Legal Issues related to Scrabble

Issues summaries

Cease & Desist Letters

Selected source material

The following is intended as solely to inform curious people about the law applying to game playing in the United States; it should not be taken as legal advice -- anyone needing to know how the law applies to their situation will have to consult an attorney willing to take them on as a client.

IP Law

Intellectual property (or "IP") law includes copyright, trademark, patent (and others), but those who don't deal with this often don't know the difference. A light-speed intro: one trademarks a name, patents an invention and copyrights a writing or design.

Far from everyone who should know, does. For example, the history of Scrabble provided by the (North American) National Scrabble Association, asserts that the name "Scrabble" was patented by the 1950s. There are other examples.

Trademarks

There are two major aspects to trademark in context of the game Scrabble, trademark and trade dress. The word "Scrabble" may function as a trademark, as may the appearance of the game's board.

Trademark in words

A trademark is generally a name (although it could also be an image, a sound or other things) used to identify goods or services. The law recognizes at least two purposes to trademarks: to identify everything purveyed under that mark as from the same source, and to prevent others from using the trademark owner's "good will" by labeling their own goods with the same mark.

Trademark can be automatic: the owner doesn't have to register it with the Patent and Trademark Office. Words or phrases used as trademarks are treated as being on a scale of "distinctiveness" or relatedness to their subject matter: the more related, the harder to gain trademark protection (or the narrower the resulting protection); this scale is central to much analysis of trademark law.

Here are a few examples

fanciful
"Exxon"
arbitrary
"Apple" (for computer, or for sound recordings)
suggestive
"Microsoft" (for computer software)
descriptive
"Chew Candies"
generic
"Candy"
(Note: Courts also consider, along a somewhat independent axis, the "strength" of a mark. This measures how strong an association has grown in the public mind between the mark and the goods or services the owner provides. This association is termed "secondary meaning", and is particularly important to protection of descriptive marks.)

[Being revised]
As described in the Manual of Trademark Examination Procedure, 3rd ed., a mark is fanciful if was coined for the purpose; arbitrary if it exists as an English word, but with no relation to the subject matter, suggestive if imagination is required to see what kind or quality is being ascribed to the subject matter, and descriptive if it directly ascribes a quality to the subject matter.

This all concerns Scrabble, naturally, because "Scrabble" is a trademark. It's probably arbitrary or suggestive; most importantly, not descriptive. (The Second Circuit in Selchow & Righter v. McGraw-Hill mentioned in passing that it might be fanciful; it appeared to be using the term to express distinctiveness, and negating its genericness. (Discussion of Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., No. 74-059 (N.D. Cal 1977))

Trade Dress - Trademark by appearance

"A product's appearance (often called its 'trade dress') can serve as a trademark to the extent that design identifies the product's maker. But a functional aspect of the design cannot be trademarked, even if it also (at least before competition breaks out) identifies the product's source." Eco Mfg. LLC v. Honeywell Int'l Inc., 357 F.3d 649 (7th Cir. 2003) (citations omitted).

Copyright

Tournaments

There are several issues relating to copyright. One is whether people may hold tournaments without license from the Scrabble copyright holder. An assertion that they may not (trademark issues aside) would be based on the exclusive right to "perform" a copyrighted work publicly conferred by the U.S. Copyright Act upon the copyright holder. 17 U.S.C. sec. 106(4). (This also assumes that no copying of the game board would be done, such as by closed-circuit or other broadcast of games, or by provision of scoresheets with a diagram of the board. These would raise separate issues.)

Scrabble can be played on the Internet, at both authorized and unauthorized sites. Putting aside that at unauthorized sites the configuration of a generic word game board is dictated by players, not the system, is the copyrighted Scrabble board being "performed" when it is played on-line?

Both tournaments and on-line play are undoubtedly "public" as defined in 17 U.S.C. sec. 101. But the U.S. Court of Appeals for the 9th Circuit (covering California and other western states) has held that the playing of a game in public is not a "performance". Allen v. Academic Games League of America, Inc., 89 F.3d 614 (9th Cir. 1996). The court held in the alternative that even if it were, at least where the playing is not run as a commercial enterprise, it would be protected by the "fair use" provisions of the Copyright Act, sec. 107. If correct, neither tournaments nor on-line play violate the exclusive performance right.

