January 20, 1995. The court has read the moving and responding papers and heard the oral argument of counsel. For the reasons set forth below, the court denies in part and grants in part Interactive's motion for summary judgment.
In the early 1980s Defendant and Counterclaimant NTN Communications, Inc. ("NTN") developed "QB1," an interactive game played in conjunction with televised football games, which was first used in sports bars and restaurants. In 1990 Plaintiff and Counterdefendant Interactive began selling, under license from NTN, a version of QB1 to subscribers of its home interactive television system. In 1993 Interactive developed its own interactive football game called "IN The Huddle," which is to be used in homes on Interactive's system.
On June 11, 1993, Interactive filed a suit in this court seeking a declaration that IN The Huddle does not infringe NTN's intellectual property rights in QB1. Interactive filed a first amended complaint on August 4, 1993 which NTN answered on September 15, 1993. After Interactive first offered its subscribers IN The Huddle in place of QB1 on September 30, 1993, NTN filed a counterclaim against Interactive alleging copyright infringement and federal and state trademark, trade dress, and unfair competition claims.
On January 6, 1994, Interactive obtained a new, temporary sublicense to offer QB1 to its subscribers through March 31, 1995 and thereafter removed IN The Huddle from the market. Following this, NTN moved this court to dismiss Interactive's complaint as moot because Interactive allegedly agreed not to use IN The Huddle until April 1995, and not in conjunction with NFL broadcasts, for which NTN holds an exclusive license. On April 26, 1994, this court held that Interactive's claims were not moot as to its use of IN The Huddle with non-NFL games, such as college and Canadian Football League games. Interactive admits that it intends to again offer IN The Huddle starting sometime in 1995.
On June 9, 1994, Interactive filed its second amended complaint, which alleges that Interactive has a "real and reasonable apprehension that it will be sued by NTN for infringement of copyrights, trademarks, trade dress, and related rights" although it alleges that it does not and will not infringe on such rights. (Pl.'s Second Am. Compl., PP 11, 13.) NTN answered the second amended complaint on July 15, 1994, while amending its own counterclaim. The amended counterclaim alleges that Interactive's past use and present threatened use of IN The Huddle constitute (1) false designation of origin, false descriptions and representations, and unfair competition, pursuant to 15 U.S.C. section 1125(a), (2) trade dress infringement causing confusion among the public, pursuant to 15 U.S.C. section 1125(a), (3) unfair and fraudulent business practices, unfair competition, and trademark and service mark infringement, pursuant to the common law and California Business and Professions Code sections 17200 et seq. and 17500 et seq., (4) intentional interference with prospective economic advantage, and (5) copying and incorporating substantial and distinctive elements of QB1 in violation of copyright and trade dress rights. Interactive replied to the amended counterclaim on August 1, 1994.
On December 9, 1994, Interactive brought the present motion for summary judgment of noninfringement.
II. LEGAL STANDARDS
The purpose of summary judgment is to avoid a trial when there is no genuine factual issue and the moving party is entitled to judgment as a matter of law. Bloom v. General Truck Drivers, Office, Food & Warehouse Union, 783 F.2d 1356, 1358 (9th Cir. 1986). Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). There is a "genuine" issue of material fact only when there is sufficient evidence such that a reasonable juror could find for the party opposing the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Entry of summary judgment is mandated against a party if, after adequate time for discovery and upon motion, the party fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The court, however, must draw all justifiable inferences in favor of the nonmoving parties, including questions of credibility and of the weight to be accorded particular evidence. Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 520, 115 L. Ed. 2d 447, 111 S. Ct. 2419 (1991). The court will consider the motion now before it with these standards in mind.
Interactive argues that it is entitled to summary judgment on its declaratory action and on NTN's counterclaims because the intellectual property laws do not protect the ideas and functional elements underlying QB1. Specifically, Interactive argues that (1) copyright law does not protect the QB1 game format because game ideas and rules are functional concepts to be left in the public domain, (2) the Lanham Act's trade dress and unfair competition protection do not cover QB1's game format and rules because these features are functional, (3) California unfair competition law cannot be used to protect features not protected by federal copyright or patent law, and (4) intentional interference with prospective economic advantage does not apply because Interactive's conduct of copying unprotectible features constitutes bona fide competition.
