Intellectual Property and Tabletop Games

Washington and Lee University School of Law Washington and Lee University School of Law

Washington and Lee University School of Law Scholarly Commons Washington and Lee University School of Law Scholarly Commons

Scholarly Articles Faculty Scholarship

2022

Intellectual Property and Tabletop Games Intellectual Property and Tabletop Games

Christopher B. Seaman

Washington and Lee University School of Law

, [email protected]

Thuan Tran

Washington and Lee University School of Law

, tran.t21@law.wlu.edu

Follow this and additional works at: https://scholarlycommons.law.wlu.edu/wlufac

Part of the Entertainment, Arts, and Sports Law Commons, and the Intellectual Property Law

Commons

Recommended Citation Recommended Citation

Christopher B. Seaman & Thuan Tran, Intellectual Property and Tabletop Games, 107 Iowa L. Rev. 1615

(2022).

This Article is brought to you for free and open access by the Faculty Scholarship at Washington and Lee University

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1615

Intellectual Property and

Tabletop Games

Christopher B. Seaman

& Thuan Tran

ABSTRACT: There is a rich body of literature regarding intellectual

property’s (“IP”) “negative spaces”—fields where creation and innovation

thrive without significant formal protection from IP law. Scholars have

written about innovation in diverse fields despite weak or nonexistent IP

rights, such as fashion design, fine cuisine, stand-up comedy, magic tricks,

tattoos, and sports plays. Instead, these fields rely on social norms, first-

mover advantage, and other (non-IP) legal regimes to promote innovation

in the absence of IP protection.

As a comparison to these studies, this Article comprehensively analyzes the

role of IP law in facilitating innovation in tabletop gaming, including

board games, card games, and pen-and-paper role-playing games. Over the

past several decades, the tabletop gaming industry has seen a proliferation of

innovation, but there is surprisingly little in the academic literature about

IP and tabletop games. IP rights, including patents, copyrights, and

trademarks, each protect certain aspects of games, while at the same time

being constrained by doctrinal limitations that leave considerable flexibility

for others to develop their own games and adapt or improve upon existing

ones. There are also numerous examples of user-based innovation in

tabletop gaming. This Article concludes by contending that IP rights, as well

as their limitations, play a significant role in facilitating the robust

innovation presently occurring in the tabletop gaming field.

Professor of Law and Director, Frances Lewis Law Center, Washington and Lee

University School of Law. Email: seamanc@wlu.edu. Professor Seaman dedicates this article to

his family, who loves to play tabletop games (and usually beats him at them).

Associate Attorney, Dunlap, Bennett & Ludwig. J.D., 2021, Washington and Lee

University School of Law.

The authors thank B.J. Ard, Tait Graves, Brett Trout, and participants of the 18th

Annual Works-in-Progress in Intellectual Property Colloquium (WIPIP 2021) and the Iowa

Innovation, Business & Law Center Distinguished Speaker Series Summer 2021 for their

valuable feedback on this project. We are also grateful for helpful conversations with Andrew

Lewis, Justin Jacobson, and Tim Wiesch.

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1616 IOWA LAW REVIEW [Vol. 107:1615

I. INTRODUCTION .................................................................................... 1617

II. IP AND INNOVATION: THEORY AND LIMITS .......................................... 1620

III. THE TABLETOP GAMING INDUSTRY ...................................................... 1624

A. OVERVIEW AND HISTORY................................................................. 1624

B. MARKET SEGMENTS AND GAME PUBLISHERS .................................... 1628

C. THE PROCESS OF INVENTING A NEW GAME ....................................... 1631

D. THE TABLETOP GAMING COMMUNITY ............................................. 1632

IV. IP PROTECTION AND LIMITS FOR TABLETOP GAMES ............................ 1634

A. COPYRIGHT .................................................................................... 1634

B. PATENT ......................................................................................... 1641

C. TRADEMARK .................................................................................. 1651

D. OTHER IP RIGHTS .......................................................................... 1656

V. CASE STUDIES ....................................................................................... 1661

A. DUNGEONS & DRAGONS ................................................................. 1662

1. Overview ................................................................................ 1662

2. IP Rights ................................................................................ 1662

3. IP Enforcement .................................................................... 1663

4. IP Licensing and User-Generated Content ........................ 1665

B. MAGIC: THE GATHERING ............................................................... 1668

1. Overview ................................................................................ 1668

2. IP Rights ................................................................................ 1669

3. IP Enforcement .................................................................... 1671

4. IP Licensing and User-Generated Content ........................ 1672

C. SETTLERS OF CATAN ....................................................................... 1673

1. Overview ................................................................................ 1673

2. IP Rights ................................................................................ 1674

3. IP Enforcement .................................................................... 1674

4. IP Licensing and Fair Use Policy ......................................... 1675

VI. IMPLICATIONS ...................................................................................... 1677

VII. CONCLUSION ....................................................................................... 1683

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I. INTRODUCTION

Tabletop games are nearly as old as civilization itself.

Thousands of

years before Monopoly, games like Senet and The Royal Game of Ur were played

from Egypt to modern-day India.

Dice—an integral part of many modern

games—have been found in archeological sites in places as far flung as

Pakistan, Scotland, and Mexico.

Playing cards originated in ninth century

AD China.

Even widely played games like checkers, chess, dominos, and

backgammon have a lengthy lineage, with their predecessors dating back a

millennia or more.

Despite this rich history, innovation in the modern tabletop gaming

industry is abundant. Board games are currently experiencing a “golden

age,” with a wide range of options, game types, and price points.

Over the

past few decades, there has been a proliferation of new and innovative

games, ranging from Euro-style board games like Settlers of Catan,

worker

placement games like Agricola,

cooperative games like Pandemic,

role-

1. As used in this Article, “tabletop games” and “tabletop gaming” are defined broadly to

encompass nearly all games that can be played on a tabletop or similar surface, including board

games, card games, pen-and-paper role-playing games, and miniature wargames. See Tabletop

Game, L

EXICO, https://www.lexico.com/en/definition/tabletop_game [https://perma.cc/

T9HT-VRB8] (defining “tabletop game” as “a game played on a flat surface, such as a board

game or card game”); E

RNEST ADAMS, FUNDAMENTALS OF GAME DESIGN, at xv (2d ed. 2009)

(referring to “tabletop games” as “card games such as poker, board games such as Monopoly, and

so on”). Video games and computer games are excluded from our definition of tabletop gaming,

but it does include board games with electronic components.

2. See J

ACK BOTERMANS, THE BOOK OF GAMES: STRATEGY, TACTICS & HISTORY 711–14

(Edgar Loy Fankbonner trans., 2008); T

RISTAN DONOVAN, IT’S ALL A GAME: THE HISTORY OF

BOARD GAMES FROM MONOPOLY TO SETTLERS OF CATAN 9–18 (1st ed. 2017); Grant Piper, The

5,000 Year Old Games We’re Still Playing Today, M

EDIUM: HIST. OF YESTERDAY (Sept. 27, 2020),

https://medium.com/history-of-yesterday/the-5-000-year-old-games-were-still-playing-today-b47

c679f6b42 [https://perma.cc/Y8NR-JCFN]. A copy of “the game of thirty squares”—now called

Senet—was found buried in Pharaoh Tutankhamun (King Tut)’s tomb. D

ONOVAN, supra, at 10–11.

3. See generally V. Gordon Childe & J. Wilson Paterson, Provisional Report on the Excavations

at Skara Brae, and on Finds from the 1927 and 1928 Campaigns, 63 P

ROC. SOC’Y ANTIQUARIES SCOT.

225 (1929) (explaining discovery in Scotland); George F. Dales, Of Dice and Men, 88 J. AM.

ORIENTAL SOC’Y 14 (1968) (explaining discovery in Pakistan); Barbara Voorhies, The Deep Prehistory

of Indian Gaming: Possible Late Archaic Period Game Boards at the Tlacuachero Shellmound, Chiapas,

Mexico, 24 L

ATIN AM. ANTIQUITY 98 (2013) (explaining discovery in Mexico).

4. See Andrew Lo, The Game of Leaves: An Inquiry into the Origin of Chinese Playing Cards, 63

ULL. SCH. ORIENTAL & AFR. STUD. 389, 401 (2000).

5. D

ONOVAN, supra note 2, at 19–50.

6. See Casey Phillips, Physical Board Games Are Experiencing a ‘Golden Age’, A

SSOCIATED PRESS

(Sept. 3, 2016), https://apnews.com/article/75bde6bfa11a4844bad636697ce509bc; see also

Alex Fitzpatrick, This Board Game Designer Isn’t Sorry About Taking a Big Risk, T

IME (June 30,

2016, 8:00 AM), https://time.com/4385490/board-game-design (“People have described [this]

as a golden age. There’s a lot of innovation happening, a lot of people stretching the space.”).

7. K

LAUS TEUBER, THE SETTLERS OF CATAN (Mayfair Games 1996).

8. U

WE ROSENBERG, AGRICOLA (Z-Man Games 2008).

9. M

ATT LEACOCK, PANDEMIC (Z-Man Games 2008).

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1618 IOWA LAW REVIEW [Vol. 107:1615

playing games (“RPGs”) like Dungeons & Dragons,

and card-based games

like Magic: The Gathering.

In the past several years, board game sales have

soared, driven by lockdowns and school closures due to the COVID-19

pandemic.

The tabletop gaming market is expected to exceed $20 billion

in annual sales by 2025,

not far behind other major entertainment

industries like recorded music and the movie box office.

Traditionally, intellectual property (“IP”) law has been viewed as a key

driver of innovation. Indeed, the Constitution itself embodies a utilitarian

view of IP, expressly conditioning the grant of patent and copyright rights to

a particular purpose—namely, “[t]o promote the Progress of Science and

useful Arts.”

More recently, however, some legal scholars have challenged

this view by identifying numerous industries where innovation occurs

“without significant . . . protection” from IP law.

In these so-called “negative

spaces,” creativity thrives despite weak or nonexistent IP rights.

Instead,

creators in these fields rely on social norms, first-mover advantage, and other

(non-IP) legal regimes to facilitate innovation.

As a comparison, this Article critically examines the role of IP law in

promoting innovation in the tabletop gaming industry. Despite being a

source of entertainment and distraction for millions of Americans, there is

surprisingly little in the academic literature regarding IP and tabletop

games.

This Article seeks to fill this notable gap in the literature by

10. GARY GYGAX & DAVE ARNESON, DUNGEONS & DRAGONS (TSR, Inc. 1974). There are

numerous editions of Dungeons & Dragons; the current 5th edition was released in 2014. See

infra Part V.A (discussing the history of the game).

11. R

ICHARD GARFIELD, MAGIC: THE GATHERING (Wizards of the Coast LLC 1993).

12. See Erick Bauer, The NPD Group, U.S. Toy Industry Experienced 19 Percent Growth in the

First Three Quarters of 2020, C

ISION PRWEB (Oct. 30, 2020), https://www.npd.com/wps/portal/

npd/us/news/press-releases/2020/us-toy-industry-experienced-19-percent-growth-in-the-first-t

hree-quarters-of-2020 [https://perma.cc/HSM6-SB5Q].

13. See Grand View Research, Inc., Playing Cards & Board Games Market Size Worth $21.56

Billion by 2025: Grand View Research, Inc., C

ISION PR NEWSWIRE (Oct. 9, 2019, 6:35 AM), https://

www.prnewswire.com/news-releases/playing-cards—board-games-market-size-worth-21-56-billio

n-by-2025-grand-view-research-inc-300934566.html [https://perma.cc/8F3R-TDXJ].

14. See Marie Charlotte Götting, Global Recorded Music Revenue From 1999 to 2020, S

TATISTA

(July 14, 2021), https://www.statista.com/statistics/272305/global-revenue-of-the-music-industry

[https://perma.cc/5SS3-2PSV] (finding total revenue of the recorded music industry in 2019

was $21.5 billion); José Gabriel Navarro, Global Box Office Revenue from 2005 to 2020, S

TATISTA

(Aug. 12, 2021), https://www.statista.com/statistics/271856/global-box-office-revenue [https:/

/perma.cc/BW9W-FCBQ] (finding total revenue of the global box office in 2019 was $42.2

billion).

15. U.S.

CONST. art. I, § 8, cl. 8.

16. See Elizabeth L. Rosenblatt, Intellectual Property’s Negative Space: Beyond the Utilitarian, 40

LA. ST. U. L. REV. 441, 442 (2013) (defining “intellectual property’s ‘negative spaces’” as “areas

where creation and innovation thrive without significant formal intellectual property protection”).

17. See infra notes 36–43 and accompanying text.

18. The handful of articles that have addressed various forms of IP protection for board

games include Bruce E. Boyden, Games and Other Uncopyrightable Systems, 18 G

EO. MASON L. REV.

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conducting the first comprehensive assessment of IP protection for tabletop

games.

Tabletop games occupy a unique space at the intersection of patent,

Each major IP regime offers legal protection

for certain aspects of games, but with significant limitations and exceptions

that allow others to create their own games and improve upon existing ones.

For example, copyright law can protect the illustrations and visual

appearance of games, as well as expressive text describing how to play a

game, but not the underlying rules or methods of play.

In contrast, a

game’s mechanics and components may be protectable under patent law,

but only if it is novel and nonobvious and can satisfy current jurisprudence

regarding patent eligibility, which generally precludes patenting abstract

ideas like a set of game rules.

Trademark law precludes others from using a

name, symbol, or logo that is the same or confusingly similar to an existing

game to market their own games,

but it too is subject to numerous

exceptions, such as parodies

and terms that have become generic.

addition, there are numerous examples of user-based innovation in tabletop

gaming, such as fan-created expansions and modifications of existing

games.

The remainder of this Article proceeds as follows. Part II summarizes

IP’s role in incentivizing innovation generally, starting with an overview of

the theoretical justifications for IP law, followed by a more detailed

discussion of existing scholarship regarding IP’s negative spaces. Part III

provides an overview of the tabletop gaming industry. Part IV analyzes the

scope of intellectual property protection for various aspects of tabletop

gaming, including copyrights, patents (both utility and design), and

trademarks. Next, Part V evaluates how IP law has impacted the creation,

development, and evolution of several landmark games—Dungeons and

439 (2011); William K. Ford & Raizel Liebler, Games Are Not Coffee Mugs: Games and the Right of

Publicity, 29 S

ANTA CLARA COMPUT. & HIGH TECH. L.J. 1 (2012); Shubha Ghosh, Patenting Games:

Baker v. Selden Revisited, 11 V

AND. J. ENT. & TECH. L. 871 (2009); Kevin P. Hales, A Trivial Pursuit:

Scrabbling for a Board Game Copyright Rationale, 22 S

ETON HALL J. SPORTS & ENT. L. 241 (2012);

Daniel J. Schaeffer, Not Playing Around: Board Games and Intellectual Property Law, 7 L

ANDSLIDE 40

(2015); see also Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of

Its Protection, 85 T

EX. L. REV. 1921, 1942–44 (2007) (discussing copyright law’s exclusions under

§ 102(b) and its application to games).

19. See Boyden, supra note 18, at 441 (“[G]ames exist at the boundary of intellectual property

law.”).

20. See infra Section IV.A.

21. See infra Section IV.B.

22. See infra Section IV.C.

23. Cf. Cards Against Human., LLC v. Vampire Squid Cards, LLC, Opposition No.

91225576, 2019 WL 1491525 (T.T.A.B. Feb. 28, 2019) (rejecting a parody claim).

24. See, e.g., Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 684 F.2d 1316, 1321 (9th Cir.

1982).

25. See infra notes 543–47 and accompanying text.

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1620 IOWA LAW REVIEW [Vol. 107:1615

Dragons, Magic: The Gathering, and Settlers of Catan—in the form of case

studies. Part VI discusses a number of implications regarding IP law’s role in

facilitating innovation in the tabletop gaming field. Part VII briefly concludes.

II. IP

AND INNOVATION: THEORY AND LIMITS

This Part provides a brief overview of the theoretical justifications for IP

law and its role in promoting innovation. It also discusses the growing body

of scholarship about industries where innovation thrives despite the absence

or inapplicability of IP protection.

In the United States, utilitarian theory has “long provided the dominant

paradigm for analyzing and justifying the various forms of intellectual

property protection.”

According to this theory, “[b]y granting exclusivity to

creators . . . intellectual property law enables them to profit from their work,

thereby creating an incentive for them to create.”

In short, the primary

goal of IP law is the “promotion of new and improved works—whether

technological or expressive.”

For patents and copyrights, this utilitarian principle is enshrined in the

Constitution itself, which provides that “Congress shall . . . promote the

Progress of Science and useful Arts, by securing for limited Times to Authors

and Inventors the exclusive Right to their respective Writings and

Discoveries.”

The Supreme Court has repeatedly reaffirmed an innovation-

based rationale for patent and copyright protection.

Trade secrecy also is

justified as incentivizing innovation by providing an alternative form of legal

protection for discoveries and information,

particularly those that may not

be patentable,

although this claim has been contested by some scholars.

26. PETER S. MENELL, ROBERT P. MERGES, MARK A. LEMLEY & SHYAMKRISHNA BALGANESH, 1

NTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE: 2020, at 16 (2020). For a discussion

of alternative theories regarding IP beyond utilitarianism, see generally R

OBERT P. MERGES,

USTIFYING INTELLECTUAL PROPERTY (2011)).

27. Elizabeth L. Rosenblatt, A Theory of IP’s Negative Space, 34 C

OLUM. J.L. & ARTS 317, 318

(2011).

28. M

ENELL ET AL., supra note 26, at 16.

29. U.S. C

ONST. art. I, § 8, cl. 8.

30. See Diamond v. Chakrabarty, 447 U.S. 303, 307 (1980) (“The patent laws promote this

progress by offering inventors exclusive rights for a limited period as an incentive for their

inventiveness and research efforts. . . . in the hope that [t]he productive effort thereby fostered

will have a positive effect on society through the introduction of new products and processes of

manufacture into the economy . . . .” (citations omitted)); United States v. Paramount Pictures,

Inc., 334 U.S. 131, 158 (1948) (“[T]he primary object in conferring the [copyright] monopoly lie

in the general benefits derived by the public from the labors of authors. . . . [R]eward to the

author or artist serves to induce release to the public of the products of his creative genius.”

(internal quotation marks omitted)).

31. See Mark A. Lemley, The Surprising Virtues of Treating Trade Secrets as IP Rights, 61 S

TAN.

L. REV. 311, 329–32 (2008).

32. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 485 (1974) (“Trade secret law will

encourage invention in areas where patent law does not reach, and will prompt the

independent innovator to proceed with the discovery and exploitation of his invention.”); see

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And although trademark law does not directly incentivize innovation, it can

help promote a competitive and efficient business environment where

innovation can thrive by reducing consumer confusion, encouraging

investments in product quality, and preventing cheap knockoffs.

More recently, however, the traditional theoretical justifications for IP

have been called into question by a group of studies that have shown the

existence of a high degree of innovation in certain industries despite low or

nonexistent protection under IP law. Part empirical research and part

ethnographic study, these articles regarding IP’s so-called “negative space”

delve into the innovation ecosystems of fields as diverse as fashion design,

also WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL

PROPERTY LAW 356–57 (2003) (arguing that trade secrets are preferable for a rational inventor when

patent protection is too costly in relation to the value of his or her invention).

33. See also Laura G. Pedraza-Fariña, Spill Your (Trade) Secrets: Knowledge Networks as

Innovation Drivers, 92 N

OTRE DAME L. REV. 1561, 1588–96 (2017) (asserting that strong trade

secret protection may adversely affect the creation of knowledge networks, which are key drivers

of innovation); Michael Risch, Why Do We Have Trade Secrets?, 11 M

ARQ. INTELL. PROP. L. REV. 1,

26 (2007) (“[C]reating incentives to innovate is a very minor justification of trade secret law.”).

See generally Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification, 86

AL. L. REV. 241, 270 (1998) (contending that trade secrecy “keeps information from the public

with a potentially significant adverse impact on future innovation”).

34. See generally George A. Akerlof, The Market for “Lemons”: Quality Uncertainty and the Market

Mechanism, 84

Q.J. ECON. 488, 499–500 (1970) (explaining how brand names, which are protected

by trademark law, can counteract the effects of quality uncertainty); see also Union Nat’l Bank of

Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir. 1990)

(explaining “that trademarks are ‘distinguishing’ features which . . . encourage higher quality

production by discouraging free-riders”); W

ORLD INTELL. PROP. ORG., 2013 WORLD INTELLECTUAL

PROPERTY REPORT: BRANDS—REPUTATION AND IMAGE IN THE GLOBAL MARKETPLACE 3 (2013),

https://www.wipo.int/edocs/pubdocs/en/intproperty/944/wipo_pub_944_2013.pdf [https://

perma.cc/CQZ4-KCM7] (contending that trademarks and branding are “an important element

of a vibrant innovation ecosystem”); William M. Landes & Richard A. Posner, Trademark Law:

An Economic Perspective, 30 J.L.

& ECON. 265, 270 (1987) (noting that trademarks “are valuable

because they denote consistent quality, and a firm has an incentive to develop a trademark only

if it is able to maintain consistent quality”).

35. See Kal Raustiala & Christopher Jon Sprigman, When Are IP Rights Necessary? Evidence

from Innovation in IP’s Negative Space, in 1 R

ESEARCH HANDBOOK ON THE ECONOMICS OF

INTELLECTUAL PROPERTY LAW 309, 311 (Ben Depoorter & Peter S. Menell eds., 2019) (defining

the phrase “negative space” in the IP context as “encompass[ing] any . . . creative art, craft, or

act that does not enjoy or at least does not ordinarily rely on IP rights against copyists, either

because IP is formally inapplicable or because something—perhaps a social norm against IP

enforcement, or a legal or economic barrier that discourages resort to formal IP—limits its

salience”); Rosenblatt, supra note 27, at 319 (“In IP law, negative space is a series of nooks, crannies

and occasionally oceans—some obscure, some vast—where creation and innovation thrive in

the absence of intellectual property protection.”).

36. C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61

STAN.

L. REV. 1147 (2009); Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and

Intellectual Property in Fashion Design, 92 V

A. L. REV. 1687 (2006); Kal Raustiala & Christopher

Sprigman, Response, The Piracy Paradox Revisited, 61 S

TAN. L. REV. 1201 (2009); KAL RAUSTIALA

& CHRISTOPHER JON SPRIGMAN, THE KNOCKOFF ECONOMY: HOW IMITATION SPARKS INNOVATION

(2012).

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1622 IOWA LAW REVIEW [Vol. 107:1615

fine cuisine,

stand-up comedy,

magic tricks,

tattoos,

graffiti,

sports

plays,

and even roller derby names.

These studies find that in spaces

where IP provides little protection, norms and other incentives have helped

drive innovation. Several of these common non-IP incentives are described

below.

First, “[m]any negative space studies have documented the powerful

role social norms play in stimulating innovation and constraining

appropriation.”

In these fields, creators are members of a cohesive and

relatively small community that have developed their own shared sense of

norms regarding sharing, copying, and attribution of creative works. For

example, in the magic community, it is common for professional magicians

to share new tricks with other magicians after practicing them exclusively for

a period of time.

However, a user or improver of another’s magic trick is

expected to credit the original creator, and in no event may any professional

magician share information about how to perform another’s trick with non-

magicians (i.e., the general public).

If a creator violates these norms,

informal sanctions are imposed by other members of the community—for

example, group boycotts of joke stealers by other comedians,

or shunning

by other magicians and producers of props for disclosing magic tricks to

laypersons.

Second, creators in some “negative space” industries rely on market

positioning, such as first-mover advantage and market power, to help make

37. Christopher J. Buccafusco, On the Legal Consequences of Sauces: Should Thomas Keller’s Recipes

be Per Se Copyrightable?, 24

CARDOZO ARTS & ENT. L.J. 1121 (2007); see also Naomi Straus, Note,

Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry, 60 UCLA

L. REV. 182,

189–208 (2012).

38. Dotan Oliar & Christopher Jon Sprigman, There’s No Free Laugh (Anymore): The Emergence

of Intellectual Property Norms and the Transformation of Stand-Up Comedy, 94 V

A. L. REV. 1787 (2008).

39. Jacob Loshin, Secrets Revealed: Protecting Magicians’ Intellectual Property Without Law, in

AW AND MAGIC: A COLLECTION OF ESSAYS 123 (Christine A. Corcos ed., 2010).

40. Aaron Perzanowski, Tattoos & IP Norms, 98 M

INN. L. REV. 511 (2013).

41. Cathay Y.N. Smith, Street Art: An Analysis Under U.S. Intellectual Property Law and

Intellectual Property’s “Negative Space” Theory, 24 D

EPAUL J. ART, TECH. & INTELL. PROP. L. 259

(2014).

42. F. Scott Kieff, Robert G. Kramer & Robert M. Kunstadt, It’s Your Turn, But It’s My Move:

Intellectual Property Protection for Sports “Moves,” 25 S

ANTA CLARA COMPUT. & HIGH TECH. L.J. 765,

765 (2009).

43. David Fagundes, Talk Derby to Me: Intellectual Property Norms Governing Roller Derby

Pseudonyms, 90 T

EX. L. REV. 1093, 1096–98 (2012).

44. Raustiala & Sprigman, supra note 35, at 314; see also Rosenblatt, supra note 27, at 339

(“If an industry is capable of internal regulation through norms, it has less need for intellectual

property protection, and norms can facilitate the creation of negative space through IP

forbearance.”).

45. Loshin, supra note 39, at 126–27.

46. Id. at 128–30, 136–37.

47. Oliar & Sprigman, supra note 38, at 1818–20.

48. Loshin, supra note 39, at 137–39.

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up for the lack of IP protection. Dan Burk and Mark Lemley have explained

that “[i]n some industries, being first to market is critically important

. . . because it allows the first entrant to establish strong brand recognition

or because network effects reward those who are first to build a customer

base.”

In such fields, the advantages of lead time may provide sufficient

incentive to innovate, even in the absence of IP law.

First-mover advantage

and network effects also appear important to driving innovation in industries

like computer software, social media, and cryptocurrencies.

Third, in some fields, the exclusivity provided by IP law would ultimately

harm rather than promote innovation. For instance, as Kal Raustiala and

Christopher Sprigman have explained, the fashion industry depends on

copying to create “induced obsolescence”—that is, once a rare, high-status

item like a fashion design becomes widely available through copying by

others, it loses its prestige and distinctiveness, and elite fashion designers are

then motivated to create innovative new designs.

“Copying is thus a basic

element of the [fashion] industry’s trend-driven business model.”

Likewise,

in sports, “innovation thrives without patent protection because athletes

know that they benefit more from being able to imitate and build upon the

work of their skilled colleagues than through legal protection.”

In sum, scholars of IP’s “negative space” contend that not only is

innovation possible without IP protection, in at least some cases the existence

of strong IP rights actively hinders it.

Indeed, Mark Lemley has referred to

IP as “faith-based,” contending that in the absence of evidence that IP rights

stimulate innovation in many industries, proponents of stronger IP protection

essentially operate from a position of belief.

As Lemley and others

acknowledge, however, the impact of IP on innovation is industry-specific.

49. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1585

(2003).

50. Id. at 1585–86.

51. Id. at 1588; Rosenblatt, supra note 27, at 348; see also John M. Yun, Does Antitrust Have

Digital Blind Spots?, 72 S.C.

L. REV. 305, 326–33 (2020) (discussing network effects and social

media platforms); Raina S. Haque, Rodrigo Seira Silva-Herzog, Brent A. Plummer & Nelson M.

Rosario, Blockchain Development and Fiduciary Duty, 2 S

TAN. J. BLOCKCHAIN L. & POL’Y 139, 158

(2019) (noting “the strong positive network effects experienced by public blockchain networks”).

52. Raustiala & Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion

Design, supra note 36, at 1718–28.

