In an elegant display of its interopability, developer Newbie has demonstrated the Xbox 360's ability to connect to portable media devices such as the PlayStation Portable (PSP) and iPod devices. Read more at Team Xbox.

Lewis Galoob Toys developed a device called the Game Genie, which allowed the player of a Nintendo Entertainment System game to alter up to three features of the game, such as a game character’s speed or strength, or the character’s number of lives. The Game Genie, which is inserted between a game cartridge and the Nintendo system, functions by replacing the value for a single data byte sent by the game cartridge to the Nintendo system. The Game Genie’s effects are temporary, having no affect on the data that is stored on the game cartridge.

Game Genies:

Nintendo brought suit against Galoob, alleging contributory infringement because the marketing, advertising, promoting, and selling the Game Genie contributed to the creation of infringing derivative works. The district court concluded that (1) “the audiovisual displays created by the Game Genie are not derivative works” and (2), even if the displays were derivative works, “the displays are a fair use.” Nintendo appealed.

II. Analysis

1. Derivative Works

The Ninth Circuit first looked at whether the audiovisual displays created by the Game Genie constituted derivative works. The court began by emphasizing that “a derivative work must incorporate a portion of a protect work in some concrete or permanent form.” The court determined that the derivative work does not have to be “fixed,” as required for copyright protection, but an independent work must be created.

The Ninth Circuit agreed with the district court that no independent work is created by the Game Genie. In making this determination the court made a distinction between products that “enhance” copyrighted works and products that “replace” copyrighted works. In this case, the Game Genie “enhances” the Nintendo game, but it does not “replace” the Nintendo game. The Game Genie, by itself, cannot produce an audiovisual display.

Additionally, the court distinguished this case between two prior cases. In Mirage Editions, Inc., v. Albuquerque A.R.T. Co., 856 F.3d 1341 (9th Cir. 1988), the Ninth Circuit held that ceramic tiles displaying art work taken from a commemorative book constituted derivative works. The ceramic tiles physically incorporated a protected work in a form that could be sold. In addition, the court distinguished Mirage by noting that “sales of the tiles supplanted purchasers’ demand for the underlying work.”

In Midway Manufacturing Co. v. Artic International, Inc., 704 F.2d 1009 (7th Cir. 1983), Artic sold computer chips that could be inserted into a Midway’s arcade game to speed up the rate of play. The Seventh Circuit held that the speeded-up version of Midway’s game constituted a derivative work. The Artic chip “substantially copied and replaced” the original Midway chip. The court also distinguished Midway by noting that the purchasers of the Artic chip benefited financially by selling an altered game to the public.

Therefore, because the Game Genie “does not contain or produce a Nintendo game’s output in some concrete or permanent form, nor . . . supplant demand for Nintendo game cartridges, the court held that the audiovisual displays created by the Game Genie do not constitute a derivative work.

2. Fair Use

The district court held that even if the audiovisual displays created by the Game Genie did constitute a derivative work, Galoob was not liable because the displays are fair use. The Ninth Circuit first made clear that “a party cannot authorize another party to infringe a copyright unless the authorized conduct would itself be unlawful.” Thus, if the use of the Game Genie is a fair use, Galoob cannot be liable for infringement.

The court recognized that the users of the Game Genie are engaged in a non-profit activity, and thus their use is presumptively fair. Nintendo was unable to overcome this presumption. First, relying on Sony Corp. of Am. v. Universal Studios, Inc., 464 U.S. 417 (1984), the court recognized that “a party who distributes a copyrighted work cannot dictate how that work is to be enjoyed.” Thus, once users have paid for the Nintendo game, the Game Genie may be used to make the experience of Nintendo game play more enjoyable.

Focusing on the fourth fair use factor in 17 U.S.C. § 107(4), the court also concluded that Nintendo failed to show harm to the existing and future markets for its copyrighted games. Because the Game Genie is used for a noncommercial purpose, the future harm may not be presumed. The court relied on testimony of Galoob’s expert witness that there would be very little market interest for “junior or expert versions of existing Nintendo games” because the original version “already has been designed to appeal to the largest number of consumers,” and the consumer would feel “cheated or robbed” buying a new game that does not include new material. Additionally, Nintendo admitted to having no plans to market such games.

