FOR PUBLICATION



UNITED STATES COURT OF APPEALS



FOR THE NINTH CIRCUIT



ROBERT W. ALLEN, individually

and d/b/a NATIONAL ACADEMIC

GAMES PROJECT,

Plaintiff-Appellant,



v.                                               No. 94-56593

ACADEMIC GAMES LEAGUE OF                         D.C. No.

AMERICA, INC., a corporation,                    CV-93-1563-WJR

R. LAWRENCE LISS, an individual,

NEAL GOLDEN, an individual, JAMES                OPINION

DAVIS, an individual, STUART E.

WHITE, an individual, JEAN

SKOMRA, an individual, and DOES 1

through 25,

Defendants-Appellees.



Appeal from the United States District Court

for the Central District of California

William J. Rea, District Judge, Presiding



Submitted April 9, 1996*

Pasadena, California



Filed July 12, 1996



Before: Mary M. Schroeder and Edward Leavy,

Circuit Judges, and James T. Trimble,** District Judge.

_________________________________________________________________

*The panel unanimously finds this case suitable for decision without

oral argument pursuant to Fed. R. App. P. 34(a) and 9th Cir. R. 34-4.

**The Honorable James T. Trimble, Jr., United States District Judge for

the Western District of Louisiana, sitting by designation.



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Opinion by Judge Trimble



_________________________________________________________________



SUMMARY 




_________________________________________________________________



































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_________________________________________________________________


COUNSEL



Donald G. Norris and Debra K. Butler, Burton & Norris, Pas-

adena, California, for the plaintiff-appellant.



Charles H. Carpenter, Glendale, California, for defendants-

appellees James Davis and Stuart White.



Joseph R. Zamora, Liebman, Reiner & Walsh, Los Angeles,

California, for defendant-appellee Neal Golden.



_________________________________________________________________



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OPINION



TRIMBLE, District Court Judge:



Due to a controversy over the use of academic games in a

tournament setting, Robert W. Allen (Allen) individually and

d/b/a National Academic Games Project (NAGP) filed suit

against Academic Games Leagues of America, Inc., R. Law-

rence Liss, Neal Golden, James Davis, Stuart E. White, and

Jean Skomra (collectively referred to as AGLOA) alleging

copyright, trademark, and tradename infringement. AGLOA

filed a motion for summary judgment against Allen's claims

for copyright infringement. The district court granted the

motion and Allen timely appealed.



I. FACTS



Since the 1960's, Robert W. Allen has been involved in the

development of academic games, including the games at issue

in this appeal, A MAN CALLED MR. PRESIDENT,1 EURO-

CARD or WORLD CARD,2 linguiSHTIK, 3 and PROPA-

GANDA.4 Allen has been employed in various capacities for

schools and school districts for the purpose of integrating the

subject games, as well as other academic games, into class-

room settings and student competitions. For several years,

middle and high school level students from six states have

participated in national tournaments that Allen conducted

under the name of National Academic Games Project

_________________________________________________________________

1 A game testing facts about American Presidents and copyrighted by

Allen in 1970.

2 A game testing history and current events and copyrighted by Allen in

1967.

3 A game testing grammar and sentence structure and copyrighted by

Allen in 1991.

4 A game introducing players to propaganda techniques used by politi-

cians and related agencies. The district court found that Allen failed to

establish legal ownership of a copyright for this game.



                                8386





(NAGP), a sole proprietorship of Allen. The highest number

of students attending a NAGP tournament was 900 in the mid

1980's and approximately 800 students attended the tourna-

ment in 1991.



In 1992, a non-profit corporation, Academic Games League

of America (AGLOA) was formed to conduct a national tour-

nament that used some of Allen's academic games as a culmi-

nation to local and regional student competitions that also

used the subject games during the school year. Prior to form-

ing AGLOA, the individual respondents had significant roles

in the NAGP national tournaments for many years. However,

while each of the individual respondents was principally

involved in AGLOA activities, Allen was not included. In

fact, AGLOA was formed due to a personality conflict that

developed between Allen and the individual respondents and

because of disagreements on how to conduct and develop the

national tournament.



