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Territorial Ambition

It’s time to ally with the virtual world industry

By Richard Gottlieb -- Playthings, 5/1/2009

I was, for the second year in a row, speaking at Engage! Expo, the virtual worlds conference in New York. As I looked out at the audience, I noticed that there were almost no familiar toy industry faces. As a result, I decided to ask this question: “How many of you in attendance today were present at the recent New York Toy Fair?” To my great disappointment, despite the growing incidence of virtual play as an adjunct to traditional toys, very few hands went up.

I spoke with the few members of the toy industry who were in attendance and we all shook our heads in disbelief. Where was everyone?

The question we asked ourselves was this: “Are we, as an industry, making sure that virtual play becomes firmly anchored as a core component of the toy industry?” I sure hope so, because we cannot afford to let yet another form of play leach our customer base and revenues the way video gaming has.

A roaring revenue stream

Virtual worlds provide not only expanded play value for end users but can potentially provide new sources of revenue for traditional toy makers. Many of these sites are generating impressive revenue streams through subscriptions, advertising and micro transactions by which participants pay real money to purchase virtual (and sometimes real) products.

By comparison, the modern toy industry is really not so modern. Established in the late 19th century and nourished in the 1950s and ’60s, the industry has repeatedly failed to grasp its own changing nature. (Ironically, one major reason for our inability to embrace change may lie in our great strength: multi-generational family businesses. In many cases, those who grow up in a family business actually experience the world as their parents did. They grow up with the prior generation’s worldview and sensibilities.)

Beyond the toy business’ tendency to look back more than it looks forward, what has me even more concerned when it comes to virtual worlds and other forms of technology-based entertainment is that the hugely popular Nintendo Wii has captured the full attention of moms. Moms see Wii as a way of bringing the entire family together around one play platform. This is a looming threat to the traditional toy industry. It is one thing to lose teenage boys to video games, it is another to lose mothers, the driving force in dollars spent on family entertainment.

So to ensure that we keep virtual play as a part of the toy industry, we need to bring these two industries together under one roof. One way this merger can be accomplished is by creating one trade show that aggressively seeks out and embraces both the toy and virtual world industries. The most obvious candidate for such a show is Toy Fair.

By bringing the varying aspects of play together in one place at one time, these trade shows will prosper as will the industry. More importantly, we will create a milieu where chemistry happens and the industry grows.

Exhibitors will be able to come in contact with those who not only design the look of these powerful websites but more importantly meet those who design the “plumbing.” After all, creating virtual world sites is a challenging and costly exercise. Expertise is required to make sure that they function correctly and that economic transactions are easy, quick and safe. Such an environment will allow toy companies to meet the people who know how to do it and do it right.

The power of partnership

Here are some other benefits from partnering more closely with the virtual world community:

  • Attendee counts will go up. Toy retailers and other members of Toy Nation will be drawn to a joint event by the chance to get more bang for their buck.
  • Costs will go down for exhibitors and attendees. There will be no more having to make the redundant investments in travel, display, time and hotel costs necessary to be present at multiple shows.
  • New and better ways to profit from play will arise. Through cross-pollination, Toy Nation will get the chance to make vital contacts and to learn best practices, from building virtual worlds to how to increase revenues through virtual websites.
  • A new generation that really “gets it” will be drawn to and subsequently enter the toy industry. The toy business’ new blood will breathe virtual air and have whole new ideas on how to integrate online with real-world play in more nuanced ways.
  • The media will be there in abundance. The press love technology. As a result, the toy industry will get dramatically expanded media coverage and as a consequence, passionate interest from the toy and technology consuming public.
  • Investors will come. Angel investors see virtual worlds, unlike traditional toys, as hot investment opportunities. By including virtual play in our trade shows, we will draw those who have investment money and a will to take a risk on spending it—maybe even on a toy company or two.

We are living through extraordinary times. Not just in terms of a troubling economy but in the promise of technology and new means of entertainment. A toy industry that fully embraces change will be an industry that makes the 21st century its best century yet.


Author Information
Richard Gottlieb is president of Richard Gottlieb & Associates, a provider of business development services to toy industry clients. His “Out of the Toy Box” blog can be read at Playthings.com He can be reached by email at richard@usatoyexpert.com.

 

'See’ The Line, Or Risk Crossing It

One is a classic toy and one is an educational workbook. At first blush they sound like unrelated products. Maybe, but they were the central players in a recent trademark dispute that resulted in an award of millions of dollars. What could lead a judge and jury to conclude that two such apparently different products resulted in a trademark violation?

Most folks who know something about trademarks are familiar with the idea that two trademarks do not have to be identical for there to be a violation. They just need to be close enough to cause a “likelihood of confusion” or a “likelihood of dilution.” But it’s not only the similarity of the marks themselves that is considered under the law. There are many other factors, including the similarity of the types of goods the marks are used on, how the products are advertised, how “strong” the marks are and the intent or knowledge of the parties involved.

'Similar enough’ to get stung

Super Duper v. Mattel is an example of how difficult it is to apply these factors and to predict where to draw the line when choosing a name for a product. Mattel asserted its well-known “See 'N Say” trademark against several trademarks from Super Duper, including “See It! Say It!” Super Duper focused on the differences in the goods involved. But Super Duper’s argument didn’t carry the day. The jury found Super Duper’s educational workbooks were similar enough to Mattel’s educational toy, under the circumstances, to rule infringement.

Besides the fact that both companies sold educational products for children that used “See” and “Say” in their names, the fame of the Mattel toy played a significant role in the case. Numerous versions of the toy have been in the market for more than 40 years, with hundreds of millions of dollars in sales. With such tremendous exposure, Mattel’s mark was afforded broad legal protection.

Standing in contrast to the exposure of the mark was the testimony from Super Duper’s CEO that he did not become aware of Mattel’s decades-old See 'N Say trademark until about 2004. Mattel argued that there was evidence that he was, in fact, aware of Mattel’s mark significantly earlier, but was denying that in an effort to hide what might be considered an intentional violation. These factors ultimately led the jury to award Mattel $400,000 after finding Super Duper had intentionally diluted Mattel’s mark.

But that wasn’t the end of the story. In March, the Court concluded that these same circumstances warranted increasing the damages award to $999,000, and requiring Super Duper to pay an additional $2.6 million for Mattel’s attorneys’ fees. The Court agreed with the jury that Super Duper’s actions had been intentional, and further commented that Super Duper had an “apparent proclivity in generously borrowing” the ideas of others.

Make sure that you don’t risk such a scenario. When choosing your trademarks, work with counsel you trust and don’t come too close to others’ marks. You never know where the line will ultimately be drawn between yours and theirs.

Marc S. Cooperman is a partner with Chicago’s Banner & Witcoff. He specializes in IP litigation. He can be reached at mcooperman@bannerwitcoff.com.

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