669 F.2d 852 (2nd Cir. 1982).
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.
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.
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.”
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.
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.
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.
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.
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.
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.
102 F.3d 1214 (Fed. Cir. 1996)
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.
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.
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.
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.
571 F.Supp 282 (D.Neb. 1983)
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.
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.
543 F. Supp 466 (D. Neb. 1981)
In one of the earliest decisions in a video game infringement case, the court issues a preliminary injunction in favor of Midway, to enjoin the defendants from infringing Midway’s copyrights in its coin-operated Pac-Man, Rally-X, and Galaxian electronic video games. The court also ruled in Midway’s favor with respect to Trademark and other Lanham Act claims.
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. As per the findings of fact in the decision, over 40,000 Galaxian games had been sold since February 1980, generating royalties of over $3.5M to Namco. Similarly, over 25,000 Pac-Man games and 2,500 Rally-X games have generated another $1M in royalties to Namco.
Each defendant makes or sells conversion kits for one or more of the Galactic Invader, Kamikaze III, Mighty Mouth or Rally-X games. Galactic Invader and Kamikaze III are nearly identical to Glaxian. Mighty Mouth is nearly identical to Pac-Man, and the defendants’ version of Rally-X is nearly identical to Midway’s version of Rally-X, and also uses the same name.
The court went through the usual analysis to determine whether a preliminary injunction was proper: 1) Probable success on the merits, 2) Irreparable harm and balancing of equities, and 3) The public interest. In determining success on the merits, the court analyzed, for each game, the validity of the copyright, and copying of protectable material. The court provided a thorough analysis in its determination that the copyrights are valid, especically in view of the fact that the court has no previous video game case law, controlling or otherwise, to draw from.
At the end of the day, Midway got its preliminary injunction. The case was finally decided by the District of Nebraska in Midway Mfg. Co. v. Dirkschneider, 571 F. Supp. 282 (D.C. Neb. 1983). A sample flyer for one of the defendants’ games is shown below, albeit from another country:
Home Gambling Network et al. v. Piche et al., CV-S-05-0610-KJD-LRL (D.Nev, filed May 16, 2005)
On May 14, 2012,
A federal judge in Nevada on May 14 reversed a magistrate judge’s recommendation to impose terminating sanctions against defendants in a patent infringement case and ordered the new magistrate judge in the case to conduct an evidentiary hearing based on evidence presented by the parties during the briefing on the defendants’ objection
It’s on the fringe as far as video game lawsuits go, but this new case filed on May 16, 2005, does allege patent infringement involving online video games… of the wagering type.
If the case caption didn’t already give it away, the patent (U.S. Pat. No. 5,800,268) is directed to a Method Of Participating In A Live Casino Game From A Remote Location. Fig. 1 of the ‘268 patent:
Representative claim 1 (also the shortest independent claim in the patent), recites:
1. A method for a player to remotely participating in a live casino game comprising:
(i) establishing a first information line between a player at an interface station located remotely from the casino for the transmission of live television signals and data signals to a player interface station located remote from the casino, said interface station including a player display to display a live television image of a live game to the player;
(ii) from said interface station, the player transmitting over said first information line to the casino account information related to an account maintained by the player at a third party financial institution;
(iii) the casino opening a second information line with the third party financial institution in response to receipt of said account information;
(iv) maintaining said second information line open with the first information line;
(v) the casino transmitting over the first information line data indicative that the player can make a bet;
(vi) the player from their interface station transmitting over the first information line to the casino bet information indicating a bet being made by the player on the live game;
(vii) in response to the transmitted bet, the casino over the second information line verifying the status of the player’s account, the casino accepting the bet if the player’s account has sufficient funds and otherwise denying the bet;
(viii) the casino transmitting data over the first information line data indicative that no more bets can be made, said data displayed at the display with the television signal;
(ix) the player over the first information line interacting with the casino to control the play of the game until an outcome is obtained;
(x) determining from the outcome whether the player’s bet is won or lost, said player viewing the live play of the game at the display to confirm the outcome;
(xi) in the event of interruption of said first information line, said casino completing the play of the game to determine the outcome pertaining to the player’s wager; and
(xii) the casino issuing instructions over the second information line to credit the player’s account if the player has won the bet in the amount of the bet and the player’s winnings and to debit the player’s account if the player’s bet is lost.
