Ren Bucholz is a JD candidate at Osgoode Hall and is taking the Intellectual Property Theory course.

Copyright holders, like musicians, have a knack for riffing on ideas from the past.  Consider the many variations of the copyright infringement lawsuit.  Every year brings more examples of a rights-holder who hears some element of their song, no matter how brief, followed by the sound of an opening cash register.  Surely some lawsuits are aimed at scofflaws who just don’t want to pay for the soundtrack to their infomercial. Thankfully, copyright law provides no shelter to those who use an entire song, unchanged, to sell Slankets.

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Posted in Copyright, Fair Dealing, Infringement, Licensees, Music Industry, Originality, Ownership
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Forget superheroes and cartoon plumbers; the gaming public can now play Charles Darwin. In Spore, the long-awaited new game from the creator of The Sims, players can help a race of beings evolve from single-celled organisms in the primordial ooze to space-faring explorers. The game was epically hyped, and it garnered stellar pre-release reviews. But something happened on the way to the Videogame Hall of Fame. As of this writing, 85% of the game’s Amazon.com customer reviews award it only 1 star out of 5.

It turns out that many people who bought Spore couldn’t actually play it. The game was secured with an error-prone digital lock and thousands of customers were left with a useless lump of code. As a result, Spore soon clinched a dubious record: most pirated game of the year.

This is just one example of digital rights management (DRM) gone awry, and it raises familiar questions about how and why we use the law to protect digital locks. Until recently, the global policy consensus was that DRM, when applied to copyrighted content, ought to enjoy a presumption of validity. In this model, picking a digital lock for any reason–even on content you’ve paid for–is a violation of copyright law. The most famous articulation of this position is in Section 1201 of the Digital Millennium Copyright Act (DMCA), the American ratification of two international agreements called the WIPO Internet Treaties. This approach to DRM has sparked furious controversy because it gives copyright holders the unilateral ability to expand the scope of their rights: even if the legislature has been silent on a use of copyrighted material, the copyright holder gains effective legal control if she can protect it with a digital lock.

Some evidence suggests that this approach to DRM is falling out of favour. France considered rejecting legal protection for DRM in 2006. Steve Jobs, the Apple Computers CEO whose popular iTunes Music Store sells songs wrapped in DRM, has publicly called on entertainment companies to abandon the technology. Even the American official who architected the worldwide spread of DRM in the WIPO treaties now says that those “policies didn’t work out very well” and “have not been successful.”

Canada has thus far declined to grant legal protection to DRM, and it has even pioneered novel approaches to the legal treatment of digital locks. In Bill C-60, a 2005 Liberal proposal to ratify the WIPO Internet Treaties, circumventing a digital lock would have been unlawful only if it was linked to an underlying infringement. Unfortunately, that link was severed in Bill C-61, the Conservative government’s failed successor to C-60.

With no live copyright legislation and an election on the horizon, we should think hard about whether Canada should follow America in the blanket protection of digital locks. If the Spore debacle tells us anything, it’s that our legal treatment of digital locks needs to evolve with our understanding of how they work, how they fail, and whose interests they serve.

Posted in Digital Locks
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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
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