Russel Spacewar

Baer Magnavox Odyssey

Bushnell Pong
Video game crash
Decline
Nintendo
Magnavox v. Mattel
- 507 Patent
- Doctrine of equivalents
o Holding a party liable for patent infringement even though the
infringing device or process does not fall within the literal scope
of a patent claim, but nevertheless is equivalent to the claimed
invention.
- Rule: Analog and digital circuitry achieved the same result (projecting
image, etc.), therefore it is a copyright infringement.
- Defense
o Prior art: We based our game on Spacewar, not 507. Spacewar
existed before 507 so there is no claim.
o Rejected afforded the broadest protection to 507 as possible.
Zacchini v. Scripps-Howard Broadcasting Co.
- Cannon ball routine on TV
- Right to publicity v. 1st/14th Amendment protection on media
- Recognized the individual inventors effort to serve the public
o Zacchini not only had a commercial interest in being
compensated for the time and effort involved in his performance,
but also the "economic incentive for him to make the investment
required to produce a performance of interest to the public.
- Also recognized the ability of the holder of the patent to exploit it.
Palmer v. Shonhon
- A person who is newsworthy may be the subject of news or information
o Privilege given to the media / freedom of press
- However, this privilege does not extend to commercialization of such
personality.
- You cant capitalize on public figures fame
o Ex) Publishing someones bio data is not prohibited. Profiting it
from it was the problem.
White v. Samsung
- Three claims: 1) 3344 (state statute); 2) right to publicity (common
law); 3) Lanham Act
- 3344
o Statutory right to publicity claim

o Any person who knowingly uses another's name, voice,

signature, photograph, or likeness, in any manner, on or in
products, merchandise, or goods, or for purposes of advertising
or selling, or soliciting purchases of, products, merchandise,
goods or services, without such person's prior consent, or, in the
case of a minor, the prior consent of his parent or legal guardian,
shall be liable for any damages sustained by the person or
persons injured as a result thereof.
Right to publicity (common law)
o The Eastwood test
The defendant's use of the plaintiff's identity
The appropriation of plaintiff's name or likeness to
defendant's advantage, commercially or otherwise
Lack of consent
Resulting injury
Lanham Act
Defenses
o Parody defense (1st Amendment freedom of expression)

Kirby v. Sega
Pesina v. Midway Manufacturing Co.
- Infringement possible by using character that is inextricably
intertwined in publics mind
- False endorsement
Neal v. EA
- False
o
o
o
o

light claim: elements

A publication by the Defendant about the Plaintiff
Made with actual malice
Which places the Plaintiff in a false light
AND that would be highly offensive

Topheavy v. Jane Doe

- Show us your boobs case
- Invasion of privacy based on both misappropriation of her likeness and
the disclosure of private and embarrassing facts
- Misappropriation of likeness
o Use of name or likeness,
o Absence of permission
o Financial advantage, and
o Absence of a significant newsworthiness element.
Chamberlin v. Uris Sale Corporation
- The form of expression, not the idea itself, is copyrightable.

Affiliated Hospital Products Inc. v. Merdel Game Manufacturing Co.

- The rules of game can be found in public domain and the game itself.
Not subject to copyright protection
- Only arrangement and manner of presentation can be protected
o But in this case, the simplicity of the game makes it difficult to
protect because the distinction between substance and
arrangement blurs
Blue Planet Software v. Games International, LLC
- Registration of trademark creates a rebuttable presumption of
ownership
o After 5 years, incontestable.
o D is banking off this
- P says no. We can defeat this because:
o Registration does not create property rights
o Registration will not trump contractually agreed upon ownership
o Incontestable can be defeated
By showing inequitable conduct
By proving elements of equitable estoppel
Material misrepresentation
Reasonable reliance
Damages resulted
By showing it was obtained by fraud
- You dont get ownership just by listing yourself as the owner
- Another thing to note:
o Trademark infringement can be defeated by acquiescence
(failing to act)
CCNV v. Reid
- What is work-for-hire?
o Employee or contractor of 9 specific categories. It is an
exception to the general rule that the person who actually
creates a work is the legally recognized author of that work.
According to copyright law in the United States and certain other
copyright jurisdictions, if a work is "made for hire", the employer
not the employeeis considered the legal author.
- Factors (pg. 140)
o Hired partys control over accomplishment of the task
o Provision of tools
o Right of artist to employ his own helpers
o Whether creation was in hirers line of business
o Hirers control over when and how long hired party is to work;
o Method of payment

