Jun
27
2005
I would be remiss for not mentioning it.
Stern Electronics, Inc. v. Kaufman
669 F.2d 852 (2nd Cir. 1982).
669 F.2d 852 (2nd Cir. 1982).
I. Background
In late 1980, Konami Industry Co., Ltd. developed a video game titled “Scramble,” to which, in early 1981, Stern Electronics, Inc., a video game equipment manufacturer, obtained the exclusive right to distribute in North and South America. Stern quickly met with success after the start of sales on March 17, 1981, selling approximately 10,000 units and generating about $20 million in revenue within two months. In April 1981, the United States Copyright Office granted a copyright to Konami for the audiovisual work “Scramble,” based on video tape recordings of the game submitted by Konami.
Scramble:
Also in late 1980, Omni Video Games, Inc. developed and began marketing a video game product, which allowed for playing different games on the same unit. The program for each game could be transferred to a programmable read only memory (PROM), such that playing a particular game on a unit merely required substituting in the PROM containing that game’s program. Prior to March 17, 1981, Omni ordered ten silk screen nameplates, and sold five video game units, bearing the name “Scramble.” In April 1981, Omni began selling a video game unit bearing the name “Scramble,” in which the game was virtually identical to Stern’s Scramble game, i.e., Omni’s game was a “knock-off.”
Stern brought suit against Omni, and the trial court granted a preliminary injunction enjoining Omni from infringing the Stern’s copyright in “Scramble” and from using the trademark “SCRAMBLE” in connection with video games. Omni appealed, arguing that the sights and sounds of a video game should not be afforded copyright protection because the work is neither “fixed in any tangible medium of expression” nor “original” within the meaning of 17 U.S.C. § 102(a) because the sequence of images and sounds vary depending on the actions taken by the player during each time the game is played.
II. Issue
The primary issue before the United States Court of Appeals for the Second Circuit was whether copyright protection extended to the visual images electronically displayed by a video game. The Second Circuit also considered whether Omni was entitled to use the trademark “SCRAMBLE.”
III. Analysis
1. The Copyright Issue
The Second Circuit noted that, without player participation, the display of the video game would undoubtedly be eligible for copyright protection because the display would clearly be an original “audiovisual work” and the memory devices would constitute a “copy” in which the work is “fixed.” The court concluded that “the player’s participation does not withdraw the audiovisual work from copyright eligibility.” Even though the player affects the sights and sounds of the video game, many of the sights and sounds stay the same, such as, in the case of “Scramble,” the appearance of the spaceships, enemy crafts, ground missile bases and fuel depots and the sounds of destroying enemy crafts and dropping bombs. Therefore, the court held that “[t]he repetitive sequence of a substantial portion of the sights and sounds of the game qualifies for copyright protection as an audiovisual work.”
2. The Trademark Issue
Regarding the trademark issue, the Second Circuit upheld the district court’s finding that Omni’s prior use was not bona fide, but instead a “bad faith attempt to reserve a mark.” The Second Circuit reasoned that it was too remarkable of a coincidence that Omni independently thought of the name “Scramble” only to develop a few months later a game virtually identical to Stern’s “Scramble.” The court thought it more likely that Omni appropriated the trademark with the expectation of imitating the audiovisual display. The court also determined the equities justified an injunction because Stern had made a substantial investment and achieved commercial success using the “Scramble” mark, whereas Omni had only placed the “Scramble” mark on five units that were not “Scramble” game “knock-offs.”
The Second Circuit therefore affirmed the district court’s preliminary injunction enjoining Omni from infringing Stern’s copyright and using the trademark “SCRAMBLE.”
Thanks to Brandon Rash for his assistance in the preparation of this case summary.
Jun
24
2005
Want to play massively multiplayer online games, but don’t want to spend time building up your character’s stats? A new service, GamePal.com, gives anyone the ability to bypass the countless hours it can take to advance deep into online games like World of Warcraft by renting the use of such characters by the month.
Read more here.
Jun
23
2005
From today’s Washington Post Express:
“GAMERS: In an apparent first, the Kansas City T-Bones and Schaumburg Flyers will let the results of two people’s X-Box [sic] baseball game count for the first two innings of a July 18 game. Then the minor league teams will take the firld in the third.”
