Plaintiff Paul A. Roginski (Roginski) filed a copyright infringement action against defendants Time Warner Interactive, Inc., Atari Games Corp. and Sega of America, Inc., alleging that defendants copied Roginski's unpublished manuscript entitled "Awesome Possum" when the defendants created a video game and accompanying comic book--"Awesome Possum Kicks Dr. Machino's Butt." On March 31, 1993, Roginski filed a copyright application with a copy of the manuscript with the Copyright Office. On July 17, 1992, one of the defendant’s employees presented his "Rad Rhino and Awesome Possum" game proposal to the management of Tengen and obtained approval for the development of the game. Tengen was the corporate predecessor of defendant Time Warner Interactive. These events are significant because they occurred before Roginski began writing his manuscript. Therefore, these facts demonstrate that the concept of the "awesome possum" in a video game setting with an environmental theme was independently created by Tengen's design team.

The defendants filed a motion for summary judgment, claiming that their products were independently created and that there was no evidence that the defendants had access to Roginski's manuscript. In a copyright infringement case, a plaintiff must show (1) that he owned a valid copyright; and (2) that the defendant copied protectable expression from the plaintiff's work. More precisely, as Roginski observed, "the principal issue on summary judgment is whether Plaintiff has produced sufficient evidence so that a reasonable juror, drawing all justifiable inferences in favor of Plaintiff and presuming Plaintiff's version of any disputed fact to be correct, could conclude that Defendants copied Plaintiff's work."

Given defendants' strong evidence that it was in the process of creating the "awesome possum" video game prior to Roginski's work, he could not maintain a claim for infringement based upon the video game. Roginski argued, however, that defendants copied his manuscript in their comic book, which was included in the "Awesome Possum Kicks Dr. Machino's Butt" instruction manual. Therefore, the narrow issue left to resolve was whether there was sufficient evidence to support a claim that defendants copied Roginski's story in the production of their comic book. One manner in which copyright infringement could be established was by demonstrating inferentially that: (1) the defendant had access to the material; and (2) the defendant's work was substantially similar to the plaintiffs work.

There was no evidence of direct access in this case. Roginski argued that the defendants could have received copies of the manuscript from the Copyright Office or the Library of Congress. In terms of access, the plaintiff must have demonstrated that such access was reasonably possible. A finding of access, however, could not be the product of speculation or conjecture. Since there was absolutely no evidence that the defendants had access to Roginski's manuscript, in order to prove copyright infringement, Roginski had to demonstrate that there were "striking similarities" between his product and the defendant's product. Regardless of whether additional evidence of access should be required, a comparison of Roginski's and defendants' works did not disclose the type of similarities that would permit a reasonable juror to infer that defendants copied Roginski's product.

Roginski's possum did not really resemble an average cartoon superhero, as he never used any "superpowers" to protect the forest. On the other hand, the defendants' possum was initially portrayed in a superhero garb and pose on the first page of the comic. The fact that defendants' possum had a family was not striking as compared to Roginski’s, especially where the family structure between the two works was different--defendants' possum was a sibling, while Roginski's possum was a father and husband. It was undisputed that the term "awesome possum" was created independent of Roginski's manuscript. It could not be considered striking that another animal used the term awesome to describe a possum who was a superhero. Also, the oath in the comic book directly related to defendants' video game, and therefore, was not strikingly similar to the oath of the manuscript.

Not only was Roginski's manuscript not strikingly similar to the defendants' work, there were overwhelming differences between the two stories. The possums had different missions and personalities. The general mood and pace of the two works was different. The settings of the two stories were also dissimilar. Finally, the characters were not even remotely similar. Roginski had demonstrated a few coincidental similarities, but he had not, however, presented evidence which would preclude a reasonable juror from determining that the defendants could not have independently created their comic book. Therefore, defendants' motion for summary judgment was granted.

Nintendo of America, Inc. v. Brown
94 F.3d 652 (9th Cir. 1996)

This was largely an open and shut case, which only lasted as long as it did due to the defendant’s fruitless attempts to extend the litigation. Defendant / Appellant, Kenneth Brown, was enjoined in federal district court from selling Nintendo video games nearly identical to those sold by Nintendo. Nintendo owned the copyright and trademark rights on all its games, and the video game giant took notice when Brown began selling nearly identical game cartridges. Brown and a group of associates were selling knock-off Nintendo games, differing from Nintendo’s games only in that the knock-offs lacked the Nintendo copyright symbol. Even the Court found that “as a matter of law” the games were “strikingly similar.”

The Court of Appeals for the 9th Circuit affirmed the district court’s summary judgment ruling in favor of Nintendo for copyright and trademark infringement under federal law and unfair competition under Arizona law. It was undisputed in the case that the game cartridges sold by Brown were “strikingly similar” to Nintendo’s games, and such similarity creates an inference of copyright infringement under 15 U.S.C. § 101 that Brown did not offer evidence to refute. Further, since these games were “virtually identical,” there would undoubtedly be customer confusion as to the origin of the games. That is, purchasers were likely to believe that the Defendant was selling Nintendo-made game cartridges. This “customer confusion” test is the standard for trademark infringement under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a), and unfair competition under Arizona law. Accordingly, the summary judgment in favor of Nintendo on all issues was appropriate.

