Scrabble vs. Scrabulous: A lesson in copyright law

Tuesday's demise of the Scrabulous application on Facebook led some of our readers to question the legal claim Hasbro has on Scrabble, the official game. The toy company last week filed a copyright and trademark infringement lawsuit against the developers of Scrabulous, an online word game that played very much like Scrabble.

Invented in 1938 by a New York architect named Alfred Mosher Butts, Scrabble counts millions of players worldwide. Hasbro estimates that more than 100 million copies of the board game have been sold in 29 languages and 100 countries. Hasbro, through its subsidiary Milton Bradley, bought the North American rights to the game in 1987.

To answer our readers' questions on Hasbro's copyright and trademark case, we turned to Ian Ballon, an intellectual property and Internet attorney with Greenberg Traurig. What follows is an abridged interview with Ballon, who also wrote the four-volume treatise, "E-Commerce & Internet Law."

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Q: Many people think that because Scrabble is 70 years old, it should be in the public domain. Why isn't it?
A: A copyright claim lasts for the life of the author, plus 70 years.

Q: Butts passed away in 1993, which would extend the copyright in this case to the year 2063.

A: Yes, but it’s really important to remember that the plaintiff is also asserting a trademark claim, and that lasts as long as you exploit it. Marks like Coca-Cola, Mercedes -- those can continue indefinitely as long as it remains in use. The law prevents third parties from making both literal use of a trademark as well as uses that are confusingly similar. The term “Scrabulous” is obviously intended to evoke the name Scrabble. Plainly, the people who created the game were trying to evoke the Scrabble mark.

Q: What’s the policy argument for having copyrights in the first place?
A: Th term of protection is what allows authors, composers and other creators to successfully exploit their works. If material immediately came into the public domain, then there would be no financial incentive to write a song, film a movie or undertake similar creative ventures. The reality is that all of the great authors, composers and artists wouldn’t be able to make a living. The public benefits by encouraging the arts. In return, artists and creators are compensated. If you took that away, you would have a much smaller body of creative works.

Q: So why create an expiration date?
A: It’s a balance that the framers of the Constitution had to make. They wanted to create financial incentives for artists and creators. But they also wanted to foster free speech. The quid pro quo is that after the period expires, a work comes into the public domain.

Q: Why 70 years?
A: That was fixed by an international treaty so that U.S. authors, performers and creators have the same right as people in other countries. The term of protection used to be shorter.

Q: What if the creators of Scrabulous were to change the name to “XYZ Game” and tweak the board and point system for their application. Would that make it legally permissible?
A: People are always free to create their own original games. But if they copy the creative expression of a third party, or they try to mimic the logos or trademarks for a famous brand, they will typically be enjoined. Intellectual property law protects against copying and unfair competition. But people are always allowed to engage in fair competition which would require them to create their own original game. The law requires a minimal level of “original and creative expression” to be entitled to copyright protection.

-- Alex Pham

Image courtesy of Electronic Arts

Comments

[fp]

Mr. Ballon seems to have skirted around the most major questions:

1) For Scrabble to have protection under US copyright law, it would need to be a an original, fixed expression. Typically games DON'T enjoy this protection, since they aren't "expressing" anything- copyright would only extend to eg. the packaging or nonfunctional design of the pieces; which don't seem to be at issue here. So what is the actual basis for a copyright claim? Which part of Scrabulous violates a Hasbro copyright?

2) What is the policy basis for a copyright term extending beyond the death of the author? Do we really believe that artists won't create unless they feel their estates can be compensated beyond their deaths? Would Mr. Ballon have written his treatise if he felt he could only capitalize on it until he died? Isn't Hasbro- who didn't invent Scrabble in the first place- really holding culture hostage; rather than building upon it?

3) Isn't trademark being used here as a bludgeon to limit competition? Hasbro wasn't properly exploiting the Facebook market and sued when a competitor built market share. Is Hasbro going to argue that the game in its entirety, and the experience of playing it are somehow trademarked beyond the name? It seems like that could open the door to claiming trademark on all sorts of experiences, allowing companies a host of new protections. Is there precedent for that?

