In this article we will explain which intellectual property rights can protect tabletop games and board games; What is the extent of the protection that each right grants and what actions must be taken in order to effectively protect a board game or a tabletop game.
The history of board games is ancient, there is evidence of board games in antiquity – about 3500 years BC and apparently they occupied a central place in the leisure culture in antiquity. Even today, board games and tabletop games are of great economic importance and a central place in the leisure culture. For example, in In 2013, board game sales totaled more than $1.8 billion in the United States, out of a domestic toy market of $22 billion.
Game makers and inventors usually raise two questions regarding the relationship between law and games: “I’m making a game, how can I prevent someone else from copying it?” and “I’m making a game that’s similar to game X; how can I avoid getting into trouble with the copying?”.
In the legal field, the answer to these questions is in a system of rulings and laws that allow the protection of intellectual property on board and tabletop games, including: trademark laws, design laws (models), patent laws and copyright laws.
The basic rule for the protection of board and tabletop games: registration of a trademark and design
Therefore, in order to get effective intellectual property protection for the game we must (usually):
1. Register trademarks: on the name of the company, on the name of the game and on famous elements in the game that are used as trademarks themselves (see details below).
2. Register designs: on the game board and the game pieces (see details below).
What does not protect (usually):
Usually a patent does not protect a game: since there is no innovative and protectable technological idea that is the basis of the game (see details below).
Generally, copyright does not protect a game: for example, in Israel, if a board game qualifies for registration as a design, it will not receive copyright protection (see details below).
Trademark protection for board games
Trademark (brand) protection is usually the most common way to protect board and tabletop games.
What is the purpose of the trademark?: Trademarks are intended to be used to identify the origin of the game manufacturer and to differentiate between a game of one manufacturer and a game of another manufacturer in the market and therefore, a registered trademark can protect, in the country where the mark is registered, the name of the game, the logo of the game and company name.
In other words, the purpose of protecting a trademark is to prevent a competitor from using my mark or a mark similar to it to the extent of misleading.
What is the protection period?: No time limit – as long as renewal fees are paid.
How to protect?: To protect a trademark we must register the trademark in the countries where we want to operate and the mark must be unique (of a distinctive nature) in the same territory where we request the registration.
How much does it cost?: See the article below.
What is the registration process?: See article below.
What do you register?: It is recommended to register as a trademark for several elements of the board and tabletop games and they are:
1. The logo of the game (Word mark)
For example, the HASBRO company registered the name MONOPOLY in Israel (trademark number 19980) in type 28 in relation to: “A drawing that includes a board and moving parts for use in the game of real estate trading; artificial money and mounts and triggers suitable for its maintenance and use in games.”
2. The name of the game (designed trademark)
For example, Catan GmbH registered the CATAN logo in the USA (trademark number 77905436) in class 28 in relation to:
“Games, namely, board games, [ card games, dice games and electronic games other than those adapted for use with television receivers only ]; equipment sold as a unit for playing board games comprised of game boards, game pieces, game cards, fantasy game cards, printed game rules, printed game leaflets and printed user instructions sold in connection therewith”.
3. Company name (Word mark)
For example, the HASBRO company registered the name HASBRO in Israel (trademark number 72754) in class 28 in relation to: “Toys, games and amusement equipment, all the above goods are included in class 28.”
4. Company logo (designed trademark)
For example, the HASBRO company registered the HASBRO logo in Israel (trademark number 239257) in class 28 in relation to: “Games and toys; exercise and sports necessities not included in other classes; decorations for Christmas trees; all included in class 28.”
5. Famous in-game elements used as a trademark by themselves (designed trademark)
For example, Hasbro owns a number of trademarks related to famous elements of the Monopoly game. For example, the train icon; The pictures for the “jail”, “go to jail”, “free parking” and more.
French trademark number 3139395:
French trademark number 98732645:
French trademark number 98723006:
Famous lawsuits: Parker Brothers, the publishers of the Monopoly board game, became embroiled in a decades-long series of legal battles with an economist named Ralph Anspach, who designed and began selling a game he called “anti-monopoly.” The dispute referred to a variety of claims, but the trademark infringement claim was at the center of the proceedings. Finally, in 1983, the US Supreme Court ruled in its ruling that the word “Monopoly” had become generic and open to free use, the court reasoned this decision by the fact that the purchasers associated the name with the product and not the origin of the product. Specifically, evidence showed that the purchasers of the Monopoly game were motivated by their knowledge of the game and not by the game’s association with the Parker brothers.
Design law protection for board games
The best way to protect aesthetic (as opposed to functional) design components in a board game or box game is through design registration.
What is the purpose of a registered design (Design patent)?: A registered design protects the aesthetic design of the game and this only in the country where the design was registered.
In other words, the purpose of the protection is to prevent a competitor from using my design or a design similar to it to the point of being misleading.
Protection period: 25 years from the filing date (in Israel) – as long as renewal fees are paid.
In addition, the Designs Law also provides a framework of protection for unregistered designs, however this protection is limited to a period of three years from the date of publication.
