Archives for posts with tag: copyright

This 2004 case is about copyright of the design elements of miniature motorcycles.

KIKKER 5150 and KELLY KIKKERT, Plaintiffs, v. KIKKER 5150 USA, LLC, et al., Defendants.
No. C 03-05515 SI

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
2004 U.S. Dist. LEXIS 16859; Copy. L. Rep. (CCH) P28,895

Decided – August 13, 2004
Opinion by district Judge Susan Illston:

This case concerns copyrights in miniature working motorcycles. Plaintiffs Kikker 5150 and Kelly Kikkert filed their complaint on December 8, 2003 against Kikker 5150 USA, Mark Gholson, and others (defendants or counterclaimants).

At issue is the design element of miniature motorcycles. Not toys, miniature-sized, functional motor vehicles.

defendants argue that “a Formula One race car is no more copyrightable than a Ford Escort and plaintiffs’ miniature motorcycles are no more copyrightable than a Harley-Davidson Heritage Softail or a Kawasaki Ninja.” As useful articles, defendants argue, plaintiffs’ miniature motorcycles are precluded from copyright protection.

The Court mostly agrees:

The Court finds that the miniature motorcycles are useful articles and therefore not eligible for copyright protection as such.

But,

The Court also finds, however, for the reasons discussed below, that there are genuine issues of fact concerning whether various “design elements” of the motorcycles “can be identified separately and are capable of existing independently as a work of art.”

The Court cites Fabrica Inc. v. El Dorado Corp., 697 F2d 890, 893 (9th Cir. 1983) which is a case about competing carpet companies and the potentially unfair use of a similar sales system, though the functional elements of are not copyrightable some aesthetic aspects may still be protected.

Therefore,

For this reason, defendant’s motion for summary judgment must be denied.

Summarizing:

Defendants argue that the motorcycles at issue are not copyrightable and ask the Court to issue a preliminary injunction or an order to show cause why a preliminary injunction should not issue. The Court finds that the motorcycles themselves are not copyrightable, since the motorcycles are useful articles and are not subject to copyright protection. However, since the Certificates of Copyright described the nature of the works as “three-dimensional, sculptural features and design elements of miniature motorcycles,” and since the Court cannot say as a matter of law that the design elements of the motorcycles are not severable and original, the Court declines to grant the motion to summarily adjudicate the copyrights’ invalidity.

No restraining orders where issued and so the case continued, presumably to be settled because I see no subsequent published case history.

Here the Court is quoting the defendant’s reply brief to mention the Ford Escort, the Harley-Davidson Heritage Softail and the Kawasaki Ninja. And we’ve seen mentions of the Kawasaki Ninja already in the NinjaLaw Court record . The Heritage Softail appears is four Federal Opinions and the Kikker 5150 case is its second appearance, the prior also being an intellectual property case. In contrast this is the first use of the Kawasaki Ninja in an IP case and the prior cases were all mentions of the actual bike. And the Ford Escort appears in over 300 cases beginning in the early 80s.

Note: here’s a warning about the dangers of Kikker bikes

Ultimately, this Kikker 5150 case stands for principles of copyright in toys – that is, that toys are copyrightable as to the aspects that are not part of the usable functions specifically. So it is fitting that “ninja” is mentioned here, because as we know from ninja law, “ninja” is strongly related to toys.

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This 1997 Federal Court opinion involved multiple major Hollywood movie companies suing a video rental company for copyright infringement. The movie “3 Ninjas Knuckle Up”, copyright held by Columbia Tristar, is listed as involved in the litigation.

video city

COLUMBIA PICTURES INDUSTRIES, INC.; BUENA VISTA PICTURES DISTRIBUTION, INC.; DISNEY ENTERPRISES, INC.; METRO-GOLDWYN-MAYER PICTURES, INC.; PARAMOUNT PICTURES CORPORATION; TRISTAR PICTURES, INC.; TWENTIETH CENTURY FOX FILM CORPORATION; UNITED ARTISTS PICTURES, INC.; UNIVERSAL CITY STUDIOS, INC.; WARNER BROS., A Division of TIME WARNER ENTERTAINMENT COMPANY, L.P.; COLUMBIA TRISTAR HOME VIDEO; LIVE HOME VIDEO, INC. (LIVE AMERICA INC.); TWENTIETH CENTURY FOX HOME ENTERTAINMENT, INC., Plaintiffs,
v.
DOMINGO LANDA, individually and d/b/a VIDEO CITY and MOVIE TRAK; JASON FRANK, individually and d/b/a TAKE TWO VIDEO; and SYED AHMED, individually and d/b/a VIDEO CITY, Defendants.


