Yesterday, we delved into the distinctions between trying to copyright an idea (or a function, in that particular case) versus trying to copyright some decorative or expressive part of it. The case in consideration, Fabrica Inc. v. El Dorado Corp., was talking about carpet sample showpieces. But, we also saw how that same logic splitting function and form could be applied in the RPG industry—namely to rulebooks. That case considered two issues though. Yesterday we dealt with the copyright claim. Today it’s time to consider the trademark claim.
Trademark is the type of IP law I know the least about. Unlike copyright and patent, where you are worried about someone stealing your expression, trademark is used as a designation to mark a product or service as coming from a particular vendor. Some trademarks are registered®, while others have an acquired statusä. Don’t ask me what the difference is (though if it’s analogous to other types of law, if an offender infringes on a registered mark they are in trouble no matter what, while they are only in trouble for knowingly infringing an unregistered mark).
The mark serves to identify the vendor. The vendor also has ‘trade dress.’ Trade dress is unmarked stuff that’s so obviously tied into a product’s identity that the mark holder can stop uses of it that don’t indicate the product that’s trademarked. So, the danger here isn’t someone else using the mark. The danger is someone else using the mark and claiming that their product is the same as yours. To illustrate this, I’ve gone to the US Patent & Trademark Office’s trademark search to pull up Paizo’s registered trademark. The posting on the site is how you can tell the difference. It’s just fine to use another company’s trademark, so long as you are referring to that company’s product. You can even disparage the product. What you can’t do is claim that the product is your own. Here’s a video that illustrates the concept beautifully:
Ronald McDonald is McDonald’s trade dress. (Actually, he might be trademarked. I didn’t look it up.) But he’s appearing in a commercial for Burger King. How does Burger King get away with using McDonald’s trade dress? Through correct attribution, of course. In the commercial Burger King uses Ronald to make it clear that Ronald McDonald prefers eating Burger King’s burgers. It may be high treason in Pattyland, but it’s fine so long as Burger King ensures that Ronald always refers to McDonald’s.
Now, if Burger King wanted to put a big statue of Ronald McDonald outside of their store and pointing customers towards the door, he wouldn’t be referring to McDonald’s as being distinct from Burger King anymore. The Ronald McDonald statue muddies the waters, making it hard for a customer to determine what’s on sale inside. The sign says Burger King, but that’s Ronald McDonald outside. What product are they selling? That confusion is what constitutes the infringement/unfair trade practices.
So, let’s turn back to our friends at Fabrica Inc. and El Dorado Corp. The folks at El Dorado had copied Fabrica’s carpet sample showpieces. They weren’t subject to copyright. But, maybe the showpieces were trade dress. If so, that’s infringement and El Dorado’s in for a world of hurt!
Much like copyright law, in trademark “[t]he law denies protection to functional features to prevent the monopolization of useful technical advances that do not qualify for patents.” Carpet samples and their showpieces are unlikely to qualify for patents, definitely out there.
Functional might be said to connote other than a trademark purpose. If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. On the other hand, where the feature or, more aptly, design, is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for the purposes of identification and individuality and, hence, unrelated to the basic consumer product, imitation may be forbidden where the requisite showing of secondary meaning is made.
So, if it’s a functional part of the product, it’s free to copy. If it’s adopted to advertise the product, it might be protected. However, this only matters for “product features” and never applies to “trade dress or packaging.” Sample folders aren’t products—they are advertising for another product: the carpet. So, the functionality test goes out the window. Looks a lot like trade dress, which is how the court ruled in this case.
This is how Paizo makes the distinction between the Pathfinder logo they use (which is a registered trademark) and the Pathfinder-compatible logo. But, they are safe anyway. The Pathfinder logo is for products that control the rules of the Pathfinder roleplaying game. They may move it over onto their products that utilize those rules, but it’s there to connote that the group selling the book also writes the rules of the game. If it turns out that RPG rules aren’t subject to copyright at all, Pathfinder’s trade dress would still be protected. So, if it turned out that RPG rules aren’t subject to copyright (a big if, untested in court and one I haven’t even made up my mind about yet), a copier might be able to copy the rules but couldn’t copy the name of the game or the trademark of the company that originally developed the rules.
There you have it. Different types of intellectual property are important. And, it turns out, if your product has a useful function, its features likely aren't protected. Another time we will discuss whether or not games have a useful function. There's a delightful case involving a knock-off of Monopoly for just that purpose!
Hope y'all enjoyed reading Invoking IP. Let me know your thoughts in the comments section!
 People file lawsuits for the strangest reasons. I swear I’m only in this racket for the stories.
 Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894 (9th Cir. 1983).
 Id. at 894-95 (quoting Pagliero v. Wallace China Co., 198 F.2d 329 (9th Cir. 1952)) (internal quotations omitted).
 Id. at 895.
 They also do this through contract law because once you agree to use the Pathfinder-compatible license, you’ve also agreed not to use the Pathfinder logo.