Home Gambling Network has named 18 defendants, each of which operate one or more online gambling web sites. In an interesting twist, it appears from the complaint that Home Gambling Network may have already provided a license to one or more of the defendants for certain games. However, in addition to alleging patent infringement, Home Gambling Network is attembling to nullify the license on the grounds that each of the defendants, by accepting a bet from the inventor of the ‘268 patent (who resides in Nevada), has allegedly committed a felony in the State of Nevada by accepting bets from within the State of Nevada while not being licensed by the Nevada Gaming Commission. Home Gambling Network’s argument is that any license granted thus has been used for unlawful purposes and is therefore null and void.
We’ll add this case the watch list, due to the online gaming nature of the ‘268 patent. I’m betting the case settles…
Konami Corporation v. Roxor Games Inc., 2-05CV-173 (E.D.Tex), filed May 9, 2005.
Konami Corporation has filed a lawsuit against Roxor Games, Inc., in the Federal District Court for the Eastern District of Texas, alleging patent infringement, trademark infringement, unfair competition, trademark dilution, and trade dress infringement, under both Federal and Texas law. The issue: Konami’s game Dance Dance Revolution:
Konami alleges that Roxor sells and distributes an In The Groove (ITG) video arcade game kit, that a purchaser can use to retrofit one of Konami’s Dance Dance Revolution (DDR) arcade games. As alleged by Konami, the kit comes with instructions on how to remoce the original main circuit board from the DDR game and replace it with the ITG game circuit board. The following was clipped from the InTheGoove.biz web site earlier today:
The patent at issue is U.S. Pat. No. 6,410,835, entitled Dance Game Apparatus And Step-On Base For Dance Game, issued June 25, 2002. Figure 2 of the ‘835 patent is shown below:
While the Complaint does not specifically call out particular claims, claim 1 of the ‘835 patent is reproduced below:
1. A dance game apparatus comprising: music output means for outputting one piece of music from at least one stored piece of music; a floor panel having a step-on base section; said step-on base section comprising a top panel and a support member which supports the panel; detection means for detecting a stepping operation on said step-on base section; said detection means comprising stepping sensors interposed between said panel and said support member at mutually opposing positions of said panel; said stepping sensors comprising longitudinally extending conductive sections having a longitudinal length, one of said conductive sections being moveable laterally relative to another of said conductive sections at any one of a plurality of positions along the longitudinal length of said one conductive section to effect contact with said other conductive sections at any one of a plurality of corresponding contact positions such that said stepping sensors detect stepping on said step-on base sections at plural locations corresponding to said plurality of corresponding contact positions, guidance means for performing a stepping operation instruction to said step-on base section in time with said music; measurement means for measuring a time deviation between the timing of a stepping operation instruction and the time at which the fact that said step-on base section is stepped on is detected by said detection means; and evaluation means for providing a higher score the smaller the measurement result.
We’ll add this case to our watch list and keep you posted of future developments.
Midway Mfg. Co. v. Artic. Int’l, Inc., 704 F.2d 1009 (7th Cir. 1983), cert. denied, 464 U.S. 823 (1983).
Galaxian is a video that is something of a cross between Space Invaders and Galaga:
Artic manufactured a computer chip to speed up the game play in Midway’s Galaxian video games. The Court of Appeals for the Seventh Circuit ruled this infringed on Midway’s copyright. The court ruled that the speeded up version of the video game constituted a derivative work. While Artic argued that speeding up the video game was like speeding up a phonograph record and so should not be considered a derivative work, the court rejected the argument based on the fact that there is a market for speeded up video games while there is no market for speeded up phonograph records. The court did acknowledge that the definition of derivative work had to be stretched to reach this result.
