Robotech and HG license debates

[ewilen]

I haven't yet turned up the February, 2004 ruling by the Supreme Court, but I did come across another interesting legal development that hasn't been reported yet. On November 11, 2003, the Tokyo District Court issued a (provisional?) judgment on a suit brought by Tatsunoko against Bandai and Big West. From my reading of the akamai-based machine translation at excite.co.jp, it appears that TP was claiming trademark infringement against Bandai and BW because of their release of Macros Zero. TP sought an injunction against Bandai/BW distributing DVDs and videos with the word "Macross" on the cover, or using "Macross" in advertisements, etc.

Tatsunoko lost the case completely--their claims were dismissed and they were assigned all of the court costs.

Some interesting points:

1) Tatsunoko claimed that it was the maker not only of SDF Macross, but of DYRL. And in fact, the court's finding of facts recognizes that the official announcement credits TP as the manufacturer of DYRL. However, the findings also show that there was a contract between BW, TP, Mainichi Broadcasting System, and Shogakukan, by which various rights were assigned in relation to the movie. According to this contract, BW was assigned "management of merchandising rights", while MBS and Shogakukan got the broadcast and video rights.

2) The findings of fact in this case have perhaps the most detailed description of the October, 2002 memorandum between BW and TP. But the summary of the memorandum still doesn't explicitly address rights to sequels. (However, see the next item.)

3) While the case is mainly over trademark and unfair competition, it touches tangentially on the various sequels' copyright status. The findings note that for all announcements concerning Macross II, M+, and M7, Big West was displayed as copyright owner, and there was no display of Tatsunoko. This goes against TP's trademark claims.

4) As far as I can tell, TP lost the trademark case because the word "Macross" has not been associated specifically with works created by TP, but instead with a variety of goods created by a consortium including TP, Studio Nue, BW, etc.

The Japanese text of the judgment can be found at Translan here. It should also be available at courts.go.jp, but I've only been able to locate a Google cache of it there. Here's a link to the cache.

Edit: the cache link doesn't work anymore, but here's another site which has the text of the judgment.

Edited March 26, 2004 by ewilen

[bsu legato]

Thanks for the update, ewilen. Interesting developments in the ongoing saga.

[Abombz!!]

1) Tatsunoko claimed that it was the maker not only of SDF Macross, but of DYRL. And in fact, the court's finding of facts recognizes that the official announcement credits TP as the manufacturer of DYRL. However, the findings also show that there was a contract between BW, TP, Mainichi Broadcasting System, and Shogakukan, by which various rights were assigned in relation to the movie. According to this contract, BW was assigned "management of merchandising rights", while MBS and Shogakukan got the broadcast and video rights.

So we basically found the grounds where HG stands as far as DYRL SPs go.... but if BW has the rights to mechandising.... and MBS and Shogakukan have the rights to the video..... what does TP have? Bragging rights?

[ewilen]

Nope, just because TP helped make DYRL doesn't give them merchandising rights for it. HG's claims about producing the Superposables under a legitimate license remain murky. Let me see if I can summarize the information on the contracts associated with the DYRL project:

The main contract was between BW, TP, Mainichi, and Shogakukan. A separate contract was concluded with Toho (the "Toho contract") for distribution and performance in cinemas.

MBS got domestic television broadcasting rights. Shogakukan got video publishing rights. BW, TP, MBS, and Shogakukan negotiated the value of these rights. If I understand correctly, MBS and Shogakukan put this value into a "pot" managed by BW. The money from the Toho contract also went into the pot. Income generated through merchandising was added to the pot, but BW first deducted a 10% commission. Finally, BW distributed the pot to the "equity participants". I assume this means that the pot was divvied up based on the share of the initial investment.

In other words, TP got a share of the total income generated by DYRL, in proportion to its investment. The findings of fact show that out of total production costs of 200,020,000 yen, BW paid 100 million yen while the other three investors each paid 1/3 of the remainder. So TP owns a 16.67% stake.

Also, I must correct myself about TP "manufacturing" DYRL. What the findings actually say is that TP made the animation. I'm also going to go out on a limb and guess that

[TP] has responsibility and manages the original film after this theater version animation completion (drawing and sound)

means that TP was assigned ownership or management of the original footage. However, some rather murky language seems to say that BW and TP made arrangements regarding other production aspects (story, character, voice actors, etc.) and the copyrights thereto.

So the "maker" of DYRL for copyright purposes isn't clear, and in any case the copyright could be assigned by contract.

[Abombz!!]

Nope, just because TP helped make DYRL doesn't give them merchandising rights for it. HG's claims about producing the Superposables under a legitimate license remain murky. Let me see if I can summarize the information on the contracts associated with the DYRL project:

The main contract was between BW, TP, Mainichi, and Shogakukan. A separate contract was concluded with Toho (the "Toho contract") for distribution and performance in cinemas.

