Are You Game?

Copyright Protection in Table-Top Games

Johnathan Aloni, LL.M.

INTRODUCTION

For nearly a century, table-top game1 (TTG) rules of play have been conventionally

viewed as uncopyrightable2 in the eyes of U.S. courts, under both the 1909 Copyright

Act3 and the U1976 Copyright Act4. This paper suggests that this view should be

reconsidered: that rules of play for table-top games (“Rules”) are works of creative

authorship that are copyright subject matter and should be eligible for copyright

protection, in a manner similar to the protection granted to video games.

This papers suggests that the continued categorization by the courts of table-top game

rules as “idea,” “system,” “method of operation” or “process” under the exclusionary

terms of Section 102(b) of the 1976 Copyright Act 5 is erroneous in consideration of legal

developments in copyright and gaming law on the one hand, and the nature and

development6 of the games themselves on the other.

Drawing from recent developments in video and table-top game case law, this paper

notes that over the last few decades, as video games have become increasingly popular
1
Tabletop game (2015) in Wikipedia. Available at: https://en.wikipedia.org/wiki/Tabletop_game
(Accessed: 26 October 2015).
2
U.S. Copyright office - games (2012) Available at: http://www.copyright.gov/fls/fl108.html (Accessed: 26
October 2015); British Copyright Council – Board games (04.18.2012)) Available at:
http://www.britishcopyright.org/information/design/board-games/ (Accessed: 26 October 2015).
3
Copyright Act of 1909, Pub. L. 60-349, 35 Stat. 1075
4
Copyright Act, 17 U.S.C. §§ 101 - 810
5
Ibid.
6
Bruce Whitehill, American games: A historical perspective (1999) Available at:
http://thebiggamehunter.com/main-menu-bar/history/american-games-a-historical-perspective/
(Accessed: 26 October 2015).

1
and a source of increased litigation, the judiciary has granted expanded copyright

protection to video games, and, more recently and specifically, to the rules of play and

“functional”7 elements of video games.

This paper suggests reconsidering the application of section 102(b) of the 1976 Copyright

Act8 to table-top games. This same consideration, recently given to video games, should

be extended to table-top games as well. This paper further suggests that the prevailing

interpretation of Baker v. Selden9, and section 102(b) of the 1976 Copyright Act10 as its

progeny, do not apply to table-top games, as these are both directed towards functional,

non-recreational inventions. Table-top games are not a functional, practical process by

nature, but rather a form of art, a means of recreational entertainment, similar to video

games, novels or musical compositions.

Therefore, this paper suggests that table-top games should perhaps be clearly listed as a

protectable item in section 102(a) of the 1976 Copyright Act, 11 to reflect advances and

changes in copyright law and game design and complexity, acknowledging the evolution

of copyright law’s conception of video and table-top games.

This paper does not propose that every table-top game be protected, just as not every

literary or musical creation is granted protection. Just as the courts have, over the years,

developed tests and standards to determine the creative threshold necessary for

7
"[T]he purpose or function of a utilitarian work would be the work's idea, and everything that is not
necessary to that purpose or function would be part of the expression of the idea.” Whelan Assocs., Inc. v.
Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1234 (3d Cir.1986)
8
17 U.S.C § 102 - Subject matter of copyright: In general
9
Baker v. Selden, 101 U.S. 99 (1879)
10
Ibid.
11
Supra, at 5.

2
copyrightability for other creative arts, these tests must similarly be developed by the

courts, and by academia, with regard to table-top games.

Needless to say, any idea for a game — such as a game involving empire-building in

outer space in the far-distant future, managing adversarial parties over a time frame

coinciding with the Cold-War era, or role-playing with fantastical heroes in a medieval-

themed world — is still merely an idea; and ideas themselves are not protected.

However, a specific, distinct expression of an idea (such as the “Twilight Struggle” board

game’s recreation of the Cold War between the U.S. and the USSR, which is inherently

different from its expression in the board game “Cold War: CIA vs. KGB”) could be

protectable. If, for example, the rules of play for that game are a creative and original

expression of the game designer’s intent and allow the players to play by those rules with

certain independent originality, those rules could be protectable.

As courts have developed tests to distinguish between idea and expression in books,

music, films, plays, computer software and other media, so too should a test be developed

for application to table-top game copyright infringement claims. However, prior to the

development of such a test, it is imperative to understand what a table-top game is, and

why it is not to be categorized as a system, procedure, or method of play.

Part 1 of this paper reviews the scope of protection available to table-top games as

graphic, pictorial and sculptural works, and under the conceptual separability doctrine.

Part 2 proposes the use of a claim of copyright protection for table-top games as

compilations. Part 3 reviews the history of U.S. table-top games case law, denying

copyright to table-top games. Part 4 examines video-game case law, and the rational

3
under which video games’ rules of play have recently been granted copyright protection.

Part 5 illustrates the irrelevance of historical table-top game case law to modern table-top

games, and exposes the reader to some new, perhaps revolutionary, judicial opinions,

both in the US and internationally. Part 6 concludes this paper, offering an insight which

should aid the judiciary in understanding the difference between the section 102(b) 12

exclusions and table-top game rules of play.

This paper will not examine the patent protection 13 that is currently afforded to table-top

games, its justification (or lack thereof,) or differentiation from copyright protection; nor

will it elaborate on the development of table-top games in past decades, or the advances

and changes in and composition of the table-top gaming market. The potential effect that

granting copyright protection to TTG rules might have on the industry, undoubtedly a

“double-edged sword,” is likewise not considered in this paper.

