PS5 faceplate or IP violation? The law behind Dbrand’s “Darkplates”
When gaming peripherals company Dbrand started selling its custom black PS5 faceplates in February, its website cheekily suggested that its efforts were “totally legal,” and it urged anyone who thought otherwise to “go ahead, sue us.” Now, sure enough, the company has been forced to change the design of its custom plates in response to legal threats from Sony.
Sony’s “objection to dbrand’s Infringement of Sony Interactive Entertainment LLC’s Intellectual Property” letter lays out a few problems that the console maker sees with the specific “Darkplate” design Dbrand had been selling before this week. Chief among them was the distinctive shape of the plates themselves, which closely matched those of the stock PS5 faceplates.
The letter says:
Thanks to our client’s extensive marketing of the PS5 console, its commercial popularity, and its massive earned media coverage, the console’s unique product configuration, including without limitation the two vertical faceplates, has become exclusively associated with SIE in the minds of consumers and has come to symbolize considerable goodwill.
Dbrand’s Darkplates, which “replicate SIE’s protected product design,” thus “violate our client’s intellectual property rights in the distinctive product design,” Sony wrote.
This is probably Sony’s strongest legal point, according to Michigan attorney and Virtual Legality host Richard Hoeg. The shape of the PS5, including its faceplates, is legally protectable in the US by a design patent and internationally by “industrial design protection.” These constructs protect the “artistic and ornamental” (i.e., non-functional) parts of the console design, Hoeg told Ars.
To offer full protection, though, the patent first has to be granted. Sony didn’t file for its US design patent on the PS5’s shape until November 6, 2020, just days before the console launched. That patent was finally granted by the US Patent and Trademark Office on October 5, which could explain Sony’s decision to threaten Dbrand now, after months of sales.
Surprisingly, though, Sony’s letter to Dbrand doesn’t mention the specific design patent involved, a bewildering omission that Dbrand called out in a response on Reddit:
Under Canadian law [Dbrand is a Canadian company], the onus is on the party alleging infringement to demonstrate that the defendant’s actions infringe on a particular patent. As Sony did not declare rights over any published design patent in the C&D—instead focusing on pending patents and a litany of other complaints—we elected to focus on whether an organization should be allowed to sell replacement parts for hardware that consumers already own.
Falling out of shape
Dbrand went on to compare itself to a maker of aftermarket car replacement parts. “As a consumer, you have the right to choose which parts you’re using to modify, upgrade, or repair your F-150,” the company said. “Shouldn’t you be allowed the same for your PlayStation 5?”
That’s generally true. But because of the design patent, any replacement plate from Dbrand has to show “substantial deviation” from the shape of the stock PS5 faceplates to avoid an infringement claim, Hoeg said. Dallas Attorney Mark Methenitis echoed that sentiment, telling Ars that Dbrand’s replacement plates would be legal only if they “weren’t a completely identical shape” to the stock PS5 design.
As originally designed, that’s a test Dbrand’s Darkplates would have likely failed. “I believe the original version of the Darkplates product likely was infringing on the Sony patent once issued,” Hoeg said.
After briefly halting sales earlier this week, Dbrand is now attempting to get around its legal problems with “Darkplates 2.0.” The product is marketed with a cocky “Checkmate, lawyers” tagline. Dbrand says it is “cutting corners” on the new design, which features a more rounded top edge and new vents that make the product easier to distinguish from the stock PS5 part. “We may be in a maximum security prison by the end of the year, but at least your PlayStation 5 will have an indisputably original design,” the company wrote with tongue firmly in cheek.
“By changing the corners and cutting a hole in the shell, I personally believe that Dbrand has done enough to distinguish the size and shape of its offering, but reasonable minds can differ, and I can never claim to be able to read the minds of a judge or jury considering the issue,” Hoeg said. “Particularly ‘downstream’ [after initial sale], I think directly copying the curvature… of the Sony version could have confused the average third party.”
Marking the trade
Aside from plate shape, Sony also took issue with the designs imprinted on the original version of the Darkplates. Dbrand’s marketing noted that the “Illuminati Pyramid / Radiation Hazard / Skull & Crossbones / Angry Robot Head” symbols were “a familiar-but-legally-distinct apocalyptic spin on the classic PlayStation button shapes.”
But Sony argued that “consumers encountering the Modified Shape Mark Design are bound to erroneously conclude that SIE has authorized the associated products and that it was SIE—and not dbrand or any other seller—that elected to create an edgy variation on the decades-old PlayStation Shapes Logo.”
Methenitis told Ars that “the inside seems to have a doodle that suggests (but doesn’t necessarily infringe) the Playstation button trademark.” Regardless, that texture is missing from the “Darkplates 2.0” design, suggesting that Dbrand didn’t think it was worth the risk.
Where Sony probably overstepped, though, is in arguing against Dbrand’s use of Sony’s trademarked console names. The company argued that Dbrand merely describing its products as “Sony PSS Skins & Wraps,” “PSS Faceplates,” “PlayStation 5 Skin,” and “Sony PS4 Pro Skins & Wraps” was confusing consumers, saying:
Of course, dbrand is not selling “Sony PSS Skins or “Sony PS4 Wraps.” Rather, these are dbrand’s own products manufactured with no authorization or oversight from SIE. These uses of our client’s trademarks within the names of dbrand’s products are likely to lead consumers to believe that dbrand’s products are licensed by or otherwise approved by SIE, when that is not the case. As a result, it is a violation of SIE’s trademark rights.
But Methenitis told Ars that Dbrand’s descriptions are “without question nominative fair use” of Sony’s trademarks. Fair use allows “the use of a trademark to describe a product without any need for a license when you can’t readily identify the product without using the trademark, the user is only using it for identification, and the user doesn’t suggest that there’s sponsorship or endorsement.” Methenitis likened it to selling a phone case that fits the iPhone 13 or a replacement bumper that fits on a Ford F-150; in both cases, you have to identify the product that it’s compatible with as a matter of course.
To make a long legal story short, third-party accessory makers can definitely still make aftermarket parts for the PlayStation 5 or other consoles. But if those parts precisely match a patented shape design or feature marks that could be confused for “official” parts, then some changes have to be made.