Memo. in Support of Summ. Jmt. Against Lanham Act & State Law Claims
Jefferson F. Scher
FENWICK & WEST
Two Palo Alto Square
Palo Alto, California 94306
Attorneys for Defendants Data East Corporation and Data East USA, Inc.
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
CAPCOM U.S.A., INC.
a California Corporation,
DATA EAST CORP., a Japanese corporation, and
DATA EAST USA, INC., a California corporation,
Case No. C93 3259 WHO
Date: October 6, 1994
Time: 2:00 p.m.
Place: Courtroom Seven
Hon. William H. Orrick
Data East's Memorandum of Points and Authorities
in Support of Motion
For Summary Judgment Against Capcom's
Lanham Act and State Law Claims
ISSUES TO BE DECIDED
Whether Street Fighter's so-called "trade dress" is trade dress. The
contention that an entire video game is its own trade dress is a meritless contrivance,
and Capcom cannot predicate a trade dress claim on this disturbing theory.
Whether Capcom can meet its burden of proving that its trade dress is nonfunctional.
What Capcom calls Street Fighter's "trade dress" is made up of the
"features 'which constitute the actual benefit that the consumer wishes to
purchase'" 1 - meaning that the game's "trade dress" is not protectable
because it is functional.
Whether Capcom can meet its burden of proving that its trade dress is distinctive.
Street Fighter's "trade dress" is not distinctive because it is made up of
stereotypical characters, moves, other elements drawn from the public domain, and
unprotectable technologies, and has not acquired secondary meaning.
Whether Capcom can meet its burden of proving that Data East "bodily
appropriated" Street Fighter. A trade dress claim resting on an allegation of
copying, like Capcom's, must prove that the defendant bodily appropriated plaintiff's
trade dress 2 - a showing Capcom cannot make.
Whether Fighter's History's prominent source identification and different labeling
precludes any likelihood of confusion. It is well-established that where product labeling
prominently discloses the manufacturer's name, there is no basis for a charge of unfair
competition. Such is the case here.
Whether the pendant state claims are preempted or otherwise meritless. They are under
TABLE OF CONTENTS
STATEMENT OF FACTS
SUMMARY JUDGMENT IS
REQUIRED IN ORDER TO EXPEDITIOUSLY RESOLVE THE ISSUES IN THIS CASE
THERE IS NO GENUINE
FACTUAL ISSUE ON THE LANHAM ACT CLAIM
THERE IS NO GENUINE FACTUAL ISSUE ON THE CALIFORNIA LAW CLAIMS 37
- Capcom's Burden of Proof: The Elements of a Lanham Act Claim
- The Entirety Of A Computer Game Cannot Be Trade Dress And Is Therefore Not Protectable
Under The Lanham Act
- Capcom Claims That Everything The Player Does Or Perceives In Using Street Fighter -
Meaning The Whole Of The Street Fighter Game - Constitutes Street Fighter's Trade Dress.
- Trade Dress Protection Cannot Be Used To Bypass The Limitations Of Copyright Law 13
- Trade Dress Protects Labels, Containers, And Packaging - Not Concepts Or Products 14
- The Most "Expansive Definitions" Of Trade Dress Are Limited To Protecting
External Appearances Or Packaging. 16
- Capcom's Trade Dress Claim Is At Odds With The Policy Of Free Competition In Goods Not
Protected By Patent Or Copyright 17
- Capcom's Claimed Trade Dress Is Not Protectable 18
- The Pleadings And The Incontrovertible Facts Establish That Capcom's Alleged Trade Dress
Is Functional 18
- Capcom's Alleged Trade Dress Is Not Distinctive 22
- Street Fighter's Trade Dress Is Not Inherently Distinctive 22
- Street Fighter's Trade Dress Has And Can Have No Secondary Meaning 22
- Capcom's Inability To Prove "Bodily Appropriation" Of Its Supposed Trade Dress
Precludes Any Likelihood Of Confusion Finding 24
- Data East's Clear Labeling Of The Source Of Fighter's History Prevents A Likelihood Of
- There Can Be No Reasonable Likelihood Of Source Confusion Where, As Here, A Manufacturer
Clearly Marks Its Products To Indicate The Actual Source Of Goods 27
- Capcom's Admissions And Other Evidence Confirm That There is No Likelihood of Confusion
As To The Source Of Fighter's History 30
- The Sophistication Of Consumers Of Video Games Renders The Likelihood Of Source
Confusion Negligible 31
- The Strength of the Capcom and Street Fighter Marks Precludes Any Likelihood of Source
- "The Absence of Any Apparent [Actual] Confusion . . . Demonstrates That Confusion
is Unlikely." 34
- A Summary Determination That There Is No Likelihood Of Confusion Is Appropriate 35
- Capcom's Lanham Act Claim Is Without Merit 37
- Capcom's State Law Claims Are Preempted 37
- Summary Judgment Against the Lanham Act Claim Is Dispositive of the State Law Claims 41
- Capcom's Dilution Claim Is Baseless 41
TABLE OF AUTHORITIES
Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir.
American Rolex Watch Corp. v. Ricoh Time Corp., 491 F.2d 877 (2d Cir. 1974)
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 91 L.Ed.2d 202, 106 S.Ct. 2505 (1986)
Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296 (9th Cir. 1979)
Astra Pharmaceutical Prod., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir.
B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d Cir.), cert.
denied, 398 U.S. 952 (1970)
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989)
Bayline Partners, L.P. v. Weyerhauser Co., 31 USPQ2d 1051 (N.D. Cal. 1994)
Bose Corporation v. Linear Design Labs, Inc., 467 F.2d 304 (2d Cir. 1972)
Brown Bag v. Symantec Corporation, 960 F.2d 1465 (9th Cir.), cert. denied, 121 L.Ed.2d
141, 113 S.Ct. 1298 (1992)
Cavallo, Ruffalo & Fargnoli v. Torres, 1989 Copyright Law Decisions (CCH) ¶ 26,410
Celotex Corporation v. Catrett, 477 U.S. 317 91 L.Ed.2d 265, 106 S. Ct. 2548 (1986)
Clamp Manufacturing, Company, Inc. v. Enco Manufacturing Company, Inc., 870 F.2d 512
(9th Cir.), cert. denied, 493 U.S. 872 (1989)
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 11 L. Ed. 2d 183, 84 S. Ct.
Conan Properties Inc. v. Mattel Inc., 712 F.Supp. 353 (S.D.N.Y. 1989)
Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973 (9th Cir. 1987)
Eclipse Associates Limited v. Data General Corporation, 894 F.2d 1114 (9th Cir. 1990)
Escada AG v. The Limited, Inc., 810 F.Supp. 571 (S.D.N.Y. 1993)
Fabrica Inc. v. El Dorado Corporation, 697 F.2d 890 (9th Cir. 1983)
Farberware, Inc. v. Mr. Coffee, Inc., 740 F.Supp. 291 (D.Del. 1990)
First Brands Corporation v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987)
Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148 (3d Cir. 1984)
Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987)
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 72 L. Ed. 2d 606,
102 S. Ct. 2182 (1982)
J. B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187 (9th Cir. 1975) cert.
denied, 424 U.S. 913 (1976)
M. Kramer Manufacturing Co., Inc. v. Andrews, 783 F.2d 421 (4th Cir. 1986)
Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602 (S.D.N.Y. 1979)
Lindy Pen Co. Inc. v. Bic Pen Corp., 725 F.2d 1240 (9th Cir. 1984), cert. denied, 469
U.S. 1188 (1985)
Litchfield v. Spielberg 736 F. 2d 1352 (9th Cir. 1984), cert. denied, 470 U.S. 1052
Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984)
Motown Record Corp. v. George A. Hormel & Co., 657 F.Supp. 1236 (C.D.Cal. 1987)
Oreck Corp. v. U.S. Floor Systems, Inc. 803 F.2d 166, reh. denied, en banc, 808 F.2d 56
(5th Cir. 1986), cert. denied, 481 U.S. 1069 (1987)
Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981)
Programmed Tax Systems, Inc. v. Raytheon Co., 439 F.Supp. 1128 (S.D.N.Y. 1977)
Prufrock Ltd., Inc. v. Lasater, 781 F.2d 129 (8th Cir. 1986)
Rachel v. Banana Republic, Inc., 831 F.2d 1503 (9th Cir. 1987)
Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987)
Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978)
Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 11 L.Ed.2d 87, 84 S.Ct. 1131
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990)
Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981)
Smith v. Weinstein, 578 F.Supp. 1297 (S.D.N.Y.), aff'd without op., 738 F.2d 419 (2d
Summit Machine Tools Manufacturing Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434 (9th
Sunbeam Corp. v. Equity Industries Corp., 635 F. Supp. 625 (E.D.Va. 1986), aff'd
without op., 811 F.2d 1505 (4th Cir. 1987)
Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1980)
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. ___, 120 L.Ed.2d 615, 112 S.Ct. 2753
Venn v. Goedert, 319 F.2d 812 (8th Cir. 1963)
Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F.Supp. 981 (S.D.N.Y. 1967)
Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231 (2d Cir. 1983)
STATUTES AND OTHER
Copyright Act passim
Lanham Act, 15 U.S.C. § 1051 et seq. passim
McCarthy on Trademarks (3d Ed.), Vol 1, § 11.06
Requesting an unprecedented
expansion of established Lanham Act and state law unfair competition principles, plaintiff
Capcom contends that the entirety its Street Fighter video game constitutes protectable
trade dress, and that Data East has engendered a likelihood of consumer confusion by
having supposedly copied Street Fighter.
As a matter of law, Capcom's effort to metastasize trade dress principles beyond their
appropriate limits and into a new kind of intellectual property protection, more expansive
than copyright, is demonstrably in error. Further, the claim that Fighter's History is a
"copy" of Street Fighter is false and has already been substantially rejected by
this Court.4 Capcom's assertion that the games are so similar that consumers are likely to
believe that Fighter's History is a Capcom Street Fighter game faces an insurmountable
obstacle: Data East's games are boldly and prominently marked in many places with Data
East's completely distinctive Fighter's History trademark and, importantly, with its
distinctive Data East® trade name and logo. In this brief, we show that Data East is
entitled to summary judgment based on the following five independent grounds: (1) Street
Fighter's so-called "trade dress" is not trade dress. (2) Capcom cannot meet its
burden of proving that its trade dress is nonfunctional. (3) Capcom cannot meet its burden
of proving that its trade dress is distinctive. (4) Capcom cannot meet its burden of
proving that Data East "bodily appropriated" Street Fighter. (5) The prominent
source identification and dramatically different labeling of Fighter's History precludes
any finding of likelihood of confusion. As for the pendent state claims, they are all
either preempted by federal copyright law, doomed by the outcome on the federal claims, or
otherwise defective. In the First Amended Complaint, Capcom candidly reveals its real
concern: the specter of competition in the marketplace: "Data East . . . [has]
promoted and sold Fighter's History . . . in direct competition with Street Fighter II . .
