A recent judgment of
the District Court for the Northern District of California concerned a
video game "Dead Rising" produced by Capcom
in which the lead character battles with an army of zombies in a small town
shopping mall, and tries to escape by helicopter. MKR owned the rights in a
1979 movie "George A Romero's Dawn of the Dead" which had broadly the
same basic plot and content.
The Events leading up to Proceedings
In 2004 Capcom approached MKR to negotiate a licence for use of elements from "Dawn
of the Dead"
for a video game. It did not, however, pursue the matter and instead it
placed on the front of the box for the video game this disclaimer:
"THIS GAME WAS NOT DEVELOPED, APPROVED OR LICENSED BY THE
OWNERS OR THE CREATORS OF GEORGE A. ROMERO'S DAWN OF THE DEAD".
The proceedings were actually initiated by Capcom
seeking a declaration that their video game did not infringe any copyright,
trade mark or any other intellectual property rights belonging to MKR. MKR
counterclaimed, but all its counterclaims failed and Capcom's
The Extrinsic Test
The court first
applied the objective "extrinsic" test where a court "focuses
on articulable similarities between the plot,
themes, dialogue, mood, setting, pace, characters and sequence of events in
the two works."
In applying the test, the court "compares not the basic
plot ideas for stories, but the actual concrete elements which make up the
total sequence of events and the relationships between the major characters."
extrinsic test the court concluded that a comparison between the movie and
the videogame revealed "profound differences". It noted that MKR had
not identified any similarity between Dead Rising and any protected element
of Dawn of the Dead. It noted that the few similarities MKR had alleged
were "driven by the wholly unprotectable
concept of humans battling zombies in a mall during a zombie outbreak. Each
one of MKR's claims to similarities ...
ultimately must be "filtered" out as unprotectable."
The court then went
on to consider one by one the issues of the plot and sequence of events,
characters, theme, dialogue, mood, setting, pace and total concept in the
field. It found that "MKR's
alleged similarities constitute nothing more than a string of disconnected
facts and generic ideas which are not protected under copyright law."
The Intrinsic Test
The court then
considered the "Intrinsic" arguments. It noted that MKR made much of the
argument that those involved in the game industry perceived "Dead
be an obvious "rip off" of "Dawn of the Dead". It noted, however, that
MKR "must first successfully pass through the extrinsic test,
which ... it does not accomplish", so the perception of the market place that the
work had been copied simply did not come into play.
As to the
disclaimer, MKR argued "that the use of this
disclaimer itself dilutes its trade mark and may cause consumer confusion." The court, however,
rejected this argument and pointed out that MKR had failed to adduce any
authority that a pre-litigation disclaimer disavowing any connection
between the works "such as here" gives rise to a trade mark claim.
The court considered
that this fell within the category of "fair
the trade mark. It concluded that the prominent use of the mark was
necessary because there was no other way of referring to the movie by its
title. It also concluded that the use of the full title was necessary
properly to identify the movie and differentiate it from the myriad of
similar movie titles. Thirdly, it found that nothing about using the mark
in a disclaimer denying the affiliation gave rise to confusion.
In this case it
seems as though the videogame company did everything right, and it was
clearly well served by its lawyers in applying the disclaimer because
despite the possible "dirty dog" element of Capcom having approached the owners of the film, which
might have swayed a judge against it, Capcom won
outright. The evidence that the two copyright works were substantially
different and the appropriate use of a full disclaimer were sufficient to
convince the court that Capcom's video zombies
should be left to their own grizzly devices untroubled by the US legal
Film & TV