Midway Mfg. Co. v. Artic Intern., Inc.

• Decision Date: 10 March 1982
• Docket Number: No. 80 C 5863.,80 C 5863.
• Citation: 547 F. Supp. 999
• Parties: MIDWAY MFG. CO., Plaintiff, v. ARTIC INTERNATIONAL, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

547 F. Supp. 999

MIDWAY MFG. CO., Plaintiff, v. ARTIC INTERNATIONAL, INC., Defendant.

No. 80 C 5863.

United States District Court, N. D. Illinois, E. D.

March 10, 1982.

COPYRIGHT MATERIAL OMITTED

Donald L. Welsh, A. Sidney Katz, Fitch, Even, Tabian, Flannery & Welsh, Eric C. Cohen, Chicago, Ill., for plaintiff.

Richard G. Kinney, Chicago, Ill., for defendant.

MEMORANDUM OPINION AND ORDER

DECKER, District Judge.

Plaintiff, Midway Manufacturing, Inc. ("Midway"), brought this action against defendant, Artic International, Inc. ("Artic"), raising claims based on copyright infringement, trademark infringement, unfair competition at common law, violation of Section 43(a) of the Lanham Act of 1946, 15 U.S.C. § 1125(a), violation of the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121½, § 312, and misappropriation at common law. Pending are plaintiff's motion for preliminary injunction and defendant's motion for summary judgment on copyright issues. On September 28 and 29, 1981, the court held a hearing and took testimony concerning Midway's motion for preliminary injunction. All post-hearing briefs requested by the parties have now been filed, and, after consideration of them and the transcript of the hearing, the court hereby enters the following opinion and order.

Facts

The bulk of Midway's business consists of manufacturing and selling video games. Two of those games are the subjects of this lawsuit, Galaxian and Pac-Man. Allegedly, Artic is selling electronic devices that are intended to simulate Midway's Galaxian and Pac-Man games as well as devices that are designed to be inserted into Midway's Galaxian game to speed up and otherwise alter the play of the game (hereinafter "speed-up kits"). Those devices form the basis of this suit.

Both of Midway's games consist of an upright cabinet equipped with controls manipulated by the player while playing the game. The cabinet contains electronic circuitry in the form of a printed circuit board, which is electrically connected to a television picture tube. The tube serves as a screen on which the visual images of the game are displayed. Before the player begins a game by inserting a coin, Midway's Galaxian and Pac-Man games operate in an "attract" mode, which is stored in the electronic components of the game. The attract mode is fairly short and repeats itself constantly until the game is played. Its purpose is to summarize the game for the prospective player and to encourage him to play the game. When a coin is deposited and the start button depressed, the games shift into the "play" mode. In that mode, some of the symbols of the game appear to respond to the operation of the controls by the player.

In general, the video games manufactured by Midway and others, including Galaxian and Pac-Man, contain printed circuit boards "loaded" with the electronic components, which cause the images of the game to be seen on the television screen and which generate the sounds the game makes while it is being played. Those components include a microprocessor, which is a small computer processing unit, and computer chips called ROMs. The term ROM stands for "read only memory." It is a device which contains the instructions for a computer program in a permanently stored manner.

A printed circuit board used in Midway's Galaxian was shown to the court at the hearing. The board is two-tiered, consisting of a relatively large "mother board" which served as the base, and a smaller "piggyback memory board" mounted on the top of the mother board. The mother board contained a microprocessor and two "character ROMs," in which the computer programs necessary to create the shapes seen on the screen are stored. The Galaxian piggyback board is made up of five ROMs on its top side and two sets of twenty-four pins descending out from its bottom. The pins fit into sockets on the mother board and connect the ROMs on the piggyback board to the microprocessor on the mother board. The ROMs on the piggyback board (hereinafter "program ROMs") contain permanently imprinted computer programs which direct the microprocessor to cause the images created by the character ROMs to appear in certain locations on the television screen.

When the Galaxian game is in the attract mode, the repeating sequence of images summarizing the game for the player is generated by instructions from the program ROMs. After a coin is inserted and the game goes into the play mode, the images generated by the character ROMs move on the screen in a finite but enormous number of sequences. The sequences are determined by the program ROMs. In other words, when a player moves the controls on the cabinet, an electric signal is sent to the microprocessor, which scans the program ROMs for the predetermined sequence in which the images are to move on the screen. If a player were to move the controls of either a Pac-Man or Galaxian video game in exactly the same way in two different plays of the game, the images on the screen would all move in exactly the same way.

