Yu-Gi-Oh!, the self-proclaimed “King of Games,” is the kind of kid stuff that spawns an industry. Already available are Yu-Gi-Oh! Fruit Gusher snacks, a home video collection and a cartoon series. But it all begins with a trading card series distributed exclusively in North America by Carlsbad-based Upper Deck Co. Thousands of kids (or their parents) pony up $3.49 retail for a pack of nine cards that allows them entrée to the imagination of Japanese artist Kazuki Takahashi. Upper Deck won’t talk numbers, but says more than 4,500 retail outlets across the United States are holding Yu-Gi-Oh! tournaments, where kids can trade and compete for a spot in the world championships.

But there is trouble in the realm of Yu-Gi-Oh!

Counterfeiters, who may be lurking offshore, are polluting the trade. It’s up to Wright & L’Estrange attorney Craig Nicholas to make the world safe for Yu-Gi-Oh! and the client, Upper Deck.

“Consumers contact Upper Deck to complain that the cards they bought don’t last as long, and that the print quality is poor,” Nicholas says.

Worse, kids can’t play in the tournaments because their cards don’t carry the official Upper Deck hologram that bears an image when held up. Counterfeits make do with a piece of aluminum foil. Another tip-off is if the cards fell out of a vending machine; Upper Deck doesn’t use machines in its distribution. Although the counterfeiters sometimes load nine cards into a pack, they’re missing the “high value” cards consumers expect.

Seeking to identify the manufacturers of the bogus cards, Nicholas and Upper Deck filed suit on Sept. 30 against more than 50 alleged distributors of counterfeits. The suit seeks injunctive relief, namely that they stop selling the cards, as well as compensatory and punitive damages.

Finding the manufacturer is complicated if there are multiple middlemen in the supply chain, but Nicholas says he sees progress. “The case is expanding and we’re getting closer to the sources of these cards,” he notes.

A company spokeswoman would not hazard a guess as to the extent of the counterfeit trade in Yu-Gi-Oh!, but it is significant enough for Upper Deck to want to involve consumers in the counterfeit education process.

“The lawsuit increases the knowledge of the consumer and decreases the supply of counterfeits because sellers of cards are aware that Upper Deck is going to make sure that counterfeit cards are taken off the street,” Nicholas says.

Ultimately, the trail may lead to China, which has a reputation for intellectual property piracy. “We’re not yet there in terms of enforcing the intellectual property law in China,” Nicholas says.

Descriptive Traps

Lisa Martens’ diverse clientele exposes her to a variety of copyright and trademark work.

Sometimes in the trademark practice, Martens says, even if you’re on the right side of the law, it makes business sense to settle. “The majority of cases are settled unless it becomes more of an emotional thing where they bitterly hate each other.”

When counseling clients in biotech, Martens warns that a drug name that describes too closely what the drug is supposed to accomplish can land those doing business with the federal Food and Drug Administration in hot water. Wait a sec: if I’m a drug manufacturer, wouldn’t I want a name that describes what the drug does?

“Regain (the original name for Rogaine) is a great name if your results support it,” she says. “The manufacturer ran into trouble because the FDA reviewed the test results and said not every person regains their hair; you can’t mislead the consumer. You’re better off just going with Viagra, a name that’s completely invented and means nothing.”

Can You See It Now?

Sometimes a copyright attorney must decide whether to attach legal significance to a bunch of squiggly lines.

“Whenever there is artwork involved I take a look to see if it can be copyrighted,” says Brad Bohrer, a partner at Blanchard, Krasner and French.

One client submitted an image created out of squiggly lines, Bohrer says, but “if you looked at it the right way, it formed an animal.” The copyright office first rejected the art as mere stylized lettering, but once Bohrer got them to appreciate the animal in the art, the government registered the work.

The internationalization of commerce creates issues for potential copyright holders and their employers.

An overlooked area, says Bohrer, is the “work for hire” doctrine. Briefly stated, the copyright for works done by employees is presumed in the United States to reside in the employer. Other countries, such as the United Kingdom, do not recognize work for hire. In such cases, Bohrer recommends that employers protect themselves with an agreement in which the creator agrees to assign the copyright to the employer.

He also sees copyright infringement in countries with lax enforcement regimes as a “continuing thorn” in trade relations. “China’s not the only country,” he adds. “The law is difficult to enforce and time intensive. You can work with customs, but the difficulty is when the trafficking is outside U.S. boundaries, working under foreign laws.”

When do those squiggly napkin scribbles become works worthy of copyright?

“It has to be recorded in a tangible form,” Bohrer advises. “It’s one of those areas where an ounce of prevention really is worth a pound of cure.”

Seuss You’re Not

Karl ZoBell and Nancy Dix of Gray Cary Ware & Freidenrich have the enviable duty of protecting the copyrights of Dr. Seuss and Dr. Seuss Enterprises which licenses products based on the comic creations of the late Theodore Geisel.

“As soon as a market is created for products based on Dr. Seuss, you run into counterfeiting,” Dix says.

Then there’s the Net. “Thousands, if not tens of thousands, of sites have picked up Dr. Seuss images and used them in one way or another,” says ZoBell. The list includes ads for sex toys and bars, but “oddly some of our most frequent offenders are nonprofit organizations, people who do good things, and never stop to think that the Cat in the Hat, or Horton or the Grinch is intellectual property that belongs to somebody.

“Also, if you don’t enforce a trademark or copyright you may lose the right to do so,” ZoBell says.

Everybody is entitled to their own cat, however. “Copyright law is clear in that it protects only express, tangible images,” says Dix. “There are actually a lot of different cats that are protected by copyrights.”

“The great majority of infringers when they receive a strongly worded letter, they back off,” ZoBell says. “In the last 10 years we’ve brought no more than four or five lawsuits.”

That could change with release of Universal Pictures’ production of “The Cat in the Hat” (starring Mike Myers) on Nov. 14. Real world lessons in copyright laws may become more common.