The court decided two more issues in favor of Nintendo based on procedural errors made by the Defendant. Brown had also appealed the summary judgment ruling of trademark counterfeiting under 15 U.S.C. § 1117(b). However, the court noted that the defendant had received and failed to respond to an interrogatory from Nintendo requesting that Brown admit to knowingly and intentionally selling game cartridges using Nintendo’s counterfeits marks. Brown’s failure to respond was properly deemed an admission, and accordingly, the summary judgment ruling as to trademark counterfeiting was affirmed. Finally, the court noted that Brown’s request for a jury trial had come more than 10 days after the service of the last pleading. Thus, under Federal Rule of Civil Procedure 38(b), this request was invalid and Brown’s request was properly denied.

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

NTN, the Defendant and Counterclaimant, is popularly known as the creator of “QB1,” an interactive game played in conjunction with televised football games. QB1 allows players to earn points by predicting the next play of the game – allowing superfans from across the bar or across the country to compete to see who would make the best coach. Interactive Networks (“IN”) was an early licensee of NTN’s, selling a modified version of QB1 to its subscribers. However, in 1993, IN announced that it had developed its own interactive football home game, “IN the Huddle,” designed to compete with QB1. The similarities between “IN the Huddle” and QB1 disturbed NTN, and litigation ensued. IN filed for a declaratory judgment, seeking assurances that IN the Huddle did not infringe NTN’s intellectual property rights. NTN responded with counterclaims for copyright infringement, trade dress infringement, and unfair competition, prompting IN to move for summary judgment on those claims.

Copyright Infringement
Before applying the “substantial similarity” test to the alleged infringing game, “IN the Huddle,” the court first examined each feature of QB1, focusing on the idea of “protectable expression.” Animation and displayed images in video games are protectable expression. However, copyright protection does not extend to the idea of the video game, only to the author’s expression of that idea. Further, if an element of a video game is essential to the idea of the game, then that element is not protectable expression. As the court notes, granting copyright protection on an essential element would be the same as granting a monopoly on the entire idea. Also, when an element is deemed essential to the idea, the court will not find substantial similarity without virtually identical copying. Thus, although IN the Huddle’s play-prediction scheme was identical to the scheme used by QB1, the court granted summary judgment in favor of IN on this feature. The court reasoned that the idea of play-prediction (e.g. deep-pass, run-left, punt, etc.) is an essential aspect of interactive TV football games, therefore NTN’s prediction scheme was not protectable expression.

However, with respect to other elements of QB1, such as the “clutch pick” and “consecutive bonus” game features, the court denied IN’s summary judgment motion. The court reasoned that these game features were not essential to an interactive football game, and were therefore NTN’s protectable expression. Similarly, the court decided that QB1’s scoring system -- awarding specific point values for predicting certain plays -- was not essential to an interactive football game. While some scoring system certainly is essential, QB1’s specific scoring system may have equally functional alternatives. The court found no evidentiary support for IN’s argument that these specific point values are necessitated by the statistical likelihood of those plays occurring in an NFL game. Thus, the court held that QB1’s specific scoring system is not essential – but just one possible scoring system implementation – and is protectable expression.

The court then addressed QB1’s data feed structure and the various animation screen displays of QB1. While these elements of the game are protectable expression, summary judgment of noninfringement was nevertheless awarded to IN. With respect to the data feed structure, NTN had only offered evidence that IN’s version of QB1 had a similar data feed to NTN’s version. NTN had produced no expert evidence that IN the Huddle, the alleged infringing game, used a similar data feed structure. Finally, with respect to the screen displays and animation sequences, IN had not infringed NTN’s copyright as a matter of law because IN, not NTN, was the author of these animation screens for IN the Huddle.

Trade Dress Infringement
The court next considered whether the trade dress, or total product image, of QB1 was infringed by IN the Huddle. As with the copyright infringement analysis, trade dress protection under the Lanham Act does not apply to the functional elements of a product, otherwise trade dress protection could provide a perpetual monopoly over unpatentable features.

However, determining what trade dress is functional is not always obvious. It is a question of fact which requires consideration of the utilitarian advantages of the particular design, and of the possible similarly functioning alternatives. With respect to NTN’s three-level prediction scheme, and it’s scoring and bonus system, the court held that these features are not, as a matter of law, protectable as trade dress. The prediction-scheme, scoring, and bonus features are wholly functional. The Court reasoned that the absence of any commonly practiced alternative (i.e., no other game in this genre had ever not used such features) indicated that the features were so closely related to the purpose of an interactive football game, that they must be considered functional, and were therefore unprotectable.

The court next addressed the alleged infringement of the Interactive-created instruction manual for game. Given the parties’ previous licensing arrangement for QB1, a difficult question arose: can a licensor acquire trade dress rights in those features of a licensed product that are added by the licensee? The court answered in the negative for this case; NTN did not acquire trade dress rights to the IN-created features of QB1. Although consumers may associate IN’s instruction manual with NTN’s game, the QB1 licensing agreement implied that IN would add its own intellectual property to the game it provided its subscribers. While NTN had the right to require IN to protect its trademark and the appearance of the game, it could not claim the trade dress rights on the IN-created features built into the game.

Thus, regardless of the likelihood of customer confusion, the court granted IN’s summary judgment motion for noninfringement with respect to NTN’s trade dress. The court found no features of QB1’s trade dress that were created by NTN and were not essential to the game and functional in nature.

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

Atari Corp. v. Sega of America Inc.
869 F. Supp. 783 (N.D. Cal. 1994)