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The legal protection of the idea of a new board game

Pubblicato in Copyright and Authorship
da Matteo Saleri
Home > The legal protection of the idea of a new board game

Effective protection strategy for board games requires advanced knowledge of the relevant legal discipline (intellectual property, patents and inventions, and design law). After all, board games are unexpectedly coming back en vogue.

In this article:

  1. The protection of board game authors’ rights is a sensitive issue.
  2. The protection of the game “format”
  3. Can you patent a new board game?
  4. Board game and copyright
  5. Board game as a creative work of authorship 
  6. Board game: The protection of the name
  7. The Scrabble V. Scarabeo case 
  8. How to obtain effective protection

1. The protection of board game authors’ rights is a sensitive issue.

The Italian scenario of board game authors is one of the most vibrant in Europe, second only to that of Germany. In fact, Germany turns out to be a true world center of reference for board games. A recent economic study predicted that the board games market will grow by 9 percent per year, estimating that it will reach a value of $12 billion globally in 2023. This figure is confirmed by statistics from crowdfunding platforms.

In 2018-2019, board games ranked among the top categories on Kickstarter by volume of money raised. For this very reason, protecting the rights of board game authors is as timely a topic as ever.

2. The protection of the game “format”

Several of our Clients have had to deal with this subject for the protection of their creations. The real key to protection is the creativity of the game. The authors of board games combine their imaginative ability with an undoubted mathematical-design ability, which is required by the operating mechanisms essential to the game.

In addition to being appealing, a board game is in fact all the more engaging (and fun) the more it succeeds in being balanced and suitable for testing players’ skills.

In this paper, we will explore what rights the authors of board games can obtain. More specifically, we will analyze whether the format of board games can be protected with regard to Copyright and Industrial Law.

3. Can i patent a new board game?

The methods and mathematical principles underlying board games are not patentable in Italy and Europe. However, this does not mean that the format of a game cannot obtain a valid exclusive right of exploitation based on other exclusive rights.

The Italian Industrial Property Code provides that plans, principles and methods for intellectual activity, for play or for commercial activity, and computer programs cannot be considered as patentable subject matter for invention (ICC, Art. 45 paragraph 2 letter b). This rule also applies at the European level for all signatory countries of the Convention on the Grant of European Patents (EPC, Art. 52 para. 2 letter c).

In contrast – as with training and business methods – US law provides for the possibility of applying for a patent on a new board game. The application must be filed with the US Patent and Trademark Office (USPTO) and may also cover the rules governing the game. This is an excellent option if you plan to market the game in the United States (which is the world’s largest board game market).

Hence, the strategy for protecting a board game in the European territory will have to be sought mainly in legal institutions other than patents. However, it must be remembered that the guidelines of the EPO (European Patent Office) do not strictly exclude the possibility of applying for protection. Those guidelines merely condition the request on the specification of technical means to implement the rules of the game. For example, the application of dice could be sufficient to overcome the objection of unpatentability based on Art. 52.2 of the EPC.

4. Board game and copyright

Copyright law can help protect board games.

The Italian Copyright Act (L. No. 633 of 1941) does not clearly include games in the list of protected works provided by Article 2.

A first pragmatic solution, however, is certainly to consider the individual elements that make up the game. These elements, taken individually, can easily be included within the listed categories of the Italian Copyright Law.

For instance, we refer to:

  • drawings made to illustrate the game (ICL, Art. 2 no. 5, drawings),
  • its rules and instructions (ICL, Art. 2 no. 1, literary works),
  • names of characters, etc.

Also, the game format as a whole, even if sufficiently detailed, could be a work protected by copyright. Let’s see how.

5. Board game as a creative work

A second solution lies in considering the game as a whole as a creative work of the mind. The list of protected works provided by the Italian Copyright Law – although it does not include games – is commonly understood to be illustrative and not exhaustive, both by doctrine and jurisprudence.

Please note that creative character is determined by two main factors:

  • Novelty – the essential and characterising elements of the work must be different from the elements in earlier works;
  • Originality – the work can be defined as original when it is the result of a non-trivial activity of human ingenuity.

Jurisprudence states that the concept of creativity does not require absolute novelty and originality, as even modest ideas and simple notions can be protected (Court of Cassation Judgement No. 5089/2004 and No. 20925/2005) as long as they are grasped in their individuality, as the object of personal elaboration of a creative nature by the author (Court of Cassation Judgement No. 8597/2003).

