domain name fun

[cliffski]

Ok, so maybe I didn't realise how insane the whole trademark / copyright domain name thing was. Theres only so many words in English right?
So when I decided to do a game about rock music, I called it Rock Star.
I knew there was a company called rockstar games, but thats 'games' and a company name, not a game name, so I thought it would be fine, especially as there was a domain name free (www.rockstar-game.com)
If it was a problem, I could change it, no big deal.

So I had undertaken a collosal marketing push consisting of 1 blog post referencing the domain name, plus changing my sig here and....

I got the most aggressive email I think I have ever witnessed. At least 2 pages, from some huge US legal company that 'represents' take 2.
Ironic, as I sold a game through Take 2 (starship tycoon) and have ongoing royalties, so you would have thunk they would just call / email me direct, but nooooooo.
Anyway, I was tempted to make the whole letter public, because it's frankly hilarious, especially the bits where they confuse my blog descriptions of the gameplay
with real life intentions (I am *not* planning on starting a record company), and frankly, I was flattered by the bit:

"Positech's willful
misconduct has caused and will continue to cause consumers to be
deceived and Rockstar Games to suffer serious commercial harm"

despite me earning about $60k, and them being a 1.2 billion dollar turnover corporation. I had no idea how popular my blog must be!

I'll admit, I was a bit peeved by

"We can only conclude that Positech
intended that its ROCK-STAR-based trademark and domain name would
confuse and lure Rockstar Games' customer base and free ride on the vast
goodwill that the ROCKSTAR(r) and ROCKSTAR GAMES(r) trademarks enjoy"

Given that I pride myself on family friendly games, and their flagship game is about murdering prostitutes*, I don't think I was angling for their market.

Anyway, despite my initial huge anger, and shouts of *bah*, I just mailed em, moaned at em for being so aggressive and confrontational, and said I'd happily change the name, and they could buy the domain from me for what I paid for it. Ironically, they listed all the rockstar domains they own, as evidence that they are entitled to this one. At a mere $50, I would have thought they could afford it before?

Anyway, all is well that ends well, they will leave me alone now, and I can finish my game. My tip of the week to any game industry lawyers, is to just be polite. Politeness gets you a lot of places that threats never will.

Anyway, thats the story.

The domain name isn't transferred yet, and I've shown how mature I am by not redirecting it to jackthomson.org in the meantime :D


*yeah yeah, I know its not really :D

[tolworthy]

You have just reinforced my belief that I am right to be paranoid. My game is based on Victor Hugo's Les Miserables, and everyone tells me that I will have no problems from the famous musical, since the book is out of copyright and they only trademarked a particular usage of a particular font. But despite that I have still reseacrhed trademark law, changed the font, the look, the case, the name (to "LES-MISERABLES-THE-GAME-OF-THE-BOOK" and ensured that no graphics look anything like anything on the musical web site. Yet I still live in fear of a knock on the door at midnight from someone dressed as Javert who can't pronounce his vowels.

[Applewood]

I'd be tempted to just get on with it tbh. You are doing nothing wrong at all and it's for them to prove a case against you, not for you to defend it.

I'm sure you can do without the hassle, but it'd be funny to see how much damage they can do to their PR image in return for, erm, struggling to find a motive here, hang on. Ah yes, for them to try and say "this is mine because I say it is".

[Philippe]

Let me say that I have a lot of respect for your work, and that I think all in all current intellectual property rights do as much harm as good, but frankly I'm surprised you didn't see this coming!
Rockstar is huge and the distinction between "rockstargames.com" and "rockstar-game.com" is small enough that I can in fact see how people could associate your game with their brand.

They may have been somewhat aggressive, but I guess it's better that this happened now rather than after you spent a lot of work pushing the finished product?

[cliffski]

true, but it's weird that
http://www.therockstargame.com/
is still going?
I think its a bit grim that nobody can use the common phrase 'rock star' without being sued now. What will society do when every last combination of letters has been trademarked?

