N.D. Cal. 2008
(by Shawn Gorman)
While relatively short lived, this legal battle provides several insights for both video game producers and their legal teams. At issue was whether Capcom’s “Dead Rising” video game infringed any copyright, trademark, or other intellectual property rights of MKR, the owner of the copyrights and trademarks to the 1979 motion picture “George A. Romero’s Dawn of the Dead.” Capcom, a well-established video game developer, contacted MKR in 2004 for potential licensing of the rights. The licensing effort, however, was not pursued further and Capcom developed and released “Dead Rising” in 2006. The box containing the game included a disclaimer reading: “THIS GAME WAS NOT DEVELOPED, APPROVED OR LICENSED BY THE OWNERS OR CREATORS OF GEORGE A. ROMERO’S DAWN OF THE DEAD™[.]” That same year, MKR discovered that Capcom applied to register “Dead Rising” as a trademark with the U.S. Patent and Trademark Office. A dispute ensued and Capcom filed a complaint for declaratory relief on February 12, 2008, seeking a declaration that its video game does not infringe any copyright, trademark, or other intellectual property rights belonging to MKR and subsequently filed a Motion to Dismiss MKR’s claims on June 11, 2008.
In a rare instance, the court dismissed MKR’s allegations against Capcom under Federal Rule 12(b)6. Citing prior precedent, the court understood the rarity in which such motions should be granted, stating that motions to dismiss “generally are viewed with disfavor and are to be granted rarely.” Indeed, such motions are only granted if “it appears beyond doubt the plaintiff can prove no set of facts in support of his claim that would entitle him to relief.” As discussed below, the court granted the motion and dismissed the claims of copyright and trademark infringement, as well as claims under California state law with prejudice (meaning that Capcom cannot refile with respect to these issues).
Capcom did not contest MKR’s copyright to “Dawn of the Dead.” Therefore, the sole issue was whether “Dawn of the Dead” and “Dead Rising” were substantially similar in their protected elements. The court again reiterated its understanding that motions to dismiss should rarely be granted, stating “MKR understandably invokes case precedent that calls into question the propriety of resolving the issue even on summary judgment let alone on an initial pleading motion.” Nonetheless, the court cites prior case law that “[t]here is ample authority for holding that when the copyrighted work and the alleged infringement are both before the court, capable of examination and comparison, non-infringement can be determined on a motion to dismiss.”
The court, however, recognizes that only one prong of the test may be determined by the court. Specifically, the substantial similarity inquiry is comprised of an objective extrinsic test and a subjective intrinsic test, both of which the copyright holder must ultimately establish. “Only in the event that the claim fails when analyzed under the objective “extrinsic” prong is it subject to dismissal, for the intrinsic test, which ‘examines an ordinary person’s subjective impressions of the similarities between two works,’ is exclusively within the province of the jury.”
Under the analysis, the court considers the actual concrete elements that make up the total sequence of events and the relationships between the major characters rather than plot ideas for stories.” As a comparison, the court discussed a prior dispute regarding a motion picture set in the Bronx:
There, the court held that because elements such as derelict cars, drunks, prostitutes, vermin, morale problems of police officers, and the familiar figure of an Irish cop would appear in any realistic work about police officers in the Bronx, those elements represented unprotectable scenes a faire.
Scenes a fair is “where events flow naturally from generic plot-lines or sequences of events necessarily resulting from the choice of a setting or situation constitute one type of unprotectable idea.” Thus, elements relating to “humans battling zombies in a mall during a zombie outbreak” were unprotectable.
The court also found several differences between the sequence of events, characters, setting, and mood of the two works of art. Considerations relating to the “theme” and “pace” may be of special importance to video games developers. First, by its very nature, the “pace” of an allegedly infringing video game may rarely be a factor in determining infringement. Indeed, the pace is often set by the player. As noted by the court:
The pace in Dead Rising is one of constant, fast-paced action depending on the player’s preference. If the player follows the game storyline cues, a fast pace ensues to facilitate completion of the game with the rescue of all survivors within the three day window. By the same token, if the player chooses not to follow the storyline cues, then the pace slackens and the player wanders the mall and confronts zombies. Even if this is viewed as presenting some superficial similarity, “pace, without more, does not create an issue of overall substantial similarity between the works.”