MBS got domestic television broadcasting rights. Shogakukan got video publishing rights. BW, TP, MBS, and Shogakukan negotiated the value of these rights. If I understand correctly, MBS and Shogakukan put this value into a "pot" managed by BW. The money from the Toho contract also went into the pot. Income generated through merchandising was added to the pot, but BW first deducted a 10% commission. Finally, BW distributed the pot to the "equity participants". I assume this means that the pot was divvied up based on the share of the initial investment.

In other words, TP got a share of the total income generated by DYRL, in proportion to its investment. The findings of fact show that out of total production costs of 200,020,000 yen, BW paid 100 million yen while the other three investors each paid 1/3 of the remainder. So TP owns a 16.67% stake.

Also, I must correct myself about TP "manufacturing" DYRL. What the findings actually say is that TP made the animation. I'm also going to go out on a limb and guess that

[TP] has responsibility and manages the original film after this theater version animation completion (drawing and sound)

means that TP was assigned ownership or management of the original footage. However, some rather murky language seems to say that BW and TP made arrangements regarding other production aspects (story, character, voice actors, etc.) and the copyrights thereto.

So the "maker" of DYRL for copyright purposes isn't clear, and in any case the copyright could be assigned by contract.

Its still a bit confusing. So does that mean HG has the right to use the DYRL animation as they see fit? Because if TP has the owndership of the animation..... HG would have it too, by proxy.

But considering BW has the ownership of merchandize righs..... would that mean that TP/HG can use the animation bu not make anything out of it?

[azrael]

Okay, for you people just tuning in (yet again). Let's go over what ewilen said. Tatsunoko owns the animation to SDF Macross. Big West lost the appeal apparently. We've known this for a while so having this just reinforces the original fact. Tatsunoko sued Big West and Bandai (Bandai Japan) for copyright infringement on the "Macross" name. Tatsunoko lost. Again, the general feeling from this is, Tatsunoko never had a claim to those since they were never part of the production. Bandai has been the principal source for distribution and many other things with Macross since Macross II. Again, we've known this. IMO, this may be why Bandai reps have been mummed about this subject since they appear to be part of the on-going legal issue, i.e. keep this in mind if you should talk to Bandai's reps.

Now onto the weird part. TP was included in the credits to DYRL?. This may be the cause for the RT toys. Although TP owns roughly 17% of DYRL?, an arrangement was made between TP and BW so whatever is between TP and BW is hard to figure out on who owns the copyright to the animation of DYRL?. Is this right ewilen?

[ewilen]

The most important point to remember is that rights can be modified through contracts. The only right that can't be transferred by contract is the author's moral right (a.k.a. "author's personal right"): the right to be identified as the author of a work, the right to control its release to the public, and the right to maintain the work's integrity. (Even then, in many cases, an author is considered to have given implied consent to the use of his work.)

The rights to distribute a work and make derivatives based on it--which includes merchandise--are part of copyright. Copyright can be transferred or assigned. Also, in many legal systems (including the US) it can be broken up into almost infinitely small bits--if you have the copyright on Superduper Cosmic Battle Wars, you can sell company X an exclusive license to sell 1/170 scale plastic models in the US, and another exclusive license to make 1/100 scale diecast toys in Japan to company Y. Each company is then considered the copyright holder for that type of merchandise in that domain, but you retain copyright on everything else related to your work.

So to see who has the right to make DYRL merchandise for sale in the US, you have to ask, first, who own(ed) the copyright to DYRL at the time it was created, and second, did that person or entity transfer the US merchandise copyright?

1) Because DYRL is a cinematic work, copyright would belong to the company which "[took] the initiative in, and the responsibility for" making it. (Article 2, item x here and Article 29 here.) Another requirement is that the actual creative author give his consent, but I doubt that's an issue here.

In the SDF Macross animation case, the court interpreted this to mean that the company which was directly responsible for paying the bills, and which therefore undertook the economic risk, owns the copyright. But in DYRL, we have a consortium putting up the money and sharing the risk. At least, that's how the contract is structured. Even though the shares weren't equal, I think that the most likely interpretation would be that everyone in the consortium shares the copyright.

2) However, the contract I summarized shows that copyright was divided up among the various parties from the start. And it appears that Big West obtained authority over assigning licensees for merchandising. If I'm right, then TP has no right to license DYRL merchandise in Japan. And since all indications are that the October, 1982 memo between TP and BW only gave TP overseas merchandise rights for SDF Macross, it would seem that TP doesn't have merchandising rights to DYRL anywhere at all.

