Tetris Holding, LLC v. Xio Interactive, Inc.
863 F.Supp.2d 394
United States District Court for the District of New Jersey
May 30, 2012

We were recently talking among ourselves about copyright protection for expressive choices in implementing functional rules of a game, and Tetris v. Xio immediately came to mind.  Much to our own surprise we hadn’t written it up yet.  So today we write about the Tetris Holding v. Xio Interactive case that captured the industry’s attention in 2012 by providing expansive protection for Tetris – a holding that some have found controversial.

The Copyright Act protects the expression of an idea, not the idea itself or its functionality. In the United States, patent law governs functionality, whereas copyright protects original creative expression. This underlying principal allows for clones of a popular video game to exist, so long as the clone only uses the ideas or functional features. Functional aspects of a game could be the rules or user interface. There are certain games where the rules are so intrinsically tied to the expression of the game that it becomes difficult to separate, which was the exact scenario that the court faced in Tetris Holding, LLC v. Xio Interactive, Inc.

Tetris is one of the most popular video games of all time, and as a result, there are many clones of Tetris available. Tetris Holding, LLC, the company that owns the Tetris rights, has a history of issuing takedown notices to copy-cat games. One such company to receive a takedown notice was Xio Interactive. Desiree Golden formed Xio Interactive with the intent to design a game for the iPhone. Ms. Golden admitted she intended to create a game which replicates Tetris’s gameplay but claimed to have only copied non-protected functionality. Tetris Holding disagreed with Xio’s assertion and instigated litigation in December 2009.

Xio argued it only copied the rules and game mechanics of Tetris, which would be functional features and therefore could not be protected by copyright. The district court, however, held that expressive elements incorporated into the functional features could be protected. According to the court, just because game mechanics and rules are not entitled to protection, “does not mean . . . that any and all expression related to a game rule or game function is unprotectable.” 863 F.Supp.2d at 404-405. Even though the game mechanics and expression might appear closely tied, the court felt the defendant had other options to express the same mechanics, therefore the merger doctrine did not apply. The merger doctrine states if there is a single or limited number of ways to express an idea, then no copyright protection will be given to any of those ways. Because the court found there was protectable expression that did not merge with the idea, it ruled in Tetris Holding’s favor due to the fact that both games were identical.

Tetris Holding also sued Xio under a theory of trade dress infringement. On the trade dress claim, the district court again ruled in Tetris Holding’s favor, finding there was a likelihood of confusion due to the similarities of the two games.

This case has been controversial because many commenters believe the decision expands the scope of copyright protection to protect functional aspects of a game. For many people, a video game’s mechanics and rules are purely functional, so those elements should not be protected by copyright. Video games walk a tight line between functionality and expression due to the interactive nature of the medium, so it is not always clear where one begins and the other ends. The distinction between functionality and expression in video games is thus an ongoing issue of debate.

For example, PUBG Corp., the developer of Playerunknown’s Battlegrounds, is currently suing several copycat games in a case that seems somewhat similar to Tetris Holding v. Xio Interactive. For more in-depth coverage, click here. Many of the elements PUBG Corp. claims the copycats infringe might be of a functional nature, or ideas not subject to copyright protection, when considered in isolation, but PUBG argues that in combination they are deserving of copyright protection. It will be interesting to see if the court in the PUBG Corp. cases follows a similar analysis as Tetris Holding v. Xio Interactive.

This is an issue we’re keeping an eye on.  Stay tuned…

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