[JoKa]

As a new name I recommend Gikaroga (Game initially known as Rockstar Game).
Besides the game itself, the story behind the name will surely help to attract editors and so far Google shows no mines you could step onto ;)

[Firespirit]

Yeah... lawyers do suck, generally. Either they're against you and aggresive or for you and expensive :)

But the damned truth of it is that when they threaten, they have a better chance of getting their will, and that's what matters to clients :-(

I'd say - just shake it off and move onwards.

[Applewood]

true, but it's weird that http://www.therockstargame.com/
is still going?Not weird really, just proof that despite their blustering, they don't have a leg to stand on.

[AJirenius]

No matter how big a company are and no matter what they are threatening, there is no way that their claim would hold up in a court as the words Rockstar and game is way to common. The're has been some very worse cases out there but still I don't know one that has actually won a domaincase. You have a game called rockstar and of course your site should be named rockstar.

I tried a few misspellings: www.giigle.com, www.micrsooft.com, http://www.goole.com/, http://www.directx.com/

they all ends up at different sites that REALLY are trying to milk out the name from the big companies. I still have yet to see one that really got sentenced in the court of law.

Still...

I would probably go your way, there wouldnt be time or energy to fuzz with a lawsuit.

[luggage]

It doesn't matter that the words are common, they have a registered trademark at least here in the UK (trademark number is E3391133). It's listed under 3 categories...

Class 09: Discs and cassettes, all relating to computer, video and electronic games; computers; computer hardware, computer software, computer games, video games, electronic games, computer programmes; coin, card or counter operated arcade game machines and amusement apparatus; parts and fitting for all the aforesaid goods.

Class 16: Printed matter; leaflets; newsletters; pamphlets; posters; promotional printed matter; all relating to computer, video and electronic games.

Class 28: Games and playthings; computer games; electronic games; amusement apparatus; parts and fittings for all the aforesaid goods.
So they do indeed have a leg to stand on.

[LilGames]

Change the name to Super Rock Star, or Mega Rock Stars ... Rock Star Game is just SO close to their name (off by ONE letter). They probably first noticed thinking you were a cyber-squatter.

[electronicStar]

I think its a bit grim that nobody can use the common phrase 'rock star' without being sued now. What will society do when every last combination of letters has been trademarked?
I don't think that the rockstar company or fame will last forever. In 5 years from now, it will probably be a lot easier to do a "rockstar" website.

As for the original message, well although their reaction was excessive, it is the normal procedure for lawyers, they have to aggressively look for potential threats to their reputation and complain about it as if it was a terrible terrible thing.
I think it's not worth going to war with their lawyers as you're the only one that will get hurt (and I don't find the name "rockstar" very interesting tbh)

[Applewood]

So they do indeed have a leg to stand on.I read your clips and I still don't understand why they get a leg to stand on from that.

Cliff is not trying to pass himself off as a games publisher called RockStar. He has a game about creating rock stars. There's not a caught in the land that would come down against Cliff as long as he sticks to his own subject.

Anyone remember www.mikeroesoft.com ?

[luggage]

Sorry, should have been clearer. Those clips were for the word ROCKSTAR. It doesn't matter if you're not in the same direct business, it matters if the classes they own the trademark for are infringed. Those classes define what's direct competition.

[Philippe]

Well, it's not as if we were talking about a T-shirt site that calls itself Rockstar-Wear. As far as I'm aware, common-word trademarks are scoped to their fields of business. You would probably not have a problem naming a brand of cat food "Apple", but you wouldn't want to take that name if you produced consumer electronics.

[Applewood]

Yes, and there's another thing. Cliff's game is not called RockStar. It's called Rock Star. That's not just a semantic difference - he's using two very common words to form a commonly understood phrase that describes his product. It was RockStar who had to fuck about to get their name trademarkable as there are already a million rock stars.

It's like Sainsburys suing my old company - Applewood - because its the name of a cheese.