CURRENT SCOPE OF PROTECTION OF TABLE-TOP GAMES

A. Graphic, Pictorial and Sculptural – Conceptual and Physical Separability

Though rules of a game are not currently copyrightable, certain elements of TTG have

traditionally been categorized as copyright subject matter under the definition of pictorial,

12
Supra, at 5.
13
The discussion regarding these subjects in patent protection for games is reserved for a larger scope
paper. For examples of patents previously granted to patents, see these examples: US Patent No.
5,226,655; US Patent No. 5,301,953; US Patent No. 5,435,565.

4
graphical or sculptural works.14 In Durham Indus., Inc. v. Tomy Corp.,15 when reviewing

and comparing the similarities between two board games, the court notes that copyright

protection is available, but only applies to the artistic aspects of the infringed game, not

the “mechanical or utilitarian” features of a protected work.

By “mechanical or utilitarian,” the court refers to the play mechanism, which is to say,

the operations that propel the game forward — in this case, a simple systems of levers

used to maneuver a disc. The court recognizes that the games are “mechanically identical

and structurally similar,” and correctly turns to examine other expressions included in

both games, such as character design, box design, and other features.

The logic here is straightforward: the rules of these games are nearly identical, as they are

both derived from exact copies of the physically manufactured game. It is not that the

“rule system” of both games is identical; it is the physical mechanism, the levers and disc

that operate both games, that compels this similarity.

Essentially returning to the court’s decision in Mazer v. Stein, 16 the court reiterates that

the design of a useful article will be considered a “pictorial, graphic, or sculptural work”

only if, and only to the extent that, the design incorporates any pictorial, graphic, or

sculptural features that can be identified separately from, and are capable of existing

independently of, the utilitarian aspects of the article.

14
“‘Pictorial, graphic, and sculptural works’ include two-dimensional and three-dimensional works of fine,
graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams,
models, and technical drawings, including architectural plans. Such works shall include works of artistic
craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the
design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are capable of existing independently of, the utilitarian aspects
of the article.” - 17 U.S. Code § 101 – Definitions.
15
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir.1980)
16
Mazer v. Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 470, 98 L. Ed. 630 (1954)

5
To borrow terminology from the trademark field of intellectual property law, the more

“fanciful” an aspect of an article is, the more the court would be inclined to grant that

article copyright protection.17

Thus, an illustration on the cards or the game board, the overall graphic design of the

game, or the individual sculptured playing pieces, would presumably be copyrightable, if

the artistic value they carry outweighs the functional role they are designed to portray in

the game itself.

This definition supports the comparison of the finely-detailed playing pieces of table-top

miniature war games such as “Warmachine,” 18 those of the board game “World of

Warcraft,”19 or the pirate-ship-like centerpiece of “Gezanke auf der Planke,”20 to the

sculptural lamp design in Mazer v. Stein. These game pieces can be presented separately

as sculptural decorative pieces, which they in fact are.21

The elaborate, pictorial and illustrated elements used in modern day card-games such as

Magic: The Gathering22 or Pokémon TCG23 to enhance the player’s enjoyment of the

game as well as to supplement the description of the card’s playabilities and effects are

arguably both utilitarian in conveying the game designer’s enhancing intent, and

distinctively artistic on their own merit, as award-winning works of graphic or pictorial

art.24

17
For a review of the spectrum of trademark distinctiveness, see Abercrombie & Fitch Co. v. Hunting
World 537 F.2d 4 (2nd Cir. 1976).
18
http://privateerpress.com/warmachine
19
http://www.fantasyflightgames.com/ffg_content/WoWBG/wowrules.pdf
20
http://www.spieletest.at/spiel.php?ID=1914
21
See gallery dedicated to painted miniatures, as an art: http://whfm.blogspot.com/2010/11/best-
warhammer-miniatures-ever.html
22
http://magic.wizards.com/
23
http://www.pokemon.com/us/pokemon-tcg/
24
http://www.gatheringmagic.com/news-08212015-pharika-art-wins-a-chelsey-award/

6
By this doctrine, in essence and until very recently, under the bulk of existing case law,

upon examining a game, a court would turn to a part-by-part analysis of the game. That

would mean that only the external artistic value of specific elements of the game would

be copyrightable, while the game itself, as a whole, would remain unprotected.

Such an analysis would result in stripping the game of the cohesive element, that “je ne

sais quoi” that not only holds the separate elements together, but also gives the whole a

meaning beyond its functional value.

B. Games as compilations.

A compilation is a collection or assembly of preexisting materials that are arranged and

coordinated in such way that they become a new original work of authorship. The U.S.

Copyright Office25 provides several examples of possible compilations, including “A

website containing text, photos, and graphics” and “A catalog comprised of text and

photographs.” One might point out that at their root, most game rules are similarly

comprised of text, graphics and/or photos, as in the examples given by the Copyright

office.

While there is no prerequisite that the contributing elements of a compilation be either

copyrighted or copyright subject matter themselves,26 the fact that the individual elements

of the compilation are copyrightable might influence a judicial decision in favor of

finding copyright in the compilation itself.

25
Circular 14, dated 10/2013
26
Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991)/ while facts are not
copyrightable, the original arrangement, the compilation, is copyrightable.

7
A TTG might be construed as a compilation. As mentioned above, the graphic and design

elements are copyrightable, and the literal expression of the rules would be considered a

“literary work” and thus copyright subject matter as well. As a TTG gathers game

components such as cards, rules, figures, markers, etc., the assembly of these elements

together in an original creative way might be considered a compilation.

However, in this author’s opinion, granting copyright protection to TTGs should expand

beyond the technical definition of reassembling existing elements in a new way. This

definition might grant them copyright solely on merit of their individual parts, but it

would not protect them as a whole creation, leaving them vulnerable to copyright

infringement by way of modification of the several elements.

