'Winter Is Coming' vs 'Sanctions Are Coming': a 'trademark misuse' also in languages other than Dothraki?

A few days ago, on Twitter US President Donald Trump posted an image of himself accompanied by the caption 'Sanctions Are Coming'.

One would not understand what the potential IP issues would be with this tweet if they were not also familiar with the successful HBO TV series Game of Thrones and the phrase (repeated so much ad nauseam that it has become an actual trade mark) 'Winter is Coming'. 

The phrase is in fact registered as a word mark - owned by HBO - both in the US and in the EU for certain goods and services in Classes 25, 35 and 41 of the Nice Classification.

The other issue is that the image published by Trump is in the style of Game of Thrones imagery. There is the same gravitas and also the font used for the phrase 'Sanctions Are Coming' is very similar to the one used for Game of Thrones images.

Apparently HBO was not thrilled to see the tweet, and responded through the same medium (Twitter), asking: How do you say trademark misuse in Dothraki? [for readers who don't know what Dothraki is or simply don't speak it fluently, here's a helpful explanation]

In all this, something like the 'Sanctions Are Coming'-gate could make a good test case for parody in trade mark law (something that, under EU trade mark law does not exist as an express exception), and might also require consideration of copyright protection in fonts.

What would the outcome of all this be?

Trade mark law

If this litigation was brought under US law, there is case law that has considered the room that trade mark protection leaves for parodies.

A recent example is the litigation that Luis Vuitton brought agains My Other Bag over the latter's canvas bags carrying 'replicas' of Vuitton patterns. As the US District Court for the Southern District of New York found in that case, the key question to ask is whether the kind of association a defendant creates is likely to impair the distinctiveness of plaintiff's mark.

This test was recently applied in the case (which, as far as I am aware, is still in progress) that superstar Beyoncé has brought against the producers of merchandise sold under the brand name FEYONCÉ and targeted at the engaged to be married ... that is fiancés [see Katpost here]. Again, the US District Court for the Southern District of New York provisionally concluded that
A reasonable factfinder may determine that, given the similarity between the two marks, Defendants' use of FEYONCÉ impairs the distinctiveness and selling power of the BEYONCÉ mark. However, because Defendants' have not merely co-opted the BEYONCÉ mark, but rather repurposed it in a way that can be distinguished from the original, a reasonable factfinder could also conclude that there is little risk of dilution.

As mentioned, under EU law, despite the references in the new trade mark instruments (Recital 27 in the Trade Mark Directive, and Recital 21 in the Trade Mark Regulation) to the need to safeguard freedom of artistic expression, there is no express parody defence.

Nonetheless, one might wonder whether the 'Sanctions Are Coming' tweet may be considered as: (1) use in the course of trade of the HBO trade mark, and (2) a use that affects the functions of the 'Winter is Coming' trade mark.

Copyright law

As far as copyright is concerned, the discussion of whether a certain font can be protected by copyright would make an interesting test case to delve into the notions of 'work' and 'originality'.

With regard to the former, one could wonder whether a certain font may be considered a work, and whether each character/letter is to be regarded as independent work.

Turning to originality, this is not a requirement that is as trivial as one might think [I discuss this more at length here]. This is true both under US law, where a modicum of creativity is required [see recent examples from the Review Board of the US Copyright Office here and here], and under EU law.

In its case law, in fact, the Court of Justice of the European Union has clarified that the 'author's own intellectual creation standard that is now (after the Infopaq decision) the de facto originality standard is qualified as follows: a work must be the result of 'free and creative choices', display the 'personal touch' of the author, and require more than just 'skill, labour or effort'.

Conclusion

In conclusion, 'Sanctions Are Coming' might not be too problematic, at least from an IP perspective ... But what do readers think?

The other day I saw that The Kooples has also a 'Winter is Coming' theme for its sport line. Is that also 'trademark misuse' or is it just a fact that winter is coming?

'Winter Is Coming' vs 'Sanctions Are Coming': a 'trademark misuse' also in languages other than Dothraki? 'Winter Is Coming' vs 'Sanctions Are Coming': a 'trademark misuse' also in languages other than Dothraki? Reviewed by Eleonora Rosati on Wednesday, November 07, 2018 Rating: 5

3 comments:

Duck said...

In the EU, presumably one would also have to consider whether design rights subsist in the font - the Community Design Regulation, for example, covers the protection of typographic typefaces. There may also be similar design right protections under some national laws?

Andy said...

If HBO was contemplating suing over this tweet, they would be well advised not to bother with the UK courts to pursue the aspect of copyright infringement of the typeface (assuming they have any rights to such copyright). This is because section 54 CDPA specifically says that use of a typeface in the ordinary course of printing does not infringe any copyright in the underlying design of the typeface.
As far as I am aware none of the other major EU member states make such a specific reference to typefaces/fonts in their laws and so, in theory, a court in one of those countries might be persuadable that it was infringement to use a font without permission. Much would depend on the licence under which the font was issued for use, and of course, whether HBO had any proprietary rights over the font.

Simon said...

Trump's use of Winter is Coming in a political advert seems to pretty clearly not be an EU/UK use in the Course of Trade, or even a US Commercial Use - I don't think the commercial impact of oil sanctions would count, even in a New York court.

Re the Kooples use, one could attempt a 10(3) claim - I think Winter Is Coming may conceivably reach the standard for a well known mark for GRM's books & HBO's TV show - but my feeling would be that a UK court would likely say it was not taking unfair advantage of the mark, nor tarnishing or diluting it. If the court follows the Ever Ready decision they would likely construe 10(3) protection narrowly.

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