53. Raustiala & Sprigman, supra note 35, at 322.

54. Rosenblatt, supra note 27, at 349. Notably, many professional sports leagues in the United

States prohibit patenting of sports moves. See Gerard N. Magliocca, Patenting the Curve Ball:

Business Methods and Industry Norms, 2009 BYU

L. REV. 875, 876–77.

55. See, e.g., Raustiala & Sprigman, supra note 35, at 324 (“Taken together, the [negative space]

studies we have described suggest that the incentives created by IP rights are not as central to

innovation as conventional wisdom suggests.”).

56. Mark A. Lemley, Faith-Based Intellectual Property, 62 UCLA

L. REV. 1328, 1344–46 (2015).

57. See Burk & Lemley, supra note 49, at 1577 (“A wealth of empirical evidence demonstrates

deep structural differences in how industries innovate.”); Lemley, supra note 56, at 1334 (“The

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1624 IOWA LAW REVIEW [Vol. 107:1615

In some fields, the exclusivity provided by IP law is beneficial or even

necessary for innovation.

Despite this wealth of industry-specific “negative space” studies, there

has been no attempt in the scholarly literature to date to comprehensively

analyze the impact of IP law on innovation in a multibillion-dollar

entertainment industry that tens of millions of Americans at least

intermittently participate in and enjoy: tabletop gaming. The remainder of

this Article attempts to fill that gap.

III. T

HE TABLETOP GAMING INDUSTRY

This Part describes the key features and aspects of the tabletop gaming

industry. It first provides an overview and short history of the industry. Next,

it identifies the major segments of the industry and their publishers. The

following section describes the basic process of inventing a new tabletop

game. Finally, it explains the various means by which game designers,

publishers, and players interact to create a cohesive community, particularly

in the realm of hobby games.

A. O

VERVIEW AND HISTORY

Despite its long history, the world of tabletop games looks much different

than it did in the 1930s, when Monopoly was first released.

Although mass-

market games like Monopoly have never truly lost their appeal, there has been

a dramatic increase in the past few decades in the quantity, quality, and types

of games that are sold and played, including European-style board games

(“Eurogames”), card-based games, hobby/specialty games, and pen-and-paper

RPGs. This section provides a short summary of the development and evolution

of tabletop games.

Historically, many tabletop games were abstract and positional in

nature. Ancient games like backgammon, go, mancala, and chess involve

moving physical discs or pieces within a defined playing space, where one

side’s move influences the choices available to his or her opponent.

Some

of these games, like chess, were purely skill-based, while others, like

backgammon, involved an element of luck.

Chance-driven games using

relationship between patents and innovation seems to depend greatly on industry . . . .”); see also

Dan L. Burk, Law and Economics of Intellectual Property: In Search of First Principles, 8 A

NN. REV. L. &

SOC. SCI. 397, 411 (2012) (“[I]t seems likely that exclusive [IP] rights are performing different

roles in different economic sectors.”).

58. See, e.g., Lemley, supra note 56, at 1334 (noting that “some evidence suggests that the

patent system is worth the cost in the biomedical industries”).

59. C

HARLES DARROW, MONOPOLY (Parker Bros. 1935); see also infra notes 204–05 and

accompanying text (describing the history of Monopoly).

60. See D

AVID PARLETT, PARLETT’S HISTORY OF BOARD GAMES 83–86, 167–78, 207–12, 276

–86 (2018).

61. Id. at 19.

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objects such as twigs, shells, stones, bone fragments, and later carved objects

such as cubical dice and teetotum, also were widely played.

Playing cards

arose in China during the Tang Dynasty and were imported into Europe in

the 14th century, quickly spreading to royal courts and then later to the

middle and lower classes of society.

During the Industrial Revolution, theme-based games like Snakes &

Ladders, Mansion of Happiness, and The Checkered Game of Life (a predecessor

to the better-known 1960s’ Game of Life) arose, which required players to

navigate pieces around a game board.

These games were aimed at the

growing middle class, which experienced an increase in leisure time and

disposable income, and often had a moral theme or message.

By the early

twentieth century, firms such as Milton Bradley, Parker Brothers, and

Waddingtons were publishing and distributing tabletop board games for the

mass market.

In the decades following World War II, mass-market board games

dominated the tabletop gaming market, including well-known games that

are still regularly played like Clue, Risk, Trouble, Battleship, Diplomacy, and

Stratego. At the same time, new types of games emerged. Scrabble, the first

popular word game, was created in 1938 but not widely distributed until

1952, when the department store Macy’s began to carry it, selling nearly

four million copies in 1954 alone.

Wargames—board games that simulate

battles and campaigns—came into their own in the 1950s, when Charles S.

Roberts

developed the first mass-market wargame, Tactics, and then

created the gaming company Avalon Hill to publish Tactics II and Gettysburg,

the latter of which was the first wargame based upon a historical battle.

Eventually, hundreds of wargames were published by Avalon Hill and others,

essentially forming their own subcategory of games.

Miniature gaming

using physical models made of plastic or metal and played on a flat surface

62. Id. at 19–32.

63. See generally D

AVID PARLETT, A HISTORY OF CARD GAMES (1991) (exploring the history of

card games).

64. P

ARLETT, supra note 60, at 91–94, 100–01.

65. See generally

MARGARET K. HOFER, THE GAMES WE PLAYED: THE GOLDEN AGE OF BOARD

& TABLE GAMES (2003) (examining rare and popular board games in America).

66. D

ONOVAN, supra note 2, at 135–48; see also Bernadette Murphy, One Tile at a Time: How

Scrabble Conquered the World, C

HI. TRIB. (Aug. 7, 2001), https://www.chicagotribune.com/news/

ct-xpm-2001-08-07-0108070013-story.html [https://perma.cc/T7C5-5PXM] (noting that 3.8 billion

copies of Scrabble were sold in 1954).

67. “The Charles S. Roberts Awards are presented annually for excellence in the historical

wargaming hobby.” About, C

HARLES S. ROBERTS AWARDS, https://charlieawards.wordpress.com/

about [https://perma.cc/4XYQ-E8M6].

68. D

ONOVAN, supra note 2, at 89–106; Ford & Liebler, supra note 18, at 48–52.

69. Ford & Liebler, supra note 18, at 51.

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1626 IOWA LAW REVIEW [Vol. 107:1615

at a fixed scale size became popular during the 1960s as well.

Although

miniatures originally involved land-based battles, the genre eventually

branched out to include science fiction and fantasy-type games.

The 1970s saw the creation of pen-and-paper RPGs, debuting with Gary

Gygax and Dave Arneson’s Dungeons & Dragons (“D&D”), which itself arose

from a fantasy-style miniatures game, Chainmail.

D&D and other RPGs

allow players to create their own fictional characters with self-selected

characteristics and provides an intricate set of rules and the use of multi-

sided dice to resolve combat and other actions. RPGs are led by a game

master (in D&D called a Dungeon Master), who provides a setting and story

for the characters and effectively serves as a referee during the game. Unlike

most tabletop games at the time, which involved competition between

players that ended in a single winner, D&D and other RPGs are cooperative

endeavors where the players jointly work on achieving a quest or pursing

other goals during a campaign.

RPG campaigns can continue over months

or years of gaming sessions.

By the 1980s, millions of teenagers and adults

played D&D and its successor, Advanced Dungeons & Dragons (“Advanced D&D”),

and the game became the fixture of national attention when some religious

figures claimed that it contained Satanic messages and promoted witchcraft,

leading to a moral panic.

In the 1990s, Eurogames entered the scene, quickly becoming a major

category of games. Eurogames are generally more abstract than mass-market

board games (but less so than traditional games like chess), involve more

strategy and skill than luck, feature a lack of player elimination, and often

70. Tony Bath of England is credited with developing the first rule-based miniatures game,

called The Hyborian Campaign (based on The Conan the Barbarian Stories created by Robert E. Howard),

in 1957. J

OSEPH P. LAYCOCK, DANGEROUS GAMES: WHAT THE MORAL PANIC OVER ROLE-PLAYING

GAMES SAYS ABOUT PLAY, RELIGION, AND IMAGINED WORLDS 39 (2015).

71. Michael Whelan & Matt Jarvis, 9 Best Miniatures Games That Aren’t Warhammer,

ICEBREAKER (July 30, 2021), https://www.dicebreaker.com/categories/miniature-wargame/b

est-games/best-miniatures-games [https://perma.cc/FP34-4CN5].

72. D

AVID M. EWALT, OF DICE AND MEN: THE STORY OF DUNGEONS & DRAGONS AND THE

PEOPLE WHO PLAY IT 58–73 (2013); see also infra Part V.A (further explaining the origins of

D&D). There are numerous books discussing the development of D&D, including J

PETERSON, PLAYING AT THE WORLD: A HISTORY OF SIMULATING WARS, PEOPLE AND FANTASTIC

ADVENTURES, FROM CHESS TO ROLE-PLAYING GAMES (2012), and SHANNON APPELCLINE,

ESIGNERS & DRAGONS: A HISTORY OF THE ROLEPLAYING GAME INDUSTRY: THE ’70S (2014).

73. E

WALT, supra note 72, at 7–8.

74. See Trisha Gopal, Michael Fequiere & Dave Yim, This Game of Dungeons & Dragons Has

Been Going on for 38 Years, CNN (Sept. 20, 2020, 4:01 AM), https://www.cnn.com/2020/09/20

/us/dungeons-and-dragons-longest-game-great-big-story-trnd/index.html [https://perma.cc/C7RZ-

PD92] (recounting a D&D game run by Robert Wardhaugh that has been operating since 1982).

75. See Clyde Haberman, When Dungeons & Dragons Set Off a ‘Moral Panic’, N.Y.

TIMES (Apr.

17, 2016), https://www.nytimes.com/2016/04/18/us/when-dungeons-dragons-set-off-a-moral-

panic.html [https://perma.cc/G9K8-MB6T].

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have more than one way to win (victory conditions).

Klaus Teuber’s The

Settlers of Catan, which involves resource management and building on a

fictional island, was the first popular Eurogame in the U.S. market, eventually

selling over 25 million copies.

Today, there are hundreds of Eurogames,

including widely played games like Agricola, Carcassonne, Ticket to Ride, and

Pandemic.

Collectible card games also rose to prominence in the 1990s with Magic:

The Gathering, a fantasy-themed card game created by Richard Garfield where

players assume the role of dueling wizards, playing cards to cast spells, use

artifacts, and summon creatures to battle.

Each Magic: The Gathering card

contains custom artwork and are sold in 15-card packs that can be collected

by players; thousands of distinct cards have been issued by the game’s

publisher, Wizards of the Coast (now part of Hasbro) since 1993, with over a

billion dollars in sales.

Other prominent collective card games include the

Pokémon Trading Card Game, Yu-Gi-Oh, and Star Wars: Customizable Card Game.

A recent innovation is the creation of so-called legacy board games,

where the components and/or rules of a game change permanently over the

course of multiple play sessions “based on the outcome of each game played

and the [various] choices made by the player(s).”

For instance, the board

game may be physically changed by placing stickers on the playing surface,

marking the board or cards, and adding or removing components.

In this

respect, a legacy game is like an RPG, where the results of previous gaming

sessions continue to affect the participants.

Game designer Rob Daviau is

credited with developing the first legacy-style board games, based on his

observation that the murderous characters in Clue are inexplicably repeatedly

76. STEWART WOODS, EUROGAMES: THE DESIGN, CULTURE AND PLAY OF MODERN EUROPEAN

BOARD GAMES 35, 71–73 (2012).

77. Richard Dansky, The Settlers of Catan, in H

OBBY GAMES: THE 100 BEST 265, 265 (James

Lowder ed., 2007); Scott Keyes, Settlers of Catan: How a German Board Game Went Mainstream,

TL. (June 7, 2011), https://www.theatlantic.com/entertainment/archive/2011/06/settlers-of

-catan-how-a-german-board-game-went-mainstream/239919 [https://perma.cc/5WM9-7SNH];

see also infra Part V.C (describing the history, development, and IP rights in The Settlers of Catan).

78. Richard Garfield, Magic: The Gathering, in B

RIAN TINSMAN, THE GAME INVENTOR’S

GUIDEBOOK 5, 7 (2008) (ebook); Jordan Weisman, Magic: The Gathering, in HOBBY GAMES: THE 100

BEST 192, 192 (James Lowder ed., 2007); see also infra Part V.B (describing the history, development,

and IP rights in Magic: The Gathering).

79. Garfield, supra note 78, at 7–8.

80. Mechanism: Legacy, B

OARDGAMEGEEK, https://boardgamegeek.com/boardgamefamily

/25404/mechanism-legacy [https://perma.cc/EBQ6-T79D]; see also Paul Booth, Playing for Time,

in R

EROLLING BOARDGAMES: ESSAYS ON THEMES, SYSTEMS, EXPERIENCES AND IDEOLOGIES 15, 24,

35 (Douglas Brown & Esther MacCallum-Stewart eds., 2020).

81. Booth, supra note 80, at 35.

82. For instance, an RPG character can gain new skills, attributes, and items; develop

relationships or conflicts with non-player characters (“NPCs”); or be injured or even killed, and

the impact of these events continue in future gaming sessions.

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1628 IOWA LAW REVIEW [Vol. 107:1615

back to dinner in future games.

In 2011, Daviau created Risk: Legacy, where

events in one play session—for instance, a nuclear attack on a country—

continue to impact the next game.

Since then, dozens of legacy-style tabletop

games have been published,

including Daviau’s critically-acclaimed Pandemic

Legacy: Season One.

Another notable development is the rise of high-quality tabletop games

suitable for children and families. While children have always been a

primary audience for tabletop games, today there are an abundance of

games aimed at elementary school-age children and younger.

These include

simplified versions of prominent mass-market games and Eurogames like

Monopoly Junior, Clue Junior, Catan Junior, and Ticket to Ride: My First Journey, as

well as new games like Qwirkle, The Magic Labyrinth, Forbidden Island, and

Sushi Go that are suitable for children and adults alike. Indeed, some parents

use board games and RPGs to help educate their kids in a phenomenon

known as “gameschooling.”

Aside from being a classic staple of family

nights, researchers also have found many benefits to tabletop gaming, including

development of memory formation, cognitive skills, effective communication,

gross and fine motor skills, and teamwork.

B. MARKET SEGMENTS AND GAME PUBLISHERS

The tabletop gaming market can be classified into three main (albeit

overlapping) segments. First, mass-market games like Monopoly, Life, Clue,

83. Rick Lane, The Legacy of Rob Daviau, The Man Who Helped Flip Boardgames on Their Head,

UROGAMER (Apr. 10, 2016), https://www.eurogamer.net/articles/2016-04-03-the-legacy-of-ro

b-daviau-the-man-who-helped-flip-boardgames-on-their-head [https://perma.cc/42UC-TRV5].

84. Booth, supra note 80, at 35.

85. See Legacy Game, B

OARDGAMEGEEK, https://boardgamegeek.com/boardgamemechani

c/2824/legacy-game/linkeditems/boardgamemechanic [https://perma.cc/246Y-77HL] (listing

91 legacy-style board games).

86. See Nate Anderson, Pandemic Legacy is the Best Board Game Ever—But is it “Fun?,” A

TECHNICA (Mar. 12, 2016, 9:00 AM), https://arstechnica.com/gaming/2016/03/pandemic-le

gacy-is-the-best-board-game-ever-but-is-it-fun [https://perma.cc/M4ZB-F2KA] (“Pandemic Legacy is,

at this writing, the best board game ever made. That’s not my judgment—it represents the

collective wisdom of Board Game Geek users, who have catalogued more than 82,000 games

and have rated Pandemic Legacy the best of the lot.”).

87. See Courtney Schley, Board Games We Love for Kids and Families, W

IRECUTTER (Dec. 20,

2021), https://www.nytimes.com/wirecutter/reviews/board-games-for-kids [https://perma.cc/

P52Y-G2BX] (listing recommended tabletop games for various ages of children).

88. Cat Timms, The Ultimate Guide to Gameschooling, M

ULBERRY J., https://themulberryjour

nal.com/writing-collective/family-life/ultimate-guide-gameschooling [https://perma.cc/DY4C-

2DVS].

89. Schley, supra note 87 (“[A] great board game for kids can do so much more: It can

help teach teamwork, decision-making, logic, creativity, communication, gross and fine motor

skills, and many other areas central to learning and development.”). See generally B

RIAN MAYER &

CHRISTOPHER HARRIS, LIBRARIES GOT GAME: ALIGNED LEARNING THROUGH MODERN BOARD

GAMES (2010) (explaining how educators can utilize board games in school curricula for students

of all ages).

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Uno, Scrabble, and Trivial Pursuit are generally manufactured and sold by a

handful of large (multibillion-dollar market cap), publicly traded firms such

as Hasbro and Mattel.

As the name suggests, these classic games are aimed

at the mass market of Americans who occasionally play with friends and

family, but are not regular “gamers.”

Most mass-market games have relatively

simple rules, are at least a couple of decades old and thus widely known, and

are sold in large chain stores like Walmart, Target, and Kohl’s, as well as

online.

In addition to the basic games themselves, publishers of mass-

market games have released or licensed numerous variations, expansions,

and geographically- or community-branded versions to help increase sales.

Second, Eurogames like Agricola, Dominion, Puerto Rico, Terra Mystica,

and 7 Wonders are designed to be accessible to casual players but also of

interest to more serious gamers due to their emphasis on skill rather than

luck.

These games are published by a variety of companies both here and

abroad, from medium-size firms like Ravensberger (Germany) and Asmodee

(France) to smaller companies like Rio Grande Games (United States), and

are sold in both hobby and toy stores and larger chains like Target and

Barnes and Noble; many are also available on Amazon.com.

The Spiel de

Jahres award is given annually to the top Eurogame.

This prestigious prize

often results in hundreds of thousands of additional sales for the winning

game, plus widespread recognition and acclaim for its designer.

Third, hobby games (also called specialty games) are targeted at persons

for whom gaming is a significant part of their social lives.

Hobby games are

usually more complex and more time consuming than both mass-market

games and Eurogames.

They are typically more expensive as well ($50 and

up) due to more expensive components and/or lower print runs.

100

RPGs,

90. TINSMAN, supra note 78, at 68–82.

91. Id. at 67–68.

92. See id.

93. See, e.g., Lacey Womack, Ranked: 20 Best Trivial Pursuit Editions, G

AMER (Nov. 24, 2021),

https://www.thegamer.com/trivial-pursuit-editions-ranked [https://perma.cc/5772-97P8]; The

Best Editions of Clue, R

ANKER (Nov. 5, 2019), https://www.ranker.com/list/best-clue-editions/ra

nker-games [https://perma.cc/KGE7-9VDW]; The Definitive Ranking of Monopoly Special Editions,

UZZFEED (Nov. 27, 2013), https://www.buzzfeed.com/monopoly/the-definitive-ranking-of-mo

nopoly-special-editions [https://perma.cc/TWA9-MZVX].

94. T

INSMAN, supra note 78, at 118–19.

95. Id. at 119–22. A notable exception is Hasbro’s Avalon Hill division, which publishes a

variety of both mass-market games and Eurogames.

96. Spiel des Jahres 2021, S

PIEL DES JAHRES, https://www.spiel-des-jahres.de/en/best-of-2021

[https://perma.cc/R2BQ-LMP7].

97. T

INSMAN, supra note 78, at 122–23.

98. Id. at 95–96.

99. Id.

100. For instance, Gloomhaven, a widely acclaimed specialty game, has a retail price of $140.

See Board Games, C

EPHALOFAIR, https://cephalofair.com/collections/board-games [https://perma

.cc/EA42-TYWY].

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1630 IOWA LAW REVIEW [Vol. 107:1615

card-collecting games, and miniatures games are often considered specialty

games as well.

101

There are numerous hobby game publishers, most of which

are significantly smaller than the mass-market publishers,

102

although

Wizards of the Coast—which publishes both D&D and Magic: The Gathering

(“Magic”)—is part of Hasbro.

103

Some hobby publishers focus on a single

type of game, such as Games Workshop (miniatures)

104

and GMT Games

(wargames),

105

or a particular theme, such as Restoration Games, which

remakes old board games that have been out of print for at least ten years.

106

Specialty games are usually available in locally owned gaming stores, as well

as online from the publisher’s website and sometimes on Amazon.com.

Finally, the recent rise of crowdfunding has significantly altered the

tabletop gaming industry.

107

Kickstarter, a crowdfunding site launched in

2009, allows players to invest in a proposed game by making a financial

contribution toward its development, often in exchange for some promised

tangible item in the future, such as a collector’s edition of the game.

108

Kickstarter and similar crowdfunding sites, such as Indiegogo, have

fundamentally challenged the existing model of tabletop game publishing

by democratizing the financing and development of new games, thus

allowing designers to self-publish games with less financial risk.

109

Indeed,

some of the most popular recent games, such as Cards Against Humanity and

Exploding Kittens, have been crowdfunded projects, with the latter raising

nearly $9 million through Kickstarter.

110

By one estimate, nearly a third of

tabletop games published in 2015–2017 were crowdfunded.

111

101. TINSMAN, supra note 78, at 60, 95–96.

102. See id. at 59–60, 95–96.

103. Hasbro, Inc., Annual Report (Form 10-K) 8 (Feb. 24, 2021).

104. See Our History, G

AMES WORKSHOP GROUP PLC: INVESTOR RELATIONS, https://investor

.games-workshop.com/our-history [https://perma.cc/US5M-N356] (“Games Workshop is the largest

and the most successful hobby miniatures company in the world.”).

105. See About Us, GMT

GAMES, https://www.gmtgames.com/t-about.aspx [https://perma

.cc/49A3-C453] (“GMT Games is now in its 31st year of creating and publishing a broad line of

Wargames . . . .”).

106. About, R

ESTORATION GAMES, https://restorationgames.com/about [https://perma.cc/

SD5K-ARLE].

107. “Crowdfunding is defined as the process of asking a large number of separate third

parties for relatively small amounts of money to fund an endeavor.” Paul Battista, The Taxation

of Crowdfunding: Income Tax Uncertainties and a Safe Harbor Test to Claim Gift Tax Exclusion, 64 U.

KAN. L. REV. 143, 143 (2015).

108. Oliver Roeder, Crowdfunding Is Driving a $196 Million Board Game Renaissance,

IVETHIRTYEIGHT (Aug. 18, 2015, 6:15 AM), https://fivethirtyeight.com/features/crowdfundi

ng-is-driving-a-196-million-board-game-renaissance.

109. Id.

110. See Exploding Kittens, K

ICKSTARTER (Feb. 17, 2021), https://www.kickstarter.com/proje

cts/elanlee/exploding-kittens [https://perma.cc/TC9B-7WM6]. At the time, this was a record

for a crowdfunded tabletop game; it was recently broken by Frosthaven, a sequel to Gloomhaven,

which raised over $12.9 million through Kickstarter. Frosthaven, K

ICKSTARTER (Mar. 11, 2022),

https://www.kickstarter.com/projects/frosthaven/frosthaven; see also Charlie Hall, Games Broke

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C. THE PROCESS OF INVENTING A NEW GAME

Tabletop game designers have a variety of motivations for inventing new

games. Some are motivated by the possibility of earning a profit, but many

others are interested in the creativity associated with developing a new game,

sharing an enjoyable experience with others, or seeing their name in

print.

112

Most designers invent new games on a part-time, freelance basis;

only a small number work in the industry full-time.

113

Generally, tabletop

game publishers opt to buy or license new games from independent

creators, rather than developing them in-house, commonly paying a royalty

of three to six percent of the game’s retail sales price.

114

The process of inventing a new tabletop game involves a number of

steps. First, the designer picks a theme for the game—its overall topic or

subject matter. The designer then develops the game’s mechanics—its basic

structure, method of play, and victory conditions.

115

There are literally

dozens of categories of game mechanics, from traditional roll the dice and

move around a board, to worker placement, deck construction, card playing

and taking, negotiating, auction, multiplayer combat, resource gathering,

tile placement, and cooperative.

116

Many new games borrow, adapt, or

combine mechanics from older games. For instance, Richard Garfield, best

known as creator of Magic, used the dice-rolling mechanics of Yahtzee for his

new, award-winning, monster-battling game, King of Tokyo.

117

Once the game’s mechanics are developed, a game designer then

compiles them in the form of written instructions.

118

After that, the designer

Funding Records on Kickstarter in 2020, Despite the Pandemic, POLYGON (Dec. 22, 2020, 5:06 PM),

https://www.polygon.com/2020/12/22/22195749/kickstarter-top-10-highest-fundedcampaig

ns-2020-video-games-board-games [https://perma.cc/EAR7-RSEC] (describing the Kickstarter

funding records broken in 2020).

111. Johannes Wachs & Balázs Vedres, Does Crowdfunding Really Foster Innovation? Evidence

from the Board Game Industry, 168 T

ECH. FORECASTING & SOC. CHANGE 1, 1, 3 fig.1 (2021).

112. T

INSMAN, supra note 78, at 46–48.

113. Id.; see also annodomini, Comment to How Does One Get Into the ‘Board Game Industry?’,

EDDIT (Jan. 26, 2013, 11:23 PM), https://www.reddit.com/r/boardgames/comments/17bzdj

/how_does_one_get_into_the_board_game_industry [https://perma.cc/BWZ7-RVUT] (“One thing

to be aware of is that very few people actually make a living in the board game industry

. . . . Many people in the industry do it as a [sic] essentially a paid hobby: as an occasional

source of freelance income, or a second job, or as something to do when you retire early from a

more lucrative career and want to do something fun that might make a little money.”).

114. T

INSMAN, supra note 78, at 53; Board Game Licensing Contract Terms, CARDBOARD EDISON

(2015), https://cardboardedison.com/reports [https://perma.cc/8UUZ-TJ52].

115. T

INSMAN, supra note 78, at 53–54.

116. See generally G

EOFFREY ENGELSTEIN & ISAAC SHALEV, BUILDING BLOCKS OF TABLETOP GAME

DESIGN: AN ENCYCLOPEDIA OF MECHANISMS (2020) (providing an overview of the structures, rules,

and spirit of tabletop games).

117. Richard Garfield, Play More Games, in T

HE KOBOLD GUIDE TO BOARD GAME DESIGN 7, 9

–10

(Mike Selinker ed., 2011).

118. T

INSMAN, supra note 78, at 156.

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1632 IOWA LAW REVIEW [Vol. 107:1615

creates a prototype of the game, either in physical form or using a computer-

based simulator like Tabletopia, Vassal, or Tabletop Simulator.

119

Next,

designers recruit family, friends, and even strangers to playtest the

prototype, which can help identify weaknesses or flaws in the game, such as

unclear instructions, confusing mechanics, balancing issues, and whether

the overall experience is enjoyable.

120

Some designers will conduct multiple

rounds of playtesting over a year or more to refine their game prior to

submission to potential publishers or self-publishing.

121

D. THE TABLETOP GAMING COMMUNITY

Like some “negative space” fields, there is a well-developed community

of creators, publishers, and players in the tabletop gaming industry,

particularly in the field of hobby (specialty) games. There are numerous

ways that participants in the gaming field interact, both in person and

online. One of these is through programs and game nights organized by

local game stores.

122

In these events, RPG and collectible card game players

engage in organized play and search for new members through these

programs. More recently, board game cafés have served as a meeting and

play space for hobby game players, particularly in larger cities.

123

With the

onset of the COVID-19 pandemic, many of these in-person events have

migrated online to Discord servers and websites hosted by game publishers.

124

Somewhat paradoxically, social media also has made it easier to become

connected in tabletop gaming. There are a myriad of podcasts,

125

Facebook

119. Charlie Hall, Tabletopia is Slick as Hell, and It’s Free on Steam, POLYGON (Dec. 1, 2016,

12:30 PM), https://www.polygon.com/2016/12/1/13806190/tabletopia-steam-board-games-fr

ee-to-play [https://perma.cc/E7Y3-XKNJ].

