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Comment by jMyles | Hacker News Reader

> If they let this go, chances are they would lose the Super Mario trademark

You can't be serious. Are you saying that, sitting on a civil jury hearing a lawsuit at some future date, you'd conclude that Mario - one of the most recognizable fictional characters in the world - is no longer a trademark of Nintendo because a third party made a C64 clone of the game?

I don't understand how you view this as the likely outcome. Nothing even close to this has ever happened ever.

> Quite simply, the view that a trademark holder must trawl the internet and respond to every unauthorized use (or even every infringing use) is a myth. It’s great for lawyers, but irritating and expensive for everyone else. And when done clumsily or maliciously, it chills free expression.

https://www.eff.org/deeplinks/2013/11/trademark-law-does-not...

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> It’s great for lawyers, but irritating and expensive for everyone else. And when done clumsily or maliciously

I’m not arguing the truth of the claim, but consider: if a lawyer advises you to defend your trademarks and that you could lose them if you don’t, would you risk it? There’s no obvious upside to being nice in cases like this.

>There’s no obvious upside to being nice in cases like this.

Sure there is. Good PR. Your lawyer will advise you to do all sorts of things that are PR suicide to avoid nearly non-existent legal risks if nothing more than to cover themselves.

One of the most important jobs an executive has is to rein in the lawyers to keep them from publicly embarrassing the company.

Defending trademarks includes saying "this is our trademark but we'll allow you to continue using it so long as you're non commercial and making it clear that this is an unofficial build".

> Are you saying that, sitting on a civil jury hearing a lawsuit at some future date, you'd conclude that Mario - one of the most recognizable fictional characters in the world - is no longer a trademark of Nintendo because a third party made a C64 clone of the game?

No, but if hundreds or thousands of third parties are left free to brand their games "Super Mario" it may have an adverse effect on the claim to the mark, which when someone uses the mark to compete with Nintendo in an actually substantial way may be used to their defense.

> Nothing even close to this has ever happened ever.

Famous last words...

But seriously for a second: can you describe how you actually envision this (or anything vaguely like this) ending in a civil verdict concluding abandonment of this (very well known) trademark?

Like, walk me through step-by-step how Mario becomes Escalator.

Fitbit was sued by Fitbug and while likely would have had a strong claim of infringement the court found Fitbug lost its rights to enforce the mark against Fitbit because the delay in eneforcement.

Similarly Eat Right Foods lost a similar case for their mark “Eat Right” to Whole Foods for their delay in enforcing the mark.

The mark holder doesn’t have to take action in every infringement as you say, of course...but if it can be proven the mark holder knew or should have known that’s kind of the threshold legal issue.

The fact that you are having to reach a thousand miles just shows how ludicrous this is.

In both of those cases (and every other similar case), there was genuine confusion between marks. Whom in this case is Mario going to be confused for?

I just can't imagine anybody sitting on a jury and saying, "yeah, I"m going to find in favor of the would-be infringer here because Nintendo didn't go after that C64 port that one time in 2019." I mean, seriously?!

We're talking about Nintendo losing the trademark over Mario - a household name and likeness. Nobody is going to be confused about Mario, and nobody is going to start using the word "Mario" to generically mean a platform jumping character.

How was I reaching? I have two examples of companies who had trademarks, their marks were knowinglying infringed, they lost their otherwise legal right to enforce the mark for failure to do so timely.

>yeah, I"m going to find in favor of the would-be infringer here because Nintendo didn't go after that C64 port that one time in 2019."

That’s not how Law works. Your mixing confusion in the market place and laches...the jury doesn’t pick and decide what laws apply.

If I saw a T-shirt with Mario on it for example, or a Mario game...I would surely think the owners of the Mario marked either created or licensed the work...that’s the definition of confusion anyway, but that’s not the issue being discussed.

> the jury doesn’t pick and decide what laws apply

Effectively, you are right. But technically, they can. Via jury nullification. But if you know about this, then you typically get immediately weeded out during the selection process.

> How was I reaching? I have two examples of companies who had trademarks, their marks were knowinglying infringed, they lost their otherwise legal right to enforce the mark for failure to do so timely.

You picked two examples where confusion over the nature of the mark was the turning point in the case. I ask again: whom is Mario being confused for here?

> That’s not how Law works.

This is precisely how civil law works. Precisely. The fact that you cherry-picked a case that ended in summary judgment does not change this.

>This is precisely how civil law works.

How many trademark cases have you litigated?

How many cases have you won/lost on summary judgment? SJ is taking all facts in a light most favorable to the nonmoving party they still lose as a matter of law...a jury wasn’t even needed to make a finding of fact, because the prevailing parties were entitled to judgement as a matter of law. It’s pretty damn persuasive.

Who is Mario being confused for? Again not how the law works at all...no one is confusing Mario, the infringing Mario is being confused for a legit Mario, that would be a part of the infringement claim. Again if I start making Mario T-shirt’s the public would be confused about the origin and think it’s legit product...why wouldn’t they? But it’s not it’s an infringing product trading off the good will of the mark, you bet any infringers would defend a trademark claim by showing the Mario trademark owner has abondoned the mark, and present evidence of the owners knowing people copied the Mario games/marks and they didn’t take any action to enforce it.

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