Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 1 of 24
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§§
`
`§§
`
`§ CIVIL ACTION NO. H-13-3415
`§
`
`§§
`
`§
`
`DaVINCI EDITRICE S.R.L.,
`
`Plaintiff,
`
`VS.
`
`ZIKO GAMES, LLC, et al.,
`
`Defendants.
`
`MEMORANDUM AND OPINION
`
` I.
`
`Introduction
`
` Human creativity takes many forms. Devising games for people to play, including card
`
`games, is one of them. Card games have been with us for centuries.1 Despite the recent seeming
`
`dominance of electronic games with virtually present players, games using actual cards and
`
`physically present players endure, and new games continue to appear. As with many forms of
`
`creativity, new games lead to disputes over who is entitled to exploit them. This case is one of those
`
`disputes.
`
`The plaintiff, DaVinci Editrice S.R.L. (“DaVinci”), alleges that the defendants, ZiKo Games,
`
`LLC (“ZiKo”) and Yoka Games (“Yoka”), infringed the copyright DaVinci holds in a card game
`
`called Bang!. The parties ask this judge—not known for expertise or experience in playing cards
`
`1 Playing cards have been in use since as early as the 9th century in Imperial China. See W.H.
`WILKINSON, CHINESE ORIGIN OF PLAYING CARDS, A8 AMERICAN ANTHROPOLOGIST 61, 64 (2009). Card games
`are popular throughout the world for both recreation and gambling. Russell, Morgan and Company, which
`eventually became the United States Playing Card Company, the largest producer and distributor of playing
`cards in the United States, began manufacturing playing cards in 1881. TOM DAWSON & JUDY DAWSON, THE
`HOCHMAN ENCYCLOPEDIA OF AMERICAN PLAYING CARDS (U.S. Game Systems Inc., 2000). Role-playing
`card games developed in the late 20th century and have grown in popularity. There are currently 21 role-
`playing card games available for purchase on Amazon.com.
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 2 of 24
`
`—to decide whether the plaintiff’s copyright in its role-playing game, with characters and themes
`
`from “spaghetti Westerns,” is infringed by the defendants’ role-playing card game, which uses
`
`essentially the same rules, methods of play, and roles but substitutes characters and themes from
`
`ancient China. DaVinci sued Yoka and its United States distributor, ZiKo, alleging violations of the
`
`Copyright Act of 1976 and of Texas unfair competition law. DaVinci alleges that the defendants’
`
`game, Legends of the Three Kingdoms (“LOTK”), improperly copied protected features of its game,
`
`Bang!.
`
`The defendants have moved to dismiss DaVinci’s complaint for failure to state a claim on
`
`which relief can be granted. (Docket Entry No. 25). DaVinci has responded, and Yoka and ZiKo
`
`have replied. (Docket Entry Nos. 30, 34). DaVinci has moved for a preliminary injunction under
`
`Federal Rule of Civil Procedure 65 and 17 U.S.C § 502, enjoining Yoka and ZiKo’s sale of their
`
`allegedly infringing game, LOTK. (Docket Entry No. 2). Yoka and ZiKo have responded, and
`
`DaVinci has replied. (Docket Entry Nos. 26, 29).
`
`Based on the pleadings, the motions and responses, the parties’ submissions, and the
`
`applicable law, this court grants in part and denies in part Yoka and ZiKo’s motion to dismiss and
`
`denies DaVinci’s motion for preliminary injunction. A status and scheduling conference on the
`
`remaining claims is set for September 5, 2014, at 5:00 p.m. in Courtroom 11-B.
`
`The reasons for these rulings are explained in detail below.
`
`II.
`
`Background
`
`A.
`
`DaVinci and Bang!
`
`DaVinci is an Italian company formed in 2001. (Complaint, Docket Entry No. 1, ¶¶ 2, 11).