Similarly, the video distribution rights for DYRL were assigned to Shogakukan by the contract. It doesn't matter if TP owns the original footage--they don't have the right to copy it, show it to the public, or broadcast it. Just as you don't gain the right to do those things when you buy a DVD.

In short, I don't see TP owning any significant rights to DYRL other than a share of the revenues and, probably, the right to see their name on the screen. If they really are the custodians of the master print, they may also able to charge fees to access the print for copying purposes. Or they could probably sell it.

Azrael,

Tatsunoko sued Big West and Bandai (Bandai Japan) for copyright infringement on the "Macross" name.

Correction: trademark infringement.

TP was included in the credits to DYRL?. This may be the cause for the RT toys.

I don't think so. See above.

Although TP owns roughly 17% of DYRL?, an arrangement was made between TP and BW so whatever is between TP and BW is hard to figure out on who owns the copyright to the animation of DYRL?. Is this right ewilen?

I think it's pretty clear that Shogakukan owned the exclusive distribution copyright, at least at one time. The license appears to have passed either directly or indirectly to Kiseki/Best Films for distribution of the English dub, at least in North America and Britain. Bandai, Pioneer, or Victor could conceivably now own parts of the distribution copyright in Japan, seeing as they've all been involved in video releases. I don't see any direct evidence that TP or HG own any of the distribution copyright--but HG could have bought it recently. Even so, that wouldn't matter for merchandising purposes.

So as far as the Superposables are concerned, I'll just say again that my best guess is they're a sign of some kind of agreement between HG and Big West--however unlikely that may seem. This is supported by Tommy Yune recently saying "we finally got around to properly getting the license". But although HG may recognize that they need to license DYRL from BW, that doesn't mean that they've accepted BW's right to license or distribute Macross stuff outside Japan. I'd certainly like to see that, but it's still possible that HG's view of the Macross franchise will prevail in practice if not in a court of law. That is, HG could understand that it can't just "take" designs from Macross works outside the original TV series, but it could still block distribution and merchandising of those works (except in Japan).

Edited February 21, 2004 by ewilen

[KoOkyKyoji]

So SDF belongs to Tatsunoko again? Yeesh, then I guess if Tatsunoko can take back Macross just because they animated it, I guess Rough Draft Korea can take back the Simpsons from 20th Century Fox because they provide a majority of the animation production for it.

Enough joking aside, I'm still kinda lost in all of this, so the animation of the first series is the property of Tatsunoko, but are the intellectual and design properties still under the ownership of Studio Nue and Big West? (Big West's legal statement regarding the license from 2 years ago is still on their site that's never been updated)

Seriously I'm still confused with all these crazy antics. Too bad BW and Studio Nue didn't have the power to just take back the properties from Tatsunoko like what Go Nagai and Dynamic did to Toei about the Dynamic properties that were animated and distributed by Toei back in the 70s/late 80s.

[ewilen]

So SDF belongs to Tatsunoko again? Yeesh, then I guess if Tatsunoko can take back Macross just because they animated it, I guess Rough Draft Korea can take back the Simpsons from 20th Century Fox because they provide a majority of the animation production for it.

Enough joking aside, I'm still kinda lost in all of this, so the animation of the first series is the property of Tatsunoko, but are the intellectual and design properties still under the ownership of Studio Nue and Big West? (Big West's legal statement regarding the license from 2 years ago is still on their site that's never been updated)

Seriously I'm still confused with all these crazy antics. Too bad BW and Studio Nue didn't have the power to just take back the properties from Tatsunoko like what Go Nagai and Dynamic did to Toei about the Dynamic properties that were animated and distributed by Toei back in the 70s/late 80s.

The long version: read the thread from the beginning.

The short version: TP got SDF Macross because they were directly responsible for paying the day to day costs of production. In the court's eyes, they undertook the financial risks associated with producing the cartoon, so they own it.

The character/mecha design properties are still owned by SN and BW. It's not entirely clear who owns the "story"--or even if that matters. I believe SN and BW would be shown to own the copyright on the story if that ever became an issue, such as for determining who has the right to "set stories in the 'Macross universe'". Certainly the judgment of last November shows that TP can't use its ownership of SDF Macross and its involvement in DYRL to prevent use of the term "Macross" on trademark grounds. (But the case could be appealed.)

That's about it for the situation in Japan. In the US, things are further complicated due to the secrecy of the contract which originally granted TP the exlusive overseas rights to Macross. (Key issue: were these rights to SDF Macross, or was the entire notional Macross "franchise" assigned?) As well, there is the question of whether the Macross "franchise" consists of derivatives of SDF M, or if SDF M and the other Macross anime, manga, games, etc. are coequal creations from a common source material. If the former, then HG can exclude other Macross stuff from its region. If the latter, HG's right to do so would depend on the terms of the aforementioned contract.

