Hasbro Trademark "Axis & Allies"
Initial notice
Carin Reynolds <creynolds@golenbock.com>
October 10, 2013
By Email
Brian.dewolff@gmail.com
Brian DeWolff
ElectroWolff Games
Re: Infringement of Hasbro, Inc.'s AXIS & ALLIES®
Copyrights and Trademarks
Dear Mr. DeWolff:
We are counsel for Wizards of the Coast LLC ("Wizards") and its parent corporation Hasbro, Inc., the owners of the copyrights and trademarks for the AXIS & ALLIES® strategy combat game. We write concerning your unauthorized distribution and sale of the Android app "1941: Axis & Allies" on Google Play at: https://play.google.com/store/apps/details?id=com.electrowolff.war As you are probably aware, we have separately filed copyright and trademark infringement complaints directly with Google Play.
Your unauthorized sale of the "1941: Axis & Allies" app constitutes copyright infringement in violation of 17 U.S.C. § 501, and also violates the federal trademark laws, including 15 U.S.C. §1125(a), by creating a likelihood of confusion with respect to Hasbro and/or Wizards' authorization or sponsorship of or association with your commercial activities.
On behalf of Hasbro and Wizards, we therefore demand that you immediately cease and desist from any further display, distribution or sale of the "1941: Axis & Allies" app and remove this app from wherever it appears on the internet, including Google Play and YouTube.
To assist our client in determining the harm that has been done by this very serious infringement, we also demand that you furnish us with information concerning the length of time that you have been selling the 1941: Axis & Allies app, the number of units that have been sold, and the total revenue that you have received to date from the sale of these games. We will then be in a position to discuss monetary compensation for the unauthorized use of Hasbro and Wizards' intellectual property.
Please provide the requested information and confirm to me within ten days your written agreement to the above. This letter does not purport to be a complete statement of the facts or the law and is without prejudice to Hasbro and Wizards' legal and equitable rights.
Sincerely yours,
Carin G. Reynolds
www.golenbock.com
T (212) 907-7321
F (212) 754-0777
E-mail creynolds@golenbock.com
437 Madison Avenue
New York, NY 10022
My Response
Brian DeWolff <brian.dewolff@gmail.com>
October 10, 2013
Good afternoon Ms. Reynolds,
Before properly formulating a response to this complaint, I would like to request more information on the matter. I need to know specifically which components of my product are found to be infringing upon your client's copyright and trademark. I also need to know the numbers of the US and/or international copyright and trademark that are infringed upon.
It may also be worth noting that the current install rate cumulative over all distribution portals, for my app "1941: Axis & Allies," is approximately 75 per day. This legal action is most likely not worth your or your client's time.
Thank you,
Brian
Response from Oyen Wiggs Green & Mutala LLP
Cameron Funnell <CFunnell@patentable.com>
October 11, 2013
Hi Brian,
Thank you for your inquiry. Unfortunately, we won't be able to help you with this because doing so may place us in a conflict of interest.
Sincerely,
Cameron Funnell
Response from Cameron IP
Nick Garner <ngarner@cameronip.com>
October 15, 2013
Brian:
Thank you for your e-mail. We unfortunately are unable to assist you with this matter at this time.
Best Regards,
Nick
Removal notice from Google
<removals@google.com>
October 14, 2013
This is a notification that we have removed the availability of the application, 1941: Axis & Allies, with package ID com.electrowolff.war for Google Play users in the following locale(s): US
REASON FOR REMOVAL: Alleged trademark infringement.
Google has been notified that aspects of your application, 1941: Axis & Allies, allegedly infringe upon the trademarks of others, and it has been removed from the Google Play Store due to a violation of the Content Policy.
All violations are tracked. Serious or repeated violations of any nature will result in the termination of your developer account, and investigation and possible termination of related Google accounts.
You may contact Golenbock Eiseman Assor Bell & Peskoe LLP at creynolds@golenbock.com. If Golenbock Eiseman Assor Bell & Peskoe LLP contacts us specifically authorizing your app to be re-published, and your app does not otherwise violate the Developer Distribution Agreement and Content Policy, we will reinstate the app.
