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Monday, August 04, 2008

Thoughts on the Scrabulous Lawsuit, Part II: The Mystery of Alfred Mosher Butts

In Part I of this series, I reviewed the Hasbro complaint against RJ Softwares and the Agarwalla brothers, the creators of Scrabulous, and noted that the strongest copyright claim appears to be for infringement of Scrabble's copyrighted game board. Indeed, given the Boisson v. Banian Ltd. case from the Second Circuit, Hasbro would have a pretty strong case, except for just one thing: Alfred Mosher Butts.

First, a quick link wrap-up, as developments in this case continue: The Washington Post interviewed several IP lawyers who said roughly the same thing the commenters on my first post said: "look and feel" will win the day for Hasbro. Meanwhile, the Agarwalla brothers -- the creators of Scrabulous -- have launched a revised Facebook application, "WordScraper," that features a different board. Pictures and analysis at IPTAblog. What's interesting about the new board, however, is that players can customize it -- including, if they choose, to resemble the traditional Scrabble board. That brings up shades of the City of Heroes lawsuit, as well as the old K.C. Munchkin case (see the critique of that case by Thomas Hemnes).

But on to the main event, the mystery of who created Scrabble. Paragraph 9 of the Hasbro complaint contains this rather intriguing set of allegations:

The origins of the SCRABBLE® crossword game may be traced to the depths of the Great Depression, when in 1931 an out-of-work architect in Poughkeepsie, New York, named Alfred Mosher Butts invented a game he called "Lexico." Over the next seventeen years Butts tinkered with the design and play of Lexico, hand-crafting over 200 games. An entrepreneur and purchaser of one of Butts' early hand-made games named James Brunot struck a manufacturing deal with Butts in 1948. Brunot changed the game's name to "SCRABBLE" and filed copyright and trademark registrations for the game in December 1948.

That's an odd paragraph to put in the complaint, so I assume Hasbro's lawyers are following the advice to draw out negative testimony on direct, so to speak. There's a couple of problems here. One is that, if you look at the 1948 copyright registration for the game board, Alfred Mosher Butts isn't mentioned; the sole author is listed as "James Brunot." Histories of Scrabble, however, including one from NPR, make clear that Brunot made only minor changes to the game, chief among them giving it the name "Scrabble." The NPR report states that Brunot also "added the 50-point rule for playing all seven tiles at once, made the center square a double word score, [and] changed the colors of the board"--possibly enough to make him the author of a derivative work. The underlying work, however, including the game board, was authored by Butts several years before it was registered. That alone is unlikely to invalidate the copyright registration; Nimmer's discussion of this issue indicates that courts have been pretty forgiving of errors in registrations, even errors as to the author of a work. Nimmer, § 7.20[B]. The one exception is when "the claimant wilfully misstates or fails to state a fact that, if known, might have caused the Copyright Office to reject the application."

It's possible something like that occurred here; certainly the Agarwallas' lawyers should look into it. Scrabble was first published under the 1909 Act, and the 1909 Act, unlike the modern Copyright Act, required copyright owners to meet certain formalities. They had to place a copyright notice on all published works, e.g. "© 1956 Selchow & Richter." Failure to place a proper notice on a published work could lead to invalidation of the copyright. 1909 Act § 10.

With these facts in mind, the attribution of sole authorship to James Brunot in the 1948 registrations begins to look a little suspicious. It hides the fact that Butts was the actual author of the game; and it therefore hides the fact that Butts created several versions of the game in the 17 years prior to the registration. Those earlier versions need to be examined to determine if there was publication without notice.

Crisscross_2 And in fact it appears that Butts did sell at least a few hand-made copies of the Scrabble gameboard under the title "Criss-Cross Words" in the 1940s. (He also sold sets of tiles in the 1930s under the name "Lexico," but Lexico lacked a board.) Selling means publishing. NPR produced a report on the creation of Scrabble as part of its "Present at the Creation" series six years ago; the web version of the story contains a picture of the "Criss-Cross Words" board, at right. The board was constructed from blueprints pasted onto a checkerboard. NPR states that the board in the image, from "circa the mid-1940s, is the version Butts sold on his own. The layout and tile distribution are almost identical to today's game." Looking at the image, there's a clear Patent Pending notice at the bottom of the board; there's also something in the lower left-hand corner. It's hard to tell whether that's a copyright notice or not, but if it isn't, and the notice didn't appear anywhere else, Hasbro has problems.

There was an exception in the 1909 Act for publications where the notice was omitted "by accident or mistake ... from a particular copy or copies." 1909 Act § 21. That exception would probably not be much help here, however, because it only applies "[w]here the copyright proprietor has sought to comply with the provisions of this title with respect to notice." Id. The exception does not apply where all of the published copies were without notice, even if the number of published copies was small. Nimmer § 7.13[A][2]. So if all of the Criss-Cross Words boards lacked the copyright notice, Hasbro has a formalities problem.

There was also a requirement in the 1909 Act that a published work be registered with the Copyright Office "promptly," § 14, but that requirement was largely toothless after the Supreme Court's decision in Washingtonian Publishing Co. v. Pearson, 306 U.S. 30 (1939). So the delay in registering the Scrabble game board would not likely "have caused the Copyright Office to reject the application," even if the Scrabble board was published several years before it was registered. But the notice requirement has more bite. Even though the notice requirement was modified in the 1976 Act and eliminated as a condition for copyright in 1989, neither change brought back works that had already fallen into the public domain due to improper notice. So if the Scrabble game board was never properly copyrighted to begin with, there is nothing Hasbro can do now to change that.

Tomorrow: This series concludes with the question I began with: What's the purpose of the blackletter rule that games are not copyrightable? What does that mean for the copyright protection of games, including video games?

Posted by Bruce Boyden on August 4, 2008 at 12:43 PM in Intellectual Property | Permalink

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