`
`On July 10, 2002, DaVinci published a role-playing card game featuring Wild-West themes, called
`
`2
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 3 of 24
`
`Bang!. (Id. ¶ 12, 13). The game achieved praise from critics and commercial success. It won the
`
`Origins Award for “Best Traditional Card Game of 2003” and “Best Graphic Design of a Card Game
`
`or Expansion of 2003.” (Id. ¶ 14). DaVinci has sold over 670,000 copies of Bang!, including an
`
`estimated 176,000 copies in the United States. (Id. ¶ 19).
`
`Describing the game in the form of an opinion overstates its complexities. Players in Bang!
`
`each take on a character identity within one of four roles: “Sheriff,” “Deputy,” “Outlaw,” or
`
`“Renegade.” Each role has a different objective in the game. The Sheriff tries to stay alive until the
`
`Outlaws and the Renegade are killed. The Deputies try to protect the Sheriff. The Outlaws’ goal
`
`is to kill the Sheriff, though they can earn rewards for killing each other as well. The Renegade’s
`
`goal is to be the last player alive. Each player draws a card that assigns a role. The Sheriff reveals
`
`his role at the outset; the other players keep their assigned roles secret. The number of players in
`
`each role depends on the number of people playing the game. (Id. ¶¶ 20–26).
`
`Each player is also dealt a character card. The character cards have pictures and names based
`
`on familiar Wild-West figures, such as “Calamity Janet” and “Willy the Kid.” Each character has
`
`an assigned set of capabilities and a maximum number of “life points.” The back of each character
`
`card shows bullets to represent the life points. The maximum number of life points or bullets any
`
`player can have is five. Life points determine whether a player remains active as the game
`
`progresses. When one player uses a weapon card and “hits” another player, the attacked player loses
`
`a life point. When a player is out of life points, that player is eliminated from the game. To keep
`
`track of how many life points a player has remaining, each player uses an unselected character card
`
`turned face down, which causes the pictures of the bullets to be face-up. The player then moves his
`
`character card (which is face-up to show the character’s identity) over the picture of the bullets so
`
`3
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 4 of 24
`
`that only the player’s number of bullets shows. The number of bullets a player has left also
`
`determines how many cards the player may hold in his hand. For example, if a player has only two
`
`bullets remaining, he may only hold two cards in his hand. If he holds more than two cards in his
`
`hand, he must discard cards until he holds only two. (Id. ¶¶ 27–28, 30–31; Corbelli Decl., Docket
`
`Entry No. 3-1, ¶ 32).
`
`Players sit around a table. The distance between players at the table impacts the game.
`
`(Compl. ¶ 32). Different weapons have different ranges at which they can be used to attack other
`
`players. (Id. ¶ 77). The Sheriff plays first. The game proceeds counterclockwise around the table,
`
`with each player drawing two cards, playing as many cards as desired, and discarding if that player
`
`finishes the turn with more cards than life points remaining. (Id. ¶ 42).
`
`There are three types of playing, or action, cards. Brown-bordered action cards are played
`
`and immediately discarded. Blue-bordered “mount” cards are a type of action card that increases
`
`the distance between players for the purpose of launching or avoiding attack. A mount card is laid
`
`face up in front of the player and has lasting effect, which means that the player holding the card can
`
`take advantage of whatever characteristic the card grants for repeated turns. (Corbelli Decl. ¶¶ 37,
`
`39). For example, playing the “Cavallo” (“Horse”) card permanently increases the distance that
`
`other players need to hit the player holding the card. (Id. ¶ 40). Blue-bordered “weapon” cards are
`
`laid face up in front of the player and remain until replaced with another weapon card.2 (Compl. ¶
`
`43). The brown-bordered action cards include “Bang!” (which are played to reduce another
`
`player’s bullets), “Mancato!” (“Missed!”) (which is played in response to a “Bang!” card to avoid
`
`2 The term “action card” encompasses mount cards and weapon cards as well.
