A fresh perspective (copyright)

Since I already trudged out my old law outlines to check up on trademarks, I figured it wasn’t far out of the way to review my copyright notes. I think this was a good call because I have been seeing a lot of threads about copyright and the answers people are being given generally don’t sit well with me. It isn’t that any of the information is wrong, it is that I don’t think the information is put in a proper context to address the heart of their question. People are asking how they can share their ideas and still be protected and the actual answer is that they cannot. Instead, they are being given accurate and correct advice on how to register their copyright with the federal government. What this article aims to do is give a copyright overview in laymen’s terms and let you see what copyright can do and cannot do (foreshadowing—it isn’t going to protect your idea).

Executive Summary

Copyright exists to protect original creative works fixed in some permanent form like a book or audio recording or digital message board forum. You gain copyright the moment your creative work becomes fixed without having to do anything extra (i.e. you don’t have to put that little C in a circle next to anything). Your specific wording, the art you use, and your graphic layout are all creative works and are all protected.

If, a year later, someone else creates the almost identical creative work without ever having seen yours, they would gain copyright in their version and you would retain it in yours. Copyright doesn’t let you block someone else from the same creative space, it only allows you to protect your creative space. Copyright also only covers the expression of an idea, not the idea itself. The vast majority of people seem to want to use copyright to protect their great idea. It will never do this and even if you found a way to make it do that, the courts would go out of their way to not protect your idea because that is not the intent of copyright.

The nitty-gritty law

The authority to protect copyright and issue patents comes from the Constitution, Article I, Section 8, Clause 8.

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and Discoveries.

Sort of ironically, when the Founders said ‘science’ they meant things like writing and painting and when they said ‘arts’ they meant things like chemistry and engineering.

The core language of copyright law states in pertinent part:

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2-8) extra stuff like music, drama, pantomimes, pictures or sculpture, movies, sound, architecture.

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Let’s break this down. Paragraph (a) gives us copyright with the following conditions: (1) original, (2) work of authorship, (3) fixed in a tangible medium of expression. We’ll handle them in reverse order.

(3) Fixed in a tangible medium of expression really just ends up meaning that it is reproducible. If you skywrite a poem it is really hard for us to give you protection because we have no proof that you ever did it. If you video record yourself skywriting a poem, though, it is fixed in the video and you gain copyright at the very moment it is recorded. This requirement is mostly here for evidentiary purposes (to help us prove you created something to copyright).

(2) Works of authorship are the subcategories listed in (a)(1) – (8). For most of our purposes, we’re dealing with writing which is (a)(1). Slam dunk.

(1) Original is an extremely low threshold to cross. The courts don’t want to become the national censor, deciding what is and is not original, so they just went ahead and decided that almost everything would be original. So long as you independently created it and it has some minimal degree of creativity, it is original. ‘Independently created’ means you didn’t steal it from someone else. Minimal degree of creativity can be as little as asking Oscar Wilde to lean towards the camera while you take his photograph (see Burrow-Giles).

So the vast majority of works that people want to protect will satisfy paragraph (a). They are original works of authorship fixed in digital forms that are easily reproducible. Where we’ll run into problems is paragraph (b) where copyright expressly does not protect ‘ideas, procedures, processes, systems, methods of operation,’ and so on. Basically, everything that makes a game unique, the fun mechanics and ideas underlying it, that we all so desperately want to protect are specifically exempted from protection. How we express or present those ideas is protected, but the ideas are not. This is known as the Idea-Expression Dichotomy.

The Idea-Expression Dichotomy is a tricky part of copyright law and it is where you’ll spend most of your money if you try to protect or defend yourself. A very famous case of Baker v. Selden is pretty illustrative for our purposes. Selden was an accountant who created a new system of bookkeeping, published it in a book, and then developed forms to facilitate using that new bookkeeping method. Eventually, someone decided to reproduce the forms, slightly altered, cheaper and Selden (via his estate) sued. The court found that his words were copyright protected, but the forms were only protected in their exact layout. Even minor alterations were enough because the forms were expressing an idea (not copyrightable) and the slightly altered forms expressed that same idea somewhat differently.

Overlay that case onto game design, whether RPG or board game or whatever. If you create some new system and develop forms (character sheet, board, cards, etc) to help communicate, interact with, and resolve events in that system you are only protected to the extent of your exact layouts. Even minor alterations lets someone else express that same system and those same ideas as their own.

This brings us to our final topic: merger. Imagine a scenario wherein the idea Selden created could only be expressed by the layout he selected on his form. In other words, he comes up with some brilliant game mechanic and perfectly expresses it and no one else could express it any other way. In that case, the idea and the expression merge. Because you cannot copyright an idea, if they merge, you lose copyright even in the expression. In fact, merger is broader than that. If there are only a few good ways to express an idea, they all can be lost. Basically, courts really, really don’t want to let you use copyright to block ideas and so they will go out of their way to make sure others have room to get at those ideas. 

A fresh perspective (trademarks)

I knew that I wanted to refer to Scratch as ‘Scratch,’ but that doesn’t necessarily mean I would name it Scratch. After all, everyone calls Magic: the Gathering ‘Magic’ but that isn’t really its name. There are a lot of legal considerations to weigh, but ultimately I just decided to go with simple old Scratch. Here’s why….

The area of intellectual property law that names deal with is almost always trademark law. Under some conditions you might be able to copyright a genuinely fanciful name, but the government isn’t going to let you put a fence around common language (like Magic, the, or Gathering) and claim it as your own. The government grants trademarks not to protect the business, but to protect consumers. If a business goes out and invests heavily to associate a certain level of quality with the name Coca-Cola and consumers then decide they are willing to pay a premium for that quality, another company coming along and marketing soda in a similar can under the name Coka-Cola might lead to some consumers erroneously purchasing it and paying that premium when they otherwise would not.