HISTORICAL REVIEW OF LACK OF COPYRIGHTABILITY

A. Early case law denying copyright to games.

8
“In the conventional laws or rules of a game, as distinguished from the forms or modes of

expression in which they may be stated, there can be no literary property susceptible of

copyright.” Whist Club v. Foster.27

This ruling, given nearly a century ago under the 1909 Copyright Act, is still valid law in

the U.S., despite significant changes to the Copyright Act as well as major changes in

games and the gaming industry.

Whist Club v. Foster offers virtually no explanation as to the reasoning behind this rule;

in fact, the entire opinion is merely one paragraph long. It could be simply reasoned that

under the 1909 Copyright Act, games or game rules were neither listed as copyright

subject matter nor perceived as falling into any of the subject matter categories.

Another possible line of reasoning is that at the time, rules of game play were rather short

and simple, often verging on “creativity.” An example is the 1945 case Chamberlin v.

Uris Sales Corp,28 in which plaintiff’s claim was denied as the court ruled that the

similarities between the allegedly-infringed and allegedly-infringing games were most

likely the result of both games’ having being derived from the same source.

In Chamberlin, the plaintiff claimed infringement of copyright to rules of the game “Acy-

Ducy.” The court’s opinion was that this was not in fact an original game, but a variation

of backgammon and Maskee that the plaintiff’s grandmother had taught him to play. The

opinion revealed that this variation of the game was known as “Acy-Ducy” as early as

1910 and was played by several people other than the plaintiff.

27
Whist Club v. Foster, 42 F.2d 782, 782 (S.D.N.Y. 1929).

28
Chamberlin v. Uris Sales Corp 150 F.2d 512, 513 (2nd Cir. 1945).

9
The claim was rejected by the District Court of the United States for the Southern District

of New York, affirmed by the Second Circuit Court of Appeals, giving two reasons:

A. The court did not find any novelty in the game, as it was, as mentioned above,

already known and played.

B. The court pointed out that defendant did not commit any verbatim copying of the

rules’ language, but created his own language for the rules.

While the first point is rather obvious, the second point is problematic. Would a court so

easily dismiss a claim of infringement in the case of a novel or play merely on the basis

that no verbatim copying of the text had occurred, or would the court be compelled to

conduct some analysis of similarities between the two works?

The only case cited by the Chamberlin court in its opinion is Whist Club v. Foster.

Neither of these opinions explicitly states why rules of a game are not copyrightable. As

Pamela Samuelson previously noted, “[T]he cases on games and rules are quite spare in

analysis,”29 making a thorough understanding of the court’s reasoning nearly impossible.

In this author’s opinion, the courts’ tendency to avoid discussion of the nature of the

work and the reasoning behind such decisions could be a result of the elusive definition

of the terms “game” and “creativity,” causing the courts to have difficulty recognizing

TTGs as original copyrightable works of authorship.

29
Pamela Samuelson Why Copyright Law Excludes Systems and Processes from the Scope of its Protection,
85 TEX. L. REV. 1921, 1942-1944 (2007).

10
In Seltzer v. Sunbrock30 the court addressed a claim of copyright that included a staging

of a “live” game, based on rules of a game (race) described in an adventure book.

However, the court reiterated the apparent common consensus that “Even if plaintiffs'

books be held to describe a game or sporting event, the rules thereof, as ideas, are not

copyrightable.”31

The court considered the originality of the game as displayed in the book, and again

refused to acknowledge copyrightability. The court even agreed to some degree of

originality (rejecting a claim of “novelty” by the author,) but clearly stated that any

originality or creativity is immaterial, as in any case in which rules of a game are

considered, originality is irrelevant.32

The court continued to reason that the 1909 amendment to the Copyright Act was not

intended to “readjust” the boundaries of copyright and patent law (by that implying that a

game should transfer from the realm of patent to that of copyright.) However, the court,

again, does not give sound reasoning as to why the rules of a game apparently fall, in the

court’s opinion, under the domain of patent law and not copyright.

In Affiliated Enterprises, Inc. v. Gantz,33 the Court specifically notes that the game’s rule

sheet had been granted a copyright certificate by the U.S. Copyright Office. However, the

Court goes on to state that “[a]ssuming the copyrighted matter to be within Constitutional

purpose (article 1, Sec. 8, Fed. Const.) and also within statutory requirements (sections 4

and 5, title 17, U.S.C.A.), there are no allegations of fact showing infringement of the

copyright. Defendant did not reprint, publish, copy or vend the claimed copyrighted
30
Seltzer v. Sunbrock, 22 F. Supp. 621, 630 (S.D. Cal. 1938)
31
Id at 630.
32
Id at 630.
33
Affiliated Enterprises, Inc. v. Gantz, 86 F.2d 597 (10th Cir. 1936).

11
matter…”34 In short, there was no literal copying of the text, and therefore no

infringement.

Directly citing Baker v. Selden as an authority, the Court straightforwardly denies

copyright, asserting that a plan or system to play a game cannot be covered by the

copyright granted to the rules, nor should it be.35

In a 1996 case, Allen v. Academic Games League of America, Inc.,36 the Ninth Circuit

appears to be turning away from the “games are systems/methods” conviction towards

the doctrine of merger (and back to Mazer v. Stein,)37 stating that the doctrine of merger

is particularly applicable with respect to games, as they consist of abstract rules and ideas

of play. In their ruling, the Court cites Midway Mfg. Co. v. Bandai–America, Inc.,38 and

Morrissey v. Procter & Gamble Co.39

The Allen Court does, however, suggest that copyright of game rules is a viable

possibility. It did this by noting that the plaintiff, Allen, had failed to show the Court that

it would be possible to distinguish the expression of the rules of his game from the idea

of the game itself — in other words, to demonstrate that this idea of a game could be

expressed differently.