`
`4
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 5 of 24
`
`losing a bullet), and “Birra” (“Beer”) (which a player can use to avoid elimination). (Id. ¶¶ 40–41,
`
`44, 50; Oleksiuk Decl., Docket Entry No. 25-3, ¶¶ 20–22). The brown-bordered cards fit the Italian
`
`Wild-West motif, with labels such as “Saloon,” “Diligenza” (“Stagecoach”), “Wells Fargo,”
`
`“Mistress,” “Indiani!” (“Injuns!”), and “Duello” (“Duel”). Each card calls for a specific action the
`
`player must perform, such as discarding a Bang! card, revealing cards in a player’s hand, or passing
`
`a card to another player. (Compl. ¶ 45; Oleksiuk Decl. ¶¶ 26, 29, 28, 31).
`
`Blue-bordered mount cards also have western themes, including “Jail,” “Dynamite,”
`
`“Barrel,” “Horse,” and “Appaloosa.” These cards increase or reduce the distance between the
`
`players, which in turn determines whether an attack with a given weapon will succeed. (Compl. ¶¶
`
`47–49). The weapon cards also evoke the Wild West, with Colt .45 as the default and others such
`
`as Remington, Schofield, Rev. Carabine, or Winchester. (Id. ¶¶ 34, 40).
`
`The game ends when playing the action cards leads to either the Sheriff being killed, so that
`
`either the Renegade or the Outlaws win, or the Outlaws and the Renegade being killed, so that the
`
`Sheriff and his Deputies win. (Id. ¶ 56).
`
`Bang! is now in its third edition and a fourth is about to issue. The first three are registered
`
`with the United States Copyright Office and DaVinci has submitted the fourth edition registration
`
`application, fee, and the material proposed for copyright to the Register of Copyrights. (Id. ¶ 17).3
`
`3 The first edition is registered under Registration Number VA 1-864-967. The second and third
`editions are registered with Registration Numbers VA 1-880-069 and VA 1-879-895, respectively.
`
`5
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 6 of 24
`
`B.
`
`Yoka, ZiKo, and Legend of the Three Kingdoms
`
`Yoka, based in the People’s Republic of China, sells the “ancient Chinese” themed role-
`
`playing card game Legend of the Three Kingdoms (LOTK). (Id. ¶¶ 4, 57). Yoka sells and distributes
`
`LOTK in the United States through its Texas-based distributor ZiKo. (Id. ¶ 59). Due to the relative
`
`recency of Yoka’s entry into the U.S. market, there is no historical data available for U.S. sales of
`
`LOTK. (Docket Entries No. 3 at 22–23, 26 at 19).
`
`The parties agree that Bang! and LOTK have nearly identical rules for playing the game. The
`
`setting, artwork, and written instructions are substantially different. LOTK is “re-set in ancient
`
`China instead of the wild-west.” (Compl. ¶ 62). The “ancient Chinese” themed roles in LOTK (the
`
`Monarch, Minister, Rebel, and Turncoat) “fulfill the same role[s]” as the Sheriff, Deputy, Outlaw,
`
`and Renegade in Bang!. (Id. ¶ 63). “The winning conditions are the same” in both games. (Id. ¶
`
`64). “Only the Monarch’s identity is known to the other players.” (Id. ¶ 65). The procedure for
`
`distributing Ministers, Rebels, and Turncoats follows “the same manner as in Bang! based on the
`
`number of players.” (Id. ¶ 66). In both games, “each player is dealt a character identity . . . which
`
`provides a specific ability and determines the number of life points for the player.” (Id. ¶ 67). “As
`
`in [the Sheriff in] Bang!, the Monarch starts the game with one more life point than shown on his
`
`character card.” (Id. ¶ 68.) Life points are displayed on cards in both games, id. ¶ 69, but instead
`
`of showing them as bullets, LOTK shows the life points as glowing, yin-yang shaped symbols. Both
`
`games show the life points on cards, but Bang! places them on the back of character cards, while
`
`LOTK has separate life-point cards. (Oleksiuk Decl. ¶ 50).