As a result, because they are intended to protect consumers, trademarks only protect products used in commerce. If I have a copyright, I can take it home, put it in a trunk, and it is mine. If I have a trademark and I don’t use it, I abandon it and it is up for grabs.

Part 1: Some definitions.

A trademark is any word, name, symbol, device or any combination thereof,

(1)    used in commerce by a person, or;

(2)    which a person has a bona fide intention to use in commerce and registers,

to identify and distinguish his or her goods from those manufactured or sold by others and the indicate the source of the goods, even if that source is unknown.

‘Use in commerce’ means the bona fide use of a mark in the ordinary course of trade and not merely to reserve a right in a mark. In general, a mark placed on goods (like a board game) is used in commerce when,

(1)   it is placed in any manner on the  goods, containers, displays, or documents associated with the good or their sales, and;

(2)  the goods are sold or transported in commerce.

What this means is that putting a little TM by your name is only going to work if you’re actually in the process of selling or transporting your goods to be sold. If you are planning to sell or transport to sell your goods, then you can gain the protection but you’ll need a registered trademark (the little R in a circle) which costs money.

Part 2: Distinctiveness of the Mark

The mere usage of a mark in commerce doesn’t guarantee you protection. Trademarks are to protect consumers, so we only grant protection to distinctive trademarks. If a consumer would be unable to identify it, why protect it? Distinctiveness is measured on a spectrum. On the far left we have “inherently distinctive” marks that are fanciful, arbitrary, or suggestive. In the middle we have ‘non-inherently distinctive” marks that are descriptive. On the far right we have “generic” marks which are generally unable to be protected.

It looks something like this (you can click to enlarge):

Fanciful trademarks are made up words that convey no meaning at all other than their trademark meaning. Words like Kodak or Exxon are gibberish but for what they represent in commerce. These trademarks basically automatically gain protection.

Arbitrary trademarks are existing words used to identify a product that have no intrinsic link to that product. Words like Apple (computers) or Blue Diamond Nuts are arbitrary and also gain protection. However, they will tend to gain protection in a narrower scope of commerce. Exxon’s protection would extend to all spheres of commerce so I could not try to register an Exxon Pretzel Cart. Because Apple is arbitrary, it leaves space for Apple Records to exist in its own sphere of commerce.

Suggestive trademarks are evocative (or suggestive) of the product but it takes some thought to get there. Marks like Greyhound, Coppertone, or Victoria’s Secret are suggestive and also almost immediately gain protection. This is the border, though. Once you go beyond suggestive marks you have to fight for protection. As with any spectrum, there are areas where the two zones touch, so selecting a suggestive mark exposes you to argument that you are in fact a descriptive mark and could jeopardize protection.

Merely descriptive or non-inherently distinctive marks convey some immediate idea about the product in a direct fashion. Marks that describe some quality of the product (Crunch Bar), use a surname (Smith’s Games), or are literally descriptive (Pizza Rolls) are all merely descriptive. IMPORTANTLY, merely descriptive trademarks receive no protection until they can demonstrate that the mark has acquired distinctiveness or a secondary meaning. While inherently distinctive marks are automatically protected through their mere usage in commerce, you have to demonstrate that your descriptive mark deserves protection. This is an expensive process that generally involves consumer surveys showing that they recognize your mark and associate it with certain products. For small, independent companies, this ain’t happening.

Let me reiterate, if you name your business John Smith Game Company, you probably cannot block any other John Smith from naming his company the same thing and also trying to sell games. In fact, Doug Johnson could name his company John Smith Game Company and you'd still probably have no recourse.

Finally, generic trademarks are literal pronouncements of the product. Marks like Peanuts to sell peanuts will not be protected. If you’re too successful or you don’t protect your mark, you might become generic (Xerox, Advil, escalator, etc).

Part 3: Penumbral Rights

Once you have a trademark, it begins to develop a zone of protection around it, again to protect consumers from confusion. The size of that zone, sometimes called penumbral rights, depends on the strength of the mark (demonstrated by consumer surveys). We talked earlier about Coka-Cola. If a coffee company tried to create Mocha-Cola, a coffee-soda hybrid, they’d likely get shut down. Coca-Cola is such a strong trademark that no one can get anywhere near it. It can even get weirder—Starbucks has stopped small independent coffee houses from using green straws because consumer surveys have demonstrated that a significant chunk of consumers can identify a coffee beverage solely by the coloration of the straw. That is now a trademark of theirs without ever trying.

Alright, so why just ‘Scratch.’ I bantered around a few ideas for “Scratch: Draw the Line” or “Scratch the line” and then just expect people to abbreviate it to ‘Scratch.’ But the reality is that it doesn’t really matter for me. It is unlikely that the game will ever get successful enough to really need protection and if it does I’ll have the resources to protect it. Scratch would likely be an arbitrary mark which means it acquires protection but it will have a very narrow set of penumbral rights. I’m not going to be able to throw my weight around and push people out of the market… I can deal with that. The importance of trademarks are to make sure that when some kid goes to Target looking for Magic cards because his friend said they are awesome, he doesn’t come home with Magik cards and wonder why anyone thinks this trash is fun. I don’t see Scratch having that problem, I imagine if it sees any sales, they will be direct sales that I promoted. As a result, I might as well just call it what I like, have fun, and see what happens.