(Sorry this case summary is short, we will supplement later as time permits)
Williams Electronics, Inc. v. Artic International, Inc., 685 F.2d 870, 215 USPQ 405 (3rd Cir. 1982)
The game is Williams’ arcade game Defender, which many of us remember with fondness:
Artic sold circuit boards, manufactured by others, which contain electronic circuits including a microprocessor and memory devices (ROMs). These memory devices incorporate a computer program which is virtually identical to Williams’ program for the Defender game. The result is a circuit board “kit” which is sold by Artic to others and which, when connected to a cathode ray tube, produces audiovisual effects and a game almost identical to the Williams’ Defender game, including both the attract mode and the play mode. The play mode and actual play of Artic’s game, entitled “DEFENSE COMMAND,” is virtually identical to that of the Williams game, i.e., the characters displayed on the cathode ray tube including the player’s spaceship are identical in shape, size, color, manner of movement and interaction with other symbols. Also, the attract mode of the Artic game is substantially identical to that of Williams’ game, with minor exceptions such as the absence of the Williams name and the substitution of the terms “DEFENSE” and/or “DEFENSE COMMAND” for the term “DEFENDER” in its display.
The principal dispute in this case was whether the audiovisual aspects of a video game are sufficiently “fixed” to obtain copyright protection under the 1976 Copyright Act. The court held that the video game Defender was sufficiently fixed in ROM regardless of the fact that game play may differ slightly each game, and also regardless of the fact that a human player causes the video game to change slightly with each”performance.”
Specifically, Artic argued that there is a lack of “fixation” because the video game generates or creates “new” images each time the attract mode or play mode is displayed, notwithstanding the fact that the new images are identical or substantially identical to the earlier ones. The court gave little weight to this argument, stating that the fixation requirement is met whenever the work is “sufficiently permanent or stable to permit it to be * * * reproduced, or otherwise communicated” for more than a transitory period, and that the original audiovisual features of the DEFENDER game repeat themselves over and over. The court also noted the unnsuccessful results of Artic’s same argument in other cases.
Artic also argued that the player’s participation withdraws the game’s audiovisual work from copyright eligibility because there is no set or fixed performance, and the player becomes a co-author of what appears on the screen. The court rejected this argument as well, noting that although there is player interaction with the machine during the play mode which causes the audiovisual presentation to change in some respects from one game to the next in response to the player’s varying participation, there is always a repetitive sequence of a substantial portion of the sights and sounds of the game, and many aspects of the display remain constant from game to game regardless of how the player operates the controls. In addition, there is no player participation in the attract mode which is displayed repetitively without change.
The court went on to reject Artic’s additional arguments in its defense, namely that Williams was trying to copyright a utilitarian object, and that copyright infringement only occurs when the source code is copied, not when the object code is copied. The court did, however, reverse the finding of willful infringement and remanded for further proceedings on that issue.
MARVEL ENTERPRISES, INC., et al.
NCSOFT CORPORATION, et al.
No. CV 04-9253RGKPLAX.
March 9, 2005.
The case is in the early stages, and the present ruling is on a motion to strike and motion to dismiss various claims. Marvel contends that NCSoft marketed, distributed and hosted a computer game that allows players to play online and create characters that are virtually identical in name, appearance, and characteristics to characters owned by Marvel. Marvels allegations include (1) direct, (2) contributory, and (3) vicarious copyright infringement under 17 U.S.C. § § 101, et seq., (4) direct, (5) contributory, and (6) vicarious registered trademark infringement under 15 U.S.C. § 1114, (7) direct, (8) contributory, and (9) vicarious common-law trademark infringement under 15 U.S.C. § 1125, (10) intentional interference with actual and prospective economic advantage, and (11) declaratory relief.
The motion to strike was granted-in-part, because the allegedly infringing works depicted in the exhibits and referred to in the pleadings were created by Plaintiffs themselves.
The motion to dismiss was granted as to Plaintiffs’ 4th, 5th, 6th, 8th, 9th, and 11th causes of action (the trademark-related issues, as well as the DJ claim).
Even though the trademark claims were dismissed, this will be a case to watch on the copyright side of the aisle, given that the scope of protection in copyrightable characters with respect to video games will inevitably be an issue. The specific Marvel characters involved inclue Captain America, Wolverine, Incredible Hulk, Magneto, The Thing, Phoenix, and Iron Man.
