of failing to pay his developers. Now a professor in games studies at National University, an IGDA board member, and a former member of BAFTA-LA's board, 'Dr.' Langdell spends his time accusing people of infringing his trademarks and offering to settle. After delivering a settle-or-die ultimatum to Edge publisher Mobigames (detailed in the article), he has convinced Apple to pull the game from the App Store. Mobigames is preparing to strike back: their lawyer believes that his trademarks are 'liable to be revoked.' Langdell has had a spate of bad press lately as other trademark disputes come to light, involving entities ranging from EA Games to Britain's venerable Edge Magazine (source of Edge Games' logo and now registering its own Edge trademark). He has never actually prevailed in a trademark hearing."

Comments

Re:Obscurity isn't a valid defense

[BadAnalogyGuy]

I'm not sure you're familiar with trademark law in the United States either. Your definition of "use" is unclear and its applicability in this case is questionable.

Let's see what the experts say: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

3. What prerequisites must a mark satisfy in order to serve as a trademark?
An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words "Exxon," "Kodak," and "Apple" bear no inherent relationship to their underlying products (respectively, gasoline, cameras, or computers). Similarly, the Nike "swoosh" bears no inherent relationship to athletic shoes. Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection.

So the trademark "Edge" in reference to games is, given the history of the company, inherently distinctive and thus fulfills the requirements for being a trademark.

4. How do you acquire rights in a trademark?
Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce...

Again, Langdell seems to have this base covered so far as anyone can prove.

Here we get to the crux of your post.

6. Can trademark rights be lost?
A trademark is abandoned when its use is discontinued with an intent not to resume its use. Such intent can be inferred from the circumstances. Moreover, non-use for three consecutive years is prima facie evidence of abandonment. The basic idea is that trademark law only protects marks that are being used, and parties are not entitled to warehouse potentially useful marks.

But if you take a look, Edge Games has a website, claims to be developing games, and is in no way abandoning its trademark to genericity. So while your claim that Edge Games hasn't released something for years may be true, it may not be relevant.

Re:Obscurity isn't a valid defense

[BadAnalogyGuy]

Let's see what the experts say: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

8. What constitutes trademark dilution?
In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is "famous." In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has "selling power" or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).

Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through "blurring" or "tarnishment" of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).

(1) the degree of inherent or acquired distinctiveness
The distinctiveness is there, as explained in my original reply

(2) the duration and extent of use
Duration is there, and the intent to use has not been abandoned, as explained in my original reply

(3) the amount of advertising and publicity
Definitely arguable. They have a website and are the first hit on Google for "edge game" and "edge games".

(4) the geographic extent of the market
US and UK, according the the Edge Games website.

(5) the channels of trade
They are a game company and seem intent on releasing their existing portfolio to the Wii.

(6) the degree of recognition in trading areas
Edge Games was a decently sized name back in the C64 days. Nowadays they are a bit infamous for stiffing their developers, but is infamy different from fame?

(7) any use of similar marks by third parties
I suppose Gillette probably has a trademark on Edge for their shaving gel.

(8) whether the mark is registered
Seems like it.

Langdell's Edge trademark seems to fit the requirements of fame.

The naming of the game certainly seems to dilute the trademark. Can the publishers of Edge (the game) claim that the name is sufficiently generic enough?

At the most, though, Langdell would only be able to get injunctive relief as it is unlikely that the infringers willfully traded on the plaintiff's goodwill in using the mark.

Re:Obscurity isn't a valid defense

[Shin-LaC]

I thought Langdell was cool with trademark dilution.