IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks - June 6, 2012

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The Authors Guild v. Google, Inc., USDC S.D. New York, May 31, 2012
 Click here for a copy of the full decision.

  • District court grants class certification to group of authors in copyright infringement action against Google, Inc. and recognizes standing of organizations asserting claims on behalf of members, concluding that Google’s plan to digitize millions of books raises common questions and entitles copyright holders to litigate on a group basis.

As part of its “library project,” defendant Google, Inc., scanned over 12 million books, delivered digital copies to libraries, created an electronic database of books, and made excerpts available for online searching and viewing. Millions of the books scanned by Google were still under copyright, and Google did not obtain permission to scan the books. In 2005, the Authors Guild and three representative plaintiffs brought a class action, alleging that by reproducing in-copyright books, distributing them to libraries, and publically displaying “snippets” of those works for search, Google “is engaging in massive copyright infringement.” In 2010, several individual photographers and illustrators brought another class action charging Google with copyright infringement, alleging that Google’s copying of certain photographs, illustrations, and other visual works infringed on their copyrights as well. Google asserted “fair use” as its principal defense in each of these actions. The representative plaintiffs in the first action moved for class certification and Google moved to dismiss all associational plaintiffs for lack of standing. The court denied Google’s motion to dismiss, finding that neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit. The court granted plaintiffs’ motion for class certification, finding that plaintiffs satisfied the numerosity, commonality, typicality, and adequacy requirements under Rule 23, and the questions of law and fact common to class members predominated over any questions affecting only individual members.

The court initially addressed Google’s motion to dismiss the claims of the associational plaintiffs for lack of standing. An organization has standing to bring suit on behalf of its members, instructed the court, when (1) its members would otherwise have standing to sue in their own right, (2) the interests it seeks to protect are germane to the organization’s purpose, and (3) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit. Google did not dispute that the organizational plaintiffs satisfied the first two prongs under the court’s test. With respect to the third prong, the court explained that the association may be an appropriate representative of its members so long as the nature of the claim and the relief sought does not make the individual participation of each injured party indispensable to proper resolution of the cause.

Google argued that the associational plaintiffs in the two actions do not satisfy the third prong because the association did not itself hold any copyrights and because its fair use defense would require the participation of individual association members. Specifically, Google contended that the two fair-use factors, the nature of the copyrighted work and the effect of the use upon the potential market for or value of the copyrighted work, required individualized inquiry. The court disagreed, reasoning that, in light of the commonalities among large groups of works, individualized analysis would be unnecessarily burdensome and duplicative. The differences among the plaintiffs could be accommodated by grouping association members and their respective works. The court also noted that no individual participation would be required at the relief stage because the associational plaintiffs sought only injunctive relief and no individual damage assessments would be necessary. Finally, the court held that because Google treated the copyright holders as a group, indiscriminately copying and making search results available en masse, the copyright holders should be able to litigate on a group basis.

On plaintiffs’ motion for class certification, the court concluded that plaintiffs’ class satisfied the numerosity and commonality requirements of Rule 23(a). The class likely would number in the thousands because Google had scanned millions of books. The issues of whether Google’s actions constituted an infringement of plaintiffs’ copyright interests and whether the company’s use of “snippets” of plaintiffs’ works constituted fair use were common questions capable of class-wide resolution, according to the court. Similarly, the court found that the proposed class satisfied the typicality requirement because each class member’s claim arose from the same course of events—Google’s wide-spread copying of books without the authorization of copyright holders.

The court rejected Google’s contention that the class could not satisfy the adequacy factor, which requires class representatives to fairly and adequately protect the interests of the class. Google argued that most class members perceived Google’s copying of their work as a benefit, pointing to a survey reporting that 58 percent of authors approved of Google scanning their work for search purposes and that 19 percent felt that they benefited financially. The court found this argument lacked merit for two reasons. First, Google could not point to any factual or legal argument made by the lead plaintiffs that conflicted in any way with the copyright claims of any of the other class members, and the court could not conclude from the survey (which did not ask respondents whether they would want to be part of a lawsuit through which they might recover damages) that any individual author would not want to participate in the instant class action. And second, that some class members may prefer to leave the alleged violation of their rights unremedied, reasoned the court, could not be a basis for finding the lead plaintiffs inadequate. The court’s sole concern was whether the lead plaintiffs were interested enough to be forceful advocates and whether any reason existed to believe that a substantial portion of the class would agree with their representatives were they given a choice.

