Midway Mfg. Co. v. Strohon

• Decision Date: 01 June 1983
• Docket Number: No. 82 C 1305.,82 C 1305.
• Citation: 564 F. Supp. 741
• Parties: MIDWAY MFG. CO., an Illinois corporation, Plaintiff, v. Roger STROHON a/k/a Frederick Slayton; Kathy Strohon; Clidata Services, Inc.; Gary Melnick; Update Kits, Inc.; and Midwest Amusements Manufacturers and Distributors, Defendants.
• Court: U.S. District Court — Northern District of Illinois

564 F. Supp. 741

MIDWAY MFG. CO., an Illinois corporation, Plaintiff, v. Roger STROHON a/k/a Frederick Slayton; Kathy Strohon; Clidata Services, Inc.; Gary Melnick; Update Kits, Inc.; and Midwest Amusements Manufacturers and Distributors, Defendants.

No. 82 C 1305.

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

June 1, 1983.

Marcia Richards Bergen, Seiden & Shapiro, Chicago, Ill., for defendants.

Donald L. Welsh, A. Sidney Katz, Eric C. Cohen, Jerold B. Schnayer, Steven R. Smith, Fitch, Even, Tabin, Flannery & Welsh, Chicago, Ill., for plaintiff.

Richard H. Stern, Stern & Roberts, Washington, D.C., for amicus curiae, SHIELD Legal Action Committee, Ltd.

MEMORANDUM OPINION

WILL, District Judge.

This matter is before us on plaintiff Midway Manufacturing Company's (Midway) motion to find defendants Roger Strohon a/k/a Frederick Slayton and others (hereinafter, collectively "Slayton") in civil contempt of our March 23, 1982 preliminary injunction against infringement of any of Midway's copyrights in its popular PAC-MAN game and against misuse of Midway's PAC-MAN trademarks. The plaintiff also seeks a modification of the March 23 preliminary injunction that would specifically restrain Slayton from selling a so-called CUTE-SEE modification kit for use in PAC-MAN game machines manufactured and marketed by Midway.

We held a hearing on the motion on December 15, 1982 at which both the copyrighted and accused works were demonstrated and have reviewed subsequent briefs from the parties and from the "SHIELD Video Game Industry Legal Justice Committee, Ltd." (Shield) as amicus curiae. We now conclude: (1) Slayton's CUTE-SEE modification kit does not infringe Midway's copyright in the audiovisual component of the PAC-MAN game; (2) Slayton's CUTE-SEE modification kit does, however, infringe Midway's distinct "literary works" copyright in the computer program stored in certain Read Only Memory chips (ROMs) located in the PAC-MAN game's printed circuit board; and (3) distribution of the CUTE-SEE modification kit as presently constituted would also violate Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

Since the record does not reflect that any copies of the CUTE-SEE modification kit have been sold, there is not now any basis for finding Slayton in contempt of our March 23, 1982 order despite the fact that Slayton's advertisement of CUTE-SEE prompted these proceedings, and we decline to do so. For the reasons that follow, Midway is entitled to modification of the March 23 order to restrain any sales of the CUTE-SEE modification kit.

Background

Midway's PAC-MAN — itself alone the subject of a proliferating number of judicial opinions¹ — has been highly successful. The game is marketed through a chain of distributors, who in turn sell game machines at an approximate per unit price of $2500 (Tr. 19) to individual so-called "operators," like defendant Slayton. The operators attempt to make a profit on their machines by charging quarters for plays of the game.

According to testimony at the hearing, Midway has produced and sold over 96,000 PAC-MAN games between November 1980 and January 1982. Among enthusiasts, the PAC-MAN game appears to have been as much a staple as hamburgers: by Midway's calculations, the game has been played over 2,000,000,000 times (Tr. 195) and the PAC-MAN craze has spawned over 500 Midway-licensed "PAC-MAN products," which feature in some form cartoon representations of the central figures or characters involved in the game. Thus, for example, there are products known as PAC-MAN bubble gum (Plaintiff's Exhibit (PX) 18), PAC-MAN candy (PX 19), PAC-MAN T-shirts (PX 20) and PAC-MAN wristwatches (PX 21).

PAC-MAN is a video arcade game in which the player by means of a hand-held control or "joystick" sic interacts, in effect, with images on a video screen. Using the control, the player manipulates a gobbler character, "the PAC-MAN," through a maze lined with dots. In the center of the maze is a "corral" from which, in the course of the game, four monster figures escape and pursue the PAC-MAN. As the PAC-MAN flees, he appears to gobble or consume the dots. "Power capsules," located in each of the four corners of the maze, complicate the play: when the PAC-MAN devours one of them, he is rendered capable of "counterattacking" the monsters, which, in turn, become ghosts and flee. The object of the game, roughly, is to cause the PACMAN to eat as many dots as possible without being consumed himself by one of the monsters. Extra points are earned by consuming fruit targets that appear in the maze during the course of the game.

