Capcom U.S.A. Inc. v. Data East Corp.
Capcom filed a motion for preliminary injunction to enjoin Data East from distributing the video game “Fighter's History,” which Capcom alleges infringes upon its copyrights for the “Street Fighter II” series of video games. Capcom introduced Street Fighter II in 1991, whereas Data East introduced Fighter’s History in 1993. Capcom alleges that Data East's Fighter's History copied the distinctive fighting styles, appearances, special moves and combination attacks of many of Street Fighter II's characters, as well as the control sequences used to execute their moves. Data East claimed that there was nothing original about Street Fighter II, which used stereotypical characters and common fighting maneuvers.
To prevail on its motion for a preliminary injunction, Capcom had to show either: (1) a likelihood of success on the merits and the possibility of irreparable injury, or (2) that serious questions going to the merits existed and the balance of hardships tipped sharply in its favor. Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1174 (9th Cir. 1989). A showing of a substantial likelihood of success on the merits of a copyright claim raises a presumption of irreparable harm. Johnson Controls, 886 F.2d at 1174. After establishing valid copyrights, Capcom needed to prove that they were in fact copied. Capcom had no direct evidence, but instead relied on the circumstantial weight of Data East's project proposal for Fighter's History which made repeated references to Street Fighter II in addition to the similarities in characters and moves between the two games. Because there was no direct evidence of copying, the Court applied the two part test of access and substantial similarity to assess Capcom's claim of copyright infringement.
First, Capcom easily proved access, as Street Fighter II had been widely disseminated before the development of Fighter’s History. Also, the proposal for Fighter’s History was a nine page document that contained twenty-two references to Street Fighter II. Data East put forth direct evidence of original work including cartoon characters, comic books, movie advertisements, etc., from which Data East claimed to have drawn its inspiration for its Fighter's History characters. The court did not find Data East’s evidence persuasive, as while other outside sources may have influenced the development of the Fighter's History characters, there was no doubt that Street Fighter II characters also provided a significant source of inspiration. Second, Capcom had to establish that Fighter's History was substantially similar to Street Fighter II and that the similarity resulted from protectable expression. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109 n. 3 (9th Cir.1970). The test to establish substantial similarity consists of extrinsic and intrinsic prongs.
To analyze extrinsic similarity a court must filter out those elements of the copyrighted work that are deemed unprotectable, and reserve only protectable expression for comparison under the subjective test. Apple Computer, Inc. v. Microsoft Corp., 821 F.Supp. 616, 623 (N.D.Cal.1993). Capcom had identified a number of alleged similarities between Street Fighter II and Fighter's History. These similarities could be divided into four primary categories: (1) similarities in characters; (2) similarities in special moves and combination attacks; (3) similarities in control sequences; and (4) miscellaneous similarities in the general presentation and flow of the games. Concerning (3), the control sequences could not be expressed in limitless ways. Rather, the expression of an idea and the underlying idea frequently merge in the area of control sequences because the player simply pressed the button corresponding to the move he wishes to have produced on the screen. On the practical level, the universe of possible joystick combinations was further restricted by the need to have the control sequence emulate the natural movements of the body. While the Court was disturbed by these "coincidences" in some of the arbitrary control sequences, it concluded that because the control sequences did not constitute protectable expression, these isolated similarities were not actionable. Concerning (4), Capcom sought to protect a variety of miscellaneous features in Street Fighter II including its "attract mode" and "VS." screens and its method of selecting characters, designating winners and tracking a fighter's vitality during a fight. These features, however, were commonplace and unprotectable under the doctrine of scenes-à-faire. Concerning (1) and (2), Capcom urged that Data East had copied the physical appearance of seven of Street Fighter II's eight playable characters and had reproduced twenty-seven of the characters' special moves for use in its game. The court found that three characters and five special moves in Fighter's History were similar to protectable characters and special moves in Street Fighter II.
The intrinsic prong was applied once all the unprotected similarities and those elements that were not similar as a matter of law had been filtered out through analytic dissection, the remaining protectable expression in the plaintiff's video was compared to corresponding expression in the defendant's video in a subjective analysis of similarity. The subjective determination involved in the intrinsic test employed a reasonable person standard and examined the works for similarity in "total concept and feel." Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir. 1990). Although the Court had concluded that three Fighter's History characters--Matlok, Feilin and Ray, were similar to Guile, Chun Li and Ken in Street Fighter II, the characters were not virtually identical and Data East certainly had not bodily appropriated them for use in its game.
Applying the Ninth Circuit standard for granting a preliminary injunction to the facts infra, the court determined that Capcom had failed to demonstrate a likelihood of success on the merits or even serious questions concerning the merits. The advantage Capcom gained in relying on these stock characters and standard moves was that they were immediately recognizable and familiar to the player. One of the risks consequent to that tactic, however, was that much of Street Fighter II was left unprotectable from competitors' simulations. Based on this analysis, the preliminary injunction was denied.
Thanks to Adam Trost for his assistance with the preparation of this case brief.