[soniCron]

This isn't cheese, Paul. The fact remains that it holds the potential to confuse customers given that it's in the same business space: video games. And when confusion arises regarding trademarks, then it dilutes the brand, which is considered an attack on that trademark. If you don't protect your trademark against such behavior, then it invalidates the trademark, and nobody gets it. They are required by law to protect it in this instance, or they risk losing it.

Additionally, if a trademark is thoroughly pervasive, then it doesn't matter what field it's in. A dilution constitutes an attack, so naming your bakery Windows is not OK. (And you'd find yourself in hot water naming your pet food company Apple.) Regardless, this isn't a blurry line as such -- the two are in the same field and can serve to confuse customers.

Cliffski's usage is not decidedly legal. Period.

[arcadetown]

Anyone can send a cease and desist letter. Many times people simply ignore them. However when push comes to shove it won't stop them from dragging you into an expensive court of their choosing even though they may not have a leg to stand on. If you really want to fight turn the tables and drag them into your local court as they opened that possibility with the C&D letter. Doesn't mean you'll win but atleast you'll better be able to afford a fight.

Trick with sleazy business people that don't care about their impacts on the world, particularly kids, is they tend to abuse the law to aggressively defend their sleazy selves.

[Applewood]

I see what you're saying and agree with it, but I don't see a problem in this particular case.

"Rock Star" is a new video game using plain English descriptive words for a title, whilst "RockStar" is a publishing company. To deny someone the opportunity to use the words "rock" and "star" in the title is going to be hard slog for anyone. I'm sure you'll see Simon Cowell labelling his acts similarly all over the place.

If Cliffski wanted to name his product similarly to one of RockStar's (note the apostrophe), like "Grand Theft Turbo: San Gabriel" then indeed he'd have a shit fight on his hands. This is not the same thing at all though as I see it.

What about these ?
http://www.projectrockstar.com/
http://freshsqueeze.com/products/rockstar/

[luggage]

'Somebody else is doing it so why can't I?' isn't much of a defence.

From the original post it sounds like they have a registered trademark on RockStar and RockStar Games. Seeing as the domain name was www.rockstar-game.com surely you can see the problems with this?

And calling the game Rock Star is going to cause issues with someone who has a trademark on RockStar for use in the video games sector.

[zoombapup]

How about

Rock Hero
Rock Hard
Rock God
Hard Rock Hero
God of Rock
Rock Monster

ERm.. stuff.

[Raelifin]

http://www.shnetworks2.net/~asciiwor/downloads/games/rockstar.png

Now that's irony.

[Tom Gilleland]

Rock Star is a poor choice for googling anyway - too much competition. Pick something unique.

Tom

[Applewood]

'Somebody else is doing it so why can't I?' isn't much of a defence.That wasn't really my point, but now you mention it, this is *exactly* the right defence against claims of trademark infringement aiui.

[luggage]

I'm not sure I understand. How would a company every be able to defend against trademark infringement if you could just point to somebody else who's doing it? You'd end up with a recursive trademark dispute. They have to start somewhere.

[soniCron]

That wasn't really my point, but now you mention it, this is *exactly* the right defence against claims of trademark infringement aiui. I agree with you, Paul, but I want to add on a little disclaimer: Without contacting the parties, it can't be known if they have permission to use their versions. (Although unlikely, it is possible.)

@luggage: By not actively protecting your trademark, you forfeit rights to it. So, if prolonged, rampant abuse is evident, then they effectively don't have rights to the trademark.

[Applewood]

I was under the impression that if you can point thus, they haven't got the right to the trademark in the first place tbh.

I'm probably wrong though, as I believe any common words or phrases shouldn't be in a trademark in the first place - Rock Star being a classic example. I'm pretty sure that Rock Star Games being their name (or whatever it is) is the only thing they can lay claim to, but what do i know.

You can trademark "Polo" and "Rolo" but how the hell can anyone claim rights of trademark on "Mints" or "Sweets". Rock Star is a friggin job description!