. ." First Amended Complaint
STATEMENT OF FACTS
Data East need not dwell upon
the background of the parties nor the details of the video games at issue. The previous
proceedings in this case have made the Court familiar with Street Fighter, with Fighter's
History and with the wealth of public domain stereotypes and other unprotectable matter
from which Capcom drew the characters and moves and other features used in its video game.
There are some additional undisputed facts that are particularly salient to the trade
First, Capcom claims its entire game as trade dress. Capcom has stated in discovery
that Street Fighter's trade dress includes:
"the distinctive appearance, fighting style, special and common moves, combination
attacks, personalities, and other features of the Street Fighter characters . . . ; the
name of the game and names of the characters; the distinctive style of graphics and
animation used in the Street Fighter games . . . ; the sound effects of the Street Fighter
games . . ."; and "the distinctive appearance of the Street Fighter II cabinet,
including, but not limited to, the physical layout of the two eight-position joysticks and
six-button control panels, the shape and colors of the cabinet, and the appearance of the
various graphics and words on the cabinet."
Thus, Capcom claims that everything the player does or perceives in playing Street
Fighter is Street Fighter's trade dress. The earlier copyright proceedings have focused
substantially, though not entirely, on the games as actually played, particularly the
characters, special moves, and control sequences. The Court has ruled that much of Street
Fighter is not protectable in copyright, including the attract mode and the joystick and
six-button control sequences, in part because they "served a 'utilitarian
function.'" Aug. 19 Order at 13-14.
Subsequent discovery confirms the functionality and nondistinctiveness of the
controller. Capcom has admitted it adopted the six-button controller for the Street
Fighter games as a quality improvement over the previous control mechanism, a pounding
pad, because the pounding pads were unreliable (Duke Depo. 88-90; 126-27 [Counsel Dec.
Exh. D]). Use of a six-button controller is now a "common practice" in video
arcade games. It is "the standard format of the arcade" games in Japan; "in
fact the six-button control device with a joy stick is a conventional control panel in
Japan for arcade games." It is now also available for purchase in the home market.
(Id. at 90, 92, 93, 94.) Nondistinctiveness of Arcade Cabinets
Video game cabinets are also nonproprietary, functional and non-distinctive. The
cabinets have the overall physical structure, standard in the industry, of a stand-alone
box large enough to contain all of the necessary physical elements of the game.
Manufacturers of one-on-one fighting games (including both Capcom and Data East) commonly
sell their games already installed in the cabinets or in the form of kits that can be
installed in available cabinets. Duke Depo. 188-89, 222-24; Jacobs Depo. 21 (Counsel Decl.
Exhs. D, E). The kits include decals displaying the distinctive artwork touting the game,
for placement on the marquee and elsewhere on the cabinet. The cabinets themselves are
designed and manufactured by third parties. Capcom and Data East both do business with the
same independent third-party supplier of generic cabinets, a company known as III-Koam.
Duke Depo. 221-22; Jacobs Depo. 26-28.
Capcom has used a number of different styles of cabinets with Street Fighter (Duke
Depo. pp. 221-22), and game manufacturers, including Capcom, commonly take no steps to
maintain the exclusive use of their cabinets for their own games. As Capcom admitted in
discovery, "Capcom does not attempt to exert control over owners of arcade cabinets
that were originally sold with Street Fighter II video games with respect to whether the
owner can install a different manufacturer's game in the arcade cabinet." Responses
to Second Interrogatories, No. 33 (Counsel Decl. Exh. B); accord, Duke Depo. p. 223.
"In view of the fact that an operator can essentially buy some form of generic
cabinet which Capcom has no control over," Capcom's deponent Brian Duke admitted,
"it's fair to say that Capcom doesn't take the shape of the cabinet in and of itself
as an identifying feature of the Street Fighter game . . . ." Id.
Home versions of Fighter's History
Capcom amended its Complaint to add claims that home versions of Fighter's History for
the Neo Geo system and for Super Nintendo Entertainment System (SNES) infringe Street
Fighter's alleged trade dress. First Amended Complaint (hereafter referred to as
"Complaint") 56-61, 84, 89, 93. None of the alleged similarity relating to the
arcade games' control devices, cabinets or artwork have any bearing whatever on the home
versions of Fighter's History, because the home versions do not come with control devices
or cabinets and bear little (and different) artwork. It is undisputed that both the
Neo-Geo and SNES home video versions of Fighter's History are designed for play on video
game systems manufactured by third parties, and that all game cartridges containing the
games are made by third parties to meet the specifications of the game systems
manufacturers. The packaging for those cartridges bear Data East's name, trademarks and
logos and some artwork. It is indisputable that the limited marking on the cartridge
packaging for Data East's Neo Geo and SNES games in no way resembles that on Capcom's
cartridges or packaging. Compare Exhibits F - I, Declaration of Counsel.
Before turning to the most critical elements of trade dress - the games' identifying
trademarks, trade names, logos and cabinet artwork - we briefly set forth undisputed facts
that relate to consumers' appreciation of the differences in appearance of the two games
as they are encountered in the arcade versions.
Consumers' Familiarity With The Name Capcom
According to Capcom, the trademark and trade name Capcom and the trademark Street
Fighter are indivisibly linked with each other and with the Street Fighter game. Every
arcade or consumer version of Street Fighter has "the name 'Capcom' prominently
displayed on it" (Morici Depo. I:204 [Counsel Decl. Exh. A]); the game is
"synonymous" with Capcom (id. I:103); and "people say Street Fighter II and
Capcom at the same time." (Id.) Indeed, Capcom states that "the game sold
because it was Street Fighter II and Capcom made it." Capcom admits purchasers
"are not only looking at the name 'Street Fighter II,' but are also looking for the
name 'Capcom' on the package." (Morici Depo. I:103-04.)
Video Game Consumer Sophistication
Capcom currently is seeking to register with the United States Patent and Trademark
Office ("Trademark Office") the trademarks Street Fighter and Street Fighter II,
for use on the very games at issue here.7 In those still-pending proceedings where
Capcom's ownership of the marks is being challenged by Scientific Toys, owner of Street
Fighter for toy vehicles, the Trademark Office initially rejected Capcom's applications on
the ground that "Street Fighter" is likely to be confused with
previously-registered trademarks Road Fighter for video games and Scientific Toys' Street
Fighter. In response, Capcom argued that the sophistication of video game customers
eliminated any likelihood of confusion with the previously registered marks. Capcom
averred that video game players exercise "a high degree of customer scrutiny and
sophistication [that] eliminates possible customer confusion"; that its customers are
"video game aficionados"; that their awareness of Street Fighter was
"solidly linked to the product's brand name"; that "game customers will be
sophisticated and careful"; and that video game purchasers are "sophisticated .
. . with regard to the product's trademark."8
The Appearance Of The Capcom and Data East Arcade Games
Capcom alleges that due to Data East's supposed copying of Street Fighter,
"potential video game players will be confused about the source of Fighter's History
[games], . . . and will believe that they are CAPCOM Street Fighter games." Complaint
82. However, as demonstrated on the following fold out page, presenting photographs of the
two games as they appear in an arcade, each game is clearly and colorfully marked with
distinctive trademarks, trade names, logos, and artwork, proclaiming Street Fighter II
from Capcom in large lettering, or Fighter's History from Data East in even larger
The following two pages show, in greater detail, how the parties' trademarks, Street
Fighter II and Fighter's History, appear on the games' 24" video screens.10 These
screens shots, like those illustrated on the previous pages, are part of the displays that
appear when the two games are in "attract mode." In each case, as the screen
shots show, the parties spread their copyright notices in prominent lettering on the lower
part of the screen. Thus, potential players are specifically apprised that the companies
"Capcom Co. Ltd." and "Capcom U.S.A. Inc." own the copyrights to
"Street Fighter II," and that "Data East Corporation" owns the
copyrights to "Fighter's History."
Each game is also marked in a number of places with its manufacturer's trade name. In
addition to its appearance on the computer screen, the name Capcom appears prominently on
the Street Fighter cabinet in three places, in Capcom's characteristic white-on-red logo.
The name Data East appears equally prominently in five places on Fighter's History, in
Data East's characteristic logo, which invariably includes Data East's stylized initials
"DE" accompanied by the words "Data East."11 See Marks Decl. Exhs. A
and B. In addition to the copyright notices and other applications of Data East's name and
logo, Data East has caused the "attract mode" of Fighter's History to flourish
Data East's trade name and logo in vibrant, multicolored lettering. On the following page,
we reproduce the Data East trade name as it appears, actual-size, on the video game screen
of Fighter's History in the game's attract mode.12
SUMMARY JUDGMENT IS REQUIRED IN ORDER TO EXPEDITIOUSLY RESOLVE THE ISSUES IN THIS CASE.
"Summary judgment procedure is properly regarded not as a disfavored procedural
shortcut, but rather as an integral part of the Federal Rules as a whole, which are
designed 'to secure the just, speedy and inexpensive determination of every action.'"
Celotex Corporation v. Catrett,477 U.S. 317, 327 (1986). Those goals mandate the entry
of summary judgment, where, as here, there is no genuine issue of material fact, and where
- in light of Capcom's burden of proof - the issues may not reasonably be resolved in
Capcom's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). To
withstand a motion for summary judgment, the non-moving party must come forward with
evidence sufficient to establish every element essential to its case, even if the moving
party presents no evidence. Celotex, 477 U.S. at 321-24. There is no evidence
sufficient to support any of the essential elements of Capcom's claims herein.13
II. THERE IS NO
GENUINE FACTUAL ISSUE ON THE LANHAM ACT CLAIM.
A. Capcom's Burden of Proof: The
Elements of a Lanham Act Claim.
To prevail on its claim of trade dress infringement under the Lanham Act, Capcom
must establish all of the following: First, that (as Capcom contends) the entirety of
Street Fighter constitutes "trade dress" within the meaning of the Lanham Act;
Second, that Street Fighter's "trade dress," so understood, is nonfunctional;
Third, that its "trade dress" is either inherently distinctive or has acquired
secondary meaning; and Fourth, that Data East has "bodily appropriated" Street
Fighter II's trade dress; and Fifth, that there is a likelihood that potential consumers
"will be confused about the source of Fighter's History, . . . and will believe"
that Fighter's History is a "CAPCOM Street Fighter game." (Complaint ¶ 82.) Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. ___, 120 L.Ed.2d 615, 112 S.Ct. 2753
(1992); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841-42 (9th
Cir. 1987) (considering issue of whether claimed trade dress qualifies as such before
turning to protectability and likelihood of confusion); Shaw v. Lindheim, 919 F.2d
(9th Cir. 1990) ("bodily appropriation" standard).
B. The Entirety Of A Computer Game Cannot Be Trade Dress
And Is Therefore Not Protectable Under The Lanham Act. In the Two Pesos, Inc. v.
