Amazon and Asmodee team up to fight counterfeit games (Legal News)

On June 24, 2021, Amazon and Asmodee filed a trademark infringement lawsuit against an Amazon seller in Washington federal court. The subject? Counterfeit copies of Dixit being sold by a third-party seller on Amazon.

In this post, I’ll discuss the issue, the lawsuit, and most importantly how you can protect your game from counterfeits on Amazon.

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A quick summary of the lawsuit

If you’ve ordered popular board games off of Amazon, you may have already run into this issue. Counterfeit product sold by third-party sellers is a big problem for many tabletop companies.

A quick Google search shows several articles and forum threads discussing the problem:

In this case, Amazon and Asmodee have teamed up to file a joint lawsuit against one particular board game seller, Samuel Katz (dba “Crazy Leaf”) and a company called Gig Trading, Inc. The lawsuit alleges that Katz sold counterfeit versions of Asmodee’s “Dixit” game through Katz’ Amazon seller account.

This, as they point out in the complaint, is not only a violation of the Amazon seller account agreement, but Asmodee’s trademark rights in the Dixit mark. There are other causes of action which are trademark-related, as well (false designation of origin and violations of the Washington Consumer Protection Act).

The complaint and all exhibits are available through the Washington State Western District Court’s website, but I’m hosting them on Google Drive for your convenience if you want to check them out. You can download the zip file of the initial case documents by clicking the link here.

What proof do Amazon and Asmodee have?

In the complaint, Amazon discusses how they learned of the issue and what evidence of counterfeiting they have.

The issue initially came to light when Amazon received several consumer complaints about copies of Dixit: Daydreams purchased from Katz’s Amazon store. In particular, one purchaser complained about the “horrible, DULL artwork. Tese are nothing like the original cards. Certainly nothing to daydream about.”

Amazon then did a “test order” of the product, and provided it to Asmodee for verification of whether it was real or counterfeit. Three main points convinced them:

  1. The images were less vibrant than authentic copies of the game (as the user complaint points out)
  2. The colors were different than on authentic copies of the game
  3. The font used and the alignment of elements in the game’s formatting were different than the authentic version of the game

Altogether, Amazon and Asmodee allege that it is clear that Katz was selling counterfeit copies of Dixit: Daydreams and Dixit: Revelations.

What happens next?

Next, Katz will have to either file an answer laying out their defense, denying the allegations, or ignore it and face a default judgment. This means that the court would rule in Amazon/Asmodee’s favor due to Katz’s failure to respond.

We’ll have to see what response Katz files. It will be due in a couple weeks. I’ll keep an eye on this and update the blog when something happens!

Amazon sellers – How can you avoid this happening to your game?

Asmodee and Amazon have teamed up to file this lawsuit, but lawsuits are usually a bit too pricey for the average hobby game publisher.

If that’s the case, then what options DOES a game publisher have to stop counterfeits on Amazon in the US? Let’s take a look at the steps you can take.

Step 1 – File a trademark registration and copyright registration

The first step you need to take to fully protect your game’s artwork, name, rules text, and other elements in the US is to file the following:

  1. A trademark registration for the game’s name (and possibly the logo)
  2. A copyright registration for the game’s artwork, rules text, and other original creative elements

Strictly speaking, neither of these are required in order to publish a game. Tons of publishers do this all the time. In the current situation, it appears that Asmodee hasn’t filed a copyright registration for the Dixit games, for example.

However, if you DON’T have these registrations, you may not be able to effectively enforce your rights against a counterfeiter.

Trademark: The trademark registration is necessary for a lot of the enforcement mechanisms we’ll discuss below. While you technically have “common law” trademark rights just by virtue of selling a product using that name, there’s not a whole lot you can do with it.

Copyright: Similarly, a copyright registration is necessary to file a copyright infringement lawsuit. Recently, the Supreme Court ruled that just applying for the copyright isn’t enough – you need to have it fully registered. Since this can take anywhere from a few months to over a year, you don’t want to be in a position where you need to wait before filing your copyright lawsuit. Read more about this copyright registration issue here.

I’ve successfully filed hundreds of these applications for game clients. If you have any questions about getting your game trademark or copyright registered, feel free to reach out and we can talk through it.

Step 2 – Sign up for Amazon Brand Registry

If you’re selling games on Amazon and have your trademark registered, there’s no reason NOT to sign up for Amazon’s Brand Registry. This Amazon service allows you to take control of your brand and proactively go after counterfeiters and trademark infringement on the platform.

As I said, you’ll need a fully registered trademark for your game or your company name in order to set up the Brand Registry and store page. Lucky for you, I’ve written a whole guide to Amazon Brand Registry with answers to the most common questions.

Step 3 – Register with US Customs and Border Control

Another step you can take to protect your game trademark from counterfeits being shipped into the US from abroad is to register your trademark with US Customers and Border Control. This isn’t a step that many clients take, but it is a good option if you know that there’s an ongoing flow of counterfeit product coming into the country.

The process involves first having the trademark registered in the US (see Step 1) and then filing an application with CBP (along with the $190 filing fee). This alerts CBP to your trademark and also allows you to provide product guidelines to help them catch counterfeit materials that come into the country (see this example they provide here).

You can also report violations directly to CBP once you’re up and running. For help getting this set up, check out the CBP page here or contact me for assistance.

Step 4 – Use Cease and Desist Letters and Takedown Notifications

The most common option that clients use to police and enforce their trademarks is sending Cease and Desist Letters and platform takedowns.

Cease and Desist Letters are basically just letters that you or your lawyer send to the alleged infringer. They let them know that you have certain trademark or copyright rights, explain how they’re infringing on yours, then hit them with a threat of further legal action (and a demand for payment) if they don’t stop the infringement.

For many infringers (particularly small time infringement), the threat of legal action coming from an attorney will usually get them to stop. However, it’s not fool proof and may require actually taking that further legal action. We’ll discuss this in the next step.

Another method for going after infringing material that won’t break the bank is to utilize takedown notices to platforms that are hosting infringing content and products. For example, sending a notice of trademark infringement to Etsy will often get a listing taken down (assuming there is a legit trademark violation going on). Amazon will also do so if you send a notice that there’s infringing content on their site (especially if you’re enrolled in Brand Registry). Similarly, digital game platforms will often be willing to take down infringing content.

For copyright infringement, a DMCA takedown will usually accomplish your goal of getting infringing content off the Internet.

Step 5 – File a lawsuit

The last step for going after counterfeits is to actually file a trademark infringement lawsuit against the counterfeiter. As you can see, this is the step that Amazon and Asmodee took.

While this is the most effective way to go after infringement, since you’re putting the court system against them, it’s also the most expensive. You may be able to find an attorney to take a case like this on contingency (meaning you don’t pay anything up front, but the lawyers take a good chunk of your recovery), but that will often depend on how much of a sure thing the lawsuit is and the chances of recovering money.

Your mileage may vary.

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Wrapping it up

Hopefully this gave you some insight into the new Amazon/Asmodee case, and some help coming up with a strategy for protecting your game against counterfeits. If you have any questions or want to get started with a trademark or copyright registration, check out my Contact page to set up a free consultation call!

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Zachary Strebeck

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