Richard Doble European Patent Attorney MIEEE

Patent and Copyright Protection of Board Games: Do not Pass Go? [1997] 10 EIPR

Introduction

Board games lie at the interface of patent, Registered Design, (unregistered) design right and copyright protection. The purpose of this article is to use board games as a probe to explore this interface. There are clear implications for related areas of subject matter such as computer games.

All the major European countries as well as the USA are signatories of the Berne Convention and accord copyright protection to board games at least broadly comparable to that in the UK. Therefore it is thought that the comments on copyright should be applicable at least to some extent to these countries.

Similarly the national patent laws in Europe are generally based on the European Patent Convention and the EPO decisions discussed below are considered to be strongly persuasive in the national courts.

This article concentrates on functional protection; design protection is available in the major European countries but in general protects aesthetic aspects only. More detailed information is given by Alison Firth in "Aspects of Design Protection in Europe" [1993] 2 EIPR p 45. Additionally the European Commission has prepared a draft Directive introducing uniform registered and unregistered design rights, but again these will cover only non-functional aspects of design.

Unfair competition is another area which is applicable in European countries other than the UK, but is outside the scope of this article.

Patent Protection

Methods of playing games are stated not to be "inventions" by Section 1 (2) c) of the 1977 Patents Act (but only to the extent that the invention relates to a method of playing a game "as such") and are thereby excluded from patentability. A similar provision occurs in Article 52(2) c) EPC. Accordingly, in both the UK and Europe, games (as defined by their rules) but not apparatus for playing a game (eg the board and pieces) have been considered to be unpatentable in principle.

i) Patent Office error in your favour - advance two spaces

In the UK, Patent Office practice has been governed since 1926 by the Appendix to 43 RPC which is a note of an Official Ruling concerning "Counter and board games .... in relation to the definition of an invention .....in the Patents and Designs Acts, 1907 and 1919" according to which, if "the only novel feature (apart from the rules of the game) lies in the particular character of the markings upon the board" (emphasis added) "the requirements involved by the definition of an 'invention' ....will be held to have been complied with."

It is interesting to note the distinction made in the Ruling between a) the rules of the game and b) the markings on the board; it is implicit that the rules cannot confer patentability whereas the board markings can. This is consistent with a line of English case law under the 1949 Patents Act which indicates that the character of invention cannot be conferred by mere information but if information is presented in a new way which affects the way the article is used then an invention can result.

As an example, Claim 1 of GB 453,689 (the patent for "Monopoly”(RTM), granted in 1936) reads as follows:

1. A board game apparatus comprising symbols or tokens for moving over a board acting as a playing field the board being provided with marked spaces constituting a path or course extending about the board, said path affording a continuous track for the purpose of continuity of play, some of said spaces being designated as by position or colour so as to constitute a distinguishable group, there being a plurality of such groups and each group having its spaces adjacent to the same side of the board, the apparatus having indications of the rentals required for the use and occupancy, by opponent players, of spaces of one or more such groups, which indications shew that the rentals are subject to increase by the acquisition of an additional space or spaces of the same group by the same individual player, thereby making it possible for the possessor to exact greater payments or penalties from any opponent whose symbols rest or trespass thereon (emphasis added).

The italicised portion of the claim was presumably intended to cover markings on the board (as in the actual game) rather than rules printed on a separate sheet of paper, although it is preceded by a reference to the apparatus (rather than the board) having the relevant features. Under the current law this distinction is submitted to be irrelevant anyway - since Section 1(2) d) of the 1977 Act also excludes from the category of inventions "anything which consists of ....the presentation of information". It would seem to be immaterial whether the information is presented on a board or on a separate sheet of rules.

Admittedly it could be argued that the board is part of the apparatus and is defined by the markings on it, which affect the way it is used (cf the line of case law referred to above) but the use, being a method of playing a game, is itself one of the excluded categories.

ii) Go directly to Court - do not pass Go and do not collect £200

A comparable situation arose in Merrill Lynch [1989] RPC 561 which related to a patent application for a data processing system for implementing an automatic trading system for securities. Computer programs and methods of doing business are two further categories excluded by the 1977 Act from being inventions and, unsurprisingly, the Court of Appeal rejected the application, stating:

"Claim 1, after all, is directed to 'a data processing system for making a trading market'. That is simply a method of doing business. A data processing system operated to produce a novel technical result would normally be patentable. But it cannot, it seems to me, be patentable if the result itself is a prohibited item under section 1(2). In the present case it is such a prohibited item.' -per Fox L J at p 569.