Please note that we have included a text copy of the Infringement Notice we received for your reference. If you have any further concerns about this issue, please address them directly to the complainant in the Infringement Notice provided below.
The Google Play Team
Text Copy of Infringement Notice:
full_name: Carin G. Reynolds
your_title: Outside Counsel to Hasbro, Inc. and Wizards of the Coast LLC
companyname: Golenbock Eiseman Assor Bell & Peskoe LLP
address: 437 Madison Avenue
New York, NY 10022
country_residence: US
contact_email_noprefill: creynolds@golenbock.com
phone: 2129077321
tm_work: AXIS & ALLIES
tm_location: United States and other countries world-wide.
tm_number: U.S. Reg. No. 2690455, U.S. Reg. No. 1355625
android_app_developer: Brian DeWolff
android_app_name: 1941: AXIS & ALLIES
android_app_url:
https://play.google.com/store/apps/details?id=com.electrowolff.war
tm_sworn_statement1: tm_good_faith
tm_sworn_statement2: tm_swear
NoticeToDeveloper: agree1
signature_date: 10/10/13
signature: Carin G. Reynolds
subject_lr_trademark: Your Request to Google
hidden_product: googleplay
geolocation: US
After no response from Ms. Reynolds, my second email
Brian DeWolff <brian.dewolff@gmail.com>
October 16, 2013
Hello Ms. Reynolds,
I am disappointed in your lack of communication, especially since my request for information is reasonable and pertinent to any trademark issue. I'm also disappointed that you have taken the route of aggression rather than negotiation and filed your allegations directly with Google.
Your client has several options in this situation:
1. Stipulate the exact changes required to the branding of the app in order to meet your approval for resale on Google Play in the United States.
2. Negotiate an international licensing agreement with me and receive a portion of the proceeds of my work.
3. Do nothing. I will re-brand and re-release my product without the "Axis & Allies" title. Keep in mind that I can use "Axis & Allies" under nominative usage to describe and compare my product to customers.
Please let me know how you would like to proceed.
Thank you,
Brian
Finally, a response from Ms. Reynolds
Carin Reynolds <creynolds@golenbock.com>
October 24, 2013
Dear Mr. DeWolff,
As we stated in our original correspondence, Hasbro owns the trademarks and copyrights to the AXIS & ALLIES® game. Hasbro's AXIS & ALLIES trademark is federally-registered, and the U.S. Registrations numbers (Reg. No. 2690455 and Reg. No. 1355625) have already been provided to you via the Google trademark complaint form. Hasbro also owns registrations for the AXIS & ALLIES mark in other countries world-wide. Your use of this mark, or anything confusingly similar to it in sight, sound, meaning and overall commercial impression constitutes trademark infringement.
Hasbro’s copyrights in the game include, without limitation, the cover label, box bottom, game board, charts and game play manual. You are in the best position to know which of these and any other AXIS & ALLIES game elements you copied in creating your "1941: AXIS & ALLIES" app. We suggest you consult an attorney to review any changes you make to the name and/or game before re-uploading the app.
Carin Reynolds
After removing "Axis & Allies" from the name
Brian DeWolff <brian.dewolff@gmail.com>
November 1, 2013
Ms. Reynolds,
I have completed my removal of all infringing materials. I have renamed the game itself and removed "Axis & Allies" from all titles and logos. I have also completely remade the game board/map portion of the game to further differentiate from the copyrighted "Axis & Allies" board. The game made no usage of the box, manual or other copyrighted assets.
I have just updated the game listing, although it may take several hours for the changes to be reflected in the store. Google Play will now require your approval in order to re-enable my game for sale in the US:
"If Golenbock Eiseman Assor Bell & Peskoe LLP contacts us specifically authorizing your app to be re-published, we will reinstate the app."
