Wednesday, August 21, 2013

Hangman copyright and TM claim escapes executioner, unfortunately

Ward v. Andrews McMeel Publishing, LLC, No. 12 Civ. 07987 (S.D.N.Y. Aug. 1, 2013)

Ward sued defendant AMP for copyright infringement, trade dress infringement, and common law unfair competition.  Ward has published Scratch & Solve Hangman (S&S) books for about twenty years.  Hangman involves guessing a word or phrase letter by letter; failed guesses mean that the player draws a portion of a man hanging from a scaffold.  As the district court quoted, “[w]hen you play the game . . . , either you win or you die.  There is no middle ground.”  George R.R. Martin, A Game of Thrones 488 (1996).  (Sorry.) 

The S&S books came to the US in 2005, and Ward registered the copyrights.  In 2008, AMP started publishing hangman books as part of its Pocket Posh line.
Ward alleged that the PP Books “incorporate the entire concept, feel, and design of the S&S . . . Books,” taking their “overall appearance and trade dress,” “lift[ing] their layout and style of the text . . . and even the appearance of the typefaces,” “misappropriate[ing] the style and appearance of the hanging-man drawing,” and “copy[ing] a substantial number of the answers.”

Plaintiff's S&S:

 Defendant's Pocket Posh:
So, the court had to allow free use of ideas and look only for substantial similarity in protectable elements, but without dissecting works into separate components and comparing only copyrightable elements.  This impossible and contradictory test, unfortunately, seems to have prolonged this dispute; unless something is going on other than the images offered by the court and by Amazon, I find it hard to imagine even the notoriously vague “look and feel” test offering any protection.  The only apparent similarities stem from the nature of scratch-off/one-player Hangman: similarity of idea.  Infringement can consist in copying the plaintiff’s selection, coordination and arrangement of unprotectable elements.  And infringement is usually reserved for the trier of fact because substantial similarity “typically presents an extremely close question of fact.”  (This is a dumb rule having no empirical or theoretical justification, and honored in the breach.)

The court didn’t consider allegations that AMP copied the S&S instructions because this wasn’t alleged in the complaint but only in opposition papers.  So it looked at the overall appearance, layout and style, including the rows of scratch-off letters and answer location, and the appearance of the hanging man drawing.  (What the heck is he supposed to look like?)

As to the letters, Ward argued that that they were similar in silver circles covering similar-looking x marks.  But only the PP books submitted to the court had an x; the S&S books had a hangman sticking out his tongue.  S&S:

If Amazon has an accurate representation, some S&S books have an x—but again, what is a wrong answer supposed to look like? 
As the court pointed out, “a bold X” is not protected by copyright.  “Aside from the image of the hangman, which AMP did not copy, no aspect of the lettering scheme is protected.”

Here, there was no separability from the utilitarian aspects of the scratch-off lettering.  The silver circles weren’t protected; no copyright owner can monopolize colors or circles (not to mention that this is completely generic for scratch-off products, which should bear on the selection, coordination and arrangement analysis as well!).  Nor were the “variations of typographic ornamentation, lettering, or coloring” subject to copyright protection. The arrangement of the letters in alphabetical order was also unprotected; indeed, alphabetizing was singled out by Feist as below the minimum for copyrightability.

Ward also alleged that the PP books copied a significant number of answers from S&S books. Each answer was individually unprotected as words or short phrases.  While selection and arrangement can be original, Ward alleged that only a small fraction of the S&S answers were copied and didn’t allege that they were copied in the same order.  In any event, Ward failed to plead with sufficient specificity—he didn’t identify which S&S books were allegedly copied, while claiming registration for over two dozen books and publication for twenty years.

AMP argued that the hanging stick figure was an unprotectable scene a faire.  Amazingly, the court disagreed.  It distinguished Universal Athletic Sales Co. v.Salkeld, 511 F.2d 904 (3d Cir. 1975), which held that the use of stick figures in instruction manuals for exercise equipment were not sufficiently similar to constitute copyright infringement, finding similarity only in ideas.  That was a substantial similarity case, but it seems pretty apposite: what jury could find that the literally thin protection given to S&S’s particular expression of the hangman figure, which is the basis of the game, encompassed AMP’s version?  This game isn’t worth the candle.

Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001), also said that “copyright protection does not apply to ‘familiar symbols or designs.’”  But copyright still covers original combinations of basic symbols, designs or letters, which after all make up most works, and the originality standard is low.  Stick figures are not unprotected as a matter of law, though they might get very thin protection.

“The differences between the illustrations contained in the S&S and PP Books demonstrate that some originality was used in each.”  (And that there couldn’t be substantial similarity.)  The court noted that the orientation of the S&S stick figure and gallows varied so that the gallows always appeared between the stick figure and the edge of the page, while the gallows were always to the right in the PP books.  The base and the shaft of the gallows, along with the corner between the horizontal and vertical shaft, were also differently configured in each.  The PP gallows had an additional diagonal piece.  The rope in the S&S Books curved around the head of the hanging stick figure, while it descended in a straight line in the PP Books.  The PP noose had a not; the S&S noose didn’t, and was tighter around the stick figure’s neck.  The relative size of stick figure and gallows differed; the stick figures’ heads were differently shaped; their arm positions were different; and the PP figures’ limbs were straight, while the S&S figures’ limbs were curved.

So, the illustrations (which didn’t look alike) were copyrightable, while the scratch-off lettering and answers weren’t.  Now the switcheroo: “Whether the illustrations or total concept and overall feel of the PP Books are substantially similar to those of the S&S Books presents a close factual question. Accordingly, it will be left for a jury to determine.”  Motion to dismiss denied!  (Why not convert it to a motion for summary judgment?)  Query: what is left of the total concept and feel that isn’t idea?

AMP fared slightly better on the trade dress claim, though not for the reasons you’d expect.  This too involves the total image of a product.  AMP argued that this was just a duplicate of the copyright claim and barred by Dastar.  But Dastar does not foreclose Lanham Act claims based on the same underlying conduct as copyright claims. Though courts must exercise caution with communicative products, multiple violations of IP laws are possible.

However, a plaintiff seeking to protect trade dress in a product line must articulate the elements comprising the trade dress and make clear how they’re distinctive.  Using too great a level of generality may indicate that the plaintiff is trying to protect no more than a concept or idea, which won’t do.  Ward pled that all S&S books used the same trade dress, including a series of silver scratch-off circles below each letter of the alphabet, depicted in a few rows, with numbered blanks for the answers below and a stick figure with a noose loosely around its neck beside.  Ward further pled misappropriation of the style and appearance of the hanging-man drawing, including the body outline, noose and gallows.  The court found this sufficient, because it didn’t plead such broad assertions to provide it a claim against any competitor or a monopoly over a concept. (Really?  Again, what’s a printed hangman game supposed to look like?)  Somehow the color scheme is also involved: “Ward has adequately explained how his trade dress is distinctive based on both the color scheme used and the general layout and spatial relationship of the various elements appearing on each page of his books.” 

I don’t really understand why it’s plausible to plead that this trade dress is protectable when it doesn’t cover the covers.  Even if it’s adequately specified, it’s the inside of the books.  Since when is that protectable trade dress?

What about secondary meaning and likely confusion?  Premature to address them.  But the claim was still dismissed because Ward failed to plead nonfunctionality, as required for unregistered product design trade dress.

Ward’s unfair competition claim was also not preempted by copyright, because passing off has an extra element of confusion over source and bad faith (not itself an extra element).  Comment: I don’t get it.  AMP didn’t properly plead infringement of anything protectable.  What do bare allegations of confusion cover? Confusion over what?  If it’s not over the trade dress, what is it?  If it is the trade dress, shouldn’t failure to plead nonfunctionality be equally fatal, especially if we are to avoid a true conflict with federal law?

This case goes to show that, too often, the words “copyright” and “trademark” apparently are the magic keys to get past Iqbal and Twombly.

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