[Alison]

But say the venture wasn't for profit and was just a vehicle for allowing people to connect via a shared pasttime?

[Katie]

"The reality is that all of the great authors, composers and artists wouldn’t be able to make a living. The public benefits by encouraging the arts. In return, artists and creators are compensated. If you took that away, you would have a much smaller body of creative works."

While I agree that artists should be duly paid for their work, I disagree with you opinion that we would have a smaller body of creative works without copyright. Look at the huge volumes and pieces we have from the times before copyright. Some of our greatest American writers had hardly any financial incentive to write.

[Katie]

It's me again. I could be wrong, but I don't think copyright laws are anywhere in the Constitution specifically and I know for a fact they aren't in the part of the Constitution constructed by the original framers.

[Ryan]

I thought that there was an question about whether there was a live copyright for Scrabble, as its creation predates the modern time standards for copyright... but I'm sure they sorted that out before filing a complaint (I haven't read it yet).

You can't protect the rules of a game, but the presentation of the board and pieces could be copyrighted or possibly become a trademark (less likely). The name is obviously a live and strong trademark.

The name Scrabulous is likely to be found infringing of trademark because of the "Scrabul" invoking "Scrabble" impressions to the consumer. But, if they change the appearance of the board and pieces, and renamed it to something more unique (perhaps to the Agarwallas' first name for this game, Bingobinge), it would actually be a very difficult case for Hasbro.

The Agarwallas do have a fair argument though that certain elements of the board and pieces are necessary in order for player's to execute the (unprotectable) rules of the game, and the Court could determine that the layout of the board and the points per alphabet piece are NOT protected by intellectual property law. However, even now, there would be damages on the table for the time Scrabulous has been operating.

What Hasbro should have done is bought the darn thing with its millions of installed users, took Scrabulous' very popular interface and slowly phased it over to the Scrabble-brand.

[Craig Tenney]

Life plus 70 applies to U. S. copyright in a work published on or after January
1, 1978, is my understanding. Duration of U.S. copyright is up to 95 years for a
work published (from January 1, 1923) through December 31, 1977. Trademark
does seem open ended if it continues to be used.
Craig Tenney, Brooklyn, NY

[Jeff]

The point is that the makers of Scrabble are currently advertising, marketing, packaging, and otherwise using their owned trademark. For someone else to capitalize on that effort by making a game that looks and sounds like the Scrabble trademark owners property is not legal. You can't make a soda called Pupsi, with a puppie on it and a swirly can that looks like Pepsi and expect to profit from it. The creators of Scrabulous knew that they were copying Scrabble and just figured they would somehow get away with it.

Of course after they enticed half a million users to play, Hasbro should have just bought the game, code, etc outright. But perhaps they did make an offer and the Scrabulous creators thought it insufficient.

[anonymous]

Yeah right.

You'd think in modern times where the pace of progress, marketing and distribution is supposed to be so much faster that copyright and patent terms would be getting shorter and shorter.

Instead they are getting longer and longer.

If you're a game maker/song writer/artist and you need a 70/95 year monopoly to make decent money from your work, perhaps you should get a different job and the world would be better for it.

In modern times I think 14 years would be more than long enough. 7 years would put greater pressure on people to keep making something new and better.

Don't you think this is better than letting a few monopolists to milk the same old cow for 95 years?

[Dan]

To Katie: Copyright is addressed in Article 1, Section 8, Clause 8 of the US Constitution: [Congress has the power] "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

To all: According to the US Copyright office (at http://www.copyright.gov/fls/fl108.html) "The idea for a game is not protected by copyright. The same is true of the name or title given to the game and of the method or methods for playing it."
and
"Some material prepared in connection with a game may be subject to copyright if it contains a sufficient amount of literary or pictorial expression. For example, the text matter describing the rules of the game, or the pictorial matter appearing on the gameboard or container, may be registrable."

So, the rules could be copyrighted, as could any other written material involved in Hasbro's game. Probably the coloring and such could also be copyrighted, but they don't really have a copyright on the game itself.

