British Columbia Lottery Corporation v. Ma

Background

British Columbia Lottery Corporation (BCLC), described in the opinion as a Canadian Crown Corporation, owns and operates GameSense, a program promoting responsible gambling. BCLC owns a registered GameSense trademark covering downloadable audiovisual presentations, printed educational materials, and educational information about responsible gambling for casino patrons. It also has two pending applications to register variations of the mark.

Nehemiah Chun Ma is a managing member of Gamesense, LLC, which sells video-game accessories such as computer mice, mouse pads, and keyboards. Ma testified that he encountered “gamesense” as a term referring to spatial or situational awareness in a game. After conducting a basic trademark search, Ma learned of BCLC’s GameSense trademark and applied for an “intent to use” trademark for Gamesense in connection with video-game accessories. Gamesense began making and distributing branded products during the opposition proceeding before the United States Patent and Trademark Office.

BCLC asserted federal trademark-infringement and false-designation claims under the Lanham Act, a federal trademark statute. It also asserted a New York claim for injury to business reputation and dilution, along with New York common-law unfair-competition and trademark-infringement claims. BCLC moved for summary judgment, which asks the court to rule without a trial when no important fact is genuinely disputed and the moving party is legally entitled to judgment.

Trademark and Common-Law Claims

The federal and New York common-law claims depended on whether Gamesense’s logo was likely to cause consumer confusion about the source or association of the goods or services. The court applied the eight factors commonly used in this analysis: the strength of the trademark, similarity of the marks, proximity and competitiveness of the products, the possibility that the trademark owner would enter the other market, actual consumer confusion, the defendant’s good faith, the quality of the products, and consumer sophistication.

The court found that the marks were textually identical and graphically similar. Both used the words “GameSense” or “Gamesense” without a space, and the court identified similarities in capitalization, font, and color scheme in the marks at issue. This factor favored a likelihood of confusion.

The court found factual disputes concerning the strength of BCLC’s mark. Although BCLC’s registered mark had been incontestable for five years, the court said that this added strength applied only to the gambling-related goods and services identified in the relevant filing. The parties also disputed whether “GameSense” was suggestive or descriptive and how strongly the term indicated BCLC’s services.

The court also found factual disputes about whether responsible-gambling programming and video-game accessories were sufficiently related or competitive. It identified unanswered questions about overlap between eSports betting and the relevant markets, whether the programming reached eSports gamblers, and whether specialized accessories for shooter-style video games were sufficiently close to educational programming about responsible gambling.

The court likewise found that the possibility of BCLC entering the video-game-accessories market, the sophistication of consumers, and Ma’s intent were factual matters that rational jurors could resolve differently. Although Ma knew about BCLC’s mark, the court said a jury could find that he believed the gambling-education and video-game-accessories markets were sufficiently separate to avoid confusion. BCLC did not allege actual consumer confusion or that the defendants’ products were lower quality. Overall, the court stated that only the similarity factor clearly favored BCLC and denied summary judgment on the Lanham Act and New York common-law claims.

New York Dilution Claim

BCLC’s New York General Business Law claim did not depend on the consumer-confusion test. The statute can provide injunctive relief for likely injury to a mark’s business reputation or distinctive quality even without competition or confusion about the source of goods or services.

The court discussed dilution by blurring, which can occur when a defendant’s use of a mark weakens its ability to identify the trademark owner’s goods or services, and dilution by tarnishment, which involves linking a mark to shoddy-quality or unwholesome goods. The parties did not directly address either theory. The court found genuine factual disputes concerning several blurring factors, including consumer sophistication, predatory intent, and the renown of the marks. It also stated that tarnishment was not a viable theory on the record because BCLC did not claim that the defendants’ products were of lower quality or prestige.

The court denied BCLC’s motion for summary judgment on the dilution claim as well.

Disposition

Judge Oetken denied BCLC’s motion for summary judgment in its entirety. The clerk was directed to close the motion, and the parties were directed to file a joint status letter addressing proposed jury-trial dates and whether they wanted mediation or a settlement conference.