Taco Cabana, Inc. case, supra, the first question that the district court's
instructions asked the jury to determine, prior to deciding whether a restaurant's trade
dress was nonfunctional, distinctive, etc., was whether "Taco Cabana has a trade
dress." 120 L.Ed.2d at 622, emphasis added. Similarly, in the Ninth Circuit's
Fuddruckers case, the court addressed whether a restaurant's decor qualified as trade
dress before considering whether it was protectable trade dress. 826 F.2d at 841-42.
Because Capcom does violence to the fundamental principles underlying trade dress
protection by characterizing its entire game as trade dress, it is necessary to consider
that issue at the outset.
1.Capcom Claims That Everything The Player Does Or Perceives In Using Street Fighter
- Meaning The Whole Of The Street Fighter Game - Constitutes Street Fighter's Trade Dress.
In ¶ 77 and 80 of the Complaint, Capcom broadly alleges that Street Fighter
contains "distinctive, non-functional characters, graphics, physical elements and
trade dress," and that Data East "copied" these "distinctive elements
of the Street Fighter arcade games and cabinet, and other elements of the Street Fighter
trade dress" into Data East's game. What are those elements? They are everything
Capcom previously attempted to protect under copyright - they are the entire game. As
Capcom stated in discovery, "[Street Fighter's] trade dress includes, but is not
limited to the following: the distinctive appearance, fighting style, special and common
moves, combination attacks, personalities, and other features of the Street Fighter
characters, including the controls and user interface for the character's movements; the
name of the game and names of the characters; the distinctive style of graphics and
animation used in the Street Fighter games, including the appearance, layout, animation,
and color combinations of the attacking and defending moves, the vitality bar, the menu
selection screens, the 'versus' and 'victory' before and after screens, the attract mode,
the ending sequences, the special effects, the 100 count timer, the other graphics and
animation of the Street Fighter games; the sound effects of the Street Fighter games,
including the type of music, the acceleration of the music at a particular time, the
voices at the beginning and ends of matches, and the voices and other sound effects that
accompany particular moves . . . [and] the distinctive appearance of the Street Fighter II
cabinet, including, but not limited to, the physical layout of the two eight-position
joysticks and six-button control panels, the shape and colors of the cabinet, and the
appearance of the various graphics and words on the cabinet."14 Capcom's claimed
trade dress is all-encompassing. In Capcom's view, the whole game is its own trade
Capcom has also confirmed that it is the game itself, rather than its packaging or
appearance, which Capcom claims as trade dress, by adding claims against new Fighter's
History products in its amended pleading. In alleging that the home version of
"Fighter's History Dynamite" for the Neo Geo system infringed and that the home
version of Fighter's History SNES would infringe, Capcom identified as copied features no
elements of the home systems' packaging or external appearance, but only their
"characters, special techniques, combination attacks, and joystick and button
combinations required to invoke special techniques and combination attacks."
Complaint ¶ 58, 61; see Counsel Decl. Exhs. F - I showing packaging of those products.
Not only does the entire game constitute claimed trade dress, but Capcom insists that
any effort to understand Capcom's trade dress claim on the level of anything smaller than
the indivisible whole of the Street Fighter game is erroneous: "[I]t is the
combination of the numerous similarities in timing, moves, characters, controls, graphics,
music, and other features that makes Fighter's History a copy of Street Fighter II, and
thus it is meaningless to attempt to dissect and describe these similarities at the level
requested by Data East." (Supple. Response to First Interrogatories, No. 4, pp. 2-3
[Counsel Decl. Exh. L].)
In light of Capcom's considered refusal to define any more narrowly what it claims as
trade dress, the Court must take Capcom at its word. The Court must consider only whether
the entirety of Street Fighter constitutes trade dress, whether that entirety is
protectable, and whether it is infringed.
2. Trade Dress Protection Cannot Be Used To Bypass The Limitations Of Copyright Law.
In claiming trade dress protection for the entirety of its product, Capcom seeks to
beget a new species of intellectual property protection, unrelated to the consumer
protections at the core of the Lanham Act and unconstrained by the limiting principles of
copyright and patent law, in order to evade the careful balance of public and private
interests wrought by those laws.
The Court's denial of the preliminary injunction and its copyright summary judgment
orders recognized that many of Capcom's characters were drawn from the public domain of
stereotyped characters (although some of them arguably have expressive details), and that
various claimed game elements such as the attract mode, vitality bar and control sequences
represent mere ideas, scenes a faire or useful articles. All but 20 of Street Fighter's
more than 650 moves, moreover, have now been held to be unprotectable under copyright as a
matter of law. Having given proper consideration to Capcom's private interest in its
limited creative expression, if any, on the one hand, and to the public's interest in free
access to ideas and other items in the public domain, on the other hand, this Court has
already held that the game as a whole is entitled to little protection. The basic issue
posed by Capcom's Lanham Act theory, then, is whether the identical
copyright-unprotectable whole, permeated as it is with ideas, stereotypes and technologies
within the public domain, can be withdrawn from that domain and transformed into Capcom's
private property merely by dubbing it "trade dress."
3. Trade Dress Protects Labels, Containers, And Packaging - Not Concepts Or
In the proper circumstances, trade dress offers flexible protection against efforts
to mislead the public by simulating the appearance or image of a product without actually
copying the name or names under which that product is sold. But the protection given the
appearance or image of products is an outgrowth of trade dress's traditional protection of
the non-verbal aspects of markings, labels, containers and packages, and the
"image" that trade dress protects must be understood in light of that purpose.
Trade dress does not protect "images" in the sense of the basic concepts or
ideas or substance embodied in a product. See Prufrock Ltd., Inc. v. Lasater, 781
F.2d 129, 131, 134 (8th Cir. 1986) ("core concept" or theme of restaurant is not
trade dress). In a non-trade dress sense, for example, the "image" of a high
performance sports car might be described as - "powerful vehicle with precise
handling and great 'road feel'" - but this does not mean that the trade dress of a
car includes its power, handling and road feel, and that no one else can build a car that
has power, handling and road feel. The "image" that is protected by trade dress,
on the contrary, is only the appearance or image of its source-identifying markers in
their totality, whether they be trademarks, logos, labels, containers, exterior visual
shapes or some combination of these. A wide range of possible elements may be deemed to be
part of the trade dress of a product. But the range of potential elements does not mean
that anything and everything constitutes trade dress; still less does trade dress
encompass the product itself. Rather, "'[t]rade dress' is the appearance of the
product . . . ." Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th
Cir. 1987), emphasis added.
As the Ninth Circuit observed in Fabrica Inc. v. El Dorado Corporation, 697 F.2d
890, 895 (9th Cir. 1983), quoting with approval an opinion Justice Stewart authored while
sitting on the Sixth Circuit:
"'The difference in the protection against imitation which will be accorded to an
article of commerce on the one hand, and to a package in which the article is marketed on
the other, was long ago noted. . . . [T]he public policy which permits the imitation of an
article of commerce is without relevance to the dress in which the article is
Plainly, the Ninth Circuit does not anticipate that this distinction in protection can
be obliterated by the simple act of dubbing the article of commerce its own trade dress.
As the Ninth Circuit explained in another case, "Trademarks are not properly used as
patent substitutes to further or perpetuate product monopolies." Anti-Monopoly,
Inc. v. General Mills Fun Group, 611 F.2d 296, 300 (9th Cir. 1979), citation
Thus, Capcom cannot protect its game as trade dress. Most of the items Capcom points to
as comprising its trade dress - e.g., "fighting style ... of the Street Fighter
characters," "the controls ... for the character's movements," the
"animation used in the Street Fighter games," "the voices and other sound
effects that accompany particular moves"17 - do not make up the "image" of
Street Fighter. They make up the Street Fighter game itself.
4. The Most "Expansive Definitions" Of Trade Dress Are Limited To
Protecting External Appearances Or Packaging.
The cases that have gone the furthest in protecting trade dress have nonetheless
observed the distinction between goods or services, on the one hand, and their associated
trade dress, on the other. In Fuddruckers, for example, the Ninth Circuit never
agreed that the trade dress rubric included anything more than "the total visual
image of [Fuddrucker's] restaurant services," including the restaurant's
"decor, menu, layout and style of service." 826 F.2d at 841, emphasis added. The
court clearly limited trade dress in the case to the image of the restaurant, not its
actual restaurant services. When, as was the case in Fuddruckers and in Two Pesos, the
"product" at issue consists of "restaurant services," the decor and
other protectable items are essentially the "packaging" in which such restaurant
services are wrapped.
Revealingly, Fuddruckers cites, as an example of "expansive definitions of
trade dress" (826 F.2d at 837) adopted by other courts, the definition employed in a
case involving video games, M. Kramer Manufacturing Co., Inc. v. Andrews, 783 F.2d
421 (4th Cir. 1986). The "expansive definition" of trade dress adopted in M.
Kramer, however, was limited to "the console in which the game is housed, the
artwork on the glass panel upon which the video graphics are displayed, and the name [of
the video game]." 783 F.2d at 447.
Notwithstanding that the games at issue were "virtually identical," the
Fourth Circuit did not rule that the copied game was its own trade dress, or that anything
beyond that which can be seen when a player approached the game constituted its trade
5. Capcom's Trade Dress Claim Is At Odds With The Policy Of Free Competition In
Goods Not Protected By Patent Or Copyright.
The out-of-bounds conception of trade dress asserted by Capcom not only contradicts
established notions of what trade dress is; it raises profound tensions with the policies
favoring free competition which the Supreme Court has repeatedly emphasized in addressing
unfair competition claims.
The concern that broad protection of products themselves should not be granted under
the guise of supposed consumer protection has been reflected in the Supreme Court's
jurisprudence on the preemption of state "unfair competition" law by federal
copyright and patent law. In companion cases decided thirty years ago whose principles
were reaffirmed in 1989, the Supreme Court emphasized that parties are fully entitled to
sell exact copies of unpatented articles, notwithstanding that "there could be
'confusion' as to who had manufactured these nearly identical articles." Sears,
Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 232 ((1964); Compco Corp. v.
Day-Brite Lighting, Inc., 376 U.S. 234 ((1964).18 Accord, Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 156 (1989) ("we have consistently
reiterated the teaching of Sears and Compco that ideas once placed before the public
without the protection of a valid patent are subject to appropriation without significant
restraint"); Bayline Partners L. P. v. Weyerhauser Co., 31 USPQ2d 1051, 1053
(N.D.Cal. 1994) ("The public policy favoring free competition dictates that a court
must be extremely careful in finding a design protectable as trade dress.").
