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ESRB Recants Over T-Shirt Parody Trademark Cease & Desist Threat

I reported on November 10 that the ESRB had sent cease and desist letters to Kotaku, The BBPS and others concerning their reporting on a T-Shirt that parodies the ESRB logo (see the offending logo on the t-shirt depicted to the left). Despite being notified by Kotaku that the post is editorial content and not an advertisement for the sale of a T-shirt, the ESRB continued to demand the removal of the post.

The ESRB has since recanted and sent a letter to BBP&S (no workd on Kotaku yet) containing the following:

The ESRB Rating Icons are valuable trademarks of ESA, and we must be vigilant in protecting them against unauthorized commercial uses, lest our trademark rights become diluted. At the same time, we also understand and respect the First Amendment rights of those who, like bitsbytespixelssprites disseminate news and information.

That said, we have taken a second look at this issue and concluded that bitsbytespixelssprites was reporting on a product in the marketplace, and is not involved in distributing or marketing this product, and thus did not engage in any conduct sufficient to trigger the issuance of the cease and desist letter we sent. Please accept our apologies. I am happy to discuss this with you further if you so desire.

Sources: GamePolitics.com | Joystiq

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ESRB Sues Kotaku over Link to ESRB Parody T-Shirt

The ESRB is apparently demanding that Kotaku remove a post on their website describing and depicting a T-Shirt that parodies the ESRB logo (see the offending logo on the t-shirt depicted to the left). Despite being notified by Kotaku that the post is editorial content and not an advertisement for the sale of a T-shirt, the ESRB continues to demand the removal of the post. The ESRB demand letter states, in part:

We believe that this t-shirt ad will result in consumer confusion, and a substantial likelihood that the ESRB certification marks will face tarnishment and dilution.

Dale’s Comment: I personally don’t get the parody joke. Unfortunately the current state of trademark law is such that the trademark owner must fiercely protect its mark or face loosing it. This is an area of IP law that I believe is ripe for reform. The recent spat of “pod” related lawsuits brought by Apple against any company or service including ‘pod’ in their corporate, product or service name is another example of this silliness. Chris Bennet at the law firm of Davis & Company wrote this interesting blog entry on the topic. While the ESRB may have a case against the t-shirt manufacturer (and even that, I believe, is a tenuous case), they would have a much tougher time in any legal action brought against Kotaku based on this editorial post because Kotaku is not using the parodied logo in commerce. It merely comments on the existence of the shirt in a blog post. Trademark law is designed to keep others from using the trademark holder’s marks in commerce – not to keep editorialists from commenting on the existence of items that possibly infringe another’s trademarks.

[Update:] TheBBPS, a one man blog, apparently also received a cease and desist order from the ESRB for a similar blog post and took down the post. Destructoid, still another gaming blog, has seemingly decided to keep its post on the t-shirt up despite also receiving an ESRB cease and desist letter.

Sources: Kotaku | GamePolitics.com | Davis & Company | MMORPG Blog