Columbia v. Landa
Case No. 96-1340
UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF ILLINOIS
974 F. Supp. 1

Decided – June 26, 1997

Judge Joe Billy McDade writing for the Court explains:

Plaintiffs, numerous motion picture producers and distributors, filed this action against Defendants, three movie rental store owners, on July 11, 1996. The named Defendants include Domingo Landa, d/b/a VIDEO CITY and MOVIE TRAK, Jason Frank, d/b/a TAKE TWO VIDEO, and Syed Ahmed, d/b/a VIDEO CITY. 1 Plaintiffs Amended Complaint [Doc. # 33] alleges that Defendants illegally duplicated and distributed motion picture videocassettes in violation of 17 U.S.C. § 106 (Copyright Infringement) and 5 U.S.C. § 1125(a) (Trademark Infringement).

An extensive array of movies videocassettes were seized from the defendants, and “3 Ninjas Knuckle Up” appears first in the list because the number three is first alphabetically.

The Court, granting Plaintiff’s motion for Summary Judgment, finds that there was copying and orders damages and permanent injunction relief. Interesting, despite finding that Defendant’s “illegal activity” was “pervasive” and with “total disregard for copyright law”, there is no finding as to willful infringement. Such a finding could have increased the liability tremendously but:

In the instant action, Plaintiffs do not seek a finding that the infringing acts of Defendants were willful. (See Doc. # 61 at p. 8). Rather, Plaintiffs insist that an award against Landa and Frank in the amount of $ 1,000 per infringement is just and proper.

The Court agrees, and so with 207 infringing video cassettes, the defendants owe $207.000. And in 1997, I am sure that sounded like a huge award for a copyright case.

But contrast with the future (err. the present), the more recent cases, where similar Plaintiffs have taken a more aggressive position on digital content. For example see Sony BMG v. Tenenbaum and of course, the prosecution of NinjaVideo.

This is a case series from the mid to late 1990s involving Fasa’s Battletech characters and toy products based on those characters made by toy company Playmates, as relates to other toy products based they made for the ExoSquad characters.

battletech

FASA CORPORATION and VIRTUAL WORLD ENTERTAINMENT, Plaintiffs, v. PLAYMATES TOYS, INC., Defendant.
No. 93 C 2445
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
892 F. Supp. 1061; 1995 U.S. Dist. LEXIS 8741; 35 U.S.P.Q.2D (BNA) 1766
Decided – June 19, 1995

Beginning on June 19, 1995, the Court began the first phase of a potential four phase bench trial in this matter which involves an intellectual property dispute involving futuristic robot-like battle toys

Previously an opinion of the Court in FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994), explained:

The present lawsuit centers on Playmates’ alleged infringement of FASA’s intellectual property and proprietary rights in BATTLETECH by designing and marketing the EXOSQUAD toy line

And explaining (footnotes omitted):

BATTLETECH – created by FASA in 1984 and originally sold as a role-playing game – is a fictional universe set in the 31st century. The BATTLETECH universe is comprised of empires such as the Star League, an empire consisting of five cosmic houses each of which encompasses hundreds of interstellar worlds. Each house seeks control of the galaxy. The battles between worlds are dominated by BattleMechs (also called Mechs), massive man-shaped, robot-like tanks of various shapes and designs which are piloted by human soldiers called MechWarriors. Pls.’ Admis. P 2. Among the MechWarriors’ adversaries are the Clan Elementals, “men and women bred to be foot soldiers.” FASA CORP., BATTLETECH THE RETURN OF KERENSKY TECHNICAL READOUT: 3050 (1990) at 8.