We’ll keep you posted as this case progresses.
ATARI, INC., Plaintiff, v. JS & A GROUP, INC., Defendant. 597 F.Supp. 5 (N.D. Ill. 1983) This appears to be the first case to analyze and consider 17 U.S.C. sec. 117, which provides that owners of copies of computer software can make copies of the software for “archival” purposes.
Atari manufactures and sells a home computer video game system, the “2600”, and game cartridges such as “CENTIPEDE” and “PAC-MAN” for use in the 2600. In order to play the games at home, the consumer connects the Atari computer to a television set and plugs his controls, or “joysticks”, into the computer. A game cartridge, which is usually purchased separately, is then inserted into the computer. The computer program in the cartridge causes the audiovisual aspects of the game to emanate from the television. Atari has copyrighted its video games as audiovisual works. In addition, it is seeking to register a copyright of the computer program for the CENTIPEDE game.
JS&A is a retailer of electronic products. It began to market its PROM BLASTER, a device for the duplication of those video games which are compatible with the Atari 2600 home computer. The PROM BLASTER has two slots, one for a 2600-compatible cartridge and one for a blank cartridge sold by JS&A for $10. In the words of JS&A’s advertisements, “[y]ou simply plug in your Atari or Activision cartridge in one slot and a blank cartridge in another, press a button and three minutes later you’ve created an exact duplicate.” JS&A markets the PROM BLASTER primarily as a means of making “back-up” copies of 2600-compatible games.
The court finds that JS&A’s PROM BLASTER does not make a backup copy to protect against “mechanical or electrical failure,” as is required by section 117, but instead protects against accidental physical dangers due to the nature of the unerasable and nonreprogrammable ROM inside each cartridge. This danger is no different than accidentally shredding a handwritten literary work, and is thus not protected under section 117. JS&A also argued that since they offered a series of 9 games that they permitted to be copied and sold without restriction, the device had substnatial noninfringing use (the court didn’t buy it, given the massive number of other games on the market for the Atari 2600 game console). There being no other substantial noninfringing use, the court grants Atari a preliminary injunction enjoining JS&A from selling the PRO BLASTER. Note that the court in Vault v. Quaid (case summary to follow later) declined to follow the reasoning in this case.
Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir. 1982)
In this early case regarding copyright protection of video games, the court addresses the issue of determining the scope of copyright protection in an audiovisual work such as a video game. The question here: Did North American Phillips’ game K.C.MUNCHKIN infringe Atari’s copyright in the game PAC-MAN? The court, noting that a game is not protectible by copyright “as such,” stated that video games are protectible “at least to a limited extent [insofar as] the particular form in which it is expressed provides something new or additional over the idea.” The court went on to conclude that Atari had a likelihood of success on the merits of copyright infringement, and granted a preliminary injunction preventing North American Phillips from infringing Atari’s copyright by producing the K.C.MUNCHKIN game.
The court noted many differences and similarities between PAC-MAN and K.C. Munchkin, which are reproduced in their entireties below. However, what is interesting in this case is that K.C.MUNCHKIN is a clear improvement over PAC-MAN, providing additional strategic aspects that make game play much more dynamic and difficult to master. The court does not ignore these differences, but instead reminds us that “it is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate” (citing Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2nd Cir.)). The court went on to state that “[t]he sine qua non of the ordinary observer test … is the overall similarities rather than the minute differences between the two works. … When analyzing two works to determine whether they are substantially similar, courts should be careful not to lose sight of the forest for the trees.”
Indicating that video games “appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression,” this case is useful in that it indicates that infringement can occur when the similarity between two works relates to matter which constitutes a substantial portion of copyright holder’s work, i.e., matter which is of value to the copyright holder, regardless of the amount of the alleged infringing work that is similar (hmmm, sounds similar to a fair use factor). Once that determination was made, the court had no trouble concluding that Atari had a good chance of success on the merits in their copyright infringement claim. The fact that North American Phillips advertised K.C.MUNHKIN as a PAC-MAN-type game probably didn’t hurt either.
The court’s summary of PAC-MAN:
(Play Pac Man Now: Click Here.)
