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With one exception, section 304(c) of the Copyright Act grants authors (or their statutory heirs) the right to terminate a grant in a copyright fifty-six years after the original grant, notwithstanding an agreement to the contrary. 17 U.S.C. §§ 304(c)(3), (5). Works created for hire, however, are exempted, and copyright grants in such works cannot be terminated by the author or her heirs. 17 U.S.C. § 304(c): see also Penguin Grp. (USA) Inc. v. Steinbeck, 537 F.3d 193, 203 (2d Cir.2008) ( “Works for hire are exempt from section 304(c) and (d).”).

After receiving the Termination Notices, Marvel commenced this action. Marvel's lone claim seeks a determination that “defendants have no right under section 304(c) of the [Copyright Act] to terminate” the *467 1972 grants by Kirby. (Compl. ¶ 16.) Marvel bases this claim on its allegations that Kirby “was engaged as a comic book artist by the Marvel Entities,” “made contributions to various comic books ... at the instance of members of the editorial staff of the Marvel Entities,” and “[all] contributions made by Kirby” were at Marvel's expense. ( Id. ¶¶ 9–10.) In response, the Kirbys seek a declaratory judgment that the Termination Notices are valid. (Countercl. ¶¶ 29–32.) Marvel contends that the Kirbys' counterclaim should be dismissed because it is the mirror image of Marvel's cause of action.

An action for declaratory judgment is proper if the circumstances indicate “that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality ....” Duane Reade, Inc. v. St. Paul Fire & Marine Ins. Co., 411 F.3d 384, 389 (2d Cir.2005). Two cases from the Second Circuit are particularly instructive: Leach v. Ross Heater & Mfr. Co., 104 F.2d 88 (2d Cir.1939), and Larson v. General Motors Corp., 134 F.2d 450 (2d Cir.1943). In Leach, the plaintiff, an owner of patents on an oil-refining apparatus claimed that defendant was selling infringing products. The defendant counterclaimed for a declaratory judgment of invalidity of the patents and non-infringement. 104 F.2d at 89. The Second Circuit concluded that dismissal of the defendant's counterclaims was improper because a case or controversy would remain even if the plaintiff voluntarily dismissed his infringement suit. Id. at 91–92. The court noted that the plaintiffs had threatened the defendant's customers with infringement actions so even in the absence of the plaintiffs infringement suit, the defendant's request for a declaratory judgment was necessary to protect a business interest. Id. at 91. Thus, the defendants' counterclaim was not duplicative because even after dismissal of the plaintiff's suit, a ruling on whether the defendant's conduct infringed the plaintiff's patent was still necessary.

In contrast, the Second Circuit in Larson concluded that it was proper to dismiss the defendant's counterclaim, which sought a determination that the defendant had not infringed the plaintiff's patent (and not a determination as to the patent's validity). Larson, 134 F.2d at 452–53. Unlike the defendant in Leach, the defendant in Larson was not seeking a determination that the plaintiff's patent was invalid. Thus, when the plaintiff voluntarily dismissed his patent-infringement claim on the merits, there was no need to determine the patent's validity and therefore there was no continuing case or controversy. Id.

Leach and Larson demonstrate that a counterclaim is not duplicative or redundant if it asserts an independent case or controversy that survives dismissal of the plaintiff's claim.

Here, the first counterclaim is not duplicative or redundant of Marvel's claim for declaratory judgment. Marvel is correct that the validity of the Termination Notices hinges on the work-for-hire status of the Kirby Works. If Marvel wins, the Termination Notices will be invalid. But the Termination Notices could be invalid for other reasons as well. See e.g., § 17 U.S.C. § 304(c)(4)(B); 37 C.F.R. § 201.10 (regulations governing the content and form of termination notices); 17 U.S.C. § 304(c)(3) (explaining that notice must be served within the five-year period that begins 56 years after the copyright was secured). By securing a declaration that the notices are valid, the Kirbys protect themselves from future litigation in the event that Marvel loses the work-for-hire live dispute. Thus, the first counterclaim alleges an independent case or controversy separate from Marvel's claim. Marvel's *468 motion to dismiss the first counterclaim is denied.

B. The Kirbys' Second Counterclaim Is Not Ripe For Adjudication.

In the second counterclaim, the Kirbys ask the Court to determine how future profits from the exploitation of co-owned copyrights in the Kirby Works should be allocated among the Kirbys and Marvel. Marvel counters that this claim is not ripe for adjudication because there is no actual case or controversy. Marvel contends that there will be no need for an accounting if it prevails on the work-for-hire question, so the declaration the Kirbys seek is premature.

Federal Courts are courts of limited jurisdiction, Marcella v. Capital Dist. Physicians' Health Plan. Inc., 293 F.3d 42, 46 (2d Cir.2002). Article III of the United States Constitution limits our jurisdiction to actual cases or controversies. Valley Forge Christian Coll. v. Americans United for Separation, 454 U.S. 464, 471, 102 S.Ct. 752, 70 L.Ed.2d 700 (1982). “The power to declare the rights of individuals and to measure the authority of governments[ ] ... ‘is legitimate only in the last resort, and as a necessity in the determination of real, earnest and vital controversy.’ ” Id. (quoting Chicago & Grand Trunk Ry. Co. v. Wellman, 143 U.S. 339, 345, 12 S.Ct. 400, 36 L.Ed. 176 (1892)).

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Ripeness is one tool used by federal courts to assess whether an actual case or controversy exists. Nat'l Park Hospitality Ass'n v. Dep't of Interior, 538 U.S. 803, 807–08, 123 S.Ct. 2026, 155 L.Ed.2d 1017 (2003). The ripeness doctrine prevents a court “from entertaining claims based on ‘contingent future events' that may not occur as anticipated or at all.” City of New Rochelle v. Town of Mamaroneck, 111 F.Supp.2d 353, 359 (S.D.N.Y.2000) (quoting Thomas v. City of New York, 143 F.3d 31 (2d Cir.1998)). In Nat'l Park, the Supreme Court outlined a two-part test for determining the constitutional ripeness of an action: (1) “the fitness of the issues for judicial decision and (2) the hardship to the parties of withholding court consideration.” 538 U.S. at 808, 123 S.Ct. 2026.

[10]

The first prong “is concerned with whether the issues sought to be adjudicated are contingent on future events or may never occur.” N.Y. Civil Liberties Union v. Grandeau, 528 F.3d 122, 132 (2d Cir.2008) (quoting Simmonds v. Immigration & Naturalization Serv., 326 F.3d 351, 356–57 (2d Cir.2003)). Here, an accounting may never be necessary. If it is determined that the Kirby Works were works for hire, the Kirbys would not have an ownership interest in the copyrights, and they would have no right to an accounting. Also, even if the Kirbys do have an interest in the works, the profits the Kirbys seek to apportion are presently non-existent and may never materialize. If, for instance, Marvel loses on the work-for-hire issue, Marvel could elect not to exploit co-owned Kirby Works, thereby eliminating any profits that would need apportioning.

[11]

[12]

The second prong of the ripeness test is also not satisfied. In assessing the hardships, if any, a party will suffer if judicial review is withheld, the court “ask[s] whether the challenged action creates a direct and immediate dilemma for the parties.” N.Y. Civil Liberties, 528 F.3d at 134 (quoting Simmonds, 326 F.3d at 359). “The mere possibility of future injury, unless it is the cause of some present detriment, does not constitute hardship.” Id. Even if this Court were to conclude that the Termination Notices are valid, the Kirbys ownership interests in the copyrights will not vest until 2014 at *469 the earliest. (Compl. ¶ 13.) Between now and then, the parties could amicably agree on the apportionment of profits, without this Court's intervention, once the ownership issue is resolved. As such, the Kirbys have alleged only “the mere possibility of future injury.” N.Y. Civil Liberties, 528 F.3d at 134. Accordingly, the Kirbys' second counterclaim is not ripe for judicial review and is dismissed.

C. The Third And Fourth Counterclaims Are Untimely.

The third and fourth counterclaims (for conversion and breach of contract, respectively) are brought by Barbara and Susan Kirby only. The conversion claim alleges that Marvel retained Kirby's original artwork despite Kirby's repeated demands for its return and either sold some pieces or allowed its employees or agents to take them. (Countercl. ¶¶ 4346.) The breach-of-contract claim alleges that Marvel breached an October 31, 1986 agreement requiring Marvel to return all of Kirby's original artwork in its possession. (Countercl. ¶ 53.)

1. The conversion claim is barred by the statute of limitations.

[13]

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[15]

New York defines conversion as the “unauthorized exercise of dominion or control over property by one who is not the owner of the property which interferes with and is in defiance of a superior possessory right of another in the property.” Meese v. Miller, 79 A.D.2d 237, 436 N.Y.S.2d 496, 500 (1981), Conversion occurs when a demand for the return of property is made and refused. Feld v. Feld, 279 A.D.2d 393, 720 N.Y.S.2d 35 (2001); Solomon R. Guggenheim Found. v. Lubell, 77 N.Y.2d 311, 317–18, 567 N.Y.S.2d 623, 569 N.E.2d 426 (N.Y.1991); Menzel v. List, 49 Misc.2d 300, 267 N.Y.S.2d 804, 809 (N.Y. Gen. Term 1966). To assess whether and when demand was refused, “a court must analyze the actions as well as [the] words of a person who receives a demand .... If either the recipient's words or actions evidences ‘an intent to interfere with the demander's possession or use of his property,’—which is an ‘overt and positive act of conversion,’—then the demand has been refused and the cause of action accrues, even if the words ‘I refuse your demand’ were not explicitly used.” Grosz v. Museum of Modern Art, 772 F.Supp.2d 473, ––––, 2010 WL 88003, at *10 (S.D.N.Y. Jan. 6, 2010) (internal citations omitted).

[16]

Conversion claims have a three-year statute of limitations in New York. N.Y. C.P.L.R. § 214(3). The statute begins to run “from the date the conversion takes place and not from discovery or the exercise of diligence to discover.” Vigilant Ins. Co. of Am. v. Housing Auth., 87 N.Y.2d 36, 44, 637 N.Y.S.2d 342, 660 N.E.2d 1121 (N.Y.1995) (internal citations omitted).

[17]

Kirby first demanded that Marvel return his artwork in 1982. (Countercl. ¶ 40.) He again demanded its return in 1986. ( Id. ¶ 50.) The Kirbys do not allege the exact date Marvel refused to return Kirby's original artwork, but Marvel's failure to return the artwork in 1982 (when first asked to do so) demonstrates an intent not to return the work. See, e.g., Borumand v. Assar, 2005 WL 741786, at *14 (W.D.N.Y. Mar. 31, 2005). Marvel's repeated failure to return the artwork demonstrates a refusal of Kirby's demand.

Marvel's failure to return any artwork to Kirby between 1986 (when, according to the counterclaims, it entered into a contract to return the artwork) and 1994 (when Kirby died) clearly demonstrates a refusal to comply with Kirby's demand. In Grosz, this Court, applying New York law, held that a museum's failure to return *470 certain paintings for more than one year after the plaintiffs' request for their return constituted a refusal that began the running of the statute of limitations for a conversion claim. 772 F.Supp.2d at ––––, 2010 WL 88003, at *10. If the statute of limitations began to run one year after Kirby's original 1982 request, then it had already expired in 1986, when the alleged contract was made. If, as is more likely for our purposes, the statute began to run one year after the 1986 contract was agreed upon, then it expired in 1990. In either case, the time has long since run on any claim for conversion.

2. The breach-of-contract claim is also untimely.

The Kirbys' breach-of-contract claim is based on Marvel's purported breach of a contract between Marvel and Kirby that was allegedly entered into on or about October 31, 1986. In that agreement, Marvel allegedly agreed to return all of Kirby's original artwork in its possession. (Countercla. ¶¶ 50, 53.) Marvel argues that this claim, too, is barred by the statute of limitations. Again, Marvel is correct.

[18]

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New York has a six-year statute of limitations for breach-of-contract claims. N.Y. C.P.L.R. § 213(2). The limitations period begins to run when the cause of action accrues. N.Y. C.P.L.R. § 203(a); Guilbert v. Gardner, 480 F.3d 140, 149 (2d Cir.2007). A breach-of-contract cause of action accrues and the limitations period begins to run when the breach occurs. See Ely–Cruikshank Co. v. Bank of Montreal, 81 N.Y.2d 399, 402, 599 N.Y.S.2d 501, 615 N.E.2d 985 (N.Y.1993). “The plaintiff need not be aware of the breach or wrong to start the period running.” Guilbert, 480 F.3d at 149.

The complaint alleges the existence and the date of a contract but does not allege what the contract says about the time for performance. On a motion to dismiss, the Court may consider documents that are not attached to the complaint if a party relied on the document in bringing suit and the document is either in the party's possession or the party knew of the document when filing suit. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir.2002); see also Grosz, 772 F.Supp.2d at ––––, 2010 WL 88003, at *23. The October 31, 1986 agreement that is alleged in the counterclaims is integral to the Kirbys' fourth cause of action for breach of contract. As it was not attached to the pleading, the Court asked that the parties produce it.

On November 4, 2010, the Kirbys submitted a one-page document dated October 31, 1986, entitled “Artwork Release.” (Declaration of Marc Toberoff, Nov. 4, 2010, (“11/4/10 Toberoff Decl.”) Ex. A.) The document was signed only by Jack Kirby. ( Id.) The Kirbys identified this document as the document on which they relied in drafting their counterclaim.

On November 5, 2010, Marvel submitted a declaration (Declaration of James W. Quinn (“Quinn Decl.”)) with numerous documents attached. The declaration asserted that the document sent to the Court by the Kirbys was not a final contract, and had been rejected by Marvel in a letter dated March 11, 1987. (Quinn Decl. Ex. A.) Marvel submitted what it claims to be the fully executed Artwork Release—a one-page document dated June 16, 1987, and signed by Jack Kirby and a Marvel representative. ( Id. Ex. C.) Marvel argues that a fully executed version, dated October 31, 1986, does not exist, and so cannot be a contract.

The Kirbys object to the Court's consideration of the Quinn Declaration and any document attached thereto. They argue that Marvel used the Quinn Declaration to *471 raise new arguments in support of its motion to dismiss, and they point out that the Kirbys did not rely on those documents in drafting their counterclaim, so they constitute extrinsic evidence beyond the four corners of the pleading, which the Court cannot consider at this time. (Declaration of Marc Toberoff, Nov. 5, 2010 (“11/5/10 Toberoff Decl.”) ¶ 1.)

[20]

The Kirbys are correct; Marvel's November 5 submission raises issues concerning the validity of the contract pleaded by the Kirbys, but those issues cannot be resolved on a pre-answer motion to dismiss. Consideration by the Court of the declaration and documents submitted by Marvel—all of which are materials outside the pleadings—would require conversion of Marvel's dismissal motion to a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure. See Holowecki v. Fed. Express Corp., 440 F.3d 558, 565–66 (2d Cir.2006); Fonte v. Bd. of Managers of Cont'l Towers Condo., 848 F.2d 24, 25 (2d Cir.1988); In re Payment Card Interchange Fee and Merch. Disc. Antitrust Litig., 2008 WL 115104, at *8 (E.D.N.Y. Jan. 8, 2008). There is absolutely no need to convert this motion in order to decide the motion to dismiss on statute of limitations grounds. The Kirbys rely on the October 31, 1986 document, which they assert is a binding contract; for purposes of Marvel's motion to dismiss, I will not go beyond the Kirby's pleading and the document on which they relied in drafting it. The relevant contract is the October 1986 agreement pleaded in the Kirbys' counterclaims.

The 1986 agreement on which the Kirbys rely specifies that Marvel will return Kirby's “original physical Artwork,” subject to certain conditions. (Toberoff Decl. Ex. A). The Court asked for the document in order to ascertain what it said about the time for performance of this obligation. The Kirbys allege that Jack Kirby fully performed his obligations under the agreement. (Countercl. ¶ 51.) Language in the first paragraph of the Artwork Release suggests that performance by Marvel is due immediately, as it was in exchange for services previously performed by Kirby: “In recognition of the past participation by the ‘Artist’ ... Marvel Comics Group ... is pleased to deliver as a gift to the Artist the original physical Artwork ....” (Toberoff Decl. Ex. A.) Assuming arguendo that Marvel was obligated to return any Artwork in its possession immediately after October 31, 1986, its breach occurred in or about November 1986 and the statute of limitations on a breach of contract claim expired in or about November 1992—18 years ago.

[21]

But let me assume that the contract does not specify any time for Marvel's performance. That returns us to hornbook contract law: When a contract does not specify a time for performance, a reasonable time is implied. See, e.g., 17A Am. Jur. 2d Contracts § 467; Teramo & Co., Inc. v. O'Brien–Sheipe Funeral Home, Inc., 283 A.D.2d 635, 725 N.Y.S.2d 87, 89 (2001); see also Guilbert, 480 F.3d at 149. For the claim here asserted to be timely, Marvel's breach had to occur no more than six years prior to the filing of the fourth counterclaim, which occurred on April 29, 2010. (Docket No. 30.) But that is almost twenty four years after the October 31, 1986 agreement. Six years prior to the assertion of the counterclaim was April 29, 2004—approximately seventeen and a half years after Marvel purportedly entered into a contract to return the work. These excessive periods of time for performance of a contractual obligation to return property are unreasonable under these circumstances. See, e.g., *472 Savasta v. 470 Newport Assocs., 82 N.Y.2d 763, 765, 603 N.Y.S.2d 821, 623 N.E.2d 1171 (N.Y.1993); Parker v. Booker, 33 A.D.3d 602, 822 N.Y.S.2d 156, 158–59 (2006); Four Asteria Realty, LLC v. BCP Bank of N. Am., 22 Misc.3d 1127(A), 2009 WL 500853, at *6 (N.Y. Gen. Term Feb. 26, 2009).

A reasonable period of time for performance of the October 31, 1986 contract would, generously speaking, be one year—which would mean that Marvel's breach occurred, and Kirby's breach of contract claim accrued, no later than October 31, 1987, some twenty plus years before his children asserted their derivative counterclaim. See, e.g., Grosz, 772 F.Supp.2d at ––––, 2010 WL 88003, at *10. Allowing for an even more generous period for full performance—say, three years from the date the contract was made—Marvel's breach occurred, and the claim accrued, in or about October 1989, which is still more than twenty years before the Kirbys filed their counterclaim for breach of contract. The fourth counterclaim is obviously untimely.

3. Equitable Tolling Does Not Resurrect The Untimely Claims.

The Kirbys' argue that the third and fourth counterclaims should not be dismissed as time barred because equitable tolling stopped the running of the statute of limitations. They assert that Marvel fraudulently concealed its continuing possession of Kirby's original artwork.

[22]

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Fraudulent concealment will toll the statute of limitations if an otherwise time-barred plaintiff establishes three things: (1) there was in fact a wrongful concealment, (2) which concealment prevented the plaintiff's discovery of the nature of the claim during the limitations period, and (3) the plaintiff exercised due diligence in pursuing discovery of the claim. In re Merrill Lynch Ltd. P'ship Litig., 154 F.3d 56, 60 (2d Cir.1998). The Kirbys have the burden of establishing that equitable tolling applies. Boos v. Runyon, 201 F.3d 178, 185 (2d Cir.2000). They fail to discharge that burden.

[24]

On this motion to dismiss, the Court looks to the pleading and what it does (and does not) allege. The Kirbys allege that “Marvel represented to Kirby that it had no other Kirby Artwork in its possession or control than that returned to Kirby,” and that, “Marvel concealed and continues to conceal that Marvel retained certain Kirby Artwork that it did not return to Kirby.” (Countercl. ¶¶ 4243.) Assuming (as I must on a motion to dismiss) the truth of the allegations about misrepresentation and concealment, the Kirbys nonetheless fall far short of pleading either that the concealment prevented their father (from whom they derive the causes of action they are asserting) from discovering that some of his artwork had not been returned or that their father exercised due diligence to assess whether Marvel had lived up to its obligation to return the artwork.

The Kirbys do not allege a single fact that would tend to explain how Marvel could have prevented Jack Kirby—the creator of the artwork—from realizing that Marvel had failed to return some of his pieces. They do not allege a single fact that tends to show any effort made by Kirby himself between October 31, 1986—the date of the purported contract—and his death in 1994 to discover whether he might have a claim for breach of the contract to return his original artwork. Neither is there any allegation that Kirby exercised due diligence after Marvel failed to respond to his 1982 demand in order to discover his purported claim for conversion. And there could not possibly be any such allegation—by asserting that Kirby entered into a contract with Marvel in late 1986 concerning the return of the artwork, the Kirbys admit that their father was *473 fully aware that the artwork had not been returned some four years after he first demanded its return.

Kirby, as the artist, was the person best situated to know that something he created was not given back to him. All he had to do was inventory whatever artwork Marvel delivered to him; if anything was missing (and, as it turns out, some pieces—60 of them, to be exact— were missing, see infra ), Kirby would have known about it. It is true that Kirby's children might not have known about every single work of art created by their father; but Kirby lived for twelve years after he first demanded the return of his Artwork and for eight years after the pleaded contract was (allegedly) entered into. It is, therefore, Kirby—not his children—who Marvel had to prevent from discovering that some of his artwork was missing; and it is Kirby—not his children—who was obliged to exercise due diligence to discover any breach by Marvel once a reasonable period for performance had passed.

[25]

The Kirbys' failure to plead that Kirby exercised any diligence at all during his lifetime precludes a finding that Marvel “prevented” Kirby from discovering the nature of his claims. “Due diligence on the part of the plaintiff in bringing [an] action ... is essential element of equitable relief.” Abbas v. Dixon, 480 F.3d 636, 642 (2d Cir.2007) (quoting Doe v. Holy See (State of Vatican City), 17 A.D.3d 793, 793 N.Y.S.2d 565 (2005)). Accordingly, the claim for breach of contract (and for conversion as well) cannot be deemed timely by application of equitable tolling.^FN2

FN2. Because both claims are barred by the statute of limitations, the Court declines to address Marvel's other arguments for dismissal of these counterclaims.

This conclusion is not altered by the fact that—as we now know—Marvel did not return all of Kirby's original artwork to the artist. On August 26, 2010, Marvel admitted to the Kirbys that it still had some 60 pages of original Kirby artwork (and offered to return 37 of them). (Letter from David Fleischer to Marc Toberoff, dated Aug. 26, 2010.) The Court was told of this while this motion was sub judice. Marvel's admission is deeply troubling in light of Marvel's earlier (and repeated) insistence that the Kirbys' accusations about retained artwork were “baseless.”

However, Marvel's discovery of these 60 pieces of artwork does not change the law of equitable tolling: it will not toll the statute of limitations unless the plaintiffs (or in this case, the counterclaim plaintiffs' predecessor in interest, their father, Jack Kirby) were prevented from learning about their claim despite exercising due diligence to discover whether he had a claim. If the alleged contract turns out to be valid and enforceable, it seems obvious that Jack Kirby did have a claim for breach. But absent allegations of facts tending to show that Kirby exercised due diligence to determine what pieces of artwork Marvel had not returned—and there are none—application of the equitable tolling doctrine to toll the statute of limitations is precluded.

D. The Kirbys Fail To State A Claim Under The Lanham Act.

The fifth counterclaim asserted by the Kirbys alleges a violation of the Lanham Act, 11 U.S.C. § 1125(a)(1)(B), which prohibits the use of a false designation of origin in commercial advertising or promotion. See 15 U.S.C. § 1125(a)(1)(B). The Kirbys allege that Jack Kirby was not credited as the author or co-author of the comic-book stories and characters that form the basis for “The Incredible Hulk” *474 and “X–Men Origins: Wolverine.” (Countercl. ¶¶ 56–57.) In response, Marvel argues that the Kirbys' claim is foreclosed by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003).

In Dastar, the Supreme Court analyzed the meaning of the word “origin” in Section 1125(a)(1)(A) to determine if it encompassed the producer of a television series upon which a later video series was based. 539 U.S. at 31–32, 123 S.Ct. 2041. In that case, Dastar used video footage in the public domain from a Fox television series about World War II (entitled “Crusade in Europe”) to create its own video series about the war (entitled “Campaigns”). Id. at 25–27, 123 S.Ct. 2041. Dastar heavily relied on the footage from “Crusade in Europe” with some modifications but sold the video as its own product, with no references to the underlying television series or Fox. Id. at 27, 123 S.Ct. 2041. Fox sued Dastar, alleging that the sale of “Campaigns” without proper credit to “Crusade in Europe” was “reverse passing off” in violation of 15 U.S.C. § 1125(a)(1)(A). Id.

Fox argued that “in marketing and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade television series,” Dastar made a “false designation of origin,” which was likely to confuse consumers about the “origin” of Dastar's video. Id. at 31, 123 S.Ct. 2041. The Supreme Court disagreed, concluding that the phrase “origin of goods” in the Lanham Act “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Id. at 37, 123 S.Ct. 2041. Thus, Dastar did not violate the Lanham Act when it sold its video without properly crediting Fox because it (and not Fox) was the producer of the good being sold ( i.e., the “Campaigns” video). The Court explained that if “the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series” then Fox might have a cause of action under the “ ‘misrepresents the nature, characteristics [or] qualities' provision of [Section 1125(a)(1)(B) ]” Id. at 38, 123 S.Ct. 2041.

[26]

Marvel is correct that the Kirbys' claim is fundamentally one for failure to credit Kirby with the creation of the stories and characters upon which the two films are based. The Kirbys do not allege that Marvel, in advertising or promoting the films, attempted to give moviegoers the impression that either film was quite different from the original comic-book stories—the window left open in Dastar. See id. at 38, 123 S.Ct. 2041. The Kirbys' own allegations in support of their Section 1125(a)(1)(B) claim state that “Kirby was not properly identified by Marvel's licensees as the author or co-author of the underlying works.” (Countercl. ¶¶ 5960.) Because such claims are false-designation-of-origin claims foreclosed by Dastar, the Kirbys have not pleaded a claim on which relief may be granted. As a result, the Kirbys' fifth counterclaim is dismissed.

E. Disney And Marvel Entertainment Are Proper Counterclaim–Defendants On The First Counterclaim.

Marvel moves to dismiss Disney and Marvel Entertainment as Counterclaim–Defendants because the Kirbys' allegations do not support a finding of liability against either entity. In a footnote, the Kirbys concede that Disney should be removed as a Counterclaim–Defendant on the third, fourth, and fifth counterclaims—all of which have been dismissed. (Kirbys' Mem. Of Law In Opp. To Mot. To Dismiss, *475 25 n. 7.) The second counterclaim has also been dismissed, thereby eliminating the need to address whether Disney or Marvel Entertainment are proper defendants on that counterclaim. What remains is to decide whether Disney and Marvel Entertainment are proper Counterclaim–Defendants on the first counterclaim.

[27]

The first counterclaim seeks a declaration that the Termination Notices are valid. The Termination Notices relate to copyright grants that were made in 1972, to an entity that is alleged to be a predecessor of Marvel. (Countercl. ¶ 24) The Termination Notices were served on September 16, 2009. ( Id. ¶ 25.) Disney purchased Marvel on December 31, 2009. ( Id. ¶ 10.)

[28]

Disney argues that it should not be held liable for any action of Marvel that has been or may be undertaken in contravention of the Termination Notices simply because it is Marvel's parent company. It is of course the law that a parent is not automatically liable for the actions of its subsidiary and no facts have been pleaded here to support piercing the corporate veil between Disney and Marvel. However, the first counterclaim does not seek to hold anyone liable for anything. It asks only for a declaration of the validity of the Termination Notices that were served on Marvel three months before Disney—in a widely–publicized move—acquired Marvel and its closet full of classic comic-book characters, including the Kirby characters. As Marvel's parent company, Disney is now in a position to exploit Marvel's assets—including whatever rights Marvel has in the Kirby-created characters. It is therefore perfectly appropriate to include Disney as a defendant on this claim for declaratory relief—even though Disney did not acquire its interest in the matters in suit until after the Termination Notices were sent.

[29]

Turning to Marvel Entertainment's status as a Counterclaim–Defendant, the Kirbys allege that Marvel Entertainment is the successor-in-interest to numerous entities—including Magazine Management. (Countercl. ¶ 14.) From this allegation, the Court can infer that Marvel or one of its subsidiary entities is in possession of the Kirby copyrights at issue and is in a position to exploit them.

Accordingly, Marvel's motion to dismiss Disney and Marvel Entertainment as Counterclaim–Defendants is denied.

III. CONCLUSION

For the reasons discussed above, Counterclaim–Defendants' motion to dismiss is granted as to Counterclaim–Plaintiffs' second, third, fourth, and fifth counterclaims. Counterclaim–Defendants' motion to dismiss the first counterclaim is denied. Counterclaim–Defendants' motion to dismiss The Walt Disney Company and Marvel Entertainment, Inc. as Counterclaim–Defendants is also denied.

S.D.N.Y.,2010.
Marvel Worldwide, Inc. v. Kirby
756 F.Supp.2d 461

Motions, Pleadings and Filings (Back to top)

• 2011 WL 2975949 (Trial Filing) Defendants' Pre-Trial Statement (Apr. 1, 2011) Original Image of this Document (PDF)
• 2011 WL 1209648 (Expert Report and Affidavit) Expert Report of Mark Evanier (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1209649 (Expert Report and Affidavit) Expert Report of John Morrow (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1247320 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion for Summary Judgment (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1247321 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion to Exclude the Expert Report and Testimony of Mark Evanier (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1247322 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Support of Motion by Plaintiffs and Counterclaim-Defendants to Exclude the Expert Report and Testimony of John Morrow (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1247323 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Support of Defendants' Motion for Summary Judgment (Feb. 25, 2011) Original Image of this Document (PDF)
• 2011 WL 1247319 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion to Strike Defendants' Jury Demand (Jan. 28, 2011) Original Image of this Document (PDF)
• 2011 WL 1209647 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) Original Image of this Document (PDF)
• 2011 WL 1209650 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) Original Image of this Document (PDF)
• 2011 WL 1209651 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) Original Image of this Document (PDF)
• 2010 WL 6380596 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) Original Image of this Document (PDF)
• 2010 WL 6380597 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) Original Image of this Document (PDF)
• 2010 WL 6380600 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) Original Image of this Document (PDF)
• 2010 WL 6380595 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Nov. 9, 2010) Original Image of this Document (PDF)
• 2010 WL 6380598 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier Los Angeles, California (Nov. 9, 2010)
• 2010 WL 6380599 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Nov. 9, 2010) Original Image of this Document (PDF)
• 2010 WL 3060785 (Trial Motion, Memorandum and Affidavit) Marvel's Reply Memorandum of Law in Further Support of Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (Jun. 21, 2010) Original Image of this Document (PDF)
• 2010 WL 3060783 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Opposition to Counterclaim-Defendants' Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (Jun. 10, 2010) Original Image of this Document (PDF)
• 2010 WL 3060784 (Trial Motion, Memorandum and Affidavit) Defendants' Objection to the Declaration of Eli Bard (Jun. 10, 2010) Original Image of this Document (PDF)
• 2010 WL 3060781 (Trial Motion, Memorandum and Affidavit) Counterclaim-Defendants'Memorandum of Law in Support of Their Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (May 24, 2010) Original Image of this Document (PDF)
• 2010 WL 194759 (Trial Pleading) Complaint (Jan. 8, 2010) Original Image of this Document with Appendix (PDF)
• 1:10cv00141 (Docket) (Jan. 8, 2010)

Judges, Attorneys and Experts (Back to top)

Judges | Attorneys | Experts

Judges

McMahon, Hon. Colleen

United States District Court, Southern New York

New York, New York 10007-1312

Attorneys

Attorneys for Plaintiff

Fleischer, David

New York, New York 10112

Kleinick, Jodi A.

New York, New York 10022

Rich, R. Bruce

New York, New York 10153

Singer, Randi W.

New York, New York 10153

Other Attorneys

Quinn, James W.

New York, New York 10153

Toberoff, Marc

Beverly Hills, California 90212

Briefs and Other Related Documents

Experts

Evanier, Mark

PRINT MEDIA EXPERT

Expert Evaluator Report | Expert Challenge Report | Expert Testimony | Profiler

Morrow, John L.

EMPLOYMENT EXPERT

Expert Evaluator Report | Expert Challenge Report | Expert Testimony | Profiler

Morrow, John

Illustrator

Expert Testimony | Profiler

END OF DOCUMENT

West Reporter Image (PDF)

2013年12月10日 (火) | 固定リンク | コメント (1) | トラックバック (0)

Marvel Characters, Inc. v. Kirby

Marvel Characters, Inc. v. Kirby
726 F.3d 119
C.A.2 (N.Y.),2013.
August 08, 2013 (Approx. 30 pages)

726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813

Judges and Attorneys

United States Court of Appeals,Second Circuit.

MARVEL CHARACTERS, INCORPORATED, Marvel Worldwide, Incorporated, MVL Rights, LLC, Plaintiffs–Counter–Defendants–Appellees,
Walt Disney Company, Marvel Entertainment, Incorporated, Counter–Defendants–Appellees,
v.
Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter–Claimants–Appellants.

Docket No. 11–3333–cv.Argued: Oct. 24, 2012.
Decided: Aug. 8, 2013.

Background: Comic book publishers brought declaratory judgment action against heirs of freelance artist whose artworks depicted iconic characters, challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers. The United States District Court for the Southern District of New York, Colleen McMahon, J., 2010 WL 1655253, denied heirs' motion to dismiss, and, 777 F.Supp.2d 720, granted summary judgment in favor of publishers on their claim for declaratory relief and denied heirs' cross-motion for summary judgment. Heirs appealed.

Holdings: The Court of Appeals, Sack, Circuit Judge, held that:

(1) non-resident heirs were not subject to personal jurisdiction under New York's long-arm statute;

(2) non-resident heirs were not indispensable parties;

(3) expert testimony on historical perspective concerning relationship between publishers and artist was not admissible;

(4) artist's works were made at publishers' instance;

(5) artist's works were created at publishers' expense; and

(6) heirs failed to overcome presumption that artist's works were “works made for hire.”

Affirmed in part and vacated in part.

West Headnotes

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Court of Appeals reviews a district court's legal conclusions concerning its exercise of personal jurisdiction de novo, and its underlying factual findings for clear error.

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A district court must have a statutory basis for exercising personal jurisdiction.

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Non-resident heirs of freelance artist whose artworks depicted iconic characters did not transact business within state of New York, as required under New York's long-arm statute for exercise of personal jurisdiction over them in comic book publishers' declaratory judgment action challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers, although heirs sent termination notices to publishers in New York, where heirs' communications were not part, or in contemplation, of a course of business dealings with publishers, and their notices asserted legal rights under federal copyright laws, not New York law. N.Y.McKinney's CPLR 302(a)(1).

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Because of the flexible nature of analysis under rule governing court's actions when joinder is not feasible, the Court of Appeals reviews a district court's decision under that rule for abuse of discretion. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.

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It is ordinarily appropriate for the Court of Appeals to vacate the judgment of a district court and remand the cause to it when matters committed to that court's discretion arise for the first time on appeal, but when a record is fully developed and it discloses that, in the judgment of the Court of Appeals, only one possible resolution of such an issue would fall within the permissible range of choices, in other words, when only one determination by the district court would be within its discretion, there is no reason to remand.

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Non-resident heirs of freelance artist whose artworks depicted iconic characters were not indispensable parties in comic book publishers' declaratory judgment action, challenging validity of non-resident and resident heirs' notices purporting to terminate artist's assignment of copyright to publishers, where absence of non-resident heirs would not prejudice existing parties, since judgment against resident heirs would foreclose non-resident heirs' rights too, and any judgment would reflect full and fair adjudication of resident heirs' rights under Copyright Act section governing termination of transfers, non-resident heirs' interests would be adequately represented, since they were identical to those of resident heirs, and publishers might be deprived of adequate remedy if the action were dismissed for non-joinder. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.; 17 U.S.C.A. § 304(c)(1).

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An exception to the general rule that everyone should have his own day in court exists when, in certain limited circumstances, a person, although not a party, has his interests adequately represented by someone with the same interests who is a party, and, thus, the potential prejudice to an absent party under rule governing court's actions when joinder is not feasible is mitigated when a remaining party could champion his or her interest. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.

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Expert testimony on historical perspective concerning relationship between comic book publishers and freelance artist whose artworks depicted iconic characters would not help trier of fact in comprehending and deciding issues beyond understanding of a layperson, and thus was not admissible in publishers' declaratory judgment action against artist's heirs, challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers, where experts' testimony was by and large undergirded by hearsay statements, involved speculation as to motivations and intentions of certain parties, or opined on credibility of other witnesses' accounts. Fed.Rules Evid.Rule 702, 28 U.S.C.A.

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For purposes of the instance and expense test for determining whether a work is work made for hire within meaning of the Copyright Act, “instance” refers to the extent to which the hiring party provided the impetus for, participated in, or had the power to supervise the creation of the work; actual creative contributions or direction strongly suggest that the work is made at the hiring party's instance. 17 U.S.C.A. § 101 et seq.

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Under the instance and expense test for determining whether a work is work made for hire within the meaning of the Copyright Act, payment of a sum certain suggests a work-for-hire arrangement, but when the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship. 17 U.S.C.A. § 101 et seq.

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Freelance artist's works depicting iconic characters were made at comic book publishers' instance, as required for the works to be work made for hire within meaning of Copyright Act section governing termination of transfers, where artist's working relationship with publishers was close and continuous during period of years in which publishers published great majority of artist's work, artist created the works pursuant to publishers' assignment or with them specifically in mind, publishers played at least some creative role with respect to the works, publishers had power to reject artist's pages and require him to redo them, or to alter them. 17 U.S.C.A. § 304(c).

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*124 R. Bruce Rich (James W. Quinn, Randi W. Singer, Gregory Silbert, on the brief), Weil, Gotshal & Manges LLP, New York, NY; David Fleischer, Haynes and Boone, LLP, New York, N.Y. for Plaintiffs–Counter–Defendants–Appellees and Counter–Defendants–Appellees.

Marc Toberoff, Toberoff & Associates, P.C., Malibu, CA, for Defendants–Counter–Claimants–Appellants.

Before: CABRANES, SACK, and CARNEY, Circuit Judges.

SACK, Circuit Judge:

This appeal requires us to revisit our case law applying the work-for-hire doctrine in the context of section 304 of the Copyright Act of 1976 (or, the “1976 Act”), 17 U.S.C. § 304. Defendants-counter-claimants-appellants Lisa, Neal, Susan, and Barbara Kirby (collectively, the “Kirbys”) are the children of the late Jack Kirby. Kirby is considered one of the most influential comic book artists of all time. At various times throughout his career, he produced drawings for Marvel Comics, a comic book publisher that has since grown into the multifaceted enterprise reflected in the case caption: Marvel Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, and Marvel Entertainment, Inc. (collectively, “Marvel”). At issue here are the rights to drawings Kirby allegedly created between 1958 and 1963.

The Kirbys appeal from the district court's grant of summary judgment to Marvel, which was based on the conclusion that all of the works at issue are “works made for hire” within the meaning of section 304(c), and that the Kirbys therefore have no rights to the works. Two of the Kirbys, Lisa and Neal, also challenge the district court's conclusion that it had personal jurisdiction over them under New York's long-arm statute. They further argue that they are indispensable parties under Rule 19(b) of the Federal Rules of Civil Procedure, such that their absence from this lawsuit (by virtue of the district court's lack of personal jurisdiction over them) requires that the suit be dismissed in its entirety.

