Legal Commentary

So Hasbro finally pulled the trigger on the Scrabulous lawsuit that, no doubt, their lawyers (Patterson Belknap) have been working on for months. The New York Times Bits Blog has coverage, Mike Madison has an interesting high-level view, and IPTAblog has the complaint. This case is in a sweet spot for me in terms of research and teaching interests: games, copyright, and litigation. So I'm going to celebrate with a 3-post series on the Scrabulous case.

Copyright claims involving games are fascinating because of the often-stated but rarely explained blackletter rule: "Games are not copyrightable." Why is that the rule, and how does Hasbro get around it? The second question turns out to be much easier to answer than the first, so I?m going to tackle them in reverse order. In this post I?ll break down Hasbro?s copyright claim into its constituent bits, offering predictions about the likely and doctrinally most coherent outcomes. (Those are not the same things.) Hasbro also has trademark claims, which may be somewhat stronger, but I?ll mostly leave those to others. In Part II (Monday), I'll delve into a minor mystery, flagged in the complaint, that involves the copyright registrations for the game. In Part III (Tuesday), I?ll return to the blackletter rule and consider the justification for it, a subject I find enormously interesting and which is the basis for a paper I?ve been working on for some time.

Today's bottom line: The copyright in Scrabble is surprisingly weak, although if I had to bet, I would bet on Hasbro to win.

First off, it?s worth noting that Hasbro may have already achieved its goal for this litigation. Contemporaneously with its complaint, Hasbro sent a Section 512 takedown letter to Facebook; Scrabulous then pulled its Facebook application in North America. So, without even moving for a preliminary injunction, Scrabulous is off Facebook and Hasbro's licensed alternative is up in its place. Sure, Scrabulous is still available at scrabulous.com, but my guess is that Scrabulous was dependent on integration with Facebook for a large amount of its traffic.

On to the copyright claim. Although the rule is that games are not copyrightable, Nimmer § 2.18[H][3], many of their constituent elements are. So, a specific description of the rules of a game is copyrightable; so is a game board, and game pieces. Hasbro claims copyright--actually, multiple copyrights--in the elements of Scrabble. Those elements, as described in the complaint, are:

1. The rules of Scrabble.
2. The set of 100 letter tiles, with its specific distribution of letters and their assigned point-values.
3. The Official Scrabble Players Dictionary.
4. The game board, with its distinctive pattern of colored squares.
5. The play of the game.

1. The rules of Scrabble. The Scrabble rules, as printed on the inside of the game box, have been copyrighted since 1948. While game rules per se are not copyrightable, under the doctrine that games are not copyrightable, a specific description of the rules can be. The makers of Scrabulous could, if they wanted, put the rules of Scrabble in their own words, taking care not to copy any of Hasbro's rules verbatim. To the extent duplication is unavoidable, the merger doctrine would bar enforcement of Hasbro's copyright. (This was the exact issue in Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967).) But the problem for Hasbro's copyright claim here is even more basic than merger issues; the problem is that the Scrabulous site does not reproduce or display any copy of the rules at all. Instead, Scrabulous apparently linked at one time to the Scrabble official rules as contained on Hasbro's own website. But that's hardly infringing, any more than it would be infringing for Scrabulous to say, "Go look up the Scrabble rules at your local library."

The Scrabulous link (assuming it existed) might be contributory infringement, if Scrabulous linked to an infringing copy of the rules and encouraged players to go look at that (thereby causing their browsers to make a further infringing copy). But that's not the case here. Nor is there anything in Hasbro's website terms and conditions that bars use of its rules for playing other games. Even if there was, and even if the terms were judged an enforceable contract (iffy at best), a breach would not constitute copyright infringement.

Bottom line: This claim seems like a nonstarter.

By the way, LITIGATION TIP if you are assigned to build a case against a website: the Hasbro complaint contains a number of allegations about the past appearance of Scrabulous "on information and belief." I have to believe Hasbro and its outside counsel have been watching Scrabulous closely for months now. It seems that someone forgot to save copies of the site! The problem is that websites change their appearance, particularly if litigation is in the air. You should not only print out all of the pages you are interested in every time you visit, but also save electronic copies of the HTML code as well  if things like links and metatags will be at issue.

2. The set of 100 letter tiles. This seems a little more promising. Hasbro can claim a compilation copyright in the set of 100 letter tiles that comes with every game, including their assigned point values. Courts have been thrown off balance by compilation copyright claims; they are unable to tell what the copyrightable expression is in a compilation, and thus have fallen back on finding anything "creative" in the compilation to be protected. But creativity is not a good basis for determining copyrightability; after all, patents require creativity, but you're not supposed to be able to get patent and copyright protection for the same features of the same thing. Nevertheless, some courts have held creatively derived product numbers in a parts catalog to be protected, as well as codes in dental billing form and a set of five digits used in software. The Second Circuit has held a set of nine pitching statistics and prices for used cars protected. The set of 100 letter tiles will almost certainly get some protection.

However, Hasbro faces a significant difficulty here. I don't see any evidence that a compilation copyright in the letter tiles has ever been registered. The two 1948 copyrights attached to the complaint, when they were renewed in 1976, were identified as copyrights in the rules sheet and the game board. If copyright in the tiles wasn't registered, they can't be the basis of a suit.

Even if that difficulty can be overcome, the protection for compilations is thin--it protects against exact duplicates and close copies, but not anything further afield. Does Scrabulous copy the set of 100 letter tiles? Scrabulous presumably limits the number of, say, "S" tiles that can be given out during a game to 4, just like Scrabble; and it further must contain a listing somewhere in the software of how much each letter is worth. So Scrabulous contains the same data as a Scrabble tileset, albeit in a different format and with a different arrangement.

