746 F.2d 112 (2nd Cir. 1984)
Tanks, soldiers, countless helicopters, and even Godzilla were no match for King Kong, so how did Nintendo manage to stop the giant gorilla?
The arcade game “Donkey Kong” was a quick success for Nintendo. The star of the game is the formidable yet humorous gorilla, who climbs buildings, hurls barrels and fireballs, all the while dragging along a blond damsel whom Mario must attempt to rescue. Gamers may have loved Donkey Kong, but Universal saw far too much resemblance to the 1933 classic film “King Kong,” for which Universal owned trademarks for the name, character, and story. Universal brought suit against Nintendo for trademark infringement under the Lanham Act, and for dilution of a trademark under New York’s anti-dilution act. When Nintendo’s summary judgment motion was granted in Southern District of New York, Universal appealed to the 2nd Circuit Court of Appeals.
The Court of Appeals affirmed the decision of the district court. Even if Universal validly owned the trademark to King Kong, and the mark had acquired the “secondary meaning” required to be the basis of a successful action (issues not yet resolved at trial), the court nonetheless held that Nintendo’s Donkey Kong did not infringe upon the trademark. While there were undoubtedly resemblances between the two, there was no evidence to show that consumers would confuse Donkey Kong and King Kong. Universal introduced as evidence videogame reviews which shows that Donkey Kong’s theme “loosely evoked the film.” However, the Court held that the decisive question in trademark infringement is, “whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question.” Mushroom Markers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2nd Cir. 1978). Thus, even if purchasers are reminded of classic film, the trademark action would not succeed unless they actually thought they were buying a videogame sold by Universal.
Universal sought to show that the names were substantially confusing by conducting a telephone survey of 150 arcade and bowling alley owners who had purchased or leased a Donkey Kong game. 18% of the respondents answered “Yes” when asked, “To the best of your knowledge, was the Donkey Kong game made with the approval or under the authority of the people who produce the King Kong movies?” Universal argued that this survey proved confusion, yet the Court disagreed, reasoning that the question did not prove confusion with the item trademarked. Universal owned the name, character, and story of King Kong, but did not claim ownership rights to the film itself, thus the question was unfair because it did not connect Donkey Kong to the name King Kong. Further, the Court found the question to be unfairly leading, and that Universal’s survey was defective because it surveyed previous buyers instead of potential buyers.
Universal introduced further evidence, a letter from Nintendo stating that there was no connection between Donkey Kong and King Kong, to show that Nintendo implicitly admitted consumer confusion by writing the letter. The Court rejected this argument. Since the letter was written after the commencement of the lawsuit, it was clearly only meant to cut short Nintendo’s legal troubles. Besides, these statements would not be a substitute for actual evidence showing that there was no confusion about Donkey Kong’s source.
The Court also commented that Nintendo’s Donkey Kong paraphernalia, marketed separately from the videogame, had the potential to cause genuine confusion with King Kong. However, this argument was not raised by Universal, and the Court noted that it probably would not have been successful in this case. The videogame itself was the dominant marketing vehicle for any Donkey Kong toys, and these items had the same “total concept and feel” as the videogame. Therefore, the paraphernalia were just as unlikely to be confused as was the Donkey Kong game.
Finally, the Court addressed Universal’s request for an injunction under New York anti-dilution law. The Court used the same rationale to deny the injunction against Donkey Kong. Universal had failed to offer evidence that Donkey Kong had an “adverse effect on King Kong’s reputation” or would “deprive the mark of its distinctiveness.” Therefore, an injunction would be inappropriate, and the summary judgment in favor of Nintendo was affirmed.
Thanks to Brian Brisnehan for his assistance with the preparation of this case summary.