By Adam Smith
November 26 2008
On September 17 2008 the Delhi High Court ordered RJ Softwares, a company owned by brothers Rajat and Jayant Agarwalla, to cease using the name ‘Scrabulous’ for its online word game, as the term was found to be deceptively similar to game manufacturer Mattel’s SCRABBLE mark. “That is certainly a victory for Mattel,” says Mustafa Safiyuddin of DSK Legal in Mumbai. But the war is far from over: the prima facie judgment also ruled that the game was not protected under copyright law, so Mattel plans to appeal before the case progresses beyond the interim stage.
Observers around the world, from journalists to committed word game players, have commented prolifically on the case, most prominently this summer when social networking site Facebook ceased hosting the Scrabulous application at the request of Hasbro, the owner of the US rights in the Scrabble game. The Scrabulous Case “may rewrite the rules of the game,” remarked Caroline McCarthy, a journalist covering social media from New York, where Hasbro filed its take-down request on July 24 2008. For a short time it looked like an international outcry from the two million gamers who played Scrabulous on Facebook could prompt the brand owner to concede. But Hasbro's sister company Mattel, which owns the international rights, persisted in its application for a temporary injunction in India.
In its application, Mattel claimed that the name ‘Scrabulous’ was deceptively similar to its trademark for SCRABBLE and use of that name constituted infringement. The defendants claimed that ‘scrabble’ was a generic word in the English language. The court found for Mattel, ruling that “courts [should] 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”. RJ Softwares immediately complied with this ruling and changed the name of its game to ‘Lexulous’ – though it has still not been reinstated on Facebook (an alternative version, Wordscraper, challenges 200,000 gamers every month). Interestingly, the software company was also restrained from metatagging, hyperlinking or including the infringing trademarks in the source code of its websites. Rajiv Khaitan of Khaitan & Co represented RJ Softwares but could not confirm that his clients had ruled out appealing the decision. “We do of course have the chance to file an appeal, but my clients will consider this at an appropriate time because they first want to get over the copyright issue,” he said.
Meanwhile, “Mattel has filed an appeal with regard to the copyright issue,” confirmed Donald Aiken, vice president and assistant general counsel at Mattel, in an email to WTR. Safiyuddin thinks the toy company has a strong case. “The judgment on copyright is wrong,” he says. RJ Softwares was of course “extremely pleased” with the ruling. But Safiyuddin dismantles it on several counts, finding fault in Justice Bhat’s failure both to look at the work as a whole and to separate the expression of the idea from the idea itself. “In effect the judge is saying that the moment you have game rules, anybody is free to copy the whole thing because the rules are the idea.”
The classification of the game also came under scrutiny. “The court prima facie held that as Scrabble is a game played on a game board registrable under the Designs Act, Mattel should have applied for design protection,” says Khaitan, adding that ”Under the Copyright Act you lose your copyright protection after you’ve reproduced 50 mechanical copies of any work registrable under the Designs Act unless you protect your work as a design”. But Safiyuddin sees “an overlapping of design and copyright” and describes the classification of Scrabble as a game requiring design protection as “wrong”. It seems there is still plenty of controversy over this issue; Mattel’s appeal at this interim stage will buy it some time before it faces the wider challenge in proving that its game is protected. Aiken would not comment further on the case.
This test case will see both sides toying with intriguing legal issues over the coming months, initially when it passes to the Division Bench of the Delhi High Court during the appeal against the interim judgment. “I expect the case to reach the Supreme Court,” predicts Safiyuddin. Scrabulous looks set to keep attorneys from both sides busy. Accordingly, as Khaitan says, “We don’t have any time to play Scrabble!”
Adam Smith, World Trademark Review, London
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