By aiming directly at the roadblock of "a method of doing business" the applicants ensured that their claim to a data processing system was rejected.

By the same token a presentation of information (excluded), whether by board markings or by rules on a sheet of paper, which is directed at playing a game (also excluded) should also be rejected.

It might be argued, against the above conclusion, that both the UK Patents Court and the EPO have allowed "Swiss" claims to "the use of compound X for the manufacture of a medicament for the treatment of disease Y" where X is known but its use for treating disease Y is novel and inventive; the novelty and invention lie in an area excluded from patentability, namely therapeutic methods of treatment, but nevertheless lead to an allowable claim. However it should be noted that methods of therapy are not excluded from being inventions by the 1977 Act and the EPC - they are merely inventions excluded from industrial applicability, a further requirement for patentability. Hence case law on "Swiss" claims is not directly relevant to the question as to whether a given concept is excluded from the category of inventions.

Indeed the Hydropyridine decision indicates that a claim of the form "Commercial package containing compound X bearing instructions for use as a therapeutic agent" is not allowable:-

"if the only feature which might be regarded as involving an inventive step resides in the instructions for use. Such instructions are a mere presentation of information, and are debarred by Section 1 (2) d) of the Patents Act 1977 from being an invention."

Finally, it is immaterial whether the claim is directed at a method or at an apparatus; see Genentech Inc's Patent [1989] RPC p147:

"It would be nonsense for the [Patents Act 1977] to forbid the patenting of a computer program, and yet permit the patenting of a floppy disc containing the computer program, or an ordinary computer when programmed with the program; it can well be said, as it seems to me, that a patent for a computer when programmed or for the disk containing the program is no more than a patent for the program as such." - per Dillon L J at p 240,

and Gale's Patent Application [1991] RPC p 305, in which a ROM programmed in a novel way to calculate square roots was held to be excluded from patentability by Section 1 (2) c).

More recently (Re patent Application No 9204959.2 by Fujitsu Ltd, 24.5.96, Patents Court, Aldous J [1996] RPC p511) a program for manipulating and fitting molecular structures on screen to enable new drugs to be designed has been held to be excluded from patentability, following Gale and Genentech (supra) and Vicom (infra). However, while accepting that the excluded categories in Section 1(2)(c) of the 1977 Act could not be avoided by merely by claiming apparatus rather than a program, the court did accept that these exclusions should in general be construed narrowly.

One of the factors which weighed heavily in the court's decision was that the manipulation performed by the program was previously done manually, so that the novelty lay essentially in the presentation of information, another excluded category.

To sum up, although patents are granted for board games in the UK, their validity under the 1977 Act looks doubtful at the very least.

iii) Fly to Munich and take a Chance

As in recent years in the UK courts, all the decided cases in the EPO relate to excluded categories other than methods of playing games such as mental acts, presentation of information, and computer programs for example.

Two general approaches have been taken:

a) Does the alleged invention make a contribution to the art in a field not excluded from patentability?

In T38/86 IBM Corp./Word processing 1990 OJEPO p384, which related to a text processing system arranged to detect and replace linguistic expressions exceeding a predetermined understandability level, the Board rejected the application on the ground that it related merely to a method for performing a mental act:

"II Since according to Article 52(3) EPC patentability is excluded only to the extent to which the patent application relates to subject-matter or activities summarised in Article 52(2) as such, it appears to be the intention of the EPC to permit patenting in those cases in which the invention involves some contribution to the art in a field not excluded from patentability

III The use of technical means for carrying out a method for performing mental acts, partly or entirely without human intervention, may, having regard to Article 52(3) EPC, render such a method a technical process or method and therefore an invention within the meaning of Article 52(1) EPC.