The EXOSQUAD story line is set in the 22nd Century and involves confrontations between the conquering, genetically engineered, Neosapien race and an enslaved human race living on Earth, Venus and Mars. The Neosapiens and humans battle each other, encased in large robotic fighting machines known as “ExoFrames” or “E-Frames.” Segal Decl. P 5 Playmates markets a toy line – consisting of six toys – featuring characters and vehicles from the EXOSQUAD cartoon series. Pls.’ Facts PP 7, 9.

exosquad

There were complicated issues about licensing agreements and waivers, but in terms of intellectual property and analysis of substantial similarity:

Even the most cursory visual comparison of the EXOSQUAD and BATTLETECH materials reveals that there are marked similarities between the two. In particular, we note that the EXOSQUAD Heavy Attack E-Frame appears to be a virtual replica of the BATTLETECH MAD CAT. Because the court cannot conclude that no reasonable trier of fact could find substantial similarity, Playmates’ motion for summary judgment on this basis must be denied.

mad catassault mech

And so with summary judgment granted in part but denied in part, the case went forward.

Among the findings of fact listed in the 1995 opinion:

Playmates is a distributor of toys supplied by a related company, Playmates Toys (Hong Kong) Ltd. (“Playmates HK”), including TEENAGE MUTANT NINJA TURTLES, * TREK, ADDAMS FAMILY and various Disney characters, and also participates in the development of toys pursuant to an agreement with Playmates HK.

And so again, as we’ve already seen already in many NinjaLaw posts, the Federal Courts mentions TMNT for no particularly necessary reason.

The 1995 opinion concludes:

For all of the reasons set forth herein the Court finds that Playmates’ New Product Form is legally unenforceable under the facts and circumstances of this case. The Court therefore finds that defendant Playmates has not met its burden of establishing its affirmative defense of waiver. The trial will therefore proceed to Phase II on June 20, 1995 at 9:45 a.m.

And so the case continued again. In fact there are seven Federal Court opinions decided between 1994 and 1998 in relation to these parties’ dispute. The first two are those opinions mentioned above. The third was in the same court (US District Court for Northern District of Illinois, Eastern Division) and by the same Judge Ruben Castillo, 912 F. Supp. 1124 decided January 22, 1996.

Judge Castillo concludes (despite what he wrote above) that the two character sets are not substantially similar, and/or independently created, and/or there are “Specific, Non-Trivial Design Features Distinguish EXO-SQUAD From BATTLETECH” and the Judge also cites a study introduced to evidence by Playmates:

The study found no probative evidence of any consumer confusion–98.6% of the persons interviewed after seeing display packages of both products, did not confuse the trade dress of EXO-SQUAD with that of BATTLETECH.

Therefore, Castillo writes:

The bottom line in this case is that Playmates made a conscious business decision that it could proceed with the development of its EXO-SQUAD toy line after it had been given access to the BATTLETECH designs without the necessity or cost of obtaining a license from FASA. After extensive and undoubtedly costly litigation this business decision has been found by this Court not to violate FASA’s legal rights. Nevertheless, this Court believes that the facts of this case do not warrant the imposition of any costs upon FASA for seeking to vindicate its legally protectible rights. This case is dismissed with prejudice with both sides to bear their own costs.

Judge Castillo also found the opportunity to again mention the Teenage Mutant Ninja Turtles and in the findings of fact writes:

On May 11, 1992, Sallis called Allen to discuss whether there was a possibility of putting together an animated cartoon show about BATTLETECH because Playmates’ preference was to produce its new robotic action figure toy line with a corresponding television series. (Sallis Tr. 1592-93). Many successful toy lines, such as the Ninja Turtles and Power Rangers have been promoted in this fashion. (Johnson Tr. 2219). Sallis also discussed potential royalties and budgets with Allen.

ninja turtles power rangers

On appeal at the Seventh Circuit, Judge Diane Wood summarized the above three cases:

