The Fabulous tale of Scrabulous…

An earlier post on this blog had briefly discussed the Scrabulous case decided by Justice Bhat of the Delhi High Court. In this post, I will analyse some of the important aspects of the case (Mattel Inc. v. Jayant Agarwalla, IA No. 2532/2008 in CS (OS) 344/2008). At the outset, it is essential to note that theorder of the Court arose out of an application for a temporary injunction. In matters of temporary injunction, the plaintiff has to demonstrate his case only at a prima facie level. This means that the plaintiff’s version of the facts is likely to be accepted without great scrutiny. The facts of the case are generally well-known. Essentially, the Court was requested by the plaintiffs (the manufacturers of the popular game ‘Scrabble’) to issue an injunction restraining the defendants (the makers of the online game ‘Scrabulous’) from infringing the copyright and the trademark of the plaintiffs.

The Copyright Issue

Is Scrabble capable of being protected under copyright law? That was the crux of the matter before the Court. The plaintiffs argued that the game was an ‘artistic work’ under copyright law; and claimed that “… the defendants have infringed (the plaintiffs’) copyright in the game board and the rules. By use of red, pink, blue and light blue tiles and the use of a star pattern on the central square … the defendants have infringed (the plaintiffs’) copyright in the game board which is an artistic work.” Justice Bhat rejected this line of reasoning because of three factors – (a) the required standards of ‘originality’ were not met, (b) the ‘doctrine of merger’ applies, and (c) Section 15 (2) of the Copyright Act would apply.

(a) Originality:

Justice Bhat had to decide whether the Scrabble game board and rules were sufficiently original for them to be protected under copyright law. And answering this question was clearly no easy task, despite the Supreme Court judgment on the same question in the Eastern Book Co. case [AIR 2008 SC 809] (or perhaps, the difficulties arose because of the EBC case). An earlier post on this blog dealing with the EBC judgment has noted the contradiction in the Supreme Court’s reasoning. Did the Supreme Court really move away from the “sweat of the brow” standard of originality? If so, how far did it go towards the other extreme?

Justice Bhat answers this issue admirably. He cites the judgment of the Canadian Supreme Court in CCH v. Law Society [236 D.L.R. (4^th) 395]. CCH was also approved in EBC, giving a valuable clue to what the Court actually meant in EBC…

One paragraph in CCH (although not directly quoted by Justice Bhat) is useful: “What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work… This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.” (Emphasis added)

Justice Bhat seems to be influenced by this passage of CCH, and he proceeds to hold that for a work to be creative, it must be “… somewhat different in character, involve some intellectual effort, and involve some degree of creativity.” Justice Bhat thus signals that Indian law has indeed undergone a shift away from the “sweat of the brow” standard; importantly, he delineates to some extent the contours of this shift. While extraordinary creativity is not essential, there must be at least some creativity and intellectual effort for a work to be original. (Noteworthy is the consistency with Justice Bhat’s earlier judgment Reckweg v. Adven Biotech, discussed on this blog earlier. Another post had noted that the EBC decision was “brimming with potential to finally close the originality debate…” To Justice Bhat’s credit, he does seem to have given effect to this potential.)

Now we can turn to the application of the law to the facts in Scrabulous. This is where I have a few doubts. Justice Bhat held that Scrabble does not satisfy these requirements. My doubts arise from the fact that only a prima facie satisfaction was required – the order was on issues related to temporary injunction. It would appear that creating the game was to some extent an intellectual activity – it was not merely the mechanical work of colouring certain squares on the board. Justice Bhat stated the legal position on ‘originality’ admirably, but in the application of that position, he could perhaps have held that Scrabble did pass his test at least prima facie. Nonetheless, the decision itself is not wrong on this count – the other reasons given by Justice Bhat for rejecting the copyright claims are quite strong.

b) The Doctrine of Merger:

Copyright law protects the expression of an idea, and not the idea itself. The doctrine of merger applies when a particular idea has so few forms of expression that protecting the expression would actually mean that the idea itself was being protected. In such cases, copyright law does not provide protection. The absence of a large body of Indian cases perhaps led to the Court referring to American decisions on the point, notably a Seventh Circuit (US Court of Appeals) decision of Atari v. North American Philips (672 F.2d 607). In that case, the Court had held that copyright protection would not extend to games as such, because the idea behind the rules of a game finds expression in extremely few forms, leading to the application of the doctrine of merger. Relying on this, Justice Bhat concluded that the copyright protection claim could not succeed because of the inseparability of the idea from the expression. (An excellent analysis of the issue of copyright in games, particularly in relation to Scrabble, is available on PrawfsBlawg.)