`
`LOTK features “Hero cards,” equivalent to Bang!’s character cards. LOTK heroes “Lu Bu,
`
`Zhao Yun, Ma Chao, Zhou Yu, Zhang Fei, Zhang Liao, and Huang Gai” . . . “have the same abilities
`
`6
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 7 of 24
`
`[game functions] as the Bang! characters Slab the Killer, Calamity Janet, Rose Doolan, Pixie Pete,
`
`Willy the Kid, Jesse Jones, and Chuck Wengam.” (Compl. ¶ 70.) LOTK expresses these same
`
`characters but uses names and characters evocative of ancient China. These seven characters have
`
`the same or similar capabilities and the same number of life points in both games. (Id.).
`
`Action cards in LOTK are alleged to “operate” the same ways as the action cards in Bang!,
`
`using words and artwork reflecting ancient China rather than the Wild West. “Strike cards operate
`
`the same way as a Bang! card. Peach cards operate the same way as Beer [Birra] cards. Dodge!
`
`cards operate identically to Missed! [Mancato!] cards.” (Id. ¶ 74.) “Basic cards operate the same
`
`way as Bang!’s brown bordered cards. Scroll cards operate as the blue bordered cards. Equipment
`
`and Weapon cards in operate the same way as the Weapon cards in Bang!.” (Id. ¶ 75.)
`
`DaVinci included with its brief in support of its preliminary injunction application a chart
`
`identifying 64 similarities between the two games. (Docket Entry No. 3-7). ZiKo and Yoka
`
`responded with a chart of dissimilarities. (Oleksiuk Decl. ¶ 51).
`
`These alleged similarities fall into four general categories: 1) the overall concept and
`
`physical layout of the games; 2) the roles and winning conditions of each role; 3) characters and
`
`their abilities; and 4) rules of play.
`
`Both Bang! and LOTK are turn-based card games in which most of the players have hidden
`
`roles. Both games have identical mechanisms and rules for one player to attack other players or
`
`defend against attack. Each successful attack reduces a player’s life points. The physical positions
`
`of the players around a table is the same. The “Monarch,” “Minister,” “Rebel,” and “Turncoat”
`
`roles from LOTK correspond to the Sheriff, Deputy, Outlaw, and Renegade roles of Bang!. These
`
`roles are functionally identical and subject to the same rules. As the names reflect, the LOTK roles
`
`7
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 8 of 24
`
`are named to invoke ancient Chinese figures; the Bang! roles are named to invoke the Wild West.
`
`
`
`The rules of play are nearly identical. Both games use action cards, which are laid face up
`
`in front of the players and have a lasting effect. Both games also use mount cards, a type of action
`
`card that increases the distance between players for the purposes of launching and avoiding attack.
`
`Weapon cards are the third form of action card common to both games. Weapon cards allow players
`
`to attack one another at a specified range based on the type of weapon. Both games use action cards
`
`the same way.
`
`C.
`
`Procedural Background
`
`In November 2013, DaVinci filed the complaint and application for a preliminary injunction
`
`preventing the continued sale and offering for sale of LOTK. (Docket Entry Nos. 1, 2). Yoka and
`
`ZiKo moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6) and opposed
`
`the preliminary injunction, arguing that DaVinci has not copied elements of Bang! that are
`
`protectable by copyright, and that the unfair competition claim is preempted by federal law. (Docket
`
`Entry No. 25). The parties have extensively briefed the issues and have submitted the games to
`
`permit a side-by-side comparison. This court heard oral argument on the motions.
`
`The critical issues for both the motion to dismiss and the application for a preliminary
`
`injunction is whether the undisputed extensive similarities between Bang! and LOTK are in elements
`
`that qualify as protected expression under federal copyright law, and whether the similarities are
`
`sufficient to state a claim for infringement and state-law unfair competition and to support a
`
`preliminary injunction. The arguments and responses are analyzed below.
`
` III. The Motion to Dismiss
`
`8
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 9 of 24
`
`A.
