Fan sites to keep the edition alive?

[S'mon]

You could make a compatible product yes, but not a replacement. So you could add supplemental material at most.
However, you can't use the Trademarks of a company in your advertising, or as a competitive product.

Look at Pathfinder. You'll be hard pressed to see them refer to "Dungeons & Dragons" or "D&D". Instead they refer to "the 3rd edition if the world's oldest rolepaying game."

You're confusing the OGL with trade mark law. Pathfinder is published under the Open Gaming License, that is why it cannot refer to Dungeons & Dragons.

Garthanos is correct as to what Intellectual Property law actually says.

Edit: If I don't use the OGL I could certainly legally use the D&D trade mark in advertising my
D&D-compatible product. However being legally in the right is not the only factor to consider, eg I may be at
risk of spurious threats from the TM holder. If my work is published by a third party, that third party may remove my work in response to the spurious threat. I may not wish to deal with this risk, so I may be better off not using the mark in advertising.

 

[Jester David]

You're confusing the OGL with trade mark law. Pathfinder is published under the Open Gaming License, that is why it cannot refer to Dungeons & Dragons.

Garthanos is correct as to what Intellectual Property law actually says.

Edit: If I don't use the OGL I could certainly legally use the D&D trade mark in advertising my
D&D-compatible product. However being legally in the right is not the only factor to consider, eg I may be at
risk of spurious threats from the TM holder. If my work is published by a third party, that third party may remove my work in response to the spurious threat. I may not wish to deal with this risk, so I may be better off not using the mark in advertising.

Advertising using someone's trademark is very tricky: clicky
Thanks to a Mcdonalds/ Burger King lawsuit you can say "brand x" is better than "brand y". Which is comparative. Compatible products are very different. Especially as compatible products very much could be confused with an official product.

If I create an expansion that adds oriental classes to 4e (samurai, wu Jen, etc) that could be seen as being confused with an official expansion.


Realistically, a fan site shouldn't attract the ire of WotC. But we don't know their attitude beyond what they've said in the Fan Site KitWhich implies they don't want to see anything beyond the scope of the GSL.

 

[S'mon]

Advertising using someone's trademark is very tricky: clicky

From your link:

7. Can I use someone else's trademark in online advertising without the trademark owner's permission?

In certain circumstances, yes. Following are examples of fair use.

Nominative Use Nominative use of a mark occurs when one person uses another’s mark to refer to the mark owner or its goods or services. In the United States, if you are using the mark in truthful, comparative advertising or in a way that truthfully identifies the products or services in a manner that does not mislead or confuse consumers as to the mark owner’s affiliation, sponsorship or endorsement of your products or services and that does not use more of the mark than necessary, generally you may use the mark in online advertising without the mark owner’s permission. Nominative use of another’s mark often occurs in comparative advertising, but it may also occur when a distributor or retailer indicates what goods it offers for sale.

•In Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008), eBay’s use of Tiffany’s mark in an online advertisement constituted protected nominative fair use when new and used Tiffany products were in fact available for sale on eBay’s site.
•Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008) (Trademark law does not prevent one who trades in a branded good from accurately describing it by the branded name so long as confusion is not created by implying an affiliation with the trademark owner. This is true even when the trademark is used in keyword advertising or metatags.).

Descriptive Use/Non-trademark Use Classic fair use occurs when someone uses a term that someone else claims as a mark in a descriptive sense rather than as a trademark. In the United States, it is permissible to use a descriptive term in good faith in its primary, descriptive sense rather than as a trademark. If a word is used in a non-trademark way and it does not cause confusion, such use is permissible.

•Playboy Enterprises Inc. v. Welles, 47 U.S.P.Q.2d 1186 (S.D. Cal.) (the term “Playmate of the Year 1981” was descriptive and fairly used to describe owner of website), aff’d without opinion, 162 F.3d 1169 (9th Cir. 1998)). Later proceedings: Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (affirming summary dismissal of infringement claims).
•Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065-66 (9th Cir. 1999) (non-trademark use of “movie buff” in metatags to refer to movie devotee or motion picture enthusiast is permissible, but trademark use of “MovieBuff” is not).
•Place des Tendances SAS v. Promod SAS (Paris Court of First Instance Oct. 1, 2010) (use of “Place des Styles” as a domain name was not an infringement of the trademark PLACE DES TENDANCES, covering clothing goods, as it solely designated a website to sell clothing goods presented under another trademark).

