BOSTON (CN) — Affirming a determination that the family of “Game of Life” co-creator Bill Markham does not hold copyright termination rights to the iconic 61-year-old board game, the First Circuit on Monday upheld a district court’s bench ruling that Markham’s role in the game’s creation, dating back to 1959, was “work for hire."
Known simply as “Life” today, the earliest iteration of America’s first parlor game — "The Checkered Game of Life” — was launched in 1860 by Milton Bradley when the future business magnate was a struggling lithographer.
To commemorate Bradley’s eponymous company centennial, businessman Reuben Klamer asked Markham in 1959 to create a prototype update.
The modern game featured players riding around the board in a convertible, able to get married, have children, go to college or into business, buy stocks and insurance, and get rewarded for taking risks.
Hasbro would later buy the Milton Bradley Company in 1984, but Klamer’s deal brought in his business partner, Art Linkletter, a popular TV personality. Linkletter became the game’s spokesman, “heartily” endorsing it on the back of the box and having his picture appear on the game’s $100,000 bills.
Markham assigned his rights to a company controlled by Klamer and Linkletter.
The 3D board game went on to become one of the most popular of all time; it has been translated into 20 languages and is in the permanent collection of the Smithsonian. More recent versions have replaced the convertibles with minivans and allowed players to acquire pets and file lawsuits.
Markham died in 1993 at the age of 76 in his Thousand Oaks home in Ventura County, California.
In 2015, Markham’s heirs — his widow Lorraine Markham, and adopted child Susan Garretson — sued Hasbro and Klamer in Rhode Island federal district court to terminate his assignment, which is allowed under the 1976 Copyright Act as long as the product wasn’t a “work for hire.”
But U.S. District Judge William Smith found that the game was a work for hire, under the so-called "instance and expense" test, because Klamer hired Markham to design it.
Markham's successors-in-interest challenged that conclusion on appeal to the First Circuit, arguing that the district court erred in using the instance and expense test, and, even under that test, reached the wrong conclusion.
In their appeal, Markham’s heirs urged the First Circuit to determine whether Klamer qualifies as an employer, which they argued would lead to the conclusion that he does not, so the game would therefore not qualify as a work for hire.
In the First Circuit’s 26-page opinion made public Monday, a three-judge panel was not persuaded to reject Judge Smith’s work-for-hire determination.
“Eventually, their dispute ... reduced to one primary issue: whether the game qualified as a ‘work for hire’ under the Copyright Act of 1909,” wrote Senior U.S. Circuit Judge Kermit Lipez. "If it did, Markham's successors-in-interest would not possess the termination rights that would allow them to reassert control over the copyright in the game. After considering the evidence produced at a bench trial, the district court concluded that the game was, indeed, such a work.”
The panel cited binding circuit precedent on the applicability of the “instance and expense” test to commissioned works under the 1909 Act from the 1993 First Circuit ruling in Forward v. Thorogood.
In Forward v. Thorogood, the circuit upheld a ruling enjoining music aficionado and record collector John Forward from claiming copyright ownership under the work-for-hire doctrine of pre-fame demo recordings from 1976 of the rock group George Thorogood and the Destroyers, following the success of the band’s mid-80s breakout hit “Bad To the Bone”.
Lipez noted in the panel’s opinion that the First Circuit applied the instance and expense test in its conclusion that "although Forward booked and paid for the studio time, he neither employed nor commissioned the band members nor did he compensate or agree to compensate them."
“In sum, we stand by the approach in Forward and reiterate that the instance and expense test applies to works governed by the 1909 Act,” the First Circuit wrote.
Lipez was joined on the circuit panel by U.S. Circuit Judges Ojetta Rogeriee Thompson and William Kayatta.
Counsel for both parties did not immediately respond to requests for comment Monday afternoon.
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