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Someone Stole My Board Game! (Part III)

Part III of a four-part series of blog posts covering intellectual property and board games.

I have protected all of my intellectual property. Am I in the clear now?

You have just protected the intellectual property in your new board game, with patents, trademarks, and copyright. Are you all set? Possibly, but you still run the risk of infringing the intellectual property in someone else’s board game. Even getting a patent on your board game does not mean that your board game does not infringe a patent someone else might have on their board game. Patents do not give you the right to make the patented article. They only give you the right to stop someone else from making, using, or selling the patented article in the country covered by the patent. For instance, if there was a patent on a chair, the United States Patent Office could grant you a patent on a rocking chair, even though to make the rocking chair would infringe the older chair patent. That is because the United States Patent Office does not care if your rocking chair infringes a pre-existing patent. The United States Patent Office only cares that the invention you want to patent meets the three criteria of new, useful, and non-obvious.

What about Patent Infringement?

So even after you protect your own intellectual property, it is important to check to see if there is any other intellectual property you may be infringing. Unless your board game only has a generic name and includes only intellectual property that existed prior to 1923, you could have an infringing game on your hands. To avoid patent infringement, you can search on Google Patents and/or hire a patent lawyer to conduct a patent search for you. Although the patent lawyer’s search is probably better than a mere Google Patent search, even a patent lawyer search is no guarantee you are in the clear. Even a patent lawyer cannot search patents that were filed less than 18 months ago. This means that even if your patent lawyer finds no patents that you infringe, a patent could issue tomorrow covering one or more aspects of your board game. Even if your game uses mechanics that are decades old, there is a theoretical, albeit ridiculously small, chance that a patent application filed years ago could issue at any time and stop you from making, using, or selling your game. Since patents filed after June 8th, 1995 expire twenty years after the date they were filed, if your board game only uses obvious combinations of twenty-year-old mechanics, you are probably not going to end up infringing anyone’s patents.

Avoiding Trademark Infringement

Using someone else’s trademark on, or in connection with, a board game in a manner that is likely to cause confusion, deception, or mistake about who put out that board game generally constitutes trademark infringement. Being found liable for trademark infringement may subject you to a payment of damages for the infringement, an injunction stopping you from using the same or a similar trademark, and potentially triple damages, and the payment of the attorney’s fees the trademark owner had to spend to get you to stop. As with vetting existing patents, unless you are using a nonprotectable generic or descriptive name for your board game (in which case you cannot stop someone else from using the same name), it is very difficult to ensure there is no possibility that you will not get sued for trademark infringement based on the name of your game. While it is a relatively simple matter to check the United States Patent and Trademark Office (USPTO) database for federally registered trademarks on other board games, even if the exact name of your board game does not show up on that database, there are still a few ways you may end up getting sued for trademark infringement. One way is that even if a competitor does not have the exact same name registered, they may have a similar name registered. As long as there is a likelihood consumers might be confused that your board game came from that trademark owner, you may still be liable for trademark infringement. Another way that you may be found liable for trademark infringement even if the trademark does not show up on the USPTO database is if the trademark owner did not register the trademark. As long as the trademark owner is using the trademark on similar goods they may have common law rights in the trademark, which they can assert against you. For this reason, modern trademark searches investigate not only the USPTO database, but state trademark databases, business name databases, websites, and other uses. While a full trademark search is still no guarantee you will never get sued for trademark infringement, having such a search performed gives you a pretty good idea of how likely or unlikely it is you will run into trouble.

Copyright Infringement

Copyright is a little different than patents and trademarks. With patents and trademarks whoever protects them first owns them. Also, both patents and trademarks require ongoing maintenance to prevent losing those rights. With copyright, as long as you created the work yourself, and did not steal any part of it from anyone else, you are the owner. Even if someone else, unbeknownst to you, created the exact same work before you, as long as you can prove you had no access to that prior work, you would both be entitled to copyright in the work. Now obviously if the two works are complex and identical it will be very difficult to prove lack of access, but by the same token if the works are relatively different and the prior work is relatively unknown, it may be difficult for the prior copyright owner to demonstrate the access necessary to prove infringement. One thing to be aware of with copyright is that even if you pay someone, such as a graphic designer, to produce copyrightable work for you, you still do not own the copyright in that work. To own the copyright in that work, you will need to have the author sign a copyright assignment over to you. If you negotiate this up front, it may not even add to the cost of the project. If you overlook this very important issue however, it could cost you thousands of dollars when you have to go back and get the assignment from the author when your board game publisher demands to see that you actually own all of the intellectual property associated with your board game.

An Ounce of Prevention

As you can see, taking a few small steps early on in your game development process to avoid infringing anyone else’s intellectual property may stave off a catastrophic disaster down the road. Defending an intellectual property infringement lawsuit can cost $50,000 to $3,000,000 or more, even if you win. Given the size and scope of your new board game, it may not make sense to spend tens of thousands of dollars vetting every piece of existing intellectual property your patent lawyer can find. What does make sense is to find out: 1) exactly what your options are for avoiding infringement; 2) what the costs are for each option; 3) what are the advantages of each option; and 4) what are the limitations of each option. Most patent attorneys should be able to go over this information in an initial free consultation. Once you have this information, you can then make a business decision as to which options, if any, you want to pursue. Regardless of whether you pursue all of the available options or none of them, if you receive a cease and desist letter regarding your new board game, you need to contact your intellectual property lawyer immediately. Failure to do so may escalate a relatively simple and easily addressed matter into one a case of willful infringement, potentially subjecting you to tens of thousands to hundreds of thousands of dollars or more in damages.

Next up: Part IV
Okay I have my patent and my intellectual property clearance, am I good to go?

Brett Trout

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Posted in Board Games, Copyright Law, Patent Law, Trademark Law.