Intellectual Property Theory
For Want of an IP Protection:
Games and Game Mechanics Under Copyright or Patent Law
American intellectual property law has been an ill fit for protecting games. Game mechanics are particularly susceptible to a confused and inconsistent interpretation by the law. Game mechanics, as used here, means the aspects of a game that affect the way it is played such as the rules, the interaction of the players with the objects in the game, and the interaction of the various objects in the game with each other. The scope of this analysis focuses on board and card games, but also addresses novel game mechanics incorporated in video games. The current state of intellectual property protection for games is an awkward amalgamation of copyright and patent law.
The competing doctrines of intellectual property law protect distinct aspects of games, subject to significant overlap and confusion in the courts. Copyright protects the expressive elements of games, but courts often struggle with the intersection between the expressive and functional aspect of the game. Similarly, trademarks may protect the aspects that identify the source or maker of the game, but not the parts that are functional. Finally, Patents allow for narrower protection of the novel aspects of games as a “process.”
Patent law is the appropriate doctrine for protecting game mechanics and should be the exclusive doctrine applied. Game mechanics share the important features of scientific and mechanical inventions that justify intellectual property protection that is broader in scope but narrower in time and subject to protection only if they are novel and useful.
Historical Protection of Games with Copyrights
At first impression copyright law seems to be the proper method of protecting the creative act of designing a game. Game designers frequently assume that their board games are protected by copyright. Numerous courts have noted that toys are copyrightable. 17 U.S.C 101; Lanard Toys Ltd. v. Novelty, Inc., 375 F. App'x 705, 709-10 (9th Cir. 2010) (toy helicopters and planes); Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670-72 (3d Cir.1990) (“animal nose masks”). A quick Google search reveals a large number of laymen and toy designers who have created a new board game seeking advice on protecting their game with copyright.
The appeal of copyright protection for games is evident. Copyright protection attaches automatically and lasts a very long time. A starving game inventor or small business has a strong preference for having automatic protection without going through the lengthy and expensive process of acquiring a patent. Owners of older games that had patents run out, or never had patents to begin with, would like to maintain their monopoly for the more than 70 years, as provided by copyrights.
Nonetheless, black letter copyright law does not protect the functional aspects of games. Atari, Inc. v. Amusement World, Inc., 547 F. Supp. 222, 227 (D. Md. 1981) (copyright does not protect the idea of an asteroids game, just the “design features” such as “the symbols that appear on the display screen, the ways in which those symbols move around the screen, and the sounds emanating from the game cabinet”). This goes back to the seminal United States Supreme Court Case of Baker v. Selden, in which Mr. Selden sought copyright protection for his books of accounting forms. Baker v. Selden, 101 U.S. 99, 100 (1879). His book contained forms to be used to undertake his particular method of accounting. Baker, 101 U.S. 99, 100 (1879). After Mr. Selden’s death, Mr. Baker produced and sold an accounting book with forms that were not identical but enabled the same system of accounting. Mr. Selden’s widow sued on the grounds that Mr. Baker’s books infringed the copyright she had been assigned.
The Supreme Court relied on, and elucidated, the idea-expression dichotomy of copyright in denying Mrs. Selden’s claim. The idea-expression dichotomy is the doctrine that the expression of an idea may be copyrighted but the idea behind that expression cannot. For example a book describing a method of drawing, regardless of how many illustrations it contains demonstrating the process, cannot preclude another author from writing a book on the same method. Id. at 103. Baker is relevant to game mechanics because the functional aspects of a game are ideas, as compared to the implementation of that idea which is expression. This distinction is not always clear or easily made.
Recently, a court in New Jersey illustrated how easy it is to confuse functional and expressive aspects of game mechanics. In Tetris Holding, LLC v. Xio Interactive, Inc., the court, after stating the correct rule, that “game mechanics and the rules are not entitled to protection,” proceeded to find that copyrights protected a number of functional aspects of the classic videogame Tetris. Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394, 404 (D.N.J. 2012).
The defendant in Tetris Holding, intentionally and admittedly copied the game Tetris to port it over to a phone or device application. The defendant’s game was called Mino closely resembled Tetris, one of the most popular videogames ever created. The gameplay was identical but the coloring and texture of the pieces was different slightly. The holders of Tetris’ copyright, appropriately named Tetris Holding, LLC, sued. The game mechanics of Tetris were never patented so the owners relied on their assigned copyrights and trademarks to protect their investment.
While Mino undoubtedly did violate copyright, the court in Tetris Holding made the mistake of combining several functional game mechanics into the protected category of expressive components. Notably, the court opines that Mino could have been created with different pieces that the seven used in the original Tetris game, the movement of the pieces could be different and the game would still be a puzzle game. Tetris Holding, 863 F. Supp. 2d at 411. Further, the court explains that the “the display of “garbage” lines, the appearance of “ghost” or shadow pieces, [and] the display of the next piece to fall,” are all copyrightable. Id. at 413.