120. T

INSMAN, supra note 78, at 163–65; Angela M. Webber, How to Make a Game: Playtesting

Advice from Game Designers, G

EEK & SUNDRY: NERDIST (Apr. 11, 2018, 12:00 PM), https://geekan

dsundry.com/how-to-make-a-game-playtesting-advice-from-game-designers [https://perma.cc/

F3BR-WE73].

121. For instance, Richard Garfield conducted “Alpha,” “Beta,” and “Gamma” rounds of

testing of prototypes of Magic: The Gathering while he was a Ph.D. student at the University of

Pennsylvania. Richard Garfield, The Creation of Magic: The Gathering, M

AGIC: THE GATHERING

(Mar. 12, 2013), https://magic.wizards.com/en/articles/archive/making-magic/creation-magi

c-gathering-2013-03-12 [https://perma.cc/TA8Q-Z2SS].

122. See Charlie Hall, The Board Game Industry Is Coming Together to Help Indie Stores During the

Pandemic, P

OLYGON (Mar. 26, 2020, 5:57 PM), https://www.polygon.com/2020/3/26/21195

817/independent-board-game-stores-how-to-help-covid-19-coronavirus [https://perma.cc/J2EB-6YFC]

(“The lifeblood of the modern tabletop industry is a vast network of local game stores and the

communities they help to bring together.”).

123. Hana Schank, How Board Games Conquered Cafes, A

TL. (Nov. 23, 2014), https://www.t

heatlantic.com/entertainment/archive/2014/11/board-game-bars/382828 [https://perma.cc/2C2

F-W7B5].

124. Hall, supra note 122.

125. See Best 50 Tabletop Gaming Podcasts, F

EEDSPOT (Feb. 7, 2022), https://blog.feedspot.c

om/tabletop_gaming_podcasts [https://perma.cc/SVS5-GA3R].

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2022] INTELLECTUAL PROPERTY AND TABLETOP GAMES 1633

groups, YouTube channels,

126

and blogs

127

devoted to tabletop gaming.

These platforms serve as conduits of information and networking, not only

for like-minded gamers to connect with each other, but also for newer fans

to discover games that appeal to their tastes. Likewise, social media has

aided in the increasing acceptance of “geek” and gaming culture.

128

BoardGameGeek (“BGG”) is an online forum for game hobbyists, as

well as a database that hosts reviews, images, and videos for thousands of

tabletop games.

129

Founded in 2000, it is “the hub of board gaming on the

internet.”

130

BBG’s forums cover topics and subjects as varied as board game

design, trading and selling games and game parts, regional and

international game groups, and employment opportunities in the gaming

industry.

131

In addition, BGG holds an annual board game convention,

BGG.CON,

132

where winners of the annual Golden Geek Awards are

announced.

133

Tabletop game conventions are another space where designers,

publishers, and players interact. National conventions like GenCon,

134

PAX

Unplugged,

135

and Origins,

136

as well as smaller regional and local

conventions,

137

allow board game designers to showcase their creations for

playtesting and for board game enthusiasts to get a sneak peek at new

games. The largest board game convention in the world, Essen Spiel, is a

four-day convention that takes place in Essen, Germany, where winners of

the prestigious Spiel de Jahres prize are announced.

138

126. See 80 Board Games Youtube Channels, FEEDSPOT (Mar. 17, 2022), https://blog.feedspot

.com/board_games_youtube_channels [https://perma.cc/6JFZ-GFTJ].

127. Tabletop Games: r/tabletop, R

EDDIT, https://www.reddit.com/r/tabletop [https://perma

.cc/F6W2-BYG7].

128. See generally J

ASON TOCCI, GEEK CULTURES: MEDIA AND IDENTITY IN THE DIGITAL AGE

(2009) (Ph.D. dissertation, University of Pennsylvania), http://repository.upenn.edu/edisser

tations/953 [https://perma.cc/9J5X-6SUN].

129. Welcome to BoardGameGeek, B

OARDGAMEGEEK, https://boardgamegeek.com/wiki/page

/Welcome_to_BoardGameGeek [https://perma.cc/XG3A-X3TH].

130. Kevin Draper, Should Board Gamers Play the Roles of Racists, Slavers and Nazis?, N.Y.

TIMES

(Aug. 1, 2019), https://www.nytimes.com/2019/08/01/style/board-games-cancel-culture.html

[https://perma.cc/VZH9-Z37P].

131. Forums, B

OARDGAMEGEEK, https://boardgamegeek.com/forums/region/1/bgg [https://

perma.cc/Y93H-F29W].

132. BGG.CON, B

OARDGAMEGEEK, https://boardgamegeek.com/forum/52/bgg/bggcon

[https://perma.cc/DF3H-LUV9].

133. Golden Geek Awards, B

OARDGAMEGEEK, https://boardgamegeek.com/award/8314/gol

den-geek-awards [https://perma.cc/APJ3-QJVS].

134. G

ENCON, https://www.gencon.com [https://perma.cc/LAH3-GJ7E].

135. So What Can I Do at PAX?, PAX

UNPLUGGED, https://unplugged.paxsite.com [https://

perma.cc/B9GX-D36X].

136. Origins Game Fair 2022, O

RIGINS GAME FAIR, https://www.originsgamefair.com [https://

perma.cc/94EH-DSAZ].

137. See, e.g., P

REZCON, https://www.prezcon.com [https://perma.cc/V4PD-HALS].

138. W

OODS, supra note 76, at 55.

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1634 IOWA LAW REVIEW [Vol. 107:1615

In sum, tabletop gaming has come a long way since rolling a six-sided

die and moving brightly colored pieces along a board. Far from being a

niche hobby, it has now reinserted itself as a favorite activity of many adults

and families. With the industry churning out hundreds of complex and

novel games with high-quality components, the current “golden age” of

tabletop gaming is rife with innovation.

139

As a result, it is timely to analyze

the scope of IP protection for tabletop games and its limits.

IV. IP

PROTECTION AND LIMITS FOR TABLETOP GAMES

Tabletop games hold a unique position at the intersection of IP law,

with numerous aspects of games being partially covered by various doctrines

but not fully protected by any of them.

140

This Article represents the first

attempt in the law review literature to systematically and comprehensively

assess the scope and limits of legal protection for tabletop games under IP

law, with examples and illustrations drawn from case law and the U.S. Patent

and Trademark Office (“USPTO”). It first analyzes protection for tabletop

games under copyright law, followed by patent law, and then trademark law.

It concludes by addressing other types of legal protection for games that fall

within the general ambit of IP law, such as design patents, rights of publicity,

and trade secrecy.

A. C

OPYRIGHT

As a general matter, copyright law protects “original works of

authorship [that are] fixed in a[] tangible medium of expression.”

141

The

originality standard for copyright is quite low, especially compared to patent

law—it only requires “independent creation plus a modicum of creativity.”

142

139. Owen Duffy, Board Games’ Golden Age: Sociable, Brilliant and Driven by the Internet, THE

GUARDIAN (Nov. 25, 2014, 5:00 AM), https://www.theguardian.com/technology/2014/nov/

25/board-games-internet-playstation-xbox [https://perma.cc/9K94-YJ9B].

140. See Boyden, supra note 18, at 439 (“[T]he elusiveness of games poses problems for

intellectual property law . . . . Games seem to straddle the boundaries between copyright and

patent, between author, performer, and reader, and between protected and unprotected

material.”); Schaeffer, supra note 18, at 41 (“Board games occupy a nexus of the three primary

forms of intellectual property protection—copyright, trademark, and patent . . . .”); Benjamin J.

Siders & Kirk A. Damman, Emerging Challenges in Tabletop Gaming: Player Modifications, Third-Party

Parts, and Disruptive Technology, 7 L

ANDSLIDE 52, 52 (2015) (“Games are a unique hybrid of

intellectual property, and may incorporate almost every major category thereof.”).

141. 17 U.S.C. § 102(a) (2018).

142. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991); see also

Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 668 n.6 (7th Cir.

1986) (distinguishing the concepts “originality,” “creativity,” and “novelty,” and observing that

“for a work to be copyrightable, it must be original and creative, but need not be novel”);

ELVILLE B. NIMMER & DAVID NIMMER, 1 NIMMER ON COPYRIGHT § 2.01 (2021) (“[E]ven [the] most

commonplace and banal results of independent effort may command copyright protection,

provided that the independent effort in question is quantitatively more than minimal . . . .”

(footnotes omitted)); Dennis S. Karjala, Distinguishing Patent and Copyright Subject Matter, 35

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Copyrightable subject matter includes, but is not limited to: literary and

musical works; dramatic and choreographic works; pictorial, graphic, and

sculptural works; sound recordings; and architectural works.

143

However,

process[es], system[s], method[s] of operation, concept[s], principle[s, and]

discover[ies],” even if included or embodied in an otherwise copyrightable

work.

144

Historically, games were viewed as falling outside the scope of copyright

protection.

145

The rationale for this exclusion, however, is less than clear.

146

Some cases consider games to be merely a set of rules that amount to an

unprotectable idea.

147

Others conclude that games are a system or process,

148

a long-held exclusion from copyright protection dating back to the Supreme

Court’s landmark decision in Baker v. Selden

149

that is now codified in section

CONN. L. REV. 439, 471 (2003) (“Copyright’s standard of originality is much lower, at least in

principle, than patent’s requirement of nonobviousness.”).

143. 17 U.S.C. §§ 102(a)(1)–(8); see also Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d

841, 846 (2d Cir. 1997) (noting that the categories of copyrightable works listed in section

102(a) “is concededly non-exclusive”).

144. 17 U.S.C. § 102(b).

145. See Boyden, supra note 18, at 442 (“For nearly a century, courts have uniformly held

that games are not copyrightable.” (footnote omitted)); see also Hoopla Sports & Ent., Inc. v.

Nike, Inc., 947 F. Supp. 347, 354 (N.D. Ill. 1996) (“Courts have also held that ‘games’ themselves

. . . are not copyrightable.”).

146. See Boyden, supra note 18, at 442 (“Courts have been considerably less forthcoming,

however, with reasons for [excluding games from copyright protection].”); Samuelson, supra

note 18, at 1943 (“The cases on games and rules are quite spare in their analysis.”).

147. See, e.g., Allen v. Acad. Games League of Am., Inc., 89 F.3d 614, 617 (9th Cir. 1996)

(reasoning that games “consist of abstract rules and play ideas” that likely merge with the

underlying expression of those rules (quoting Midway Mfg. Co. v. Bandai-Am., Inc., 546 F.

Supp. 125, 148 (D.N.J. 1982))); Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d

485, 489 (9th Cir. 1984) (holding that strategies for playing Scrabble were unprotectable ideas);

Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 611 F.2d 296, 300 n.1 (9th Cir. 1979) (“[B]usiness

ideas, such as a game concept, cannot be copyrighted.”); Whist Club v. Foster, 42 F.2d 782, 782

(S.D.N.Y. 1929) (“In the conventional laws or rules of a game, as distinguished from the forms

or modes of expression in which they may be state[d], there can be no literary property

susceptible of copyright.”); see also Boyden, supra note 18, at 445–46 (“[S]everal cases describe

games, and game rules, as unprotectable ideas. Copyright, as is well known, protects only the

expression of an idea, not the idea itself.” (footnotes omitted)).

148. See, e.g., Seltzer v. Corem, 107 F.2d 75, 76–77 (7th Cir. 1939) (holding that the rules

for roller derby were an uncopyrightable system); DaVinci Editrice S.R.L. v. ZiKo Games, LLC,

183 F. Supp. 3d 820, 830 (S.D. Tex. 2016) (concluding that “[c]opyright does not protect game

rules because they fall within the section 102(b) exceptions,” and explaining that “[t]his general

rule is consistent with . . . Baker v. Selden . . . .”); Boyden, supra note 18, at 448 (“The idea that

games are systems is a promising theory for explaining why games are excluded from

copyrightability.”). Some definitions of games expressly refer to games as a system. See, e.g.,

ATIE SALEN & ERIC ZIMMERMAN, RULES OF PLAY: GAME DESIGN FUNDAMENTALS 80 (2004) (“A

game is a system in which players engage in an artificial conflict, defined by rules, that results in

a quantifiable outcome.”).

149. See generally Baker v. Selden, 101 U.S. 99 (1879) (holding that a system for improved

bookkeeping is not copyrightable).

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1636 IOWA LAW REVIEW [Vol. 107:1615

102(b) of the Copyright Act.

150

Whatever the precise rationale, there is a

widespread agreement that “game mechanics and . . . rules are not entitled

to [copyright] protection.”

151

Even though a game’s mechanics and rules—“the ‘heart’ of [a]

game”

152

—are uncopyrightable, numerous other aspects of it may qualify for

153

For instance, artwork that appears on the box, cards,

miniatures, or other components of a game may be protectable as pictorial,

graphic, or sculptural works.

154

Similarly, some board game surfaces that

depict real or fictional locations and terrain “may . . . be copyrightable as

‘maps.’”

155

The text of a game’s instructions may also be protectable if it is

sufficiently expressive to be distinguishable from the underlying rules of the

game.

156

150. See 17 U.S.C. § 102(b) (2018) (“In no case does copyright protection for an original work

of authorship extend to any idea, procedure, process, system, method of operation, concept,

principle, or discovery . . . .”).

151. Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394, 404 (D.N.J. 2012);

see also Affiliated Hosp. Prods., Inc. v. Merdel Game Mfg. Co., 513 F.2d 1183, 1188–89 (2d Cir.

1975) (concluding that “[t]he rules of the game are perforce in the public domain” due to lack

of copyright protection); Chamberlin v. Uris Sales Corp., 56 F. Supp. 987, 988 (S.D.N.Y. 1944)

(“[I]t is very doubtful if rules of a game can, in any event, be copyrightable subject matter.”),

aff’d, Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945); NIMMER & NIMMER, supra

note 142, § 2A.14 (“[N]o copyright may be obtained in the system or manner of playing a game.”

(footnotes omitted)); U.S. COPYRIGHT OFFICE, COMPENDIUM OF COPYRIGHT OFFICE PRACTICES

§ 714 (3d ed. 2021) (“[C]opyright does not protect the idea for a game . . . or the procedure,

process, or method of operation for playing a game.”); id. § 910 (“Uncopyrightable elements

include the underlying ideas for a game and the methods for playing and scoring a game.

These elements cannot be registered, regardless of how unique, clever, or fun they may be.”).

152. See Hales, supra note 18, at 242.

153. See C

OMPENDIUM (THIRD), supra note 151, § 910 (“Games often include both copyrightable

and uncopyrightable elements.”).

154. See Tetris Holdings, 863 F. Supp. 2d at 404 (“[C]ourts have found expressive elements

copyrightable, including game labels, design of game boards, [and] playing cards . . . .”);

NIMMER & NIMMER, supra note 114242, § 2A.14 (“[A] minimal artistic expression, if original,

renders copyrightable labels for games, as well as the pattern or design of game boards and

playing cards as pictorial or graphic works.” (footnotes omitted)). Miniatures, which are used in

miniatures games to stage the game scenes, may consist of a mix of protectable sculptural works

and unprotectable functional elements. Cf. Lego A/S v. Best-Lock Constr. Toys, Inc., 874 F.

Supp. 2d 75, 100–01, 105 (D. Conn. 2012) (holding that plaintiff’s Lego minifigures included

unprotectable functional components, such as straight legs and square feet, as well as

copyrightable sculptural aspects, including “cylindrical shape of the head[;] the trapezoidal

shape of the torso;” the extended arms; and the bent elbow); see also Lego A/S v. Best-Lock

Constr. Toys, 404 F. Supp. 3d 583, 603 (D. Conn. 2019) (reaffirming “that certain elements of

the Lego minifigures are, indeed, functional” while other elements “are purely sculptural”).

155. N

IMMER & NIMMER, supra note 142, § 2A.14[C][1]; see also, e.g., TICKET TO RIDE, U.S.

ICKET TO RIDE: EUROPE,

U.S. Copyright Office Registration No. VA0002095585 (Aug. 1, 2012); S

MALL WORLD, U.S.

156. See N

IMMER & NIMMER, supra note 142, § 2A.14[C][1] (“[T]he wording of instructions

for playing the game is itself copyrightable . . . . That copyright would not, however, permit a

monopoly in the method of play itself, as distinguished from the form of instructions for

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2022] INTELLECTUAL PROPERTY AND TABLETOP GAMES 1637

Tabletop games with extensive text, such as word-based games and

RPGs, may also be protectable as literary works under the Copyright Act.

157

For instance, Hasbro, which currently owns the D&D franchise, and its

predecessors-in-interest have registered copyrights in hundreds of books,

modules, guides, maps, and other materials.

158

However, as noted above, the

underlying rules themselves (as distinct from their expression) are

uncopyrightable. Moreover, the scènes-à-faire doctrine precludes protection

for aspects of a work that are standard or common to a topic or genre.

159

For

example, in a case involving alleged copyright infringement of a video

arcade golf game, the Seventh Circuit held that elements such as golf clubs,

greens, sand traps, water hazards, and information about wind speed and

distance to the hole were all necessary for a realistic video golf game and

thus were uncopyrightable.

160

Likewise, for a high-fantasy RPG, standard

elements like races (human, elf, dwarf), character classes (warrior, wizard,

thief), attributes (strength, dexterity, intelligence, hit points), monsters

(orcs, demons, dragons), weapons (swords, daggers, maces, staffs, bow-and-

arrow), armor (shield, mail, helmet), loot (gold, magical items), and quests

or missions (slay a monster, find hidden treasure, transport an item, save an

innocent person) likely would be considered unprotectable scènes-à-faire.

Fictional characters that appear in tabletop games may be copyrightable

as well.

161

In general, fictional characters are copyrightable if they have

play.”); see also COMPENDIUM (THIRD), supra note 151, § 910 (containing an example where the

instructions for a game “consist of two pages of text” and are copyrightable). Several cases have

similarly held that the arrangement and expression of rules can be copyrighted. See Affiliated

Hosp. Prods., Inc. v. Merdel Game Mfg. Co., 513 F.2d 1183, 1188 (2d Cir. 1975) (explaining that

the plaintiff’s copyright “only protects [its] arrangement of the [game’s] rules and the manner

of their presentation, and not their content”); Hoopla Sports & Ent., Inc. v. Nike, Inc., 947 F.

Supp. 347, 354 (N.D. Ill. 1996) (noting that “instruction books” for a game may be copyrightable).

157. See C

OMPENDIUM (THIRD), supra note 151, § 714 (“A game may be registered as a

literary work if the predominant form of authorship in the work consists of text”—for example,

word games, riddles, or brain teasers—“including the instructions or directions for playing a

particular game.”).

158. Hasbro, Inc. v. Sweetpea Ent., Inc., No. 13-CV-3406, 2014 WL 12586021, at *1 (C.D.

Cal. Feb. 25, 2014); see also infra Part V.A (discussing in more detail the IP rights in D&D).

159. See, e.g., Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986) (“Neither does

genre.”); Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982)

(“Scenes a faire refers to ‘incidents, characters or settings which are as a practical matter

indispensable, or at least standard, in the treatment of a given topic.’” (quoting Alexander v. Haley,

460 F. Supp. 40, 45 (S.D.N.Y.1978)).

160. Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1014–15 (7th Cir. 2005).

161. See N

IMMER & NIMMER, supra note 142, § 2.12[A][2] (“[T]he prevailing view has

become that characters per se are entitled to copyright protection.” (footnotes omitted));

OMPENDIUM (THIRD), supra note 151, § 911 (“The original, visual aspects of a character may

be protected by copyright if they are sufficiently original.”). See generally Zahr K. Said, Fixing

ARDOZO L. REV. 769 (2013)

(discussing the legal problem surrounding copyright protection for fictional characters and

proposing an interdisciplinary solution).

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1638 IOWA LAW REVIEW [Vol. 107:1615

“distinctive character traits and attributes” and are “sufficiently delineated to

be recognizable as the same character whenever it appears.”

162

Courts have

found Tarzan,

163

Mickey Mouse,

164

James Bond,

165

Rocky Balboa,

166

Godzilla,

167

Superman,

168

Batman,

169

and even inanimate objects such as the Batmobile

170

and Freddy Krueger’s glove

171

to be independently copyrightable of the works

in which they appear. Although many tabletop games do not involve

copyrightable characters, some do.

172

For example, a recent district court

case concluded that “games can have a progression of events and a roster of

developed characters that make the game expressive, just as the progression

of a book or movie plot can be expressive even when the basic elements are

common.”

173

In particular, modules and campaigns for tabletop RPGs often

have rich storylines with detailed characters, locations, and items that may

be independently protectable under copyright law.

174

162. D.C. Comics v. Towle, 802 F.3d 1012, 1019–21 (9th Cir. 2015) (internal quotation marks

omitted). In contrast, stock characters are unprotectable. See id. at 1021; see also Gaiman v.

McFarlane, 360 F.3d 644, 659 (7th Cir. 2004) (“A stock character is a stock example of the

operation of the [scenes-a-faire] doctrine . . . .”); Rice v. Fox Broadcasting Co., 330 F.3d 1170,

1176 (9th Cir. 2003) (holding that a magician who revealed tricks was an unprotectable stock

character because it “shared attributes of appearance and mysterious demeanor [that] are generic

and common to all magicians”).

163. Burroughs v. Metro-Goldwyn-Mayer, Inc., 519 F. Supp. 388, 394 (S.D.N.Y. 1981), aff’d

on other grounds, 684 F.2d 610 (2d Cir. 1982).

164. Walt Disney Prods. v. Air Pirates, 345 F. Supp. 108, 116 (N.D. Cal. 1972), aff’d, 581 F.2d

751, 755, n.11 (9th Cir. 1978).

165. Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1291 (C.D. Cal.

1995).

166. Anderson v. Stallone, No. 87-0592, 1989 WL 206431, at *18 (C.D. Cal. Apr. 25, 1989).

167. Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1215 (C.D. Cal. 1998).

168. Warner Bros. v. Am. Broad. Cos., 530 F. Supp. 1187, 1199 (S.D.N.Y. 1982), aff’d, 720

F.2d 231, 242 (2d Cir. 1983).

169. Sapon v. DC Comics, No. 00-cv-8992, 2002 WL 485730, at *3–4 (S.D.N.Y. Mar. 29, 2002).

170. DC Comics v. Towle, 802 F.3d 1012, 1021–23 (9th Cir. 2015).

171. New Line Cinema Corp. v. Russ Berrie & Co., 161 F. Supp. 2d 293, 302 (S.D.N.Y.

2001); New Line Cinema Corp. v. Easter Unlimited, Inc., No. CV 89–2017, 1989 WL 248212,

at *3–4 (E.D.N.Y. July 19, 1989).

172. Some tabletop games import fictional characters from other media, presumably under

license from the copyright owner. See, e.g., F

ORREST-PRUZAN CREATIVE, KAMI MANDELL & ANDREW

WOLF, HARRY POTTER: HOGWARTS BATTLE (USAopoly 2016) (involving characters from the Harry

Potter universe); J

ASON LITTLE & FRANK BROOKS, STAR WARS: X-WING (SECOND EDITION) (Fantasy

Flight Games 2018) (involving spacecraft and characters from the Star Wars universe); N

ATE FRENCH,

THE LORD OF THE RINGS: THE CARD GAME (Fantasy Flight Games 2011) (involving characters

from the works of J.R.R. Tolkien). This Article instead focuses on fictional characters who first

appear in tabletop games.

173. DaVinci Editrice S.R.L. v. ZiKo Games, LLC, 183 F. Supp. 3d 820, 832 (S.D. Tex. 2016).

174. For instance, the Forgotten Realms campaign setting for D&D has spawned numerous

books, novels, video games, and even a popular board game, Lords of Waterdeep. These media

include numerous iconic characters, including Drizzt Do’Urden, Wulfgar, Elminster, and

Halaster Blackcloak, and cities and locations such as Baldur’s Gate, Waterdeep, Icewind Dale,

and the Underdark.

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The copyright rights in a tabletop game prohibit others from copying

the game’s protected elements, which extends to both literal copying and

reproductions that are substantially similar.

175

It also grants the rights to

distribute and sell the game,

176

“to prepare derivative works,”

177

and to

publicly perform or display certain aspects of the game.

178

Of these, the

derivative work right is particularly valuable, as it grants the copyright owner

the right to create adaptations of the game and to transform or recast it in

other forms.

179

For example, many mass-market publishers have created

expansions or new or revised editions of classic games that fall within the

derivative work right.

180

In addition, numerous tabletop games have been

ported to digital platforms, such as computer software or smartphone

apps,

181

which can be a significant source of revenue.

182

A few well-known

175. 17 U.S.C. § 106(1) (2018); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946)

(evaluating improper appropriation based on access to the copyright work and degree of

similarity between the copyright work and allegedly infringing work).

176. 17 U.S.C. § 106(3).

177. Id. § 106(2).

178. Id. §§ 106(4)–(5). However, several courts have rejected the argument that playing a

game in public amounts to an infringement of the public performance right. See, e.g., Allen v.

Acad. Games League of Am., Inc., 89 F.3d 614, 616–17 (9th Cir. 1996); Seltzer v. Sunbrock, 22

F. Supp. 621, 627–28 (S.D. Cal. 1938); see also Boyden, supra note 18, at 472–75 (further

discussing this issue and asserting that “[g]ames are meant to be played, and playing one does

not violate any of the rights of a game’s copyright owner”).

179. See 17 U.S.C. § 101 (“A ‘derivative work’ is a work based upon one or more preexisting

works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture

version, sound recording, art reproduction, abridgment, condensation, or any other form in

which a work may be recast, transformed, or adapted. A work consisting of editorial revisions,

annotations, elaborations, or other modifications which, as a whole, represent an original work

of authorship, is a ‘derivative work’.”); see also Castle Rock Ent., Inc. v. Carol Publ’g Grp., Inc.

150 F.3d 132, 138–39 (2d Cir. 1998) (holding that a trivia book with questions regarding the

TV show Seinfeld violated the derivative work right in the show). For a comprehensive history of

the derivative work right and an argument that it should be interpreted more narrowly, see

generally Pamela Samuelson, The Quest for a Sound Conception of Copyright’s Derivative Work Right,

101 G

EO. L.J. 1505 (2013).

180. Schaeffer, supra note 18, at 43.

181. See id. (“Computer program versions of board games—loaded onto a computer and

played by one player against the computer—have been around for some time.”); see also

Complaint at 11–13, Hasbro, Inc. v. RJ Softwares, No. 08-CIV-6567 (S.D.N.Y. July 24, 2008)

(asserting that the Facebook game Scrabulous infringed Hasbro’s copyright and trademark rights

in Scrabble).

182. See Jason Wilson, Sensor Tower: U.S. Spending Up 40% for Mobile Tabletop Games,

ENTUREBEAT: GAMESBEAT (Aug. 9, 2021, 3:52 PM), https://venturebeat.com/2021/08/09

/sensor-tower-u-s-spending-up-40-for-mobile-tabletop-games [https://perma.cc/64V4-HS8Z]

(explaining “that tabletop mobile gaming rose 40% over the past 12 months in the United

States, bringing in $703.8 million between August 1, 2020 and July 31”).

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1640 IOWA LAW REVIEW [Vol. 107:1615

games have even been transformed into derivative works like movies

183

and

television shows.

184

As an additional limitation, copyright protection for tabletop games

may be limited by the fair use doctrine. “[F]air use ‘permits courts to avoid

rigid application of the copyright statute when, on occasion, it would stifle

the very creativity which that law is designed to foster.’”

185

Section 107 of the

[i]n determining whether the use made of a work in any particular

case is a fair use[:] (1) the purpose and character of the use,

including whether such use is of a commercial nature or is for

nonprofit educational purposes; (2) the nature of the copyrighted

work; (3) the amount and substantiality of the portion used in

relation to the copyrighted work as a whole; and (4) the effect of

the use upon the potential market for or value of the copyrighted

work.