Finally, the court found that class certification was warranted because the proposed class also met the predominance and superiority requirements of Rule 23(b)(3). The common issues in the litigation – whether Google’s library project constituted copyright infringement and whether Google’s fair use defense applied – predominated over individual ones. Every potential class member’s claim, according to the court, arose out of Google’s uniform, widespread practice of copying entire books without permission of the copyright holders and displaying snippets for search. Similarly, as noted, the question of fair use could be evaluated on a sub-class-wide basis. The court would determine whether the defense applies to a particular type of book, obviating the need to evaluate each book individually. With respect to the superiority requirement, the court concluded that class action was the superior method of resolving the litigation because it was, without question, more efficient and effective than requiring thousands of authors to sue Google individually.

Tetris Holding, LLC v. Xio Interactive, Inc., USDC D. New Jersey, May 30, 2012
 Click here for a copy of the full decision.

  • District court grants summary judgment in favor of plaintiffs and denies summary judgment to defendant on copyright infringement claim, finding as a matter of law that defendant did not merely copy rules and functionality of video game Tetris, but copied game’s entire “look and feel” and that elements of defendant’s game Mino were substantially similar to protectible elements of plaintiff’s game.

Plaintiffs Tetris Holdings, LLC, and Tetris Company, LLC, owner and sublicensor of the copyrights to the visual expressions of the immensely popular video game Tetris, brought suit against defendant Xio Interactive, Inc., creator of the video game Mino, asserting federal copyright and trade dress claims, as well as various state law claims. On cross-motions for summary judgment on the federal claims, the court granted plaintiffs’ motion and denied defendants’ motion, holding that plaintiffs were entitled to copyright protection for the artistic aspects of the game – the original way that they chose to express the game rules or game play, but not the mechanical or utilitarian features necessary for the functioning of the game. The court concluded that defendant had copied the protectible elements of expression from the Tetris game, so much so that the two games were nearly identical and all but indistinguishable to the common observer.

The facts underlying the summary judgment motions were undisputed. Since its development in the mid-1980s Tetris, which repeatedly has been named “one of the greatest video games of all time,” has been adapted for the multitude of gaming platforms available to consumers, including the Apple iPhone, and as a result of its immense popularity, has sold more 200 million copies of the game worldwide. The game consists of a horizontal playing field into which game pieces known as tetriminos, colored interlocking pieces made up of four blocks or squares, fall from above. The object of the game is to rotate the tetriminos, which come in seven different shapes, mid-air so that they precisely fit into the available spaces on the field’s rising floor, which is made up of the pieces that have previously landed at the bottom of the screen. Creating a complete horizontal row results not only in points for the player, but the disappearance of the row, making room for more pieces to fit. Fitting the pieces into the appropriate spaces becomes increasingly difficult as the game progresses.

Xio’s owner Desiree Golden developed Mino as a multi-player game application for the iPhone, and admitted that she deliberately copied the concept of Tetris to create Xio’s “own version” and to take advantage of the original game’s popularity. Golden asserted, however, that she was scrupulous in only copying the non-protectible rules and functionality of the game, not any protected “expressive” elements, and therefore Xio could not be held liable, as a matter of law, for copyright infringement.

Plaintiffs’ asserted that Xio had copied 14 protected elements of Tetris, including the composition of the tetriminos (four square blocks, each block visually delineated, attached together to form seven different shapes) and their vivid coloring, the way the pieces fall from top to bottom, the way they appear to rotate, and the way they change when they enter “lock-down” mode at the bottom of the screen, as well as the size, shape and depiction of the playing field on the screen.

