Is chess set design protection needed?

Hey all

I'm designing a chess set. I'm getting to the point that I'd like to start sharing what I have, with the intention of getting review feedback on what I have. However, the area of design protection is something i dont know enough about.

Are there any chess designers, manufactures, or experts here that can advise how I should proceed. I've spent a lot of time developing what I consider to be an amazing set, I have aspiration to manufacture and sell them as a side hassle. Is copyright enough to protect you, is it best to register the design. What are the norms in this industry, and what do most companies do to protect their design?

Advice would be much appreciated

You should contact https://www.chess.com/member/shelbylohrman. He is an equipment manufacturer and his stories about the difficulties he experienced in trying to resurrect the Player's Choice chess set after the molds were destroyed would be very instructional to you.

https://www.chess.com/forum/view/chess-equipment/ultimate-chess-set

I'd suggest you consult with a copyright lawyer. As I understand it, you will immediately own a copyright to the design once it's published. You will need to defend the copyright or you risk losing it.

You may also want to name your set and trademark it so others cannot use the name.

Would you consider the design original or is it derived from other designs? Are you permitted to make derivative designs?

the design follows USCF FIDE and Staunton requirements. So it does have some similarities. However standards aside, the design is noticeably unique.
I understand that depending on the country there are 3 progressively better levels of protection.
- copy right
- registered copyright
- design registration
I’m really wondering what level is usually used or required in the chess industry.

Experience has shown us that chess set manufacturers in India will copy any design they think will sell well, without any regard for copyright or design protection whatsoever. And it's more or less impossible to stop them doing that. So be warned.

FYI... it may be difficult to stop someone from manufacturing copyright infringing or counterfeit products, however, there are many options to prevent the sale of copyright infringing or counterfeit products.

You can take action directly with other third parties involved in the hosting or selling of copyrighted or counterfeit products. This doesn't always require legal action against the manufacturer and may be easier than you think. This requires the copyright owner to be diligent in reporting violations and defending their copyrights.

1. Marketplaces like Etsy, Amazon and others prohibit the selling of copyright infringing or counterfeit products. Check their policies to report violations. They'll be pretty responsive to disable infringing items if you can demonstrate how the products violate their policies. The market place may disable the sellers account until the infringing product is removed or they'll disable the specific item.
2. Web hosting providers typically prohibit illegal activity like hosting copyright infringing or counterfeit products. Check their policies to report violations. The hosting provider is most likely to disable an entire website until the violation is resolved. You need to convince the hosting provider how the website violates their policies. Show infringing products. Defend your copyright.
3. Payment providers and merchant accounts like Paypal, Stripe, Square, Zelle, Venmo and others will prohibit selling of copyright infringing or counterfeit products. The payment provider is most likely to disable all payments until the violation is resolved. You need to convince the payment provider how the merchant is violating their policies. Show infringing products. Defend your copyright.
4. Banks will prohibit payments that involve selling of copyrighted or counterfeit products. Check their policies to report violations. The bank is likely going to disable the sellers account until the violation is removed. You need to convince the bank how the seller violates their policies. Show infringing products. Defend your copyright.

These third-parties can take action without a court order. Some may be quicker to respond than others because of their own liability in making an infringing product available (especially if any of these providers are in the US) or when learning a user violates their policies. If the copyright owner is persistent and convincing enough these third parties will likely take action to prevent the violations.

It may be difficult to prevent a manufacturer from selling direct to customers in-person for cash. It may also be difficult for the copyright owner to seek damages.

Copyright owners can even report posts on chess.com that that direct users to a website for purchasing copyright infringing products.

Here is the thing, you may be able to stop people from selling products but it is very hard to get manufacturers to not "Grey market" your items.

This is what usually happens when you get products manufactured in China:

1) You pay for the molds and have the factory hold them for you.

2) When you need product, the manufacturing facility makes the items for you and ships them off. If you are not careful, they will do another run of your product and sell it to "other markets". This is how others get your patented products. They usually buy them not knowing it is protected and get screwed over by the factories they buy from if you enforce the patent.