IV However, if the technical implementation of such a method is obvious to a person skilled in the technical art, once the steps of the method for performing the mental acts have been defined, so that there is no inventive contribution in a field not excluded from patentability under Article 52(2)(c) EPC, such method does not involve an inventive step within the meaning of Article 52(1) EPC" (emphasis added).

This is essentially the British approach outlined above and the same conclusion applies. The reasoning of T 38/86 has been followed in numerous subsequent decisions of the EPO Boards of Appeal.

b) Does the alleged invention utilise a "technical means" to solve a "technical problem"?

In T 26/86 (Koch & Sterzel/X-Ray Apparatus OJEPO 1988 p19), a case involving an X-Ray apparatus of known type wherein certain operating parameters were optimised by a processor running a novel program, the Board of Appeal adopted a holistic approach stated:

"The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical means, the use of non-technical means does not detract from the technical character of the overall teaching. The European Patent Convention does not ask that a patentable invention be exclusively or largely of a technical nature; in other words, it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements. Apart from the fact that the Board fails to find any legal basis in the European Patent.

Convention for the theory of the [German] Federal Court of Justice concerning the essence of inventions, it also sees practical objections to a need to give a weighting to technical and non-technical aspects because according to the Federal Court of Justice the criterion to be applied is which aspect makes the essential contribution to the invention's success. Not only is such a decision fraught with difficulties in practice; it also has the effect of making the teaching unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step.

The Board therefore regards it as unnecessary to weigh up the technical and non-technical features in a claim in order to decide whether it relates to a computer program as such. If the invention defined in the claim uses technical means, its patentability is not ruled out by Article 52(2)(c) and (3) EPC and it can be protected if it meets the requirements of Articles 52 to 57 EPC" (para 3.4. of the Reasons, emphasis added).

This approach has also been followed in T 603/89 (Beattie/Marker OJEPO 1992 p230) which concerned a patent application for a marker to be laid on a musical keyboard to facilitate learning to read music. A similar marker was known and was cited against the application. The only distinction over the known marker was the information printed thereon. Rejecting the application, the Board held:

".................Thus, the Board considers that when there is an interaction between the technical and non-technical elements, and the mix as a whole solves a technical problem, it is not excluded from patentability (see decision T 26/86 already cited). In the absence of such an interaction - when the technical elements are only a support for the non-technical elements but do not otherwise co-operate therewith - the invention does not make use of technical means and cannot therefore be granted (see decision T 158/88, to be published). In other words, if the subject-matter of a claim consists of a mix of technical elements (in the present case a marker) and of non-technical elements (in the present case information relating to the tones of the key of a keyboard instrument) the subject-matter as a whole is excluded from patentability under Article 52(2) and (3) EPC if the mix does not make use of technical means in order to solve a technical problem. 2.6. In the present case, the display of dodecatonic numbers (feature c), their juxtaposition with heptatonic letters (feature b) and their easy visualisation (feature d) have no effect on the physical properties nor on the mechanical functioning of the three-dimensional marker structure with body portion and tabs (feature a). This known marker structure only forms a support for the above-mentioned information and has also no effect on the information (features b to c). Hence, due to the lack of any interaction within the claimed mix, no technical means are used.

2.7. The Appellant has argued that this interpretation of the Claim 1 was not correct and that the technical effect of the mix was to be seen in the realisation of new teaching apparatus and method.

2.8. A teaching apparatus is certainly a technical subject- matter but, in the present case, the contribution of the purported invention to the realisation of the apparatus resides only in the content of the displayed information and not in the apparatus itself which belongs to the state of the art. In other words, the problem solved by the purported invention resides in an improvement of a teaching method. Contrary to the opinion of the Appellant, the Board considers that the intended improvement is an improvement of a method for performing mental acts. Thus, no technical problem is solved by the changed mix" (para 2.4 et seq of the Reasons, emphasis added).

On the other hand this approach has been used to justify the patenting of a novel TV signal (T163/85 BBC/Colour television signal OJEPO 9/1990 p379) on the ground that the signal must not be considered in isolation but in the context of the TV receiver whose behaviour it governs. Decision T 163/85 was followed by T110/90 (IBM/Editable Document Form -unpublished) which related to a method for converting one editable document in digital form to another such document, the documents including embedded printer control characters such as "carriage return", "new paragraph" etc. It was held that the control characters should not be considered in isolation but in the context of the hardware they controlled. Hence the control characters were a "technical means" used to solve a technical problem and the application was therefore directed to a patentable invention.