The underlying dispute between FASA and Playmates dealt with the question whether Playmates had impermissibly copied FASA’s Battletech line of toys, violating both its copyright and trademark rights (among others) in the process. In a thorough opinion issued after a bench trial (and an opinion of exceptional interest for science fiction aficionados), Judge Castillo ruled that, while the original features of FASA’s robots were entitled to copyright protection, and FASA had protectable trade dress rights in its robot designs, Playmates’ Exo-Squad line of toys were not substantially similar to FASA’s toys based on the Battletech universe, the evidence did not show a likelihood of confusion between the two for purposes of the trade dress complaint, and Playmates had not engaged in unfair competition. FASA Corp. v. Playmates Toys, Inc., 912 F. Supp. 1124 (N.D. Ill. 1996) (FASA III). Earlier, he had granted Playmates’ motion for partial summary judgment on FASA’s claims of common law unfair competition, dilution, and tortious interference with prospective business advantage. FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N.D. Ill. 1994) (FASA I), and somewhat later, he had denied Playmates’ affirmative defense of waiver. FASA Corp. v. Playmates Toys, Inc., 892 F. Supp. 1061 (N.D. Ill. 1995) (FASA II).

Judge Wood then continues:

Playmates, which reports to this court that it spent in excess of $ 2.5 million defending itself against FASA’s accusations, argues that the district court’s remarks explaining why he was denying attorneys’ fees reveal a mistake of law on the standard to be applied.

Wood concludes

In its briefs, FASA has made a Herculean effort to parse the judge’s comments, … Rather than attempting further to read between the lines of the judge’s oral remarks, we prefer to send the fee question back to him to rule again on the petition under the applicable legal standards. We emphasize in this connection that Fogerty says that “attorney’s fees are to be awarded to prevailing parties only as a matter of the court’s discretion.” 510 U.S. at 534.

And so vacated and remanded, the case again falls before Judge Castillo, who again decides (with a bit of a benchslap to Playmates attorneys) not to award any attorney’s fees. So concluding April 1, 1998:

The proper exercise of this Court’s discretion herein requires the Court to once again reject an award of fees. It is unfortunate that this litigation was prolonged by this attorneys’ fees dispute. The Court recognizes that it bears great responsibility by not clearly enunciating the specific basis of its prior denial of attorneys’ fees. Perhaps the Court mistakenly sought to avoid writing a fourth opinion in this hotly disputed litigation. Yet, the Court expressly notes that, rather than seek easy clarification from this Court, Playmates’ counsel merely thanked the Court at the conclusion of the February 13, 1996 proceeding and proceeded to the appellate court.

Today, almost two years later, this Court corrects its prior mistake and issues its fourth opinion which, in no uncertain terms, indicates that an evaluation of all the legal and equitable factors at the Court’s disposal pursuant to its post-Fogerty discretion compels this Court to deny Playmates any attorneys’ fees in this matter. Playmates pushed the extreme outer limits of non-liability in this case to reap great economic benefits. Simply put, an award of attorneys’ fees to Playmates would not advance any creative purpose sought to be advanced in the Copyright Act. Now Playmates wants to have its close legal victory as its cake and its attorneys’ fees as its icing. Playmates instead should be satisfied with the economic profits it reaped from its EXO-SQUAD toys and the fact that its vast attorneys’ fees are still currently tax deductible as reasonable corporate business expenses without any clear limitation. This Court cannot and will not give Playmates its cake and icing too because Playmates has simply not convinced this Court that a fee award would equitably advance any creative purpose protected by the Copyright Act.

Meanwhile, if it weren’t already confusing enough, in two other opinions decided in the same district court around the same time, but by different judges, Playmates is a co-plaintiff against FASA, where the other co-plaintiff is Harmony Gold USA Inc., owners of the Macross and RoboTech character licenses. See Harmony Gold U.S.A. v. FASA Corp., 169 F.R.D. 113 (November 6, 1996, Decided) and 40 U.S.P.Q.2D (BNA) 1057 (June 12, 1996, Decided) and eventually settled out of court.