Supports what I said.

 

[Garthanos]

From your link:

7. Can I use someone else's trademark in online advertising without the trademark owner's permission?

In certain circumstances, yes. Following are examples of fair use.

Nominative Use Nominative use of a mark occurs when one person uses another’s mark to refer to the mark owner or its goods or services. In the United States, if you are using the mark in truthful, comparative advertising or in a way that truthfully identifies the products or services in a manner that does not mislead or confuse consumers as to the mark owner’s affiliation, sponsorship or endorsement of your products or services and that does not use more of the mark than necessary, generally you may use the mark in online advertising without the mark owner’s permission. Nominative use of another’s mark often occurs in comparative advertising, but it may also occur when a distributor or retailer indicates what goods it offers for sale.

•In Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008), eBay’s use of Tiffany’s mark in an online advertisement constituted protected nominative fair use when new and used Tiffany products were in fact available for sale on eBay’s site.
•Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008) (Trademark law does not prevent one who trades in a branded good from accurately describing it by the branded name so long as confusion is not created by implying an affiliation with the trademark owner. This is true even when the trademark is used in keyword advertising or metatags.).

Descriptive Use/Non-trademark Use Classic fair use occurs when someone uses a term that someone else claims as a mark in a descriptive sense rather than as a trademark. In the United States, it is permissible to use a descriptive term in good faith in its primary, descriptive sense rather than as a trademark. If a word is used in a non-trademark way and it does not cause confusion, such use is permissible.

•Playboy Enterprises Inc. v. Welles, 47 U.S.P.Q.2d 1186 (S.D. Cal.) (the term “Playmate of the Year 1981” was descriptive and fairly used to describe owner of website), aff’d without opinion, 162 F.3d 1169 (9th Cir. 1998)). Later proceedings: Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (affirming summary dismissal of infringement claims).
•Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065-66 (9th Cir. 1999) (non-trademark use of “movie buff” in metatags to refer to movie devotee or motion picture enthusiast is permissible, but trademark use of “MovieBuff” is not).
•Place des Tendances SAS v. Promod SAS (Paris Court of First Instance Oct. 1, 2010) (use of “Place des Styles” as a domain name was not an infringement of the trademark PLACE DES TENDANCES, covering clothing goods, as it solely designated a website to sell clothing goods presented under another trademark).

Supports what I said.

Yup just like including the Clause "Compatible with Dungeons and Dragons 4th Edition."

 

[Jester David]

From your link:
...
Supports what I said.

Read closer.
“Nominative Use” applies when actually dealing with the branded content. You’re allowed to say “DUNGEONS & DRAGONS” the trademarked brand if you’re referencing the actual product.
For example, Paizo is allowed to say “DUNGEONS & DRAGONS” when advertising WotC products being sold on their website, and could conceivably use related trademarks such as the logos, book covers, etc.

“Descriptive Use/Non-trademark Use” applies when referring to the words in the brand but not as the brand. You’re allowed to say “dungeons & dragons” when referring to dragons in dungeons. Because you’re using the English words “dungeons & dragons” not the trademarked brand “DUNGEONS & DRAGONS”. This is the big difference between "trademark" and "copyright".
For examples, Paizo could use the term “dungeons & dragons” to advertise their adventure Dragon’s Demand as that features both dragons and dungeons.

There’s two other times you can use a trademarked term that are not mentioned in the linked article.

There’s “comparative use”, which isn’t referenced in that site. You are allowed to say “four out of five cola drinkers prefer Pepsi to Coke”. So long as you can back-up the statement, or else it becomes libelous. This is a particular tricky line: there’s a reason you don’t see political style attack ads between competing brands.
For example, Paizo could say “it’s cheaper to start playing PATHFINDER than DUNGEONS & DRAGONS” because they can point to the PFRD and that the total MSRP of the Beginner Box is less than the total MSRP of the Essentials line.

