Tuesday, April 7, 2015

Invoking IP: Direct copies of games

For this segment of Invoking IP, we are going to talk about a very recent case, Ward v. Barnes & Noble, Inc., 2015 WL765833, __ F.Supp.3d __ (2015).  The case actually concerns a dispute between Michael Ward and Sterling Publishing Co., which was later acquired by Barnes & Noble.  Michael Ward, a New Zealander, had created a new game called “Scratch Hangman.”  This was like normal hangman, but could be played by a single player.  Instead of asking letters from another player, each letter has a scratch off to inform the player whether the letter appears in the puzzle and, if so, in which spaces.  Ward went all out with these things—the two books in question are “Trivia Hangman” and “Hollywood Hangman.”

Ward started publishing the books in New Zealand, but later contacted Sterling to distribute his books in the U.S.  Sterling and Ward struck a deal in which Sterling agreed to “copyright the Work in the United States in the name of [Ward], but indicated that if Sterling supplie[d] material for the Work (such as illustrations), Sterling may copyright such material in its own name.”[1]  Eventually, things went south when Sterling started creating scratch hangman copies of its own.  Ward ended up suing Barnes & Noble (Sterling’s owner) for copyright infringement, trade dress infringement, and unfair competition.  For the copyright infringement claim, Ward claimed “that he had c[o]me up with the concept and created the unique style of the ‘Scratch-Hangman series of books’ and that the publication of additional ‘Scratch & Solve’ books under different authors’ names infringed.”[2]  We’re going to ignore the questions of trade dress and unfair competition here and focus on the copyright question: Can you exercise a copyright over a game whose concept you’ve created?

The opinion pretty quickly notes that “a copyright does not protect an idea, but only the expression of an idea.”[3]  The judge gives us a couple of caveats.  First, the scenes á faire doctrine: which excludes protection from “sequences of events that necessarily result from the choice of a setting or situation” and from “elements of an image that flow naturally and necessarily from the choice of a given concept.”[4]  Further, quoting Feist Publications v. Rural Telephone Services Co., the court notes that a work must have “some minimal degree of creativity.”[5]

Does his copyright claim fail?  Boy does it ever.  First, “many of the elements of [Ward’s book] that he contends Defendants infringed are simply not copyrightable.”[6]  Well, the hangman board has existed since Victorian times and, even if the game were subject to copyright, would have passed into the public domain anyway.  As for the scratch off letters, “a plaintiff has no right to copyright…a common geometric shape.”[7]  And you also can’t copyright “variations of typographic ornamentation, lettering, or coloring.”[8]

But, Ward doesn’t lose completely.  His illustrations (which normally hold a more stringent standard of protection) are knocked out as uncopyrightable scénes á faire doctrine.  But, the court holds that the instructions for the game might be copyrightable.  “And while the idea upon which a game is based cannot be copyrighted…the wording of instructions for the playing of a game is itself copyrightable so as to prevent a literal or closely paraphrased copy.”[9]  The works that Ward was suing over had copied his instructions verbatim.  The court doesn’t rule in Ward’s favor, but does say that a full trial on that count would be in order.  There was never a full trial though—the two parties settled there.

Now, let’s apply some of this to RPGs?  Here are the interesting questions:
1)      Can you stop a rival producer of a similar (identical?) RPG from using art that nearly approximates your own?  Probably not unless it’s a direct copy, under the scéne á faire doctrine.
2)      How closely can you hew to the rules of another RPG in developing your own?  Undecided.  You can’t produce a literal or closely paraphrased copy (absent a license), but how close is too close?  We’ll look at some future cases where they note that things like instructions have limited ways to be expressed, so the level of protection is lower.

[1] Ward at *2.  (internal quotations omitted).
[2] Id. at *3.
[3] Id. at *4.
[4] Id.
[5] 499 U.S. 340, 345 (1991).
[6] Ward at *5.
[7] Id.
[8] Id.
[9] Id. at *8 (quoting Milligan v. Worldwide Tupperware, Inc., 972 F.Supp. 158, 162 (W.D.N.Y. 1997).