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.[1] 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
statusรค. 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.”[2] 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.[3]
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.”[4] 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.[5] 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!
[1] People file
lawsuits for the strangest reasons.
I swear I’m only in this racket for the stories.
[2] Fabrica Inc. v. El Dorado Corp., 697
F.2d 890, 894 (9th Cir. 1983).
[3] Id. at 894-95 (quoting Pagliero v. Wallace China Co., 198 F.2d
329 (9th Cir. 1952)) (internal quotations omitted).
[4] Id. at 895.
[5] 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.
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