©2015. Published in Landslide, Vol. 7, No. 4, March/April 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
People have been playing board games for thousands of years. The Royal Game of Ur, which originated in Mesopotamia more than 4,500 years ago, is reportedly still played in Iraq.1 (Game equipment has been found that predates the Royal Game of Ur by as much as 900 years, but the rules to those games have been lost to history.2)
In the modern era, though venerable games like chess and backgammon remain popular, many people associate the phrase “board games” with established staples such as Monopoly, Scrabble, Chutes and Ladders, and Candyland. More complex strategic games have been generally relegated to hobbyists and niche gamers, such as war gamers, who enact historical or fictional battles using cardboard chits or miniature figures on map boards. However, in recent years, there has been a rising tide of new board games being developed, marketed, sold, and played around the world. In 2013, board games accounted for more than $1.8 billion in sales in the United States, out of a $22 billion domestic toy market.3 These sales figures, while dwarfed by the size of the video game industry, are quite respectable and suggest that board games have become a mainstream source of entertainment. Digital and mobile versions of board games are also becoming quite common.
As a result of this transition from “kid stuff” and fringe hobby to mainstream entertainment, board game developers and publishers have found themselves facing intellectual property (IP) issues with increasing frequency. Lawsuits or threats of legal action—especially at the interface between offline and digital board gaming—are not uncommon. Message boards frequented by gamers and game makers contain questions such as “I am making a game; how can I prevent someone else from copying it?” and “I am making a game that is similar to Game X; how can I avoid getting in trouble for copying?” Board games occupy a nexus of the three primary forms of intellectual property protection—copyright, trademark, and patent—so these questions are not always easily answered.
To discuss copyright in board games, we must look back to an 1879 Supreme Court case ironically having nothing at all to do with games. In Baker v. Selden,4 the plaintiff had developed a new method of bookkeeping and published a book containing an introduction, an explanation of the method, and some examples that consisted mostly of blank bookkeeping forms. His book met with little success, but when another publisher began successfully selling a book containing very similar forms, his widow filed a copyright infringement suit. The Supreme Court held that although the book was subject to copyright, the bookkeeping method itself was not a suitable subject of copyright, and because the forms were merely implements for performing the method, they were not copyrightable subject matter. Justice Joseph Bradley wrote, “[W]hilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practice and use the art itself which he has described and illustrated therein. . . . The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in such book.”5
The principle laid down in Baker v. Selden was later codified in the Copyright Act of 1976, which says clearly: “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.”6 Thus, the idea-expression dichotomy that is fundamental to copyright law can be traced back to Baker v. Selden.
Therefore, the systems or processes that make up the core of a game—generally referred to as the “game mechanics”—are not subject to copyright, even though the written rules, game board, card artwork, and other elements—often referred to as the “theme” of the game—may be. Game mechanics can be as simple as “roll dice and move a token along a track,” or far more complex. Regardless of the complexity or originality of a given game’s systems and processes, its game mechanics will likely not be protected by copyright.
A trademark can protect the name and other aspects of a board game. Trademarks serve to identify the source of a particular product or service and to distinguish the products of one seller from those of others in the marketplace. If a game’s name is not generic or merely descriptive of the game, it may warrant trademark protection. Similarly, other aspects of a game—character names, logos, graphic designs, and so on—may qualify as trademarks. As with any other trademark in the United States, registration is not required, as trademark rights begin to accrue as soon as the mark is used in commerce, and thus the game’s developer may prevent others who come later from using marks if there is a likelihood of confusion among the consuming public.
A battle over one of the best-known board games in history led to a change in trademark law. Parker Brothers, publisher of Monopoly, was embroiled in a decades-long series of legal battles with an economist named Ralph Anspach, who had designed and begun selling a game he called Anti-Monopoly. The dispute addressed a variety of claims, but the trademark infringement claim predominated. Finally, in 1983, the Supreme Court let stand an appeals court ruling that the word “Monopoly” had become generic, because purchasers associated the name with the product rather than with the source.7 Specifically, evidence showed that purchasers of Monopoly were motivated by their knowledge of the game, and not by its association with Parker Brothers. Directly as a result of this case, Congress amended § 14(c) of the Lanham Act, which addresses cancellation of a registered mark, later that year. Congress added language clarifying that a mark becomes generic only if its “primary significance . . . to the relevant public” is as the generic description of the particular goods or services, and that purchaser motivation is not used as the test.8
Since the 1983 decision, and notwithstanding the legislative “fix” to the issue, the status of the MONOPOLY trademark is somewhat muddy. Hasbro (the current owner of the game via a series of mergers and acquisitions) is listed as the owner of the original 1935 MONOPOLY trademark registration, which was theoretically canceled in 1983. Notwithstanding the registration, Hasbro contends with a relatively steady stream of “-opoly” games. The U.S. Patent and Trademark Office has more than 400 records of applications to register game names ending in “-opoly.” Most of them have been abandoned or canceled, but there are several “-opoly” trademarks registered to other owners. (Interestingly, Hasbro also owns the trademark registration for ANTI-MONOPOLY, though the game itself is sold by the apparently unaffiliated University Games.)
