January 2008
Scrabulous may be Scrambling to Survive Hasbro Attack
Hasbro and Mattel, makers of well-known board game Scrabble have sent notice to Facebook requiring them to remove the online Scrabulous game from its website.
Scrabulous, an unofficial web-based version of the board game, was created by two Indian brothers in 2006. Facebook users can add it to their profile and challenge their friends to play. Fans have launched a Facebook group called Save Scrabulous to try and save this popular version of Scrabble.
Hasbro owns the registered trademark for “Scrabble” in the US and Canada and Mattel has rights elsewhere in the world. The US registered trade mark SCRABBLE owned by Hasbro relates to a number of different goods and services, including computer game programmes as well as the equipment and accessories for playing the physical version of the word game. Last year, Hasbro licensed the digital rights in its range of board games to Electronic Arts but to date online versions of games like Scrabble, Monopoly and Yahtzee have not appeared.
A similar unofficial online version of Scrabble called e-scrabble was shut down after action by Hasbro in 2005. The site, www.e-scrabble.com, now automatically redirects to Hasbro’s website. On the Facebook site, there is a declaration that Scrabulous is not connected to Hasbro or Mattel in any way whatsoever. Interestingly, an Australian company has a registered trade mark in the United States over the word Scrabulous in relation to toys, playthings and games including interactive games.
Briffa comment
This case is a reminder that creators of online versions of games need to be careful that they are not infringing any intellectual property rights of the official creators, in paticular any rights that they may have to trade marks, copyright or patents.
In the UK, it is prohibited to use a sign in trade, which is identical or similar to a registered trade mark or in relation to similar goods and services, where there is a likelihood of confusion on the part of the public. The plaintiffs would need to prove that players of Scrabulous are likely to be confused as to whether the game they are playing is in fact the game SCRABBLE which Mattel and Hasbro own the registered trade marks for. Under UK law, where a trademark has a reputation it is an infringement to use an identical or similar sign, which takes unfair advantage of, or is detrimental to the distinctive character or repute of the mark.
As copyright law protects the expression of the idea rather than the idea itself, the idea of a board game where you have to create words and are awarded points would not per se attract copyright protection. However, the scrabble board itself could qualify as a graphic work which is protected under the Copyright, Designs and Patents Act 1988. For copyright to be infringed there has to be a substantial copying of the work and a causal connection with the original work. The Scrabulous board does appear substantially similar to the physical scrabble board in terms of the layout, colours and scoring. A key issue would be whether the creators of Scrabulous used the board version of the game in creating their version. Although they may have expended skill, labour and judgement in creating their on-line version, this is not a bar to copyright infringement.
The equipment for the game such as the tiles, tile racks and board could also be patentable. An applicant for a patent needs to show that the invention has a technical aspect that is novel, involves an inventive step and is capable of industrial application.