I think this is almost entirely a trademark case. Scrabble is the name of a crossword board game. On a box of the game, they always refer to it as such, indicating it is a Scrabble Brand game. I think clever lawyering could show that scrabble has become a generic term for that type of board game. You can't fully describe the game now without calling it a scrabble game. I hope the makers of Scrabulous have good lawyers who can, and do, stand up to Hasbro's attempt at monopolizing the market for a 70+ year old crossword (or generic scrabble-type) game.

If this case goes into an actual court, rather than settling, I think it's going to be one of those great trademark cases that law students will read in casebooks. All I really want is to play more Scrabulous on Facebook.

[Chris]

Katie's statement that copyright protection does not exist in the constitution is incorrect. Article I, Section 8, Clause 8 empowers Congress "... to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

cf http://en.wikipedia.org/wiki/Copyright_Clause

[Jeremy]

This is just a terrible article. It doesn't deliver anything it promises in terms of actually clarifying any of the real issues at play in this latest Facebook drama.

[rj]

Does this really cover the software version though? Seems to me that a game created so long ago and far before the concept of "software" even existed can't still be covered.

[Kevin]

Katie, Copyright is in the Constitution (Article 1, Section 8, Clause 8), but the purpose of this so-called "Copyright and Patent Clause" is in the words of the framers, "To promote the Progress of Science and useful Arts". It seems that patent and copyright law are being used increasingly by large corporations to stifle innovation and creativity. Of course it benefits society to encourage (including financial incentives) artistic expression and technical innovation. But I don't believe that artists and other creative people are primarily motivated by money. Many people turn down higher-paying jobs to do what they love.

[Mike]

Katie, here is the section of the Constitution that serves as the justification for intellectual property (including copyrights) in the US:

Article I, Section 8 of the US Constitution (1)

"The Congress shall have power...

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;"

(1) http://en.wikisource.org/wiki/Constitution_of_the_United_States_of_America

[William Buchanan]

As long as Facebook, was not making money off of the "game", what is Hasbro's stance? Are they saying that if the game couldn't be played online, that the players would go out and buy Scrabble and then make a long distance phone call to some anonymous person to play. They are saying don't play Scrabble. Ok, I won't.
This is when law and business collide. A better prospective would be, lets get everyone playing our games online. No matter who runs the games; heck, it is even better if other companies run the services because that would be less money for Hasbro to dish out. A certain percentage of those people, "Will go out and buy the game to play at home."
See one business model sells games, the other business model is saying don't play our game or any game that is like our game. And by the way, it is a "game", Who is Hasbro to tell us not to play. Who invented Football, Baseball, Go Fish or any of the devices used in those "games"? Are they getting paid every time a kid plays.

[William Buchanan]

Football was invented around 1876 by a man by the name of Walter Camp. So using the death plus 70 rule, was Mr. Camp or his heirs been getting paid by the people playing football? I think that I owe him some money. Where do I send my check?

[Dan Tillmanns]

A noted case was the Pierce-Arrow cars. Around WWI, they moved the headlights out onto the front fenders and trade marked this. No other company could have the headlights away from the center until the Pierce-Arrow company went broke in 1938.

[Scott Egel]

Katie,

Article I, Section 8, Clause 8 of the United States Constitution states, and I quote:

[The Congress shall have Power…] "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

In other words, copyright is in the original U.S. Constitution.

[Justin]

While some may argue that copyrights help protect intellectual property and provide a means for one to financially support the continuation of their creative endeavors, thereby giving a larger "body of creative works," this is not so. Instead, it degrades creativity to a profession and not a passion. Now, people come up with works for the money it entails, and someone who has a passion for the area can no longer improve on that creation and benefit the public further, because the work is "protected." Additionally, if the financial incentive to create is removed, only the people who enjoy it will do so, increasing the quality of works.

[Ryan, again]

Dan: you note that "the rules could be copyrighted," but it should be clarified that copyright would only protect the specific, actual way the rules are explained/written out on paper, and not the mechanical rules for playing the game known as Scrabble.