Hence the question arises, whether under the above more liberal approach novel markings on a board used in a board game could be considered to be part of a technical means to solve a technical problem.

It is noted that the marker in the Beattie case (supra) influenced the acquisition of the skill of playing of a keyboard (but not the playing of the keyboard once that skill was acquired) which was held to relate to the "mental act" (excluded from patentability) of an improved teaching method (para 2.8 of the Reasons, supra). On the other hand an improvement in board markings or rules of a game can change the nature of the game play available to the players and therefore addresses a problem which is at a higher level than a method of playing a game.

Of course the control of pieces on a board via novel markings and/or rules takes place as a result of presentation of information to the player and the mental act of obeying the rule or complying with the marking, culminating in putting the piece down in a certain place on the board but is not concerned with any of these as such, but rather the end result of control of the pieces (cf the end result of control of the X-ray apparatus in Koch & Sterzel, supra).

The control of the movement of pieces on a board is control of hardware. Such control is not a method of playing a game "as such" because a method of playing a game presupposes that a framework of rules and board markings governing play already exists; such a framework is logically prior to and cannot therefore be confused with a method of playing the game.

By analogy with the control characters and the TV signal it is submitted that such an improvement in board markings or rules controls the behaviour of the pieces and could in certain circumstances overcome a technical problem, eg balancing the elements of chance and skill in a game involving occupying territories on the board in which conflict between the two sides is determined by the throw of dice.

Accordingly under the holistic approach it is suggested that board games and the like whose novelty lies only in the rules and/or the markings on the board could in principle be patentable.

The question then arises, whether the holistic approach should in fact be applied in preference to the determination of some inventive contribution in a field not excluded from patentability.

It is submitted that it should. Decisions of the Enlarged Board of Appeal on novelty, namely the Friction-reducing additive and Plant growth regulation cases (G02/88 MOBIL/Friction-reducing additive [1990] EPOR 73 and G06/88 BAYER/Plant-growth regulating agent[1990] EPOR 257) have adopted a holistic approach and indeed could not have been reached if the test of some "contribution in a field not excluded from patentability" had been applied, owing to the exclusion from patentability of mental acts and discoveries "as such".

The above analysis does not rely on any distinction between board markings and rules. It is submitted that the form in which such information is presented is quite immaterial. Accordingly it ought to be possible to patent a new set of rules for playing a modified form of chess - but not, say, a new chess opening.

It is also interesting to speculate on the patentability of board games played on a computer. Would the inventor of Monopoly (RTM) have obtained a patent if his claim covered a simulated board and pieces displayed on a computer screen with the pieces moved by keyboard commands or a mouse?

In my view, such a claim should in principle be allowable. Although one cannot rely on the analogy with control of hardware as in the Colour Television signal and Editable Document Form cases, the technical problem solved by a game as represented on a screen is essentially the same as that solved by the game as expressed materially by a board and pieces. The fact that the end result (the novel behaviour of the pieces on the board during play) is in abstract form does not bring the problem within the excluded categories and is not otherwise fatal to patentability -see the VICOM decision which related to a method of digitally filtering an image (T 208/84 VICOM /Computer-related invention OJEPO 1987 p14) and the comments of the EPO Board at para 5 of the Reasons:

"...if a mathematical method is used in a technical process, that process is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. The technical means might include a computer comprising suitable hardware or an appropriately programmed general purpose computer" (emphasis added).

It is suggested that if EPO case law develops along the lines suggested, the UK courts will follow as they have in the Friction-reducing additive and Plant growth regulation cases.

Copyright and design protection

i) just visiting ....Registered Designs

Registered Designs provide absolutely no protection of function and the law in this area is of interest mainly because of its impact on copyright (infra).

Registered Design protection is available for design features ("shape, configuration, pattern or ornament applied to an article") which are applied by "any industrial process" and "in the finished article appeal to and are judged solely by the eye" (RDA 1949 S 1(1)(3)) provided only that the design is novel (in the UK), not previously registered and differs from known designs by more than "immaterial details" or "variants commonly used in the trade" (RDA 1949 S 1(4), as amended).

