Time limitations and budget restraints may force video game developers to “take the risk” and refrain from clearing certain elements of the games that they create. In most instances, this risk can be costly, as the use of third party content, including trademarked words or phrases, music, images or even look-alike images, could subject a developer to significant liability and penalties under US trademark and copyright laws. However, one recent case proves the opposite – that in some instances the similarities between a game and another work are not “enough” to give rise to finding of copyright or trademark infringement.

Specifically, in a recent case in the Northern District of California, the court found in favor of Capcom, Inc., the developer of the popular Dead Rising zombie video game.  Capcom Co. LTD, et al v. The MKR Group, No. C 08-0904 RS (N.D. Calif., Oct. 10, 2008). Capcom successfully defended itself against claims of copyright and trademark infringement brought by The MKR Group, Inc., the owner of the copyrights and trademarks to the 1979 motion picture George A. Romero’s Dawn of the Dead. The US District Court for the Northern District of California ruled that Capcom did not infringe MKR’s copyrights because the works were not substantially similar. The district court also dismissed MKR’s trademark infringement claims.

MKR alleged that Capcom had violated its copyrights by copying numerous protectable elements from the Dawn of the Dead film. These included the use of a shopping mall as the setting, the presence of a gun shop in the mall, the location of the mall in a rural area that is patrolled by the National Guard, the use of a helicopter to evacuate survivors, the creative use of propane tanks and chain saws as weapons, and the use of music for comedic effect. In response, Capcom argued that the elements that are similar in both works are unprotectable ideas and scenes a faire, or ideas and events that flow naturally from generic plot-lines or are necessary from the choice of a setting.

The primary issue in the case was whether the applicable elements of the Dead Rising game and the Dawn of the Dead film were substantially similar. To evaluate the substantial similarity between the two works, the district court filtered out the unprotectable elements and general plotlines of the works so that it could compare the original, concrete elements of the works. In particular, the court reviewed a number of aspects of the video game that MKR has alleged were substantially similar to aspects of the movie, including the plot, characters, theme, dialogue, setting, and total concept and feel. 

After evaluating these elements, the court found that MKR had not identified any similarity between the video game and any protected element of the film. For instance, while one of the main characters in both the film and the game is a male journalist, the court explained that these similarities do not constitute an infringement, but are instead characteristics of unprotectable, common stock characters. In addition, the court found that any similarity between the theme of the movie and the video game related to the unprotectable idea of zombies in a mall. In fact, the district court found that the themes were quite different since the theme of the film was to communicate a message of anti-consumerism while the theme of the video game was confined to the killing of zombies in the process of attempting to unlock the cause of the zombie infestation. Finally, the court ruled that the similarities of the settings of the movie and the video game represented scenes a faire that flow from the unprotectable idea of zombies in a mall.

The district court also dismissed MKR’s trademark infringement claims after finding that the use of George A. Romero’s name in a disclaimer on the video game packaging disclaiming a relationship between the game and the film was a nominative fair use. Similarly, the court dismissed MKR’s claims that the title of the video game was confusing similar to the title of the movie. 

While Capcom received a victory in this case, the case still presents a good review of the issues that may arise if a developer fails to vet adequately its video game for intellectual property issues. Video game developers who do not seek clearance of their video games and its constituent elements prior to development run the risk of being sued for both copyright and trademark infringement. Because of the complex issues involved in the clearance of video games, it is prudent to seek legal counsel prior to development.  

For further information regarding Arent Fox’s copyright and trademark clearance practices, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Sarah L. Bruno
bruno.sarah@arentfox.com
202.775.5760

Matthew R. Mills
mills.matthew@arentfox.com
202.715.8582