Thanks to reader Apar Gupta, I have the text of the decision by the High Court of Delhi in Mattel, Inc. v. Agarwalla, a copyright and trademark action by Mattel against the Agarwalla brothers, the makers of Scrabulous. I posted a brief news item about the case earlier, and posted a four-part series on the American lawsuit against Scrabulous over on Prawfsblawg in August. (See Part I, Part II, Part III, Part IV.)

As the Agarwalla brothers reported a few weeks ago, the Indian decision held that Scrabulous did not likely infringe on Scrabble’s copyrights, but that the name “Scrabulous” does likely infringe on Scrabble’s trademarks. The court therefore issued an “ad interim injunction,” which I assume is the same as a preliminary injunction, against further use of the Scrabulous name. But my primary interest is copyright law, and the court’s copyright analysis, although very brief, is fascinating. Essentially, the court held that because the board and rules are necessary for game play, and game play is not copyrightable, therefore the board and rules are not copyrightable either. I think this probably goes too far, but it’s an interesting example of a court grappling with the nature of copyright in games.

The decision, authored by Justice S. Ravindra Bhat, relies heavily on American case law concerning copyright and games, including one of my favorite game-copyright cases, Allen v. Academic Games League of America, 89 F.3d 614 (9th Cir. 1996). The court held that Scrabble board and rules are not copyrightable on several grounds: (1) the game board did not meet the necessary minimum “modicum of creativity” to be considered “original”—and thus deserving of copyright protection—under Indian copyright law; (2) that protection in mass-manufactured product designs such as game boards and pieces is available exclusively under the (Indian) Designs Act of 2000, not under copyright law; and (3) the doctrine of merger prevents protection of the game board and pieces. It’s that last argument that intrigues me most, since the other two rely on elements of intellectual property law peculiar to India. Here’s what the court says:

Furthermore, and most importantly, the application of the doctrine of merger would mean that the colour scheme on such a board can be expressed only in a limited number of ways; if the plaintiffs’ arrangement were to be avoided, it is not known whether the idea of such a word game could be played at all. Similarly, the reasoning in Allen and Atari [v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir. 1982) (the “K.C. Munchkin” case)], as far as copyrightability of rules of a game are concerned apply squarely, in this case. This doctrine of merger is applicable with respect to games as (according to those decisions) “they consist of abstract rules and play ideas.” By way of illustration, 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.

This is a bit of a jumble, but one way of extracting out the argument is this way: The essence of a game is an uncopyrightable “idea” that manifests itself during play. That idea includes everything necessary to play the game, including the rules, and the board. Indeed, the board, Justice Bhat suggests, is meaningless—does not express any idea at all—apart from the rules. (“[T]he 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.”) Given this close connection between rules, board, and uncopyrightable game idea, the doctrine of merger prevents protection of the rules and board, as it would impermissibly extend to protection of the idea.

This line of reasoning would seem to preclude copyright not only in games, but also in most game elements, which is contrary to most of the American authorities. In other words, it would be difficult to protect games at all under copyright law. In India, this effect is mitigated by the fact that, as the court suggests, design protection is available for the game under a different statute. Some sort of trade dress or design patent protection might apply to games under U.S. law as well. But I think Justice Bhat’s reasoning, to the extent I’ve captured it accurately, may be flawed.

First, although it is often stated in the cases and treatise sections on games, it’s difficult to elaborate on the claim that games are unprotectible ideas. “Ideas” in copyright law typically refer to very general descriptions of narratives or plots; the “idea” of E.T., for example, is simply a very general description of the plot of E.T. (E.g., alien child gets left behind by parents and hangs out with human family for a while.) The theory is that copyright’s protection must be located in more specific expression than an “idea,” or else too many of the building blocks for other creative works will be used up. Certainly any copyright in Scrabble would not extend to any game fitting a very general description of Scrabble: a crossword game in which players get points for words on a grid. Boggle does not infringe on Scrabble.

But the notion that the game is an unprotectible idea is said to result in the uncopyrightability of the game as a whole, not just very general descriptions of it. I think this is the result of the courts’ attempts to get at the difference between the game-in-the-box and the game-in-play. The game-in-the-box, under American law, may be copyrightable, but the game-in-play is not. The game-in-the-box, as I’ve argued, is a set of constraints on player action, but it does not define the core player experience. That experience arises out of the game-in-play—the result of the interaction between players and game-in-the-box, and as a result not fixed by the game-in-the-box. It’s that experience that for most people defines the game. When people say “Scrabulous is exactly like Scrabble,” they mean that it plays exactly like Scrabble, even if the board looks somewhat different.

But that game-in-play is not expression transmitted from author to player; and therefore it is beyond the author’s copyright, which protects only such expression. The resemblance of one game-in-play to another occurs at a high level of generality—at the level of uncopyrightable idea. But that doesn’t mean that the game-in-the-box is an uncopyrightable idea. Indeed, a substantial amount of creative expression may be embedded in the game-in-the-box—in the design of the board, or the pieces, or in the way that the rules are written. That distinguishes the game-in-the-box from the extremely general plot descriptions I mentioned above—the archetype of the “uncopyrightable idea.” The merger doctrine might apply to any attempt to enforce a game copyright against a similar-playing game. But it would not necessarily operate to prevent enforcement of copyright in the game elements.