Noting that Tetris Holding undisputedly owned the applicable copyrights in the game and that Xio admitted to deliberately copying Tetris in order to design Mino, the court determined that the dispositive issue on summary judgment was whether Xio had copied original (and therefore protected) elements of Tetris, or whether, as Xio claimed, the elements it copied were not original expression, because they were part of the game itself – the rules, function, and expression essential to the game play – and therefore not protected.

At the outset, the court discussed copyright in the context of computer programs, noting that federal copyright protection only extends to the particular, original expression of an idea – not the idea itself. The court reviewed the two different approaches used by the circuit courts to separate unprotectible ideas from protectible expression in the context of computer software, and ultimately decided that the approaches were not dissimilar in their application, and that, “no matter how one expresses the test, the task is clear: because copyright only protects original expression, I must delineate between the copyrightable expression in Tetris and the unprotected elements of the program, then evaluate whether there is substantial similarity between such expression and [d]efendant’s Mino game. The starting point in this analysis must be to understand the ideas and concepts of Tetris itself.”

“In the context of games – including video games – copyright protection extends only to the artistic aspects, but not the mechanical or utilitarian features, of a protected work.” Further, under the doctrines of merger and scènes à faire, the court noted that elements of an image that flow naturally and necessarily from the choice of a given concept are not “original” and are not protectible. Since Xio did not dispute that it actually copied the Tetris game, the dispositive issue, according to the court, was whether, as a matter of law, the “idea” of the game of Tetris – including how it functioned – could be separated from its component parts.

Xio argued that not only is the idea of Tetris and the rules of the game not protectible, but neither are the “functional aspects” of the game or any expressive elements related to the game’s function or play. Defendant also argued that doctrines of merger and scènes à faire require that expression inseparable from either game rules or game function are also not protectible.

The court disagreed, finding that Xio defined function too broadly. “Xio is correct that one cannot protect some functional aspect of a work by copyright as one would with a patent. But this principle does not mean, and cannot mean, that any and all expression related to a game rule or game function is unprotectible. Such an exception to copyright would likely swallow any protection one could possibly have; almost all expressive elements of a game are related in some way to the rules and functions of game play. Tetris Holding is as entitled to copyright protection for the way in which it chooses to express game rules or game play as one would be to the way in which one chooses to express an idea.”

The “wholesale copying” of Tetris was troubling to the court, which found that the Tetris design, movement, playing field dimensions, display of “garbage lines,” appearance of “ghost” pieces, color changes and automatic fill-in of the game board at the end of the game (all of which were copied by Xio) were aesthetic choices, and were protected, original expressions of an idea. While the idea of a game that required one to rotate figures into a field was not protectible, the design of the component parts was. The court found that the overall look and feel of the games were nearly identical and that any differences between the two were “slight and insignificant.” The court concluded: “There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying. While there might not have actually been “literal copying” inasmuch as Xio did not copy the source code and exact images from Tetris, Xio does not dispute that it copied almost all of visual look of Tetris.”

The court found that that the merger doctrine was inapplicable because Xio could have designed the game in any number of ways for it to function. Even Xio’s own expert admitted that there were an “almost unlimited number of ways” to design a puzzle video game. The style, design, shape and movement of the puzzle pieces were not inextricably connected to the ideas, rules and functioning of the game and therefore wereprotectible elements. Furthermore, the doctrine of scènes à faire didn’t apply in this case because the game was “unique” and did not require stock imagery for it to work. Xio also raised a fair use defense, which the court summarily denied because Xio infringed a substantial amount of the game.

The court also granted summary judgment in favor of plaintiffs on their claim that Xio infringed the Tetris trade dress. Xio had argued that the color and style of the game pieces were not protectible trade dress because they were part of the required function of the game, but the court disagreed, stating that they were “arbitrary flourishes” unrelated to how the game worked. The court also rejected defendant’s argument that the trade dress claims were preempted, finding that that plaintiffs were not merely restating their copyright claims as Lanham Act claims but were attempting to address the issue of consumer confusion regarding the packaging of the Mino game.


For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

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