1

Suppose that someone develops and distributes a free app, which will be published in the Google Play Store. The application is meant to be some sort of a drinking game / truth-or-dare game, which allows its users to create and share their own cards with their friends or even people on the internet.

A possible card could be a follows: PLAYERNAME1 has to perform ten jumping jacks. (PLAYERNAME1 in that case will be replaced by one of the participants' names)

Consider the following problem. Does the developer need to restrict users from submitting cards that contain certain trademarks, like for example Nintendo, Pokemon or something similar?

An example for that problem could be: PLAYERNAME1 has to guess the favourite Pokemon of PLAYERNAME2, if PLAYERNAME1 is right, do XYZ...

1
  • 1
    As edited, this is clearly a question about what the law requires, and not a request for specific legal advice. It should not be closed as a RSLA. Jun 22, 2021 at 14:58

1 Answer 1

0

No, There is no legal requirement to Restrict Users in this way

There are several principles of trademark law which lead to this conclusion. Some of them would apply even if the "cards" mentioning trademarks were supplied with the app. These principles are common to trademark laws in many countries, specifically to the US and to most countries in Europe.

Use in Trade

Firstly, trademarks are only protected when used in trade or commerce. That is, when selling something, advertising it for sale, or promoting it for possible sale. "Sale" may include free distribution to the public. To a limited extent harming the reputation of a product benign offered for sale through use of its trademark may also be prohibited.

As I understand the description of the app in the question, none of the mentions of trademarks would be used to sell or promote the sale of the app or of anything else, nor to identify the app or anything except the trademarked product to which the mark properly applies. Thus such use is not infringement of any trademark.

Nominative Use

Secondly, so-called nominative use of trademarks is permitted. This means using a trademark to identify the product it is properly associated with, when discussing or referring to that product. If one says "I drank a Coke with lunch." that is nominative use, and not an infringement of the mark. This also applies to competitive statements. The makers of a drink HyperCola, which competes with Coke, may advertise "HyperCola tastes better than Coke." and this is not infringement even if the makers of Coke do not agree.

The possible uses of a trademark described in the question would appear to be varieties of nominative use, and so are not trademark infringement.

Confusion

Thirdly, for the use of a trademark to be infringement, there must generally be actual or potential consumer confusion. Reasonable people must believe, or be likely to believe, incorrectly, that the product or service with the unauthorized mark is the product normally associated with the mark (the "authorized product"), or comes from the same maker or source as the authorized product, or is endorsed or approved by the makers of the authorized product, or is in some way associated with it.

The trademark uses described in the question do not appear likely to create such confusion, and so would not be infringement.

No Duty to Police Users

Fourthly, the maker is not responsible for the independant acts of users.

The above principles would all apply even if the use of the unauthorized trademarks were being done directly by the maker of the app, and such trademarks were included in the app itself. But they are not.

As described in the question, any trademarks would be entered into the app by users of the app, and not suggested by the app or its maker. Even if such trademarks were used in an infringing way, the maker of the app would not be responsible for that, any more than the make of a word processor would be responsible if someone used that to draft plans to rob a bank, or to write a work that infringed soemnone's copyright. The maker of a software product is not required to police the users for possible unlawful use. Unless the product is marketed to suggest such unlawful use, or has no significant lawful and legitimate use, the maker is not liable for unlawful uses.

Conclusion

The maker of such an app has no legal need to restrict its users from entering trademarks as part of self-designed "cards". This is a good thing, because it would be very hard to reliably distinguish between legitimate and infringing uses of trademarks by users. Even keeping up with what terms are currently valid and active trademarks in every country where the app might be used would be a burden, as trademarks go in and out of use, and may be different in different jurisdictions.

That the app is free of charge is not really relevant to this conclusion. The same principles would apply if the app were being sold for money.

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .