Archives for category: toys

Kids use their parents credit card on Facebook and rack up unauthorized debts. Users’-parents file for a class action, to absolve those debts. In particular, regarding credits purchased for the game “Ninja Saga”

I.B., by and through his Guardian ad Litem BRYAN FIFE, et al., Plaintiffs,
v.
FACEBOOK, INC., Defendant.

No. C 12-1894 CW

UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA

Decided, October 25, 2012 by Opinion of Judge Claudia Wilken

Below are the facts from the Opinion (citations to complaint removed):

Facebook operates the largest online social network in the world and provides a payment system, Facebook Credits, for users to make purchases within the Facebook website. Facebook permits minors to register on its website and use its service

In October 2011, Plaintiff I.B., a minor, asked his mother, Plaintiff Glynnis Bohannon, for permission to spend twenty dollars on his Facebook account using Bohannon’s Wells Fargo Master Card, in exchange for twenty dollars in cash I.B. purchased Facebook Credits from Facebook for use in “Ninja Saga.” Subsequently, without any notice that his mother’s credit card information had been stored by Facebook and the Facebook Credits system, or that his mother’s credit card information was being used again after the initial twenty dollar purchase, I.B. made in-game purchases for which he thought he was spending virtual, in-game currency. As a result, Bohannon’s credit card was charged repeatedly and without her consent, and the charges totaled several hundred dollars. Upon discovering the transactions, Bohannon tried to obtain a refund from Facebook by leaving a phone message at a phone number listed for Facebook but received no response.

This opinion is on motions to dismiss,

Facebook moves to dismiss the 2AC for failure to state a claim and to strike the class allegations. Plaintiffs oppose the motions.

As to requests for Judicial notice:

Facebook asks the Court to take judicial notice of screen shots of webpages from Facebook’s website on the grounds that they were specifically referred to in the 2AC or illustrate the allegations in the amended complaint. These include Facebook’s Statement of Rights and Responsibilities, Payment Terms, Help Center pages and payment screens in the game Ninja Saga. Plaintiffs object to these exhibits. Facebook’s manager of Payment Operations, Bill Richardson, provides a supporting declaration concerning the public availability of these webpages. However, Mr. Richardson states that the screen shots were viewed and printed between April 13, 2012 and May 10, 2012, and his declaration does not indicate whether these webpages were in effect or available at the time of the events alleged in the 2AC. Richardson Decl. at 2-4 nn.1-6. In support of Facebook’s reply, Mr. Richardson states that Facebook did not “materially alter” the Ninja Saga payment pages between October 2011 and May 2012. Suppl. Richardson Decl. 3. However, whether the minor Plaintiffs I.B. and J.W. would have viewed these particular payment pages is subject to reasonable dispute. Facebook’s request for judicial notice is therefore denied. See In re Easysaver Rewards Litig., 737 F. Supp. 2d 1159, 1168 (S.D. Cal. 2010) (denying request for judicial notice where “[t]he Court finds that whether these are the webpages Plaintiffs would have viewed during their online transactions is subject to ‘reasonable dispute.'”) (citing Fed. R. Evid. 201).

Then discussing applicable law regarding minors in contracts, subheadings: “2. Contracts Voidable Under Family Code Section 6710” and “a. Minors May Disaffirm Contracts Even After Receiving Benefits”:

Facebook contends that minor Plaintiff I.B. cannot disaffirm his contract because he has already received the full benefit of the Facebook Credits that he purchased by using the Credits to make in-game purchases in “Ninja Saga.

Facebook contends that the ruling in E.K.D. on the enforceability of the forum selection clause is directly applicable here because minor Plaintiff I.B. has already accepted the benefits of the contract to purchase Facebook Credits, as demonstrated by his concession that he used the Credits to make “in-game purchases” in the Ninja Saga game. Mot. at 10-11 (citing 2AC 25). Although Plaintiffs do not allege what Plaintiff J.W. did with the Credits that he purchased, Facebook infers that he also spent the Credits online and argues that allowing the minor Plaintiffs to disaffirm their contracts would result in “an unfair windfall to the minor.”

The court goes on to address claims of violations of Electronic Fund Transfer Act, 15 U.S.C. § 1693 et seq. (EFTA) to which

Facebook contends that it is not a “financial institution”

But

Plaintiffs do not contend that Facebook is a financial institution but rather assert a claim under HN22Go to this Headnote in the case.15 U.S.C. § 1693m, which provides for civil liability against persons other than financial institutions.”

And

Plaintiffs do not sufficiently allege which provision of the EFTA has been violated … motion to dismiss the EFTA claim is granted with leave to amend

Then the Consumer Legal Remedies Act, California’s Unfair Competition Law and the Money Transmission Act.

In conclusion a mixed decision of dismissals, some with leave to amend, and some denied. The claims under the California Family Code remain.

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In this case decided in 2010, a prisoner had his Dungeons and Dragons material confiscated and was prevented from engaging in gameplay or possessing the book materials. This Court of Appeals affirmed. There are no first amendment rights to play dungeon and dragons in prison. The Court cites to Meyer v Branker (Ninjalaw 68) amongst other cases that legitimize a claim that D&D can lead to unhealthy fantasy-seeking escapist-behaviors, at least in some people. Therefore the government prison has a legitimate interest in banning the content.

KEVIN T. SINGER, Plaintiff-Appellant,
v.
RICHARD RAEMISCH, * PHILLIP KINGSTON, BRUCE C. MURASK I, and MARC J. MASSIE, Defendants-Appellees.
* Pursuant to Federal Rule of Appellate Procedure 43(c)(2), Richard Raemisch, the current Secretary of the Wisconsin Department of Corrections, is automatically substituted for former Secretary Matthew J. Frank.

No. 07-3400

UNITED STATES
COURT OF APPEALS
FOR THE SEVENTH CIRCUIT

593 F.3d 529
2010 U.S. App. LEXIS 1506

Argued September 18, 2009
Decided January 25, 2010

Before Chief Judge Easterbrook and Circuit Judges Williams and Tinder

Opinion by Circuit Judge Tinder:

After concluding that the popular role-playing game Dungeons and Dragons (“D&D”) represented a threat to prison security, officials at Wisconsin’s Waupun Correctional Institution took action to eradicate D&D within the prison’s walls. Inmate Kevin T. Singer found himself on the front lines of Waupun’s war on D&D when prison officials confiscated a large quantity of D&D-related publications from his cell. Singer sought relief from the prison’s new regulations–and the return of his D&D materials–through the prison’s complaint system, a pursuit which ultimately proved fruitless. Singer then brought this action against a variety of prison officials pursuant to 42 U.S.C. § 1983. He alleged that Waupun’s confiscation of his D&D materials and imposition of a ban on D&D play violated his First Amendment right to free speech and his Fourteenth Amendment rights to due process and equal protection. The prison officials moved for summary judgment on all of Singer’s claims, and the district court granted their motion in full. Singer appeals the grant of summary judgment with respect to his First Amendment claims, and we affirm.

I. Background

Kevin T. Singer is an inmate at Wisconsin’s Waupun Correctional Institution. He is also a devoted player of D&D, a fantasy role-playing game in which players collectively develop a story around characters whose personae they adopt. Singer has been a D&D enthusiast since childhood and over time has acquired numerous D&D-related publications. His enthusiasm for D&D is such that he has handwritten a ninety-six page manuscript outlining the specific details of a “campaign setting” he developed for use in D&D gameplay. Footnote #1: A typical D&D game is made up of an “adventure,” or single story that players develop as a group. A related series of games and adventures becomes a “campaign.” The fictional locations in which the adventures and campaigns take place–ranging in size and complexity from cities to entire universes–are called “campaign settings.” For more information about D&D and D&D gameplay, see Wizards of the Coast, What is D&D?, http://www.wizards.com/default.asp?x=dnd/whatisdnd (last visited Jan. 20, 2010).

Singer’s devotion to D&D was unwavering during his incarceration at Waupun. He frequently ordered D&D publications and game materials by mail and had them delivered to his cell. Singer was able to order and possess his D&D materials without incident from June 2002 until November 2004. This all changed on or about November 14, 2004, when Waupun’s long-serving Disruptive Group Coordinator, Captain Bruce Muraski, received an anonymous letter from an inmate. The letter expressed concern that Singer and three other inmates were forming a D&D gang and were trying to recruit others to join by passing around their D&D publications and touting the “rush” they got from playing the game. Muraski, Waupun’s expert on gang activity, decided to heed the letter’s advice and “check into this gang before it gets out of hand.”

On November 15, 2004, Muraski ordered Waupun staff to search the cells of the inmates named in the letter. The search of Singer’s cell turned up twenty-one books, fourteen magazines, and Singer’s handwritten D&D manuscript, all of which were confiscated. Muraski examined the confiscated materials and determined that they were all D&D related. In a December 6, 2004 letter to Singer, Muraski informed Singer that “inmates are not allowed to engage in or possess written material that details rules, codes, dogma of games/activities such as ‘Dungeons and Dragons’ because it promotes fantasy role playing, competitive hostility, violence, addictive escape behaviors, and possible gambling.” This prohibition was later reiterated in a daily bulletin that was posted throughout the prison. It was also incorporated into a broader policy prohibiting inmates from engaging in all types of fantasy games.

Though plaintiff cited “a literacy tutor and a role-playing game analyst, testified to a positive relationship between D&D and rehabilitation, none disputed or even acknowledged the prison officials’ assertions that there are valid reasons to fear a relationship running in the opposite direction”:

The prison officials pointed to a few published circuit court cases to give traction to their views. We view these cases as persuasive evidence that for some individuals, games like D&D can impede rehabilitation, lead to escapist tendencies, or result in more dire consequences. See Meyer v. Branker, 506 F.3d 358, 370 (4th Cir. 2007) (noting that defendant Meyer “was obsessed with Dungeons and Dragons,” and that “this obsession caused ‘[him] to retreat into a fantasy world of Ninja warriors’ “); Thompson v. Dixon, 987 F.2d 1038, 1039 (4th Cir. 1993) (affirming the conviction of one of two men who brought a D&D adventure to life by entering the home of an elderly couple and assassinating them); cf. Sellers v. Ward, 135 F.3d 1333, 1335 (10th Cir. 1998) (defense counsel argued that Sellers’s addiction to D&D dictated his actions and disconnected him from any consciousness of wrongdoing or [**20] responsibility for three murders); Watters v. TSR, Inc., 904 F.2d 378, 380 (6th Cir. 1990) (describing a teenager who committed suicide as “a ‘devoted’ Dungeons and Dragons player who became absorbed by the game to the point of losing touch with reality”).

And therefore,

Conclusion

Despite Singer’s large quantum of affidavit testimony asserting that D&D is not associated with gangs and that the game can improve inmate rehabilitation, he has failed to demonstrate a genuine issue of material fact concerning the reasonableness of the relationship between Waupun’s D&D ban and the prison’s clearly legitimate penological interests. The district court’s grant of summary judgment is therefore AFFIRMED.

This 2004 case is about copyright of the design elements of miniature motorcycles.

KIKKER 5150 and KELLY KIKKERT, Plaintiffs, v. KIKKER 5150 USA, LLC, et al., Defendants.
No. C 03-05515 SI

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
2004 U.S. Dist. LEXIS 16859; Copy. L. Rep. (CCH) P28,895

Decided – August 13, 2004
Opinion by district Judge Susan Illston:

This case concerns copyrights in miniature working motorcycles. Plaintiffs Kikker 5150 and Kelly Kikkert filed their complaint on December 8, 2003 against Kikker 5150 USA, Mark Gholson, and others (defendants or counterclaimants).

At issue is the design element of miniature motorcycles. Not toys, miniature-sized, functional motor vehicles.

defendants argue that “a Formula One race car is no more copyrightable than a Ford Escort and plaintiffs’ miniature motorcycles are no more copyrightable than a Harley-Davidson Heritage Softail or a Kawasaki Ninja.” As useful articles, defendants argue, plaintiffs’ miniature motorcycles are precluded from copyright protection.

The Court mostly agrees:

The Court finds that the miniature motorcycles are useful articles and therefore not eligible for copyright protection as such.

But,

The Court also finds, however, for the reasons discussed below, that there are genuine issues of fact concerning whether various “design elements” of the motorcycles “can be identified separately and are capable of existing independently as a work of art.”

The Court cites Fabrica Inc. v. El Dorado Corp., 697 F2d 890, 893 (9th Cir. 1983) which is a case about competing carpet companies and the potentially unfair use of a similar sales system, though the functional elements of are not copyrightable some aesthetic aspects may still be protected.

Therefore,

For this reason, defendant’s motion for summary judgment must be denied.

Summarizing:

Defendants argue that the motorcycles at issue are not copyrightable and ask the Court to issue a preliminary injunction or an order to show cause why a preliminary injunction should not issue. The Court finds that the motorcycles themselves are not copyrightable, since the motorcycles are useful articles and are not subject to copyright protection. However, since the Certificates of Copyright described the nature of the works as “three-dimensional, sculptural features and design elements of miniature motorcycles,” and since the Court cannot say as a matter of law that the design elements of the motorcycles are not severable and original, the Court declines to grant the motion to summarily adjudicate the copyrights’ invalidity.

No restraining orders where issued and so the case continued, presumably to be settled because I see no subsequent published case history.

Here the Court is quoting the defendant’s reply brief to mention the Ford Escort, the Harley-Davidson Heritage Softail and the Kawasaki Ninja. And we’ve seen mentions of the Kawasaki Ninja already in the NinjaLaw Court record . The Heritage Softail appears is four Federal Opinions and the Kikker 5150 case is its second appearance, the prior also being an intellectual property case. In contrast this is the first use of the Kawasaki Ninja in an IP case and the prior cases were all mentions of the actual bike. And the Ford Escort appears in over 300 cases beginning in the early 80s.

Note: here’s a warning about the dangers of Kikker bikes

Ultimately, this Kikker 5150 case stands for principles of copyright in toys – that is, that toys are copyrightable as to the aspects that are not part of the usable functions specifically. So it is fitting that “ninja” is mentioned here, because as we know from ninja law, “ninja” is strongly related to toys.

This is a case series from the mid to late 1990s involving Fasa’s Battletech characters and toy products based on those characters made by toy company Playmates, as relates to other toy products based they made for the ExoSquad characters.

battletech

FASA CORPORATION and VIRTUAL WORLD ENTERTAINMENT, Plaintiffs, v. PLAYMATES TOYS, INC., Defendant.
No. 93 C 2445
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
892 F. Supp. 1061; 1995 U.S. Dist. LEXIS 8741; 35 U.S.P.Q.2D (BNA) 1766
Decided – June 19, 1995

Beginning on June 19, 1995, the Court began the first phase of a potential four phase bench trial in this matter which involves an intellectual property dispute involving futuristic robot-like battle toys

Previously an opinion of the Court in FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994), explained:

The present lawsuit centers on Playmates’ alleged infringement of FASA’s intellectual property and proprietary rights in BATTLETECH by designing and marketing the EXOSQUAD toy line

And explaining (footnotes omitted):

BATTLETECH – created by FASA in 1984 and originally sold as a role-playing game – is a fictional universe set in the 31st century. The BATTLETECH universe is comprised of empires such as the Star League, an empire consisting of five cosmic houses each of which encompasses hundreds of interstellar worlds. Each house seeks control of the galaxy. The battles between worlds are dominated by BattleMechs (also called Mechs), massive man-shaped, robot-like tanks of various shapes and designs which are piloted by human soldiers called MechWarriors. Pls.’ Admis. P 2. Among the MechWarriors’ adversaries are the Clan Elementals, “men and women bred to be foot soldiers.” FASA CORP., BATTLETECH THE RETURN OF KERENSKY TECHNICAL READOUT: 3050 (1990) at 8.

The EXOSQUAD story line is set in the 22nd Century and involves confrontations between the conquering, genetically engineered, Neosapien race and an enslaved human race living on Earth, Venus and Mars. The Neosapiens and humans battle each other, encased in large robotic fighting machines known as “ExoFrames” or “E-Frames.” Segal Decl. P 5 Playmates markets a toy line – consisting of six toys – featuring characters and vehicles from the EXOSQUAD cartoon series. Pls.’ Facts PP 7, 9.

exosquad

There were complicated issues about licensing agreements and waivers, but in terms of intellectual property and analysis of substantial similarity:

Even the most cursory visual comparison of the EXOSQUAD and BATTLETECH materials reveals that there are marked similarities between the two. In particular, we note that the EXOSQUAD Heavy Attack E-Frame appears to be a virtual replica of the BATTLETECH MAD CAT. Because the court cannot conclude that no reasonable trier of fact could find substantial similarity, Playmates’ motion for summary judgment on this basis must be denied.

mad catassault mech

And so with summary judgment granted in part but denied in part, the case went forward.

Among the findings of fact listed in the 1995 opinion:

Playmates is a distributor of toys supplied by a related company, Playmates Toys (Hong Kong) Ltd. (“Playmates HK”), including TEENAGE MUTANT NINJA TURTLES, * TREK, ADDAMS FAMILY and various Disney characters, and also participates in the development of toys pursuant to an agreement with Playmates HK.

And so again, as we’ve already seen already in many NinjaLaw posts, the Federal Courts mentions TMNT for no particularly necessary reason.

The 1995 opinion concludes:

For all of the reasons set forth herein the Court finds that Playmates’ New Product Form is legally unenforceable under the facts and circumstances of this case. The Court therefore finds that defendant Playmates has not met its burden of establishing its affirmative defense of waiver. The trial will therefore proceed to Phase II on June 20, 1995 at 9:45 a.m.

And so the case continued again. In fact there are seven Federal Court opinions decided between 1994 and 1998 in relation to these parties’ dispute. The first two are those opinions mentioned above. The third was in the same court (US District Court for Northern District of Illinois, Eastern Division) and by the same Judge Ruben Castillo, 912 F. Supp. 1124 decided January 22, 1996.

Judge Castillo concludes (despite what he wrote above) that the two character sets are not substantially similar, and/or independently created, and/or there are “Specific, Non-Trivial Design Features Distinguish EXO-SQUAD From BATTLETECH” and the Judge also cites a study introduced to evidence by Playmates:

The study found no probative evidence of any consumer confusion–98.6% of the persons interviewed after seeing display packages of both products, did not confuse the trade dress of EXO-SQUAD with that of BATTLETECH.

Therefore, Castillo writes:

The bottom line in this case is that Playmates made a conscious business decision that it could proceed with the development of its EXO-SQUAD toy line after it had been given access to the BATTLETECH designs without the necessity or cost of obtaining a license from FASA. After extensive and undoubtedly costly litigation this business decision has been found by this Court not to violate FASA’s legal rights. Nevertheless, this Court believes that the facts of this case do not warrant the imposition of any costs upon FASA for seeking to vindicate its legally protectible rights. This case is dismissed with prejudice with both sides to bear their own costs.

Judge Castillo also found the opportunity to again mention the Teenage Mutant Ninja Turtles and in the findings of fact writes:

On May 11, 1992, Sallis called Allen to discuss whether there was a possibility of putting together an animated cartoon show about BATTLETECH because Playmates’ preference was to produce its new robotic action figure toy line with a corresponding television series. (Sallis Tr. 1592-93). Many successful toy lines, such as the Ninja Turtles and Power Rangers have been promoted in this fashion. (Johnson Tr. 2219). Sallis also discussed potential royalties and budgets with Allen.

ninja turtles power rangers

On appeal at the Seventh Circuit, Judge Diane Wood summarized the above three cases:

The underlying dispute between FASA and Playmates dealt with the question whether Playmates had impermissibly copied FASA’s Battletech line of toys, violating both its copyright and trademark rights (among others) in the process. In a thorough opinion issued after a bench trial (and an opinion of exceptional interest for science fiction aficionados), Judge Castillo ruled that, while the original features of FASA’s robots were entitled to copyright protection, and FASA had protectable trade dress rights in its robot designs, Playmates’ Exo-Squad line of toys were not substantially similar to FASA’s toys based on the Battletech universe, the evidence did not show a likelihood of confusion between the two for purposes of the trade dress complaint, and Playmates had not engaged in unfair competition. FASA Corp. v. Playmates Toys, Inc., 912 F. Supp. 1124 (N.D. Ill. 1996) (FASA III). Earlier, he had granted Playmates’ motion for partial summary judgment on FASA’s claims of common law unfair competition, dilution, and tortious interference with prospective business advantage. FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994) (FASA I), and somewhat later, he had denied Playmates’ affirmative defense of waiver. FASA Corp. v. Playmates Toys, Inc., 892 F. Supp. 1061 (N.D. Ill. 1995) (FASA II).

Judge Wood then continues:

Playmates, which reports to this court that it spent in excess of $ 2.5 million defending itself against FASA’s accusations, argues that the district court’s remarks explaining why he was denying attorneys’ fees reveal a mistake of law on the standard to be applied.

Wood concludes

In its briefs, FASA has made a Herculean effort to parse the judge’s comments, … Rather than attempting further to read between the lines of the judge’s oral remarks, we prefer to send the fee question back to him to rule again on the petition under the applicable legal standards. We emphasize in this connection that Fogerty says that “attorney’s fees are to be awarded to prevailing parties only as a matter of the court’s discretion.” 510 U.S. at 534.

And so vacated and remanded, the case again falls before Judge Castillo, who again decides (with a bit of a benchslap to Playmates attorneys) not to award any attorney’s fees. So concluding April 1, 1998:

The proper exercise of this Court’s discretion herein requires the Court to once again reject an award of fees. It is unfortunate that this litigation was prolonged by this attorneys’ fees dispute. The Court recognizes that it bears great responsibility by not clearly enunciating the specific basis of its prior denial of attorneys’ fees. Perhaps the Court mistakenly sought to avoid writing a fourth opinion in this hotly disputed litigation. Yet, the Court expressly notes that, rather than seek easy clarification from this Court, Playmates’ counsel merely thanked the Court at the conclusion of the February 13, 1996 proceeding and proceeded to the appellate court.

Today, almost two years later, this Court corrects its prior mistake and issues its fourth opinion which, in no uncertain terms, indicates that an evaluation of all the legal and equitable factors at the Court’s disposal pursuant to its post-Fogerty discretion compels this Court to deny Playmates any attorneys’ fees in this matter. Playmates pushed the extreme outer limits of non-liability in this case to reap great economic benefits. Simply put, an award of attorneys’ fees to Playmates would not advance any creative purpose sought to be advanced in the Copyright Act. Now Playmates wants to have its close legal victory as its cake and its attorneys’ fees as its icing. Playmates instead should be satisfied with the economic profits it reaped from its EXO-SQUAD toys and the fact that its vast attorneys’ fees are still currently tax deductible as reasonable corporate business expenses without any clear limitation. This Court cannot and will not give Playmates its cake and icing too because Playmates has simply not convinced this Court that a fee award would equitably advance any creative purpose protected by the Copyright Act.

Meanwhile, if it weren’t already confusing enough, in two other opinions decided in the same district court around the same time, but by different judges, Playmates is a co-plaintiff against FASA, where the other co-plaintiff is Harmony Gold USA Inc., owners of the Macross and RoboTech character licenses. See Harmony Gold U.S.A. v. FASA Corp., 169 F.R.D. 113 (November 6, 1996, Decided) and 40 U.S.P.Q.2D (BNA) 1057 (June 12, 1996, Decided) and eventually settled out of court.

