Law School Exam Hypothetical of the Day

[heidi]

I know that some people believe that if TPTB (the powers that be) ask a fan to stop doing something, the fan(s) in question should immediately stop, no questions asked (except maybe to confirm that the request really came from TPTB and isn't a hoax).

Last week, Hasbro sued the guys who created Scrabulous as a Facebook app, claiming copyright and trademark infringement. So now, there's a lot of irate former Scrabulous users who are calling for a boycott of Hasbro, a return of Scrabulous, etc.

No, the situations aren't completely analogous, but there are similarities - the IP owner is upset about an action they view as infringing and asks the entity they believe infringing to stop and....

Do you think that the Scrabulous creators - who are fans of the Scrabble game (which is protected by copyright and trademark laws), who created something similar and yet with strong and obvious differences - should have removed their game as soon as Hasbro asked them to?

[Poll #1232503]

I'm really curious as to what people who have legal backgrounds would think and do, versus what lay-people would think and do, but I'm not really sure how to ask that in the poll without it getting very unwieldy.

Comments

[titti]

I think a fan's response to a request from TPTB would depend on the circumstances, although most often than not, I'd say don't take it down, especially if it's NOT trademark.

I think the Scrabulous situation would depend on economics of it.

[heidi8.livejournal.com]

Jayant Agarwalla, 21, told The New York Times in an article published over the weekend that they did not create Scrabulous to make money, even though they now collect about $25,000 a month from online advertising. They just wanted to play Scrabble on their computers, and their favorite (unauthorized) site had started charging, he said.

NY Times, back in March (it's now the second link in the post)

[titti]

I meant more the economics of being sued or not. I wasn't really making a moral judgement.

I love how NO ONE said that the fans should comply. *g*

[stinaleigh.livejournal.com]

I think that a fan's response to a request from TPTB would depend on the circumstances. I think that the Scrabulous creators should have perhaps asked permission from Hasbro ahead of time and failing that, once they were asked to pull the game, they should have seen if they could have worked something out with TPTB. I don't know that they didn't try and work it out, but if it couldn't have been, it should have then been pulled before a suit needed to happen.

In the specific case of Scrabulous, my first impression from reading about the game on posts of my friends sounded like they were playing Scrabble on Facebook, and I didn't realize until I joined Facebook that it wasn't actually a Hasbro construct.

[heidi8.livejournal.com]

As it sounds, since March they've been trying to work something out with Hasbro but Hasbro hasn't been willing to give them a license, because they've wanted to control the game setup themselves. I'm sure there are details we don't know, but that's the gist of it.
The actual-confusion issue you mentioned is interesting, because I'm sure that Hasbro would try to utilize your experience as evidence of actual confusion since you didn't realise it wasn't really Scrabble, but the Scrabulous guys would deem it an absence of actual confusion because when you saw it, you realised it wasn't actually really Scrabble.

[stinaleigh.livejournal.com]

since March they've been trying to work something out with Hasbro but Hasbro hasn't been willing to give them a license,

Arrgh! To me this is just silly business. The popular product is already out there. Yes, you missed opportunities to make money off of it already, but they are offering to let you cash in now. All they have done is create bad will toward their new product.

[tamerterra.livejournal.com]

... I didn't realise it wasn't official until I read this post. I'm a fairly unobservant person, however.

[marag.livejournal.com]

To me, it tends to boil down to money. I think pretty much any transformative work that doesn't make money is okay, and it shouldn't have to come down. When you start making money, that's another kettle of fish, however. If I were making money off it, I'd take it down immediately.

I have absolutely zero legal training, in case you didn't know :)

Curious me!

[heidi8.livejournal.com]

What if all the money earned was plowed into improving the service, creating new games, server hosting fees, domain names and websites for hosting FAQs and related info, etc.? Is it when it goes towards salaries for the creators and developers and marketing people that it gets iffy for you? Is it ok when the money kinda sorta goes to the salaries of the people at the server hosting company or GoDaddy?