Although the principles articulated in these cases have not been held to bar all state
regulation of trade dress, there would be a disturbing tension between the freedom to copy
unpatented articles and ideas and the protection of trade dress, if unpatented articles
could themselves be designated as their own trade dress. That tension is dissolved,
however, when "trade dress" is limited to its proper realm - the packaging or
appearance of products or services, but not the underlying articles of commerce. What
Capcom claims is its trade dress is not trade dress, but is the total product. Capcom's
claim must therefore be rejected.
C. Capcom's Claimed Trade Dress Is Not Protectable.
Even assuming, arguendo, that Capcom's claimed trade dress is trade dress at all,
Capcom must show that it is nonfunctional and distinctive in order for it to qualify for
protection under the Lanham Act. Two Pesos, 120 L.Ed.2d at 624; Bayline
Partners, 31 USPQ2d at 1053; Rachel v. Banana Republic,, 831 F.2d at 1506
(burden of proof of nonfunctionality on plaintiff). Capcom can meet neither requirement.
1. The Pleadings And The Incontrovertible Facts Establish That Capcom's Alleged
Trade Dress Is Functional.
Capcom's responses to Data East's Second Set of Interrogatories identify five broad
elements of its claimed trade dress (we leave out only various phrases starting
" the distinctive appearance, fighting style, special and common moves,
combination attacks, personalities, and other features of the Street Fighter characters .
. . ;
" the name of the game and names of the characters;
" the distinctive style of graphics and animation used in the Street Fighter games
. . . ;
" the sound effects of the Street Fighter games . . ."; and
" the distinctive appearance of the Street Fighter II cabinet, including, but not
"[a] the physical layout of the two eight-position joysticks and six-button control
"[b] the shape and colors of the cabinet, and
"[c] the appearance of the various graphics and words on the cabinet."
(Responses to Second Interrogatories, Nos. 21 and 22; full responses quoted above [Counsel
Decl. Exh. B].)
There is no need to engage in a prolonged analysis concerning whether certain
"borderline" elements listed above are functional - particularly, the names of
the game and of the characters, characteristics of the cabinet or appearance of graphics
and words on the cabinet - because a moment's perusal shows that these elements are in
fact incontestably different in the two games or are plainly unprotectable or both.19
Taking the remaining claimed elements of trade dress as a whole, it is manifest that the
claimed trade dress is not protectable because Capcom's own pleadings prove that the trade
dress is functional.
The Ninth Circuit recently confirmed the standard for determining functionality:
"'Functional features of a product are features 'which constitute the actual
benefit that the consumer wishes to purchase, as distinguished from an assurance that a
particular entity made, sponsored, or endorsed a product."' A product feature thus is
functional 'if it is essential to the use or purpose of the article or if it affects the .
. . quality of the article.' . . . [S]ome cases have even suggested that in order to
establish nonfunctionality the party with the burden must demonstrate that the product
feature '"serves no purpose other than identification."'"
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531 (9th Cir. 1992),
citations omitted, emphasis added.
Capcom's pleadings confirm that Capcom's asserted trade dress is functional.
"Before Street Fighter, one-on-one fight games . . . employed simplistic fighting
styles, with relatively primitive graphics. Street Fighter introduced two characters with
novel fighting styles and special techniques . . . . Street Fighter also employed a novel
system of physical controls . . . . Street Fighter II incorporated further ground-breaking
innovations and game feature elaborations . . . . Each of the Street Fighter II characters
also had its own distinctive and innovative fighting style and moves . . . . Street
Fighter II used dramatically enhanced graphics for the characters' appearances, moves, and
special techniques . . . ." Complaint, ¶¶ 12, 13, 14, 17, 24; see generally
Complaint ¶¶ 10-40.
Regardless of whether these features and enhancements were as innovative as Capcom
claims, Capcom alleges and therefore admits that (in Sega's words) they "affect . .
. the quality" of the game and are "essential to the use or purpose" of the
game: "The cumulative impact of these enhancements and original features,"
Capcom alleges, "produced an exciting game with varied, complex fighters, moves and
controls. " Complaint ¶ 25.20
These features "constitute the actual benefit that the consumer wishes to
purchase," Sega's other formulation of the functionality standard:
"Street Fighter II owes much of its success to its many innovative special moves
and techniques, which make the game challenging and difficult to master. . . . By copying
the characters' appearance, moves, and physical control combinations, as well as other
elements of the Street Fighter II games, Data East . . . produced a game that allows an
experienced Street Fighter II player to switch to Fighter's History and play at a similar
level of proficiency with little or no practice or learning time. Data East . . . [is]
thus attempting to 'free-ride' on the enormous investment of Capcom . . . in developing
and marketing the Street Fighter games." Complaint, ¶¶ 7, 25, 54, 55.
Or, as Capcom put it in its Memorandum in Support of Motion for Preliminary Injunction
(pp. 11, 13), that which Data East allegedly copied include "the most popular
character" and "the most . . . popular features of Street Fighter II."
Calling these "popular," alleging that Data East is seeking a "free
ride" by giving Capcom's customers what they are used to and want, are merely other
ways of saying that the collection of features supposedly copied embody the actual benefit
the public seeks in purchasing the product.
Capcom may attempt to respond that even if its trade dress is comprised of various
functional elements, the whole may still be protectable. Any such response would be
meritless for two reasons.
First, as Capcom's pleading alleges, it is precisely the integrated whole of the
purported trade dress of Street Fighter that is functional: it is the very combination of
all of the elements that Capcom claims as its trade dress that is the actual benefit its
customers seek. "[O]ur inquiry is not addressed to whether individual elements . . .
fall within the definition of functional, but to whether the whole collection of elements
taken together are functional." Fuddruckers, 826 F.2d at 842, footnote
omitted. Capcom's own pleading demonstrates that the entire collection is functional.21
Second, even if there were any nonfunctional aspects of Street Fighter's claimed trade
dress, this would not alter the conclusion of functionality where, as here, the overall
product design "does not appear to be solely or even primarily geared toward consumer
identification." Bayline Partners, 31 USPQ2d at 1053 (also warning of
"need for caution in granting trade dress protection"); Clamp Manufacturing,
supra, 870 F.2d 512, 516 (9th Cir.), cert denied 493 U.S. 872 (1989) ("[T]he
right to copy better working designs would, in due course, be stripped of all meaning if
overall functional designs were accorded trademark protection because they included a few
arbitrary and nonfunctional features").
The conclusion is inescapable: Capcom's claimed trade dress is functional and
2. Capcom's Alleged Trade Dress Is Not Distinctive.
Trade dress, like any trademark, "is distinctive and capable of being
protected only if it either (1) is inherently distinctive or (2) has acquired
distinctiveness through secondary meaning." Two Pesos, 120 L.Ed.2d at 624,
628. Data East is entitled to summary judgment because there is no evidence to support
(a) Street Fighter's Trade Dress Is Not Inherently Distinctive.
Street Fighter's trade dress is not inherently distinctive for two reasons. First, trade
dress comprised of common or functional elements, like Street Fighter's, is not inherently
distinctive. As the Ninth Circuit held in Fuddruckers:
"Fuddruckers claims trade dress protection for the impression created by a
collection of common or functional elements . . . . Such an overall impression may receive
protection, but it is simply not the sort of arbitrary or uncommon trade dress that might
qualify as inherently distinctive." 826 F.2d at 844.
To be inherently distinctive, the "intrinsic nature [of a mark must] serve to
identify a particular source of a product." Two Pesos, 120 L.Ed.2d at 624.
This Court has already determined, as a matter of law, that the overwhelming majority of
features and elements of Street Fighter are not protectable under copyright law because
they are "commonplace in the video game industry" and/or because they
represented "stereotypes." Aug. 19 Order, pages 14-15.
Moreover, all or virtually all of Street Fighter's claimed trade dress is functional.
If, for some reason, the functionality of the trade dress or of various elements of the
trade dress does not bar it from being protected altogether, that functionality - along
with the fact that the trade dress is comprised of "commonplace,"
"stereotyped" characters and moves - precludes any finding of distinctiveness.
Certainly it is not the "intrinsic nature" of Street Fighter's broadly defined
trade dress "to identify a particular source." Two Pesos, id.
Second, Street Fighter's trade dress is not inherently distinctive because it is
"merely descriptive." Two Pesos, 120 L.Ed.2d at 624. "To be
characterized as 'descriptive,' a term must directly give some reasonably accurate or
tolerably distinct knowledge of the characteristics of a product." McCarthy on
Trademarks (3d Ed.), Vol 1, § 11.06, page 11-26, citing Blisscraft of Hollywood v.
United Plastics Co., 294 F.2d 694 (2d Cir. 1961). Street Fighter's "trade
dress" - its actual characters, moves, graphics, music, etc. - gives accurate and
distinct knowledge of the characteristics of the game, and therefore it is merely
descriptive and not inherently distinctive.
(b) Street Fighter's Trade Dress Has And Can Have No Secondary Meaning.
Any claim that Street Fighter's trade dress has secondary meaning is erroneous as a matter
of fact and of law. First, there is an absence of evidence to support any finding of
secondary meaning. Celotex, 477 U.S. at 321-24. Second, there can be no such
evidence, in light of the character of the claimed trade dress.
"To establish secondary meaning, a manufacturer must show that, in the minds of
the public, the primary significance of a product feature or term is to identify the
source of the product rather than the product itself." Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844, 851 n. 11 (1982), emphasis added. The
collection of elements that Capcom contends is Street Fighter's trade dress is "the
product itself," and the "primary significance" of that collection of
features in the minds of the public is obviously not to identify the source. Street
Fighter's trade dress, consequently, cannot have secondary meaning. Thus, Street Fighter's
trade dress is not protectable since it neither is inherently distinctive nor has
D. Capcom's Inability To Prove "Bodily Appropriation" Of Its Supposed
Trade Dress Precludes Any Likelihood Of Confusion Finding.
Capcom cannot prove - as it must to state a Lanham Act claim based on copying -
that Data East "bodily appropriated" Capcom's Street Fighter video game. In this
case, as in many others, a copyright infringement claim has been linked to and re-stated
as a Lanham Act claim. The essence of a Lanham Act claim founded on copying (whatever
label is affixed to it - unfair competition, misappropriation, passing off or reverse
passing off) is simply that the defendant marketed an alleged copy of plaintiff's program
or goods without revealing the program's true provenance, and thereby engendered a
likelihood of confusion as to the source of the program. All such claims founded on
copying, regardless of their form, have to prove copying sufficient to create a likelihood
of confusion as to source.
Since Capcom's Lanham Act claims are based on allegations of copying, the Lanham Act
claim cannot survive a holding or verdict that the copyright allegations are meritless. Brown
Bag v. Symantec Corporation, 960 F.2d 1465, 1477 n. 6 (9th Cir.), cert. denied 113
S.Ct. 1298 (1992) (a "reverse passing off claim is . . . dependent upon a successful
[copyright] infringement claim"); Warner Bros., supra, 720 F.2d 231, 246 (2d
Cir. 1983) ("'the absence of substantial similarity leaves little basis for asserting
. . . palming off' for purposes of a claim under section 43(a)"). Further, the Ninth
Circuit has squarely held that a defendant can escape summary judgment on a copyright
claim by showing that there is a jury issue on substantial similarity, but still lose its
Lanham Act copying claim because a showing of substantial similarity is not enough to
sustain a Lanham Act claim. Rather, "bodily appropriation" must be shown, for §
43(a) is simply not applicable "where the products at issue are merely substantially
similar." Shaw v. Lindheim, supra, 919 F.2d at 1364 (9th Cir. 1990).