We conclude that the district court was without personal jurisdiction over Lisa and Neal. We therefore vacate the judgment as against them. We also find, however, that Lisa and Neal are not indispensable parties to this lawsuit, and that the district court was correct in concluding that the works at issue are “works made for hire” under section 304(c). We therefore affirm the judgment as to defendants Barbara and Susan.

BACKGROUND

In this appeal from the grant of summary judgment, we view the evidence in the light most favorable to the nonmovants, the Kirbys for present purposes, and draw all reasonable inferences in their favor. See, e.g., Singer v. Ferro, 711 F.3d 334, 339 (2d Cir.2013).

Jack Kirby

Jack Kirby, born Jacob Kurtzberg in New York City's Lower East Side in 1917, began his career in the comic book business *125 in the late 1930s. In the summer of 1940, a young woman named Rosalind moved into the apartment above his with her family. The day they met, Kirby asked Rosalind if she “[w]ould like to see [his] etchings[.]” She thought he wanted “to fool around”; he only wanted to show her his drawings for a new comic book series called Captain America. John Morrow, “Would You Like to See My Etchings?”: Rosalind Kirby Interviewed (conducted Dec. 12, 1995), The Jack Kirby Collector, April 1996, at 6. Kirby and “Roz” were married in 1942. After Kirby's military service in World War II, the couple had four children: Susan, Neal, Barbara, and Lisa.

Kirby's career in comic book illustration spanned more than half a century. His influence was substantial. An obituary marking his death in 1994 quoted Joe Simon, Kirby's creative partner for fifteen years: “He brought the action drawing to a new level. His style was imitated all over and still is today to a certain extent.” Jack Kirby, 76; Created Comic Book Superheroes, N.Y. Times, Feb. 8, 1994, at D22.

Kirby was prolific, too. In 1951 alone, 308 pages of Kirby's work appeared in published comic books. This output was typical for him in the years between 1940 and 1978.

Marvel Comics and Stan Lee

Marvel was founded as Timely Comics in 1939 by one Martin Goodman. In 1940, Marvel purchased the first ten issues of Captain America from Kirby and Joe Simon. But Kirby and Simon would soon move on to a competitor, DC Comics. To replace them, Goodman hired one Stanley Lieber.

Lieber would come to be known by his pen name, Stan Lee. Lee is in his own right a towering figure in the comic book world, and a central one in this case. He in effect directed Marvel from the early 1940s until sometime in the 1970s, serving, in his words, as “Editor,” “Art Director” and “a staff writer.” Deposition of Stan Lee (“Lee Dep.”), May 13, 2010, at 17, Joint App'x at 2437. He continued to work for Marvel in one capacity or another at least to the day of his deposition testimony in this litigation.

But in the 1940s and 50s, Marvel, hobbled by poor business decisions, was hardly a success story.^FN1 In 1958, Kirby began producing drawings for Marvel once again. And by 1961, its fortunes began to change. That year, Marvel released the first issues of The Fantastic Four. On its heels were releases of the first issues of some of Marvel's most enduring and profitable titles, including The Incredible Hulk, The X–Men, and Spider–Man.

FN1. Certainly not helping matters was a mid–1950s investigation by the United States Senate into comics' alleged corrupting influence on America's youth. On April 21, 1954, a subcommittee of the Senate Judiciary Committee held a televised hearing on the topic. Louis Menand, The Horror: Congress investigates the comics, The New Yorker, Mar. 31, 2008, at 124. The venue was the United States Courthouse at 40 Foley Square in New York City—named in 2001 the “Thurgood Marshall United States Courthouse”—in which this opinion was prepared. Id.

Kirby's Relationship with Marvel from 1958–1963

This litigation concerns the property rights in 262 works published by Marvel between 1958 and 1963. Who owns these rights depends upon the nature of Kirby's arrangement with Marvel during that period.

It is undisputed that Kirby was a freelancer, i.e., he was not a formal employee of Marvel, and not paid a fixed wage or salary. He did not receive benefits, and *126 was not reimbursed for expenses or overhead in creating his drawings. He set his own hours and worked from his home. Marvel, usually in the person of Stan Lee, was free to reject Kirby's drawings or ask him to redraft them. When Marvel accepted drawings, it would pay Kirby by check at a per-page rate.

Despite the absence of a formal employment agreement, however, the record suggests that Kirby and Marvel were closely affiliated during the relevant time period. Lee assigned Kirby, whom he considered his best artist, a steady stream of work during that period. See Lee Dep. at 36, Joint App'x at 2456 (“I wanted to use Jack for everything, but I couldn't because he was just one guy.”); id. at 37, Joint App'x at 2457 (“So I said: All right, forget it, Jack. I will give [the Spider–Man strip] to somebody else. Jack didn't care. He had so much to do.”); id. at 30, Joint App'x 2450 (“He got the highest [rate] because I considered him our best artist.”).

And Kirby seems to have done most of his work with Marvel projects in mind. Although the Kirby children assert that their father could and did produce and sell his work to other publishers during those years, lists of Kirby's works cited by both parties establish that the vast majority of his published work in that time frame was published by Marvel (or Atlas Comics, as part of Marvel Comics Group).

The specifics of Kirby and Marvel's creative relationship during this time period are less clear.

According to Lee, at the relevant time, artists worked using what the parties call the “Marvel Method.” It was developed as a way to “keep a lot of artists busy” when Lee or another writer could not provide the artist with a completed script. Lee Dep. at 21, Joint App'x at 2441. The first step was for Lee to meet with an artist at a “plotting conference.” Id. at 39–40, Joint App'x at 2459–60. Lee would provide the artist with a “brief outline” or “synopsis” of an issue; sometimes he would “just talk ... with the artist” about ideas. Id. at 35, Joint App'x at 2455. The artist would then “draw it any way they wanted to.” Id. at 21, Joint App'x at 2441. Then a writer, such as Lee, would “put in all the dialogue and the captions.” Id. According to Lee, he “maintain[ed] the ability to edit and make changes or reject what the other writers or artists had created.” Id. at 22, Joint App'x at 2442.

Lee testified that he worked this way with Kirby “for years”:

And Jack Kirby and I would, let's say when we did the Fantastic Four, I first wrote a synopsis of what I thought the Fantastic Four should be, who the characters should be, what their personalities were. And I gave it to Jack, and then I told him what I thought the first story should be, how to open it, who the villain should be, and how we would end it. And that was all. Jack went home and drew the whole thing. I put the dialogue in.

Id. at 118, Joint App'x at 2538.

Other evidence in the record, including some of Lee's own deposition testimony, indicates, however, that Kirby had a freer hand within this framework than did comparable artists. For example, Lee explained that “instead of telling [Kirby] page by page” what to draw, Lee might simply tell him to “[d]evote five pages to this, five pages to that, and three pages to that.” Id. at 70, Joint App'x at 2490. Sometimes during plotting sessions, Kirby might “contribute something or he might say, ‘Stan, let's also do this or do that.’ ” Id. at 41, Joint App'x at 2461.

It is beyond dispute, moreover, that Kirby made many of the creative contributions, often thinking up and drawing characters *127 on his own, influencing plotting, or pitching fresh ideas.

The Termination Notices

The dispute before us began in September 2009, when the Kirbys served various Marvel entities with documents entitled “Notice of Termination of Transfer Covering Extended Renewal Term” (the “Termination Notices”). The Termination Notices purport to exercise statutory termination rights under section 304(c)(2) of the Copyright Act of 1976, 17 U.S.C. § 304, with respect to 262 works in all.

Each notice states an effective date sometime in the future, presumably between 2014 and 2019. The effective dates are calculated according to section 304(c)'s timing provision, which states in relevant part that “[t]ermination ... may be effected at any time during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured....” 17 U.S.C. § 304(c)(3).

Procedural History

Marvel filed this lawsuit on January 8, 2010. It sought a declaration that the Kirbys have no termination rights under section 304(c)(2), and that the Termination Notices are therefore ineffective. Marvel's claim was premised on its contention that all of the works were “made for hire” by Jack Kirby for Marvel within the definition of section 304(c).

On March 9, 2010, the Kirbys filed a motion to dismiss the complaint. Lisa and Neal Kirby, residents of California, sought dismissal on the ground that they were not subject to personal jurisdiction in New York State. (The other Kirby siblings, Susan and Barbara, are residents of New York and do not contest personal jurisdiction.) The Kirbys also argued that Lisa and Neal are indispensable to the action under Fed.R.Civ.P. 19, and that Marvel's entire suit must therefore be dismissed as against all parties.

The district court denied the motion on April 14, 2010. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141, 2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr. 14, 2010). It concluded that it had personal jurisdiction over Lisa and Neal under New York's long-arm statute, and that the exercise of this jurisdiction was consistent with constitutional due process. Id. at *3–9, 2010 U.S. Dist. LEXIS 38701, at *7–25. It therefore did not reach the question of whether Lisa and Neal were indispensable parties.

The Kirbys answered Marvel's complaint and asserted several counterclaims of their own. Marvel moved to dismiss each of them. On November 22, 2010, the district court granted the motion as to all but the Kirbys' counterclaim seeking a declaration that the Termination Notices were valid. Marvel Worldwide, Inc. v. Kirby, 756 F.Supp.2d 461 (S.D.N.Y.2010).

In early 2011, after discovery was complete, the parties cross-moved for summary judgment. Marvel also moved to exclude some of the Kirbys' evidence, most notably the reports of the Kirbys' putative expert witnesses, John Morrow and Mark Evanier.

On July 28, 2011, the district court granted Marvel's motions to exclude Morrow and Evanier's testimony, and granted Marvel's motion for summary judgment. Marvel Worldwide, Inc. v. Kirby, 777 F.Supp.2d 720 (S.D.N.Y.2011). It relied upon case law in this Circuit applying the so-called “instance and expense test” to determine whether a work is “made for hire” under section 304(c). Id. at 738–43. The court concluded that undisputed facts in the record establish as a matter of law that the works at issue were made at Marvel's instance and expense, and were therefore works made for hire. Id. This *128 being so, the Kirbys had no termination rights, and their Termination Notices were ineffective. The district court entered judgment accordingly on August 8, 2011.

The Kirbys appeal.

DISCUSSION

I. Personal Jurisdiction over Lisa and Neal Kirby

We turn first to the issue of personal jurisdiction over Lisa and Neal Kirby. Lisa and Neal are California residents. They contend that the district court erred when it determined that New York State's long-arm statute provided a basis for jurisdiction over them in the Southern District of New York. We review a district court's legal conclusions concerning its exercise of personal jurisdiction de novo, and its underlying factual findings for clear error. D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d 95, 103 (2d Cir.2006).

A district court must have a statutory basis for exercising personal jurisdiction. See Grand River Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165 (2d Cir.2005). Because this is “a federal question case where a defendant resides outside the forum state, ... [and the relevant] federal statute does not specifically provide for national service of process,” PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir.1997) (internal quotation marks omitted), we apply “the forum state's personal jurisdiction rules,” id. We therefore look to New York State law.

We focus our attention on section 302(a)(1) of New York State's long-arm statute, N.Y. C.P.L.R. § 302(a)(1), upon which the district court rested its jurisdiction, and which Marvel invokes here. Section 302(a)(1) provides that “a court may exercise personal jurisdiction over any non-domiciliary ... who in person or through an agent ... transacts any business within the state....” Id. We have recognized that for section 302(a)(1) to apply, “ ‘it is essential ... that there be some act by which the defendant purposefully avails [herself] of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.’ ” Beacon Enterprises, Inc. v. Menzies, 715 F.2d 757, 766 (2d Cir.1983) (alteration in original) (quoting George Reiner & Co. v. Schwartz, 41 N.Y.2d 648, 650, 363 N.E.2d 551, 553, 394 N.Y.S.2d 844, 846 (1977)).

Ehrenfeld, 9 N.Y.3d at 509, 881 N.E.2d at 835, 851 N.Y.S.2d at 386.

Under the facts of this case, the only acts that could potentially give rise to section 302(a)(1) jurisdiction over Lisa and Neal are the sending of the Termination Notices to Marvel in New York. We conclude that this is an insufficient basis for personal jurisdiction.

In Beacon Enterprises, supra, we applied section 302(a)(1) in a declaratory judgment suit very similar to this one. The defendant there, Mary Menzies, thought that the plaintiff, Beacon, was infringing her trademarks and copyrights in a line of weight-loss garments designed to emulate the effects of a sauna. Beacon Enterprises, 715 F.2d at 760. Menzies sent a cease-and-desist letter to Beacon at its New York City headquarters, threatening litigation. Id. Upon receiving it, Beacon filed a suit in the United States District Court for the Southern District of New York, seeking a judgment declaring that its products did not infringe Menzies' intellectual property rights. Id.

We concluded that Menzies' mailing of the cease-and-desist letter into New York was insufficient to give rise to personal jurisdiction over her under section 302(a)(1). Id. at 762, 766. We pointed out that “New York courts have consistently refused to sustain section 302(a)(1) jurisdiction solely on the basis of defendant's *129 communication from another locale with a party in New York.” Id. at 766 (collecting cases). And we thought it “difficult to characterize Menzies' letter alleging infringement in an unspecified locale and threatening litigation in an unspecified forum as an activity invoking the ‘benefits and protections' of New York law.” Id.

In Ehrenfeld v. Bin Mahfouz, 9 N.Y.3d 501, 881 N.E.2d 830, 851 N.Y.S.2d 381 (2007), the New York Court of Appeals, responding to a certified question from us, confronted a somewhat analogous fact pattern. There, the defendant had obtained a default judgment against the plaintiff in English courts for the plaintiff's allegedly libelous statements. Id. at 505, 881 N.E.2d at 832, 851 N.Y.S.2d at 383. The plaintiff brought suit in federal court in the Southern District of New York seeking a declaration that she could not be held liable for defamation under the circumstances of that case, and that the defendant's default judgment was therefore not enforceable against her in New York. She argued that the “defendant ha[d] transacted business in New York because he purposefully projected himself into the state to further a ‘foreign litigation scheme’ ”—the libel suit in England—“designed to chill her speech.” Id. at 508, 881 N.E.2d at 834, 851 N.Y.S.2d at 385.

When the case came before us on appeal, we certified to the New York Court of Appeals the question whether section 302(a)(1) conferred jurisdiction in the circumstances presented. Id. at 504, 881 N.E.2d at 831, 851 N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 489 F.3d 542, 551 (2d Cir.2007). The Court of Appeals answered in the negative, reasoning:

Here, none of defendant's relevant New York contacts have invoked the privileges or protections of our State's laws. Quite to the contrary, his communications in this state were intended to further his assertion of rights under the laws of England. As defendant points out—and plaintiff does not dispute—his prefiling demand letter and his service of documents were required under English procedural rules governing the prosecution of defamation actions. And in none of his letters to plaintiff did defendant seek to consummate a New York transaction or to invoke our State's laws.

Beacon Enterprises and Ehrenfeld point to the result of the jurisdictional inquiry here.

Like the defendants in those cases, Lisa and Neal were not “present” in New York—whether physically or through some other continuous contact ^FN2 —in connection with the underlying dispute in this case. This factor is not alone dispositive, of course. Cf. Deutsche Bank Sec., Inc. v. Montana Bd. of Invs., 7 N.Y.3d 65, 71, 850 N.E.2d 1140, 1142, 818 N.Y.S.2d 164, 166–67 (2006) (“[P]roof of one transaction in New York is sufficient to invoke jurisdiction, even though the defendant never enters New York.” (internal quotation marks omitted)). It does, however, set this action apart from those the New York Court of Appeals has described as “the clearest sort of case[s] in which [New York] courts would have 302 jurisdiction,” *130 George Reiner & Co., Inc. v. Schwartz, 41 N.Y.2d 648, 652, 394 N.Y.S.2d 844, 363 N.E.2d 551 (1977), a notion plainly grounded in constitutional principles of due process developed by the federal courts in and since International Shoe Co. v. Washington, 326 U.S. 310, 66 S.Ct. 154, 90 L.Ed. 95 (1945).

FN2. The New York Court of Appeals has recognized that an individual, although not physically present in the state, may still be present in the relevant sense through some “direct and personal involvement” in “sustained and substantial transaction of business.” Parke–Bernet Galleries v. Franklyn, 26 N.Y.2d 13, 18, 256 N.E.2d 506, 508, 308 N.Y.S.2d 337, 340 (1970). Participation in an auction by phone is one example. Id. Marvel does not allege such a connection in this case, and we do not perceive one in the record.

Neither were Lisa and Neal's communications part, or in contemplation, of a course of business dealings with Marvel. This distinguishes them from the sort of communications we found sufficient to confer section 302(a)(1) jurisdiction in PDK Labs, a case relied upon by the district court, but distinguished in Ehrenfeld, 9 N.Y.3d at 510, 881 N.E.2d at 836, 851 N.Y.S.2d at 387. In PDK Labs, we concluded that the defendant had “purposefully availed himself of the New York forum by using [his agent] in New York and apparently elsewhere for many years to advance his interest in his unique ‘product’ through soliciting funds and negotiating royalty agreements.” PDK Labs, 103 F.3d at 1111; see also Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir.1985) (concluding that contract negotiated in part in New York, signed in Georgia and New York, and containing a New York forum selection clause constituted “transaction of business” in New York under section 302(a)(1)). Here, by contrast, the Termination Notices bear no indication that the Kirbys were negotiating or cared to negotiate for or solicit Marvel's business.

Finally, and perhaps most importantly, the Termination Notices, like the letter in Beacon Enterprises and the communications in Ehrenfeld, asserted legal rights under a body of law other than New York's. What the Kirby siblings seek to vindicate are purported termination rights under section 304(c) of the federal copyright laws; they seek no privilege or benefit conferred by New York State law. Section 304(c)(4), moreover, states that termination rights “shall be effected by serving an advance notice in writing upon the grantee [of the initial assignment] or the grantee's successor in title.” The Termination Notices thus not only seek to vindicate rights under federal law, they also are a compulsory feature of that body of law.

We think these factors foreclose the exercise of section 302(a)(1) jurisdiction in the circumstances of this case. We conclude that a communication from out-of-state, required for the exercise of rights conferred under a federal statute, cannot alone constitute a purposeful availment of “the benefits and protections of [New York's] laws,” at least where the only connection to New York is that the recipient's business headquarters has a New York address.

Marvel's principal argument to the contrary rests on the premise that the Termination Notices are self-executing, legally effective communications. They are therefore different from the cease-and-desist letter at issue in Beacon Enterprises, Marvel contends, because there the notice did no more than advise the recipient of alleged infringement and threaten future litigation.

To begin with, we doubt Marvel's is an entirely accurate characterization of the Termination Notices: They are necessary to the exercise of the termination rights, but only the additional act of filing the notices with the Copyright Office consummates the legal act of termination. See 17 U.S.C. § 304(c)(4)(A). In any event, Marvel does not explain why the notices' legal effect under federal copyright law renders the act of mailing them any more a “transaction of business” or a purposeful invocation of the benefits and protections of New York law than would be other communications.

*131 Marvel also points to the notices' effects on Marvel in New York, characterizing them as “target[ing] the center of gravity of Marvel's publishing business,” and of having been “designed to disrupt and divert license fees from Marvel's New York-based business,” leaving Marvel with “no option but to protect its rights and those of its licensees.” Appellees' Br. at 47–48 & n. 17. These statements may well be essentially true, if perhaps a bit hyperbolic. But the Court in Ehrenfeld rejected virtually identical arguments based on the alleged in-state effects of the English default judgment that the defendant had obtained in the defamation case against the plaintiff, and the in-state action that that judgment would compel. See Ehrenfeld, 9 N.Y.3d at 511, 881 N.E.2d 830, 837, 851 N.Y.S.2d 381, 388. Cf. Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 209 (2d Cir.2001) (finding that “financial consequences in New York due to the fortuitous location of plaintiffs” are insufficient to confer jurisdiction under section 302(a)(3)). We read Ehrenfeld strongly to suggest that we reject Marvel's arguments in this regard here.

Finally, we are unpersuaded by Marvel's attempts to connect Lisa and Neal with New York through their relationship with other family members. Appellees' Br. at 51; see also Marvel Worldwide, Inc., 2010 WL 1655253, at *4–5, 2010 U.S. Dist. LEXIS 38701, at *10–12. The problem with these arguments—whether they seek to endow Lisa and Neal with their father's jurisdictional status, or to analyze their contacts with New York “collectively” with their other siblings—is that they identify no legal mechanism by which Jack's, Barbara's, or Susan's actions become those of Lisa or Neal. Absent a bona fide agency relationship—the existence of which no one has asserted—there is no basis for imputing to Lisa and Neal actions by their father half a century ago, or coincident actions by their siblings who now live in New York and for that reason are subject to personal jurisdiction here. Doing so would stretch the text of section 302 beyond the breaking point, see N.Y. C.P.L.R. § 302(a) (referring to transaction of business “in person or through an agent”).

We conclude that the district court lacked personal jurisdiction over Lisa and Neal Kirby. We therefore vacate the district court's judgment as against those two Kirbys.

II. Compulsory Joinder

The Kirbys next argue that the absence of personal jurisdiction over Lisa and Neal requires vacatur of the judgment as against Barbara and Susan too. They rely on Federal Rule of Civil Procedure 19: “Required Joinder of Parties.”

A. Federal Rule of Civil Procedure 19

Rule 19 recognizes exceptional circumstances in which the plaintiff's choice of parties or forum must give way because of an absent party's interest in the outcome of the action or involvement in the underlying dispute. See generally 7 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1602 (3d ed.2008). The Rule's principal provisions are divided into two subsections. Subsection (a) protects certain parties by deeming them “required”; a party who is “required” according to the factors enumerated in subsection (a) is one whose participation is so desirable or important that the party must be joined so long as she or he is “subject to service of process” and joinder “will not deprive the court of subject-matter jurisdiction.” Fed.R.Civ.P. 19(a)(1).

Subsection (b) addresses situations in which a party otherwise “required” under *132 subsection (a) cannot be joined for some reason, for example (as in this case), want of personal jurisdiction. In such circumstances, Rule 19(b) requires courts to consider whether, “in equity and good conscience,” the party is one without whom the action between the remaining parties cannot proceed—or, in the traditional terminology, whether the absent party is “indispensable.” Fed.R.Civ.P. 19(b); see also CP Solutions PTE, Ltd. v. General Electric Co., 553 F.3d 156, 159 n.2 (2d Cir.2009) (per curiam).

We assume, for present purposes, that Lisa and Neal are “required” parties under Rule 19(a). They are also parties whose joinder is not feasible, inasmuch as we conclude that they are not amenable to personal jurisdiction in the Southern District of New York, and they are unwilling to consent to suit within the jurisdiction. The remainder of this discussion, then, centers on the effects of Rule 19(b) on these proceedings.

B. Indispensability

Because of the “flexible nature of Rule 19(b) analysis,” we review a district court's decision under that rule for abuse of discretion.^FN3 Universal Reinsurance Co., Ltd. v. St. Paul Fire & Marine Ins. Co., 312 F.3d 82, 87 (2d Cir.2002). Here, however, the district court decided—mistakenly, as we have explained—that it had personal jurisdiction over Lisa and Neal. The court therefore had no occasion to apply Rule 19(b).

FN3. The standard of review applicable to Rule 19(b) is apparently the subject of a circuit split. See National Union Fire Ins. Co. v. Rite Aid of South Carolina, Inc., 210 F.3d 246, 250 n.7 (4th Cir.2000) (recognizing the split and collecting cases); compare Universal Reinsurance Co., 312 F.3d at 87 (abuse of discretion), with Keweenaw Bay Indian Community v. Michigan, 11 F.3d 1341, 1346 (6th Cir.1993) (abuse of discretion for Rule 19(a), but de novo for Rule 19(b)). In Republic of Philippines v. Pimentel, 553 U.S. 851, 128 S.Ct. 2180, 171 L.Ed.2d 131 (2008), the Supreme Court passed on an opportunity to resolve the question, although it did suggest that the Rule's “in equity and good conscience” language “implies some degree of deference to the district court,” id. at 864, 128 S.Ct. 2180, 171 L.Ed.2d 131.

It is ordinarily appropriate for us to vacate the judgment of a district court and remand the cause to it when matters committed to that court's discretion arise for the first time on appeal. See CP Solutions, 553 F.3d at 161. But where a record is fully developed and it discloses that, in our judgment, only one possible resolution of such an issue would fall “within the permissible range of choices”—in other words, where only one determination by the district court would be within its discretion—there is no reason to remand. Id. If we did and the court decided to the contrary, we would be duty bound to reverse in any event on the grounds of abuse of discretion.

In this case, the parties have fully briefed the Rule 19(b) issue on appeal, and the facts are straightforward and undisputed. Only one result, we think, is permissible. We therefore resolve the issue in the first instance. ^FN4

FN4. There is some authority, albeit none from this Circuit, suggesting that a court of appeals may apply Rule 19 in the first instance when the issue arises for the first time on appeal. See, e.g., Fidelity & Casualty Co. v. Reserve Ins. Co., 596 F.2d 914, 918 (9th Cir.1979) (considering indispensability in the first instance on appeal in deciding applicability of Fed.R.Civ.P. 21, which permits courts to add or drop parties to avoid dismissing an action); Anrig v. Ringsby United, 591 F.2d 485, 489–92 (9th Cir.1978) (faulting the district court for failing to consider the dispensability of parties prior to dismissing the entire case, and proceeding to address the question in the first instance); see also Walsh v. Centeio, 692 F.2d 1239, 1241–42 (9th Cir.1982) (discussing case law in analysis of applicable standard of review of dismissals under Rule 19(b)); Cloverleaf Standardbred Owners Ass'n, Inc. v. National Bank of Washington, 699 F.2d 1274, 1277 n. 5 (D.C.Cir.1983) (suggesting, in dicta, that a court of appeals may apply Rule 19 itself in “cases in which Rule 19 does not figure in a district court's decision but becomes an issue on appeal in conjunction with a jurisdiction or venue challenge pursued by one or more of several defendants”).

That we may (or ought to) do so is perhaps born of the notion that we have an independent equitable obligation to protect the interests of absentee parties. See MasterCard Int'l Inc. v. Visa Int'l Service Ass'n, Inc., 471 F.3d 377, 382–83 (2d Cir.2006). Inasmuch as we conclude that there is indeed only one permissible outcome here, however, we need not rest our decision on this basis.

*133 [7]

Rule 19(b) sets forth four considerations that will ordinarily be among those relevant to the analysis of whether a party is “indispensable.” We have restated them as: “(1) whether a judgment rendered in a person's absence might prejudice that person or parties to the action, (2) the extent to which any prejudice could be alleviated, (3) whether a judgment in the person's absence would be adequate, and (4) whether the plaintiff would have an adequate remedy if the court dismissed the suit.” CP Solutions, 553 F.3d at 159.

Applying these factors requires an understanding of the legal interests at stake, here the Kirbys' termination rights under section 304(c). Central to the current discussion is paragraph (1) of section 304(c), and in particular the following provision: “In the case of a grant executed by one or more of the authors of the work, termination of the grant may be effected, ... if such author is dead, by the person or persons who ... own and are entitled to exercise a total of more than one-half of that author's termination interest.” 17 U.S.C. § 304(c)(1) (emphasis added); see also id. § 304(c)(6)(C).

The parties interpret this to mean that at least three of the four Kirbys—“more than one-half”—must “effect” termination of their father's assignment in order for any of them to realize their termination rights. Appellants' Br. at 21; Appellees' Br. at 55. So, all seem to acknowledge, if Barbara and Susan Kirby are disabled by an adverse judgment in this suit from effecting termination, all four Kirbys lose.

Under this interpretation of section 304(c)(1), which we assume without deciding is correct, several of the possible Rule 19(b) considerations are irrelevant. Marvel cannot, and does not, complain that a judgment rendered in Lisa and Neal's absence prejudices it in any way, because it should be satisfied by a judgment against Barbara and Susan that forecloses Lisa and Neal's rights too. Nor can Barbara and Susan claim prejudice. Any judgment here stands to reflect the full and fair adjudication of their rights under section 304(c). And whatever the result, there is no risk that Barbara and Susan will somehow bear in full a legal obligation that is properly shared by their absent siblings. There is thus no prejudice to Marvel, Barbara, or Susan as “existing parties.” Fed.R.Civ.P. 19(b)(1).

We also do not see how a judgment in this case could be crafted to alleviate any prejudice that may exist to absent parties Lisa and Neal. See Fed.R.Civ.P. 19(b)(2). The judgment here will declare the existence vel non of Barbara and Susan's termination rights, and whatever the practical effect of this declaration, it can do no more or less.

Finally, although we can hardly be confident that the absent parties in this case will accept a judgment as the last word in this dispute, we think that any judgment would be “adequate,” Fed.R.Civ.P. 19(b)(3), in the sense of honoring the “public stake in settling disputes by wholes, whenever possible.” *134 CP Solutions, 553 F.3d at 160 (internal quotation marks omitted). If Marvel wins against Barbara and Susan, the parties' interpretation of section 304(c)(1) implies that the issue is resolved as to all Kirbys; if Barbara and Susan prevail, principles of issue preclusion would likely bar Marvel from relitigating the issue against Lisa and Neal. See Restatement (Second) of Judgments § 29 (1982).

This leaves us with two factors to consider. The first is potential prejudice to Lisa and Neal arising from their absence. Fed.R.Civ.P. 19(b)(1). They complain that by operation of section 304(c)(1)'s “more than one-half” requirement, they stand to have their legal rights finally determined in their absence. Appellants' Br. at 21–22. This argument appeals to our “ ‘deep-rooted historic tradition that everyone should have his own day in court.’ ” See Richards v. Jefferson County, 517 U.S. 793, 798, 116 S.Ct. 1761, 135 L.Ed.2d 76 (1996) (quoting 18 Charles Alan Wright, Arthur R. Miller, Edward H. Cooper, Federal Practice and Procedure § 4449 (3d ed.2008)).

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[10]

But the law in this context and elsewhere “ ‘recognize[s] an exception to the general rule when, in certain limited circumstances, a person, although not a party, has his interests adequately represented by someone with the same interests who is a party.’ ” Id. (quoting Martin v. Wilks, 490 U.S. 755, 762 n.2, 109 S.Ct. 2180, 104 L.Ed.2d 835 (1989)). As we recognized in CP Solutions, the potential prejudice to an absent party under Rule 19(b) is mitigated where a remaining party “could champion [his or her] interest.” 553 F.3d at 160. And prejudice to absent parties approaches the vanishing point when the remaining parties are represented by the same counsel, and when the absent and remaining parties' interests are aligned in all respects. Id.; Prescription Plan Serv. Corp. v. Franco, 552 F.2d 493, 497 (2d Cir.1977).

This lawsuit concerns a single legal issue in which Lisa's and Neal's interests are identical to Barbara's and Susan's. The Kirbys have the same lawyer—who we are sure was “no less vigorous in [his] advocacy,” Prescription Plan Serv., 552 F.2d at 497, because he represented two Kirbys instead of four. And we have been given no reason whatever to think that the proofs advanced by Barbara and Susan are materially different from those Lisa and Neal would have proffered. We therefore see no practical prejudice to Lisa and Neal as a result of adjudicating this case in their absence.

The other remaining consideration is whether Marvel “would have an adequate remedy if the action were dismissed for non-joinder.” Fed.R.Civ.P. 19(b)(4). As Marvel points out, because Lisa and Neal are not amenable to personal jurisdiction in New York, and because Barbara and Susan—New York residents—are, as far as the record reveals, not amenable to personal jurisdiction in California, the Kirbys might well be able to thwart a declaratory judgment suit brought by Marvel in a forum in either state. Appellees' Br. at 56–57. In light of the nearly non-existent showing of prejudice to any of the parties involved here, we see no reason to permit the Kirbys to withhold consent to any suit in which the forum or litigation posture are not to their liking. See Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 109, 88 S.Ct. 733, 19 L.Ed.2d 936 (1968) (recognizing a plaintiff's “interest in having a forum”).

We conclude, therefore, that the only determination that falls within the range of permissible decisions in the circumstances of this case is that Lisa and Neal are not indispensable parties, and that it was appropriate for the action against Barbara *135 and Susan to have proceeded on its merits. ^FN5

FN5. There is an abstract question lurking in the background: Should a court apply the Rule to present circumstances, or instead to the circumstances as they were at the time the party initially made its motion for dismissal under Rule 19(b)? Compare Universal Reinsurance Co., 312 F.3d at 89 (noting, in a case in which Rule 19(b) issue did not arise until after first appeal and remand, that “[o]nce the district court has proceeded to final judgment, considerations of finality, efficiency, and economy become overwhelming, and federal courts are directed to salvage jurisdiction where possible” (internal quotation marks and citations omitted)), with Young v. Powell, 179 F.2d 147, 152 (5th Cir.1950) (reviewing district court's Rule 19(b) analysis based on the “relief asked for” rather than the “relief granted” on the merits in order to prevent prejudice to the defendant). See generally 7 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1609 (3d ed.2008). We need not address it, though, because we conclude that under either approach, the result would be the same: Lisa and Neal are not indispensable parties.

III. Summary Judgment

[11]

[12]

[13]

The remaining Kirbys—Barbara and Susan—challenge the district court's grant of summary judgment in favor of Marvel. “We review a district court's grant of summary judgment de novo. In reviewing a summary judgment decision, we apply the same standards applied by the district court. Under this standard, summary judgment may be granted only if ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’ [Fed.R.Civ.P. 56(a) ]. In determining whether there is a genuine dispute as to a material fact, we must resolve all ambiguities and draw all inferences against the moving party.” Garcia v. Hartford Police Dep't, 706 F.3d 120, 126–27 (2d Cir.2013) (per curiam) (alteration, some citations, and internal quotation marks omitted).

A. Exclusion of Expert Testimony

[14]

We address first the admissibility of the reports and testimony of Barbara and Susan's putative experts, John Morrow and Mark Evanier, who purported to offer historical perspective concerning the relationship between Marvel and Jack Kirby. The district court ruled that the reports and testimony were inadmissible. Marvel Worldwide, Inc., 777 F.Supp.2d at 729–30. We review this decision for abuse of discretion. Wills v. Amerada Hess Corp., 379 F.3d 32, 41 (2d Cir.2004).

[15]

Federal Rule of Evidence 702 governs the admissibility of expert testimony. It requires for admissibility, among other things, that “the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed.R.Evid. 702(a). In other words, “[e]xpert testimony must be helpful to the [trier of fact] in comprehending and deciding issues beyond the understanding of a layperson.” DiBella v. Hopkins, 403 F.3d 102, 121 (2d Cir.2005).

We have no doubt that a historian's “specialized knowledge” could potentially aid a trier of fact in some cases. A historian could, for example, help to identify, gauge the reliability of, and interpret evidence that would otherwise elude, mislead, or remain opaque to a layperson. See generally Maxine D. Goodman, Slipping Through the Gate, 60 Baylor L. Rev. 824, 857 (2008) (commenting that a historian's task is “to choose reliable sources, to read them reliably, and to put them together in ways that provide reliable narratives about the past” (quoting Martha C. Howell & Walter Prevenier, From Reliable Sources: An Introduction to Historical Methods 2 (2001))). He or she might helpfully synthesize dense or voluminous historical *136 texts. Id. Or such a witness might offer background knowledge or context that illuminates or places in perspective past events. See, e.g., Int'l Soc. for Krishna Consciousness, Inc. v. Barber, 650 F.2d 430, 440 (2d Cir.1981) (“In fact, one religious expert at trial remarked that the American movement is ‘one of the most unusual examples of transfer of a cultural tradition across broad national and cultural barriers.’ This evidence of historical longevity and theological consistency should not be ignored.”).

[16]

But Morrow and Evanier do not bring their expertise to bear in any such way. As the district court recognized, their reports are by and large undergirded by hearsay statements, made by freelance artists in both formal and informal settings, concerning Marvel's general practices towards its artists during the relevant time period. See, e.g., Deposition of Mark Evanier, Dec. 6, 2010, at 18–21, Joint App'x at 957–59. Drawing from these statements, they then speculate as to the motivations and intentions of certain parties, see, e.g., Expert Report of John Morrow at 9, Joint App'x at 1152 (“I do not believe that Goodman, Lee, Marvel or the freelance artists, like Jack Kirby, ... thought that the material they created was ‘work made for hire’....”), or opine on the credibility of other witnesses' accounts, see, e.g., Expert Report of Mark Evanier at 14, Joint App'x at 1105 (“I have great respect and personal affection for Stan Lee, but I disagree with the accounts he has sometimes given....”).

[17]

Although the Rules permit experts some leeway with respect to hearsay evidence, Fed.R.Evid. 703, “a party cannot call an expert simply as a conduit for introducing hearsay under the guise that the testifying expert used the hearsay as the basis of his testimony.” Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 666 (S.D.N.Y.2007). The appropriate way to adduce factual details of specific past events is, where possible, through persons who witnessed those events. And the jobs of judging these witnesses' credibility and drawing inferences from their testimony belong to the factfinder. See Nimely v. City of New York, 414 F.3d 381, 397–98 (2d Cir.2005). We therefore think the district court clearly did not abuse its discretion in declining to admit this evidence.

B. Termination Rights and Work Made for Hire

We thus, at last, arrive at the merits of Marvel's summary judgment motion. At issue is section 304(c) of the Copyright Act of 1976, which, insofar as bears on this litigation, provides:

Termination of Transfers and Licenses Covering Extended Renewal Term.—In the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978 ... is subject to termination....

17 U.S.C. § 304(c).^FN6

FN6. The termination right in section 304(c) applies only to transfers executed by the author prior to January 1, 1978. Section 203 governs termination of transfers of the rights to works executed on or after January 1, 1978. See 17 U.S.C. § 203(a). We have cautioned that “Section 203 and Section 304 are different provisions involving different rights.” Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 779 (2d Cir.1992).

[18]

If the author is no longer alive, section 304(c)(2) grants his or her termination rights to specified heirs. See id. § 304(c)(2)(B). The provision “protect[s] the property rights of widows and children *137 in copyrights” by granting them the power to undo earlier transfers and to enjoy the remainder of the copyright term.^FN7 Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 778 (2d Cir.1992).

FN7. Thirty-nine years, to be precise. Termination rights may be effected “during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured, or beginning on January 1, 1978, whichever is later.” 17 U.S.C. § 304(c)(3). Under section 304, as amended by the Sonny Bono Copyright Term Extension Act, the full copyright term of the works at issue—consisting of a 28–year initial term plus a 67–year renewal term—is 95 years. See 17 U.S.C. § 304(a), (b). At stake here, then, is the 39 years that will be remaining on each of the works' copyright terms at the time they turn 56.

[19]

But section 304(c) provides that termination rights under that section do not exist with respect to “work[s] made for hire.” 17 U.S.C. § 304(c). Where a work is “made for hire,” copyright law deems the employer to be the “author” for purposes of copyright ownership. Copyright Act of 1909 § 62 (formerly codified at 17 U.S.C. § 26) (“[T]he word ‘author’ shall include an employer in the case of works made for hire.”); see also Copyright Act of 1976 § 201(b), 17 U.S.C. § 201(b) (“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title....”). The hired party, although “the ‘author’ in the colloquial sense,” Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 699 (2d Cir.1941), therefore never owned the copyrights to assign. It stands to reason, then, that there are no rights the assignment of which his or her heirs may now terminate.

Marvel argues that all of the works at issue in this case fall into the category of “work made for hire.”