All of the foregoing occurs while the game is in its "play mode" after a quarter has been deposited in the machine. The PAC-MAN game also has a so-called "attract mode" in which a set pattern of sequences from the game is repeatedly shown on the video screen. The attract mode serves as a kind of advertising for the game as well as instruction in how to play it.

At the heart of the copyright controversy in this case is a set of Read Only Memory chips, ROMs, that contains both the visual data for the PAC-MAN game and the sequencing instructions that direct the play. Apparently, every PAC-MAN unit has on its circuit board a number of postage stamp-sized silicon chips onto which has been imprinted a highly complex and miniscule pattern of electronic circuitry. Each ROM has a specified location in the circuit board, designated by a letter-number location symbol. As we learned at the hearing (Tr. 39-40), the four ROMs at locations 6E, 6F, 6H and 6I are so-called "instruction ROMs" that contain the instructions and certain data used by a Central Processing Unit (CPU) or microprocessor to make game decisions, such as where the characters move on the video screen and whether or not one character chases another. The ROMs at locations 5F and 5E are "character ROMs" which contain information that causes the character images and other effects to appear on the video screen.

Midway holds copyright registrations for the audiovisual effects in the PAC-MAN game, registration number PA 83-868 effective on November 13, 1980, and for the computer program imprinted upon the six ROMs, registration number TX 753-817, effective on September 8, 1981.

Despite the considerable commercial success that the PAC-MAN game has enjoyed, individual operators, like the defendant Slayton, attempting to recoup their investments in their machines, have apparently suffered from the phenomenon of "pattern play," the ability of expert video games players, by means of a practiced or routinized series of "moves," to score enough points to play for an extended period of time on a single quarter. Alternatively, when players have so mastered the game that it is no longer challenging they no longer play. At some point, when enough players have become sufficiently expert at a game like PAC-MAN to pattern play the game or to lose interest in it, the individually owned machines cease to be profitable. As a result, there is a demand among operators of video games for "speed-up," "enhancement," or "update" kits, the purpose of which is to complicate and speed up the action of the games in order to make them more challenging for practiced players.

The CUTE-SEE enhancement kit for the PAC-MAN game, which is the subject of this proceeding, is one example of such an effort to improve the revenue from individual machines. The CUTE-SEE kit includes a set of pressure-sensitive graphics, instructions for placing the graphics over some but not all of the PAC-MAN trademarks on the game cabinets and a set of five ROMs with instructions for their installation in the PAC-MAN circuit board. The CUTE-SEE graphics appear to be intended to cover the words "PAC-MAN" wherever they appear on the cabinet although the words are faintly discernible underneath. The graphics do not cover several large cartoon representations of the PAC-MAN characters which also appear on the front and sides of every PAC-MAN cabinet. (See PX 3.1.a - 3.1.c) Nor does the CUTE-SEE kit provide any decals to cover smaller, similar PAC-MAN graphics around the border of the video screen. (PX 3.1.d)

The five CUTE-SEE ROMs are to be substituted in place of the PAC-MAN ROMs in locations 6E, 6F, 6H, 6J and 5F on the printed circuit board. Although the CUTE-SEE directions do not so provide (see PX 6), the CUTE-SEE modification that was demonstrated at trial also involved removal of the PAC-MAN ROM in location 5E, but without substitution of any new ROM there. The substituted ROMs appear to contain much of the same information as the original PAC-MAN ROMs — a subject to which we return later. The CUTE-SEE directions also instruct the purchaser to disconnect the sound system behind the header plate of the cabinet, thereby eliminating certain sound effects that accompany the PAC-MAN game.

As it appears on the video screen, the CUTE-SEE game is similar in its mazechase conception to PAC-MAN. The CUTE-SEE maze in the initial phase of the game is quite similar to the PAC-MAN maze, although it is slightly more complicated. Like PAC-MAN, the CUTE-SEE maze is lined with apparently consumable material and the object of the game is to manipulate a character to eat as much of it as possible while eluding four pursuit figures. However, the CUTE-SEE characters bear no resemblance to PAC-MAN and his monsters. Because of the deletion of ROM 5E from the printed circuit board, the pursued and pursuer figures are nothing more than colored squares and, instead of dots, pink "tracks" appear on the screen and are consumed. At a more advanced stage of the game, after the maze has first been successfully cleared of track, the maze barricades disappear leaving only a pattern of pink tracks. And finally, at a third stage, the maze limitation on the chase is altogether eliminated, substantially enhancing the difficulty of eluding the pursuers.

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