The Court seems to suggest that if Allen had been successful in demonstrating such a

separation, it would have been possible to grant these rules the proper, sought-after

34
Id at 598.
35
Id.
36
Allen v. Academic Games League of America, Inc. F.3d 614 (9th Cir. 1996).
37
Supra, note 6.
38
Midway Mfg. Co. v. Bandai–America, Inc., 546 F.Supp. 125, 148 (D.N.J.1982).
39
Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678–79 (1st Cir.1967)

12
copyright protection. However, as Allen did not succeed, this remains an unresolved

issue.

As demonstrated above, in court’s view, and as a general notion, TTGs themselves

cannot be protected by copyright; only specific elements of a game 40 can be protected.

The prevailing concept is that TTGs can acquire protection only elsewhere in IP, such as

in patent or trademark law.

This perception, in this author’s opinion, goes against common sense, as the average

person would understand, almost intuitively, the degree of creativity required to author a

new game.

An example of this natural approach to the existence of copyright in TTGs is the struggle

the of German Game Authors Guild41 of 2013 against the German TTG publishers, in a

demand that the game author’s name be prominently displayed on the external packaging

or cover of the game, not only in the inner rulebook. As part of their public struggle, the

Authors Guild published a legal opinion42 that states that authorship of a game is a

personal creation, the fruit of the author’s imagination and intellectual effort and

therefore entitled to copyright protection, under the German Copyright Act 43. This

opinion emphasizes the differentiation between protected and unprotected games.

40
“Most people wonder, ‘What can I do if the company steals my design?’ My answer to that is: not much.
Copyright protects the text and images in the game — it does nothing about the mechanics, so it's pretty
easy to rewrite a game with a different theme.” –
http://www.thegamesjournal.com/articles/StolenGame.shtml Those Bastards Stole My Game!, GAMES
JOURNAL (May 2002)

41
Spiele-Autoren-Zunft e.V.
42
Atty. Dr. Stefan Risthaus & Attny. Dirk Feldmann (2013) Intellectual Property Rights Regarding Games
http://www.spieleautorenzunft.de/tl_files/files/saz-points-en/SAZ%20Points%20No%205%20-%20Games
%20and%20Copyright%20Protection.pdf

43
http://www.iuscomp.org/gla/statutes/UrhG.htm

13
Unprotected games use a commonly known idea, or “banal” as defined in the opinion.

While not clearly expressed, it seems the opinion is referring to the merger doctrine,

when expression and technical choices are limited or intertwined, or variations of popular

and traditional games such as “Go fish”.

The legal opinion was an important factor in the Game Authors Guild’s struggle. So was

the petition signed by over 4,300 game authors and creators. In August 2013 the struggle

bore fruit as Ravensburger, one of the largest TTG companies in Germany and

worldwide, agreed to the Guild’s demand to recognize game authors as original creators,

and their creation as copyright subject matter.

The bulk of existing case law that currently denies copyrightability to TTGs is outdated,

poorly reasoned, and should be given little weight. These cases may have been justifiable

in the age in which they were written (i.e the early 20th century), as the games discussed

in these cases are either in the public domain (Whist Club, Chamberlin) or show a

minimal degree of originality (Chamberlin, Seltzer). They do not reflect more recent case

law understanding of copyright that supports copyright protection to TTGs, nor do they

reflect the changes that TTGs themselves have undergone in the past few decades. As

shown, later cases suggest that TTGs might be copyrightable, but the issue remains

unresolved.

As demonstrated in Part 5 of this paper, the most recent judicial opinion takes this

suggestion “to the next level” in close connection with advances in Video Game (VG)

common law.

14
 A COMPARATIVE VIEW – VIDEO GAME PROTECTION

A. Copyright in Video Games

So why is it that video games, which are “played” according to a set of rules in much the

same manner as TTGs, have received copyright protection?

Traditionally, VGs receive two kinds of protection:

A. As audio-visual works. (See Midway Mfg. Co. v. Bandai–America, Inc.44)

B. As computer software.

However, if that were the end of the story, this chapter would not exist, and that would be

“the end of the game.” Courts seem to be in favor of granting VGs a measure of

copyright protection that goes beyond either the audio-visual effects or the computer

programming code in which they have been written.

In Midway Mfg. Co. v. Bandai–America, Inc., the Court did find the computer game

copyrightable, albeit with an internal contradiction, first stating that “Audiovisual works

such as these are primarily unprotectable games,” and then going on to say that the

particular forms in which they are expressed – the various shapes, sizes, colors,

sequences of motion or of scenes, arrangements, and sounds – add “something” that

transcends the mere idea of a game. The reasoning was that “The audio component and

the concrete details of the visual presentation constitute the copyrightable expression of

that game ‘idea’,” citing Atari v. North American Philips Consumer Electronics Corp.45

44
Supra, note 21, at 139.
45
Atari v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir. 1982).

15
A close look at the above paragraph reveals a “surprise” element: particular forms in

which rules of a game are expressed are what grant those rules the copyrightability. In

VGs, these forms of expression are fairly concrete: the various sounds incorporated into

the game, the assortment of movement on the screen, and the sequence of actions a

character can perform (as well as the arrangement of shapes, sizes, colors, positions, and

similar visual effects.)

This might be similar to the Court’s holding in Whelan Assocs., Inc. v. Jaslow Dental

Lab., Inc.46 that protection to computer programs might be extended beyond the

programs’ lines of written code to include their structure, sequence, and organization,

suggesting that copyright might be able to encompass more than written code as the

expression of a computer program.

The most recent and significant development in VG case law is the Tetris Holding v. Xio

Interactive47 case. As this case is currently rising to prominence and is widely debated, it

is important to understand its general background.

In recent years, with the rise of mobile gaming and the development of application stores

(app stores) for mobile platforms, more and more successful games have been “cloned.”

