Absolutely Scrabulous
posted by Frank Pasquale
Facebook offers many “apps” online, including games like “Scrabulous,” a spitting image of the word game Scrabble. Hasbro and Mattel have now warned both Facebook and the app’s creators (Rajat and Jayant Agarwalla) that they’re infringing the Scrabble owners’ intellectual property rights. A groundswell of Scrabulous fans are agitating online:
Hasbro, the maker of Scrabble, is suing Scrabulous for being too, well… Scrabble-ish. A shutdown notice was sent two weeks ago, and it’s only a matter of time before Facebook’s 9th most popular application bites the dust. That’s why we need to band together and show those Hasbro suits that we’re [hoppin' mad].
But Scrabulous’s more scrupulous defenders concede the copying here is a tad bit scrofulous. The Agarwallas are now making about 25K per month from the app, and presumably Mattel deserves a cut. But exactly what rights are being infringed?
Games can be patented (see, e.g., the famous Rubik’s cube case), but the underlying process of playing Scrabble has likely long since passed into the public domain. Even the founders of the the “Save Scrabulous” group on Facebook concede that “copyright infringement is obvious,” but is it? As one of my students wrote to me, isn’t the board a bit like the blank forms that courts have been unwilling to extent copyright protection to? And isn’t the arrangement of colored squares on the board wholly functional, an indicator of various scores for certain plays? Perhaps the particular colors of the board itself could be deemed a form of product design trade dress, but I think you could see a translation of the principles of Lotus v. Borland into functionality defenses against trade dress infringement claims.
That still leaves the elephant in the room–the substantial similarity between Scrabulous and the mark Scrabble. But in keeping with the theme of this post (of pushing defenses here to the breaking point)–could Scrabble be generic?
I know that’s doubtful, but I also have a sense that there is no other way that people refer to the “game that involves seven lettered tiles played for points on a board that includes double and triple letter and word scores.” On the other hand, if you asked the “man on the street” if Scrabble is the name of a word game or the name of trademark for a company’s (version of a) word game, it seems like the latter interpretation is at least as likely as the former for someone with an elementary knowledge of the law.
So let’s assume that Mattel would win in court; what are the proper damages? Some bloggers have suggested that as a matter of equity, Mattel owes as much to the Scrabulous app as the app owes Mattel–it’s great advertising. One also has the sense that, had the Agarwallas disclosed the idea of a Scrabble-based Facebook app to Mattel, their corporate legal department may have either turned it down outright or politely declined and then turned to their own programmers to avoid partnering with them. So while I respect the rights of Mattel to “demand a cut” here, I also think that the dilemmas facing innovators like the Agarwallas are real and should lead to some sympathy from the courts.
PS: This is cross-posted from Madisonian, where Bruce Boyden has some good comments.
January 29, 2008 at 10:02 pm
Posted in: Intellectual Property
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Responses (9)
James Grimmelmann - January 29, 2008 at 11:22 pm
The genericide argument is a loser after the 1984 amendments to the Lanham Act, which specifically overrode the ANTI-MONOPOLY case. There, the Ninth Circuit had adopted essentially the argument you give.
anon - January 30, 2008 at 7:07 am
I don’t mean this as an insult necessarily, but this post is why people hate lawyers! I mean, here we have similarities so strong that even the college students, of all people, who love to play the game are willing to recognize it’s infringing, and we’re still looking for a loophole. I feel like there’s an interesting point to be made here about people’s intuitive sense of the law versus the legal construction of it, but it’s kind of early in the morning to actually do that, so I’m just going to throw that out.
Brian Holland - January 30, 2008 at 10:37 am
I am intrigued by anonymous’s comment. Is there a distinction two be drawn between rights and restrictions that “should” or “might” be more intuitive (perhaps because they regulate at some visceral level — maybe criminal or tort, although I haven’t really thought that out entirely) and those rights and restrictions that “should” or “might” be less intuitive? For instance, anonymous makes a legitimate case for intuitive infringement, but that presupposes a certain understanding of the rights created (or recognized, depending upon your point of view — and that is part of the issue) under intellectual property law. I personally do not find the current regime of intellectual property rights “intuitive” in the least. Those rights are, in my opinion, far too expansive with insufficient regard for the public domain. Thus, my intuitive sense of infringement is different as well.