Consequently, even the board game as a whole undoubtedly falls within the scope of creative works that deserve protection. Let us remember that the rights granted by Copyright – both moral and patrimonial rights – arise with the creation of the work (the expression of the idea).

For this reason, it is always advisable to keep proof of the date of creation of the work by means of appropriate certification services to claim authorship.

Board game protection is one of our dedicated services in the area of Design law.

However, relying solely on authorship protection may be insufficient for effective protection. A conviction for copyright infringement is difficult to obtain, except for the most obvious cases of plagiarism.

Therefore, support must also be sought in other intellectual property titles for the effective protection of designed games.

6. Board game: name protection

One of the most important elements of a board game is certainly its name. Protection of the name can be obtained through trademark registration.

Registering the name allows you to obtain an exclusivity right to the sign. It also prevents third parties from using the same sign (or confusable signs) to mark other board games.

Some board game trademarks are famous. Just think of the 85-year-old Monopoly® or the Italian word game Scarabeo®. It was precisely the latter that experienced an interesting legal affair that we will illustrate later in the paper.

7. Board game: protecting graphics and design

Resorting to design registration is also a valid strategy for protecting the creativity of your board game.

The registration of the game design with the competent authorities for the protection of Intellectual Property grants an important exclusivity right.

More specifically, the subject matter of the industrial property right may be

  • the graphics of the game (e.g. card designs, dice faces);
  • the graphics of the map/board;
  • the pawns;
  • the game case.

These two rights – trademark and registered design – are particularly useful for protection against imitation attempts or other acts of unfair competition by third parties.

Registrations are also particularly valuable in easing the licensing of the production and marketing of the designed game to third parties – mainly publishing houses -. This makes it possible to monetise the investments made.

It is precisely the “securitisation” of the rights to the name and design that makes them easier and more certain to circulate.

The case of SCRABBLE v. SCARABEO

To what extent is the protection of the rights identified above efficient? As promised, we present a famous case concerning the board game Scrabble and its Italian version Scarabeo

Scarabeo is an Italian variant of the more famous board game Scrabble. The Italian version was published in the late 1950s by Aldo Pasetti (and later by Editrice Giochi). Alfred Butt, inventor of the English game, created in 1938, did not like the publication of Scrabble at all. In fact, the English author sued Pasetti before the Court of Milan, accusing him of violating his rights to the game Scrabble.

The judge (Milan, C. App. Sent. of 17/03/1961) ruled that there can be no copyright infringement on a game that bases its rules essentially on a public domain mechanism such as crossword puzzles.

The changes to the rules of the game introduced by Pasetti were also decisive in averting the infringement of Butt’s copyright.

The ruling states that there can be no confusion between the two marks because Scarabeo is not a variation of the word Scrabble. Moreover, the precise meaning of the word Scarabeo recalls a pawn in the game – the scrabble – which is not present in Scrabble.

It is peculiar that, after the judgment, Pasetti sold the game to Editrice Giochi and the game became very popular in Italy thereafter. So much so that translators of novels, films and comics that mention Scrabble most often replace its name with that of the competing game (Scarabeo), certainly not without causing a certain irritation to the publishers of the former.

8. How to obtain effective protection

Each board game needs to be examined individually, especially if the most effective legal protection is to be obtained.

A valuable game in this sector can be a valuable asset that needs to be protected in the best possible way in order to monetise the idea and the investment made. A decisive factor in this respect is the support of experienced intellectual property lawyers from the outset, in order to correctly set up the valorisation and protection of the board game.

Planning a defensive strategy with the help of a professional in the field, can indeed minimise the risk of theft or plagiarism. It should be noted that inadequate protection could allow a partner to take advantage of the game format without consequences.

Among the Law Firm’s services, the board game protection service is one of the most requested and appreciated. The Law Firm relies on the collaboration of highly skilled and experienced patent attorneys, also experienced in litigation.

The experience of the Law Firm’s professionals makes it possible to obtain, quickly and at an affordable cost, a patent title consistent with the game designed and functional to its effective protection.

Data di pubblicazione: 16 April 2020
Matteo Saleri

Matteo Saleri

Laureato a pieni voti presso l'Università degli Studi di Milano, praticante avvocato appassionato di Diritto Commerciale, Societario e Antitrust.
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