| Tetris Holding, LLC v. Xio Interactive, Inc. | |
|---|---|
 | |
| Court | United States District Court for the District of New Jersey |
| Full case name | Tetris Holding, LLC and The Tetris Company v. Xio Interactive, Inc. |
| Decided | May 30, 2012 (2012-05-30) |
| Citation | 863 F.Supp.2d 394 (D.N.J. 2012) |
| Transcript | Opinion |
| Court membership | |
| Judge sitting | Freda L. Wolfson |
Tetris Holding, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394 (D.N.J. 2012), was a 2012 American legal case related tocopyright of video games, confirming that a game'slook and feel can be protected under copyright law. Tetris Holding is a company that holds the copyright to the originalTetris game from 1985 and licenses those rights to game developers. Xio Interactive is a game developer that releasedMino in 2009, a mobile game based on the gameplay ofTetris.Mino was downloaded millions of times, and Tetris Holding filed aDMCA notice and eventually a lawsuit against Xio forcopyright infringement.
The earliest video game case law had protected the designs inGalaxian andPac-Man. But later cases such asData East USA, Inc. v. Epyx, Inc. found that it is permissible to make avideo game clone with similar ideas and principles as another game, since copyright does not protect an idea, only the specific expression of that idea. A trial occurred in 2012, the first case in a long time to proceed to trial on this issue. The district court ruled for Tetris Holding, with Judge Wolfson applying theAbstraction-Filtration-Comparison test to determine if any infringement occurred. Although standard gameplay ideas are not copyrightable,Mino was still substantially similar toTetris in terms of its art style, and those elements are in fact protected by copyright. This case has since been applied in other copyright disputes to offer broader protection to the look and feel of video games.
In 1985,[1]Alexey Pajitnov created the puzzle gameTetris for theDorodnitsyn Computing Centre at theSoviet Academy of Sciences. Within a few yearsTetris became one of the most successful video games of all time.Henk Rogers was one of the key people who broughtTetris to the world by going to Moscow to negotiate for the rights. Rogers later befriended Pajitnov and helped the two acquire ownership of thecopyrights from a former Soviet agency.[2] By the early 2000s, Rogers and Pajitnov createdThe Tetris Company to control theTetrisintellectual property, and to license their rights to game developers who comply with certain standards.[3]
In 2009, Desiree Golden founded a game studio called Xio Interactive, and released a mobile game calledMino based on thegameplay ofTetris.[4] Xio had tried to license the rights toTetris from The Tetris Company, who refused. At that point Xio researched intellectual property law to see how to design a game similar toTetris that would not include any legally-protected elements.[5] The gameMino featured the same approach of using fallingtetromino blocks to form complete lines on a playfield and score points.[6]Mino also added new power-ups and game modes to the basic Tetris gameplay.[7] The game's marketing materials described it as a "Tetromino game" with "fast-paced, line-clearing features", and ended with a disclaimer: "Mino and Xio Interactive are not affiliated with Tetris™ or the Tetris Company™".[6]
While there have been manyTetris clones,Mino was eventually downloaded more than six million times. In August 2009, Tetris Holdings sentDMCA notices to Xio via Apple requesting that Apple takeMino down from the App Store. As part of the DMCA process, Xio filed a counter-notice and Apple re-instated the game to their store. Since Apple could not permanently remove the software without a legal order to do so, The Tetris Company filed a lawsuit against Xio Interactive in December 2009 in theUnited States District Court for the District of New Jersey.[6]
The earliest video game case law was an extension of other copyright cases in media and technology, offering copyright protection to original characters and specificsequences of code, but not to gameplay systems that are essential to create a game.[8] Copyrightjurisprudence developed a legal doctrine called theidea–expression distinction, which says that copyright does not protect a general idea, only one expression of an idea. Based on this, copyright does not protectscènes à faire, wherestock scenes andgeneric details are common among creative works. There is also themerger doctrine where some ideas may only have a limited number of ways of being expressed, and it would be legally unfair to protect expression if it effectively gives someone a monopoly on an idea.[9] For this reason, the Copyright Office advises that "copyright does not protect the idea for a game, its name or title, or the method or methods for playing it. Nor does copyright protect any idea, system, method, device, or trademark material involved in developing, merchandising, or playing a game. Once a game has been made public, nothing in copyright law prevents others from developing another game based on similar principles."[10]