This is a complicated set of similar characters with crossed licensing agreements and arguable but specific differences. Judge Castillo considers it all part of the cost of doing business – the merchandise driven TV cartoon business. The Ninja Turtles serve to explain similar contemporary cartoon-toy businesses. There is no clear reason for the Court to have focused on that particularly comparison.

A Robotech fansite, terrania.us, has a great organized list of all seven Fasa v Playmates cases with link to the full opinions.

In the 1992 trademark case of Monarch v Ritam, the Federal Court decided the usage of the word “ooze” or “ooz” in the marketing of a novelty toy product goo. The Court decides that ooze is either generic or descriptive and does not qualify for Lanham Act protections. And for the second time, a federal court cites Teenage Mutant Ninja Turtles even though its not really involved in the case.

MONARCH LICENSING, LTD., Plaintiff, -against- RITAM INTERNATIONAL LTD., INC., and BRAVMAN ASSOCIATES, INC., Defendants.
92 Civ. 3108(PNL)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1992 U.S. Dist. LEXIS 8225; 24 U.S.P.Q.2D (BNA) 1456
June 12, 1992, Decided

The Court explains:

Ooz Ball is either a generic unprotectible mark or a descriptive mark which is unprotectible without secondary meaning.

Ordinarily, distinctiveness is a prerequisite to the establishment of trademark rights. Marks that are generic are never protectible. Marks that are descriptive rather than distinctive are protectible only on a showing of “secondary meaning.” See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 – 11 (2d Cir. 1976); Restatement (Third) of Unfair Competition §§ 13, 15 (Tent. Draft No. 2 1989) [hereinafter Restatement]

Monarch’s asserted trademark rights attach to the mark “Ooz Ball.” This mark results from the combination of two words: “Ooze” (with the final silent “e” dropped) and “ball.” This mark is used to designate an object which is denoted, or at least described, by those words. The object is delivered in the form of a ball and is intended to be used (at least partially) as a ball (by bouncing it and throwing it). The material of which the ball is composed can properly be called ooze. “Ooze” is a word from Old English which in ancient times referred to the muddy silt characteristically found in the beds of rivers or other bodies of water. From the Old English noun developed the same word as a verb, denoting the action characteristic of such muddy silt; the verb has in [*16] turn influenced the meaning of the noun which has come to include “that which oozes.” See I Compact Edition of the Oxford English Dictionary 1993 (1971). Thus a thick viscous liquid that flows slowly (or oozes) is Ooze.

A strong argument may be made that when this mark is used for this product, it is generic and therefore unprotectible, see Abercrombie & Fitch, 537 F.2d at 9; Restatement § 15; “Ooz Ball” is used in connection with a product that is a ball of ooze, or an ooze ball. As to the dropping of the silent “e,” such HN4Go to this Headnote in the case.spelling changes that do not affect pronunciation ordinarily will not save a generic mark. See, e.g., Leon Finker, Inc. v. Schlussel, 469 F. Supp. 674, 678 (S.D.N.Y.), aff’d, 614 F.2d 1288 (2d Cir. 1979); Restatement, § 14, Comment (a) and § 15, Comment (a); see generally 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:12 at 555 – 556 (2d Ed. 1984).

The argument that the mark is generic is strongly supported by the text on the Ooz Ball packaging which, immediately under the trademark Ooz Ball, adds a descriptive line describing the product as a pod of “Intergalactic Ooze.” Also, the instructions on the package advise that if the product dries up, drops of water may be added to restore its “ooz-ability.” The inference is further reinforced by the fact that two other manufacturers of similar products, in addition to Ritam, have used the word ooze as part of the mark and/or description of their product: Dinosaur Ooze and Teenage Mutant Ninja Turtles Retromutagen Ooze.

At the very best, this mark sits at the low end of the “descriptive” category. As a descriptive mark, it is not entitled to protection without having achieved secondary meaning in the marketplace. See Abercrombie & Fitch, 537 F.2d at 10.

Monarch has made a very skimpy, conclusory and inadequate showing of secondary meaning. If the mark escapes the generic unprotectible category and is properly considered descriptive, it is, nonetheless, in all probability unprotectible because of inadequate proof of secondary meaning.

Recall that TMNT was cited before in a NinjaLaw case about soda and the cola wars because they made a “cowabunga cooler” product. While this “ooze” case is a more unusual product, it seems there were a lot of these oozes (and Ghostbusters slime) on the market and I think perhaps judges and law clerks like the “ninja turtles” and love the opportunity to mention it as we will see in many future cases as we continue to into NinjaLaw.

In 1991, Hasbro was again in Federal Court arguing about ninja. Recall from the first ninjalaw post, that Hasbro was responsible for the first instance of ninja in the Federal Courts in 1988. Just three years later, they are back in court arguing about a license on a line of ninja action figures called Ninja Warriors.