Re: Curious me!

[marag.livejournal.com]

It's definitely salaries that start to get iffy. I think using the money to make the service better is okay. But I think there are a *lot* of gray areas here.

For example, I'm a writer for Firefox News, which someday hopes to make a profit with advertising while writing *about* fandom. I might even get paid for writing reviews of fannish shows. I'm totally comfortable with Leva maybe someday making a salary from fandom. But...we don't publish fanfiction or anything like that on the site.

Also, I do see a difference between fanfiction and Scrabulous, but I'm not coherent enough to articulate it :D

[rookie131.livejournal.com]

IMHO, if Scrabble beta didn't suck ass, people wouldn't be complaining about Scrabulous being gone. Hasbro should have had their software ready to go when they said Scrabulous had to come down. This is really bad PR for them.

[wendywoowho.livejournal.com]

What rookie131 said.

[story645.livejournal.com]

I think they didn't want to risk scrabulous being even more popular, and a beta version is ready to go (at least for preliminary user testing.) I think they kind of shot themselves in the foot by letting scrabulous live 'til the beta, thereby allowing scrabulous to get popular enough to get so many complaints at being taken down. Facebook is flooded with apps, so it takes a while for even the most popular ones to gain momentum.

[teaberryblue.livejournal.com]

Well, to be honest, Hasbro should have asked Scrabulous to be taken down immediately considering they let implied consent stand for as long as they did.

[heidi8.livejournal.com]

I think they did ask, at least as far back as March or late February, though.

[heidi8.livejournal.com]

Distraction?

[cathybites.livejournal.com]

I think what it comes down to, for me, is we're committing copyright violations every day, and we're more or less allowed to do so because TPTB choose to look the other way. I think if they ever changed their minds, they'd be well within their rights to do so, and it'd be best for fans to comply. If I ever received a C&D letter, I probably would take whatever it is down. I'd complain, but better that than the headache of dealing with what might happen if I didn't.

[violet_quill]

I think that the cases are the same for the question that you're asking. A copyright owner or a copyright owner's lawyers can't make you do anything. Because the copyright owner doesn't have the authority to decide if your work is infringing, only a court can do that. And the same applies to any legal issue, like defamation or whatever was up with the Supernatural website thingy. So until that person/company/band of laywers goes to a judge and gets an injunction or something, they can't make you take anything down.

Though that said, it might be in your best interest to take it down. As in, if they send you a letter that says 'take down this site or we'll sue you.' Because even if you've got a great case, if you get sued you'll still have to pay a lawyer. So that in effect is the power that TPTB have. Unfortunately the threat might be just as powerful as the legal power that they don't actually have.

[pennswoods.livejournal.com]

My response is that of a layperson with no background in law who is against the stifling of creative and innovative works.

I believe in creative and non-stifling solutions to situations like these in which fans, creators, educators, students, and profit-making entities can receive recognition and profit, while still meeting and stimulating the creative and educational needs of society as a whole.

[teaberryblue.livejournal.com]

The issue in the Scrabulous case is that this goes beyond just using a name or image-- it's using a set of rules and gameplay that is owned by Hasbro, and that is a big difference-- it's a mediumistic similarity between board game and computer game, and there are licensed versions of computer Scrabble, which means that hypothetically, people might have been playing Scrabulous instead of a licensed version that might make Hasbro money through ad revenue or subscription fees. So yeah. I was actually surprised that Scrabulous was permitted to begin with.

[kimmparker.livejournal.com]

You needed an option for "case by case basis, but I don't know enough about this case..." or did Blindy here miss it? But then again I am definitly a lay person.....

The Post's IT blog has been covering this for the last few weeks, looking more at the tech implications and aspects than legal. They're interesting to skim through.

[likebunnies.livejournal.com]

From personal experience with TPTB, I'd have to say that the response would depend on circumstance. If someone really wants to fight TPTB, then go for it. If they aren't in a financially able to do it at that time or prepared to go through whatever hassle it might bring, then don't. With $25k a month from advertising, I'd guess they would be able to afford some legal help. Other fans who get in the way of TPTB might not be able to do so.