These principles had been interpreted to protect the shapes of insect-like aliens inGalaxian, as well as protectingPac-Man from a copy calledK.C. Munchkin! in the 1982 caseAtari v. Philips. However, copyright has also been interpreted to allow video gameclones that closely matched gameplay concepts as long as their expression was original.[6] This has allowed the creation of games that share many similarities, includingWorld Karate Championship andKarate Champ in the late 1980s (decided inData East v. Epyx), orFighter's History andStreet Fighter II in the early 1990s (decided inCapcom v. Data East). This has been interpreted to mean that a game's expressive elements are copyrightable, with game mechanics and rules being freely copyable as ideas.[11] With the costs of filing a lawsuit being very high compared to the expected outcome, many video game copyright holders became hesitant to sue alleged clones. Most lawsuits about alleged clones were settled between the mid-1990s and the mid-2000s, andXio became a rare case that proceeded to trial on this issue.[12]
The case was assigned to JudgeFreda L. Wolfson. In defending the copyright claim, Xio founder Desiree Golden admitted to having copiedMino directly from the officialTetris app that was developed under license byElectronic Arts. Golden also admitted that they had sought a license toTetris from Tetris Holdings, who turned them down. Subsequently, Golden continued to developMino based on their understanding of video game case law, and believed that they could avoid infringing onTetris's expression by creating new audio and video assets.[13]
Judge Wolfson ruled early that, as previously established, the gameplay ofTetris was not copyrightable. The New Jersey district court was within theThird Circuit, which had prior case law fromWhelan v. Jaslow (797 F.2d 1222 (1987)) that used a purpose-based test to abstract software to determine if copyright was infringed. Wolfson also explored case law from other circuits, using theAbstraction-Filtration-Comparison test (AFC) for substantial similarity that had been first defined inNichols v. Universal Pictures Corp. (45 F.2d 119 (1930)) and then applied to computer software inComputer Associates International, Inc. v. Altai, Inc. (982 F.2d 693 (1992)). Two video game cases,Atari v. Philips (related toPac-Man and an alleged cloneK.C. Munchkin!) andMidway Manufacturing Co. v. Bandai-America, Inc. (related to handheld clones of Midway'sGalaxian) were found to have been ruled in the same manner as the AFC test, and Wolfson decided to apply them toMino. Wolfson explained that the court should compare the games "as they would appear to a layman [by] concentrating upon the gross features rather than an examination of minutiae", essentially comparing the games' respective look and feel; Wolfson further wrote "[i]f one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar".[9]
Wolfson discussed which aspects ofTetris were copyrightable as expressive elements, and which aspects are part of the general idea that cannot be protected by copyright. According to Wolfson, copyright cannot protect the idea of vertically falling blocks, or a player rotating those blocks to form lines and earn points, or a player losing the game if those blocks accumulate at the top of the screen. However, Wolfson determined that several aspects ofTetris qualify as unique expression that is protected by copyright. This includes the twenty-by-ten square game board, the display of randomized junk blocks at the start of the game, the display of a block's "shadow" where it will land, and the display of the next piece to fall. Wolfson also granted protection to the blocks changing in color when they land, and the game board filling up when the game is over.[7]
With the expressive elements ofTetris under copyright protection, copying one of these elements would not necessarily prove there has been copyright infringement, in isolation. However, Wolfson found thatMino co-opted all of these elements, which had no development purpose "other than to avoid the difficult task of developing its own take on a known idea".[7] In her analysis, Wolfson quickly concluded thatMino failed the AFC test as it looked so similar toTetris side-by-side. Further, Wolfson rejected the merger doctrine claim that Golden had proposed, since the details of the art style used in theTetris blocks had "are not part of the ideas, rules, or functions of the game nor are they essential or inseparable from the ideas, rules, or functions of the game." Wolfson further dismissed Golden'sscènes à faire arguments, ruling thatTetris was a unique game and thus had no established stock or common imagery that would be ineligible for protection.[9] In weighing these arguments, Wolfson noted thatMino copiedTetris much more closely than a game likeDr. Mario, a game that utilized the rules ofTetris to express a similar idea in a unique and non-infringing way.[14]
