Gasaway                                                                                                                                       Fall, 1999
 

 For many years Hasbro (H) has marketed the well-known board game CLUE under the trademark CLUE.
 

The purpose of the game is to solve the murder of Mr. Boddie by determining the room in the Boddie mansion in which the murder occurred,
 

what weapon was used
 

and "who done it." The range of characters are all named for colors:  Colonel Mustard, Miss Scarlet, Professor Plum, Mrs. Peacock, etc.   (H) registered the mark CLUE with the U.S. Patent and Trademark Office on the Principal Register in 1965. The style of the lettering for the mark CLUE has changed over the years that the mark has been registered.

 (H) has recently learned that Payton (P) has been producing a treasure hunt game sold under the name CLUE in the Northwest since 1960.  (P's) game is not well known outside of Washington and Oregon, but (H) wants to put a stop to the use of its registered mark.

Recently, Jenkins Games (J) has been producing a very similar game called GET A CLUE.  (J's) game is also a mystery board game, but not all of the crimes are murder.  There are a variety of felonies including robberies, various types of fraud, illicit gambling, prostitution, drug offences as well as murder.  The characters are also named for colors, but much updated:  Mauve Momma, Professor Puce, Maestro Melon, Uncle Umber, etc.   Likewise the weapons are updated:  laser stun gun, Uzi assault rifle, light saber, biological weapons, etc.   (J) advertised his game on the Internet as "The original Clue game." (H) believes that (J's) game is infringing its mark and the trade dress associated with the Clue game board.  (H’s) president wrote to (J) complaining about its use of (H's) trademarks.  (J) answered that it believed the mark was generic for mystery board games and that the trade dress was functional.

In 1996 (H) licensed the use of its mark and the game itself to Tri-Star  Pictures (T) in order to make a movie based on the game which would star Tim Curry.  The license was very specific as to the portrayal of the various characters, what could be said about the game, etc.  (T) ignored some of the provisions of the license and went ahead with the movie which enjoyed moderate box office success and has been available on video since early 1997.  (H's) president never went to see the movie but his grandchildren brought the video when they came to visit in the summer of 1999, and he watched it.  He is furious that (T) obviously ignored some of the license terms.
 

 Recently, three women have started a private detective agency under the name "Clue,"  They have a website and have registered the domain name for their business:  <www.clue.com>.  (H) now wants to develop its own website and sought to register the domain name <clue.com> as its domain name.  (H) was dismayed to be notified by ICANN that <clue.com> was already registered as a domain name by the detective agency.

One final problem that (H) has deals with an employee.   In a staff meeting about two years ago, (H's) president mentioned that the company wanted to modernize the CLUE game and he wanted all staff to put their minds to solving this problem.  Burton (B) wrote a memo to the president and suggested a number of changes, all of which were adopted.  (H's) net profits increased by 35% last year.  (B) has complained to everyone in the company and has threatened to sue if (H) does not pay him for the use of his very profitable ideas.

(H) has consulted you as its attorney and wants advice on dealing with all of the intellectual property matters disclosed above.  Include any remedies (H) may have along with potential defenses any other parties may raise.