1. The Instance and Expense Test. To determine whether a work is “work made for hire” within the meaning of section 304(c), we apply case law interpreting that term as used in the 1909 Act, the law in effect when the works were created. See Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 156–63 (2d Cir.2003). This requires us to apply what is known as the “instance and expense test.”

a. Origins.

The origins of the instance and expense test were described at some length by Judge Newman's opinions in Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., supra, and Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624, 633–36 (2d Cir.2004).

The test was developed from two lines of cases. One was our court-made work-for-hire jurisprudence. “Because the 1909 Act did not define ‘employer’ or ‘works made for hire,’ the task of shaping these terms fell to the courts.” Community for Creative Non–Violence v. Reid, 490 U.S. 730, 744, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). Using Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 248, 23 S.Ct. 298, 47 L.Ed. 460 (1903)—the Supreme Court's first encounter with the work-for-hire phenomenon—as a guidepost, our early cases focused principally on whether the work at issue was created within the scope of a traditional employment relationship. See, e.g., Tobani v. Carl Fischer, Inc., 98 F.2d 57, 59 (2d Cir.1938); Shapiro, Bernstein & Co., Inc. v. Bryan, 123 F.2d 697, 698–700 (2d Cir.1941). Work-for-hire doctrine thus served to identify which party within the traditional employment relationship was the statutory “author,” and hence owned the *138 copyright in the work from the time of creation.

The second doctrine developed to address what was initially considered a separate issue under the 1909 Act: rights in commissioned works created by independent contractors. The issue in this situation, at least in the early cases, was not who the statutory author was—the author was the independent contractor. The issue was whether the hiring party nevertheless owned copyrights by way of the author's implied assignment of those rights; and, if so, whether the assignment applied to only the “original” copyright term, or to both the “original” term and an “expectancy” in the so-called “renewal” term.

We addressed the first half of this issue in Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir.1939). There we concluded that if a party “is solicited by a patron to execute a commission for pay, the presumption should be indulged that the patron desires to control the publication of copies and that the artist consents that he may, unless by the terms of the contract, express or implicit, the artist has reserved the copyright to himself.” Id. at 31. And in later cases, we seemed to answer the second half, limiting Yardley's presumption in favor of implied assignment to the original term. See Estate of Burne Hogarth, 342 F.3d at 159; Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 570 (1955).

The two doctrines first converged in Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567 (2d Cir.1966). That case concerned rights in the original term in an independent contractor setting—like in Yardley—but we nevertheless began our analysis by discussing traditional work-for-hire doctrine. Id. at 567. We relied on Professor Melville Nimmer's copyright treatise, which we described as recognizing “a presumption in the absence of an express contractual reservation to the contrary, that the copyright shall be in the person at whose instance and expense the work is done.” Id. (emphasis added) (citing Nimmer on Copyright 238 (1964)). And we could “see no sound reason why these same principles are not applicable when the parties bear the relationship of employer and independent contractor.” Id. at 568.

This discussion does not appear to have been necessary to the result inasmuch as the Court went on to resolve the case on the grounds of Yardley's presumption. Id. Just as curious was the Brattleboro Court's attribution of the phrase “instance and expense” to Professor Nimmer. The phrase is apparently not to be found in the cited passage on work-for-hire doctrine. See Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 5.03 n. 171b (Matthew Bender, Rev. Ed.2013). It seems instead to be drawn from a Ninth Circuit opinion in an independent contractor case published the year before. See Lin–Brook Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir.1965); see generally Martha Graham, 380 F.3d at 634 n. 17.

But we effectively adopted the union of these two approaches in Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (2d Cir.1972), relying on both work-for-hire and implied assignment cases to conclude that an independent contractor's works were “made for hire,” and therefore that the hiring party owned both the original and renewal term. Id. at 1216. And when we next confronted the issue, in Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir.1995), we explained that “an independent contractor is an ‘employee’ and a hiring party an ‘employer’ for purposes of the [1909 Act] if the work *139 is made at the hiring party's ‘instance and expense.’ ” ^FN8

FN8. Our approach has been criticized. See Nimmer on Copyright § 9.03[D]. It was also called into question by language in Community for Creative Non–Violence v. Reid, 490 U.S. 730, 744, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989), which discussed some of our cases as background to interpreting the 1976 Act's somewhat different “work made for hire” provisions, 17 U.S.C. § 101. We nonetheless reaffirmed our adherence to the instance and expense test in cases turning on the interpretation of the 1909 Act's work-for-hire provisions in Estate of Burne Hogarth, supra.

b. General Principles

[20]

We have stated as a general rule that “[a] work is made at the hiring party's ‘instance and expense’ when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out.” Martha Graham, 380 F.3d at 635. Our case law is, however, not so tidy. To the extent we can distill from our prior cases a set of principles applicable here, they are these:

[21]

“Instance” refers to the extent to which the hiring party provided the impetus for, participated in, or had the power to supervise the creation of the work. Actual creative contributions or direction strongly suggest that the work is made at the hiring party's instance. See, e.g., Playboy Enterprises, Inc., 53 F.3d at 556 (evidence that independent contractor “was given specific instructions for his early submissions to Playboy” suggested work for hire); Yardley, 108 F.2d at 30–31 (“[W]here a photographer takes photographs of a person who goes or is sent to him in the usual course, and is paid for the photographs and for his services in taking them, the right of copyright is in the sitter or in the person sending the sitter to be photographed, and not in the photographer....”).

[22]

The “right to direct and supervise the manner in which the work is carried out,” Martha Graham, 380 F.3d at 635, moreover, even if not exercised, is in some circumstances enough to satisfy the “instance” requirement. It may be sufficient, for example, where the hiring party makes a particularly strong showing that the work was made at its expense, Scherr v. Universal Match Corp., 417 F.2d 497, 501 (2d Cir.1969) (noting “the overwhelming appropriation of [the hiring party's] funds, time and facilities to the project”), or where prior dealings between the parties on similar assignments, as part of an ongoing arrangement, have rendered fine-grained supervision unnecessary, Playboy Enterprises, Inc., 53 F.3d at 556 (“right to control” and exercise of control with respect to “certain characteristics” sufficient in light of earlier “specific assignments”).

[23]

But “inducement” or “control” alone can be incidental enough not to vest copyright ownership in the hiring party. For example, in Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914 (2d Cir.1974), we concluded that it was insufficient that the independent contractor “revise[d] and expand[ed] the Superman material at the request of the [hiring party],” because “Superman had been spawned by the [independent contractor] four years before the relationship [with the hiring party] existed.” Indeed, even in cases arising under traditional employment law, a work created “as a special job assignment” may not be a “work made for hire.” Shapiro, Bernstein & Co., 221 F.2d at 570.

[24]

The “expense” component refers to the resources the hiring party invests in the creation of the work. We have, at least in some cases, continued the tradition *140 of treating the incidents of a traditional employment relationship as relevant to the analysis. See, e.g., Martha Graham, 380 F.3d at 637–41. We have, moreover, suggested that the hiring party's provision of tools, resources, or overhead may be controlling. Id. at 638 (“It may well be that the resources of the Center—notably, its rehearsal space and the dancers enrolled at the School—significantly aided Graham in her choreography, thereby arguably satisfying the ‘expense’ component....”). But cf. Playboy Enterprises, Inc., 53 F.3d at 555 (finding that factors relevant to work for hire analysis under the 1976 Act, like setting hours or providing tools, have “no bearing on whether the work was made at the hiring party's expense”).

[25]

In other cases, however, we seem to have focused mostly on the nature of payment: payment of a “sum certain” suggests a work-for-hire arrangement; but “where the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship.” Id.. We note, though, that this distinction appears to be a rather inexact method of properly rewarding with ownership the party that bears the risk with respect to the work's success. See Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 881 (9th Cir.2005) (noting that publisher took on “all the financial risk of the book's success”); see also Donaldson Publishing Co. v. Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir.1967) (finding relevant employee's “freedom to engage in profitable outside activities without sharing the proceeds with [the hiring party]”).

[26]

Our case law counsels against rigid application of these principles. Whether the instance and expense test is satisfied turns on the parties' creative and financial arrangement as revealed by the record in each case.

[27]

If the hiring party is able to satisfy the instance and expense test, it “is presumed to be the author of the work,” and the independent contractor can overcome the presumption only “by evidence of an agreement to the contrary.” ^FN9 Playboy Enterprises, Inc., 53 F.3d at 556.

FN9. Marvel sees this as a formal “burden shifting framework.” Under that framework, as Marvel conceives of it, the hiring party must “come forward with ‘some credible evidence’ that the Works were created at its instance and expense,” from which showing “arises an ‘almost irrebuttable presumption’ that the Works were works made for hire.” Appellees' Br. at 22 (citations omitted). Neither the “some credible evidence” statement—a cherry-picked comment from a Ninth Circuit opinion, see Twentieth Century, 429 F.3d at 877—nor the “almost irrebuttable presumption” language—a Fifth Circuit opinion's description of our approach, noted in our opinion in Estate of Burne Hogarth, 342 F.3d at 158 (quoting Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 327 (5th Cir.1987))—is an accurate statement of our case law.

2. Application of the Instance and Expense Test in the Present Case. Applying these principles to the facts in the record before us—a challenging endeavor in some respects ^FN10 —we conclude that the *141 works were created at Marvel's instance and expense, and that Barbara and Susan have not adduced evidence of an agreement to the contrary contemporaneous with the creation of the works. We therefore conclude that the district court was correct to award summary judgment in favor of Marvel.

FN10. The facts underlying this dispute took place decades ago, and Jack Kirby is, of course, no longer alive to provide an account of his working relationship with Marvel during the relevant time period. This leaves us to reconstruct the arrangement through (1) the deposition testimony of Stan Lee, whose credibility the Kirbys contest; (2) the depositions and declarations of other comic book artists who worked for Marvel at various times, but likely under different arrangements from Kirby's; (3) the depositions of the Kirby children, who have little direct knowledge; and (4) some documentary evidence concerning Kirby's contributions to or creation of some of the works.

a. Instance.

[28]

The evidence, construed in favor of the Kirbys, establishes beyond dispute that the works in question were made at Marvel's instance.

Although Jack Kirby was a freelancer, his working relationship with Marvel between the years of 1958 and 1963 was close and continuous. Stan Lee considered Kirby to be Marvel's best artist, Lee Dep. at 30, Joint App'x at 2450, an assessment reinforced by the admiration of Kirby by his contemporaries, see Deposition of Lawrence Lieber (“L. Lieber Dep.”), Jan. 7, 2011, at 104–05, Joint App'x at 1530–31; Deposition of John Romita (“Romita Dep.”), Oct. 21, 2010, at 75–76, Joint App'x at 360–61. Lee “wanted to use Jack for everything,” Lee Dep. at 36, Joint App'x at 2456, and Kirby appears to have been kept busy with assignments from Marvel, id. at 37, Joint App'x at 2457.

Marvel published the great majority of Kirby's work during these years—1958 through 1963. There are indications in the record that artists did customarily work with more than one publisher during the relevant time period, see, e.g., L. Lieber Dep. at 74–75, Joint App'x at 1521–22, and a handful of Kirby's works between 1958 and 1963 were not published by Marvel, see Excerpt of Jack Kirby Checklist (Two Morrows Gold ed.2008), Joint App'x at 1751–62. But it is beyond dispute that most of Kirby's work during this period was published by Marvel and for established Marvel titles. Id.

Understood as products of this overarching relationship, Kirby's works during this period were hardly self-directed projects in which he hoped Marvel, as one of several potential publishers, might have an interest; rather, he created the relevant works pursuant to Marvel's assignment or with Marvel specifically in mind. Kirby's ongoing partnership with Marvel, however unbalanced and under-remunerative to the artist, is therefore what induced Kirby's creation of the works.

Marvel also played at least some creative role with respect to the works. Kirby undoubtedly enjoyed more creative discretion than most artists did under the “Marvel Method,” a fact Lee readily admits. Lee Dep. at 70, Joint App'x at 2490. But the only evidence on the issue indicates that he did not work on “spec” (speculation)—that is, he worked within the scope of Marvel's assignments and titles. Id. at 48, Joint App'x at 2468; Deposition of Neal Kirby, June 30, 2010, at 167–68, Joint App'x at 1592–93. There is no disputing, moreover, that Marvel had the power to reject Kirby's pages and require him to redo them, or to alter them, a power it exercised from time to time. Id. at 234–35, Joint App'x at 1599–1600; Deposition of Susan Kirby, Oct. 25, 2010, at 37, Joint App'x at 1607. And there is evidence that Kirby collaborated with Lee with respect to many of the works. Lee Dep. at 118, Joint App'x at 2538.

Marvel's inducement, right to supervise, exercise of that right, and creative contribution with respect to Kirby's work during the relevant time period is more than enough to establish that the works were created at Marvel's instance.

The Kirbys' attempts to avoid this conclusion are unsuccessful. Their argument is that the “right to supervise” referred to in our case law requires a legal, presumably *142 contractual, right. Appellants' Br. at 42–45. We find no hint of this requirement in our case law applying the instance and expense test. Nor do the Kirbys provide a principled reason why Marvel's active involvement in the creative process, coupled with its power to reject pages and request that they be redone, should not suffice.

The Kirbys also point to factual disputes over who actually created the characters, plots, and other concepts in Marvel's comic books during the relevant time period, mostly in an attempt to discredit Lee and find fault in the district court's reading of the record. Appellants' Br. at 33–35. Questions of who created the characters are mostly beside the point. That Marvel owes many of its triumphs to Kirby is beyond question. But the hired party's ingenuity and acumen are a substantial reason for the hiring party to have enlisted him. It makes little sense to foreclose a finding that work is made for hire because the hired artist indeed put his exceptional gifts to work for the party that contracted for their benefit.

b. Expense.

[29]

Whether the Works were created at Marvel's expense presents a more difficult question. We ultimately find ourselves in agreement with the district court and in favor of Marvel here too.

The facts underlying the expense component are not in dispute. Marvel paid Kirby a flat rate per page for those pages it accepted, and no royalties. It did not pay for Kirby's supplies or provide him with office space. It was free to reject Kirby's pages and pay him nothing for them. The record contains anecdotal evidence that Marvel did in fact reject Kirby's work or require him to redo it on occasion, if less often than it did the work of other artists, but with what frequency is unclear.

Marvel argues that its payment of a flat rate for Kirby's pages is all that matters. It relies on our suggestion in Playboy Enterprises, 53 F.3d at 555, that “the ‘expense’ requirement [is] met where a hiring party simply pays an independent contractor a sum certain for his or her work.” Because, Marvel argues, it paid Kirby a sum certain when it accepted his pages—irrespective of whether the pages required edits or additions, were ultimately published, or were part of a comic book that was a commercial success—it took on the risk of financial loss.

The Kirbys urge us to focus not on the risk Marvel took at the time it purchased the pages, but on the risk Kirby took when he set out to create them. Until Marvel purchased Kirby's pages, they point out, Kirby had undertaken all of the costs of producing the drawings—time, tools, overhead—and shouldered the risk that Marvel would reject them, leaving him in the lurch. Marvel's purely contingent payment, they argue, thus acted more like a royalty than a sum certain. Appellants' Br. at 36–42.

This argument might give us pause if Kirby's relationship with Marvel comprised discrete engagements with materially uncertain prospects for payment, or, indeed, if he undertook to create the works independent of Marvel. But there is no evidence of which we are aware to either effect. The evidence suggests instead that Marvel and Kirby had a standing engagement whereby Kirby would produce drawings designed to fit within specific Marvel universes that his previously purchased pages had helped to define. When Kirby sat down to draw, then, it was not in the hope that Marvel or some other publisher might one day be interested enough in them to buy, but with the expectation, *143 established through their ongoing, mutually beneficial relationship, that Marvel would pay him. And the record makes clear that in the run of assignments, this expectation proved warranted.

Kirby's completed pencil drawings, moreover, were generally not free-standing creative works, marketable to any publisher as a finished or nearly finished product. They built on preexisting titles and themes that Marvel had expended resources to establish—and in which Marvel held rights—and they required both creative contributions and production work that Marvel supplied. That the works are now valuable is therefore in substantial part a function of Marvel's expenditures over and above the flat rate it paid Kirby for his drawings.

In the final analysis, then, the record suggests that both parties took on risks with respect to the works' success—Kirby that he might occasionally not be paid for the labor and materials for certain pages, and Marvel that the pages it did pay for might not result in a successful comic book. But we think that Marvel's payment of a flat rate and its contribution of both creative and production value, in light of the parties' relationship as a whole, is enough to satisfy the expense requirement.

c. Agreement to the Contrary.

[30]

Because Marvel has satisfied the instance and expense test, a presumption arises that the works in question were “works made for hire” under section 304(c). This presumption can be overcome only by evidence of an agreement to the contrary contemporaneous with the creation of the works.

The Kirbys' showing in this regard consists mostly of negative or elliptical inferences concerning the parties' agreement at the time. For example, they point to a 1975 assignment executed by Jack Kirby that purported to transfer interests in certain works to Marvel (but also averred that all of his work was for hire), which they say suggests the parties' understanding that Marvel did not already own the rights. Appellants' Br. at 48. They also call to our attention evidence that indicates that Marvel paid Kirby during the relevant time periods with checks that contained a legend with assignment, instead of work-for-hire, language. Id. at 47.

This evidence is not enough to enable the Kirbys to survive the motion for summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (“The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].”); Bickerstaff v. Vassar Coll., 196 F.3d 435, 448 (2d Cir.1999) ( “[A]n inference is not a suspicion or a guess.” (internal quotation marks omitted)). It is all too likely that, if the parties thought about it at all, Kirby's assignments at the time he was paid or later were redundancies insisted upon by Marvel to protect its rights; we decline to infer from Marvel's suspenders that it had agreed to give Kirby its belt.

* * *

In sum, the district court made no error, in our view, in determining as a matter of law that the works were made at Marvel's instance and expense, and that the parties had no agreement to the contrary. The remaining Kirbys, Barbara and Susan, are therefore without termination rights under section 304(c), and the district court properly granted Marvel's motion for summary judgment as to them.

CONCLUSION

For the foregoing reasons, we vacate the district court's judgment as against Lisa *144 and Neal Kirby and remand with instructions to the district court to dismiss the action against them for want of personal jurisdiction. We affirm the judgment in favor of Marvel as against Barbara and Susan Kirby. Each party shall bear his, her, or its own costs.

726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813

Briefs and Other Related Documents (Back to top)

• 2012 WL 1573514 (Appellate Brief) Appellants' Reply Brief (Apr. 27, 2012) Original Image of this Document (PDF)
• 2012 WL 1268314 (Appellate Brief) Brief for Appellees (Apr. 5, 2012)
• 2012 WL 363897 (Appellate Brief) Appellants' Opening Brief (Jan. 26, 2012) Original Image of this Document (PDF)
• 2012 WL 248179 (Appellate Brief) Appellants Lisa R. Kirby, Neal L. Kirby, Susan M. Kirby and Barbara J. Kirby's Opening Brief (Jan. 13, 2012) Original Image of this Document (PDF)
• 11-3333 (Docket) (Aug. 16, 2011)

Judges and Attorneys (Back to top)

Judges | Attorneys

Judges

Cabranes, Hon. Jose A.

United States Court of Appeals, Second Circuit

New York, New York 10007

Carney, Hon. Susan L.

United States Court of Appeals, Second Circuit

New York, New York 10007

Litigation History Report | Judicial Reversal Report | Judicial Expert Challenge Report | Profiler

McMahon, Hon. Colleen

United States District Court, Southern New York

New York, New York 10007-1312

Litigation History Report | Judicial Motion Report | Judicial Reversal Report | Judicial Expert Challenge Report | Profiler

Sack, Hon. Robert D.

United States Court of Appeals, Second Circuit

New York, New York 10007

Litigation History Report | Judicial Reversal Report | Judicial Expert Challenge Report | Profiler

Attorneys

Attorneys for Defendant

Toberoff, Marc

Beverly Hills, California 90212

Other Attorneys

Fleischer, David

New York, New York 10112

Quinn, James W.

New York, New York 10153

Rich, R. Bruce

New York, New York 10153

Silbert, Gregory

New York, New York 10153

Singer, Randi W.

New York, New York 10153

Briefs and Other Related Documents

END OF DOCUMENT

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Jacob Kurtzberg

	1. Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813, C.A.2 (N.Y.), August 08, 2013 (NO. 11-3333-CV)
		... United States Court of Appeals, Second Circuit. MARVEL CHARACTERS, INCORPORATED Marvel Worldwide , Incorporated, MVL Rights, LLC , Plaintiffs–Counter–Defendants–Appellees, Walt Disney Company Marvel Entertainment , Incorporated, Counter–Defendants–Appellees, v. Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter... ...of the most influential comic book artists of all time. At various times throughout his career, he produced drawings for Marvel Comics, a comic book publisher that has since grown into the multifaceted enterprise reflected in the case caption: Marvel Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, and Marvel Entertainment, Inc. (collectively, “Marvel”). At issue here are the rights to drawings Kirby allegedly created between 1958 and 1963. The Kirbys appeal from the district court's grant of summary judgment to Marvel, which was based on the conclusion that all of the works at issue are “works made for hire” within the... ...their favor. See, e.g., Singer v. Ferro, 711 F.3d 334, 339 (2d Cir.2013) Jack Kirby Jack Kirby, born Jacob Kurtzberg in New York City's Lower East Side in 1917, began his career in the comic book business in the late......

Tag to Print 2		2. Marvel Worldwide, Inc. v. Kirby, 756 F.Supp.2d 461, S.D.N.Y., November 22, 2010 (NO. 10 CIV. 141 CM KNF)
		... United States District Court, S.D. New York. MARVEL WORLDWIDE, INC. Marvel Characters, Inc. and MVL Rights, LLC , Plaintiffs, v. Lisa R. KIRBY, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Defendants. Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Counterclaim–Plaintiffs, v. Marvel Worldwide, Inc. Marvel Characters, Inc. MVL Rights, LLC Marvel Entertainment, Inc. The Walt Disney Company , and Does 1 through 10, Counterclaim–Defendants. No. 10 Civ. 141 (CM)(KNF). Nov... ...Defendants. DECISION AND ORDER GRANTING IN PART AND DENYING IN PART COUNTERCLAIM–DEFENDANTS' MOTION TO DISMISS McMAHON , District Judge. Plaintiffs Marvel Worldwide, Inc., Marvel Characters, Inc., and MVL Rights, LLC (collectively “Marvel”) commenced this action seeking declaratory relief as to the work-for-hire status of the comic-book stories and characters... ...Kirby, Neal L. Kirby, and Susan M. Kirby (collectively, the “Kirbys”) counterclaimed for declaratory relief and joined additional Counterclaim–Defendants Marvel Entertainment, Inc. (“Marvel Entertainment”), The Walt Disney Company (“Disney”), and Does 1 through 10. Presently before this Court is the Counterclaim–Defendants' motion to dismiss the five counterclaims alleged by the Kirbys. The Counterclaim–Defendants also move to dismiss Marvel Entertainment and Disney as Counterclaim–Defendants. For the following reasons, the Counterclaim–Defendants' motion to dismiss the second, third, fourth......

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Kirby v. Sega of America, Inc.

Kirby v. Sega of America, Inc.
144 Cal.App.4th 47, 50 Cal.Rptr.3d 607
Cal.App. 2 Dist.,2006.
September 25, 2006 (Approx. 14 pages)

144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 81 U.S.P.Q.2d 1172, 35 Media L. Rep. 1075, 06 Cal. Daily Op. Serv. 9978, 2006 Daily Journal D.A.R. 14,190

Judges and Attorneys

Court of Appeal, Second District,
Division 8.

Kierin KIRBY, Plaintiff and Appellant,
v.
SEGA OF AMERICA, INC. et al., Defendants and Respondents.

No. B183820.Sept. 25, 2006.

Background: Celebrity sued distributors of video game asserting claims for common law right of publicity, statutory misappropriation of likeness, unfair competition, interference with prospective business advantage, and a violation of the Lanham Act based on the alleged use of her likeness and identity to create a character in the game. The Superior Court, Los Angeles County, James C. Chalfant, J., entered summary judgment in defendants' favor. Celebrity appealed.

Holding: The Court of Appeal, Boland, J., held that the video game character was transformative and protected by the First Amendment.

Affirmed and remanded with directions.

West Headnotes

[1] KeyCite Citing References for this Headnote

379 Torts
379IV Privacy and Publicity
379IV(C) Use of Name, Voice or Likeness; Right to Publicity
   379k386 Conduct or Misappropriation Actionable in General
      379k390 Picture, Photograph, or Likeness
      379k390(1) k. In General. Most Cited Cases

In the context of a celebrity, the “invasion of privacy” tort for appropriation turns on a right of publicity arising from commercially exploitable opportunities embodied in the plaintiff's likeness.

[2] KeyCite Citing References for this Headnote

379 Torts
379IV Privacy and Publicity
379IV(C) Use of Name, Voice or Likeness; Right to Publicity
379k385 k. Elements of the Tort in General. Most Cited Cases

The elements of a common law claim for invasion of privacy for appropriation are the unauthorized use of the plaintiff's identity to the defendant's advantage by appropriating the plaintiff's name, voice, likeness, etc., commercially or otherwise, and resulting injury.

[3] KeyCite Citing References for this Headnote

379 Torts
379IV Privacy and Publicity
379IV(C) Use of Name, Voice or Likeness; Right to Publicity
379k383 k. In General. Most Cited Cases

379 Torts KeyCite Citing References for this Headnote
379IV Privacy and Publicity
379IV(D) Actions in General
379k411 k. Nature and Form of Remedy. Most Cited Cases

The legislative prohibition against the unauthorized appropriation of one's likeness was intended to complement, not supplant, common law claims for “right of publicity.” West's Ann.Cal.Civ.Code § 3344(a).

[4] KeyCite Citing References for this Headnote

29T Antitrust and Trade Regulation
29TII Unfair Competition
29TII(A) In General
29Tk30 k. Sponsorship, Approval, or Connection, Representations Concerning. Most Cited Cases

The Lanham Act is the federal equivalent of a right of publicity claim; it protects against use of a celebrity's image or persona in connection with a product in a manner likely to falsely imply a celebrity product endorsement. Lanham Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.

[5] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(A) In General
   92XVIII(A)1 In General
      92k1490 k. In General. Most Cited Cases
      (Formerly 92k90(1))

The freedom of expression protected by the First Amendment exists to preserve an uninhibited marketplace of ideas and to further individual rights of self expression. U.S.C.A. Const.Amend. 1.

[6] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(A) In General
   92XVIII(A)1 In General
      92k1490 k. In General. Most Cited Cases
      (Formerly 92k90.1(6), 92k90(1))

92 Constitutional Law KeyCite Citing References for this Headnote
92XVIII Freedom of Speech, Expression, and Press
92XVIII(A) In General
   92XVIII(A)3 Particular Issues and Applications in General
      92k1576 k. Art. Most Cited Cases
      (Formerly 92k90.1(1))

92 Constitutional Law KeyCite Citing References for this Headnote
92XVIII Freedom of Speech, Expression, and Press
92XVIII(N) Entertainment
   92k1885 k. In General. Most Cited Cases
      (Formerly 92k90.1(6), 92k90(1))

First Amendment protections may extend to all forms of expression, including written and spoken words, be they fact or fiction, and music, films, paintings, and entertainment, whether or not sold for a profit. U.S.C.A. Const.Amend. 1.

[7] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(A) In General
   92XVIII(A)2 Commercial Speech in General
      92k1540 k. Unlawful Speech or Activities. Most Cited Cases
      (Formerly 92k90.2)

Even commercial speech receives significant First Amendment protection, unless it is false and misleading, in which case it receives no protection. U.S.C.A. Const.Amend. 1.

[8] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(N) Entertainment
   92k1898 Video and Computer Games
      92k1899 k. In General. Most Cited Cases
      (Formerly 92k90.1(6))

Video games are expressive works entitled to as much First Amendment protection as the most profound literature. U.S.C.A. Const.Amend. 1.

[9] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(D) False Statements in General
92k1630 k. Right of Publicity; Misappropriation of Likeness, Name, or Celebrity Status. Most Cited Cases
(Formerly 92k90.1(1))

To maintain the balance between a celebrity's right to control the commercial exploitation of his or her likeness or identity and the First Amendment right of free expression, a defendant may raise the First Amendment as an affirmative defense to a celebrity's allegation of misappropriation of likeness if the defendant's work adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message, so that the new work contains significant transformative elements. U.S.C.A. Const.Amend. 1.

[10] KeyCite Citing References for this Headnote

92 Constitutional Law
92XVIII Freedom of Speech, Expression, and Press
92XVIII(D) False Statements in General
92k1630 k. Right of Publicity; Misappropriation of Likeness, Name, or Celebrity Status. Most Cited Cases
(Formerly 92k90.1(1))

If a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression of what he or she is trying to create or portray, rather than the celebrity's likeness, it is protected by the First Amendment. U.S.C.A. Const.Amend. 1.

[11] KeyCite Citing References for this Headnote

29T Antitrust and Trade Regulation
29TII Unfair Competition
29TII(B) Actions and Proceedings
   29Tk66 Defenses
      29Tk67 k. In General. Most Cited Cases

92 Constitutional Law KeyCite Citing References for this Headnote
92XVIII Freedom of Speech, Expression, and Press
92XVIII(C) Trade or Business
   92k1602 k. Unfair Trade Practices. Most Cited Cases
      (Formerly 92k90.1(6))

92 Constitutional Law KeyCite Citing References for this Headnote
92XVIII Freedom of Speech, Expression, and Press
92XVIII(C) Trade or Business
   92k1604 k. Trademarks and Trade Names. Most Cited Cases
      (Formerly 92k90.1(6))

92 Constitutional Law KeyCite Citing References for this Headnote
92XVIII Freedom of Speech, Expression, and Press
92XVIII(E) Advertising and Signs
   92XVIII(E)2 Advertising
      92k1652 k. Right of Publicity; Misappropriation of Likeness, Name, or Celebrity Status. Most Cited Cases
      (Formerly 92k90.1(6))

379 Torts KeyCite Citing References for this Headnote
379III Tortious Interference
379III(B) Business or Contractual Relations
   379III(B)2 Particular Cases
      379k241 k. Business Relations or Economic Advantage, in General. Most Cited Cases

379 Torts KeyCite Citing References for this Headnote
379IV Privacy and Publicity
379IV(C) Use of Name, Voice or Likeness; Right to Publicity
   379k391 k. Defenses in General. Most Cited Cases

Video game character was transformative and protected by the First Amendment; notwithstanding certain similarities between character and celebrity who alleged claims for infringement of her common law right of publicity, statutory misappropriation of likeness, unfair competition, interference with prospective business advantage, and a Lanham Act violation against game distributors, First Amendment afforded distributors a complete defense to all of those claims, since the game character contained sufficient expressive dissimilar content to constitute a protected transformative work. U.S.C.A. Const.Amend. 1; Lanham Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.; West's Ann.Cal.Bus. & Prof.Code § 17200; West's Ann.Cal.Civ.Code § 3344(a).

See 5 Witkin, Summary of Cal. Law (10th ed. 2005) Torts, § 680; Annot., First Amendment Protection Afforded to Commercial and Home Video Games, 106 A.L.R.5th 337.

[12] KeyCite Citing References for this Headnote

106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
   106k88 Previous Decisions as Controlling or as Precedents
      106k91 Decisions of Higher Court or Court of Last Resort
      106k91(1) k. Highest Appellate Court. Most Cited Cases

106 Courts KeyCite Citing References for this Headnote
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
   106k88 Previous Decisions as Controlling or as Precedents
      106k95 Decisions of Courts of Other State
      106k95(1) k. In General. Most Cited Cases

The Court of Appeal is bound to follow the decisions of the state Supreme Court, not those of another state.

[13] KeyCite Citing References for this Headnote

102 Costs
102VIII Attorney Fees
102k194.24 Particular Actions or Proceedings
102k194.25 k. In General. Most Cited Cases

Video game distributors who prevailed in asserting First Amendment defense to celebrity's misappropriation of likeness claim were entitled to mandatory award of attorney fees. U.S.C.A. Const.Amend. 1; West's Ann.Cal.Civ.Code § 3344(a).

[14] KeyCite Citing References for this Headnote

102 Costs
102X On Appeal or Error
102k252 k. Attorney Fees on Appeal or Error. Most Cited Cases

Statutory authorization for the recovery of attorney fees incurred at trial necessarily includes attorney fees incurred on appeal unless the statute specifically provides otherwise.

**608 Blecher & Collins, Maxwell M. Blecher and Courtney A. Palko, Los Angeles, for Appellant.

Baker & McKenzie, Tod L. Gamlen, Keith L. Wurster, Palo Alto, and Christopher J. Keller, San Francisco, for Respondents Sega of America, Inc., AGETEC, Inc. and THQ, Inc.

BOLAND, J.

*50 SUMMARY

A celebrity sued distributors of a video game alleging that, in creating a character in the video game, the distributors misappropriated her likeness and identity in violation of state and federal law. The distributors moved for summary judgment asserting the First Amendment provided a complete defense to each of the celebrity plaintiff's claims. The trial court agreed, **609 granted the motions, and subsequently awarded the distributors mandatory attorney's fees, as prevailing parties under Civil Code section 3344, subdivision (a). We affirm the judgment and remand for a determination regarding the amount of attorney's fees.

FACTUAL AND PROCEDURAL BACKGROUND

From 1986 to approximately 1995, appellant Keirin Kirby, professionally known as “Lady Miss Kier,” “Miss Kier” or “Lady Kier” (hereafter, Kirby) was the lead singer of a retro-funk-dance musical group known as “Deee–Lite” which was popular in the early 1990's. Deee–Lite made five albums which were distributed and sold throughout the world. The band was best known for its song “ Groove is in the Heart ” from its first album released in *51 1990. The song's music video, which received extensive airplay on MTV, features band members clad in “funky retro outfits, vivid graphics, groovy dance moves, a futuristic setting and an overall party feel.”

In addition to being a musician, Kirby is a dancer, artist, choreographer and fashion designer. Kirby insists that, as “Lady Kier,” she developed a “specific, distinctive ... look,” of a “fashionable, provocative, and funky diva-like artistic character.” Kirby claims her “unique public identity,” which combines retro and futuristic visual and musical styles, results from her signature costumes and lyrical expression. Kirby's costumes included platform shoes, knee-socks, brightly-colored form-fitting clothes and unitards, short pleated or cheerleader-type skirts, bare midriffs, cropped tops with words or a numeral written on the chest, space or other helmets, a blue backpack, and red/pink hair worn in a “page-boy flip” held back by a headband, pigtails and other styles. Kirby alleges her “signature” lyrical expression, with which she introduces herself in the opening of the music video for “ Groove is in the Heart,” and which is included in three of her songs, is “ooh la la.” Kirby claims substantial, commercially valuable goodwill in her sound, appearance, persona and likeness.

Deee–Lite disbanded by the mid–1990's. Since then, Kirby has been involved in preparing—but has not released—an album of her own, and does not pursue publicity or grant press interviews. She alleges she has been and is regularly approached by advertisers and manufacturers interested in licensing her name and likeness to sell products. Kirby declines most offers, but derives some income from commercial endorsements.

Respondents are distributors of a videogame called “Space Channel 5” (SC5, or the game). SC5 was created from 1997–1999 by Takashi Yuda, an employee of Sega Japan, and was released in Japan in December 1999. Yuda originally conceived the main character as a male, but changed the character to a female in order to develop a video game to appeal to girls. Yuda testified the name “Ulala” was a derivative of a Japanese name “Urara,” modified to make it easier for English-speakers to pronounce. Yuda claims he developed the Ulala character based on the “anime” style of Japanese cartoon characters, and denied using Kirby as a reference. Ulala has six main dance moves (up, down, right, left, forward and backward). The character's dance moves were created by Nahoko Nezu, a Japanese choreographer and dancer. Nezu's dance moves were hers alone. At the time she created the moves, Nezu did not know Kirby, and had not ever heard of her. Nezu created and performed dance moves for Ulala at Yuda's direction. He videotaped the moves and used the tapes to create Ulala's dance moves in the game. **610 The musical theme song for SC5 is “ Mexican Flyer.” That song, written in the 1960's, is performed by composer Ken Woodman. The music is not based on, or used in reference to, any music by Deee–Lite or Kirby.

*52 The game, set in outer space in the 25th Century, features the computer-generated image of a young, fictional elongated and extremely thin female reporter named “Ulala” who works for a news channel called Space Channel 5. In the game, Ulala wears a few different costumes, but is primarily seen in an almost entirely orange outfit which includes a midriff-exposing top bearing the numeral “5,” a mini-skirt, elbow-length gloves, and stiletto-heeled, knee-high platform boots. Her hot pink hair is always worn in short pigtails placed high on the back of her head, and she wears a blue headset and jet pack and a blue gun holster strapped to her right thigh. Orange and blue were chosen as the primary colors for Ulala's costume because orange is the official color of Dreamcast, and the corporate color of Sega Japan is blue.

In the game, Ulala is dispatched to investigate an invasion of Earth by dance-loving aliens who shoot earthlings with ray guns, causing them to dance uncontrollably. During her investigation, Ulala encounters the aliens and competitor reporters. The player attempts to have Ulala match the dance moves of the other characters. If successful, the player acquires points, eliminates certain characters, and causes others to become part of Ulala's dance troupe. The player moves to higher levels of more difficult play until he or she reaches a final level and a surprise ending to Ulala's story. One character at the final level is known as “Space Michael.” It was created to resemble the celebrity Michael Jackson, who performed the character's voice and receives credit in the game.

Several promotional products are associated with the game. Sega produced a give-away promotional video with samples of music from SC5. Sega also sub-licensed the sale of three Ulala-related products in the United States: (1) a strategy guide for playing SC5; (2) a lunch box displaying characters from the game, including Ulala; and (3) a “Hot Wheels” car containing a picture of Ulala.

Respondent Sega of America, Inc. (Sega) released a “localized” version of the game in North America in June 2000. The localized North American version differs from the Japanese version in that voices are different, and the language is changed to English.

In July 2000, Kirby was contacted by PD*3 Tully Co. (PD3), a firm retained by a subsidiary of Sega Japan, in connection with its effort to launch a version of SC5 in England. PD3 was considering using one of several music videos or songs, including Groove is in the Heart, to promote the game. PD3 contacted Kirby to determine if she was interested in promoting the SC5 in England and, possibly, Europe. Kirby was not.

Under a license granted by Sega Japan, respondent THQ, Inc. (THQ) was authorized to release and market a hand-held version of SC5 in June 2003 for *53 use on the Nintendo Gameboy Advance platform. Later that year, respondent Agetec, Inc. (Agetec) received Sega's authorization to market a special edition of the game for the “Playstation 2” platform.^FN1

FN1. The special edition consisted of SC5, originally published for the Dreamcast platform, and a sequel, SC5 Part 2, which had been released in Japan for both the Dreamcast and Playstation 2 platforms.

Kirby initiated this action in April 2003. The operative second amended complaint **611 alleges causes of action for: (1) common law infringement of the right of publicity; (2) misappropriation of likeness (Civ.Code, § 3344); (3) violation of the Lanham Act (15 U.S.C. § 1125(a)); (4) unfair competition (Bus. & Prof.Code, § 17200); (5) interference with prospective business advantage; and (6) unjust enrichment. Kirby alleged respondents wrongfully used her name, likeness and identity in developing and marketing the game and, specifically, its Ulala character.