186

Although not expressly listed as a factor, courts also consider whether

an alleged fair use is “transformative” in nature. For instance, in Campbell v.

Acuff-Rose Music, Inc., the Supreme Court reasoned that the central purpose

of the fair use inquiry is to assess “whether the new work merely

‘supersede[s] the objects’ of the original creation or instead adds something

new, with a further purpose or different character, altering the first with new

expression, meaning, or message.”

187

Fair use may limit the availability of copyright protection for tabletop

games. As one example, in Allen v. Academic Games League of America, Inc., the

Ninth Circuit concluded that the fair use doctrine would preclude a finding

of infringement of the plaintiff’s academic games, in part because the

defendant’s alleged infringing conduct of hosting similar games was for a

nonprofit, educational purpose.

188

However, at least the first factor—the

purpose and character of the use—will ordinarily weigh against a finding of

fair use, at least when the alleged infringer is engaging in a commercial

183. See, e.g., BATTLESHIP (Universal Pictures 2012); DUNGEONS & DRAGONS (New Line Cinema

2000); C

LUE (Paramount Pictures 1985).

184. See, e.g., The Game of Life (The Hub television broadcast 2011–2012); Trivial Pursuit (The

Family Channel television broadcast 1993–1994); Scrabble (NBC television broadcast 1984–1990);

Dungeons & Dragons (CBS television broadcast 1983–1985).

185. N

IMMER & NIMMER, supra note 142, § 13.05 (quoting Iowa State Univ. Rsch. Found.,

Inc. v. Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980)).

186. 17 U.S.C. § 107 (2018).

187. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (alteration in original)

(citations omitted) (quoting Folsom v. Marsh, 9 F.Cas. 342, 348 (C.C.D. Mass. 1841) (No. 4,901)).

188. Allen v. Acad. Games League of Am., Inc., 89 F.3d 614, 617 (9th Cir. 1996). This

conclusion was arguably dicta, however, as the Ninth Circuit concluded that the playing of

games was not an infringing performance under 17 U.S.C. § 106(4). Allen, 89 F.3d at 616–17.

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use.

189

For instance, in Horn Abbot Ltd. v. Sarsaparilla Ltd., the defendant’s

claim of fair use failed when “it copied, verbatim, every question an [sic]

answer from the Genus Edition of Trivial Pursuit” by engaging in the

commercial purpose of republishing these questions in the form of a

“reference book” or “supplement” to the game.

190

Finally, copyright law’s termination right may allow game creators who

assign the rights in their games to a publisher to eventually recapture them.

Under the 1976 Copyright Act, the author(s) of a work (or her statutory

heirs if deceased) has the power to terminate the grant of a copyright right

after a certain period of time,

191

relieving them “of the consequences of ill-

advised and unremunerative grants that had been made before the author

had a fair opportunity to appreciate the true value of [their] work.”

192

However, termination rights do not extend to works made for hire,

193

which

includes “a work created by an employee acting within the scope of

employment.”

194

For instance, the heirs of a game designer who helped

create The Game of Life unsuccessfully sued to terminate the copyright

assignment in the game to Hasbro; the court denied termination on the

grounds that that the game was made at the instance and expense of Milton

Bradley, Hasbro’s predecessor, and thus was a work made for hire.

195

But the

termination right might be applicable to game designers who independently

create a game and subsequently assign their copyright in it to a publisher.

In sum, while copyright protects some aspects of tabletop games, such

as illustrations and expressive content, it leaves much room open for other

creators to innovate and improve upon existing games.

B. P

ATENT

Second, patent law may be available to protect a number of aspects of

tabletop games. However, it is significantly more difficult to obtain a utility

patent than a copyright because the legal requirements for patent

protection are much higher than copyright law.

196

Furthermore, practical

realities such as the cost of obtaining and enforcing patent rights mean that

189. But cf. Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978–2005,

156 U.

PA. L. REV. 549, 602 (2008) (explaining that, based on an empirical analysis of fair use

decisions, “a finding that the defendant’s use was for a commercial purpose . . . did not significantly

influence the outcome of the fair use test”).

190. Horn Abbot Ltd. v. Sarsaparilla Ltd., 601 F. Supp. 360, 362, 367–68 (N.D. Ill. 1984).

191. 17 U.S.C. §§ 203, 304(c)–(d).

192. Mills Music, Inc. v. Snyder, 469 U.S. 153, 172–73 (1985).

193. 17 U.S.C. § 304(c).

194. Forward v. Thorogood, 985 F.2d 604, 606 (1st Cir. 1993) (referencing 17 U.S.C. § 101).

195. Markham Concepts, Inc. v. Hasbro, Inc., 1 F.4th 74, 77–79 (1st Cir. 2021).

196. See Mary LaFrance, Something Borrowed, Something New: The Changing Role of Novelty in

Idea Protection Law, 34 S

ETON HALL L. REV. 485, 486 n.5 (2004) (observing that “[i]n contrast [to

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1642 IOWA LAW REVIEW [Vol. 107:1615

even when patenting might be an option, many game creators voluntarily

forego it.

197

In general, patent protection is available for inventions that are

novel,

198

nonobvious,

199

and drawn to patent eligible subject matter.

200

addition, the invention must be adequately disclosed in the patent

document.

201

The owner of a patent has “the right to exclude others from

making, using, offering for sale, or selling . . . or importing” products which

practice the patented invention.

202

If granted, a utility patent can last for up

to 20 years from the date of application.

203

Board games can be patented if they satisfy these requirements. For

example, in 1935, Charles Darrow obtained a patent for Monopoly,

204

perhaps

the most famous board game in the world.

205

Darrow’s patent disclosed the

rules and parts of the game, including the game board, playing pieces like

hotels and houses, property cards with rent and mortgage values, and in-

197. See infra notes 270–75 and accompanying text.

198. 35 U.S.C. § 102 (2018).

199. Id. § 103.

200. See id. § 101 (“Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful improvement thereof, may

obtain a patent therefor, subject to the conditions and requirements of this title.”). However,

the broad categories of patent eligible subject matter in the Patent Act have been significantly

narrowed by judicially created exceptions for inventions directed to abstract ideas, laws of

nature, and natural or physical phenomena. See infra notes 240–43 and accompanying text.

201. See id. § 112(a) (containing the enablement, written description, and best mode

requirements); see also Jason Rantanen, Patent Law’s Disclosure Requirement, 45 L

OY. U. CHI. L.J.

369, 371–78 (2013) (explaining how these requirements serve the objective “that inventors must

disclose information about their inventions—the technological advances that they have made—

in order to obtain a patent.”).

202. 35 U.S.C. §§ 154(a)(1), 271(a). The right to exclude, however, does not mean that a

patentee has a right to automatically obtain injunctive relief from a court if it proves

infringement. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392 (2006) (explaining “the

creation of a right is distinct from the provision of remedies for violations of that right” and that

“injunctive relief may issue only in accordance with the principles of equity” (internal quotation

marks omitted) (quoting 35 U.S.C. § 283)); see also Christopher B. Seaman, Permanent Injunctions

in Patent Litigation After eBay: An Empirical Study, 101 I

OWA L. REV. 1949, 1983, 1988 (2016)

(finding that district courts awarded permanent injunctions 72.5% of the time following eBay

but only 16% when the patentee was a non-practicing entity).

203. 35 U.S.C. § 154(a)(2).

204. U.S. Patent No. 2,026,082 (filed Aug. 31, 1935).

205. See generally P

HILIP E. ORBANES, MONOPOLY: THE WORLD’S MOST FAMOUS GAME—AND

HOW IT GOT THAT WAY (2006) (explaining the history and significance of Monopoly); see also MARY

PILON, THE MONOPOLISTS: OBSESSION, FURY, AND THE SCANDAL BEHIND THE WORLD’S FAVORITE

BOARD GAME 151–52 (2015) (noting that while the creation of Monopoly is generally attributed to

Charles B. Darrow, game historians observe that Darrow evidently added new elements to The

Landlord’s Game, patented in 1904 by Lizzie J. Magie); Mary Pilon, Monopoly’s Inventor: The

Progressive Who Didn’t Pass ‘Go’, N.Y.

TIMES (Feb. 13, 2015), https://www.nytimes.com/2015/02

/15/business/behind-monopoly-an-inventor-who-didnt-pass-go.html [https:// perma.cc/QCC5-

B9ZV].

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game currency. The patent claimed

206

“a board game apparatus . . . having

marked spaces constituting a path or course [around] the board,” with

“certain of said spaces being designated as by position or color so as to

constitute a distinguishable group,” and “the apparatus having indications of

the rentals required for the use and occupancy, by opponent players, of

spaces of one or more such groups, which rentals are subject to increase by

the acquisition of an additional space or spaces of the same group by the

same individual player.”

207

Additional claims covered game pieces like

Chance or Community Chest cards, buildings on properties like houses and

hotels, tokens (playing pieces), and spaces on the board game that

conferred benefits (“Free Parking”) or imposed penalties (“Income Tax,”

“Luxury Tax,” and “Go to Jail”).

208

Other classic games covered by patents

include Life,

209

Sorry,

210

Battleship,

211

Scrabble,

212

Mouse Trap,

213

and Twister.

214

Games with a novel playing surface or apparatus may be patented as

well. Jenga—a game involving the manipulation of wooden blocks organized

vertically in layers—was patented in 1997.

215

Other patented game boards

include a path-based game with moveable, three-dimensional obstacles, such

as bridges and walls;

216

a board game with model buildings that simulate an

earthquake;

217

and a strategy-type board game with pieces that reflect laser

beams.

218

Game parts also can be patented. For example, there are numerous

patents covering non-cuboid dice (i.e., dice with greater or less than six

sides),

219

spinners,

220

and miniature figurines.

221

206. In a patent, the claims delineate the scope of the patentee’s rights. See 35 U.S.C. § 112(b);

see also Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (explaining that a

“patent claim” is “the portion of the patent document that defines the scope of the patentee’s

rights”).

207. ‘082 Patent, col. 11 ll. 28–43.

208. Id. col. 3 l. 8–col. 4 l. 34.

209. U.S. Patent No. 53,561 (filed Mar. 30, 1866). For an informative history of the original

Game of Life (not the 1960s to 1980s remake that most readers are familiar with), see Phil Edwards,

Why the Game of Life Used to Have Poverty, Suicide, and Ruin, V

OX (Jan. 13, 2020, 9:39 AM),

https://www.vox.com/2015/1/28/7924487/game-of-life-history.

210. U.S. Patent No. 1,903,661 (filed Aug 4, 1930).

211. U.S. Patent No. 1,988,301 (filed Feb. 23, 1933); see also U.S. Patent No. 1,932,524

(filed Nov. 23, 1932) (describing a similar game).

212. U.S. Patent No. 2,752,158 (filed Oct. 28, 1954).

213. U.S. Patent No. 3,298,692 (filed Aug. 24, 1962).

214. U.S. Patent No. 3,454,279 (filed Apr. 14, 1966).

215. U.S. Patent No. 5,611,544 (filed Nov. 27, 1995).

216. U.S. Patent No. 7,766,335 (filed Jan. 6, 2006).

217. U.S. Patent No. 4,394,017 (filed June 5, 1981).

218. U.S. Patent No. 7,264,242 (filed Feb. 13, 2006); see also Innovention Toys, LLC v. MGA

Ent., Inc., 611 F. App’x 693, 699 (Fed. Cir. 2015) (affirming the lower court’s conclusion of

nonobviousness of the ‘242 Patent), vacated 579 U.S. 915 (2016).

219. See, e.g., U.S. Patent No. 3,208,754 (filed Feb. 20, 1963); U.S. Patent No. 5,909,874

(filed Aug. 12, 1997).

220. See, e.g., U.S. Patent No. 1,300,315 (filed Dec. 4, 1917).

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1644 IOWA LAW REVIEW [Vol. 107:1615

Methods of game play also may be patentable. For example, there are

numerous patents on wargames, which involve a playing surface composed

of various shapes (such as squares or hexagons) overlaid on a map depicting

terrain that depicts a fictional or real-life location, along with game pieces

representing military units and rules about how to resolve combat between

units.

222

Patents also have been obtained for various implementations of tile-

based games,

223

cooperative-style games,

224

deck-building card games,

225

and

word-based games.

226

In addition, modifications to existing board games,

such as chess variants,

227

three-dimensional tic-tac-toe,

228

and extensions to

Monopoly,

229

have been patented.

221. See, e.g., U.S. Patent No. 6,659,463 (filed July 3, 2002).

222. See, e.g., U.S. Patent No. 2,464,819 (filed Oct. 30, 1945) (describing “a war game to be

played on a game board and has for an object to provide an improved game board on which

the players may simulate substantially all the features of modern warfare”); U.S. Patent No.

2,703,713 (filed June 18, 1951) (describing “a simulated war game apparatus in which the

hazards of chance are minimized by player choice, selection, planning, and strategy”); U.S.

Patent No. 3,831,944 (filed Aug. 27, 1974) (describing and claiming a wargame “comprising a

pair of identical game boards” with different regions and game pieces representing tanks,

airplanes, and various naval vessels); U.S. Patent No. 3,860,241 (filed May 9, 1973) (describing

and claiming a simulated battle game on a board comprising a plurality of squares with opposing

army units); U.S. Patent No. 4,093,236 (filed Nov. 22, 1976) (describing a tactical war game

and method for playing that includes 1/285 scale vehicles and weapons); U.S. Patent No.

4,227,695 (filed Jan. 22, 1979) (patent for “Battle of the Alamo” game); U.S. Patent No.

5,020,805 (filed Dec. 6, 1989) (describing and claiming a “Vietnam war board game”); U.S.

Patent No. 5,042,817 (filed June 21, 1990) (claiming “[a] method of playing an air-to-ground

strategic bombing board game”); U.S. Patent No. 5,465,973 (filed Mar. 7, 1995) (describing a

war game apparatus that includes a map depicting the Middle East); U.S. Patent No. 5,570,887

(filed May 22, 1995) (describing and claiming a board game apparatus and method of play

designed to simulate the medieval European period); U.S. Patent No. 5,879,005 (filed Feb. 26,

1998) (describing and claiming a method of playing a game system including military units, coins,

dice simulating movement and weather, and a game board representing terrain); U.S. Patent

No. 6,561,513 (filed Mar. 5, 2001) (describing and claiming “[a] conflict resolution system for

strategy games [comprising] a defender and an attacker” that does not require a random

number generator like dice); U.S. Patent No. 7,077,400 (filed Nov. 18, 2004) (describing and

claiming “[a] method of playing a combat-style game for a plurality of players”); U.S. Patent No.

8,282,103 (filed July 6, 2010) (describing an apparatus and method for an airplane combat game);

U.S. Patent No. 10,610,767 (filed Feb. 12, 2019) (claiming “[a] board game for simulating

unconventional warfare”).

223. See, e.g., U.S. Patent No. 6,170,825 (filed Nov. 23, 1998); U.S. Patent No. 6,305,688

(filed Apr. 22, 1999); U.S. Patent No. 6,938,899 (filed Nov. 1, 2002); U.S. Patent No. 8,215,642

(filed Oct. 1, 2017).

224. See, e.g., U.S. Patent No. 9,333,417 (filed Nov. 9, 2012).

225. See, e.g., U.S. Patent No. 6,601,851 (filed Nov. 17, 2000) (Pokémon); U.S. Patent No.

5,662,332 (filed Oct. 17, 1995) (Magic: The Gathering).

226. See, e.g., U.S. Patent No. 6,692,002 (filed Aug. 21, 2002); U.S. Patent No. 6,986,512

(filed Jan. 18, 2002); U.S. Patent No. 7,140,613 (filed Aug. 9, 2002).

227. See, e.g., U.S. Patent No. 1,030,521 (filed Nov. 24, 1909) (Game of War); U.S. Patent

No. 1,141,909 (filed Dec. 29, 1914) (Angel Chess); U.S. Patent No. 4,033,586 (filed Aug. 13, 1975)

(Ministers Chess); see also U.S. Patent Application No. 2007/0126179 (filed June 7, 2007)

(Betting Chess and Methods of Play).

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Despite this, numerous hurdles make it impractical or impossible to

secure patent protection for many tabletop games. First, the novelty and, in

particular, nonobviousness requirements can be difficult to satisfy.

230

Many

new tabletop games are re-implementations of, or variations on, the game

play mechanics of existing games,

231

or borrow elements that are common to

the genre—such as the use of six-sided dice, tokens or miniatures to

represent players and objects, and the progression of game pieces along one

or more pathways on the game board. Under current nonobviousness

jurisprudence, the implementation of “predictable variation[s]” and use of

“familiar elements according to known methods” is likely to be obvious.

232

For instance, in In re Bryan, the applicant sought to patent a “game

board and game having a touring band theme,” which comprised a game

board with multiple paths from the starting area to the middle of the game

board, a series of tokens that would advance along the pathways, at least one

die for determining token movements, and decks of labeled cards

representing band members, band equipment, and actions or events that a

player must take.

233

The patent examiner rejected the applicant’s claims as

obvious in light of two prior art patents, which between them taught all the

parts of the applicant’s board game,

234

and the Board of Patent Appeals and

Inferences upheld the rejection.

235

The Federal Circuit affirmed, concluding

that the applicant’s claims were not patentable because the claimed features

were obvious in light of the prior art.

236

“[T]he . . . slight claim distinctions

noted by [the applicant]”—such as using three decks of game cards instead

of two and color-coding the game cards—did not render the claims

228. See, e.g., U.S. Patent No. 2,313,473 (filed Mar. 9, 1943); U.S. Patent No. 2,676,018

(filed Apr. 20, 1954); U.S. Patent No. 3,888,487 (filed Nov. 5, 1974).

229. See, e.g., U.S. Patent No. 5,810,359 (filed Apr. 22, 1997).

230. See Hales, supra note 18, at 247 n.33 (noting that the novelty and nonobviousness

requirements “present high bars to overcome for a creative but simple board game”).

231. For example, Dune: Imperium combines deck-building, a mechanic found in numerous

popular games such as Dominion and Star Realms, with worker placement, a quintessential

mechanic found in many Eurogames such as Agricola and Lords of Waterdeep. See P

AUL DENNEN,

UNE: IMPERIUM (Dire Wolf Digital 2020); UWE ROSENBERG, AGRICOLA (Lookout Games 2007);

PETER LEE & RODNEY THOMPSON, LORDS OF WATERDEEP (Wizards of the Coast 2012). Likewise,

Praetor puts a novel spin on worker placement by having workers represented by dice with the

amount of resources gathered dependent on the “level” of the worker. See A

NDREI NOVAC, PRAETOR

(NSKN Games 2014).

232. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–18 (2007).

233. In re Bryan, 323 F. App’x 898, 899–900 (Fed. Cir. 2009) (per curiam).

234. Id. at 900 (citing U.S. Patent No. 4,998,736 (filed July 23, 1990), and U.S. Patent No.

6,279,908 (filed Mar. 16, 1998)).

235. Ex parte Bryan, Appeal 2007-1590, 2008 WL 1057622, at *7 (B.P.A.I. Apr. 9, 2008).

236. In re Bryan, 323 F. App’x at 901–02.

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1646 IOWA LAW REVIEW [Vol. 107:1615

nonobvious because they amounted to “nothing more than a ‘predictable

use of prior art elements . . . .’”

237

Second, current patent eligibility jurisprudence significantly limits the

availability of patent protection for tabletop games. While the text of the

Patent Act is quite broad, making “any new and useful process, machine,

manufacture, or composition of matter” potentially eligible for patent

protection,

238

these statutory categories have been significantly narrowed by

judicially created exceptions for inventions directed to abstract ideas, laws of

nature, and natural or physical phenomena.

239

In a series of recent decisions

culminating in Alice Corp. v. CLS Bank Int’l, the Supreme Court has

articulated a two-step test for determining whether an invention claims

ineligible subject matter.

240

First, the court evaluates whether the claim(s) at

issue are directed to a patent-ineligible concept, such as an abstract idea.

241

If so, then the elements of the claim(s) are examined, both individually and

as a whole, “to determine whether [the abstract idea] contains an ‘inventive

concept’ sufficient to ‘transform’ [it] into a patent-eligible application.”

242

“Purely ‘conventional or obvious’” steps in a claim are “normally not

sufficient” to satisfy this second step.

243

Tabletop games may struggle to overcome this hurdle to patentability,

as the rules for a game can be considered an abstract idea, and many games

include conventional or well-known steps or elements like dice, cards,

tokens representing players or objects, and/or playing surfaces having one

or more pathways for players to progress from start to finish. For instance, in

In re Smith, the Federal Circuit affirmed the USPTO’s rejection of claims for

a method of playing a wagering game using a standard deck of playing

cards.

244

Applying the first step of the Mayo/Alice test, the court concluded

237. Id. at 902 (quoting KSR, 550 U.S. at 401). The Federal Circuit also held that “the printed

matter” on applicant’s game cards was nonfunctional and thus not a basis for rendering the

claims patentable over the prior art. Id. at 901.

238. 35 U.S.C. § 101 (2018).

239. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (“This is not to suggest that § 101

has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and

abstract ideas have been held not patentable.”); see also Christopher B. Seaman & Sheena X.

Wang, An Inside History of the Burger Court’s Patent Eligibility Jurisprudence, 53 A

KRON L. REV. 915,

927–78 (2019) (recounting the historical evolution of the Supreme Court’s patent eligibility

jurisprudence).

240. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–21 (2014); Mayo Collaborative Servs.

v. Prometheus Lab’ys, Inc., 566 U.S. 66, 90 (2012); Ass’n for Molecular Pathology v. Myriad

Genetics, Inc., 569 U.S. 576, 589–90 (2013); Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).

241. Alice, 573 U.S. at 218.

242. Id. at 221 (quoting Mayo, 566 U.S. at 72, 80).

243. Mayo, 566 U.S. at 79 (quoting Parker v. Flook, 437 U.S. 584, 590 (1978)); see also Alice,

573 U.S. at 222 (“‘Simply appending conventional steps, specified at a high level of generality,’

was not ‘enough’ to supply an ‘inventive concept.’” (quoting Mayo, 566 U.S. at 82, 77, 72) (emphasis

omitted)).

244. In re Smith, 815 F.3d 816, 820 (Fed. Cir. 2016).

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that the applicants’ claims for “rules for conducting a wagering game” were

similar “to other ‘fundamental economic practice[s]’ found abstract by the

Supreme Court.”

245

In the second step, it held that elements like shuffling

and dealing playing cards were “purely conventional steps” that were

insufficient to transform the claims “into a patent-eligible application of the

abstract idea.”

246

The panel decision, however, stated that “not . . . all

inventions in the gaming arts would be foreclosed from patent protection

under [35 U.S.C.] § 101,” and in dicta noted that “claims directed to

conducting a game using a new or original deck of cards” could “potentially

surviv[e] step two of [the Mayo/Alice test].”

247

Similarly, in In re Marco Guldenaar Holding B.V., a panel of the Federal

Circuit affirmed the PTO’s rejection of claims in a patent application

covering a wagering game involving three six-sided dice that had only

certain faces marked.

248

Relying heavily on In re Smith, the court first held

that the claims were “directed to . . . an abstract idea”—namely, “rules for

playing a . . . game.”

249

On the second step of the Mayo/Alice test, the court

concluded that, as in Smith, the claimed activities—the steps of placing a

wager, rolling the dice, and paying a payout amount if at least one wagered

outcome occurs—were “purely conventional and are insufficient to recite an

inventive concept.”

250

Although the majority reaffirmed the dicta in Smith

that “inventions in the gaming arts are not necessarily foreclosed from

patent protection under § 101,”

251

it appears that tabletop games likely will

not qualify as patentable subject matter unless they include new and

nonobvious game pieces or mechanics—a difficult bar to surmount.

245. Id. at 818 (quoting Alice, 573 U.S. at 219) (alteration in original). The Federal Circuit

cited the BPAI’s reasoning that “[a] wagering game is, effectively, a method of exchanging and

resolving financial obligations based on probabilities created during the distribution of the

cards,” analogous to the method of hedging risk found patent-ineligible in Bilski and the

method of exchanging financial obligations found patent-ineligible in Alice. Id. at 818–19 (alteration

in original).

246. Id. at 819.

247. Id.

248. In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1158–59 (Fed. Cir. 2018).

Specifically, in the claimed game, the first die had only one face marked, the second die had

two faces marked, and the third die had three faces marked. Id. at 1159.

249. Id. at 1160–61.

250. Id. at 1161.

251. Id. at 1162. Notably, Judge Mayer, who concurred in the outcome, would have gone

even further and held that “claims directed to dice, card, and board games can never meet the

section 101 threshold because they endeavor to influence human behavior rather than effect

technological change.” Id. (Mayer, J., concurring); see also id. at 1166 (“While games may

enhance our leisure hours, they contribute nothing to the existing body of technological and

scientific knowledge. They should therefore be deemed categorically ineligible for patent.”).

However, Judge Mayer’s contention directly conflicts with the long history of patent protection

for tabletop games. See supra notes 204–29 and accompanying text.

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1648 IOWA LAW REVIEW [Vol. 107:1615

Third, even if the novelty, nonobviousness, and patent eligibility

requirements can be met, patent protection may be unavailable if the game

is “in public use, on sale, or otherwise available to the public” more than a

year before the filing of a patent application.

252

Although the public use

determination is highly fact-specific,

253

the Supreme Court has held that

even a single unrestricted use of the invention may be sufficient to preclude

patenting.

254

Similarly, a single offer to sell the invention—even if made in

private—can invalidate a patent.

255

This may occur, for example, if a game is

playtested

256

by others without any restriction or obligation of secrecy,

257

if a game designer attempts to sell a physical copy of the game to a

publisher.

258

For example, a design patent

259

covering a coin drop-style game

252. 35 U.S.C. § 102(a)(1) (2018).

253. See, e.g., Dey, L.P. v. Sunovion Pharms., Inc., 715 F.3d 1351, 1355 (Fed. Cir. 2013)

(listing numerous factors to be considered in whether a prior use is sufficiently public to

preclude patenting, including “‘the nature of the activity that occurred in public; the public

access to and knowledge of the public use; [and] whether there was any confidentiality obligation

imposed on persons who observed the use’” (alteration in original) (quoting Berhardt, L.L.C. v.

Collezione Europa USA, Inc., 386 F.3d 1371, 1379 (Fed. Cir. 2004))).

254. See U.S.

PAT. & TRADEMARK OFF., MANUAL OF PATENT EXAMINING PROCEDURE

§ 2133.03(a)(I) (9th ed. 2020) (“‘[T]o constitute the public use of an invention it is not

necessary that more than one of the patent articles should be publicly used. The use of a great

number may tend to strengthen the proof, but one well defined case of such use is just as

effectual to annul the patent as many.’ Likewise, it is not necessary that more than one person

use the invention.” (alteration in original) (citing Egbert v. Lippman, 104 U.S. 333, 336 (1881)));

see also R.

CARL MOY, MOY’S WALKER ON PATENTS § 8:239 (4th ed. 2020) (“The threshold

associated with these activities is quite low; the cases often assert that the number of uses is

immaterial, and that a single use can be sufficient.”).

255. See Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S. Ct. 628, 633–34 (2019)

(holding that the on sale bar means the same thing pre-AIA and post-AIA, including that so-

called “‘secret sales’ can invalidate a patent”); see also In re Caveney, 761 F.2d 671, 676 (Fed. Cir.

1985) (holding that just one offer to sell or sale triggers § 102’s “on sale” statutory bar that renders

the patent invalid).

256. Playtesting is the process of evaluating a prototype of a tabletop game by having others

play it, collecting their feedback, and then adjusting or refining the game. Game designers often

conduct multiple rounds of playtesting for a game. See S

HARON BOLLER & KARL M. KAPP, PLAY

LEARN: EVERYTHING YOU NEED TO KNOW ABOUT DESIGNING EFFECTIVE BOARD GAMES 99–112

(2017).

