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: The Journal of the Business Law Society

Scrabble vs. Scrabulous

By Roopali Malhotra

Background
On May 24, 2007, Facebook CEO Mark Zuckerberg announced that the privately held social networking site he founded in 2004 would open to third-party developers, transforming itself from a popular website to a platform on which other businesses can operate. [1]  Nearly one year later, ?more than 14,000 applications from third-party developers are live on Facebook, allowing users to do everything from flirt to browse for books.? [2]

?What makes Facebook attractive as a platform for businesses is obvious, says Kendall Whitehouse, senior director of IT for Wharton.? [3]  "It brings in this huge audience from the get-go and so you have a built-in infrastructure [for online interactions], so you get the network effect in spades." [4]

Jayant and Rajat Agarwalla are two entrepreneurs whose application became a sensation on Facebook. The brothers, based out of Kolkata, India, first created Scrabulous.com for playing an online version of the word game Scrabble in 2006. [5]  The website attracted about 3,000 regular players. [6]  After an American user suggested the brothers launch a Facebook version of the game, they spent 10 days creating the now-familiar Scrabulous application and then launched it in July of 2007. [7]  As of late January 2008, more than a half-million Facebook users play Scrabulous daily, with over two million users having added the application to their Facebook profiles. [8]

The Agarwalla brothers, however, had no legal agreement or contract with Hasbro or Mattel for the development or distribution of their application.  In mid-January 2008, Facebook and the Agarwallas received a request from both Hasbro and Mattel to remove the Scrabulous add-on. [9]  Ownership of the Scrabble trademark is split between the two; Hasbro owns rights to the game in the US and Canada while Mattel has rights everywhere else in the world. [10]  Futhermore, two game companies, RealNetworks of Seattle and Electronic Arts of Redwood City, California, say they already signed deals with Hasbro to create online versions of the company?s games. [11] Electronic Arts is currently developing Hasbro-branded games, such as Scrabble, Monopoly, Trivial Pursuit, Risk, Operation, for cellphones, gaming consoles and websites. [12]

Copyright Infringement
Copyright laws ?do not protect the actual "play of the game," viz., the rules of a game.  A game, as such, is not protected by the copyright laws. What is protected is a particular form of a game, and the protection increases as the work in question moves away from a generalized form toward a particularized expression.? [13]

?It is said that a game is not copyrightable, but this general proposition is subject to qualification. It is true that no copyright can be obtained in the system or manner of playing a game or in engaging any other sporting or like activity. However, some limited copyright protection is nevertheless available in connection with games. It would seem that a relatively minimal artistic expression, if original, would render copyrightable labels for a game, as well as the pattern or design of game boards and playing cards as pictorial or graphic works. Certain game boards may be copyrightable as ?maps?. Moreover, the wording of instructions for the playing of a game is itself copyrightable so as to prevent a literal or closely paraphrased copying. Such copyright would not, however, permit a monopoly in the method of play itself, as distinguished from the form of instructions for such play. It has been held that mechanical and structural similarity between plaintiff's and defendant's games will not constitute infringement absent similarity of artwork.? [14]

Thus the idea behind the game of Scrabble cannot be protected under current copyright law, but the physical Scrabble board itself and its design may be.  If Hasbro and Mattel have copyrighted the design of the Scrabble board, the question then becomes whether or not the Scrabulous board infringed on this protected design.

?To prevail on a claim of copyright infringement, a plaintiff must show both ownership of a valid copyright and that there was copying of constituent elements of the work that are original.? [15]  Since there is seldom direct evidence of copying, copyright infringement is usually established by proof of ?access? to the allegedly infringed work and at least ?substantial similarity? between the two works. [16] Moreover, at least some cases indicate that a showing of access may be dispensed with where the copyrighted and accused works are not merely ?substantially similar? but ?strikingly similar?.  [17]