Beginning in April, 1992, AGLOA conducted annual tour-

naments that coincided with Allen's NAGP national tourna-

ment. The tournaments occurred at the same time because of

a need to wait for the completion of local and regional compe-

titions and to accommodate the activities of graduating high

school seniors. The subject games used at the AGLOA tour-

naments were purchased and brought to the tournaments by

the participating students and schools. To date, three AGLOA

tournaments have been conducted involving approximately

500 students, in 1992, to 900 students, in 1994.



At each AGLOA tournament, the subject games were

played under rulebooks developed by an AGLOA committee

that continuously revised the rules to enable students to play

each game under tournament conditions while enhancing stu-

dent educational value and interest in the games. Tournament

rulebooks used at NAGP tournaments were not copyrighted

by Allen and were actually developed and revised by a com-

mittee of persons that consisted primarily of the individual



                                8387





respondents. While each of the subject games contains a game

manual, AGLOA tournament rulebooks do not repeat the

rules found in the game manuals, but refer to the rules and

elaborate on how each game is to be played in a tournament

setting.



Allen derives income from the sale of each of the subject

academic games. AGLOA buys games from Allen to sell

directly to participating schools at cost and does not copy any

of Allen's copyrighted materials in their tournaments. The

only players in AGLOA's leagues are students. Allen has

never objected to the playing or use of his academic games by

students, who have played Allen's games in regional leagues

for over twenty years.



II. DISCUSSION



A. Public Performance



[1] The Copyright Act of 1976 confers upon copyright

holders the exclusive right to perform and authorize others to

perform their copyrighted works publicly. See 17 U.S.C.

S 106(4). "Perform" and "publicly" are defined in the Copy-

right Act as, respectively, "to recite, render, play, dance, or

act it, either directly or by means of any device or progress

. . ." and "to perform or display it at a place open to the public

or at any place where a substantial number of persons outside

of a normal circle of a family and its social acquaintances is

gathered . . . ." 17 U.S.C. S 101. In applying these statutory

definitions to the playing of Allen's games in a tournament

setting, we conclude that the playing of a game is not a

"performance" within the meaning of the Copyright Act.



[2] Allen maintains that the language of Section 106(4) pre-

cludes AGLOA from conducting their national tournament

because it constitutes a public performance of his protected

literary works, the subject copyrighted games. Allen contends

that a purchaser of a board game only obtains the right to play



                                8388





the board game in settings that are not "public" because play-

ing or performing the games publicly is a right held exclu-

sively by the copyright holder under S 106(4). However, the

interpretation of "play," as used to define "perform" in S 101

of the Copyright Act, has generally been limited to instances

of playing music or records. See Polygram Intern. Pub., Inc.

v. Nevada/TIG, Inc., 855 F.Supp. 1314, 1321 (D. Mass.

1994); Hickory Grove Music v. Andrew Andrews, 749 F.Supp.

1031, 1036 (D. Mont. 1990), but cf. Red Baron-Franklin

Park, Inc. v. Taito Corp., 883 F.2d 275, 278-79 (4th Cir.

1989), cert. denied, 493 U.S. 1058 (1990), (holding that a

video arcade owner's use of copyrighted circuit boards in

coin-operated video machines available to the public for a fee

constituted public performance of the copyrighted work under

S 106(4)). The term "play" has not been extended to the play-

ing of games. To do so would mean interpreting the Copy-

right Act in a manner that would allow the owner of a

copyright in a game to control when and where purchasers of

games may play the games and this court will not place such

an undue restraint on consumers.



Whether privately in one's home or publicly in a park, it is

understood that games are meant to be "played." In this situa-

tion, the games are being played by students who come

together for the purpose of friendly, academic competition.

There is no indication that this nonprofit corporation,

AGLOA, and the individual respondents are making the sub-

ject games available to the public for a fee. The students,

schools, and school districts use their own games, purchased

from Allen, in the tournaments, and respondents are merely

organizers of this event. Moreover, AGLOA's tournaments

are limited to students who participated in regional competi-

tions which also involved the playing of Allen's games.



