Esports and IP Rights Series 3: Enforcing IP in a Digital World | Kohrman Jackson & Krantz LLP
As an esports, primarily digital, brand you’ve now taken the proper steps to protect the company’s intellectual property (IP) through registering and proper protections around trade secrets. Now, what happens if you still find yourself being affected by IP pirates? Why did you even register if this still happens? Is fighting these scammers the right move? Is the law truly on your side?
What Does Your Brand Want to Protect?
Each individual brand must decide what it wants to protect. Organizations may see that IP bandits exist regardless of whether or not brands register their IP. However, organizations must remember that deciding not to register allows anyone to misuse their branding or create a brand so similar that people can’t tell the difference between them. Deciding not to register is analogous to deciding not to lock your front door because criminals can pick locks. Registration is an initial roadblock to potential infringers and, if required, this creates the basic protection for the basis of legal action against IP infringement.
Protection is an Ongoing Process
First, organizations with IP to protect must remember that protection is an ongoing process. Just as holders of trade secrets must ensure that information remains secret, trademark owners must be diligent in their efforts against infringers. Trademark owners have an affirmative duty to monitor and take action against unauthorized use of their marks. If a trademark owner isn’t vigilant in policing the proper use of its trademarks, its rights could be compromised and even lost entirely. At the very least, a trademark owner may be required to accept third-party uses of their mark that were once actionable, if they had more strictly enforced their rights against less similar previous third parties.
Thus, brand owners must determine how to proceed with online enforcement once they uncover IP rights violations. This is more complicated than it seems because brand owners are forced to apply a 20th-century legal framework to 21st-century problems. Brand owners, lawyers, and judges must understand statutes and case law as well as how emerging technology falls within those confines and what constitutes infringement. Can artificial intelligence infringe upon a brand’s rights? Even if you believe the reasonable answer is yes, what are the odds a law is written that confirms that or that a lawsuit already covers this issue? Passing laws and litigating cases can take years and yet AI has primarily exploded in the past year.
Taking Proactive Steps
Because of this, organizations and brand owners must work with their legal counsel to proactively define an online enforcement strategy. The strategy starts with the organization’s business, technological environment, and goals. Begin with the traditional government registrations and then strategize about your vulnerable avenues of infringement. Legal counsel that understands a brand’s industry, such as esports and gaming, can effectively craft responses that grasp the public’s attention. For example, in 2017, Netflix sent the operators of a bar modeled after the show Stranger Things a creative cease and desist demand that included quirky pop culture references from the show. This hit home with and amused audiences who may have previously sided with the bar, and thus public pressure assisted to accomplish Netflix’s goals.
Taking proactive steps for protection and working with a team that understands your industry and how to harness its power is the only way truly to secure your IP’s future.
