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


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

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

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

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

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