EQUIVALENT CITATION: 2008 (153) DLT 548
KEY ISSUE: Infringement of trademark and copyright in the board game ‘SCRABBLE’ by use of metatags and hyperlinks
Plaintiffs in this case were leading manufacturers of toys, games and consumer products. One of the well-known products of the Plaintiffs was the board game marketed and popularized by the name ‘SCRABBLE’ (hereinafter “the game“).
The trademark ‘SCRABBLE’ has been used since the year 1948. The Plaintiffs averred being owners of the trademark SCRABBLE in all countries except the United State and Canada. The Plaintiffs gave a list of their licensees for various platforms. They also averred having advertised and promoted the game extensively through the Internet and maintaining popular websites including, www.scrabble.com and www.mattelscrabble.com. The plaintiffs thus claimed that mark ‘SCRABBLE’ has become a well-known trademark within the meaning of section 11(6) of the Trademarks Act, 1999.
The Plaintiffs alleged that defendants launched an online version of their board game under the mark SCRABULOUS, as an application available through the popular networking website www.facebook.com. The online version was also promoted through the defendants’ website www.scrabulous.com, www.scrabulous.info and www.scrabulous.org. Therefore, plaintiffs claimed that such unlawful adoption of deceptive and confusingly similar mark for the online version of their game, amounts to infringement under section 29 of the Trade Marks Act, 1999 and passing off.
- The word mark is descriptive and distinctive at the same time and hence, the Court cannot refuse protection under Trade Marks Act 1999.
- Apart from adopting a deceptively similar mark, defendants also infringed their mark by using metatags, i.e. machine readable codes used by search engines to index sites for their website. The defendants used the following metatags- scrabble online, play scrabble online, free scrabble online, play scrabulous live etc. This clearly amounted to infringement and passing off, as the defendants, through such tags, diverted internet traffic away from the plaintiffs’ websites and misled the public that their (defendants’) products are associated with the plaintiffs.
- Defendants also used hyperlinks to the plaintiffs’ websites and rules for the scrabble game. Some of the hyperlinks used were- download scrabble free, play scrabble free, free online scrabble etc. The text of the hyperlinks independent of the content of the websites, is sufficient to constitute infringement. Plaintiffs also claimed that Defendants have infringed their copyright in the game board and the rules. By the use of red, pink, blue and light blue tiles, use of identical patterns of arrangement of coloured tiles and the use of a star pattern on the central square, the plaintiffs claim that the defendants have infringed their copyright in the game board which is an artistic work.
- The word SCRABBLE is generally used for the name and not for the brand, and hence, there can be no protection for the same under the Act.
- They were lawfully operating their websites and there was no attempt to misappropriate any traffic. The metatags used were in relation to their product ‘Scrabulous’, and not ‘Scrabble’. Using the word ‘scrabble’ in coding was a method of describing the game and was not intended to indicate any brand. Since the plaintiffs did not have any version of their game online, there was no question of diverting Internet traffic.
- Their website did not contain hyperlinks to various unauthorized infringing websites.
- Since the word ‘scrabble’ is in the public domain, any such use cannot be infringement of the plaintiffs’ rights.
- Copyright claim in relation to the game board is not maintainable since the board, which is a three dimensional article is not copyrightable. Additionally, the shape and configuration of the board can be registered as a design, and therefore, monopoly over the copyright extinguished the moment more than 50 articles are produced and commercially sold under Section 15(2) of the Copyright Act.
- Whether use of metatags and hyperlinks amount to trademark infringement and therefore should be afforded protection.
- Whether the Rules of the Board Game scrabble and it’s layout were capable of Copyright protection.
The Hon’ble Court observed that each time courts are confronted with the issue of determining whether general words used as marks are source specific, the nature of the product, the degree of resemblance it bears with the word mark, the length of time used, are guiding, though not the only factors to be considered. 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.
In the present case, the Court thus observed that the factual background shows that ‘SCRABBLE’ is not per se descriptive of the word game, unlike, say MONOPOLY or CROSSWORD, which are close to the genus. No doubt, its extensive use and popularity has resulted in the word being used to describe the game. But that is precisely what the plaintiffs contend, in support of their argument about distinctiveness of the mark and hence, the Court restrained the defendants from infringing the trademark of the plaintiffs.
The arrangement of colours, values on the board, the collocation of lines, value for individual alphabetical tiles, etc have no intrinsic meaning, but for the rules. If these rules- which form the only method of expressing the underlying idea are to be subject to copyright, the idea in the game would be given monopoly: a result not intended by the lawmakers, who only wanted expression of ideas to be protected. Thus, this Court concludes, prima facie, that the copyright claim of the plaintiff cannot be granted.
Section 15 of the Copyright Act mandates that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in respect of designs capable of registration under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee. It cannot be disputed here that reproduction of the multicoloured game board has occurred more than 50 times, as also the alphabetical tiles. It is not also in dispute that there is no registration which has taken place under the Designs Act, 1911 (or under the Designs Act, 2000). In these circumstances, the defendants’ objection that copyright cannot be claimed, is prima facie merited. For this reason too, it is held that the plaintiffs’ copyright claims cannot be granted, at this stage.
The defendants were restrained from infringing the plaintiffs’ registered trademark in SCRABBLE and using the name SCRABULOUS, or any other mark deceptively or confusingly similar to SCRABBLE, in any manner, including by using it as part of domain name, or other use such as hyperlinking, metatagging, advertisement, or any other such form of use. However, no Copyright protection was granted to the Plaintiff on account of Doctrine of Merger and Section 15(2) of the Copyright Act, 1957. As per doctrine of merger, when the expression of an idea is the only way of expression of idea, i.e. the idea could not be expressed in any other way and merges with expression, the expression cannot have any protection.
- No copyright protection can be given to the expression of an idea, which can be expressed only in a very limited manner, because doing so would confer monopoly on the ideas itself.
- Word ‘Scrabble’ was given a Trade Mark protection.
- In respect of designs capable of registration under the Designs Act the copyright in design shall cease as long as any article to which the design has been applied, has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee who has failed to obtain design registration in respect of the same .
Author: Akshay Goel, HNLU, Raipur | Editors: Vivek Verma, Founder, ICL and Ankit Rastogi | Image from here