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.
Plaintiff's S&S:
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:
PP:
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.”
PP:
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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