Universal City Studios v. Nintendo Co.
| Decision Date | 22 December 1983 |
| Docket Number | No. 82 Civ. 4259 (RWS).,82 Civ. 4259 (RWS). |
| Citation | 578 F. Supp. 911 |
| Parties | UNIVERSAL CITY STUDIOS, INC., Plaintiff, v. NINTENDO CO., LTD. and Nintendo of America, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
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Townley & Updike, New York City, for plaintiff; Douglas C. Fairhurst, Mary D. Faucher, Sandra Edelman, New York City, of counsel.
Mudge, Rose, Guthrie, Alexander & Ferdon, New York City, Sax & Maciver, Seattle, Wash., for defendants; James L. Magee, Seattle, Wash., John J. Kirby, Jr., Thomas G. Gallatin, Jr., Shelley B. O'Neill, Catherine E. Palmer, New York City, of counsel.
This is a dispute over two gorillas. Defendants Nintendo Co., Ltd., a Japanese corporation, and Nintendo of America, Inc. (referred to herein collectively as "Nintendo"), have moved for summary judgment to dismiss the trademark and unfair competition complaint of plaintiff Universal Studios, Inc. ("Universal"), a California corporation which seeks to enforce certain rights with respect to King Kong.
Nintendo's gorilla appears in a video game named "Donkey Kong." In the game, described in greater detail below, the player manipulates a little man past numerous obstacles and up a series of ramps on a structure, at the top of which stands a large gorilla holding a pretty girl. Nintendo manufactured, distributed and sold the game in the United States. The game was a major commercial success.
Universal claims that its gorilla is King Kong. Exactly who King Kong is, in the trademark sense, and what he looks like, is a key to this lawsuit. There is, of course, a King Kong, for those expatriates and hermits who don't know, who is the central character in a famous 1933 motion picture ("the 1933 movie") produced by RKO Radio Pictures, Inc. ("RKO") and in a remake of that motion picture (the "1976 remake") done by the Dino DiLaurentiis Corporation ("DDL") in 1976. Universal does not claim to own a trademark in these images of King Kong, but instead claims to be the owner of a trademark in the King Kong name and another King Kong character by virtue of certain recent assignments.
For the reasons set forth below, I conclude that summary judgment is appropriate and the complaint will be dismissed.
In April 1982, Universal brought this suit claiming that Donkey Kong because of its similarity to King Kong violates Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as section 368-d of the New York General Business Law (the anti-dilution statute) and related state causes of action. This occurred some nine months after Nintendo had commenced marketing its extremely successful game. Discovery was thereafter completed. Universal did not seek preliminary injunctive relief against the alleged infringement. The action is ready for trial.
A hearing was conducted on August 8, 1983 on the motion for summary judgment during which "Donkey Kong" was demonstrated by a game master and pertinent parts of the 1933 movie and the 1976 remake were reviewed, an altogether satisfying court day enhanced by the argument of highly skilled and forceful counsel and marred only by the submission of affidavits, depositions and briefs. Upon these proceedings the following findings and conclusions are reached.
Nintendo has moved to dismiss the action on the grounds that: (1) Universal is precluded from asserting trademark rights in King Kong by the doctrines of collateral and judicial estoppel, because the issues in this action were fully litigated in a previous action in federal court in California during 1975-81; (2) the documents resulting from the California litigation do not, as a matter of law, successfully convey a trademark to Universal; (3) Universal cannot claim a trademark in King Kong because the multiple origins and present uses of King Kong have made it impossible for King Kong to denote a single source of origin, which is the necessary function of a trademark; and (4) as a matter of law, there is no likelihood of confusion as to the source of Donkey Kong, and Universal's agreements with the Nintendo licensees constitute an abandonment of any trademark claim to King Kong and alternatively constitute an admission that Donkey Kong is not an infringement. In addition, Nintendo seeks summary judgment dismissing Universal's claim under the New York antidilution law.
The King Kong story first appeared in public with its publication in 1932 as a book and a magazine serial. Merian C. Cooper was the originator of the story that was the basis for the book and magazine serial. His son and heir, Richard Cooper ("Cooper") now holds the exclusive book publishing rights with respect to King Kong, including the right to make, distribute or license novels, comic books or magazine articles using the King Kong name, character and story.
In 1933, RKO released the first King Kong motion picture. The screenplay for the 1933 movie was co-authored by Merian Cooper, and was based on the story which was also the basis of the book and the magazine. The 1933 movie has become an American classic, and the parties agree that its scenes, especially the one in which King Kong stands on top of the Empire State Building holding Fay Wray captive, are recognized by the American public and need no description here for the benefit of the parties or the reviewing authorities.
RKO continues to hold the exclusive copyright to the 1933 movie and all depictions of King Kong in it. From 1933 until 1979, RKO and 15 licensees used and advertised the King Kong name, character and story in many products, including toys, games, books and garments. These merchandising activities were unsupervised and unchallenged. Over the same period, there have also been published and commercial uses of the term "King Kong," and variations on it and of the King Kong character and image, as well as third-party trademark registrations of the "King Kong" name and variations on it, all without reference to the makers of the movie. The term "King Kong" is now defined in various dictionaries and listed in some editions of Roget's Thesaurus.
In 1975, amidst a dispute involving RKO, Universal and DDL as to who could produce a remake of King Kong, Universal brought suit in California state and federal court to resolve this question. The dispute began when RKO, the maker of the original 1933 movie, licensed DDL to remake the picture. Universal, claiming that RKO had promised in negotiations to license Universal to remake the picture, sued RKO and DDL in California state court for breach of contract and tortious interference with contractual relations. That action was ultimately settled.
While Universal was pursuing its contract claim in state court, it began to produce its own King Kong remake in August 1975. It also commenced a declaratory judgment action in California Central District federal court against RKO, DDL and Cooper, No. 75-3526, seeking, among other things, a declaration that the copyright on the King Kong story had lapsed, that the story was thus in the public domain, and that Universal might produce a new King Kong movie without infringing on any rights of RKO and DDL.1 RKO answered that Universal was not entitled to infringe on RKO's copyright and related rights in King Kong. In addition, RKO counterclaimed, alleging Universal's planned remake would infringe RKO's King Kong copyright and would constitute unfair competition by, among other things, diluting RKO's rights in the King Kong title and character.2 Universal's reply denied these counterclaims.
DDL also answered and counterclaimed contending, among other things, that the King Kong name and character had acquired a secondary meaning and that Universal's King Kong production would constitute wrongful appropriation of the King Kong name and character and the associated rights. Again, Universal's reply to the counterclaim denied that the name and character had any secondary meaning. (DDL's counterclaim was later dismissed with prejudice by stipulation). Defendant Cooper, in addition to denying that the "King Kong" story had fallen into the public domain, cross-claimed against RKO, claiming, among other things, that he was the successor to his father's rights in King Kong. Cooper also claimed that his father's contract with RKO allowed RKO to make only the 1933 movie, and that, because of this limited grant of rights, all other commercial exploitation of the King Kong name, character and story by RKO were for Cooper's account.
After a four-day trial before District Judge Real, the Court, on November 24, 1976, held (the "First Judgment") that the King Kong story was in the public domain, that Universal could make a movie based on King Kong so long as it did not infringe on the copyrighted 1933 King Kong movie and that RKO's counterclaim was dismissed on the merits. On the same date that this judgment was entered, the Court entered certain findings of fact and conclusions of law, including the following:
On December 6, 1976, the Court signed an interlocutory judgment for Cooper on his cross-claim (the "Cooper Judgment"). The Court held that:
After the entry of this judgment, Cooper and Universal reached an...
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