In Forgotten Lawsuit, TSR Sued Wizards of the Coast

In 1996, TSR, the company that birthed Dungeons & Dragons, was in trouble. TSR was millions of dollars in debt to Random House. Budgets were so tight that employees were being told that they had to produce products with literally no money. In December, right before Christmas, dozens of employees would be laid off. (That night, fired employee Steve Miller was accidentally set on fire at a party at Monte Cook’s house in a sort of disturbing omen of what was to come for the company.) But at Gen Con 1996, which opened on August 8th in Milwaukee, Wisconsin, TSR saw something produced by Renton, Washington upstarts and Magic: The Gathering wunderkinds Wizards of the Coast that got their attention, such that one day later, on August 9th, 1996, TSR sued Wizards of the Coast, along with Acclaim Entertainment, for $50,000 in federal court.

Despite all those problems, what did they see at Gen Con that put TSR in such a state that they practically ran to court to sue them? According to the lawsuit:

“The defendants [Wizards and Acclaim] have created a fantasy computer game product known as the PLANESWALKER WAR which has been promoted at the current GEN CON CONVENTION which is now taking place in Milwaukee, Wisconsin.”

TSR saw that Wizards and video game makers-Acclaim were producing a Magic: The Gathering video game named The Planeswalker War. TSR said that this product stepped on their trademarks in a number of different ways, all involving their Planescape campaign setting. First, TSR said the use of the word “planeswalker” was infringing on TSR’s trademarks. The lawsuit states:

“The defendants are aware of TSR’s PLANESCAPE products and the distinctive design and symbols thereof, and of the PLANEWALKER’s Handbook, and have requested TSR to send TSR’s publications to at least one representative of the defendants and TSR has sent such publications.”

In other words, the name of the video game was too close to that of a Planescape supplement written by Monte Cook.

In addition, TSR claimed that the trade dress of the product was also reminiscent of Planescape, and suggested that a former TSR employee may be to blame:

“The Defendants have utilized the distinctive fonts, characteristics, trade dress, and trademarks of TSR in connection with the Defendants’ PLANESWALKER product. Upon information and belief, at least one ex-employee of TSR, who had knowledge of TSR’s PLANESCAPE products, mark, trade dress, and distinctive marks, has authored or created portions of the Defendants’ PLANESWALKER products. Upon information and belief, the use of these marks, design, font and trade dress is likely to cause the public to believe that the Defendants’ product is from, sponsored by, or affiliated with TSR and its PLANESCAPE and PLANEWALKER’S products.”

Therefore, TSR filed suit to “halt ongoing and intentional trademark infringement, federal false designation, unfair competition, fraudulent representations, and unfair business practices” in this matter. Oh, and TSR wanted damages to the tune of $50,000.

The timing of the lawsuit again needs mention. Someone at TSR saw material advertising The Planeswalker War at Gen Con, probably on August 7th or 8th. By the end of the workday on the 9th, this suit was filed in federal court. How many decisions at TSR does that involve? Was the shot called by CEO Lorraine Williams? Did legal need to stay up late and hurry to the courthouse from Lake Geneva, a good hour away from downtown Milwaukee, to get this done by end of business on a Friday? Or was composing a suit on trademark infringement just another day at TSR? Seems unlikely, as there were only two other trademark infringement lawsuits brought by TSR that were filed in the Eastern District of Wisconsin, one against Sega for zero dollars, the other against a group called the Krypt Keepers for $100,000.

How was the lawsuit received at Wizards of the Coast?

Peter Adkison was CEO of Wizards of the Coast in 1996. He said, “I don’t have anything more than the vaguest recollection of this.”

Lisa Stevens, the first fulltime employee hired by Wizards and current CEO of Paizo Publishing said, “This is news to me. Don’t remember ever even hearing about it while at WotC which means it never made it up to any serious level. I would suggest reaching out to Brian Lewis, who was the in-house counsel for WotC back then…”

So I did.

Brian Lewis, who was general counsel at Wizards during that time didn’t recall the details of the suit either. He said, “to the extent there was a suit, it was not much of a blip on our radar at Wizards.”

He went on to say, “Keep in mind that no one ever even registered ‘Planeswalker’ as a trademark, so this would have been a very weak lawsuit and no one would have invested much money in it,” and, “I doubt anyone at Wizards would have been concerned.”

And Lewis is completely right. TSR was suing over trademark infringement of a property they had not trademarked.

The only person I found with a clear recollection of this lawsuit was Jeff Gomez, a producer working for Acclaim, the suit’s co-defendant. He was working on The Planeswalker War video game, which he said was going to be a strategy game akin to Risk. At some point in production, he said, “We were informed that it would be best for us to come up with an alternate name” for The Planeswalker War due to the conflict with TSR. The trade dress of the product was also altered.

On September 5th, 1996, TSR stated in a letter to the court, “TSR first drafted a proposed settlement agreement and forwarded it to Wizards and Acclaim’s attorneys.” By March 5th, 1997, TSR wrote in a letter to the court that all parties had, “reached an agreement to resolve the dispute.” On April 9th, 1997, the suit was dismissed.