Wolfson also examined atMino's marketing materials to determine if they infringed thetrade dress ofTetris. WhereMino's marketing used the same color and style of the pieces fromTetris, these details were distinct expression and not merely functional ideas in the public domain. Wolfson determined that this created a likelihood that consumers would confuseMino withTetris, and held thatMino's trade dress was infringing.[9] Wolfson subsequently grantedsummary judgment in Tetris Holding's favor,[15] and entered an injunction that permanently prohibited Xio from distributing or marketing their game.[16]
As Golden did not appeal the case to the Third Circuit, the decision is only binding precedent on the District of New Jersey. However other courts have cited the ruling as relevant case law in evaluating other video game cloning cases and have relied upon it to establish a new approach to evaluating copyrights surrounding the look and feel of video games.[6][11] Legal scholars have included this decision in a wave of cases that have pushed the boundaries of video game copyright protection, along withElectronic Arts Inc. v. Zynga Inc. from 2012.[17] Also in 2012,Spry Fox, LLC v. Lolapps, Inc. was heard in theUnited States District Court for the Western District of Washington, brought bySpry Fox against developerLolapps over their gameYeti Town which Spry Fox claimed was a copyright-infringing clone ofTriple Town. At the initial hearings, the judge followed similar logic used in theXio case to order a preliminary injunction in favor of Spry Fox, asYeti Town had the same look-and-feel asTriple Town when simply viewed side by side. The case was subsequently settled out of court, with Spry Fox gaining ownership of theYeti Town property by the end of 2012.[11] Since these cases in 2012, legal scholars have found that courts have been more scrutinizing of look-and-feel in cases involving video game clones.[18]
Despite warnings that the case might lead to an explosion of intellectual property disputes andcopyright trolls, there has only been an incremental increase, with the courts applying this legal standard carefully to new cases.[14] Nicholas Lampros also noted that the facts of this case were highly specific, leading to "a narrow, fact-heavy legal standard, the outcome of which is difficult to predict outside of court". He added that this would put more onus on digital distribution platforms to manage potentially infringing products.[6] Tom Phillips has noted that the high cost and uncertainty of fact-specific litigation has led developers to hold each other accountable in the media, as an alternative to legal action.[19]
By contrasting this case with early video game rulings such asAtari v. Amusement World, it is possible to see the difference between a free idea versus copyrightable expression.[20] Scholars have argued that this case represents the game medium coming of age, evolving from rudimentary gameplay into sufficiently expressive systems that are worthy of copyright protection.[8] This coincides with the legal system having more experience and understanding of video games, where the judge who decided the case was 18 whenPong was released.[12] The ruling shows the courts using a "high level of understanding of video game mechanics for the first time".[14]
Susan Corbett argues that "theTetris decision supports the view that United States courts are becoming more accepting of the possibility of offering broader copyright protection for videogames".[21] Tomasz Grzegorczyk notes that this case shows courts are willing to recognize that the "graphic user interface of the game is subject to protection under copyright in the same manner as audiovisual works".[22] Noting that the copyright infringing game copied exact shapes and colors, Steven Conway and Jennifer deWinter argue that the decision would not impact other alleged game clones that are less similar.[23] Josh Davenport and Ross Dannenberg suggest that while a "standard game device" may be too generic to warrant copyright protection, that a specific selection or arrangement of those devices would quality as unique expression, and thus be copyrightable.[8] John Kuehl calls this case a potential killing blow toknock off video games that are near copies of the original.[14]
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