Brandname issues : should I take the risk to be fined of 200'000 Euros ?

Discussion in 'Indie Business' started by ManuTOO, Mar 10, 2009.

  1. ManuTOO

    Original Member

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    Hello,

    a couple of years ago, I set up this page :
    http://www.managames.com/grand-slam_en/roland-garros.html to add some content to my website & try to get a few more visitors.

    Now, I just received a letter from the French Tennis Federation (FFT), owner of "Roland Garros" and "Roland Garros French Open" brand names to tell me to remove all their brand names from my page.

    They accuse me of :
    1- counterfeit, coz I used they trademark without authorization, and thus did it a prejudice
    2- parasitism, coz I associated myself to the tournament & the trademark without authorization
    3- lying ads, coz I made my customers think I had their license

    To fix the 3- , I already added a note on my page, and clearly separated the ads for my game from the informational part on the tournament.

    You can view the previous version in the google cache here : http://72.14.235.132/search?sourcei...anagames.com/grand-slam_en/roland-garros.html

    Now, the FFT won a big trial last year over online brokers who were using their brand names to describe the matches on which people could bet, and got 800'000€ of fees ( USD ~1M), including 200'000€ for parasitism.

    As my page is mainly informational, and I don't use their brand names in my game, I guess I'm not facing such fee, but I'd appreciate any enlightening comment on this case.

    I'm wondering... what would happen if a news site was publishing a news about Roland Garros, and an ads for my game was displayed on top..? Wouldn't that be pretty similar to the case here..?

    Now that I modified the page, I'm going to contact them back to see if it's ok with them or not. I guess it won't be, so I'll likely remove it, but I don't want to give up too easily & too fast, especially if I'm not on the wrong side of the law...

    One last question : anyone knows where I could check if they actually own the "French Open" brand name... I doubt they do, as it's a very generic term applying to all sports (Golf comes to mind), and in the trial report I read (here : http://www.legalis.net/jurisprudence-decision.php3?id_article=2324 ), it's stated they were only owning "Roland Garros" and "Roland Garros French Open". It's important, coz in the initial page, I linked my game to winning the "French Open", coz I was aware "Roland Garros" was a trademark, and it's their main point of attack in their letter... Now I changed it to winning the "French Grand Slam"...
     
    #1 ManuTOO, Mar 10, 2009
    Last edited: Mar 10, 2009
  2. Scurvy Lobster

    Scurvy Lobster New Member

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    You should remove all info on the actual tournament. No need to get sued big time and their lawyers are probably better than yours. Make a link to a wiki page about the tournament instead if people really need to know (which I’m not sure they do).
     
  3. jmc

    jmc
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    Just put a picture of mister roland garros.

    Roland Garros was born in France in 1882. An experienced pilot, Garros was the first Frenchman to cross the Mediterranean by air. On the outbreak of the First World War, Garros was sent to serve on the Western Front.

    I don't think you can copyright someone :D
    Jmc.
     
  4. joshuadallman

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    In publishing contracts, there's specifically a clause that allows the publisher to use the game's logo, artwork, developer's logo, and so on for marketing purposes. In other words, it's not assumed, it's called out as a specific right, and you don't have that right with Roland Garros.

    News and parody are both fair play, but if your site is commercial in any way (which it is), they can ask you to remove the unauthorized use of their trademarks.

    I also think from a customer standpoint, even with the disclaimer/note you added to the page, that the way you present the Roland Garros information creates confusion in the customer and they're right to ask you to remove it.
     
  5. Jack Norton

    Indie Author

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    That's one of the main reasons why I stopped making sports games. Players wants real team/player names, but of course they don't care about all the possible legal issues.
    So, I started making fantasy stuff, safer :D
     
  6. cliffski

    Moderator Original Member

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    I've never understood the cult of personality people have with sports people. Nor have I understood how you can 'own' your name. Other people share your name. There is a US sportsman and a US weatherman called cliff harris

    I got a similar threatening letter from Take2 once for registering 'rockstargame.com', which eventually they bought from me, after alleging I had "done material damage to the commercial position of take 2 games". that was by just registering a £20 domain name. (I hope they fired the dork who forgot to register it, if it was so flipping commercially CRITICAL...)