NTN responds that genuine issues of material fact exist to preclude summary judgment. Specifically, NTN alleges that factual issues exist as to whether (1) QB1 contains nonfunctional elements which are copyrightable expression, (2) IN The Huddle copies nonfunctional elements of QB1's trade dress leading to a likelihood of consumer confusion, and (3) Interactive violates unpreempted state unfair competition laws.
A. Copyright Infringement
The claimed protection of QB1 fits best under the Copyright Act's protection of "audiovisual works," 17 U.S.C. § 102(a)(6), which has been held to cover the display of images from video games. See generally Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.18[H][2)[b] (1994). However, section 102(b) provides in part that "in no case does copyright protection for an original work of authorship extend to any idea . . . regardless of the form in which it is described, explained, illustrated, or embodied in such work." Instead, copyright law protects only an author's expression of an idea. Mazer v. Stein, 347 U.S. 201, 217-18, 98 L. Ed. 630, 74 S. Ct. 460 (1954).
In the absence of evidence of literal copying, a party can prove non-literal infringement by showing access to the copyrighted work along with "substantial similarity." Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir. 1988). Under the Ninth Circuit's two-step analysis of substantial similarity, the party claiming infringement must meet an "extrinsic" test to determine whether the ideas found in the two works are substantially similar and an "intrinsic" test to compare forms of expression. Id. at 208 (citing Sid & Marty Krofft Television Products, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164). Certain similarities are excluded from the comparison. Under the "merger doctrine," when an idea and a particular expression of that idea are so inseparable that protecting the expression would necessarily confer a monopoly on the idea because only a limited number of ways exist to express the idea, the court will not find substantial similarity absent virtually identical copying. Id. (citing Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (finding merger of idea and expression in jeweled bee pin)). Another concept, the "scenes a faire" doctrine, denies copyright protection to elements of expression that are "as a practical matter, indispensable or at least standard in the treatment of a given [idea]." Id. (quoting Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 616 (7th Cir.), cert. denied, 459 U.S. 880, 74 L. Ed. 2d 145, 103 S. Ct. 176 (1982)). In the recent Ninth Circuit decision in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir.), pet. for cert. filed, 63 U.S.L.W. 3518 (1994), the court limited copyright protection by holding that copyright does not protect the purely utilitarian or functional aspects of Apple's graphical user interface because those aspects are constrained by such limitations as the hardware, ergonomics, and issues of "user friendliness." Id. at 1444.
Generally, summary judgment is not favored on the issue of substantial similarity in copyright cases. Frybarger v. International Business Machines Corp., 812 F.2d 525, 528 (9th Cir. 1987). Nevertheless, summary judgment is appropriate on the issue of substantial similarity if no reasonable jury could find that the works are substantially similar in protectible expression. Id.; Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991). Because the burden of proof in an infringement case is on the party claiming infringement (NTN), summary judgment of noninfringement for the alleged infringer (Interactive) must be granted unless NTN can demonstrate a genuine issue of material fact as to whether a reasonable jury could conclude that the two works are substantially similar in both ideas and expression. Frybarger, 812 F.2d at 528-29. Summary judgment is particularly appropriate where the idea and expression are inseparable or where analytic dissection determines that all similarities arise from standard elements derived from a common idea. See Pasillas, 927 F.2d at 443; Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987).
