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IP/Entertainment Case Law Updates

Tetris Holding, LLC v. Xio Interactive, Inc.

District court grants summary judgment in favor of plaintiffs and denies summary judgment to defendant on copyright infringement claim, finding as a matter of law that defendant did not merely copy rules and functionality of video game Tetris, but copied game’s entire “look and feel” and that elements of defendant’s game Mino were substantially similar to protectable elements of plaintiff’s game.

Plaintiffs Tetris Holdings, LLC, and Tetris Company, LLC, owner and sublicensor of the copyrights to the visual expressions of the immensely popular video game Tetris, brought suit against defendant Xio Interactive, Inc., creator of the video game Mino, asserting federal copyright and trade dress claims, as well as various state law claims. On cross-motions for summary judgment on the federal claims, the court granted plaintiffs’ motion and denied defendants’ motion, holding that plaintiffs were entitled to copyright protection for the artistic aspects of the game – the original way that they chose to express the game rules or game play, but not the mechanical or utilitarian features necessary for the functioning of the game. The court concluded that defendant had copied the protectible elements of expression from the Tetris game, so much so that the two games were nearly identical and all but indistinguishable to the common observer.

The facts underlying the summary judgment motions were undisputed. Since its development in the mid-1980s Tetris, which repeatedly has been named “one of the greatest video games of all time,” has been adapted for the multitude of gaming platforms available to consumers, including the Apple iPhone, and as a result of its immense popularity, has sold more 200 million copies of the game worldwide. The game consists of a horizontal playing field into which game pieces known as tetriminos, colored interlocking pieces made up of four blocks or squares, fall from above. The object of the game is to rotate the tetriminos, which come in seven different shapes, mid-air so that they precisely fit into the available spaces on the field’s rising floor, which is made up of the pieces that have previously landed at the bottom of the screen. Creating a complete horizontal row results not only in points for the player, but the disappearance of the row, making room for more pieces to fit. Fitting the pieces into the appropriate spaces becomes increasingly difficult as the game progresses.

Xio’s owner Desiree Golden developed Mino as a multi-player game application for the iPhone, and admitted that she deliberately copied the concept of Tetris to create Xio’s “own version” and to take advantage of the original game’s popularity. Golden asserted, however, that she was scrupulous in only copying the non-protectible rules and functionality of the game, not any protected “expressive” elements, and therefore Xio could not be held liable, as a matter of law, for copyright infringement.

Plaintiffs’ asserted that Xio had copied 14 protected elements of Tetris, including the composition of the tetriminos (four square blocks, each block visually delineated, attached together to form seven different shapes) and their vivid coloring, the way the pieces fall from top to bottom, the way they appear to rotate, and the way they change when they enter “lock-down” mode at the bottom of the screen, as well as the size, shape and depiction of the playing field on the screen.

Noting that Tetris Holding undisputedly owned the applicable copyrights in the game and that Xio admitted to deliberately copying Tetris in order to design Mino, the court determined that the dispositive issue on summary judgment was whether Xio had copied original (and therefore protected) elements of Tetris, or whether, as Xio claimed, the elements it copied were not original expression, because they were part of the game itself – the rules, function, and expression essential to the game play – and therefore not protected.

At the outset, the court discussed copyright in the context of computer programs, noting that federal copyright protection only extends to the particular, original expression of an idea – not the idea itself. The court reviewed the two different approaches used by the circuit courts to separate unprotectible ideas from protectible expression in the context of computer software, and ultimately decided that the approaches were not dissimilar in their application, and that, “no matter how one expresses the test, the task is clear: because copyright only protects original expression, I must delineate between the copyrightable expression in Tetris and the unprotected elements of the program, then evaluate whether there is substantial similarity between such expression and [d]efendant’s Mino game. The starting point in this analysis must be to understand the ideas and concepts of Tetris itself.”

“In the context of games – including video games – copyright protection extends only to the artistic aspects, but not the mechanical or utilitarian features, of a protected work.” Further, under the doctrines of merger and scènes à faire, the court noted that elements of an image that flow naturally and necessarily from the choice of a given concept are not “original” and are not protectible. Since Xio did not dispute that it actually copied the Tetris game, the dispositive issue, according to the court, was whether, as a matter of law, the “idea” of the game of Tetris – including how it functioned – could be separated from its component parts.

Xio argued that not only is the idea of Tetris and the rules of the game not protectible, but neither are the “functional aspects” of the game or any expressive elements related to the game’s function or play. Defendant also argued that doctrines of merger and scènes à faire require that expression inseparable from either game rules or game function are also not protectible.

The court disagreed, finding that Xio defined function too broadly. “Xio is correct that one cannot protect some functional aspect of a work by copyright as one would with a patent. But this principle does not mean, and cannot mean, that any and all expression related to a game rule or game function is unprotectible. Such an exception to copyright would likely swallow any protection one could possibly have; almost all expressive elements of a game are related in some way to the rules and functions of game play. Tetris Holding is as entitled to copyright protection for the way in which it chooses to express game rules or game play as one would be to the way in which one chooses to express an idea.”

The “wholesale copying” of Tetris was troubling to the court, which found that the Tetris design, movement, playing field dimensions, display of “garbage lines,” appearance of “ghost” pieces, color changes and automatic fill-in of the game board at the end of the game (all of which were copied by Xio) were aesthetic choices, and were protected, original expressions of an idea. While the idea of a game that required one to rotate figures into a field was not protectible, the design of the component parts was. The court found that the overall look and feel of the games were nearly identical and that any differences between the two were “slight and insignificant.” The court concluded: “There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying. While there might not have actually been “literal copying” inasmuch as Xio did not copy the source code and exact images from Tetris, Xio does not dispute that it copied almost all of visual look of Tetris.”

The court found that that the merger doctrine was inapplicable because Xio could have designed the game in any number of ways for it to function. Even Xio’s own expert admitted that there were an “almost unlimited number of ways” to design a puzzle video game. The style, design, shape and movement of the puzzle pieces were not inextricably connected to the ideas, rules and functioning of the game and therefore wereprotectible elements. Furthermore, the doctrine of scènes à faire didn’t apply in this case because the game was “unique” and did not require stock imagery for it to work. Xio also raised a fair use defense, which the court summarily denied because Xio infringed a substantial amount of the game.

The court also granted summary judgment in favor of plaintiffs on their claim that Xio infringed the Tetris trade dress. Xio had argued that the color and style of the game pieces were not protectible trade dress because they were part of the required function of the game, but the court disagreed, stating that they were “arbitrary flourishes” unrelated to how the game worked. The court also rejected defendant’s argument that the trade dress claims were preempted, finding that that plaintiffs were not merely restating their copyright claims as Lanham Act claims but were attempting to address the issue of consumer confusion regarding the packaging of the Mino game.