Trademark Law: More Than an “After Thought” in Video Game Anti-Piracy Efforts

Wilson Sonsini Goodrich & Rosati

Nintendo of America received an eye-popping award of $2.1 million in statutory damages against game pirate Matthew Storman from the United States District Court for the Central District of California on May 26, 2021.1 The court's summary judgment decision was far from surprising given that Storman testified in a deposition that he was "the sole owner of the website" and that "he and/or his 'admin' uploaded ROMs of Nintendo's copyrighted works (the video games)."2 The court found, among other holdings, that Storman engaged in copyright infringement. More notable, however, is the success of Nintendo's trademark infringement claim.

Game companies often largely rely on copyright claims to go after game pirates. Copyright protects original artistic or literary works3 including the code which comprises a video game,4 while trademark protects brand names and logos used on goods and services to identify the source.5

While trademark claims may overall be less compelling than copyright causes of action in the fight against game piracy, such claims, at times, have been successful weapons. In Stern Electronics v. Kaufman, the plaintiff sued for, among other things, trademark infringement when the defendants produced and sold a game called Scramble 2 that was substantially similar in audiovisual presentation to the plaintiff's Scramble.6 In Midway Manufacturing Co. v. Bandai-America, Inc., the plaintiffs claimed trademark infringement, arguing that the defendants' Galaxian and Packri Monster games infringed on the plaintiffs' Galaxian and Pac-Man trademarks.7 And in Midway Manufacturing Co. v. Dirkschneider, the plaintiff also sued for, among other things, trademark infringement when the defendants resold imitation versions of the plaintiff's games that bore variations of the plaintiff's trademarks, such as Galactic Invaders in lieu of the plaintiff's Galaxian.8 Further confusion in the marketplace was caused because, "in virtually every detail, the defendants' games are identical to the plaintiff's."9 The respective courts all ruled in favor of the plaintiffs on the trademark claims.

Still, some commentators at the time considered the trademark causes of action to be an "after thought" in pursuing pirates.10 These courts' opinions also largely suggest as much, focusing primarily on copyright considerations.11

Tetris Holding, LLC v. Xio Interactive, Inc. was another noteworthy trademark case in the video game space.12 Tetris, a game developer, alleged that its competitor Xio infringed its trade dress comprised of "the brightly-colored Tetriminos, which are formed by four equally sized, delineated blocks, and the long vertical rectangle playfield, which is higher than wide."13 In granting summary judgment to Tetris, the court found Tetris' trade dress to be distinctive and non-functional, and that Xio's game could potentially confuse consumers.

This lineage brings us back to Storman. The court in Storman granted summary judgment to Nintendo on all three of its causes of action: copyright infringement, federal trademark infringement, and unfair competition. The court determined that Storman violated Nintendo's trademarks based on "Defendant's use of Nintendo's trademarks on Defendant's website to promote the sale of unauthorized copies of Nintendo's copyrighted games."14 In fact, it appears that Storman directly profited by charging for premium access to the Nintendo games he uploaded to his website.15 He testified that, in 2019, his website generated between $30,000 and $36,000 in revenue.16 The court awarded $400,000 in statutory damages on the trademark claim alone—100% of the amount that Nintendo requested.17

Storman is a fresh reminder of the potential value of trademark claims in game publishers' arsenals in the battle against pirates and of the additional damages awards that would not be available via other causes of action.

Han Shen and Brian Levy contributed to the preparation of this alert.

[1] Nintendo of Am., Inc. v. Storman, No. CV 19-7818-CBM-(RAOx), slip op. at 19 (C.D. Cal. May 26, 2021).

[2] Id. at 3.

[3] 17 U.S.C. § 102.

[4] See Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021) (“We shall assume, but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted.”).

[5] 15 U.S.C. § 1127.

[6] Stern Elecs., Inc. v. Kaufman, 523 F. Supp. 635 (E.D.N.Y. 1981), aff’d, 669 F.2d 852 (2d Cir. 1982).

[7] Midway Mfg. Co. v. Bandai-America, Inc., 546 F. Supp. 125 (D.N.J. 1982).

[8] Midway Mfg. Co. v. Dirkschneider, 571 F. Supp. 282 (D. Neb. 1983).

[9] Id. at 285.

[10] Thomas M. S. Hemnes, The Adaptation of Copyright Law to Video Games, 131 U. Pa. L. REV. 171, 220 (1982).

[11] See, e.g., Stern Elecs., 523 F. Supp. at 639–42; Bandai-America, 546 F. Supp. at 155–58; Dirkschneider, 571 F. Supp. at 286.

[12] Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394 (D.N.J. 2012).

[13] Id. at 415.

[14] Nintendo of Am., slip op. at 13.

[15] Id. at 7.

[6] Id. at 10.

[17] Id. at 14.

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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