Copyright in a single play of a game may also be contested. In its book "World Championship Scrabble," an annotation of games from the 1991 World Scrabble Championship, Spear asserts copyright over "records of the games played."

Game sets

The U.S. Copyright Office publication on game copyright states:

The idea for a game is not protected by copyright. The same is true of the name or title given to the game and of the method or methods for playing it.

Copyright protects only the particular manner of an authorís expression in literary, artistic, or musical form. Copyright protection does not extend to any idea, system, method, device, or trademark material involved in the development, merchandising, or playing of a game. Once a game has been made public, nothing in the copyright law prevents others from developing another game based on similar principles.

While the U.S. Copyright Office does not create copyright law, this is a fair summary of the commonly-understood law on games. While it can be read, as many hope, to provide almost no protection to game publishers, that conclusion is not so clear.

This area of the law is fairly intricate, and surprisingly not well-explored. See generally, Pamela Samuelson, "Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection", Berkeley Center for L. & Tech. (Law & Tech. Scholarship, Paper 38), §I.D. (July 27, 2007).

One theory holds that someone can, without infringing, make a board with the same premium square positions and tile values, so long as the appearance of Hasbro/Mattel's versions are not imitated more than necessary to use those "method of play" elements. (See, for example, this re-imagining of the Scrabble board "literary and artistic" (i.e., text and graphic) content, which would provide a good test case if sold as part of a full board.)

Some craftspeople sell Scrabble sets which have been transferred (typically) to circular wooden turntables. Does this violate the copyright holder's exclusive right to make derivative works? In Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1344 (9th Cir. 1988), defendant sold ceramic tiles to which it had attached art cut out from plaintiff's book. Notwithstanding the "first sale" doctrine that the copyright owner loses the right to control disposal of an individual copy upon first selling it, the court held that infringing derivative works had been created. It's reasonable to guess, however, that the remade Scrabble sets are not separate versions of the work (the layout of the set), but merely an alteration of the physical aspects of the set, but the craftspeople should not feel secure in this.

Books on Scrabble

May people publish books about the game Scrabble without license from the copyright and trademark holder? Here we address only the copyright issue.

The short answer comes from Ty, Inc. v. Publications Int'l Ltd., 292 F.3d 512 (7th Cir. 2002). Assuming that a book on strategy in Scrabble is not a derivative work of the game board, assuming it merely discusses the game withoout diagrams, (the equivalent, collectors' guides to plaintiff's toys, were conceded in Ty not to be inherently derivative works), the question is whether it reproduces "more than it ha[s] to in order to produce a marketable [strategy] guide." Almost by definition, a book can be written to use no more than necessary, and it seems obvious that some diagrams (although not such things as original color or board decoration) are necessary to make a book useful as a discussion of strategy.

[This paragraph being revised]
A patent-related footnote to this is that because the little triangles that emanate from the premium squares on the original board were patented by the original owners, there is under U.S. law a "federal right to copy and use" a patented feature, overcoming any claim to trade dress protection. This principle probably should apply to prevent copyright protection as well. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141, 165 (1989). "For almost 100 years it has been well established that in the case of an expired patent, the federal patent laws do create a federal right to copy and use. Sears and Compco extended that rule to potentially patentable ideas which are fully exposed to the public." See Pivot Point Int'l, Inc. v. Charlene Prod., Inc., 170 F. Supp. 2d 828 (N.D. Ill. 2001) (Easterbrook, J.) (one may not "use the copyright laws to overturn TrafFix and many other cases holding that people are free to copy and sell useful articles that do not have patent protection"), rev'd, 372 F.3d 913 (7th Cir. 2004).