`
`The Legal Standard for a Motion to Dismiss
`
`Rule 12(b)(6) allows dismissal if a plaintiff fails “to state a claim upon which relief can be
`
`granted.” Fed. R. Civ. P. 12(b) (6). In Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007), and
`
`Ashcroft v. Iqbal, 556 U.S. 662 (2009), the Supreme Court confirmed that Rule 12(b)(6) must be
`
`read in conjunction with Rule 8(a), which requires “a short and plain statement of the claim showing
`
`that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). To withstand a Rule 12(b)(6) motion,
`
`a complaint must contain “enough facts to state a claim to relief that is plausible on its face.”
`
`Twombly, 550 U.S. at 570; see also Elsensohn v. St. Tammany Parish Sheriff’s Office, 530 F.3d 368,
`
`372 (5th Cir.2008). The Supreme Court explained that “the pleading standard Rule 8 announces
`
`does not require ‘detailed factual allegations,’ but it demands more than an unadorned,
`
`the-defendant-unlawfully-harmed-me accusation.” Iqbal, 556 U.S. at 678.
`
`“[I]n deciding a motion to dismiss for failure to state a claim, courts must limit their inquiry
`
`to the facts stated in the complaint and the documents either attached to or incorporated in the
`
`complaint.” Lovelace v. Software Spectrum Inc., 78 F.3d 1015, 1017 (5th Cir.1996). “[C]ourts may
`
`also consider matters of which they may take judicial notice.” Id. at 1017–18. A court may,
`
`however, “consider documents integral to and explicitly relied on in the complaint, that the
`
`defendant appends to his motion to dismiss, as well as the full text of documents that are partially
`
`quoted or referred to in the complaint.” In re Sec. Litig. BMC Software, Inc., 183 F. Supp. 2d 860,
`
`882 (S.D. Tex. 2001) (internal quotation omitted). The court may consider such extrinsic materials
`
`as matters of public record without converting the motion into one seeking summary judgment. In
`
`addressing a motion to dismiss in copyright cases, the court routinely considers the parties’ charts
`
`and other descriptions of what a side-by-side comparison of the two works reveals.
`
`9
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 10 of 24
`
`B.
`
`The Copyright Infringement Claim
`
`Section 102(a) of the Copyright Act provides copyright protection to “original works of
`
`authorship fixed in any tangible medium of expression, now known or later developed, from which
`
`they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a
`
`machine or device.” 17 U.S.C. § 102. Section 102(b) explicitly limits this protection: “In no case
`
`does copyright protection for an original work of authorship extend to any idea, procedure, process,
`
`system, method of operation, concept, principle, or discovery, regardless of the form in which it is
`
`described, explained, illustrated, or embodied in such work.” Id.
`
`“To prove copyright infringement a party must show that ‘(1) he owns a valid copyright and
`
`(2) the defendant copied constituent elements of the plaintiff’s work that are original.’” Baisden v.
`
`I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012) (quoting Positive Black Talk Inc. v. Cash
`
`Money Records, Inc., 394 F.3d 357, 367 (5th Cir. 2004)). “In judicial proceedings, a certificate of
`
`copyright registration constitutes prima facie evidence of copyrightability and shifts the burden to
`
`the defendant to demonstrate why the copyright is not valid.” Bibbero Sys., Inc. v. Colwell Sys.,
`
`Inc., 893 F.2d 1104, 1106 (9th Cir.1990). “[A] side-by-side comparison must be made between the
`
`original and the copy to determine whether a layman would view the two works as ‘substantially
`
`similar.’” Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004) (citation omitted).
`
`“[N]ot all copying is legally actionable. To support a claim for copyright infringement, the copy
`
`must bear a substantial similarity to the protected aspects of the original.” Peel & Co. v. The Rug
`
`Market, 238 F.3d 391, 398 (5th Cir. 2001). This involves a determination of whether there are
`
`articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence
`
`of events in the two works. The court must “determine the scope of copyright protection before
`
`10
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 11 of 24
`
`works are considered ‘as a whole.’” Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443
`
`(9th Cir. 1994) (citing Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475–76 (9th Cir.