o Tax treatment of the hired party

Greenberg v. Sir-Tech
- Tortious interference with business (6 elements)
o Contract
o D's knowledge of the existence of the contract
o That the contract was not carried out
o That Ds initiated the Federal court action with intent to induce
breach of the contract (the interference)
o That the initiation of the Federal court action was a substantial
factor in pre- venting Bradley from carrying out the contract, and
o That P suffered damage as a result.
Atari Games Corp. v. Nintendo of America Inc.
- Copyrights claim
- Whats protected and what is not protected under copyright?
o A copyright owner needs to show there actually exists expression
which is protected under copyright. Not copyrightable items are:
External considerations
Ideas
Expression necessarily incident to ideas
- Substantial similarity analysis (two-step analysis)
o Extrinsic test: Objective test which rests upon specific criteria
that can be listed and analyzed.
o Intrinsic test: Compare forms of expression subjective test
depending on the response of the ordinary reasonable person.
i. Expert testimony is allowed on this prong.
- Fair-use as defense
o Permits limited use of copyrighted material without acquiring
permission from the rights holders. Examples of fair use include
commentary, search engines, criticism, parody, news reporting,
research, teaching, library archiving and scholarship.
- Separate idea from expression
Sega v. Accolade
- Fair use, again
Campbell v. Acuff-Rose Music
- Rap parody music.
- Fair use defense
o (1) the purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational
purposes; (2) the nature of the copyrighted work; (3) the amount
and substantiality of the portion used in relation to the

copyrighted work as a whole; and (4) the effect of the use upon
the potential market for or value of the copyrighted work.
Sony v. Connectix
- Fair use defense - Issues:
o Nature of the copyrighted work
Functional elements are not copyrightable.
o Amount and substantiality of portion used
Reverse engineered, but final product contained no
infringing material
o Purpose and character of use
Numerous intermediate copies? Thats what fair use is
trying to promote so we dont have wasteful products.
o Effect of the use upon the potential market
Sony wanted to maintain monopoly copyright law doesnt
give a fuck about that.
- Also, tarnishment
o Need to show that your products name was tarnished.
Substantial evidence required.
- Other pointers:
o Patent
To be eligible for patent, convention has to be 1) new, 2)
useful, 3) not obvious.
o Claim construction
Reviewing of the claim
o What is patent infringement?
Literal
Circumstantial (doctrine of equivalence) substantially
same
o Defenses
Prior art
Inadequate disclosure lack of description of the invention
Inequitable conduct you failed to claim your patent
Nintendo v. Magnavox (pg. 310)
- Inequitable conduct: failure to disclose (clear and convincing
standard)
o Prior art/info that is material
o Applicant knew of the prior art/info
o Intent to mislead
- Rebut with
o Prior art/info is not material
o If material, show applicant did not know

o If knew, show applicant did not know the materiality of that

particular art/info
o No intent to mislead
So must have had the intent to mislead.

Magnavox v. Activision
- Patent infringement: Two-fold inquiry
o Interpretation of claims
o Determine if infringed
Literal
Doctrine of equivalents
- Claims
o Means-plus-function: means-plus-function claim is a claim
including a technical feature expressed in functional terms of the
type "means for converting a digital electric signal into an analog
electric signal"
o Structural:
Gussin v. Nintendo
- An action brought by the inventor of a electronic painting systems
against Nintendo claiming that Mario Paint infringed his patent; he
was unsuccessful and did not provide sufficient facts to support his
claim.
- Prosecution history estoppel
DEFINITIONS
Literal infringement
- Each and every element recited in a claim has identical
correspondence in the allegedly infringing device or process
Doctrine of equivalents
- Some other element of the accused device or process 1) performs
substantially the same function, 2) in substantially the same way, 3) to
achieve substantially the same result.
Prosecution history estoppel.
- Also known as file-wrapper estoppel, is a term used in United States
patent law to indicate that a person who has filed a patent application,
and then makes narrowing amendments to the application to
accommodate the patent law, may be precluded from invoking the
doctrine of equivalents to broaden the scope of their claims to cover
subject matter ceded by the amendments.
Fantasy Sports v. Sportsline.com
ProCD v. Zeidenberg
- Shrink warp case