How to protect?: To protect a design, we must register the design in the countries where we want to operate and the design must be new and original in a worldwide examination.
When do we protect?: Before publishing the game in public – it will be clarified that if we publish the game before submission, the publication will be considered a prior self-publishing, negating the validity of the design for registration.
Exception: In the Designs Law in Israel and in the law in the USA, there is a possibility to register a design that was previously published before its registration by the right holder, provided that the publication was made within 12 months before the date of submitting the application for registration.
How much does it cost?: The design registration procedure is a relatively cheap procedure that costs several thousand shekels for each country (depending on the country for registration).
What is the registration process?: See article below.
What do you register?: It is recommended to register as a design for several elements of the board and tabletop game and they are:
1. Two-dimensional game board
For example, the LCAIP company registered as a design in the USA (USD858640S1) the two-dimensional game board below:
• Please note that the dashed inscription is not protected within the design and is intended for illustration.
https://patentimages.storage.googleapis.com/89/d1/bd/f6e6110e8ade71/USD858640.pdf
2. 3D pieces of the game
For example, Klaus Stephan registered as a design in the USA (USD772104S1) a set of 3D characters for the board game below:
https://patentimages.storage.googleapis.com/09/0d/19/6b7d32c403f352/USD772104.pdf
3. Board game cards
For example, the MAT BAREFOOT company registered as a design in the USA (USD612893S1) a set of playing cards (70 cards) and the following two-dimensional game board:
https://patentimages.storage.googleapis.com/7b/a4/85/1cb6b913217599/USD612893.pdf
3. 3D tabletop Game:
For example, the HASBRO company registered as a design in the USA (USD613342S1) a 3D tabletop game:
https://patentimages.storage.googleapis.com/94/6e/e9/bd4fc0a5f5f7dc/USD613342.pdf
Patent law protection for board games
Registered patent protection is generally not an appropriate way to protect a board game or tabletop game. An exception to this exists in US patent law – for more see the article on patent registration in the US for a board game.
What is the purpose of a registered patent?: A registered patent, in the country where it is registered, protects the technological idea that is the basis of the game.
That is, the purpose of the protection is to prevent a competitor from making use of the protected technological idea within the framework of the patent monopoly.
Protection period: 20 years – as long as renewal fees are paid.
How to protect?: To protect a patent, we must register the patent in the countries where we want to operate and the patent must be new and have real progress in a worldwide examination.
When do we defend?: Before publishing the game in public – it will be clarified that if we publish the game before submission, the publication will be considered a prior self-publishing, negating the validity of the design for registration.
Exception: In the US law, there is a possibility of registering a patent that was previously published before its registration by the right holder, provided that the publication was made within 12 months before the date of submitting the application for registration.
What do you register?: In a board game or a tabletop game, only innovative and inventive technological elements can be registered.
The general idea underlying the game is usually not patentable.
How much does it cost?: See the article below.
What is the registration process?: See article below.
Examples of game patents:
Example A – a game that combines a gun and a target
For example, the HASBRO company registered as a patent in the USA (USD858640S1) a device that combines a gun and a target to facilitate a game of tag through infrared light communication and augmented reality with one or more players.
https://patentimages.storage.googleapis.com/d2/20/ec/6a96afd9f1b186/US8469824.pdf
Example B – a method and device that combines a physical game with a virtual game
For example, the HASBRO company registered as a patent in the USA (US9962615B2) a method and game system that creates an interaction between a computer program that creates a virtual arena and a physical game. The physical game transfers a unique identifier and digital data to the software and allows the player to play with the physical game within the virtual arena.
https://patentimages.storage.googleapis.com/41/57/75/224ebd5d6e7a51/US9962615.pdf
For more examples, see the article on patent registration in the United States for a board game.
Copyright protection for board games
Is the idea of the game, the game itself, and the game components protected by copyright?
Rule 1: Copyright does not protect an idea
A fundamental rule in copyright is that there is no protection for the idea and protection is only given to the ways of expression of the work.
Section 5(1) of the Copyright Law states that copyright in a work shall not apply to an idea, but rather to the way of its expression.
With reference to the required distinction between the implementation of an idea and the idea itself, it was determined in BA 23/81 Hershko v. Orbuch, PD Mb (3) 749, 759 (1988) as follows:
“The difficulty that sometimes arises is not in the law but in its application to concrete facts that are disputed; when is it said that an idea was copied, and when is it said that the implementation of an idea was copied? In my opinion, there is no need to determine in advance when it is an idea and when it is its implementation, but everything depends on the circumstances: the same set of facts can be considered in one thing is an idea and in another thing is an application of an idea. In a broad sense, there is nothing original, but every invention or “idea” is a development of a previous invention or “idea”; the question in any case is, if someone actually added something original of his own to the “idea” Either for “application” first (and then his work will be protected, even though the foundations of his original work he drew from another source), or he copied in a disguised way what someone else did, without actually creating something original of his own; when we examine a work, about which it is claimed a violation of copyright, the only question is whether this work is an expression of an idea or a copy of an expression that appeared elsewhere.”
