Expansion for Board Game

Dear Rich: I read your post "Copyright and Trademark Issues for Expansion Pack for Game," and I have a related question. Rather than creating an expansion which I am trying to sell or market as a separate game from the original, I have created an expansion for a popular board game which is not separate. I am in contact with the company which owns the game, and they are interested in the full details of my expansion. I cannot find any information on how I should protect my ideas, given that they are an expansion to an existing game rather than a stand-alone game. You're in a bit of a Chinese Finger Trap. There's no way you can exploit your idea with the board game (unless you get permission from the board game owner) and there's no way you can exploit your idea by itself (you need the board game). So, we're glad that the board game owners are interested in seeing your idea. That gives us hope that they want to make a deal with you. But, alas, there's no way to guarantee that everything will proceed equitably.
Copyright protection?  Hopefully, you have something proprietary. But whether you can claim copyright in your contribution depends on how "separable" and protectable your work is from the board game. If copyright exists in the expansion, then you'll have a basis for proceeding against the owners if your creative work is hijacked. (You can seek to register your claim to copyright but would need to disclaim anything that pertains to the existing game.)
Secrecy? Ideally, you would get the game owners to sign a nondisclosure, or evaluation agreement. But many toy and game makers are hesitant to sign such agreements, or if they do sign, they often seek to exclude any ideas you have that are similar to ideas they are developing. Worse, they toss out secrecy agreements and ask you to sign a waiver agreement, waiving any obligations to maintain secrecy. In that case, you have to proceed with your own personal radar and determine whether the potential risk (losing your idea) is worth the potential reward (an acquisition or licensing payment for your idea). In general, case law about submitting ideas indicates that the best you can do to shore up your position when submitting an idea is:

• maintain it with secrecy (due to the vagaries of trade secret law, the idea may qualify as secret),
• don’t submit it until the company actively solicits the idea and it is clear that the arrangement is for compensation, and 
• if possible, as mentioned above, use an evaluation (or option) agreement to maintain secrecy and to demonstrate solicitation.

Worried About Infringing Game Patent

Dear Rich: I am looking into possibly producing and selling a board game of my own design. I have done research into patent law and understand that patent applications are not available to the public for 18 months. So there is a "gap" where a patent may be in the works, but not available to patent searches. My understanding is that if I were to produce a product, my customers could be sued for patent infringement if my game ended up being in violation of some unknown patent. (Either unknown because of the "gap" I mentioned, or just an undetected.) Is this correct? Also, the theoretical unknown patent would likely have to be a method patent, as the types of game bits are not uncommon. As such, wouldn't that make the end user would the one actually infringing? If I pursue this business, is there a way to protect myself and my customers? It's true that an end user can be sued for patent infringement but that's rarely the case with board games. So, regardless of the patent issue, we doubt whether your customers would be in jeopardy.
Published patent applications. You're concerned that an unknown patent application will jettison your game. Keep in mind, you can't be sued for patent infringement until after a patent has issued --- that is, until after it's been officially granted by the USPTO. If you're concerned about recently published patent applications, you can review them at the USPTO's online patent gazette. When you review them, remember a few things:

• just because a patent application is published 18 month after filing does not mean it will be issued, 
• even if the application is issued as a patent, you won't be liable for infringements prior to issuance unless you have been placed on notice, and 
• even if you were placed on notice, you would only be liable for infringements that occur after the notification. In other words, you should have sufficient time to consult an attorney and decide whether to halt manufacture and sale before a lawsuit could be filed. 

In summary, if you do withdraw the game in a timely manner prior to issuance, you will likely avoid liability.
Searching for board games. If you're searching for existing board game patents (not patent applications), this article should help. And if, after reading it, you feel your board game is sufficiently novel and nonobvious, you may wish to consider filing your own utility patent application, design patent application, or provisional patent application.

Copyright and Trademark Issues for Expansion Pack for Game

Dear Rich: I read with interest your post "Do Not Pass Go: How to create non-infringing board games" and I have a related question regarding expanding existing games. I have created an expansion for a popular board game. I do not use any of the original game trademarks in my naming or design, and I don't replicate any of the original game's physical, visual, or textual elements. Can I legally market my game? You may be legally correct in what you're doing -- that is, you're not infringing any copyrights, trademarks, or patents of a famous board game -- but if the board game company perceives your work as chipping away at their potential revenue or trading off their famous trademarks they may sue first and ask questions later. Why is that?
Inside the mind of a board game executive. Perhaps it would help to imagine what happens if you put yourself into the mind of someone at the legal department of a big toy and game company ... for example, Mattel. Fade in on your office. You sit behind your desk, sipping a chai latte and looking at the framed posters of Chatty Cathy, Barbie, Tickle Me Elmo and several Hot Wheels vehicles while you sneak time to work on your screenplay. You quickly switch screens as your boss comes into your office to show you a print-out from a website. It's an expansion pack product for a Mattel board game. Your boss -- pleasant enough in the office, but a tough cookie in licensing negotiations -- says, "Memo Me Elmo" which means you better come up with a good legal theory for going after these guys because after all, this is business, and Mattel wants to earn any and all revenue resulting from the success of its games.
Your memo. You know there are a few legal cases related to these issues and you know that Mattel will have a legitimate claim against the expansion pack maker only if: (1) the game company can demonstrate that consumers are likely to believe that the expansion pack is endorsed by, affiliated with, or commercially connected with the game; (2) the game company can demonstrate that the expansion borrows enough copyrightable elements from the board game such that it is a derivative under copyright law; (3) the expansion pack somehow dilutes or tarnishes the trademarks of the famous board game. You study the advertising for the expansion pack at the website and look for references to your famous game's trademarks and then you buy a copy to examine the expansion pack in detail. A few weeks later, your boss directs you to send out a cease and desist letter. Fade out on legal counsel.
Takeaways.  Even if the law is on your side and your expansion packs may be legitimate products (subscription required), turf-protection by game companies may hinder or slow down your ability to get to market. We hate to stifle your creativity but you'll notice that the case law we cited was between well-heeled businesses able to take each other on. Otherwise, you'll be flipping through Yelp looking for an attorney.