The interesting word is article.. A piece of paper intended "solely to carry the imprint of a design" is not an "article" (Littlewoods Pools Ltd's Application [1949] RPC 309), which concerned a design to be printed on a football coupon. This decision has been criticised by Laddie, Prescott & Vitoria in "The Modern Law of Copyright and Designs" (1995) (2nd Edn) pp 1067-1070 on the ground that it implies that the greater the proportion of the value attributable to the design rather than the article the less deserving is the design of registration.

It is respectfully submitted that this criticism is incorrect. What is significant is not the relative values of the design and the raw article but whether the article has some function other than carrying the design (see Russell-Clarke,Copyright in Industrial Designs 5th Edn, p13). Certain other categories of predominantly literary or artistic items, eg book jackets, are excluded by Rule 26 of the Designs Rules 1989 from being "articles" but it is submitted that the precise scope of exclusion effected by this Rule is less important than the general principle that an item cannot qualify as an "article"unless it has some function beside that of carrying the design.

Thus computer listing paper having successive orange, white and green bands which made the printout easier to read (Lamson Industries Ltd's Application [1978] RPC 1) was refused registration merely on the ground that such stripes were functional rather than conferring eye-appeal.

However that may be, a board to be used in a board game is an article for the purpose of the Registered Designs Act and if it has any novel markings with eye appeal it is registrable.

If there are a number of novel features then separate Registered Design applications are advisable in respect of each such feature, each application having a statement of novelty directed towards the respective feature or a disclaimer of features covered individually by other Registered Design Applications. Any text on the board is not protected and must be disclaimed or crossed out and any playing cards or other matter such as the rules "primarily of a literary or artistic character" used with the game cannot be protected (Designs Rules 1989, Rule 26).

The pieces may be individually registrable, but it is seldom thought worthwhile to do this because the commercial appeal of the game will normally lie in the design of the board rather than the pieces.

Protection now lasts for up to 25 years (unless the application was filed in a transitional period after 12th January 1988 and before 1st August 1989 when the period of protection is normally 15 years) (Copyright, Designs and Patents Act S 269(1) and S 266 (1)). Comparable design protection is obtainable in France (25 years), Germany (20 years), Italy (15 years), Switzerland (15 years) and the Benelux countries (15 years).

It is not necessary to show actual copying to establish infringement.

On the basis of Suwa Seikosha's Design Application [1982] RPC 166 (which related to the temporary display during use of a picture of a bell and a sound representation on the LCD screen of a digital watch, the bell and sound symbol being invisible except when the watch was used in a particular mode) it might be thought that an image of eg a board for a board game or indeed any other novel image displayed on a computer during use of a game program should be protectable as a Registered Design for a computer game apparatus.However an attempt to register a mail merge icon (subsequently amended to a VDU screen displaying the icon) failed before the Registrar on the ground that it was not a "design" within the meaning of the Act, since the icon (the only new feature of the design) was "applied" to the screen by software rather than by an "industrial process" as required by S 1(1) (Xerox Corp's Application SRIS O/19/97 ).

It is difficult to distinguish these cases, since a software element is involved in each, and, after all, many industrial processes involve software. Perhaps a better basis for the distinction is that in the Xerox case, the image was transient whereas in the Suwa Seikosha case the image was semi-permanent, at least during one mode of use and therefore had a much greater effect on the user's perception of the article, ie on its design..On this basis it ought to be possible to register a computer display displaying eg a board and pieces if the latter have eye appeal.

ii) A half-way house on the Old Kent Road- Design Right

This is a right akin to copyright that accrues automatically under part III of the Copyright Designs and Patents Act 1988 to articles which were made or whose design was recorded on or after August 1st 1989, subject to certain qualification requirements concerning residence or place of business being satisfied, and subject to the design being "original" (ie not copied but the independent work of the designer - C & H Engineering v F Klucznik [1992] FSR 421) and not being "commonplace in the design field in question at the time of its creation" (CDPA S 213 (4)).

