The top toymakers view Scrabulous, the hit Facebook application, as copyright infringement. Fans of the online word game, though, think the demand to pull it out could be a PR disaster and marketing mistake.

The world's first- and second-largest toy companies, Mattel Inc. and Hasbro Inc, who own the rights to the original Scrabble, have asked Facebook, the social network site, to take down its hugely popular Scrabulous add-on. Lawyers for the toy giants claim that Scrabulous infringes on their copyright to the board-based word game.

According to a Mattel spokeswoman, "Letters have been sent to Facebook in the United States regarding the Scrabulous application. Mattel values its intellectual property and actively protects its brands and trademarks." Mattel holds the rights to Scrabble everywhere except the US and Canada, where Hasbro holds the rights to the Scrabble trademark.

The companies jointly issued cease-and-desist notices to the four parties involved in the development, hosting and marketing of Scrabulous. But in a separate statement, Hasbro did not identify who the four parties were, but said it was reviewing options with them in order to reach an amicable solution.

John D. Williams, executive director of the National Scrabble Association, stated that his group was hoping that the parties could work something out because the online game was a great way to introduce young people to the traditional board game.

Facebook has no comment at this time.

The Scrabulous add-on was not created by Facebook but was built for the site by brothers Rajat and Jayant Agarwalla, software developers from Calcutta. The two reportedly earn more than $25,000 a month from the game, which was launched in June 2007.

Fans of the hit application – who now number about 2.3 million, with 600,000 playing daily – lost no time in registering their protest. In fact, a "Save Scrabulous" group has even been formed. And group members are saying that, instead of being shortsighted and alienating current customers, Mattel and Hasbro should see Scrabulous as a marketing opportunity to gain new ones. Many people have bought the board game after playing it on Facebook. In Britain, the number of competitive Scrabble players has risen by 25 percent.

With Scrabble sales bumping up as a result of the interest in Scrabulous, many are saying that Mattel and Hasbro should not ignore this great profit potential.

What are the legal issues involved? An article in the website home.teleport.com examines them in depth. Intellectual property ("IP") law includes copyright, trademark and patent laws, among others. The difference: one trademarks a name, patents an invention and copyrights a writing or design. According to the National Scrabble Association, the name "Scrabble" was patented in the 1950s.

Trademarks In relation to the claim, there are two major aspects to trademark in the context of the game Scrabble: trademark and trade dress. The word "Scrabble" and the appearance of the game's board may function as a trademark.

Trademark in words: A trademark – generally a name, image or sound – is used to identify goods or services. It serves to identify everything sold under that mark as coming from the same source, and to prevent others from using the trademark owner's "good will" by labeling their own goods with the same mark.

Trademark can be automatic, meaning: the owner doesn't always have to register it with the Patent and Trademark Office. According to the Manual of Trademark Examination Procedure, 3rd ed., a trademark can also be fanciful (Exxon) if it was coined for the purpose; arbitrary if it exists as an English word (Apple), but is not related to the subject matter; suggestive (Microsoft) if imagination is required to determine what the subject matter is; and descriptive (Chew Candies) if it directly ascribes a quality to the subject matter. "Scrabble" is a trademark that's considered arbitrary or suggestive, but not descriptive.

Trade Dress (Trademark by appearance): According to Eco Mfg. LLC v. Honeywell Int'l Inc., 357 F.3d 649 (7th Cir. 2003), "A product's appearance can serve as a trademark to the extent that design identifies the product's maker. But a functional aspect of the design cannot be trademarked, even if it also identifies the product's source." Thus, the look of the Scrabble may fall under Trade Dress, but not its use.

Copyright - Tournaments The suit covers several issues relating to copyright. One under discussion: Can people hold tournaments without license from the Scrabble copyright holder? Asserting that they may not, trademark issues aside, would be based on the exclusive right to "perform" a copyrighted work publicly conferred by the U.S. Copyright Act upon the copyright holder – 17 U.S.C. sec. 106(4). One can also assume that no copying of the game board would be done, by closed-circuit or other broadcast of games, or by provision of score sheets with the board's diagram. Scrabble can be played on the Internet, at both authorized and unauthorized sites.

The question is, even at unauthorized sites where the configuration of a generic word game board is dictated by players, not the system, is the copyrighted Scrabble board being "performed" when it is played on-line? Both tournaments and on-line play are undoubtedly "public". But the U.S. Court of Appeals for the 9th Circuit has ruled that the playing of a game in public is not a "performance" – and that even if it were, if  the playing is not run as a commercial enterprise, it would be protected by the "fair use" provisions of the Copyright Act, sec. 107. In this case, neither tournaments nor on-line play violate the exclusive performance right.

Patent In this case, there should be no patent issues. The related U.S. Patent, No. 2,752,158, expired in the early 1970s, having been issued to James and Helen Brunot on June 26, 1956. That patent was not for the game itself, but for the little triangles projecting from the cells of the board, the stated advantage being that it is "not necessary to lift the tiles once they have been placed in order to discover the way in which the score is to be adjusted." (See U.S. Pat No. 2,752,158, col. 4, l. 6.)

Will the Mattel and Hasbro lawyers stick to their guns in defense of intellectual property rights? Will Scrabulous fans make enough noise to keep their beloved online game? Or will all the parties come together to find a common ground? In this battle between analogue and digital, the winners are hard to predict.