In an August 1, 2013 ruling, Judge Paul A. Crotty dismissed the trade dress infringement claim of plaintiff Michael Ward d/b/a Brainteaser Publications, and declined to dismiss the copyright and unfair competition claims against Andrews McMeel Publishing, LLC. The plaintiff had been publishing "Scratch & Solve Hangman" books, incorporating variations on the "Hangman" word game, for nearly twenty years, including since 2005 in the U.S. The defendant introduced its own "Hangman"-based books in 2008, and Ward sued, alleging that the defendant's books "'incorporate the entire concept, feel, and design" of the plaintiff's books. The Court rejected parts of the plaintiff's copyright claim because the supposedly copied material lacked sufficient originality to be copyrightable, but found that the drawings of certain stick figures used in the "Hangman" game could support a copyright claim. Judge Crotty held that "[w]hether the illustrations or total concept and overall feel of the [defendant's books] are substantially similar to those of the [plaintiff's books] presents a close factual question. Accordingly, it will be left for a jury to determine." Judge Crotty also declined to dismiss the unfair competition claim, noting that such a claim based on copying copyrighted material is preempted by the Copyright Act unless there is "an 'extra element.'" The Court found that the complaint alleged that the defendant passed its books off as those of plaintiff, and held that such an allegation does supply that "extra element." Judge Crotty thus declined to dismiss the unfair competition claim.
As to the trade dress claim, the Court ruled that such a claim was not preempted by the Copyright Act, and could be asserted in the same action as a copyright claim. Judge Crotty found, however, that the complaint did not allege that the trade dress was non-functional, and held that "[f]ailure to plead non-functionality is fatal to trade dress infringement claims." The Court dismissed the claim with leave to replead.