Finally, there's the issue of U.S. trademark. We've been talking a bit about this over in the forums at Blueforge Games' website. HG has somehow managed to register trademarks on the logo for "Super Dimensional Fortress Macross" and the word "Macross" in spite of several prominent non-HG Macross products being released, without contest, in the US. (M+, MII, DYRL dubs, and MII manga and RPG supplement.) At the same time, BW has tried and failed to register trademarks on "Macross" and "Macross Plus".

[Pat Payne]

The character/mecha design properties are still owned by SN and BW. It's not entirely clear who owns the "story"--or even if that matters.

I can't see how it wouldn't matter. The story is the essence to any creative work of that nature -- the animation wouldn't exist (or would be just a series of pretty [unless they're AnimeFriend or Star Pro] pictures) without it. Every animated picture has to have a story that's integral to it. Even Windsor McCay's "Gertie the Dinosaur" of circa 1910 had a brief story to it: Gertie is hungry. She eats tree. Yum!

Besides, if BW/SN still own the plot, and not TP (which owns the footage, at least, to the TV series), there's two legal scenarios that could happen (IANAL, so anyone with more legal chops, feel free to correct me)

1) If BW felt like making it an issue, couldn't they challenge any further worldwide release of Macross ont he grounds that they didn't give consent for the underlying plot (their property) to be sold without their consent?

2) what's to stop them from reassembling as much of the cast as possible, and re-animating the series?

There is precedent for this, at least in US/Euro law. Ian Fleming and a man named Kevin McClorry co-wrote the James Bond novel "Thunderball." McClorry had been invited in to co-write this novel by Fleming to aid in its transition to the movie screen -- by this time, MGM was courting Fleming to bring his sceret agent to the silver screen. McClorry somehow was able to secure, as part of his payment, the rights to the novel (except for author's credit). After MGM/Danjaq/Eon made "Thunderball," McClorry was left with a property that he wanted to exploit, and believed that he had the rights (based on his co-authorship to "Thunderball") to use the James Bond character in other movies.

Finally, in the late '70s, he wrote and shopped around the script for what would become 1983's "Never Say Never Again," and Cubby Broccoli (the producer for the now mega-lucrative franchise) went through the roof. He sued McClorry, claiming copyright infringement, trademark infringement, the whle nine yards. In the end, the courts ruled that McClorry did have some rights to the James Bond universe -- he could use James Bond only in derivatives of the story to "Thunderball." In other words, he could exploit that particular story independently of Cubby Broccoli, Danjaq or MGM, since he was the author. Of course, he wasn't able to use Monte Norman's iconic theme nor the famed "gunbarrel" opening, but the courts said he could make a Bond film. 20th Century Fox released it in 1983.

In the same way, if BW and SN own the story itself, they could say to TP "Keep the footage. We'll do a re-make of the show." Or conversely, if TP owns the story, they could do stories that are direct derivatives of Macross TOS, and nothing else.

That's why ownership of the story is so important.

Edited February 27, 2004 by Pat Payne

[ewilen]

Yes, the "Never Say Never Again" case is a good example of the principles that may be involved.

Note that I have said in this thread and others that I believe BW/SN own the story. The entire series outline, including the episode breakdown, had already been created by Kawamori et. al. before Tatsunoko Pro's involvement. This is very similar to the situation with the line drawings.

As well, it is noteworthy that in the November 11, 2003 trademark decision in Japan, Macross II, Macross Plus, and Macross Seven were adduced as evidence that the "Macross" name didn't belong to TP, since those works had been released by BW/Bandai without crediting TP at all. One would think that if TP claimed ownership of the "Macross concept or story", they would challenge this evidence on that basis, and if they had a valid claim, the court would reject the evidence. However, TP did not take this route; instead, they merely claimed that MII etc. were earlier examples of trademark infringement. The court rejected this argument.

Now, one might say that it wasn't the place of the court, in a trademark case, to rule on a copyright question. That may be, but if so, TP should have pursued a copyright infringement case against BW first, to strengthen its grounds for claiming trademark infringement.

In conclusion, I doubt very much that TP believes it has a credible case to make an exclusive claim to the "Macross concept or story". I would go further to say that TP doesn't even have a nonexclusive claim to the story--again, because the situation with the story appears to be the same as the situation with the line art.

The reason I expressed some reservations about the importance of owning the story, though, is that the connection between the various Macross works is mainly in terms of "background or setting". They don't even share many characters. I do realize that sequels have generally been viewed as "derivatives" or "secondary works" under the law, but the way the law is written is actually fairly unclear, and the caselaw is thin. Therefore I think it could be argued that ownership of the original Macross story isn't relevant to sequel rights, because you can't copyright an idea, only its expression. I do believe such an argument would face an uphill battle in court. But that's why I included that caveat.