The Agarwalla brothers have never denied the influence of Scrabble on Scrabulous, which would certainly seem to work against them in the event of a legitimate copyright suit.  ?Our family has been playing the game for 50 years now,? Jayant Agarwalla said, who received a set when the game first came out in India. His mother encouraged him and his brother, Rajat, to play as a learning tool, often with a dictionary by the board. [18]  In the same interview Jayant Agarwalla said he and his brother did not create Scrabulous to make money ? they "just wanted to play Scrabble on their computers, and their favorite (unauthorized) site had started charging.? [19]  Scrabulous, it is noted, ?has a board that looks just like Scrabble, and the same number of letter tiles with the same point values.? [20]

However, perhaps the fact that the Agarwallas? version of Scrabble is online, offering unique features separate from those of the traditional, physical board game could be enough to set it apart from the scope (if any) of the original?s copyright protections and define it as a ?derivative work?.  A case determining whether an online version of a classic board game falls into this category has yet to be decided, but a derivative work is defined as one based upon one or more preexisting works, in a form in which a work may be recast, transformed, or adapted.  [21]  If an online application could be defined in this manner, it could even acquire copyright protection of its own, provided that the original aspects of the derivative work: (1) were more than trivial, and (2) reflected the degree to which it relied on preexisting material and not affect the scope of any copyright protection in that preexisting material. [22]

Recent Developments
Recognizing the enormous number of potential players, and potential profit, Scrabble could lose if Scrabulous were to shut down altogether, Hasbro and Mattel have recently changed their strategy and have both said ?they were hoping for a solution that would not force them to shut down the game.? [23]  However with Scrabulous taking in $300,000 a year from advertisements, a ten-to-twenty times revenue multiple would make Scrabulous worth $3 million to $6 million. [24]  Currently the Agarwalla brothers are asking for an amount many times that, and the figure Hasbro and Mattel are willing to pay remains to be seen. [25]

[1] David Kirkpatrick, Exclusive: Facebook's new face, Fortune, May 25, 2007, http://money.cnn.com/2007/05/24/technology/fastforward_facebook.fortune/index.html.
[2] Scrabulous and the New Social Operating System: How Facebook Gave Birth to an Industry, Knowledge@Wharton, Jan. 23, 2008, http://knowledge.wharton.upenn.edu/
[3] See supra note 2
[4] See supra note 2 
[5] The Social, http://www.news.com/8301-13577_3-9852054-36.html (Jan. 16, 2008 12:59 PM PST).
[6] See supra note 2
[7] See supra note 2
[8] See supra note 2
[9] Facebook asked to pull Scrabulous, Jan. 16, 2008, http://news.bbc.co.uk/1/hi/technology/7191264.stm
[10] See supra note 9
[11] Heather Timmons, Online Scrabble Craze Leaves Game Sellers at Loss for Words, N.Y. Times, March 2, 2008, available at http://www.nytimes.com/2008/03/02/business/02game.html.
[12] David Silverberg, EA and Hasbro Ink Video Game Deal, Feb. 11, 2008, http://www.digitaljournal.com/article/250163/EA_and_Hasbro_Ink_Video_Game_Deal.
[13] 2 John Gladstone Mills III, et al., Patent Law Fundamentals §6:15 (2d ed. 2008).
[14] Milligan v. Worldwide Tupperware, Inc., 972 F.Supp. 158, 162 (W.D.N.Y. 1997). 
[15] 18 Am. Jur. 2d Copyright and Literary Property § 225 (2008).
[16] See supra note 15
[17] See supra note 15
[18] See supra note 11
[19] See supra note 11
[20] See supra note 11
[21] 18 Am. Jur. 2d Copyright and Literary Property § 40 (2008).
[22] 18 Am. Jur. 2d Copyright and Literary Property § 41 (2008).
[23] DealBook, http://dealbook.blogs.nytimes.com/2008/03/04/scrabulous-founders-look-to-score-big-report-says/ (Mar. 4, 2008, 7:52 AM EST)
[24] See supra note 23
[25] See supra note 23

Full post as published by The Journal of the Business Law Society on March 12, 2008 (boomark / email).