One issue which must be considered is whether it is appropriate to rely on American case-law in this context. Reference may be made in this regard to a case of the Calcutta High Court [Barbara Taylor Bradford v. Sahara, 2004 (1) CHN 448], where the Court observed, “… to some extent everything is an idea, and, therefore, if no idea is ever protected, in the final logical extreme, no copyright can ever exist…That is quite true, but the difficulty in applying the idea/expression test is no ground for discarding the test altogether…” (Emphasis added) Indian law does not reject the idea-expression dichotomy; and does not protect ideas. Once that is clarified, then any perceived difficulty in relying on American cases would also disappear. For, Justice Bhat makes use of the American case-law not to establish a proposition of law; but to look for examples for the application of that proposition. In that light, Justice Bhat’s reliance on American law cannot be criticized.

In any event, there was a third argument as to why the Scrabble board is not entitled to copyright protection.

(c) The Copyright-Design interface – Section 15:

The Copyright Act contains an interesting provision in Section 15 (2); which provides that in case a copyright is capable of registration as a design and is not so registered, then the copyright protection will cease when the article to which the design has been applied has been manufactured more than fifty times.

The basis for this Section is explained in Microfibres v. Girdhar [2006 (32) PTC 157 (Del)]. “The legislative intent … is to provide protection for a certain period of time for commercial exploitation. Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act (which has a shorter term of protection).” Thus, in cases where commercial use is possible, a shorter period of protection is provided. If copyright protection were to be extended in cases where a commercial product is not registered as a design, it would be quite simple to work one’s way around the policy of the legislature. If Scrabble were to be capable of being registered as a design, it would be impossible to claim copyright protection for it because of Section 15 (2).

Section 2(d) of the Designs Act, 2000 does exclude “artistic works” from the definition of a design – the exception is not meant, however, to apply to commercially produced toys and games. Under the Design Rules, 2001, games, toys and articles manufactured for entertainment purposes are capable of being registered as designs. Thus, the Scrabble board would have been capable of being registered as a design; and cannot be given copyright protection.

So, then, the Agarwalla brothers were perfectly justified in creating ‘Scrabulous’ – were they however justified in calling it ‘Scrabulous’? The answer is “no”.

The Trademark issue

The plaintiffs claimed that the name ‘Scrabulous’ was deceptively similar to their trademark ‘Scrabble’; and use of ‘Scrabulous’ amounted to trademark infringement. The defendants claimed that ‘scrabble’ was a generic term – a word of the English language, not capable of being protected under trademark. It was not disputed on facts that the defendants were using terminology rather similar to ‘Scrabble’. In fact, the Scrabulous webpage itself contained several references to “playing scrabble”.

The then left to be determined was whether ‘Scrabble’ could properly be said to the protected under trademark law. The defendants’ claim was – in brief – that ‘Scrabble’ resembled the word ‘cricket’ more that ‘EA Sports Cricket 2007’. (The former is a generic word, a non-distinctive mark.)

The plaintiffs on the other hand argued that the mark was descriptive but also distinctive. A descriptive mark is entitled to protection if it has assumed a meaning which identifies it with a particular product or source. The Court looked at the cited dictionary meanings of the word ‘scrabble’ (scrape or grope frenetically with the hands, etc.), and was of the opinion that the word is not per se descriptive of the game. On this basis, the Court held that the use of ‘Scrabulous’ would infringe the trademark of the plaintiffs, and the defendants were restrained from doing so.

What is significant from the trademark point of view is the conclusion, “Though Courts would be slow in conferring a monopoly over common words, yet if a mark is shown to conjure up strong associations with the product or services, there should be no hesitation in affording protection.” Thus, ‘Scrabble’ is more like ‘EA Sports Cricket 2007’ than ‘cricket’. A conclusion on which, perhaps, divergent views are possible – but it appears that a prima facie case does exist.

Conclusion

So then, the brothers can continue with the online Scrabulous, provided they don’t call it Scrabulous. So, who lost the case and who won? I would say that Mattel lost – it does not have copyright in Scrabble. Everyone can create ‘scrabble’ boards as long as they do not call them scrabble boards… perhaps Fabulous is a better description than Scrabulous!