Can Sony Trade Mark 'Let's Play'?

[The following is an extract from my own blog over at www.legalgamer.weebly.com]

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News emerged the other week that Sony Computer Entertainment of America attempted to trade mark the phrase ‘Let’s Play’. As expected, the internet was not happy. Thankfully though for Let’s Players around the world, this has been blocked (at least temporarily) on the grounds that it was too similar to a pre-existing trade mark, ‘LP Let’z Play’. But why did this happen? Could Sony actually do it? What would trademarking ‘Let’s Play’ even mean? Read on for a super quick tour through some trade mark law basics like what a trade mark actually is and what types of thing can/can’t be protected, as well as a breakdown of some of the legal issues facing Sony in this specific case.

Boring legal caveats: first thing’s first - Sony’s trade mark application was filed in the US at the United States Patent and Trademark Office (USPTO) and is therefore subject to US trade mark law, which I’ll leave to my US colleagues to analyse. Instead, being a UK/EU lawyer I’m going to consider the European laws on trade marks and how this would have gone down if Sony had applied in Europe instead. Second – trade mark law is complicated and individual cases are fact specific. Lastly, I’m not your lawyer, so please remember this isn’t legal advice =)

What is a trade mark? 
Trade marks usually refer to the signs used by companies (their names, logos etc) to act as a badge of origin and distinguish their goods and services from their competitors’ – when you hear iPhone you think of Apple; when you see the golden arches, you think of McDonalds; when you hear PlayStation, you think of Sony and equally Microsoft for Xbox. Having a registered trade mark effectively lets you stop other people from using the protected mark, thereby preventing customers from being tricked into buying goods which they think are from you, when they’re actually not. 

One important thing to know about trade marks is that you have to register them in respect of certain ‘classes’ of goods / services – e.g. class 1 includes chemicals, class 6 includes metals and class 9 largely includes software (and in turn, video games). And when you’ve picked your broad class you can specify in more detail exactly what products you want to protect (e.g. handheld consoles, game software etc). So you don’t get a monopoly right over every single use of your mark – you’re only protected in relation to the goods specified in your application.  

This means in practice there can be 2 identical, valid trade marks which are registered for completely different goods – e.g. ‘BeastMode’ could be both a trade mark for a game and also a separate trade mark for a dog food – that’s completely okay.

What can you trade mark? 
The best way to answer this is to look at what can’t be registered as a trade mark – under EU law there’s an absolute tonne of things which can’t be trade marked – these include marks which: (i) are contrary to public policy or principles of morality, (ii) are devoid of ‘distinctive character’, and (iii) signs which have become customary in the current language or in trade practices. You also can’t register a mark if it’s identical / similar to an existing trade mark in relation to the same / similar goods or services – what counts as ‘similar’ and ‘identical’ gets a bit technical, so I won’t go into that here. 

Would Sony have been successful if filing in Europe? 
If Sony had filed in Europe they would have applied for a Community Trade Mark (CTM) with OHIM (Europe’s trade mark body) which, if granted, would have given them protection for the term ‘Let’s Play’ throughout all 28 EU member states. We can guess what goods / services they would have chosen by looking at their US trade mark application, which states “Electronic transmission and streaming of video games via global and local computer networks; streaming of audio, visual, and audiovisual material via global and local computer networks.” In the EU, these services would likely fall within class 38 (communication services). 

As an aside, even if Sony were granted this trade mark, a developer could still theoretically trade mark the name ‘Let’s Play’ for a video game itself, since video game software isn’t included in Sony’s description – only the streaming of it is. 

Anyway, going through the above list of examples of things which can’t be trade marked, we start to discover areas where Sony may have faced difficulties. 