[3] Even if the playing of games could constitute a perfor-

mance, we would have to recognize the applicability of the

fair use doctrine under Section 107 of the Copyright Act. This

section allows the fair use of a copyrighted work in such



                                8389





instances as for nonprofit educational purposes and where the

effect of the use upon the potential market for or value of the

protected work is limited. As indicated above, AGLOA tour-

naments are held not for profit, but for encouraging education

among young students. The potential market for the subject

games has in all likelihood increased because participants of

the AGLOA tournament have had to purchase Allen's games.

Analysis of other factors involved in S 107 leads this court to

conclude that the application of the fair use doctrine in this

case is clearly appropriate.



B. Derivative Works & The Merger Doctrine



Section 106(2) of the Copyright Act reserves for copyright

holders the exclusive right to prepare derivative works. A

"derivative work" is defined in S 101 as "a work based upon

one or more preexisting works, such as a translation . . . or

any other form in which a work may be recast, transformed,

or adapted. A work consisting of . . . modifications which, as

a whole, represent an original work of authorship, is a `deriva-

tive work.'" The district court found and both parties agree

that the NAGP tournament rulebooks were not copyrighted.

However, because Allen's game manuals to the subject games

have been copyrighted, the issue concerning the AGLOA

tournament rulebooks is whether they are "derivative works"

of Allen's game manuals.



[4] Allen asserts that to constitute a derivative work, the

infringing work need only incorporate in some form a portion

of the copyrighted material. This court, however, has consis-

tently held that to prove infringement, one must demonstrate

substantial similarity between the works. Litchfield v. Spiel-

berg, 736 F.2d 1352, 1355 (9th Cir. 1984), cert. denied, 470

U.S. 1052 (1985). Although the district court found that some

of the rules discussed in the AGLOA rulebooks were also

found in Allen's game manuals, this court is not convinced

that it is even necessary to consider whether the AGLOA rule-



                                8390





books in fact constituted "derivative works" under the Copy-

right Act.



[5] A copyright only protects a particular expression of an

idea and not the idea itself Mazer v. Stein, 347 U.S. 201, 218

(1954). Thus, ideas contained in a copyrighted work may be

freely used so long as the copyrighted expression is not

wholly appropriated. This is often the case with factual works

where an idea contained in an expression cannot be communi-

cated in a wide variety of ways. Landsberg v. Scrabble Cross-

word Game Players, Inc., 736 F.2d 485, 488 (9th Cir. 1984),

cert. denied, 469 U.S. 103 7 (1984). Consequently, the

notions of idea and expression may merge from such "stock"

concepts that even verbatim reproduction of a factual work

may not constitute infringenent. Accord See v. Durang, 711

F.2d 141, 143 (9th Cir. 1983); Sid & Marty Krofft Television

Productions, Inc. v. McDonald's Corp., 562 F.2d 11 57, 1163

(9th Cir. 1977); Aliotti v. R. Dakin & Co., 831 F.2d 898, 901

(9th Cir. 1987).



[6] This doctrine of merger is particularly applicable with

respect to games "since they consist of abstract rules and play

ideas." Midway Mfg. Co. v. Bandai-America, Inc., 546

F.Supp. 125, 148 (D.N.J. 1982); see also Anti-Monopoly, Inc.

v. General Mills Fun Group, 611 F.2d 296, 300 n.1. (9th Cir.

1979). A similar logic has been applied to rules of a contest

where most subsequent expressions of an idea of a rule are

likely to appear similar to the words of a related rule. See

Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79

(1st Cir. 1967); Affiliated Hospital Products, Inc. v. Merdel

Game Mfg. Co., 513 F.2d 1183, 1188-89 (2nd Cir. 1975).

Here, Allen has not shown that it is possible to distinguish the

expression of the rules of his game manuals from the idea of

the rules themselves. Thus, the doctrine of merger applies and

although Allen may be entitled to copyright protection for the

physical form of his games, he is not afforded protection for

the premises or ideas underlying those games. To hold other-

wise would give Allen a monopoly on such commonplace



                                8391





ideas as a simple rule on how youngsters should play their

games.



For the foregoing reasons, the decision appealed from is

AFFIRMED.



                                8392

 the end