Davinci Editrice S.R.L. v. Ziko Games, LLC
| Decision Date | 08 August 2014 |
| Docket Number | CIVIL ACTION NO. H-13-3415 |
| Parties | DaVINCI EDITRICE S.R.L., Plaintiff, v. ZIKO GAMES, LLC, et al., Defendants. |
| Court | U.S. District Court — Southern District of Texas |
Human creativity takes many forms. Devising games for people to play, including card games, is one of them. Card games have been with us for centuries.1 Despite the recent seeming dominance of electronic games with virtually present players, games using actual cards and physically present players endure, and new games continue to appear. As with many forms of creativity, new games lead to disputes over who is entitled to exploit them. This case is one of those disputes.
The plaintiff, DaVinci Editrice S.R.L. ("DaVinci"), alleges that the defendants, ZiKo Games, LLC ("ZiKo") and Yoka Games ("Yoka"), infringed the copyright DaVinci holds in a card game called Bang!. The parties ask this judge—not known for expertise or experience in playing cards—to decide whether the plaintiff's copyright in its role-playing game, with characters and themes from "spaghetti Westerns," is infringed by the defendants' role-playing card game, which uses essentially the same rules, methods of play, and roles but substitutes characters and themes from ancient China. DaVinci sued Yoka and its United States distributor, ZiKo, alleging violations of the Copyright Act of 1976 and of Texas unfair competition law. DaVinci alleges that the defendants' game, Legends of the Three Kingdoms ("LOTK"), improperly copied protected features of its game, Bang!.
The defendants have moved to dismiss DaVinci's complaint for failure to state a claim on which relief can be granted. (Docket Entry No. 25). DaVinci has responded, and Yoka and ZiKo have replied. (Docket Entry Nos. 30, 34). DaVinci has moved for a preliminary injunction under Federal Rule of Civil Procedure 65 and 17 U.S.C § 502, enjoining Yoka and ZiKo's sale of their allegedly infringing game, LOTK. (Docket Entry No. 2). Yoka and ZiKo have responded, and DaVinci has replied. (Docket Entry Nos. 26, 29).
Based on the pleadings, the motions and responses, the parties' submissions, and the applicable law, this court grants in part and denies in part Yoka and ZiKo's motion to dismiss and denies DaVinci's motion for preliminary injunction. A status and scheduling conference on the remaining claims is set for September 5, 2014, at 5:00 p.m. in Courtroom 11-B.
The reasons for these rulings are explained in detail below.
DaVinci is an Italian company formed in 2001. (Complaint, Docket Entry No. 1, ¶¶ 2, 11). On July 10, 2002, DaVinci published a role-playing card game featuring Wild-West themes, calledBang!. (Id. ¶ 12, 13). The game achieved praise from critics and commercial success. It won the Origins Award for "Best Traditional Card Game of 2003" and "Best Graphic Design of a Card Game or Expansion of 2003." (Id. ¶ 14). DaVinci has sold over 670,000 copies of Bang!, including an estimated 176,000 copies in the United States. (Id. ¶ 19).
Describing the game in the form of an opinion overstates its complexities. Players in Bang! each take on a character identity within one of four roles: "Sheriff," "Deputy," "Outlaw," or "Renegade." Each role has a different objective in the game. The Sheriff tries to stay alive until the Outlaws and the Renegade are killed. The Deputies try to protect the Sheriff. The Outlaws' goal is to kill the Sheriff, though they can earn rewards for killing each other as well. The Renegade's goal is to be the last player alive. Each player draws a card that assigns a role. The Sheriff reveals his role at the outset; the other players keep their assigned roles secret. The number of players in each role depends on the number of people playing the game. (Id. ¶¶ 20-26).
Each player is also dealt a character card. The character cards have pictures and names based on familiar Wild-West figures, such as "Calamity Janet" and "Willy the Kid." Each character has an assigned set of capabilities and a maximum number of "life points." The back of each character card shows bullets to represent the life points. The maximum number of life points or bullets any player can have is five. Life points determine whether a player remains active as the game progresses. When one player uses a weapon card and "hits" another player, the attacked player loses a life point. When a player is out of life points, that player is eliminated from the game. To keep track of how many life points a player has remaining, each player uses an unselected character card turned face down, which causes the pictures of the bullets to be face-up. The player then moves his character card (which is face-up to show the character's identity) over the picture of the bullets sothat only the player's number of bullets shows. The number of bullets a player has left also determines how many cards the player may hold in his hand. For example, if a player has only two bullets remaining, he may only hold two cards in his hand. If he holds more than two cards in his hand, he must discard cards until he holds only two. (Id. ¶¶ 27-28, 30-31; Corbelli Decl., Docket Entry No. 3-1, ¶ 32).
