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