No likelihood of association between comedian and video game


The Munich Regional Court I has dismissed an action filed by a German comedian against the German subsidiary of a computer game company (Case 33 O 24030/07, October 28 2008).

Michael Herbig is a German comedian and director who is well known under his civil name, his stage name ('Bully') and the combination of both (Michael 'Bully' Herbig).  Herbig's television show, Bullyparade, was broadcast between 1997 and 2002 in Germany on a private channel. Herbig also produced two big-screen films - the second one, (T)Raumschiff Surprise (a parody of Star Trek), was watched by over 9 million people.

The defendant is the licensee of Herbig's company for the computer game (T)Raumschiff Surprise Periode 1, which was launched in parallel with the film. In 2006 the defendant launched another computer game in the United States under the name Bully; the game was then distributed in Europe under the name Canis Canem Edit. The game involves a boy at an English private school called Bullworth Academy. A later version of Canis Canem Edit was launched in Europe under the titles Bully - Scholarship Edition and Bully - Die Ehrenrunde, the latter being the subject of the present proceedings. 
Herbig requested that the defendant cease and desist from using the term 'bully' in connection with computer games, especially as, according to Herbig, the games at issue glorify violence. Herbig also claimed that because he had licensed the use of the title of the film (T)Raumschiff Surprise in connection with computer games:
  • consumers would associate his stage name 'Bully' with the video game at issue; and
  • the game took unfair advantage of his well-known name.
In its defence, the defendant argued that:
  • the video game at issue did not glorify violence; and
  • consumers would not associate the game with Herbig's stage name, as the word 'bully' has several descriptive meanings.
First, the court stated that:
  • the licensing agreement contained no stipulation with regard to the use of the name Bully; and
  • it could not be assumed that an implicit secondary obligation existed in this regard.
Moreover, the court held that although Herbig is well known in Germany - both under his civil name and stage name - due to his success in the field of cinema and television, the scope of protection of the name Bully was limited, as the term has several different meanings. For example, the word 'bully':
  • is an ice hockey term;
  • was used as a trademark for a Volkswagen van; and
  • is used in Germany in its English meaning.
In particular, due to the fact that computer games are directed to young people who are familiar with English terms, the court concluded that there was no likelihood of association between Herbig and the video game at issue.
Moreover, the court pointed out that Herbig's stage name was well known in relation to television and films, but not in relation to computer games. Although both fields relate to the entertainment industry, the court held that there was no likelihood of association or confusion. In addition, the court stated that the term 'bully' was descriptive and should thus be kept free for use.
In view of the above, the court dismissed the action. Herbig did not appeal and the decision is thus final.
Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich

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