Players sit around a table. The distance between players at the table impacts the game. (Compl. ¶ 32). Different weapons have different ranges at which they can be used to attack other players. (Id. ¶ 77). The Sheriff plays first. The game proceeds counterclockwise around the table, with each player drawing two cards, playing as many cards as desired, and discarding if that player finishes the turn with more cards than life points remaining. (Id. ¶ 42).
There are three types of playing, or action, cards. Brown-bordered action cards are played and immediately discarded. Blue-bordered "mount" cards are a type of action card that increases the distance between players for the purpose of launching or avoiding attack. A mount card is laid face up in front of the player and has lasting effect, which means that the player holding the card can take advantage of whatever characteristic the card grants for repeated turns. (Corbelli Decl. ¶¶ 37, 39). For example, playing the "Cavallo" ("Horse") card permanently increases the distance that other players need to hit the player holding the card. (Id. ¶ 40). Blue-bordered "weapon" cards are laid face up in front of the player and remain until replaced with another weapon card.2 (Compl. ¶ 43). The brown-bordered action cards include "Bang!" (which are played to reduce another player's bullets), "Mancato!" ("Missed!") (which is played in response to a "Bang!" card to avoidlosing a bullet), and "Birra" ("Beer") (which a player can use to avoid elimination). (Id. ¶¶ 40-41, 44, 50; Oleksiuk Decl., Docket Entry No. 25-3, ¶¶ 20-22). The brown-bordered cards fit the Italian Wild-West motif, with labels such as "Saloon," "Diligenza" ("Stagecoach"), "Wells Fargo," "Mistress," "Indiani!" ("Injuns!"), and "Duello" ("Duel"). Each card calls for a specific action the player must perform, such as discarding a Bang! card, revealing cards in a player's hand, or passing a card to another player. (Compl. ¶ 45; Oleksiuk Decl. ¶¶ 26, 29, 28, 31).
Blue-bordered mount cards also have western themes, including "Jail," "Dynamite," "Barrel," "Horse," and "Appaloosa." These cards increase or reduce the distance between the players, which in turn determines whether an attack with a given weapon will succeed. (Compl. ¶¶ 47-49). The weapon cards also evoke the Wild West, with Colt .45 as the default and others such as Remington, Schofield, Rev. Carabine, or Winchester. (Id. ¶¶ 34, 40).
The game ends when playing the action cards leads to either the Sheriff being killed, so that either the Renegade or the Outlaws win, or the Outlaws and the Renegade being killed, so that the Sheriff and his Deputies win. (Id. ¶ 56).
Bang! is now in its third edition and a fourth is about to issue. The first three are registered with the United States Copyright Office and DaVinci has submitted the fourth edition registration application, fee, and the material proposed for copyright to the Register of Copyrights. (Id. ¶ 17).3
Yoka, based in the People's Republic of China, sells the "ancient Chinese" themed role-playing card game Legend of the Three Kingdoms (LOTK). (Id. ¶¶ 4, 57). Yoka sells and distributes LOTK in the United States through its Texas-based distributor ZiKo. (Id. ¶ 59). Due to the relative recency of Yoka's entry into the U.S. market, there is no historical data available for U.S. sales of LOTK. (Docket Entries No. 3 at 22-23, 26 at 19).
The parties agree that Bang! and LOTK have nearly identical rules for playing the game. The setting, artwork, and written instructions are substantially different. LOTK is "re-set in ancient China instead of the wild-west." (Compl. ¶ 62). The "ancient Chinese" themed roles in LOTK (the Monarch, Minister, Rebel, and Turncoat) "fulfill the same role[s]" as the Sheriff, Deputy, Outlaw, and Renegade in Bang!. (Id. ¶ 63). "The winning conditions are the same" in both games. (Id. ¶ 64). "Only the Monarch's identity is known to the other players." (Id. ¶ 65). The procedure for distributing Ministers, Rebels, and Turncoats follows "the same manner as in Bang! based on the number of players." (Id. ¶ 66). In both games, "each player is dealt a character identity . . . which provides a specific ability and determines the number of life points for the player." (Id. ¶ 67). "As in [the Sheriff in] Bang!, the Monarch starts the game with one more life point than shown on his character card." (Id. ¶ 68.) Life points are displayed on cards in both games, id. ¶ 69, but instead of showing them as bullets, LOTK shows the life points as glowing, yin-yang shaped symbols. Both games show the life points on cards, but Bang! places them on the back of character cards, while LOTK has separate life-point cards. (Oleksiuk Decl. ¶...
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