`
`1992)).
`
`Copyright law does not protect an idea. Only “the expression of an idea” is protected.
`
`Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996). A party claiming infringement may place
`
`“‘no reliance upon any similarity in expression resulting from’ unprotectable elements.” Apple
`
`Computer, 35 F.3d at 1446 (quoting Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987)).
`
`C.
`
`Protected Expression
`
`1.
`
`The Parties’ Contentions
`
`It is undisputed that DaVinci has a valid copyright in Bang!. Yoka and ZiKo argue that the
`
`elements in Bang! that later appeared in LOTK are not, as DaVinci claims, protectable. Yoka and
`
`ZiKo argue that while the two games have virtually identical or substantially similar elements, the
`
`challenged elements are either systems, methods, and procedures that are not given copyright
`
`protection, or are not substantially similar. “DaVinci cannot state a claim of copyright infringement
`
`because the allegedly copied elements are either inherent in the idea of a role-playing card game,
`
`a method of operation or game play, and/or a part of the game idea and rule[s] of Bang! not
`
`protectable under the Copyright Act. Moreover, Bang! and LOTK have substantial qualitative
`
`differences in expression—the mood, settings, characters, artwork are fundamentally different. The
`
`claim should be dismissed.” (Docket Entry No. 25 at 21).
`
`DaVinci responds that it has alleged substantial similarities between protectable elements
`
`of Bang! and corresponding features of LOTK, that the defendants have “captured the ‘total concept
`
`and feel’” of Bang!, and that the court should conduct the analysis based on a “combined
`
`11
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 12 of 24
`
`consideration of protected elements, not any single element in isolation.” (Docket Entry No. 30 at
`
`5 (citing Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1167 (9th
`
`Cir. 1977)).
`
`2.
`
`The Case Law on Protectable Elements in Games
`
`Historically, the rules of games have not been protected by copyright. See, e.g., Whist Club
`
`v. Foster, 42 F.2d 782, 782 (S.D.N.Y. 1929) (“In the conventional laws or rules of a game, as
`
`distinguished from the forms or modes of expression in which they may be state[d], there can be no
`
`literary property susceptible of copyright.”). “[G]ame mechanics and the rules are not entitled to
`
`protection, but courts have found expressive elements copyrightable, including game labels, design
`
`of game boards, playing cards and graphical works.” Tetris Holding, LLC v. Xio Interactive, Inc.,
`
`863 F. Supp. 2d 394, 404 (D. N.J. 2012) (citations omitted); see also Durham Indus., Inc. v. Tomy
`
`Corp., 630 F.2d 905, 913 (2d Cir. 1980) (“copyright protection extends only to the artistic aspects,
`
`but not the mechanical or utilitarian features, of a protected work.”).
`
`This general rule is consistent with the decision in Baker v. Selden, 101 U.S. 99 (1879), in
`
`which the Supreme Court ruled that a particular system of bookkeeping was not copyrightable. The
`
`language and illustrations that the plaintiff had used to explain his system were copyrightable, but
`
`they did not protect the system itself from use by other parties. Id. at 103. Selden held that a
`
`system’s method of operation is not protectable by copyright. The Copyright Office apparently
`
`applied this view to game rules. The December 2011 fact sheet for Copyright Registration of Games
`
`states:
`
`Copyright does not protect the idea for a game, its name or title, or
`the method or methods for playing it. Nor does copyright protect any
`idea, system, method, device, or trademark material involved in
`
`12
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 13 of 24
`
`developing, merchandising, or playing a game. Once a game has
`been made public, nothing in the copyright law prevents others from
`developing another game based on similar principles. Copyright
`protects only the particular manner of an author’s expression in
`literary, artistic, or musical form.
`
`U.S. COPYRIGHT OFFICE, FL-108, COPYRIGHT REGISTRATION OF GAMES (2011).