The copyrighted version of PAC-MAN is an electronic arcade maze-chase game. Very basically, the game “board,” which appears on a television-like screen, consists of a fixed maze, a central character (expressed as a “gobbler”), four pursuit characters (expressed as “ghost monsters”), several hundred evenly spaced pink dots which line the pathways of the maze, four enlarged pink dots (“power capsules”) approximately located in each of the maze’s four corners, and various colored fruit symbols which appear near the middle of the maze during the play of the game.
Using a “joy stick,” the player guides the gobbler through the maze, consuming pink dots along the way. The monsters, which roam independently within the maze, chase the gobbler. Each play ends when a monster catches the gobbler, and after three plays, the game is over. If the gobbler consumes a power capsule, the roles reverse temporarily: the gobbler turns into the hunter, and the monsters become vulnerable. The object of the game is to score as many points as possible by gobbling dots, power capsules, fruit symbols, and monsters.
The PAC-MAN maze has a slightly vertical rectangular shape, and its geometric configuration is drawn in bright blue double lines. Centrally located on the left and right sides of the maze is a tunnel opening. To evade capture by a pursuing monster, the player can cause the central character to exit through one opening and re-enter through the other on the opposite side. In video game parlance this concept is called a “wraparound.” In the middle is a rectangular box (“corral”) which has a small opening on the upper side. A scoring table, located across the top of the maze, displays in white the first player’s score on the left, the high score to date in the middle, and the second player’s score on the right. If a player successfully consumes all of the dots, the entire maze flashes alternately blue and white in victory, and a new maze, replenished with dots, appears on the screen. When the game ends a bright red “game over” sign appears below the corral.
At the start of the game, the gobbler character is located centrally near the bottom of the maze. That figure is expressed as a simple yellow dot, somewhat larger than the power capsules, with a V-shaped aperture which opens and closes in mechanical fashion like a mouth as it travels the maze. Distinctive “gobbling” noises accompany this action. If fate (or a slight miscalculation) causes the gobbler to fall prey to one of the monsters, the action freezes, and the gobbler is deflated, folding back on itself, making a sympathetic whining sound, and disappearing with a star-burst.
The four monster characters are identical except that one is red, one blue, one turquoise, and one orange. They are about equal in size to the gobbler, but are shaped like bell jars. The bottom of each figure is contoured to stimulate three short appendages which move as the monster travels about the maze. Their most distinctive feature is their highly animated eyes, which appear as large white circles with blue irises and which “look” in the direction the monster is moving. At the start of each play, the monsters are located side-by-side in the corral, bouncing back and forth until each leaves through the opening. Unlike the gobbler, they do not consume the dots, but move in a prearranged pattern about the maze at a speed approximately equal to that of the gobbler. When the gobbler consumes a power capsule and the roles reverse, the monsters panic: a siren-like alarm sounds, they turn blue, their eyes contract into small pink dots, a wrinkled “mouth” appears, and they immediately reverse direction (moving at a reduced speed). When this period of vulnerability is about to end, the monsters warn the player by flashing alternately blue and white before returning to their original colors. But if a monster is caught during this time, its body disappears, and its original eyes reappear and race back to the corral. Once in the corral, the monster quickly regenerates and reenters the maze to resume its pursuit of the gobbler.
Throughout the play of PAC-MAN, a variety of distinctive musical sounds comprise the audio component of the game. Those sounds coincide with the various character movements and events occurring during the game and add to the excitement of the play.
The court’s summary of K.C.MUNCHKIN:
North American’s K. C. Munchkin is also a maze-chase game that employs a player-controlled central character (also expressed as a “gobbler”), pursuit characters (also expressed as “ghost monsters”), dots, and power capsules. The basic play of K. C. Munchkin parallels that of PAC-MAN: the player directs the gobbler through the maze consuming dots and avoiding capture by the monsters; by gobbling a power capsule, the player can reverse the roles; and the ultimate goal is to accumulate the most points by gobbling dots and monsters.
