TSR TSR (2) Confirms TSR (3)'s Acquisition of Trademark (Updated!)

Jayson Elliot registered the TSR trademark back in 2011 and used it to launch Gygax Magazine along with Ernie and Luke Gygax. The two Gygax's left the company a few years later after Gary Gygax's (co-founder of TSR (1) back in the 1970s) widow, Gail Gygax, forced the closure of Gygax Magazine. Then, earlier this year, TSR (3) swooped in on the TSR trademark, after Jayson Elliot accidentally let it lapse, as TSR (2) confirms:

We have owned the TSR trademark since 2011. Last year, we missed a filing date, and another company registered it, though we are still using it in commerce. While we could win a lawsuit, we frankly don't have the money to litigate. So, we're licensing it back from them.

As a result, there are two companies now using the name TSR. You can tell when it's us because we're the only ones using the new logo.

They're opening a museum in Lake Geneva at the old TSR house, and we wish them success with it, it's important to celebrate the legacy that Gary Gygax created.

Ernie Gygax, formerly of TSR (1) under Gary Gygax, then working with Jayson Elliot as part of TSR (2), is one of the founders of of TSR (3), and confirmed in his (now infamous) interview --

The other TSR is a licensee because [Jayson Elliot] let it lapse. But he had absolutely ... love for the game and the products. There was no reason to say 'oh you've screwed up, oh it's all ours, ha ha ha ha!' Instead, Justin [LaNasa] came to him and said ... we love that you're doing Top Secret things, we have a much broader goal for the whole thing. But there's no reason for you to stop or even have any troubles. Justin said, I'll take care of the paperwork, you just give me $10 a year, and you put out all this love for old school gaming that you can. And we appreciate that you were there to try and pick up things, and you produced Gygax Magazine, for in its time that you're also working on a game that you love to play ... because Top Secret was Jayson's love, as a young man.

TSR (2), still run by Jayson Elliot, publishes Top Secret, and is not connected to TSR (3) other than now having to license it’s own name from them. TSR (3) has also registered the trademark to Star Frontiers, a game owned by and still currently sold by D&D-owner WotC.

In other news the GYGAX trademark appears to have lapsed.

UPDATE! TSR (2) has decided NOT to license its own name from TSR (3):

Update to our earlier tweet - we will NOT be licensing anything from the new company claiming rights to the TSR logos. We are not working with them in any fashion.

 

[Dire Bare]

So let me get this straight.

When Ernie Gygax's ex-business partner, with whom he was happy to build a company called TSR a few years ago, and who has been trading under that name ever since, made a clerical error, rather than point it out to him and say "hey, friend, you'd better re-register your trademark, you missed the filing date", Ernie Gygax and company snatched up the trademark and then made the previous trademark holder licence it from them, while making it appear like they were doing him a favor?

Yup. It was a dick move. Ernie Gygax is a piece of work.

 

[Neonchameleon]

Huh. TSR are putting in trademarks for this stuff. Exhibit 1. Exhibit 2. I'm curious of the status of making a trademark on art you presumably don't own.

 

[Yaarel]

I dont need my heroes to be perfect.

I can both consider Gygax and Arneson my heroes for founding D&D, and at the same time, acknowledge and move forward from any problematics.

 

[MoonSong]

Huh. Did some thinking and found I could not care less about this.

On the contrary, this looks more interesting by the minute. I want to see the fallout.

 

[Sir Brennen]

It's not even that. Ernie didn't sell anyone to anything. His dad lost TSR to Lorraine Williams. More than ten years later it was sold to WotC (and the dragon logo dates to the 90s I think so after his dad had it).

So if my dad "sold" his car that I got to ride in the back seat of, and the new owner gets a newer model of the same car, and they sell one or both cars to someone else, I should still be able to drive all the cars when I want. Got it.

 

[Neonchameleon]

So if my dad "sold" his car that I got to ride in the back seat of, and the new owner gets a newer model of the same car, and they sell one or both cars to someone else, I should still be able to drive all the cars when I want. Got it.

But only once you own the site of the garage.

 

[Ralif Redhammer]

And also "And instead of saying, like a thief and pocketing this, he said to Jeff and I, we have found this treasure. Let's make something of it!"

It's more like a thief pick-pocketing a fellow PC, it would seem.

It’s still a crappy thing to do. Especially considering EG’s metaphor in the other story about “finding it in the garbage”.

 

[Sir Brennen]

On the contrary, this looks more interesting by the minute. I want to see the fallout.

And for other less experienced or potential publishers on the forum, it can serve as an example of how not to do things.

 

[Sacrosanct]

Huh. TSR are putting in trademarks for this stuff. Exhibit 1. Exhibit 2. I'm curious of the status of making a trademark on art you presumably don't own.

IIRC, before a trademark is fully granted, you have to sell something with it, after the initial review is granted. Since this was filed last August, I bet that's what happening. They have been initially approved, but need to sell something with that trademark in order to fulfill the final requirements.

The reason this is a requirement is to keep people from hoarding TMs and never using them. That's the intent anyway.

 

[Abstruse]

This is not a copyright issue. It is a trademark issue. They are not the same.

This is a very important distinction under United States intellectual property law that is getting glossed over in a lot of these discussions.

Copyright is granted upon the creation of a work and requires no "defending". Copyright rights are very broad. You own the copyright for the work in any medium regardless of what medium you created it in. Write a short story and nobody can go and turn it into a movie or song or whatever without your permission. Copyright's purpose is to protect artistic expression so that the creator (or current rights holder to the creation) retains control over it.

Trademark are exactly what they say - a "mark" that is used in "trade" in order to identify a particular product or brand. Trademark rights are very narrowly defined. A trademark must be actively used in commerce for a specific, declared purpose and must be actively defended. If you do not plan to use a trademark in commerce, you can't register it. If you register a trademark for selling a particular thing, you own it only for selling that particular thing. The trademark for the word "Matrix" is registered to multiple companies - to Warner Bros for the title of the film, to Toyota for the name of a car, to L'Oreal for make-up and beauty products, etc. The purpose of a trademark is to prevent consumer confusion when they make a purchase - If you see a car called "Matrix", you are not likely to assume it has anything to do with Keanu Reeves being The One or with eyeliner and blush.

A work can be protected by both copyright and by trademark. If I design a logo for my company, I own the copyright to that artwork. I can then register that logo as a trademark as well, granting me a separate set of intellectual property rights over that logo. If I don't register the trademark or allow the trademark to lapse, I still own the copyright of that image.

This distinction is what will be important in what ends up happening with this mess. Justin LaNasa and Ernie Gygax can register the trademark for "TSR", but that does not give them the copyright to TSR's work nor does it make them the same company founded in 1973 by Gary Gygax and Don Kaye. They also do not have the copyright to the old logos of TSR just because they own the trademark "TSR". The copyright to those logos resides with the current rights-holder, which (unless they're some weirdness going on) would be Wizards of the Coast and/or Hasbro. This is why Wizards of the Coast can continue reprinting the old Basic, 1st, and 2nd Ed Dungeons & Dragons materials with the TSR logo as-is - they own the copyright to that logo even if they've allowed the copyright to lapse.

And if that seems complicated, this is the very basic summary of the differences between the two and it gets a LOT more complicated and confusing from there. This is why there are lawyers who specialize in intellectual property, copyright, and trademark law.