A legal perspective on Kickstarter trademark disputes

There are few things out there that get me as excited as Kickstarter trademark disputes. I’ve written about them before on Jamey Stegmaier’s Kickstarter Lessons blog, after all.

The post contains some interesting and common misunderstandings about trademark law that other Kickstarter creators share.Recently, Brian Henk of Overworld Games sent me a link to a story by game designer Michael Gnade. The blog post detailed a recent Kickstarter IP dispute over the Rock Manor Games release “Steamcraft” (now entitled Brass Empire). Of course, I was immediately interested. I encourage everyone to read the post first, then come back to this one for my thoughts!

Essentially, Michael posted a Kickstarter campaign for a board game called Steamcraft: A Steampunk Deckbuilding Card Game. During the campaign, he was contacted by another creator who had run a campaign for (guess what) “SteamCraft: A Steampunk Tabletop Role-Playing Game.” The RPG creator then contacted Kickstarter to have Michael’s campaign suspended. Check out the rest of Michael’s post for more details!

The post contains some interesting and common misunderstandings about trademark law that other Kickstarter creators share. By going through some of the points he made in his post, I hope that other creators can learn the legal background behind these issues and hopefully avoid a trademark catastrophe.

Choosing the name

Michael says that, prior to going with the Steamcraft name, he utilized a number of search engines. This is a good thing that EVERY game creator should do, both for their game names and their company names. In fact, anything that you’re going to use as a trademark should go through this search process.

Possibly search venues include the US Patent and Trademark Office’s website, Google and other search engines, and a more comprehensive search of state and foreign trademark registrations. That last one will cost some money, however, as specialized services do that kind of work. It wouldn’t make sense to do it yourself. This can help to avoid conflicts with companies that are doing business in smaller geographic areas, though.

While I applaud Michael’s efforts beforehand, it’s obvious that his search didn’t have the results that it should have. I don’t want to question Michael’s integrity or Google skills, but when I search for “steamcraft” with an Incognito Mode window, the original Steamcraft RPG is both 4th and 10th on my first search page. There had been two Steamcraft Kickstarter campaigns – I would think that at least one of these would pop up for anyone when searching for the name.

When I do my searches, I try to go 10 pages deep on Google, until the results get really murky and esoteric. An extra 15-20 minutes of searching can avoid a huge headache in the future.

As an aside, the Google search results also show a Minecraft mod named “Steamcraft,” which could still potentially be problematic if they’re using the Steamcraft mark in commerce and have some rights attached.

What can you do?

You don’t want to start spending time and money building a brand that’s already taken.It may be a good idea to have a few friends do the search for your proposed name, as well. This is because Google often personalizes search results depending on an individual’s search history. My understanding is that you’re never really getting a “clean” Google search, even in Incognito Mode. In this case, it is certainly possible that this dispute has bumped up the original Steamcraft in search results due to others linking to it.

This is probably resulting in a very different view of the search results for “Steamcraft” than before Michael put up his Kickstarter. I don’t know, and as I said, I’m not going to attack Michael for this. However, it’s an important illustration of how vital this initial search can be. Take it seriously, folks!

You don’t want to start spending time and money building a brand that’s already taken. You also don’t want to open yourself up to getting your project taken off of Kickstarter, as in this case, or be the subject of a trademark infringement lawsuit.

What if the trademark isn’t registered?

What if you find someone else using your proposed game name out there on the Internet, but you can’t find it on the US trademark office’s search engine? They’re using the name, but they haven’t registered it. Does that mean that it’s free to use?

Of course not (well, probably not). Trademark rights come from USAGE of the mark in commerce, not from registration. The right to sue in federal court and prevent counterfeits from entering the US are just a few of the rights that come from registration. However, the actual trademark rights themselves are borne out of your use of the mark in connection with particular goods or services.

This is an extremely important thing to realize when deciding whether or not to go forward with using a name.

Going directly to Kickstarter

The original creator then went directly to Kickstarter to report the infringement.In his post, Michael describes an email that he received from the original Steamcraft creator, alerting Michael to the infringement. Michael replied with some questions, but this email was not answered. The original creator then went directly to Kickstarter to report the infringement. This got Michael’s project page taken off until he removed any infringement.

On this point, I just wanted to say that there’s no requirement to take it up with the infringer first. It’s often a good thing to do, for a number of reasons:

• It can keep the dispute small and prevent escalation
• It can prevent costs from lawyers like me having to do a bunch of work
• It can avoid any bad blood between the parties in a relatively small industry
• It could lead to the parties writing up a co-existence agreement so they can each stay within their own industry (board games/RPGs in this case)

But again, there’s no requirement to do so. From this situation, it seems like the creator of the original Steamcraft was expecting an “okay, I’ll change the name,” rather than the questions that Michael asked. So they went forward with the dispute process.

Lessons learned, annotated

Here are some of Michael’s “Lessons Learned” from the article, along with my quick response.

“Search Kickstarter before naming your project or game since they accept that as evidence of IP infringement”

I’m getting a vibe here that Michael doesn’t believe that having a successful Kickstarter project in the past would constitute evidence of infringement. This is very odd to me, particularly when the non-descriptive part of the two names are very close.

It doesn’t matter if it’s on Kickstarter or anywhere else – if you’re using a name as a brand identifier in connection with the sale of a good or services, that’s a protectable trademark. The original user of that mark has rights, after all. In a reverse of the situation, I would think that any creator would be a little unhappy, as well.

“Remove and delete everything brought up in the dispute – including your video! (you can do a terrible job redubbing it afterwards like I did). You can always edit your project page after your project is unlocked.”

Absolutely. Your Kickstarter page is an advertisement for your goods. As such, using someone else’s trademark could be an infringement unless it meets certain exemptions. Again, Kickstarter themselves could be liable for hosting that infringing work, so that’s why they want to yank it from public view as soon as they get the notification.

From Michael’s comment in the comments section: “It just sucks that a relatively unheard of Kickstarter constitutes ip rights. I mean 130 people that’s it. It’s not like this was scythe or exploding kittens.”

First of all, the number of people is irrelevant. Second of all, Michael is going off of just the Kickstarter backers, but the RPG is also available on DriveThruRPG and possibly other places. This is the actual use part of getting those trademark rights – there is no requirement for a minimum amount of financial success. In this case, the name is protectable.

Conclusion

Hopefully this post clears up some misconceptions about trademark law when it comes to Kickstarter! If you have any questions or are looking to protect your trademark, contact a game lawyer.