Anticipate This!™ | Patent and Trademark Law Blog

Scrabulous: Not a Triple-Word Score.

Posted in General Commentary, Litigation Commentary by Mike Dockins on January 21, 2008

According to Reuters, Mattel and Hasbro have recently warned Facebook that the online application Scrabulous may be infringing Mattel and Hasbro’s copyright and, presumably, trademark in relation to the popular board game Scrabble®. 

If you have not yet been hooked by the Scrabulous phenomenon, consider yourself lucky. Sources indicate that it can be quite addictive.  Scrabulous has a registered user base of 2.3 million, 600,000 of which play the game daily.  The move to shut down Scrabulous has also prompted a new community on Facebook named “Save Scrabulous”.  The “Save Scrabulous” community has over 12,000 members.

So is there copyright infringement?  Independent creation is a defense to copyright infringement, but only if independent creation is a possibility.  If you were to put enough monkeys with typewriters in a room on Mars, for example, they may independently create Shakespeare and have a valid copyright in the work. 

One test for copyright infringement is access and substantial similarity.  The creators of Scrabulous cannot in good faith claim, however, that they never had access to Scrabble®.  The game of Scrabble® is sold in 121 countries in 29 different languages. One hundred million games have been sold worldwide, and estimations are that Scrabble is found in one out of every three American homes. 

As for substantial similarity, well, we have not played Scrabulous ourselves, so it is impossible to make a first-hand determination.  However, below is a comment from one of the more reasonable Scrabulous fans at “Save Scrabulous”, as reported at this Forbes article:

The copyright infringement is obvious and, in retrospect, the developers of Scrabulous should have done more to create their own spin on it [rather than using the same color schemes and numerical systems and having the rules to Scrabulous game link to the Scrabble Wikipedia page].

You be the judge.  Images of the respective games are reproduced below.

 Scrabulous Image           Scrabble Image

Scrabulous                            Scrabble®

Access?  Check.  Substantial similarity? Check. 

But what about trademark infringement?  In trademark law, two words or phrases do not have to be identical for there to be a trademark infringement.  An infringement may be found wherever there is a likelihood of confusion as to the source, sponsorship, or ownership of the goods (or services).  A likelihood of confusion in this instance appears to be very high.  The goods (the game) are nearly identical in the way they are played as well as how they look.  Further, the marks themselves are very similar, sharing the same first five letters (S-C-R-A-B).

Similar marks?  Check.  Substantially identical goods?  Check.  Trademark infringement seems to be yet another obstacle the Scrabulous makers will have to hurdle.

So what options do Facebook and/or the creators of Scrabulous (JW Edit – 1/25/2008; good comment tekel) have?  The most reasonable recourse may be to consider selling Scrabulous to Mattel/Hasbro, or obtaining a license as soon as possible.  Any comments from our readers?

5 Responses

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  1. tekel said, on January 24, 2008 at 4:12 pm

    I think you nailed it. Except that facebook doesn’t “own” scrabulous- the implementation was built by a pair of Indian brothers who licensed it to Facebook.

    Since the game is so wildly popular, I agree that Hasbro should look to buy it or find some other compromise that will allow its users to continue playing. Any solution that requires the game to be shut down will cause massive damage to the Hasbro/Scrabble brand in the eyes of the internet.

    the best comment I’ve seen so far came from a comment in the slashdot story: “Don’t tase us, Hasbro.”

  2. Michael Factor said, on January 27, 2008 at 7:23 pm

    For there to be a tort, there has to be a right that is infringed.

    The million monkeys argument is only good if games are protectable by copyright.
    However, games are not protected by copyright in the US. See USPTO website.

    I don’t think there is an issue in other countries.

    Is there copyright in the board? Possibly, if the board was registered in the US. In other countries, particularly those with the UK tradition, the game could have been a registered design, if filed, but that would have terminated by now.

    Is displaying a copyright image of a board on a computer an act of infringement? Who is infringing?

    As to trademark, similarity is not enough. The trademark has to have been registered in the apropriate class.There has to be a likelihood of confusion. If there is a clear disclaimer that the game is not licensed or associated with Hasbro or Mattel, perhaps that is enough.

  3. Jake Ward said, on January 28, 2008 at 12:52 pm

    See also a good exchange of views in the commentary at the Likelihood of Confusion blog here: http://www.likelihoodofconfusion.com/?p=1335 .

  4. Mike Dockins said, on January 28, 2008 at 1:11 pm

    Mr. Factor,

    You are correct, the million monkey argument indeed only applies to works that are protectable by copyright law. You are also correct that copyright may exist in the board, the appearance of the letters, the packaging of the game (does not apply here to the computer game), and the like. However, registration of copyright is not required to obtain protection. These days, copyright protection exists the moment the work is fixed in a tangible medium. Furthermore, displaying of a copyright-protected image on a computer is most certainly infringement. It is well established the computer and internet displays are tangible mediums with the copyright laws. Who is infringing? Certainly the makers of Scrabulous, and also any entity that assists or empowers Scrabulous to commit its infringement. Contributory liability is what the Scrabulous owners need to be concerned with.

    Regarding trademark infringement, you are correct that similarity of the marks is not enough. The other half of the infringement equation is that the goods must be related, or the goods must be in the natural area of expansion of the registration owner. Class of the goods, however, is largely irrelevant. For example, if the registrant sells NIKE shoes (Class 10) and the infringer sells NIKEN shoe waxes and polishes (Class 003), infringement very likely would be found. The marks are very similar (but not exactly the same), and the goods are related. If the registrant sold NIKE shoes and the infringer sold NIKEN hairspray, there is not a great case for trademark infringement. Lastly, a disclaimer certainly serves to inform people that the goods are not produced or sponsored by a particular trademark registrant, however, the disclaimer would not absolve anyone of liability for infringement.

  5. Dossy Shiobara said, on February 14, 2008 at 5:08 pm

    While we can list and check the various infringement “tests” … can anyone specifically identify _what_ is being infringed, in this case? The Scrabble registered mark? (In which case, why not rename “Scrabulous” to “Tile Words” or anything else that would entirely avoid any likilhood of confusion?) The game board layout? (Does Mattel and/or Hasbro have any IP rights on the game board layout which Scrabulous can infringe?)

    It’d be nice if someone could come up with an IP inventory of what Mattel/Hasbro actually owns with respect to Scrabble, and then lets talk about how those individual pieces of property might be infringed by Scrabulous. Could this all just be a case of “woulda, coulda, shoulda” on the part of Mattel not having protected the necessary parts of their IP with respect to Scrabble, and be a non-issue for Scrabulous?


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