Incredible Technologies v. Virtual Technologies

• Decision Date: 15 March 2005
• Docket Number: No. 03-3785.,03-3785.
• Citation: 400 F.3d 1007
• Parties: INCREDIBLE TECHNOLOGIES, INC., Plaintiff-Appellant, v. VIRTUAL TECHNOLOGIES, INC. d/b/a Global VR, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 1007

400 F.3d 1007

INCREDIBLE TECHNOLOGIES, INC., Plaintiff-Appellant, v. VIRTUAL TECHNOLOGIES, INC. d/b/a Global VR, Defendant-Appellee.

No. 03-3785.

United States Court of Appeals, Seventh Circuit.

Argued September 13, 2004.

Decided March 15, 2005.

COPYRIGHT MATERIAL OMITTED

Robert J. Schneider (argued), Chapman & Cutler, Chicago, IL, for Plaintiff-Appellant.

Bruce P. Golden, Golden & Associates, Chicago, IL, Mark D. Flanagan (argued), Wilson, Sonsini, Goodrich & Rosati, Palo Alto, CA, for Defendant-Appellee.

Before BAUER, RIPPLE, and EVANS, Circuit Judges.

TERENCE T. EVANS, Circuit Judge.

As anyone who plays it knows, golf can be a very addicting game. And when real golfers want to tee-it-up, they head for their favorite course, which might be a gem like Brown Deer in Milwaukee, a public course that nevertheless plays host to an annual PGA Tour event every July. What most golfers do not do when they want to play 18 is head for a tavern. Also, most people are quite familiar with Tiger Woods. But who knows Jeff Harlow of Florissant, Missouri? This case is about "golfers" who prefer taverns to fairways and aspire to be more like Harlow than Tiger. Our case concerns video golf.

Golden Tee,¹ made by Incredible Technologies, Inc. (IT), is an incredibly successful video golf game, one of the most successful coin-operated games of all time, beating all kinds of classic games like PAC-MAN and Space Invaders. Forty thousand Golden Tee games (in a dedicated cabinet) were sold between 1995 and August 2003. The game can be found in taverns all over America and in other countries as well. IT spends millions on advertising, and the game generates huge profits in return.

Golden Tee is played by thousands, and the Harlow chap we mentioned, according to a November article in the St. Louis Post-Dispatch, just won the 3rd Annual Golden Tee World Championship in Orlando, Florida. Harlow pocketed $15,000 for the effort (not enough though, the paper reports, for him to give up his day job as a baker at a bagel factory). With money galore tied into the Golden Tee game, the people at IT, understandably, were not happy when PGA Tour(R) Golf, made by Virtual Technologies, Inc. (d/b/a Global VR), appeared on the tavern scene with a competing game. That's why we have before us IT's appeal from the denial of a preliminary injunction in its copyright/trade dress case against Global VR.

IT has been manufacturing the Golden Tee game since 1989 and has several copyrights on various versions of the game. Involved in this appeal are copyrights on the video game imagery presented on the video display screen and the instructional guide presented on the control panel. In addition, there is a claim that the PGA game's control panel infringes the Golden Tee's trade dress.

Golden Tee employs a software program which projects images and sounds through a video screen and speakers in a kiosk-like display cabinet. The images are of players and golf courses. In front of the screen is a control panel with a "trackball" in the center, which operates the game. The "trackball" is a plastic white ball embedded on the game board. Approximately 1/4 of the ball is visible to the player. The rest of the ball is underneath the game board.

To play the game the trackball is rolled back for the golfer-player's back swing and pushed forward to complete the swing. As in real golf, the virtual golfer must choose the club to be used and, for an accurate shot, consider things like wind and hazards (indicated on the display screen) on the course.

Aware of Golden Tee's popularity, Global VR determined to create a game that was similar enough to Golden Tee so that players of that game could switch to its new game with little difficulty. It obtained a Golden Tee game and delivered it to NuvoStudios (Nuvo), the firm hired to develop the new game. NuvoStudios was instructed to design a game that dropped into a Golden Tee box to work with its controls, which should correspond as closely as possible to Golden Tee, so that a Golden Tee player could play the new game with no appreciable learning curve.