Therefore, the court held that a consumer’s use of the Game Genie in conjunction with a Nintendo game was a fair use.

US District Court hands eight-month sentence to Pandora's Cube employee for "Super Xboxes." 31-year-old Hitesh Patel was an employee of Pandora's Cube, a game retailer in the Washington, DC area.

Read article here.

On July 25, 2005, the Court of Appeals for the 8th Circuit affirmed the Western District of Missouri's dismissal of Frosty Treat's complaint against Sony Computer Entertainment America, Inc. Frosty Treats asserted claims under state and federal law for trademark infringement and dilution, and for unfair competition, based on Son'y depiction of an ice cream truck and clown character in Sony's Twisted Metal video game series. A complete case summary will be forthcoming, but for now the opinion can be obtained here.

Galaxian:



Thanks to Adam Trost for his assistance in the preparation of this case summary.

The 'hot coffee' mod for Grand Theft Auto resulted in the game's rating being changed from Mature to Adults Only. Many games not only don't mind modding, but the game's developer actually encourages it. There any many legal implications to modding, and who owns the resultant IP. See, for example, Microstar v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998).

But that's not the point of this post. I just wanted to point out a Yahoo! article with some interesting musings about modding.

Thanks to Brandon Rash for this assistance with the preparation of this Case Summary.

Microsoft Corp. said on Thursday it won exclusive rights to develop and publish multiplayer online games starring Marvel Enterprises Inc.'s super heroes, including Spider-man, the X-men and the Hulk. The deal covers massively multiplayer online (MMO) game titles developed for Microsoft's upcoming Xbox 360 gaming console and published by the software giant's game studio.

Read more here.

Tanks, soldiers, countless helicopters, and even Godzilla were no match for King Kong, so how did Nintendo manage to stop the giant gorilla?

King Kong:


The arcade game “Donkey Kong” was a quick success for Nintendo. The star of the game is the formidable yet humorous gorilla, who climbs buildings, hurls barrels and fireballs, all the while dragging along a blond damsel whom Mario must attempt to rescue. Gamers may have loved Donkey Kong, but Universal saw far too much resemblance to the 1933 classic film “King Kong,” for which Universal owned trademarks for the name, character, and story. Universal brought suit against Nintendo for trademark infringement under the Lanham Act, and for dilution of a trademark under New York’s anti-dilution act. When Nintendo’s summary judgment motion was granted in Southern District of New York, Universal appealed to the 2nd Circuit Court of Appeals.

Donkey Kong:


The Court of Appeals affirmed the decision of the district court. Even if Universal validly owned the trademark to King Kong, and the mark had acquired the “secondary meaning” required to be the basis of a successful action (issues not yet resolved at trial), the court nonetheless held that Nintendo’s Donkey Kong did not infringe upon the trademark. While there were undoubtedly resemblances between the two, there was no evidence to show that consumers would confuse Donkey Kong and King Kong. Universal introduced as evidence videogame reviews which shows that Donkey Kong’s theme “loosely evoked the film.” However, the Court held that the decisive question in trademark infringement is, “whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question.” Mushroom Markers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2nd Cir. 1978). Thus, even if purchasers are reminded of classic film, the trademark action would not succeed unless they actually thought they were buying a videogame sold by Universal.

Universal sought to show that the names were substantially confusing by conducting a telephone survey of 150 arcade and bowling alley owners who had purchased or leased a Donkey Kong game. 18% of the respondents answered “Yes” when asked, “To the best of your knowledge, was the Donkey Kong game made with the approval or under the authority of the people who produce the King Kong movies?” Universal argued that this survey proved confusion, yet the Court disagreed, reasoning that the question did not prove confusion with the item trademarked. Universal owned the name, character, and story of King Kong, but did not claim ownership rights to the film itself, thus the question was unfair because it did not connect Donkey Kong to the name King Kong. Further, the Court found the question to be unfairly leading, and that Universal’s survey was defective because it surveyed previous buyers instead of potential buyers.