The features identified by the court are not merely stylistic choices, but functional aspects of the game. While a similar puzzle game can be created using blocks of different shapes and sizes, the seven selected by Tetris represent the only seven configurations of four even squares. As such, they interact geometrically in a unique way. The shape of the pieces requires the player to make predictable strategic choices. Certainly another puzzle game with different shaped pieces could illicit a different set of strategic choices, but that would be a different game and likely a less optimum one. If Mino had added just one additional square to the pieces there would be 26 different shapes rather than seven. This adds significant complexity and greatly increases the difficulty of the game. While a game of “Pentris” could be interesting and fun in its own right, it would no longer be the same game with the challenges and satisfaction of Tetris.
Similarly, the court claimed that the movement of pieces on the field could be different. There are three possible alternatives for how pieces can move in a Tetris game without changing the strategy of the game. The pieces could move from one side of the screen to the other, from the bottom of the screen to the top, or in the third dimension appearing to come toward or away from the player. Unlike the unlimited options that the Tetris Holding court claims any other change affects the strategy, rather than the style, of the game. Tetris Holding, 863 F. Supp. 2d at 411. For example, if the pieces flipped across an axis, rather than rotating, the play of the game would be fundamentally changed. In this game, unlike in Tetris, the “Z” and “S” shaped blocks would be preferable to a horizontal line.
Each of the other features the court claims are protected by copyright are also functional and change the strategy and difficulty of the game. The appearance of “garbage lines,” lines that appear at the bottom of the screen with one or more empty spaces are necessary to create additional blocks that can eventually be removed with clever play. The “ghost” pieces that show where the block will fall once released, or accelerated, provide a crutch for unskilled or unpracticed players. The box displaying the next piece to fall gives the game the additional strategy of limited advanced planning, another functional aspect.
In theory, copyright only protects the exact expression of the game or the rules of the game, but in practice that protection bleeds over into the ideas themselves.
Historical Protection of Games with Patents
Games can be, and frequently are, patentable. The most successful patented board game is Monopoly, U.S. Patent No. 2,026,082 (Filed in 1935). The patent covers the board as well as the rules for playing the game. Games fit under the category of “processes” in Section 101 of the patent act. 35 U.S.C. § 101; Shubha Ghosh, Patenting Games: Baker v. Selden Revisited, 11 Vand. J. Ent. & Tech. L. 871, 875 (2009).
To qualify for a patent the game must be associated with some apparatus for playing the game, such as a board and pieces. See, In re Bilski, 545 F.3d 943, 951-52 (Fed. Cir. 2008). A “process” must not claim “laws of nature phenomena, or abstract ideas.” Id. at 951. While board games can be eligible for patents, they are often strictly limited or found invalid because of a broad understanding of what constitutes a novel game mechanic.
The Federal Circuit had the opportunity to address whether the different printed words and labels associated with a game was a sufficient change to make a board game patentable. In In re Bryan, the court of appeals was confronted with a musical band themed board game. In re Bryan, 323 F. App'x 898, 900 (Fed. Cir. 2009). The claims included the board with irregular segmented paths to a central area, tokens to denote players, die to determine the increments moved money, an objective and cards. Id. At issue were the cards. The claimed invention had cards denoted as difference occurrences in the game, such as “Consequence” cards and “Band Member” cards. Id.
The problem with the claimed invention was that the only significant difference between the claimed game and prior art musical band themed games was the content of the printed matter on the cards used. The court held that the language and substance of printed matter “cannot impart patentability, as it is useful and intelligible only to the human mind.” The new game could not be claimed because the method of playing it was the only difference in a method of using the game rather than one of the functional parts of the board. Id. at 902
This illustrates a problem with the current state of patent protection for games: courts are often unwilling to see the method of playing a game unless it relates to a functional aspect of the apparatus on which it is being played. A new and innovative way of playing a game may be precluded from patent protection because the physical aspects of how the pieces interact are viewed by the examiner or the court as obvious, notwithstanding the significant advances in gameplay and strategy. At its core, the game of Magic: The Gathering involves taking cards from a deck of cards and putting them in your hand and later placing them on the board according to the printed instructions on the card. A court that abstracts the playing of a game to this physical level would find the game of Uno to render Magic obvious in light of prior art and therefore defeat a significant incentive for anyone to create a new innovative way of playing with previously existing game actions.
Patents have traditionally been a rough fit for protecting games and game mechanics. Courts are uncomfortable with the abstract, and facially frivolous, nature of methods of playing a game. This paper will show that patents are the proper device for protecting the intellectual property of game mechanics and should be expanded or adapted to better embrace those ideas.
The “Right Fit” for Protecting Games
To determine the proper protection for games it is pivotal to determine what features of an invention or creation make it better suited for copyright or patents and then comparing those to the features of game mechanics. Copyrights and patents each serve different functions, have different costs for society, and produce different benefits for their holders.