"Design" in this context means "any aspect of the shape or configuration (whether internal or external) of the whole or any part of an article" (CDPA S 213 (2)) and design right does not subsist in "surface decoration" or features of an article which enable it to be connected to another article "so that either article may perform its function" (CDPA S 213 (3) c) and b)).

Normally the duration of design right is 10 years from the end of the calendar year in which articles made to the design were first marketed and licences of right are available in the last five years of this period (CDPA S 216 (1) b) and 237 (1)).

Design right, being limited to features of shape or configuration, is not useful for protecting the design printed on a board used on a board game but, it is submitted, could provide functional protection of a novel shape or cut-out or other feature of shape or configuration applied to a board of a board game. Admittedly, design right does not extend to a "method or principle of construction" (CDPA S 213 (3) a)) but the purpose of a similar exclusion in the Registered Designs Act was apparently to prevent the protection of general techniques (eg a method of basket weaving). The further exclusion in the Registered Designs Act of "features dictated by function", which does not appear in the provisions relating to design right, would therefore have been superfluous if the elimination of methods or principles of construction from design right eliminates all functional protection. For example, a round tube used at the top of a pig fender to protect sows from scratching their teats has been held to be a feature susceptible of design right protection (C & H Engineering v F Klucznik , supra).

Copying (as opposed to independent derivation) must be proved to establish infringement but the test of infringement is different from the "skill and labour" test of copyright infringement: one must decide whether the alleged infringing article is made "exactly or substantially to the design" (C & H Engineering v F Klucznik , supra).

To summarise, design right, since it excludes surface features (either because such features are decorative or because they are not features of shape or configuration) is of limited usefulness to board games designers. However any three-dimensional features may attract some functional protection for a limited period.

iii)It is your draughtsman's 100th birthday- collect £10 from each player? -Copyright

Historically, copyright was enormously useful to manufacturers to prevent copying because even the simplest engineering drawings or sketches have been considered "artistic works" which attract copyright (for 50 years from the death of the draughtsman; now life plus 70 years - Duration of Copyright and Rights in Performances Regulations 1995) and the copying of any article recognisably made from those drawings has been considered to be an infringement of that copyright.

Various anomalies arose, in particular in relation to Registered Designs, and the UK courts have whittled down the extent of copyright protection for articles (see eg "Law Lords destroy the basis of spare parts copyright protection" A H Hermann, Financial Times, 12th May 1988).

This protection has now been further curtailed in the 1988 CDPA.

Firstly, Schedule 1 para 6 (1) removes copyright protection from "artistic works" (defined in S 4(1) a) as a "graphic work,....... irrespective of artistic quality") which were made prior to 1st June 1957 and when made were intended to be used as the basis of industrial production and were designs registrable under the RDA 1949. (Unless such designs were entirely dictated by function, which will virtually never be the case for board games or toys in general, the registrability requirement will be met - Interlego AG v Tyco Industries [1988] RPC 243, pp362-364 of the judgment).

Secondly, if the design was made on or after 1st June 1957 but before 1st August 1989 then Schedule 1 para 19(1) to the CDPA provides that copyright protection for such artistic works remains unaffected by Section 51(1) of the CDPA (infra) for a transitional period of 10 years ie to 1st August 1999 but that licences of right are available for the last 5 years of that 10 year period.

Thirdly, Section 52(2) CDPA provides that the copyright in drawings made on or after 1st August 1989 which are used in manufacturing articles expires 25 years after the end of the year in which such articles are first marketed.

Finally, and most importantly, Section 51(1) of the CDPA provides that if a design document records a design for anything other than an "artistic work" (eg if it records a design for an article) then it is not an infringement of the design to make an article to the design or to copy an article made to the design .

The combined effect of these provisions is that unless the relevant drawing was made between June 1957 and August 1989 (in which case licences of right are available) there is no effective copyright protection for the shape of an article but there is a 25 year period of protection for other copyright aspects of the drawing (eg copying the drawing directly or indirectly in sales literature).

