The crappy situation of the scrapping of Facebook’s Scrabulous

After finishing an article on autonomous robots and the law I’ve finally decided to come back to cyberspace to see what has been happening around here. Many things have been going on that deserve the attention, but the one that clearly has caught my eyes (and my incredulity) is the pulling off of Scrabulous from Facebook due to the lawsuit for trademark and copyright infringement that the owners of the trademark Scrabble have initiated against a couple of guys from India who made the product, that though similar, does not cause confusion and is an improvement from the other (and some of the reactions and misinformation that generated). Not been friendly of using bold in blogs, this time they are proper and deserved because it is based on those highlighted facts that some basics of copyright and trademark need to be reviewed.

Starting with the basics (you would expect that this should be already widely known), and focusing on American law (it is a lawsuit in the US, as I understand it), Section 102 of the copyright law, title 17, United States Code, clearly expresses that:

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work

So, either the reports are wrong and Hasbro Inc is not suing the Agarwalla brothers for copyright infringement or the company’s lawyers don’t know what to invent to charge whatever fees they are charging to the American company. What could be the copyright on? A checked board with some coloured boxes? Every possible word that you can make in the game? What? Would love to see the suit, so if anyone has it available, it would be very welcomed…If the copyright claimed is on the design of the board, it should be far too easy to change the disposicion of the coloured boxes (doubles and triples) and get around the problem, so it shouldn't be this the reason for taking the game down.

Then we have the issue of the trademark. Trademarks, contrary to the belief of many, do not protect a name per se, but the association of a name, symbol, etc, etc with a product and, originally, was designed as a form of consumer protection. Thus, while it is true that today trademarks are important intangible assets, it cannot be forgotten that if there is no likehood of confusion, it is very unlikely that trademark infringement will exist.

Let’s start for actual trademarks that Hasbro has. In the US it has 5 live trademarks with only the word Scrabble (it has other 3 but there are a composite of words), some of which require a specific font. Since it seems quite clear that Scrabulous has nothing to do with an “apparatus for playing an electronic word game” (registration number 1136336), “equipment and accessories-namely, anagrams, a dice cup, cubes and a timer for playing a word game” (registration number 0802995), “scoring devices and turn-tables used in the playing of games and board games” (registration number 0589217) or “[game including board and playing pieces] equipment and accessories for playing a board game” (registration number 0525405, and this is the original trademark since 1948), we need to assume that the lawsuit refers to the trademark “Scrabble” for “G&S: computer game programs” (registration 2654348).

So, is there a likehood that people will think that Scrabulous is one of the Scrabble’s computer games that the trademark protects? In order to decide whether likehood of confusion exists, in the US, the place of the alleged infringement, we need to follow the Court of Appeal for the 9th Circuit, that in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) established that:

In determining whether confusion between related goods is likely, the following factors are relevant:

1-strength of the mark;

2-proximity of the goods;

3-similarity of the marks;

4-evidence of actual confusion;

5-marketing channels used;

6-type of goods and the degree of care likely to be exercised by the purchaser;

7-defendant's intent in selecting the mark; and

8-likelihood of expansion of the product lines.

And the same court had said before that, that evidence of actual confusion may be needed if that is the issue in question, emphasising the importance of factor 4 .

In the present case, there is a strong argument for using the same venue where the name has been used to actually check whether confusion exists. Since the dawn of Internet, IP rights holders have sustained, and the courts have agreed with them, that the use of information technologies change the possibility of infringement to such a degree that it seems to be of a different kind, and the law has been amended accordingly (normally tending to criminalization due to lack of prove of actual damages). So, why not use the same logic to the present case? Instead of wondering whether confusion exists, just ask the users, quite easily and with a couple of clicks, whether they have ever thought that Scrabulous was the same as Scrabble, produced by Hasbro or even endorsed by them…or, will this be another case showing that the irruption of Internet and digital technologies have been used by the IP rights holders to expand their rights and convince governments that taxpayers money needs to be used to combat IP rights infringement, but they are not willing (they are actually avoiding) using the same digital technologies to see whether their claims are true at all? Let's see what the judge decides, but something does not smell good there...