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, the expressions of original works are protected, but ideas are not. The court held that elements of a computer program may be protected by copyright law, including the code and the graphical elements of a video game. The court then looked at which elements of Tetris are protected under copyright law. The court recognized the difficulty of applying copyright law tot computer programs where protection is sought for ideas and not expression. It noted the courts are split over the idea-expression dichotomy.
Despite the different tests used in two circuits, the court recognized that it had to determine copyrightable expression versus unprotected ideas and decide whether there was substantial similarity between the protected expression and Xio's product. If the ideas and expressions of Mino come within the merger doctrine or "scenes a faire" doctrine, the protection would not extend to the elements at issue. If the court finds that an idea and expression are inseparable, those elements of the program will not be protected. When there are no or only a few ways to express a certain idea, the merger doctrine applies. And "scenes a faire" exists when an expression is so associated with a particular idea that one is compelled to use such expression in expressing that idea.
Xio acknowledged Tetris Holding's copyright ownership and accepted that it intended to create a similar game, but argued that it did not copy any protected elements from Tetris. It asserted that its research showed the parts it copied were functional aspects of the game and argued that there was no protection for the rules and other functional elements of Tetris, and that 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 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 the factors to prove include: (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 on its copyright infringement and the trade dress claim.