This happened with one product called "Chess Opening playing cards". Thy were playing cards with openings on them. Cool cheap product for everyone to buy and re-sell to the end customers. One of the main manufactures of chess equipment overseas saw how well they were selling and had someone copy the product and sold it all over the world. They must have sold 50K sets before the patent was enforced. There was a company in Canada with a national and international patent on the product and this company out of China knew they could not enforce the patent over there. All people in the USA that I knew could not get a refund and had to "eat" the product. We just ended up giving all the ones we bought away.

People need to be careful on the factories they deal with overseas. This is a VERY common practice. What we do is we deal with product sourcers. Our guy has people all over the world that actually go to the factories and sit there while they make the product. When the run is done they take the molds and specs with them to stop any problems.

One of the major manufacturers of chess products will even go as far as contacting anyone you do custom work for and offer to sell direct, cutting you out.

I have been blessed with an amazing group of manufacturers. It has taken me 20+ years to get them.

Heck, I am going to be doing patent work on the new clock I am bringing out. Will keep all of you informed.

thanks,

Shelby Lohrman

The Chess Gorilla

🥖

Thanks for the comment @Lotus960 is this an area you have experience in? And are there precautions you recommend

Hi thanks for summarising that. it's reassuring to know that a reasonable amount of protection is gained from copyright alone, without needing to pay for design registration.

Thanks for sharing your experience @ShelbyLohrman. It sounds like you dont currently take out design patents, and the majority of your protections is from controlling the suppliers. I will look into using product sources rather than dealing direct with the supplier. That does seem like a good measure to take.

You mentioned that "Chess Opening playing cards" were protected by a patent. Have you heard of companies being as successful protecting their designs through copyright alone?

And good luck with the chess clock. I look forward to seeing that when you bring it out. Definitely update us on any insights you get from patenting that. Thanks

I'm not a lawyer so can't provide legal advice. It's possible a design registration might help strengthen a copyright claim.

What makes a design copyrightable? Is it the weight? Is it the dimensions? Is it the material? Is it the colors? Is it the name (this may be further protected with a trademark)? Is it the function? Is it the shape or style? How would you describe the style of chess pieces that are unique to your set and deserving of protection?

Here is the problem, design patents only do you good if they are enforceable. Since most manufacturing happens in China where it is the "Wild West" of patent warfare (read: impossible to enforce), what good are they? Yes, you can chase everyone around and get them to stop selling the patented product...but 99.99% of those people were sold those goods not knowing the products were patented.

If you are looking at product sources instead of directly with the factories, you will still have the same problem while paying a higher price for your goods.

Yes, the patent will help, but you will still need the right factory to deal with. If you or the people producing the products for you do not do the due dilligence, you are screwed anyways.

Just my opinions, but I have dealt with a TON of factories overseas.

Shelby Lohrman

Chess Gorilla

A conundrum to be sure. I imagine the cost of both getting and then enforcing patents on a global stage would be prohibitive in the context of the potential revenue of such a product. Perhaps you can sell the design to a major player (in games manufacture) and share the profits - using their corporate strength to enforce patents? Or perhaps - go niche - control the manufacture and sale through local artisans - producing only a few sets with a high margin and sale price.
I forgot where I saw it but I remember seeing some high end ‘Go’ stones that had some form of digital signature embedded in the stone … maybe your pieces could have some form of mark that guarantees authenticity? Just ideas from a non-legal and probably mis-placed mind as I sip my morning coffee.

PS - here’s the numbering system:

Stone numbering

and just a beautiful website related to Go

https://www.kurokigoishi.co.jp/goworks/

@ShelbyLohrman You mention that you use product sources, and also that they dont prevent grey market copies, and they cost more. I might be missing something, but what benefits caused you to use a product sourcer instead of going direct?

thanks @Powderdigit thats an interesting idea

I know my product sourcer will hold the mold, only bring it to the factory when they are ready to produce, count the pieces as they are produced, and then they take the mold with them after the run is complete.

This way if you have a product sourcer you can trust, it stops the "Grey Market" where the factory overproduces and ships the extras out the back door.

Thanks

Shelby