Copyright

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


The Delhi High Court issued its decision today in the controversial and widely reported Scrabble vs Scrabulous matter, involving a global giant (Mattel) and 2 small Indian innovators (Rajat and Jayant Agarwala of Kolkata, who ran RJ Software). This is the gist of the decision:

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”?

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Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

6 comments.

  1. C

    So is that what’s happening today, Sept 26, when the site is no longer posted at Scrabulous.com?? Is it being renamed, only to appear later under a different name? I MAY survive a few days without my fix: )….

    Reply
  2. Leilani from Maui

    Oh no say it isn’t true. Please tell us when it will return and under what name? Perhaps the brothers will inform us on what they are going to do with it next? I love to play scrabulous, It’s addicting!

    Reply
  3. rosie

    There is a site you can go to called lexulous.com I have tried to register butI’m getting no response. You can play the computer and set up is the same as scrabulous, so maybe it’s just teething problems

    Reply
  4. glenda

    where is this game at we need to play i an sick 2 my stomach it’s been about 4 days now let’s get htis show on the road.

    Reply

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