Tell Congress to Fix the DMCALearn More About Section 1201
In the comments in a recent blog post about 3D printing and intellectual property that focused on the board game Settlers of Catan the comments of someone named Neil caught my eye.
The original post was about how limited the intellectual property protection for board games was, and ultimately concluded that printing a new 3D board was not an infringement. It then went on to invite discussion about what this lack of protection should mean going forward.
It turns out that Neil had embarked on a similar project to recreate Settlers of Catan in a new medium. Instead of 3D printing a game board, Neil had created a version that ran on the Android platform called Island Settlers. However, unlike Sublime’s 3D board, Neil’s Android board is no longer available. That is because Neil was the target of some questionable (if not patently untrue) IP claims from Catan’s lawyers.
Before I go further, let me qualify this a bit. I’m going to analyze these claims under US law. Catan is a German company and Neil is based in Canada. However, Catan’s attorneys lead with a threat to “ask our US legal team to take every action necessary to keep you from further infringing on our intellectual property.” Both Catan and Neil referenced US law in their email exchanges, and both seemed to feel that it controlled in this situation. Please chime in down below in the comments if you think that this analysis would be materially different under either Canadian or German law.
I’m going to start with the copyright claim. Catan is correct to assert that they have copyright protection for the actual images printed on their game tiles that make up the game board. However, that’s where the copyright protection ends. Neil’s game tiles do not look the same as the Catan tiles. They convey the same ideas (rocks, sticks, bricks, etc.), but are clearly different images. As a result, there is not a direct copyright infringement on the pieces.
Catan’s lawyer also correctly recognizes that the rules to a boardgame are not protectable by copyright. However, he goes on to suggest that adding a story to the rules create a protectable “fable” that will then extend to the rules of the game that derive from the fable.
Although this assertion is highly questionable as a general principle, in this case it is simply ridiculous. As far as I can tell the “fable” in question is this:
Players are recent immigrants to the newly populated island of Catan. Expand your colony through the building of settlements, roads, and villages by harvesting commodities from the land around you. Trade sheep, lumber, bricks and grain for a settlement, bricks and wood for a road, or try to complete other combinations for more advanced buildings, services and specials.
Everything beyond the first sentence simply describes the gameplay. The first sentence “Players are recent immigrants to the newly populated island of Catan” is far from a wildly original piece of storytelling, and may not be able to be protected by copyright at all. Even if you could protect that one sentence with copyright, if that sentence allows Catan to protect its game then “Nations are at war, fighting to control the globe” would protect Go, Chess, Checkers, Risk, Connect Four, and just about any board game in the world. Maybe even Catan. There is very little by way of original work to protect in that “fable,” and certainly nothing to extend to the rules of Settlers of Catan. I am willing to bet that very few lawyers would be willing to make Catan’s assertion in front of a judge.
The other claim that Catan makes is a trademark claim. As I noted in the original post, Settlers of Catan is a registered trademark. However, that only protects “Settlers of Catan.” Neil’s game was called “Island Settlers.” Catan could claim that “Island Settlers” is confusingly similar to “Settlers of Catan” to the point that it is a violation of the trademark, but they would need to provide actual evidence (usually in the form of surveys) that the public was actually confused and believed that Island Settlers was from the same company as Settlers of Catan.
Neil did use “Catan” in the description for Island Settlers. However, that tag was descriptive – Island Settlers is a game that uses the rules of Settlers of Catan. The simplest and most logical way to describe Island Settlers is to compare it to Settlers of Catan. If I am selling parts that replace a Toyota Camry, I will probably mention Toyota Camry in my product description. That does not mean that I am violating Toyota’s trademark.
Google is forced to litigate this principle all the time. People buy keywords to advertise to. The trademark owners sue. And Google wins. Over and over. To go back to the Camry parts example, if I search for “Camry parts” on Google I get a number of ads from companies that are not Toyota. They all mention Camry in their descriptions because they need me to know that they sell parts for my Camry.
Catan also repeatedly suggests that merely using the trademark descriptively dilutes the trademark and therefore violates US law. While dilution not requiring any sort of consumer confusion is a violation of US trademark law it is only a violation if the dilution occurs to a famous mark. Famous marks are generally those widely recognized by the general consuming public of the United States – think Nike or Wal-Mart. I love Settlers of Catan, but Settlers of Catan is nowhere near Nike famous.
Getting beyond this specific instance for a moment, Catan should be commended for taking the time to give some specific guidance to fans about setting up fan pages. The guidance is written in clear, easy to understand language. Unfortunately, it is full of false statements and misleading assertions. It suggests that creating your own rules to Catan somehow requires a license, and that the public cannot use Catan descriptively as subdirectories of a website “because we do not want search engines to place unofficial offers before the official offers.” While this statement certainly suggests Catan’s true motivation for the rules, it is not one backed by law.
Finally, the email exchange between Catan and Neil is the worst kind of ignorant (let's assume it was ignorance) legal bullying. It is full of patently incorrect or misleading statements of US law, punctuated by threats to pull the developer into court if he fails to submit. It is a shameful example of a company trying to control what the law does not allow it to control by relying on fear and an inability to afford to go to court.