aka “Pokémon Producers Pissed”
Pier Paolo Pandolfi of Sloan-Kettering Cancer Center has apparently received a trademark cease & desist from the Pokémon company (Nintendo) after cancer-related research on the Pokemon gene — which Pandolfi’s lab named four years ago, in 2001 — received headlines like “Pokemon Causes Cancer”. Sloan-Kettering has knuckled under, now calling the gene Zbtb7. See Nature, v. 438 no. 7070 (15 Dec. 2005) [html and pdf] (subscription access may be required).
Maybe. And some likely confusion
between trademark & copyright.
I would love to see that cease and desist letter. I’m sure they claimed both trademark infringement and dilution, and the kitchen sink, but come on. Trademark infringement is really a wash: consumer confusion between a Japanese video game and a cancer-causing gene? I’d like to see them try to prove that one in court.
Trademark dilution initially sounds like a stronger claim. Let’s just grant that “Pokémon” is “famous”. Dilution requires first of all the defendant’s “commercial use in commerce”. 115 U.S.C. 1125(c). I’d like to see the plaintiffs try to prove this one, too: that Professor Pandolfi’s pioneering medical research at a nonprofit cancer center is a “commercial use in commerce”.
After they passed that hurdle, the Pokémon plaintiffs would then have to prove actual blurring or tarnishment. Id.; Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). “Blurring” involves the “whittling away” of distinctiveness caused by use of the mark on even dissimilar products. It seems unlikely but not completely impossible that the use of the word “Pokemon” to name a gene discussed largely by scientists and occasionally in the scientific press could “whittle away” at the distinctiveness of a video game chiefly adored by 10-year-olds. That would have to be actual blurring, though, so bring on the surveys of 10-year-olds. Prepubescents, that is, preferably evaluated both pre- and post-exposure to that pernicious purveyor of Pokemon pandemonium, Professor Pandolfi.
So what about tarnishment? I presume that Nintendo was most concerned about tarnishment, since the C&D notices apparently went out only after bloggers & news reporters styled their stories “Pokemon causes cancer”. “Tarnishment” is a more interesting claim than blurring, at least to me — perhaps just because I have fantasies of seeing a brilliant oral argument explaining the science: Plaintiffs: The defendants’ association of our perfectly upstanding product with a cancer-causing gene is unsavory! Defendants: Your Honor, plaintiffs clearly lack any understanding of science. Genes may have multiple functions. “Good” or “bad” is a matter of context. That which causes cancer in one instance is also necessary for cellular function …. Etc. Eric Rothschild could do it, since by all accounts he did a bang-up job in Kitzmiller. (1)
And once again, it has to be actual tarnishment, not potential: Perhaps Nintendo could show its profits were imperilled by potential customers’ unsavory associations of computer games and cancer, but Nintendo merely being petrified of unsavory connotations of one application of a gene shouldn’t suffice.
So the claims look pretty paltry to me. And Nintendo took its time in raising them, too. Pokemon (the gene) has been in the literature since at least 2002, and Nature reported that it had been used in this way as early as 2001. (2) This doesn’t seem like punctual policing to me.
You’d think Nintendo would have been more upset by, say, studies which actually used the animated TV show “Pokémon” to study inducement of epileptic seizures — a phenomenon that was actually named “Pokemon phenomenon”. See, e.g., Fisher et al 2005; Furusho et al 2002. Or one might have expected that Nintendo would have seen that discretion was the better part of valor in this instance, and decided not to risk recalling media attention to the Pokemon-medical connection. And why didn’t their PR people chime in on this one? Suppose Nintendo actually made good on its threats; can’t you see the headlines? Video game company sues cancer research institute? Not the best PR in the world.
And btw — please pardon the persistent placement of “p” in this post. I couldn’t help myself.
(2) I tried to get a history of the name from Flynome, which has the history and source of various amusing fly gene names. (I’ve blogged it before.) But alas Flynome does not include Pokemon. It doesn’t have Sonic Hedgehog, either, another videogame/gene name, this one owned by Sony who has chosen wisely to remain silent on this potential ‘dilution’. Flynome does include ken and barbie whose litigious TM-owner Mattel has, like Sony, somehow managed to refrain from temptation in this instance.