The above conclusions apply to "articles", a term which is not defined in the CDPA. Is a sheet an "article"? - clearly it is not if it is a sheet of paper or the like intended merely to act as a carrier for the displayed information - in which case copyright lasts for the lifetime of the author + 70 years. It is submitted that the meaning of "article" must be construed in the context of case law and practice under the Registered Designs Act 1949 as noted above. Hence any item which serves some purpose other than as a mere carrier for the design is an "article" for the purposes of the 1988 Act. It is noted that the references to two and three dimensions in the 1956 Copyright Act are conspicuous by their absence in the 1988 Act, implying that thickness or shape in three dimensions are not necessary for something to qualify as an article. Hence packaging is an article.

Hence, contrary to the common view (see eg A Chissel "Can you Patent Board Games?" Inventor's World Summer 1996 p45) it is submitted that the shape of a board for a board game and even the markings on its surface can be copied by reproducing the board, without infringing copyright. However the rules and any accompanying literature will attract separate copyright in the normal way as "artistic works", which copyright will last for the lifetime of the author + 70 years.

The question now arises, to what extent the copyright in the rules of a novel game will prevent a competitor from selling a functionally equivalent game.

It is often assumed that there is no copyright in ideas, so that the concept originating from one author can be copied by another, provided that the concept is expressed differently. However, as discussed by Brendan Brown in [1995] 5 EIPR "The Idea/Expression Dichotomy and the Games that People Play", in the recent New Zealand decision Bleiman v News Media (Auckland) Ltd a "Fantasy Rugby" newspaper game which was based on a similar game and, after several modifications as a result of copyright infringement proceedings, had a very different appearance, was held to infringe copyright because its basic ideas and rules had been taken from the plaintiffs.

Undoubtedly the defendants had started off on the wrong foot by blatantly copying the plaintiffs' game, but it is submitted that the rules and similar literary material enclosed with a game normally attract copyright at a higher level of generality than mere appearance; the test of copyright infringement is whether a substantial part of the effort, skill and judgment of the copyright owner have been taken by the copier. It is submitted that this is a perfectly general test and that there is no copyright in ideas only to the extent that the mere expression of an idea, no matter how profound, is normally too short to be a literary work (eg e = mc2) and ti the extebt that there is insufficient effort, skill or judgement in its acquisition. neither of these limitations applies to the rules of a game.

Further support for the subsistence of copyright if not in ideas, at least in their abstract expression if this is sufficiently detailed, can be found in Corelli v Gray [1913] TLR 570 (copyright in the plot of a play) and in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275, as discussed by Grewal in  “Copyright Protection of Computer Software”  [1996] 8 EIPR p 454 at p 458.

The above limitations do of course apply to the title of a game (see Laddie, Prescott & Vitoria, supra) and also Green v Broadcasting Corporation of New Zealand [1989] RPC 700 wherein the concept of the clapometer was held to be “too exiguous” to attract copyright protection.

If a reputation in the title  accrues, then this may be protectable in an action for passing off, but this is beyond the scope of this article.

Summary and Conclusion

The legal validity of gmes patents is largely untested and is somewhat doubtful in the UK, although the UK Patent Office has a favourable attitude to board games. However both board games and computer games with novel rules ought in theory to be patentable under the 1977 patents Act and the EPC.

Registered Designs are of doubtful value because of their lack of protection of function, although they protect the appearance which may be a crucial part of the commercial attractiveness. Design Right protection should also offer some functional protection of board games but is of rather short duration. Surprisingly, copyright protection of the rules may currently offer the best hope of functional protection.

© R Doble 1997

I wish to acknowledge with thanks the helpful comments of Anthony Martino , of  5 New Square, Lincolns Inn, london, on an earlier draft of this article.

NOTE: Since this article was written there have been significant developments in the law, particularly regarding patentability of games. In Shopaloto.com Ltd’s Patent Application [2006] RPC 7 it was held:

“If there is a contribution to the art outside the list of excluded matter, the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable.”

It follows that novelty in the playing of a game (as governed by its rules), or in its commercial exploitation, or in its visual aspects (eg menus, icons or characters) will be excluded from consideration when assessing inventive step, since these aspects are within the excluded areas of methods of playing a game/computer programs, methods of doing business, and presentation of information respectively. However novel and non-obvious operation of the game hardware, even if controlled by software, should in principle form a basis for patentability.

Richard Doble, November 2007