Sega, Agetec and THQ each moved for summary judgment asserting Kirby could not establish all elements of her claims and, even if she could, the First Amendment provided a complete defense to the entire action.^FN2 The motions were granted after the trial court found all claims constitutionally foreclosed.

FN2. Sega also argued the action was barred by the statute of limitations, and Agetec and THQ asserted the defense of laches. The trial court declined to address those arguments, which are not at issue in this appeal.

Respondents subsequently moved for a “mandatory” award of attorneys fees in the amount of approximately $763,000, collectively. (Civ.Code, § 3344, subd. (a).) Kirby opposed the motion, arguing the “mandatory” fee provision of Civil Code section 3344 created public policy concerns. She also asserted the amount of fees sought was unreasonable, any fees awarded must be apportioned among the state claims, and no fees should be awarded on the federal claim. The trial court declined to award fees on the Lanham Act claim and reduced the fee award to approximately $608,000, but granted the remainder of the motion. This appeal followed.

DISCUSSION

1. Standard of review.

The standard of review articulated by the Supreme Court applies in this case. In Aguilar v. Atlantic Richfield Co. (2001) 25 Cal.4th 826, 107 Cal.Rptr.2d 841, 24 P.3d 493, the Supreme Court described a party's burdens on summary judgment. “[F]rom commencement to conclusion, the party moving for summary judgment bears the burden of persuasion that there is no triable issue of material fact and that he is entitled to *54 judgment as a matter of law.” ( Id. at p. 850, 107 Cal.Rptr.2d 841, 24 P.3d 493.) “ ‘That is because of the general principle that a party who seeks a court's action in his favor bears the burden of persuasion thereon. [Citation.] There is a triable issue of material fact if, and only if, the evidence would allow a reasonable trier of fact to find the underlying fact in favor of the party opposing the motion in accordance with the applicable standard of proof.... [Citation.]’ ” ( TrafficSchoolOnline, Inc. v. Clarke (2003) 112 Cal.App.4th 736, 738, 739, 5 Cal.Rptr.3d 408.) A defendant moving for summary judgment satisfies its burden of showing a claim lacks merit if the defendant can show one or more elements of a cause of action cannot be established because the plaintiff does not possess and cannot reasonably obtain the evidence necessary to establish the claim, or a complete defense to that cause of action exists. (Code Civ. Proc., § 437c, subds. ( o )(2), (p)(2).); ( Aguilar, supra, 25 Cal.4th at pp. 849, 854–855, 107 Cal.Rptr.2d 841, 24 P.3d 493.) If this burden of production is met, the burden shifts to the plaintiff to set forth specific facts sufficient to establish a prima facie showing of the existence of a triable material issue of fact. (Code Civ. Proc., § 437c, subds. ( o )(2), (p)(2); Aguilar, supra, 25 Cal.4th at p. 854, 107 Cal.Rptr.2d 841, 24 P.3d 493.)

**612 In cases involving free speech, a speedy resolution is desirable because protracted litigation may chill the exercise of First Amendment rights. For that reason, summary judgment is a favored remedy in free speech cases. ( Winter v. DC Comics (2003) 30 Cal.4th 881, 891–892, 134 Cal.Rptr.2d 634, 69 P.3d 473 ( Winter ); Shulman v. Group W Productions, Inc. (1998) 18 Cal.4th 200, 228, 74 Cal.Rptr.2d 843, 955 P.2d 469.) Indeed, in an appropriation case not dissimilar from this one, the Supreme Court instructed that: “courts can often resolve the question as a matter of law simply by viewing the work in question and, if necessary, comparing it to an actual likeness of the person or persons portrayed. Because of these circumstances, an action presenting this issue is often properly resolved on summary judgment....” ( Winter, supra, 30 Cal.4th at pp. 891–892, 134 Cal.Rptr.2d 634, 69 P.3d 473.) The trial court's decision to enter summary judgment is reviewed de novo. However, if the decision is correct on any ground, the judgment must be upheld regardless of the reasons given by the trial court. ( TrafficSchoolOnline, Inc. v. Clarke, supra, 112 Cal.App.4th at pp. 738–739, 5 Cal.Rptr.3d 408.)

2. Material issues of fact exist as to whether Kirby's likeness or identity was appropriated.

a. The state statutory and common law claims of appropriation.

Kirby alleges both a common law and statutory appropriation claim, a claim for violation of the Lanham Act, and several claims related to unfair competition. Her claims are predicated on the same underlying misconduct, i.e., respondents' alleged misappropriation and exploitation of Kirby's likeness or identity as depicted by the game's Ulala character.

*55 In the context of a celebrity, the “invasion of privacy” tort for appropriation turns on a right of publicity arising from commercially exploitable opportunities embodied in the plaintiff's likeness. ( Baugh v. CBS, Inc. (N.D.Cal.1993) 828 F.Supp. 745.) The cause of action may be both common law and statutory. The elements of a common law action are the unauthorized use of the plaintiff's identity to the defendant's advantage by appropriating the plaintiff's name, voice, likeness, etc., commercially or otherwise, and resulting injury. ( Eastwood v. Superior Court (1983) 149 Cal.App.3d 409, 417, fn. 6, 198 Cal.Rptr. 342.)

The statutory claim provides: “Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, ... shall be liable for any damages sustained by the person or persons injured as a result thereof.” (Civ.Code, § 3344, subd. (a) [section 3344, subdivision (a) ].) The legislative prohibition against the unauthorized appropriation of one's likeness was intended to complement, not supplant, common law claims for “right of publicity.” ( Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387, 391, 106 Cal.Rptr.2d 126, 21 P.3d 797 ( Comedy III ); Eastwood v. Superior Court, supra, 149 Cal.App.3d at pp. 416–417, 198 Cal.Rptr. 342.) The common law and statutory claims are similar but not identical, but both are involved here. A statutory cause of action for appropriation not only encompasses the common law elements, it requires a knowing use of the plaintiff's name, likeness, etc. ( Eastwood v. Superior Court, supra, 149 Cal.App.3d at pp. 417–418, 198 Cal.Rptr. 342; § 3344, subd. **613 (a).) The privacy invasion is actionable under either the statute or common law regardless of whether the purpose is commercial. (See KNB Enterprises v. Matthews (2000) 78 Cal.App.4th 362, 367–368, fn. 5, 92 Cal.Rptr.2d 713.)

Kirby repeatedly insists the trial court found, as a matter of law, that her “likeness and identity had been misappropriated.” Her insistence is not supported by the record. The trial court found only the existence of material factual issues as to whether, by creating Ulala, respondents misappropriated Kirby's likeness and identity. Our review of the record reveals the court's conclusion was correct.

The misappropriation of one's “likeness” refers to a person's visual image. ( Midler v. Ford Motor Co. (9th Cir.1988) 849 F.2d 460, 463.) Ulala resembles Kirby in certain respects. Certain of Ulala's characteristics and computer-generated features resemble Kirby's. Both images are thin, and have similarly shaped eyes and faces, red lips and red or pink hair. Both wear brightly-colored, form-fitting clothing, including short skirts and platform *56 shoes in a 1960's retro style. In addition, Ulala's name is a phonetic variant of “ooh la la,” a phrase often used by Kirby and associated with Kirby. Finally, as the trial court pointed out, both Kirby and Ulala used the phrases “groove,” “meow,” “dee-lish,” and “I won't give up.” These similarities support Kirby's contention her identity was misappropriated.

However, Ulala and Kirby also differ in significant respects. Although Ulala dons assorted costumes in the game, she is seen most often with her hair in short, high pigtails, wearing an orange cropped-top bearing the numeral “5” and orange miniskirt, orange gloves and boots with stiletto heels, a blue ray-gun holster strapped to her thigh, and a blue headset and jetpack. Kirby asserts she often wears short skirts, crop tops with numbers, elbow-length gloves, pigtails and space helmets. Kirby, as the record reflects, is found more frequently in form-fitting body suits, with her hair shaped into a page-boy flip, held back with a head band. And, unlike Ulala, when Kirby wears her hair in pigtails, the pigtails not only are longer than Ulala's, but Kirby has tendrils of hair draping over her forehead which she holds back with clips. Kirby concedes she has no singular identity, her appearance and visual style are “continually moving,” and she “is not the type of artist that wants to do the same thing every time.” This lack of stasis is inconsistent with a claim of appropriation. Moreover, unlike the game, which is set in outer space several centuries in the future, Kirby's fashion approach harkens back to a retro 1960's style, and neither her videos nor photographs relate to outer space.

Notwithstanding the differences between Kirby and Ulala, we agree with the trial court that a material factual issue exists as to whether respondents misappropriated Kirby's likeness. Ulala's facial features, her clothing, hair color and style, and use of certain catch phrases are sufficiently reminiscent enough of Kirby's features and personal style to suggest imitation. In addition, although no evidence indicates Kirby's likeness was actually used to create Ulala, Kirby was specifically asked by a Sega affiliate in 2003 to endorse SC5. This solicitation suggests Sega knew of Kirby and believed her celebrity association would benefit the release of the European version of the game.

The differences also give rise to a factual issue on the common law claim of misappropriation of Kirby's identity. Again, Kirby's admission that she possesses no singular identity militates against a successful claim of appropriation. (Compare **614 White v. Samsung Electronics America, Inc. (9th Cir.1992) 971 F.2d 1395, 1399 [Nonconsensual use of robotic image of celebrity Vanna White, dressed in wig, gown and jewelry regularly worn by White, turning letters on a game show set designed to look like the “Wheel of Fortune,” constitutes common law appropriation of celebrity's singular identity].) In *57 addition, we agree with the trial court that Ulala's limited and consistently short and choppy dance movement and style differ markedly from Kirby's, a finding consistent with Sega's claim that Ulala's dance moves were created by a dancer who knew nothing of Kirby. Nevertheless, the differences are sufficient to give rise to a triable factual issue on the common law claim as well.^FN3

FN3. Kirby's remaining state law claims—unfair competition in violation of Business and Professions Code section 17200, interference with prospective business advantage and accounting-ride the coattails of her privacy claims. That is, each is predicated on the unauthorized appropriation of her likeness or identity. As such, material issues of fact exist as to these claims as well.

b. The Lanham Act.

The Lanham Act is the federal equivalent of a right of publicity claim. It protects against use of a celebrity's image or persona in connection with a product in a manner likely to falsely imply a celebrity product endorsement. ( ETW Corp. v. Jireh Pub., Inc. (6th Cir.2003) 332 F.3d 915, 924) ( ETW ). Critical to a Lanham Act claim is the likelihood reasonable consumers will be confused about the celebrity's endorsement. ( Id. at pp. 925–926.) For reasons discussed above, we agree with the trial court's finding that “[t]he same issues of fact concerning likeness and identity which support [Kirby's] appropriation claims also support her Lanham Act claim. There is a question of fact that [Kirby's] identity, though constantly evolving, has been appropriated for SC5.” ^FN4

FN4. Ordinarily, a Lanham Act claim requires analysis of the key element of false endorsement which is not required by the state law appropriation claims. In other words, the court must evaluate the likelihood an ordinary consumer would reasonably believe the celebrity endorsed or sponsored the product or service at issue. (See e.g., White v. Samsung Electronics America, Inc., supra, 971 F.2d at p. 1401.) That evaluation need not be conducted here. The test does not apply in a case such as this, in which there is a colorable defense that the use of the celebrity's likeness or identity is entitled to First Amendment protection. ( ETW, supra, 332 F.3d at p. 926.)

3. The First Amendment affords a complete defense to Kirby's claims.

Respondents contend here, as they did below, that their right of free expression under the First Amendment of the United States Constitution and the even greater speech protections afforded by the California Constitution, Article I, section 2, provide a complete defense to Kirby's claims. (See Robins v. Pruneyard Shopping Center (1979) 23 Cal.3d 899, 153 Cal.Rptr. 854, 592 P.2d 341 [Cal. Const. provides broader speech protection than does U.S. Const.].) The trial court agreed, as do we.

The freedom of expression protected by the First Amendment exists to preserve an uninhibited marketplace of ideas and to further individual *58 rights of self expression. ( Winter, supra, 30 Cal.4th at p. 887, 134 Cal.Rptr.2d 634, 69 P.3d 473.) The protections may extend to all forms of expression, including written and spoken words (fact or fiction), music, films, paintings, and entertainment, whether or not sold for a profit. ^FN5 **615 ( Comedy III, supra, 25 Cal.4th at pp. 387, 406, 106 Cal.Rptr.2d 126, 21 P.3d 797; Winter, supra, 30 Cal.4th at p. 888, 134 Cal.Rptr.2d 634, 69 P.3d 473; ETW, supra, 332 F.3d at p. 924.) Video games are expressive works entitled to as much First Amendment protection as the most profound literature. ( Interactive Digital Software v. St. Louis County (8th Cir.2003) 329 F.3d 954, 956–958; Video Software Dealers Ass'n v. Maleng (W.D.Wash.2004) 325 F.Supp.2d 1180, 1184–1185.)

FN5. Even commercial speech receives significant First Amendment protection, unless it is false and misleading, in which case it receives no protection. (See Comedy III, supra, 25 Cal.4th at p. 396, 106 Cal.Rptr.2d 126, 21 P.3d 797.)

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As this case illustrates, a tension frequently exists between the First Amendment's goal of fostering a marketplace of ideas and respect for individual expression, and a celebrity's right of publicity. In Comedy III and again in Winter, the Supreme Court addressed the balance between a celebrity's right to control the commercial exploitation of his or her likeness or identity and the First Amendment right of free expression. (See Comedy III, supra, 25 Cal.4th at p. 400, 106 Cal.Rptr.2d 126, 21 P.3d 797; Winter, supra, 30 Cal.4th at pp. 887–888, 134 Cal.Rptr.2d 634, 69 P.3d 473.) In Comedy III, the Court held a defendant may raise the First Amendment as an affirmative defense to an allegation of appropriation if the defendant's work “ ‘adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.... [Citation.]’ ” ( Comedy III, supra, 25 Cal.4th at p. 404, 106 Cal.Rptr.2d 126, 21 P.3d 797.) In other words, the new work must contain significant “transformative elements.” ( Id. at pp. 406–407, 106 Cal.Rptr.2d 126, 21 P.3d 797.) The “transformative” test protects the right of publicity. It continues to shield celebrities from literal depictions or imitations for commercial gain by works which do not add significant new expression. Moreover, a work which has been “transformed” is less likely to interfere with the economic interests protected by the right of publicity, because a distorted image of a celebrity is a poor substitute for more conventional forms of celebrity depictions, and thus less likely to threaten the market for celebrity memorabilia. ( Comedy III, supra, 25 Cal.4th at p. 405, 106 Cal.Rptr.2d 126, 21 P.3d 797.)

[10]

The transformative test is straightforward: The “inquiry is whether the celebrity likeness is one of the ‘raw materials' from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.” ( Comedy III, supra, 25 Cal.4th at p. 406, 106 Cal.Rptr.2d 126, 21 P.3d 797.) If the “product containing the celebrity's likeness is so transformed that it has become primarily the defendant's own expression” of what he or she is trying to create or portray, rather than the celebrity's likeness, it is protected. ( Id. at pp. 406–407, 106 Cal.Rptr.2d 126, 21 P.3d 797.) Applying this test in Comedy III, which involved *59 drawings depicting The Three Stooges, and T-shirts made from those drawings, the Court concluded the drawings and T-shirts were not entitled to First Amendment protection. The artist who created them, while highly skilled, contributed nothing other than a trivial variation that transformed the drawings from literal likenesses of the three actors. ( Id. at pp. 408–409, 106 Cal.Rptr.2d 126, 21 P.3d 797.)

The Supreme Court applied the transformative test again two years later in Winter. In that case, the defendant published a series of comics featuring two half-worm, half-human characters based on singers Edgar and Johnny Winter. Both characters had long white hair and albino features similar to the Winter brothers, while one wore a hat similar to one often worn by Johnny Winter. **616 ( Winter, supra, 30 Cal.4th at p. 886, 134 Cal.Rptr.2d 634, 69 P.3d 473.)

The Winter brothers sued for statutory appropriation and lost. Applying the transformative test, the Court found the comic depictions contained significant expressive content beyond the Winters' mere likenesses. ( Winter, supra, 30 Cal.4th at p. 890, 134 Cal.Rptr.2d 634, 69 P.3d 473.) The Winters were merely part of the raw material from which the comics' plot and characters were fashioned. In addition, the characters were distorted pictures of the Winters for the purpose of lampoon, parody or caricature. In short, and in stark contrast to the near literal depictions of the Three Stooges in Comedy III, the comic book characters depicted were “fanciful, creative characters, not pictures of the Winter brothers.” ( Id. at p. 892, 134 Cal.Rptr.2d 634, 69 P.3d 473.)

[11]

Applying the comparison required by Comedy III and Winter to the evidence in the record, we agree with the trial court that, notwithstanding certain similarities, Ulala is more than a mere likeness or literal depiction of Kirby. Ulala contains sufficient expressive content to constitute a “transformative work” under the test articulated by the Supreme Court. First, Ulala is not a literal depiction of Kirby. As discussed above, the two share similarities. However, they also differ quite a bit: Ulala's extremely tall, slender computer-generated physique is dissimilar from Kirby's. Evidence also indicated Ulala was based, at least in part, on the Japanese style of “anime.” Ulala's typical hairstyle and primary costume differ from those worn by Kirby who varied her costumes and outfits, and wore her hair in several styles. Moreover, the setting for the game that features Ulala—as a space-age reporter in the 25th century—is unlike any public depiction of Kirby. Finally, we agree with the trial court that the dance moves performed by Ulala—typically short, quick movements of the arms, legs and head—are unlike Kirby's movements in any of her music videos. Taken together, these differences demonstrate Ulala is “transformative,” and respondents added creative elements to create a new expression.

Conceding the game adds “new expression,” Kirby nevertheless contends respondents violated her right of privacy because, unlike the comics in Winter *60 which were intended to “poke fun,” the game lacks any “element of caricature, lampoon, or parody.” Notwithstanding the added expression, Kirby insists Ulala is no more than a “look-alike, an imitation or emulation or rip-off of Lady Kier's entire persona,” co-opted by respondents with the “commercial objective to us[e] Lady Kier's likeness and identity” and to capitalize in the game and its affiliated products on the commercial value attached to her persona. Kirby insists “Ulala is nothing other than a mere emulation of Lady Kier with minor digital enhancements and manipulations.” It is not entitled to First Amendment protection because the character fails to “say [anything]—whether factual or critical or comedic—about a public figure.” Neither contention has merit.

First, for the reasons discussed above, we reject the claim that Ulala merely emulates Kirby. Sufficient similarities preclude a conclusion that, as a matter of law, Ulala was not based in part on Kirby. However, we are similarly unable to conclude, as a matter of law, that Ulala is nothing other than an imitative character contrived of “minor digital enhancements and manipulations.” Respondents have added new expression, and the differences are not trivial. Ulala is not a mere imitation of Kirby.

Second, and more importantly, the transformative test specifically does not require the elements Kirby seeks to impose.**617 The law does not require Ulala to “say something—whether factual or critical or comedic” about Kirby the public figure in order to receive First Amendment protection. This argument has been soundly rejected by the Supreme Court. In Winter, the court made clear the pivotal issue is whether the work is transformative, not the form of literary expression: “It does not matter what precise literary category the work falls into. What matters is whether the work is transformative, not whether it is parody or satire or caricature or serious social commentary or any other specific form of expression.” ( Winter, supra, 30 Cal.4th at p. 891, 134 Cal.Rptr.2d 634, 69 P.3d 473.) Whether the Ulala character conveys any expressive meaning is irrelevant to a First Amendment defense. (See Comedy III, supra, 25 Cal.4th at pp. 399, 403, 106 Cal.Rptr.2d 126, 21 P.3d 797.) All that is necessary is that respondents' work add “something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” ( Id. at p. 404, 106 Cal.Rptr.2d 126, 21 P.3d 797.) A work is transformative if it adds “new expression.” That expression alone is sufficient; it need not convey any “meaning or message” ( Ibid.) The Ulala character satisfies this test.

[12]

Kirby alternatively invites us to “refine” the “transformative test developed by our Supreme Court, “because its application is confusing and difficult and the result uncertain,” or simply to reject the test outright in favor of the “predominant use” test recently adopted by the Missouri Supreme Court in Doe v. TCI Cablevision (Mo.2003) 110 S.W.3d 363, cert. *61 denied, 540 U.S. 1106, 124 S.Ct. 1058, 157 L.Ed.2d 892 (2004). We decline the invitation. First and foremost, we are bound to follow the decisions of our Supreme Court, not those of another state. ( McClung v. Employment Development Dept. (2004) 34 Cal.4th 467, 473, 20 Cal.Rptr.3d 428, 99 P.3d 1015.) “Courts exercising inferior jurisdiction must accept the law declared by courts of superior jurisdiction. It is not their function to attempt to overrule decisions of a higher court.” ( Auto Equity Sales, Inc. v. Superior Court (1962) 57 Cal.2d 450, 455, 20 Cal.Rptr. 321, 369 P.2d 937.) ^FN6

FN6. For the same reasons, we reject Kirby's assertion that we should ignore the standard established by Comedy III and Winter, and the rule that summary judgment is a favored remedy in First Amendment cases, and send the issue of whether respondents' work is “transformative” to the jury, under CACI 1805. This jury instruction applies only if a case presents a factual issue as to whether defendant has added new expression. In other cases, the Supreme Court has made it clear “courts can often resolve the question as a matter of law simply by viewing the work in question and, if necessary, comparing it to an actual likeness of the person ... portrayed.” ( Winter, supra, 30 Cal.4th at pp. 891–892, 134 Cal.Rptr.2d 634, 69 P.3d 473.) This case falls squarely into the latter category.

Second, we disagree that the transformative test requires refinement or is confusing or difficult—at least in this instance—to apply. The test simply requires the court to examine and compare the allegedly expressive work with the images of the plaintiff to discern if the defendant's work contributes significantly distinctive and expressive content; i.e., is “transformative.” If distinctions exist, the First Amendment bars claims based on appropriation of the plaintiff's identity or likeness; if not, the claims are not barred. ( Winter, supra, 30 Cal.4th at pp. 889–891, 134 Cal.Rptr.2d 634, 69 P.3d 473.) As aptly summed up by the trial court, “any imitation of [Kirby's] likeness or identity in Ulala is not the sum and substance of that character. Rather, the imitation is part of the raw material from which the Ulala character, and **618 SC[5], were synthesized. As in Winter, Ulala is a ‘fanciful, creative character’ who exists in the context of a unique and expressive video game. Similar facts distinguished Winter from Comedy III, and the same distinction applies here. [Respondents'] portrayal of Ulala is protected by the First Amendment.”

Because Kirby's claims are subject to a First Amendment defense, and the videogame is protected speech, Kirby's state common law and statutory claims fail. Kirby's Lanham Act claim is also barred. Ulala is not a literal depiction of Kirby. We agree with the trial court that any public confusion that Kirby endorses SC5, based on similarities between her and Ulala, would arise from a false assumption that the game could not contain a character resembling Kirby without her imprimatur. However, unlike the Three Stooges, Ulala is not a literal depiction of Kirby. Thus, given the many dissimilarities between the Ulala character and Kirby, any public confusion arising from a mistaken assumption is easily outweighed by the public interest in free artistic expression, so as to preclude application of the *62 Lanham Act. (See ETW, supra, 332 F.3d at p. 937; see also Hoffman v. Capital Cities/ABC, Inc. (9th Cir.2001) 255 F.3d 1180, 1183 [claims for violation of the Lanham Act, common law appropriation action, violation of § 3344, and violation of Bus. & Prof.Code, § 17200 each barred by First Amendment defense].)

4. Respondents are entitled to attorney's fees.

[13]

Section 3344, subdivision (a) clearly states that “[t]he prevailing party in any action under this section shall ... be entitled to attorney's fees and costs.” Under this provision, respondents sought approximately $763,000 in attorney's fees and costs, and ultimately received an award of approximately $608,000.^FN7 Kirby concedes section 3344 's directive that fees “shall” be awarded to the prevailing party in a statutory appropriation action is clearly mandatory. Nevertheless, she argues the statute should be applied permissively and only in cases in which the suit is deemed frivolous or brought in bad faith or without substantial justification. Otherwise, she insists, the statute “presents a clear disincentive for plaintiffs to enforce....” Her argument is misdirected. The mandatory fee provision of section 3344, subdivision (a) leaves no room for ambiguity. Whether the course is sound is not for us to say. ( People v. Ireland (1995) 33 Cal.App.4th 680, 694, 39 Cal.Rptr.2d 870.) This is the course the Legislature has chosen and, until that body changes course, we must enforce the rule. The fee award was proper.

FN7. As to the claim for violation of the Lanham Act, the trial court denied respondents attorney's fees, concluding Kirby's action was neither unreasonable or groundless. (See Stephen W. Boney, Inc. v. Boney Services, Inc. (9th Cir.1997) 127 F.3d 821, 825, 827 [prevailing defendant may be awarded fees in an “exceptional case,” i.e., one in which plaintiff's claims are groundless, unreasonable, vexatious or pursued in bad faith].) The amount of the fees awarded was reduced after the trial court concluded the amount sought by respondents was not reasonable. However, the court found all of Kirby's state statutory and common law claims “inextricably intertwined,” and refused to further apportion the fee award. ( Akins v. Enterprise Rent–a–Car Co. (2000) 79 Cal.App.4th 1127, 1133, 94 Cal.Rptr.2d 448 [When statutory claims providing for fees are combined with claims for which attorney's fees are not available, prevailing party may recover fees only on statutory claim unless claims are so intertwined or pertain to issues common to claims in which fees are properly allowed].) Kirby does not take issue with these rulings.

[14]

Respondents also seek and are entitled to recover attorney's fees on appeal **619 under section 3344, subdivision (a). “Statutory authorization for the recovery of attorney fees incurred at trial necessarily includes attorney fees incurred on appeal unless the statute specifically provides otherwise. [Citation.]” ( Akins v. Enterprise Rent–a–Car Co., supra, 79 Cal.App.4th at p. 1134, 94 Cal.Rptr.2d 448; see also Morcos v. Board of Retirement (1990) 51 Cal.3d 924, 929, 275 Cal.Rptr. 187, 800 P.2d 543 [Stating the “general rule that statutory attorney fee provisions are interpreted to apply to attorney fees on appeal unless the statute specifically provides otherwise”].) Although we could appraise and fix *63 attorney fees on appeal, the more appropriate course of practice is to remand the case to the trial court to determine the appropriate amount of fees. (See ibid.)

DISPOSITION

The judgment is affirmed. The matter is remanded to the trial court for a determination of the amount of an award of attorney's fees to respondents as prevailing parties on this appeal. (§ 3344, subd. (a).) Respondents are awarded costs on appeal.

We concur: COOPER, P.J., and FLIER, J.

Cal.App. 2 Dist.,2006.
Kirby v. Sega of America, Inc.
144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 81 U.S.P.Q.2d 1172, 35 Media L. Rep. 1075, 06 Cal. Daily Op. Serv. 9978, 2006 Daily Journal D.A.R. 14,190

Briefs and Other Related Documents (Back to top)

• 2006 WL 1286834 (Appellate Brief) Brief of Respondents Sega of America, Inc., Agetec, Inc, and THQ Inc. (Mar. 23, 2006) Original Image of this Document (PDF)
• 2005 WL 3741798 (Appellate Brief) Appellant's Opening Brief (Nov. 23, 2005) Original Image of this Document (PDF)
• B183820 (Docket) (Jun. 7, 2005)

Judges and Attorneys (Back to top)

Judges | Attorneys

Judges

Boland, Hon. Paul

Court of Appeal, Second District, Division 1, California

Los Angeles, California 90013

Chalfant, Hon. James Cameron

State of California Superior Court, Los Angeles County

Los Angeles, California 90012

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Flier, Hon. Madeleine I.

State of California Court of Appeal, 2nd Appellate District

Los Angeles, California 90013

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Attorneys

Attorneys for Appellant

Blecher, Maxwell M.

Los Angeles, California 90071-3302

Palko, Courtney A.

Los Angeles, California 90071-3302

Attorneys for Respondent

Gamlen, Tod L.

Palo Alto, California 94304

Keller, Christopher J.

Palo Alto, California 94304

Wurster, Keith L.

Palo Alto, California 94304

END OF DOCUMENT

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Midway Mfg. Co. v. Bandai-America, Inc.

Midway Mfg. Co. v. Bandai-America, Inc.
546 F.Supp. 125
D.C.N.J., 1982.
July 22, 1982 (Approx. 47 pages)

546 F.Supp. 125, 216 U.S.P.Q. 812, 1983 Copr.L.Dec. P 25,530

United States District Court, D. New Jersey.

MIDWAY MFG. CO., an Illinois corporation, Plaintiff,
v.
BANDAI-AMERICA, INC., a New Jersey corporation, Bandai Company, Ltd., a Japanese corporation, Bandai Overseas Corporation, a Japanese corporation, Epoch Company Ltd., a New Jersey corporation, Epoch Corporation, a New Jersey corporation, Toys R. US, Inc., a California corporation, Lionel Leisure, Inc., a Pennsylvania corporation, Best Products, Inc., a Virginia corporation, and Lash-Tamaron Distributors, Inc., a New Jersey corporation, Defendants.
COLECO INDUSTRIES, INC., a Connecticut corporation, Plaintiff,
v.
BANDAI-AMERICA, INC., a New Jersey corporation, Bandai Company, Ltd., a Japanese corporation, Bandai Overseas Corporation, a Japanese corporation, Epoch Company Ltd., a Japanese corporation, and Epoch Corporation, a New Jersey corporation, Defendants.

Civ. A. No. 81-3911.

July 22, 1982.

Owner of copyright on arcade video games and licensee brought copyright and trademark infringement action against Japanese distributors of handheld video games. On plaintiff's motions for summary judgment or, in the alternative, for preliminary injunctive relief, the District Court, Meanor, J., held that: (1) Copyright Office was not required to conduct substantive examination to verify originality of copyright owner's works and Office's failure to conduct such examination did not render copyright certificates invalid; (2) genuine issue of material fact existed as to whether ordinary lay observer would detect such substantial similarity between two works as to show copying went so far as to constitute improper appropriation; (3) genuine issue of material fact existed as to copying of copyrighted video game's figure from preexisting mechanical figure; (4) plaintiff had shown sufficient likelihood of confusion between its “Galaxian” mark and identical mark used by defendants so as to be entitled to summary judgment on trademark infringement issue; and (5) genuine issue of material fact existed as to infringement issue between plaintiff's “Pac-Man” mark and defendants' “Packri Monster” mark, precluding summary judgment.

Ordered accordingly.

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      99k83 Evidence
         99k83(1) k. Presumptions and burden of proof. Most Cited Cases

Prima facie presumption of validity and ownership of copyright arising from copyright certificates produced by the plaintiff is rebuttable; where evidence in record casts doubt on issue, there is no presumption of validity. 17 U.S.C.A. §§ 101 et seq., 102(b).

[12] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

Defendant may rebut prima facie effect of copyright registration by producing evidence that copyrighted work was itself copied from another work, thus challenging originality of plaintiff's work. 17 U.S.C.A. §§ 101 et seq., 102(b).

[13] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(1) k. Presumptions and burden of proof. Most Cited Cases

Upon proof by defendant that plaintiff, who has produced copyright certificates, had access to similar prior works, burden of proving originality of copyrighted work shifts to plaintiff. 17 U.S.C.A. §§ 101 et seq., 102(b).

[14] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

To show lack of originality and thereby rebut plaintiff's copyright registration certificate, defendant should, in absence of direct proof of copying, make some showing of copying by plaintiff as is required in prima facie infringement case, i.e., access and substantial similarity as between plaintiff's work and that from which it was allegedly copied. 17 U.S.C.A. §§ 101 et seq., 102(b).

[15] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k88 k. Trial. Most Cited Cases

On claim of copyright infringement, issue of copying and subsidiary issues of access and substantial similarity are questions for trier of fact. 17 U.S.C.A. §§ 101 et seq., 102(b).

[16] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

Court would not be justified in finding that copyright registration certificate had been rebutted as prima facie evidence of originality of copyrighted work unless either court was sitting as trier of fact or it found as matter of law that similarities between plaintiff's work and allegedly preexisting work were so great as to mandate, in absence of other evidence from plaintiff, finding of copying by plaintiffs. 17 U.S.C.A. §§ 101 et seq., 102(b).

[17] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

Since originality is requirement of copyright, finding that defendant has rebutted copyright certificate by showing plaintiff's lack of originality in copyrighted work is tantamount to judgment for defendant, at least in absence of other evidence proving plaintiff's originality. 17 U.S.C.A. §§ 101 et seq., 102(b).

[18] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
   99k12 Originality of Work; Creativity
      99k12(1) k. In general. Most Cited Cases
      (Formerly 99k12)

Plaintiff who demonstrates that, although he has indeed copied, he has added some original elements to copyrighted work will be entitled to copyright protection as to those elements. 17 U.S.C.A. §§ 101 et seq., 102(b).

[19] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Court asked to entertain alternative motions for summary judgment or for preliminary injunction in copyright infringement action should determine whether copyright certificate has been rebutted as to originality by standards applicable for summary judgment in copyright case; if such standards have not been met by either party, court cannot decide rebuttal question and should only express its belief in likelihood that either would prevail on originality issue at hearing before trier of fact. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[20] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
   99k12 Originality of Work; Creativity
      99k12(1) k. In general. Most Cited Cases
      (Formerly 99k12)

99 Copyrights and Intellectual Property KeyCite Citing References for this Headnote
99I Copyrights
99I(H) Registration
   99k50.15 Registration
      99k50.20 k. Application. Most Cited Cases

Argument that copyright certificate has been rebutted by virtue of plaintiff's lack of originality in copyrighted work or that registration is invalid because plaintiff failed to disclose preexisting works in his application for copyright registration is inseparable from argument that plaintiff has failed to prove case of copyright infringement and thus should be treated accordingly. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[21] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)1 What Constitutes Infringement
      99k53 Acts Constituting Infringement
      99k53(1) k. In general. Most Cited Cases
         (Formerly 99k53)

“Striking similarity” is standard for finding copying and copyright infringement even in absence of proof of access. 17 U.S.C.A. §§ 101 et seq., 102(b).

[22] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(H) Registration
99k50.15 Registration
99k50.20 k. Application. Most Cited Cases

Copyright registration cannot be invalidated for failing to disclose preexisting works if those works are not in fact substantially similar to copyrighted work and plaintiff did not copy them. 17 U.S.C.A. §§ 101 et seq., 102(b).

[23] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Summary judgment, including judgment for plaintiff, is permissible in copyright case. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[24] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Summary judgment should not be granted copyright litigant where position of party opposing motion would be supported at trial by substantial evidence. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[25] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
   170AXVII(C)3 Proceedings
      170Ak2542 Evidence
      170Ak2546 k. Weight and sufficiency. Most Cited Cases

For purpose of determining whether position of party opposing copyright litigant's summary judgment motion would be supported at trial by substantial evidence and therefore summary judgment should not be granted, “substantial evidence” must be such that reasonable mind would accept it as sufficient to support conclusion; it must suffice to justify denial of directed verdict for movant at close of jury trial. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[26] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Court should grant copyright litigant summary judgment where substantial similarity is in issue only if court would be required at trial to direct verdict for moving party. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[27] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Where only facts relevant to substantial similarity question, i.e., copyrighted and allegedly infringing work, are before court and not in dispute, directed verdict issue can be resolved in summary judgment motion before trial. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[28] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)3 Proceedings
170Ak2557 k. Partial summary judgment. Most Cited Cases

Under summary judgment rule, district court may render partial summary adjudication withdrawing from copyright case issues as to which there is no genuine question of fact. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[29] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
   170AXVII(C)3 Proceedings
      170Ak2547 Hearing and Determination
      170Ak2547.1 k. In general. Most Cited Cases
         (Formerly 170Ak2547)

There is no impediment in copyright infringement action to granting plaintiff a preliminary injunction while simultaneously denying his motion for summary judgment. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[30] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Existence of plausible defense in copyright case is no barrier to issuance of preliminary injunction as long as movant shows substantial likelihood of success on merits. 17 U.S.C.A. §§ 101 et seq., 102(b).

[31] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Generally, copyright plaintiff seeking preliminary injunction must establish reasonable likelihood of success on merits and showing of irreparable injury absent injunction. 17 U.S.C.A. §§ 101 et seq., 102(b).

[32] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Factors to be considered in exercising discretion on motion for preliminary injunction in copyright infringement action are balance of hardships between parties and whether public interest would be served by issuing preliminary injunction. 17 U.S.C.A. §§ 101 et seq., 102(b).

[33] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(H) Registration
   99k50.15 Registration
      99k50.16 k. In general. Most Cited Cases
      (Formerly 99k50.15)

To render copyright registration invalid and incapable of supporting infringement action due to registrant's fraud upon Copyright Office in failing to disclose preexisting works, failure to disclose must be knowing or intentional. 17 U.S.C.A. §§ 101 et seq., 102(b).

[34] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(H) Registration
   99k50.15 Registration
      99k50.16 k. In general. Most Cited Cases
      (Formerly 99k50.15)

Section of Copyright Act governing examination Copyright Office is to undertake when reviewing copyright application could not be considered so unambiguous as to preclude resort to legislative history where section did not define or explain the “examination,” which could therefore range from detailed search to mere check for application's facial adequacy. 17 U.S.C.A. §§ 101 et seq., 410(a).

[35] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(H) Registration
   99k50.15 Registration
      99k50.16 k. In general. Most Cited Cases
      (Formerly 99k50.15)

Copyright Office was not required to substantively examine copyright applications to verify originality of works and failure to conduct such examination did not render copyright certificates invalid for purpose of establishing prima facie originality in copyrighted works. 17 U.S.C.A. §§ 101 et seq., 410(a).

[36] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)1 What Constitutes Infringement
      99k67.1 k. Motion pictures and other audiovisual works. Most Cited Cases

99 Copyrights and Intellectual Property KeyCite Citing References for this Headnote
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

Copyrighted video game did not copy preexisting work to point of appropriation, and therefore copyright certificate was prima facie evidence of copyrighted video game's originality, notwithstanding that its creator admitted having had access to and having viewed preexisting work. 17 U.S.C.A. §§ 101 et seq., 102(b).

[37] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
99I(J)1 What Constitutes Infringement
99k67.1 k. Motion pictures and other audiovisual works. Most Cited Cases

Even if owner of copyright on video game had copied idea of preexisting game, such would not comprise copyright violation. 17 U.S.C.A. §§ 101 et seq., 102(b).

[38] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Owner of copyright on video game had made sufficient showing of originality of its work to support issuance of preliminary injunction, notwithstanding that its creator admitted having had access to and having viewed preexisting game, in view, inter alia, of deposition testimony by employee who created copyrighted work as to its originality. 17 U.S.C.A. §§ 101 et seq., 102(b).

[39] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.1) k. In general. Most Cited Cases
            (Formerly 99k83(3))

Circumstantial evidence is sufficient to establish access for purpose of copyright infringement claim. 17 U.S.C.A. §§ 101 et seq., 102(b).

[40] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.1) k. In general. Most Cited Cases
            (Formerly 99k83(3))

All that is required to establish “access” for purpose of copyright infringement claim is reasonable possibility that defendant had opportunity to view copyrighted work. 17 U.S.C.A. §§ 101 et seq., 102(b).

[41] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.1) k. In general. Most Cited Cases
            (Formerly 99k83(3))

Wide publication of work will suffice to show “access” for purpose of copyright infringement claim. 17 U.S.C.A. §§ 101 et seq., 102(b).

