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HQ 471487

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October 25, 2001

ENF 4-02-RR:IT:IP 471487 GFM

CATEGORY: 17 U.S.C. 602 COPYRIGHT

Anthony O. Cormier, Esq.
21700 Oxnard Street
Suite 1750
Woodland Hills CA 91367

RE: Ruling Request; “Pocket Arcade 256 Games in 1” hand-held electronic LCD game; "TETRIS" (U.S. Copyright Office Registration No. PAu 1,284,318, U.S. Customs Service Recordation No. COP89-00202); ZAO Elorg.

Dear Mr. Cormier:

This is in reply to your letter dated August 13, 2001, in which you request a Headquarters ruling as to whether the above-referenced hand-held LCD games constitute violations of the subject TETRIS copyright. You state that you have been instructed by your client, (Westminster Inc. of Atlanta, Georgia, the supplier of the subject LCD games), to lodge this ruling request.

FACTS:

The “Pocket Arcade 256 Games in 1” hand-held electronic LCD game under consideration herein incorporate what you have described as a “tile and grid” graphic format which allows one to play a number of games which are different in name, yet somewhat similar in play. In your request, you contend that these devices do not constitute violations of the protected TETRIS copyright because, you allege, the only similarities between the subject games and the protected works are “the use of tile-on-grid graphics” and that the artistic details of the respective graphics are “as different as the subject matter allows.” In support of your contention, you have provided 10 visual screen prints from four of the five games resident within the device which are specifically featured on the game’s packaging (e.g. Auto Racing, Shooting Gallery, Leap Frog, and Seek & Destroy). We noticed, however, that screen prints from the fifth game--Block Game—the game upon which
any Customs actions against the protected copyright would be based, were missing. In order to remedy this oversight, we have included below, screen
prints from the “Block Game” contained within the subject game.

ISSUE: Whether the subject “Pocket Arcade 256 Games in 1” hand-held electronic LCD games constitute violations of the protected TETRIS copyright.

LAW AND ANALYSIS:

The role of Customs in issuing substantive decisions of copyright infringement as to imported merchandise was addressed in The Miss America Organization v. Mattel, Inc., 945 F.2d 536 (2d Cir. 1991). Citing section 603 of the Copyright Act of 1976 (17 U.S.C. § 603), the court recognized Customs authority to enforce the provisions of the law prohibiting importations of infringing goods. Id. at 538. Also, the court acknowledged that as a result of its duties, Customs has developed expertise in determining whether merchandise does or does not infringe. Id. at 539. Further, the court stated that since sections 602 and 603 (17 U.S.C. §§ 602, 603) direct the Secretary of the Treasury to enact regulations to aid in combating copyright infringement, it is implicit in these directions that the agency (Customs) would be involved in making infringement determinations. Id. at 541. Therefore, because the Treasury Department has been assigned the duty to enforce the copyright laws in cases where there is a reason to believe infringement exists with regard to an imported item, it follows that it is within Customs jurisdiction to take appropriate action to fulfill this duty. Id. at 542.

Further, Customs has some independence and autonomy in making infringement determinations regarding imported merchandise. Id. at 544. Accordingly, as the court stated, that there is no reason to enjoin Customs from performing its statutory duties so long as the agency proceeds in conformity with the statutory scheme. Id.

In such cases, under Customs regulations, the copyright owner bears the burden of proving copyright infringement. In order to prove copyright infringement, the copyright owner must show: (1) ownership of a valid copyright; and (2) copying by the creator of the imported work. Act Young Imports, Inc. v. B and E Sales Co., Inc., 673 F. Supp. 672, 673 (S.D.N.Y. 1987). "Copying" can be established by showing that: (1) the claimed infringer had access to the copyright owner's work, and (2) the protected elements of the two works are substantially similar. Levine v. McDonald's Corp., 735 F. Supp. 92, 95 (S.D.N.Y. 1990); see also, 3 M. Nimmer, Nimmer On Copyright § 13.01, at 133 (1981) ("Nimmer").

Regarding ownership of a valid copyright, section 410(c) of the Copyright Act of 1976, as amended, states that "the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). In the present case, a valid copyright registration covering the subject copyrighted work exists.

