Understanding the world of unlicensed game accessories

As the board game industry grows, many sub-industries are forming. One of these sub-industries is the “substitute game trays” market, where third-parties create new trays that fit inside the box of a game. These trays allow the owner of the original game to hold all of the expansions or organize the game pieces better.

But are they legal?

Some examples

There are a number of companies making these alternate game trays and other accessories, such as The Broken Token and Gametrays. I’ve seen both of these companies’ products, and they look great.

Let’s use a specific example in this analysis. The Broken Token offers a replacement organizer for the game 7 Wonders. Check it out on their site, if you’d like.

Now, this post is assuming that there isn’t an agreement between the game publisher and the accessory maker. That would render most of this post moot, since whatever rights exist would be licensed to the accessory maker. Getting such an agreement would be the way to go in nearly every situation like this.

Is there any copyright infringement?

One of the major issues when dealing with any kind of game intellectual property involves copyright. A copyright protects original creative expressions, in the form of anything from artwork or photography to dance choreography.

The copyright holder is also given the exclusive right to create so-called “derivative works.” These are works that are new, but are based on an existing underlying copyright. One example would be a sequel to a movie – it uses the same characters, setting, and other copyrightable aspects, but is itself a new copyrightable work.

For games, there is a ton of copyrightable material included. According to the US Copyright Office, “Material prepared in connection with a game may be subject to copyright if it contains a sufficient amount of literary or pictorial expression.”

Does a game tray contain a sufficient amount of pictorial expression? Is a third-party game tray or accessory a derivative work? Unless it is using some kind of underlying copyrightable material from the original game, probably not. There is another issue with copyrighting the original game tray – the tray itself is most likely a “functional” work.

Under US copyright law, “useful articles” or functional works are not protected. If something is functional, only the non-functional parts of it are entitled to copyright protection.

An ornamental corkscrew is a good example. The corkscrew part – the piece of metal that actually spirals into the cork is purely functional and not protected by copyright. If the handle is sculpted (in the shape of an owl, for example), then that sculpture IS protected by copyright.

With a game tray, the parts of the tray that merely serve to hold cards, meeples and other board game pieces are most likely purely functional. Those would not be entitled to copyright protection. However, if there are some non-functional design or decorative elements to the tray that are original and creative enough, then these could be protected under copyright law.

In most cases, the original game tray probably isn’t protected, and something similar could be created by another manufacturer.

Game trays and trademark law

While copyright may not be the place to look for protection against others making game trays and accessories, there may be issues under trademark law.

Trademark law, at its very essence, ensures that consumers know where goods are coming from. It does this by preventing others from making unauthorized use of a brand name or slogan (the “mark” in trademark).

However, when a company creates game trays for someone else’s game, they will almost always use that other company’s trademark in describing their product. It’s just about impossible to market a replacement tray for 7 Wonders without using the “7 Wonders” mark in your advertising, right?

This is where the legal analysis comes in.

What constitutes trademark infringement?

When Company A has a valid trademark and Company B uses Company A’s trademark in a way that is likely to confuse consumers, this is your basic trademark infringement. I’ve written about this more in a post on Stonemaier Games’ Kickstarter Lessons blog, so check that out.

Essentially, when advertising a replacement game tray, you’re probably going to use the exact trademark of the original game. This is, on its face, trademark infringement.

There are some defenses against this, however.

The First Amendment

The first is using the First Amendment as a defense. This requires two things:

1. Using the third-party trademark has to have some kind of artistic relevance; and
2. The use can’t deliberately mislead consumers as to the source of the goods.

While the use of the trademark is certainly relevant, I’m not convinced that it would be “artistically” relevant. It’s commercially relevant, that’s for sure.

Nominative Fair Use

The second defense to trademark infringement is known as Nominative Fair Use. This one has three requirements:

1. The product must not be readily identifiable without using the third-party trademark;
2. You must use only as much of the trademark as is necessary to identify the product; and
3. The use can’t suggest sponsorship or endorsement by the owner of the third-party trademark.

In the case of a replacement game tray, you wouldn’t know what to do with it unless you use that third-party trademark. It would just be a tray that fit a game that you couldn’t identify, which seems ridiculous. Therefore, I don’t believe that the first element would be met.

As long as the other two elements are met, it seems that such a use of the third-party trademark would be okay. There are definitely a few ways to screw this up, though.

For example, having the game’s name be bigger than the replacement tray company’s logo would probably be a no-no. Plastering the game’s name all over the place, using the game logo rather than just the text name, and some other egregious uses would make this an obvious trademark infringement.

Other issues involve endorsement. The third-party trademark can’t be used in a way that makes it look like the third party approved of the use. So, obviously, don’t use words like “official” or “approved.” Having a disclaimer can be helpful in these situations.

The best way to do this

When creating products that incorporate other companies’ copyrights and trademarks, the best course of action is usually to get a license to use that intellectual property. This will help to avoid the possibility of a lawsuit, which can be just as crippling to a small business as the lawsuit itself.

Some companies may charge a fee for the license, an ongoing royalty for each tray sold, or both (or more!). However, the peace of mind that comes from getting the deal in writing can be worth it. Also, the synergy in advertising and promotion can help to sell more products. You’ll also be able to make that popular trademark bigger on the advertising, since you aren’t relying on nominative fair use.

In the end, it’s vital to a company making third-party game accessories to avoid using protectable copyrights and trademarks in ways that constitute infringement. If you have questions about how trademark or copyright law impacts your game development business, contact a game lawyer to set up a free consultation.

Special shout-out to my intern, Christopher White, for his great research on this post. Christopher is a 2016 JD candidate at Pepperdine University School of Law. He intends to specialize in intellectual property, with specific interests in video game law. If you enjoyed the post, leave a comment for Christopher!

Awesome photos courtesy of Unsplash.