[med96ben]

HG didn't care about Macross. It all started when the internet became popular in the early 90's and Macross/Robotech toys were selling for insane amounts of money on Ebay. Toycom was poised to release Macross Plus toys. HG realized what they were missing out on tons of bucks and voila- the rest is history...

[91WhiskeyM6]

HG didn't care about Macross. It all started when the internet became popular in the early 90's and Macross/Robotech toys were selling for insane amounts of money on Ebay. Toycom was poised to release Macross Plus toys. HG realized what they were missing out on tons of bucks and voila- the rest is history...

Kinda like Micro$oft'$ action$ during the internet craze of the late 90'$.

[Duke Togo]

HG didn't care about Macross. It all started when the internet became popular in the early 90's and Macross/Robotech toys were selling for insane amounts of money on Ebay. Toycom was poised to release Macross Plus toys. HG realized what they were missing out on tons of bucks and voila- the rest is history...

Kinda like Micro$oft'$ action$ during the internet craze of the late 90'$.

How so?

[ewilen]

It's irrelevant to the topic.

[areaseven]

This may be a bit off-topic, but I spotted this at a store:

UVeritech

Veritech Industrial, Ltd.

Veritech Consulting Group

The Veritech Corporation

Veritech Australia Pty Ltd

Veritech Energy

Robotech Logistiksysteme

Robotech Industries, Ltd.

Robotech Center

I wonder if these guys paid royalties to HG for using the Veritech and Robotech names...

Edited March 14, 2004 by areaseven

[Effect]

Well HG doesn't seem to own the trademark on the name Veritech. I remember reading that there was already a company named that. They sell some type of vacum cleaner or something.

[areaseven]

You know my dad used to own a business a long time ago called "Blinds R Us." It wasn't very long before he got a letter from you know who. They claimed that anything named "______ R Us" infringed on their brand. They actually had no case, but the cost to dispute it in court would have put my dad out of business, he just renamed his business.

But to answer the question directly, I could open a dry cleaning shop right next door to HG (thanks drew) and name it Robotech Cleaners, I could even put up pictures of generic looking mecha all over the place and HG couldn't touch me.

Okay. Then explain why the World Wildlife Fund made a big fuss over the acronym WWF because some wrestling company was using it.

Anyway, if it's a common word or name, no two companies can fight over it, as long as their businesses are completely different. You don't see Big O Tires suing Bandai and Sunrise for The Big O, do you? (Hell, they should use Big O himself as the company mascot and stand him next to the Michelin Man.)

When Apple Computers first opened, they had to reach an agreement with Apple Records (owned by the remaining members of The Beatles) that they can use the name Apple as long as they don't involve themselves in any form of music. Well, Apple's in trouble with their iPod MP3 player and iTunes website.

But the case is this: Robotech is a word originally created by Revell and owned by Harmony Gold. If someone forms a company or creates a product using a name that someone else made up and copyrighted - regardless of whether or not the products or companies are related, the creator of that name has the right to sue. One example is Sanka. For years, the company fought to keep their name because people in some places in the U.S. stopped using the word "coffee" and kept on referring to the beverage as "Sanka." Hormel is also going to the justice department to protect the "Spam" brand name from being used to describe unsolicited email.

Bottom line is this: Robotech and Veritech are made-up words owned and copyrighted by a company. Why HG has not responded to the many companies and products that use the names Robotech and Veritech are beyond me.

[ewilen]

HG was never able to successfully trademark "Veritech", possibly because other companies were already using the term. They did manage to register "Rick Hunter's Veritech Fighter" and "Miria's Veritech Fighter", but both marks were cancelled because they weren't renewed.

HG also trademarked "Robotech"; that too was cancelled due to non-renewal in the 1992. HG filed a new application on "Robotech" in 1999, which was registered in 2001.

Just go to http://www.uspto.gov/ and search on whatever term you like. You can also search by registrant to locate all the trademark filings by HG and BW.

Edit: fixed the URL for the trademark office.

Edited March 15, 2004 by ewilen

[areaseven]

HG also trademarked "Robotech"; that too was cancelled due to non-renewal in 1992. HG filed a new application on "Robotech" in 1999, which was registered in 2001.

Why so late, though?

[ewilen]

Obviously, because they had forgotten all about RT until Toycom rediscovered the market for them.

[the white drew carey]

Surprisingly they must not be minding the store again because the Robotech Pool Cleaner is still in business.

[wrylac]

Surprisingly they must not be minding the store again because the Robotech Pool Cleaner is still in business.