This is a complicated set of similar characters with crossed licensing agreements and arguable but specific differences. Judge Castillo considers it all part of the cost of doing business – the merchandise driven TV cartoon business. The Ninja Turtles serve to explain similar contemporary cartoon-toy businesses. There is no clear reason for the Court to have focused on that particularly comparison.

A Robotech fansite, terrania.us, has a great organized list of all seven Fasa v Playmates cases with link to the full opinions.

In 1994, The Burger King Kids Club teamed up with the Teenage Mutant Ninja Turtles to summarily dismiss a claim by the Curious Kids, an unproduced idea that claimed to be the original version of a multi-ethnic, multi-racial cartoon.

CK COMPANY, Plaintiff, v. BURGER KING CORPORATION and SAATCHI & SAATCHI ADVERTISING, INC., Defendants.
92 Civ. 1488 (CSH)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1994 U.S. Dist. LEXIS 13934; Copy. L. Rep. (CCH) P27,325
Decided – September 29, 1994

Judge Haight for the Court explains:

In this copyright action, defendants move for summary judgment pursuant to Fed. R. Civ. P. 56 to dismiss plaintiff’s complaint. Plaintiff claims that Burger King’s “Kids Club,” a series of child cartoon characters featured in Burger King commercials and in-store promotional materials, infringes on plaintiff’s unproduced proposal for television commercials and specials featuring its own group of child cartoon characters called the “Curious Kids.” Defendants claim that Burger King’s Kids Club lacks any substantial similarity to the protectable elements of the Curious Kids.

The Court continues:

This case presents the familiar copyright question of substantial similarity in the novel context of two groups of multi-ethnic, multi-racial cartoon children.

WAIT, what? HAHA. It’s 1994. And so “multi-ethnic, multi-racial cartoon children” is a “novel context” HA! Dora the Explorer won’t air for another six years.

Explaining the characters in question:

The characters in the Burger King Kids Club, in contrast [to the plaintiff’s characters, the Curious Kids], are extreme stereotypes. The commercials and promotional materials before the Court portray the Kids Club personalities as one-dimensional cartoons. The tone of defendants’ commercials demonstrates the lightweight, playful nature of the Kids Club. While the Curious Kids deal with significant social issues, the Kids Club deals with issues no more weighty than how children can obtain promotional items such as Teenage Mutant Ninja Turtle badges, plastic toy hamburgers, fries, or shakes at participating Burger King restaurants.

Continuing about the Kids Club:

The visual presentation of the Kids Club commercials demonstrates the fundamental differences in tone and structure between the Kids Club and the Curious Kids. The Kids Club commercials rely on special effects and highly stylized graphics. These commercials show the Kids Club members being magically transported in and out of different places, soaring through the air on a flying cheeseburger, ducking to avoid self-propelled french fries and milk shakes that fly into paper bags, and zapping Teenage Mutant Ninja Turtles with a stun ray.

Continuing to contrast, the Court notes:

while the Curious Kids wear normal, everyday clothes typical for young teens, the Kids Club members each wear highly stylized outfits exaggerating their stereotypical character type. For example, Kid Vid is outfitted with a plethora of remote controls, headphones, portable stereo equipment, and some type of goggles, and Wheels wears a spacesuit. This magical, high-tech style contrasts with the realistic portrayal of the Curious Kids.

Is that why the Court has twice highlighted the TMNT connection? This is not the first time a Federal Court opinion has unnecessarily mentioned a Ninja Turtle promotional item – See previous NinjaLaw posts about TMNT in cola wars and TMNT in ooze products and TMNT in movie distribution. Is it used in these cases to set the social context or just because judges like ninja turtles? In the Kids Clubs case is it used to further the pronouncement of exaggerated stereotypical character types? Is TMNT, in this way, an early example of multi-ethnic, multi-racial cartoon characters? At the very least they seem to be important supporting characters.

Conclusion of the Court:

Defendants have established that any similarities between the Kids Club and the Curious Kids relate only to unprotectable elements, and that no reasonable jury could find the works substantially similar. Defendants are therefore entitled to judgment as a matter of law.