Rule 2: Copyright will not protect a game intended to be produced in more than 50 copies
It can be assumed that the game and the game components are not an idea, therefore, are they protected by copyright?
This question directly concerns the conflict between the design law and the copyright law.
In Israel, the legislator created these two laws that should operate in a complementary manner and not in an overlapping manner.
In the world, courts have struggled a lot with the interpretation of the questions arising from the special relationship between design law and copyright law, and over time three different central approaches have been formed regarding the answer to this question.
The French version holds that there is room for a parallel application (cumulative protection) of copyright laws and design laws on industrial design. In this way, according to French law, a specific infringer can be sued both for copyright infringement and for infringement of a registered design.
The European directive presents a different approach according to which there can be cumulative and alternative application of the legal systems of models and designs and copyrights, in which the rights are cumulative, but the protection is alternative or limited.
Whereas in the USA, Canada, Israel and most of the world there is an explicit exclusion of copyright in relation to a registered design. In other words, these two laws are supposed to operate in a complementary manner and not in an overlapping manner.
For example, the law in Israel states that a product that can be claimed as a design and there is an intention to produce the product in an industrial process, will not be protected by copyright law.
Section 7 of the Copyright Law, 2007-2007, states that a design will not be entitled to copyright protection if it is produced in industrial production:
“Notwithstanding the provisions of Section 4, there will be no copyright in a sample as defined in the Patents and Designs Ordinance or in a design as defined in the Designs Law, 2017-79, unless the sample or design is not used and is not intended to be used for industrial production; The minister may establish conditions under which a model or design will be considered to be used for industrial production.”
In other words, the rule in Israel is that a product cannot receive double protection under both the Copyright Law and the Designs Law, and if a product deserves to be registered as a design and is produced in an industrial process (produced in over fifty copies), it will not receive copyright protection.
Thus, if a person designed a certain game, which deserves to be registered as a design and which should be produced in more than fifty copies, but did not submit a design registration request for this design, he will find himself losing out on both ways, since he will not be entitled to copyright protection due to the fact that the product is intended to be produced in more than fifty copies, and will not be entitled to registered design protection, since he did not apply for its registration.
Exception: Copyright may protect a two-dimensional work fixed on an object
Another question arising from the question of the overlap or non-overlap between copyrights and designs is whether it is possible to grant a copyright to a part of an object eligible for registration? In other words, does a two-dimensional work printed or fixed on an object or product eligible to be registered as a design have a copyright separate from the object itself.
This issue came up in a case that was conducted in the Nazareth District Court between Fisher Price and Devron – Import and Export Ltd. (CA 1248/15 Fisher Price v. Devron (published in Nevo, August 31, 2017)). A lawsuit in which it is claimed that the defendants marketed a baby rocking chair, which is an exact copy of a Fisher Price baby rocking chair:
In the same procedure, the Supreme Court ruled that there are cases in which a work of art fixed on an object eligible to be registered as a design will receive copyright protection.
The test established by the Supreme Court for the purpose of granting copyright protection in a two-dimensional work fixed on an object is that it will be possible to separate the work from the object.
The basic rule for the substantial separation test proposed by the court is whether the work separated from the object can exist separately from the object, as a paper drawing or as a three-dimensional sculpture for example, without destroying the basic form of the object. On the other hand, if by reassembling the work, the object is also created, then copyright in the work should not be recognized.
Under the assumption that we have passed the test and determined that this is a two-dimensional work fixed on top of an object and that the work can be separated from the object, we come to the next question and that is whether it is a work of art. As long as it is a work of art, it will receive protection under copyright law.
The legal situation in the past: It should be noted that in the past, before the enactment of the Designs Law and before the ruling of the Supreme Court in the Fisher Price case, the courts recognized copyright in a game and determined that in relation to the protection of copyright in a game, the game must be examined according to its components since a game as a whole does not constitute a work protected by rights Creators, however, the components of the game, they will deserve protection (TA 9678/05 in Timo v. ARRABON): “Different components of the game deserve copyright protection and they are: the game packaging, the plastic case, the cards, and the electrical circuit. The court ruled that these components deserve copyright protection being a “literary work” or an “artistic work”…”.
In the same procedure, it was ruled that for the purpose of examining copyright infringement in a game, the court must compare the two games (the original and the copied) with other games that exist on the market. In a situation where there is a lot of similarity between the games and the difference between them is minor and not substantial, and it is proven that there was access to the original game, it will be possible to determine that the original game was copied and that a copyright infringement was committed.
The legal situation today: However, as we explained above, in light of what is stated in Section 7 of the Copyright Law, 2007 and in light of what is stated in the judgment of the Supreme Court in the Fisher Price case (from 2017). It is clear that copyright will not protect a game that is intended to be produced in more than 50 copies and the best way to protect it is by registering a design.
In conclusion
As a general rule, effective protection of a board game and a tabletop game is based on the registration of designs and the registration of trademarks in relation to the elements for which we seek protection.
In addition, we recommend stating on the game’s packaging and on the game itself that the game is protected by registered designs and registered trademarks in order to deter competitors from infringing the protected rights.