Theoretically, rules for games *could* have fallen under patent, but precedent decided against this. Scrabble itself was denied a patent back when it was created.

Justin: alas, this is part of the great conflict underlying intellectual property. But it is a fallacy to say, "if the financial incentive to create is removed, only the people who enjoy it will do so, increasing the quality of works," because you have NOT shown that people who only do works for enjoyment and not for financial incentive produce better or higher quality works than those meant to earn money.

[emad]

FYI, scabulous is back as wordscraper
http://www.new.facebook.com/apps/application.php?id=2521910901
http://mashable.com/2008/07/30/scrabulous-returns-as-wordscraper/

[Danimal]

I thought, and mistake me if I'm wrong, isn't copyright till 120 years after creation or seventy after death years? To Justin: quality of work doesn't depend on pay. A real artist does what a real artist does. If an artist decided he or she wanted to make commercially assecible art then that is part of their process/goal/ Just because you don't like it doesn't mean it's not art. Perfect example is the Teenage Jesus and the Jerks. They were a band that pretty much set out to make horribly grating, worst music you could create. When I first heard it I hated it. But after getting to know their ethos, I had to admit they nailed it. Now when I think about it Teenage Jesus and the Freaks is one of the "best" bands I can think of, because it actually takes a great deal of skill to try to write a song to sound absolutely horrible. Now likewise you may not like a guy like Kenny G who always tries to play it "safe" but if that's what he's going for then it's at least some quality art. I mean, I hate Thomas Kincaid (sp?) paintings, cause he's a bit of a hack, but that said, he's a great painter. Copyrights and patents exist so corporations can make more money, fact. Most music artists, up until pretty recently would sign away their catalog to get a better contract, so mostly it's the big labels that are the ones that actually own the copyrights and not the bands, for songwriting copyrights anyway. And labels also own the sound recording copyright, almost exclusively. The companies and the RIAA dress it up as artistic support, but the reality is that the current copyright system benefits the major labels more than anyone else. Fact, only major RIAA affliated labels have the means of contracting with someone like Media Defender to find copyright infractions. Fact, most bands don't even make money by selling music. Most bands make money by selling their merchandise like hats, and shirts. Fact, copyright law is on a never ending spiral of lengthening time until something enters public domain, because large corporate interests like the RIAA affliated labels and Disney have essentially dipped deep into their pockets to bribe US legislators to lengthen that time period.
I am an artist. I animate, and play music. I've been in a few bands, written some stories, etc. I hate copyrights. I mean, other than corruption, give me one good reason why artists and labels etc. are allowed to profit for nearly a century after the author of said work died? Does the carpenter profit off a chair everytime it's sold for more than a century after he created a chair? Does a cook profit for seventy years after his death for a soup he made? Does a cops family get benefits for seventy years after death? Why the heck should artists get this benefit when now one else does . . . It's because big money controls the items that are copyrighted.

[RJ]

How about "parodies"?

http://en.wikipedia.org/wiki/Parody

They seem permissible under the law.

[Wilhelm Reuch]

The view that works of art appeared before copyright existed is really stretching the truth. In those days there was no mass distribution so it was really not a problem. As travelling trubadours became a more organized business it later became necessary to protect composers etc.

I have yet to see where copyright laws in any greater way affect creativity negatively. Yes - a few nerds are trying to abuse copyright to protect their weak business models (based on other creators content) and have some use for their latest tech toy. But such work is not creativity.

[Bruce]

to all those who say that the copyright laws are stifling innovation, go look up the word in a dictionary.

merely writing a software package based on the concepts, rules and layout of a board game is not innovative or creative.
Innovative would be coming up with a new idea that hasn't been done before. Not that I have one.

I think what we see as stifled innovation is two-fold in nature, firstly with the way modern education and entertainment drives the intellectual evolution of humanity, we are not encouraging the creative thought processes that are needed and we are slowly stagnating.

Secondly, finding a gap in the realm of existing ideas and then finding a solution to that gap is becoming harder as there are fewer gaps now than there were in the past.