[42] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(7) k. Other works. Most Cited Cases

In view of uncontroverted evidence that copyrighted arcade video game had been widely published in both America and Japan, that Japanese distributors of handheld video games, although not in video arcade business, produced closely related product, and that distributors had conceded awareness of arcade games in general, Japanese distributors' access to copyrighted arcade video game had been established for purpose of copyright infringement action. 17 U.S.C.A. §§ 101 et seq., 102(b).

[43] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(7) k. Other works. Most Cited Cases

Owner of copyright on arcade video game had established, by demonstrating substantial similarity, that Japanese distributors of handheld video games had copied copyrighted work in view, inter alia, of fundamentally identical musical themes of two games, of insectile characters in both games, and of similarity in games' play and sequence of images. 17 U.S.C.A. §§ 101 et seq., 102(b).

[44] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)1 What Constitutes Infringement
      99k53 Acts Constituting Infringement
      99k53(1) k. In general. Most Cited Cases
         (Formerly 99k53)

Identity of expression is not required for finding of copyright infringement. 17 U.S.C.A. §§ 101 et seq., 102(b).

[45] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)1 What Constitutes Infringement
      99k53 Acts Constituting Infringement
      99k53(2) k. Reproduction in different medium. Most Cited Cases
         (Formerly 99k53.1)

Degree of substantial similarity required to show copying, for purpose of copyright infringement claim, must be adjusted to take into account fact that only lesser degree of duplication may be possible in different medium. 17 U.S.C.A. §§ 101 et seq., 102(b).

[46] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
99k3 Subjects of Copyright
99k4.5 k. Ideas and concepts in general. Most Cited Cases

If a work cannot be described in abstract terms, its expression adds nothing to unprotectible idea and is therefore not subject to copyright protection. 17 U.S.C.A. §§ 101 et seq., 102(b).

[47] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
99k3 Subjects of Copyright
99k4.5 k. Ideas and concepts in general. Most Cited Cases

Copyright protection does not encompass games as such, since they consist of abstract rules and play ideas. 17 U.S.C.A. §§ 101 et seq., 102(b).

[48] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
99k3 Subjects of Copyright
99k10.1 k. Motion pictures and other audiovisual works. Most Cited Cases

Unprotectible idea of copyright owner's copyrighted video game did not include physical characteristics of characters involved. 17 U.S.C.A. §§ 101 et seq., 102(b).

[49] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Genuine issue of material fact existed as to whether ordinary lay observer would detect such substantial similarity between copyrighted arcade video game and handheld video game that copying went so far as to constitute improper appropriation, precluding summary judgment in copyright infringement action. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[50] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVI New Trial
170AXVI(A) In General
170Ak2311 k. In general. Most Cited Cases

In a close case, court cannot substitute its judgment for that of trier of fact.

[51] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(3) Weight and Sufficiency
            99k83(3.5) k. Certificate as prima facie proof, in general. Most Cited Cases

Similarity in overall shape between “ghost” in copyrighted video game and “ghost” in preexisting work was not, coupled with presence of eyes, sufficient to support inference of copying by video game copyright owner in face of significant differences in figures, and Japanese distributors of handheld video games thus had not rebutted presumption of originality attaching to copyright owner's “ghosts” upon its production of certificate of registration. 17 U.S.C.A. §§ 101 et seq., 102(b).

[52] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

In copyright infringement action, genuine issue of material fact existed as to whether central figure of copyrighted video game created by Japanese worker was copied from preexisting mechanical figure, which was apparently called by same name as figure in video game in Japanese tongue, precluding summary judgment. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[53] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(A) Nature and Subject Matter
   99k12 Originality of Work; Creativity
      99k12(2) k. Use of common expressions, historical facts, or other material from public domain. Most Cited Cases
      (Formerly 99k12.1)

Work may be entitled to copyright protection even though based on prior copyrighted or public domain work if author, through his skill and effort, has contributed distinguishable variation from older works, but only those parts which are new are protected by new copyright. 17 U.S.C.A. §§ 101 et seq., 102(b).

[54] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Copying of copyrighted video game's characters, musical themes, and “cartoon” sequence of images by Japanese distributors of handheld video game had been sufficiently established to entitle copyright owner to summary judgment with regard to issue of copying in view of same distinctive gobbling action between characters, expert analysis of musical themes of two works, and virtual exact duplication of copyrighted cartoon sequence. 17 U.S.C.A. §§ 101 et seq., 102(b).

[55] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(B) Scope
99k35 Scope of Exclusive Rights; Limitations
99k38 k. Distinct portions of work; compilations and derivative works. Most Cited Cases

Although, in copyright infringement action, dissection is disfavored on issue of substantial similarity going to appropriation of copyrighted work, ordinary observer test must descend into detail where necessary to distill protectible elements of work. 17 U.S.C.A. §§ 101 et seq., 102(b).

[56] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)2 Particular Cases
170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases

Although copyright owner had made extremely strong showing on merits as to whether copying of copyrighted arcade video game by Japanese distributors of handheld video game went so far as to constitute improper appropriation of copyright owner's work, genuine issues of material fact existed as to substantial similarity issue and scope of copyright with regard to arcade video game's characters, precluding summary judgment on question of copyright infringement. 17 U.S.C.A. §§ 101 et seq., 102(b); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

[57] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k83 Evidence
         99k83(2) k. Admissibility. Most Cited Cases

Opinion of copyright owner's expert that musical themes of copyrighted video game and allegedly infringing handheld game were fundamentally identical and that handheld video game's theme was derived from copyrighted game was irrelevant on ultimate question as to whether copying went so far as to constitute improper appropriation of copyrighted work. 17 U.S.C.A. §§ 101 et seq., 102(b).

[58] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Owner of copyright on arcade video game had made such strong showing of likelihood of success on merits in copyright infringement action that it was entitled to preliminary injunctive relief against Japanese distributors of handheld video game.

[59] KeyCite Citing References for this Headnote

212 Injunction
212V Actions and Proceedings
212V(E) Evidence
212k1563 k. Presumptions and burden of proof. Most Cited Cases
(Formerly 212k147)

Where a substantial likelihood of success on the merits has been shown on a motion for preliminary injunction, irreparable injury will be presumed. 17 U.S.C.A. §§ 101 et seq., 102(b).

[60] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Owner of copyright on arcade video game had made sufficient showing of irreparable injury to warrant injunctive relief against Japanese distributors of handheld video games where copyright owner had spent large sums in developing and popularizing its copyrighted game, unauthorized infringing games diverted benefits obtainable through reproduction of copyrighted game in handheld medium and jeopardized investment copyright owner had made, and unapproved units could reflect poorly on reputation and popularity of copyright owner's games in general and its licensed, authorized handheld units in particular. 17 U.S.C.A. §§ 101 et seq., 102(b).

[61] KeyCite Citing References for this Headnote

99 Copyrights and Intellectual Property
99I Copyrights
99I(J) Infringement
   99I(J)2 Remedies
      99k72 Actions for Infringement
      99k85 k. Preliminary injunction. Most Cited Cases

Advantages stemming from deliberately plagiarized work do not give copyright infringer standing to complain that his vested interests will be disturbed if preliminary injunction should issue against sales of infringing work.

[62] KeyCite Citing References for this Headnote

382T Trademarks
382TII Marks Protected
382Tk1039 k. Arbitrary or fanciful terms or marks. Most Cited Cases
(Formerly 382k24 Trade Regulation)

“Galaxian” was distinctive mark, for purposes of trademark infringement claim, where it was arbitrary or fanciful name not descriptive of product, and mark was therefore entitled to broad protection. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

[63] KeyCite Citing References for this Headnote

382T Trademarks
382TII Marks Protected
382Tk1029 Capacity to Distinguish or Signify; Distinctiveness
   382Tk1032 k. Acquired distinctiveness and secondary meaning in general. Most Cited Cases
      (Formerly 382k24 Trade Regulation)

382T Trademarks KeyCite Citing References for this Headnote
382TVIII Violations of Rights
382TVIII(A) In General
   382Tk1423 Particular Cases, Practices, or Conduct
      382Tk1426 k. Infringement in general. Most Cited Cases
      (Formerly 382k334.1, 382k334 Trade Regulation)

As distinctive mark, no proof of secondary meaning was required for trademark protection of term “Galaxian”; plaintiff was required to show only that defendants' mark was likely to cause confusion in order to prevail. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

[64] KeyCite Citing References for this Headnote

170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
   170AXVII(C)2 Particular Cases
      170Ak2493 k. Copyright, trademark, and unfair competition cases. Most Cited Cases
      (Formerly 382k722 Trade Regulation)

Plaintiff need not produce strong evidence on each factor going to likelihood of confusion in order to be entitled to summary judgment on trademark infringement issue. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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Senior user of “Galaxian” on arcade video game had shown likelihood of confusion as result of junior user's identical mark on handheld video game and was thus entitled to summary judgment on trademark infringement issue, notwithstanding that senior user's machines cost about $2,000 while junior users' cost $30 to $50 and notwithstanding that no one would buy junior users' goods thinking they were buying arcade machine, in view of fact that junior users' goods were games or toys directed largely at children who would be more likely misled by identity in trademark, of evidence that junior users intended to benefit from goodwill and popularity of senior user's game, and of fact that users of games were the same. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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Arbitrary or fanciful mark is inherently a strong mark. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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Genuine issues of material fact existed as to infringement of senior user's “Pac-Man” mark for arcade video game by junior users' “Packri Monster” mark for handheld video game, precluding summary judgment on trademark infringement claim. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a); Fed.Rules Civ.Proc. Rule 56(d), 28 U.S.C.A.

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GALAXIAN.

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PAC-MAN.

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PACKRI MONSTER.

*132 Pitney, Hardin, Kipp & Szuch by Gregory C. Parliman, Morristown, N. J., and Loeb & Loeb by Robert A. Meyer, Los Angeles, Cal., for plaintiff Midway Mfg. Co.

Kaye, Scholer, Fierman, Hays & Handler by Frederic W. Yerman, New York City, for plaintiff Coleco Industries, Inc.

Carella, Byrne, Bain & Gilfillan, New York City by R. Gale Rhodes, Jr., Newark, N. J., for defendants Bandai-America, Inc., Bandai Overseas Corp., Bandai Co., Ltd. and Toys R. US, Inc.

OPINION

MEANOR, District Judge.

Technological advances and the incessant quest for new forms of leisure time amusement converge in the instant case to thrust this Court into the center of the current video game mania gripping the United States. Specifically, this case involves two of the most popular video games of all time, Pac-Man and Galaxian. Plaintiffs, Midway Manufacturing (Midway) and Coleco Industries (Coleco), manufacture and sell, respectively, the full-size arcade and two of the authorized handheld miniaturized versions of these games. They are suing Bandai Industries (Bandai), a New Jersey corporation importing two other handheld games named Galaxian and Packri Monster. These games are manufactured and exported from Japan respectively by defendants Bandai Company, Ltd. (BL) and Bandai Overseas Corp., (BO). Both of these Japanese corporations are related to Bandai.^FN1

FN1. Plaintiffs also sue a number of retailers of the Bandai games. These defendants are not directly involved in the instant motions. Epoch Corporation, the other defendant who manufactured and sold another handheld game, has settled with plaintiffs and is no longer in the case. The three Bandai defendants will be referred to collectively as “Bandai” except where discussion focuses solely on one of them.

Plaintiffs allege that the Bandai handheld games violate the copyright and trademark laws of the United States, as *133 well as the unfair competition laws of New Jersey and California. Midway in particular charges that the audiovisual displays of the Bandai games infringe its copyright in the audiovisual works of its own arcade games while the names of the Bandai games infringe Midway's trademarks in the names of its arcade machines. Coleco as a licensee of these copyrights and trademarks joins in Midway's allegations of infringements of same. Presently before the court are Midway's motions for summary judgment that:

1. Bandai's Galaxian game infringes Midway's copyrights in its Galaxian game;

2. Bandai's Galaxian game infringes Midway's trademark “Galaxian”;

3. Bandai's Packri Monster game infringes Midway's copyright in its Pac-Man game;

4. Bandai's Packri Monster game infringes Midway's trademark “Pac-Man”.

In the alternative, Midway requests preliminary injunctive relief on these claims.^FN2

FN2. By order of this court entered February 1, 1982, Bandai has been preliminarily enjoined from selling its Galaxian game under the name “Galaxian” and from selling Packri Monster in packaging highlighting “Pack” and “Mon”.

I. Background

Midway is a well-known American producer of video arcade games. Its Galaxian and Pac-Man games were created by Namco, Ltd. (Namco), a Japanese corporation. Both games were first published in Japan by Namco, Galaxian on September 17, 1979 and Pac-Man on May 22, 1980. Midway learned of both games at showings in Japan and determined that they had commercial potential in the United States. Namco and Midway accordingly entered into an agreement whereby Midway would receive all copyright and trademark rights in the two games in both the United States and the rest of the Western Hemisphere. Assignments of the copyright rights in Galaxian and Pac-Man were recorded with the Copyright Office on March 6, 1980 and November 13, 1980, respectively. On the strength of these assignments, Midway was issued copyright registrations in its name for both games as audiovisual works, effective the same dates as the assignments were filed.^FN3

FN3. Midway has not registered either Pac-Man or Galaxian as its trademark. It claims ownership of both marks by virtue of its prior and continuous use of them in the United States.

Midway began marketing Galaxian in the beginning of 1980 and Pac-Man in early 1981. It has promoted these games at considerable expense and they have proved to be two of the most successful video games ever. Although Midway ceased marketing its Galaxian in July 1981, it apparently continues to sell Pac-Man. ^FN4 Midway has actively licensed rights to its two games. As part of a consent judgment, Midway granted Entex Ltd. a limited license, since expired, to produce handheld Pac-Man and Galaxian games. A similar license as to a Galaxian-type game was granted Epoch, originally a defendant here but since dismissed. Tomy Corporation also has a license to produce its own handheld Pac-Man electronic game. This license expires on December 1, 1983 and was part of a quit claim assignment by Tomy to Midway of any rights it might have claimed in the mark Pac-Man as well as in Tomy's mechanical game of the same name. Midway also licensed back Namco, its original assignor of the copyright rights, the rights to the home video versions of the games. Namco has since sublicensed Atari to manufacture such units. Finally, Midway has licensed its co-plaintiff in this suit, Coleco, to produce handheld versions of both Galaxian and Pac-Man bearing those marks. This “semi-exclusive” license is of an indefinite duration and commenced on February 1, 1982. Coleco has been soliciting orders for its games at least since January 1982. Its Pac-Man game was available for retail sale then and its Galaxian game apparently was so available the following month; in *134 any event, both are now being sold to the public. Coleco has expended large sums in advertising and marketing its handheld games.

FN4. Indeed, it has recently introduced a new version called Ms. Pac-Man, whose success is reportedly outstripping even that of the original Pac-Man.

Bandai's Packri Monster Game was designed for it by another Japanese company named Kaken. Work on the game apparently began in October 1980; it was first produced for distribution in April or May 1981. BL created its Galaxian game in Japan apparently during early 1980. BL sells these games to BO; BO sells them, in Japan, to Bandai which, in turn, actually imports them into the United States. Bandai has been selling Galaxian units in the United States since late 1980 and Packri Monster Games since July 1981.

Midway's Arcade games cost several thousand dollars and are sold primarily to arcades, bars, and similar establishments. Bandai's games sell for approximately $30-$50 and are retailed to the general public mainly through toy stores.

II. The Games

At the heart of a copyright infringement action are the works themselves. Since audiovisual works are at issue here, extensive visual and aural examinations have been undertaken. A description of the various games is thus in order.^FN5

FN5. Although other full-size configurations exist, the Pac-Man game is usually housed in an upright cabinet approximately 6' X 2' X 2'. Midway has provided the Court with one Pac-Man and one Galaxian arcade machine. In addition, Midway has furnished official copies of the videotapes of these machines deposited with the Copyright Office, as per that Office's requirements. These videotapes have been viewed by the court. Bandai and Coleco have both also furnished the Court with samples of their games.

A. Midway's Pac-Man : The Seventh Circuit in the recent case of Atari v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir. 1982) had before it an infringement action involving the very same Midway Pac-Man game as is at issue here. The following description, which this court adopts, may be found at 672 F.2d 610-611:

The copyrighted version of PAC-MAN is an electronic arcade maze-chase game. Very basically, the game “board,” which appears on a television-like screen, consists of a fixed maze, a central character (expressed as a “gobbler”), four pursuit characters (expressed as “ghost monsters”), several hundred evenly spaced pink dots which line the pathways of the maze, four enlarged pink dots (“power capsules”) approximately located in each of the maze's four corners, and various colored fruit symbols which appear (intermittently) near the middle of the maze during the play of the game.

Using a “joy stick,” the player guides the gobbler through the maze, consuming pink dots along the way. The monsters, which roam independently within the maze, chase the gobbler. Each play ends when a monster catches the gobbler, and after three plays, the game is over. If the gobbler consumes a power capsule, the roles reverse temporarily: the gobbler turns into the hunter, and the monsters become vulnerable. The object of the game is to score as many points as possible by gobbling dots, power capsules, fruit symbols, and monsters.

The PAC-MAN maze has a slightly vertical rectangular shape, and its geometric configuration is drawn in bright blue double lines. Centrally located on the left and right side of the maze is a tunnel opening. To evade capture by a pursuing monster, the player can cause the central character to exit through one opening and re-enter through the other on the opposite side. In video game parlance this concept is called a “wraparound.” In the middle is a rectangular box (“corral”) which has a small opening on the upper side. A scoring table, located across the top of the maze, displays in white the first player's score on the left, the high score to date in the middle, and the second player's score on the right. If a player successfully consumes all of the dots, the entire maze flashes alternately blue and white in victory, and a new maze, replenished with dots, appears on the screen. When the game ends a *135 bright red “game over” sign appears below the corral.

At the start of the game, the gobbler character is located centrally near the bottom of the maze. That figure is expressed as a simple yellow dot, somewhat larger than the power capsules, with a V-shaped aperture which opens and closes in mechanical fashion like a mouth as it travels the maze. Distinctive “gobbling” noises accompany this action. If fate (or a slight miscalculation) causes the gobbler to fall prey to one of the monsters, the action freezes, and the gobbler is deflated, folding back on itself, making a sympathetic whining sound, and disappearing with a star-burst.

The four monster characters are identical except that one is red, one blue, one turquoise, and one orange. They are about equal in size to the gobbler, but are shaped like bell jars. The bottom of each figure is contoured to stimulate (sic) three short appendages which move as the monster travels about the maze. Their most distinctive feature is their highly animated eyes, which appear as large white circles with blue irises and which “look” in the direction the monster is moving. At the start of each play, the monsters are located side-by-side in the corral, bouncing back and forth until each leaves through the opening. Unlike the gobbler, they do not consume the dots, but move in a prearranged pattern about the maze at a speed approximately equal to that of the gobbler. When the gobbler consumes a power capsule and the roles reverse, the monsters panic: a siren-like alarm sounds, they turn blue, their eyes contract into small pink dots, a wrinkled “mouth” appears, and they immediately reverse direction (moving at a reduced speed). When this period of vulnerability is about to end, the monsters warn the player by flashing alternately blue and white before returning to their original colors. But if a monster is caught during this time, its body disappears, and its original eyes reappear and race back to the corral. Once in the corral, the monster quickly regenerates and reenters the maze to resume its pursuit of the gobbler.

Throughout the play of PAC-MAN, a variety of distinctive musical sounds comprise the audio component of the game. Those sounds coincide with the various character movements and events occurring during the game and add to the excitement of the play.

To the foregoing account, this court would add that when, in the same game, the board is cleared of dots twice, five times, nine times, thirteen times, and possibly various times thereafter, the play action ceases and the player loses control of the machine. During this brief interlude of perhaps five to ten seconds, there appears on the screen a cartoon sequence. The first cartoon sequence depicts the central character (generally referred to as the Pac-Man) beating a hasty retreat from right to left across the screen while being pursued by one of the ghost figures. They disappear very briefly from the left side of the screen and then reappear, their roles reversed, with an enlarged Pac-Man pursuing from left to right a ghost in its vulnerable blue mode. During this entire sequence, a distinctive theme song plays. This first sequence is the most relevant for reasons which will be discussed below. ^FN6

FN6. The second sequence follows the same initial format as the first except that one-half way across the screen while the ghost is pursuing the Pac-Man, the ghost's apparel or garment becomes caught on a tack. The ghost stops and looks forlornly at his garment as a section of it tears away, revealing a flesh-colored leg. The sequence then ends. The third sequence-which is repeated each time a break in the action is achieved thereafter-is more like the first than the second. A ghost in an obviously resewn garment chases Pac-Man to the left of the screen. The ghost then reappears, although the Pac-Man does not, fleeing from left to right in a virtually denuded state, displaying an ignominious physiognomy, and dragging behind it its battered robe.

B. Bandai's Packri-Monster : Bandai's Packri-Monster game is housed in a silver-grey rectangular plastic box measuring approximately 8 X 4 X 1 . The display screen is at the upper right of this box and *136 is approximately 11/2 X 4 . The player controls the action of the game via a small black plastic joystick at the lower right-hand of the game.

The maze itself is somewhat smaller than the display screen. Its configuration is less complex than that of Midway's Pac-Man. Rather than being projected by light, the outline of the maze is embossed in white on the transparent plastic panel covering the light-emitting surface of the game. At the top center of the maze is a rectangle with the word “score” above it, both similarly embossed in white. At the bottom left and right of the maze are openings, both marked “warp”. In the center of the maze is another rectangle with an opening at the top, denominated by the game's package as the “bogey room”. At the left of the maze are two more rectangles, one atop the other, open on the left side.

When the machine is turned on, 37 small green solid ovals and two red ones appear on the playing field, the two red dots at the top left and right of the screen. Directly below the bogey room there appears a larger blue outline of an oval with what appear to be two small bulges in the top of it at left and right, approximating eyes. The bottom center portion of this oval has two breaks in the outline, thus suggesting a jaw or mandible. Bandai calls this depiction the “monster”. There are three monsters per game. The player's remaining monsters appear at the left of the maze, one each in the two rectangles described above. In the bogey room there appears a red outline of a lone bell jar shaped creature with two short horns or antennae protruding from its top. At the bottom is a wavy line suggestive of feet or other appendages. This “bogey” as Bandai denominates it, is larger than the monster. Until the player begins the game, the bogey first moves from side-to-side in its room, then emerges from same and roams according to a predetermined pattern in an attract mode. It does not consume the dots.

Once the player starts the Bandai game, he can move the monster to the left and right and up and down by manipulating the joystick. As the monster moves, its jaw disappears and reappears, creating the illusion of an opening and closing mouth. As the monster passes over the dots in the maze, they disappear. Thus, the illusion is created of the monster eating or consuming the dots. As each dot disappears, a short tone is heard.

As the game is played, the bogey moves about the maze, at times appearing to move randomly, at times seeming doggedly to pursue the monster. If the bogey overtakes the monster in the ordinary course of play, a musical tone sounds, the monster appears, flashing, within the bogey for a second or two, and both disappear. The next monster then appears at the start position and the bogey resumes its initial position in the bogey room. If the monster consumes one of the two red dots, the bogey then becomes vulnerable to the monster's depredations. This is signified by the appearance of the outline of the monster within the bogey. At this point, if the player is successful in overtaking the bogey, a few musical notes are heard and the bogey disappears, reappearing a few seconds later in the room from which it then reemerges. When the bogey's vulnerability is about to end, the player is warned by the flashing of the monster's outline within the bogey. During the game, the player may escape pursuing bogeys by utilizing the exits marked “warp”, leaving through one and entering through the other.

If a player succeeds in clearing the board of all its dots, a few musical notes are heard and a new board appears. When the second board appears, two bogeys are in the room. On the third and all subsequent boards, there are three bogeys.

After clearing the second, fourth and presumably every even-numbered board after that, the player is rewarded with monetary loss of control of the machine during which a cartoon sequence appears. This sequence consists of a bogey chasing from the right to left side of the screen a monster. When they reach the left side of the screen, their roles reverse and the monster pursues the vulnerable (signified by the presence of a *137 monster within the bogey) bogey from the left to right of the screen. A musical theme plays during this entire interlude.

It should be noted that the technology underlying the visual displays of the arcade and handheld games differs. The arcade games employ what are essentially television tubes and thus embody a high degree of clarity and detail of image. Like ordinary televisions, the arcade games achieve smooth and realistic depiction of the characters in motion by virtue of a steady stream of electrons striking the screen. The handheld games utilize light sources which appear similar to those found in calculators and digital watches. The display screens of the handheld games are composed of certain preexisting images which are lighted in sequence to achieve the illusion of motion. Thus, the handheld games present much cruder and more jerky images to the player.

C. Midway's Galaxian Game : Midway's Galaxian is housed in an arcade cabinet identical in size and shape to Pac-Man's; only the coloring and decoration are different. The game is similarly played on a large cathode ray tube (CRT). Galaxian's joystick moves only left and right and there is an additional button on the console which the player uses to fire his missiles or bullets.

Like Pac-Man, Galaxian has an attract mode, displayed before the insertion of a quarter, which repeats endlessly the same pattern of movements by the game's figures across the screen. During the attract mode or once the player has commenced a game, there appears a black background simulating outer space against which there plays a multi-color twinkling display of lights representing stars that appear to roll from the top to the bottom of the screen.

Against this background there is visible a pack of creatures representing aliens flying in formation. All but two of these are insectile things (resembling houseflies), all with the same basic configuration but differently colored wings and bodies. All flap their wings and move their legs as they hover. At the bottom of the pack are three rows of ten each red-eyed, blue-bodied insects. Above them is one row of eight red-eyed, purple-bodied things and above that, one row of six yellow-eyed, red-bodied entities. All the insects have blue wings of various shades as well as two antennae and two forelegs. At the top of the pack are two predominately yellow, vaguely triangular geometric shapes with protruding shafts, known as the “flag ships”. This pack moves as a whole horizontally during the attack and play modes, apparently in response to similar movements by the player's rocket ship. That ship appears at the bottom of the screen as having two cylindrical parts joined by a red top and a “V”-shaped brace with a thinner central cylinder between them. Protruding from the red top is a short yellow line which, when the player hits the fire button, shoots upward as a small missile. A new line appears when the one fired meets an alien or disappears at the top of the screen. The player can move his rocket ship horizontally but not vertically.

During play, both single aliens and groups of them will invert and swoop down toward the player's ship, attacking in waves. Moving across the screen, the marauding aliens drop a profusion of bombs. If the player's ship is hit, it disappears in a visual simulation of an explosion as will an alien if hit by a player's missile. Additionally, the player's ship will be destroyed if it collides with an alien; the aliens, kamikaze-like, attempt to effect just such collisions. As in Pac-Man, the player has three figures at his disposal; also as in Pac-Man, a fourth is awarded for achieving a sufficiently high score. Appropriate screaming dive and explosion sounds accompany the action.

D. Bandai's Galaxian Game: The Bandai Galaxian is contained in a blue plastic unit which can roughly be described as triangular with one apex slanted upward at approximately a 45o angle to the other two apexes which lie flat. Its greatest width is approximately 7 , length 9 , and height 5 .

The playing screen is approximately 11/4 X 3 with a score display above it. As with Bandai's Packri Monster, the impression created by the lighting used is akin to that of an LED watch or calculator rather than a CRT.

*138 There is no attract mode in Bandai's Galaxian. When switched on, the machine goes directly into the play mode. There is a fire button but rather than a joystick, there are two buttons which move the player's spacecraft either right or left. When turned on, the screen displays six clearly insectile creatures hovering at the top of the screen. As they hover, these aliens have blue wings and forelegs with red eyes and bodies. When they descend to attack, they invert and their wing/foreleg color changes to green, their eyes and body remaining red. As they attack, they move both horizontally and vertically and appear to flap their wings.^FN7 The aliens both drop bombs and attempt to collide with the player's ship. Against the black background of the game there appear red twinkling dots, simulating stars. These flash on and off in such a fashion as to create the illusion that they are moving from the top to the bottom of the screen.

FN7. This illusion of wing-flapping is created by lighting in rapid succession images of the aliens in different postures, i.e., with wings open and closed.

At the bottom of the screen is the player's ship. It can be moved horizontally and fires red missiles which protrude from the nose of the ship. The ship appears as three green cylinders joined together, two larger ones flanking a smaller one. A player is allotted five ships; those in reserve are displayed at the top of the screen above the aliens.

III. Copyright Infringement Claims

A. Applicable Copyright Law : Summarizing the basic law germane to a copyright infringement claim is often much easier than applying it. In brief, a plaintiff must show ownership of a valid copyright and copying by the defendant. Atari, Inc. v. North American, 672 F.2d 607, 614 (7th Cir. 1982); Franklin Mint Corporation v. National Wildlife Art Exchange, Inc., 575 F.2d 62, 64 (3d Cir.), cert. denied, 439 U.S. 880, 99 S.Ct. 217, 58 L.Ed.2d 193 (1978). Because copying is often difficult to prove directly, it may be inferred from a showing that a defendant had access to the copyrighted work and that the allegedly infringing work is substantially similar to the copyrighted work. Franklin Mint, 575 F.2d at 64. As cast by this Circuit at least, this basic copyright infringement case entails a two-pronged showing: (1) that defendant has copied the plaintiff's work and (2) that there is a substantial similarity between the two works, i.e., that “the copying went so far as to constitute improper appropriation.” Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir.), cert. denied, 423 U.S. 863, 96 S.Ct. 122, 46 L.Ed.2d 92 (1975); Franklin Mint, 575 F.2d 62, 65. Substantial similarity is the test for each prong, Universal Athletic, 511 F.2d at 907, but as the Third Circuit has stated, “substantial similarity is not always substantial similarity”. Id. The chief difference between the two forms of substantial similarity appears to be the type of inquiry permissible as to each. Dissection (i.e., a detailed analysis of the two works) and expert testimony are proper in establishing substantial similarity to show copying and access. Id. When attempting to demonstrate improper appropriation via the second form of substantial similarity, however, dissection and expert testimony are irrelevant; rather than a detailed analysis of the work, the court should “record (its) impressions as they would appear to a layman viewing the (works) side by side ... (and) concentrate upon the gross features rather than an examination of minutiae... The more the court is led into the finer points of the (works), the less likely it is to stand upon the firmer, if more naive, ground of its considered impression after its own perusal.” Id. at 908-09.

In the Universal Athletic case, the Third Circuit was dealing solely with the type of substantial similarity which goes to the appropriation issue since it accepted the district court's finding that there had been copying. Id. at 907. The Third Circuit noted that it was “difficult to explain all the points of similarity and dissimilarity between the (works) without going into great detail.” Id. at 908. Presumably, going into such detail would be impermissible *139 on this branch of the substantial similarity inquiry. This quote and the one above perhaps indicate the Third Circuit's awareness that its decision puts a trial court in the very delicate position of having to identify sufficiently similarities between two works to justify a finding of appropriation without simultaneously making the identification impermissibly detailed so as to constitute forbidden “dissection”. Perhaps the Third Circuit's teaching in this connection is simply, as it states, that a court should focus upon the gross features rather than examine minutiae when determining substantial similarity for appropriation purposes. This court will proceed on the assumption that this is the ultimate meaning of the Universal Athletic case and will attempt to walk the fine line between the permissible and impermissible in its comparison of the works before it.^FN8 The delicacy of this inquiry is compounded by the fact that, as numerous courts have observed, determinations of copyright infringement are largely made on an ad hoc basis, the test for infringement necessarily being vague and seemingly arbitrary. E.g., Universal Athletic, 511 F.2d at 907.

FN8. It should be noted, however, that the Universal Athletic court set forth other issues to be considered in resolving the question of substantial similarity for appropriation purposes. These include the well-known idea-expression dichotomy in copyright law and the observation that the test of similarity vis-a-vis appropriation will vary with the degree of creativity involved in the copyrighted work, the nature of the protected material, and the setting in which it appears. Id. at 908. Indeed, although the Third Circuit stated that the district court had been impermissibly detailed in its substantial similarity comparison, the actual basis for reversal appears to be set forth at 511 F.2d 909. There, the Third Circuit noted that the similar elements of the works before it involved only a minimal amount of creativity and were necessarily similar because expressive of the same simple ideas. Id. Thus, a lay observer could not conclude that similarity between them was such as to amount to an appropriation of plaintiff's work. Id. Accordingly, it is quite plausible that the Universal Athletic case actually stands for the proposition that similarity for copying purposes turns simply on the physical characteristics of the work while similarity for appropriation purposes must take into account, inter alia, the factors listed by the Third Circuit in determining the extent or degree of the copying. In any event, this court will, in its consideration of similarity for appropriation purposes, take into account such Third Circuit factors and others which are pertinent. Finally, it should be noted that Universal Athletic's treatment of substantial similarity was quoted with approval in Franklin Mint, 575 F.2d 62, 65-66.

It is clear that there can be substantial similarity and copyright infringement between works in different media. Atari, 672 F.2d at 618 n.12; 2 M. Nimmer, Nimmer on Copyright (“Nimmer”) s 8.01(C), p. 8-13 (1981). It is also unquestionable that video games in general are entitled to copyright protections as audiovisual works. Atari, 672 F.2d at 615, 617-18; Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 856-57 (2d Cir. 1982).

Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1168 (9th Cir. 1977).^FN23

[20]

Copyright certificates produced by a plaintiff constitute prima facie evidence of both copyright validity and ownership. Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 n.1 (2d Cir. 1977). One element of copyright validity is the originality of the work; a certificate provides prima facie evidence of such originality. Stratchborneo v. Arc Music Corp., 357 F.Supp. 1393, 1399 n.6 (S.D.N.Y.1973). This prima facie presumption of validity and ownership is rebuttable; where evidence in the record casts doubt on the issue, there is no assumption of validity. Durham Industries, Inc. v. Tomy Corporation, 630 F.2d 905, 908 (2d Cir. 1980). A defendant may rebut the prima facie effect of a copyright registration by producing evidence that the copyrighted work was itself copied from another work, Russ Berrie & Co., Inc. v. Jerry Elsner Co., 482 F.Supp. 980, 987 (S.D.N.Y.1980), thus challenging the originality of plaintiff's work. Upon proof by a defendant that a plaintiff had access to similar prior works, the burden of proving originality shifts back to plaintiff. M. M. Business Forms Corporation v. Uarco, Incorporated, 347 F.Supp. 419, 425 (S.D.Ohio 1972), aff'd 472 F.2d 1137 (6th Cir. 1973). It is apparently the court's responsibility on a preliminary injunction motion as well as in a bench trial to determine *140 whether a copyright registration has been successfully rebutted. Russ Berrie, 482 F.Supp. 980, 987. To show a lack of originality and thereby rebut a plaintiff's registration certificate, a defendant should, in the absence of direct proof of copying, make the same showing of copying by plaintiff required in a prima facie infringement case, i.e., access and substantial similarity as between plaintiff's work and that from which it was allegedly copied. 3 Nimmer s 12.11(A), p. 12-75-78 & n.15. It is clear that, subject to the discussion below of the law regarding summary judgment in copyright cases, the issue of copying and thus the subsidiary issues of access and substantial similarity are questions for the trier of fact. Novelty Textile, 558 F.2d 1090, 1093 n.2; 3 Nimmer s 13.01(B), p. 13-5-6. Thus, a court would not be justified in finding that a registration certificate has been rebutted as prima facie evidence of originality unless either the court was sitting as the trier of fact or it found as a matter of law that the similarities between the plaintiff's work and the allegedly preexisting work were so great as to mandate, in the absence of other evidence from plaintiff, a finding of copying by plaintiff. In short, since originality is a requirement of a copyright, a finding that a defendant has rebutted a certificate by showing plaintiff's lack of originality in his work is tantamount to judgment for defendant, at least in the absence of other evidence proving plaintiff's originality.^FN9 A court such as this, asked to entertain alternative motions for summary judgment or for a preliminary injunction, should thus determine whether a certificate has been rebutted as to originality by the standards applicable for summary judgment in a copyright case. If such standards have not been met by either party, the court cannot decide the rebuttal question and should only express its belief in the likelihood that either would prevail on the originality issue at a hearing before the trier of fact. In sum, an argument that a certificate has been rebutted by virtue of plaintiff's lack of originality is inseparable from the argument that a plaintiff has failed to prove his case and thus should be treated accordingly. ^FN10 A similar approach must be taken to an argument that a registration is invalid because a plaintiff failed to disclose preexisting works in his application for copyright registration. See, e.g., Russ Berrie, 482 F.Supp. at 987-88. This follows from the fact that such a failure to disclose logically presupposes the same elements-plaintiff's access to a work from which he copied-as does a rebuttal of a registration based on plaintiff's lack of originality. It is only common sense that a registration cannot be invalidated for failing to disclose preexisting works if those works are not in fact substantially similar to the copyrighted work and plaintiff did not copy them.

FN9. A plaintiff in this position who demonstrates that although he has indeed copied, he has added some original elements to the work, will be entitled to copyright protection as to those elements. Donald v. Zack Meyer's T.V. Sales and Service, 426 F.2d 1027, 1029 (5th Cir. 1970), cert. denied, 400 U.S. 992, 91 S.Ct. 459, 27 L.Ed.2d 441 (1971).

FN10. Treatment of the rebuttal question in other cases supports this court's approach. Thus, the issue usually arises in suits where the trial court is sitting as the trier of fact and accordingly may properly decide the issues underlying the rebuttal question. See, e.g., Original Appalachian Artworks v. Toy Loft, 489 F.Supp. 174, 178-79 (N.D.Ga.1980). In a preliminary injunction motion case, a court found that a defendant had successfully rebutted the prima facie effect of plaintiff's registration where plaintiff's work displayed a “striking similarity” to the preexisting work and the plaintiff admitted having seen and copied (with minor variations) the preexisting work. Russ Berrie, 482 F.Supp. 980, 983, 987-88. It is noteworthy that “striking similarity” is the standard for finding copying and infringement even in the absence of proof of access. 3 Nimmer s 13.02(B), p. 13-13-14. Indeed, the Russ Berrie court went on to grant defendant summary judgment after denying plaintiff a preliminary injunction. Russ Berrie, 482 F.Supp. at 989. Similarly, in a summary judgment case, a court found a certificate rebutted where the plaintiff had claimed a copyright for its licensed, three-dimensional figures of three instantly recognizable cartoon characters (Disney's Mickey Mouse, Donald Duck, and Pluto Dog) because, on their face, they lacked utterly any degree of originality. Durham Industries, 630 F.2d at 908-11.

*141 [23]

Summary judgment, including judgment for the plaintiff, is permissible in a copyright case. Knickerbocker Toy Co., Inc. v. Genie Toys Inc., 491 F.Supp. 526 (E.D.Mo.1980); Leeds Music Limited v. Robin, 358 F.Supp. 650, 653 (S.D.Ohio 1973).^FN11 Summary judgment should not be granted a copyright litigant where the position of the party opposing the motion would be supported at trial by substantial evidence. Knickerbocker Toy, 491 F.Supp. at 528. Substantial evidence must be such that a reasonable mind would accept it as sufficient to support a conclusion; it must suffice to justify a denial of a directed verdict for the movant at the close of a jury trial. Id. Put otherwise, a court should grant a copyright litigant summary judgment where substantial similarity is in issue only if it would be required at trial to direct a verdict for the moving party. McMahon v. Prentice-Hall, Inc., 486 F.Supp. 1296, 1301 (E.D.Mo.1980). See O'Neill v. Dell Publishing Co., Inc., 630 F.2d 685, 687 (1st Cir. 1980). Where the only facts relevant to the substantial similarity question-the two works-are before a court and not in dispute, the directed verdict issue can be resolved in a summary judgment motion before trial. McMahon, 486 F.Supp. at 1301. On Midway's motion here for summary judgment, the question is thus whether this court would be bound to direct a verdict for Midway at trial, i.e., whether this court can rule that no reasonable jury could find a lack of substantial similarity between the Midway and Bandai works.