Jun
23
2005
A friend of ours forwarded us this link to “A Gamer’s Manifesto.” It’s an interesting read, and I agree with some of it’s “20 things gamers want from the seventh generation of game consoles.” Item 15 includes commentary on “Short-Sighted Business Bull$%!&” and refers to patenting video games.
(Warning: foul-language is used generously throughout the article like an episode of Penn & Teller’s Showtime show. The authors might be taken more seriously if they approached the issue with a little more decorum, as many of their points are valid… although not number 15.)
CNN is running a story with some interesting speculation regarding the future of gamemaker Atari.
Jun
20
2005
Midway Manufacturing Co. v. Omni Video Games, Inc.
668 F.2d 70 (1st Cir. 1981)
668 F.2d 70 (1st Cir. 1981)
Midway, the creator of the games Pac-Man, Rally-X, and Galaxian, sued Omni for copyright infringement of these games. During the course of this suit, Midway filed a motion for an ex parte hearing seeking to impound any infringing items in Omni’s possession. A single machine, holding an allegedly infringing version of Pac-Man, was seized from Omni and impounded. However, several days later, the District Court vacated this impound order and not only returned the potentially infringing machine to Omni, but also suppressed this machine from evidence admissible at trial and ordered Midway to pay the attorney’s fees incurred by Omni as they sought return of this machine.
Illustrative authentic Pac-Man units (not the allegedly infringing version):
Midway immediately appealed to the 1st Circuit Court of Appeals, requesting reversal of the decision disallowing impoundment of the machine, suppressing it as evidence, and the award of attorney’s fees. However, Midway’s brief and oral arguments failed to address the main legal issue of this case, appellate court jurisdicion under the “collateral order” doctrine.
Under the “collateral order” doctrine, an interlocutory appeal, or an appeal to a higher court before the lower court has issued a final judgment, is rarely allowable. Such an appeal is proper only when (1) the order being appealed is a final order on an issue of law, rather than judicial discretion, (2) the issue is separable from the other issues to be presented at trial, and (3) that the appeal cannot wait until after the final judgment of the court, because irreparable harm would be probable.
Thus, the question in this case was not whether Midway’s arguments had merit, but whether Midway could appeal while its trial was still in progress. The Court of Appeals held that Midway could not appeal the orders of the District Court until after final judgment of the case.
The Court reasoned that the interlocutory appeal was improper because no irreparable damage would be done if Midway was forced to wait until after trial to appeal. At this time, Midway appeared likely to find more evidence of copyright infringement during discovery, therefore the appeal might ultimately be unnecessary. Further, even if Midway were to lose at final judgment, and Omni’s allegedly infringing machine had since disappeared, Midway could still rely on the accounts of the individuals involved in the seizure. These individual accounts, in lieu of the machine itself, would be credible evidence because they were from the neutral agents of the court who had performed the seizure. These agents had also been accompanied by a Midway engineer who could verify the technical details of the machine.
The Court further noted that under 17 U.S.C. s 503(a), the statute authorizing impoundment, a judge “may” order impoundment if he deems it reasonable. The Court interpreted this statute to establish discretionary power on the trial judge to order an impoundment, which would make an interlocutory appeal improper on this issue. Similarly, the Court reasoned that the order to suppress the machine from admissibility at trial, and the award of attorney’s fees to Omni were discretionary and reparable decisions of the District Court. Therefore, the Court denied Midway’s interlocutory appeal, and allowed the trial to resume in District Court.
Thanks to Brian Brisnehan for his assistance in the preparation of this case summary.
The 8th Circuit Court of Appeals in St. Louis will hear arguments at 9 a.m. today in this case that may decide how the Digital Millennium Copyright Act, or DMCA, applies to computer software and the important practice of reverse engineering. As you may recall, the charges center on “bnetd,” free software developed to allow individuals to run servers for hosting online versions of popular Blizzard games such as “Diablo II” and “StarCraft.” Blizzard runs its own online service, Battle.net, for those games, but many people have claimed the service is erratic, buggy, and riddled with players who cheat.
Jun
12
2005
Ok, so I’ve started a new category, dubbed “Ponderous,” to indicate posts that are neither a Case summary, case Update, or News. Ponderous posts represent interesting legal topics of discussion that we find interesting.