K. C. Munchkin’s maze also is rectangular, has two tunnel exits and a centrally located corral, and flashes different colors after the gobbler consumes all of the dots. But the maze, drawn in single, subdued purple lines, is more simple in overall appearance. Because it appears on a home television screen, the maze looks broader than it is tall. Unlike that in PAC-MAN, the maze has one dead-end passageway, which adds an element of risk and strategy. [FN1] The corral is square rather than rectangular *612 and rotates ninety degrees every two or three seconds, but serves the same purpose as the corral in PAC-MAN. The scoring table is located below the maze and, as in PAC-MAN, has places on the left and right for scores for two players.[FN2] But instead of simply registering the high score in the middle, the K. C. Munchkin game displays in flashing pink and orange a row of question marks where the high scorer can register his or her name.
FN1. The K. C. Munchkin home video game has several modes with an almost indefinite variety of mazes. One mode, for example, employs a constantly changing configuration, in another, the player can build his or her own maze, and in yet another, the maze disappears when the gobbler moves.
FN2. Before any player registers points, the PAC-MAN scoring table displays in white “1 UP” and “2 UP” where the scores will appear. The K. C. Munchkin game simply displays “0000” in orange for the first player and in white for the second.
The gobbler in K. C. Munchkin initially faces the viewer and appears as a round blue-green figure with horns and eyes. The gobbler normally has an impish smile, but when a monster attacks it, its smile appropriately turns to a frown. As it moves about the maze, the gobbler shows a somewhat diamond-shaped profile with a V-shaped mouth which rapidly opens and closes in a manner similar to PAC-MAN’s gobbler. A distinctive “gobbling” noise also accompanies this movement. When the gobbler stops, it turns around to face the viewer with another grin. If captured by a monster, the gobbler also folds back and disappears in a star-burst. At the start of each play, this character is located immediately above the corral. If successful in consuming the last dot, the munchkin turns to the viewer and chuckles.[FN3]
FN3. The district court stated that “the central character is made to have a personality which the central character in ‘PAC-MAN’ does not have.”
K. C. Munchkin’s three ghost monsters appear similar in shape and movement to their PAC-MAN counterparts.[FN4] They have round bodies (approximately equal in size to the gobbler) with two short horns or antennae, eyes, and three appendages on the bottom. The eyes are not as detailed as those of the PAC-MAN monsters, but they are uniquely similar in that they also “look” in the direction in which the monster is moving. Although slightly longer, the “legs” also move in a centipede-like manner as the monster roams about the maze. The similarity becomes even more pronounced when the monsters move vertically because their antennae disappear and their bodies assume the more bell jar-like shape of the PAC-MAN monsters. Moreover, the monsters are initially stationed inside the corral (albeit in a piggyback rather than a side-by-side arrangement) and exit into the maze as soon as play commences.
FN4. The district court, however, characterized the K. C. Munchkin monsters as much “spookier.”
K. C. Munchkin’s expression of the role reversal also parallels that in PAC-MAN. When the gobbler consumes one of the power capsules, the vulnerable monsters turn purple and reverse direction, moving at a slightly slower speed. If caught by the gobbler, a monster “vanishes”: its body disappears and only white “eyes” and “feet” remain to indicate its presence. Instead of returning directly to the corral to regenerate, the ghost-like figure continues to wander about the maze, but does not affect the play.[FN5] Only if the rotating corral happens to open up toward the monster as it travels one of the adjacent passageways will the monster re-enter the corral to be regenerated. This delay in regeneration allows the gobbler more time to clear the maze of dots. When the period of vulnerability is about to end, each monster flashes its original color as a warning.
FN5. During this time, the white eyes disappear and reappear in alternating sequence with the reappearance and disappearance of the monster’s body silhouetted in white.
There are only twelve dots in K. C. Munchkin as opposed to over two hundred dots in PAC-MAN. Eight of those dots are white; the other four are power capsules, distinguished by their constantly changing color and the manner in which they blink. In K. C. Munchkin, the dots are randomly spaced, whereas in PAC-MAN, the dots are uniformly spaced. Furthermore, in K. C. *613 Munchkin, the dots are rectangular and are always moving. As the gobbler munches more dots, the speed of the remaining dots progressively increases, and the last dot moves at the same speed as the gobbler. In the words of the district court, “the last dot … cannot be caught by overtaking it; it must be munched by strategy.” At least initially, one power capsule is located in each of the maze’s four corners, as in PAC-MAN.
