Tuesday, March 31, 2015

Invoking IP: TSR v. Mayfair Games

Last week I was reading ENWorld’s TSR, WotC, & Paizo: A Comparative History.  If you haven’t taken a look at it before, I suggest that you slip over there.  They’ve got four columns of information that really encompass the growth of the RPG industry, specifically the fantasy RPG industry covered by (A)D&D and Pathfinder.  But, as I was reading through it, there was an entry for a 1993 judicial opinion in TSR v. Mayfair Games.[1] 

I got very excited!  Maybe there was some case law related to copyright and games.  Alas, there’s not.  But, there is some interesting stuff related to trademark and to contract law (which I will skip over so as to not bore you).  There’s also some interesting language related to how trademark protection might be lost.  We need a little bit of background here.  TSR was always worried that Dungeons & Dragons would lose its protected trademark status.  This can happen when a brand name becomes synonymous with the product itself.  Xerox and Kleenex are good examples of this.  In reality, the product is a photocopier or a tissue, but people often use the brand name more often than the actual product name.  And, when that happens, your trademark can really weaken.  Popular media often refers to RPGs in general as Dungeons & Dragons despite the specific game being played.  So, TSR was always extra vigilant to ensure that this didn’t happen with its trademarks.

So, how was Mayfair Games abusing TSR’s trademark?  They were producing some products, City State of the Invincible Overlord and Role Aids, that were designed to be compatible with AD&D.  To indicate this, Mayfair Games went ahead and threw the AD&D logo on its packaging.  This was probably fair use of a trademark (more on that later), but TSR started to get litigious and so the two signed a contract governing how Mayfair Games could use TSR’s trademark.  In addition to making it clear that Role Aids were not produced by TSR or endorsed by them, Mayfair Games could also only state that Role Aids were compatible with AD&D rather than with RPGs in general.

Mayfair had some minor trademark infringement violations and the judge called them out on it.  In a lot of cases TSR took awhile to respond to these issues.  The law hates delay (in anything except a court case itself, where it’s par for the course) and the common law has invented this nifty concept called laches to deal with it.  Laches apply when someone knew they had a legal claim but just sat on it instead of telling the person harming them to stop perpetuating the harm.  Mayfair Games did a lot of advertising in TSR’s own magazines and tried to apply laches stating that TSR knew about any violations and had waived them by approving the ads.  The judge wasn’t having this on a summary judgment motion, but it could have gone wildly differently if it were argued in open court.  But, the court did not apply laches.

As so often happens, the two parties decided that they’d really split hairs.  Mayfair advertised its products as having “numerous locations that can be worked into any fantasy campaign.”  (TSR v. Mayfair Games at *9).  TSR claimed that was tantamount to breaking its agreement that Mayfair would only advertise its games as being compatible with AD&D.  It actually broke down to the two of them fighting over the differences between the definitions of an RPG and a campaign.  TSR eventually did have to admit that there were multiple campaigns in AD&D.

Legal cases also require the plaintiff to show that whatever he’s complaining about has directly harmed him/her.  In a trademark case, that’s customer confusion.  “Mayfair says that its use of TSR’s trademarks caused no customer confusion.” (TSR v. Mayfair Games at *7)  The court agreed with Mayfair for the most part, saying “this may indeed by a case of minimal damage to TSR…TSR will not be heard to say that it has been hurt when the disclaimer has been adhered to” and “there has been no showing of lost sales or damage to the value of TSR’s trademarks because of Mayfair’s violations.”  (Id.)

But where things really get interesting is how TSR was wielding its trademark might actually have destroyed it or lay the groundwork for destroying it in the future.  “[T]he restriction that TSR incorrectly contends was violated…seems to be purely anticompetitive and hence likely unenforceable as an unlawful extension of trademarks.”  (TSR v. Mayfair Games at *9).  And, “those anti-competitive measures appear to find no rational support in TSR’s legitimate goals for protecting the integrity of its own trademarks.”  (Id. at *12).  The court buries the most important part of this statement in a footnote:
If anything, it would seem that measures that would thus tend to promote AD&D’s market domination would make it more likely, rather than less likely, that AD&D might become a generic term among consumers.  It is only necessary to recall such examples as Eastman’s fight to prevent “Kodak” from entering the public domain, or Bayer’s like fight as to “Aspirin” or GE’s comparable fight as to “Frigidaire.”  (TSR v. Mayfair Games at *12 n.24).

Finally, “[b]ecause of AD&D’s prominence in the marketplace, any revocation of Mayfair’s permission to refer to AD&D with appropriate disclaimers could be fair to destroy Role Aids as a competitor for the marketplace with TSR’s own products.”  (Id.)

Here, a lot of what happened was because TSR and Mayfair had signed a contract governing how Mayfair was and was not allowed to use TSR’s logo.  But, absent that, trademark principles like fair use would have applied, meaning that most of this suit would never have happened.  Mayfair’s “argument might have had force in the absence of the Agreement—but once the parties had entered into the Agreement, such a contention comes too late.” (TSR v. Mayfair Games at *6).  What’s the bottom line here?  Contracts modify your substantive rights so be careful when you do so.  Contracts always require you to give something up and if you’re going to do so, make sure you know exactly what you’re giving up and that you’re willing to accept losing it for as long as the contract remains in force.

[1] Not Reported in F.Supp. 1993WL 79272 (N.D. Ill.)  The opinion is the text readout of an educational only opinion from Westlaw.  I’m going to assume the EN World has their intellectual property shit together, but if not, this could be a huge licensing violation on the part of whomever gave the copy of the opinion to EN World.