As the Shaw Court explained:
"We are reluctant to expand the scope of § 43(a) to cover the situation presented
here. . . . In spite of the similarities . . . , the likelihood that the two works will be
confused is minimal. We decline to expand the scope of the Lanham Act to cover cases in
which the Federal Copyright Act provides an adequate remedy." Id. at 1364-65.
In this case, Data East is accused of a single wrong: alleged copying of the
distinctive and expressive elements of Capcom's Street Fighter game into Data East's game
Fighter's History. Whatever label - passing off or reverse passing off - is affixed to
that conduct (and the two have been characterized by the Ninth Circuit as "economic
equivalent[s]"22), the same standard of sufficient copying for Lanham Act confusion
should apply. Here, as in Shaw, without a showing of "bodily
appropriation," there is no Lanham Act copying claim.
Recently, in Summit Machine Tools Manufacturing Corp. v. Victor CNC Systems, Inc., 7
F.3d 1434 (9th Cir. 1993), the Ninth Circuit extended Shaw, demonstrating that the court
intends to rein in expansive claims asserted under the rubric of § 43(a), claims which
must in reality stand or fall depending on whether a copyright or patent infringement can
In Summit, the defendant was selling lathes imported from the same Chinese
manufacturer with whom the plaintiff had an exclusive sales agreement. The plaintiff
alleged no copyright or patent claim, but simply asserted that the defendant's sale of
such goods constituted a false designation of origin in violation of § 43(a), on the
basis that it was really plaintiff's lathes that defendant was selling, without telling
anyone. Held: "absent bodily appropriation of its lathe, [plaintiff's] claim must
fail." 7 F.3d at 1438. "Like the plaintiff's script in Shaw, Summit's
lathe falls within the spheres protected by, or intentionally left unprotected by,
copyright and patent law. " Id., emphasis added.
Where copyright law either "provides an adequate remedy" (Shaw) or has
intentionally left the area unprotected (Summit), the Ninth Circuit has
unambiguously signaled its "reluctan[ce] to expand the scope of § 43(a) to cover
[such] situation[s]." 919 F.2d at 1364. Summit and Shaw stand for the
proposition that in any case founded on a claim of copying, the Lanham Act is inapplicable
absent proof of bodily appropriation.
In this case, Capcom alleges - but cannot prove - that Data East "copied"
Street Fighter. Since, as follows from the Court's partial summary judgment ruling,
Fighter's History is manifestly not a "bodily appropriation" of Street Fighter,
Data East is entitled to summary judgment on the Lanham Act claim.23
E. Data East's Clear Labeling Of The Source Of Fighter's History Prevents A
Likelihood Of Confusion.
Even if Capcom could overcome all other obstacles, the uncontroverted facts negate
Capcom's claim (Complaint ¶ 82) that "[t]here is a likelihood that potential video
game players will be confused . . . and will believe that [Fighter's History games] are
CAPCOM Street Fighter games." Consider the salient facts:
"As Capcom admits in its Trademark Office filings, video game consumers are
sophisticated consumers who scrutinize video games carefully, have a high degree of
product awareness, and are sophisticated about trademarks. Street Fighter, Capcom avers,
has a devoted, sophisticated following that pays careful attention to the Street Fighter
brand name, and buys the game in part "because . . . Capcom made it."24 The
Capcom name is strongly associated with the game.
This association means that when a customer observes a different source marked on an
arcade game - Data East - he is immediately apprised that the game comes from a different
Data East's and Capcom's games are both clearly and effectively labeled with entirely
different names, prominently featuring the respective source of goods. Data East's marks
and logos appear with such prominence that there is no likelihood potential consumers will
believe that Fighter's History is Capcom's Street Fighter game.
The effectiveness of the product labeling to preclude confusion is confirmed by the
absence of any evidence of actual confusion.
1. There Can Be No Reasonable Likelihood Of Source Confusion Where, As Here, A
Manufacturer Clearly Marks Its Products To Indicate The Actual Source Of Goods.
It is well-settled that potential confusion based on similarities of trade dress is
dissipated by differences in labeling, and particularly by clear and effective disclosure
of the source of the goods. First Brands Corporation v. Fred Meyer, Inc., 809 F.2d
1378, 1384 (9th Cir. 1987) ("'The ordinary purchaser is not likely to confuse [the
parties' goods where] [t]he labels ... are substantially dissimilar.'"); American
Rolex Watch Corp. v. Ricoh Time Corp., 491 F.2d 877, 879 (2d Cir. 1974) ("there
is hardly likelihood of confusion or palming off when the name of the manufacturer is
clearly displayed") (manufacturer's name on watch effective to preclude confusion
even when not visible from a distance);Freixenet, S.A. v. Admiral Wine & Liquor
Co., 731 F.2d 148, 151 (3d Cir. 1984) (notwithstanding that defendant's frosted black
wine bottle was identical in shape and color to plaintiff's, the labels of the two bottles
were so dissimilar as to rule out any possibility of confusion).25
Data East's Fighter's History game is a model of clear labeling. As demonstrated by the
illustrations in the Statement of Facts of this Brief, following pages 7, 8 and 9, the
labeling on Street Fighter and Fighter's History is dramatically different in overall
commercial impact and rules out any likelihood of confusion as a matter of law. The
parties' respective trade names, Capcom and Data East, are clear indications of source
that appear multiple times on each product. The Data East house name appears five times on
decals affixed to Fighter's History. Each game's "attract mode" includes screens
that display its wholly different looking brand name, Fighter's History and Street
Fighter, respectively, along with a copyright notice stating in half-inch-high lettering
that the respective party holds the copyrights on its game. Fighter's History's attract
mode also displays Data East's distinctive Data East name and logo on the screen in
enormous lettering. The artwork affixed to the two cabinets is entirely different. Marks
Decl. Exhs. A-D, P.
Not only is Data East's labeling different from Capcom's, but - of critical
significance - Data East's video game labels clearly identify Data East as the source of
the goods. Identification of the manufacturer is critical because trade dress is not
protected against infringement or against confusing similarity in the abstract, but only
against that similarity which leads to confusion "as to the source of the
product." First Brands, 809 F.2d at 1383, emphasis added. When a manufacturer
not only uses a distinctive brand name for its goods, as Data East has, but also expressly
identifies itself as the source of the goods, any potential confusion evaporates
completely. In a case similar to this one in relevant respects, the Federal Circuit
emphasized the effectiveness of source-of-goods labeling in avoiding confusion, and held
that such labeling negated any possible federal unfair competition claims. Litton
Systems, Inc. v. Whirlpool Corp., supra, 728 F.2d 1423. The Court of Appeals reversed
as clearly erroneous a district court's conclusion, in Litton, following a bench trial,
that there was a likelihood of confusion between the trade dress of Litton's and
Whirlpool's microwave ovens. The Federal Circuit chided the district court for
"fail[ing] to recognize that '[t]he most common and effective means of apprising
intending purchasers of the source of goods is a prominent disclosure on the container,
package, wrapper, or label of the manufacturer's or trader's name * * * [and that when]
that is done, there is no basis for a charge of unfair competition." 728 F.2d at 1446
(quoting Venn v. Goedert, 319 F.2d 12 (8th Cir. 1963)), emphasis added, original
ellipsis and brackets.
In words that could serve as a rebuke to Capcom's claims, the Court of Appeals observed
with some incredulity:
"The theory of the district judge . . . is that somehow Whirlpool unfairly
competes with Litton despite placing the name Whirlpool on the front of its ovens in three
places, while the name Litton nowhere appears on them. "The accused Whirlpool ovens .
. . conspicuously display the word 'Whirlpool' . . . . Likewise, the name 'Litton' appears
conspicuously on the front of the Litton ovens. Microwave ovens made by third parties, not
involved in this litigation, display the same peculiarity. . . . Clearly, ordinary users .
. . are accustomed to seeing the maker's or the brand name conspicuously placed for their
edification, and distributors and dealers must suppose that this information is important
to the consumer." 728 F.2d at 1446.
Litton Systems is squarely on point. The only difference is that Data East's name
appears not three times, as in Litton, but SIX (6) times on the accused game, and that
both the brand name and the maker's name are displayed on Data East's game - including in
bright lettering five inches high - far more prominently than they were displayed on the
microwave ovens. As in the case of the ovens, video game players are accustomed to seeing
the manufacturer's name and brand name conspicuously placed on the goods: All other
manufacturers of video game, like Data East and Capcom, place their names on their video
games. See, e.g., Marks Decl., Exhs. E - M; see also Exhibits N and O. Not only
"must [we] suppose this information is important to the consumer" because
manufacturers uniformly provide the information (Litton), but Capcom has specifically
admitted in discovery the importance of its trade name Capcom to the relevant consumers.
See sub-section 2(b) below.
2. Capcom's Admissions And Other Evidence Confirm That There is No Likelihood of
Confusion As To The Source Of Fighter's History.
Three other types of evidence - the sophistication of video game consumers, the
specific awareness of the Capcom name among such consumers, and the absence of actual
confusion - confirm that the product markings discussed above preclude any potential for
(a) The Sophistication Of Consumers Of Video Games Renders The Likelihood Of Source
It is inherent in Capcom's trade dress claim that only sophisticated consumers of its
product could be confused, for Capcom does not claim that the features a casual player or
passer-by would notice - the names on the cabinet, the cabinet artwork or the attract
mode, taken by themselves - are the source of potential confusion. Rather, Capcom contends
that the alleged copying of the entirety of Street Fighter - including the fighting style,
moves and attacks and personalities of its characters - gives rise to a likelihood of
confusion. Only those players - the sophisticated and attentive players who have
consecrated the "long learning time" needed to master Street Fighter's complex
special moves and techniques (Complaint ¶ 54-55) - would be familiar enough with the
special moves and with the personalities of the characters to come to regard those
features as associated with one particular source of goods. Thus, it is only a
sophisticated and careful user who could even possibly be the subject of Capcom's source
confusion claim. Capcom admits the sophistication of its customers, and the critical
importance of that factor, in its Trademark Office filings in support of pending
applications for registration of Street Fighter marks. "To evaluate whether confusion
is likely," Capcom states, "one must consider the marketplace in which the marks
in question are used. Consumer sophistication is one of the most important factors in
determining whether confusion is likely. A consumer who exercises a great deal of scrutiny
in selecting a product . . . is therefore not likely to confuse it with a product of
another." Capcom 11/23/92 Response to Trademark Office, p. 4 (Counsel Decl. Exh. C).