Planescape2.JPG


One day later, Wizards of the Coast announced they were buying the distressed TSR.

The impression left by this lawsuit is that of a sort of death-jerk. TSR, seeing what they saw as an infringement on their trademark, and at a convention that they owned and ran, conceived and filed this lawsuit, getting it filed before the convention was even over. Was it a volley? A blow? An attempt at pushing down a competitor? But the sum demanded was, in the grand scheme of things, so small! Numerous TSR alumni have told me that Lorraine Williams had no love for Wizards. Was spite a motivation?

If it was an attack, with 20 years of hindsight, it is unremembered the Wizards folk. As General Counsel Brian Lewis said, “Honestly, we were more focused on developing a coherent video game strategy. Contextually around that time, keep in mind that we were trying to figure out how to create liquidity for shareholders, what to do with this Pokemon thing, how to print enough Magic without getting drowned in inventory, and all those amazing growth issues.”

The lawsuit is a portal into the mindset and practices of TSR management at the end of the Lorraine Williams era, but in effect, the lawsuit must be seen as the bite of a fly upon a giant.

If you want to hear more, here's my seminar "Why TSR Failed" from Gen Con 2019. You can hear more of me on my podcast, Plot Points.
 

Comments

EthanSental

Adventurer
As a naive mid 20s consumer in the mid 90s, I thoroughly enjoyed products TSR created and sold, as more behind the scenes stories come out about upper MGT from 83-95, man what a big stinking pile to have running the company.....:(
 
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Jay Verkuilen

Grand Master of Artificial Flowers
As a naive mid 20s consumer in the mid 90s, I thoroughly enjoyed products TSR put created an sold, as more behind the scenes stories come out about upper MGT from 83-95, man what a big stinking pile to have running the company.....:(
TSR of the early to mid '90s was generating some of the absolute best material for D&D ever produced, but the company itself was rotten.
 
It sounds like a perfectly legitimate point - that reasonable people should have been capable of resolving without paying huge sums of money to lawyers...
 

prosfilaes

Adventurer
Not all trademarks are registered, but this would have been a hard case. But this really is stupid stuff; you start with a polite request to cut it out; if you insist on starting with a legalistic approach, start with a C&D. Why start with all of the cost of a lawsuit when they probably could have got a name change with a quick request?
 

Birmy

Explorer
As a naive mid 20s consumer in the mid 90s, I thoroughly enjoyed products TSR put created an sold, as more behind the scenes stories come out about upper MGT from 83-95, man what a big stinking pile to have running the company.....:(
I was in the same boat, but I was a teenager skipping lunch to use my parents' lunch money on games (and comic books)! There were so many books (and boxed sets!) that sounded like they'd be awesome, I'd sit there poring over the TSR (and White Wolf) catalogs agonizing over which ones I could afford and might actually use. In retrospect, it's surprising they lasted as long as they did.
 

Jay Verkuilen

Grand Master of Artificial Flowers
Not all trademarks are registered, but this would have been a hard case. But this really is stupid stuff; you start with a polite request to cut it out; if you insist on starting with a legalistic approach, start with a C&D. Why start with all of the cost of a lawsuit when they probably could have got a name change with a quick request?
TSR at the time was known for being really litigious. I recall a lawyer on the D&D Usenet group digging out some of their cases that were available on Lexis Nexus. It was quite evident they were frequent flyers in the Wisconsin court system and that the judges were really sick of them.
 

Stormonu

Hero
Yeah, between White Wolf and MtG, TSR was getting it's head handed to it. The company had become spiteful and had gone from being creative to rushing out trash product (trust me, I know, I bought a lot of it afterwards and completely regret about 90% of it). This was at best a last gasp to stem the hemorrhaging, and I'm glad to see it failed.
 

Umbran

Mod Squad
Staff member
There's a reason they were known as T$R or "They Sue Regularly"....
TSR at the time was known for being really litigious.
"Or was composing a suit on trademark infringement just another day at TSR? Seems unlikely, as there were only two other trademark infringement lawsuits brought by TSR that were filed in the Eastern District of Wisconsin, one against Sega for zero dollars..."

I mean, think what you want, of course. But this information seems to stand in direct contradiction with your assertion.
 

prosfilaes

Adventurer
TSR at the time was known for being really litigious. I recall a lawyer on the D&D Usenet group digging out some of their cases that were available on Lexis Nexus. It was quite evident they were frequent flyers in the Wisconsin court system and that the judges were really sick of them.
"Or was composing a suit on trademark infringement just another day at TSR? Seems unlikely, as there were only two other trademark infringement lawsuits brought by TSR that were filed in the Eastern District of Wisconsin, one against Sega for zero dollars..."