Nuvo worked from the existing software of a computer golf game — Tiger Woods Golf — and made modifications to convert from a game, played on personal computers and operated with a mouse, to an arcade game, operated as is Golden Tee, with a trackball and buttons. Nuvo essentially copied, with some stylistic changes, the layout of buttons and instructions found on the Golden Tee control panel. Global VR terminated Nuvo's services before the work on the new game was completed, but it hired key Nuvo personnel to finish the job. The goal of making it easy for Golden Tee players to play the new game remained.

The completed new game, PGA Tour Golf, is very similar to the Golden Tee game. The size and shape of PGA Tour Golf's control panel, and the placement of its trackball and buttons, are nearly identical to those of Golden Tee. The "shot shaping" choices are depicted in a similar way and in the same sequence. Although the software on the two games is dissimilar, both allow a player to simulate a straight shot, a fade, a slice, a draw, a hook, etc. by the direction in which the trackball is rolled back and pushed forward. Although other games, such as Birdie King and Sega's Virtua Golf have used trackballs, Golden Tee claims to be the first to use both a backward and forward movement.

There are also significant differences between the two games. Golden Tee is played on make-believe courses and the player is given a generic title, like "Golfer 1." The PGA game, on the other hand, uses depictions of real courses, such as Pebble Beach and TPC at Sawgrass, and it permits a player to adopt the identity of certain professional golfers — Colin Montgomerie and Vijay Singh, to name a few. The cabinets are somewhat different, within the realm of what is possible in arcade game cabinets, and the games use different color schemes.

IT filed this lawsuit in February 2003. Its request for a temporary restraining order was denied, and after expedited discovery, a 6-day hearing was held on its request for a preliminary injunction. In denying the injunction, the district court found that Global VR had access to and copied IT's original instruction guide and the video display expressions from Golden Tee. But the court said that IT had not shown a likelihood of success on the merits of this lawsuit, in part because (1) IT's expressions on its control panel are not dictated by creativity, but rather are simple explanations of the trackball system; at best, they are entitled to protection only from virtually identical copying; (2) the video displays contain many common aspects of the game of golf; and (3) IT's trade dress is functional because something similar is essential to the use and play of the video game.

To obtain a preliminary injunction, a plaintiff must demonstrate a likelihood that it will prevail on the merits of the lawsuit, that there is no adequate remedy at law, and that it will suffer irreparable harm without injunctive relief. If these requirements are met, the court must then balance the degree of irreparable harm to the plaintiff against the harm that the defendant will suffer if the injunction is granted. Publications Int'l, Ltd. v. Meredith Corp., 88 F.3d 473 (7th Cir.1996). On appeal, the decision granting or denying a preliminary injunction is reviewed for an abuse of discretion. A court has abused its discretion when it "commits a clear error of fact or an error of law." Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 13 (7th Cir.1992). The district court's weighing of the factors is entitled to great deference. We do not substitute our judgment for that of the district court.

To establish copyright infringement, a plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Copying may be inferred where the "defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work." Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir.1982); Warner Bros., Inc. v. American Broad. Cos., 654 F.2d 204 (2nd Cir.1981). The test for substantial similarity may itself be expressed in two parts: whether the defendant copied from the plaintiff's work and whether the "copying, if proven, went so far as to constitute an improper appropriation." Atari, 672 F.2d at 614. Because it is pretty clear here that Global VR set out to copy the Golden Tee game, the second question comes closer to the issue we must face, and it leads us to the "ordinary observer" test: "whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value." Atari, 672 F.2d at 614. It seems somehow fitting that the Atari case, involving the insatiable little yellow circle PAC-MAN, is a leading case guiding us through the maze of copyright law as applied to video games.

In these games, an ordinary observer, seeing a golf game on the video display and a trackball to operate the game, might easily conclude that the games are so similar that the Global VR game must infringe the Golden Tee game. But because ideas — as opposed to their expression — are not eligible for copyright protection, see Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), protection does not extend to the game itself. Atari, 672 F.2d at 615; Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2nd Cir.1945). For other reasons, which we will soon discuss, protection does not extend to the trackball. It is clear, then, that the concept of the ordinary observer must be viewed with caution in this case, and we must...