This initial post is an extension of the News item regarding the Chinese gamer who got the suspended death sentence for killing a fellow gamer over a virtual sword in Legend of Mir III, and the announcement by Microsoft that Xbox Live, upon launch of the Xbox 360, will have a marketplace feature. Microsoft has indicated that you will be able to purchase game content via the marketplace, but thus far has remained silent as to whether one gamer can sell directly to another.
In any event, I created this skin for my Audi TT in Forza Motorsport:
Is it obvious I’m a Georgia Tech grad? Think it would fetch anything? I hear there’s a market on eBay, but it doesn’t appear to be thriving for Forza yet.
Jun
11
2005
Thanks to Erin Mehlos, of Gamasutra.com, who drew the single frame comic at right. The
comic is (c) 2005 Gamasutra.com
Gamasutra has posted the responses to their Question of the Week, which they posed in conjunction with our article “It’s Just A Game Right? Top Mythconceptions On Patent Protection Of Video Games.” The responses ranged from the mildy supportive to the outright negative. Steve and I also sent a letter to the Editor of Gamasutra. Our kudos, however, go to Erin Mehlos, who drew the following cartoon to run with the Question of the Week Responses:
A chinese gamer who killed a fellow gamer, in real life, over a virtual item from the game has been sentenced to life in prison, with the possibilty of parole in 15 years. The sentence is actually a suspended death sentence under Chinese law.
The story goes like this: Mr. Qui lent Mr. Zhu a Dragon Sabre won in the game Legend of Mir 3. Mr. Zhu subsequently sold the sword for 7,200 Chinese Yan. Mr. Qui subsequently broke into Mr. Zhu’s house and stabbed Mr. Zhu to death.
Admittedly this is a regrettable incident, but it does raise the issue of whether in game property is personal property, or merely data bits stored on someone else’s computer.
Read more here.
As you may recall, the Department of Justice coordinated a raid in early December, 2004, on three Pandora’s Cube stores in the Washington, DC, suburbs where the stores were selling — in plain view — Xbox videogame consoles that had been modified to use pirated software. Well the employees that were arrested as a result of the raid have apparently pled guilty in the ordeal, as reported on the Gamasutra web site:
“A group of retailers in Maryland have pleaded guilty to selling modified Xboxes, called “Super Xboxes” by the group, thereby violating the Digital Millennium Copyright Act. The four retailers were owners and employees of Pandora’s Cube, a shop with two locations in Maryland and one in Virginia.”
Jun
07
2005
Ahn et al. v. Midway Mfg Co. et al.
965 F.Supp 1134 (N.D. Ill 1997)
(Order on Motion for Summary Judgment)
965 F.Supp 1134 (N.D. Ill 1997)
(Order on Motion for Summary Judgment)
I always look forward to reading a video game case that starts with “Plaintiff Philip Ahn is a fourth degree black belt in Tae Kwon Do and has practiced martial arts for approximately twenty years. Plaintiff Elizabeth Malecki holds a degree in ballet and modern dance and is a professional dancer, actress, and aerobics instructor. Plaintiff Katalin Zamiar is a first degree black belt in Karate and has twelve years of experience.” (emphasis added) This is also an interesting case in that it is one of the few that deals with preemption of state law by the federal Copyright Act of 1976 (here, state law rights of publicity get preempted).
The games at issue are Mortal Kombat (MK) and Mortal Kombat II (MKII), and the defendants are Midway (copyright owner in MK and MKII), Williams Electronics (makes the coin-operated versions of MK and MKII), Acclaim Entertainment (developed version of MK and MKII for Nintendo and Sega game consoles), Nintendo of America (game console mfr and game publisher), and Sega of America (then a game console mfr and game publisher), each of which is well known in the industry.
Mortal Kombat:
Each plaintiff alleges that, on separate occasions between 1992 and 1993, they were approached by Midway’s agents about the possibility of using their images, names and performances for various characters in the coin-operated arcade format of MK and MKII. Plaintiff Malecki modeled the character Sonja Blade for MK (see above screenshot). Plaintiff Ahn modeled the character Shang Tsung in the coin-operated version of MKII, while plaintiff Zamiar modeled for three characters, Kitana, Mileena, and Jade, all of whom appeared in MKII. Midway videotaped each plaintiff’s movements, digitized the images, and incorporated the digitization into the coin-operated arcade games. The games were successful, and Sega and Nintendo soon released game console versions of MK and MKII.
