On the Nature of Trademarks

Jeff Kesselman was perhaps the most prolific personality to emerge from this debate, and he wrote a number of articles providing opinions about Trademark Law. A few of these are reproduced below, along with some additional comments by other people who were interested in this area of the debate.

From: jeffpk@netcom.com (Jeff Kesselman) Date: Fri, 16 Dec 1994 00:55:03 GMT
Trademark has a specific legal meaning. It is a mark used to identify a company, product, or product line. ANYONE is free to use ANYONE ELSE'S trademarks as long as such use could not confuse the consumer into believing the product is part of the trademark owner's product line. A secondary issue is that you have an obligation to accredit the trademark owner's ownership. So, there are two issues: 1) Armor Class and Hit Points are NOT trademarks because TSR does not use them as trademarks. The government would reject any attempt to register them as such. (Notice that they are marked with a TM not an (R). This means they are not registered.) 2) Even if they WERE legitimate trademarks, anyone can still use them as long as they make it clear that they are NOT T$R, and they accredit them as T$R trademarks.
From: jeffpk@netcom.com (Jeff Kesselman) Date: Fri, 16 Dec 1994 20:54:51 GMT
WinningerR wrote: > Why is it silly for TSR to TM Armor Class and Hit Points? They made them up, > didn't they? This is a common misconception-- the fact that they coined the terms is irrelevant. (As a matter of fact, Copyright law states that terms coined IMMEDIATELY enter the public domain. That's a different issue then trademark, but gives you some perspective. Anyone who doubts this, say so and I'll give you a quote to look up.) The issue is whether or not a term is TRADED UPON. This has a fairly specific legal meaning. As I understand it, to trade upon a term is to use it to identify your company, product, or product line. As TSR has no products called "Armor Class" or "Hit Points", they are not being traded upon and cannot be claimed as trademarks. Compare these terms with some trademarks that TSR has actually registered with the government: AD&D(R) Forgotten Realms(R) You can tell the difference between a registered trademark and a mere assertion of trademark status by looking at the symbol that follows the term. (R) means a registered trademark. TM is merely an assertion of such, that will have to be proven to be a trademark if an action is taken upon it. It's also worth mentioning (again) exactly WHAT a trademark protects. A trademark is protected to the extent that no other company can use it in such a way that a reasonable consumer could be confused into believing the other company's product is a product of the trademark holder. I believe it is also incumbent upon any user to mark the term as a trademark and to accredit its source. That's it. It is NOT some kind of copyright that blanket prevents use of the word or words by anybody else.
From: jeffpk@netcom.com (Jeff Kesselman) Date: Thu, 15 Dec 1994 03:51:31 GMT
> So then does an unregistered trademark have any legal status at all? Are > there any restrictions on using them? You can ASSERT trademarks on any damn thing you choose to. If that thing IS actually being used as a trademark then incorrect use by someone else constitutes a form of infringement. IF that thing is NOT being used as a trademark by the company asserting trademark status, then it is NOT a trademark, regardless of the assertion. Plain and simple. The important thing to remember is that ANY mark that is asserted as a trademark, even a registered one, can STILL be used as long as it is properly accredited and you are NOT using it in a way that would confuse the consumer public into believing you are the trademark holder, or that your product is part of his/her/its line. A good example of such accreditation is to look at the front of a book on using IBM Compatables. More then likely, in the fine print at the front you will see "IBM is a registered trademark of the International Business Machines Corporation" or something similar. They then go on to REFER to IBM stuff throughout the book. Can you imagine a legal system were they COULDN'T do such? All communication would grind to a halt VERY fast, which is more or less the exact opposite of what our laws are designed to encourage -- a healthy active market. >So, then, I can't see how TSR/Rob Repp could reasonably restrict trade of >modules and material solely on the basis of trademarks. Any Joe could post a >homebrew module with AD&D terms in it, so long as he recognized the registered >trademarks TSR holds. The only legal question would then be that of copyright >infringement if it could be legally proved to be a derivative work of TSR's >products, ie. set in one of their published game worlds or using their >characters. That's MY reading and understanding of it. if you wanted to be REALLY safe you explicitly disclaim any connection with TSR or the AD&D line at the top. Something like: "This module was written by an independent author with no connection to TSR(R). It should not be considered part of the official AD&D(R) product line, the Forgotten Realms(R) product line, or any other product line published by TSR(R)." "TSR(R), AD&D(R), and Forgotten Realms(R) are all registered trademarks of TSR Inc., Lake Geneva, WI." Remember that this is just my best guess of how to do it now. I'll know more after I read the Nolo Book, and even THEN, as I am not a lawyer, it is for informational purposes ONLY and should NOT be construed as legal advice. (Non- lawyers can be sued BIG TIME for giving legal advice without a license.) Anyway, as long as you use the trademarks properly, their use should not be an issue, leaving, as you say, the issue of Copyright. Which itself should not be an issue unless you have lifted significant amounts of text from a TSR publication, used one their characters in any meaningful way, as opposed to merely referencing them, or lifted basic ideas from a SIMILAR TSR publication. By similar, I mean a module that steals from a TSR module, a monster that steals from a TSR monster, etc. The important thing to remember is, just because they don't have a case doesn't mean TSR won't file charges, so be aware if you are going to challenge them that you may have to hire your own lawyer and fight them. This approach is what is called, in the vernacular, "legal-thuggery".
