Perhaps one of the biggest misunderstandings I encounter as an intellectual property attorney relates to fair use. Often, people believe that changing a design by a certain percentage means they do not infringe an IP right. In reality, trademark and copyright law do not operate that way. Instead, standards of infringement rely on subjective analyses of a likelihood of confusion or a substantial similarity between two works. However, third-parties typically only find out about these standards after receiving a cease & desist letter. Recently, Nintendo sent such a letter to a TikTok and Twitch streamer, alleging trademark infringement. As such, the streamer had to change her name and turn over profits. We’ll dig into the details below.
The TikTok star formerly known as Pokeprincxss began streaming online entertainment in 2015. Since then, she gained a following of about 2 million on TikTok alone. With such a large following, Pokeprincxss decided to try to capitalize and profit on her platform. In 2020, she began selling clothing and stickers, and she filed for a trademark application. The clothing and stickers she created and sold often included Pokémon-inspired imagery, such as Poke Balls. These actions likely put her on Nintendo’s radar, the publisher of the Pokémon franchise.
Nintendo v. Pokeprincxss in Trademark Infringement Case
One of the keys here is that Pokeprincxss began selling Pokémon-inspired goods for profit. Without having access to the cease & desist letter, my informed guess on the situation is that Nintendo alleged both copyright infringement and trademark infringement. Fair use under copyright law is a murky gray area, but making money off a product skews away from fair use and toward infringement. Once Pokeprincxss started making money off Nintendo-inspired products, Nintendo likely drew the line. Moreover, applying for trademark protection for the mark POKEPRINCXSS forced Nintendo’s hand to police its POKEMON mark. As such, Pokeprincxss found herself on the wrong end of Nintendo’s infringement allegation.
Ultimately, Pokeprincxss worked with an attorney and conceded to Nintendo’s demands in the letter. As such, she withdrew her trademark application and changed her online name to Digitalprincxss, filing a new trademark application. She also turned over all profits from sales of the infringing goods as a part of the settlement with Nintendo. The story provides a cautionary tale to online conduct – while you might think you are protected under fair use, the reality is much more subjective.