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16 June 2021CopyrightMuireann Bolger

Hasbro prevails in decades-long ‘Game of Life’ dispute

Toymaker Hasbro has secured the copyright to a board game in the latest chapter of a long-running dispute with its creators after a US court ruled that it was designed as a “work for hire”.

The decision was handed down at the US Court of Appeals for the First Circuit on Monday, June 14, in an opinion written by Judge Kermit Lipez.

The dispute centres on “ The Game of Life”, a classic family board game first marketed by the Milton Bradley Company in 1960, and whether it qualified as a “work for hire” under the US Copyright Act of 1909.

During the legal proceedings, the court heard how toy developer Reuben Klamer was asked to devise an idea for a product to commemorate the centennial of board game manufacturer Milton Bradley in 1960.

While searching for inspiration in the company's archive, he discovered a copy of the company's first board game: “The Checkered Game of Life”, created by the firm’s titular founder in 1860.

Klamer developed the concept but needed help developing it and creating a working prototype that could be pitched to Milton Bradley. He chose game designer Bill Markham’s firm for the task which began work on the project in summer 1959.

Milton Bradley began refining the prototype and made some design changes, often with input from Markham and Klamer, and published the game in early 1960.

The game simulates a person's travels through his or her life, from college to retirement, with jobs, marriage, and possible children along the way. Two to four or six players can participate in one game.

Termination rights

The game was commercially successful and remains a key brand for Hasbro, which acquired Milton Bradley, and the rights to the game, in the 1980s.

In the decades following publication, Markham and Klamer clashed in court battles over who deserved credit for creating the game.

Markham's successors, Markham Concepts sued Klamer and Hasbro in 2015, seeking a judicial declaration that they possess “termination rights” under the 1976 Copyright Act.

Such rights give the authors of works the power to terminate the grant of a copyright after a certain period of time, permitting them to extricate themselves from “ill-advised” grants made before the “true value” of their work was apparent.

With these termination rights, Markham’s successors-in-interest would be able to cancel the original assignment agreement and negotiate a more lucrative royalty deal.

However, these termination rights do not extend to “works made for hire”.

Instance and expense test

After a bench trial, the US District Court for the District of Rhode Island concluded that the game was a work for hire under the so-called “instance and expense” test.

Specifically, the court found that Klamer “provided the instance for and b[ore] the expense of the prototype's invention”. According to the court, Markham's successors-in-interest lacked termination rights under the 1976 Copyright Act.

Markham Concepts appealed, arguing that the district court erred in using the instance and expense test, and, even under that test, reached the wrong conclusion.

The court found that because “The Game of Life” was created long before the 1976 Act took effect, there is no question that the standard for a work for hire under the 1909 Act governs.

However, Markham Concepts claimed that the “instance and expense test”, the prevailing approach under the 1909 Act for determining whether a commissioned work is a work for hire, is no longer applicable, even for works created before 1978 works.

It further held that the work-for-hire doctrine under the 1909 Act is limited to works produced under a traditional employer-employee relationship defined by principles of agency law, and does not extend to commissioned works, for which the lower courts developed the instance and expense test.

In that circumstance, Markham would retain his status as the original author, a status precluded by the work for hire doctrine, enabling Markham Concepts to enjoy the sought for termination rights.

However, the First Circuit found the evidence provided by Klamer amply supported the district court's finding that the game was created at Klamer's expense, and that “it was Klamer who bore the primary risk, as he was on the hook for the costs if Milton Bradley passed on the game”.

Judge Lipez also found that Markham “never owned the copyrights to assign” and there are no rights that his heirs may terminate, and affirmed the lower court’s decision.

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