Brian Holland - January 30, 2008 at 10:38 am
I am intrigued by anonymous’s comment. Is there a distinction two be drawn between rights and restrictions that “should” or “might” be more intuitive (perhaps because they regulate at some visceral level — maybe criminal or tort, although I haven’t really thought that out entirely) and those rights and restrictions that “should” or “might” be less intuitive? For instance, anonymous makes a legitimate case for intuitive infringement, but that presupposes a certain understanding of the rights created (or recognized, depending upon your point of view — and that is part of the issue) under intellectual property law. I personally do not find the current regime of intellectual property rights “intuitive” in the least. Those rights are, in my opinion, far too expansive with insufficient regard for the public domain. Thus, my intuitive sense of infringement is different as well.
sls - January 30, 2008 at 12:13 pm
I think “intuitive infringement” might be something of an oxymoron, give how nuanced copyright law is. (Assuming that infringement is defined purely as a violation of copyright law, and not as some moral norm) It’s clear that there’s copying, and that’s probably where the gut reaction of “it’s infringement” comes from.
Also, the general public’s intuition on copyright issues has been so assaulted by propaganda, I’m not willing to concede that some innate sense of right and wrong is actually guiding popular opinion.
But I don’t think that there’s a particularly strong copyright case–there’s all sorts of functional/expressive problems with that–so it looks like a trademark issue to me.
venkat - January 30, 2008 at 6:00 pm
I gotta admit this does make one step back after initially reacting that “the Agarwalla’s must pay!” (partially driven out of jealousy that they so easily put together an app that makes 25K a year).
I wonder how copyright/tm varies across countries and how this may affect the dispute. I don’t know the precise rules, but both tm/copyright have limitations w/respect to extraterritorial application. Maybe this is one possible tweak to the dispute.
At the end of the day I would guess there are a slew of emails/communications where the Agarwallas reference Scrabble (the brand). Enough to tip the dispute factually away from them.
john - January 30, 2008 at 8:32 pm
In my view Lanham, pre- or post-1984, isn’t relevant to a ‘genericise’ argument. And I don’t think anyone was arguing that the word “scrabble” had become genericised (say, from Hasbro failing to protect the mark).
(Noted, that the name ‘Scrabulous,’ in addition to multiple uses of the name ‘Scrabble’ within the site — which have since been sanitized — is in clear infringement of the trademark, with a very high likelihood of confusion.)
However, Lanham is trademark law, and in the general case (a game that played exactly like Scrabble(R), but was named something very different) Hasbro would have a very hard time — given competent defense counsel — convincing a court that the size of grid and arrangement of premium squares were anything they had exclusive rights to, since those are purely functional attributes of a game.
The ‘generic’ trademark question properly before us is: Could a given instantiation of the game made popular as “Scrabble(R)” be confused as a Hasbro product? As compared to another (perhaps theoretical, or ideal) instantiation, for which no such confusion exists?
It is impossible to imagine such an ideal that is still the same game, if one includes the arrangement of squares as part of the trade mark (under trade dress or otherwise). And the courts have repeatedly ruled (and not just in the Ninth Circuit) that game rules, methods, and processes escape both trademark and copyright infringement if clearly understood as functional elements.
This is all my opinion after much study. I am not a lawyer.
A.J. Sutter - January 31, 2008 at 9:47 am
A minor point for this philosophical discussion, but relevant if you’re thinking about defenses in a practical way: apparently Hasbro owns the US and Canada rights, Mattel is ROW. So US IP law reasoning might not be very pertinent in regard to Mattel’s claims.
Save Scrabulous - February 1, 2008 at 12:24 am
Save Scrabulous gear–http://www.cafepress.com/scrabulicious
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