Regarding access to the copyright owner’s work, access is presumed where an item is generally available on the open market. Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir. 1977). In the present case, the worldwide availability of the subject copyrighted work sufficiently establishes access.

As in most cases of copyright infringement, however the determination rests upon whether the works are "substantially similar." With regard to the issue of substantial similarity, courts often look to the two-part test for similarity as outlined in Sid & Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir. 1977). In that case, the Ninth Circuit adopted a two-part test. The first step, labeled the "extrinsic test", requires a determination of substantial similarity between the ideas which includes an analysis of the type of artwork at issue, the materials used, the subject matter at issue, and the setting for that subject matter. The second step, labeled the "intrinsic test", involves a determination of substantial similarity between the ideas
which depends not on expert testimony or analytic dissection, but instead on the response of the ordinary lay person. That is, the determination focuses largely on whether the suspect work captures the "total concept and feel" of the copyrighted work. See, Spectravest v. Mervyn's, Inc., 673 F.Supp. 1486, 6 U.S.P.Q. 2d 1135, 1138 (N.D. Cal. 1987); Baxter v. MCA Inc., 812 F.2d 421, 424 (9th Cir. 1987).

With regard to the matter now before us, as regards the "extrinsic test" for similarity, it can clearly be established that the two items involve the same subject matter: hand-held electronic game devices containing LCD falling “brick” games.

As regards the "intrinsic test" for similarity, we note that it is not improper to engage in a side-by-side comparison of the designs in order to reach a determination on the issue of substantial similarity. Knickerbocker Toy Co., Inc. v. Genie Toys, Inc., 491 F.Supp. 526, 528 (E.D. Mo. 1980). "Substantial similarity" is defined as a showing that the ordinary observer, not set out to detect the differences between two works, would be disposed to overlook the differences and regard the aesthetic appeal of the two works to be the same. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960); In re "Rock `n Flowers", C.S.D. 90-67, 24 Cust. B. & Dec. No. 23 (March 21, 1990). "Substantial similarity" is also defined as whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1022 (2d Cir. 1966); Durham Industries, Inc. v. Tomy Corporation, 630 F.2d 905, 912 (2d Cir. 1980).

In a case similar to the one at hand involving video game copyright infringement, Atari, Inc. et. al. v. North American Philips Consumer Electronics Corp., et. al., 214 U.S.P.Q. 33 (CA 7 1982) (hereinafter, Philips), the U.S. Circuit Court of Appeals for the Seventh Circuit ruled that overwhelming similarities inherent in the features of two video works, PACMAN and K.C. Munchkin, warranted a finding of infringement. In its decision, the court noted that the defendant not only adopted the same basic characters, but also portrayed them in a manner which made its game appear substantially similar to the protected work. As in the present case, numerous similarities, such as the relative size and shape of the characters' "bodies," the Vshaped "mouths," distinctive gobbling actions (with related appropriate sounds), the ways in which they disappeared upon being captured, similar peculiar "eye" and "leg" movements, and the role reversal and "regeneration" process present in both games were so similar that an ordinary observer could only conclude that the defendant copied the plaintiff's work.

The defendant in Philips pointed to a laundry list of specific differences. In response, the Court noted that although numerous differences may influence the impressions of the ordinary observer, "slight differences between a protected work and an accused work will not preclude a finding of infringement" where the works are substantially similar in other respects. Id. at 42; citing Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 913; see Sheldon v. MetroGoldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669, 56 S. Ct. 835, 80 L. Ed. 1392 (1936). The Court further stated that “exact reproduction or near identity is not necessary to establish infringement. An infringement...includes also the various modes in which the matter of any work may be adopted, imitated, transferred, or reproduced, with more or less colorable alterations to disguise the piracy." Id.

In overturning the lower district court decision, the Court in Phillips noted that the lower court “focused on certain differences in detail and seemingly ignored (or at least failed to articulate) the more obvious similarities.” Id. at 42. It further stated that “the sine qua non of the ordinary observer test, however, is the overall similarities rather than the minute differences between the two works.” Id., citing Peter Pan Fabrics, 274 F.2d at 489.