A clone is essentially a non-authorized reproduction of an original game by an unrelated

third party. These clones are usually developed rather quickly and cheaply, often

achieving a popularity greater than that of the original game. Until Tetris Holding, the

common perception was that one could “get away with” cloning by copying the rules of

the game, but avoiding the “literal” copying of the audio-visual effect of the games, since

rules of the game are not protected, but audio-visuals effect are.
46
Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir.1986), at 1248.
47
Tetris Holding LLC v. Xio Interactive, Inc., 863 F. Supp. 2d. 394 (D.N.J. 2012)

16
In Tetris Holding, the Court rejected defendants’ claim that it had copied/cloned only the

non-expressive, functional elements of the game. Id. at 408.

The Court clearly states that Xio’s reasoning is erroneous in this case “as a matter of law

and fails as a matter of logic.”48 The Court reasoned (and this author agrees) that what

copyright protects is a designer’s original expression, even when that expression concerns

an idea, rule, function, or something similar. This is true unless the expression is so

inseparable from the underlying idea that there is practically no other way, or very few

other ways, to express the idea.49

However, the bombshell in the development of copyrightability of rules of a VG arrives a

few sentences later:

“While the unenviable task of dissecting a game’s ideas from its expression is difficult,

I… find that the ideas underlying Tetris can be delineated by understanding the game at

an abstract level and the concepts that drive the game… These decisions [Atari, 672 F.2d

at 617 & Midway, 546 F.Supp. at 144, 153] further make clear that the idea of a game is

expressed, in part, through its rules.”50 [Italics added.] The Court further opined that

Xio’s cloning of the game “is akin to literal copying.”51

Reading the Court’s opinion, it would seem that the most troublesome element of Xio’s

actions is the fact that Xio could have exerted an effort to make at least minimal

alterations, invest minimal creativity, or sought to add to Tetris with a minimum of

originality, but instead chose to clone the game “as is”. The Court clearly stated that

48
Id at 408.
49
Id at 408.
50
Id at 408-409.
51
Id at 410.

17
Tetris’s idea of this kind of puzzle could have been achieved in an almost infinite number

of ways.52

Added to that was the defendant Xio’s own expert deposition that “a game designer could

design the playing pieces for a video game in an almost unlimited number of ways” and

that the specific Tetris pieces were “not necessary ... to design a puzzle video game.”53

The Court rejected the defendant’s reasoning that the various elements of Tetris (e.g.

shapes, movement, preview panel, etc.) are just functional manifestations of the rules,

and as such are part of the rules themselves; and thus, as rules are not copyrightable,

neither are any of the game’s elements.

On the contrary, the Court explicitly states that the Tetris copyright does not protect the

movement of the pieces or their style as part of a method, but rather the expressions

associated with these elements. Therefore, considering the many alternatives Xio had in

designing its game, accepting Xio’s reasoning would be granting a “free license” to copy

Tetris’s expression “merely by describing that expression in sufficient detail related to a

rule or a function.” Id at 411.

The Court also rejected the application of the merger doctrine (see Allen v. Academic

Games League of America, Inc.,54 and Mazer v. Stein.)55 If Xio had a nearly endless

number of ways to design the cloned game, using different shapes, sizes, colors,

sequences, etc., in a manner that would have functioned equally well as a puzzle game,

then there can be no merger between idea and expression.

52
Id at 411.
53
Id at 411.
54
Supra, note 19.
55
Supra, note 6.

18
While this is only a district court ruling, it has already made waves across the gaming

industry – including both computer games and TTGs – as it greatly expands the previous

blanket coverage granted to VGs – coverage which might, and should, cross over to

TTGs.

This case does raise one curious question. Tetris is a world-famous game that has been

with us for 30 years. That would suggest that Judge Wolfson knew the game, with a high

probability of actually having played the game, years before this litigation. It could be

argued that his level of detail and familiarity with litigation’s subject matter had an

impact on the result. (It is this author’s contention that judicial misunderstanding of TTGs

partially explains past decisions.)

OUT WITH THE OLD – IN WITH THE NEW!

Existing case law regarding TTGs is outdated: the earliest laws were made under the

previous copyright act, and have become irrelevant. On the other hand, new litigation

involving copyright claims in TTGs is scarce, likely suppressed by the black-letter law

approach barring copyrightability for TTGs.

However, the VG litigation discussed above demonstrates that games might be eligible

for copyright protection, even if only to a limited degree. In VGs this is a result of the

scope of litigation that has expanded as the market for VG has expanded over the years. It

is also as a result in the increased diversity and complexity of VG themselves, as

demonstrated both by new litigation of the past year, and by judicial opinion.

19
The same developments have been accruing worldwide in the field of table-top games.

The American-style board games have grown from the simple Acy-Ducy of the

Chamberlin litigation, to elaborate, multi-player, multi-stage games with multi-page

rulebooks.56 German-style board games (now called “Euro-style”) have taken the market

by storm, introducing a completely new way to play board games. The rules of Role-

Playing Games (RPGs) have gone from a single 20-page booklet to dozens of volumes,

each containing hundreds of pages, with playing options so vast that it boggles the mind.

These changes, and many more, are reflected in the growing popularity of the various

types of TTGs in the U.S. and elsewhere, a popularity reflected in the increase of TTG

market value (however small it might seem in comparison to VGs.) As popularity and

sales rise, so does competition. One aspect of this competition, much in the same fashion

as with VGs, is cloning, or copycat games – games that use the same rules, but “dress”

differently.

One such case is the board game Dominion, 57 which introduced a new way of playing

board games, namely with cards only. (Dominion is sometimes referred to as a card

game, not a board game.) Dominion was very successful and enjoyed rapid sales when it

first appeared on the market in 2008, resulting in the appearance of several copycat

games such as Thunderstone58 (“a fantasy deck-building game much in the style of

56
See Whitehill Bruce, American Games: A Historical Perspective (1999) Board Game Studies,
http://www.boardgamestudies.info/pdf/issue2/BGS2Whitehill.pdf
57
http://boardgamegeek.com/boardgame/36218/dominion

58
http://boardgamegeek.com/boardgame/53953/thunderstone

20
Dominion”) and Valley of the Kings.59 These copycat games began appearing less than a

year after the release of Dominion.