HASBRO, INC., Plaintiff/Counterclaim-Defendant, v. CHILD’S PLAY INTERNATIONAL CORP., Defendant/Counterclaim-Plaintiff, and STUART R. ROSS, Defendant
No. 87 Civ. 4613 (WK)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1991 U.S. Dist. LEXIS 10794

Decided – August 1, 1991

Judge Knapp’s opinion begins:

In this action arising from a license to manufacture and market a line of ninja action figure toys, licensee/counterclaim-defendant Hasbro, Inc. (“Hasbro”) moves for summary judgment dismissing the amended counterclaims against it. For reasons that follow, the motion is granted.

Explaining:

The following facts are not in dispute. Child’s Play was at all times relevant to this action a corporation controlled and operated by its president, defendant Stuart Ross. It was formed in late 1984, primarily to develop, manufacture and distribute children’s toys. Sometime in 1985, Child’s Play acquired from a third party a line of toys consisting of seven ninja warrior human action figures, one of which rode horseback (the “Ninja Warriors” or the “Line”). Each figure had been given a name, had Asian features and dress, and was armed with an exotic weapon. [footnotes omitted]

In Footnote #4,

Based on a martial arts theme, ninja action figures are designed to be used by children in simulated battles waged with weapons such as large swords, boomerangs and lances.

Continuing,

By the spring of 1986, ninja action figures generally were enjoying considerable popularity in the children’s toy market. Seeking fully to capitalize on this wave of popularity, Child’s Play decided to license its Line to a toy manufacturer and marketer with expertise and financial resources greater than its own.

To this end, Child’s Play approached counterclaim-defendant Hasbro, a major developer, manufacturer and marketer of children’s toys. Although Hasbro had since 1982 included between one and four ninja action figures in its G.I. Joe action figure line, it had not yet developed its own line of action figures devoted solely to the ninja martial arts theme. Seeking to take advantage of the popularity of ninja action figures, it considered the possibility of acquiring Child’s Play’s Line.
[footnotes omitted]

In Footnote #6,

In the only affidavit submitted in opposition to the motion, Ross states that he was unaware that Hasbro had included ninja action figures within its G.I. Joe line. There is, however, no suggestion that that line had not been extensively advertised by Hasbro, or that the existence of ninja G.I. Joe action figures was not otherwise readily observable by anyone in the industry. Cf. Conan Properties, Inc. v. Mattel, Inc. (S.D.N.Y. 1989) 712 F. Supp. 353, 367-68.

Then the decline in ninja popularity,

Notwithstanding Hasbro’s efforts, the attention of children somehow became focused on toys other than ninja human action figures. During the fall and early winter of 1986, Hasbro’s salesmen began reporting to senior management that its retailer-customers would not be purchasing the Line because consumers had stopped buying ninja action figures manufactured by other toy companies

And,

As a result of the disappointing response to ninja figures in general, and the Line in particular, Hasbro postponed and eventually abandoned its plan to launch a television advertising campaign.

And,

Hasbro’s sales force already was reporting that there was great resistance from Hasbro’s retail store customers which were not placing orders for the Ninja Warriors. The Hasbro sales force was reporting that Hasbro’s customers felt that the ninja action figure fad was ending and the appeal of ninja lines of boys toy action figures was in decline as ninja lines of other manufacturers were being left on the shelves of their stores; Our customers had no capacity or disposition to take another ninja line of boys toy action figures.

And since,

there is nothing in the record to suggest that Hasbro, in continuing to produce ninja figures within its G.I. Joe line, either exceeded its rights to do so under the Agreement or did so to the detriment of the Ninja Warrior Line.

Therefore,

We have considered Child’s Play’s other contentions and find them to be without merit. Because we conclude that Child’s Play has failed to come forward with sufficient evidence from which a trier of fact reasonably could find that Hasbro’s efforts to promote the Line were insufficient, Hasbro’s motion for summary judgment is granted.

I wonder, did Ninja Warriors really fail because of a declining market interest? Or did Hasbro successfully kill a competing line of toys? According to the Court it was the former. But maybe it was also poor action figure quality, note the limited joint movement in the pictures below compared to GI Joe.

This toy archive website lists the Ninja Warriors character names but unfortunately there are no pictures. And this action figure forum site has these pictures:



There are 103 case opinions in Federal Courts with the word “ninja” according to a Lexis search. The first is actually a typo (explained below). So the true first is the 1988 decision in Hasbro Indus. v. United States, Court No. 84-1-00087, UNITED STATES COURT OF INTERNATIONAL TRADE, 12 C.I.T. 983; 703 F. Supp. 941, Decided, October 25, 1988

This case involves the import taxes (harmonized tariff) on G.I. Joe action figures and determines that they should be taxed at a higher rate because they are human dolls. This distinction between human and nonhuman figures has recently been reported in a variety of blogs because of a decision regarding X-men merchandise. (See Toy Biz v. US). For similar tax reasons as will be discussed below for Hasbro, Marvel lawyers argued in 2003 that certain X-men figures were nonhuman. This created hullabaloo amongst comic fans because a major plot line of the X-men comic is that these characters are humans who are persecuted for being mutant humans. Arguing that mutants are not human is good for taxes but goes counter to what the X-men fight for.