Also, importantly, the court noted that “in order to assess the impact of certain differences, one factor to consider is the nature of the protected material and the setting in which it appears.” Philips at 42. The Court continued:

Video games, unlike an artist's painting or even other audiovisual works, appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression. The main attraction of [such] games lies in the stimulation provided by the intensity of the competition. A person who is entranced by the play of the game "would be disposed to overlook" many of the minor differences in detail and "regard their aesthetic appeal as the same." Id. at 43 (citing Kroft, supra at 116667 [children would view accused characters as substantially similar to the protected characters despite differences in detail]).

As in the Philips case, the games under consideration herein presents with numerous similarities. The copyrightable features of the TETRIS game, as covered by the copyright registration, includes the downward, lateral, and rotating movements of the differently oriented four-brick playing pieces, and the shape and appearance of the four-brick playing pieces, both in the "dots" that appear within the individual bricks themselves, as well as in the configuration of the four-brick combinations comprising the playing pieces. Additional copyrighted features include: the scoring features, the feature displaying the next four-brick playing piece that will fall down the playing field matrix, the disappearance of any completed horizontal row, the subsequent consolidation of the playing pieces remaining on the playing field as a result of the downward shift into the space vacated by the disappearing row, the resulting score, the background music, the specific sounds generated as the four-brick playing pieces are rotated, and the sounds generated as a row is completed and points are earned. Further, the makeup of the playing field itself, i.e., the vertical matrix, higher than it is wide, with a base of ten individual "bricks" per horizontal row, and generally twenty individual "bricks" per vertical line, is also copyrightable expression.

The “Pocket Arcade 256 Games in 1” brick game units utilize the same individual brick shapes, the same four-brick configuration playing pieces, the same rotating, lateral, and downward movements of the playing pieces, and the same sequential configuration of the various shapes of the four-brick playing pieces. The “Pocket Arcade 256 Games in 1” game uses the same depiction of the next playing piece that will fall down the playing field matrix, and also use an almost identical playing field matrix design in the height, width and layout, to that of the TETRIS game. Other similar elements include the scoring elements, the disappearing completed rows and the subsequent consolidation of the remaining incomplete rows left below, the accompanying sounds to the rotating, lateral and downward movements of the playing pieces, and the sounds that occur upon completion of a row and the earning of points. Like TETRIS, the " Pocket Arcade 256 Games in 1” brick game also ends when the playing field matrix is "filled up" with incomplete horizontal rows left on the playing field.

Despite these similarities, the requester avers that “the scope of a graphic copyright for a tile-on-grid design is necessarily limited by the common nature of (the) subject matter portrayed. Because of this limitation, copying in this category of products would have to be virtually identical to create even a suspicion of piratical copying.” (Request at page 3).

Although not specifically cited, the requester appears to be espousing a view of the idea/expression model raised in cases such as Atari, Inc. v. Amusement World, Inc., 547 F.Supp. 222 (D. Md. 1981) (hereinafter Amusement World) which presents similar, yet distinguishable issues. In that case, the court, ruling on a precursor of modern video games involving line drawings of spaceships and “asteroids,” in the face of some twenty-two material similarities, declined to find infringement. Instead, the court, believing that the idea/expression dichotomy could not be kept separate, reasoned that the numerous similarities were:

“inevitable, given the requirements of the idea of a game involving a spaceship combating space rocks and given the technical demands of the medium of a video game. There are certain forms of expression that one must necessarily use in designing a video game in which a player fights his way through space rocks and enemy spaceships. The player must be able to rotate and move his craft. All the spaceships must be able to fire weapons which can destroy targets. The game must be easy at first and gradually get harder, so that bad players are not frustrated and good ones are challenged. Therefore, the rocks must move faster as the game progresses. In order for the game to look at all realistic, there must be more than one size of rock. Rocks cannot split into very many pieces, or else the screen would quickly become filled with rocks and the player would lose too quickly. All video games have characteristic sounds and symbols designed to increase the sensation of action. The player must be awarded points for destroying objects, based on the degree of difficulty involved.

All these requirements of a video game in which the player combats space rocks and spaceships combine to dictate certain forms of expression that must appear in any version of such a game. In fact, these requirements account for most of the similarities between ‘Meteors’ and ‘Asteroids.’ Similarities so accounted for do not constitute copyright infringement, because they are part of plaintiff's idea and are not protected by plaintiff's copyright.” Id. at 229. (Emphasis added).