Mortal Kombat (Elizabeth Malecki as Sonya Blade):
Mortal Kombat II (Katalin Zamiar as Kitana):
As is generally the case, each plaintiff signed a release form with Midway at the time of the videotaping. This agreement authorized Midway to film each plaintiff in a martial arts performance in order to use that plaintiff’s name or likeness in connection with the manufacture, design, advertising, promotion, sale, and use of the coin-operated video games. The agreement also made Midway the sole and exclusive owner of all of plaintiffs’ copyrightable expression, defining any such expression as “works for hire,” and permitted Midway, at its sole discretion, to use plaintiffs’ likeness in any copyright obtained in connection with the coin-operated arcade games.
At this juncture in the case, the remaining issues are common law right of publicity, copyright infringement, and common law quantum meruit. The court initially dealt with the common law right of publicity, finding that the right of publicity claim was preempted by federal copyright law. A state law is preempted when 1) the work in which the right is asserted is fixed in a tangible form and falls within the subject matter of copyright under § 102 of the Copyright Act, and 2) the right asserted is equivalent to any of the rights specified in § 106 of the Copyright Act. In this case, plaintiffs’ images were videotaped and, as a result, became fixed in a tangible form (because plaintiffs’ consented to the videotaping, the definition of ‘fixed’ is satisfied). Further, the choreographic works were all original works of authorship, and choreographic works fall within the subject matter of copyright. Finally, applying the § 106 test, the right of publicity is equivalent to one of the rights in § 106 because it is infringed by the act of distributing, performing or preparing derivative works. The right of publicity claim was therefore preempted.
The crux of the plaintiffs’ argument with respect to copyright infringement was that each plaintiff was a joint author of both MK and MKII, and defendants therefore owed an accounting to each plaintiff. Under 17 U.S.C. § 104, a joint work is defined as “a work prepared by two or more authors with the intention that their contribution be merged into inseparable or interdependent parts of the unitary whole.” However, There was never any intent for the plaintiffs to be joint authors, as evidenced by the “work make for hire” clause in the contract, and Midway at all times had control and final authority over what was used in MK and MKII. In addition, the court applied the copyrightable subject matter test, where in addition to the presence of intent, a collaborative contribution will not produce a joint work, and a contribution will not obtain a co-ownership interest, unless the contribution represents original expression that could stand on its own as the subject matter of copyright.
In analyzing the plaintiffs contributions, the court stated that “it is apparent to the court, in viewing videotapes of the actual games, that the superhuman gyrations and leaps high into the air of the characters, including plaintiffs’ characters, are fanciful products of the imaginations of the creators of the source codes.” Thus, while the plaintiffs contributed their images and movements to the creation of the games, it was Midway alone that translated the ideas into a fixed, tangible expression entitled to copyright protection. The court thus denied the claim of copyright infringement.
Lastly, the court swept aside the remaining quantum meruit claim, noting that in Illinois a claim for quantum meruit cannot succeed where there is a valid, enforceable agreement between the parties, which there was in this case.
Jun
01
2005
Gamasutra.com is presently running an article which Steve Chang and I wrote as their feature article:
***
Today’s feature, subtitled ‘Top Mythconceptions on Patent Protection of Video Games’ and from IP lawyers Ross Dannenberg and Steve Chang, addresses the sometimes controversial area of software patents from a lawyer’s perspective:
“Our informal review of the records at the U.S. Patent and Trademark Office (PTO) revealed a relative dearth of patent applications for the video game industry, especially considering how technology-dependent the video game industry is, and given its size in terms of annual sales. Why is that? Patents, by their very nature, grant the right to exclude your competitors from stealing the fruits of your labor, and yet this powerful tool appears to be overlooked by the majority of the industry. In an effort to answer this question, we set out below to dispel what we see as the top myths surrounding patent protection of video games, and hope to encourage innovative game developers to take steps to protect their valuable innovations.”
