Data East USA, Inc. v. Epyx, Inc.

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Data East USA, Inc. v. Epyx, Inc.
Seal of the United States Courts, Ninth Judicial Circuit.svg
CourtUnited States Court of Appeals for the Ninth Circuit
DecidedNovember 30, 1988 (1988-11-30)
Citation(s)862 F.2d 204, 9 U.S.P.Q.2d (BNA) 1322
Case history
Prior action(s)Epyx published a karate video game with gameplay fairly similar to the Data East's karate game, which was already available for several years. Data East subsequently brought action against Epyx for, among other allegations, copyright infringement. The district court ruled for Data East on the copyright infringement issue and Epyx appealed.
Case opinions
There was no infringement on the copyright of Data East by Epyx.
Court membership
Judges sittingJames R. Browning, Procter Ralph Hug Jr., Stephen S. Trott
Keywords
Copyright infringement

Data East USA, Inc. v. Epyx, Inc. 862 F.2d 204, 9 U.S.P.Q.2d (BNA) 1322 (9th Cir. 1988),[1] was a 1988 legal case in which Data East, a video game manufacturer, contended that Epyx, a competing video game manufacturer, licensed and distributed a video game, World Karate Championship, that infringed on the copyright of a video game developed by Data East, Karate Champ. After a district court sided with Data East, the United States Court of Appeals for the Ninth Circuit court on appeal reversed the decision of copyright infringement. This judgment was based on the lack of "substantial similarity" between the games, because the identified similarities were inherent to all karate video games.[1]

Background[]

Facts[]

Despite being originally asked to complete the work on a totally different game, I did go off and evolve all the programming, graphics and sound effects myself, and pointed out that a karate game with two karate players wearing red and white karate suits fighting within the familiar rules of a bout of karate is bound to look similar to any other game featuring karate players wearing karate suits and doing karate moves in timed bouts of karate fighting! I think that’s why the look and feel and rules became better defined. At a high level of abstraction it’s easy to say that Karate Champ is like Fist is like IK1 is like Tekken and so on. They all feature bouts of timed karate-type gameplay.

Archer MacLean, developer of International Karate

Data East, a video game company, released the Karate Champ video game in late 1984. It was initially released as a coin-operated arcade game, and subsequently in October 1985 as a home computer game. In April 1986, Epyx, another video game company, licensed and began distributing a competing and similar home computer video game under the title World Karate Championship, rebranded from the original International Karate title, which it had licensed from a British developer System 3.

Both Karate Champ and World Karate Championship depicted a karate match between two opponents. There were several similarities between the two games; combatants each wore white and red, referees looked the same in each game, the allowed moves were similar, and the scoring mechanisms were based on increments and bonus points. Data East alleged that World Karate Championship, and thus Epyx, infringed on their copyright, trademark, and trade dress established by Karate Champ.[1][2][3][4]

Law[]

Courts have used the substantial similarity test to determine whether one work has unlawfully copied another, while allowing copying in instances where the similarities are not owned by anyone.[5] One of the most influential cases in this area was Atari v. Amusement World from 1981, where the court listed numerous similarities between the games Asteroids and its alleged clone, Meteors.[6] Despite twenty-two similarities, the court determined that these were unprotected ideas that are inherent to the game concept of shooting rocks in space.[7] At the time, it was one of the only cases to rule in favor of the defendant, based on the idea-expression distinction that copyright does not protect broad ideas, only unique expression.[8] Using similar principles, the court concluded that the video game K.C. Munchkin! infringed several protected elements of Pac-Man, in Atari, Inc. v. North American Philips Consumer Electronics Corp.[9] At the time, courts had started to apply complex copyright principles to video games to show that certain elements are ineligible for copyright protection. This includes the scènes à faire docrtine that generic scenes cannot be owned by anyone, as well as the merger doctrine that no one can own the expression to an idea if that's one of the only ways to express it.[5]

Ruling and appeal[]

District Court[]

The United States District Court for the Northern District of California held that Epyx infringed on Data East's copyright, due to the qualitative similarities in the appearance of the games. There was no infringement on trademark or trade dress. The district court then enjoined Epyx from copying, distributing, or preparing any derivative works from the copyrighted work. Additionally, all World Karate Championship games were recalled. The case was appealed by Epyx to the United States Court of Appeals for the Ninth Circuit.[1][10]

Appeal[]

Data East asserted that Epyx infringed on their copyright. In order to demonstrate that there is copyright infringement, it is necessary to prove ownership of a copyright and copying of the work.[11] It was not disputed that Data East owned the copyrights for Karate Champ. However, there was no evidence of direct copying of Karate Champ. Thus, in order to demonstrate that their copyright had been infringed, Data East had to show that

  • Epyx had access to the copyrighted work prior to creating their own work
  • their work exhibited "substantial similarity" to the copyrighted work.[12]

In the appeal, Epyx disputed that the two games exhibited substantial similarity.

