Charles Caleb Colton once said, “Imitation is the sincerest form of flattery.” But when the fruit of one’s labors are copied without regard, while flattering recognition that what has been created is worth taking, the taking causes real damage and calls into question whether further creation is economically viable.
Indeed, imitation can be quite annoying, particularly when that imitation masquerades as infringement of intellectual property rights. Such a taking was something that couldn’t be tolerated in the case of Tetris Holding, LLC and the Tetris Company, LLC vs. Xio Interactive, Inc.
As it turns out, Tetris Holding was not flattered at all about the infringement, took the fight to the infringer and ultimately prevailed. Tetris certainly was not the first video game to be imitated, and unfortunately it won’t be the last, but the outcome of this copyright and trade dress infringement lawsuit screams — Copycats Beware!
Anyone who has ever played Tetris knows that it can be a very addictive game. From the time of its release in the ’80s up until now, the game has continued to be a favorite of gamers. Perhaps that’s what lead to Xio Interactive Inc.’s (Xio) interest in “creating” it’s so-called version of the popular Tetris game for the Apple iPhone — a game they called Mino. But didn’t the powers-that-be behind Xio realize that the creation of such a similar game would open themselves up to possible legal action? Sometimes in this type of situation there is an understanding that what developers is doing is wrong, but they go ahead and do it anyway. Other times developers are simply unaware, which seems to be the case here.
Why Xio Thought They Were in the Clear
In Judge Freda Wolfson’s opinion that was rendered back in May of 2012 in response to the motions for summary judgment that were made by the parties, the Judge noted that Xio actually admitted and conceded that it had unquestionably copied elements of the Tetris game, and that Tetris did, in fact, own a valid copyright. Seems like that admission would have meant case closed for Xio and Tetris automatically wins, right?
Well, here’s why there was a need for the judge to take a more in-depth look at the situation: Xio argued that because “it meticulously copied only non-protected elements, in particular the rules and functionality of the game, and not its expressive elements, that judgment should be entered in its favor.” More specifically, Xio tried to fuse together the doctrines of merger and scènes à faire as related to copyright law in its argument that Tetris could not “protect expression inseparable from either game rules or game function.”
Additionally, Xio claimed that Tetris could not protect what was properly only protectable by way of a patent via the use of a copyright. However, the Court did not agree with such arguments, noting that it wasn’t particularly convinced that either of those doctrines applied in this case on the basis that there were any number of new ways that Xio could have chosen to express the rules of Tetris and that Tetris didn’t have “stock or common imagery that must be included” in other similar games.
Prior to its development of Mino, Xio claimed that it investigated and thoroughly reviewed (with the help of counsel) the laws related to intellectual property in order to figure out which elements of Tetris they could lawfully use and which elements they couldn’t. During its research, Xio said that it learned that the rules and other functional elements of the Tetris game had not been patented; and accordingly, Mino was carefully and purposefully crafted in such a way as to leave out all protected and expressive elements. Still, this was not enough to secure a judgment in Xio’s favor.
Judge Wolfson took a detailed look at both the Tetris and Mino games in an effort to identify those items that were protected under the law, and there were a number of things that stood out in the Judge’s view. First of all, when placed side by side, various screenshots of the two games were just about impossible to differentiate. The Court stated (and I love this quote, by the way) that “if one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar.” Moreover, Judge Wolfson spoke to the many elements of both games that were hard to distinguish, some of which included the look, color and shape of the game bricks; the movement/rotation of the pieces; the way the game pieces could be put together to form a complete line; the exact size of the playing area; and other specific design decisions that Xio had copied.
So, What Does This Mean For Copycat Developers?
The Court, in its Consent Order that was filed on January 31, 2013, made it abundantly clear that with regard to Xio, it’s agents and, in essence, anyone else associated with the company, are permanently banned from selling, distributing, publicly displaying, promoting, etc. the Mino game and any version thereof. The company is also banned from using a T-shaped game piece (known as a tetramino) as part of its logo or mark in relation to any game. In other words, it’s a wrap for Mino.
And for any other developers who believe that they are crafty enough to attempt the same thing — heed the Judge’s determination. Try this on for size — how about coming up with an original idea of your own that might be just as good or even better than the original? Hmm, now isn’t that a lofty idea in and of itself!