Chilling Effects
Home Weather Reports Report Receiving a Cease and Desist Notice Search the Database Topics
Sending
Topic HomeFAQsMonitoring the legal climate for Internet activity
Stanford Center for Internet & Society
 Chilling Effects Clearinghouse > Derivative Works > Notices > (NoticeID 1416, http://chillingeffects.org/N/1416) Printer-friendly version

August 26, 2004

 

Sender Information:
Square Enix Co., Ltd.
Sent by:
Kirkpatrick & Lockhart LLP


US

Recipient Information:




Quebec, H4C 2H2, Canada


Sent via: email, postal mai
Re: Infringement of

Re: Infringement of ?CHRONO TRIGGER? trademarks and copyrights ?
Our Ref.: 0821041.0001

Dear [Private]:

Our firm acts as intellectual property counsel for Kabushiki Kaisha Square Enix, aka Square Enix Co., Ltd., a world-famous producer and distributor of computer games and other entertainment products and services.

Our client created and distributes the computer game ?CHRONO TRIGGER?, which was first published in 1995 and is protected by U.S. Copyright Registrations Nos. TX-4-004-101 and PA-1-084-818. Also, our client owns three federal trademark registrations for ?CHRONO TRIGGER?, i.e.:

No. 2,021,310 ? Int?l. Class 16.

No. 2,024,475 ? Int?l. Class 28.

No. 2,270,900 ? Int?l. Class 9

We understand that you are developing ?Chrono Trigger: Resurrection?, a 3D remake of our client?s ?CHRONO TRIGGER? game which will recreate scenes from the original game. Your conduct in this regard constitutes copyright infringement and, inter alia, violates our client?s exclusive right to prepare derivative works based on its copyrighted work. Your use of the words ?CHRONO TRIGGER? in connection with your ?remake? and on your web site ?opcoder.com?, and your use of logos, scenes, characters and other images associated with our client?s games, constitutes trademark and copyright infringement and false designation of origin.

Accordingly, demand is hereby made that you immediately cease and desist from further development, promotion, sale or distribution of any product which is based on or derived from our client?s ?CHRONO TRIGGER? games, and that you cease and desist from all use of the ?CHRONO TRIGGER? trademark and logo, and all use of images or artwork from ?CHRONO TRIGGER? games.

This letter is written without prejudice to the exercise of any of our client?s rights and remedies, all of which are expressly reserved. If we do not receive your written response and adequate assurances within ten (10) business days of your receipt of this letter, our client intends to pursue its available remedies, which may include a lawsuit for injunctive and monetary relief, namely, damages, statutory damages, lost profits, costs, and/or attorneys? fees.

We await your response, and remain

Yours sincerely,


[Private]

 
FAQ: Questions and Answers

[back to notice text]


Question: What is trademark infringement?

Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.


[back to notice text]


Question: How can I find out whether a work has a registered copyright?

Answer: Works are copyrighted as soon as they are "fixed in a tangible medium of expression," but some legal rights and remedies are available only if the work's copyright is registered. To find a copyright registration, you may search copyright records at the Copyright Office website, but be aware that not finding a match does not mean the work is uncopyrighted.


[back to notice text]


Question: Where can I find federal trademark registrations?

Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is.

Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid.


[back to notice text]


Question: What constitutes copyright infringement?

Answer: Subject to certain defenses, it is copyright infringement for someone other than the author to do the following without the author's permission:

1. reproduce (copy) the work;

2. create a new work derived from the original work (for example, by translating the work into a new language, by copying and distorting the image, or by transferring the work into a new medium of expression);

3. sell or give away the work, or a copy of the work, for the first time (but once the author has done so, the right to sell or give away the item is transferred to the new owner. This is known as the "first sale" doctrine: once a copyright owner has sold or given away the work or a copy of it, the recipient or purchaser may do as she pleases with what she posesses.) 17 U.S.C. ?109(a);

4. perform or display the work in public without permission from the copyright owner. 17 U.S.C. ?106. It is also copyright infringement to violate the "moral rights" of an author as defined by 17 U.S.C. 106A. Moral rights are discussed here.


[back to notice text]


Question: What rights are protected by copyright law?

Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are:

(1) the right of reproduction (i.e., copying),
(2) the right to create derivative works,
(3) the right to distribution,
(4) the right to performance,
(5) the right to display, and
(6) the digital transmission performance right.

The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright. Names, ideas and facts are not protected by copyright.

Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion. Trademark protects names, images and short phrases.

Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement.

The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution.


[back to notice text]


Question: What is a derivative work?

Answer: A derivative work is defined as "a work based upon one or more preexisting works" that is subject to copyright protection. See 17 U.S.C. 101. Such works may be in the form of a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art or digital reproduction, or any other form in which a work is recast, transformed, or adapted from the original.


[back to notice text]


Question: What is trademark infringement?

Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.


[back to notice text]


Question: What is false designation of origin?

Answer: It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.


[back to notice text]


Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


Topic maintained by Stanford Center for Internet & Society

Topic Frequently Asked Questions (and Answers)
Chilling Effects Clearinghouse - www.chillingeffects.org
disclaimer / privacy / about us & contacts