FN11. Nimmer notes that in general, a copyright plaintiff should be granted summary judgment only where a defense consists exclusively of issues of law as to which the court finds in plaintiff's favor. 3 Nimmer s 12.10, p. 12-73-74. Where, as here, a defendant has denied copying, a plaintiff should be granted summary judgment only in “very unusual circumstances” such as where similarities between the works are so “overwhelming and pervasive” as to preclude independent creation. Id. In that case, a defendant's denial of copying would not raise a genuine fact issue. Id. Nimmer states that the similarity required in such a case should “greatly exceed even the striking similarity which would justify a trier of fact in inferring copying without proof of access.” Id.

[28]

Under F.R.Civ.P. 56(d), a district court may render a partial summary adjudication withdrawing from a copyright case issues as to which there is no genuine question of fact. Testa v. Janssen, 492 F.Supp. 198, 204 (W.D.Pa.1980). In Testa, plaintiff failed to furnish sufficient evidence, even of a circumstantial nature, directly suggesting access by defendants. Id. at 203-04. Accordingly, the court held that as a matter of law, proof of access was lacking. Id. Plaintiff was thus precluded at trial from directly asserting that defendants had access.^FN12 Id. at 204.

FN12. The court specifically ruled, however, that plaintiffs could still prove access indirectly by showing a striking similarity between the works in question so that access would be inferred from that similarity. Id. This mode of proof of a plaintiff's case is widely accepted. See note 10 supra.

[29]

[30]

It should be noted that there is absolutely no impediment in a copyright infringement action to granting a plaintiff a preliminary injunction while simultaneously denying his motion for summary judgment. Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551, 554 (2d Cir. 1970). Acknowledgement that disputed fact issues exist does not preclude a court from granting a plaintiff preliminary relief. Id. Similarly, the existence of a plausible defense in a copyright case is no barrier to the issuance of a preliminary injunction as long as the movant shows a substantial likelihood of success on the merits. Dallas Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184, 1188 (5th Cir. 1979).

[31]

[32]

In general, a copyright plaintiff seeking a preliminary injunction must establish a reasonable likelihood of success on the merits and a showing of irreparable injury absent an injunction. Kontes Glass Co. v. Lab Glass Inc., 373 F.2d 319, 320-21 (3d Cir. 1967). Additional factors to be considered by a district court in exercising its discretion are the balance of hardships between the parties and whether the public interest would be served by issuing a preliminary *142 injunction. Atari, 672 F.2d 607, 618; Klitzner Industries, Inc. v. H. K. James & Co., 535 F.Supp. 1249, 1253 (E.D.Pa.1982). The trend of the law in preliminary injunction cases involving copyright infringement appears to be that, upon a showing of likelihood of success on the merits, irreparable injury to the plaintiff will be presumed. At a minimum, the Second and Seventh Circuits have adopted such an approach. Wainwright Securities Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 94 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978); Atari, 672 F.2d 607, 620 (7th Cir. 1982); see generally 3 Nimmer s 14.06(A), pp. 14-50 & n. 16. The presumption of irreparable injury has also been applied by a number of district courts. See, e.g., Northwestern Bell Telephone Co. v. Bedco of Minnesota, Inc., 501 F.Supp. 299, 303 (D.Minn.1980); Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F.Supp. 351, 362 (N.D.Ga.1979); Neal v. Glickman, 391 F.Supp. 1088, 1089 (N.D.Texas 1975); Walt Disney Productions v. Air Pirates, 345 F.Supp. 108, 110 (N.D.Cal.1972), aff'd in part and rev'd in part on other grounds, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979). Closer to home, a string of Pennsylvania district court cases has adopted the presumption. See, e.g., Klitzner Industries, 535 F.Supp. at 1258-59; Custom Decor, Inc. v. Nautical Crafts, Inc., 502 F.Supp. 154, 157 (E.D.Pa.1980); Triangle Publications, Inc. v. Sports Eye, Inc., 415 F.Supp. 682, 684-85 (E.D.Pa.1976); Universal Athletic Sales Co. v. Salkeld, 340 F.Supp. 899, 902 (W.D.Pa.1972), rev'd on other grounds, 511 F.2d 904 (3d Cir.), cert. denied, 423 U.S. 863, 96 S.Ct. 122, 46 L.Ed.2d 92 (1975). The Third Circuit has not specifically passed on the practice of presuming irreparable injury in a copyright case where a preliminary injunction is requested. Kontes, the case most nearly on point in this Circuit, is ambiguous with regard to the question and certainly cannot be said to preclude adoption of the presumption.^FN13 In Kontes, the Third Circuit did state that a showing of irreparable injury is an essential prerequisite to preliminary injunctive relief and concurred in the district court's finding that plaintiff had failed to make such a showing. 373 F.2d at 320. Despite characterizing irreparable injury as an essential prerequisite to an injunction, the Kontes court nonetheless went on to discuss the second requirement of whether the plaintiff had shown a likelihood of success on the merits. Id. at 320-21. The court's consideration of this second factor implies that, at least under some circumstances, a sufficient showing of likelihood of success on the merits would by itself suffice to obtain injunctive relief. Such an interpretation is buttressed by the court's stating that a plaintiff must show a “reasonable likelihood” that he will succeed on the merits and then noting that here, there was not “that strong likelihood of success which in the circumstances of this case (presumably, a failure to show irreparable injury) would alone justify” granting plaintiff a preliminary injunction. Id. (emphasis added). Indeed, the Kontes court explicitly stated that “(Likelihood of success) is of particular importance where, as here, there is only slight evidence on the question of irreparable injury.” Id. at 320. This statement would, at a minimum, suggest that the strength of a showing of irreparable injury required of a plaintiff varies inversely with the strength of his showing of a likelihood of success on the merits. In sum, the ambiguous Kontes case does not mandate the rejection of the irreparable injury presumption; indeed, it is quite arguable that the Kontes case supports such a presumption. Although this court adopts the presumption, it will not rely solely upon it in this case but will also examine plaintiff's showing of irreparable injury.

FN13. In this connection, see Universal Athletic, 340 F.Supp. at 902.

[33]

The final area of copyright law to be set forth generally for purposes of this case is that regarding unenforceability of a copyright due to a registrant's fraud upon the Copyright Office in failing to disclose preexisting works. To render a registration *143 invalid and incapable of supporting an infringement action on these grounds, however, the failure to disclose must be knowing or intentional. Russ Berrie, 482 F.Supp. at 987-89; Vogue Ring Creations, Inc. v. Hardman, 410 F.Supp. 609, 614-17 & n.2 (D.R.I.1976). Furthermore it appears that a misrepresentation in a copyright application must harm or prejudice a defendant in some way or affect the validity of the copyright. Testa, 492 F.Supp. 198, 201. The Testa court held that a false claim of authorship of copyright comprised no bar to an infringement action where, in any event, plaintiffs owned the copyright by assignment. Id. The Russ Berrie and Vogue Ring courts did not specifically hold that a failure to disclose preexisting works must result in harm to a defendant or invalidity of the copyright in order to preclude enforcement of the copyright. Nonetheless, they are completely harmonious with Testa insofar as both cases found that the works at issue lacked the originality to qualify for copyright protection when compared with the nondisclosed, preexisting work. Russ Berrie, 482 F.Supp. at 983-84, 987, 989; Vogue Ring, 410 F.Supp. at 612. Thus, in both cases, the existence of the non-disclosed works by itself invalidated the plaintiff's copyrights. ^FN14

FN14. It is true that the Vogue Ring court stated that even if plaintiff's work displayed the requisite originality for copyright protection, it would still have declined to enforce the copyright because plaintiff's conduct was so inequitable as to comprise misuse of the copyright. 410 F.Supp. at 616. It should be noted, however, that in reaching this finding of copyright misuse, the Vogue Ring court did not rely solely on plaintiff's failure to disclose preexisting works. The court also considered a warning published by plaintiff which falsely stated the consequences of copyright infringement. Id. at 617. In addition, the court noted the incredible statements regarding creation of the work made by plaintiff corporation's president at trial. Id. The court found his assertions of independent creation particularly egregious in light of the fact that plaintiff corporation had been one of the manufacturing sources of the preexisting work. Id. at 614, 616-17. Furthermore, the Vogue Ring court specifically noted that the failure to disclose was substantial because of the “identical nature” of the plaintiff's creation and the preexisting work. Id. at 615. Thus, Vogue Ring cannot be said to stand for the proposition that a failure to disclose a preexisting work will per se render a copyright unenforceable.

B. Bandai's Legal Defense : Bandai raises a defense, directed at both copyright claims, which is essentially of a legal nature. Before applying the preceding copyright law to the facts of this case, this court will resolve this defense as a matter of law.

Bandai has produced evidence in the form of the deposition testimony of the Copyright Examiner who processed Midway's copyright applications that the applications were not substantively examined to verify the originality of the Midway works. Bandai strenuously argues that 17 U.S.C. s 410(a) requires the Copyright Office to conduct such an examination for, inter alia, originality. Defendants contend that, in light of the Office's failure to conduct such an examination, Midway's certificates cannot form the basis of a prima facie showing of originality in Midway's works. Indeed, Bandai contends that the Office's failure renders the certificates invalid.

[34]

[35]

This argument skirts the borders of bad faith. The House Report on the 1976 Copyright Act explicitly states that, “(U)nlike a patent claim, a claim to copyright is not examined for basic validity before a certificate is issued”. H.R.Rep.No.94-1476, 94th Cong. 2d Sess., 157, reprinted in 1976 U.S.Code Cong. & Ad.News 5659, 5773.^FN15 Additionally, the courts which have *144 faced this issue have apparently all held that a copyright registration does not require the substantive search advocated by defendants. Donald v. Uarco Business Forms, 478 F.2d 764, 765 n.1 (8th Cir. 1973) (“A copyright certificate will be issued through a registration procedure in which the validity of the copyright is not examined.”); Cadence Industries Corp. v. Ringer, 450 F.Supp. 59, 65-66 (S.D.N.Y.1978) (“It is undisputed that the Copyright Office has neither the facilities nor the authority to rule upon the factual basis of applications for registration or renewal, and that where an application is fair upon its face, the Office cannot refuse to perform the ‘ministerial duty’ of registration imposed upon (it) by the law.”); Stein v. Benaderet, 109 F.Supp. 364, 366 (E.D.Mich.1952), remanded on other grounds, 214 F.2d 822 (6th Cir. 1954) (“There is no such (patent type) search or examination when a copyright is secured. It issues almost automatically and there is no prior art to contend with.”) If a new rule of copyright examination procedure is to be announced, it will be some other court which proclaims it. It is clear that Bandai's attack on Midway's copyrights based upon an insufficiency in the Copyright Office's examination of the application fails as a matter of law.

FN15. Nimmer notes that the House Report contains much material vital to understanding the Act and that it indeed sometimes has more information about the Act than the Act itself. 1 Nimmer vii. Defendants assert that reliance on legislative history is improper when interpreting an unambiguous statute. s 410(a), however, is not necessarily such a statute. It does not define or explain the “examination” the Copyright Office is to undertake when reviewing an application. That examination could therefore range from the detailed search advocated by defendants to the mere check for an application's facial adequacy actually intended by Congress. Given the range of possible interpretations, s 410(a) cannot be considered so unambiguous as to preclude resort to legislative history.

IV. Application of Copyright Law to the Instant Case

A. Galaxian : In assessing the strength of Midway's case with regard to the Galaxian copyright, this court must focus on the elements of plaintiff's prima facie case as discussed in the preceding section. The initial inquiry must center on Midway's showing of ownership and validity of its copyright. Midway relies primarily on the prima facie evidentiary weight to be accorded its registration certificate.

Defendants only challenge plaintiff's certificate's effect as prima facie evidence of Galaxian's originality. Indeed, defendants request a ruling that they have successfully rebutted plaintiff's certificate in this regard so that plaintiff must prove its work's originality at trial. As discussed above, such a ruling would entail a finding by this court that the similarities between plaintiff's work and the allegedly pre-existing work are so great as to mandate a directed verdict that plaintiff had copied the prior work.

[36]

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[38]

This court declines to make such a ruling. Bandai offers only the Taito Space Invaders video arcade game as a pre-existing work to Midway's Galaxian.^FN16 This court viewed a videotape of the Space Invaders game at the initial hearing in this case. It is true that the creator of Midway's Galaxian admits having had access to and having viewed Space Invaders many times before designing his game. Nonetheless, the most cursory perusal of the two works indicates that the only similarity between them is in the idea of the underlying games, i.e., outer space games wherein a defendant base or rocket ship, controlled by the player, attempts to fend off attacking hordes of aliens.^FN17 When the expressions of the Galaxian and Space Invaders works are compared, it is clear there is no similarity beyond that of idea. The Space Invader aliens are abstract geometric shapes whose motions suggest a walking or running action. They always move in a pack, in lock-step, straight-line, horizontal movements across the screen. They regularly descend as a pack, one line at a time, toward the bottom of the screen. As previously described, the Galaxian aliens are unmistakably *145 insects, their shape being highly dissimilar to that of the Space Invaders. Their movements convey flying rather than walking. Although they hover in a pack, the Galaxian aliens attack singly or in smaller formations. When they attack, they descend in arcs and curve across the screen rather than in the rigid, straight-line path taken by the Space Invaders pack. Additionally, the Galaxian aliens invert before they attack, a feature absent from Space Invaders. Simply put, this court can detect no meaningful similarity of expression between Galaxian and the allegedly pre-existing Space Invaders.^FN18 Indeed, rather than honoring Bandai's requested finding that it has rebutted plaintiff's prima facie showing of originality, this court's examination of the two works compels it to hold that, as a matter of law, no reasonable jury could find that Galaxian copied Space Invaders to the point of appropriation. Since a verdict would thus be directed for Midway on the issue of whether it copied from Space Invaders, summary judgment on that issue is appropriate now. Bandai has failed to make even a reasonable showing that Space Invaders negated Galaxian's originality. Accordingly, this court finds that the certificate remains prima facie evidence of Galaxian's originality. ^FN19

FN16. Bandai alludes to other space theme video games which it suggests Midway relied on in creating its Galaxian. The only evidence of such games which Bandai has chosen to furnish this court, however, consists of poor quality xeroxes of promotional pamphlets regarding them. It is impossible to discern either the appearance of these games' characters or the way the games play from these brochures. Bandai has thus failed to present sufficient evidence as to these games; only Space Invaders will be considered.

FN17. Even if plaintiff had copied the idea of the Space Invaders game, this would not comprise a copyright violation. See, e.g., Atari, 672 F.2d at 614-15. Indeed, in its own defense, Bandai strenuously urges the accepted rule that copying ideas is not actionable.

FN18. Bandai points to a questionnaire regarding Galaxian circulated among Namco employees by the creators of Namco's Galaxian. This questionnaire sought employee reaction on numerous aspects of the Galaxian game. One question states, “There are similarities with Invader game (presumably Taito's Space Invaders) and what is your opinion on such respect.” The employee may then answer that this is good because Invader was popular or else that it was impossible to state whether that was good or bad. Bandai argues that this indicates Namco's acknowledgement that the games were highly similar and its concern about the possible effect of such similarities. This one question (out of six pages of questions) cannot reasonably support such broad inferences as Bandai seeks to establish. It states only that there are some similarities; this weak statement can refer as easily to the ideas underlying the games as the expression of same. The inferences to be drawn from this question cannot overcome the missing similarity of expression between the two works. Much more compelling evidence against a finding of Space Invaders as a pre-existing work is the testimony of the creator of Bandai's Galaxian, one Maniwa, that the shape and design of the Space Invaders characters are not, in his opinion, similar to those of Midway's Galaxian.

FN19. Even if this court's resolution of the rebuttal issue were erroneous, this court would find only that the question of rebuttal remained one for the trier of fact, not that defendants had successfully rebutted the prima facie weight accorded plaintiff's certificate. There is ample evidence in the form of deposition testimony by the Namco employee who created the Galaxian work as to the originality of the work. Thus, at a minimum and in the alternative, this court finds that plaintiff has made a sufficient showing of originality of its work to support the issuance of a preliminary injunction. As previously indicated, the court believes that this determination adequately disposes of Bandai's argument that Midway's copyright should not be enforced because Midway failed to disclose Space Invaders as an allegedly preexisting work. One cannot be faulted for failing to disclose that which is not a preexisting work. Even were Space Invaders a preexisting work, Bandai has failed to introduce any evidence that Midway's failure to disclose was knowing or intentional. Defendants only point to the fact that Midway, on attorney-client privilege grounds, instructed the person who completed and filed the copyright applications not to answer questions as to what an attorney for Midway told him relative to the information contained in the applications. From this, defendants wish this court to infer that Midway is desperately trying to hide something.

The deposition in question took place in March of this year. This court has not been made aware of any motion to compel discovery on this point. Nor does this court recall any discovery taken of Midway employees directly on the issue of Midway's knowledge of preexisting works. Given these omissions by the defendants, it is a little late in the day to ask this court to draw adverse inferences from Midway's assertion of the attorney-client privilege.

The withdrawal of the Space Invaders issue from this case does not, of course, preclude Bandai from presenting at trial evidence of other pre-existing works regarding Galaxian.

Turning to the question of Bandai's access to Midway's Galaxian game, there is uncontroverted evidence that Galaxian is one of the most popular video arcade games to date and has been widely published in both America and Japan. Defendant Bandai, although not in the video arcade business, produces closely related products. In fact, by asserting that its Galaxian was based in part on Taito's Space Invaders, *146 Bandai has conceded an awareness of arcade games in general which a fortiori demonstrates access to one of the most popular of all such games. Additionally, it is beyond all belief that the name Galaxian was chosen without awareness of the Midway game. Quite to the contrary, one Gatto, a vice-president of Bandai America, has stated that in adopting the name Galaxian, Bandai sought to benefit from the popularity of Midway's Galaxian game.

Circumstantial evidence is sufficient to establish access. Franklin Mint, 575 F.2d at 64; Testa, 492 F.Supp. at 202. All that is required is a reasonable possibility that a defendant had an opportunity to view a copyrighted work. Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978). Wide publication of a work will suffice to show access. Stratchborneo v. Arc Music Corp., 357 F.Supp. 1393, 1403 (S.D.N.Y.1973); 3 Nimmer s 13.02(A), p. 13-12; Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F.Supp. 177, 179 (S.D.N.Y.1976) (defendant held to be aware of song which had been No. 1 and No. 12 on the charts in, respectively, United States and United Kingdom); R. Dakin & Co. v. Charles Offset Co., Inc., 441 F.Supp. 434, 438-39 (S.D.N.Y.1977) (use of copyrighted work in national advertising campaign sufficient to show access). Given the legal standard for access and the facts adduced by plaintiffs, this court finds that no reasonable jury could decide that defendants did not have access to Midway's Galaxian. Defendants' access is thus no longer an issue in this case; plaintiff need not prove it at trial.

[43]

Under Third Circuit case law, the next inquiry is whether, given defendant's access, plaintiff has shown that defendant copied by demonstrating substantial similarity. As noted in the general discussion of copyright law, expert testimony, dissection, and detailed analysis of the two works are appropriate in this branch of the substantial similarity inquiry. This court has compared the two works ad nauseam. After its detailed examination of the works, this court discerns such overwhelming similarity that it believes no reasonable jury could find that Bandai's work was not copied from plaintiff's, Bandai's denials notwithstanding.

This determination rests largely on the works themselves. Accordingly, attention is directed generally to the description of the games set forth in this opinion. Without seeking to exhaust all the similarities it perceives, this court will note some of the more pronounced examples undergirding its finding of copying.

Firstly, Midway has produced an affidavit and accompanying report from two experts (professors of music at the University of California at Los Angeles) who conclude that the musical themes of the two Galaxian games are fundamentally identical. Bandai has introduced no evidence to the contrary. Rather, it cites case law holding that expert testimony is not admissible to show substantial similarity. This position is clearly wrong as a matter of law in this Circuit, at least insofar as substantial similarity for copying purposes is concerned. Universal Athletic, 511 F.2d at 907.

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Secondly, the Bandai aliens are unmistakably insectile as are those in Midway's game. In addition, Bandai's insect characters bear a close resemblance to Midway's, both having brightly lighted eyes and two-toned bodies.^FN20 Furthermore, the *147 Bandai game mimics the background of Midway's Galaxian with twinkling “stars” set against black space. The Bandai game has the same sort of sequential lighting of the stars, creating the same illusion that the characters are moving through space toward the top of the screen. The only difference between the backgrounds of the two games is that Bandai's stars are all of one color (almost certainly a function of the handheld medium's limitations) while Midway's are multihued.

FN20. The two sets of aliens are not literally identical. Identity of expression is not, of course, required for a finding of infringement. Moreover, the Atari case cautions that dissimilarities stemming from the different media in which the works appear should not inhibit a finding of infringement. Atari, 672 F.2d at 618 n.12. It seems apparent that, for example, the handheld aliens cannot achieve the same detail and brightness of the arcade aliens, nor approximate their natural movements. Such differences dictated by the medium should be taken into account when deciding the copying issue. Furthermore, limitations on the size, number or formation of the characters imposed by the medium should also not be utilized to excuse substantial similarity between works. Similarly, the more limited capabilities of the speakers found in the handheld units may not mask impermissible similarities in the audio portions of these works. In short, the degree of substantial similarity required to show copying must be adjusted to take into account the fact that only a lesser degree of duplication may be possible in a different medium.

Finally, the Bandai game's play and sequence of images is extremely similar to Midway's. Thus, the Bandai aliens fly in a pack and peel off to attack singly or in small groups. As they attack, they invert, as do the Midway creatures. Bandai's aliens also appear to flap their wings as they fly and attempt to collide with the player's ship.

Attempting to negate the foregoing similarities, defendants advert to a number of minor variations,^FN21 none of which can overcome the basic similarities this court perceives. Through Maniwa, Bandai also alleges that Space Invaders in part provided the source of Bandai's Galaxian. A comparison of these two games renders that assertion as untenable as Bandai's assertion that Midway's game was based on Space Invaders.

FN21. For example, Bandai notes the differing colors of the two sets of aliens, the smaller number of background dots in the Bandai game and the fact that they are all one color, etc.

In its dissection of the games, this court has detected extremely strong similarities, supported in one respect by expert opinion. Bandai has failed to challenge the fact of these likenesses. On the basis of the foregoing, the court finds that plaintiff would be entitled to a directed verdict on the issue of defendants' copying as no reasonable jury could credit Bandai's assertion of independent creation.^FN22 That issue is thus no longer in the case and plaintiff will not be required to prove it at trial.

FN22. Bandai has provided voluminous notes, diagrams, drawings and the like as evidence that it independently designed and created both of its games. This evidence may show that defendants did not duplicate Midway's works as if by the use of a photocopy machine. The absence of such outright duplication is clear, however, from a comparison of the works in question. The record of the steps necessary to translate a game concept into the handheld video game medium does not establish independent creation of the game's characters, sounds, sequences, etc. Defendants' evidence may prove independent creation of the physical elements of their games and computer program but this is not probative of whether defendants engaged in anything other than a translation of plaintiff's works into another medium. It is not as though defendants introduced documentary evidence showing, for example, design of their game prior to publication of Midway's works. In short, Bandai's evidence depicts only creation, not independent creation. Even the infringer who traces the outline of another's work must move his own hand across the page. Defendants' evidence bears on the mechanics of devising an audiovisual display, not on the creation of the audiovisual work itself. Cf. Durham Industries, 630 F.2d at 911 (plaintiff's work held not copyrightable because “mere reproduction of (preexisting works) in (a different medium), even though the adaptation of the preexisting works to this medium undoubtedly involved some degree of manufacturing skill, does not constitute originality as this Court has defined the term.”). Thus, a reasonable jury could not credit Bandai's proffered documents as evidence of independent creation. This is particularly true in light of Bandai's own illogical statement, made in argument to this court, that although it admitted copying Midway's games' ideas, it achieved this by deriving its games' forms of expression from preexisting works other than those of Midway. See Defendants' Brief in Opposition to Motion for Summary Judgment at pp. 12, 19.

There remains the final and dispositive issue of substantial similarity going to the question of improper appropriation. To obtain summary judgment on this question and thereby prevail on its Galaxian copyright claim, Midway must show that no reasonable jury, looking at the games as a whole, could find that Bandai's Galaxian was not so substantially similar to Midway's work as to constitute an improper appropriation of the latter. The test here is the response of the ordinary lay person. At this point in the substantial similarity inquiry,*148 the other factors noted by the Universal Athletic court must be considered.

[46]

[47]

Universal Athletic states the basic principle that copyright protection extends only to the expression of an idea, not to the idea itself. 511 F.2d at 906; 17 U.S.C. s 102(b)(1977). Furthermore,

When idea and expression coincide, there will be protection against nothing other than identical copying of the work. ... (T)he scope of copyright protection increases with the extent expression differs from the idea .... The idea and the expression will coincide when the expression provides nothing new or additional over the idea.

FN23. The Krofft court provides a test for determining whether idea and expression differ: “If, in describing how a work is expressed, the description differs little from a simple description of what the work is, then idea and expression coincide.” Krofft, 562 F.2d at 1168 n.10 (emphasis added). Put otherwise, if a work cannot be described in abstract terms, the expression adds nothing to the idea. This court adopts this general approach in the instant case.

As a result, copyright protection does not encompass games as such, Atari, 672 F.2d at 615, since they consist of abstract rules and play ideas.

Audiovisual works such as these are primarily unprotectable games. Atari, 672 F.2d at 617. As the Seventh Circuit noted, however, the particular forms in which they are expressed-“shapes, sizes, colors, sequences, arrangements, and sounds”-add something beyond the mere game idea. Id. Thus, “The audio component and the concrete details of the visual presentation constitute the copyrightable expression of that game ‘idea’ ”. Id. Nonetheless, Bandai argues that any similarities between its games and Midway's are nonactionable since they result from an allegedly inevitable connection between the expressions and the similarities in the underlying unprotectable ideas.

[48]

Bandai's position fails as a matter of law. It assumes, sub silentio, that the idea of Midway's Galaxian game actually includes the physical characteristics of the characters involved. If such reasoning were accepted, a copyright defendant could always avoid liability merely by describing a plaintiff's work in great detail and then labeling that description the “idea” of plaintiff's work. The “idea” of any work could always be defined in such detail that the description of the expression would add nothing to the “idea”, thus allowing a defendant to engage in all but verbatim copying. Such a ploy cannot be allowed. As the Krofft court noted, the description of the work for the purpose of identifying its idea must be a simple one. Here, the idea of Midway's Galaxian is relatively simple and easily expressed: it is an outer space video game in which the player controls a rocket ship defending itself against a swarm of computer-controlled attacking aliens who attempt to bomb and collide with the player's ship. With the idea of Midway's Galaxian thus identified, it is clear that Midway's copyright does not in the least preclude the creation of an entire universe of other space video games (e.g., Space Invaders) based on the same, unprotected idea. It is also clear that, in expressing its version of the game idea, there was no necessity for Bandai to mimic Midway's expression of this idea which involves such elements as the particular insectile shape of the aliens, their movements, and the musical theme.

Another concern of the Universal Athletic court was that the degree of copyright protection reflect the degree of creativity involved in the work. The foregoing discussion of the idea-expression dichotomy should make clear that, in its expression of the basic game idea, Midway has exhibited a good deal more than a minimal amount of creativity.^FN24 Accordingly, it can be said neither *149 that substantial similarity between the Galaxian games is lacking because only a minimal degree of creativity is involved nor that Midway is entitled only to a minimal degree of protection for the same reason.

FN24. In contrast, the work in the Universal Athletic case involved only the very minimal creativity inhering in stick figure drawings. This in part resulted in the Third Circuit's finding that there could be no substantial similarity between the works. 511 F.2d at 908-09.

The final factor raised by the Universal Athletic court is the nature of the protected material and the setting in which it appears. After quoting Universal Athletic for that proposition, the Atari case goes on to state that “Video games, unlike an artist's painting or even other audiovisual works, appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression.” 672 F.2d at 619. A player caught up in the heat of a video battle would tend to overlook many minor differences between the games. Id. Additionally, it must be remembered that Bandai's works are cast in a different medium which imposes limitations on the degree of similarity an infringer can achieve. Id. at 618 n.12. Thus, this last factor weighs in favor of a finding of substantial similarity.

[49]

[50]

Examination of the Universal Athletic factors makes clear that they either present no obstacle to a finding of substantial similarity for appropriation purposes or else actually support such a finding. Nonetheless, this court declines to enter judgment for Midway on its summary judgment motion. This declination follows from the principle that the ultimate determination of substantial similarity is one for the trier of fact. As previously discussed, to direct a verdict for plaintiff on this issue, the works must be virtually identical.^FN25 Although the question of such identity is a close one here, this court cannot state that it is certain such identity exists. In a close case, the court cannot substitute its judgment for that of the trier of fact. Accordingly, the Galaxian claim must go to the trier of fact but solely on the issue of whether an ordinary lay observer would detect such a substantial similarity between the two works as to show the copying went so far as to constitute improper appropriation.^FN26

FN25. See note 11 supra; Knickerbocker Toy, 491 F.Supp. at 528 (plaintiff granted summary judgment where works “nearly identical”).

FN26. As has been stated throughout this opinion, the Third Circuit draws a distinction between substantial similarity for purposes of copying and for purposes of appropriation. The inquiry as to each is different. Thus, there is no inconsistency in this court's granting summary judgment on the substantial similarity question for copying purposes while simultaneously denying it for appropriation purposes.

The court wishes to make clear its belief that, on the basis of the record and applicable law, Midway has unquestionably made a sufficient showing of likelihood of success on the merits to justify the grant of a preliminary injunction. Furthermore, as to the other requirements for a preliminary injunction, the court believes that the discussion of them in connection with Packri Monster infra is equally applicable here. The court declines to enter a preliminary injunction as to Galaxian only because it appears to be unnecessary, Bandai having ceased selling that game some time ago. Should plaintiffs later demonstrate the renewed need for such injunctive relief, it will issue as a matter of course on the strength of the findings contained in this opinion.

B. Packri Monster:^FN27 As with Galaxian, Midway relies primarily upon its certificate of registration to prove the ownership and validity, including the originality, of its Pac-Man copyright.^FN28 Bandai attacks Midway's certificate principally on the basis that certain alleged preexisting works rebut the prima facie presumption of Pac-Man's originality. Bandai additionally asserts that the very failure to disclose these preexisting works to the Copyright Office comprises copyright misuse barring enforcement of the copyright.

FN27. Preliminarily, it should be noted that much of the same legal analysis employed by the court with regard to the Galaxian claim is applicable here. Where appropriate, reference will be made to such preceding discussion in the interests of brevity and efficiency.

FN28. Midway has also supplied deposition testimony of one Iwatani, the Namco employee who created Pac-Man's game idea and rules as well as its characters. Iwatani stated that these were his personal creation, developed through his own efforts, and that he did not base Pac-Man's characters on the alleged preexisting works identified by Bandai.

*150 In assailing Pac-Man's originality, Bandai relies upon three allegedly preexisting works which it contends Midway copied: Sega's Head-On video arcade game, a Japanese cartoon ghost character called Kyutaro, and Tomy's mechanical Mr. Mouth game. These will be examined in turn. In so doing, the court will be guided partially by the Seventh Circuit's isolation of the protectable elements of Pac-Man.^FN29 Of most immediate import are the “gobbler” or Pac-Man figure and the four “ghost monsters”. Atari, 672 F.2d at 618.

FN29. The court recognizes that Bandai challenges the copyright validity of these elements; nonetheless, the points of possible protection must be identified for purposes of comparison with the allegedly preexisting works.

Head-On is alleged to contain the basic play concept of Pac-Man. It supposedly consists of a maze chase game involving player and computer-controlled race cars and dots on the floor of the maze. The player seeks to steer his car over the dots, which disappear as he does so, while attempting to avoid a collision with one of the computer-controlled cars. Since defendants chose not to provide the court with a sample or videotape of Head-On,^FN30 there is little for the court to say except that defendants have failed to bring this allegedly preexisting work before it. The court thus cannot credit Bandai's argument that Head-On comprises a preexisting work relied upon by plaintiff. Accepting for the moment, however, defendants' representations as to the character of Head-On, it appears that that which plaintiff would have appropriated from Head-On would comprise the Pac-Man game idea or elements closely allied with it and thus not fall within the scope of Midway's copyright in any event. See Atari, 672 F.2d at 617 (maze and dots have close connection to underlying game and thus are protected only from virtually identical copying; Pac-Man game idea includes concept of player navigating maze while attempting to avoid computer-controlled opponents). Thus, even if Midway copied Head-On, it was only as to non-protectable game ideas.

FN30. Defendants furnished a poor quality xerox of a brochure regarding Head-On. It is impossible to glean from this xerox what degree of similarity exists between Head-On and Pac-Man.

Defendants did provide the court with adequate examples of the ghost character Kyutaro. Namco's Iwatani admitted familiarity with this character. Bandai alleges that Namco copied Kyutaro in creating its own four ghost-like characters.

[51]

After carefully comparing the Midway ghosts and Kyutaro, the court concludes that a reasonable jury could not discern substantial similarity between the two for copying purposes and thus could not find that Kyutaro was a preexisting work. A comparison of the two characters reveals that Kyutaro is dramatically more anthropomorphic, possessing not only eyes but eyebrows, a prominent and expressive mouth, a few strands of hair, arm-like appendages, and two fully-developed feet. Of all these characteristics, Midway's ghosts have only eyes. Rather than actual feet, Midway's ghosts have four points at their bottoms which might suggest rudimentary feet. The only similarity besides the presence of eyes in Midway's ghost is its overall shape. Even as to this, Kyutaro is taller and resembles a cylinder with a rounded top while the ghosts are squatter and resemble gumdrops. This similarity coupled with the presence of eyes is not, in the face of significant differences, sufficient to support an inference of copying by Midway.^FN31 Defendants thus have not rebutted the presumption of originality attaching to Midway's ghosts.

FN31. Naturally, were this finding erroneous, the court would still hold that plaintiff had shown a likelihood of success as to whether Kyutaro was a preexisting work.

Finally, there is the question of the Pac-Man and Tomy's Mr. Mouth, apparently called Pac-Man in the Japanese tongue. Mr. Mouth consists of two half clam shell-like yellow plastic pieces joined at one end. On the top half is a black representation of expressive eyes and perhaps a mask. When in play, this mechanical game is so arranged as to rotate around its vertical axis while *151 the top shell repeatedly rises to an open position and then falls shut. When Mr. Mouth is open, players attempt to flip playing pieces into it from small spring-boards, tiddlywink-style.

[52]

Since there is lacking that virtual identity necessary to prove copying as a matter of law, this court cannot direct a verdict for defendants that the Pac-Man figure is copied from Mr. Mouth. Sufficient similarities exist, however, to warrant the question going to the trier of fact.

[53]

Bandai focuses on identifying individual works which arguably were precursors to individual elements of Pac-Man. In so doing, defendants naturally minimize the fact that, although Pac-Man may have various precursors as to certain of its elements, Packri Monster contains virtually all of the salient characteristics of Pac-Man. Put otherwise, the Pac-Man audiovisual work does not resemble any other single work whereas Packri Monster as a whole does resemble the preexisting Pac-Man work. This leads to consideration of the accepted copyright doctrine that a work may be entitled to copyright protection even though based on a prior copyrighted or public domain work “if the author, through his skill and effort, has contributed a distinguishable variation from the older works. In such a case, of course, only those parts which are new are protected by the new copyright.” Donald, 426 F.2d at 1029. Only a minimal degree of originality in the new portions is required, although it must be more than merely trivial and must result from original creative work. Id. at 1030. See 1 Nimmer s 3.03, p. 3-8-11 (variation which renders derivative work distinguishable in any meaningful way from prior work will satisfy originality requirement); s 3.04, p. 3-12-16 (original material in derivative work will receive copyright protection). Dollcraft Industries, Ltd. v. Well-Made Toy Mfg., 479 F.Supp. 1105 (E.D.N.Y.1978) is an illustrative case. In Dollcraft, defendant attempted to show that plaintiff's stuffed animal toys lacked originality because many of their features (bodies, arms, legs, etc.) had been used in the stuffed animal market for many years. 479 F.Supp. at 1114. The court rejected this argument, citing case law to the effect that the original combination of these preexisting features made the toys copyrightable. Id. at 1114-15. A contrary holding, the court noted, would compel a plaintiff to demonstrate novelty when the standard for copyrightability is only originality. Id. at 1115.

In light of the foregoing legal principles, Pac-Man must be examined for evidence of original elements which would be subject to copyright protection even if it were true that Midway had copied certain aspects of the game from prior works.^FN32

FN32. To merely conclusorily state that in Pac-Man the combination of old elements itself was copyrightable would be unavailing. Since Pac-Man is primarily an unprotectable game, those elements of the work entitled to protection must be separated out.

The Atari decision makes clear that the gobbler and ghost figures are copyrightable, questions of preexisting works aside. Atari also stated, however, that the sequences and arrangements of Pac-Man were protectable. 672 F.2d at 617. Accord, Stern Electronics, 669 F.2d at 856-57 (repetitive sequence of images in a video game is copyrightable). In addition, the “distinctive gobbling action” of the Pac-Man character and “especially the way in which it disappears upon being captured” were apparently accorded copyright protection in Atari. 672 F.2d at 618. Finally, it appears that the Atari court also found protectable the “role reversal and ‘regeneration’ process” involving the game's characters. Id.

There exist at least two additional copyrightable elements other than the game's characters which were not identified by the Atari court. These are the game's musical themes, particularly the opening melody, and the “cartoon” sequence of images previously described. Defendants do not challenge the originality of these two features, nor for that matter, those adverted to by the Atari court. Thus, the certificate retains its prima facie evidentiary value as to these unchallenged elements. It is clear that between these elements and the ghost *152 figure this court has already determined was not copied from Kyutaro, plaintiff has demonstrated sufficient originality to support at least these features of its copyright. This is so because none of these features inhere in the preexisting works advanced by defendants and they constitute more than a trivial addition to these works.^FN33

FN33. In particular, the substantial nature of the musical theme cannot be denied. Evidence was presented showing that Pac-Man's opening melody has been incorporated in a popular song about the game. This song has achieved great commercial success resulting in royalty fees to Midway.

Turning to the question of access, there can be no doubt that plaintiff is entitled to summary judgment for the same reasons as expressed in the Galaxian discussion. In addition, Miyake, the creator of or development supervisor of Packri Monster conceded that someone from his design team could have seen Pac-Man during the creation of the Bandai game. Finally, defendants have admitted awareness of Pac-Man in general and a desire to capitalize on its popularity, reflected in the initial design of the Packri Monster mark which highlighted “Pack” and “Mon”. See Gatto deposition.