– Law and Multiverse – “Are the X-Men Human? A Federal Court Says No”
– RadioLab – “X-men vs Tariff Law”
– The Cardozo Jurist – “Courts Rules Marvel Action Figures Are Not Dolls”
– Escapist – “Federal Court Rules that the X-Men are Not Human”

But first the typo – In Office of Supply Govt. of the Republic of Korea v. M. V. Naftoporos, No. 81 Civ. 4507, UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK, 1985 U.S. Dist. LEXIS 15671, September 24, 1985, Decided – the Court cites a quotation to “M. Golodetz Export Corp. v. S/S Lake Ninja, 751 F.2d 1103, 1110 (2d Cir. 1985)” — except that is scrivener’s error – the correct party name of the defendant in that case was “S/S Lake Anja” = the name of a cargo vessel. So that is the first use of “ninja” in the Federal Court but it’s a typo. That said, even if it is complete error, it is somewhat ironic or coincidental that the first case with “ninja” has “the Republic of Korea” as the named plaintiff.

So, now back to the GI Joes case, Hasbro v US, Judge Watson for the Court writes:

This action involves the proper classification of plastic figures described as “G.I. Joe Action Figures” and imported from Hong Kong during 1982 and 1983. The merchandise was classified as “other dolls” under Item 737.24 of the Tariff Schedules of the United States (“TSUS”), at various duty rates, depending upon the date of entry. Plaintiff claims that the importations are properly classifiable as “toy figures of animate objects” under Item A737.40 of the TSUS, which, having met the requirements for duty free treatment under the Generalized System of Preferences, (“GSP”), should be free of duty pursuant to General Headnote 3(c) of the TSUS.

The Court then goes on to give thoroughly enjoyable descriptions of many action figures, particularly:

The third figure selected for description is designed “Counter Intelligence.” This is a white female with red hair, wearing what appears to be a beige, one-piece bathing suit, together with beige boots and gloves over black tights. Molded on the figure is a knife on the left thigh, what is possibly a small explosive device on the right thigh, a grenade on the left shoulder, a small pistol on the inside of the right forearm, and what appear to be two “throwing stars” (a type of weapon associated with Japanese “ninja“) on the exterior of the left glove. The figure comes with a “XK-1 Power Crossbow” accessory.

GI Joe fans will recognize this as a description of Counter Intelligence, Scarlett O’Hara.


The Court quotes the entirety of the back filecards for each character, as in the image above, quoting:

“Scarlett is confident and resilient * * * it’s remarkable that a person so deadly can still retain a sense of humor.”

The Court profiles the action figures and characters of Duke, Roadblock, Doc, Scarlett, Cobra Commander, and Baroness.

Hasbro’s arguments are GI Joe are “action figures” not “dolls” but the Court disagrees concluding:

The testimony offered at trial could not overcome the fundamental definition established by lexicographic common meaning and prior case law. Although it is clear that plaintiff does not use the word “doll” in the marketing of these figures, none of the plaintiff’s witnesses could persuade the Court that this was a matter of basic definition. On the contrary, the evidence as a whole supports the conclusion that the emphasis on the term “action figure” is a conscious avoidance of the definitionally correct term “doll” and that when these articles are described in general publications in this society such as newspapers or magazines, or in specialized publications devoted to collectors of dolls, they are frequently referred to as “dolls.”

In sum, the Court is of the opinion that these figures have been properly classified as “dolls” under Item 737.24 of the TSUS. Further, for what it is worth, the Court notes that this classification does not in any way detract from the respect which these figures deserve as representations of the human participants in the never-ending struggle between good and evil. Henceforth, each and every one of these figures must accept the fact that, for tariff purposes and by judicial decision, they must face the world as “real American dolls.” Hopefully, they will meet this decision as to their tariff classification with courage and pride.

It is my suspicion that this tariff classification for action figure toys is a major reason that Michael Bay’s TMNT will change the narrative to make the Teenage Mutant Ninja Turtle be aliens. Aliens are nonhuman and so they should be taxed at the lower rate. Bay has been quoted today by CNN saying in response to fan reaction about the alien-origin plot: “Relax .. We are just building a richer world”.

Yes, Richer because of tax savings.

Ok that’s enough for my first NinjaLaw post. There are more Teenage Mutant Ninja Turtles in other cases and we’ll get to them later – and you may also Shepardize this Hasbro case too, there is a follow-up case about other Joes in 1989 and the 1988 case is also cited in the Toy Biz opinions about X-Men in both 2001 and 2003 . This is just a first post – there will be more NinjaLaw.