(A) Is the term ‘Let’s Play’ devoid of ‘distinctive character’? 
The entire point of a trade mark is to enable the public to distinguish the goods / services of one company from the goods / services of another. The term ‘Let’s Play’ though has been used across the internet for years by thousands of different individuals and companies referring to their videos and content, to the point where when someone says ‘let’s play’, from this alone it’s almost impossible to know who or what they’re talking about. The term has simply become a description of a medium of delivering entertainment like ‘film’, ‘music’ or ‘stream’ and gives no indication as to who has actually made the content. 

Sony would have to prove that, through their own use, the general public has come to think of them whenever someone uses the phrase. This would be difficult for anyone to prove, let alone Sony. If you had to pick someone who was most commonly associated with the term you’d probably think of famous let’s players like PewDiePie, The Yogscast and Achievement Hunter (the latter actually owning the YouTube channel, ‘Let’s Play’), but even then it’s not always a single source. The point is, it’s not Sony that springs to my mind at least.

(B) Existing similar marks and similar goods  
It’s possible Sony would have faced some objections from companies holding existing similar trade marks. There’s actually already a trade mark for ‘Let’s Play!’, but this is largely in relation to advertising services, so likely wouldn’t be a problem.  More worrying for Sony would be the similar trade marks such as ‘slots.com Let’s Play’, registered in relation to the “transmission of information over a global computer network such as the internet including…information pertaining to sporting events such as gaming” – not exactly the same mark or services as Sony, but enough to be ‘similar’ and confusing to the public? Maybe. So if the owners of these existing similar marks decided to challenge Sony’s (currently hypothetical) CTM application, Sony would have to prove to OHIM that there’s no real chance of confusion between the customers of their different companies.

If you want to know a little more about this issue I’ve written an entire piece about a recent trade mark application by Black Forest Games’ (Giana Sisters) for their new game, then titled ‘Dieselstormers’, which was rejected due to its similarity with the Diesel clothing trade mark.

(C) Has the term ‘Let’s Play’ become customary to the industry? 
You also can’t trade mark something which has become common vocabulary in the relevant industry for those goods / services – Sony may struggle here in proving that ‘Let’s Play’ hasn’t. A simple Google search (which is of course the full legal test) ((not really)) shows thousands of different people all describing what they do as let’s plays and Sony doesn’t even appear near the first several pages of results (barring of course stories about this incident). It’s at least arguable that the term ‘Let’s Play’ has become the common terminology for watching someone else play a video game largely because of popular YouTubers, rather than because of Sony itself. 

Why bother and what happens now? 
If Sony was granted its CTM it would (in theory) enable them to try and stop anyone else within Europe from using the phrase to describe what we commonly refer to as let’s plays.  I emphasise try because the realities of actually enforcing a trade mark aren’t always that straight forward. For one, the person on the receiving end of a cease and desist letter or lawsuit may have certain defences available to them, primarily that there’s no confusion on behalf of the public (e.g. when people watch a PewDiePie let’s play they’re not thinking it’s a Sony video). There could also be PR implications for Sony which could limit their enforcement – cast your minds back to the difficulties Bethesda faced in the court of public opinion when enforcing their trade mark ‘The Elder Scrolls’ against Mojang’s game, ‘Scrolls’. All of that said though, if Sony ever was granted and decided to enforce a ‘Let’s Play’ CTM, those in a position to actually fight this would probably be few and far between. 

So why did Sony apply for their US trade mark? Honestly, your guess is as good as mine here. Sure, we’ve had some controversial trade mark filings in the past like when King trade marked ‘candy’ and ‘saga’, but at least these were in relation to games that actually existed and they wanted to protect at the time of filing. If Sony had a prominent let’s play YouTube channel or were planning on extending their ‘Live from PlayStation’ service (which lets you watch streams of peoples’ PS4 games) this would make a lot more sense. It all just seems quite out of the blue for Sony to try to trade mark something which it doesn’t seem all that involved with at the moment. 

Sony has until June 29 to appeal the USPTO’s decision so it’s possible the story isn’t over yet, but for now let’s players around the world can rest easy.  

Thanks for reading!