Lastly, there’s unrelated markets. This is where two companies might share the trademark for a name because there’s no possibility of confusion between the two brands, or the mistaken belief that one is a licenced product of the other brand.
For example, Paizo can use the term “PATHFINDER” despite that being the trademark of Nissan because you are not going to confuse a book and a car.

A fan site is not referring to the brand to describe content it is authorized to sell.
A fan site is not using the terms as a description unrelated to the brand. It is the brand.
A fan site is not comparing the two products. There’s no review, let alone a quantifiable comparison.
A fan site creating content for for an RPG isnot an unrelated market, it’s being aimed at the exact same market as the offical products are being market towards.

Nor is it protected under any other Fair Use/ Fair Dealing laws as it is not a review or a parody.

Yup just like including the Clause "Compatible with Dungeons and Dragons 4th Edition."

As for "compatible with", this is something much larger companies have struggled with. Apple and Microsoft both have detailed guidelines on designing the packaging of compatible products, as they cannot approve anything nor do they want to start dozens of lawsuits over misrepresented products. Because if someone gets upset at Apple because they bought a mouse that they thought was an Apple mouse that was low quality or didn't work then it hurts their company.
WotC has a similar policy, only it's a part of the SRD and OGL/GSL. The restrictions are very clear as they don't want 3PP mistaken for their official products.


A fan site designed around creating new content operates in a grey area, along with fan fiction. If the edition is dead it is not taking away any profits WotC is unlikely to take action, as it's not targeting an audience they're directly courting. It may not be legal, but as D&D enables and encourages imagination 'n' creativity, it’s hard to avoid people posting their own content online, even if those eventually overlap with official content. TSR fought long and hard over this, and that was back when the internet was much smaller. They even often overlook sites that use their IP, such as posting mind flayer statblocks or NPCs.
I posted a number of subraces on a blog focused on PC content, including a race that WotC eventually made their own version of. I doubt WotC will waste the time and resources to shut down the site over my attempt at a tinker gnome, but I have no delusions that they could and would be entirely legally authorized to do so. Because my work was derivative of their product.

But all this changes when the fan site moves from providing supplementary content to replacement content. Which most 4e sites seem to want to do. There are a good dozen attempts to make a “4e Pathfinder”. Which likely crosses the line from “accessory supporting official products” to “product competing with official products”.
We also don't know what WotC's policy is going to be moving forward. Now that they're moving to "support all of D&D" and offering their back catalogue online as PDFs. If they'll ignore people making a 4.5e or if they've view that as a potential threat to sales of 5e and its 4e-esque modules. And not knowing, it's easier to be cautious and not leave yourself open to be shut down.

 

[Garthanos]

WotC has a similar policy, only it's a part of the SRD and OGL/GSL. The restrictions are very clear as they don't want 3PP mistaken for their official products.

I am sure if you sign that GSL they get to make you subject to something beyond normal laws governing it but sorry saying this product is compatible with that product can only be construed as confusing by ignoring the actual statement. As saying X is compatible with Y or usable with Y in fact distinguishes them by identifying both a distinct X and a distinct Y.

It is a comparison with the other product. (comparisons dont have to be superiority claims) and the phrase

"or in a way that truthfully identifies the products or services in a manner that does not mislead or confuse consumers as to the mark owner’s affiliation"

also applies

But all this changes when the fan site moves from providing supplementary content to replacement content.

Entirely legal to make a new game that is intended to replace the old one.. if its diverged sufficiently (that is governed by copyright) as to be a new game of course aside from that one the case I mentioned earlier, the ones I have recently looked may indeed have started looking like or at 4e but branched far enough that they can no longer really even say "compatible with" best they can say is ... "Inspired by the fourth edition of D&D" and that may not attract other 4e fans because their particular divergence may have left the connection those other fans appreciated behind.

Of course I have also seen some sites where their use of trademarks are definitely infringing and that is independent of the nature of the content, so I do agree they need to be much more careful than they are being. I am saying it is utterly possible to not misuse trademark and compare your products functionality with there products. (even if that comparison concludes it provides a similar experience and can utterly replace the other product) that is why they want the license agreements which restrict it more... cause trademark law doesn't cover it.