Doctrinally speaking, I'm not sure that's enough. However, the Second Circuit is the court that held that it was obvious that a Seinfeld trivia book infringes on the Seinfeld television programs. If there's money being made off of someone else's copyright in the Second Circuit, don't bet against the copyright holder. Prediction: assuming Hasbro can show the tiles are part of its registered copyrights, it will win on this issue.

3. The Official Scrabble Players Dictionary. I'm not sure I get this claim. Hasbro states in its complaint that:

Hasbro and its officially licensed and supervised National SCRABBLE® Association developed and published the National SCRABBLE® Association Official Tournament and Club Word List ("OWL") for tournament play and The Official SCRABBLE® Players Dictionary ("OSPD") for home play.

According to Hasbro, the OSPD "is not just a compendium of English words, and choices reflecting original judgments were made." For example, proper names, geographic designations, and vulgar and offensive words were removed. To the extent these excisions can be characterized as "creative," then under the (bad) caselaw I referred to above, there's a valid compilation copyright in the OSPD.

There's a couple of massive problems with the infringement claim here. The first is that Scrabulous hasn't actually reproduced the OSPD; they've reproduced the OWL, which is a list of words rather than a dictionary and which is used in tournament play. According to the complaint, the OWL "is based on the OSPD but includes the vulgar and offensive words removed from later editions of the OSPD...." The registration attached to the complaint, however, is for the OSPD, not the OWL. Possibly the OWL is a derivative work of the OSPD, but since compilation copyrights are thin, any departure from the copyrighted work lessens the chances of a successful infringement claim considerably.

But there's a bigger problem. Hasbro doesn't own the copyright in the OSPD! At least, not according to the complaint and to the registration. Rather, the National Scrabble Association is the author of the OSPD. Sure, the complaint says they were "officially licensed" to do so. I presume that means they had a trademark license. No copyright license from Hasbro to the NSA would give Hasbro ownership of a work authored by the NSA, however, unless the NSA wrote the OSPD as a work for hire or assigned the copyright -- and there's nothing either in the complaint or the registration that says that.

Bottom line: Hasbro can't sue Scrabulous over a copyright it doesn't own.

4. The Scrabble game board. Hasbro's strongest copyright claim is that Scrabulous copied their copyrighted game board, which is a copyrightable graphic work. The Second Circuit has particularly favorable caselaw on this issue; in Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001), a panel of the Second Circuit found a quilt with letters of the alphabet on it in colored blocks, arranged into 6 rows of five blocks each (plus 4 icons at the end), was infringing on another quilt of 6 rows of 5 blocks each, where some of the letters and/or backgrounds were the same color or shape (but not the 4 icons). Obviously the alphabet itself is not copyrightable, and a quilt of alphabet letters is not infringed by all other alphabet quilts, but the court found that the "total concept and feel" of the coloring and arrangement of these two particular quilts was close enough that they were infringing as a matter of law (the case never got to the jury).

That's strong stuff, and the two game boards at issue here are fairly close. Both originally featured red, pink, blue, and light blue squares in the same pattern, labeled "Double Word Score" (Scrabble) (Figure 1) or "2x word" (Scrabulous) (Figure 2) and the like, with a pink square with a five-pointed star in the middle. Scrabulous's board is now more stylized, with no labels; but the "X" pattern of squares and the colors are roughly similar.

Boisson's granting of summary judgement on appeal to the plaintiff in that case was a mistake, but overturning Boisson hardly helps the Scrabulous team -- the case would then just go to the jury, and I doubt ordinary jurors are going to be able to weed out the unprotectible elements of the Scrabble game board any better than the Second Circuit can.

Bottom line: Hasbro a pretty strong case here, at least until the Second Circuit reviews Boisson en banc, except for one little mystery, which I'll take up in Monday's post.

5. The play of the game. I assume the attorneys at Patterson Belknap are no dopes. So why do they make such a big deal out of the fact that Scrabulous has no rules for how to play the game on the Scrabulous website, but instead links to the official Scrabble rules? Possibly that fact may assist their trademark claims by evidencing likelihood of confusion as to source or authorization. But the complaint also notes that rules are copyrighted, attaches the registration certificate, and goes into some detail as to what the rules of Scrabble are. I think all that is there, not to support a claim that the rules have been infringed, but to support a claim that Scrabble and Scrabulous are the same game. That is, when you play Scrabulous, you're playing Scrabble. One CNET reporter found this argument convincing, concluding that the link to the official rules indicates that "Scrabulous really does mirror Scrabble letter-for-letter." Even the defendants have apparently conceded that "It's not really different." (¶ 34.)

In other words, the "total concept and feel" of the two games is the same. The greatest similarity is not between the boards per se, or the rules, or the tiles considered in isolation; it's the board being used with the tiles and the rules to play a game. Scrabulous in play is instantly recognizable as Scrabble. But if the blackletter rule that "games are not copyrightable" means anything, it means that this similarity--the two games produce the same gaming experience--is not cognizable under copyright law. I've suggested a number of areas where the Second Circuit could stand to revisit its precedents--is this one of them? Why not protect games as works of authorship? I'll consider that in Part III.

Until the doctrine is reconsidered, Hasbro should theoretically lose on any broad-based claim that the two games are the same. However, I doubt the judges considering this case, and the jury if it ever makes it that far, will be able to avoid being swayed by the overall similarities. Bottom line: Even if Scrabulous is right on the law, winning will be difficult.