[heidi8.livejournal.com]

TPTB were evil to you! And, as you know, in your case, I think they were dead wrong.

But the thing is, even without having $ on hand, there's places that give free legal service, like the EFF and the Stanford Project - and the OTW (Organization for Transformative Works) is also able to help facilitate access to legal services, so Jane Q Fangirl isn't on her own when she gets a C&D.

[likebunnies.livejournal.com]

I'm sure that if everything else hadn't been going wrong in my life at that exact moment, I would have been more willing to fight the whole thing. I was also sharing the website with someone and she really didn't want to deal with it so we weren't the ones to fight it. I am often curious as to how many how fic writers have ever heard from the MPAA because I know they are still using their rating system all over the place. Did they honestly believe they'd be able to make people stop doing that? Seems like a silly battle to get into with fandom.

[icarusancalion.livejournal.com]

Hell if I know. Most things can be negotiated. It's a foolish company that sees expansion of it's product without licking it's lips and looking for a way to profit from it. I don't know how Scrabulous works so I don't know what would entice Hasbro to be nice and cooperative.

As for pulling the game, not just on their say-so, but for the duration of negotiations as a good-faith gesture, sure.

[darkjediprncess.livejournal.com]

Since Scrabulus has been available on the web for the past 2 years, it should be deemed implied consent on the part of Hasbro since they knew about it but did nothing. I think the only reason Hasbro is now suing them and ordered a C&D is because Scrabulus is kicking the snot out of EA’s Scrabble Beta version and another attempt at an online Scrabble version on FB and Hasbro is embarrassed. So instead of admitting they screwed up by not fulfilling a need they’re going after these guys to save face. If they were smart they would either buy out Scrabulus or make a deal so that it is an officially licensed web version of Scrabble and the creators can continue to make updates, etc.

[elf]

I'd forgotten about implied consent; that does punch a hole in the trademark infringement claim. It doesn't do anything to the copyright claim, but that's a lot harder to prove--obviously, scrabulous has seriously transformed scrabble by moving it to a computer screen.

I thought Unique And Innovative games would be patented, not just have elements trademarked?

Anyway. I vote Fight The Powers: don't take it down, don't assume you should take it down, until the judge says so.

(IANAL. IANALawstudent. I work in an office scanning legal documents; I can abbreviate "plaintiff's first opposition to motion to suppress" about nine different ways. And as a fan interested in fanfic, I know a bit about copyright law, less about trademark law, and nothing about patent law.)

[gonzai55.livejournal.com]

While I'm in the 'circumstances' camp, I've been working in law offices for 18 years now and I know that, even if you think you're in the right, it's a good idea to cease/take it down until things are sorted out. It shows good faith on your part and limits the damages should things go to heck later.

In the case of Scrabulous, it looks to me like a fairly blatant ripoff of Scrabble. Hasbro shouldn't have left it up that long, but it should have come down the moment Hasbro asked.

[heidi8.livejournal.com]

From my lawyer-perspective, though, taking something that is potentially transformative, without trying to open negotiations first and making the take-down a part of the negotiation process, has the potential to be risky, too. There's very few situations - other than those involving exact copies to which nothing has been added or altered - where the situation can be damaged by waiting twelve or so hours, and getting in touch with the sender of the C&D first.

[jennem.livejournal.com]

Disclaimer: I'm a rising 3L at a T25 law school. I am also gainfully employed post-law school at a Vault 50 law firm, so long as I graduate and pass the bar.

I voted "something else I will explain in the comments."

Do you think that the Scrabulous creators - who are fans of the Scrabble game (which is protected by copyright and trademark laws), who created something similar and yet with strong and obvious differences - should have removed their game as soon as Hasbro asked them to?