From: winningerr@aol.com (WinningerR) Newsgroups: rec.games.frp.misc Subject: Re: history lesson -- Gygax and TSR? Date: 19 Dec 1994 00:45:43 -0500 Organization: America Online, Inc. (1-800-827-6364)
jeffpk@netcom.com (Jeff Kesselman) writes: >As TSR has no products called "Armor Class" or "Hit Points", they are not >being traded upon and cannot be claimed as trademarks. Again, this can be easily proven false merely by consulting the indicia page of just about any licensed RPG product in existence. LucasFilm has TMed "Darth Vader," yet there is no Lucasfilm movie or product called "Darth Vader." Marvel Comics has Trademarked the name "Dr. Octopus," yet there is no comic titled "Dr. Octopus."
From: vapspcx@cad.gatech.edu (S. Keith Graham) Newsgroups: rec.games.frp.dnd Subject: Re: Copyright Legal Info Date: 25 Oct 1994 11:28:48 -0400
TRADEMARKS only protect a "Trade Name". For example, Honda is a trademark, in the context of a manufacturer of goods. "Civic" is also a trademark, in the car arena. (Although you could sell a "Modern Civics Text" as well as a graphics card called the "Civic".) And a "Honda Civic CRX" is a trademark. You can refer to a Honda Civic in your review. You can publish a book about how to repair them. You can sell an oil filter for a specific model of Honda Civic, and have compatibility indexes listing civics in a book. (Although calling it "Honda Civic Oil Filter" is a violation of Honda's TradeMark, as you are representing your product as a "Honda" product.) Dungeon Master may be a trademarks *if* and *only* if there is a product called "Dungeon Master's Guide". Then, you are prohibited from producing a similar product, say a "Dungeon Master's Screen", and calling it anything with the words "Dungeon Master" in it. However, you can still refer to a Dragon (which is a TSR trademark), or Drow, or "the Dungeon Master of the game", as long as you aren't naming your product that way. However, saying your product is "AD&D fan module #8" is a trademark violation. Publishing an AD&D compatible module DOES NOT FALL UNDER TRADEMARK VIOLATION. And that is all that Trademarks protect. Period. End of discussion. Now characters and apparently "universes" and "races", etc. can be *copyrighted*. Luke Skywalker, Sam Spade, and the Kzinti are all *copyrighted*. You can create a race called "Kzinti", but if it looks too much like Niven's Kzinti, you'll be in court. (If they are a race of dog-men, that act like dogs and not cats, you're probably safe.) Even if you create a race of cat-men, and they borrow very heavily from Niven's Kzinti, and you call them "FurBalls", you may still end up in court; just like if you took a novel and changed all the names and called it your own work. TSR is claiming that any work that is "based on AD&D" is based on "their work of fiction". If you use their game mechanics, then the story is automatically based on their fictional universe. If you don't refer to their game mechanics, then you can use monsters not of their creation (which include Drow, Dragons, and Githyanki, btw.) The two related flaws in this argument are: 1) You can write a module and then convert it to dozens of game systems, adapting as needed. The game mechanics are fairly irrelevant, and based on what I have read, the terms for the game mechanics (HD, HP, STR, THAC0, etc.) aren't copyrightable. This means that the fiction is not related directly to AD&D's universe, nor does inclusion of game mechanics make it a copyright violation. 2) They sold the works (such as the Monster Manual) so that you could design modules. A ruling against Microsoft said that the existence of an interface to allow other programs to "call the Operating System" made "Calling the Operating System" not a copyright violation. These two items will likely shoot some of TSR's positions down. Exactly how much will fall will have to be decided by the lawyers. And I'm not a lawyer, so I suggest you consult one before contesting TSR's position.
From: guy.sbd-e@rx.xerox.com (Guy Robinson) Organization: Rank Xerox Technical Centre, UK Date: Mon, 19 Dec 1994 08:40:21 GMT
Andrew Finch (bckstage@crl.com) wrote: : Jeff Kesselman (jeffpk@netcom.com) wrote: : : This is why the idea that "ARMOR CLASS" is a trademark appears totally : : bogus to me. TSR does not have ANY product called "ARMOR CLASS". What : : TSR is ATTEMPTING is to use TM to circumvent the limits of significance : : on Copyright infringement claims. : Well, TSR could argue that it does have a product called Armor Class, and : that product is the conglomeration of formulas, equations, charts, and : rules that make up the AD&D concept of Armor Class. Now TSR would like to : patent the rules, but they can't. But they can keep you from using the : term Armor Class, or Cleric, or some such. I suppose this would be : equivalent to my creating a company that sells tons of ready to bake : biscuits, and labeling them 'Pop n' Fresh'. Pillsbury would have a fit, : even if the 'Pop n' Fresh' on my label looked nothing like the same : trademark on their label. The similarity is too great, and could confuse : the consumer, reducing the value of Pillsbury's trademark. They would : probably have a court case. Could something like this apply to AD&D's : Cleric or Armor Class? There are some big differences here. Pop n' Fresh is a descriptor on packaging while the usage of the term Armour Class is necessary for the proscribed use of TSR's products. After all, you just cook and eat Pillsbury's products, but you use TSR's products to write material that you use in the course of the game. Using a cooking metaphor, it's a bit like a cookbook publisher suing someone for giving out cakes baked with their recipes for free!