About Synthesia » Cease and Desist from Activision!

March 26, 2007
RE: Activision - Guitar Hero

Dear Mr. Piegdon:

Activision Publishing, Inc. ("Activision") is one of the leading worldwide developers, publishers and distributors of entertainment software products. Among the various products it publishes are the Guitar Hero^TM and Guitar Hero II^TM video games. As such, Activision is the owner of certain intellectual property rights related to the Guitar Hero^TM franchise, including but not limited to the trademark "Guitar Hero" and at least the following trademark registration/applications: U.S. Trademark Registration No. 3002745 and Serial Nos. 78/613,665, 78/866,144, 78/886,127 and 78/866,277.

As we are sure you are well aware, the Guitar Hero^TM franchise has enjoyed enormous critical and commercial acclaim. It has sold millions of copies in the United States and worldwide and has received substantial unsolicited accolades from media spanning beyond the gaming industry, including being honored by PC World as one of the Best Products of 2006.

It has come to our attention that you have been using the name "Piano Hero" in connection with a game you designed for Halite Studios. We are enclosing a print out from your website showing such.

In our opinion, your use of the name "Piano Hero" constitutes at least trademark infringement, dilution and unfair competition with respect to the trademark "Guitar Hero." Accordingly, we request that you immediately cease any and all use of the "Piano Hero" name in connection with the distribution and promotion of your video game and agree not to use such in the future.

Please provide us with your assurances that you will comply with our request. We look forward to your prompt response.

Respectfully,
Mary A. Tuck
Senior Litigation Counsel
Activision Publishing, Inc.

Encls.

Hi Mary,

I'm writing to confirm that I received your request to cease any and all use of the "Piano Hero" name in connection with the distribution and promotion of my video game.

While I'm not convinced that "Piano Hero" infringes on your trademarks covering "Interactive video game program; video game controllers, namely video game interactive remote control units, guitar-shaped interactive remote control units" or "Interactive video game comprised of a cartridge or DVD sold as a unit with an electronic guitar apparatus"—in particular because my video game doesn't utilize remote control units or guitar-shaped interactive remote control units, isn't comprised of a cartridge or DVD, isn't sold, (and if it were) isn't sold with an electronic guitar apparatus—I have no legal expertise in the matter so I am not qualified to make an assertion of any kind.

In short, I will comply. As you may have guessed, my video game is a simple open-source project with me as its only developer. I don't have the time, money, or energy to engage in any type of legal action.

Any similarity in the names was intended to pay homage to the fantastic Guitar Hero franchise. It was certainly not intended to dilute your trademark. If any infringement did occur, I apologize.

You must appreciate that rebranding a piece of software is not an instantaneous process. So, the actions I will be taking in order to comply with your request are as follows:

1. Post your letter (with your contact info withheld), this response, and any future communication to my video game's website in order to educate my users on what is happening to the project.

2. Begin the new name selection process. I intend to solicit user feedback in choosing the name. (If you have any suggestions, I'd love to hear them.)

3. Conclude the name selection process on 04-22-2007. At that point, I will send you the final name selection so you can confirm it does not infringe, dilute, or otherwise harm your IP.

4. Push the scheduled 04-22-2007 "0.6.0" release back to 04-30-2007 in order to give me time to implement the name changes throughout the software and website.

5. By the new "0.6.0" release date, 04-30-2007, the "Piano Hero" name will be removed from every place it is being used in connection with the distribution and promotion of my video game and I will agree not to use such in the future. Older versions of the software still bearing the name will be made unavailable to the best of my ability.

6. Contact you to confirm that I have taken all appropriate action and that you are satisfied.

Firmly believing that full disclosure should be used in this matter, I do NOT intend to change the following references to the name as they are not used in connection with the distribution or promotion of my game:

1. Instead of removing the old project URI, I will be updating it to redirect to the new one. The W3C recommends not changing a web page's name because it causes all incoming links and user bookmarks to break. Where possible, I will discourage use of the old URI and suggest that external linking websites update their pages.

2. I will not be changing the SourceForge project name "pianohero". Again, many external sites link directly to the SourceForge project page and I do not want to break those links. (However, I will be updating the SourceForge project's "Descriptive Name". This "Descriptive Name" is the one users see while viewing the page.) And again, I will discourage use of the "named" project address in favor of the "numeric" project address.

3. I can't guarantee that all references to the name will be removed from the program source code by the new "0.6.0" release date. Again, rebranding is a laborious process and I am promising what I believe to be a very short time-frame. As source-code is not user-facing and not used in the distribution or promotion of the game, this is not an issue. After the release I'll update any derelict references to the name as I encounter them.

I await your confirmation that these proposed actions and non-actions are suitable for resolving this issue. I believe in good faith that they meet both the letter and the spirit of your request.

I will not act until I hear from you. However, given that many of these are extremely time sensitive, I hope your response is both prompt and decisive.

It is unfortunate that any action is required at all, especially when my intent was not harm but rather tribute. As an unfunded open source project the effort required to make these changes is taken directly out of my personal time. I would very much appreciate your decision to make a donation to the project to help offset the loss of my personal time.

Thank you,
Nicholas Piegdon

Nicholas,

Thank you for your prompt reply to my letter and thank you for agreeing to comply with our requests.

I understand that you might not have intended to cause any harm but rather to support the Guitar Hero brand. As RedOctane was a small company not long ago, it certainly appreciates its fan base and desires to inspire creativity, not stifle it. Please understand that with trademarks, allowing others to use the same or similar trademarks can expose the trademarks to attack. And while we understand that you are a sole developer without intent to harm, were Activision not to act on instances like yours, others who do have an intent to harm could try to use Activision's inaction to attack Activision's trademarks.

Accordingly, to protect its trademarks, Activision must police them.

That being said, I believe your proposed strategy for removing the Piano Hero references on your site will be sufficient to address our concerns and I'm happy to review any proposed new names that you come up with.