Interactive seeks a summary judgment of noninfringement on the ground that those elements of QB1 that IN The Huddle allegedly copies are unprotected ideas and functional features rather than copyrightable expression. NTN responds that IN The Huddle does more than just copy the idea or the necessary functional elements of an interactive football game. NTN asserts that Interactive copied the unique elements and distinctive arrangement constituting QB1's expression, such as: the three-level play prediction structure; the scoring system, including the "Game Breaker" feature, the "consecutive bonus" feature, and the 100--10 point scoring system; the layout and arrangement of the graphical user interface; and various other nonfunctional features, such as the broadcast of an expert's score and statistical information and the use of a particular opening animation sequence. (Def.'s Statement of Disputed Facts, PP 1-5, 12.) NTN additionally contends that Interactive copied the format of NTN's real-time data feed, which is used to transfer coded information regarding play outcomes. (Id., P 13.) NTN disputes Interactive's contention that the copied elements are "inherent in, inseparable from, or constrained by the idea of an interactive football game." (Def.'s Opp'n Br. at 20.) Instead, NTN claims that QB1 represents but one possible way to design such a game, with a distinctive play prediction structure and an arbitrary scoring system. (Id.)
Interactive cites Data East for the proposition that even detailed functional similarities do not constitute copyright infringement. In Data East, the court found unprotectible many elements of a karate video game which it held "necessarily follow from the idea of a martial arts karate combat game, or are inseparable from, indispensable to, or even standard treatment of the idea of the karate sport." 862 F.2d at 209. Among the unprotectible elements common to both games were such features as "fourteen moves," "changing background scenes," "30-second countdown rounds," "a provision for 100 bonus points per remaining second," a referee who says "'begin,' 'stop,' 'white,' 'red,' which is depicted by a cartoon-style speech balloon," and various karate moves. Id. To support its position, NTN cites Sheehan v. MTV Networks, 1992 U.S. Dist. LEXIS 3028, 22 U.S.P.Q.2d 1394, 1396 (S.D.N.Y. 1992), which finds protectible elements that, though individually are mostly stock, are selected, organized, and presented in an original fashion.
A preliminary question for the court is whether QB1 contains protectible expression. Although Interactive implies in its briefs that summary judgment is warranted because QB1's idea of an interactive football game is unprotectible, the court notes that even if the additional elements of QB1 are standard, QB1 is entitled to at least some copyright protection for its original combination of elements. See Sheehan, 22 U.S.P.Q.2d at 1396.
The remaining question in this case is whether IN The Huddle can be found, as a matter of law, not to infringe on QB1's protectible elements. Because ownership and access are not disputed by Interactive in this motion, the critical issue is substantial similarity. The court may decide this issue on summary judgment if no reasonable jury could find that, after excluding all unprotectible elements of QB1, the remaining elements are substantially similar to those in IN The Huddle.
Under the extrinsic test, the court finds that the idea of both games are substantially similar, namely that of a live, play-along, interactive game to test one's ability to make multi-staged predictions regarding plays in a football game where one is rewarded with points corresponding to the difficulty and accuracy of the prediction made.
The similarity of ideas between the two games requires the court to apply the intrinsic test. Here, the trier of fact must determine if the "total concept and feel" of the expressive elements of both works are substantially similar. However, where the court finds similarities only in those elements that are not protectible, summary judgment of noninfringement is appropriate. Frybarger, 812 F.2d at 530.
Initially, the court finds that several of the claimed similarities between QB1 and IN The Huddle involve elements covered under the Herbert Rosenthal Jewelry doctrine of idea/expression merger. Although NTN cites several alternatives to the three-level prediction scheme employed by both QB1 and IN The Huddle, the court finds that, given the concept of a predictive football game, there are only a limited number of ways of organizing play predictions. The range of possible predictions is somewhat limited by the nature of the sport of football. NTN cannot, therefore, use its particular three-tiered scheme to monopolize the idea of a predictive football game. Additionally, under the "scenes a faire" doctrine, the court must also ignore similarities in expression arising from features that are "as a practical matter indispensable, or at least standard, in the treatment of a given [idea]." Id. Certain aspects of the scoring in QB1 are common among video games, and perhaps are inherent in any interactive, predictive game. Video games, as well as other genres such as quiz shows, commonly award points for successful actions by the player and subtract points for mistaken actions. Likewise, it is inherent in the nature of a predictive game that more points be awarded for successful actions that are statistically less likely to occur.
