Copyright protection of board games

Board Game Copyrightability:

DaVinci Editrice S.R.L. v ZiKo Games, LLC

By: José Alejandro Medina-Cruz

1         Modern Board Games

When I was growing up, board games were one of my favorite pastimes. I was an avid video gamer (huge fan of A Link to the Past and Ocarina of Time) but I gravitated naturally towards board games and card games. One of the main reasons I enjoyed playing with my family was that it was one of the few times when ten or so family members sat down to have fun together.

There have been many memorable playing nights. Puerto Rico is an island in the Caribbean and board games were an integral part of the storm season. When I was a child, I was tasked with choosing the games that we would play during storms. It was a job I took very seriously. Like many other families, our favorites included Clue, Monopoly, Battleship, and others.

I learned about modern or “designer” board games when I was introduced to a board game called Puerto Rico. It quickly became one of my favorite games of all time. Puerto Rico was designed by Andreas Seyfarth and published in English by Rio Grande Games.

More recently, my interest in board games rekindled when I played Power Grid. Power Grid is designed by Friedemann Freese, a well-known designer and blogger, and published by Rio Grande Games. Soon I started to browse BoardGameGeek and The Dice Tower. When Wil Wheaton’s Tabletop became a hit on YouTube, I knew that modern board games had become mainstream.

More recently, I have been exploring how intellectual property protects board games. Here are some aspects of board game copyrightability, as recently discussed in DaVinci Editrice S.R.L. v. ZiKo Games, LLC, 2014 WL 3900139 (S.D. Tex. Aug. 8, 2014).

1         The Facts

Bang! Legends of the Three Kingdoms (LOTK)
  • Board1
  • Set in the wild-west.
  • Published in 2002.
  • Owned by DaVinci Editrice S.R.L.
 

  • Board2
  • Published in 2007 by ZiKo Games, LLC.
  • Set in ancient China.
  • Brought to the U.S. by Yoka Games.

DaVinci Editrice, S.R.L. owns the copyright for a card game called Bang! originally released in 2002. Bang! is a moderately famous party game that has sold over 670,000 copies internationally and an estimated 176,000 copies in the United States. ZiKo Games, LLC released Legends of the Three Kingdoms in 2007. LOTK has nearly identical rules to Bang!.

In this civil lawsuit, DaVinci alleged that Ziko Games and its U.S. reseller, Yoka Games, were liable for copyright infringement. DaVinci sought to recover damages for copyright infringement, unfair competition and unjust enrichment. DaVinci also moved for preliminary injunction pursuant to 17 U.S.C. § 502 and Federal Rule of Civil Procedure 65. Ziko Games answered the complaint by presenting a motion to dismiss for failure to state a claim for which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). The district court dismissed the unfair competition and unjust enrichment claims finding that they are preempted by federal copyright law, but held that DaVinci’s copyright infringement claim was sufficient to defeat the motion to dismiss under the case law on protectable elements in games. The district court also determined that DaVinci had not proven that a preliminary injunction was warranted in this case.

1.1       Bang! and LOTK have many similarities

In Bang! each player secretly chooses one “role” card at the beginning of the game. There are four different roles a player may receive: Sheriff, Deputy, Outlaw, or Renegade. The players keep their role secret unless the player gets the “Sheriff” role. Players also receive one character card. Each player has to announce the character they received and any special ability the character has. Characters have bullet points which dictate two things: the number of life points (the hits a player can take before he/she is dead), and the number of cards the player can hold at the end of his/her turn.

The game is played in turns. Each turn has a very basic structure: (1) draw two cards, (2) play any number of cards, and (3) discard excess cards. The game continues in this fashion until one of two conditions is met: (a) all the Outlaws and the Renegade are killed, or (b) the Sheriff is killed. The winner is determined in the following manner:

Graph

LOTK has the same general gameplay as Bang! although it is set in ancient China instead of the wild-west. “Hero cards” in LOTK (Monarch, Minister, Rebel, and Turncoat) are equivalent to Bang!’s roles. LOTK also features characters evocative of ancient China which provide a specific ability and determines the number of life points for the player. The characters offer the same life points and abilities of Bang!’s characters. Action cards that can be played in LOTK are also similar to those of Bang!.