Finally, K. C. Munchkin has a set of sounds accompanying it which are distinctive to the whole line of Odyssey home video games. Many of these sounds are dissimilar to the sounds which are played in the arcade form of PAC-MAN.
ATARI, INC. v. AMUSEMENT WORLD, INC., 547 F.Supp. 222 (D. Md. Nov. 27, 1981).
In one of the earliest video game cases, Atari, the holder of copyright in the arcade game “Asteroids,” sued Amusement World for copyright infringement based on Amusement World’s video game “Meteors.” This early case reaffirms that while video games are protectable as audiovisual works (incidentally, the court also indicates the video game is protectable as a motion picture), copyright protection does not extend to the underlying idea behind the video game, but rather protects only the specific expression of that idea.
At the outset, the court noted a variety of similaries between the games:
(1) There are three sizes of rocks.
(2) The rocks appear in waves, each wave being composed initially of larger rocks.
(3) Larger rocks move more slowly than smaller ones.
(4) When hit, a large rock splits into two medium rocks, a medium rock splits into two small ones, and a small rock disappears.
(5) When a rock hits the player’s spaceship, the ship is destroyed.
(6) There are two sizes of enemy spaceships.
(7) The larger enemy spaceship is an easier target than the smaller one.
(8) The player’s ship and enemy ships shoot projectiles.
(9) When a spaceship’s projectiles hit a rock or another ship, the latter is destroyed immediately.
(10) The destruction of any rock or spaceship is accompanied by a symbol of an explosion.
(11) When an enemy spaceship is on the screen, the player hears a beeping tone.
(12) There is a two-tone beeping noise in the background throughout the game, and the tempo of this noise increases as the game progresses.
(13) The player gets several spaceships for his quarter. The number of ships remaining is displayed with the player’s score.
(14) The score is displayed in the upper left corner for one player and the upper right and left corners for two players.
(15) The control panels are painted in red, white, and blue.
(16) Four control buttons from left to right, rotate the player’s spaceship counter-clockwise, rotate it clockwise, move it forward, and fire the weapon.
(17) When a player presses the “thrust” button, his spaceship moves forward and when he releases the button the ship begins to slow down gradually (although it stops more quickly in “Meteors”).
(18) The player gets an extra spaceship if he scores 10,000 points.
(19) Points are awarded on an increasing scale for shooting (a) large rock, (b) medium rock, (c) small rock, (d) large alien craft, (e) small alien craft.
(20) When all rocks are destroyed a new wave of large rocks appears.
(21) Each new wave of rocks has progressively more large rocks than the previous waves to increase the challenge of the game.
(22) A general overhead view of the battle field is presented.
The court also noted several differences between the games:
(1) “Meteors” is in color, while “Asteroids” is in black and white.
(2) The symbols for rocks and spaceships in “Meteors” are shaded to appear three-dimensional, unlike the flat, schematic figures in “Asteroids.”
(3) The rocks in “Meteors” appear to tumble as they move across the screen.
(4) “Meteors” has a background that looks like distant stars.
(5) At the beginning of “Meteors,” the player’s spaceship is shown blasting off the earth, whereas “Asteroids” begins with the player’s spaceship in outer space.
(6) The player’s spaceship in “Meteors” rotates faster.
(7) The player’s spaceship in “Meteors” fires faster and can fire continuously, unlike the player’s spaceship in “Asteroids,” which can fire only bursts of projectiles.
(8) The pace of the “Meteors” game is faster at all stages.
(9) In “Meteors,” after the player’s spaceship is destroyed, when the new spaceship appears on the screen, the game resumes at the same pace as immediately before the last ship was destroyed; in “Asteroids” the game resumes at a slower pace.
To prove copyright infringement, a plaintiff must prove the existence of a valid copyright, and copying of protectable expression by the defendant. Amusement World first challenged the validity of Atari’s copyright on the grounds that “Asteroids” was not the proper subject matter of copyright, as well as based on Atari’s alleged noncompliance with applicable statuory formalities.