[54]

With regard to the issue of copying, this court believes that summary judgment in plaintiff's favor is called for as to those elements of Pac-Man, previously identified, whose originality and thus copyright protection are unchallenged. A detailed comparison of the two works shows that the Packri Monster monster displays the same distinctive gobbling action as the Pac-Man, depicted similarly as a mouth opening and closing. The highly distinctive role reversals and regenerations are present as well, albeit in a slightly modified form due to the limitations of the handheld medium.^FN34

FN34. Thus, Bandai's game cannot exactly depict either character actually consuming the other, nor can the bogey change color to signal vulnerability. Instead, when the monster is eaten by a bogey, it appears briefly inside of the latter. A bogey's vulnerability is signaled by the steady appearance of a monster within it. When a bogey's vulnerability is about to end, the monster outline flashes on and off, simulating the flashing color changes of a Pac-Man ghost whose helplessness is drawing to a close. Most significantly, when a bogey is consumed by a monster, it disappears and then rematerializes in the bogey room, a virtual reproduction of the same sequence in Pac-Man.

With regard to the opening musical themes of the two works, Midway has produced expert analysis which concludes that the two are fundamentally identical and that the Bandai theme was derived from Midway's. Bandai has declined to contest this analysis which is fully admissible on the issue of substantial similarity for copying purposes. Given these circumstances, the court must find that Bandai copied Midway's theme.^FN35

FN35. The creator of the Bandai game merely asserts that its music was based on his own feeling.

Finally, as to the “cartoon” sequence, it is unmistakably clear that the Bandai sequence is virtually the exact duplicate of Midway's first cartoon sequence, previously described. In both sequences, the two characters appear at the right hand side of the screen, heading horizontally left, with the ghost/bogey pursuing the Pac-Man/monster. In both, the characters reach the left side. In Pac-Man both disappear from the left side of the screen; in Packri Monster, only the monster so disappears. The roles then reverse, the Pac-Man/monster chasing the now vulnerable (as signified in the games' own fashions) ghost/bogey to the right side of the screen where they disappear and the sequence ends.^FN36 It is clear that, as is true with the musical themes of the games, absolutely no argument can be made that this sequence is intrinsic to the idea of the game. Bandai does not so argue; rather, it contends that the sequence was inspired by a cartoon break in the Space Invaders game during which an alien and a player's ship “move together”. Miyake *153 deposition. Although this court viewed a videotape of the Space Invaders game, it does not in particular recall such a sequence. Defendants did not submit visual evidence of the Space Invaders sequence; thus, they have failed, at this juncture, to demonstrate that the Packri Monster sequence was derived from Space Invaders. Indeed, Miyake's testimony appears to indicate that the idea of a sequence rather than its content stemmed from Space Invaders. Midway cannot claim and this court would not countenance protection for the idea of having a cartoon sequence. Thus, Bendai could have any number of other sequences involving the game's characters ^FN37 which would not infringe Midway's cartoon. It is only the exact sequence which is protected and which Bandai has apparently copied.^FN38

FN36. The only meaningful difference between the sequences is that in Pac-Man, the pursuing Pac-Man figure appears as larger than normal whereas in Packri Monster, the pursuing monster is the normal size. This difference is most likely due to the difficulty or impossibility of varying the size of the characters in the handheld medium.

FN37. Assuming that Midway is not the owner thereof.

FN38. Should Bandai at trial introduce evidence showing derivation of its particular sequence from a source other than Midway, it may move the court to reconsider this grant of summary judgment as to the copying of the cartoon sequence issue.

As to the original elements of Pac-Man discussed above, this court finds such pervasive similarities that no reasonable jury could find Bandai did not copy Pac-Man. Summary judgment on the issue of copying as to those elements will thus be entered for Midway.

This court now reaches the ultimate question in the Pac-Man copyright infringement case: whether, as a matter of law, Bandai's copying went so far as to constitute improper appropriation of plaintiff's work. For the reasons which follow, the court answers this question in the negative.

As a preliminary matter, it should be noted that the idea/expression dichotomy is not seriously involved in this claim. The court has identified those elements which display sufficient originality to be protected as well as those which will be protected if found not to have been copied from preexisting works.^FN39 Neither set of elements is vitiated by too close a connection with the underlying Pac-Man game idea. As to that idea, this court agrees with the Seventh Circuit that it may be identified thusly:

FN39. In this connection, it should be remembered that defendants' argument of copyright misuse will turn in the first instance on whether there were preexisting works to Pac-Man. Furthermore, as noted previously, Bandai has not adduced evidence that Midway knowingly or intentionally failed to disclose the preexisting works, if any, to the Copyright Office. Finally, Bandai has not demonstrated that it suffered prejudice or that the copyright would be invalid if such preexisting works are found. Indeed, it cannot prove that the copyright would be totally invalid in any event since this court has found other elements of originality in the copyright. Defendants' misuse argument must, at a minimum, abide the outcome of the preexisting works determination.

PAC-MAN is a maze-chase game in which the player scores points by guiding a central figure through various passageways of a maze and at the same time avoiding collision with certain opponents or pursuit figures which move independently about the maze. Under certain conditions, the central figure may temporarily become empowered to chase and overtake the opponents, thereby scoring bonus points.
Atari, 672 F.2d at 617.

[55]

This court's examination of the two works with an eye to gross features rather than details convinces it that a high degree of similarity between the games as a whole exists. Such similarity is revealed through the descriptions of the two games throughout this opinion and, in particular, the cumulative effect as a whole of the protected elements discussed immediately above.^FN40 Coupled with the court's own observations is Midway's extrinsic evidence of lay observer reaction to the similarities between the games. Thus, plaintiff has produced newspaper columns referring to Packri Monster as Pac-Man's “son” or as a Pac-Man-type game. Additional evidence of substantial similarity is Bandai's original *154 decision, later rescinded, to include yet another feature of Pac-Man in Packri Monster, i.e., a fruit target. Finally, there is the testimony of Miyake, Packri Monster's creator, that the two games are quite similar.^FN41

FN40. Although dissection is disfavored on the issue of substantial similarity going to appropriation, the ordinary observer test must descend into detail where necessary to distill the protectable elements of a work. Atari, 672 F.2d at 614.

FN41. An examination of the Universal Athletic factors-degree of originality, nature of audience, etc.-strengthens Midway's case as to Pac-Man. See discussion of these factors in Galaxian section of this opinion supra.

[56]

[57]

Although the court believes that plaintiff has made an extremely strong showing on the merits, the ultimate substantial similarity issue nonetheless remains one for the trier of fact. With regard to the musical themes, for example, plaintiff's expert opinion is irrelevant on this ultimate question. Universal Athletic, 511 F.2d at 907. Furthermore, there remain fact issues as to the scope of the Midway copyright with regard to the game's characters. Resolution of these issues can more appropriately be achieved in the context of the similarity of the works as a whole.

[58]

Denial of summary judgment for plaintiff on the ultimate question of copyright infringement does not end the matter. Plaintiff has made such a strong showing of likelihood of success on the merits ^FN42 that it is entitled to its requested preliminary injunctive relief.^FN43

FN42. Plaintiff has shown a strong likelihood of success on the merits as to those elements of the game whose protection under copyright law is unquestioned. Since success on these elements alone would lead to a finding of copyright infringement, a preliminary injunction is warranted.

FN43. Indeed, if any of this court's decisions granting summary judgment on certain issues is in error, the court would nonetheless still find that plaintiff had made a sufficiently strong showing on that issue to support a preliminary injunction.

[59]

[60]

Turning to the irreparable injury question, this court adopts what it believes to be the emerging trend in copyright case law: where a substantial likelihood of success on the merits has been shown in a motion for a preliminary injunction, irreparable injury will be presumed. Even in the absence of this presumption, the court finds that Midway has made a sufficient showing of irreparable injury to warrant injunctive relief. Midway has spent large sums in developing and popularizing its Pac-Man game. One of the fruits of that effort are the benefits obtainable through the reproduction of that game in the handheld medium. Unauthorized infringing games divert those benefits and jeopardize the investment Midway has made in Pac-Man. In addition, insofar as infringing games may well be identified with Midway's work, such unapproved units can reflect poorly on the reputation and popularity of Midway's games in general and its licensed, authorized handheld units in particular. See Klitzner, 535 F.Supp. at 1259 (deprivation of ability to control nature and quality of defendant's goods comprises serious harm to plaintiff; probable damage to plaintiff's good will never accurately compensable). Furthermore, although it is clear that Pac-Man has enjoyed success virtually unprecedented in video arcade games, it is equally clear that such games have an unpredictable, if not short, life span. Atari, 672 F.2d at 620. Any damage done by an infringing work can thus be completely irreparable as the game may fade from the scene before the final rights of the parties are adjudicated. Finally, the evidence suggests that, absent an injunction, Bandai will seek to market 90,000 or more units of Packri Monster in the United States. The sheer volume of such sales indicates that the injury suffered by Midway will not be trivial. These elements suffice to show irreparable injury especially when, as this court's earlier discussion shows, the Third Circuit at a minimum appears to accept a lesser showing of irreparable injury in a copyright case where there is a strong showing of a likelihood of success on the merits. In the instant case, plaintiff has made a very strong showing of such likelihood of success.

[61]

Two additional factors are the questions of balancing of hardships and where the public interest lies. Bandai alleges it will lose a good deal of its annual *155 income and sales if enjoined. It also asserts that its reputation will be injured if required to cease selling its games and it is ultimately vindicated. As to the latter argument, the court has determined that such vindication is highly unlikely. As to the former, advantages stemming from a deliberately plagiarized work do not give an infringer standing to complain that his “vested interests will be disturbed.” Atari, 672 F.2d 620. Furthermore, the court rejects any attempt by Bandai-America to portray itself as a frail business in danger of ruin if a preliminary injunction issues. The evidence adduced thus far strongly suggests that Bandai-America is but one unit of a large Japanese toy concern with operating arms throughout the world. Finally, as to the public interest question, a preliminary injunction will “preserve the integrity of the copyright laws which seek to encourage individual effort and creativity by granting valuable enforceable rights.” Atari, 672 F.2d at 620. Bandai has advanced no compelling countervailing public interest. Thus, the public interest lies in the grant of the injunction.

The foregoing constitutes the findings of fact and law supporting this court's entry of a preliminary injunction, dated July 2, 1982, prohibiting the importation or sale of Packri Monster games in the United States.

V. Trademark Claims

A. Galaxian: Midway seeks summary judgment on its trademark infringement claim under 15 U.S.C. s 1125(a) (1982). In support of this motion, plaintiff relies essentially upon the distinctiveness of its mark, the identical nature of the two marks, and the evidence it has adduced of defendants' intent to benefit from the good will and popularity of Midway's Galaxian. Plaintiff contends that these elements are sufficient to demonstrate likelihood of confusion and thus warrant summary judgment. Defendants oppose summary judgment primarily by adverting to the ten factors going to likelihood of confusion set forth in Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978) and alleging that Midway has not satisfied each. ^FN44 They also note that in adapting the mark “Galaxian”, they did not copy the exact design of plaintiff's mark.

FN44. That defendants were able to import their game in the face of an ITC exclusion order regarding the mark “Galaxian” is irrelevant insofar as plaintiff has asserted, and Bandai has not contested, that the order was directed only at arcade games bearing that mark. Defendants do not directly contest plaintiff's ownership of the mark; they do not challenge Midway's assertions of prior and continuous use of the mark in the United States.

[62]

[63]

Plaintiff is entitled to summary judgment on this trademark issue. “Galaxian” is clearly a distinctive mark as it is an arbitrary or fanciful name not descriptive of the product. It is therefore entitled to broad protection. 3 Callmann, Unfair Competition, Trademarks, and Monopolies, s 70.1 (1969). As such, no proof of secondary meaning is required. Scott, 589 F.2d at 1228; Caesars World, Inc. v. Caesar's Palace, 490 F.Supp. 818, 822-23 (D.N.J.1980). Plaintiff need only show that defendants' mark is likely to cause confusion in order to prevail. Scott, 589 F.2d at 1228.

The factors in the Third Circuit going to the likelihood of confusion are:

(1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of the public because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner *156 to manufacture a product in the defendant's market.

Scott, 589 F.2d at 1229.

[64]

[65]

An examination of these factors in turn compels the conclusion that plaintiff has shown likelihood of confusion as a matter of law.^FN45

FN45. Preliminarily, it must be noted that there is no requirement that a plaintiff produce strong evidence on each factor. This follows from Third Circuit case law recognizing that one of the factors, actual confusion, need not be shown at all. United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981).

(1) similarity of marks :

The names involved are identical. The Third Circuit has noted that use of the exact trademark gives rise to a great likelihood of confusion. United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981).

(2) strength of owner's mark:

[66]

An arbitrary or fanciful mark, such as “Galaxian”, is inherently a strong mark. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).

(3) price of goods/other factors showing consumer care in purchasing:

There is no dispute that plaintiff's machines cost about $2,000 while defendants' cost $30 to $50. There can also be no dispute that no one will buy defendants' goods thinking they are buying an arcade machine. This, however, is not relevant as will be discussed below (see (7) and (8)). On the other hand, the fact that defendants' goods are games or toys directed largely at children supports plaintiff's position by indicating that the ultimate purchasers of defendants' games are not likely to exercise a great deal of attention or care in acquiring these goods and will be more likely misled by an identity in trademark.

(4) length of time defendant has used mark without evidence of actual confusion:

It appears that defendants had ceased marketing Galaxian by early 1982 after only a year or so of sales. Thus, the absence of evidence of actual confusion is of little probative value here given the short period of availability of the goods in question. Cf. Scott Paper, 589 F.2d at 1231 (small number of instances of actual confusion unpersuasive where there was huge volume of sales).

(5) intent of the defendant in adopting the mark:

Plaintiff has introduced overwhelming evidence that defendants intended to benefit from the good will and popularity of plaintiff's Galaxian game. The evidence includes admissions by Bandai's vice-president, Gatto, that the mark was chosen to capitalize on the popularity of the Midway game. In addition, the packaging of the game itself refers to it as a portable arcade game and a replica of the most popular arcade games.^FN46 Bandai has conceded in argument that it hopes its games will be bought by people “who have favorable association with the game concepts of the Galaxian ... arcade game.” Defendants' brief in opposition to motion for summary judgment at p. 20. There can be no reasonable doubt as to defendants' intention in adopting the mark. ^FN47

FN46. Plaintiff has also introduced evidence that in Japan, defendants have referred to their games as the Galaxian arcade game made portable, etc. Closer to home, it should be noted that the February 1981 issue of Toy & Hobby World magazine contains a picture of Bandai's Galaxian game and the caption “Today's most popular arcade game Galaxian is now available in this portable version...” P. 114. (Emphasis added). This appears to be part of a Bandai press release published by the magazine.

FN47. See Estate of Presley v. Russen, 513 F.Supp. 1339, 1368 (D.N.J.1981) (fact that defendant adopted a mark with intent to obtain unfair commercial advantage from plaintiff's reputation may suffice to infer confusing similarity).

(6) evidence of actual confusion:

None has been presented as to Galaxian but such evidence is not required.

*157 (7) whether non-competing goods are sold in same channels of trade through same media:

and

(8) extent to which the targets of the parties' sales efforts are the same:

In the particular circumstances of this case, these two considerations may profitably be discussed together, as they are intimately related.

It is clear that these two products do not directly compete in the sense that sales of one will displace sales of the other. A mark may, however, be protected in a non-competing market. Scott, 589 F.2d at 1225. While true, as defendants contend, that it is ridiculous to suggest someone desiring to buy an arcade machine will be misled into buying one of defendants' products, that is not the issue here. Rather, the concern in the instant case is that purchasers of defendants' games may be confused as to the source of their origin, i.e., may believe that they are made by the same entity which manufactures the arcade game. In this connection, the purchaser of the arcade game (i.e., the arcade operator) is not the relevant party. Rather it is the user of the arcade machine-the person playing the game-whose confusion as to the source of origin of the handheld games is at issue. See Clarke Declaration, P 15 (there is considerable overlap between market for handheld and arcade machines; it was this overlap in user population that convinced Coleco to enter handheld market). It is the user of the arcade machines to whom Bandai is clearly attempting to sell its Galaxian. Defendants' brief at p. 20. Midway is attempting to sell its product to the arcade owners, but it hopes that it will be accepted by arcade users. Indeed, acceptance by arcade users is the single most important factor in an arcade owner's choice of a game. This fact is attested to by detailed information regarding the earning power of the most popular games which appears in trade journals. Thus, the fact that different channels of trade and advertising are employed is irrelevant since, although the purchasers of the games are different, the users are not. ^FN48 In this case, it is the user of the arcade machines-who “leases” them in one context and “purchases” them in another-upon whom inquiry must focus. Indeed, if anything, the arcade machines provide de facto advertising for the handheld units. The different modes of video game use on the part of the same user population account for the lack of similarity in channels of trade and advertising while simultaneously rendering it irrelevant.

FN48. It is worthy of note that the arcade games in essence “sell” themselves to the consumer of arcade services. One interested in playing arcade games seeks them out in their increasingly more ubiquitous dens; it is the person actually in the arcade to whom Midway's “advertising” efforts-through gaudy cabinet decorations and the attract mode giving a free sample of the game's play-are directed.

(9) relationship of goods in public's mind because of similarity of function :

There can be no contention that the two Galaxian games do not provide a similar leisure function and evince a similar mode of operation. Indeed, through packaging and advertising, each of the handheld units vies with the others to establish in the buyer's mind that it is the most like an arcade game. Defendants' game is no exception, proclaiming that it is a replica of the most popular arcade games.

(10) other facts suggesting that public might expect prior owner to manufacture a product in defendants' market:

In general, there has been a tremendous boom in the non-arcade video market over the past few years with various popular arcade games being translated into handheld or home video units. This constant feverish production of non-arcade embodiments of video games provides some support for an expectation on the part of the public that the producer of such a popular arcade game as Galaxian would come out with a handheld unit.

The facts underlying the discussion above are simple and before the court in the form of the games themselves and a rudimentary *158 knowledge of the video game industry's workings, acquired from this case itself. Defendants have not and cannot challenge the factual basis of the foregoing discussion. Examination of the above considerations, and in particular the identity of the marks and Bandai's intent in adopting its mark, makes clear that on these facts, a likelihood of confusion has overwhelmingly been established as a matter of law. See Johnson & Johnson v. Diaz, 339 F.Supp. 60, 63 (C.D.Cal.1971) (summary judgment appropriate where no substantial factual question presented and ample basis provided for finding of trademark infringement); Bowmar Instrument Corp. v. Continental Microsystems, Inc., 497 F.Supp. 947, 954-57 (S.D.N.Y.1980) (summary judgment appropriate in trademark/s 1125(a) case where no genuine issue of fact).

[67]

(B) Packri Monster: Unlike the “Galaxian” trademark, the Packri Monster mark is not identical to the Pac-Man mark. Thus, there is absent in this claim the “great likelihood of confusion” the Third Circuit attributes to use of an identical mark. U. S. Jaycees, 639 F.2d at 142. In addition, defendants have raised the factual issue of abandonment of the mark on the part of Midway. Material fact issues thus preclude the grant of summary judgment for plaintiff. This denial is without prejudice to plaintiff's right to renew its motion at trial.

VI. Liability of Japanese Defendants

There remain only the questions under copyright law of the liability of the two Japanese corporate defendants as contributing infringers and under copyright and trademark law as vicarious infringers. Since no final adjudication of the copyright claims has been made, the question of these defendants' copyright liability vel non is premature.

Furthermore, it is clear that the vicarious infringement issues are inextricably bound up in the question of the relationship among the three Bandai defendants.^FN49 This question presumably also goes to the issue of this court's in personam jurisdiction over the Japanese defendants. These defendants have denied this court's jurisdiction in their answer. In the interests of efficiency and of providing defendants a full opportunity to raise their in personam jurisdiction objections, adjudication of the vicarious liability of the Japanese defendants will be deferred until they make a motion to challenge in personam jurisdiction. This court will set a date for such a motion since presumably all the facts defendants would rely on are already in their possession.

FN49. See 3 Nimmer s 12.04(A), p. 12-40-41.

The foregoing opinion constitutes this court's resolution of the summary judgment and preliminary injunction motions brought before it by plaintiff Midway. Plaintiff shall submit a form of order as to the summary judgment granted it on the Galaxian trademark claim and as to the issues withdrawn from the case as per F.R.Civ.P. 56(d). Consent to the form of order, if possible, shall be within 10 days.

546 F.Supp. 125, 216 U.S.P.Q. 812, 1983 Copr.L.Dec. P 25,530

END OF DOCUMENT

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"japanese cartoon"

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Tag to Print 1		1. U.S. v. Mann, Slip Copy, 2013 WL 3832682, W.D.Mo., July 23, 2013 (NO. 6:12-CR-03002-1-BCW)
		...The affidavit states that defendant admitted that he downloaded a website, Babygirls.com, where adult women wear diapers, that he had Japanese cartoon pornography on his phone, and that the girls looked young. “He said he also has a photograph of a young......

Tag to Print 2		2. State v. Collazo, Slip Copy, 2011 WL 4529643, Tenn.Crim.App., September 29, 2011 (NO. M2009-02319-CCA-R3CD)
		...that were seized from the appellant's bedroom as the pornographic videos. She said that one of the videos was a “Japanese cartoon[ ]. ” The other videos were “First Time Teens, Teenage Heartbreakers, Teen Dream Number Thirteen, [and] Young as They Come.” K.C. also......

Tag to Print 3		3. Lacina v. Astrue, Not Reported in F.Supp.2d, 2010 WL 3732936, S.D.Iowa, September 17, 2010 (NO. 3:09-CV-00124)
		...lived by herself, was also difficult because it gets “dirty really, really fast.” (Tr. 28.) She also liked to do Japanese cartoon animation and had not finished more artwork because she lacked the energy. (Tr. 37–38.) Lacina testified that her life......

Tag to Print 4		4. U.S. v. Whorley, 550 F.3d 326, C.A.4 (Va.), December 18, 2008 (NO. 06-4288)
		...came from an Illinois website called “Logical Reality.” It also showed that on March 30, 2004, Whorley obtained the 20 Japanese cartoons from a site called “Fractal Underground Studio.” On the same day, he sought eight times to open sites that had......

Tag to Print 5		5. Kirby v. Sega of America, Inc., 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 81 U.S.P.Q.2d 1172, 35 Media L. Rep. 1075, 06 Cal. Daily Op. Serv. 9978, 2006 Daily Journal D.A.R. 14,190, Cal.App. 2 Dist., September 25, 2006 (NO. B183820)
		...it easier for English-speakers to pronounce. Yuda claims he developed the Ulala character based on the “anime” style of Japanese cartoon characters, and denied using Kirby as a reference. Ulala has six main dance moves (up, down, right, left, forward and......

Tag to Print 6		6. Midway Mfg. Co. v. Bandai-America, Inc., 546 F.Supp. 125, 216 U.S.P.Q. 812, 1983 Copr.L.Dec. P 25,530, D.N.J., July 22, 1982 (NO. CIV. 81-3911)
		...originality, Bandai relies upon three allegedly preexisting works which it contends Midway copied: Sega's Head-On video arcade game, a Japanese cartoon ghost character called Kyutaro, and Tomy's mechanical Mr. Mouth game. These will be examined in turn. In so doing, the......

Clear all | Clear 1-6

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U.S. v. Mann

U.S. v. Mann
Slip Copy, 2013 WL 3832682
W.D.Mo.,2013.
July 23, 2013 (Approx. 2 pages)

Slip Copy, 2013 WL 3832682 (W.D.Mo.)

Only the Westlaw citation is currently available.

United States District Court,W.D. Missouri,Southern Division.

UNITED STATES of America, Plaintiff,
v.
Rusty MANN, Defendant.

No. 6:12–CR–03002–1–BCW.

July 23, 2013.

James Joseph Kelleher, U.S. Attorney's Office, Springfield, MO, for Plaintiff.

ORDER

BRIAN C. WIMES, District Judge.

*1 Before the Court is Magistrate Judge James C. England's Report and Recommendation (Doc. # 23) denying Defendant's Motion to Suppress Evidence (Doc. # 17). Defendant filed objections to the Report and Recommendation (Doc. # 27). After an independent review of the record, the applicable law, and the parties' arguments, the Court adopts Magistrate Judge England's findings of fact and conclusions of law. Accordingly, it is hereby

ORDERED Magistrate Judge England's Report and Recommendation (Doc. # 27) be attached to and made part of this Order, and Defendant's Motion to Suppress Evidence (Doc. # 17) is DENIED.

IT IS SO ORDERED.

REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE

JAMES C. ENGLAND, United States Magistrate Judge.

Pursuant to 28 U.S.C. § 636(b), the above-styled criminal action was referred to the undersigned for preliminary review. Pending before the Court is defendant's Motion to Suppress [Doc. # 17], to which the government has responded. [Doc. # 20]. Defendant seeks suppression of all evidence/statements arising from an October 21, 2011 search, conducted by members of the Springfield, Missouri Police Department, incident to his arrest on that date. He specifically, but not exclusively, seeks suppression of any and all evidence/statements derived from the search and seizure of a cell phone, which police found in a backpack located near him at the time of his arrest.

Defendant contends that the warrantless search of the cell phone was unreasonable as a matter of law unless the government can establish that the search and seizure was authorized by one of the exceptions to the warrant requirement. He suggests that the government will argue that the search was a legitimate search incident to arrest, and that the pornography allegedly found on the cell phone would have been inevitably discovered via lawful means. Regarding the search incident to arrest argument, he contends that the government cannot show that the warrantless search of the phone was reasonably necessary to maintain the integrity of potential evidence. Because the phone was not in defendant's possession nor within his immediate control, the search cannot be deemed to have been a valid search incident to arrest. In terms of the inevitable discovery exception, he maintains that the exception is not available because law enforcement was not actively pursuing an alternative line of investigation at the time of the constitutional violation. He states that the search warrant was not sought until three and one-half days after the cell phone was seized. It is also his position that, the “affidavit contains no other information tending to establish probable cause that the seized cell phone was likely to contain images of child pornography.” [Motion to Suppress, at 4].

In the government's response, it is argued that the cell phone in question was briefly searched on the scene after defendant, a convicted child molester, was arrested in front of a daycare facility for violations of state law, and after he claimed that he did not own a telephone. It is the government's position that this on-the-scene search was supported by reasonable suspicion that the phone, which defendant had denied owning, might contain evidence of a crime. It is posited that any evidence could have been subsequently destroyed by defendant, had the cell phone not been seized. The government contends that the need to preserve evidence justifies the retrieval of cell records and text messages from a cell phone during a search incident to arrest. It is also argued that, even if the search was not legally justified, the evidence recovered from the cell phone at the time of defendant's arrest would have been inevitably discovered during the search conducted later pursuant to the state search warrant. The government contends that the investigators conducted the second search pursuant to a valid and unchallenged search warrant, and secondly, that defendant disclosed to Detective McDowell, during her interview with him post-arrest at the Greene County Jail, that he had a photo of a young girl sitting on a toilet on his cell phone.

*2 A review of the record indicates that defendant, a convicted child molester, was apprehended by a church daycare facility, Joyland Learning Center, and across the street from Pipkin Middle School, in Springfield, MO. His arrest occurred after reports from the security director at the daycare center that someone had repeatedly placed cut-up children's clothing and soiled diapers in the fenced-in playground area. These acts occurred on October 1, 2011, and again on the 9th, 17th, 19th, 20th and 21st. The events were captured by the daycare center's surveillance equipment. On the night of the 21st, Detective Todd King of the Springfield Police Department conducted surveillance at the center. He made contact with defendant outside the playground, and the security director positively identified him as the person who had been coming to the center. Defendant was wearing a black mini skirt, women's boots, and was concealing a diaper under his skirt. Detective King was advised by dispatch that defendant was a registered sex offender and was therefore not permitted within 500 feet of school property under state law. He was placed under arrest at that time. During the course of the booking process at the scene, another officer arrived. Officer Jason Marcum asked defendant his phone number, and he replied that he did not have a phone. The officers confiscated defendant's back pack and fanny pack, which were lying nearby, and discovered a cell phone in the back pack. According to his report, Officer Marcum conducted a brief search of the cell phone, and observed numerous photographs, some of which appeared to depict child pornography.

Initially, the Court believes that given all the facts known to the officers at the time, there was reasonable suspicion to support the brief search and seizure of the cell phone at the scene of defendant's arrest for evidence of the crime for which he was arrested. Defendant was a convicted sex offender, and was in violation of state law for being within 500 feet of school property. He had been repeatedly seen committing bizarre acts in the proximity of a daycare center and across the street from a middle school. He denied having a phone, and could not reasonably explain his reasons for being at the daycare center at 11:55 p.m. Therefore, the Court believes that the officers had reasonable suspicion of criminal activity to seize and briefly search the cell phone they found in his backpack, which he denied having, without a warrant, incident to his arrest, to ensure the preservation of evidence related to the arrest, including digital images, that could be inadvertently or intentionally destroyed. See generally Arizona v.. Gant, 556 U.S. 332, 342 (2009).

Even if this were not the case, however, and if it were to be ruled that the search and seizure were not subject to one of the warrant requirements, and therefore illegal, the Court finds that the search warrant was supported by probable cause without any of the information contained in the affidavit that related to the brief cell phone search at the scene. It should be noted that defendant only challenges the warrantless search of the cell phone, and that the search warrant was unchallenged.

*3 Corporal McDowell, the affiant for the affidavit in support of the search warrant to search the Kyocera phone, first provided background information in the affidavit, which has been delineated herein regarding defendant's arrest at the site of the daycare center. She then made several statements from officers on the scene regarding information derived from the search of the cell phone. She stated that: “Mann was also found to have a cell phone which contained a large number of photos many [sic] of which were sexual in nature.” [Affidavit, at 3]. Further in the affidavit, it is stated that Officer Marcum searched the cell phone, incident to arrest, “at which time he located several items of interest.” [ Id.]. In addition to noting that there were 612 pictures in the photograph folder, including a picture of a person wearing a diaper, which appeared to match the one that fell from defendant's dress, the officer stated that the “majority of the pictures were of animated pornography. Several of the pictures appeared to [sic] be pornography involving children.” [ Id.]. These are the only references in the affidavit regarding the information acquired from the cell phone at the scene.

The Court is willing to set aside the information in the affidavit that delineates what was found on the cell phone at the scene of defendant's arrest at the daycare center: That the Kyocera cell phone contained a large number of photos (612), many of which were sexual in nature; that the first picture, dated 10/21 /11, was of a person wearing a diaper, which appeared to match the one defendant had under his dress; that the majority of the pictures were of animated pornography; and that several of the pictures appeared to be child pornography.

Without that information, the Court finds that the affidavit contains ample evidence to support probable cause for the issuance of the search warrant for the cell phone. The affidavit has information provided by the investigating officer, Detective King. This includes the fact that defendant had been under surveillance and had been seen, through surveillance photos, trespassing at the church where he entered the fenced play area of the church's daycare. There were also surveillance photos of him walking to the far corner of the play area and leaving cutup girls' clothing and urine-soiled diapers on the playground. The dates of these events were provided in the affidavit. The affidavit includes the report from Detective King that he apprehended defendant at approximately 11:55 p.m., on a bicycle approaching the play area. Defendant was just outside the playground area, and right across the street from a middle school. He reported to the officer that he was there because he was fixing his bicycle chain, although the officer observed that the chain did not look broken. Dispatch provided information that defendant was a registered sex offender with violent tendencies. Defendant admitted to Detective King that he was homeless and that he kept his belongings at his mother's house, but was not allowed to stay there because children were present. He stated to Officer Marcum that he lived in the woods. During the search of defendant's person incident to his arrest, a diaper fell out of the bottom of the dress he was wearing. Defendant denied having a phone, when asked for his phone number.

*4 The affidavit also indicates that when defendant was interviewed at the Greene County Jail, post- Miranda, he stated he was convicted of first degree child molestation and sexual misconduct on a nine-year old female in 2000; that he was released from prison on October 12, 2010; that he was homeless; that he lived in a tent, and walked by the daycare center on his way home; that he admitted to wearing diapers and urinating on them; and admitted to downloading pornographic material on his cell phone. The affidavit states that defendant admitted that he downloaded a website, Babygirls.com, where adult women wear diapers, that he had Japanese cartoon pornography on his phone, and that the girls looked young. “He said he also has a photograph of a young girl sitting on a toilet but you cannot see her face.” [Affidavit at 7]. Defendant stated that his problems might involve sexual frustration, and that he might be a male nymphomaniac. He admitted to wearing diapers by the daycare center, and that he probably did urinate in them.

In the affidavit, Corporal McDowell provides information regarding her search of defendant's tent, pursuant to an unchallenged search warrant. She indicated that she went to the location of defendant's tent, where she found defendant's sex offender registry paperwork. During the execution of that search warrant, the list of items seized included: 52 pairs of young girls' underpants; a package of diapers that matched the ones found at the daycare center; soiled diapers; young girls' clothing, including a skirt that had slits cut through-out and was marked with red marker; four baby dolls, and a Samsung cell phone. The area surrounding the tent including children's toys and books, and a young girl's bicycle. The tent was located in a high density apartment complex area.

The Court finds that, even with the information about the cell phone search at the arrest being redacted from the affidavit, the affidavit's remaining content is nevertheless sufficient to establish probable cause for the issuance of the search warrant. This includes the fact that defendant, a registered sex offender, was arrested for breaking state law by being within 500 feet of the daycare center and the middle school; that he admitted that he had problems that were sexual in nature; that he admitted that he had a picture of a young girl on the toilet on his cell phone, along with other pictures of women in diapers; that he was found wearing a skirt at the daycare center and having a diaper fall out from underneath his skirt; that he was photographed, on at least six occasions, throwing soiled diapers and cut up children's clothing into the fenced playground area of the daycare center; that he admitted that he had thrown urine-soaked diapers on the playground; and that children's toys, and girls clothes, including a cut-up dress and 52 pairs of girl's underwear, along with four baby dolls, were found in and around his tent during the execution of a lawful search warrant. The Court finds that there was clearly probable cause for the issuance of a search warrant to search the Kyocera cell phone. Defendant initially denied having a cell phone, and then later admitted, Post- Miranda, that he had downloaded pornographic images, including at least one that was arguably child pornography, on his cell phone. Given all the information contained in the affidavit regarding defendant's sex offender history, his illegal actions in repeatedly being in the proximity of the daycare center, and his bizarre behavior, it cannot seriously be argued that there was not probable cause for issuance of the search warrant for the cell phone, even with any and all the information gathered from the brief search at the scene being completely redacted from the affidavit.

*5 Additionally, even if it were assumed that the redaction of those statements would result in a finding that the warrant was not based on probable cause and was therefore defective, the Court finds that the good faith exception enunciated in United States v. Leon, 468 U.S. 897, 922–23 (1984), would still apply. It is clear that Corporal McDowell relied in good faith on what she believed to be a valid search warrant. There is nothing to suggest that the affidavit was so lacking in indicia of probable cause that the Leon good faith exception should not apply. It was objectively reasonable for the officer to have believed that probable cause existed in this case. “Under the Leon good-faith exception, disputed evidence will be admitted if it was objectively reasonable for the officer executing a search warrant to have relied in good faith on the judge's determination that there was probable cause to issue the warrant.” United States v. Grant, 490 F.3d 627, 632 (8th Cir.2007). Based on a full review of the record, the Court finds that Officer McDowell reasonably relied in good faith on the validity of the search warrant.

Based on the foregoing, the Court finds that it must be recommended that Defendant's Motion to Suppress be denied.

Therefore, it is, pursuant to the governing law and in accordance with Local Rule 72.1 of the United States District Court for the Western District of Missouri,

RECOMMENDED that Defendant's Motion to Suppress be denied.

W.D.Mo.,2013.
U.S. v. Mann
Slip Copy, 2013 WL 3832682 (W.D.Mo.)

END OF DOCUMENT

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White v. Samsung Electronics America, Inc.

White v. Samsung Electronics America, Inc.
971 F.2d 1395
C.A.9 (Cal.),1992.
July 29, 1992 (Approx. 15 pages)

971 F.2d 1395, 23 U.S.P.Q.2d 1583, 20 Media L. Rep. 1457

Judges and Attorneys

United States Court of Appeals,Ninth Circuit.

Vanna WHITE, Plaintiff–Appellant,
v.
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation, and David Deutsch Associates, Inc., a New York corporation, Defendants–Appellees.

No. 90–55840.Argued and Submitted June 7, 1991.
Decided July 29, 1992.
As Amended Aug. 19, 1992.

Celebrity sued electronic manufacturer alleging that its product ads violated California Civil Code, common-law right of publicity, and Lanham Act. The United States District Court for the Central District of California, Ronald S.W. Lew, J., granted summary judgment in favor of manufacturer on each claim. Celebrity appealed. The Court of Appeals, Goodwin, Senior Circuit Judge, held that: (1) robot was not celebrity's “likeness” within meaning of California Civil Code provision authorizing award of damages against person who knowingly uses another's likeness for purposes of advertising without consent; (2) issue of material fact precluded summary judgment in favor of manufacturer on claim for violation of common-law right of publicity; and (3) issue of fact precluded summary judgment on Lanham Act claim.

Affirmed in part; reversed in part and remanded.

Alarcon, Circuit Judge, filed opinion concurring in part and dissenting in part.

West Headnotes

Robot with mechanical features which manufacturer used in advertisements to sell electronic products and which caricatured or made impressionistic resemblance to celebrity was not celebrity's “likeness,” for purposes of action under California Civil Code provision authorizing award of damages against person who knowingly uses another's likeness without consent for purposes of advertising or selling. West's Ann.Cal.Civ.Code §§ 3344, 3344(a).

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Genuine issue of material fact as to whether manufacturer misappropriated celebrity's identity for use in ad to sell electronic product precluded summary judgment in favor of manufacturer in celebrity's suit alleging violation of California common-law right of publicity; the individual aspects of the advertisement viewed together left little doubt about which celebrity ad was meant to depict, even though ad did not use celebrity's name or likeness.

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Under California law, right of publicity does not require that appropriations of identity be accomplished through particular means to be actionable; it is not important how defendant has appropriated plaintiff's identity, but whether defendant has done so.

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Genuine issue of material fact as to whether manufacturer's electronic product ads created likelihood of confusion as to celebrity's endorsement of product precluded summary judgment in favor of manufacturer on celebrity's Lanham Act claim. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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Facts relevant to likelihood of confusion for purposes of Lanham Act claim include: strength of plaintiff's mark; relatedness of goods; similarity of marks; evidence of actual confusion; marketing channels used; likely degree of purchaser care; defendant's intent in selecting mark; and likelihood of expansion of product lines. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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In trademark cases involving confusion over endorsement by celebrity plaintiff, “mark” means celebrity's persona; “strength” of mark refers to level of recognition celebrity enjoys among members of society. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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      382Tk1524(2) k. Parody or satire. Most Cited Cases
         (Formerly 382k375.1, 382k375 Trade Regulation)

Manufacturer's electronic product advertisements using female shaped robot, wearing long gown, blonde wig, large jewelry and turning letters in what appeared to be “Wheel of Fortune” game show set was not “parody” of advertisement so as to be defense to trademark violation suit and protected by First Amendment. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a); U.S.C.A. Const.Amend. 1.

*1396 Blaine Greenberg, John Genga, Hill Wynne Troop & Meisinger, Los Angeles, Cal., for plaintiff-appellant.

Anthony Liebig, Kenneth Kulzick, Liebig & Kulzick, Los Angeles, Cal., for defendants-appellees.

Appeal from the United States District Court for the Central District of California.

Before: GOODWIN, PREGERSON, and ALARCON, Circuit Judges.