With no acknowledgement of copyright in the rules themselves, each individual game

designer and manufacturer was completely free to take advantage of this new expression

of the idea of a board-game/card-game hybrid combination.

That was in 2008. Recently, in a rare occurrence, U.S. courts have seen two TTG claims

submitted, challenging the existing black-letter law concept denying copyright to TTGs.

These two claims are Wizards of the Coast LLC v. Cryptozoic Entertainment LLC et al.60

and DaVinci Editrice S.R.L. v. Ziko Games, LLC.61

In Wizards of the Coast v. Cryptozoic (hereinafter WotC) the claim relates to

Cryptozoic’s “blatant and willful misappropriation and infringement of some of Wizards’

most valuable intellectual property assets pertaining to its ‘Magic: The Gathering®’

trading card game and trading cards (“Magic” or “MTG”).” 62 That is, that defendant,

Cryptozoic, straightforwardly copied elements of the MTG card game, and implemented

these elements in an online card game of its own named “Hex: Shards of Faith” (“Hex”).

WotC holds at least one patent relating to the mechanics of the MTG card game. 63

However, the complaint includes not just the patent infringement or the copyright

infringement in the copying of ornamental features of the game. Under the headline “First

cause of action Copyright infringement [17 U.S.C. §§101,SEQ]”, the complaint includes
59
http://boardgamegeek.com/boardgame/150999/valley-kings

60
Civil Action No. 2:14-cv-00719: Wizards of the Coast LLC v. Cryptozoic Entertainment LLC et al. Filed in
U.S. District Court for the Western District of Washington. No judge yet assigned.
61
DaVINCI EDITRICE S.R.L. v. ZIKO GAMES, LLC, CIVIL ACTION NO. H-13-3415. United States District Court,
S.D. Texas, Houston Division. August 8, 2014.
62
Complaint, supra at 1.
63
US patent # 5,662,332, issued Sep. 2 1997, reissued Jan. 7 2003 as US RE37,957 E.

21
allegations that Cryptozoic copied the “plot, elements, circumstances, play sequence, and

flow of Magic.”64

The complaint further states that Cryptozoic copied “the overall plot, elements, theme,

mood, setting, pace, creatures, and sequence of Magic… the sequence and flow of the

game… and the overall look and feel of the game are identical.”65 [Italics added].

Much as in the above-mentioned VG cases (Midway Mfg. Co. v. Bandai–America, Inc.;

Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc.; and Atari v. North American Philips

Consumer Electronics Corp.,) the term “sequence” seems to play a major role. The term

here relates not to a command function order, but to the play-out of the game.

WotC introduces a new term, “flow of the game.” While these terms, “sequence” and

“flow of the game,” are related to the rules of the game, they are not the rules themselves.

WotC also makes use of the term “look and feel” which has been associated with

copyright infringement claims in many copyright subject matter cases.

This claim is still in the early stages, and, like many claims in the gaming industry, is

likely to end in an out-of-court settlement. It is worth noting that it makes novel use of

previous VG case law, practically discarding the so called “black-letter law” denying

copyright to TTGs.

The second case involving TTGs that is currently in litigation is DaVinci Editrice S.R.L.

v. Ziko Games, LLC.66 This case considers the famous, highly successful Italian card

64
Complaint at 19.
65
Complaint at 19, Italics added.
66
Supra note 41.

22
game “Bang!” published in 2002, and an allegedly infringing game published in 2008,

“Legends of the Three Kingdoms” (“LotTK”).

DaVinci had filed a motion for a preliminary injunction preventing Ziko Games from

continued distribution of its allegedly infringing card game LotTK, and Ziko Games filed

motion to dismiss.

In her Memorandum and Opinion (hereinafter “opinion”,) Judge Rosenthal of the District

Court of S.D. Texas does a brilliant job, not just of analyzing the legal aspect, but of

understanding what modern games are, albeit admitting that “this judge [is] not known

for expertise or experience in playing cards.”67

The opinion opens with a remarkable statement: “Human creativity takes many forms.

Devising games for people to play, including card games, is one of them. Card games

have been with us for centuries. Despite the recent seeming dominance of electronic

games with virtually present players, games using actual cards and physically present

players endure, and new games continue to appear. As with many forms of creativity,

new games lead to disputes over who is entitled to exploit them.”68

Judge Rosenthal goes into the details of both games. The clearly protected elements in

both games, such as illustrations on the cards or the headlines (names) of the individual

characters, are not in dispute. The dispute is defined by the question of whether Ziko

copied the rules, the method of play, and the roles of the characters in the game.

Judge Rosenthal notes that 102(b) limits the protection granted to ideas, procedures,

systems and methods of operation. Ziko’s defense relies on 102(b) by suggesting that the

67
Memorandum and Opinion, Supra at 1.
68
Opinion, Supra at 1.

23
challenged elements in LotTK are either a system, a process, or a method of operation of

the game, and are therefore uncopyrightable.

DaVinci responds to this defense by claiming that there is a substantial similarity

between the two games, that the total concept and feel (i.e. “look and feel”) are too

closely similar, suggesting that the court follow Sid & Marty Krofft69 and analyze both

games based on a “combined consideration of protected elements, not any single element

in isolation.”70

As with any other case involving TTGs, the Court quickly turns to Whist Club71 and its

unexplained denial of copyright to TTGs, pointing to Baker v. Selden as the presumed

source for Whist Club. The Court also cites the U.S. copyright office’s statement that

TTGs are not copyrightable.72

Thus far, the opinion reads every bit like a standard “no copyright for games” opinion.

