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

[ackack]

RJ Re:Software. A software version of Scrabble is merely a derivative of the original boardgame. As such, it is protected by copyright.

Dan: I think you would call it a crossword puzzle type board game. I think you would be hard pressed to show it was a generic term. Trying to think of some of the 'great' trademark cases. Most seemed pretty dull to me. The Dupont case and its many factors I spose should be mentioned. Too bad my cases are uncitable. Damn TTAB!

If you folks don't like the the length of protection provided under the copyright act blame your congressman. They'be extended the length of protection on a few occassions. The last time around companies like Disney lobbied pretty hard to the extension so that Mickey Mouse, Snow White, etc would not lose protection.

[Ryan]

I object to the constant use of the term "protection" when discussing copyright and trademark. It's a biased and one-sided word. It's only "protection" from the point of view of the publisher or owner of the mark. For everyone else, it is better described as "copyright restriction" or "obstruction".

Instead of saying "the term of protection" which encourages the reader to identify with the very few who benefit from copyright, why not say "the term of restriction" which more accurately describes the effect that copyright has on most people?

[Craig Tenney]

The Stanford University Copyright Renewal Database shows several
renewals of copyright in written rules when Scrabble is entered
in the Simple Search box. The copyrights commence in 1949.
Craig Tenney
Brooklyn, New York

[Jamie]

Interesting. For a copyright established in 1938 the maximum copyright was 56 years (28 years initially, renewable for an additional 28 years). The life of the author plus 70 years only applies to copyrights issued for a work created after Jan. 1, 1978.

An intellectual property attorney should address this. Even if the 1949 (Stanford University Copyright Renewal Database) date is used, it would have expired in 2005. There must be additional copyrights in play.

The trademark claim is stronger. The law prevents third parties from making both literal use of a trademark as well as uses that are confusingly similar. The game, board rules and play would have to be trademarked as well and that is not likely.

Your thoughts?

[Katie]

Ok, ok. I missed that connection when I was studying the Constitution last year. So how does Scrabble fall under a useful art or science?

[reamon]

"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."

While I'm sure individuals pushed for this, my guess is that corporations have had more success and influence. Disney is supposedly a huge factor in extending the life of copyright, to protect is revenue streams that were generated, ironically, by retelling stories that were in the public domain. I'm not saying that Disney didn't add value (their films speak for themselves) but without the freebies of the Brothers Grimm and others, Disney would have a very different catalog of titles. Now they are trying to protect their creations from the same public domain-ess upon which they built an empire. Dripping with irony.