A rehearing of this case was denied and the appellate court affirmed by the Second Circuit (122 F.3d 1055) without issuing an opinion.

I love when Judges decide that no reasonable jury could find a work similar. In this case the proof of copying was weak, the plaintiff’s characters had never been produced and the connection between the plaintiff’s and Burger King’s advertising agency was tenuous. But the Court does not decide there is no copying, rather that there were no protectable elements of intellectual property. The idea of a group of multi-ethnic, multi-racial characters with one in a wheelchair, is not protectable – or else surely one of these parties might own rights to Glee too.

Note the Court also wrote:

given racial and gender stereotypes of leadership it is unfortunately no surprise that the only white, male, non-handicapped, non-“nerd” member of each group assumes the leadership role. See Selmon v. Hasbro Bradley, Inc., 669 F. Supp. at 1272-73 (not unusual that lion-like creature assigned role of “king of the jungle”).

wheels artie arty glee

burger king kids club glee cartoon

glee cartoon kids club

Judge Haight’s opinion in the Kids Club case has been cited six times for the following propositions:

1) “Copyright law will not protect characters where ‘it is virtually impossible to write about a particular fictional theme without employing certain stock or standard literary devices.’ … theme of diverse group of children sharing adventures unprotectible under copyright law” in Robinson v. Viacom 1995 U.S. Dist. LEXIS 9781, Copy. L. Rep. (CCH) P27480 (S.D.N.Y. July 13, 1995)

2) “concepts and ideas may not be copyrighted, and that only a particular expression of an idea may be copyrighted.” Proctor and Gamble v. Colgate-Palmolive and Young and Rubicam, 1998 U.S. Dist. LEXIS 17773 (S.D.N.Y. Nov. 5, 1998), citing Robinson v. Viacom, Id.

3) “shared trait, by itself, is insufficient to establish substantial similarity between the characters.” Hogan v. DC Comics, 48 F. Supp. 2d 298 (S.D.N.Y. 1999) comparing “the main characters in Matchsticks and Dhampire [in] that they share the same name: Nicholas Gaunt”

4) Willis v. HBO, 2001 U.S. Dist. LEXIS 17887, 60 U.S.P.Q.2d (BNA) 1916 (S.D.N.Y. Nov. 5, 2001) comparing characters in Arli$$ and Schmoozers:

‘The essence of infringement lies in taking not a general theme, but its particular expression through similarities of treatment, details, scenes, events and characterization.’ Reyher, 533 F.2d at 91. ‘The law will not grant an author a monopoly over the unparticularized expression of an idea at such a level of abstraction or generality as unduly to inhibit independent creation by others.’ Gund, Inc. v. Smile Int’l, Inc., 691 F. Supp. 642, 644 (S.D.N.Y. 1988), aff’d mem., 872 F.2d 1021 (2d Cir. 1989). Consistent with these principles, copyright law does not protect stock characters, incidents or settings that are as a practical matter indispensable or standard in the treatment of a given topic. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 449 U.S. 841, 66 L. Ed. 2d 49, 101 S. Ct. 121 (1980).

5) “concepts and ideas may not be copyrighted and that only a particular expression of an idea may be copyrighted.” CBS Survivor v. ABC Granada, 2003 U.S. Dist. LEXIS 20258 (S.D.N.Y. Jan. 13, 2003) comparing Big Brother and Survivor to “I’m a Celebrity get me out of here” in regards to elements like island survival and “serial elimination”. The court finds for Celebrity and thus is born an era of vote-off reality TV shows in the style of Big Brother and Survivor – a style not protectable by copyright. NBC and Donald Trump’s “The Apprentice” premiered the following year.

6) And most recently cited regarding children’s book characters in Lewinson v. Henry Holt & Co., LLC, 659 F. Supp. 2d 547 S.D.N.Y. 2009) “[C]opyright law does not protect stock characters . . . standard in the treatment of a given topic.” “[T]he broad theme of a diverse group of children sharing adventures and experiences is by itself unprotectable under the copyright laws.”