257. See In re Smith, 714 F.2d 1127, 1134 (Fed. Cir. 1983) (holding that a “public use” occurs

when the inventor allows another person to use the invention without “limitation, restriction or

obligation of secrecy to the inventor”); see also Schaeffer, supra note 18, at 42 (explaining that

“playtesting—particularly in a public setting, such as at a game convention or trade show—

could be considered a public disclosure that will bar patentability”).

258. See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998) (holding that two requirements

must be met under § 102’s “on sale” bar: (1) “the product must be the subject of a commercial

offer for sale” and (2) “the invention must be ready for patenting”). However, an offer to

license or sell the rights in a game, by itself, would not trigger the “on sale” bar of § 102. See In re

Kollar, 286 F.3d 1326, 1331 (Fed. Cir. 2002) (“[M]erely granting a license to an invention,

without more, does not trigger the on-sale bar of § 102(b).”); Moleculon Rsch. Corp. v. CBS,

Inc., 793 F.2d 1261, 1267 (Fed. Cir. 1986) (“[A]n assignment or sale of the rights in the invention

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was found invalid when the inventor had put the design on sale at least four

years before filing the design patent’s application.

260

However, not all playtesting of a game necessarily precludes patenting.

In Moleculon Research Corp. v. CBS, Inc., the inventor “conceived of a three-

dimensional puzzle capable of rotational movement,” comprising “eight

cubes attached in a 2 x 2 x 2 arrangement, with each of the six faces of the”

cube having different color.

261

While in graduate school, the inventor

constructed several prototypes of the puzzle and showed them to several

people, including roommates and a colleague at work.

262

Moleculon then

sent Parker Brothers a model and description of the puzzle cube. Just short

of a year later,

263

the inventor filed a patent application on the puzzle cube,

which the PTO subsequently granted.

264

When Moleculon sued CBS, the

maker of the famous Rubik’s Cube puzzle, CBS contended the patent was

invalid because the subject matter of the patent had been in public use prior

to the critical date.

265

Both the district court and the Federal Circuit rejected

these arguments. On the public use issue, they held that because the

inventor had not given others “free and unrestricted use” of the invention

“[b]ased on the personal relationships and surrounding circumstances,”

which suggested the inventor had “at all times retained control over the

puzzle’s use and the distribution of information concerning it.”

266

Fourth, even if a tabletop game is patent eligible subject matter, the

novelty and nonobviousness requirements, plus the existence of large

amounts of prior art (both in the form of previously issued patents and

published patent applications as well as other games), means that the scope

of possible patent rights is often quite narrow. The patent’s claims “define

the scope of the patentee’s rights under the [law].”

267

In a field crowded

with prior art, a skilled patent attorney will attempt to draft the patent’s

and potential patent rights is not a sale of ‘the invention’ within the meaning of [pre-AIA]

section 102(b).”).

259. U.S. Patent No. D643,474 (filed Feb. 18, 2011). Design patents are generally subject to

the same legal requirements for patentability as utility patents, except that a design patent covers

the ornamental (non-functional) aspects. See 35 U.S.C. § 171(b) (2018).

260. Spencer v. Taco Bell Corp., No. 12-cv-387-T-23TGW, 2013 WL 5499609, at *9 (M.D.

Fla. Oct. 2, 2013), aff’d without opinion, 560 F. App’x 997, 997 (Fed. Cir. 2014).

261. Moleculon, 793 F.2d at 1263.

262. Id.

263. The disclosure to Parker Brothers occurred on March 7, 1969, and the patent

application was filed on March 3, 1970. Id.

264. U.S. Patent No. 3,655,201 (filed Mar. 4, 1970).

265. Moleculon, 793 F.2d at 1265. The defendants raised a similar claim regarding the “on

sale” bar, which was also rejected. Id. at 1267.

266. Id. at 1266.

267. Markman v. Westview Instruments, Inc., 52 F.3d 967, 971 (Fed. Cir. 1995), aff’d, 517

U.S. 370 (1996); see also 35 U.S.C. § 112(b) (2018) (providing that a patent “shall conclude with

one or more claims particularly pointing out and distinctly claiming the subject matter which

the inventor or a joint inventor regards as the invention”).

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1650 IOWA LAW REVIEW [Vol. 107:1615

claims narrowly to avoid a possible rejection at the PTO or invalidation in

litigation.

268

Today, a game designer would be unlikely to obtain protection

anywhere near as broad as Charles Darrow’s patent, which covered nearly

every aspect of Monopoly’s board, game play, and game pieces.

269

Fifth, a board game designer or publisher may conclude that obtaining

a patent is simply not cost effective, especially in light of the legal issues

previously described and the availability of other forms of IP protection.

Most game designers are independent contractors rather than employees

and often work another job on a part- or full-time basis.

270

Thus, few game

designers are independently wealthy enough to pay the attorneys’ fees and

other costs associated with applying for a patent, which can run into the tens

of thousands of dollars,

271

or the attorneys’ fees and costs to enforce patent

rights in court, which can run much higher.

272

In addition, the uncertain

prospects of a new game, plus the low profit margin of many games,

273

may

make it impractical to pursue patent protection. Furthermore, the patent

prosecution process can last many months.

274

Finally, although the term of

patent protection is lengthy—up to 20 years from date of application—it is

considerably shorter than copyrights or trademarks.

275

268. See Kristen Osenga, Linguistics and Patent Claim Construction, 38 RUTGERS L.J. 61, 67

(2006) (“The patent applicant, in drafting claims, is trying to walk a thin line of fashioning a claim

sufficiently narrow that it is not invalid over the prior art, but at the same time trying to obtain a

sufficiently wide scope of protection that may include coverage of future devices.”).

269. See supra notes 204–08 and accompanying text.

270. See T

INSMAN, supra note 78, at 53 (“[M]ost game design companies don’t have a staff of

full-time inventors creating new games.”).

271. See A

M. INTELL. PROP. L. ASS’N, REPORT OF THE ECONOMIC SURVEY 2021, at 42 (2021)

(detailing average costs for preparing a U.S. utility patent application, including $7,500 for an

original, minimally complex application, $2,000 for an amendment, $2,000 for a novelty

search, and $5,000 to $8,000 for an appeal to the Patent Trial and Appeal Board).

272. See id. at 60 (stating that patent litigation expenses can run from an average of

$675,000 through trial and appeal when less than $1 million is at risk, up to an average of $4

million when over $25 million is at risk).

273. For example, a self-published game designer may incur substantial design, pre-

production, fundraising, manufacturing, marketing, and distribution/shipping costs before any

profits are earned. See Carol Mertz, The Dirty Details of Self-Publishing an Indie Tabletop Game,

AROL MERTZ: BLOG (May 10, 2016), http://carolmertz.com/2016/05/the-dirty-details-of-self-

publishing-an-indie-tabletop-game [https://perma.cc/7DBT-W3E8]. If a game designer submits

the game to an established publisher, he or she will likely receive only a small percentage of profits

in royalties. See T

INSMAN, supra note 78, at 220 (noting that royalty rates for a smaller company

may be 10–12%, while a larger publisher may be 2–4%).

274. As of December 2021, the average patent pendency (time from filing to issuance or

termination) is nearly two years. See U.S.

PAT. & TRADEMARK OFF., Patents Pendency Data December

2021, https://www.uspto.gov/dashboard/patents/pendency.html [https://perma.cc/AE78-N7HB].

275. Compare 35 U.S.C. § 154(a)(2) (2018) (providing that a patent’s duration “shall be for a

term beginning on the date on which the patent issues and ending 20 years from the date on

which the application for the patent was filed”), with 17 U.S.C. § 302(a) (2018) (“Copyright in a

work created on or after January 1, 1978, subsists from its creation and . . . endures for a term

consisting of the life of the author and 70 years after the author’s death.”), and 15 U.S.C.

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In sum, although patents theoretically can protect numerous aspects of

a tabletop game, including the game apparatus and method of play, in

reality, the legal and practical hurdles to obtaining a patent for a game

means that relatively few game designers or publishers pursue this path.

C. T

RADEMARK

Trademarks are words, symbols and devices that indicate a source of

origin for a good or service.

276

A trademark protects the owner against

others using the same or a confusingly similar mark for their own goods or

services in commerce without the owner’s permission.

277

Although

trademarks do not need to be federally registered with the USPTO to confer

protection,

278

there are numerous advantages to registration, including:

presumption of ownership of the mark and the exclusive right to its

nationwide use for goods and services;

279

the possibility of achieving

incontestable status of the mark after five years;

280

the right to request that

customs officials bar imported goods bearing infringing marks;

281

and certain

additional remedies.

282

Trademark law is frequently used to protect the names, logos, slogans,

and other distinctive aspects of tabletop games. For example, Hasbro (the

legal successor to Parker Brothers) owns federally registered trademarks related

to Monopoly, including the word mark itself;

283

an image of the game

board;

284

the “Go to Jail,” “Free Parking,” “In Jail/Just Visiting,” and “Boardwalk”

§§ 1058–59 (2018) (explaining that federally registered trademarks are available in renewable

10-year terms). See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001) (“Patent and

276. 15 U.S.C. § 1127. Nontraditional marks, including colors, sounds, or smells, are eligible

for trademark protection if they indicate a source of origin to customers. See Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 174 (1995) (holding that a color alone may be protectable

as a trademark); see also Kenneth L. Port, On Nontraditional Trademarks, 38 N.

KY. L. REV. 1, 2

(2011); Lisa P. Ramsey, Non-Traditional Trademarks and Inherently Valuable Expression, in T

PROTECTION OF NON-TRADITIONAL TRADEMARKS: CRITICAL PERSPECTIVES 337, 345 (Irene Calboli

& Martin Senftleben eds., 2018).

277. 15 U.S.C. §§ 1114, 1125(a); see also AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348

(9th Cir. 1979) (discussing and applying the standard for determining trademark infringement

based on likelihood of confusion), abrogated by Mattel Inc. v. Walking Mountain Prods., 353 F.3d

792 (9th Cir. 2003).

278. 15 U.S.C. § 1125(a)(1); see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768

(1992) (“[I]t is common ground that § 43(a) protects qualifying unregistered trademarks . . . .”).

279. 15 U.S.C. § 1072.

280. Id. § 1065.

281. Id. § 1124.

282. Id. § 1117(b)–(c) (authorizing triple damages and statutory damages for counterfeits of

registered marks).

283. MONOPOLY, Registration No. 326,723.

284. MONOPOLY, An illustration drawing which includes word(s)/ letter(s)/ number(s),

Registration No. 1,536,501; MONOPOLY, The overall shape of the game board, Registration

No. 1,591,120.

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1652 IOWA LAW REVIEW [Vol. 107:1615

squares;

285

Chance and Community Chest cards;

286

the Railroad logo;

287

and

the Mr. Monopoly character.

288

Hasbro has also trademarked use of the

word MONOPOLY for goods and services beyond board games,

289

as well as

various adaptations and spinoffs from the classic version of the game.

290

One limitation on trademark protection is that a mark is not

protectable if it becomes “the generic name for the goods or services or a

portion thereof, for which it registered.”

291

This can occur if the mark is

synonymous with the product or service itself at the time of first use (i.e.,

“born generic”), or if the mark subsequently becomes understood to refer to

the class of goods or services of which it is a part, rather than a source of

origin (i.e., genericide).

292

For example, the word mark PARCHEESI is

generic, as it refers to a game originally played in India prior to its

importation into the United States.

293

Similarly, BACKGAMMON, CHECKERS,

285. GO TO JAIL, Registration No. 1,810,912; FREE PARKING, Registration No.

1,809,353; IN JAIL JUST VISITING, Registration No. 1,819,061; COLLECT $200.00 SALARY

AS YOU PASS GO, Registration No. 1,782,815; BOARDWALK, Registration No. 1,969,532.

286. CHANCE?, Registration No. 1,971,002; COMMUNITY CHEST FOLLOW

INSTRUCTIONS ON TOP CARD, Registration No. 1,973,665.

287. MONOPOLY, An illustration drawing without any word(s)/ letter(s)/ number(s),

Registration No. 1,969,531.

288. See, e.g. MONOPOLY, An illustration drawing without any word(s)/ letter(s)/

number(s), Registration No. 1,634,215; MONOPOLY, An illustration drawing without any

word(s)/ letter(s)/ number(s), Registration No. 1,634,214.

289. See, e.g., MONOPOLY, Registration No. 5,728,056 (for use with backpacks, tote bags,

book bags, handbags, purses, and wallets); MONOPOLY, Registration No. 5,728,055 (for use

with bed blankets, bed sheets, bedspreads, comforters, quilts, and textile wall hangings);

MONOPOLY, Registration No. 4,818,781 (for use with gambling equipment and machines);

MONOPOLY, Registration No. 4,796,523 (for use in lottery tickets); MONOPOLY, Registration

No. 2,654,349 (for use in computer game programs).

290. See, e.g., MONOPOLY REVOLUTION, Registration No. 3,994,532; MONOPOLY DEAL,

Registration No. 3,851,950; see also ADVANCE TO BOARDWALK, Registration No. 5,681,117.

291. 15 U.S.C. § 1065(4) (2018); see also Sandra L. Rierson, Toward a More Coherent Doctrine

of Trademark Genericism and Functionality: Focusing on Fair Competition, 27 F

ORDHAM INTELL. PROP.

MEDIA & ENT. L.J. 691, 701 (2017) (“The current version of the Lanham Act extends no protection

to words or terms considered generic, even if the word or term was, at one point, a registered,

inherently distinctive trademark.”).

292. See Dan L. Burk, Trademarks Along the Infobahn: A First Look at the Emerging Law of

Cybermarks, 1 R

ICH. J.L. & TECH. 1, 27 (1995) (“Some terms, such as ‘toothpaste’ are born generic;

others such as ‘escalator,’ have genericness thrust upon them by becoming a common descriptive

name in the mind of the public.”).

293. See Selchow & Righter Co. v. W. Printing & Lithographing Co., 29 F. Supp. 569, 570

–71 (E.D. Wis. 1939), aff’d, 112 F.2d 430 (7th Cir. 1940); see also Selchow v. Chaffee & Selchow

Mfg. Co., 132 F. 996, 999 (C.C.S.D.N.Y. 1904) (“[I]t seems that a person ought not to be

permitted to introduce into this country an article of manufacture of any description, including

a game such as is in question here, and gain a monopoly either of the game, article, or name

thereof, by registering its name as a trade-mark under our trade-mark laws, either using the

foreign name or one so similar as to leave no doubt of the game or article intended on hearing

the name pronounced or on seeing it written.”).

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and CHESS would be generic if used to describe the respective games but

may be protectable if used for other goods and services unrelated to gaming.

294

Indeed, one of the most important genericide cases involved the board

game Monopoly. In the 1970s, Ralph Anspach, an economist, created a board

game named Anti-Monopoly that was “designed to emphasize the values of

the competitive private enterprise system.”

295

The basic goal of Anti-

Monopoly—in contrast to Monopoly, which encouraged the aggregation of

property ownership and wealth into the hands of one person—was to bring

indictments against monopolistic owners of firms in various industries and

restore competition.

296

Anspach applied for trademark protection for the

name “Anti-Monopoly,”

297

but the USPTO rejected the application on the

grounds that it would be likely to cause “confusion, mistake, or deception.”

298

After receiving a cease-and-desist letter from Parker Brothers regarding

the game’s name,

299

Anspach filed suit in federal court, asserting that the

MONOPOLY trademark had become generic and requesting its

cancellation.

300

The district court rejected this claim,

301

but on appeal, the

Ninth Circuit initially remanded for reconsideration,

302

and then reversed,

holding that Parker Brothers’ “successful[] promot[ion of] ‘Monopoly’ as

‘the name of [a] game’” where the ultimate goal is to be a monopolist had

led it to “bec[o]me generic in the sense in which we use that term in

trademark law.”

303

The court reasoned that even though survey evidence found that a

majority of the public associated Monopoly with Parker Brothers, the mark

was nonetheless generic because most customers “who purchased the game

wanted ‘Monopoly’ and did not care who made it.”

304

In response, Congress

enacted legislation that effectively overturned the Ninth Circuit’s decision by

providing that a registered mark shall not be considered generic “solely

294. For example, Chess Records, or Checkers Drive-In restaurant.

295. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 611 F.2d 296, 300 (9th Cir. 1979).

296. See P

ILON, supra note 205, at 2–17 (describing Anspach’s development and marketing

of the Anti-Monopoly game); see also U.S. Patent No. 3,961,795 (filed Mar. 3, 1975) (further

explaining the game’s objectives and mechanics).

297. According to the Ninth Circuit, Anspach initially “intended to market his game under

the title, ‘Bust the Trust, The Anti-Monopoly game,’ but he later decided that ‘Anti-Monopoly’

would be a better title.” Anti-Monopoly, 611 F.2d at 300.

298. Id.; see also P

ILON, supra note 205, at 15 (noting the grounds on which the USPTO rejected

Anspach’s application).

299. This letter is reprinted in PILON, supra note 205, at 15–16.

300. Anti-Monopoly, 611 F.2d at 300.

301. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., No. C-74-0529, 1977 WL 22724, at

*1 (N.D. Cal. Apr. 4, 1977), rev’d sub nom., 611 F.2d 296 (9th Cir. 1979).

302. Anti-Monopoly, 611 F.2d at 300–06.

303. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 684 F.2d 1316, 1321–23 (9th Cir. 1982).

304. Id. at 1323.

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1654 IOWA LAW REVIEW [Vol. 107:1615

because such mark is also used as a name of or to identify a unique product

or service.”

305

Another significant limitation is that trademark protection often does

not extend to parodies. Although it is not an affirmative defense to a claim

of trademark infringement, a successful parody usually will not infringe

because there is no likelihood of confusion.

306

Instead, the ordinary viewer

“will understand that an entity separate and distinct from the trademark

owner is poking fun at the trademark of the policies of its owner.”

307

As a

result, a successful parody “would merely amuse, not confuse.”

308

Not

surprisingly, however, trademark owners often have a poor sense of humor

when it comes to parodies, asserting that they harm the value of their

brand.

309

There are numerous examples of parodies in the world of tabletop

gaming, ranging from unauthorized parodies where the trademark owner

pursued litigation

310

to “official parodies” made by the same company as the

305. Trademark Clarification Act of 1984, Pub. L. No. 98-620, § 102, 98 Stat. 3335, 3335

(codified at 15 U.S.C. § 1064(c) (2018)). Congress also clarified that “[t]he primary

significance of the registered mark to the relevant public rather than purchaser motivation shall

be the test for determining” genericide. Id. See generally A. Samuel Oddi, Assessing “Genericness”:

Another View, 78 T

RADEMARK REP. 560 (1988) (discussing the significance of Anti-Monopoly and

summarizing the resulting legislative changes by Congress).

306. J.

THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 31:153

(5th ed. 2022); see also David A. Simon, The Confusion Trap: Rethinking Parody in Trademark Law,

88 W

ASH. L. REV. 1021, 1026 (2013) (“In copyright, the parody analysis occurs after the

infringement analysis, as a defense. Parody in trademark law, by contrast, operates during the

infringement analysis. It is not, as courts and commentators tell us, a real defense.”). Parody,

however, is a statutory defense to a trademark dilution claim. See 15 U.S.C. § 1125(c)(3) (“The

following shall not be actionable as dilution . . . identifying and parodying, criticizing, or

commenting upon the famous mark owner or the goods or services of the famous mark

owner.”).

307. M

CCARTHY, supra note 306, § 31:153; see also Hormel Foods Corp. v. Jim Henson

Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (“[A] parody depends on a lack of confusion to

make its point. ‘A parody must convey two simultaneous—and contradictory—messages: that it

is the original, but also that it is not the original and is instead a parody.’” (citing Cliffs Notes,

Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989))).

308. M

CCARTHY, supra note 306, § 31:153 (citing Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC, 507 F.3d 252, 267 (4th Cir. 2007)).

309. See, e.g., Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 436

(S.D.N.Y. 2016) (“[T]he fact that Louis Vuitton at least does not find the comparison funny is

immaterial; Louis Vuitton’s sense of humor (or lack thereof) does not delineate the parameters

of its rights . . . under trademark law.”); see also Sandra L. Rierson, The Myth and Reality of Dilution,

11 D

UKE L. & TECH. REV. 212, 270 (2012) (“Like the authors of creative works, these corporate

entities would like to control all uses of their marks, particularly those that are offensive to them

. . . .”).

310. See generally, e.g., Hasbro, Inc. v. Chang, C.A. No. 03-482-T, 2006 WL 8456958 (D.R.I.

Feb. 17, 2006) (recommending entry of default judgment against defendant on Hasbro’s claims

of trademark and copyright infringement based upon defendant’s manufacture and sale of a

racially offensive board game name; also mentioning defendant’s parody defense).

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original game.

311

Tabletop role-playing games are also a source of parodies,

poking fun at everything from D&D

312

to Star Trek.

313

Not every parody, however, is successful. For example, a company called

Vampire Squid Cards made and sold an “expansion pack of cards” with “an

. . . off-beat sense of humor” to the well-known Cards Against Humanity

game.

314

The company adopted the name “Crabs Adjust Humidity” and a

logo of a crab claw adjusting a thermostat-like dial for their product.

315

After

Vampire Squid Cards applied to the USPTO to register the word mark and

logo, the owner of Cards Against Humanity—which had its own registered

trademarks

316

—filed an opposition, asserting that consumers would likely be

confused by the similarities between the two marks.

317

The Trademark Trial

and Appeal Board rejected the applicant’s argument that the CRABS

ADJUST HUMIDITY marks were not likely to confuse because they were a

parody, explaining “that parody is a viable defense in a likelihood of

confusion analysis only if the involved marks are otherwise not found

confusingly similar.”

318

Here, however, “the parties’ goods are identical and

the marks are similar in their overall commercial impressions due to the

shared elements in each.”

319

As a result, the claim that the CRABS ADJUST

HUMIDITY “marks constitute[d] a parody [was] unavailing.”

320

Finally, the trade dress of a tabletop game may be protectable. Trade dress

refers to the overall “image [and appearance] of a product[,] . . . includ[ing] .

. . [its] size, shape, color[s,] . . . graphics,” and packaging.

321

To be protectable,

311. See, e.g., MONOPOLY: SOCIALISM (Hasbro 2019); CLUE: LOST IN VEGAS (Hasbro 2018);

OTCHED OPERATION (Hasbro 2018).

312. See, e.g., B

UNKERS & BADASSES (Nerdvana Games 2020); see also Charlie Hall,

Borderlands’ In-Fiction Dungeons & Dragons Spoof Is Being Turned into a Real-Life RPG, P

OLYGON

(Sept. 12, 2020), https://www.polygon.com/2020/9/12/21433048/borderlands-bunkers-and-

badasses-rpg-book-release-date-price-dungeons-dragons [https://perma.cc/7A35-G2E2] (commenting

on a D&D spoof).

313. See, e.g., S

TAR WRECK ROLEPLAYING GAME (Energia Productions 2006).

314. Cards Against Human., LLC v. Vampire Squid Cards, LLC, Opposition No. 91225576,

2019 WL 1491525, at *4 (T.T.A.B. Feb. 28, 2019).

315. Id. at *12. One of the principals of Vampire Squid Cards explained that he adopted

the mark CRABS ADJUST HUMIDITY because he “wanted a phrase that would evoke [CARDS

AGAINST HUMANITY] by rhyming with it, but in an absurdist and surreal way.” Id. at *4

(alteration in original) (citation omitted).

316. See CARDS AGAINST HUMANITY, Registration No. 4,304,805; CAH, Registration No.

3,354,769; see also CARDS AGAINST HUMANITY A PARTY GAME FOR HORRIBLE PEOPLE,

Registration No. 4,623,613 (describing the graphical mark as “a three-dimensional black

rectangular product packaging featuring the words ‘CARDS AGAINST HUMANITY’ in white

letters located in the upper left-hand corner of the rectangular design”).

317. Cards Against Humanity, LLC, 2019 WL 1491525, at *1.

318. Id. at *11.

319. Id.

320. Id.

321. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992) (quoting John H.

Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)); see also M

CCARTHY,

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1656 IOWA LAW REVIEW [Vol. 107:1615

trade dress must be “either . . . inherently distinctive or . . . ha[ve] acquired

distinctiveness through secondary meaning.”

322

Distinctive, nonfunctional

trade dress can be registered as a trademark,

323

but many trade dress claims

involve infringement of unregistered marks under section 43(a) of the Lanham

Act.

324

Games can qualify for trade dress protection if they satisfy these

elements.

325

For instance, Shuffle Master, the maker of a table game for

casinos called “Four Card Poker,” sued to stop a competitor from infringing

its trade dress.

326

The district court issued a preliminary injunction, finding

that Four Card Poker was likely inherently distinctive based on its combination

of elements, including use of a semi-circular table, and the availability of

alternative designs.

327

In addition, it pointed to evidence of secondary

meaning, including advertising expenditures and survey evidence finding

that 35 percent “of table game managers . . . [in] casinos [across] the

United States . . . associated [the game] with a single source.”

328

D. OTHER IP RIGHTS

A number of other IP and IP-adjacent bodies of law may also provide

legal protection for some aspects of tabletop games, as well as presenting

potential issues for game designers and publishers.

First, design patents are available for “new, original[,] and ornamental

design[s] for an article of manufacture.”

329

Like utility patents, design

supra note 306, § 8:4 (“[I]n modern parlance, ‘trade dress’ includes the total look of a product

and its packaging and even includes the design and shape of the product itself.”).

322. Two Pesos, Inc., 505 U.S. at 769; see id. at 769–75. However, trade dress in a single color

or in product shape or design can never be inherently distinctive, so secondary meaning must

be established. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212 (2000) (“It seems

to us that design, like color, is not inherently distinctive.”); see also M

CCARTHY, supra note 306,

§ 8:12.

323. In re Forney Indus., Inc., 955 F.3d 940, 945 (Fed. Cir. 2020) (“Trade dress is registrable

as a trademark if it serves the same source-identifying function as a trademark.”); see also TMEP

§ 1202.02 (2021) (“Trade dress constitutes a ‘symbol’ or ‘device’ within the meaning of §2 of

the [Lanham] Act . . . .”).

324. Two Pesos, Inc., 505 U.S. at 767–75; see also id. at 780 (Stevens, J., concurring) (“The

federal courts are in agreement that § 43(a) creates a federal cause of action for trademark and

trade dress infringement claims.”); M

CCARTHY, supra note 306, § 8:7 (“[Section] 43(a) has often

been used as a vehicle by which to assert claims for infringement of unregistered trade dress in

the federal courts.”).

325. See, e.g., Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394, 415–16

(D.N.J. 2012) (holding that the trade dress in the video game Tetris, including the size and color

of the blocks and the long rectangular playing field, are distinctive and nonfunctional).

326. Shuffle Master Inc. v. Awada, No. 05-CV-01112, 2006 WL 2547091, at *1 (D. Nev. Aug.

31, 2006).

327. See id. at *2.

328. Id. at *3.

329. 35 U.S.C. § 171(a) (2018).

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patents must satisfy the novelty and nonobviousness requirements,

330

but

design patent applications are more likely to be granted,

331

and very few

rejections are based on the prior art.

332

A major limitation on design patents

is functionality; “[i]f the patented design is primarily functional rather than

ornamental, the patent is invalid.”

333

Design patents last for 15 years,

334

and

the patentee may recover the infringer’s “total profit” from the sale of any

“article of manufacture” that applies “the patented design[] or any colorable

imitation thereof.”

335

Design patents can protect the ornamental (i.e., visual and

nonfunctional) aspects of tabletop games.

336

For instance, there are numerous

examples of chess pieces and chess sets covered by design patents.