You had time to click through use agreement so it is an acceptance of

the license, therefore a valid contract.
o Only if Zeidenber had an opportunity to return it (this is
important)

Hill v. Gateway
- Additional terms included in a box shipped by the seller DO become
part of the contract between the parties, even if the purchaser is
unaware of the additional terms and the purchasers acceptance of the
terms is by not returning the item purchased.
Klocek v. Gateway
- Under 2-207, seller needs to prove sufficient evidence of notice and
assent to the terms at the time of purchase in order for a shrink wrap
license to be binding.
o AT THE TIME OF PURCHASE. Not later.
- 2-207 can be applicable if only one form is exchanged between the
parties.
Davidson & Associates v. Internet Gateway
- The Blizzard case
- K issue
o Preemption by Copyright? Copyright Act only does that when
other laws interfere with one of the exclusive rights. So no.
o Existence of K? You clicked through I Agree/Agree. Clickwrap
o Unconsciounability
Procedurally, it is unconsciounable because end-users have
no choice but to click through I Agree. (Oppression and
surprise)
Substantively, its not. Focus on the terms.
- Fair use defense
- Copyright misuse defense
o Copyright violates the public policy embodied in the grant of
copyright.
Ex) extremely restrictive, cant terminate, etc.
Micro Star v. Formgen
- Derivative works: Protected just as the original
o Recast, transformed, adapted
o In a "concrete or permanent form, and must contain a substantial
amount of protected material from the previous work
Allen v. Academic Games League of America
- Public performance
o Copyright holder has the right to perform publicly

o We are talking about a board game here. Anyone should be able

to play the game publicly (i.e. in a park), so this doesnt apply
here.
Merger doctrine
o If the idea and the expression are too tied in together
(inseparable), then it shouldnt be copyrightable because you
cannot copyright an idea
o Asserted as affirmative defense

Red Baron v. Taito

- Public performance
o Putting your arcade machine in the public is public performance
- First-sale doctrine
o You bought a book? You can re-sell it under first-sale.
- But first-sale doctrine does not apply to the performance right
o So if you purchased an arcade machine and put it in a public
place against the holders wishes, you cannot claim first-sale
doctrine.
Nintendo v. Elcon
- Unfair competition
M. Leff Radio Parts, Inc. v. Mattel, Inc.
- Antitrust law
o Prohibit agreement between companies that hinders free market
o Bans abusive behavior by a dominating firm
o Supervising merger/acquisitions of corporate giants
- Tying arrangement
o Selling a good on a condition that you buy a second good
- RobinsonPatman Act
o Prohibits anticompetitive practices by producers, specifically
price discrimination
eGames Inc. v. MPS Multimedia Inc.
False advertising
Silicon Knights, Inc. v. Crystal Dynamics, Inc.
- Tortious interference
- Intentional interference of prospective economic advantage
Morris v. Nintendo
- The Plaintiff was unable to show confusion between Nintendos mark
and their Monster in My Pocket mark.
Americas Best Family Showplace Corp. v. City of New York

First Amendment/14th Amendment

o Zoning scheme limiting 4 arcade machines per restaurant is
unconstitutional?
It would bring hardship on the restaurant
Plaintiff failed to demonstrate

City of Warren v. Walker

Does video game have artistic value?
- If yes, then 1st Amendment
o Strict scrutiny
Ban on violent games is unconstitutional
- 1st Amendment issue