Atari registered a copyright in “Asteroids” as an audiovisual work, not in the computer program as a literary work, by submitting a video tape of one game sequence out of an infinite number of possible game sequences. Amusement World argued that the computer program would have been the proper subject matter of copyright, not the audiovisual portion. In rejecting Amusement World’s arguments on this point, the court stated “Plaintiff’s “work,” the thing that plaintiff has created and desires to protect, is the visual presentation of the “Asteroids” game. That work is copyrightable as an audiovisual work…” The court went on to state that the audiovisual work is sufficiently fixed in the ROM chips under which the video game operates.
Amusement World next argued that Atari was attempting to monopolize the use of the idea of a video game in which the player fights his way through asteroids and spaceships, which is an uncopyrightable idea. The court again sided with Atari, stating “when [Atari] copyrighted his particular expression of the game, he did not prevent others from using the idea of a game with asteroids. He prevented only the copying of the arbitrary design features that makes plaintiff’s expression of this idea unique. These design features consist of the symbols that appear on the display screen, the ways in which those symbols move around the screen, and the sounds emanating from the game cabinet.”
Regarding compliance with statutory formalities, the court indicated that submission of a videotape of a single game out of an infinite number of possible games, is sufficient “alternative identifying material” as required by the Copyright Office.
Atari attempted to demonstrate copying by showing access to its work “Asteroids” by Amusement World, plus substantial similarity of the two works (i.e., “Asteroids” and “Meteors”). The court provided the usual analysis of protectable material, and indicated that the court “must be careful not to interpret plaintiff’s copyright as granting plaintiff a monopoly over those forms of expression that are inextricably associated with the idea of such a video game. Therefore, it is not enough to observe that there are a great number of similarities in expression between the two games. It is necessary to determine whether the similar forms of expression are forms of expressiongrhat simply cannot be avoided in any version of the basic idea of a video game involving space rocks.” Based on the lists of similarities and differences, the court concluded that Meteors was not substantially similar to Asteroids, stating that most of the similarities “were inevitable, given the requirements of the idea of a game involving a spaceship combatting space rocks and given the technical demands of the medium of a video game…. All these requirements of a video game in which the player combats space rocks and spaceships combine to dictate certain forms of expression that must appear in any version of such a game. In fact, these requirements account for most of the similarities between ‘Meteors’ and ‘Asteroids.’ Similarities so accounted for do not constitute copyright infringement, because they are part of plaintiff’s idea and are not protected by plaintiff’s copyright.” Without substantial similarity of protectable expression, there can be no copyright infringement. While Amusement World based their game on Atari’s Asteroids, Amusement World only copied the idea, and not the protectable aspects of the game.
As you may (or may not) be aware, there are well over 30 major cases that deal with intellectual property protection of video games, and that’s just patents and copyrights. We have dissected these cases and, over the next few months, will be publishing an analysis of each case. New case analysis posts will be up every Tuesday, and the title will begin with “Case:”. You can also subscribe to our Atom/RSS site feed for automatic updates.
Well not exactly a video game… yet, but it might apply sometime in the future. Hasbro sued RADgames in the Southern District of New York back in February for RADgames’ add-on to Monopoly. The court initially granted Hasbro a Temporary Restraining Order pending a hearing for a Preliminary Injunction. RADgames developed a modified version of Monopoly which uses a second game board in conjunction with the original. Figure 8 of U.S. Patent 5,810,359 is reproduced below:
On April 7, 2005, United States District Court Judge Hon. Gerard E. Lynch lifted the TRO and deined Hasbro’s request for a Preliminary Injunction, stating that “RADgames has added a new, original creation to the market which is designed for use with the plaintiff’s product but is distinctive in its own right.”
While RADgames patents are primarily directed to board games, the claims (at least on their face) are not all limited to physical creations, and could also apply to versions of the game implemented as a video game or computer game.
The case is Hasbro, Inc. v. Radgames, Inc., case no. 1:05-cv-02324-GEL, U.S. District Court for the Southern District of New York.