`
`The defendants have cited several cases involving board games and card games to support
`
`their assertion that game rules and game mechanics are not entitled to copyright protection. In
`
`Chamberlain v. Uris Sales Corporation, 56 F. Supp. 987 (S.D.N.Y. 1944), the court held that the
`
`plaintiff could not rely on copyright protection for the rules of the game “Acy-Ducy,” a four-player
`
`variation of backgammon. The court found that the plaintiff’s material lacked the originality
`
`necessary for copyright protection, noting that “it is very doubtful if rules of a game can, in any
`
`event, be copyrightable subject matter.” Id. at 988 (citations omitted). In Freedman v. Grolier
`
`Enteprises, Inc., 1973 WL 19914 (S.D.N.Y. June 30, 1973), the court held that “[t]he placing of
`
`single numeral point count values beneath the suit symbols on honor cards in bridge decks [was] not
`
`copyrightable.” Id. at *2. The court noted that “[w]hen an idea is so restrictive that it necessarily
`
`requires a particular form of expression, that is, when the idea and its expression are functionally
`
`inseparable, to permit the copyrighting of the expression would be to grant the copyright owner a
`
`monopoly of the idea.” Id. at *3. Courts have ruled that the limited opportunity for expression
`
`significantly curtails the scope of copyrightable material in traditional card games. See Russell v.
`
`Ne. Publ’g Co., 7 F. Supp. 571, 572 (D. Mass. 1934) (“[A] complainant can acquire no exclusive
`
`rights in the particular distribution of the fifty-two cards, in the problem of play or the principles of
`
`contract bridge applicable to its solution. The most that can be claimed is protection against the
`
`copying of the language used in presenting the problem.”). But these constraints are much less
`
`13
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 14 of 24
`
`apparent in newer forms of card games not subject to the limits of a 52-card deck. More recent cases
`
`involving newer forms of card games and electronic games indicate that the protection for game
`
`content in these contexts may be more extensive than the earlier card-game cases suggest.
`
`Yoka and ZiKo rely on Incredible Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d
`
`1007 (7th Cir. 2005), in which the Seventh Circuit held that copying an arcade golf game’s control
`
`panel and instructional guide did not constitute copyright infringement because the copied materials
`
`were functional elements of the allegedly infringed game. Id. at 1015. But the Seventh Circuit has
`
`also held that “sequences” and “arrangements” in games can “provide something ‘new or additional
`
`over the idea’” and are entitled to copyright protection. Atari, Inc. v. N. Am. Philips Consumer
`
`Elecs. Corp., 672 F.2d 607, 617 (7th Cir. 1982) (citing Goodson-Todman Enters., Ltd. v. Kellogg
`
`Co., 513 F.2d 913 (9th Cir. 1975).
`
`Tetris Holding highlights a key problem underlying copyright disputes over games: “almost
`
`all expressive elements of a game are related in some way to the rules and functions of game play.”
`
`863 F. Supp. 2d at 405. That case examined similarities between Tetris, “a facially simple puzzle
`
`game in which the player is tasked with creating complete horizontal lines along the bottom of the
`
`playing field by fitting several types of geometric block pieces (called tetrominos) together,” and
`
`Mino, a Tetris-inspired game that could be described in the same fashion. Id. at 396. The court
`
`found “the dimensions of the playing field, the display of ‘garbage’ lines, the appearance of ‘ghost’
`
`or shadow pieces, the display of the next piece to fall, the change in color of the pieces when they
`
`lock with the accumulated pieces, and the appearance of squares automatically filling in the game
`
`board when the game is over” to be protectable, despite the fact that all these elements were related
`
`to game functionality. Id. at 413. The court emphasized that merely because rules, standing alone,
`
`14
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 15 of 24
`
`are not copyrightable “does not mean, and cannot mean, that any and all expression related to a
`
`game rule or game function is unprotect[a]ble.” Id. at 404–05 (emphasis in original). Yoka and
`
`ZiKo may have infringed DaVinci’s copyright in Bang!, even though the game labels and artistic
`
`features of the playing cards in LOTK are not similar.