As noted above, game names are an obvious option for trademark protection, but game designers and publishers have also sought to register and protect trade dress in game board designs, distinctive card layouts, and even game tokens. Hasbro, for example, owns registrations for the design of the Monopoly game board, much of the artwork (e.g., the railroad icon; the images for the “Jail,” “Go to Jail,” and “Free Parking” spaces; and others), the Chance and Community Chest card designs, and the layout of the game’s money.
Although methods of play may not be suitable for copyright protection, patent protection may be available. A utility patent grants its owner the right to exclude any other person from practicing the patented invention. As applied to a board game, a patent would therefore allow the patent owner to prevent anyone from marketing a game that employed the game mechanics covered by the patent. In order to be patentable, the game mechanics must be unique and nonobvious, meaning that (1) the mechanics for which patent protection are sought are not already known or in use by others; and (2) differences between the game mechanics and prior games must not be obvious to someone with ordinary skill in the area of game design. If granted, a patent lasts for 20 years from the date of application. However, identifying the unique attributes of a game can be difficult, and the cost of obtaining patent protection and policing one’s patent can be prohibitive. As a result, individual and small game designers may not be in a position to pursue this avenue.
In 1935, Parker Brothers obtained a patent for the Monopoly board game, invented by Charles Darrow.9 The patent described the rules of the game and claimed the apparatus of a board game consisting of a continuous path around the board, and groups of spaces, each indicating the required rental for an opponent’s piece, with such rentals increasing as the owners acquired more spaces in the same group. Eight additional claims added or modified aspects of the game: for instance, Claim 2 added Chance cards; Claim 3 added title cards corresponding to the spaces, buildings, and player tokens; and so on. Claims 4 through 9 all specified that the spaces around the board represented “real estate locations, railroads, utilities, chance, community chest and penalties,” which narrows the scope of those claims and represents the theme of the game more than the mechanics. Nowadays, a company seeking to patent a game might be less likely to be so theme-specific in its claims to avoid limiting the protective value of the patent.
For example, in 1993, Wizards of the Coast (WotC, now a division of Hasbro Inc.) released a game based on collectible trading cards entitled Magic: The Gathering (M:tG), which became an instant success. In 1995, WotC was granted a patent for a “Trading Card Game Method of Play” that claimed a method of playing games in accordance with the rules of M:tG (an extended version of which made up the description of the preferred embodiment of the claimed invention).10 The claims of this patent detail various elements of game play, but are devoid of any reference to the fantasy and magic theme represented by the artwork of the game.
Patent law provides some traps for the unwary that may impede a hopeful game designer’s plans. Frequently, a game developer will ask gamers to play the game in a prototype form and provide feedback, which can be used to refine the design. Although playtesting can identify design problems that may make the game less enjoyable—or even impossible—to play, in the United States, public disclosure may invoke the on-sale bar, which prevents a patent from issuing if the invention was “in public use, on sale, or otherwise available to the public” more than a year prior to the application date.11 (In some foreign countries, there is no one-year grace period; any public disclosure prior to the application precludes the patent.) Thus, playtesting—particularly in a public setting, such as at a game convention or trade show—could be considered a public disclosure that will bar patentability. Also, some designers offer “print-and-play” versions of their games, which allow players to download and print out simple versions of the components and rules of a game and play it before the game is published. This too may be public disclosure sufficient to defeat a patent application.
Patent law also contemplates design patents, which may be awarded to new and original ornamental objects. While a utility patent applies to how an article works, a design patent addresses how the article looks. As such, a design patent may be an avenue for protecting novel game components, allowing the owner to prevent others from using similar-looking components. The design patent protects only the ornamental features of the article in question; any aspect of the article that performs a function will not be suitable for a design patent.
IP Complications in Board Gaming
The stereotype of the lone inventor puttering around in his or her garage or workshop can actually be a reasonably accurate depiction of the independent game designer. Game design is often an iterative process over months or years, during which the designer adds, subtracts, modifies, and otherwise tinkers with an initial concept. A brief perusal of the “Board Game Design” forum at BoardGameGeek.com,12 a community website dedicated to board game news, reviews, and forums, shows a multitude of posts from designers explaining their works in progress and asking for advice from other game designers and gamers in general, about rules, mechanics, and how to publish a game (or get a game published).
Once a game is published, it may be the subject of one or more expansions—additional components or rules that change or enhance the initial game. Often such expansions are made by the original designer or a publisher that acquired the right to publish the game from the designer; in such cases, the allocation of IP rights—copyright, trademark, and/or patent—will remain the same as for the underlying game. However, some games are published in one country and licensed to a different company for publication and distribution in another country. Depending on the terms of the license, the foreign company may have the right to develop an expansion.