Capcom's admissions and averments, made by its authorized representatives to the
Trademark Office, plainly state that players of video games (who are principally 12 to 18
year-old-boys26) are sophisticated consumers of video games. "The motivation
underlying the purchase of [Capcom's] computer games produces a high degree of customer
scrutiny and sophistication. This eliminates possible customer confusion . . . ."
(Id., page 5, emphasis added.) As Capcom further explains,
"Children are particularly discriminating with regard to the characteristics and
status appeal of different video games. Typically, a new game is introduced in an arcade
where it is played by various children, often video game aficionados. . . . . Popular
games, such as [Capcom's] STREET FIGHTER computer game product, rapidly attain a
reputation and awareness among many more children than have actually played the game, an
awareness and reputation that is solidly linked to the product's brand name. . . .
" . . . The specifics of [Capcom's] Street Fighter computer game . . . [have]
become closely linked with [the] product's brand name, Street Fighter. This keen awareness
of [Capcom's] computer game product, its characteristics and its brand name coalesce in
the mind of the child to produce a high degree of product awareness. . . .
" . . . [I]t is safe to assume that game customers will be sophisticated and
careful. This degree of purchaser care minimizes any possible confusion . . . ."
(Id., 6-8, emphasis added.)
Could it be that video game players, while sophisticated about the games, are naive about
the games' source-identifying marks? Not so, Capcom insists: "With regard to video
games, . . . a sophisticated purchaser is very likely sophisticated not only with regard
to the product, but also with regard to the product's trademark."
Capcom 5/25/93 Request to Trademark Office, p. 6, emphasis added (Counsel Decl. Exh.
Even a casual customer is not likely to believe that a game prominently marked with the
Fighter's History trademark and with the Data East manufacturer's name is likely to have
come from Capcom - let alone the sophisticated players of Street Fighter.
(b) The Strength of the Capcom and Street Fighter Marks Precludes Any Likelihood of
As Capcom has repeatedly trumpeted, Street Fighter is "one of the most successful
video games of all time," and it has "attracted a dedicated worldwide audience
at the arcade and at home." Complaint ¶ 7. According to Capcom's Senior Vice
President Joseph Morici, since its release, Street Fighter has been "the best-selling
video game" on the market. Morici Depo. I:132 [Counsel Decl. Exh. A.])
Capcom consistently affixes both its trade name Capcom and its trademark Street Fighter
II to its arcade and home games (Morici Depo. I:204), and Capcom has devoted vast
sums to promoting both its name and its trademarks. (See Morici Depo., I:266-71)
for Capcom's confidential estimated recent advertising expenditures.) Capcom's media
investment has gained Street Fighter II the greatest name recognition of any game in its
genre, id. 212, and has been entirely successful in strengthening the association of both
its trade name Capcom and its trademark Street Fighter with the game. The specific
significance of that name recognition is that consumers regard both the trademark Street
Fighter II and the trade name Capcom as inseparable from the game:
" Q. [I]s it the case that, in fact, users are more likely to know the game as
Street Fighter II than to know that it's a game manufactured by Capcom?
. . . "THE WITNESS [Capcom Senior Vice President Morici]: I think it's -- it's
synonymous with Street Fighter and Capcom. I think it goes together. I mean, people say
Street Fighter II and Capcom at the same time. I think the game sold because it was Street
Fighter II and Capcom made it.
. . . "Q. And so, in buying the game, they are not only looking at the name
'Street Fighter II,' but are also looking for the name 'Capcom' on the package?
. . . "A. I think that is accurate." (Morici Depo. I:103-04.)
(c) "The Absence of Any Apparent [Actual] Confusion . . . Demonstrates That
Confusion is Unlikely."
So Capcom explained to the Trademark Office in refuting an Examining Attorney's
conclusion that Capcom's use of the Street Fighter mark was likely to be confused with
previously registered marks Street Fighter for toys vehicles and Road Fighter for computer
game programs and video output game machines. 27 The same principle applies in this case:
the absence of proof of actual confusion is telling. 28
Data East's game has been in use in hundreds of arcades, movie theaters, restaurants
and other public places across the United States for about a year and a half. Yet no
instances of any consumer confusion as to the source of Fighter's History have come to
light. In response to Data East's interrogatory on this point, Capcom was unable to offer
even one example of actual confusion of a consumer or purchaser. Response to First
Interrogatories, No. 14 (Counsel Decl. Exh. K). Neither have any of Capcom's deposition
witnesses testified to the contrary.29 (We note that Magistrate Woodruff has held, with
respect to Capcom's First Interrogatory Responses that "Capcom will have to live with
those responses." Order filed August 2, 1994, p. 11.)
Street Fighter II's principal designer, Akira Nishitani, was asked in his deposition:
"You've never heard anybody say that they were confused and believed that Fighter's
History was Street Fighter II, have you?" After some hemming and hawing, he candidly
responded: "I don't think that I have heard of anyone being so confused to think
that." Nishitani Depo. V:694 (Counsel Decl. Exh. N).
Mr. Nishitani's unrehearsed disbelief that anyone could be "so confused to think
that" Fighter's History was Street Fighter II was sound. Particularly because of the
strength of Capcom's marks and the strength of the association of the Capcom name with the
Street Fighter games, when consumers - especially sophisticated consumers - encounter a
game that is conspicuously marked as Fighter's History from Data East, it is not likely
they will be confused as to the source of that game.
F. A Summary Determination That There Is No Likelihood Of Confusion Is Appropriate.
The Ninth Circuit has articulated what have been characterized as multi-factor
"tests" for considering likelihood of confusion.30 The Ninth Circuit has
explained that the various factors are intended "as helpful guides to the district
court," not as mandatory formulas. Eclipse Associates Limited v. Data General
Corporation, 894 F.2d 1114, 1117-18 (9th Cir. 1990) (affirming district court's
determination on likelihood of confusion against claim that district court erred by not
applying 8-factor test).
"These tests were not meant to be requirements or hoops that a district court need
jump through to make the [ultimate] determination [of whether there is a likelihood of
confusion]. Our court has never articulated specific factors that a district court must
recite and apply, instead, we have identified a non-exclusive series of factors that are
helpful in making the ultimate factual determination." Id. at 1118.
Accordingly, summary judgment can be granted notwithstanding a possible dispute on
"It may be that some of the factors . . . were disputed . . . , but the trial
court correctly concluded that those factors were not sufficient to overcome the obvious
inference from the exhibits themselves that no consumer . . . could possibly mistake the
source of the advertised goods by believing that they were manufactured by plaintiff. That
fact alone . . . entitled [defendant] to summary judgment." Eclipse Associates
Limited v. Data General Corporation, 421 F.2d 352, 354 (2d Cir.), cert. denied, 398
U.S. 952 (1970), emphasis added. 31
The comparable inference from the exhibits in this case, showing the prominent and
repeated labeling of Fighter's History with defendant's distinctive Data East mark, along
with the other uncontroverted evidence, is that no consumer could reasonably mistake the
source of Fighter's History or believe Fighter's History is a Capcom Street Fighter game.
Summary judgment is therefore warranted. 32
G. Capcom's Lanham Act Claim Is Without Merit.
Capcom's federal trade dress claim, while imaginative, is fatally flawed. There is
no genuine issue of material fact and summary judgment should be granted on any or all of
the grounds set forth above. Alternatively, in the event the Court were not to dispose of
the claim entirely, the Court should hold that those elements or features of Street
Fighter that are most blatantly functional - among others, the physical controls and the
control sequences essential to operating the game and the characters and their various
moves - are beyond the scope of any trade dress in which Capcom has any protectable
III. THERE IS NO
GENUINE FACTUAL ISSUE ON THE CALIFORNIA LAW CLAIMS.
Capcom's Third Cause of
Action ("California Trademark Infringement and Unfair Competition") and its
Fourth Cause of Action ("California Unlawful Dilution") incorporate by reference
and are comprised in substance of Capcom's Lanham Act claim. There is no evidence to
support the essential allegations of any such California law claims. Data East is entitled
to summary judgment dismissing the state law claims because (1) the claims are preempted
by the Copyright Act, (2) the argument above regarding the Lanham Act claim compels the
same result on the state law claims; and (3) the dilution claim is nonsensical and there
is simply no evidence to support it.
A. Capcom's State Law Claims Are Preempted.
Section 301(a) of the Copyright Act expressly preempts any common or state law
rights equivalent to any of the exclusive rights within the general scope of copyright for
works of authorship. In determining whether a claim is preempted, we do not look to the
form of the cause of action in the abstract, but consider rather the substance of a
particular claim in a particular case. A claim is preempted, the Ninth Circuit has taught,
if it meets the following requirements:
"First, the [work at issue] 'must come within the "subject matter of
copyright" as defined in Sections 102 and 103 of the Copyright Act. Second, the
rights granted under state law must be "equivalent to any of the exclusive rights
within the general scope of copyright as specified by Section 106 [of the Copyright
Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973, 976 (9th Cir.
1987). However, under Del Madera's "'extra element test' . . . , a state law claim
that appears equivalent to an exclusive right specified in 17 U.S.C. section 106 will
survive preemption if it has an extra element that changes the nature of the action and
protects rights qualitatively different from copyright rights." Cavallo, Ruffalo
& Fargnoli v. Torres, 1989 Copyright Law Decisions (CCH) ¶ 26,410 at page 22,569,
emphasis added (C.D.Cal. 1989) (holding California unfair competition claim pleaded as
"passing off" claim to be preempted); Del Madera, 820 F.2d at 977.
Capcom's causes of action for trademark infringement, unfair competition and dilution
satisfy both prongs of the Del Madera test, and lack an extra element that changes
the nature of the action, hence the claims are preempted by the Copyright Act.
First, the video game works at issue are plainly within the subject matter of
copyright. Second, the rights asserted under the state law causes of action are equivalent
to those protected by copyright. Each of the state law causes of action expressly
incorporates the federal copyright claims by reference; and the gravamen of each claim is
that Data East misappropriated Capcom's efforts and engaged in California trademark
infringement, unfair competition and dilution "[b]y manufacturing, distributing,
displaying," etc. works that constitute or embody copies of Capcom's work of
authorship, Street Fighter. See Complaint ¶ ¶ 1, 8, 53-55, 70-71, 88-89, 93, emphasis
Compare Copyright Act § 106 (copyright owner "has the exclusive rights ... (1) to
reproduce the copyrighted work ... ; (3) to distribute copies ... of the copyrighted work
... ; (5) . . . to display the copyrighted work publicly," emphasis added). Thus, as
the Ninth Circuit observed in Del Madera, the conduct against which the plaintiff seeks
relief is "precisely the type of misconduct the copyright laws are designed to guard
against." 820 F.2d at 977. Cf. Litchfield v. Spielberg, 736 F.2d 1352, 1358
(9th Cir. 1984), cert. denied 470 U.S. 1052 (1985), ("In so far as these state claims
[unfair competition and misrepresentation] are restatements of the copyright infringement
claims, they are preempted by federal copyright law").
