Augusta National Throws the Book at Game Maker
It has been over 4 years since I wrote about the impressive trademark portfolio of Augusta National. Boy how time flies. Augusta National recently used their trademark portfolio to allege trademark infringement, trade dress infringement, promissory estoppel, statutory deceptive trade practices and unfair competition against CustomPlay Games Ltd., Red Chain Games Ltd. and Dean Baker. The Complaint was filed in the District Court for the Southern District of Georgia. Let’s examine the allegations:
ACTIVITIES AND RIGHTS OF AUGUSTA NATIONAL
9. Since 1934, Augusta National has owned and operated the Augusta National Golf Club and hosted the prestigious MASTERS® Tournament, which is televised nationally and worldwide with millions of individuals viewing the tournament and Augusta National’s golf course and interacting with the MASTERS® Tournament over the Internet each year.
10. Augusta National’s golf course consistently has been ranked among the top golf courses in the United States and the world, and, in 2009, it was ranked as the number one golf course in the United States by Golf Digest. Additionally, Augusta National has received numerous unsolicited articles showering the golf course with accolades, including over one hundred (100) Sports Illustrated articles since 1955 publicizing Augusta National’s golf course.
11. Plaintiff owns proprietary trademark and trade dress rights in each of the following well-known and distinctive features of Augusta National’s golf course design and layout, features that are among the most famous proprietary golf course features in this country and the world and are renowned among golf enthusiasts and the general public at large in this country:
a. “Amen Corner,” comprised of the 11th, 12th and 13th holes of Augusta National’s golf course, and which is marked by the place where Rae’s Creek cuts across the southeastern corner of the course. Amen Corner features the lowest elevation of the course, and is further distinguished by the Hogan Bridge. The photographs attached at Exhibit A hereto depict the layout and appearance o Amen Corner;
b. The Hogan Bridge is a footbridge with three arches across Rae’s Creek that takes golfers from the 12th fairway to the 12th green. Constructed of stone and topped with artificial turf, the Hogan Bridge was dedicated in 1958 to commemorate the then-course record set by Ben Hogan five years prior. The photographs attached at Exhibit B hereto depict the Hogan Bridge; and
c. The Clubhouse at Augusta National Golf Club is recognizable for its distinctive architectural features and also is one of the famous and distinctive landmarks of Augusta National. The “Crow’s Nest,” topped by a square cupola at its apex and having windows on all four sides, sits atop the Clubhouse and accommodates amateur players who reside there during the MASTERS Tournament. The photographs attached at Exhibit C hereto depict the iconic Clubhouse and Crow’s Nest.
(These distinctive and proprietary trademark and trade dress rights will be referred to collectivel
y hereinafter as the “Augusta National Trade Dress”).12. Through extensive publicity of Augusta National’s golf course, consumers in the United States (and elsewhere) have come to recognize the Augusta National Trade Dress, and each of them, as distinctive and as source identifiers for Augusta National and the goods and services offered and sold by Augusta National. By virtue of such recognition, Augusta National has acquired trade dress rights in each of the items comprising the Augusta National Trade Dress. The combination of these features and each of these distinctive features itself serves as a source identifier for the goods and services offered and sold by Augusta National, which include, without limitation, broadcast media and television services, interactive Internet and gaming goods and services, and a wide array of consumer goods offered and sold annually in conjunction with the MASTERS® Golf Tournament. None of the items comprising the Augusta National Trade Dress is functional, as each is identifiable and distinguishable to consumers for its stylistic design and appearance.
13. Augusta National also owns a number of registrations for trademarks and service marks used in conjunction with conducting and organizing golf tournaments as well as apparel and sporting goods for the game of golf, including, inter alia, the MASTERS and Map & Flag Design marks. Augusta National continuously has used the MASTERS mark since at least as early as 1938, and continuously has used its Map & Flag Design mark (containing, inter alia, a red golf flag and yellow map of the U.S.) since at least as early as 1934.
14. Augusta National owns U.S. Reg. No. 1,069,545 for the MASTERS mark, which issued July 12, 1977, for use in conjunction with conducting, organizing, promoting, and sponsoring golf tournaments. Augusta National first used this mark in 1938. A true and correct copy of this registration is attached hereto as Exhibit D.
15. Augusta National owns U.S. Reg. No. 1,470,536 for the MASTERS mark, which issued in 1987, for use in connection with pre-recorded videotapes related to the game of golf. Augusta National first used this mark in 1986. A true and correct copy of this registration is attached hereto as Exhibit E.
16. Augusta National owns U. S. Reg. No. 1,404,401 for the Map & Flag Design mark depicted below, which issued in 1986, for use in connection with conducting and organizing golf tournaments. Augusta National first used the mark in 1934. A true and correct copy of this registration is attached hereto as Exhibit F.
17. Augusta National owns U.S. Reg. No. 1,474,831 for the Map & Flag Design mark depicted below, which issued in 1988, for use in conjunction with pre-recorded videotapes related to the game of golf. Augusta National first used this mark in 1986. A true and correct copy of this registration is attached hereto as Exhibit G.18. Augusta National owns U. S. Reg. No. 1,247,671 for the Map & Flag Design and MASTERS mark depicted below, which issued in 1983, for use in connection with, among other things, accessories, drinking glasses, and playing cards. Augusta National first used this mark in 1974. A true and correct copy of this registration is attached hereto as Exhibit H.