This NinjaLaw post is about a case that has no real reason to include “ninja”. It is a wonderful example of how characters become metaphors used in the law. Here ninja is a mere throw-away reference but it helps to firmly root the word in a world of computer programming. This case involves a type of wood truss design software that is alleged to violate copyright by similarities in user interface. Presumably the ninja reference is about a specific software but I am not sure which one.

MITEK HOLDINGS, INC. and MITEK INDUSTRIES, INC., Plaintiffs, v. ARCE ENGINEERING CO., INC., Defendant.
Case No. 91-2629-CIV-MOORE
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA, MIAMI DIVISION
864 F. Supp. 1568
Decided September 9, 1994, and amended Oct 31, 1994

and affirmed in 1996

The district court opinion by Judge K. Michael Moore explains Learned Hands idea of “breaking down a literary work into its elements as a means of separating a writer’s ideas from his expression”, (See Nichols v Universal Pictures Corp) but

Judge Hand’s abstraction test is not as easily applied to computer programs as it is to literary works, such as books or films, because the mediums are so different. Unlike a computer program, the copyrightability of a film applies solely to its “user-interface,” that is the images and sounds the viewer perceives. In contrast, a computer program has two distinct elements of expression – the literal aspects, including the source code and object code, which tell the computer what to do, and the nonliteral aspects, such as the sights and sounds the program generates on the screen. The Gates Rubber case sets forth a uniform, six-part abstraction test for breaking down a computer program’s literal elements. Gates Rubber, at 835. However, this test is not helpful for this Court’s analysis, which focuses on the nonliteral elements of the program.

[Footnote #8]: The Gates Rubber court states that a computer program can be broken down into six levels of declining abstraction: (1) the main purpose, (2) the program structure or architecture, (3) the modules, (4) algorithms and data structures, (5) source code, and (6) object code. Id. at 835, citing John W.L. Ogilvie, Defining Computer Program Parts Under Learned Hand’s Abstractions Test in Software Copyright Infringement Cases, 91 Mich.L.Rev. 526 (1992). [End Footnote]

The Fifth Circuit in Engineering Dynamics provided some guidance for the abstraction of nonliteral elements of a computer program. The court found that there is a “spectrum” of copyrightable material in nonliteral elements of computer programs, ranging from the ‘blank form’ that epitomizes an uncopyrightable idea, through a “high expression, like that found in some computerized video games.” Engineering Dynamics, at 1344. The court found that “in the middle of the abstraction spectrum sit user interfaces such as that of Lotus 1-2-3, whose menu structure, including its long prompts, contains numerous expressive features.” Id. at 9-10, citing Lotus I, 740 F. Supp. at 65-66. Thus, the distinctive garb of a computer-generated Ninja will be afforded the highest copyright protection, while a simple computer prompt asking the user to fill in the blank warrants the least. In the middle, are programs which require the input of significant amounts of information in a common, computer format. The Court finds the programs at issue in this case fall into this middle range of expression.

Once a program has been broken down into its abstract elements, the next step is to “filter out” the unprotectable elements to obtain a core of protectable expression. In addition to ideas, copyright protection is not afforded to processes, methods or scientific discoveries. Other materials not subject to copyright include facts, information in the public domain, and scenes a faire, i.e., expressions that are common to a particular subject matter or are dictated by external factors. Engineering Dynamics, at 1343.

[Footnote #9]: Elements taken from the public domain are not protected by copyright law because they are not “original works of authorship” under the Copyright Act of 1976. 17 U.S.C. § 102(a). [End Footnote]

[Footnote #10]: For example, scenes of pitching, home runs and cheering crowds appearing in a movie about baseball would not be copyrightable because they are necessarily incidental to the subject. [End Footnote]

The Court decided that the elements of this software were not protectable under copyright. This case is important to early computer law and is often mentioned along with the Lotus v Borland decision.

It is interesting to note that this court finds the distinctiveness of a ninja’s garb to be of the highest copyright protectability while meanwhile contemporaneous courts used the word as a descriptor: See NinjaLaw posts about Ninja Pants, and Ninja hood, and ninja-style motorcycle.