Works that warrant copyright protection are distinguishable in that strong protection of that work only removes a small portion of the total creatable works, or the creative commons. An author who writes a book or a painter who paints a picture can be given protection only in that exact configuration of words or colors and would value that protection. This is distinct from patent law because protection in an exact invention would not be useful if it did not prevent people from creating distinct, but functionally identical devices, which would work around the patent while still riding on the effort of the original inventor. Further, the chances that anyone would independently write a book with that configuration of words or an identical painting is so miniscule that it approaches zero. These two factors make it practical to provide a narrow protection, just the story or art created and not similar or independently created stories, which does not impose a large cost on society; no one would have created that work of art, so no one is prevented from creating that work of art.
The reason creative works can be protected this way is because there is an unlimited number of stories that could potentially be told, to use books as an example. There is no right way to write a story about a child with a tragic past who attends a magical academy. J.K. Rowling certainly wrote a popular version but Patrick Rothfuss’ novel “The Name of the Wind” fits the same outline but is drastically distinct. This is distinct from inventions as there are only a set number of ways to solve a problem, presumably only one of which is optimal. If there are only a limited number of ways to solve a problem, it is a much bigger cost on society to grant long protections on the best, or maybe only, way to solve that problem. Copyrights are given easily and last a long time because they have a low cost.
Game mechanics are a way of solving problems, not a purely creative endeavor. The problem to be solved is: how to make a game that is a degree of difficulty, winnable, and enjoyable. Depending on the market the degree of difficulty sought will be different; the maker of a child’s game will want to produce a game that can be grasped by developing minds while Richard Garfield will tend to make a game directed at a more advanced audience. What the degree of difficulty sought is not important. There are a limited number of ways to solve this problem. Almost every board game that requires a representation of progression uses a segmented path: e.g. Life, Monopoly, Candyland, and even Snakes and Ladders. There are only so many ways to depict linear progression toward an end goal on a two dimensional board. Granting the long protection of copyrights would interfere with the ability of future inventors in a way that is unlike granting the same protection in a novel or work of art.
Unlike copyrights, patents take into account the limited pool of possible solutions. In response American patent law restricts patents in time, patents last a fraction of the time that copyrights last, and in how easily they are granted. Patent law recognizes the need to provide inventors value for their invention by granting them limited monopolies. Those monopolies cause a social harm, but that harm is less than if the invention had never existed and it acts as a price paid to the inventor for creating and then disclosing his invention. Further to obtain a patent an inventor must show that what he created was novel and useful.
Patent protection is broader than that copyright protection because it must be to provide the appropriate benefit to the inventor. The value of an invention that solves a problem is not in the implementation but in the result. Once the process of solving a problem is known then any number of creative ways of solving the problem with different styles, effects, or devices. These devices, or work arounds, would not be covered by a narrow protection of the invention. Instead the patent covers all the different implementations of a particular process.
Patents provide the proper protection for game mechanics. Game mechanics are ways to solve problems that have only limited solutions. Once a game mechanic is invented and divulged then other implementations of that function can be used to free ride on the inventor’s work. For an example, once the inventor of Candyland solved the problem of how to give players the impression of progression across a two dimensional board with its segmented path, a copyright would only protect that specific curvy pastel colored path, but the inventor of Snakes and Ladders, who was looking for a way to show progression could take the path, change the implementation to fill up the whole board, and avoid the narrow copyright protection. Patents account for and address this possibility.
Added Benefits of Patent Protection
Patent protection also has the benefit of optimizing development of patented processes. As Edmund Kitch argues in his article “The Nature and Function of the Patent System,” patents actually encourage efficient use of intellectual property. The patent holder has the right to license his patent for use and for development. He has an incentive to optimize the use of his patent because every additional use is more money in his pocket through royalties.
The patent holder is in a position to direct further research on technologies covered by his patent. If it would be inefficient for three groups to be doing the same research, the patent holder only licenses it for research to one group. This prevents duplicative and wasteful uses of the intellectual property.
Game mechanics could similarly benefit from this direction. Once a mechanic is covered by patent law there would be an area of intellectual property that would be under the control or direction of an interested party who could insure that further research in that area is optimized.
Game mechanics are ideas that solve problems and as such are better accommodated by patent rather than copyright law. Patent law has the appropriate rewards, taking into account the social cost of granting a monopoly on a limited number of possible solutions. As an additional benefit patent will create an additional benefit for development of uses for game mechanics by putting an interested party in charge of how possible uses are pursued. Patent law should embrace the abstract mechanics that create novel ways of enjoying games, whether embodied in cards, boards, or computers.
 This analysis assumes that intellectual property provides sufficient incentives for game designers and inventors to create more game mechanics in the presence of protections than would be created in the absence of intellectual property protection.
 There is in fact a flash game called “Pentris” which is a version of Tetris played with all the pieces that can be created by adjoining the sides of 5, 4, 3, and 2 evenly sized blocks. The most notable difference is that having a piece with nowhere to place it without creating empty space underneath blocks. The strategy feels more like damage control, fighting a losing battle to survive rather than efficiently clearing rows and acquiring points.
 It is conceivable that a variation of Tetris could be created that was rotated at an angle other than 90 degrees on the screen. This awkward configuration is not significantly different than the possibilities listed above.
 Richard Garfield created Magic: The Gathering and a number of other complicated and successful collectable card games.
 20 Journal of Law and Economics 265 (1977)