I mean, think what you want, of course. But this information seems to stand in direct contradiction with your assertion.
You cut his post to remove his factual claim. They're not directly contradictory. I wonder how meaningful the second claim is; Gary Gygax said, as per the Dangerous Journeys lawsuit, "there is available somewhere online a copy of the original TSR motion put before the court in Peoria, Illinois." That is, searching in the Eastern District of Wisconsin may be missing a lot. It's also limited to trademarks, which Jay Verkuilen's statement isn't. And to the extent they are contradictory, I don't see any real reason to trust one over the other.
 

Jay Verkuilen

Grand Master of Artificial Flowers
"Or was composing a suit on trademark infringement just another day at TSR? Seems unlikely, as there were only two other trademark infringement lawsuits brought by TSR that were filed in the Eastern District of Wisconsin, one against Sega for zero dollars..."

I mean, think what you want, of course. But this information seems to stand in direct contradiction with your assertion.
TSR was notorious for threatening legal action at the time. For instance, there was a lot of fan-made material at that point. Much of it was hosted on university-owned servers (which was very common at the time across the entire web then) and so when they decided to stomp on it, universities pulled everything to avoid any litigation risk. The same thing was happening in many other areas of fandom, such as lyrics or guitar tab archives, so TSR was hardly unique.

This stirred up a lot of negative publicity and was, eventually, followed by a retrenchment when they figured out that they'd really stepped in it. It was a classic example of corporate tone deafness. To their credit, they did back off and eventually hired Sean K. Reynolds, who was a prolific Usenet poster and budding RPG author, to try to mend fences. This largely worked, but TSR itself went under not too long afterwards and got moved to Seattle after the WotC buyout. I believe this was one of the reasons the OGL was developed, which lays out exactly what is and is not open content.

The owners also seemed to be engaged in a lot of legal action against each other at different points, most notably when Gygax got forced out of the company and, previously, when they screwed Dave Arneson out of his share (and lost, and had to pay him out and put a note in Monster Manual II). The court cases that were pulled were from Lexis Nexis and were posted publicly. They were clearly transcripts, although I suspect that most of them would have been in state court. If someone wanted to forge them... I suppose.

It was going on in the mid '90s and the posts should be archived on Usenet, although it would be a bit of a search to turn them up. It's possible I have misremembered some things, but I think based on poking around in various blogs and such that I just searched it's not too far off.

Here's Sean K. Reynolds' blog post talking about this time. I had forgotten Rob Repp. Also see the extensively researched book by Shannon Appelcine, p. 106, if you want to cut to the chase scene. And the judgment that was posted from Westlaw (not Lexis Nexis... oops) all those years ago, which was the case TSR lost when they tried to screw Arneson out of his royalties.
 
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Jay Verkuilen

Grand Master of Artificial Flowers
You cut his post to remove his factual claim. They're not directly contradictory. I wonder how meaningful the second claim is; Gary Gygax said, as per the Dangerous Journeys lawsuit, "there is available somewhere online a copy of the original TSR motion put before the court in Peoria, Illinois."
It would be weird to have been in Peoria, though I suppose it's possible. Lake Geneva is in Wisconsin and Peoria is in Illinois. It's probably four hours' drive away and in a different state, whereas Milwaukee is about an hour from Lake Geneva and Chicago is an hour and a half.

I elaborated my recall of the rather litigious nature of TSR at the time in a different post. I don't think it would be too hard to see what was going on at the time by searching Usenet archives. Now that's not to say Usenet wouldn't have unfounded rumors and hyperbole on it. Anyone who recalls Usenet would know it never lacked for that.

That said, TSR most definitely did send a whole lot of trademark infringement letters to places that were hosting fan-made D&D content (e.g., character sheets, adventures), and they did it in a way that created a pretty substantial backlash. This would have been mid '90s.
 

Jay Verkuilen

Grand Master of Artificial Flowers
You cut his post to remove his factual claim. They're not directly contradictory. <...> It's also limited to trademarks, which Jay Verkuilen's statement isn't. And to the extent they are contradictory, I don't see any real reason to trust one over the other.
Thanks for not arguing in bad faith. As can be seen from my other posts, I dug up a bunch of evidence which more or less said my memory was correct, a few trivial details aside (e.g., Westlaw versus Lexis Nexis).
 

AriochQ

Adventurer
It would be weird to have been in Peoria, though I suppose it's possible. Lake Geneva is in Wisconsin and Peoria is in Illinois. It's probably four hours' drive away and in a different state, whereas Milwaukee is about an hour from Lake Geneva and Chicago is an hour and a half.

I elaborated my recall of the rather litigious nature of TSR at the time in a different post. I don't think it would be too hard to see what was going on at the time by searching Usenet archives. Now that's not to say Usenet wouldn't have unfounded rumors and hyperbole on it. Anyone who recalls Usenet would know it never lacked for that.

That said, TSR most definitely did send a whole lot of trademark infringement letters to places that were hosting fan-made D&D content (e.g., character sheets, adventures), and they did it in a way that created a pretty substantial backlash. This would have been mid '90s.
I would guess it had something to do with GDW being based in Normal, Illinois. EGG was developing the product with GDW. Peoria would be the appropriate court. Likely it was more advantageous for TSR to file there.
 

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