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We goofed! (or The Game's Afoot)

Barrie Zwicker


"We goofed!" Placing this on a SCRABBLE® board cannot help you win a game of the Scrabble word game. It's outside the rules. But it creates a win for you, gentle reader. And for Sources®. And for Hasbro Inc., of Pawtucket, RI, owners in Canada and the USA of the Scrabble trade mark, and copyright in the Scrabble Board and graphics.

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).

Does this article prove we're learning the hard way to avoid infringing copyright or trade marks? No. Hasbro has been very civilized about our goof. This article -- this cautionary tale -- is our idea.

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.

Copyright must also be defended since, for example, it protects graphic material that is often licensed for use on merchandise, or in connection with promotions: witness the popular Monopoly promotion at McDonald's.

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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