I love both Scrabble (I own the deluxe turntable edition) and Scrabulous. I play Scrabble at home with friends, and I play Scrabulous on Facebook instead of paying attention during class. :D

And, I'd like to know what "strong" and "obvious" differences exist between Scrabble and Scrabulous. They even use the same colored tiles for Godssake. There are also licensed Scrabble versions online. So, I'm not really sure that any "strong" and "obvious" difference exists. (I'm not trying to be sarcastic or facetious. I really have no idea what differences you are referencing.)

With that said, I think fans are perfectly within their right to fight C&Ds. You want to fight it, go right ahead. More power to you. Fans are also perfectly within their right to comply with a C&D. Don't want to fight it? Fine. I respect that, too. The fan takes the personal risk, so the fan gets to decide what to do when they get a C&D. I don't think fandom (or any other entity with a tangential interest in the outcome of a case) should be allowed to dictate how a fan responds to a C&D.

That said, if you refuse to take down the allegedly infringing material, then don't come crying to me when your ass gets sued. Because that's how lawyers and companies respond to non-compliance with a C&D. They sue you. They might win. They might lose. They might try to settle. But, if they were bothered enough to pay an attorney $500 to send you a C&D, there is a very real possibility that they're going to be bothered enough to sue your ass come payday.

[heidi8.livejournal.com]

The differences, to me, are in the gameplay. Things like the challenge element and the chat-setup, are obviously different from the tile-based version of the game.

Because that's how lawyers and companies respond to non-compliance with a C&D.

Sometimes - but a lot of the time, if they are replied to with a list of reasons why the work is noninfringing, they will back down. $500 isn't much of anything to a large corporation, and oftentimes the C&D comes from a firm they have on retainer or someone who's in-house, so there's no actual cost for that specific project to the copyright or trademark owner. I think these days, with so many law school clinics and organizations who're able to help fans who get a C&D letter, the first action someone can take is now to get in touch with someone who can help.

I don't think fandom (or any other entity with a tangential interest in the outcome of a case) should be allowed to dictate how a fan responds to a C&D.

I agree with this. But fans should act from a position of knowledge and information, and remember that just because a company or an actor says something doesn't mean they're right.

[executrix.livejournal.com]

Hey! Let's not forget trade dress infringement!

I don't think they dragged on long enough to trigger a laches defense.

The way I see the legal status of fanfic is that the ownership of the "bundle of rights" allows control over *commercial* exploitation of derivative works. I don't have a cite at hand, but I'm pretty sure the PTO said that just transferring something from print to digital is not a protected transformative work. (There are other issues in the National Geographic case--more to do with compilation copyrights than change of medium.)

I do see fanfic as a protected transformative work--we're not just transcribing a TV episode, we're adding something (often very implausible things!) But AFAIK Scrabulous is simply an attempt to cash in on Hasbro's intellectual property--especially since I agree that licensed online Scrabble has been available for a long time.

[theladyscribe]

The problem with Scrabulous is that it is blatant copyright infringement: Scrabble is trademarked, and there are no other similar games out there. Unlike, say, checkers, which to my knowledge is not owned by any specific company, Scrabble is owned by Hasbro/Mattel and therefore, anyone who uses its format and rules is subject to paying for that usage somehow (even the people who buy the game for home entertainment do this).

As for the fan issue: I assume you are referring to the kerfluffle regarding the Jensen Ackles fansite/LJ comm. I made a post about it in my personal journal (which is flocked, so no link, sorry, though I'd be willing to add you if you wish to read it), but my understanding in this circumstance is that they may have been sued for libel (definition here), or possibly even libel per se (definition here). In this instance, the lawyers may not have acted tactfully (I don't know, as I've only read second-hand accounts of what has happened), but the order to C&D should have been followed, no questions asked, because libel is a serious offense which can have major consequences for all involved.

The counter-argument might be "Well, JA's an actor, so it's easier to dismiss accusations of libel!" but I suspect that any lawyer worth his (or her) salt would have threatened libel per se, due to the fansite's claims that Jensen has "functional illiteracy" (which could be seen as a claim that he is inable to perform his job).

