A Tale of Two Gorillas: An Underdog (Under-Ape?) Story

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

March 8 was, according to questionable sources, National Retro Video Game Day in the US.  As one of Foley Hoag’s several resident video game nerds, this reminded me of one of my favorite video-game-related IP disputes.

In the 1970s, a nearly century-old Japanese playing card company called Nintendo started to branch out into electronic gaming, and in 1979 started a coin-operated arcade gaming division.  In 1981, the company released its first bona fide hit: the original arcade version of Donkey Kong.  The premise of Donkey Kong is that the titular giant ape has (naturally) kidnapped a woman, “Lady” (later called “Pauline”), and carried her to the top of a structure of metal girders.  The unnamed player character – some random mustachioed jumping dude in a red cap and red overalls that would later be called “Jumpman,” and then, you guessed it, Mario – must climb to the top of the structure, all the while avoiding barrels thrown by Donkey Kong, in order to eventually save Lady.

The creator of Donkey Kong, now-legendary game designer Shigeru Miyamoto, says he picked the name “Donkey Kong” because he wanted a name that conveyed the idea of a “stupid ape.”  The “Kong” element was of course borrowed from another famous ape, King Kong, and indeed Miyamoto later testified that the term “King Kong” was a generic term in Japan to identify any sort of giant ape (if you’re not aware, giant animals are sort of a thing in Japan).  The “plot” (to be charitable) of Donkey Kong was also similar to that of the various King Kong media – i.e., giant ape captures woman and climbs up a building for…reasons.

These similarities weren’t lost on Universal City Studios, the then-current steward (or so it claimed) of the King Kong franchise, which had plans to bring its own giant ape to video games.  In 1982, Universal filed suit in the Southern District of New York for trademark and copyright infringement, and also threatened, and extracted license fees from, Nintendo’s various US Donkey Kong licensees.  Nintendo, represented in the lawsuit by one John Kirby, systematically dismantled Universal’s claims, pointing out serious questions of trademark and copyright ownership, including the fact that Universal itself had successfully argued in a separate lawsuit seven years earlier that the plot of King Kong was in the public domain.  With respect to the trademark claims, the court found that Universal lacked trademark rights in KING KONG because (a) it hadn’t properly acquired them, and (b) KING KONG no longer functioned as source indicator. The court then found that, in any event, there was no likelihood of confusion; noting that, “at best, Donkey Kong is parody of King Kong,” the court held in favor of Nintendo.

In 1984, the Second Circuit upheld the lower court’s decision, observing that “the two properties have nothing in common but a gorilla, a captive woman, a male rescuer, and a building scenario,” and that “the ‘Kong’ and ‘King Kong’ names are widely used by the general public and are associated with apes and other objects of enormous proportions.”

Nintendo was so pleased with John Kirby’s performance that – in addition to his fees, naturally – it gifted him a sailboat, christened the Donkey Kong, along with an ostensible trademark license to exclusive worldwide rights to the use the DONKEY KONG brand for sailboats.  More relevant for posterity, Shigeru Miyamoto later named a different video game character, the all-powerful pink puffball Kirby, after John Kirby.  Kirby has now been the star of dozens of games, anime, and manga, and joins (an arguably reformed) Donkey Kong and Mario as one of Nintendo’s most beloved (and multi-million-dollar) mascots.  And if John Kirby had been somewhat less effective?  Nintendo’s pervasive plumber Mario would surely have survived, but the rest of Nintendo’s lineup might look very different today.

Speaking of Mario and questionable holidays, yesterday – March 10 – was Mario Day, chosen because the abbreviated date can be read as MAR10.  I’ll see if I can wrangle up some interesting Mario IP issues for a future post!

Many thanks to Mast3r-Rainb0w for the Donkey Kong illustration!

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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