Data East USA, Inc. v. Epyx, Inc.
1988 U.S. App. LEXIS 16026, 9 U.S.P.Q. 2d (BNA) 1322, 862 F.2d 204 (1988)
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Rule of Law:
Copyright protection for works, particularly functional works like video games, where the idea and its expression are inseparable or where the expression constitutes "scenes a faire" (standard elements of a genre or dictated by practical constraints), extends only to protection against identical copying, not substantial similarity of such unprotectable elements.
Facts:
- Data East USA, Inc. developed and distributed an arcade game titled "Karate Champ" in July 1984, followed by an updated version in September 1984, and a home computer version in October 1985, securing audio-visual copyright certificates for each.
- Data East's "Karate Champ" depicted a karate match between two combatants (one in white, one in red outfits), supervised by a referee, with successive phases against varying stationary background images, a bonus round, and specific combatant moves and scoring methods.
- In November 1985, System III Software, Ltd., an English company, began distributing a home computer game called "International Karate" in England.
- Epyx, Inc. obtained a license agreement with System III and commenced distribution of a Commodore-compatible version of "International Karate" in the United States in April 1986 under the name "World Karate Championship."
- Epyx's "World Karate Championship" also featured two combatants (white and red outfits) conducting karate matches supervised by a referee, against varying stationary background images, with a bonus round, and similar combatant moves and scoring methods.
- The visual depiction of karate matches is subject to inherent constraints of the sport itself, including the number of combatants, their stances, recognized moves, referee involvement, and point scoring.
- The use of the Commodore computer for a home karate game imposed constraints related to graphics, such as the use of sprites and limitations on color and multiple colors in a single visual image.
Procedural Posture:
- Data East USA, Inc. sued Epyx, Inc. in federal district court, alleging copyright, trademark, and trade dress infringement.
- The district court found that Epyx infringed Data East's copyright and issued a permanent injunction against Epyx, requiring it to cease copying, creating derivative works, distributing, performing, or displaying the infringing works, and to recall all copies of "World Karate Championship" and "International Karate" games.
- The district court found no trademark or trade dress infringement.
- Epyx appealed the district court's grant of the permanent injunction to the United States Court of Appeals for the Ninth Circuit.
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Issue:
Does substantial similarity exist, and thus copyright infringement, when the similarities between two video games arise from elements that are either inseparable from the underlying idea of the game or are standard features (scenes a faire) dictated by the subject matter or technical limitations of the platform?
Opinions:
Majority - TROTT, Circuit Judge
No, substantial similarity and thus copyright infringement do not exist when the similarities between two video games arise from elements that are either inseparable from the underlying idea of the game or are standard features (scenes a faire) dictated by the subject matter or technical limitations of the platform. To establish copyright infringement, Data East was required to prove ownership of a valid copyright and "copying" by Epyx. Data East's copyright ownership was undisputed, so the court focused on whether Epyx copied "Karate Champ," which is often inferred from circumstantial evidence of access and substantial similarity. The Ninth Circuit applies a two-step test for substantial similarity: an objective "extrinsic" test to compare ideas and a subjective "intrinsic" test to compare expression based on the "total concept and feel." The district court correctly found the idea expressed in both games to be identical: a martial arts karate combat game with two combatants, a referee, specific scoring, changing background scenes, and action in the lower screen portion. However, copyright law protects only an author's expression of an idea, not the idea itself. The court emphasized that no substantial similarity of expression will be found when the idea and its expression are inseparable, as protecting such expression would grant a monopoly over the idea. Furthermore, copyright protection does not extend to "scenes a faire"—expressions that are indispensable or standard in the treatment of a given idea or dictated by external constraints. The district court identified 15 similar features, including the number of moves, player options, specific martial arts moves (somersaults, punches, kicks), changing background scenes, 30-second rounds, a referee, specific referee dialogue in speech balloons, and bonus points. The appellate court found these features either "necessarily follow from the idea of a martial arts karate combat game," were "inseparable from, indispensable to, or even standard treatment of the idea of the karate sport," or were attributable to constraints inherent in the Commodore computer platform (e.g., sprite usage, color limitations). Consequently, these similarities were deemed unprotectable elements. When similarities arise solely from unprotectable expression, analytic dissection of those similarities may be performed, and if all similarities are found to stem from common ideas or constraints, no substantial similarity of protected expression exists. In such cases, copyright protects only against "identical copying," which was not present here. The court concluded that the district court erred by not giving appropriate weight to its findings that these similarities resulted from unprotectable expression. The few truly unique and protectable elements, such as the scoreboard and background scenes, were found to be dissimilar or inconsequential, and a "discerning 17.5-year-old boy" (the target audience) would not consider the works substantially similar based on these.
Analysis:
This case significantly clarifies and reinforces the idea-expression dichotomy in copyright law, particularly as applied to functional works and creative industries like video games. It establishes that similarities in expression that are dictated by the underlying idea, genre conventions (scenes a faire), or technical limitations are unprotectable elements and cannot form the basis for a copyright infringement claim. This principle is crucial for fostering innovation within established genres by preventing copyright holders from monopolizing common concepts or standard features, thereby balancing the need to protect creative expression with the public interest in the free use of ideas and functional elements.
