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Friday, August 01, 2008

Thoughts on the Scrabulous Lawsuit, Part I: The Complaint

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.

Scrabulous_board_fr_cpltBoisson'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.

Posted by Bruce Boyden on August 1, 2008 at 02:07 PM in Intellectual Property | Permalink


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The best source I am aware of for old webpages is waybackmachine.org. It is an archive that crawls webpages and stores what it finds in a database arranged by date and site

Posted by: meike | Aug 9, 2018 12:54:37 PM

David, that's a great question, which I confess I hadn't really focused on. The venue provisions in this case basically turn on whether there's personal jurisdiction over the parties. On personal jurisdiction, the law is still in turmoil on website transactions, and I don't off the top of my head know of a 2nd Circuit case that has pronounced a test on the issue. The complaint says merely that "This Court has personal jurisdiction over the defendants because they have committed infringing acts in the State of New York." This may simply refer to the fact that Scrabulous has been played by New York residents. If this were a case of shipping infringing items into the forum, there would obviously be jurisdiction (I tested *my* students on *that* last year). But I'm not sure there's enough of a purposeful connection involved in putting a free game up on Facebook. If Facebook has servers or offices in New York, that might help.

Posted by: Bruce Boyden | Aug 4, 2008 2:06:04 PM

The best source I am aware of for old webpages is waybackmachine.org. It is an archive that crawls webpages and stores what it finds in a database arranged by date and site. Thus one can see how a particular company marketed a particular product on a particular day. The archive does not have every change on every website but it is pretty comprehensive.

Posted by: Jim Green | Aug 3, 2008 7:51:31 AM

Bruce -- great post and I'm looking forward to seeing the article.

I think, as you point out, the game board design is the copyright claim that has a chance at sticking. The rest seems mostly window dressing/creative lawyering. I'm highly dubious that the Southco-type claim has legs, despite some weird precedent about parts numbers.

My explanation for all the claims other than the game board is that they add weight to the trademark and unfair competition claims. I doubt the lawyers think they're going to win on (c) claims w/o a registration or where there has been no infringement of the exclusive rights, but they may be able to use those to paint the defendants as engaged in the misappropriation of their ideas.

Which is a good strategy, imho, as long as the claims are not frivolous. My sense is that this is how many infringement cases work as a practical matter (and Barton Beebe's studies seem to support it) -- the baseline decision about infringement is made at the gut level of the judge or jury and then the analysis falls into place (or factors stampede) to accord with that. So pointing out things that look like "copying," as long as the claims are not frivolous, can help.

Posted by: greglas | Aug 3, 2008 6:51:08 AM

Are you going to look into the propriety of SDNY as the venue for the lawsuit in a future post? I used this as an exam question last May (life imitates law school!) because it is not clear the brothers are amenable to suit in New York State.

Posted by: David Levine | Aug 2, 2008 2:58:36 AM

Great comments! From Dave: "The number values and amount of each letter in the set simply reflect the frequency of their use in English-language words." Ah, but apparently the tileset is not entirely a mechanical construction from prevalence in English. If it was, then under precedents like Southco, Hasbro would be in trouble due to the lack of "creativity". But first, the creator of Scrabble (more about him on Monday!) selected the New York Times as his source to determine letter frequency, and if I understand correctly, he may have done more than simply counting all the letters on the front page (such as all the letters in all the words 9 letters or longer). And second, he apparently decided to arbitrarily reduce the number of "S"s to 4, because he thought otherwise the game would be too easy. Also, there's the two blank tiles.

Michael: That's the $64,000 question -- whether the traditional rule applies to video games. Nimmer thinks it doesn't for exactly the reason you suggest -- they're protectible as audiovisual works. I don't think video games are audiovisual works, which raises the question of whether the rule applies somehow, but I'll talk more about that in Part III, along with the question of whether 102(b) is the source of the traditional rule.

Jonathan: Good point. There's also the Wayback Machine. Both can be quite useful in the situation where a dispute suddenly arises (or, perhaps, your firm is suddenly retained to handle it). But it's a bit of a gamble to rely on either of those if you know in advance there's a decent chance of litigation.

Posted by: Bruce Boyden | Aug 1, 2008 5:55:48 PM

I'm not convinced of the merger concerns (says the former plaintiff's lawyer). After all, they've already re-released the product with different shapes and colors, right? Gameplay could be identical with a totally different look, which is half of "look & feel."

I also freely admit that the structure, sequence and organization copyright would by very thin indeed (how creative is putting tiles on a board). Even so, thin protection can be infringed by an admittedly identical display. The real jujitsu here would be if Hasbro, who is second to the table with the electronic version, were able to copy the gamplay feel of Scrabulous (which is popular) and then claim it as its own.

Posted by: Michael Risch | Aug 1, 2008 4:41:08 PM

After all, the notion that games are not copyrightable stems from the statute - methods and processes are not copyrightable. Even so, the way the board looks as the methods and processes are being executed can be protected.

Doesn't this run into merger problems? If the visual layout of the Scrabble board is necessary to play the game Scrabble, then extending (C) to the board layout effectively gives Hasbro exclusive control over the method/process that is Scrabble itself. Video games don't really raise this concern since they don't consist of a single, static image that determines the way the game is played (save for, possibly, simpler puzzle-like games such as Tetris).

Posted by: Dave | Aug 1, 2008 4:32:15 PM

Interesting post. Query on the basic doctrine: "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."

Is this really true? Many video games are audiovisual works such that the total "look & feel" is infringed even if gameplay leads to different screens under a "structure, sequence & organization" argument.

After all, the notion that games are not copyrightable stems from the statute - methods and processes are not copyrightable. Even so, the way the board looks as the methods and processes are being executed can be protected.

If there is any credence given to look & feel, then is it possible that:
1. Hasbro registers a copyright in the ELECTRONIC game (OK, no fees are available but injunction is good enough)
2. Hasbro then claims look & feel infringement of the audiovisual look & feel
3. To push the envelope, Hasbro argues look & feel infringement of the original game, though this is a hard sell in my book.

Posted by: Michael Risch | Aug 1, 2008 3:48:42 PM

Fantastic post. It may be that Hasbro will win on issue #2, but this seems like the wrong result. Scrabble's assignment of number values to letters, and their choice to include a given number of letter tiles in the set are each far more mechanical than creative. The number values and amount of each letter in the set simply reflect the frequency of their use in English-language words. E is worth only one point and appears on eight (or so) tiles; X is worth eight points and appears on only one tile. There can be some room at the margins for debate about the right combinations, but since the result is largely a product of a fixed fact about our language, this seems to me closer to the alphabetization in Feist, and less like the compilations that reflect some sort of judgment or creativity (car price estimates; phone directories for Chinese speakers).

It also seems that Hasbro's claim seeks to control the idea of assigning particular numbers to letters, and not their unique expression of it. As you point out, is there any actual copying? If the protected fixation is the set itself, then that's certainly not copied by Scrabulous, which only takes the unprotected facts from the protected tiles and uses those facts somewhere in its code. It's a bit disturbing to think that Hasbro's claim really is that any use or mention of their letter/number combinations amounts to infringement. That seems to go well over the line created by the idea/expression dichotomy.

Posted by: Dave | Aug 1, 2008 1:56:48 PM

In addition to your litigation tip, I have found Google in particular helpful because they store back versions of webpages. So, when I was litigating an issue when I discovered the page had been taken down prior to the filing of a claim, I was able to use Google's archive / cache to locate and print the page.

Posted by: Jonathan | Aug 1, 2008 1:52:05 PM

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