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We goofed! (or The Game's Afoot) Barrie Zwicker
You see, we inadvertently infringed Hasbro's copyright when we
reproduced a section of the Scrabble board on the cover of the previous
edition (Number 43, Winter 1999). We've been writing all along in these intellectual property features
that one of our duties as journalists is to take care how we use
trade marks. To understand what trade marks are, how to recognize
them, how to use them properly. We've been writing that editors,
reporters and researchers - and of course publishers -- respect
copyrights in printed and graphic materials and trade marks. Such
as those associated with the Scrabble game and other properties
owned by Hasbro, some of which include Monopoly®, Clue®,
Yahtzee®, Boggle®, Sorry®, Play-Doh®, Nerf®,
Aggravation®, Transformers® and G.I. Joe®. What we knew but forgot to remember is that there are copyrights
in graphics, such as those found in game materials, and often trade
marks as well. That, for instance, the red border on Time® magazine
is part of Time's registered trade mark. So yes, it's embarrassing
we slipped up. But it's not that hard to admit a mistake, apologize, and take
corrective action within our power to take. We gamely decided to
make our mistake into an article. In this game "We Goofed"
is a Triple Word Score! The road to our infringement was paved with good intentions, of
course. It started in the fertile mind of General Manager Ulli Diemer,
a Scrabble enthusiast, who provided the rough version of the cover
to yours truly, in a fax. Yours truly applied himself immediately
to what turned out to be minutiae, namely to make out all the words
on the Scrabble tiles, which were very dark on the fax. It was a
bit of a puzzle itself. Your disobedient servant was quite pleased
with himself to get "Internet" after a few minutes in
spite of only being able to read the "R." He then applied
himself to checking the cover lines. Oh, to put on one's thinking
cap! As the previous cover literally spells out, experts are provided
in Sources who can provide quotes. One of these experts
is Lloyd Sarginson, partner in the law firm Bereskin & Parr.
Bereskin & Parr specializes in matters of intellectual property
including trade marks and copyright. It was Lloyd who called. "I
thought I'd let you know where I'm coming from," said his voicemail
message. "It's about your current cover. Hasbro hasn't called
me but I know exactly what they're going to say." Indeed, he did. What they said was that many people keep appropriating
highly recognized elements of their popular products, such as Scrabble
and Monopoly, often for visual effect or impact. In doing so they
infringe the Scrabble or Monopoly mark or the copyright in the Monopoly
and Scrabble board designs, or both. And one reason Hasbro retains
intellectual property lawyers is to chase bad boys down the street
and tell them not to do that again, or they'll be playing in a different
game, which can cost quite a bit of money to play. But it happens that Sources is another long-standing
client of Bereskin & Parr. There was no need to persuade us
of the importance of marks or copyright and their proper usage.
We've also had to chase a few boys (including Maclean Hunter and
Southam) down the street until we received written notice they would
cease and desist from using the word "sources" in connection
with a directory product. Owners of trade marks must defend them. If we let a mis-use that comes to our attention continue without protest, our case will be weakened should we go to court. Every mis-use encourages more. Soon people are confusing their product with yours or your rights have been watered down, and you better believe that hurts your business. Also, if a party you deem an infringer decides to defend in court
what he deems a lawful use of a similar mark, pivotal to your action
against him is proof you've been energetically chasing kids down
the street every time you caught one misbehaving. So we not only listened to Hasbro's complaint; we agreed they were
wise to lodge it. The only questions were whether we really infringed
and if we did, how serious an infringement it was. Well, we did. But we don't think it was serious enough to hurt
Scrabble sales, for instance, and presumably not its licensing revenue. Now some pirate outfit that goes about reproducing the Scrabble
board and selling it for people to play on, or producing floor mats
or shirts adorned with graphics from the Scrabble board is really
flouting the law. We think a kid like that should not only be chased
down the street, but given a good paddling, even if corporal punishment
is out of fashion. As for us, we're happy to resolve not to do it again. We plan to
be even more alert to the elements of trade marks and copyright
that go beyond the name, or logo, or nameplate itself. This is where
we were caught with our guard down. It's something to remember any
time we in the media decide to reproduce an image. Not that this is an easy area -- of journalistic practice or of
law. For instance, Coca-Cola® and SONY® and other firms
too numerous to mention pay millions of dollars to place their registered
trade marks and designs on the sides of racing cars, so that those
images will be promiscuously reproduced through the media. That's one thing. But taking an image of those marks or designs
without getting permission, and building it into a product intended
to profit you and not the owner of the mark…. now we're racing
in a different race. It's up to those of us in the media to sort out which race or game
we're in. Are we being used by brand owners to further their sales,
or are we abusing brand owners to further our sales? My word limit approaches. Just room for me as Publisher of Sources to make a commercial plug directed to owners of trade marks, designs and copyright: this editorial feature of this particular publication is about the best place in Canada to educate journalists (including publishers), to protect and promote your intellectual properties, and enable us to enlarge this valuable and obviously needed feature.
Barrie Zwicker is Publisher of Sources. Published in Sources, Number 44, Summer 1999.
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