NinjaLaw has already posted about three prior mentions of the Teenage Mutant Ninja Turtles in Federal Court opinions but it was in 1994 that for the first time, a Federal Court opinion was actually involving them as intellectual property in dispute.

MIRAGE STUDIOS, a Massachusetts general partnership, Plaintiff, v. WENG C. YONG, MERRY M. YONG, DENNIS C.M. LOW and DOES 1-5 inclusive, dba TAI FUNG TRADING; et al., Defendants.
No. C-93-2684-VRW
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
1994 U.S. Dist. LEXIS 5618

The opinion is by Judge Vaughn R. Walker. You may recall he is also the judge who recently ruled that California’a Proposition 22 was unconstitutional in case Perry v. Schwarzenegger about gay marriage case.

Written April 29, 1994:

On July 15, 1993, Mirage Studios (“Mirage”) filed this action for copyright and trademark infringement against a group of thirty-four retailers, distributors and manufacturers, alleging that each of the named defendants has infringed and threatens to further infringe upon Mirage’s copyrighted and trademarked “Teenage Mutant Ninja Turtles.”

I presume this was mostly for infringing tee-shirts. And as is typical, the copyright holder asked for maximum damages, in this case $10,000 but Judge Walker found no evidence of any such actual damages and ordered only $500 per defendant (34×500 is $17,000). Also the Judge ordered attorney’s fees of “$780 in attorney fees and $40 in service costs per defendant” – that $780 is the attorney’s bill of “5.2 hours (at $150 per hour)”.

The Court also chides the defendants who did not answer the complaints suggesting that they could have more easily settled the case in advance, but I wonder because attorney fees to answer could only have increased costs.

So this is the first time TMNT is actually directly involved in a Federal Court opinion. But recall the previous NinjaLaw posts about the prior tangential mentions the characters:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

Don’t worry, there’s more to come too.

This 1990 opinion by Judge Alex Kozinski, is about security interests in copyrights of movies during a bankruptcy.


In re PEREGRINE ENTERTAINMENT, LTD., The Peregrine Producers Group, Inc., Peregrine Film Distribution, Inc., National Peregrine Inc., and Peregrine-United Corporation, Debtors. NATIONAL PEREGRINE, INC., a Utah corporation, successor by merger to American National Enterprises, Inc., Plaintiff-Appellant, v. CAPITOL FEDERAL SAVINGS AND LOAN ASSOCIATION OF DENVER, a Federal Savings and Loan Association, Defendant-Appellee
District Court Case No. CV 90-1083-AK.

UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA
116 B.R. 194, Decided June 28, 1990

The opinion is written by Judge Alex Kozinski (from before he became Chief Judge of the Ninth Circuit):

National Peregrine, Inc. (NPI) is a Chapter 11 debtor in possession whose principal assets are a library of copyrights, distribution rights and licenses to approximately 145 films, and accounts receivable arising from the licensing of these films to various programmers.

Explaining:

This appeal from a decision of the bankruptcy court raises an issue never before confronted by a federal court in a published opinion: Is a security interest in a copyright perfected by an appropriate filing with the United States Copyright Office or by a UCC-1 financing statement filed with the relevant secretary of state?

And in footnote:

Cap Fed has stipulated that there is at least one such film, the unforgettable “Renegade Ninjas,” starring Hiroki Matsukota, Kennosuke Yorozuya and Teruhiko Aoi, in what many consider to be their career performances.

The Court concludes:

The judgment of the bankruptcy court is reversed. The case is ordered remanded for a determination of which movies in NPI’s library are the subject of valid copyrights.

However, don’t rely on this case law. Though cited and followed in a number of subsequent cases, it has also been questioned, criticized and distinguished by a variety of others. One 2006 case in particular, from New York, Gasser Chair Co. v. Infanti Chair Mfg. Corp., suggests that the law from the above discussed case, In re Peregrine, was superseded by statute when “the revised Article 9 of the UCC was enacted in 2001”.