Could be that Robotech Pool Cleaners was registered during the period between 1992 and 2001. I would imagine they would be grandfathered into having the ability to use the name. I suppose the pool cleaner company could have challenged the Robotech Trademark, but obviously it went through so they probably didn't care or they did and that's why it took 2 years for the trademark to register, in any case it belongs to HG now.

[JB0]

Surprisingly they must not be minding the store again because the Robotech Pool Cleaner is still in business.

Could be that Robotech Pool Cleaners was registered during the period between 1992 and 2001. I would imagine they would be grandfathered into having the ability to use the name. I suppose the pool cleaner company could have challenged the Robotech Trademark, but obviously it went through so they probably didn't care or they did and that's why it took 2 years for the trademark to register, in any case it belongs to HG now.

Not completely.

They have it in areas where tehre isn't a pre-existing user.

If Harmony Gold ever wants to make a Robotech pool cleaner, they can't.

[wrylac]

Surprisingly they must not be minding the store again because the Robotech Pool Cleaner is still in business.

Could be that Robotech Pool Cleaners was registered during the period between 1992 and 2001. I would imagine they would be grandfathered into having the ability to use the name. I suppose the pool cleaner company could have challenged the Robotech Trademark, but obviously it went through so they probably didn't care or they did and that's why it took 2 years for the trademark to register, in any case it belongs to HG now.

Not completely.

They have it in areas where tehre isn't a pre-existing user.

If Harmony Gold ever wants to make a Robotech pool cleaner, they can't.

I don't see where we disagree, but thanks for the follow-up anyway.

[JB0]

I was elaborating.

For our purposes, Harmony Gold just plain has the Robotech trademark.

But it's not REALLY that simple. They only hold it in the anime industry, if for no other reason than because the pool industry has a prior claim.

...

Mcdonald's actually had a similar problem at one point, and had to buy a little resturaunt before they could open a franchise in one state, because the little place predated teh corporation, and thus had a prior claim in that area.

McDonald's the corporation would have been infringing on their trademark, which, while unregistered, was still a legitimate claim due to US law protecting unregistered trademarks and copyrights. Patent law is similar, but less powerful.

[ewilen]

Can anyone answer (with references, please!) whether a prior claim on trademark has a "statute of limitations"? I realize that trademark registrations expire after a few years if they're not renewed--that's not what I'm talking about. Rather, if say Sears put out a product a century ago under a certain name, but hasn't used the name in eighty years, would they still have a prior claim?

[Radd]

Unfortunately I don't have a solid reference for this, but I believe a trademark applies only if it is tied in with your business. If you still have the business going, then the trademark still applies, having it registered just makes it a whole lot easier to prove your claim. However, if the trademark expires, and you stop pushing the brand name then you're facing an uphill battle. At least, that's how it was explained to me back in art school during a class on copyrights and trademarks and how they applied. That was years ago, though, so take this with a grain of salt.

[ewilen]

Okay, I've found some useful info. Trademark registration is codified in state, Federal, and even International law, but trademark itself doesn't require registration, at least in the U.S. Registration does provide a lot of advantages.

See Trademarks and Business Goodwill

Other valuable links include

How the Law Protects Trademarks (Findlaw)

Using and Enforcing Trademarks (Findlaw)

Avoiding Patent and Trademark Problems

Internet Fan Site Article (Useful in that it discusses the need to defend trademark or lose it.)

The actual Federal Code bearing on trademark is Title 15, Chapter 22, and is available on numerous sites on the Internet. In addition to discussing registration, the law defines infringment, including in cases of importation. (It's been mentioned before, but it is really quite remarkable that HG never followed up its cease and desist letters to merchants.)

http://www.jurisdiction.com/part0001.htm Provides an example of trademark abandonment and the answer to my question by pointing to the relevant section of Title 15:

Under U.S. trademark law at the time of the proceeding, a mark is deemed abandoned when "its use has been discontinued with intent not to resume such use. Nonuse for two consecutive years shall be prima facie abandonment." 15 U.S.C. 1127. Effective January 1996, the period of uninterrupted nonuse constituting prima facie abandonment will be extended from two to three years. This amendment to the U.S. trademark statute is the result of the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS), part of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT).

The current text can be found at Findlaw here.

EDIT: I just realized those Findlaw links may not work for everyone. To get them to work, you must first click on a few links at the Findlaw site to specify your state and metropolitan area. After that, the links will work. Sorry about the confusion.

Edited March 15, 2004 by ewilen

[areaseven]

From Robotech Pty Ltd.'s Homepage (http://www.robotech.com.au/):

Since 1990 Robotech Pty Ltd has been a family owned company based in the southern suburbs of Adelaide.