337

The

appearance of game parts like dice,

338

spinners,

339

game tiles,

340

and game

330. See 35 U.S.C. § 171(b) (“The provisions of this title relating to patents for inventions

shall apply to patents for designs, except as otherwise provided.”); see also In re Borden, 90 F.3d

1570, 1574 (Fed. Cir. 1996) (“Design patents are subject to the same conditions on

patentability as utility patents, including the nonobviousness requirement of 35 U.S.C. § 103.”).

331. Compare Design Data December 2021, U.S.

PAT. & TRADEMARK OFF., https://www.uspto.

gov/dashboard/patents/design.html [https://perma.cc/YZS8-WS6Z] (Nov. 19, 2020) (showing

that the allowance rate for design patent applications for fiscal year 2022 is 86.4 percent), with

Michael Carley, Deepak Hegde & Alan Marco, What is the Probability of Receiving a U.S. Patent?, 17

ALE J.L. & TECH. 203 (2015) (finding that 55.8 percent of utility patent applications filed

between 1996 and 2005 and examined before mid-2013 issued as patents without the use of

continuation procedures).

332. See Janice M. Mueller & Daniel H. Brean, Overcoming the “Impossible Issue” of Nonobviousness

in Design Patents, 99 K

Y. L.J. 419, 425 (2011) (“The USPTO . . . very rarely discovers and cites

prior art designs as rendering a design application unpatentable.”).

333. PHG Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006)

(quoting Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed. Cir. 1986)).

334. 35 U.S.C. § 173.

335. Id. § 289; see also Samsung Elecs. Co. v. Apple, Inc., 137 S.Ct. 429, 431 (2016) (holding

that for a “multicomponent product, the relevant ‘article of manufacture’ [under] § 289 . . . need

not be the end product sold to the consumer but may be only a component of that product”).

336. See Schaeffer, supra note 18, at 42 (“[A] design patent may be an avenue for protecting

novel game components, allowing the owner to prevent others from using similar-looking

components.”).

337. See, e.g., U.S. Design Patent No. 767,041 (filed Sept. 2, 2014); U.S. Design Patent No.

695,355 (filed Mar. 15, 2012); U.S. Design Patent No. 493,198 (filed Oct. 31, 2002); U.S.

Design Patent No. 392,269 (filed Apr. 6, 1995); U.S. Design Patent No. 326,285 (filed Aug. 2,

1990); U.S. Design Patent No. 279,390 (filed Nov. 8, 1982); U.S. Design Patent No. 275,869

(filed Nov. 5, 1982); U.S. Design Patent No. 266,012 (filed Oct. 4, 1979).

338. See, e.g., U.S. Design Patent No. 864,309 (filed Aug. 24, 2018); U.S. Design Patent No.

799,602 (filed Dec. 8, 2016); U.S. Design Patent No. 746,381 (filed Aug. 14, 2014); U.S. Design

Patent No. 745,930 (filed Oct. 1, 2014); U.S. Design Patent No. 713,470 (filed June 6, 2013);

U.S. Design Patent No. 603,458 (filed May 1, 2008).

339. See, e.g., U.S. Design Patent No. 883,392 (filed Nov. 6, 2018); U.S. Design Patent No.

483,076 (filed Feb. 12, 2003).

340. See, e.g., U.S. Design Patent No. 867,465 (filed Feb. 25, 2019); U.S. Design Patent No.

802,680 (filed Oct. 31, 2016); U.S. Design Patent No. 795,352 (filed Oct. 31, 2016).

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1658 IOWA LAW REVIEW [Vol. 107:1615

boards

341

also have received design patent protection. And some well-known

handheld games, such as Simon

342

and Rush Hour,

343

have been covered by

design patents.

Second, the right of publicity may be implicated when a person’s

identity is included in a tabletop game without their consent. The right of

publicity prevents the unauthorized appropriation of a “person’s name,

likeness, [and] other indicia of identity for [commercial] purposes.”

344

Indeed, several right of publicity cases have involved the unauthorized use of

names and other identifying information of well-known figures in games,

including professional athletes and billionaire businesspersons.

345

While

states have adopted a number of exceptions to the right of publicity,

346

these

are of little help for tabletop games that include famous or historic figures,

as the use is for a commercial purpose that does not appear to clearly fit into

one of the statutory exceptions. As a result, tabletop game publishers

generally steer clear of including real-life people in their games without

obtaining their express consent (usually in exchange for a licensing fee).

347

Third, trade secrecy may provide protection for game designers and

publishers against misappropriation of confidential information related to

tabletop games, but not the game itself once it is placed on sale to the

341. See, e.g., U.S. Design Patent No. 722,650 (filed Mar. 23, 2014); U.S. Design Patent No.

717,879 (filed Apr. 11, 2014); U.S. Design Patent 714,873 (filed Jan. 24, 2013); U.S. Design

Patent No. 692,062 (filed Sept. 26, 2012); U.S. Design Patent 660,372 (filed Feb. 2, 2011);

U.S. Design Patent No. 150,191 (filed June 10, 1946); U.S. Design Patent No. 103,697 (filed

Jan. 6, 1937).

342. U.S. Design Patent No. 253,786 (filed Apr. 13, 1978).

343. U.S. Design Patent No. 395,468 (filed June 23, 1998).

344. R

ESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46 (AM. L. INST. 1995); see also 1 J.

THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY 3, § 1:3 (2d ed. 2009) (describing

the right of publicity as “a right inherent to everyone to control the commercial use of identity

and persona”). In some states such as California and New York, the right of publicity extends to

deceased persons as well. C

AL. CIV. CODE § 3344.1 (West 2022); S.B. 05959D, 2019 Leg. (N.Y.

2019).

345. See, e.g., Uhlanender v. Henricksen, 316 F. Supp. 1277, 1283 (D. Minn. 1970) (inclusion

of professional baseball players’ names and statistics in a game without their permission);

Rosemont Enters., Inc. v. Urban Sys., Inc., 340 N.Y.S.2d 144, 145 (Sup. Ct. 1973) (billionaire

businessman Howard Hughes objected to unauthorized board game entitled The Howard Hughes

Game); Palmer v. Schonhorn Enters., Inc., 232 A.2d 458, 459 (N.J. Super. Ct. Ch. Div. 1967)

(board game about professional golf included the names and profiles of 23 professional golfers,

including Arnold Palmer, Gary Player, and Jack Nicklaus, without their consent); see also Ford &

Liebler, supra note 18, at 22–33 (discussing these cases in detail).

346. See, e.g., C

AL. CIV. CODE § 3344(d); 765 ILL. COMP. STAT. ANN. 1075/35(b)(2) (West 2022)

(permitting use of names, photographs, and likenesses in news reports, public affairs, and sports

broadcasts).

347. As one example, in requesting submissions for new characters for their game Unmatched,

Restoration Games required that all submissions must include characters in the public domain,

including “stay away from real modern figures.” R

ESTORATION GAMES, UNMATCHED DESIGN

CONTEST RULES AND ENTRY FORM, https://restorationgames.com/wp-content/uploads/2020/07/

Unmatched-Design-Contest-Rules.pdf [https://perma.cc/5P9L-M375].

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public.

348

Federal and state trade secrets law protects a wide variety of

information—including but not limited to patterns, plans, formulas,

methods, processes, procedures, and programs—that provides economic

value from not being generally known or readily ascertainable through

proper means.

349

Furthermore, the trade secret owner must take reasonable

precautions to keep this information secret.

350

Trade secret information is

protected against misappropriation by others, which includes acquisition by

improper means and disclosure or use without the owner’s permission or in

violation of a duty of confidentiality.

351

Trade secrets law can protect a board game designer who submits a

game to a publisher with an expectation that the publisher will not make or

sell the game without the designer’s consent. For instance, in Burten v.

Milton Bradley Co., two game designers created a prototype of an electronic

board game called “Triumph” and submitted it to Milton Bradley for

consideration.

352

As part of the submission process, the designers signed

Milton Bradley’s standard disclosure agreement.

353

After review, Milton

Bradley declined to publish Triumph, but a year later, the game designers

discovered that Milton Bradley was marketing a new electronic board game

under the name “Dark Tower” that they believed contained significant

structural and design similarities to Triumph.

354

At trial, the jury initially found in favor of Triumph’s designers,

awarding over $700,000 in damages for trade secret misappropriation by

Milton Bradley, but the district court set the verdict aside on the grounds

that Milton Bradley had not entered into a confidential relationship with the

designers and thus owed no duty to them.

355

On appeal, however, the First

Circuit reversed, finding that the written disclosure agreement did not

contain an express disclaimer of confidentiality by Milton Bradley.

356

Rather,

the issue of whether the parties had entered into an implied duty of

confidentiality was a factual question that the jury was entitled to resolve,

and sufficient evidence supported the jury’s conclusion that Milton Bradley

had misused the Triumph game materials that were submitted in confidence

348. Trade secret protection is unavailable for products (like board games) that are self-

disclosing when publicly used or sold. Lemley, supra note 31, at 313.

349. See 18 U.S.C. § 1839(3) (2018) (defining “trade secret” under federal law); U

NIF. TRADE

SECRETS ACT § 1(4) (UNIF. L. COMM’N, amended 1985) (defining “trade secret” under the Uniform

Trade Secrets Act).

350. 18 U.S.C. § 1839(3)(A) (requiring a trade secret owner to take “reasonable measures

to keep such information secret”); U

NIF. TRADE SECRETS ACT § 1(4)(ii) (requiring that a trade

secret be “the subject of efforts that are reasonable under the circumstances to maintain its secrecy”).

351. See 18 U.S.C. §§ 1836(b)(1), 1839(5); U

NIF. TRADE SECRETS ACT § 1(2).

352. Burten v. Milton Bradley Co., 763 F.2d 461, 462 (1st Cir. 1985).

353. Id.

354. Id.

355. Id. at 462–64.

356. Id. at 464–67.

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1660 IOWA LAW REVIEW [Vol. 107:1615

by the designers and that Milton Bradley had “plagiarized the plaintiffs’

idea[s].”

357

Finally, idea submission claims may provide another state-law based

means for protecting game creators who submit their work to publishers.

358

Idea submission cases typically involve “someone [who] discloses an idea to a

company in the hopes of effectuating a transaction, and the company uses

that idea for its own benefit without permission or compensation . . . .”

359

Although the contours vary significantly in the states that recognize it,

360

idea submission claims are “rooted in the notion that it is unfair to deny the

creator of an idea with compensation when another takes and profits from

the idea without permission.”

361

In California, for instance, an idea

submission claim is based on an implied-in-fact contract that arises when an

idea is submitted, there is offer for payment based on use of the idea and an

acceptance, followed by use without payment.

362

New York recognizes a

similar claim, but it also requires proof that the idea is novel.

363

Several decisions have recognized the viability of idea submission claims

for tabletop game submissions.

364

For instance, in Vantage Point, Inc. v. Parker

Brothers, Inc., the plaintiff mailed information about an oil exploration game

called “Wildcat,” including photographs, rules, and a patent application

description to defendant Milton Bradley with an accompanying letter

inviting review.

365

Milton Bradley responded with a form letter explaining

that it did not consider unsolicited submissions like the plaintiff’s.

366

Plaintiff

357. Id. (quoting Burten v. Milton Bradley Co., 592 F. Supp. 1021, 1038 (D.R.I. 1984)).

358. See Arthur R. Miller, Common Law Protection for Products of the Mind: An “Idea” Whose Time

Has Come, 119 H

ARV. L. REV. 705, 709 (2006) (“Over the course of more than a century, judges

have cobbled together a ‘law of ideas’ from the ad hoc application of various common law

doctrines.”).

359. Charles Tait Graves, Should California’s Film Script Cases Be Merged into Trade Secret Law?,

44 C

OLUM. J.L. & ARTS 21, 23 (2020).

360. See LaFrance, supra note 196, at 485 (“[S]tates vary considerably in the scope of, and

prerequisites for, legal protection granted to ideas” and “[t]he states most often highlighted for

their contrasting approaches are New York and California.”).

361. M

ARK S. LEE, ENTERTAINMENT AND INTELLECTUAL PROPERTY LAW § 5:16 (2021).

362. This is called a Desny claim, based on the California Supreme Court’s decision in Desny

v. Wilder, 299 P.2d 257, 260 (Cal. 1956). See Graves, supra note 359, at 23.

363. See Hudson Hotels Corp. v. Choice Hotels Int’l, 995 F.2d 1173, 1178 (2d Cir. 1993)

(“New York law dictates that an idea . . . must demonstrate novelty . . . to be protectible . . . under

‘[any] cause of action for [its] unauthorized use.’” (quoting Murray v. Nat’l Broad. Co., 844 F.2d

988, 994 (2d Cir. 1988)) (alterations original)), abrogated by Nadel v. Play-By-Play Toys & Novelties,

Inc., 208 F.3d 368 (2d Cir. 2000).

364. See, e.g., Simmons v. W. Publ’g Co., 834 F. Supp. 393, 395–97 (N.D. Ga. 1993); Vantage

Point, Inc. v. Parker Bros., Inc., 529 F. Supp. 1204, 1216 (E.D.N.Y. 1981); see also Burten v.

Milton Bradley Co., 763 F.2d 461, 462 (1st Cir. 1985) (noting that plaintiffs brought an implied-

in-fact contract claim along with a misappropriation of trade secrets claim for the submission of

their electronic board game “Triumph” to Milton Bradley).

365. Vantage Point, Inc., 529 F. Supp. at 1027–28.

366. Id. at 1208.

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also sent submissions to other game companies, including Parker Brothers,

where a game designer named Robert Baron had access to it.

367

Shortly after

leaving Parker Brothers, Baron and two collaborators, Robert Charlesworth

and Jerrould Smith, developed and refined a new oil exploration game

called “Oil Baron,” which Charlesworth submitted to Milton Bradley. Milton

Bradley then refined, licensed, and published this game under the name

“King Oil.”

368

Plaintiff then sued Milton Bradley and Parker Brothers,

asserting various claims for relief, including idea misappropriation and

breach of a confidential relationship.

369

In its opinion on Milton Bradley’s motion for summary judgment, the

District Court held that “the so-called law of ideas embraces . . . grounds to

afford protection to persons who, like plaintiff, have disclosed their ideas to

others in the expectation that the idea would be used, and the use

compensated.”

370

It recognized that liability for uncompensated use of ideas

may exist under both an express contractual agreement as well as “an

implied agreement . . . based upon industry custom or usage regarding

submission and use of ideas.”

371

The District Court found that, despite

Milton Bradley’s form response to the submission, there was an inference of

such an industry custom to compensate to pay for use of submitted ideas in

the board game industry, and that Milton Bradley’s response “was ineffective

as to plaintiff, since the company never undertook to revoke the offer

outstanding on its part, for example, by public advertisement or

announcement.”

372

However, the court ultimately concluded that recovery

for misappropriation of plaintiff’s ideas was ultimately time barred and

granted summary judgment in Milton Bradley’s favor.

373

V. C

ASE STUDIES

As exemplars of the role that IP can play in facilitating innovation in the

tabletop gaming industry, this Part contains three case studies: (1) Dungeons

& Dragons (“D&D”); (2) Magic: The Gathering (“Magic”), and (3) Settlers of

Catan. Each of these games represents a particular genre: RPGs, collectable

card games, and Eurogames, respectively. A brief history of each game’s

development is provided, followed by a discussion of IP-related issues.

367. Id.

368. Id. at 1208–09.

369. Id. at 1210–11.

370. Id. at 1216.

371. Id.

372. Id. at 1217–18.

373. Id. at 1218.

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1662 IOWA LAW REVIEW [Vol. 107:1615

A. DUNGEONS & DRAGONS

1. Overview

D&D is a fantasy tabletop RPG, originally designed by Gary Gygax and

Dave Arneson in 1973.

374

In 1974, Tactical Studies Rules, Inc. (“TSR”), a

partnership formed by Gary Gygax and Don Kaye, published D&D and

issued an initial handmade run of 1,000 games that sold out within

months.

375

In the following years, TSR issued a sequel, Advanced D&D, and

several new editions of D&D, eventually selling millions of copies before a

downturn in sales and infighting among executives led to TSR’s near-

bankruptcy and sale to Wizards of the Coast (“Wizards”) in 1999.

376

Now owned by Hasbro, D&D has become a worldwide phenomenon

and is recognized as the first modern RPG.

377

In recent years, D&D has seen

a resurgence of popularity. Currently in its 5th edition, D&D experienced

double-digit growth in 2018 and 2019.

378

Designed to streamline the rules to

attract new players who were turned off by its nerdy reputation while still

engaging old players, the 5th edition of D&D now centers more on

storytelling than previous versions.

379

2. IP Rights

From D&D’s inception, IP rights have been at the center of the game’s

popularity and business model. A fantasy roleplaying game at its core, D&D

has a variety of books, such as the Player’s Handbook, the Monster Manual, and

the Dungeon Master’s Guide, that include illustrations and written descriptions

of creatures, classes, locations, and background lore.

380

This litany of

374. Jon Peterson, Forty Years of Adventure, WIZARDS, https://dnd.wizards.com/dungeons-an

d-dragons/what-dd/history/history-forty-years-adventure [https://perma.cc/S46G-XZNH].

375. Id.

376. E

WALT, supra note 72, at 145–52, 162–74.

377. Jon Michaud, The Tangled Cultural Roots of Dungeons & Dragons,

NEW YORKER (Nov. 2,

2015), https://www.newyorker.com/books/page-turner/the-tangled-cultural-roots-of-dungeons

-dragons [https://perma.cc/4GHW-GJE4].

378. Ethan Gilsdorf, In a Chaotic World, Dungeons & Dragons Is Resurgent, N.Y.

TIMES (Nov.

13, 2019), https://www.nytimes.com/2019/11/13/books/dungeons-dragons.html [https://perma

.cc/LQJ7-SKUS].

379. Sarah Whitten, How Critical Role Helped Spark a Dungeons & Dragons Renaissance, CNBC

(Mar. 14, 2020, 6:44 PM), https://www.cnbc.com/2020/03/14/critical-role-helped-spark-a-du

ngeons-dragons-renaissance.html [https://perma.cc/WDY5-CDB9].

380. See generally D

UNGEONS & DRAGONS PLAYER’S HANDBOOK (5th ed. 2014) (containing

“the rules for character certation and advancement, backgrounds and skills, exploration and

combat, equipment, spells, and much more”); D

UNGEONS & DRAGONS DUNGEON MASTER’S

GUIDE (5th ed. 2014) (including “world-building advice, tips and tricks for creating memorable

dungeons and adventures, optional game rules, . . . magic items, and many other tools”);

UNGEON & DRAGONS MONSTER MANUAL (5th ed. 2014) (including “easy-to-use game statistics

and thrilling stories” of monsters over “the D&D game’s illustrious history”).

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information and illustrations are copyrightable under section 102(a) of the

381

D&D’s game mechanics, however, are a different story. This system of

play is commonly known as the d20 system, since it involves rolling various

multisided dice (usually a 20-sided die) to resolve actions, intentions, and

combat. As a gameplay mechanic, the d20 system is an uncopyrightable

process, system, or method of operation under section 102(b). However,

this has not kept Hasbro from trademarking it as the d20 SYSTEM.

382

addition, Hasbro has obtained federally registered trademarks for DUNGEONS

& DRAGONS,

383

D&D,

384

the dragon ampersand image,

385

PLAYERS

HANDBOOK,

386

MONSTER MANUAL,

387

and DUNGEON MASTER’S

GUIDE.

388

To our knowledge, however, Hasbro and its predecessors did not

obtain utility patent protection for D&D.

3. IP Enforcement

The owners of D&D have acted aggressively to protect their IP rights

over the years, including through litigation. However, there also have been

instances where lax enforcement worked to the game’s benefit. In the early

days of TSR’s initial print run of D&D, many fans who were not willing or

financially able to pay $10 for the manual resorted to copying the material

on school machines.

389

At the time, TSR was well aware of this phenomenon,

and in fact found the “pirated” material was helpful since it introduced many

new fans to the game.

390

Later, however, TSR developed a reputation as being litigious against

potential infringers of its IP rights.

391

One notable lawsuit was against a

381. See 17 U.S.C. § 102(a) (2018) (explaining that copyright subsists in original works of

authorship that are fixed in a tangible medium of expression, including “literary works” and

“pictoral, graphic, and sculptural works”); see also PLAYER’S HANDBOOK, Copyright Office

Registration No. TX0007957586 (Sept. 12, 2014); DUNGEON MASTER’S GUIDE, Copyright

Office Registration No. TX0008009874 (Jan. 21, 2015).

382. D20 SYSTEM, Registration No. 2,630,360.

383. DUNGEONS & DRAGONS, Registration No. 1,092,786.

384. D&D, Registration No. 1,779,033.

385. The mark consists of an ampersand consisting of a dragon blowing fire, Registration

No. 4,879,716.

386. PLAYER’S HANDBOOK, Registration No. 3,207,138.

387. MONSTER MANUAL, Registration No. 3,197,902.

388. DUNGEON MASTER’S GUIDE, Registration No. 3,128,532.

389. Ciro Alessandro Sacco, The Ultimate Interview with Gary Gygax, K

YNGDOMS, http://www.

keithrobinson.me/thekyngdoms/interviews/garygygax.php [https://perma.cc/C5MY-6E8M].

390. Id.

391. In fact, TSR became so litigious that “[g]amers joked that TSR stood for ‘they sue

regularly.’” David Hartlage, 1994: TSR Declares War on the Internet’s D&D Fans, DM

DAVID (Sept.

8, 2020), https://dmdavid.com/tag/1994-tsr-declares-war-on-the-internets-dd-fans [https://per

ma.cc/BL8C-VHX8].

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1664 IOWA LAW REVIEW [Vol. 107:1615

publisher called Game Designer’s Workshop (“GDW”). After departing TSR

following conflicts with corporate management, Gary Gygax joined GDW

and began work on a new project called “Dangerous Dimensions.”

392

1992, TSR promptly issued a cease-and-desist letter to GDW for alleged

trademark infringement due to potential confusion with TSR’s D&D

trademarks.

393

To avoid a potentially costly lawsuit, GDW changed the new

game’s name to “Dangerous Journeys.”

394

Despite this, TSR sued GDW for

infringement, alleging that “Dangerous Journeys” was derivative of TSR’s

D&D and Advanced D&D games.

395

This claim was suspect, to put it lightly.

As RPG historian Shannon Appelcline explained, “if Dangerous Journeys was

[an infringing] derivative [work], then so was every roleplaying game in

existence.”

396

In another case, TSR sued Mayfair Games regarding D&D-compatible

supplements.

397

Mayfair attempted to avoid liability for trademark infringement

by making clear that it was not the trademark holder of Advanced D&D by

printing on the cover of their books: “Advanced Dungeons & Dragons is a

trademark of TSR Hobbies Inc. Use of the trademark NOT sanctioned by

holder.”

398

After an initial settlement, TSR later reopened its dispute with

Mayfair when it alleged that Mayfair’s publication of a product called “City

State of the Invincible Overlord” violated their agreement.

399

Before a final

decision was rendered, however, Mayfair sold their entire supplements line

to TSR.

400

By 1994, TSR aggressively went after individuals who wrote D&D

articles online, alleging that they infringed TSR’s copyright and trademark

rights and demanding they be taken down.

401

As a result, TSR was criticized

for attacking its own customers.

402

In addition, TSR was involved in a long-running legal dispute with Dave

Arneson, one of the coauthors of the original version of D&D along with

Gygax. In 1979, Arneson filed suit against TSR and Gygax after TSR

allegedly failed to pay Arneson royalties for its series of Advanced D&D

books, which comprised four volumes and listed Gary Gygax as the sole

author.

403

The suit alleged that these books were copied and derived from

392. EWALT, supra note 72, at 171.

393. A

PPELCLINE, supra note 72, at 101.

394. Sacco, supra note 389.

395. Id; A

PPELCLINE, supra note 72, at 101.

396. Id. at 101.

397. S

HANNON APPELCLINE, DESIGNERS & DRAGONS: A HISTORY OF THE ROLEPLAYING GAME

INDUSTRY: THE ’80S 201 (2014).

398. Id.

399. TSR, Inc. v. Mayfair Games, Inc., No. 91 C 0417, 1993 U.S. Dist. LEXIS 3355, at *7

(N.D. Ill. Mar. 15, 1993).

400. A

PPELCLINE, supra note 397, at 207.

401. A

PPELCLINE, supra note 72, at 102.

402. Id.

403. Id.

at 31–32.

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D&D, which Arneson had coauthored, and that TSR had falsely represented

that Gygax was the sole author of the Monster Manual and the Players’

Handbook, thereby denying Arneson the “commercially and artistically

valuable right” to be identified as a coauthor.

404

Arneson, Gygax, and TSR

eventually settled their dispute.

405

TSR also occasionally was on the receiving end of threats of litigation

over IP rights. The first edition of D&D included numerous creations from

J.R.R. Tolkien’s Lord of the Rings series, including hobbits as a playable

race.

406

Although Gygax claimed that Tolkien’s works were not a major

influence on D&D, in 1977, film producer Saul Zaentz—who had acquired

the non-literary rights to Lord of the Rings and The Hobbit—sent a cease-and-

desist letter to TSR.

407

In response, TSR removed references to hobbits (now

called halflings) and other Tolkien-created creatures in future editions of

D&D.

408

4. IP Licensing and User-Generated Content

After Wizards acquired TSR in 1997, it took a more permissive

approach toward content creators for D&D. Indeed, by adopting a

permissive licensing system based on the widely acclaimed 3rd edition of

D&D, it facilitated a vibrant ecosystem of new content that helped spur

greater interest in the game itself.

In 2000, Wizards’ release of D&D’s Open Game License (“OGL”)

created a major shift in the RPG industry.

409

Like open source software and

other “copyleft” systems,

410

the OGL allowed third parties to create, modify,

and publish content based on the basic rules and system of the 3rd edition

of D&D royalty free, provided that a copy of the license be included with the

content.

411

The Systems Reference Document containing the OGL included

404. Arneson v. Gygax, 473 F. Supp. 759, 761 (D. Minn. 1979).

405. Arneson v. TSR Hobbies, Inc., No. 4-84-1180, 1985 U.S. Dist. LEXIS 21340, at *1 (D.

Minn. Mar. 17, 1985).

406. A

PPELCLINE, supra note 72, at 27.

407. Id. at 27, 29.

408. Id. at 29.

409. See Open Game Definitions: Frequently Asked Questions Version 2.0, WIZARDS OF THE COAST

(Jan. 26, 2004), http://www.wizards.com/default.asp?x=d20/oglfaq/20040123d [https://

perma.cc/468E-HPXB].

410. See Andrew J. Hall, Open-Source Licensing and Business Models: Making Money by Giving It

Away, 33 S

ANTA CLARA HIGH TECH. L.J. 427, 430 (2017) (“‘Copyleft’ . . . refers generally to a

philosophy first espoused by the Free Software Foundation (FSF) criticizing the use of

copyrights and patents to restrict the free modification, copying, and distribution of software.”).

411. W

IZARDS OF THE COAST, V5.1 SYSTEMS REFERENCE DOCUMENT, at 2, ¶¶ 2–4 [hereinafter

OGL], http://media.wizards.com/2016/downloads/DND/SRD-OGL_V5.1.pdf [https://perma.

cc/5AF4-JCKF]. For a detailed history of the OGL and its impact, see generally Giuseppe Roberto

Tarantino, If You Love Something, Set It Free? Open Content Copyright Licensing and Creative

Cultural Expression (May 14, 2019) (Ph.D. dissertation, York University), https://yorkspace.lib

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1666 IOWA LAW REVIEW [Vol. 107:1615

a detailed set of rules for creating D&D-compatible characters, equipment,

and monsters.

412

Ryan Dancey, Wizards Vice President and cocreator of the

OGL, explained that the net effect of the competition in the RPG industry

with an open license would be positive for D&D because

[R]educing the ‘cost’ to other people to publishing and supporting

the core [D&D] game to zero should eventually drive support for

all other game systems to the lowest level possible in the market,

create customer resistance to the introduction of new systems, and

. . . steadily increase the number of people who play D&D, thus

driving sales of the core books.