Thank you,
Brian
No response again, so I filed a counter-claim
<removals@google.com>
November 9, 2013
Hi,
Thanks for reaching out to us!
We have received your legal request. We receive many such complaints each day; your message is in our queue, and we'll get to it as quickly as our workload permits.
Due to the large volume of requests that we experience, please note that we will only be able to provide you with a response if we determine your request may be a valid and actionable legal complaint, and we may respond with questions or requests for clarification. For more information on Google's Terms of Service, please visit http://www.google.com/accounts/TOS
We appreciate your patience as we investigate your request.
Regards,
The Google Team
Google reinforces that I have few options
<removals@google.com>
November 11, 2013
Hello,
Thanks for reaching out to us.
You may contact the original complainant at the email address provided in your Google Play Trademark Notice. If the complainant responds to the original trademark notice to authorize the republishing of your app, and your app does not otherwise violate the Developer Distribution Agreement and Content Policy, we will reinstate the app.
If you modify your application so that it no longer infringes on the trademarks in question, please note that you will have to re-upload it to Android Market.
Regards,
The Google Team
So Google, anything else I can do?
Brian DeWolff <brian.dewolff@gmail.com>
November 14, 2013
Hello,
What do I do if the complainant takes no action and just doesn't respond to requests to reauthorize it?
Thanks,
Brian
3 weeks with no response from Hasbro
Brian DeWolff <brian.dewolff@gmail.com>
November 22, 2013
Ms. Reynolds,
Please inform the removals department at Google that my application no longer infringes upon your client's trademark or copyright and should be reinstated. If you're not going to take this simple action, at least have the courtesy to deny my request.
Brian DeWolff
Wow a same day response!
Carin Reynolds <creynolds@golenbock.com>
November 22, 2013
Mr. DeWolff,
What is the new name of your app?
Carin Reynolds
Okay...
Brian DeWolff <brian.dewolff@gmail.com>
November 22, 2013
Ms. Reynolds,
I have renamed it to simply "1941" although it's listed on Google Play as "1941: World War Strategy" for better ranking in search results. The unique identifier of the game is still the same, and it's "com.electrowolff.war"
Brian
Even better!
Carin Reynolds <creynolds@golenbock.com>
November 22, 2013
Dear Google:
We have been in contact with the developer, Brian DeWolff, who has since renamed the "1941: AXIS & ALLIES" app at issue in this removal request. Hasbro, Inc. and Wizards of the Coast LLC have no objection to the new name: "1941" or "1941: World War Strategy" or to the app being re-published under the new name.
Thank you.
Carin G. Reynolds
Sent another request to Google ... canned response after a week
<removals@google.com>
December 9, 2013
Thanks for reaching out to us.
With regard to the following application(s):
https://play.google.com/store/apps/details?id=com.electrowolff.war
If the original complainant believes that an application should be republished, please have them reach out to Google directly to request reinstatement.
Regards,
The Google Team
Making my case further
Brian DeWolff <brian.dewolff@gmail.com>
December 9, 2013
Hi,
The original complainant DID reach out to you directly in an email sent November 22nd:
from: Carin Reynolds
to: "removals@google.com"
cc: "Brian.dewolff@gmail.com"
date: Fri, Nov 22, 2013 at 2:37 PM
subject: RE: [7-4317000001857] Your Request to Google
Dear Google:
We have been in contact with the developer, Brian DeWolff, who has since renamed the "1941: AXIS & ALLIES" app at issue in this removal request. Hasbro, Inc. and Wizards of the Coast LLC have no objection to the new name: "1941" or "1941: World War Strategy" or to the app being re-published under the new name.
Thank you.
Carin G. Reynolds
www.golenbock.com
T (212) 907-7321
F (212) 754-0777
E-mail creynolds@golenbock.com
437 Madison Avenue
New York, NY 10022
Please re-publish my game.
Thanks,
Brian
Yay!!!
<removals@google.com>
December 10, 2013
Hello,
Thanks for reaching out to us.
The app in question has been reinstated in the U.S.
Regards,
The Google Team