Tell me this: if HG had the copyright for the name Robotech until 1992, why didn't they sue these guys?

[1st Border Red Devil]

Tell me this: if HG had the copyright for the name Robotech until 1992, why didn't they sue these guys?

Cause I dont think they are making animated Tv shows about mecha and trying to sell them on television. Sure they could sue over a name....which is just going to waste time. You generally sue other companies that are in related fields.

Case in point: Kevin Siembieda, founder of Palladium Books, owns the registered copyright of the word Megaverse. Malibu Graphics (who own Eternity Comics, that was making the Robotech II: The Sentinels series...and had cribbed stuff FROM the Robotech RPG made by Palladium) decided to make a whole new line of super-hero comics...calling the series Megaverse (Mega-humans is what they were called in the line IIRC) which was later changed to Ultraverse.

They are in related fields and could potentially cause confusion in the marketplace. Palladium, in turn, had to change the name of its Nightspawn RPG when it was contacted by lawyers from Todd McFarlane because they were infringing on his Spawn copyright.

Robotech.com.au and Robotech.com are totally unrelated and anyone could tell within the first few seconds of going to that site. They are in unrelated fields and I don't think you will have marketplace confusion....cause I dont see Robotech.com.au advertising its wares in Diamond.

[ewilen]

Besides which, robotech.com.au is in Australia. And HG had registered TRADEMARK (not copyright) in the US. You can't copyright a name.

The distinction is important for many reasons. While copyright protection automatically applies equally in all countries which belong to the Berne Convention, trademark isn't inherently universal. You only "own" a trademark in the region where you use it to conduct business. So your trademark could be limited to a state, a region, or a specific country. Furthermore, copyright automatically stays in effect for a specific number of years; trademark can be considered "abandoned" based on far less specific criteria, such as whether it is being actively used and whether the owner has defended it against dilution or infringement.

Even though registration isn't absolutely necessary to protect trademark in many countries, if HG didn't register their trademark in Australia, they would have had a weaker claim to it there. As well, I don't know how much Robotech business HG did in Australia up to that time. And yes, the Australian Robotech company is in a different line of business, so it's relatively unlikely to cause confusion.

[Effect]

Okay question. Since part of the reason HG tried to stop the Macross Plus valks from being released here in the states was their belief that they own all things Macross and thus started the the whole lawsuit thru TP. With it being shown that BW owns the designs, characters, etc and TP just owning the animation and rights to sell SDF Macross overseas some things have been cleared up. Now there is HG selling DYRL poseables and Tommy Yune saying they had finally gotten the license properly. That right there admits that they didn't have the rights to it before and kills their claim to all things Macross. Well the lawsuit proved that but this has them admiting.

So now we have them selling Macross Plus in their store. I think they are just acting as a normal online store with this. With them getting their copies from Manga like all the other stores such as Twin Moons, AnimeNation, etc. Reason I think this is the case is that in the past they have announced when they put up items they own for sale in their store. They did this for Gatchaman, Casshan Robot Hunter, SDF Macross, Mospeda, Southern Cross, Robotech, the differnet items from them, clothes. They have yet to do this with Macross Plus but surprisingly they did news articles for Mari Iijima. One should note that none of the songs on her cd are Macross ones. I see her being on there is a personal choice from some of the HG staff and being related to Minmay but not because HG has any rights to it but know they can make money off it. I have no problem with that. Same with Macross Plus being sold by them.

Now since they might be selling Macross Plus just like any other store wouldn't this greatly open up the door for Yamato to sell Macross Plus valks in the US.?

Clearly HG is showing that there will be no market confusion by releasing them or under the name of Macross Plus since they are selling Macross Plus on their own corperate site. Same goes for Do Your Remember Love? items since there was Tommy Yune saying they had gotten around to getting the license. So this too might open the door for more Yamato VF-1 valks since clearly the DYRL poseables aren't going to confuse the market. Them getting a license properly like said shows they didn't have the rights to make items for it before. If they did get the rights I doubt they would be allowed to stop other DYRL items from being released then again. If that is the case maybe its like said earlier. They might have a head start to sell items before BW decides to come into the market. Sort of how games are exclusive on one system for a certain amount of months before being released on other systems.

True this is all speculation but seems reasonable. Maybe they gave them to AX or even 2005 to finish things up and to prepare themselves. Which would make sense cause by that time HG would be doing New Generation type of items, especially with the new series and would have move on pass Macross and they wouldn't have to worry about losing sales on it since they will be putting most of their effort into the new series and mospeada type items. Mean while BW could be free to release Macross Zero, maybe 7, along with the VF-1 valks. Maybe I'm dreaming but what do you think? Without any thing to really check this makes things hard.