413

The OGL led to a boom in the RPG industry in the early 2000s, with

numerous publishers producing their own D&D-compatible supplements.

414

It also led to the development of a widely adopted RPG, the Pathfinder

Roleplaying Game, based on version 3.5 of D&D under OGL terms.

415

2016, the SRD was updated to be compatible with the latest (5th) edition of

D&D.

416

There were, however, limits to the D&D content licensed by the OGL.

Most notably, certain words, terms, and symbols were designated as “product

identity” under the OGL, including “Dungeons & Dragons,” “D&D,”

“Player’s Handbook,” and names of various locations, creatures, and spells,

and were excluded from the scope of the license.

417

This list appears to

identify many of D&D’s notable trademarks and therefore restricts creators

from even referencing “Dungeons & Dragons” explicitly, less customers be led

to believe that content published under the OGL is actually Wizards-created

content. Instead, these marks were covered by d20 System Trademark

License (“d20 STL”), which allowed publishers to place a d20 System logo

on their works if they adhered to more stringent rules, such as the exclusion

rary.yorku.ca/xmlui/bitstream/handle/10315/36665/Tarantino_Giuseppe_R_2019_PhD.pdf

[https://perma.cc/7XA2-LLRH].

412. OGL,

supra note 411, at 3–357.

413. Ryan S. Dancey, Open Gaming Interview with Ryan Dancey, W

IZARDS OF THE COAST:

DUNGEONS AND DRAGONS, http://www.wizards.com/dnd/article.asp?x=dnd/md/md20020228e

[https://perma.cc/9FYF-WWQD].

414. Id.

415. P

ATHFINDER ROLEPLAYING GAME (Paizo, 2009). Pathfinder is now in its second edition.

See Pathfinder Second Edition: Unleash Your Hero!, P

AIZO, https://paizo.com/pathfinder [https://

perma.cc/TJX6-A66E].

416. OGL, supra note 411, at 2.

417. Id. at 1, ¶ 1(e).

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of erotic content.

418

Unlike the OGL, the d20 STL was revocable by Wizards,

which ultimately occurred in 2008.

419

In addition, there is a vibrant community of fans who “homebrew” their

own D&D-based content. A “homebrew” can be defined as any content with

an RPG game that cannot be found in an official rulebook.

420

Today,

Wizards not only tacitly permits “homebrewing,” but sometimes puts its seal

of approval on content through the Dungeon Masters Guild program,

421

making it part of the official D&D canon.

422

Furthermore, some D&D players have created their own intellectual

property by playing the game and commercializing their content. “Actual

play” or “liveplay” involves a repeat group of D&D players who live-stream

sessions of their campaigns through podcasts and videos.

423

Top-rated actual

play shows like Critical Role, High Rollers, and Dimension 20, which depict

characters in long-running campaigns lasting months or years, attract

hundreds of thousands or even millions of views on paid streaming services

like Twitch and ad-supported platforms like YouTube.

424

The recordings of

these shows and the original characters and settings depicted in them are

protected by copyright law.

425

In addition, Critical Role has created or

authorized numerous derivative works based on their actual play show,

418. D20 System Trademark License, FANDOM: OPEN GAME CONTENT WIKIA, https://openga

mecontent.fandom.com/wiki/D20_System_Trademark_License [https://perma.cc/4E4C-CSY4].

419. Interview With Scott Rouse, Part 1: Changes to WotC Licenses, IC

V2 (Apr. 24, 2008, 11:00

PM), https://icv2.com/articles/games/view/12449/interview-scott-rouse-part-1 [https://perma

.cc/T4XM-VWWR] (stating that the d20 STL license would be terminated in June 2008).

420. Kristen Seikaly, D&D 5e Homebrew: The Complete Beginner’s Guide, C

ATS & DICE, https://

catsanddice.com/dnd-5e-homebrew-beginners-guide [https://perma.cc/MHZ6-5F5A].

421. See D

UNGEON MASTERS GUILD, https://www.dmsguild.com [https://perma.cc/PQ8S-D965].

422. Christian Hoffer, Critical Role Is Officially Part of Dungeons & Dragons Canon, C

OMICBOOK

(Sept. 5, 2019, 8:59 AM), https://comicbook.com/gaming/news/dungeons-and-dragons-crit

ical-role-exandria-canon [https://perma.cc/Y7K9-UNMZ].

423. Kam Burns & Kayla Sharpe, Live Dungeons & Dragons Shows Are Inviting More Players to

the Table, WIRED

(Oct. 21, 2021, 7:00 AM), https://www.wired.com/story/live-dungeons-and-

dragons-actual-play-shows-inclusive-diversity [https://perma.cc/U754-W6SR]; Chris DeVille, The

Rise of D&D Liveplay Is Changing How Fans Approach Roleplaying, T

HE VERGE (Nov. 16, 2017, 2:45

PM), https://www.theverge.com/2017/11/16/16666344/dungeons-and-dragons-twitch-rolepl

ay-rpgs-critical-role-streaming-gaming.

424. See Christian Hoffer, Critical Role’s Campaign 3 Is Drawing Big Audiences, C

OMICBOOK

(Nov. 3, 2021, 5:39 PM), https://comicbook.com/gaming/news/critical-role-campaign-3-total-

views-episode-1 [https://perma.cc/9X9W-T644] (stating that the first episode of Campaign 3 of

Critical Role has over 2.1 million views on Twitch and another 2.67 million views on YouTube).

425. See Critical Role Content Policy, C

RITICAL ROLE (Sept. 16, 2021), https://critrole.com

/critical-role-content-policy [https://perma.cc/R94H-VFGS] (“Our IP includes any unique

material our team creates—things like the names of our campaigns (for example, Vox Machina

and Mighty Nein), our characters (for example, Grog Strongjaw or Beauregard Lionett), story

locations (like Whitestone or Nicodranas), company slogans (such as How Do You Want to Do

This?), as well as written content and all related artwork, music, etc.”).

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1668 IOWA LAW REVIEW [Vol. 107:1615

including sourcebooks,

426

graphic novels,

427

and even an animated television

show.

428

Critical Role also has obtained federally registered trademarks.

429

B. MAGIC: THE GATHERING

1. Overview

Magic is a collectible trading card game created in 1991 by Dr. Richard

Garfield, who was then a doctoral candidate in combinatorial mathematics

at the University of Pennsylvania.

430

Peter Adkison, CEO of Wizards, met

with Garfield about another game that Garfield had designed (Robo Rally)

and explained that it did not fit his company’s profile of RPGs, and asked

whether Garfield could create a simple, portable game that could be played

in minutes.

431

After Garfield tinkered with his product in his free time with

the help of numerous playtesters, Magic debuted in 1993 at the Origins

Game Fair in Dallas, Texas.

432

Wizards releases new card sets for Magic on a regular basis.

433

The rarest

and most valuable Magic cards can resell for thousands of dollars on the

secondary market.

434

Since its inception, Magic has printed over 20 billion

cards and is played by millions of Americans.

435

Wizards also hosts a

426. MATTHEW MERCER, HANNAH ROSE & JAMES J. HAECK, TAL’DOREI CAMPAIGN SETTING

REBORN (2022); MATTHEW MERCER, EXPLORER’S GUIDE TO WILDEMOUNT (2020).

427. 1 M

ATTHEW MERCER, OLIVIA SAMSON, MATTHEW COLVILLE & CHRIS NORTHROP,

RITICAL ROLE VOX MACHINA ORIGINS (F. Avedon Arcadio Barrera II & Rachel Roberts eds.,

2019); 2 M

ATTHEW MERCER, JODY HOUSER, OLIVIA SAMSON, MSASSYK & ARIANA MAHER, CRITICAL

ROLE VOX MACHINA ORIGINS (Rachel Roberts ed., 2020).

428. The Legend of Vox Machina (Amazon Prime television broadcast 2022).

429. CRITICAL ROLE, Registration No. 4,908,306 (for streaming video material on the

Internet); CRITICAL ROLE LOGO, Registration No. 5,263,618 (for t-shirts, tops, and

entertainment); CRITICAL ROLE, Registration No. 6,125,583 (for various uses, including

printed publications, comic books, beverage glassware, clothing, and toys); HOW DO YOU

WANT TO DO THIS, Registration No. 5,623,161 (for t-shirts, tops, and entertainment).

430. The History of Magic, W

IZARDS, https://magic.wizards.com/en/content/history [https:

//perma.cc/VK9W-P5J6].

431. Id.; see also T

ITUS CHALK, GENERATION DECKS: THE UNOFFICIAL HISTORY OF GAMING

PHENOMENON: MAGIC: THE GATHERING 7–10, 17–19 (2017) (further describing Garfield and

Adkison’s interactions).

432. The History of Magic, supra note 430.

433. Callum Bain, MTG Sets: Every Magic: The Gathering Set in Order, W

ARGAMER (Jan. 17,

2022), https://www.wargamer.com/magic-the-gathering/mtg-sets-in-order [https://perma.cc/

DYX7-8FLW].

434. For instance, the most valuable card fetched hundreds of thousands of dollars. See e.g.,

Charlie Hall, Magic: The Gathering Black Lotus Card Sells for $511,100 at Auction, P

OLYGON (Jan.

27, 2021, 9:05 PM), https://www.polygon.com/2021/1/27/22253079/magic-the-gathering-bl

ack-lotus-auction-price-2021 [https://perma.cc/B3NQ-CYZC].

435. Magic’s 25th Anniversary: Facts and Figures, M

AGIC: THE GATHERING, https://magic.wiz

ards.com/en/content/magic-25th-anniversary-page-facts-and-figures [https://perma.cc/R64Z-

MDT2]; see also Neima Jahromi, The Twenty-Five-Year Journey of Magic: The Gathering,

NEW YORKER

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professional league, the Magic Pro League, where players can earn

hundreds of thousands of dollars by winning events.

436

Magic has been one

of the most profitable products for Hasbro, Wizard’s parent company,

earning $561.2 million in 2020, an increase of 27 percent compared to the

prior year,

437

despite the pandemic limiting in-person events.

438

2. IP Rights

Magic occupies a unique position in the tabletop gaming industry in

that it is one of the few games that is covered by patent, copyright, and

trademark protection. Richard Garfield received U.S. Patent No. 5,662,332

(“the ‘322 Patent”) in 1997 for a “[t]rading card game method of play.”

439

This patent set out the primary method of gameplay in the form of trading

cards, but also kept it broad enough for later use in different media, such as

computer games.

440

The patent outlines the general trading card element

and goal of the game, which is reducing an opponent player’s life force to

zero.

441

It also describes certain attributes of the game such as energy values,

command cards, and various spell cards, such as mana cards and spell cards.

442

The original ‘332 patent has six claims: three independent claims and

three dependent claims. The first claim describes the “method of playing

games” and outlines the sequence of turns.

443

The second claim describes

the “method of playing a trading card game” and outlines the rules of play

involving a reservoir of trading cards.

444

The third claim describes the

“method of playing card games” as applied to card games with rules of play,

“multiple copies of a plurality of cards,” and “a predetermined number of

cards” in the players’ library.

445

The three dependent claims refer “to a

second orientation” of card rotation,

446

known colloquially in the Magic

(Aug. 28, 2018), https://www.newyorker.com/culture/culture-desk/the-twenty-five-year-journe

y-of-magic-the-gathering [https://perma.cc/A3QU-PWMJ].

436. See Niccolò Carradori, What It Takes to Be a High Earning ‘Magic: The Gathering’ Pro, V

ICE

(Nov. 19, 2020, 5:10 AM), https://www.vice.com/en/article/z3b4n9/magic-the-gathering-prof

essional-earnings [https://perma.cc/V797-D4SB].

437. H

ASBRO, Q4 & FULL YEAR 2020 EARNINGS 12, 33 (2021), https://investor.hasbro.com

/static-files/1bf09f2e-5078-4a6b-8428-799816e512f3 [https://perma.cc/RU9T-66TA].

438. Keller Gordon, In the Pandemic Era, This ‘Gathering’ Has Lost Some of Its Magic, NPR (July

30, 2020, 7:00 AM), https://www.npr.org/2020/07/30/896439944/in-the-pandemic-era-this-

gathering-has-lost-some-of-its-magic [https://perma.cc/7QSP-2KEP].

439. U.S. Patent No. 5,662,332 (filed Oct. 17, 1995).

440. Id. at [57].

441. Id. col. 1 l. 59–col. 2 l. 2.

442. Id. col. 4 l. 7–14.

443. Id. col. 19 l. 66–col. 20 l. 29.

444. Id. col. 20 l. 30.

445. Id.

446. Id. col. 22.

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1670 IOWA LAW REVIEW [Vol. 107:1615

community as “tapping,” which indicates a card has been played by turning

it 90 degrees on the game board.

447

Subsequently, Garfield expanded the scope of the claimed invention

through a reissue application, which was granted in 2003 (“the ‘957

patent”).

448

“The ‘957 patent issued with 60 claims, including over 25

independent claims, which define both a card game that uses either trading

cards or a computer-generated image thereof and a method of playing the

game.”

449

The ‘957 patent expired on June 22, 2014.

As a game full of artwork and creative content, there are also a number

of components to a Magic card to which copyright protection applies. These

include the card names, card illustrations, card texts, flavor texts, and card

face and back designs. Initially, outside artists were commissioned to design

the cards’ artwork and paid royalties, but this switched in the late 1990s

when Wizards adopted “an upfront payment system” and required

assignment of all copyright rights to it.

450

With over 20,000 unique cards in

existence, and hundreds of new cards added each year, copyright plays a

major part in protecting Magic’s IP rights. In addition, copyright protection

extends to the vast amount of written lore about the fictional universe

surrounding Magic, including numerous novels based on the game, under

the derivative work right.

451

In addition, Wizards of the Coast has obtained dozens of federally

registered trademarks related to Magic.

452

These include the stylized version

of the Magic name,

453

the Magic logo,

454

names of released sets,

455

names and

447. See Gavin Verhey, Tap, Tap . . . Oops!¸ MAGIC: THE GATHERING (Apr. 20, 2017), https:

//magic.wizards.com/en/articles/archive/beyond-basics/tap-tap-oops-2017-04-20 [https://perma

.cc/4RM3-TUP7] (explaining the tapping mechanic).

448. U.S. Patent No. RE 37,957 (filed June 29, 1999).

449. Second Amended Complaint for Copyright, Patent and Trade Dress Infringement at

11, ¶ 37, Wizards of the Coast LLC v. Cryptozoic Ent., LLC, 309 F.R.D. 645 (W.D. Wash. 2015).

450. See Pete Mohrbacher, The Problems With Artist Pay on Magic, V

ANDALHIGH (July 3, 2015),

https://vandalhigh.com/blog/2015/7/3/the-problems-with-artist-pay-on-magic [https://

perma.cc/R2JN-WAD8]; Jesse Mason, An Interview with Sue Ann Harkey, Magic’s Greatest Art

Director, K

ILLING A GOLDFISH BLOG (Apr. 21, 2015, 7:33 PM), http://blog.killgold.fish/2015/

04/an-interview-with-sue-ann-harkey-magics.html [https://perma.cc/J36L-AT45].

451. See, e.g., W

ILLIAM R. FORSTCHEN, ARENA (1994); CLAYTON EMERY, WHISPERING WOODS

(1995); T

ERI MCLAREN, THE CURSED LAND (1995); JEFF GRUBB, THE BROTHERS’ WAR (1998);

YNN ABBEY, PLANESWALKER (1998); J. ROBERT KING, TIME STREAMS (1999); J. ROBERT KING,

LANESHIFT (2000); see also Magic: The Gathering Novels, WIZARDS OF THE COAST (Sept. 13, 2012),

https://magic.wizards.com/en/articles/archive/feature/magic-gathering-novels-2012-09-13 [https:

//perma.cc/4UN3-8UJ3] (listing additional novels).

452. See Wizards of the Coast LLC Trademarks, T

RADEMARKIA, https://www.trademarkia.com/

company-wizards-of-the-coast-llc-1383309-page-1-2 [https://perma.cc/VS2B-K56K] (listing 440

trademark records owned by Wizards of the Coast, many of which relate to Magic).

453. MAGIC, Registration No. 2,172,085.

454. The mark consists of a curved, upside down triangle shape with five trident-like spikes

protruding from the top of the upside down triangle, Registration No. 5,317,915.

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2022] INTELLECTUAL PROPERTY AND TABLETOP GAMES 1671

symbols of Guilds within the world of Ravnica (one of the “planes,” or

fictional worlds, depicted in the game),

456

and the symbols for mana, which

represent a source of energy for playing the game’s cards and abilities.

457

Notably, Wizards of the Coast also unsuccessfully applied to trademark the

“tap” symbol used in the game for the game mechanic covered by the ‘957

patent.

458

Many Magic-related names or logos that are not registered likely

would receive common law trademark rights and thus be enforceable under

section 43(a) of the Lanham Act.

459

3. IP Enforcement

Wizards of the Coast has occasionally resorted to litigation or threats of

litigation to enforce its IP rights in Magic. Most notably, in 2014, Wizards of

the Coast sued Cryptozoic Entertainment and Hex Entertainment, the

makers of the crowdfunded, free-to-play, massively multiplayer online

trading card game, Hex: Shards of Fate (“Hex”).

460

First, the complaint alleged

that Cryptozoic “copied the physical layout and ornamental aspects of Magic

cards . . . ; the sequence and flow of the game, the scoring system used by

the game, and the overall look and feel of the game,” in violation of Wizards’

461

Second, it asserted unfair competition, false endorsement,

and false designation of origin under the Lanham Act, claiming Cryptozoic

“deliberately and intentionally copied the game play, rules, player interaction

with the game, layout and arrangement, . . . sequence and flow, scoring

system, and Magic’s overall look,” which allegedly infringed Wizards’ trade

dress and created confusion among the public about whether Wizards had

455. See, e.g., MAGIC ORIGINS, Registration No. 4,846,803; T-TRONIC, Registration No.

3,114,360; THEROS, Registration No. 4,548,244.

456. RAVNICA CITY OF GUILDS, Registration No. 3,218,468.

457. The mark consists of a fireball curved in an upward motion, Registration No.

4,447,980; The mark consists of a stylized skull, Registration No. 4,447,981; The mark consists

of a stylized sun, Registration No. 4,698,054; The mark consists of a stylized oak tree,

Registration No. 4,447,982; The mark consists of a stylized drop of water with small droplet

shadow on the center, right side, Registration No. 4,447,983.

458. See U.S. Trademark Application Serial No. 86013788 (filed July 18, 2013). The trademark

examiner’s rejection of this application explained that “[t]he applied-for mark, as shown on the

specimen, does not function as a trademark because it is buried in the middle of the playing

card and appears to merely indicate a play or move in the game rather than the source of the

cards themselves. . . . As used on the specimen . . . it would not be viewed by consumers as a

source indicator for the relevant goods.” Letter from U.S. Pat. & Trademark Off. to Wizards of

the Coast LLC (Aug. 16, 2013), https://tsdr.uspto.gov/documentviewer?caseId=sn86013788&

docId=OOA20130816165744#docIndex=2&page=1 [https://perma.cc/5H8Z-KKFE] (office action

about application serial no. 86013788).

459. 15 U.S.C. § 1125(a) (2018).

460. Complaint for Copyright, Patent and Trade Dress Infringement, Wizards of the Coast

LLC v. Cryptozoic Ent., LLC, No. 14-CV-00719 (W.D. Wash. Mar. 14, 2014).

461. Id. at 19, ¶ 38.

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1672 IOWA LAW REVIEW [Vol. 107:1615

endorsed or sponsored Hex.

462

Third, the complaint alleged infringement of

the ‘957 patent. Wizards sought injunctive relief, monetary damages,

disgorgement of defendants’ profits, and treble damages and attorneys’ fees

as remedies.

463

In response, the makers of Hex accused Wizards of the Coast of

engaging in anticompetitive conduct by “us[in]g the legal process to achieve

market dominance and eliminate a competitor which is creating truly

competitive and innovative products.”

464

More specifically, it alleged that

Wizards was “assert[ing] its now-expired [‘957] patent in an apparent

attempt to intimidate Hex and Cryptozoic,” and that its copyright claims

were vague, sought to assert protection over an uncopyrightable idea, and

improperly sought to extend its (now-expired) patent right “by asserting

465

Finally, defendants sought

to rebut Wizards’ Lanham Act claim by asserting that there was no evidence

of actual confusion in the marketplace.

466

Defendants denied any liability in

the case, and asserted numerous affirmative defenses, including

noninfringement, invalidity of patent and copyrights in suit, functionality,

and fair use.

467

Ultimately, the Cryptozoic dispute was settled without any public

admission of liability; the terms of the settlement agreement were not made

public.

468

Hex continued to operate as an online collectible card game until

the end of 2020, when it was discontinued.

469

Meanwhile, Wizards launched

its own digital version of Magic, called Magic: The Gathering Arena, in 2019.

4. IP Licensing and User-Generated Content

While Wizards of the Coast retains the sole right to reproduce content

containing its Magic-related IP, it has permitted some fan-created content

462. Id. at 21, ¶¶ 45–49.

463. Id. at 23–24, ¶¶ 1–8.

464. Defendant Cryptozoic Ent. LCC’s Answer & Affirmative Defenses to Amended Complaint

at 2, No. 14-CV-00719 (W.D. Wash. Aug. 29, 2014).

465. Id.

466. Id.

467. Id. at 14–20, ¶¶ 61–95.

468. See Wizards of the Coast LLC v. Cryptozoic Ent. LLC, 309 F.R.D. 645, 654 (W.D. Wash.

2015) (granting Wizard of the Coast leave to amend); see also Michael McWhertor, Wizards of the Coast

and Cryptozoic Settle Magic: The Gathering Lawsuit, P

OLYGON (Sept. 25, 2015, 8:30 PM), https://

www.polygon.com/2015/9/25/9399821/wizards-of-the-coast-cryptozoic-magic-the-gathering-la

wsuit-settlement [https://perma.cc/LE2U-NAM6] (discussing settlement and containing statements

from each party).

469. Mason Sansonia, What Hex: Shards of Fate Is and Why It’s Shutting Down, G

AMERANT

(Nov. 1, 2020), https://gamerant.com/hex-shards-fate-kickstarter-shut-down [https://perma.cc/

6ASW-QCXJ].

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under its Fan Content Policy.

470

Specifically, Wizards provides that consumers

may use its IP to make content that they share with the community for free,

provided that they include a written disclaimer.

471

Wizards also requests that

creators of fan content “[not] use Wizards’ logos and trademarks.”

472

In addition, there is a bevy of fan-created content based around Magic,

including fan art, videos, podcasts, websites, and streaming content. Under

the fair use doctrine, many of these sites and businesses which cover Magic in

the form of news stories, blogs, and streaming content do so under fair use

for purposes of commentary, criticism, or parody. As evidenced by its Fan

Content policy, Wizards grants these sites latitude when it comes to covering

Magic because they view it as promoting their business and brand.

C. S

ETTLERS OF CATAN

1. Overview

Settlers of Catan (currently known simply as Catan) was created by Klaus

Teuber, a dental technician from Rossdorf, Germany.

473

Inspired by the

Vikings’ settling of Iceland and Greenland, Teuber originally conceived of a

game centered around “an uncharted island . . . [where] players would

slowly discover the island by flipping over tiles, then establish colonies using

the indigenous natural resources.”

474

First “[r]eleased at the annual Essen

fair [a major board game event held in Germany] in 1995, . . . [Settlers of

Catan] won the [prestigious] Spiel des Jahres [award] and every other major

prize in German gaming, [with] [c]ritics call[ing] it a masterpiece.”

475

Since then, Settlers of Catan has sold over 30 million copies worldwide

and has been translated into over 40 different languages.

476

It is widely

credited as America’s gateway into Eurogames, a genre of tightly designed,

strategy-based products, which have fairly simple rules and are intellectually

demanding but not overly complicated.

477

In addition, Settlers of Catan has

470. Wizards of the Coast’s Fan Content Policy, WIZARDS OF THE COAST, https://company.

wizards.com/en/legal/fancontentpolicy [https://perma.cc/W9DZ-H98T] (last updated Nov. 15,

2017).

471. Id. The required disclaimer must state: “[Title of your Fan Content] is unofficial Fan

Content permitted under the Fan Content Policy. Not approved/endorsed by Wizards. Portions

472. Id.

473. Andrew Curry, Monopoly Killer: Perfect German Board Game Redefines Genre, W

IRED (Mar.

23, 2009, 12:00 PM), https://www.wired.com/2009/03/mf-settlers [https://perma.cc/74RJ-

EDLU]; Adrienne Raphel, The Man Who Built Catan, N

EW YORKER (Feb. 12, 2014), https://

www.newyorker.com/business/currency/the-man-who-built-catan [https://perma.cc/9MHJ-57AN].

474. Id.

475. Id.

476. About the Catan GMBH, CATAN, https://www.catan.com/about-us [https://perma.cc/

EEK6-CABP].

477. See supra notes 76–77 and accompanying text.

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1674 IOWA LAW REVIEW [Vol. 107:1615

spawned numerous expansions,

478

spinoffs,

479

geographically themed

versions,

480

a card-based game,

481

a version suitable for younger children,

482

and digital versions.

483

2. IP Rights

Like other board games, Settlers of Catan is protected by various IP rights.

While not patented, Settlers of Catan has a number of components to which

cards which contain the resources (wool, lumber, brick, grain, and coal), the

artwork on the hexagonal tiles, and the artwork on the special development

cards (i.e., knight, university, road building, etc.). Following its rebranding

from Settlers of Catan to simply Catan as part of its 5th edition,

484

the new

artwork for the box covers, tiles, and cards also are protected by copyright

law. However, many of its simpler components, such as the shape of the

game pieces (rectangles and houses) and the hexagonal shapes of the tiles,

are likely not copyrightable due to lack of originality and/or the scenes a faire

doctrine as a standard part of many board games. Copyright protection also

would not apply to the game rules as an unprotected process, system, or

method of operation under section 102(b). In addition, Settlers of Catan has

numerous trademarks associated with its brand in the United States, including

its logo, title of various designs, and computer versions of its games.

485

3. IP Enforcement

Catan’s enforcement of its IP rights has drawn criticism from some

commentators, who have reported that it is “abusing intellectual property

law to stifle competition.”

486

For instance, a lawyer at Public Knowledge

478. See, e.g., KLAUS TEUBER, CATAN: SEAFARERS (Catan Studio 1997); KLAUS TEUBER, CATAN:

ITIES & KNIGHTS (Catan Studio 1998); KLAUS TEUBER, CATAN: TRADERS & BARBARIANS (Catan

Studio 2007); K

LAUS TEUBER, CATAN: EXPLORERS & PIRATES (Catan Studio 2013).

479. See, e.g., K

LAUS TEUBER, THE STARFARERS OF CATAN (Mayfair Games 1999); KLAUS

TEUBER, STAR TREK: CATAN (Catan Studio 2012).

480. Regional Editions, CATAN, https://www.catan.com/board-games/settlers-catan/variant

s-and-scenarios/regional-editions [https://perma.cc/8B58-WPXR].

481. K

LAUS TEUBER, RIVALS FOR CATAN (Catan Studio 2010).

482. K

LAUS TEUBER, CATAN: JUNIOR (Catan Studio 2011).

483. Digital CATAN Games, CATAN, https://www.catan.com/explore-catan/digital-games

[https://perma.cc/G6P9-ZANN].

484. Charlie Hall, The Settlers of Catan Has a New Name, New Look for 5

Edition, POLYGON

(June 23, 2015, 12:30 PM), https://www.polygon.com/2015/6/23/8661435/the-settlers-of-cat

an-has-a-new-name-new-look-for-5th-edition [https://perma.cc/3EJ8-JNU6].