Then comes the twist:

“[T]hese constraints are much less apparent in newer forms of card games not subject to

the limits of a 52–card deck. More recent cases involving newer forms of card games and

electronic games indicate that the protection for game content in these contexts may be

more extensive than the earlier card-game cases suggest.”73 [Italics added.]

Citing Atari v. North American Philips Consumer Electronics Corp.,74 the courts point

out that sequence and arrangement in a game add something beyond the mere idea of the

69
Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1167 (9th Cir.1977)
70
Opinion, supra at 7.
71
Supra note 10.
72
U.S. COPYRIGHT OFFICE, FL–108, COPYRIGHT REGISTRATION OF GAMES (2011).
73
Opinion, at 7.
74
Supra, note 25.

24
game. Further, citing Tetris Holding, the court emphasizes the notion that practically

every element of a game can be tied to the rules of the game and to its functionality, but

that in itself is not grounds for denying copyrightability, as that “does not mean, and

cannot mean, that any and all expression related to a game rule or game function is

unprotectible [sic].”75

When discussing the roles of players in both games, the Court agrees with the plaintiff’s

suggestion that DaVinci’s game-design choices define how the players interact, and that

these choices are fixed in a tangible medium of expression, namely the rule sheet. The

Court states that the rules of the game are not merely descriptive in nature: that is, they do

not just convey the technical information related to player’s role in the game. Rather, they

facilitate “the setting of the stage” on which the players interact with each other, and they

do so in an original, creative manner that might justify copyrightability:

“The descriptions of the roles express the underlying creative idea that is the essence of

Bang! ...the interplay between the Sheriff, Deputies, Outlaws, and Renegades is

protectable expression here.”76

The Court emphasizes that there are nearly unlimited forms of expression for the

interaction between players, as there are for the elimination of a player. Ziko games could

have chosen any of these different ways, but instead copied to its game those protectable

elements of Bang! that are original and creative expressions.

75
Tetris Holding, note 27, at 404-405.

76
Opinion at 11.

25
In a moment of enlightenment, the Court acknowledges recent developments in TTGs.

These developments in the nature of modern TTGs are what distinguish them from their

evolutionary case-law ancestors such as Whist Club, Chamberlin, Seltzer and the like.

In the Court’s own words, “Bang! differs from traditional games that have received little

or no (C) protection. Role-playing games are not necessarily played with a 52–card deck,

with its limited possibilities for creative expression or interactive variety. Role-playing

games are also far less limited than most games by mechanical processes such as the roll

of dice or the pattern of a game board. The driving forces behind the experience of a

role-playing game are individual decisions and the interactions among the players. The

creative methods a game designer uses to define and shape that experience are the

expressive elements that are protectable under (C) law. The impact that artwork has on

the “total concept and feel” of a role-playing game has less relative significance than the

manner of game play that the creator defines through expressive choices such as player

roles. The characters of Bang! and the roles defining the interaction among the players

are creative expressions protected by (C).”77 [italics added]

The Court has realized that in modern TTGs, rules are not merely operational

instructions. The complexity of the rules, the endless choices the game designer must

make when authoring those rules and the nearly limitless player choices that the rules are

meant to accommodate – these are the true distinctions between a bookkeeping system

that idealizes uniformity, consistency and predictability above all else. These choices that

inject creativity into the rules of the game, are not needed in a system, a process or a

method of operation.

77
Opinion at 12, Italics added.

26
It is interesting to note that this realization is only now appearing in U.S. courts, whereas

this logic has already been presented in other countries — in spite of the fact that the U.S.

became a TTG world power more than a decade ago.

One such example is a New Zealand case, Bleiman v News Media (Auckland) Ltd.,78

involving a newspaper-published pen-and-paper fantasy rugby league game. In this case,

the appellant, Bleiman, devised a rugby fantasy league game, and tried to sell it to the

Sunday News, a New Zealand newspaper, which rejected the submission.

Bleiman found a home for his fantasy league in another paper, Rugby News and Rugby

League Week (“Rugby News”.) Once Bleiman’s fantasy league proved a success, the

Sunday News quickly copied the game, intending to publish it in its own editions.

Bleiman & Rugby News filed for injunction with the New Zealand high court. During the

injuction hearing the infringing paper offered to modify the appearance of the forms used

in its edition so it would not resemble Bleiman’s version. Considering these

modifications, the injunction was denied.

Bleiman appealed to the Court of Appeals, claiming that even the modified version of the

game infringes copyright, as “textural copying is not necessary for infringement of

copyright… and that more than mere idea has been taken in this case… by adding to the

game embodying that concept or idea the specific features which are expressed in

appellant’s game, the respondent had crossed the border into an area of infringement by

taking expression rather than idea.”79

78
Bleiman v News Media (Auckland) Ltd [1994] 2 NZLR 673 (CA)

79
Id at 677. Italics added.

27
The Court agreed with Bleiman. In its reasoning, the Court suggests that perhaps a

consideration of skill, effort and judgment on behalf of the copyright owner in making

the original work of authorship should be taken into account when assessing what seems

to be the copying of a substantial part of the work.

Thus reasoning, the Court arrived at the conclusion that even after the suggested

modifications, there is an objective similarity between the two games, which constitutes a

basis upon which to conclude that the latter was copied from the former.

“The whole essence of the game was taken and retained80… copyright infringement

focuses on what has been taken, the similarities. Differences are of less moment.”81

Like the Xio and DaVinci courts, the New Zealand Court of Appeals suggested that if the

Sunday News would have endeavored to create an independent fantasy rugby league

game, the result “would be remote indeed.”