Universal introduced further evidence, a letter from Nintendo stating that there was no connection between Donkey Kong and King Kong, to show that Nintendo implicitly admitted consumer confusion by writing the letter. The Court rejected this argument. Since the letter was written after the commencement of the lawsuit, it was clearly only meant to cut short Nintendo’s legal troubles. Besides, these statements would not be a substitute for actual evidence showing that there was no confusion about Donkey Kong’s source.

The Court also commented that Nintendo’s Donkey Kong paraphernalia, marketed separately from the videogame, had the potential to cause genuine confusion with King Kong. However, this argument was not raised by Universal, and the Court noted that it probably would not have been successful in this case. The videogame itself was the dominant marketing vehicle for any Donkey Kong toys, and these items had the same “total concept and feel” as the videogame. Therefore, the paraphernalia were just as unlikely to be confused as was the Donkey Kong game.

Finally, the Court addressed Universal’s request for an injunction under New York anti-dilution law. The Court used the same rationale to deny the injunction against Donkey Kong. Universal had failed to offer evidence that Donkey Kong had an “adverse effect on King Kong’s reputation” or would “deprive the mark of its distinctiveness.” Therefore, an injunction would be inappropriate, and the summary judgment in favor of Nintendo was affirmed.

Thanks to Brian Brisnehan for his assistance with the preparation of this case summary.

A complaint was filed against 35 respondents with the U.S. International Trade Commission by Midway Mfg. Co. alleging common law trademark infringement and copyright infringement with respect to the games Rally-X and Pac Man.

The subject of the copyright claim was the audiovisual work of the two games. It included the screen display of mazes and characters along with their sounds, but did not include the circuit board that stored the audiovisual work or the pattern of game-play. To prove copyright infringement, Midway had to prove ownership and copying by the respondents. Within the ownership prong, among other factors, the audiovisual work must be subject matter that is copyrightable. Artic, one of the respondents, argued that the audiovisual work was not proper subject matter because it was not fixed, meaning that a user could not know or predetermine the sequence of images and sounds since they were dependent upon interaction with the user. The commission rejected this argument stating that the audiovisual worked was fixed in the fact that it was stored in memory and the repetitive appearance of characters and sounds was sufficient regardless of whether the exact audiovisual sequence was displayed each game. Artic further tried to rebut Midway’s copyright by alleging lack of notice. Midway was able to produce printed circuit boards that had the required copyright information. Artic testified seeing the games earlier outside the U.S. without such information, but the commission held the physical evidence as more persuasive and stated that Artic may have seen a counterfeit version. Concerning the copyright’s deposit, the commission made it clear that a videotape was sufficient for audiovisual work even though the typical requirement was a complete copy. Once ownership was established, copying subsequently was easily found as the two games were nearly identical to the respondents’ games.

Artic opposed the common law trademark infringement claims on three grounds. First, they said that Midway had not established its mark in all fifty states, but the commission cited the nationwide advertising to reject this defense. Second, Artic claimed that “Pac Man” and “Rally-X” were titles and thus, could not be proper trademarks. The commission rejected this because they were not merely descriptive of the content of the games, but were names by which the games were traded and sold. Lastly, Artic argued that the names described functional aspects of the game, but the commission concluded that the terms had not gained generic status and remained arbitrary and distinctive.

In determining remedies, the commission found that there was a domestic market for Pac Man that had been efficiently operated and that the infringing games did substantial harm to the market. Conversely, they found that there was no longer a domestic market for Rally-X, as it had permanently declined in popularity in sales and the infringing goods did not substantially affect the market. Thus, concerning Rally-X, the commission did not reach the injury phase due to the lack of a domestic industry. However, concerning Pac Man, the commission issued a general exclusion, agreeing with Midway that cease and desist orders would be insufficient as many new infringers would otherwise likely import games into the U.S. market.

Thanks to Adam Trost for his assistance in the preparation of this case summary.