Just a note: I come from a family of lawyers - grandfather, father, two uncles, two cousins (and a third who may become a lawyer herself), all of whom have a tendency to talk legal issues at meals. So yes, I have a bit of background in the field.

ETA: Um. I didn't mean to blather on about fannish legal issues in your comments. Sorry.

[heidi8.livejournal.com]

But I love blather about fannish legal issues! That's why I made the post in the first place, so blathering could ensue.

My understanding in the Jensen-matter is that nobody was sued, and that it's impossible for all the content on the comm and on the website to have been libelous - although I don't know the whole of the situation, either. But it's the kind of thing where sorting through the content on the site to see if anything actually was libelous would've been a possible approach, and pull down the things that are, rather than pull down everything.

[melaniedavidson.livejournal.com]

Honestly, I'm not seeing what those "strong and obvious differences" are. I mean, it's online and it has an optional built-in timer, but I don't see anything else. It looks like it has the same rules, the same board (with the same layout of point multipliers), the same amount of each letter, and the same point values for the letters. And the name is pretty similar.

[heidi8.livejournal.com]

The differences, as I understand them, are in the gameplay more than in the layout (although the version I saw didn't have the point/score info on the board when you looked at it, which is a difference, and when looking to the trade dress or copyright of something, even the little differences can be used by a lawyer to argue that they add up to something more significant). But things like the work-lookup "cheat", the chat-aspect of the layout and other "challenge" portions of the game don't exist in the offline version.

[melaniedavidson.livejournal.com]

I meant the gameplay, too--I played a game against the AI to see, since I couldn't find the rules written out anywhere--but maybe it's different against a person. *shrug*

[copracat]

I am not a lawyer but my career has involved some heavy duty negotiating both in situations where I had the upper hand and where I didn't, working with lawyers on contracts and with IP, licensing etc. My attitude is that every situation depends on circumstances. In the commercial world if you've got the motivation, time and money you hash it out, if you don't you cave to the other party's demands.

I don't believe fans should do what TPTB say simply because it is what TPTB say, no more than I would simply take an adversary in a negotiation at their first word. Each fan faced with a demand from TPTB regarding their fannish property must look at their own willingness to continue doing whatever they were doing, seek advice, consider their own opinion on where they stand legally and go on from there. It's not like there's a boss of fandom who says, 'Vera, I want a deal with these outcomes for us: make it so.' Nor can any fan impose on any other fan a requirement to take the kind of risks that disagreeing with big companies can involve. Of course, as anyone who has successfully disagreed with their insurer can tell you, just because a big company says it doesn't make it true.

[llyfrgell.livejournal.com]

(here from metafandom)

Aieee. This is very similar to the last hypothetical that was on my IP exam last semester. And I really wish it weren't, because I feel like I should have opinions and things in this comment, but my brain can't get past "EIGHT HOUR EXAM. FLEE."

Brief opinion, as a rising 2L who has survived an intro IP course at a top-tier law school: I think the Scrabulous situation is VERY different from a fanfiction situation (though I admit I'm not very familiar with the issues arising from fanvids and the like), in that Scrabulous actually could serve as a supplement for Scrabble if someone didn't want to shell out the cash for the game itself. One of my favorite IP cases is the Ty vs. publisher-of-collectors-guide, where the book actually contained images of each Beanie Baby in the Ty line, but the court found that the book could not substitute for, and in fact enhanced the value of, the toys themselves - and Ty's lawsuit failed on those grounds. I really like the supplement/complement test, and I think Scrabulous very well might fail it while most (if not all) fanfiction would not.

That was kind of a tangent - as far as whether I think fans should automatically take down work upon receiving a C&D, it depends on the kind of fanwork and, basically, how legit they think the claim against them might be. If it happened to me, as someone who is only involved in fanfic, not fanvids or fanart, I'd think it was ridiculous and leave the work up because I'd expect it to withstand an infringement suit. For other fans, I'd say they should seek legal advice before complying.

Edited because I fail at words.