Contractual/fair treatment liability

Conduct of tournaments

A contestant in a tournament against whom a ruling is made or who is excluded for alleged impropriety might sue the organizers (or even the prizewinner benefiting from the ruling!) claiming the ruling violated her rights under an implied-in-fact contract, even though no contract was written or explicitly agreed on. An implied-in-fact contract is one you can deduce has been made based on ordinary inferences the parties' behavior. (A standard example is the legal relationship between a customer who has sat down in a barber's chair, where the barber has begun cutting her hair even though no words have been exchanged.) These arise when one party has done something for the other, e.g., begun cutting hair, and has a reasonable expectation that the obvious thing will be done in return.

Where a tournament entrant has paid an entry fee, there's a contract for participation in and running a tournament. What are its terms, that is, how has the organizer agreed to conduct the tournament? Good question -- if nothing's in writing, then it's up to a court, if the contestant sues, to decide how the tournament should have been run, ascribing its conclusion, of course, to the reasonable expectations which both sides must have understood.

Do not think this is fanciful. In London in 1995, a player's claim that he was unfairly treated when his clock was started before he could return from the restroom between rounds actually went to trial. Although the plaintiff was awarded a mere 90 pounds sterling in damages, that is no measure of the burden and especially the expense of the proceedings to the defendants (various officers of the association running the tournament).

At least if US law governed, I suggest that the organization took the wrong lesson from the suit, however. (They sent out a suggestion that at least 10 minutes be allowed between games.) Any number of tournament director's rulings or procedures could be contested by a disgruntled player. (The defendants in that case also assert that the judge there ignored the law; I can offer no opinion on that, especially as it involved UK principles.)

The case of Kelly v. New York State Bowling Assoc., Inc., 542 N.Y.S.2d 376 (App. Div. 2d 1989), is instructive, although far from authoritative. (It applies only in New York, and the Supreme Court Appellate Division is the first appellate level in the state's system, with jurisdiction over only part of the state.) There, a contestant complaining of disqualification from a tournament, affirmed by the governing body, was held to have agreed to let the organization's decisions be binding under rules referred to on the entry form used by each entrant.

Thus, the only protection from all this is to require contestants, if not directly signing an acknowledgment, at least to use an entry form containing or at least referring to a caveat like the following:

The director's exercise of discretion in interpreting these rules and in making rulings on cases not covered by them is absolutely final. The NSA, in its discretion, may step in to overrule or modify a decision of a director, but is under no obligation to do so.

Accessibility

The Americans with Disabilities Act (42 U.S.C. 12101-12213) ("ADA"), and the regulations issued under it, define a "place of public accommodation" as including places of recreation, and a "public accommodation" as including a private entity (including an individual) that leases or operates a place of public accommodation. ADA section 301(7). Public accommodations affecting commerce have certain obligations of non-discrimination under ADA.

Section 302(a) of the ADA states that the prohibition against discrimination applies to "any person who owns, leases (or leases to), or operates a place of public accommodation," and this language is reflected in 36.201(a). The coverage is quite extensive and would include sublessees, management companies, and any other entity that owns, leases, leases to, or operates a place of public accommodation, even if the operation is only for a short time.
U.S. Dept. of Justice, ADA Handbook, §36.201 (emphasis added)

Communications Decency Act ("CDA")

The applicable section of the CDA has been struck down as unconstitutional. Since Congress may attempt some substitute, it may be worth noting that it 47 U.S.C. 223(a), prohibited This appears to have no applicability to word lists or crossword games played, as any words which might be indecent are not used "in context", and that is a necessary element of the offense defined.

Patent

There should be no patent issues, as the U.S. Patent, No. 2,752,158, expired in the early 1970s, having issued to James and Helen Brunot on June 26, 1956. That patent was not for the game itself, but for the little triangles projecting from the cells of the board, the stated advantage being that it is "not necessary to lift the tiles once they have been placed in order to discover the way in which the score is to be adjusted." U.S. Pat No. 2,752,158, col. 4, l. 6.


Cease & Desist Letters

Whatever the merits of their claims, the manufacturers (Hasbro and Mattel), often send cease and desist letters in which they espouse their theories. Some of them are collected here.


Steven Alexander (stevena@teleport.com)

Scrabble is a registered trademark of Hasbro Inc./Milton Bradley, and Mattel/JW Spear & Sons plc, even though that's not the way people actually use it.