Nevertheless, the court cannot say, as a matter of law, that the remaining similarities in the format and scoring systems of QB1 and IN The Huddle are not substantially similar. For example, the court is not convinced that the particular point values assigned to various correct and incorrect predictions are not somewhat arbitrary, such as QB1's 100--10 point scheme for a correctly or incorrectly predicted pass, which IN The Huddle copies exactly. It does not appear that these numbers are necessitated by such unprotectible facts as the statistical likelihood of such plays. While probabilities derived from actual NFL statistical data could justify similarities in the relative scores awarded for various correct predictions, the evidence does not establish that those elements of QB1 that IN The Huddle copies are confined to such unprotectible elements. Such elements as the "consecutive bonus" and the "clutch pick" bonus do not necessarily derive from the idea of an interactive football game.
The claim of noninfringement in this case is not as compelling as in Data East. Certainly, IN The Huddle cannot be found to infringe on the basis of copying such elements as predictions of running and passing, to the left, middle, or right, and deep, short, or back, which are inherent in the sport of football. However, compared to the similarities between the competing karate video games in Data East, 862 F.2d at 209, which included various karate moves, the similarities between QB1 and IN The Huddle involve elements that are not as standard and not as fundamentally related to the nature of the underlying sport. Because the present case involves two games which a reasonable jury could find contain substantial similarities among protectible elements, the court finds that summary judgment of noninfringement is inappropriate on such protectible elements of QB1 as the scoring system, including the "consecutive" and "clutch pick" bonuses.
Infringement of "Newly Claimed" Features
NTN additionally alleges that Interactive has infringed various other nonfunctional features of QB1, such as the opening animation sequence, the screen displays, and the format of the real-time data feed. As to the claim of infringement of the data feed format, NTN argues that IN The Huddle needlessly copies the arbitrary ordering and structure of the data fields, which it contends are protected under Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994) (finding computer input formats copyrightable).
Interactive argues that these claims are not pleaded and are made here for the first time. Alternatively, Interactive argues that NTN cannot sue based on the data feed document without first producing a copyright registration. Interactive further argues that it should win on the merits because there is no expert testimony that QB1's and IN The Huddle's data feed formats are substantially similar.
The court finds that NTN's amended counterclaim's fifth claim for relief includes allegations of copyright infringement. (Def.'s Am. Countercl. at 13-14.) Although not mentioned specifically in the pleadings, allegations of infringement of QB1's data feed format are not new absent a showing by Interactive that NTN's copyright claims were limited to copying of the format and rules of QB1. Further, the court finds that QB1's data feed structure consists of protectible subject matter. See Engineering Dynamics, 26 F.3d at 1340-48.
NTN directs the court to two portions of computer source code it alleges are substantially similar. (Compare Weiner Decl., Ex. W, at INC000079-80 with Weiner Decl., Ex. V, at INC000156-57.) The court, however, is unable to find any similarities in protectible expression in the short portions of the two programs claimed to be substantially similar. NTN has not offered any expert evidence regarding substantial similarities. Instead, NTN cites testimony by several Interactive employees regarding similarities. However, this testimony refers to similarities between NTN's data feed and Interactive's version of QB1, not IN The Huddle. Therefore, the court finds that, as a matter of law, there is no substantial similarity between the data feed structures of the two works. Accordingly, summary judgment of noninfringement is granted as to this element of QB1.
As to any claim that IN The Huddle infringes QB1's graphical user interface, screen displays, and opening animation, the court finds that, as a matter of law, Interactive has not infringed NTN's copyright because Interactive, not NTN, is the author of these features. See infra part III.B.
B. Lanham Act
Although certain features are not protected by copyright, they may nonetheless be entitled to protection under the Lanham Act. Section 43(a) of the Lanham Act provides, in pertinent part, that
any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, character, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.