Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., C-90-1440 FMS
| Decision Date | 12 July 1991 |
| Docket Number | No. C-90-1440 FMS,C-90-1586 FMS.,C-90-1440 FMS |
| Citation | 780 F. Supp. 1283 |
| Court | U.S. District Court — Northern District of California |
| Parties | LEWIS GALOOB TOYS, INC., Plaintiff, v. NINTENDO OF AMERICA, INC., Defendant. and Related and Consolidated Actions. |
COPYRIGHT MATERIAL OMITTED
These two consolidated suits test the scope of copyright protection for audio-visual games (video games). Nintendo of America, Inc. ("Nintendo") markets and sells home video games hardware systems and compatible video game cartridges. The audio-visual portions of the game cartridges in suit are protected by registered copyrights held by Nintendo.
Lewis Galoob Toys, Inc. ("Galoob") markets and sells toy products. Galoob has a license to market a video game accessory known as the Game Genie Video Game Enhancer ("Game Genie"), which attaches to a video game cartridge and allows the player to temporarily alter certain attributes of the video game. It is sold for personal consumer use only, not for video game arcades. The Game Genie does not create a separate copy of the original video game, does not make permanent changes to the original game work, and can only be used when attached to the original game.
Nintendo contends that the Game Genie creates a derivative work as defined in 17 U.S.C. § 101, and that Galoob is therefore either a direct or contributory infringer of Nintendo's copyrights in the original video games in suit.
For the reasons set forth below, the Court finds to the contrary and vacates the pending preliminary injunction forthwith.
This case has included one and one-half years of litigation, a two-week trial, and extensive briefing of all issues, both pre- and post-trial. After careful consideration of the evidence and briefing submitted by both sides, and for the reasons set forth below, this Court rules as follows:
1) Use of the Game Genie by consumers to temporarily alter copyrighted video games for their own enjoyment does not create a derivative work under 17 U.S.C. § 101. Because the consumers are not direct infringers, Galoob is not a contributory infringer.
2) In the alternative, even if the Game Genie did create a derivative product, the doctrine of "fair use" enables consumers to use the Game Genie for their personal enjoyment, 17 U.S.C. § 107, and therefore allows Galoob to sell it.
3) Galoob's use of copyrighted video games for purposes of testing or marketing the Game Genie does not violate any of Nintendo's rights under the Copyright Act.
4) On this record, injunctive relief is not appropriate for either side.
On May 17, 1990, Galoob filed a complaint for declaratory relief against Nintendo, seeking a declaratory judgment that the Game Genie does not violate or contribute to the violation of any of Nintendo's video game copyrights. Galoob also sought an injunction prohibiting Nintendo from interfering with the marketing of the Game Genie, and permanently enjoining Nintendo from modifying the Nintendo Entertainment System ("NES") in order to make it incompatible with the Game Genie.
Nintendo responded by filing its own complaint for an injunction prohibiting Galoob from all facets of marketing the Game Genie, on the grounds that it contributorily infringed Nintendo's registered copyrights in various video games. Nintendo also claimed violation of the trademark laws.
On July 2, 1990, this Court (per Schnacke, J.) issued a preliminary injunction in favor of Nintendo; the injunction was affirmed by the United States Court of Appeals for the Ninth Circuit on February 27, 1991.
Both actions were transferred on July 6, 1990 to the undersigned, who consolidated them and held a bench trial on the sole issue of whether or not the Game Genie infringes any of Nintendo's copyrights. Nintendo claims that Galoob has wilfully and deliberately infringed, both directly and contributorily, Nintendo's copyrights in its audio-visual game cartridges. Galoob seeks a declaration that use of the Game Genie by individuals in their own homes does not constitute infringement of Nintendo's copyrights, and that Galoob's marketing, distribution, and sale of the Game Genie is therefore not contributory infringement of those copyrights. In addition, Galoob seeks a declaration that its own use of the Game Genie for testing and marketing purposes does not constitute direct infringement.
Galoob is a corporation organized and existing under the laws of Delaware, with its principal place of business in South San Francisco, California. Nintendo is a Washington state corporation, with its principal place of business at Redmond, Washington, and is a wholly owned subsidiary of Nintendo Company, Ltd., of Japan. Galoob and Nintendo are the only two parties to these consolidated actions. No individual consumers of the Game Genie have been named as defendants, although it is their use of the Game Genie that allegedly constitutes the primary infringing activity.
This civil action arises under the Copyright Act, as amended 17 U.S.C. § 101 et seq.; the Lanham Act, 15 U.S.C. § 1051 et seq.; and California law. This Court has subject matter jurisdiction pursuant to 17 U.S.C. § 501; 15 U.S.C. § 1121; and 28 U.S.C. § 1331, 1332, and 1338.
Venue is proper in this district pursuant to 28 U.S.C. § 1391 and 1400(a).
This suit involves the interplay of three products, the Nintendo Entertainment System, Nintendo copyrighted video games and the Game Genie.
Nintendo markets and sells video game hardware systems. The system is known as the Nintendo Entertainment System ("NES") and is designed for playing video games in the home. Nintendo has sold in excess of 25,000,000 of these systems in the United States. Nintendo also markets and sells video game cartridges, and licenses third parties to market and sell video games which are compatible with Nintendo's hardware. The video games are displayed on a home television.