The court also noted the differences in the “theme” of the two works of art. Specifically, as argued by MKR, “Dawn of the Dead” relates to “a satirical social commentary on the excesses of consumerism,” while “[t]o the extent that Dead Rising may be deemed to posses a theme, it is confined to the killing of zombies in the process of attempting to unlock the cause of the zombie infestation.” The court appears to recognize that often players will play a game merely to play it, not for any social commentary. Furthermore, a game that sells for $60 to be played on a console that costs several hundred dollars was unlikely a social commentary of the excesses of consumerism.
The court swiftly addresses MKR’s allegations that the game industry perceives Dead Rising to be an obvious “rip-off” of Dawn of the Dead. The court reiterates that:
the ultimate issue on this motion is whether or not the allegedly infringing work implicates protectable elements under copyright law, regardless of whether or not it is, in fact, a “rip-off.” Moreover, to the extent that the argument eventually would become relevant, it would arise only in the application of the “intrinsic” test, the second prong of the copyright analysis. As MKR must first successfully pass through the extrinsic test, which as set forth above it does not accomplish, the perception in the marketplace that a work has been lifted, accurate or otherwise, simply does not come into play.
Lanham Act Claim
MKR plead that Capcom sought to capitalize on: (1) Romero’s name on a disclaimer; (2) the term “dead” in its title; (3) the zombie head design trademark on Dead Rising’s packaging; and (4) the “plaid boy” costume consisting of a blood stained, plaid shirt, and a zombie mask. The court swiftly rejects each of the arguments.
First, the court finds that Romero’s name on the disclaimer is mere nominative use. Specifically, there is no other way to refer to the movie than by its title, the use of the full title is necessary to identify the movie and differentiating between other different movie titles, and, nothing about using a mark in a disclaimer denying affiliation gives rise to confusion.
Regarding the use of “dead,” the court held that the “shared use of one word and the idea of zombies awakening is not enough to sustain a charge of infringement.” Lastly, the court found that the “zombie presented also appears to be much more lifelike than the half of the zombie head on the cover of Dawn of the Dead.” Regarding the plaid shirts, the court points back to its copyright analysis, in which it found the zombies in Dead Rising “to be stock elements with largely generic attire. While Dead Rising does sport some zombies in plaid and covered in blood, those attributes are too hazy to amount to substantial similarity.”
On November 14, 2008, the parties filed a stipulated agreement with the court. As part of the agreement, Capcom waives its right to seek attorneys’ fees, expenses and costs incurred in relation to the above titled actions and MKR waives its right to appeal the court’s ruling. MKR further agreed to withdrawal its opposition to Capcom’s trademark for “DEAD RISING.” (So far, the court has not approved the agreement)
As discussed below, this case had some interesting points regarding judicial notice.
As video game development continues to increase and thus have issued litigated in court, the concept of judicial notice will need to be addressed. Specifically, courts can take as true those facts which are generally known within the court’s territorial jurisdiction; and those that are “capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned, for example, almanac, dictionary, calendar or similar sources.” In this case, the court took judicial notice of the contents of “Dawn of the Dead” and “Dead Rising,” however, the court did not take judicial notice of the script of “Dead Rising.” The court reasoned that the scripts “authenticity cannot be determined by resort to irrefutable sources because it does not reflect who wrote it, nor when and for what purpose it was written, it was not filed with Capcom’s pending copyright for Dead Rising, and by its nature it may not track exactly how the game itself appears to the player.” Therefore, video game developers may consider indicating the authors on scripts and copyrighting at least portions of the game as they would appear to a player, such as select animations and introduction screens.
The court also did not take judicial notice of several prior movies and video games relating to zombies “especially in light of the fact that many of these movies were made long ago, indeed in some instances as far back as 1932.” Lastly, citing prior precedent that “Wikipedia may not be a reliable source of information,” the court declined to extend judicial notice to Wikipedia articles that allegedly provided synopses of these movies and video games. This is similar to the stance taken by the U.S. Patent & Trademark Office when examining patent applications. Specifically, in 2006 the USPTO indicated that Wikipedia would no longer be used as an accepted source of information. It appears that Wikipedia articles carry little, if any, weight in legal environments.