    In short, lawyers for big organisations are over-aggressive and confrontational. If I was you, I'd remove all mention of the guy from your page. You are selling a tennis game. Unless the game is based specifically on one individuals DNA, there is no reason you have to mention him.
    Why give a guy employing such scum as lawyers any publicity anyway?
     
  7. Desktop Gaming

    Moderator Original Member Indie Author

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    I'd just remove it - its not worth the hassle.

    Had a similar problem with my snooker game five years back - its working title was "World Snooker". I started getting snotty emails from the World Professional Billiards & Snooker Association claiming that they owned the "World Snooker" trademark and I was stepping on their toes, and that they would "release the hounds" if I didn't change it.

    I could have argued the case but since no publishers had shown an interest in the game, I dropped it anyway.
     
  8. JoKa

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    Does anyone remember the Amiga game "Lotus Esprit Turbo Challenge"? The developers had a nice solution, they just mispelled the names of the famous F1 pilots. Something like Nijel Mansail instead of Nigel Mansell. This way, a game still has recognizable characters and an additional portion of fun ;)
     
  9. ManuTOO

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    Thanks for the answers... I already chickened out and removed all "Roland Garros" & "French open" from my page... :p

    I did more readings, and I think I should build an informational site apart if I want to have better chance to avoid problem...

    PS: cliffski, my problem here is with a tournament name ;)
     
  10. Ciardhubh

    Ciardhubh New Member

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    There's a database of EU-wide trademarks:
    http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic

    One for international trademarks:
    http://www.wipo.int/madrid/en/services/madrid_express.htm

    There probably are additional tradmarks for individual countries. There might be a database from your government, listing tradmarks. Check you IP, trade, patent office or whoever is responsible.

    Keep in mind that, even though there might not be an exact or valid trademark, they can cause a lot of trouble. It's not about being right. It's about who brings more money to a lawsuit.
     
  11. princec

    Indie Author

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    Would it be legal to mention Roland Garros anywhere in the text though? I can for example blog about RG if I like can I not without fear of trademark infringement. So you could possibly slip his name into the blurb somewhere?

    What about in metadata tags?

    Cas :)
     
  12. Ciardhubh

    Ciardhubh New Member

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    That depends on where you are from. I remember a ruling (in Germany) which stated that using trademarks in metatags violates certain laws. You aren't allowed to use trademarks as Google ad words either, e.g. your competitors names or brands. Judging from occasional news, French laws might be equally restrictive.
     
  13. joshuadallman

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    I've worked on a few unlicensed sports games recently and the work-around I designed for us is having the ability to edit team and player data yourself or download someone else's XML file (i.e. from a forum posting) to put in. It isn't a perfect system as it's not as accessible as a one-click update but it gets around the legal restrictions.
     
  14. Jack Norton

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    Yes that's a good workaround too :)
     
  15. Scurvy Lobster

    Scurvy Lobster New Member

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  16. GaiaDreamCreation

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    I looked at your new page and old page. I believe they are right on the 3 points they are accusing you. The problem is in the way to talk about the tournament. I feel a little confusion when going on the old page.

    There is an aspect about dilution. It is normal the owner of the trademark wants to control how the mark is perceived.

    I don't think there is a problem talking about the tournament, but product must not be associated with the mark. The best thing is to write a separated page with clear information. The margin is thin and like "Ciardhubh" mentioned, even the metatags could be a problem.

    If you want to draw people interested by tennis, write some pages about tennis including the French tournament and place ads of your game on these pages. Interested people will click on your ads and download/buy your game.

    I noticed this kind discussion happens quite often on this forum. The legal aspect is important for game developers. I suggest that developers read more about trademarks. There is a very good book that I read from Nolo edition. Check Amazon for the book: "Trademark: Legal Care for Your Business & Product Name". The book has been updated many times over the years. The proof things change. The book answers a lot of question before consulting a lawyer. In doubt, always consult a lawyer. After reading that book I know that things are not simple and there is "always" a risk of a problem. Sadly, it is not black or white and you need to take some careful risks if you want to do business.
     

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