 

[S'mon]

A fan site designed around creating new content operates in a grey area, along with fan fiction. If the edition is dead it is not taking away any profits WotC is unlikely to take action, as it's not targeting an audience they're directly courting. It may not be legal, but as D&D enables and encourages imagination 'n' creativity, it’s hard to avoid people posting their own content online, even if those eventually overlap with official content. TSR fought long and hard over this, and that was back when the internet was much smaller. They even often overlook sites that use their IP, such as posting mind flayer statblocks or NPCs.
I posted a number of subraces on a blog focused on PC content, including a race that WotC eventually made their own version of. I doubt WotC will waste the time and resources to shut down the site over my attempt at a tinker gnome, but I have no delusions that they could and would be entirely legally authorized to do so. Because my work was derivative of their product.

But all this changes when the fan site moves from providing supplementary content to replacement content. Which most 4e sites seem to want to do. There are a good dozen attempts to make a “4e Pathfinder”. Which likely crosses the line from “accessory supporting official products” to “product competing with official products”.

Now you're mixing copyright with trade mark law, just as you previously confused contract law (OGL, GSL) with IP law. I think you mixed in some Design Rights law in there too. You've also mixed up "What the law is" with "what companies will do and threaten to do", which I deliberately separated out upthread.

I teach it so I'm biased, but I hate seeing the kind of misleading statements you are making.
If you don't understand IP law you should not comment on it IMO.

 

[Jester David]

If you don't understand IP law you should not comment on it IMO.

I know a bit, enough to caution. Because there are few gamers that are IP/ trademark law lawyers (or law professors) willing to offer free advice online and advise people what they can or cannot do when generating content for a website.

I'm likely mangling the law yes, but that's better than just letting people go with their first instinct, which appears to be "what' same trademark?" or "Can't I just do what Paizo is doing?"

 

[Garthanos]

I'm likely mangling the law yes, but that's better than just letting people go with their first instinct, which appears to be "what' same trademark?" or "Can't I just do what Paizo is doing?"

Well I will thank you for making me think about it there are certainly sites which are really falling short with regards to handling trademarks properly and some of them sites I would like to see productive.

 

[Jester David]

Entirely legal to make a new game that is intended to replace the old one.. if its diverged sufficiently (that is governed by copyright) as to be a new game of course aside from that one the case I mentioned earlier, the ones I have recently looked may indeed have started looking like or at 4e but branched far enough that they can no longer really even say "compatible with" best they can say is ... "Inspired by the fourth edition of D&D" and that may not attract other 4e fans because their particular divergence may have left the connection those other fans appreciated behind.

Yes it is. It is possible to turn and manipulate 4e into a completely differs game.
But the line is fine and tricky, and most fans of 4e desire to make a "4.5e" or a "4e retroclone" that, by definition, will be hard pressed not to be a derivative work.

Of course I have also seen some sites where their use of trademarks are definitely infringing and that is independent of the nature of the content, so I do agree they need to be much more careful than they are being. I am saying it is utterly possible to not misuse trademark and compare your products functionality with there products. (even if that comparison concludes it provides a similar experience and can utterly replace the other product) that is why they want the license agreements which restrict it more... cause trademark law doesn't cover it.

The GSL is designed to be a give and take. You sign a license that restricts what you can do in terms of copyright and trademark but also gain access to things like the actual D&D logo, terms, and formatting. Such as power statblocks.

Which lead to a good example. Look at a 4e power. The formatting (colours bar with fluff under then all the mechanics) is distinctly 4e. Which also means it likely qualifies a a "trade dress". So if you format your powers to look like an official power (complete with red Encounter powers and green At-will powers) you could be guilty of trademark infringement. Because you created a product (a power) that could be confused with an official product (one of their powers). Ditto monsters statblocks. There's a reason when Goodman Games released its first 4e adventure the monsters looks different, because it was published before the GSL came into effect.

Now, WotC hasn't come after people making their own powers. And knowing this hasn't stopped me making my own powers. But I know that all could go away the moment someone at WotC changes their policy faster than you can cay "Ema's Character Sheets".