***
Read the entire article on Gamasutra.com:
R. Dannenberg & S. Chang, It’s Just a Game, Right? Top Mythconceptions on Patent Protection of Video Games, Gamasutra.com, May 31, 2005
May
31
2005
Japanese publisher and developer Tecmo has settled its lawsuit against fan website Ninjahacker.net, after more than four months of legal action. The lawsuit began after Tecmo accused the site’s operators of creating or distributing patches for the games Dead or Alive 3 and Dead or Alive Xtreme Beach Volleyball that allowed the already scantily clad characters to be played in the nude. Among other claims, Tecmo alleged copyright infringement, to which Ninjahacker.net replied that their modification was a fair use.
Read the full Gamasutra news story.
Previous Gamasutra news articles on this topic:
Accolade, Inc. v. Distinctive Software, Inc.
1990 WL 180239 (N.D.Cal. 1990)
1990 WL 180239 (N.D.Cal. 1990)
Accolade was seeking a preliminary injunction again Distinctive Software, which makes this case intriguing because Distinctive is a developer for whom Accolade sometimes acts as the publisher. It’s also intriguing because, unlike early video game copyright infringement cases, it primarily dealt not with the overall look and feel of video games, but rather with the underlying source code.
The Duel: Test Drive II
Distinctive developed the game The Duel—Test Drive II for Accolade, and Distinctive later developed the game Outrun (for publisher Sega) using some of the same underlying “computer codes” as were used in The Duel. There is no dispute as to whether the look and feel of the games were similar—they’re not. The issue was whether Distinctive’s re-use of computer code in Outrun was an infringement of the Accolade’s copyright in The Duel. As part of the contract between Accolade and Distinctive, Distinctive assigned certain copyrights to Accolade, as further discussed below.
Outrun:
There was no question that certain subroutines and computer code, originally used in The Duel, were reused in Outrun. Distinctive argued, however, that only standard libraries and routines were re-used to perform basic functions. Distinctive argued that similar codes are contained in many computer games, since they are necessary to perform functions such as “clearing the screen or operating the joystick.” Distinctive further asserted that these library codes are not game-specific, but were routinely transferred from one computer game to another so the program writer need not duplicate the task of developing them. Distinctive also asserted a fallback position that its licensing agreement with Accolade never contemplated the transfer of copyright in the library codes and, even if it did, the computer codes were mere mechanical devices rather than copyrightable expression, and thus not subject to copyright protection in the first place.
The court noted that, when seeking a preliminary injunction, a showing of a likelihood of success on the merits in a copyright case raises a presumption of irreparable harm. To succeed in showing copyright infringement, Accolade must show that it owned a valid copyright in The Duel, and that Distinctive infringed that copyright by copying protectable material into Outrun. The court cites back to Apple Computers Inc. v. Formula Int’l Inc. for the proposition that all portions of computer programs are the proper subject matter for copyright, even those that communicated only with the machine (computer) itself and not with human users. The underlying subroutines and functions are therefore proper statutory subject matter for copyrights, and are not merely mechanical devices.
Next the court analyzed what, if any, copyrights Distinctive transferred to Accolade. The court determined that the scope of copyright assigned to Accolade by Distinctive depended on the contract language. Specifically, the contract stated, at para. 5.5, that Accolade owns the copyright to the licensed product. “Licensed product” was defined, at para. 1.1, as “the concepts to be designed and implemented by the developer.” The final piece of the puzzle was para. 4.7 of the licensing agreement, which required Distinctive to deliver to Accolade the computer codes underlying the video game. Accolade argued that para. 4.7, in conjunction with paras. 5.5 and 1.1, operated to confer copyright to Accolade of all source code delivered by Distinctive to Accolade. The court disagreed, stating that “our reading of ¶ 4.7 at the present juncture, however, is that it requires [Distinctive] to deliver the underlying codes in addition to the licensed product. Thus, we believe that the licensing agreement transfers to Accolade the copyright to the concept and design of the video game but not the underlying source code.” (emphasis added).
In a last ditch effort, and with a little circular reasoning thrown in for good measure, Accolade argued that Outrun still infringed Accolade’s copyright in The Duel based on the theory that the two games were substantially similar because—yes, you guessed it—Distinctive used the same underlying subroutines and functions in Outrun as were used in The Duel (the same subroutines and functions for which the court just declined to find that Accolade owned the copyright). Needless to say, the court didn’t buy it, and denied Accolade’s motion for a preliminary injunction.
Nota Bene: This case came down to the contract language. While Distinctive won its day in court, had there been a more clearly written contract in the first place, Distinctive might have avoided this conflict altogether, or Accolade could have secured its rights up-front.
