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Markham Concepts, Inc. v. Hasbro, Inc.

District court dismisses claim for declaratory judgment by heirs of man who was commissioned to develop classic board game “The Game of Life,” finding that game was work made for hire and heirs could not terminate any assignment of copyright.

In a suit involving the classic board game “The Game of Life,” the district court ruled against the plaintiffs, heirs of Bill Markham, finding after trial that Markham’s heirs did not control the copyrights in the game because Markham was commissioned to create the game, and therefore they could not invoke termination rights under the 1976 Copyright Act. While the lawsuit was filed in 2015, the saga of the game’s creation and the dispute over the credit and rights to the game date back to 1959, when defendant Reuben Klamer met with the gaming company Milton Bradley, setting off a chain of events that would eventually lead to Milton Bradley licensing and distributing “The Game of Life” and Markham assigning his rights in the game. By filing suit in 2015 seeking, among other things, a declaratory judgment that they owned the rights to “The Game of Life,” Markham’s heirs sought the power to undo Markham’s assignment by way of the termination rights provided by the 1976 Copyright Act.

In 1959, Milton Bradley was looking for a game to celebrate its centennial. Klamer had the idea to develop a modern version of a game created in 1860 by Milton Bradley (the man) called “The Checkered Game of Life.” To help develop and build the prototype for what would become “The Game of Life,” Klamer hired Markham and his company, California Product Development. CPD employed two artists, Grace Chambers and Leonard Israel, who also participated in the project. Over the next six weeks, Klamer and Markham developed ideas for the game, which were built into the prototype by Chambers and Israel under the weekly supervision of Klamer. Chambers and Israel designed the art for the game’s board and box and, together with Klamer, Markham and Markham’s wife, participated in creating the game’s rules. Once the prototype was completed, Klamer and Markham met with Milton Bradley executives to pitch the game, bringing along with them Klamer’s business partner, radio and TV personality Art Linkletter, also a defendant in this suit. The board game company liked the game, and on Sept. 21, 1959, entered into a license agreement with Klamer and Linkletter’s company, Link Research Corp., to manufacture and market the game in return for a 6 percent royalty. In a second agreement, dated Oct. 20, 1959, Markham assigned his rights, title, and interest in and to the game to Link in exchange for 30 percent of the 6 percent royalties Milton Bradley would be paying to Link as well as an advance and the $2,423.16 Markham spent producing the prototype.

Over time and in light of the game’s commercial success, Markham grew unhappy with what he perceived to be a lack of credit due him for his role in the creation of the game and also over the royalty rate he was being paid under the assignment agreement. His discontent with the assignment agreement continued until his death in 1993. 

In this action, plaintiffs sought to reclaim the rights that Markham had assigned away in 1959, arguing that Section 304 of the Copyright Act applied. The district court disagreed, noting that works made for hire are excepted from the termination rights provision. If the game was a work made for hire, then Markham’s heirs would not be able to terminate the assignment agreement.

Because the prototype was created in 1959, the district court looked to the Copyright Act of 1909 to determine whether it was a work made for hire. While the 1909 act does not define works made for hire, the First Circuit utilizes the “instance and expense test.” Under that test, the presumptive author and copyright holder of a commissioned work created by independent contractors is the commissioning party at whose instance and expense the work was done. Applying this test, the court found that the game was created at Klamer’s instance because he provided the impetus for the development of the prototype by coming up with the idea, hiring Markham and CPD to build the prototype, and supervising the prototype’s creation. Chambers and Israel testified that they considered Klamer the final authority on the game’s look and feel. The district court also held that the game prototype was created at Klamer’s expense, because under the test, the issue of expense is determined by which party takes the financial risk in the creation of a work. Here, the court noted that Klamer had agreed to pay Markham and CPD’s expenses in building the prototype regardless of the success of the game.  

Having found that the prototype had been created at Klamer’s instance and expense, the court concluded that Klamer was the presumptive copyright holder. The district court was not swayed by plaintiffs’ argument that the language of the assignment agreement shows that Markham had rights in the game, finding the contract language to be merely a belt-and-suspenders approach to ensure that Link had all the necessary rights for the license to Milton Bradley. Absent evidence to defeat the presumption, the district court held that the prototype of “The Game of Life” was a work made for hire under the 1909 Act and therefore excepted from Section 304 of the 1976 Copyright Act. Markham’s heirs therefore could not invoke termination rights to end the assignment agreement.