Last week there was a great disturbance in the force, as though thousands of voices around the internet cried out all at once. The noise was caused by the announcement that Hasbro, Inc., the makers of the board game Scrabble, had sent a “cease and desist” letter to Rajat and Jayant Agarwalla, the brothers behind the Scrabulous online game and Facebook application. Popular news sites Gawker and Slashdot were quick to protest, and the internet was up in arms. John Carol at ZDNet complained, “the notion that Hasbro and Mattel ‘own’ the rules of the Scrabble game seems very odd.”
Despite widespread disappointment from the internet masses, many commentators agreed that Hasbro was in the right. In fact, Professor John Palfrey at the Berkman Center for Internet & Society predicted this very conflict in October of 2007. On his blog, Palfrey suggested that “One might reasonably raise copyright and trademark issues related to [Scrabulous],” although he hedged a bit by suggesting that the online imitators might “…withstand these complaints.”
As of this writing, it is still possible to register a new account and play games at Scrabulous.com, and the Facebook app is still up. The letter from Hasbro’s attorneys to the Agarwalla brothers has not yet been released to the web, but it is reasonable to assume that it would resemble this earlier cease and desist letter from Hasbro to the owners of the now-defunct website e-scrabble.com. In the e-scrabble letter, Hasbro’s attorneys assert that Hasbro has both copyright and trademark protection for the Scrabble rules and for the game board itself. Although there are differences in gameplay and in board design, experienced Scrabble players will find the Scrabulous board immediately familiar. If we accept Professor Palfrey’s guidance, Hasbro would claim that Scrabulous infringes on Hasbro’s copyrights or trademarks.
Copyright – Don’t Look the Look
Copyright protects only the tangible expression of ideas, not the ideas themselves. As Google’s copyright counsel Bill Patry pointed out on his blog, “Copyright in games extends only to the graphic elements and textual explanations, not to the way the game is played.” Or put another way, the expression of the Scrabble rules or the design of the Scrabble board may be protected by copyright, but the implementation of those rules in the Scrabulous game is not.
The first copyright for the Scrabble rulebook was registered in 1953 and is still in force today. Scrabulous may have avoided infringing copyright by choosing not to reprint Hasbro’s rules. However, even if Hasbro can show copying, Scrabulous gameplay might differ enough from traditional Scrabble to convince a court that it is a transformative use. A transformative work can be excused if it adds something new with a further purpose or a different character.
Scrabulous makes it practical for players to participate in multiple concurrent games with opponents who might be in the next classroom or on the other side of the world. It is also possible for a Scrabulous game to be played out over several days, rather than in a single sitting. These common features of Scrabulous gameplay would be highly impractical for players using the Hasbro version.
If the Agarwallas can persuade a court that Scrabulous is a transformative interpretation of the traditional board game, it is reasonably likely (in the Ninth Circuit, at least) that a court might find Scrabulous does not violate Hasbro’s copyright.
Trademark – What’s in a Game’s Name?
Although the outcome of a copyright case may be uncertain, the argument from trademark law finds Hasbro in a much stronger position. The policy goal motivating trademark law in the United States is to protect consumers and producers from suffering injury at the hands of counterfeiters who would seek to profit from the market recognition that attaches to a familiar brand. In 1985, Justice Sandra Day O’Connor wrote in the 8-1 Park ‘N Fly decision, “The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.”
The first trademark associated with Scrabble was registered in 1948. The “SCRABBLE” word mark itself was registered in 1953. The box design, board design, tiles, and even the little wooden racks were initially registered in 1954 (download the PDF for a copy of the original registration that contains an image of the Scrabble box top). Unlike copyright, which protects works only for a limited time, trademark protection can last in perpetuity, as long as the owner of the mark continues to use it in commerce and the mark remains distinctive.
By granting the Scrabble mark, the United States Patent and Trademark Office awarded to Hasbro the exclusive right to market the Scrabble-branded board game in the United States. The word “Scrabble” itself is not a generic descriptor of crossword-type games; the Scrabble game has been implemented by other game designers and called various other names, including Alphapet or Funworder. But Scrabble by any other name does not evoke the characteristic Scrabble board with its pink star in the center. For fifty years, Hasbro has relied on its Scrabble trademarks to build a well-known worldwide brand.
It is not necessary for an infringer to use an exact copy of the registered mark in order to run afoul of trademark law. A counterfeiter may engage in “dilution by blurring,” which damages the original mark by associating it with an inferior product. It’s enough to make the infringing mark similar to the original and to trade in the market for the same goods or services, resulting in consumer confusion about the source of a product. As an example, many designs strongly resemble the Starbucks trademark, and some imitators are probably infringing the Starbucks mark by dilution. The similarity of an offending mark to the protected original is evaluated on as many as eight different criteria, including resemblance and the sound the word makes when it is spoken aloud. The name “Scrabulous” has an auditory resemblance to the protected “Scrabble” mark, and the Scrabulous board is very similar to the trademarked Scrabble board.
Here’s the evidence you won’t find anywhere else, since Scrabulous has started covering its tracks. Although none of Hasbro’s registered marks are currently found on Scrabulous.com, this has not always been the case. Thanks to the internet Wayback Machine, on January 19, 2008, it was easy to see that the Agarwallas were aware of the similarities between their product and Hasbro’s version of the game. As late as July 6, 2007, the Scrabulous website contained a disclaimer which notified readers that, although Scrabulous was not associated with Hasbro, and although the Scrabble name was trademarked by Hasbro and others, Scrabulous.com was a place where “anyone can play free Scrabble online.” This is a clear example of Scrabulous consciously taking advantage of the market goodwill associated with the Scrabble brand.
Also, the July 2007 version of the disclaimer contained a link to the official Scrabble webpage at Hasbro.com. At some point between July 2007 and January 19, 2008, Scrabulous must have realized that their use of Hasbro’s trademark was putting them in legal jeopardy. Between these two dates, it seems they did a search/replace, finding every instance of the word “Scrabble” and replacing it with “Scrabulous,” right down to the link that had previously pointed back to Hasbro’s website! They also changed the Scrabulous.com website logo from the one that appears on the disclaimer screenshot to the one that is on the site today. The disclaimer page and many other pages have very recently been purged from the Scrabulous.com website and the Wayback Machine, which allows removal of content by the owner. These pages have now been replaced by optimistic yet uninspiring notice that “This page is under construction and will be available soon.”
Hasbro might have been able to overlook any single one of the infringing actions described above as an innocent mistake. However, the pattern of similarities– board design, similar sounding name, the old logo set in a similar font– are difficult to explain together, except as a coordinated attempt by the Agarwallas to usurp the positive market reputation and customer goodwill that are associated with the well-known Scrabble trademarks. This pattern of similarities, combined with an attempt to rewrite history by pulling material from the Scrabulous.com website and erasing content from archive.org, present a pattern of abuse that no jury could ignore. Since a trademark owner can lose the mark if they fail to protect it from use by others, Facebook and Scrabulous have effectively left Hasbro with no choice.
If Hasbro eventually files a lawsuit but claims only copyright infringement, it might just lose the case. A trademark dilution claim will surely score a bingo, and force Scrabulous to turn in all of its letters. But this isn’t a zero-sum situation, where Scrabulous must lose if Hasbro is to claim victory. Hasbro could cut a license deal with Facebook and the Agarwallas, or it could simply buy Scrabulous outright. One thing is certain: if Hasbro forces Scrabulous offline, millions of Scrabble fans on Facebook will be looking for a new game to play.