Tetris Holding v. Xio Interactive

Citation
Tetris Holding, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394 (D.N.J. 2012) (full-text).

Factual Background
Tetris Holding, LLC, a computer game company, brought suit against Xio Interactive alleging copyright and trade dress infringement of its game Tetris. Tetris Holding owns the copyrights to the game and licenses the rights to The Tetris Company, which then sublicenses its rights. Tetris Holding has vigorously protected its intellectual property from various infringers removing imitation games from the market.

A recent college graduate formed Xio with intention to create a multilayer puzzle game for iPhone called "Mino" with similar functionality as Tetris. Xio admitted to downloading Tetris' iPhone application for use in the development of its own game.

Tetris sent "take down" notices to Apple under the Digital Millennium Copyright Act and Apple took down the game. After Xio responded with a counter-notification, Apple notified Tetris Holding about the potential reinstatement of the "Mino" game unless Tetris filed a lawsuit.

Trial Court Proceedings
Both parties moved for summary judgment.

The court held that Xio infringed Tetris Holding's copyright protection and was engaged in unfair competition because it created confusion amongst consumers with its identical packaging and advertising.

Under 17 U.S.C. § 102, expressions of original works are protected but not ideas. The court by setting out 17 U.S.C. § 102, held that elements of computer programs may be protected by copyright law including the code and the graphical elements of video games. The court moved on to establish which of the elements of Tetris are protected under copyright law. The court recognized the difficulty of applying the copyright law in the context of computer programs where the protection is needed for ideas not expression. It noted the courts split for the idea-expression dichotomy.

Despite the different tests used in two circuits, The court recognized that it had to determine copyrightable expression from unprotected ideas and decide whether there was a substantial similarity between the protected expression and Xio’s product. If the ideas and expressions of the Mino fell within the merger or “scenes a faire” doctrine, the protection would not be extended to the elements at issue. If the courts find that an idea and expression are inseparable, the elements of the program will not be protected. When there are no or only few other ways to express a certain idea merger exists. And “scenes of faire” exists when an expression is so associated with a particular idea that on is compelled to use such expression.

Xio acknowledged Tetris Holding’s copyright ownership and accepted that it had the purpose to create a similar game but contends any allegations of copying any protected elements from Tetris. It avowed that its research showed the parts he copied were functional to the game and argued that there were no patent to the rules and other functional elements of Tetris, and it carefully crafted the game to avoid any protected elements. The court recognized limitless options for Xio to create a similar functioning game where Xio would avoid violating Tetris Holding’s copyright. Some of the examples would be creating different sized playing board, different colored pieces and such. The court found that the merger and “scenes a faire” doctrines do not apply in the case and summary judgment proper for Tetris Holding’s copyright infringement claim.

The court further held that even though the game mechanics and the rules are not protected, the expressive elements are copyrightable which includes game labels, design of game boards, playing cards and graphical works. Hence, the court found that although the copyright did not extend to the style and movement of the pieces, the expression associated with the elements was protected. It noted that Mino’s style, design, shape and movement were almost identical to that of Tetris’ game pieces. Further, the overall look and visual expression of Tetris and Mino were identical.

To establish trade dress infringement there factors to prove: (1) the trade dress is destructive; (2) the trade dress is not functional; and (3) there is a likelihood that consumers will confuse the Mino product for the Tetris product. The court focused on the last element and found that consumers would easily be confused as to whether Mino was an authorized iteration of Tetris because of the similar packaging and advertising. Thus, the court found that there was an infringement of Tetris’ trade dress.

Therefore, the court granted summary judgment in favor of Tetris for the copyright infringement and the trade dress claim.