The Ninth Circuit reversed the district court's finding of copyright infringement by failing to find a substantial similarity between the two games. This judgment was reached based on the notion that "no substantial similarity of expression will be found when the idea and its expression are inseparable."[13]

In order to determine whether a substantial similarity between the two works existed, the Ninth Circuit applied the "extrinsic-intrinsic test".[14][15] The purpose of this test is to determine if both the ideas and the expression of those ideas are substantially similar in the two works. Both of these tests must pass in order for a finding of substantial similarity to be reached. The extrinsic test, which determines if the ideas embodied by the works are the same, was used to determine that the ideas ("a martial arts karate combat game conducted between two combatants") were similar or identical. Next, the intrinsic test, regarding the "total concept and feel of the works", was used to determine the similarity of the expression of that idea. Because copyright protection cannot be extended to all elements of an expression, such as expressions that are indispensable or standard to the idea (i.e. Scènes à faire), the court performed an analytic dissection of the similarities between the two games to determine if the similarities were not simply the use of common ideas, and thus protected by copyright.

The court found the following similarities:

  • A. Each game has fourteen moves.
  • B. Each game has a two-player option.
  • C. Each game has a one-player option.
  • D. Each game has forward and backward somersault moves and about-face moves.
  • E. Each game has a squatting reverse punch wherein the heel is not on the ground.
  • F. Each game has an upper-lunge punch.
  • G. Each game has a back-foot sweep.
  • H. Each game has a jumping sidekick.
  • I. Each game has low kick.
  • J. Each game has a walk-backwards position.
  • K. Each game has changing background scenes.
  • L. Each game has 30-second countdown rounds.
  • M. Each game uses one referee.
  • N. In each game the referee says "begin," "stop," "white," "red," which is depicted by a cartoon-style speech balloon.
  • O. Each game has a provision for 100 bonus points per remaining second.

The similarities were judged by the court to "encompass the idea of karate" and necessarily follow from the idea of a karate video game. Thus, the district court was in error because it did not limit the scope of the copyright protection to the unique elements, such as the background and the score keeping. Furthermore, the Ninth Circuit decided that even those elements were dissimilar, concluding that a 17.5-year-old boy (the average age of a consumer of the video game) "would not find the games substantially similar". Because the idea and expression are inseparable, the court found that there was no substantial similarity and no copyright infringement.

Although the games shared fifteen characteristics, the court determined that these were stereotypical of karate, and thus not protected by copyright.[16] The judges explained that "the visual depiction of karate matches is subject to the constraints inherent in the sport of karate itself," and many of the similar elements are "indispensable, or at least standard" to creating a karate game.[17]

Effects[]

Main article: Capcom U.S.A. Inc. v. Data East Corp.

The case was among several early rulings that applied the scènes à faire principle to video games, and became cited in further cases.[18] In the 1994 case Capcom U.S.A. Inc. v. Data East Corp., Data East found itself defending a claim that their game Fighter's History had violated the copyright in Street Fighter II.[19] Data East responded to Capcom that any similarities between the games were inherent to the fighting game genre and not protected by copyright, and moreover, Karate Champ was the first game in the genre.[20] Data East successfully defended the claim, using similar reasoning that had been used against them in Data East v Epyx.[19] As a result, most lawsuits about alleged video game clones were settled between the mid-1990s through to the mid-2000s.[18]

The Data East v Epyx case was also cited in Apple Computer, Inc. v. Microsoft Corporation, where the court said that unprotected expression could not support any finding of infringement.[21] Even outside the software industry, Pasillas v. McDonald's Corporation cited the legal principles from Data East v Epyx to explain that infringement cannot be proved through similarity between standard elements.[22]

Legacy[]

This case is remembered for building on the legal reasoning in Atari v. Amusement World, where the courts first applied the scènes à faire principle to video games.[7][18] It's also an early example of the courts dissecting the similarities between two video games, before determining if the similar elements are protected by copyright.[23]

Contrasting it with later rulings, intellectual property attorney Jack Schecter noted it among early cases where "courts seemed to have a difficult time conceiving of copyright protection that would extend beyond the strict confines of the art and sound assets included in a game."[24] Swatee Mehta noted that the intrinsic-extrinsic test used by the Ninth Circuit almost always led to a finding of non-infringement.[25] John Quagliariello similarly argued that this was one of several cases that made it near impossible for a video game copyright holder to win a lawsuit against a potential infringer, especially considering the cost of a lawsuit versus the risk of an unfavorable ruling.[18] Attorney Stephen C. McArthur mentioned it among several rulings that were permissive of clones, until that pattern changed in 2012.[7]

