Williams Electronics, Inc. v. Bally Mfg. Corp.

• Citation: 568 F. Supp. 1274
• Decision Date: 20 April 1983
• Docket Number: No. 82 C 2167.,82 C 2167.
• Parties: WILLIAMS ELECTRONICS, INC., a Delaware corporation, Plaintiff, v. BALLY MANUFACTURING CORPORATION, a Delaware corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

568 F. Supp. 1274

WILLIAMS ELECTRONICS, INC., a Delaware corporation, Plaintiff, v. BALLY MANUFACTURING CORPORATION, a Delaware corporation, Defendant.

No. 82 C 2167.

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

April 20, 1983.

COPYRIGHT MATERIAL OMITTED

Melvin M. Goldenberg, William T. Rifkin, Thomas C. Elliott, McDougall, Hersh & Scott, Chicago, Ill., Arthur M. Handler, Manuel W. Gottlieb, Golenbock & Barell, New York City, for plaintiff.

Donald L. Welsh, A. Sidney Katz, John F. Flannery, Fitch, Even, Tabin, Flannery & Welsh, Rodney D. Joslin, Anton R. Valukas, Jenner & Block, Chicago, Ill., for defendant.

MEMORANDUM OPINION

PRENTICE H. MARSHALL, District Judge.

In October of 1981 plaintiff Williams Electronics, Inc. ("Williams") introduced a pinball game called Hyperball into the arcade market. Hyperball combines many of the features of a traditional pinball game with those of a video game. In Hyperball, the player shoots rolling balls at lighted "lightning bolt" targets in order to prevent the bolts from hitting the player's "energy center." The player can earn extra points by hitting targets along the side of the playing area.

Williams' competitor, defendant Bally Manufacturing Corporation ("Bally"), sent several employees to a trade show where they saw Hyperball in action.¹ Impressed, Bally decided to design a Hyperball-type game of their own. The result was Rapid Fire,² which was introduced to the public at a trade show in March of 1982. Bally has marketed Rapid Fire in part by making claims concerning its superiority over Hyperball.

Williams filed this lawsuit on April 8, 1982, charging Bally with copyright infringement in violation of 17 U.S.C. §§ 106 and 501 (1976), false representations used in connection with the sale of goods in interstate commerce in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976), and engaging in deceptive practices and unfair competition in violation of state law. This court's jurisdiction rests on 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338 (1976).³ Bally has moved for summary judgment in its favor under Fed.R.Civ.P. 56.

We turn first to Williams' copyright action. On February 4, 1982, Williams applied for and received from the Copyright Office a certificate of registration for its copyright on Hyperball. This registration is prima facie evidence of the validity of Williams' copyright. See 17 U.S.C. § 410(c) (1976).⁴ Bally does not contend that Williams' copyright is invalid, so the validity of the copyright is a question we need not reach. Rather, we must decide what rights Williams has under the copyright and whether Bally has infringed those rights. In making that determination, both sides agree that the controlling principles of law were stated in Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir.), cert. denied, ___ U.S. ___, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982).

In Atari, the court began its analysis by observing that in that case the parties stipulated to the validity of the copyright and defendant's access to the copyrighted work, so the case turned on the question whether copying could be inferred from the substantial similarity between the copyrighted and the allegedly infringing works. See 672 F.2d at 614. The same is true here. In order to determine what similarities were relevant, the court then turned to the question of what aspects of the copyrighted work, a video game, were protected from appropriation by the defendant. Id. The court restated a fundamental premise of copyright law, that a copyright only protects a particular expression of an idea, not the idea itself. See id. at 615.⁵ Accordingly, a game as such is not protected by the copyright laws. Id.⁶ What is protected is a particular form of a game, and the protection increases as the work in question moves away from a generalized form toward a particularized expression. See id. at 615-17. The court wrote,

Plaintiffs' audiovisual work is primarily an unprotectable game, but ... to at least a limited extent the particular form in which it is expressed (shapes, sizes, colors, sequences, arrangements, and sounds) provides something "new or additional over the idea."

Atari, 672 F.2d at 617.⁷ Thus, the court accorded copyright protection to specific characters in the video game at issue in Atari: the ghost monster and gobbler, as well as the distinctive gobbling action and manner in which the gobbler disappeared upon being captured. See id. 617-18.⁸ However, the court held that standard game devices, which would be necessary to any game employing the same concept as the plaintiff's game, such as mazes and tunnels, were unprotected. See id.⁹

Atari thus indicates that the fact that Bally may have set out to make a "Hyperball-type" game is, in itself, irrelevant. The concept of a game where a player shoots rolling balls at advancing "enemies" is not copyrightable.¹⁰ Moreover, Atari indicates that appropriation of a certain "type" of game is not in itself actionable. As one court put it when assessing a game where the player navigates a spaceship through a field of asteroids,

when plaintiff copyrighted his particular expression of the game, he did not prevent others from using the idea of a game with asteroids. He prevented only the copying of arbitrary design features that make plaintiff's expression of this idea unique.

Atari, Inc. v. Amusement World, Inc., 547 F.Supp. 222, 227 (D.Md.1981). "The copyright laws preclude appropriation of only those elements of the work that are protected by the copyright." Atari, 672 F.2d at 614 (footnote omitted).

Applying these principles, it becomes clear that not only is the fact that the two games are of the same general "type" irrelevant, but also a number of other similarities are irrelevant. Any game employing the same idea or concept as Hyperball would have to provide a cannon or some other shooting device at the lower end of the playing field, have targets arranged along the side and back of the field, provide rows of some sort of advancing enemy, an area that the player must protect from the advancing enemy, and some system of indicator lights as a means for score to be kept. These elements are common to virtually all pinball and video games, and are necessary if the player is to have a meaningful objective (protecting an area from the advancing enemy and scoring points).

A second set of limitations on the scope of Williams' copyright is suggested by the nature of the copyrighted material. Williams claims that the material can be protected under the Copyright Act because it falls within the ambit of "pictorial, graphic and sculptural works" within the meaning of 17 U.S.C. § 102(a)(5) (1976). The Act goes on to define this term.

"Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, gloves, charts, technical drawings, diagrams and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 U.S.C. § 101 (1976) (emphasis supplied).¹¹

The emphasized language clearly limits the scope of the copyright protection Williams can receive. Congress intended to exclude from copyright protection the functional elements of a work such as Hyperball. The legislative history amplifies this point.

The Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design. A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statue or carving is used to embellish an industrial product or, as in the Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) case, is incorporated into a product without losing its ability to exist independently as a work of art. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from "the utilitarian aspects of the article" does not depend upon the nature of the design — that is, even if the appearance of an article is determined by esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And, even if the three-dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only to that element, and would not cover the over-all configuration of the utilitarian article as such.

House Rep. No. 94-1476, 94th Cong., 2d Sess. 55 (1976), reprinted in 1976 U.S.Code Cong. & Ad.News 5659, 5668 (emphasis supplied).¹²

Thus, Williams may only copyright those aspects of Hyperball that are separable from its utilitarian aspects. In essence, this test means that copyright protects only those elements superfluous to the functional aspects of the article; if the element is a...