Midway's Pac-Man video game is made up of essentially identical electronic equipment. The principles of operation for the Pac-Man game are the same as those discussed above for the Galaxian game. Of course, the programs contained in the ROMs are considerably different.

The court observed both the Galaxian and Pac-Man games at the hearing. The elements of the Galaxian game appear on a background star pattern consisting of twinkling colored lights that roll from the top of the screen to the bottom. The game involves a missile-firing ship operated by the player, plus a formation of enemy alien ships. The player's ship moves horizontally along the bottom of the screen, in response to the manipulation of the controls by the player. The aliens are arranged in a convoy of five horizontal rows at the top of the screen. There are four denominations or ranks of aliens, with the highest ranking farthest from the player's ship. Each rank has a distinguishing color. The highest ranking alien is shaped like a rocket ship, but the other ranks are birdlike with flapping wings. During play, individual aliens unpredictably invert and swoop down to bomb the player's ship. Sometimes the alien attack involves miniformations of up to three aliens, including one of the highest ranking alien ships plus one or two alien escort ships. The object of the game is to destroy as many of the alien ships as possible while avoiding the destruction of your missile ship by the alien bombers. Whenever a ship is destroyed, a bright explosion appears on the screen, with appropriate sound effects. The player's score is measured by the number and rank of aliens destroyed.

The Pac-Man game centers on a maze which covers the entire screen. Using the controls, the player guides the Pac-Man character through the maze, scoring points by "munching up" dots in its path. Four ghost monsters, named Inky, Blinky, Pinky, and Clyde, chase after the Pac-Man, attempting to capture and destroy him. The Pac-Man can counterattack by eating one of four large power capsules in the maze. For a short time after eating the capsule, the Pac-Man can devour the monsters for an additional score. After all the dots in the maze are consumed, the screen is cleared, and the game continues for another round. Each round features a special fruit target in the maze, which if eaten earns bonus points.

Both the games in this suit were created by Namco Limited, a Japanese company. Galaxian was created in 1979, and was first published in Japan by Namco on September 15, 1979. Pac-Man was created in 1980 and was first published in Japan under the name "Puckman" on May 27, 1980. Midway became aware of the two games and concluded that both could be profitably marketed in the United States. On November 13, 1979, Midway and Namco entered into a know-how license agreement in which Namco granted Midway an exclusive license to make and sell the Galaxian game in the United States. On February 2, 1980, Namco assigned to Midway, effective as of the date of the license agreement, "the entire right, title and interest in common law and statutory copyright" in the Galaxian game. The Galaxian agreements have been amended a number of times, but they still remain in effect. As of August 16, 1980, Namco assigned the U. S. copyright rights in the "Pac-Man or Puckman" game to Midway. On November 4, 1980, Midway and Namco entered into a formal know-how license agreement in which Midway received the exclusive rights to market the Pac-Man game in the United States under that name. The Pac-Man agreements are likewise still in effect. Midway has made substantial royalty payments to Namco under both agreements.

Both the Pac-Man and Galaxian video games have been extremely successful products for Midway. Since February 1980, Midway has sold in excess of 40,000 Galaxian games, and since October 1980, over 80,000 Pac-Man games. Prior to 1978, the average production run on a video game was from 1500 to 2000 units.

Recognizing the value of these two games, Midway sought to register its copyright in the audiovisual portion of the games. Midway initially attempted to register the copyright in the Galaxian game in early March 1980. At that time, a Midway attorney met with examiners in the Copyright Office visual arts and performing arts groups to determine what would be the proper form of deposit to register the visual images of the game. After some discussion, the performing arts division examiner agreed that a performing arts application should be filed and that an acceptable deposit would consist of a video tape of a performance of the game and a written "Synopsis of Deposit."

On March 6, 1980, Midway's attorney filed a performing arts application to register the Galaxian game and deposited a video tape, a brochure for the game, and other materials including a written "Synopsis of Deposit." The video tape was recorded at Midway's plant in Franklin Park,...