`
`3.
`
`Analysis
`
`The case law makes clear that the manner in which DaVinci expresses the rules of Bang! is
`
`protectable. The text of the instructions for playing the game and the text on the cards themselves
`
`are copyrightable. But DaVinci does not allege, and the side-by-side comparison does not reveal,
`
`similarities between the text of the rule instructions and the card content in Bang! and in LOTK. The
`
`rules are not otherwise fixed in a tangible medium of expression. This precludes relief based on
`
`alleged similarities between the rules of play of the two games. The similar uses of life points,
`
`distance between players, action cards, and rewards and punishments do not constitute actionable
`
`copying.
`
`Characters can be protected by copyright, although “stock” characters (stereotypical
`
`archetypes that audiences may readily recognize) are not entitled to protection. See Gaiman v.
`
`McFarlane, 360 F.3d 644, 659–60 (7th Cir. 2004); Rice v. Fox Broad. Co., 330 F.3d 1170, 1176 (9th
`
`Cir. 2003); Cavalier v. Random House, Inc., 297 F.3d 815, 821–22 (9th Cir. 2002) (“[S]tock
`
`characters are not protect[a]ble by ©”); Williams, 84 F.3d at 588; Walker v. Time Life Films, Inc.,
`
`784 F.2d 44, 50 (2d Cir. 1986). Copyright law protects “not only the [character’s] visual
`
`resemblance but also the totality of the character’s attributes and traits.” Warner Bros., Inc. v. Am.
`
`Broad. Cos., 720 F.2d 231, 241 (2d Cir. 1983) (citations omitted). In Nichols v. Universal Pictures
`
`Corporation, 45 F.2d 119, 121 (2d Cir. 1930), Judge Learned Hand offered a useful commentary
`
`15
`
`

`
`Case 4:13-cv-03415 Document 44 Filed in TXSD on 08/08/14 Page 16 of 24
`
`on the extent of copyright protection for characters:
`
`If Twelfth Night were copyrighted, it is quite possible that a second
`comer might so closely imitate Sir Toby Belch or Malvolio as to
`infringe, but it would not be enough that for one of his characters he
`cast as a riotous knight who kept wassail to the discomfort of the
`household, or a vain and foppish steward who became amorous of his
`mistress. These would be no more than Shakespeare’s ‘ideas’ in the
`play, as little capable of monopoly as Einstein’s Doctrine of
`Relativity, or Darwin’s theory of the Origin of Species. It follows
`that the less developed the characters, the less they can be
`copyrighted; that is the penalty an author must bear for marking them
`too indistinctly.
`
`It is undisputed that the corresponding characters in the two games have substantially similar
`
`capabilities. Each character card in both games has a name, picture, and a description of the
`
`character’s capabilities and life points. The defendants allegedly copied these capabilities and life
`
`points, simply changing the names and artwork. The questions are whether these character elements
`
`are protected and whether translating the Bang! characters from a Wild West to an ancient China
`
`theme infringes that protection.
`
`DaVinci alleges infringement because “[LOTK]’s characters Lu Bu, Zhao Yun, Ma Chao,
`
`Zhou Yu, Zhang Fei, Zhang Liao, and Huang Gai have the same capabilities as the Bang! characters
`
`Slab the Killer, Calamity Janet, Rose Doolan, Pixie Pete, Willy the Kid, Jesse Jones, and Chuck
`
`Wengam respectively.” (Corbelli Decl. ¶ 57). Yoka and ZiKo argue that these common capabilities
`
`do not give rise to a copyright claim for two reasons: 1) character capabilities are part of the game’s
`
`rules of play, which are not protected; and 2) the Wild-West-themed artwork on the character cards
`
`in Bang! is very different from the ancient-China-themed artwork on the character ca