However, Customs’ position on this issue has followed that articulated by the court in Philips rather than that adopted by the court in Amusement World. Consequently, Customs does not regard the similarities noted in Amusement World to be “inevitable.” In addition, we do not regard the enumerated features of the works considered in Amusement World to be “forms of expression that must appear in ‘any version’ of such a game.” While such a result may once have seemed plausible, since then there has been considerable progress in digital graphic technology. In view of current technological capabilities alone, it has become clear that boundaries of expression that may have seemed fixed in the past have significantly expanded in recent years – so much so as to enable creators to overcome once seemingly insurmountable technical demands, severing unintended and undesired bonds of idea and expression.

In contrasting the Amusement World case to the case at issue, we would first state that many other video games involve the use of square blocks on a screen in various configurations that can be manipulated by the player and that interact to score points. See Atari Games Corp. v. Oman, 24 U.S.P.Q. 2d 1993 (D.C. Cir. 1992) (relating to copyright registerability of BREAKOUT game). The “idea” of using simple squares or blocks on the screen to be assembled into specific shapes and manipulated by the player in a race against time or against the computer is not protectable as such. The Court in Atari v. Oman found the synergistic selection and arrangement of elements in a video game that (individually) may not qualify for copyright to exceed the "minimal degree of creativity" needed to bring the work within the protection of the copyright laws. Id. at 1936; see Feist Publications v. Rural Tel. Serv. Co,, 111 S. Ct. 1282, 1289 (1991). Other games, including others contained within the imported games that do not infringe the TETRIS copyright, express the idea of using manipulable and interacting square blocks to form, among other things, race cars that move along a track and around barricades, tanks that rotate and shoot at each other or at barricades, Ping-Pong, and “bombing” or “drop" games, as well as the BREAKOUT game discussed in Atari v. Oman, supra. Each of these examples clearly includes protectable expression based on the same underlying idea but does not include the expression of the TETRIS game.

As distinguished from other games which may have real life, or at least science fiction, counterparts, Amusement World, supra, and Data East USA, Inc. v. Epyx, Inc., 9 U.S.P.Q. 2d 1332 (9th Cir. 1988) (scene-a-faire videogame featuring common depictions of Karate fighting), the TETRIS game's expression of the manipulable block configuration idea is a wholly fanciful creation, without reference to the real world. Philips, supra at 42. The nature of the protected material and the setting in which it appears is an important factor when comparing games in an infringement analysis. Id. An abstract representation is "neither an 'obvious' nor an 'inevitable' choice." Atari v. Oman, 24 U.S.P.Q. 2d at 1937.

While the court in Amusement World gave a very narrow scope of protection to the ASTEROIDS game, the court did not find that the video game lacked any protectable expression. Instead, it found that the defendant had taken only the 'idea" of the game and expressed it in a different way. It found that the "overall 'feel' of the way the games play is different.” Id. at 230. Conversely, in the instant case, the overall "feel" of the games is identical.

The Amusement World court recognized protectable expression in the "design features" of the ASTEROIDS game. These included "the symbols that appear on the display screen, the ways in which those symbols move around the display screen, and the sounds emanating from the game cabinet." Id. at 227. The court there found that the defendants used "symbols, movements, and sounds that are different from those used in plaintiff's game." Id. In the instant case, the imported game not only adopts the entire set of game pieces and scoring scheme of the TETRIS game, it copies nearly the entire presentation. These copied features include the size and shape (ten blocks wide by twenty blocks high) of the playing field; the number, shape and appearance (dot inside of each square) of each game piece; the depiction along the sidelines of the next piece to appear; the scoring; and the use of very similar sounds corresponding to movements and scoring, as well as background and introductory music.

HOLDING:

The subject " Pocket Arcade 256 Games in 1” game units present with numerous features similar to those contained in the copyrighted TETRIS work. The presence of these copyrightable features in the game units would deem them substantially similar copies of the protected works which, if imported, would properly be considered clearly piratical and subject to seizure under 19 U.S.C § 1595a(c)(2)(C) for a violation of 17 U.S.C. § 602, as implemented by 19 CFR § 133.42.

Sincerely,

Joanne Roman Stump, Chief

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