485. See, e.g., THE SETTLERS OF CATAN, Registration No. 4,328,606; The mark consists

of an image of a yellow and white sun overlapped by two orange thin clouds and the silhouette

of a fortress on a hill in black all on an orange and red sky background, Registration No.

5,652,223; CATAN, Registration No. 5,633,058.

486. Mike Masnick, How Lawyers for Settlers of Catan Abuse IP Law to Take Down Perfectly Legal

Competitors, T

ECHDIRT (Feb. 22, 2011, 1:47 PM), https://www.techdirt.com/articles/20110211

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2022] INTELLECTUAL PROPERTY AND TABLETOP GAMES 1675

reported that in 2011, Catan’s lawyers had emailed a cease-and-desist notice

to the creator of an Android clone of Catan called “Island Settlers,” alleging

pull it from the market.

487

The cease-and-desist notice, however, was criticized

for attempting to claim that Catan’s rules were protected by copyright law.

488

When faced with a similar situation almost a decade later, however,

Catan declined to act. Shortly after the COVID-19 pandemic began in early

2020, a website called Colonist.io released an online game very similar in

both gameplay and graphics to Catan.

489

Indeed, the website itself calls

Colonist.io the “#1 Free Online Alternative to Settlers of Catan.”

490

Colonist.io also contains a prominent disclaimer section, which—in an

apparent attempt to avoid liability—states that “[t]he web game Colonist.io

has no association with the board game Settlers of Catan” and that

“[c]opyright does not protect the idea for a game, its name or title, or the

method or methods for playing it.”

491

Colonist.io has been widely played

since its introduction two years ago, with over 13 million online games.

492

4. IP Licensing and Fair Use Policy

Catan GmbH, which owns the IP rights to Catan, licenses it to numerous

publishers, including Catan Studio in the United States, which is a wholly

owned subsidiary of Asmodee.

493

As previously mentioned, a number of

derivative works have spawned from the game’s success.

494

In addition, Catan

Studio has licensed Creative Goods to produce a wide variety of Catan

/21200213066/how-lawyers-settlers-catan-abuse-ip-law-to-take-down-perfectly-legal-competitors.

shtml [https://perma.cc/4V6C-ZF4Z].

487. Michael Weinberg, Settlers of Catan Makes Legal Threats: Can it Back Them Up? (Hint: No),

UBLIC KNOWLEDGE (Feb. 11, 2011), https://www.publicknowledge.org/blog/settlers-of-catan-

makes-legal-threats-can-it-back-them-up-hint-no [https://perma.cc/K9UU-G57W].

488. Id.

489. C

OLONIST, https://colonist.io [https://perma.cc/P5S7-H4FX]. For instance, the game

used 20 hexagonal tiles in a shape identical to Catan, with similar resources (wood, brick, sheet,

wheat, ore), similar gameplay, and similar victory conditions. See id. In fact, the hyperlink to the

Rules page on Colonist uses the phrase “Catan Rules.” Base Game, C

OLONIST, https://colonist.io

/catan-rules [https://perma.cc/Y2WJ-J9ZZ].

490. C

OLONIST, supra note 489.

491. Press Kit, C

OLONIST, https://colonist.io/presskit [https://perma.cc/UFY3-7EYD].

492. Jake Kleinman, How a Settlers of Catan-Style Game Grew by 1,200% During COVID-19

Lockdown, I

NVERSE (Mar. 17, 2021, 10:30 AM), https://www.inverse.com/gaming/colonist-settl

ers-of-catan-online-free-game [https://perma.cc/9EUB-NQTQ].

493. See W. Eric Martin, Asmodee Acquires English-Language Rights to Catan; Mayfair Games to

Continue on Its Own, B

OARDGAMEGEEK (Jan. 7, 2016, 12:01 PM), https://boardgamegeek.com/

blogpost/49680/asmodee-acquires-english-language-rights-catan-may [https://perma.cc/8SR4-

XLNU].

494. See supra text accompanying notes 478–83.

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1676 IOWA LAW REVIEW [Vol. 107:1615

products, from pins and paraphernalia to branded luggage.

495

Aside from

merchandise, there is also a Settlers of Catan novel,

496

and a movie and

television show based on the game are purportedly in production.

497

With respect to its IP policy and rights, Catan GmbH and Catan Studio

have adopted a fair use policy that “encourage[s] our consumers and trade

customers to employ our IP freely for personal use. In some limited cases

. . . we may even encourage creation of ‘derivative works’ (i.e., material

based upon CATAN GmbH’s or CATAN Studio’ intellectual property) or

satire and/or commentary.”

498

This has allowed other creators to create

their own works that incorporate aspects of Catan.

For example, artist Simon Denny created a game called Founders which

reinterprets Settlers of Catan as part of an art exhibition.

499

Similarly in 2019,

researchers Sam Illingworth and Paul Wake explored using the game of

Catan to educate and hold meaningful discussions about global warming.

500

The authors designed “a ‘science-based’ game with the primary aim of

creating a discussion about global warming,” using scientific concepts or

ideas as part of the game’s theme and mechanics.

501

In designing the game,

the authors explicitly cited Catan’s “very generous fair use policy.”

502

Content creators have also utilized Catan’s fair use policy to create other

media based on Catan, such as the short movie “The Lord of Catan,” which

depicts a husband-and-wife rivalry over the game.

503

However, there are

limitations to Catan’s fair use policy, including a requirement that any

derivative work created under the policy include a prominent notice

regarding Catan’s copyright and trademark rights, and a statement that the

work is “[b]ased upon ‘Catan,’ a creation and design of Klaus Teuber and

property of Catan GmbH.”

495. Josh Mandell, World’s Biggest Board Game? Catan Studios Won’t ‘Settle’ for Less,

HARLOTTESVILLE TOMORROW (Mar. 9, 2018, 6:45 PM), https://www.cvilletomorrow.org/artic

les/worlds-biggest-board-game-catan-studio-wont-settle [https://perma.cc/4RGK-RNRW].

496. See generally R

EBECCA GABLE, THE SETTLERS OF CATAN (Lee Chadeayne trans., 2003)

(2011) (consisting of an “adventure [set in 850 A.D.], based on the wildly popular board game of

the same name”).

497. Dave McNary, ‘Settlers of Catan’ Movie, TV Project in the Works, V

ARIETY (Feb. 19, 2015,

11:13 AM), https://variety.com/2015/film/news/settlers-of-catan-movie-tv-project-gail-katz-12

01437121 [https://perma.cc/Y2VP-9AAK].

498. CATAN GmbH and CATAN Studio IP Policy, C

ATAN STUDIO (Jan. 1, 2017), https://www.

catanstudio.com/ip-policy [https://perma.cc/B3DT-87R7].

499. Tim Schneider, How Artist Simon Denny Is Turning Board Games into Hilarious Critiques of

Digital Capitalism, A

RTNET NEWS (Mar. 1, 2018), https://news.artnet.com/art-world/simon-den

ny-board-games-1233644 [https://perma.cc/9LPV-APAK].

500. Sam Illingworth & Paul Wake, Developing Science Tabletop Games: Catan and Global

Warming, 18 J.

SCI. COMMC’N 1, 3 (July 2019).

501. Id. at 4.

502. Id. at 6.

503. T

HE LORD OF CATAN (Hamster Valhalla 2014).

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VI. IMPLICATIONS

In this final Section, we explore several implications from the foregoing

discussion of IP rights and tabletop games.

First, IP law appears to work fairly well at balancing the important

interests of incentivizing the creation of tabletop games and preserving the

freedom of others to innovate. In particular, the basic building blocks of a

game—its mechanics and rules—are generally unprotected by IP, as they

cannot be copyrighted,

504

and patent protection is usually difficult if not

impossible to obtain, particularly under the Federal Circuit’s current

approach to patent eligibility.

505

This means that other creators are generally

free to modify or adapt a game’s underlying mechanics to new themes,

settings, and topics.

For instance, the creation of tabletop wargames in the 1950s led to an

entirely new category of games of varying degrees of sophistication,

duration, and settings. Today, wargames span the gamut from ancient

Rome

506

to interstellar conflict,

507

and from small-scale tactical battles

508

global war.

509

More recently, the development of collectible card games—

which combine the collecting and trading aspects of sports cards with fantasy

role-playing—with Magic’s publication in the early 1990s, spawned numerous

other collectible card games, such as the Pokémon Trading Card Game and Yu-

Gi-Oh!.

510

Despite these competitors, Magic itself remains highly successful,

earning billions of dollars over the past quarter century.

511

Notably, the economic-based incentives created by IP law appear to be

less important for game designers than game publishers. Many game

designers appear more motivated by the intrinsic reward of creating new

and enjoyable games they can play, enjoy, and share with their family,

friends, and others, rather than prospective financial rewards backed by the

exclusivity provided by IP law.

512

For instance, Brian Tinsman, the award-

winning designer of over 50 tabletop and digital games,

513

explained that:

504. See supra notes 147–51 and accompanying text.

505. See supra notes 244–51 and accompanying text.

506. See, e.g., R

ICHARD H. BERG & MARK HERMAN, SPQR (GMT Games 1992); RICHARD

BORG, COMMANDS & COLORS: ANCIENTS (GMT Games 2006).

507. See, e.g., D

ANE BELTRAMI, COREY KONIECZKA & CHRISTIAN T. PETERSEN, TWILIGHT

IMPERIUM (Fantasy Flight Games, 4

ed. 2017); RICHARD BORG, RED ALERT: SPACE FLEET WARFARE

(PSC Games 2019).

508. See, e.g., R

ICHARD BORG, MEMOIR ’44 (Days of Wonder 2004).

509. See, e.g., L

ARRY HARRIS, JR., AXIS & ALLIES: 1942 (Avalon Hill Games 2009).

510. Jahromi, supra note 435.

511. See supra note 437 and accompanying text.

512. Cf. Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 429 (1984) (explaining

that “[t]he monopoly privileges” created by copyright and patent law are “intended to motivate

the creative activity of authors and inventors by the provision of a special reward”).

513. Brian Tinsman, 15-Year Creative and Game Design Veteran, W

ORDPRESS, https://brianrei

dtinsman.wordpress.com [https://perma.cc/N98Y-ELJ9].

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1678 IOWA LAW REVIEW [Vol. 107:1615

For me, the most personally rewarding aspect [of designing games]

has been seeing my family, friends, and even strangers having a

great time because I created a game. My mother called me up a few

weeks ago and said[,] “We all played your game last night. I haven’t

seen your grandmother laugh so hard in twenty years.” It’s no

exaggeration to say that phone call alone would have been enough

reward for all the work I did, even if the game hadn’t made a

cent.

514

Similarly, Elizabeth Hargrave, first-time designer of the top-ranked game

Wingspan,

515

was frustrated by the perceived repetitiveness of Eurogame

themes like medieval castles.

516

As a result, she created a new game based on

her passion—bird-watching—which has since sold over a million copies

worldwide.

517

And Richard Garfield, the creator of Magic, advised future

game designers that “[o]ne should play games for more than just research,

one should play because it is fun. And if it isn’t fun[,] you should question

your desire to make them.”

518

Indeed, some game designers have gone so far as to outright disclaim IP

rights to their games by releasing them under a Creative Commons or

another “open source” license.

519

Open source licensing is “a widely used

method of creative collaboration that” permits creators to “copy, modify,

and distribute” a creative work subject to certain conditions selected by the

creator, such as attribution, noncommercial uses only, and/or sharing

adaptations on similar terms.

520

For instance, the well-known (and irreverent)

514. TINSMAN, supra note 78, at 36.

515. According to BoardGameGeek, Wingspan is currently the top-rated family game and

rated 23 overall by users. Wingspan, B

OARDGAMEGEEK, https://boardgamegeek.com/boardgame

/266192/wingspan [https://perma.cc/ZL8E-57G2].

516. See Dan Kois, How a Board Game About Birds Became a Surprise Blockbuster, S

LATE (Aug.

15, 2021, 8:38 PM), https://slate.com/culture/2021/08/wingspan-board-game-elizabeth-hargr

ave-review-profile.html [https://perma.cc/HK73-6QV5] (“As Hargrave played, though, she and

her friends found themselves annoyed that all the games seemed to revolve around medieval

villages, or trains, or trading economies in vaguely Mediterranean locales. ‘At one point we

placed a moratorium on games about castles,’ she said.”).

517. Id.; see also Siobhan Roberts, She Invented a Board Game With Scientific Integrity. It’s Taking

Off, N.Y.

TIMES (Mar. 11, 2019), https://www.nytimes.com/2019/03/11/science/wingspan-bo

ard-game-elizabeth-hargrave.html [https://perma.cc/ADX6-9T2L].

518. Garfield, supra note 117, at 10.

519. Of course, a Creative Commons license would not abrogate non-copyright rights, such

as patents or trademarks, that may exist in a game. See C

REATIVE COMMONS, CREATIVE COMMONS

ATTRIBUTION-NONCOMMERCIAL-SHAREALIKE 4.0 INTERNATIONAL PUBLIC LICENSE § 2(b)(2),

https://creativecommons.org/licenses/by-nc-sa/4.0/legalcode [https://perma.cc/RY48-CMYD]

(“Patent and trademark rights are not licensed under this Public License.”).

520. Jacobsen v. Katzer, 535 F.3d 1373, 1378–79 (Fed. Cir. 2008). The full list of Creative

Commons license options is posted on the organization’s website. See About CC Licenses,

REATIVE COMMONS, https://creativecommons.org/about/cclicenses [https://perma.cc/4W7

D-85SK].

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card game Cards Against Humanity is published under a Creative Commons

BY-NC-SA license, meaning that users can use, remix, and share the game

for free with attribution to the game’s creators, but cannot sell or otherwise

commercialize it.

521

Similarly, Secret Hitler, a popular hidden identity social

deduction party game, is also available for download under a Creative

Commons license.

522

Dozens of lesser-known board and card games have

been released under an open source license as well.

523

The desire for recognition and acclaim also may motivate some game

designers more than formal IP rights.

524

Although Rob Daviau, Richard

Garfield, Uwe Rosenberg, and Klaus Teuber may not be household names,

they are widely recognized in the tabletop gaming community as leading

game designers and innovators. Prizes like the Spiel de Jahres and the Golden

Geek Awards bring increased recognition and greater sales for winning

games.

525

In addition, when an out-of-print game is reimplemented, there is

a community norm that the original game designer will receive attribution,

and often financial compensation (in the form of a royalty) as well, even

when not required by copyright law.

526

In contrast, publishers rely on IP rights to protect their investment in

new tabletop games and recoup costs associated with the printing,

marketing, and distribution of them.

527

The incentives provided by IP law

are broader than just creation itself; they also include “the incentive to

provide the public with the tangible products of creation.”

528

The Supreme

521. See Steal the Game, CARDS AGAINST HUMANITY, https://www.cardsagainsthumanity.com

#downloads [https://perma.cc/F8DV-P8K8] (linking to Creative Common’s BY-NC-SA 4.0 open

source license). The base game, family edition, and various international editions of Cards

Against Humanity can be downloaded in print-ready format directly from its website. Id.; see also

Max Tempkin, T

EAM OPEN, https://teamopen.cc/max [https://perma.cc/4ZKS-BF4W] (“As a

founder of Cards Against Humanity, Max Temkin spends time delighting his fans, not suing

jokes.”).

522. S

ECRET HITLER, https://www.secrethitler.com [https://perma.cc/454P-BLHZ].

523. See Daniel Wilcox, Creative Commons/Open Source Games, B

OARDGAMEGEEK (Feb. 5, 2009,

10:31 AM), https://boardgamegeek.com/geeklist/33151/creative-commonsopen-source-games

[https://perma.cc/K55W-VWMR].

524. See T

INSMAN, supra note 78, at 46 (“Let’s not fool ourselves. Like it or not, the most

common reason people want to get games published is to gratify their egos. Imagine how good

it feels to show people a published game and say, ‘I created this.’”).

525. See supra notes 96–97 and accompanying text.

526. Interview with Justin Jacobson, President, Restoration Games (Dec. 3, 2020).

527. Of course, the rise of crowdfunding has conflated the roles of game designer and

publisher, as many creators are now electing to fundraise and self-publish their own games. See

supra notes 107–11 and accompanying text. This suggests that IP rights may be more important

for self-publishing game designers than those who license their games to others.

528. Sara K. Stadler, Incentive and Expectation in Copyright, 58 H

ASTINGS L.J. 433, 433 n.2 (2006);

see also Douglas Lichtman, Copyright as a Rule of Evidence, 52 D

UKE L.J. 683, 724 n.177 (2003)

(“Copyright protection is designed to encourage dissemination as well as creation. Thus, there

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1680 IOWA LAW REVIEW [Vol. 107:1615

Court itself has recognized that “dissemination of creative works is a goal of

the Copyright Act.”

529

Thus, IP rights help publishers bring games from

creation to the marketplace, and eventually to players’ homes.

copying and unauthorized reproductions of their games.

530

Protection

against copying is particularly important in industries like tabletop gaming,

where the cost of creation (i.e., hundreds of hours of game design and

playtesting) is relatively high, and the cost of reproduction of a work is low,

as the components of a game often cost only a few dollars.

531

In addition, the

costs of publication and dissemination for even a basic hobby game with a

limited print run are often in the tens of thousands of dollars, including the

cost of materials, molds, artwork, printing, shipping, and marketing.

532

elaborate games with extensive components like Gloomhaven have even

higher costs and correspondingly higher prices ($140 at retail).

533

The

development of 3D printing has further increased the ease of copying, as 3D

models for board games are widely available on sites like Thingiverse.

534

Absent the exclusivity provided by IP law, publishers would likely find it

difficult to recoup their investments when faced with lower-cost knockoffs.

might be reason to recognize copyright even in instances where the relevant author was not

originally motivated by the allure of copyright protection.”).

529. Stewart v. Abend, 495 U.S. 207, 228 (1990); see also Harper & Row, Publishers, Inc. v.

Nation Enters., 471 U.S. 539, 558 (1985) (“By establishing a marketable right to the use of one’s

expression, copyright supplies the economic incentive to create and disseminate ideas” (emphasis

added)); Mills Music, Inc. v. Snyder, 469 U.S. 153, 187 (1985) (White, J., dissenting) (“Achieving

that fundamental objective of the copyright laws requires providing incentives both to the

creation of works . . . and to their dissemination.”).

530. See, e.g., Matthew Gault, How to Spot a Fake $1,000 Magic: The Gathering Card, V

ICE (Oct.

30, 2017, 12:12 PM), https://www.vice.com/en/article/9kqk8d/how-to-spot-a-fake-magic-the-

gathering-card [https://perma.cc/Z5JV-V3FD]; Larry Gordon, Huge Shipment of Fake Pokemon

Cards Seized at L.A. Port, Destroyed, L.A.

TIMES (July 13, 2012, 1:31 PM), https://latimesblogs.la

times.com/lanow/2012/07/feds-seize-huge-shipment-of-pokemon-cards-the-phony-type-.html

[https://perma.cc/M59M-QUA7]; see also supra Sections IV.A, IV.C.

531. William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J.

LEGAL STUD. 325, 326 (1989); see also Christian Handke, Intellectual Property in Creative Industries:

The Economic Perspective, in R

ESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND CREATIVE

INDUSTRIES 57, 60–68 (Abbe E.L. Brown & Charlotte Waelde eds., 2018).

532. See Making Board Games Your Business, P

INE ISLAND GAMES, (Sept. 28, 2021), https://

www.pineislandgames.com/blog/making-board-games-your-business [https://perma.cc/UCS5-

2FLP] (delineating these costs). Increases to shipping and storage costs for games—many of which

are printed overseas—due to the ongoing coronavirus pandemic has compounded these issues.

See Megan McCluskey, The Board Game Business Is Booming, but the Global Shipping Crisis Could Be

Disastrous, T

IME (Sept. 28, 2021, 12:11 PM), https://time.com/6096497/board-games-shippin

g-crisis [https://perma.cc/4KQ6-9C4Y].

533. Charlie Hall, Hit Board Game Gloomhaven Costs $140 and Weighs 20 Pounds (For Now),

OLYGON (Apr. 1, 2020, 4:40 PM), https://www.polygon.com/2020/4/1/21203354/gloomhav

en-light-version-jaws-of-the-lion-summer-release-date-price [https://perma.cc/N283-8TLM].

534. See Forum, 3D Prints for Board Games, B

OARDGAMEGEEK (June 12, 2019, 3:02 PM), https://

boardgamegeek.com/geeklist/186909/3d-prints-board-games [https://perma.cc/FQ35-TF7X].

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2022] INTELLECTUAL PROPERTY AND TABLETOP GAMES 1681

Furthermore, the derivative work right of copyright law provides an

incentive for the creation and publication of expansions, sequels, and new

editions of existing games. As Michael Abramowicz has explained,

“[c]opyright’s derivative right gives [the owner] the exclusive right to

prepare adaptations of copyrighted works, preventing competitors from

preparing unauthorized sequels and other transformations.”

535

One consequence of the derivative work right is that it helps provide

both the time and financial incentive to develop high-quality follow-on works

by excluding others from rushing to create lower-quality sequels.

536

In the

tabletop gaming industry, expansions to existing board games are an

important way to continue to generate interest and sales by adding new

features, mechanics, complexity, and/or additional players to the base

game.

537

Similarly, for RPGs, the derivative work right can incentivize the

development of new modules and guides for gamemasters and players.

to “port” their games to digital format and help prevent unauthorized (and

often inferior) digital knockoffs from entering the market.

538

For instance,

in 2005, a company released Scrabulous, an unauthorized version of Hasbro’s

popular word game Scrabble.

539

Hasbro filed suit and then released its own,

authorized version of Scrabble for computers and smartphones, which

became widely adopted.

540

Moreover, some game publishers have noticed that

releasing a digital version of a tabletop game can increase interest and sales

in physical copies of the game.

541

And online versions of tabletop games offer

535. Michael Abramowicz, A Theory of Copyright’s Derivative Right and Related Doctrines, 90

INN. L. REV. 317, 318 (2005).

536. See id. at 322 (explaining that “[t]he production of unauthorized derivatives may produce

relatively little social value while steering creative resources from more original applications and

causing the original author to rush official adaptations that will be lower quality than they

otherwise would be”); see also Jacqueline D. Lipton & John Tehranian, Derivative Works 2.0:

Reconsidering Transformative Use in the Age of Crowdsourced Creation, 109 N

W. U. L. REV. 383, 386

(2015) (explaining that the derivative work right “secures the abilities of rights holders to control

entire derivative franchises that span multiple sectors of the economy and categories of

consumption” and “serve public policy by incentivizing the creation of certain types of works

that may not otherwise be made”).

537. See supra notes 478–83 and accompanying text (noting the various expansions to Settlers of

Catan).

538. The converse occurs as well; there are numerous tabletop games based upon video

games. See, e.g., D

OOM: THE BOARD GAME (Fantasy Flight Games 2016) (based upon the Doom

series of video games); D

RAGON AGE (Green Ronin Publishing 2010) (based on the Dragon Age

video games); T

HE OREGON TRAIL CARD GAME (Pressman 2016) (based on the Oregon Trail series

of video games).

539. See Schaeffer, supra note 18, at 43.

540. Complaint at 1, Hasbro, Inc. v. RJ Softwares, No. 08-CV-06567 (S.D.N.Y. 2008).

541. Dan Jolin, The Rise and Rise of Tabletop Gaming, T

HE GUARDIAN (Sept. 25, 2016, 3:00 PM),

https://www.theguardian.com/technology/2016/sep/25/board-games-back-tabletop-gaming-

boom-pandemic-flash-point [https://perma.cc/B6SL-D7J7].

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1682 IOWA LAW REVIEW [Vol. 107:1615

a way for friends and colleagues to continue playing when physical proximity

is unsafe or impossible, as during the COVID-19 pandemic.

542

There is also significant evidence of user innovation in the tabletop

gaming industry. Eric von Hippel, who coined the term “user innovation,”

explains this concept encompasses improvements made and features added

by end users of a work.

543

Indeed, tabletop gaming is distinct from many

other creative industries, such as Hollywood, the recorded music industry,

and book publishing, in that there is not a clear divide between creators and

consumers. Rather, many tabletop game designers start out as game players,

and usually continue to play games once they become designers. Indeed,

players serve an important role in the game development process by helping

refine and improve a game’s mechanics through playtesting.

544

In addition,

players can directly assist the creation of new games by providing financial

support through Kickstarter or other crowdfunding platforms.

545

User

innovation also occurs through “house rules”—that is, unofficial modifications

to a game’s mechanics that can improve the gameplay experience by

simplifying the rules, speeding up the game, and/or adding additional

resources.

546

Furthermore, the emergence of open source licensing for RPGs

facilitates user creativity and innovation, as dozens of D&D-compatible

supplements have been created under the Open Game License.

547

Ultimately, tabletop games appear to fall into that gray space between

IP-intensive fields like biotechnology and motion pictures and “negative

spaces” like fashion and fine cuisine that do not require formal IP rights at

all. Instead of viewing IP’s relationship to innovation in a particular field as a

542. Meilan Solly, Twelve Board Games You Can Play With Friends from Afar, SMITHSONIAN MAG.

(Apr. 20, 2020), https://www.smithsonianmag.com/innovation/twelve-board-games-you-can-pl

ay-friends-afar-180974686 [https://perma.cc/JL6A-AKDL].

543. See generally E

RIC VON HIPPEL, DEMOCRATIZING INNOVATION (2005) (discussing the ability

of individual consumers to innovate for themselves).

544. This can occur in a variety of settings, such as informal playtesting among friends and

at game conventions. For example, GenCon, the largest U.S. conference for tabletop gaming,

offers a “First Exposure Playtest Online” program that game designers and players can

participate in. See First Exposure Playtest Online 2020, G

ENCON, https://www.gencon.com/host/

fepo2020 [https://perma.cc/YX5B-4REV]; see also Ben Begeal, Nonepub Winter 2021, U

NPUB,

https://unpub.net/announcing-nonepub-winter-2021 [https://perma.cc/5PXR-3XLD] (offering

online playtesting).

545. See supra notes 107–11 and accompanying text.

546. For example, the longstanding but unofficial practice in Monopoly of collecting all

taxes and fees into the middle of the game board and awarding them to the player who lands

on the “Free Parking” square is an example of user innovation; Hasbro only adopted it as an

official “house rule” in 2014. See Caitlin Dewey, After 80 Years, Monopoly Is Officially Adding House

Rules, W

ASH. POST (Mar. 25, 2014), https://www.washingtonpost.com/news/arts-and-entertain

ment/wp/2014/03/25/after-80-years-monopoly-is-finally-adding-house-rules [https://perma.cc

/3EJ5-RULT].

547. See M. Jason Parent, D20 Product Listing, F

ANDOM: D20 NPCS WIKI, https://d20npcs.

fandom.com/wiki/D20_Product_Listing [https://perma.cc/4PAJ-SQ8U].

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binary variable, it should be considered as a continuum between the two

extremities.

548

VII. CONCLUSION

In sum, it appears that IP law supports—or at least does not significantly

hinder—the high level of innovation currently occurring in the tabletop

gaming industry. While tabletop games are not a “negative space” in the

sense that IP does provides meaningful protection to game publishers, the

limits of copyright and trademark law, along with the practical absence of

patent protection, means that game designers have sufficient freedom to

continue to create and innovate. Indeed, the evidence suggests that non-IP

incentives, such as the intrinsic value of creating and sharing new games and

receiving attribution for them, may be more significant drivers of innovation

for game creators than formal IP law. As a result, the tabletop gaming

industry serves as an example of a field where IP law generally balances the

interests of creators, publishers, and consumers effectively.

548. Cf. Tim Wu, Tolerated Use, 31 COLUM. J.L. & ARTS 617, 617 (2008) (noting the “giant grey

zone in copyright” where there are potentially numerous infringing but tolerated uses by copyright

owners).