This situation may complicate the question of ownership. An expansion may include, for example, an additional game board, or new components designed to integrate with the original components, or revised or expanded rules. The expanded version of the game would then be considered a derivative work of the original game. If the license or distribution agreement does not clearly define the parties’ respective rights, the individual or company that creates the expansion will own the copyright in those items. Many distribution agreements in the strategy board game arena are one – or two-page contracts setting forth little more than revenue sharing terms, meaning such rights are often not clearly delineated. The owner of the underlying game may not have the right to distribute the expansion, which can threaten sales if the consuming public is more interested in the expanded game than the original.
It can sometimes be difficult to get enough players together in one room at one time to play games. Computer program versions of board games—loaded onto a computer and played by one player against the computer—have been around for some time. The transition to an online format playable by multiple players in real time or asynchronously makes perfect sense for a board game developer. However, gamers can be impatient, and if a game publisher is not quick enough in creating and publishing an online version of a popular game, those among the community who are enterprising programmers may take matters into their own hands and come up with a homegrown, “unofficial” version of the game. Of course, such vigilante game development has IP implications that can lead to trouble.
In 2005, an Indian company released a game patterned on the popular word game Scrabble, which it called Scrabulous. The game was originally available on the company’s website, and in 2007, they released the game on Facebook, where it quickly became very popular. Shortly thereafter, in 2008, Hasbro, the owner of the original Scrabble game, filed a lawsuit against the company,13 and sent a notice to Facebook requesting that Scrabulous be removed from the service under the Digital Millennium Copyright Act (DMCA). Facebook complied for U.S. and Canadian subscribers. Mattel Inc., which owns the international rights to Scrabble, filed suit in India and initiated a DMCA action to have Scrabulous removed from Facebook for the rest of the world. The Delhi High Court ruled that the game of Scrabble itself was not copyrightable, but that the name “Scrabulous” infringed the SCRABBLE trademark.14 In the end, the Indian company re-released the game as “Lexulous” and made changes to the board layout and the point values of the letter tiles, hoping to distinguish the game from Scrabble sufficiently to avoid infringement. Ultimately, Lexulous returned to Facebook, after reaching agreements with Mattel and Hasbro; but it has never regained the same level of popularity.
In part, the failure of Lexulous to regain its former standing is due to a different Scrabble-like word game that popped up on Facebook in 2009 called Words With Friends. The creators of Words With Friends designed their game from the beginning to be different from Scrabble, using a different board layout, different point values for letters, and a different tile distribution. The creators also focused on the social aspects of the game, resulting in one of the most popular games on Facebook. Words With Friends now coexists on Facebook with an official Scrabble Facebook game developed by Hasbro. In an illustration of some of the oddities of IP issues in the game industry, Hasbro and Zynga (which acquired Words With Friends and added it to a stable of online games) entered into a relationship in 2012, under which Hasbro released a Words With Friends board game—effectively making a board game based on a Facebook game that was in turn based on its own board game.
Board games occupy a somewhat eccentric niche in intellectual property law, often not fully protectable by copyright, trademark, or patent, and thus susceptible to knock-offs and alternate themes. A would-be board game designer should understand which kinds of IP protection apply to which aspects or components of the game, and take appropriate steps to protect them accordingly: registering the copyright in the rules and other copyrightable components; ensuring that all agreements with contributors (such as artists) assign all rights to the game developer; exploring the possibility of patent protection for truly novel game mechanics; and making sure that any license or distribution agreements clearly delineate the IP rights of each party.
1. See, e.g., Dominique Collon, Mesopotamia: Assyrian Guardian Figure, BBC History (July 1, 2011), http://www.bbc.co.uk/history/ancient/cultures/mesopotamia_gallery_09.shtml.
2. See, e.g., Peter A. Piccione, In Search of the Meaning of Senet, Archaeology, July/Aug. 1980, at 55, available at http://www.gamesmuseum.uwaterloo.ca/Archives/Piccione/index.html.
3. Annual Sales Data, Toy Industry Ass’n (2013), http://www.toyassociation.org/tia/industry_facts/salesdata/industryfacts/sales_data/sales_data.aspx.
4. 101 U.S. 99 (1879).
5. Id. at 104.
6. 17 U.S.C. § 102(b).
7. See Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 684 F.2d 1316 (9th Cir. 1982), cert. denied, 459 U.S. 1227 (1983).
8. 15 U.S.C. § 1064(3).
9. U.S. Patent No. 2,026,082 (filed Aug. 31, 1935).
10. U.S. Patent No. 5,662,332 (filed Oct. 17, 1995).
11. 35 U.S.C. § 102(a).
12. Board Game Design, BoardGameGeek, http://boardgamegeek.com/forum/26/boardgamegeek/board-game-design (last visited Jan. 22, 2015).
13. Complaint, Hasbro, Inc. v. RJ Softwares, No. 1:08-cv-06567 (S.D.N.Y. July 24, 2008). Hasbro withdrew its lawsuit in December 2008.
14. Mattel, Inc. v. Agarwalla, IA No. 2352/2008 in CS(OS) 344/2008 (Delhi H.C. Sept. 17, 2008) (India), available at http://law.marquette.edu/facultyblog/wp-content/uploads/2008/10/mattel_v_jayant.pdf.