A couple posts on the Workplace Blog highlight the allegation that video game programmers often work insane hours without getting properly paid for them, and union actors want a piece of the “residual” action from video games that sell more than 400,000 copies…
Read the article about the overtime lawsuit here.
Read the article about union actors requesting residuals here.
Alpex Computer Corp. v. Nintendo Co.
102 F.3d 1214 (Fed. Cir. 1996)
102 F.3d 1214 (Fed. Cir. 1996)
I. Background
In the mid-1970’s, Alpex Computer Corporation developed and patented a new home video game system technology using removable, ROM-based cartridges, which was later commercialized by Atari, Mattel, and Coleco. Nintendo entered the video game system market in the early 1980’s with its popular Nintendo Entertainment System (NES). In February 1986, Alpex filed a lawsuit against Nintendo, alleging infringement of one of its video game system patents, U.S. Patent No. 4,026,555, relating to its video display system.
The ‘555 patent developed a process for generating video signals using RAM, controlled by a microprocessor, where the RAM contained a storage position corresponding to each pixel on the television screen, totaling approximately 32,000 pixels. As the cathode ray beam in the television scanned across each pixel on the screen, display data would be provided from the corresponding position in RAM. This video display system, referred to as “bit-mapping,” provided greater control and more flexibility than prior systems. Claims 12 and 13 of the ‘555 patent are reproduced below:
12. Apparatus for playing games by displaying and manipulating player and ball image devices on the screen of a display tube, comprising:
first means for generating a video signal representing a linear player image device aligned in a first direction,
second means for generating a video signal representing a ball image device,
manually operable game control means, and
means responsive to said manually operable game control means for causing said first means to generate a video signal representing the player image device rotated so that it is aligned in a second direction different from said first direction.
13. Apparatus according to claim 12, wherein said means for causing includes programmed microprocessor means and a replaceable memory having program game instructions stored therein for controlling said microprocessor means, whereby different games may be played with said apparatus by replacing said replaceable memory.
The NES video display system used what Nintendo called an “on-the-fly” technique. Instead of storing the display data for the entire screen in RAM, Nintendo’s system used eight shift registers, controlled by a picture processing unit (PPU), to alter a portion of the screen, up to 64 pixels, at a time. The NES PPU technology was faster and smoother than Alpex’s bit-mapping technology.
NES:
Alpex was successful at trial, where the jury determined that Nintendo’s technology infringed Alpex’s ‘555 patent and awarded Alpex damages totaling $253,641,445. The district court denied Nintendo’s post-trial motions and upheld the verdict. Nintendo appealed.
II. Issue
The primary issue before the Federal Circuit centered on the proper claim construction of two claims, claims 12 and 13, specifically focusing on the language “means for generating a video signal,” and whether those claims included the NES video display technology.
III. Analysis
A. Trial Court
Pursuant to 35 U.S.C. § 112 ¶ 6, the trial court interpreted “means for generating a video signal” based on the structure defined in the ‘555 patent specification and drawings. Specifically, the jury was instructed that claims 12 and 13 corresponded to the structure in Figure 2 of the ‘555 patent, which consisted of ROM memory, a microprocessor, display RAM, display RAM control, and a television interface.
Nintendo argued that the trial judge approved an erroneous claim construction. Nintendo reasoned that its use of shifting registers for changing up to 64 pixels at a time was different from Alpex’s use of a RAM-based, bit-mapping system for changing one or all of the 32,000 pixels on a screen at a time. Nintendo also argued that Alpex was barred from claiming that Nintendo’s technology infringes on the ‘555 patent, because during prosecution, Alpex distinguished its technology from a prior art patent using shifting registers. Alpex argued that Nintendo waived its right to use prosecution history for prosecution history estoppel purposes.
A. Federal Circuit
1. Literal Infringement
The Federal Circuit first recognized that claims 12 and 13 were means-plus-function claims, and thus § 112 ¶ 6 required interpreting those claims “in view of the structure disclosed in the specification of the patent.” The court held, however, that “positions taken before the PTO may bar an inconsistent position on claim construction under § 112 [¶ 6.]” Therefore, Alpex’s claims cannot be construed to cover a technology that has the same functional and structural traits as a prior art patent that Alpex admitted was not covered by its claims during prosecution. By allowing such a construction, the court concluded that the district court erred in sustaining the jury verdict of literal infringement.