The issue, then, is whether in the particular circumstances of this case Capcom's state
law claims "have an 'extra element' which changes the nature of the action."
Id., at 977 (citations omitted). The answer is No. Merely casting a claim as one that
contains additional allegations or elements does not, by itself, add an "extra
element" if the essence of the claim is one of improper copying or misappropriation.
The plaintiff in Del Madera, for example, argued that its unfair competition claim
should not be subject to preemption because it was based on a breach of fiduciary duty.
"This argument, however, does not add any 'extra element' which changes the nature of
the action." Id. at 977. The supposed "extra element" did not change the
nature of the claim because an allegation of misappropriation was "part and
parcel" of the copyright claim as well as the preempted claim. Id. In this case, as
in Del Madera, allegations of misappropriation and of copying a copyrighted work are part
and parcel of the state claims.
Although it has been stated in dicta that a claim of "passing off" under
state unfair competition law may not be preempted, Warner Bros., supra, 720 F.2d at
247 (dismissing claim on merits), if a claim in substance does not involve an extra
element, a plaintiff cannot save it from preemption by merely recasting the claim in the
conclusory language of a passing off claim. Cavallo, Ruffalo, 1989 Copyright Law
Decisions at p. 22,570 ("Plaintiff's alleged 'passing off' theory is but a
restatement of its preempted misappropriation theory. ... Although pleaded as a 'passing
off' claim, Plaintiff's Fourth Cause of Action is more appropriately a misappropriation
claim."); Motown Record Corp. v. George A. Hormel & Co., 657 F.Supp. 1236,
1239-40 (C.D.Cal. 1987) (California unfair competition claim involving unauthorized use of
image of "The Supremes" in connection with copyrighted song preempted:
"essence of plaintiffs' complaint is derived from defendants' alleged unauthorized
use of a copyrighted work."). See Smith v. Weinstein, 578 F.Supp. 1297, 1307
(S.D.N.Y. 1984), aff'd without op., 738 F.2d 419 (2d Cir 1984), ("plaintiff cannot
merely rephrase the same claim citing contract law"). Similarly, asserting that the
identical facts give rise to a violation of California anti-dilution law adds nothing that
changes the nature of the claim. Escada AG v. The Limited, Inc., 810 F.Supp. 571
(S.D.N.Y. 1993) (New York antidilution statute preempted); see Toho Company, Ltd. v.
Sears, Roebuck & Co., 645 F.2d 788, 791, 793 (9th Cir. 1980) (New York's
antidilution statute similar to California's).
Although Capcom attempted to graft some additional verbiage onto its state court claims
to save them from preemption, the substance of the claims is what governs. The claims
contain no specific recitation of conduct by Data East supposedly constituting the wrongs
at issue, other than that incorporated by reference from other claims, principally the
claims of copying. In each instance, the alleged wrong stems from and only from the
allegation that Data East wrongly copied from Street Fighter. Revealingly, the operative
paragraphs of the Third and Fourth Causes of Action which say what it is that Data East
has done that constitutes the claim all begin the same way: "By manufacturing,
distributing, displaying, promoting, and selling Fighter's History, Data East . . . [has]
engaged in unfair competition [or "unlawful dilution"] . . . " Complaint
¶¶ 88, 89, 93.
The acts against which Capcom seeks relief are at the core of the Copyright Act
(copying, distributing and displaying), and they are the kind of acts that are barred, or
deliberately allowed to flourish, under the Copyright Act depending on whether protected
matter is involved. However Capcom's claims are characterized, the alleged copying of
Street Fighter into Fighter's History and the distribution of Fighter's History are the
only acts Data East is claimed to have done to give rise to the claims. Pasting the labels
"unfair competition," "California trademark infringement," and
"dilution" on the claims does not change the nature of the action. As in Motown
and the other cases cited, "The essence of [Capcom's] complaint is derived from [Data
East's] alleged unauthorized use of a copyrighted work." The claims are all
B. Summary Judgment Against the Lanham Act Claim Is Dispositive of the State Law
Dismissal of the Lanham Act claim disposes of the related California trademark and
unfair competition claims. Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d
788, 791, 793-94 (9th Cir. 1980).
C. Capcom Dilution Claim is Baseless.
In addition to the considerations stated above, there are further and fundamental
defects in Capcom's anti-dilution claim. Unlike the Lanham Act and state unfair
competition claims, which allege that the trade dress of Fighter's History infringes the
trade dress of Street Fighter, Capcom's Fourth Cause of Action for dilution alleges that
the manufacture, etc. of Fighter's History is likely to dilute the "CAPCOM" and
Street Fighter trademarks. Since the only substantive allegation regarding Fighter's
History is that its trade dress is copied from Street Fighter, the Fourth Cause of Action
represents a claim that Capcom's trademarks are diluted by the Fighter's History trade
"The focus [of antidilution doctrine] is on damage to the mark's inherent value as
a symbol," the Ninth Circuit noted in Toho, supra, 645 F.2d at 793. Obviously,
a mark's inherent value can only be diluted or tarnished if there is identity or very
close similarity between the accused mark and the allegedly diluted mark. See Fruit of
the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) (no California dilution
claim; "there can be little doubt that . . . Fruit Of The Loom, is not at all close
to TLF's Fruit Flops and Fruit Cups."). Based on the record adduced herein, this
Court can determine as a matter of law that Fighter's History's trade dress is neither a
copy of nor even similar to Capcom's various trade names or trademarks, and cannot dilute
them. In fact, the notion that Fighter's History's "trade dress" (as Capcom
broadly defines it) is so similar to Capcom's trademarks as to "dilute" the
marks is ridiculous. 33
Capcom seeks, in the guise of
the Lanham Act and various related state law claims, to protect the entirety of its Street
Fighter product against competition, without the inconvenience of allowing the public and
its competitors to have access to those aspects and features of the game which are not
Capcom's property because they were in the public domain or are otherwise not protectable
under copyright, patent or trademark law. Capcom's efforts to introduce such a monopoly
into the video game industry is inconsistent with established law and should be firmly
rebuffed by the grant of summary judgment. Alternatively, the court should make such
partial adjudications concerning the scope of Street Fighter's trade dress, the
protectability of various elements thereof, and the standards for infringement as will
simplify, narrow and clarify the issues left for trial. The court should grant summary
judgment against Capcom on its Second, Third and Fourth Causes of Action in its Amended
DATED: September 8, 1994
FENWICK & WEST
William A. Fenwick
Attorneys for Defendants
Data East Corporation and
Data East USA, Inc.
1 Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531 (9th Cir. 1992).
2 Shaw v. Lindheim, 919 F.2d 1353, 1364 (9th Cir. 1990).
3 As in our previous paper, "Capcom" refers to plaintiff Capcom U.S.A., Inc.;
"Data East" refers to defendants Data East Corporation and Data East USA, Inc.
collectively; "Street Fighter" refers to all of Capcom's allegedly infringed
games, collectively; and "Fighter's History" refers to all of the alleged
infringing games. The ordinary type style "Street Fighter," "Fighter's
History," "Capcom" and "Data East" refers to the games themselves
and to the parties; the "small caps" type style "Street Fighter,"
"Fighter's History," "Capcom," and "Data East" refers to the
parties' trade marks and trade names.
4 Memorandum Decision and Order filed August 19, 1994 ("Aug. 19 Order"),
granting in part and denying in part Data East's motion for summary judgment on copyright
5 Capcom's Second Cause of Action purports to state claims for trade dress infringement
only, and not for trade mark infringement, hence we do not treat such a possible claim at
length. In any event, however, any argument that the trademark Fighter's History is
confusingly similar to Street Fighter II would be wholly frivolous. The overall marks are
obviously different in sight, sound and meaning, and the only similar portion of the mark,
"FIGHTER," is simply a descriptive term for the genre of games to which both
belong, which Capcom describes as "fighting, combative, competitive games"
(Morici Depo. I:179 (Declaration of Counsel Attaching Exhibits ["Counsel Decl."]
Exh. A) or as "one-on-one fighting games" (Capcom's Response to Second
Interrogatories [Counsel Decl. Exh. B], No. 7). Interestingly, in its pending trademark
application to register the mark Street Fighter, Capcom has recently argued that even so
similar a mark as "Road Fighter" for video games is not confusingly similar to
Street Fighter, in light of differences in connotation, the sophistication of the relevant
consumers and the strength of the Street Fighter mark. Indeed, Capcom even contends that
the identical mark, Street Fighter, for toys is not confusingly similar to Street Fighter
for video games, for the same reasons. In re Trademark Application of Capcom Co., Ltd. for
the mark STREET FIGHTER (Serial No.: 74/248,472), Capcom's Response to Office Action dated
November 23, 1992 ("Capcom 11/23/92 Response to Trademark Office") (Counsel
Decl. Exh. C), pp. 8-15.) As Capcom stated in distinguishing the prior registration for
video games for Road Fighter, "Although the two marks share the use of 'FIGHTER,' . .
. it is erroneous to deem two marks confusingly similar merely because they share a common
element." (Id. p. 12.) The descriptive, nondistinctive and nonconfusing character of
the word "Fight" is confirmed by the fact that a number of other video games
within the fighting game genre use Fight or Fighter as part of their trademarks, for
example, Burning Fight (by SNK) and Pit Fighter (by Atari). See Bochner Declaration.
6 Responses to Second Interrogatories, Nos. 21 and 22; see full responses, Counsel
Decl. Exh. B. See further discussion of scope of claimed trade dress in Section II. B
7 Capcom 11/23/92 Response to Trademark Office (Counsel Dec. Exh. C).
8 Capcom 11/23/92 Response to Trademark Office, pages 4-7; and in same proceedings,
Capcom's Request for Reconsideration Under Rule 2.64(b), dated May 25, 1993 (hereafter
"Capcom 5/25/93 Request to Trademark Office"), page 6 (Counsel Decl. Exh. J).
9 Declaration of Martin Marks, Exhs. A and B.
10 Marks Decl. Exhs. C and D.
11 These source marking practices are not unique to Capcom and Data East. Arcade game
manufacturers typically affix their name and logo to the cabinet, in addition to the name
of the particular game and distinctive artwork. Marks Decl. Exhs. E - M.
12 Marks Decl. Exh. P.
13 Summary judgment is common and appropriate in trademark cases. B & L Sales
Associates v. H. Daroff & Sons, Inc., 421 F.2d 352, 354 (2d Cir. 1970) (affirming
grant of summary judgment); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657
F.2d 482, 492 (1st Cir. 1981) (same).