3         The Case Law

The district court first addressed the issue of copyrightability. The court noted that Section 102(a) provides that copyright protection extends to “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.” 17 U.S.C. § 102(a). The court also noted that copyright protection does not extend to ideas. Only the “expression of an idea” is protected. This is a statutory requirement, found in 17 U.S.C. § 102(b), and known in copyright law as the “idea/expression dichotomy.”

To prove a copyright infringement claim, case law requires that the claimant show: (1) copyright ownership and (2) that the defendant copied “constituent elements” of the original work. In other words, a side-by-side analysis of both works must be done to determine whether “a layman would view the two works as ‘substantially similar.’ “ Importantly, copyright registration provides prima facie evidence of copyrightability and “shifts the burden to the defendant to demonstrate why the copyright is not valid.”

3.1       Copyrightable elements in games

The district court began its analysis stating that, according to copyright case law, “game mechanics and the rules are not entitled to protection, but courts have found expressive elements copyrightable, including game labels, design of game boards, playing cards and graphical works.” It based this understanding in Baker v. Selden, 101 U.S. 99 (1879), a landmark copyright case where the Supreme Court found that a bookkeeping system was not copyrightable. It noted that the Copyright Office has also expressed that “Copyright does not protect the idea for a game, its name or title, or the method or methods for playing it.” See Copyright Registration of Games. Ultimately, the district court also found that “Yoka and Ziko may have infringed DaVinci’s copyright in Bang! even though the game labels and artistic features of the playing cards in LOTK are not similar.”

3.1.1        The text of the rules is copyrightable but the rule itself is not

First, the court found that the text of the instructions for playing the game and the text on the cards themselves are copyrightable but the text in the two games is different. Instead, DaVinci’s allegations referred to the rules of the game as a human activity. However, these kinds of processes are not fixed in any tangible medium of expression and, as such, cannot be copyrighted. See 17 U.S.C. § 102(a) and (b).

3.1.2        The totality of a character’s attributes and traits is copyrightable but the character has to be developed

The district court relied on Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2d. Cir.1930), another landmark copyright case, to state that “the less developed the characters, the less they can be copyrighted.” Thus, in the case of Bang!’s characters, their capabilities are part of their “attributes and traits and are protectable with the characters’ names and visual depictions.” The court also relied on Capcom U.S.A., Inc. v. Data East Corp. 1994 WL 1751482 where it was found that three Street Fighter II characters and five special fighting moves were protectable under copyright law.

The court found that seven characters from LOTK have capabilities and life points that are identical or substantially similar to those of the corresponding seven characters in Bang!. Thus, the court expressed that “[g]iven the similarities between the attributes of the characters in Bang! and LOTK, a reasonable factfinder could conclude that the characters of the two games are substantially similar despite the transposition and translation from the Wild-West theme of Bang! to the ancient China theme of LOTK.

3.1.3        The players’ roles can be copyrightable if they dictate the sequence of a work’s events and the interplay of the characters

According to the court, the roles in Bang! were distinguishable from the game rules because they related to the “sequence of [a work’s] events [and] the development of the interplay in its characters.” (quoting Miller v. Universal City Studios, 650 F.2d 1365 (5th Cir.1981)). The district court relied on Spry Fox LLC v. LOLApps, Inc., 2012 WL 5290158 (W.D. Wash. Sept. 18, 2012), where it was found that certain elements in SpryFox’s game were copyrightable because they were part of an “object hierarchy that progressed from grass to bushes to trees, to houses and beyond.” The district court found that the object hierarchy was similar to the roles in Bang!. The court explained:

“The artistic depictions of the Monarch, Minister, Rebel and Turncoat roles in LOTK clearly differ visually from the depictions of the corresponding roles in Bang!. But the characteristics and manner in which the characters interact, not merely the names and pictures used to depict them, are creative and expressive elements in a role-playing game and are protectable. The roles and interplay among the characters in LOTK resemble those in Bang! closely enough to give rise to a plausible infringement claim and defeat the motion to dismiss.”

4         Conclusion

It is safe to say that copyright law protects Bang! in mysterious ways. Notably, copyright registration shifts an important burden that has consequences on the elements of the infringement cause of action, in turn affecting the subject matter necessary in infringement pleadings in order to defeat a motion to dismiss for failure to state a claim. At this stage, Yoka and Ziko presented their answer to the complaint and the case is underway towards discovery. It remains to be seen whether this one goes to trial.

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