The NES includes a microprocessor-based console, the "control deck," which houses two processing units: the central processing unit ("CPU"), which controls the overall operation of the system, and the picture processing unit ("PPU"), which generates the pictures for display on the television. The control deck is connected to the television.
The video games which may be played on the NES control deck are both audio-visual works and computer programs. The audio-visual works and game programs are permanently stored on ROMs (i.e., Read Only Memory chips) contained in game cartridges.
Nintendo owns valid and subsisting registered copyrights in the audio-visual programs contained in many of its video games, including those in suit.
Each game typically has a theme and a goal. For example, a game might consist of the main character's attempt to obtain a certain level of points before he is defeated by hostile forces.1 In an attempt to reach that point goal, he has a certain number of chances ("lives") in which to must overcome obstacles, battle adversaries, and travel through various levels ("worlds"). Each time he overcomes an obstacle or reaches a new world, additional points are added to the score. On the other hand, each time he is defeated by a villain and/or obstacle, he loses a chance or life. If he loses all of his lives before obtaining a certain number of points, the game ends, and he must start again.
More than 500 different video games have been produced and offered for sale for use with the NES Control Deck. In addition to those owned and copyrighted directly by Nintendo, hundreds of games have been produced by some 71 other companies. Sixty-three of the non-Nintendo producers of video games have licenses from Nintendo, and an additional eight do not.
Players can buy various devices ("interactive devices") which connect to the NES control deck and allow the player to influence various aspects of the game being played. Changes include speeding up certain aspects of the game, skipping one or more levels of play, etc. Interactive devices which may be used with the NES control deck include devices marketed as the "Control Pad," "NES Advantage," "Power Glove," "NES Max," and "Turbo Blaster." Light guns may also be used by players for playing certain games. Nintendo markets and sells, or licenses others to sell, such interactive devices for use with the NES control deck.
The NES video game cartridges contain two separate memories: one memory (the "program memory") is connected to the CPU when the game cartridge is physically inserted into the control deck; the other memory (the "character memory") is connected to the PPU when the game cartridge is physically inserted into the control deck.
In order to play an NES video game, the player inserts a game cartridge into the control deck. The player begins game play and interacts with the video game by manipulating buttons on the standard controller, which is sold with the NES and which attaches to the control deck.
The game's action is performed on the television screen. Players use the controller (which contains a four-way control pad, for directional control, and four other buttons labeled "start," "select," "A" and "B") to guide the actions of "their" character in an attempt to reach the game's goal, as described earlier.
The copyrights allegedly infringed in this suit are for the audio-visual portion of the video game cartridges manufactured by Nintendo. The games are only compatible for play on the NES; they have a retail list price of approximately $40 to $50 each.
Galoob is in the business of marketing and selling toy products in the United States. Galoob obtained a license to market the Game Genie from Codemasters Software Co., Ltd., a United Kingdom corporation, and Camerica, Ltd., a Canadian corporation. The Game Genie,...
To continue reading
Request your trial
-
Sega Enterprises Ltd. v. Accolade, Inc.
...Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965, 971 (9th Cir.1992, as amended August 5, 1992) (affirming 780 F.Supp. 1283, 1293 (N.D.Cal.1991). The decision in Association of Am. Medical Colleges v. Cuomo, 928 F.2d 519 (2d Cir.1991), cert. denied, --- U.S. ----, 112 S.Ct......
-
In re Conagra Foods, Inc.
...in methodology normally affect the weight to be accorded the survey and not its admissibility”); Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 780 F.Supp. 1283, 1296 (N.D.Cal.1991) (holding that the alleged under-inclusiveness of a survey in a copyright infringement action affected ......
-
Advanced Computer Services v. MAI SYSTEMS
...that the transfer of a program into RAM does not constitute a copy is not directly on point. Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 780 F.Supp. 1283, 1289 (N.D.Cal.1991), aff'd 964 F.2d 965 (9th Cir.1992); cert. denied ___ U.S. ___, 113 S.Ct. 1582, 123 L.Ed.2d 149 (1993), hel......
-
Peter Mayer Publishers Inc. v. Shilovskaya
...the location of page breaks does not replicate any original expression, it is not actionable.”); Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 780 F.Supp. 1283, 1291–92 (N.D.Cal.1991) (technology that allows a user of a copyrighted video game to speed through the game or modify the acti......
-
Computer software derivative works: the calm before the storm.
...Protecting the 'Look and Feel' of Computer Software, 1 HIGH TECH. L.J. 411 (1986); Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 780 F. Supp. 1283 (N.D. Cal. (34.) Howard Root, Copyright Infringement of Computer Programs: A Modification of the Substantial Similarity Test, 68 MINN L. REV......
-
Mod Chips and Homebrew: a Recipe for Their Continued Use in the Wake of Sony v. Divineo
...decision contravenes the Constitution . . . . Defendants' statutory fair use argument therefore is entirely without merit."). 106 780 F. Supp. 1283 (N.D. Cal. 107 Id. 108 Id. at 1286. 109 Id. at 1289. 110 Id. at 1285. 111 Id. at 1291. 112 Id. 113 Id. at 1292. 114 Id. at 1298. 115 Id. at 129......