14 Responses to Second Interrogatories, Nos. 21 and 22 (objections omitted) (Counsel
Decl. Exh. B); see also Responses to First Interrogatories, Nos. 1 and 4 , which are
identical in substance (id., Exh. K).
15 Capcom's incorporation by reference of its copyright cause of action into the Lanham
Act claim (¶ 65) is thus no mere formality: "Capcom does not contend that any
feature of the trade dress of the Street Fighter video games is not an element or feature
of the Street Fighter games that is protected by copyrights." Response to Second
Interrogatories, No. 27 (Counsel Decl. Exh. B).
16 The plain language of the Lanham Act supports the conclusion that the Act was not
intended to protect products, but at most those aspects of a product or an accompanying
designation that are used to indicate source to the prospective purchaser. Section 43(a)
renders liable those who "use" "any device . . . or any false designation
of origin" "on or in connection with any goods or services . . . ."
(Emphasis added.) The entirety of a product is not a device or designation which is used
"on or in connection with" itself. A product is not its own trade dress.
17 Responses to Second Interrogatories, No. 21, pages 18-19 (Counsel Decl. Exh. B).
18 "That an article copied from an unpatented article could be made in some other
way, that the design is 'nonfunctional' ..., that the configuration of the article copied
may have a 'secondary meaning' ... or that there may be 'confusion' among purchasers ...
may be relevant evidence in applying a State's law requiring such precautions as labeling;
however, ... neither these facts nor any others can furnish a basis for ... prohibiting
the actual acts of copying and selling." 376 U.S. at 238. In other words, so long as
a party labels its goods clearly enough as to source, it cannot be barred from producing
copied unpatented goods, notwithstanding that consumers might be confused by the
similarities in the goods themselves.
19 Regarding the names of the games, "Fighter's History" is obviously
different in sight, sound and meaning from "Street Fighter." See discussion in
footnote 5 above. Regarding the names of the characters, there is no overlap at all
between the two games. See list appended as Exhibit M to Counsel Declaration. Regarding
the graphics and words on the cabinets, these are plainly different; see photos in
Statement of Facts above, Marks Declaration Exhibits generally.
Regarding the cabinets: (1) In light of the facts summarized in the Statement of Facts
(see Duke Depo. 188-89, 221-24; Jacobs Depo. 21-28; Resp. to Second Interrogs., No. 33
[Counsel Decl. Exhs. D, E & B]) indicating that the cabinets at issue are
third-party-supplied generic cabinets; that various games are installed willy-nilly in
different manufacturer's cabinets; and that Capcom makes no effort to control this
phenomenon, there can be no claim that cabinets are distinctive of source or that
particular cabinets and particular games are associated with one another. (2) Indeed,
Capcom admits that "Capcom doesn't take the shape of the cabinet in and or itself as
an identifying feature of the Street Fighter game ...." Duke Depo. p. 223 (Counsel
Decl. Exh. D. (3) The general configuration of the cabinets is manifestly functional and
nondistinctive, as it is used throughout the industry. (4) Even assuming Street Fighter
consistently appeared in the same cabinets of the same color (which Capcom cannot show),
Capcom cannot claim ownership of the color of a cabinet as its mark. First Brands Corp. v.
Meyer, 809 F.2d 1378, 1382 (9th Cir. 1987).
20 Regarding the 6-button controller, in particular, obviously the device is, per Sega,
"essential to the use" of Street Fighter. It is equally clear that it
"affects the . . . quality" of the video game; as Capcom admitted in discovery,
it adopted the six-button controller because the previous control mechanism, a pounding
pad, was unreliable. Duke Depo. I:88-90, 126-27 (Counsel Decl. Exh. D).
21 Moreover, if Capcom asserts that its trade dress is a distinctive arrangement of
functional elements, "'[U]nique arrangements of purely functional features constitute
a functional design' not entitled as a matter of law to protection under the Lanham
Act." Rachel v. Banana Republic, Inc., supra, 831 F.2d at 1506 (9th Cir. 1987).
Accord, Clamp Manufacturing Company, Inc. v. Enco Manufacturing Company, Inc., 870 F.2d
512, 516 (9th Cir.), cert denied 493 U.S. 872 (1989) ("If the utilitarian aspects of
the product are its essence, only patent law protects its configuration from use by
22 Summit Machine Tool Manufacturing Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434,
1437 (9th Cir. 1993); Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981).
23 Cleary v. News Corp., 94 Daily Journal D.A.R. 10743, (9th Cir. 8/1/94) ("bodily
appropriation" test) ("Because the [accused work] is more than a slight
modification of the [earlier work], the district court properly granted summary judgment
as to Cleary's Lanham Act claim."). 24 Morici Depo. I:103 (Counsel Decl. Exh. A).
25 Accord, Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1446 (Fed. Cir.
1984) (where manufacturer displays own name on goods, no likelihood of confusion and no
Lanham Act claim); Bose Corporation v. Linear Design Labs, Inc., 467 F.2d 304 (2d Cir.
1972) (same); Venn v. Goedert, 319 F.2d 812 (8th Cir. 1963); Farberware, Inc. v. Mr.
Coffee, Inc., 740 F.Supp. 291, 299 (D.Del. 1990) ("Confusion is unlikely ... when a
product is prominently labeled"); Le Sportsac, Inc. v. Dockside Research, Inc., 478
F.Supp. 602, 609 (S.D.N.Y. 1979) (critical question is "whether it is likely that an
ordinary prudent person would be confused by the two products. ... While it is true that
the products in question are virtually identical in their nonfunctional design features,
they are different [in labeling]. This labeling tends to eliminate the confusion that
might otherwise result from the sale of such similar products."). See also Lindy Pen
Co. Inc. v. Bic Pen Corp., 725 F.2d 1240, 1245 (9th Cir. 1984), cert. denied, 469 U.S.
1188 (1985), ("The pens' dissimilar appearance, the dominance of the company marks
and logos on the pens themselves ... and the dissimilar ... packaging ... overcome the
similarity of the marks considered in isolation"; distinguishing AMF Inc. v.
Sleekcraft, 599 F.2d 341 (9th Cir. 1979), "where the house mark was inconspicuous and
the logo often absent"). Language in Fuddruckers, supra, does not require a result at
odds with the above holdings. The Fuddruckers court stated in a footnote: "The issue
[-whether defendant's use of a name different from plaintiff's for its restaurant
precluded a likelihood of confusion-] is properly part of the factual determination left
to the jury." 826 F.2d at 846 n. 13. In Fuddruckers, it was merely the trademark of
the restaurants that was different, which left an issue about whether the restaurants
bearing the "Fuddruckers" and "Doc's B.R. Others" marks had the same
source or were owned by the same people. Id. at 841 ("more than one hundred questions
a week about whether Doc's and Fuddruckers had common owners"). In our case, by
contrast, it is not only that the goods have different brand names; but - unlike
Fuddruckers - the goods bear unambiguous source designations making it impossible for
reasonably prudent consumers to believe, as Capcom alleges (Complaint &182; 82), that
Fighter's History is Capcom's Street Fighter game. Also, there is no evidence that anyone
has been confused, let alone one hundred persons a week. See sub-section 2, infra.
26 Morici Depo. I:203; (Counsel Decl. Exh. A).
27 Capcom 11/23/92 Response to Trademark Office, p. 2 (Counsel Decl. Exh. C).
28 Even a few isolated examples of actual confusion would be insufficient to sustain
Capcom's claim. Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d
440, 444-45 (9th Cir. 1980); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225,
1231 (3d Cir. 1978) (district court committed "error in discerning from [small number
of misdirected letters and calls] a 'pattern of confusion in the marketplace.'"). But
Capcom's inability to adduce actual instances in support of its claim is highly probative
of the absence of any likelihood of confusion. Oreck Corp. v. U.S. Floor Systems, 803 F.2d
166, 173, reh. denied, en banc, 808 F.2d 56 (5th Cir. 1986), cert. denied, 481 U.S. 1069
(1987) (in reversing infringement verdict, court considered absence of proof of actual
confusion "highly significant" where accused mark in use for 17 months).
29 See, e.g., Morici Depo. I:85-88 (Counsel Decl. Exh. A).
30 AMF Inc. v. Sleekcraft Boats, supra, 599 F.2d 341 (9th Cir, 1979) (8-factor test);
J. B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 191 (9th Cir. 1975) (6
factors), cert. denied, 424 U.S. 913 (1976); Rodeo Collection, Ltd. v. West Seventh, 812
F.2d 1215, 1212 (9th Cir. 1987) ( 5 factors). The 8 Sleekcraft factors are: 1) strength of
the mark; 2) proximity of the goods; 3) similarity of the marks; 4) evidence of actual
confusion; 5) marketing channels use; 6) type of goods and the degree of care likely to be
exercised by the purchaser; 7) defendant's intent in selecting the mark; and 8) likelihood
of expansion of the product lines. 599 F.2d at 348-49.
31 Accord, Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231,
246-47 (2d Cir. 1983) (affirming summary judgment: "if comparison of the works
reveals no fair jury issue concerning likelihood of confusion, then intent to copy, even
if found from the proffered evidence, would not establish a Lanham Act violation");
Astra Pharmaceutical Prod., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205, 1209
(1st Cir. 1983) (affirming summary judgment despite identical marks where no likelihood of
confusion when other factors considered); Pignons S.A. de Mecanique de Precision v.
Polaroid Corp., 657 F.2d 482, 492 (1st Cir. 1981) (affirming summary judgment of no
likelihood of confusion: "That 'Alpha" is a relatively strong mark reduces, but
does not relieve Pignons of the burden [of presenting] sufficient evidence of a likelihood
of confusion"); Programmed Tax Systems, Inc. v. Raytheon Co., 439 F.Supp. 1128, 1130
(S.D.N.Y. 1977) (granting summary judgment; "existence of some minor issues of fact
with respect to one or two of these factors" does not preclude summary judgment for
defendant on confusion); Conan Properties Inc. v. Mattel Inc., 712 F.Supp. 353, 362
(S.D.N.Y. 1989) (where no substantial similarity, even a small quantum of evidence of
actual confusion "not weighty enough to withstand a motion for summary
judgment"); Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F.Supp. 981, 983, 986
(S.D.N.Y. 1967) (granting summary judgment to defendant on confusion) ("Evidence of
defendant's intent, where it has done nothing actionable, is immaterial").
32 Sunbeam Corp. v. Equity Industries Corp., 635 F.Supp. 625, 633-34 (E.D.Va. 1986)
(granting summary judgment: "if properly labeled, consumer confusion should be
precluded as a matter of law.").
33 Any claim that Data East's use of its trade dress results in "tarnishment"
of Capcom's trademarks is equally meritless. Tarnishment requires use of the mark in
connection with unsavory or degrading goods. Toho, 645 F.2d at 793. Capcom cannot be heard
to argue that another game within its own fighting game genre is so unsavory or degrading
as to dilute its marks.