And, as in the DaVinci opinion, the emphasis is on the originality of the creative author

and the alternatives available to the infringer. The “essence of the game” is more than an

idea, and may not be copied outright.

Elsewhere in the world, in 1990, the Tel Aviv district court ruled on a case (hereinafter

“the Amcor case”, as it is known in Israel) in which the Parker Brothers Division of

Tonka Corporation82 sued Israeli publishers and distributors for infringement in two

board games – MAD (based on “Mad Magazine”,) and the world-famous Stratego.

80
Note the similarity to 557 Harper & Row, Publishers, Inc. v. Nation Express, F.Supp. 1072 (S.D.N.Y.1983)
“The Nation took what was essentially the heart of the book.”
81
Id at 678. Italics added.
82
Tel Aviv District Court 1108/90 Parker Brothers Division of Tonka Corporation v. Amcor et al.

28
The Israeli court quickly concluded that the various elements of the game, such as the

text of the rules and the game components (such as the illustrations and the board itself)

are copyrightable, and as such, the infringed game as a compilation is copyrightable.

The court further suggested in a remark, that rules of a game themselves deserve

copyright protection, in addition to that granted to the text expressing them. The novel

expression that needs protection is not just the verbal manner in which the rules of the

game are written, but mainly the rules themselves, since these rules are what allows and

develops the number of variables in the game, and in fact make possible the game’s

existence and the players’ enjoyment.

The court observed that without protecting the non-literal expression of the rules

themselves, they could simply be rephrased, thus copying the game without

“infringement” of game copyright.

In a later case, from 2001,83 Dutch company KONINKLIJKE HAUSEMANN EN

HOTTE NV claimed that an Israeli game, “Battle for the Flag,” infringed its copyright in

the game “Stratego.” In this instance, both parties agreed in advance that board games

should be viewed as copyrightable, and agreed to conduct the trial from that starting

point.

In spite of this agreement, Judge Barron saw fit to point out that in the Amcor case,84 the

Court found that board games are, or should be considered, copyright subject matter.

Furthermore, the Court stated that although a board game does not fit any of the

enumerated categories in section 1 of the [Israeli] copyright act in their narrow

83
Tel-Aviv District Court 2428/01 KONINKLIJKE HOUSEMANN EN HOTTE NV v. Lee-Dan Agencies LTD.
84
Supra note 60.

29
interpretation, there can be no doubt that the invention of a board game and its creation

involve a great deal of originality. Therefore the court believes board games should

receive copyright protection.

The Court went through a detailed comparison of both games, finding many similarities

between them, including end goal, number of pieces, ways to achieve victory, the

description and appearance of the playing pieces, modes of attack, design of the board,

etc.

After proving that the defendants had prior knowledge and familiarity with Stratego

board game, the Court concluded that the substantial similarity between the two is so

overwhelming, that it could not be a result of coincidence.

Stating that the similarities between are a copying infringement, as the copied elements

are taken from Stratego’s “core uniqueness”, and even more so when observing the rules

of the game, into which the plaintiff’s game designer has invested effort and creativity in

creating a set of rules that is unique and distinct from those of other games, stemming

from the same idea.

The Israeli court found that the copyrightable rules of the game, as well as other elements

of the game, have been infringed, despite the fact that there was no literal copying, and

that the rule were not a complete match, but showed minor differences.

CONCLUSION AND SUGGESTED GUIDELINES

30
TTGs have come a long way since the 1920’s. The understanding and implementation of

copyright have changed as well, not to mention the statute itself. With these changes a

new realization seems to be emerging: that the rules of fanciful, fun, entertaining games

are not the same as the rules of functional, purpose-intended bookkeeping systems or

computer software API.

Game rules do not serve the same single-minded utilitarian purpose. They are not meant

to be “executed” or “operated” by a “user”. Games are meant to be played, enjoyed, and

to entertain. Unlike systems, processes or methods of operation, games are deliberately

designed to provide an open-ended user experience.

By comparison, a recipe executed by ten different chefs should yield the same dish ten

times: that is the recipe’s function, its purpose, the reason to use it. A modern table-top

game, however, whether played ten times by the same players or one time by ten

different players, will hardly ever repeat itself.

A game designer might think of as many ways possible to “perform” the game. Indeed,

many games include suggestion that player devise their own “house rules,” expanding the

game beyond what the original designer might have conceived herself.

With this understanding making its way into VGs, and from there into TTG litigation,

there might be a change in the air for TTG copyrightability. This has already happened

outside the U.S., and only time will tell if these changes will come into play in the U.S. as

well.

As this is a rather new development in copyright, it might help to have some basic

guidelines. As a rule of thumb, TTGs are not that dissimilar from other works of

31
authorship. At early stages, until the judiciary develops the same kind of understanding of

TTGs as it now has concerning novels, movies, musical compositions and software, it

would be prudent to seek out the few sources that discuss games in the modern age, or

else consult “TTG experts.”

Even without this assistance, a starting point for examining a TTG would be to try to fit it

into one of two categories: Old TTG or Modern TTG. The former tend to resemble

traditional games, with rigid rules, simple gameplay and minimal interaction between

players. Modern TTGs tend to seek new themes, with open-ended rules allowing the

individual player to customize the game experience. Naturally, to every rule there are

exceptions.

It is important to remember that the various tests traditionally used by the judiciary to

identify copyright infringement in books, movies, music and graphic art can also be

applied to table-top games, if the judiciary does not fall directly into the “game = 102(b)

= non copyrightable” pattern of thought.

In conclusion, it is clear that the evolving nature of table-top games has propelled them

from their original, simplistic and unoriginal state, to a new level of creativity and

originality. Rather than relying on a century old axiom that table-top games are not

copyrightable, it is time review copyright infringement claims in TTGs on their merits,

on case-by-case review of the games at hand.

32