GOODWIN, Senior Circuit Judge:

This case involves a promotional “fame and fortune” dispute. In running a particular advertisement without Vanna White's permission, defendants Samsung Electronics America, Inc. (Samsung) and David Deutsch Associates, Inc. (Deutsch) attempted to capitalize on White's fame to enhance their fortune. White sued, alleging infringement of various intellectual property rights, but the district court granted summary judgment in favor of the defendants. We affirm in part, reverse in part, and remand.

Plaintiff Vanna White is the hostess of “Wheel of Fortune,” one of the most popular game shows in television history. An estimated forty million people watch the program daily. Capitalizing on the fame which her participation in the show has bestowed on her, White markets her identity to various advertisers.

The dispute in this case arose out of a series of advertisements prepared for Samsung by Deutsch. The series ran in at least half a dozen publications with widespread, and in some cases national, circulation. Each of the advertisements in the series followed the same theme. Each depicted a current item from popular culture and a Samsung electronic product. Each was set in the twenty-first century and conveyed the message that the Samsung product would still be in use by that time. By hypothesizing outrageous future outcomes for the cultural items, the ads created humorous effects. For example, one lampooned current popular notions of an unhealthy diet by depicting a raw steak with the caption: “Revealed to be health food. 2010 A.D.” Another depicted irreverent “news”-show host Morton Downey Jr. in front of an American flag with the caption: “Presidential candidate. 2008 A.D.”

The advertisement which prompted the current dispute was for Samsung video-cassette recorders (VCRs). The ad depicted a robot, dressed in a wig, gown, and jewelry which Deutsch consciously selected to resemble White's hair and dress. The robot was posed next to a game board which is instantly recognizable as the Wheel of Fortune game show set, in a stance for which White is famous. The caption of the ad read: “Longest-running game show. 2012 A.D.” Defendants referred to the ad as the “Vanna White” ad. Unlike the other celebrities used in the campaign, White neither consented to the ads nor was she paid.

Following the circulation of the robot ad, White sued Samsung and Deutsch in federal district court under: (1) California Civil Code § 3344; (2) the California common law right of publicity; and (3) § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The district court granted summary judgment *1397 against White on each of her claims. White now appeals.

I. Section 3344

White first argues that the district court erred in rejecting her claim under section 3344. Section 3344(a) provides, in pertinent part, that “[a]ny person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, ... for purposes of advertising or selling, ... without such person's prior consent ... shall be liable for any damages sustained by the person or persons injured as a result thereof.”

White argues that the Samsung advertisement used her “likeness” in contravention of section 3344. In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), this court rejected Bette Midler's section 3344 claim concerning a Ford television commercial in which a Midler “sound-alike” sang a song which Midler had made famous. In rejecting Midler's claim, this court noted that “[t]he defendants did not use Midler's name or anything else whose use is prohibited by the statute. The voice they used was [another person's], not hers. The term ‘likeness' refers to a visual image not a vocal imitation.” Id. at 463.

In this case, Samsung and Deutsch used a robot with mechanical features, and not, for example, a manikin molded to White's precise features. Without deciding for all purposes when a caricature or impressionistic resemblance might become a “likeness,” we agree with the district court that the robot at issue here was not White's “likeness” within the meaning of section 3344. Accordingly, we affirm the court's dismissal of White's section 3344 claim.

II. Right of Publicity

White next argues that the district court erred in granting summary judgment to defendants on White's common law right of publicity claim. In Eastwood v. Superior Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342 (1983), the California court of appeal stated that the common law right of publicity cause of action “may be pleaded by alleging (1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.” Id. at 417, 198 Cal.Rptr. 342 (citing Prosser, Law of Torts (4th ed. 1971) § 117, pp. 804–807). The district court dismissed White's claim for failure to satisfy Eastwood's second prong, reasoning that defendants had not appropriated White's “name or likeness” with their robot ad. We agree that the robot ad did not make use of White's name or likeness. However, the common law right of publicity is not so confined.

The Eastwood court did not hold that the right of publicity cause of action could be pleaded only by alleging an appropriation of name or likeness. Eastwood involved an unauthorized use of photographs of Clint Eastwood and of his name. Accordingly, the Eastwood court had no occasion to consider the extent beyond the use of name or likeness to which the right of publicity reaches. That court held only that the right of publicity cause of action “may be” pleaded by alleging, inter alia, appropriation of name or likeness, not that the action may be pleaded only in those terms.

The “name or likeness” formulation referred to in Eastwood originated not as an element of the right of publicity cause of action, but as a description of the types of cases in which the cause of action had been recognized. The source of this formulation is Prosser, Privacy, 48 Cal.L.Rev. 383, 401–07 (1960), one of the earliest and most enduring articulations of the common law right of publicity cause of action. In looking at the case law to that point, Prosser recognized that right of publicity cases involved one of two basic factual scenarios: name appropriation, and picture or other likeness appropriation. Id. at 401–02, nn. 156–57.

Even though Prosser focused on appropriations of name or likeness in discussing the right of publicity, he noted that “[i]t is not impossible that there might be appropriation of the plaintiff's identity, as by impersonation, without the use of either his name or his likeness, and that this would *1398 be an invasion of his right of privacy.” Id. at 401, n. 155. ^FN1 At the time Prosser wrote, he noted however, that “[n]o such case appears to have arisen.” Id.

FN1. Under Professor Prosser's scheme, the right of publicity is the last of the four categories of the right to privacy. Prosser, 48 Cal.L.Rev. at 389.

Since Prosser's early formulation, the case law has borne out his insight that the right of publicity is not limited to the appropriation of name or likeness. In Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.1974), the defendant had used a photograph of the plaintiff's race car in a television commercial. Although the plaintiff appeared driving the car in the photograph, his features were not visible. Even though the defendant had not appropriated the plaintiff's name or likeness, this court held that plaintiff's California right of publicity claim should reach the jury.

In Midler, this court held that, even though the defendants had not used Midler's name or likeness, Midler had stated a claim for violation of her California common law right of publicity because “the defendants ... for their own profit in selling their product did appropriate part of her identity” by using a Midler sound-alike. Id. at 463–64.

In Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir.1983), the defendant had marketed portable toilets under the brand name “Here's Johnny”—Johnny Carson's signature “Tonight Show” introduction—without Carson's permission. The district court had dismissed Carson's Michigan common law right of publicity claim because the defendants had not used Carson's “name or likeness.” Id. at 835. In reversing the district court, the sixth circuit found “the district court's conception of the right of publicity ... too narrow” and held that the right was implicated because the defendant had appropriated Carson's identity by using, inter alia, the phrase “Here's Johnny.” Id. at 835–37.

These cases teach not only that the common law right of publicity reaches means of appropriation other than name or likeness, but that the specific means of appropriation are relevant only for determining whether the defendant has in fact appropriated the plaintiff's identity. The right of publicity does not require that appropriations of identity be accomplished through particular means to be actionable. It is noteworthy that the Midler and Carson defendants not only avoided using the plaintiff's name or likeness, but they also avoided appropriating the celebrity's voice, signature, and photograph. The photograph in Motschenbacher did include the plaintiff, but because the plaintiff was not visible the driver could have been an actor or dummy and the analysis in the case would have been the same.

Although the defendants in these cases avoided the most obvious means of appropriating the plaintiffs' identities, each of their actions directly implicated the commercial interests which the right of publicity is designed to protect. As the Carson court explained:

[t]he right of publicity has developed to protect the commercial interest of celebrities in their identities. The theory of the right is that a celebrity's identity can be valuable in the promotion of products, and the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity.... If the celebrity's identity is commercially exploited, there has been an invasion of his right whether or not his “name or likeness” is used.

Carson, 698 F.2d at 835. It is not important how the defendant has appropriated the plaintiff's identity, but whether the defendant has done so. Motschenbacher, Midler, and Carson teach the impossibility of treating the right of publicity as guarding only against a laundry list of specific means of appropriating identity. A rule which says that the right of publicity can be infringed only through the use of nine different methods of appropriating identity merely challenges the clever advertising strategist to come up with the tenth.

*1399 Indeed, if we treated the means of appropriation as dispositive in our analysis of the right of publicity, we would not only weaken the right but effectively eviscerate it. The right would fail to protect those plaintiffs most in need of its protection. Advertisers use celebrities to promote their products. The more popular the celebrity, the greater the number of people who recognize her, and the greater the visibility for the product. The identities of the most popular celebrities are not only the most attractive for advertisers, but also the easiest to evoke without resorting to obvious means such as name, likeness, or voice.

Consider a hypothetical advertisement which depicts a mechanical robot with male features, an African–American complexion, and a bald head. The robot is wearing black hightop Air Jordan basketball sneakers, and a red basketball uniform with black trim, baggy shorts, and the number 23 (though not revealing “Bulls” or “Jordan” lettering). The ad depicts the robot dunking a basketball one-handed, stiff-armed, legs extended like open scissors, and tongue hanging out. Now envision that this ad is run on television during professional basketball games. Considered individually, the robot's physical attributes, its dress, and its stance tell us little. Taken together, they lead to the only conclusion that any sports viewer who has registered a discernible pulse in the past five years would reach: the ad is about Michael Jordan.

Viewed separately, the individual aspects of the advertisement in the present case say little. Viewed together, they leave little doubt about the celebrity the ad is meant to depict. The female-shaped robot is wearing a long gown, blond wig, and large jewelry. Vanna White dresses exactly like this at times, but so do many other women. The robot is in the process of turning a block letter on a game-board. Vanna White dresses like this while turning letters on a game-board but perhaps similarly attired Scrabble-playing women do this as well. The robot is standing on what looks to be the Wheel of Fortune game show set. Vanna White dresses like this, turns letters, and does this on the Wheel of Fortune game show. She is the only one. Indeed, defendants themselves referred to their ad as the “Vanna White” ad. We are not surprised.

Television and other media create marketable celebrity identity value. Considerable energy and ingenuity are expended by those who have achieved celebrity value to exploit it for profit. The law protects the celebrity's sole right to exploit this value whether the celebrity has achieved her fame out of rare ability, dumb luck, or a combination thereof. We decline Samsung and Deutch's invitation to permit the evisceration of the common law right of publicity through means as facile as those in this case. Because White has alleged facts showing that Samsung and Deutsch had appropriated her identity, the district court erred by rejecting, on summary judgment, White's common law right of publicity claim.

III. The Lanham Act

White's final argument is that the district court erred in denying her claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The version of section 43(a) applicable to this case ^FN2 provides, in pertinent part, that “[a]ny person who shall ... use, in connection with any goods or services ... any false description or representation ... shall be liable to a civil action ... by any person who believes that he is or is likely to be damaged by the use of any such false description or designation.” 15 U.S.C. § 1125(a).

FN2. The statute was amended after White filed her complaint. The amendments would not have altered the analysis in this case however.

To prevail on her Lanham Act claim, White is required to show that in running the robot ad, Samsung and Deutsch created a likelihood of confusion, Academy of Motion Picture Arts v. Creative House, 944 F.2d 1446, 1454 (9th Cir.1991); Toho Co. Ltd. v. Sears Roebuck & Co., 645 F.2d 788, 790 (9th Cir.1981) *1400 New West Corp. v. NYM Co. of California, 595 F.2d 1194, 1201 (9th Cir.1979), over whether White was endorsing Samsung's VCRs. HMH Publishing Co. v. Brincat, 504 F.2d 713 (9th Cir.1974); Allen v. National Video, Inc., 610 F.Supp. 612 (D.C.N.Y.1985).

This circuit recognizes several different multi-factor tests for determining whether a likelihood of confusion exists. See Academy, 944 F.2d at 1454, n. 3. None of these tests is correct to the exclusion of the others. Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir.1990). Normally, in reviewing the district court's decision, this court will look to the particular test that the district court used. Academy, 944 F.2d at 1454, n. 3; Eclipse, 894 F.2d at 1117–1118. However, because the district court in this case apparently did not use any of the multi-factor tests in making its likelihood of confusion determination, and because this case involves an appeal from summary judgment and we review de novo the district court's determination, we will look for guidance to the 8–factor test enunciated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979). According to AMF, factors relevant to a likelihood of confusion include:

(1) strength of the plaintiff's mark;

(2) relatedness of the goods;

(3) similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels used;

(6) likely degree of purchaser care;

(7) defendant's intent in selecting the mark;

(8) likelihood of expansion of the product lines.

599 F.2d at 348–49. We turn now to consider White's claim in light of each factor.

In cases involving confusion over endorsement by a celebrity plaintiff, “mark” means the celebrity's persona. See Allen, 610 F.Supp. at 627. The “strength” of the mark refers to the level of recognition the celebrity enjoys among members of society. See Academy, 944 F.2d at 1455. If Vanna White is unknown to the segment of the public at whom Samsung's robot ad was directed, then that segment could not be confused as to whether she was endorsing Samsung VCRs. Conversely, if White is well-known, this would allow the possibility of a likelihood of confusion. For the purposes of the Sleekcraft test, White's “mark,” or celebrity identity, is strong.

In cases concerning confusion over celebrity endorsement, the plaintiff's “goods” concern the reasons for or source of the plaintiff's fame. Because White's fame is based on her televised performances, her “goods” are closely related to Samsung's VCRs. Indeed, the ad itself reinforced the relationship by informing its readers that they would be taping the “longest-running game show” on Samsung's VCRs well into the future.

The third factor, “similarity of the marks,” both supports and contradicts a finding of likelihood of confusion. On the one hand, all of the aspects of the robot ad identify White; on the other, the figure is quite clearly a robot, not a human. This ambiguity means that we must look to the other factors for resolution.

The fourth factor does not favor White's claim because she has presented no evidence of actual confusion.

Fifth, however, White has appeared in the same stance as the robot from the ad in numerous magazines, including the covers of some. Magazines were used as the marketing channels for the robot ad. This factor cuts toward a likelihood of confusion.

Sixth, consumers are not likely to be particularly careful in determining who endorses VCRs, making confusion as to their endorsement more likely.

Concerning the seventh factor, “defendant's intent,” the district court found that, in running the robot ad, the defendants had intended a spoof of the “Wheel of Fortune.” The relevant question is whether the defendants “intended to profit by confusing consumers” concerning the endorsement of Samsung VCRs. Toho, 645 F.2d 788. We do not disagree that defendants intended to spoof Vanna White and “Wheel of Fortune.” That does not preclude, however, the possibility that defendants also *1401 intended to confuse consumers regarding endorsement. The robot ad was one of a series of ads run by defendants which followed the same theme. Another ad in the series depicted Morton Downey Jr. as a presidential candidate in the year 2008. Doubtless, defendants intended to spoof presidential elections and Mr. Downey through this ad. Consumers, however, would likely believe, and would be correct in so believing, that Mr. Downey was paid for his permission and was endorsing Samsung products. Looking at the series of advertisements as a whole, a jury could reasonably conclude that beneath the surface humor of the series lay an intent to persuade consumers that celebrity Vanna White, like celebrity Downey, was endorsing Samsung products.

Finally, the eighth factor, “likelihood of expansion of the product lines,” does not appear apposite to a celebrity endorsement case such as this.

Application of the Sleekcraft factors to this case indicates that the district court erred in rejecting White's Lanham Act claim at the summary judgment stage. In so concluding, we emphasize two facts, however. First, construing the motion papers in White's favor, as we must, we hold only that White has raised a genuine issue of material fact concerning a likelihood of confusion as to her endorsement. Cohen v. Paramount Pictures Corp., 845 F.2d 851, 852–53 (9th Cir.1988). Whether White's Lanham Act claim should succeed is a matter for the jury. Second, we stress that we reach this conclusion in light of the peculiar facts of this case. In particular, we note that the robot ad identifies White and was part of a series of ads in which other celebrities participated and were paid for their endorsement of Samsung's products.

IV. The Parody Defense

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In defense, defendants cite a number of cases for the proposition that their robot ad constituted protected speech. The only cases they cite which are even remotely relevant to this case are Hustler Magazine v. Falwell, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988) and L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987). Those cases involved parodies of advertisements run for the purpose of poking fun at Jerry Falwell and L.L. Bean, respectively. This case involves a true advertisement run for the purpose of selling Samsung VCRs. The ad's spoof of Vanna White and Wheel of Fortune is subservient and only tangentially related to the ad's primary message: “buy Samsung VCRs.” Defendants' parody arguments are better addressed to non-commercial parodies.^FN3 The difference between a “parody” and a “knock-off” is the difference between fun and profit.

FN3. In warning of a first amendment chill to expressive conduct, the dissent reads this decision too broadly. See Dissent at 1407. This case concerns only the market which exists in our society for the exploitation of celebrity to sell products, and an attempt to take a free ride on a celebrity's celebrity value. Commercial advertising which relies on celebrity fame is different from other forms of expressive activity in two crucial ways.

First, for celebrity exploitation advertising to be effective, the advertisement must evoke the celebrity's identity. The more effective the evocation, the better the advertisement. If, as Samsung claims, its ad was based on a “generic” game-show hostess and not on Vanna White, the ad would not have violated anyone's right of publicity, but it would also not have been as humorous or as effective.

Second, even if some forms of expressive activity, such as parody, do rely on identity evocation, the first amendment hurdle will bar most right of publicity actions against those activities. Cf. Falwell, 485 U.S. at 46, 108 S.Ct. at 876. In the case of commercial advertising, however, the first amendment hurdle is not so high. Central Hudson Gas & Electric Corp. v. Public Service Comm'n of New York, 447 U.S. 557, 566, 100 S.Ct. 2343, 2351, 65 L.Ed.2d 341 (1980). Realizing this, Samsung attempts to elevate its ad above the status of garden-variety commercial speech by pointing to the ad's parody of Vanna White. Samsung's argument is unavailing. See Board of Trustees, State Univ. of N.Y. v. Fox, 492 U.S. 469, 474–75, 109 S.Ct. 3028, 3031, 106 L.Ed.2d 388 (1988); Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 67–68, 103 S.Ct. 2875, 2880–81, 77 L.Ed.2d 469 (1983). Unless the first amendment bars all right of publicity actions—and it does not, see Zachini v. Scripps–Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977)—then it does not bar this case.

1402 V. Conclusion*

In remanding this case, we hold only that White has pleaded claims which can go to the jury for its decision.

AFFIRMED IN PART, REVERSED IN PART, and REMANDED.

ALARCON, Circuit Judge, concurring in part, dissenting in part:

Vanna White seeks recovery from Samsung based on three theories: the right to privacy, the right to publicity, and the Lanham Act. I concur in the majority's conclusions on the right to privacy. I respectfully dissent from its holdings on the right to publicity and the Lanham Act claims.

I. RIGHT TO PRIVACY (CAL.CIV.CODE § 3344(a))

I agree with the majority's conclusion that no reasonable jury could find that the robot was a “likeness” of Vanna White within the meaning of California Civil Code section 3344(a).

II. RIGHT TO PUBLICITY

I must dissent from the majority's holding on Vanna White's right to publicity claim. The district court found that, since the commercial advertisement did not show a “likeness” of Vanna White, Samsung did not improperly use the plaintiff's identity. The majority asserts that the use of a likeness is not required under California common law. According to the majority, recovery is authorized if there is an appropriation of one's “identity.” I cannot find any holding of a California court that supports this conclusion. Furthermore, the record does not support the majority's finding that Vanna White's “identity” was appropriated.

The district court relied on Eastwood v. Superior Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342, (1983), in holding that there was no cause of action for infringement on the right to publicity because there had been no use of a likeness. In Eastwood, the California Court of Appeal described the elements of the tort of “commercial appropriation of the right of publicity” as “(1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, ...; (3) lack of consent; and (4) resulting injury.” Id. at 417, 198 Cal.Rptr. 342. (Emphasis added).

All of the California cases that my research has disclosed hold that a cause of action for appropriation of the right to publicity requires proof of the appropriation of a name or likeness. See, e.g., Lugosi v. Universal Pictures, 25 Cal.3d 813, 603 P.2d 425, 160 Cal.Rptr. 323 (1979) (“The so-called right of publicity means in essence that the reaction of the public to name and likeness ... endows the name and likeness of the person involved with commercially exploitable opportunities.”); Guglielmi v. Spelling–Goldberg Prods., 25 Cal.3d 860, 603 P.2d 454, 457, 160 Cal.Rptr. 352, 355 (1979) (use of name of Rudolph Valentino in fictional biography allowed); Eastwood v. Superior Court, supra (use of photo and name of actor on cover of tabloid newspaper); In re Weingand, 231 Cal.App.2d 289, 41 Cal.Rptr. 778 (1964) (aspiring actor denied court approval to change name to “Peter Lorie” when famous actor Peter Lorre objected); Fairfield v. American Photocopy Equip. Co., 138 Cal.App.2d 82, 291 P.2d 194 (1955), later app. 158 Cal.App.2d 53, 322 P.2d 93 (1958) (use of attorney's name in advertisement); Gill v. Curtis Publishing Co., 38 C.2d 273, 239 P.2d 630 (1952) (use of photograph of a couple in a magazine).

Notwithstanding the fact that California case law clearly limits the test of the right to publicity to name and likeness, the majority concludes that “the common law right of publicity is not so confined.” Majority opinion at p. 1397. The majority relies on two factors to support its innovative extension of the California law. The first is that the Eastwood court's statement of the elements was permissive rather than exclusive. The second is that Dean Prosser, in describing the common law right to publicity, stated that it might be *1403 possible that the right extended beyond name or likeness. These are slender reeds to support a federal court's attempt to create new law for the state of California.

In reaching its surprising conclusion, the majority has ignored the fact that the California Court of Appeal in Eastwood specifically addressed the differences between the common law right to publicity and the statutory cause of action codified in California Civil Code section 3344. The court explained that “[t]he differences between the common law and the statutory actions are: (1) Section 3344, subdivision (a) requires knowing use whereas under case law, mistake and inadvertence are not a defense against commercial appropriation and (2) section 3344, subdivision (g) expressly provides that its remedies are cumulative and in addition to any provided by law.” Eastwood, 149 Cal.App.3d at n. 6, 198 Cal.Rptr. 342 (emphasis in original). The court did not include appropriations of identity by means other than name or likeness among its list of differences between the statute and the common law.

The majority also relies on Dean Prosser's statement that “[i]t is not impossible that there might be an appropriation of the plaintiff's identity, as by impersonation, without the use of either his name or his likeness, and that this would be an invasion of his right of privacy.” Prosser, Privacy, 48 Cal.L.Rev. 383, 401 n. 155 (1960). As Dean Prosser noted, however, “[n]o such case appears to have arisen.” Id.

The majority states that the case law has borne out Dean Prosser's insight that the right to publicity is not limited to name or likeness. As noted above, however, the courts of California have never found an infringement on the right to publicity without the use of the plaintiff's name or likeness.

The interest of the California Legislature as expressed in California Civil Code section 3344 appears to preclude the result reached by the majority. The original section 3344 protected only name or likeness. In 1984, ten years after our decision in Motschenbacher v. R.J. Reynolds Tobacco Company, 498 F.2d 821 (9th Cir.1974) and 24 years after Prosser speculated about the future development of the law of the right of publicity, the California legislature amended the statute. California law now makes the use of someone's voice or signature, as well as name or likeness, actionable. Cal.Civ.Code sec. 2233(a) (Deering 1991 Supp.). Thus, California, after our decision in Motschenbacher specifically contemplated protection for interests other than name or likeness, but did not include a cause of action for appropriation of another person's identity. The ancient maxim, inclusio unius est exclusio alterius, would appear to bar the majority's innovative extension of the right of publicity. The clear implication from the fact that the California Legislature chose to add only voice and signature to the previously protected interests is that it wished to limit the cause of action to enumerated attributes.

The majority has focused on federal decisions in its novel extension of California Common Law. Those decisions do not provide support for the majority's decision.

In each of the federal cases relied upon by the majority, the advertisement affirmatively represented that the person depicted therein was the plaintiff. In this case, it is clear that a metal robot and not the plaintiff, Vanna White, is depicted in the commercial advertisement. The record does not show an appropriation of Vanna White's identity.

In Motschenbacher, a picture of a well-known race driver's car, including its unique markings, was used in an advertisement. Id. at 822. Although the driver could be seen in the car, his features were not visible. Id. The distinctive markings on the car were the only information shown in the ad regarding the identity of the driver. These distinctive markings compelled the inference that Motschenbacher was the person sitting in the racing car. We concluded that “California appellate courts would ... afford legal protection to an individual's proprietary interest in his own identity.” Id. at 825. (Emphasis added). Because the distinctive markings on the racing car were sufficient to identify Motschenbacher as the driver of the car, *1404 we held that an issue of fact had been raised as to whether his identity had been appropriated. Id. at 827.

In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), a singer who had been instructed to sound as much like Bette Midler as possible, sang a song in a radio commercial made famous by Bette Midler. Id. at 461. A number of persons told Bette Midler that they thought that she had made the commercial. Id. at 462. Aside from the voice, there was no information in the commercial from which the singer could be identified. We noted that “[t]he human voice is one of the most palpable ways identity is manifested.” Id. at 463. We held that, “[t]o impersonate her voice is to pirate her identity,” id., and concluded that Midler had raised a question of fact as to the misappropriation of her identity.

In Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir.1983), the Sixth Circuit was called upon to interpret Michigan's common-law right to publicity. The case involved a manufacturer who used the words, “Here's Johnny,” on portable toilets. Id. at 832–33. These same words were used to introduce the star of a popular late-night television program. There was nothing to indicate that this use of the phrase on the portable toilets was not associated with Johnny Carson's television program. The court found that “[h]ere there was an appropriation of Carson's identity,” which violated the right to publicity. Id. at 837.

The common theme in these federal cases is that identifying characteristics unique to the plaintiffs were used in a context in which they were the only information as to the identity of the individual. The commercial advertisements in each case showed attributes of the plaintiff's identities which made it appear that the plaintiff was the person identified in the commercial. No effort was made to dispel the impression that the plaintiffs were the source of the personal attributes at issue. The commercials affirmatively represented that the plaintiffs were involved. See, e.g., Midler at 462 (“The [Motschenbacher] ad suggested that it was he.... In the same way the defendants here used an imitation to convey the impression that Midler was singing for them.”). The proper interpretation of Motschenbacher, Midler, and Carson is that where identifying characteristics unique to a plaintiff are the only information as to the identity of the person appearing in an ad, a triable issue of fact has been raised as to whether his or her identity as been appropriated.

The case before this court is distinguishable from the factual showing made in Motschenbacher, Midler, and Carson. It is patently clear to anyone viewing the commercial advertisement that Vanna White was not being depicted. No reasonable juror could confuse a metal robot with Vanna White.

The majority contends that “the individual aspects of the advertisement ... [v]iewed together leave little doubt about the celebrity the ad is meant to depict.” Majority Opinion at p. 1399. It derives this conclusion from the fact that Vanna White is “the only one” who “dresses like this, turns letters, and does this on the Wheel of Fortune game show.” Id. In reaching this conclusion, the majority confuses Vanna White, the person, with the role she has assumed as the current hostess on the “Wheel of Fortune” television game show. A recognition of the distinction between a performer and the part he or she plays is essential for a proper analysis of the facts of this case. As is discussed below, those things which Vanna White claims identify her are not unique to her. They are, instead, attributes of the role she plays. The representation of those attributes, therefore, does not constitute a representation of Vanna White. See Nurmi v. Peterson, 10 U.S.P.Q.2d 1775 (C.D.Cal.1989) (distinguishing between performer and role).

Vanna White is a one-role celebrity. She is famous solely for appearing as the hostess on the “Wheel of Fortune” television show. There is nothing unique about Vanna White or the attributes which she claims identify her. Although she appears to be an attractive woman, her face and figure are no more distinctive than that of other equally comely women. She performs her *1405 role as hostess on “Wheel of Fortune” in a simple and straight-forward manner. Her work does not require her to display whatever artistic talent she may possess.

The majority appears to argue that because Samsung created a robot with the physical proportions of an attractive woman, posed it gracefully, dressed it in a blond wig, an evening gown, and jewelry, and placed it on a set that resembles the Wheel of Fortune layout, it thereby appropriated Vanna White's identity. But an attractive appearance, a graceful pose, blond hair, an evening gown, and jewelry are attributes shared by many women, especially in Southern California. These common attributes are particularly evident among game-show hostesses, models, actresses, singers, and other women in the entertainment field. They are not unique attributes of Vanna White's identity. Accordingly, I cannot join in the majority's conclusion that, even if viewed together, these attributes identify Vanna White and, therefore, raise a triable issue as to the appropriation of her identity.

The only characteristic in the commercial advertisement that is not common to many female performers or celebrities is the imitation of the “Wheel of Fortune” set. This set is the only thing which might possibly lead a viewer to think of Vanna White. The Wheel of Fortune set, however, is not an attribute of Vanna White's identity. It is an identifying characteristic of a television game show, a prop with which Vanna White interacts in her role as the current hostess. To say that Vanna White may bring an action when another blond female performer or robot appears on such a set as a hostess will, I am sure, be a surprise to the owners of the show. Cf. Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663 (7th Cir.1986) (right to publicity in videotaped performances preempted by copyright of owner of telecast).

The record shows that Samsung recognized the market value of Vanna White's identity. No doubt the advertisement would have been more effective if Vanna White had appeared in it. But the fact that Samsung recognized Vanna White's value as a celebrity does not necessarily mean that it appropriated her identity. The record shows that Samsung dressed a robot in a costume usually worn by television game-show hostesses, including Vanna White. A blond wig, and glamorous clothing are not characteristics unique to the current hostess of Wheel of Fortune. This evidence does not support the majority's determination that the advertisement was meant to depict Vanna White. The advertisement was intended to depict a robot, playing the role Vanna White currently plays on the Wheel of Fortune. I quite agree that anyone seeing the commercial advertisement would be reminded of Vanna White. Any performance by another female celebrity as a game-show hostess, however, will also remind the viewer of Vanna White because Vanna White's celebrity is so closely associated with the role. But the fact that an actor or actress became famous for playing a particular role has, until now, never been sufficient to give the performer a proprietary interest in it. I cannot agree with the majority that the California courts, which have consistently taken a narrow view of the right to publicity, would extend law to these unique facts.

III. THE LANHAM ACT

Vanna White's Lanham Act claim is easily resolved by applying the proper legal standard. Vanna White seeks damages for violation of section 43(a) of the Lanham Act. To succeed, Vanna White must prove actual deception of the consuming public. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 208 (9th Cir.1989) (claim for damages under section 43(a) requires showing the defendant “actually deceived a significant portion of the consuming public.”); see also PPX Enterprises, Inc. v. Audiofidelity Enterprises, Inc., 818 F.2d 266, 271 (2d Cir.1987) (“to establish entitlement to damages for violation of section 43(a): [Plaintiffs] must establish actual confusion or deception resulting from the violation.”); J. Gilson, Trademark Protection *1406 and Practice section 7.02[8] at 7–137 to 7–138 (1991) (plaintiffs must show actual deception to obtain damages under section 43(a)). Vanna White offered no evidence that any portion of the consuming public was deceived. The district court was correct in granting summary judgment on Vanna White's Lanham Act claim.

The majority finds that because a majority of factors set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979), favor Vanna White, the district court erred in granting summary judgment.

The AMF test is designed to aid in determining whether two marks are so sufficiently similar that it is likely that a consumer would confuse them. Where the marks are so obviously different that no confusion could possibly occur, the test is unnecessary. That is the situation in this matter. The attempt to use the Lanham Act to prevent “misappropriations” of which a court does not approve results in the distortion of the law which makes it more difficult to apply the law in appropriate cases. See Hanson & Walls, Protecting Trademark Goodwill: Towards a Federal Standard of Misappropriation, 81 Trademark Rep. 480, 511–513 (1991). This case is an example of such distortion.

The majority assumes the conclusion that the AMF test is designed to disclose. In repeatedly stating that the robot “identifies” Vanna White, the majority has usurped the fact finding function of the district court.

The majority holds that the first factor of the AMF test, strength of the mark, weighs in Vanna White's favor. It equates this factor with the strength of Vanna White's fame, citing Allen v. National Video, Inc., 610 F.Supp. 612 (D.C.N.Y.1985). Allen involved a celebrity look-alike who bore a remarkable resemblance to Woody Allen. Id. at 617. The instant matter involves a robot that bears no resemblance to Vanna White.

It is unclear whether the “mark” for which Vanna White seeks protection is her screen image or the imitation Wheel of Fortune. Although Vanna White is certainly famous for being famous, there is no evidence in the record that consumers identify the specific characteristics at issue, i.e., blond hair and fancy dress, solely with Vanna White. The majority ignores this important distinction.

The majority has glossed over the third AMF factor—similarity of the marks—the most important factor in this case. The majority finds this factor “ambiguous” because the common characteristics “identify” Vanna White. Majority Opinion at p. 1400. We are required, however, to compare marks in their entirety. California Cooler, Inc. v. Loretto Winery, 774 F.2d 1451 (9th Cir.1985). In this matter, the consumer is confronted with two entities. One is Vanna White. The other is a robot. No one could reasonably confuse the two.

Certain aspects of a mark may have a greater impact than other aspects. When a mark has certain salient characteristics, they are given greater weight. Country Floors, Inc. v. Gepner, 930 F.2d 1056 (3d Cir.1991); Henri's Food Products Co. v. Kraft, Inc., 717 F.2d 352 (7th Cir.1983); Giant Food, Inc. v. Nations' Foodservice, Inc., 710 F.2d 1565 (Fed.Cir.1983). The face of Vanna White and the features of the robot are obviously more important characteristics than their hair, dress, physical proportions, jewelry, or the decoration of the set. Thus, the features of the robot and Vanna White should be given great weight in the analysis. It should be clear to anyone viewing the commercial advertisement that the crude features of the robot are very dissimilar to Vanna White's attractive and human face.

The majority's analysis of the intent or seventh factor in AMF is similarly suspect. The question presented here is whether there is any evidence in the record that Samsung intended to confuse consumers. It did not.

Where the circumstances are sufficient to eliminate any likelihood of confusion, this court has repeatedly held that there is no claim for a violation of the Lanham Act. See Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir.1981) (“Bagzilla” garbage bags did not infringe “Godzilla” mark); *1407 Walt Disney Prods. v. Air Pi rates, 581 F.2d 751 (9th Cir.1978), cert. denied sub nom O'Neill v. Walt Disney Prods, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979) (“Silly Sympathies” in adult comic books did not infringe on Disney's “Silly Symphonies”). The use of a robot in the commercial advertisement makes it clear that Vanna White did not endorse Samsung's product.

Although likelihood of confusion may usually be a factual question, “courts retain an important authority to monitor the outer limits of substantial similarity within which a jury is permitted to make the factual determination whether there is a likelihood of confusion.” Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 246 (2d Cir.1983). “[S]ummary judgment is appropriate if the court is satisfied that the products or marks are so dissimilar that no question of fact is presented.” Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir.1984).

“There is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Vanna White has presented no evidence of actual deception. Thus, she has failed to raise a genuine issue of material fact that would support her Lanham Act claim.

IV. SAMSUNG'S FIRST AMENDMENT DEFENSE

The majority gives Samsung's First Amendment defense short shrift because “[t]his case involves a true advertisement run for the purpose of selling Samsung VCRs.” Majority opinion at p. 1401. I respectfully disagree with the majority's analysis of this issue as well.

The majority's attempt to distinguish this case from Hustler Magazine v. Falwell, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988), and L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987), is unpersuasive. The majority notes that the parodies in those cases were made for the purpose of poking fun at the Reverend Jerry Falwell and L.L. Bean. But the majority fails to consider that the defendants in those cases were making fun of the Reverend Jerry Falwell and L.L. Bean for the purely commercial purpose of selling soft-core pornographic magazines.

Generally, a parody does not constitute an infringement on the original work if it takes no more than is necessary to “conjure up” the original. Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 756 (9th Cir.1978). The majority has failed to consider these factors properly in deciding that Vanna White may bring an action for damages solely because the popularity of the fame show, Wheel of Fortune.

The effect of the majority's holding on expressive conduct is difficult to estimate. The majority's position seems to allow any famous person or entity to bring suit based on any commercial advertisement that depicts a character or role performed by the plaintiff. Under the majority's view of the law, Gene Autry could have brought an action for damages against all other singing cowboys. Clint Eastwood would be able to sue anyone who plays a tall, soft-spoken cowboy, unless, of course, Jimmy Stewart had not previously enjoined Clint Eastwood. Johnny Weismuller would have been able to sue each actor who played the role of Tarzan. Sylvester Stallone could sue actors who play blue-collar boxers. Chuck Norris could sue all karate experts who display their skills in motion pictures. Arnold Schwarzenegger could sue body builders who are compensated for appearing in public.

The majority's reading of the Lanham Act would provide a basis for “commercial” enterprises to maintain an action for section 43(a) violations even in the absence of confusion or deception. May Black and Decker, maker of the “Dustbuster” portable vacuum, now sue “Bust-dusters,” the Los Angeles topless cleaning service. Can the Los Angeles Kings hockey team state a cause of action against the City of Las Vegas for its billboards reading “L.A. has the Kings, but we have the Aces.”

*1408 Direct competitive advertising could also be affected. Will BMW, which advertises its automobiles as “the ultimate driving machine,” be able to maintain an action against Toyota for advertising one of its cars as “the ultimate saving machine”? Can Coca Cola sue Pepsi because it depicted a bottle of Coca Cola in its televised “taste test”? Indeed, any advertisement which shows a competitor's product, or any recognizable brand name, would appear to be liable for damages under the majority's view of the applicable law. Under the majority's analysis, even the depiction of an obvious facsimile of a competitor's product may provide sufficient basis for the maintenance of an action for damages.

V. CONCLUSION

The protection of intellectual property presents the courts with the necessity of balancing competing interests. On the one hand, we wish to protect and reward the work and investment of those who create intellectual property. In so doing, however, we must prevent the creation of a monopoly that would inhibit the creative expressions of others. We have traditionally balanced those interests by allowing the copying of an idea, but protecting a unique expression of it. Samsung clearly used the idea of a glamorous female game show hostess. Just as clearly, it avoided appropriating Vanna White's expression of that role. Samsung did not use a likeness of her. The performer depicted in the commercial advertisement is unmistakably a lifeless robot. Vanna White has presented no evidence that any consumer confused the robot with her identity. Indeed, no reasonable consumer could confuse the robot with Vanna White or believe that, because the robot appeared in the advertisement, Vanna White endorsed Samsung's product.

I would affirm the district court's judgment in all respects.

C.A.9 (Cal.),1992.
White v. Samsung Electronics America, Inc.
971 F.2d 1395, 23 U.S.P.Q.2d 1583, 20 Media L. Rep. 1457

Judges and Attorneys (Back to top)

Judges | Attorneys

Judges

Alarcon, Hon. Arthur Lawrence

United States Court of Appeals, Ninth Circuit

San Francisco, California 94103

Goodwin, Hon. Alfred Theodore

United States Court of Appeals, Ninth Circuit

Pasadena, California 91105

Litigation History Report | Judicial Reversal Report | Judicial Expert Challenge Report | Profiler

Lew, Hon. Ronald S. W.

United States District Court, Central California

Los Angeles, California 90012-4701

Litigation History Report | Judicial Motion Report | Judicial Reversal Report | Judicial Expert Challenge Report | Profiler

Pregerson, Hon. Harry

United States Court of Appeals, Ninth Circuit

San Francisco, California 94103

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Attorneys

Attorneys for Plaintiff

Genga, John M.

Los Angeles, California 91403

Greenberg, Blaine Eric

Los Angeles, California 90067