2. Doctrine of Equivalents
The Federal Circuit then established that “equivalency under the doctrine of equivalents and equivalency under § 112 ¶ 6 . . . each has a separate origin, purpose, and application.” Under § 112, the concern is whether the structures of the claimed device and the accused device are equivalent, whereas under the doctrine of equivalents the concern is whether the devices are only “insubstantially different.” The court concluded that because Alpex’s expert made only conclusory statements regarding the substantial similarity in terms of function/way/result, the evidence “does not support a finding of infringement under the doctrine of equivalents.” Further, the court expressed that the purpose of the doctrine of equivalents is to “prevent others from avoiding the patent by merely making ‘unimportant and insubstantial changes and substitutions in the patent,’” and held that Nintendo’s use of shift registers instead of RAM was not “merely an unimportant and insubstantial change.”
Thus, the Federal Circuit reversed the district court’s judgment as to infringement and damages.
Thanks to Brandon Rash for his assistance in the preparation of this case summary.
Midway Mfg. Co. v. Dirkschneider et al.
571 F.Supp 282 (D.Neb. 1983)
(“Dirkschneider II”)
571 F.Supp 282 (D.Neb. 1983)
(“Dirkschneider II”)
In this follow up to Dirkschneider I, the court grants summary judgment to Midway with respect to Midway’s claims again the defendants for copyright and trademark infringement under 17 U.S.C. §§ 101 et seq. and section 43(a) of the Lanham Act of 1946 respectively, and for deceptive trade practices prohibited by the Nebraska Uniform Deceptive Trade Practices Act.
Midway is a designer and manufacturer of coin-operated electronic video games. In the United States, Midway sells its video games to regional distributors who sell the video games to operators. The operators place the machines in arcades and other places for public use. Among other games, Midway owns the U.S. rights to Pac-Man, Rally-X, and Galaxian, which it acquired from Namco.
Galxian:
The defendants purchased, through their partnership, A-1 Machines, at least ten “copy games” and three conversion kits from their distributor. The game names on the headboards of these video cabinets featured variations of Midway’s trademarks: “Pac Man” was replaced by “Mighty Mouth”; “Galaxian” was replaced by “Galactic Invaders.” Midway’s “Rally-X” name was appropriated in toto onto the defendants’ version of the game. None of the defendants’ games had “Midway” imprinted on the cabinet. The strategy, design, and sound effects of these games resemble their Midway counterparts. The defendants resold these games or kits, or placed them in various locations for public use. The defendants divided the proceeds with the owners of the premises where the games were played.
Because of the difficulty of providing direct evidence of copying, plaintiffs in copyright action soften demonstrate copying by establishing (1) access by defendants to plaintiff’s work and (2) a substantial similarity between defendants’ work and plaintiff’s work. In this case, the defendants admitted to seeing the Midway games. The court also stated that “[i]n virtually every detail, the defendants’ games are identical to the plaintiff’s” and the games are so strikingly similar that copying may be inferred without direct proof of access. The court also applied a reasonable observer standard, stating that “[a] reasonable observer, comparing the overall appearance of these games, could only conclude that the Mighty Mouth, Galactic Invaders, and Rally-X machines and printed circuit boards resold and displayed for public use by the defendants, copied plaintiff’s unique expression of ideas for coin-operated video games.” The court thus found the games to be substantially similar and that a prima facie case of obviousness had been established.
The defendants, acting pro se, argued that they did not know that the machines they purchased were copies of the Midway machines. However, the court noted that absence of scienter is not a valid defense to a charge of copyright infringement, and that the law is well settled that liability attaches to the so-called “innocent infringer” regardless of intent.
The defendant’s other defense, that they did not manufacture the infringing games, was also cast aside by the court, stating that the Copyright Act clearly comprehends resale and public display of unlawfully copied machines within the ambit of activities prohibited. “The owner of copyright has the exclusive rights … (3) to distribute copies … of the copyrighted work to the public by sale or transfer of ownership, or by rental, lease or lending; [and] (4) in the case of … audio visual works, to perform the copyrighted work publicly.”
After a brief discussion of the Trademark and Lanham Act claims, the court granted Midway’s motion for partial summary judgment.