[ewilen]

Okay question. Since part of the reason HG tried to stop the Macross Plus valks from being released here in the states was their belief that they own all things Macross

We don't know what HG believes. We can be fairly certain that the M+ Valks didn't get released because HG wanted to be paid royalties if they were released in the US, and BW wouldn't allow that.

and thus started the the whole lawsuit thru TP.

BW/SN apparently sued first. At least, the character/mecha design lawsuit, in which they were plaintiffs, reached judgment long before the TV show lawsuit, in which TP was the plaintiff. I believe that BW/SN's strategy was to establish the various designs as independent copyrights from the TV show, and thus provide grounds for exploiting them in toys sold in the US. That's pretty much what BW said after the judgment. I think that TP's countersuit was really an attempt to argue against the character/mecha design judgment on other grounds. If so, it failed.

With it being shown that BW owns the designs, characters, etc and TP just owning the animation and rights to sell SDF Macross overseas some things have been cleared up. Now there is HG selling DYRL poseables and Tommy Yune saying they had finally gotten the license properly. That right there admits that they didn't have the rights to it before and kills their claim to all things Macross. Well the lawsuit proved that but this has them admiting.

The Yune comment seems to be an admission that HG doesn't have rights to DYRL. That's not the same thing as admitting that HG doesn't have exclusive rights to sell Macross stuff in the US. My interpretation of HG's position is that they can't do anything with DYRL/M+/etc. without BW's permission, and nobody can do anything with Macross outside Japan without HG's permission.

The significance of the DYRL SP announcement and the Yune comment about getting the license is that BW and HG are probably beginning to cooperate in some way.

By the way, I don't think HG really has a case on copyright grounds. I think the entire strength of their claim comes from trademark issues.

So now we have them selling Macross Plus in their store. I think they are just acting as a normal online store with this. With them getting their copies from Manga like all the other stores such as Twin Moons, AnimeNation, etc. [...]

Now since they might be selling Macross Plus just like any other store wouldn't this greatly open up the door for Yamato to sell Macross Plus valks in the US.?

Not greatly. Somewhat. HG certainly seems to have admitted that it has no problem with M+ videos being sold in the US. In theory, this could mean that the "Macross" trademark isn't infringed by the "Macross Plus" name. But it might only apply to videos--in which case, a "Macross Zero" video release might be okay, but "Macross Plus" toys might still be a problem.

Besides, Yamato would have to have a license from BW to sell M+ valks in the US. Toycom had such a license, but it may not be in effect anymore. If BW is working with HG, we don't know what effect that might have on BW's licensing practices in the US.

Clearly HG is showing that there will be no market confusion by releasing them or under the name of Macross Plus since they are selling Macross Plus on their own corperate site. Same goes for Do Your Remember Love? items since there was Tommy Yune saying they had gotten around to getting the license.

Could be, but far from clear. By releasing the DYRL toys, HG is simply releasing new toys under its existing "Macross" trademark. In no way does this conflict with the market notion that "If you want to buy 'Macross' toys in the US, you must go to a company licensed by HG."

So this too might open the door for more Yamato VF-1 valks since clearly the DYRL poseables aren't going to confuse the market.

No, see above.

Them getting a license properly like said shows they didn't have the rights to make items for it before. If they did get the rights I doubt they would be allowed to stop other DYRL items from being released then again. If that is the case maybe its like said earlier. They might have a head start to sell items before BW decides to come into the market. Sort of how games are exclusive on one system for a certain amount of months before being released on other systems.

It depends on what you mean by "be allowed to stop other DYRL items". If this is all the result of a settlement, then of course BW could have given HG certain rights in exchange for HG agreeing to stop impeding BW effort's to license Macross stuff in the US. If you say that by getting the license from BW, HG has automatically surrendered its legal argument over trademark, I think you would be mistaken.

True this is all speculation but seems reasonable. Maybe they gave them to  AX or even 2005 to finish things up and to prepare themselves. Which would make sense cause by that time HG would be doing New Generation type of items, especially with the new series and would have move on pass Macross and they wouldn't have to worry about losing sales on it since they will be putting most of their effort into the new series and mospeada type items. Mean while BW could be free to release Macross Zero, maybe 7, along with the VF-1 valks. Maybe I'm dreaming but what do you think? Without any thing to really check this makes things hard.

Yes, this is the scenario that I suggested in another thread. BW may be giving HG a shot at exploiting other Macross works, in exchange for HG ending its interference with BW's worldwide licensing enterprises. Not only does HG get another product to sell--and a bit of a head start--but HG will benefit from synergy/free publicity as the Macross name gains prominence more widely. I think it's plausible, but even if something like this is going on, we may not know for at least a few months.

[Gaijin]

It has to be said, that this is actually good news. From a certain point of view.