19. Augusta National owns U.S. Reg. No. 3,824,636 for the Map & Flag Design and MASTERS mark depicted below, which issued in 2010, for use in connection with, among other things, bottled water. Augusta National first used this mark in 2008. A true and correct copy of this registration is attached hereto as Exhibit 1.
20. The above referenced registered marks of Augusta National are herein referred to as the “MASTERS family of marks.”
21. Augusta National has used its Map & Flag Design mark and MASTERS marks in interstate commerce in the United States since 1934, and 1938, respectively, in connection with the promotion of golf tournaments. Moreover, the MASTERS family of marks has come to identify Augusta National as the source of the premier golf course and golf tournament in the United States, and with Augusta National’s associated goods and services. Augusta National prides itself on providing superior products and services, and carefully monitors the quality of the goods and services offered under its marks.
22. Through extensive usage and recognition, Augusta National has acquired exclusive proprietary trademark and service mark rights to numerous marks and designs for a wide variety of goods and services, including, inter alia, the MASTERS family of marks.
23. When purchasing products and services bearing the MASTERS family of marks, consumers expect to receive superior quality and performance, which consumers have come to expect from Augusta National’s products and services offered and sold under the MASTERS family of marks.
24. Additionally, Augusta National has licensed use of its famous golf course and MASTERS family of marks for use in conjunction with the Tiger Woods PGA Tour 12 video game marketed by EA Sports.
DEFENDANTS’ INFRINGING ACTIVITIES25. Upon information and belief, Defendants have advertised, promoted, offered for sale, and sold a golf simulator software comprised of a series of computer simulations of real-world golf courses (“CPG Golf’). Among the golf courses prominently featured in CPG Golf is Augusta National’
s golf course.26. In particular, CPG Golf features the most notable portions and features of Augusta National’s golf course, and incorporates the Augusta National Trade Dress, specifically including Amen Corner, Hogan Bridge, and the Clubhouse. Moreover, CPG Golf prominently displays the MASTERS family of marks, and, in particular, the Map & Flag Design and MASTERS mark depicted below. Attached hereto as Exhibit J are true and correct screen shots captured from CPG Golf.
27. Through the website available at www.customplaygames.com and www.redchaingames.com, Internet visitors in the United States have downloaded Defendants’ CPG Golf featuring Augusta National’s golf course. Defendants CustomPlay Golf and Baker further promoted and advertised CPG Golf and the availability of the simulated version of Augusta National’s golf course through the website available at www.customplaylive.com.
28. Upon learning of the infringing activities, on or about June 25, 2009, Augusta National, through its counsel, sent Defendants CustomPlay Games and Baker a cease and desist letter requesting that Defendants refrain from further infringement of Augusta National’s intellectual property rights in the MASTERS family of marks and trade dress rights in Augusta National’s golf course. Defendants Baker and CustomPlay responded by denying the allegations in the letter, including denying that CustomPlay software was available through Defendants’ www.customplaygames.com website.
29. On or about August 6, 2009, Augusta National, through its counsel, sent a second letter to Defendants Baker and CustomPlay Games and again demanded that Defendants Baker and CustomPlay cease all infringing activities. On or about August 12, 2009, Defendants Baker and CustomPlay responded to the second letter and “as a sign of good faith” promised to (i) remove the link that allowed Internet visitors to the www.customplaygames.com website to download the simulated version of Augusta National’s golf course, (ii) remove any posts referring to Augusta National’s golf course and the simulated version of the course, and (iii) direct www.customplaylive.com to stop any advertising of the simulated course. True and correct copies of the correspondence between Augusta National and Defendants Baker and CustomPlay Games are attached hereto as Exhibit K.
30. Notwithstanding the promises contained in the August 12, 2009 letter, Defendant Baker, now doing business as Red Chain, has continued to promote, offer for sale, and sold golf simulator software that includes Augusta National’s golf course and the Augusta National Trade Dress (“New CustomPlay Software”).
3 1 . Upon learning of Defendants’ continued infringing activities, on or about November 29, 2010, Augusta National, through its counsel, sent Defendants Baker and CustomPlay Games a letter demanding that they refrain from further infringement of Augusta National’s intellectual property rights. Defendants Baker and CustomPlay Games responded by denying any such activity.
32. Upon information and belief, Defendant Baker, doing business as CustomPlay Games and Red Chain, has told customers in the United States that have purchased the New CustomPlay Software that he is a licensee of Augusta National and is authorized to use Augusta National’s intellectual property rights, including, in particular, Augusta National’s trade dress rights in its golf course.
33. Upon information and belief, Defendants have promoted, advertised, offered for sale, and sold the New CustomPlay Software, which includes Augusta National’s golf course and the Augusta National Trade Dress and bears the MASTERS family of marks, including, in particular, the Map & Flag Design and MASTERS mark. Through the websites available at www.redchaingames.com/portal.html and http://www.golfge.com/courses/augustaillyby/hole7/hole7.html, Defendants have promoted, advertised, offered for sale, and sold the New CustomPlay Software, featuring Augusta National’s golf course and MASTERS family of marks. Attached hereto as Exhibit L are screenshots from the New CustomPlay Software.
The moral of the story is “make sure you have permission to use someone’s trademarks before you actually do it!”
Dave Dawsey – The IP Golf Guy