Breaking "Scrabulous" News: Mattel Wins on Trademark Claim but Loses on Copyright

Trademarks

i) The defendants (Agarwala brothers) were restrained from using SCRABULOUS, SCRABBLE or any other deceptively similar trademark.

ii) The brothers were also restrained from metatagging, hyperlinking or including the infringing trademarks in the source code of their websites.

iii) The court disagreed with the argument of the defendants that the mark SCRABBLE was “generic” in nature and therefore could not be protected. For those not in the know, the word “scrabble” is a verb meaning:

1. To scrape or grope about frenetically with the hands.
2. To struggle by or as if by scraping or groping.
3. To climb with scrambling, disorderly haste; clamber.
4. To make hasty, disordered markings; scribble.

On Copyright:

Justice S Ravindra Bhat (famous for his “public health” oriented decision in the Roche vs Cipla matter, which we have blogged about here) discusses the issue of copyright in great detail/depth. His decision will add considerably to the repertoire of Indian jurisprudence on copyright.

Justice Bhat holds that there is no “copyright” in Mattel’s famous board game for the following reasons:

i) The board is incapable of copyright protection as it does not meet the minimum standard of “originality” under copyright norms.

Comment: This seems surprising to me–since the original scrabble board certainly does seem more than “minimalistic” in terms of its copyrightable content.

I’ll come back to this point in greater detail once I’ve had a more thorough read of the judgment.

ii) The doctrine of merger applies i.e. there is no idea-expression dichotomy in the context of the board. To deconstruct this legal mumbo jumbo: the underlying idea (behind the board) is susceptible to very few variations/expressions. Therefore, if the “expression” entailed in the board were protected, it would amount to protecting the very “idea” itself. And copyright law cannot protect “ideas” but only the expression.

Comment: One of the few Indian decisions on the idea-expression dichotomy. So a must read for those interested in copyright jurisprudence

iii) Section 15 (2) applies and the board is incapable of copyright protection. This section may need some explanation for those of you not familiar with the intricacies of the copyright law/design law interface:

Section 15 (2) reads as below:

“Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.”

In other words, if the work in question (Mattel’s board) could have been registered as a design under the Designs Act, but hasn’t been so registered, then Mattel loses any “copyright” in such work, if such work was produced more than 50 times. In short, Mattel loses both design protection (since it failed to register it as a design) and copyright protection (since it produced the board more than 50 times).

Section 15(2) is a very intricate and complex provision that has been tested in some earlier cases (most recently the Microfibre decision of Justice Sanjay Kishen Kaul).

We’ll bring you a more detailed note on this section, as also a comprehensive note on the decision soon.

Conclusion:

So whats the net impact of this decision? The Agarwala brothers can continue with their innovative online version of the game–but have to brand it differently. Perhaps they could call it “Fabulous”?