Legal scholars have determined that the permissive approach to video game clones shifted in 2012, with the rulings in Tetris Holding, LLC v. Xio Interactive, Inc. and Spry Fox, LLC v. Lolapps, Inc.[7][18][24] Courts have noted the increased graphical power of modern video game platforms, which opens up new possibilities for artistic expression compared to early cases such as Data East v. Epyx, when it was harder to express an idea in new ways.[5]

See also[]

References[]

  1. ^ a b c d Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988).
  2. ^ Casenotes (2003-10-15). Software and Internet Law. Wolters Kluwer. ISBN 978-0-7355-3679-1.
  3. ^ Wolf, Mark J. P. (2021-05-24). Encyclopedia of Video Games: The Culture, Technology, and Art of Gaming, 2nd Edition [3 volumes]. ABC-CLIO. ISBN 978-1-4408-7020-0.
  4. ^ "The Making Of International Karate and IK+". Retro Gamer. April 30, 2014. Retrieved 2022-02-06.
  5. ^ a b c Dean, Drew S. (2016). "Hitting Reset: Devising a New Video Game Copyright Regime" (PDF). University of Pennsylvania Law Review. 164: 1239–1280.
  6. ^ Dean, Drew S. (2016). "Hitting Reset: Devising a New Video Game Copyright Regime" (PDF). University of Pennsylvania Law Review. 164: 1239–1280.
  7. ^ a b c d "Clone Wars: The Five Most Important Cases Every Game Developer Should Know". Game Developer. February 27, 2013. Archived from the original on 2022-01-30. Retrieved November 18, 2021.
  8. ^ Hemnes, Thomas M. S. (1982). "The Adaptation of Copyright Law to Video Games". University of Pennsylvania Law Review. 131:171 (1): 171–233. doi:10.2307/3311832. JSTOR 3311832.
  9. ^ Graham, Lawrence D. (1999). Legal Battles that Shaped the Computer Industry. Greenwood Publishing Group. ISBN 978-1-56720-178-9.
  10. ^ Wolf, Mark J. P. (2021-05-24). Encyclopedia of Video Games: The Culture, Technology, and Art of Gaming, 2nd Edition [3 volumes]. ABC-CLIO. pp. 240–241. ISBN 978-1-4408-7020-0.
  11. ^ Sid & Marty Krofft Television Products, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977).
  12. ^ Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987).
  13. ^ Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971).
  14. ^ McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).
  15. ^ Krofft, 562 F.2d at 1164.
  16. ^ Eyman, Douglas; Davis, Andréa D. (2016-04-06). Play/Write: Digital Rhetoric, Writing Games (in Arabic). Parlor Press LLC. ISBN 978-1-60235-734-1.
  17. ^ Mullin, Joe (2016-12-14). "Arista beats Cisco's $335M copyright claim with an unusual defense". Ars Technica. Retrieved 2022-02-06.
  18. ^ a b c d e Quagliariello, John (2019). "Applying Copyright Law to Videogames: Litigation Strategies for Lawyers" (PDF). Harvard Journal of Sports and Entertainment Law. 10: 263.
  19. ^ a b "Clone Wars: The Five Most Important Cases Every Game Developer Should Know". www.gamasutra.com. 27 February 2013. Archived from the original on 2022-01-30. Retrieved 2021-02-28.
  20. ^ "Capcom sues Data East over Street Fighter II". Play Meter. 20 (1): 16. January 1994.
  21. ^ Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).
  22. ^ Pasillas v. McDonald's Corporation, 927 F.2d 440 (9th Cir. 1991).
  23. ^ Bierman, Ellen (1992-01-01). "It Walks Like a Duck, Talks Like a Duck, . . . But Is It a Duck? Making Sense of Substantial Similarity Law as It Applies to User Interfaces". Seattle University Law Review. 16 (1): 319. ISSN 1078-1927.
  24. ^ a b Schecter, Jack (December 21, 2012). "The legalities of the clone wars: Who will come out on top in EA vs Zynga?". pocketgamer.biz. Retrieved 2022-02-06.
  25. ^ Mehta, Swatee (2000). "I. Intellectual Property: A. Copyright: 3. Derivative Works: a) Substantial Similarity Test: Tiffany Design, Inc. v. Reno-Tahoe Specialty, Inc" (PDF). Berkeley Technology Law Journal Annual Review of Law and Technology. 15 Berkeley Tech. L.J. 49.

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