[luggage]

I realise that, but if you look into it it requires a lot more than a couple of websites using something similar for the trademark to enter the public domain. By doing something about Rock Star Game they are defending their rights - just because there is another site out there doesn't mean they've forfeited the rights to it. Trademarks that enter public domain are things in such use as Hoover and Aspirin.

Applewood: But they haven't trademarked Rock Star in association with a job title. If they did the mark would be rejected. They've trademarked it in a class where they are allowed to. Just like Coke can trademark 'Sprite' as a drink and Marvel can trademark Sprite as a comic book character yet Sprite still has different uses than just those. Mint has a lot of trademarks attached to it as well as Sweet.

[Applewood]

I fully take your point Luggage, you make a good case.

What I don't get though is that Rock Star Games isn't a game, whereas Cliffs thing is. This means to me that from now on, no-one could ever make a game about wannabe pop idols, simply because some random company is using the obvious choices for its own name, not any of its products.

Nobody better make a game about Romans crossing any rivers or they'll be for it, the bastards! :)

[MrQ]

I was under the impression that dictionary words couldn't be trademarked. But maybe a combination of them could?
I still don't think they would win a court-case but they would probably cost you alot of money and hassle in the meantime.
Pisses me off that these big publishers have such a huge market-share and they still feel the need to hassle the small developer. I mean how many millions of copies of GTA have they sold? How frickin greedy can you get!

Given that I pride myself on family friendly games, and their flagship game is about murdering prostitutes*, I don't think I was angling for their market.

I hope you wrote that in your reply :D


N1 Rockstar/Take2...

[luggage]

A trademark has to be non-descriptive. Hence not being allowed to trademark Mint for a packet of sweets but being able to do so for a credit card.

[papillon]

Non-descriptive? Does that mean you can't name your studio Really Good Games and trademark that? :)

[Bad Sector]

And you'd find yourself in hot water naming your pet food company Apple.

There is an underwear company (http://www.apple.gr/) named Apple Underwear :-). I don't know in other countries, but in greece their ads are all over the place.

[LilGames]

You can trademark combinations of words... Like for example "The Choice of a New Generation" is a trademark. Pepsi uses it actively in commerce. Any other product trying to pitch themselves using that slogan will find themselves in court pretty fast.

Now if Pepsi stops using it and years go by, their defense position gets weaker and weaker.

[GBGames]

You can trademark combinations of words... Like for example "The Choice of a New Generation" is a trademark. Pepsi uses it actively in commerce. Any other product trying to pitch themselves using that slogan will find themselves in court pretty fast.

Now if Pepsi stops using it and years go by, their defense position gets weaker and weaker.

Actually, it's listed as "DEAD".

And even if it was alive, if you use it outside of soft drinks, you would be fine apparently.

EDIT: I had a link to the trademark entry, but apparently it assumes you are logged in. Look up # 73506722, or search "The choice of a new generation" using the Basic Search here: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=vc2vt0.1.1

[Gary Preston]

Isn't the problem not with his use of the term "RockStar" but its use with the term "Game" which gives "RockStarGame" or "RockStar-Game" both of which are very similar to "RockStarGames" or "RockStar-Games" at least imho.

If the game had been called "Rock Star The Game" or "Be a Rock Star" I doubt the letter would have arrived, unless of course they really are concerned over the use of "Rock Star" regardless of the "game(s)" term, then I'd disagree with what they're trying to do (not that disagreeing would make the slightest bit of difference ;)

But I would assume (perhaps incorrectly, did the letter clarify this any?) that it's the use of both the terms "Rock Star" and "Game" that's the root of the issue.

[Grey Alien]

Just wanna say the situation is stinky and whilst temping to fight them Spartan-style, it may be best to take the path of "least resistance" and choose a different tactic.

[soniCron]

Don't call it Rock Band (http://www.rockbandgame.com/)! ;)

[cliffski]

Indeed.
Bah.