In 2005, two brothers in Kolkata, India launched Scrabulous, an online implementation of the board game Scrabble. With a few thousand regular players, it wasn’t about to replace World of Warcraft in the annals of online gaming. But in 2007, they took the suggestion of a regular player and spent just ten days writing a version that would run on Facebook’s newly open development platform. In retrospect, that move was a stroke of genius. Not because Facebook has over 62 million users, but because those users are embedded in networks of friends. And Scrabble—or Scrabulous, or any game—is more fun with friends. In a matter of months, 2.3 million Facebook users had installed Scrabulous.

That huge surge in traffic pushed Scrabulous above the radar, and the makers of Scrabble took notice. And they told their lawyers. From Forbes.com:

In mid-January, Pawtucket, Rhode Island-based Hasbro, which holds the Scrabble trademark in the U.S. and Canada, asked Facebook to remove Scrabulous because of copyright infringement. “We have spent many years building the Scrabble brand, and what Scrabulous is doing is piracy,” reads an official Hasbro statement. “We … hope to find an amicable solution. If we cannot come to one quickly, we will be forced to close down the illegal online game.” (Emphasis added)

As you can see above, coverage of the controversy has been somewhat muddled on the law. Is this a copyright claim, a trademark claim, or both? Or does it relate to a patent on electronic implementations of the game? Without a copy of the communications between Hasbro and Facebook, we’ll have to speculate.

If it’s a copyright claim, Hasbro must show infringement–e.g. unauthorized reproduction of copyrighted material. But what’s copyrightable in a board game? Copyright expert Bill Patry had this to say:

Copyright in games extends only to the graphic elements and textual explanations, not to the way the game is played, so it is possible to make some changes and avoid infringement.”

In other words, copyright attaches to elements of a board game–the manual, illustrations, etc.–but not its play or scoring mechanics. According to my hours spent playing Scrabulous against strangers research, the letters and coloured squares look similar to their real-world equivalents, though enough differences exist that it’s unclear whether a court would find them substantially similar. For example, the multiplier squares (i.e. “triple word score”) have had the labels removed, though the colours remain the same. There have also been “look and feel” cases in the U.S., where the makers of video games and operating systems (Apple comes to mind) claim copyright in the whole user experience of a given product instead of its individual elements. However, that doctrine remains weak and undeveloped in the U.S.

On the other hand, Hasbro might pursue a trademark claim and try to show that Scrabulous is confusingly similar to the Scrabble mark. Specifically, it would have to show that the public was confused or deceived into thinking that Scrabulous is associated with or approved by the makers of Scrabble.

If Hasbro won either of those claims–and it’s not totally clear that they would–the biggest difference between a copyright and trademark action would appear when determining damages. The most common remedy for trademark violation is an injunction on further use of the offending mark. Profits from use of the mark, actual damages to the legitimate mark holder, and punitive damages can also be awarded. But at the end of the day, Hasbro would have to meet a fairly high evidentiary burden in order to extract large sums of cash from the makers of Scrabulous. Copyright, on the other hand, carries a statutorily defined range for damages for each infringement. Since over 600,000 people play Scrabulous daily, making numerous cached and ephemeral copies of potentially protected elements, a successful copyright claim could bankrupt the United States government, let alone two brothers in Kolkata.

Which brings us to one conclusion: nobody wants to go to court over this. The makers of Scrabulous net about $25,000 per month. Hasbro, on the other hand, would have to deal with negative publicity and more than 46,000 people who have already joined a “Save Scrabulous” Facebook group. These realities have fueled speculation that Hasbro’s threats are just meant to force the makers of Scrabulous to sell their business to Electronic Arts, the world’s largest video game publisher and holder of the rights to exploit the Scrabble brand electronically.

That outcome, while perhaps being the tidiest for all parties, raises a fascinating question. U.S. intellectual property laws are supposed to encourage creativity and reward innovation, but who are the innovators here? Hasbro, which simply purchased the rights to Scrabble, or the brothers who took a familiar boardgame and turned it into an online phenomenon beloved by millions of people? Can you spell “ironic”?

Posted in Copyright, Infringement, IP, Trademarks