Trademark Law: More Than an "After Thought" in Video Game Anti-Piracy Efforts - Wilson Sonsini
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Trademark Law: More Than
an “After Thought” in Video
Game Anti-Piracy Efforts
CONTRIBUTORS ALERTS
June 15, 2021
Nintendo of America received an eye-popping award of $2.1 million in statutory damages
against game pirate Matthew Storman from the United States District Court for the Central
District of California on May 26, 2021. 1 The court's summary judgment decision was far from
Brian J. Levy surprising given that Storman testified in a deposition that he was "the sole owner of the
website romuniverse.com" and that "he and/or his 'admin' uploaded ROMs of Nintendo's
copyrighted works (the video games)."2 The court found, among other holdings, that Storman
engaged in copyright infringement. More notable, however, is the success of Nintendo's
trademark infringement claim.
Aaron D. Hendelman Game companies often largely rely on copyright claims to go after game pirates. Copyright
protects original artistic or literary works 3 including the code which comprises a video
game, 4 while trademark protects brand names and logos used on goods and services to
identify the source. 5
While trademark claims may overall be less compelling than copyright causes of action in
Christopher A. the fight against game piracy, such claims, at times, have been successful weapons. In Stern
Paniewski Electronics v. Kaufman, the plaintiff sued for, among other things, trademark infringement
when the defendants produced and sold a game called Scramble 2 that was substantially
similar in audiovisual presentation to the plaintiff's Scramble . 6 In Midway Manufacturing Co.
v. Bandai-America, Inc., the plaintiffs claimed trademark infringement, arguing that the
defendants' Galaxian and Packri Monster games infringed on the
plaintiffs' Galaxian and Pac-Man trademarks. 7 And in Midway Manufacturing Co. v.
Dirkschneider, the plaintiff also sued for, among other things, trademark infringement when
Alyssa M. Worsham
the defendants resold imitation versions of the plaintiff's games that bore variations of the
plaintiff's trademarks, such as Galactic Invaders in lieu of the plaintiff's Galaxian. 8 Further
confusion in the marketplace was caused because, "[i]n virtually every detail, the
defendants' games are identical to the plaintiff's."9 The respective courts all ruled in favor of
the plaintiffs on the trademark claims.
Still, some commentators at the time considered the trademark causes of action to be an
"after thought" in pursuing pirates. 10 These courts' opinions also largely suggest as much,
focusing primarily on copyright considerations. 11
Tetris Holding, LLC v. Xio Interactive, Inc. was another noteworthy trademark case in the video
game space. 12 Tetris, a game developer, alleged that its competitor Xio infringed its trade
Copyright © 2021 Wilson Sonsini Goodrich & Rosati. All Rights Reserved.
dress comprised of "the brightly-colored Tetriminos, which are formed by four equally sized,
delineated blocks, and the long vertical rectangle playfield, which is higher than wide."13 In
granting summary judgment to Tetris, the court found Tetris' trade dress to be distinctive and
non-functional, and that Xio's game could potentially confuse consumers.
This lineage brings us back to Storman. The court in Storman granted summary judgment to
Nintendo on all three of its causes of action: copyright infringement, federal trademark
infringement, and unfair competition. The court determined that Storman violated Nintendo's
trademarks based on "Defendant's use of Nintendo's trademarks on Defendant's website to
promote the sale of unauthorized copies of Nintendo's copyrighted games."14 In fact, it
appears that Storman directly profited by charging for premium access to the Nintendo
games he uploaded to his website. 15 He testified that, in 2019, his website generated
between $30,000 and $36,000 in revenue. 16 The court awarded $400,000 in statutory
damages on the trademark claim alone—100% of the amount that Nintendo requested. 17
Storman is a fresh reminder of the potential value of trademark claims in game publishers'
arsenals in the battle against pirates and of the additional damages awards that would not
be available via other causes of action.
For more information, please contact a member of the firm's trademark and copyright
litigation practice. Wilson Sonsini Goodrich & Rosati routinely counsels clients in numerous
fields, including e-commerce, computer software and hardware, gaming, and entertainment
about trademark litigation and brand selection, enforcement, and defense. For more
information about gaming companies generally, please contact any attorney of the
firm's electronic gaming practice.
Han Shen and Brian Levy contributed to the preparation of this alert.
[1] Nintendo of Am., Inc. v. Storman, No. CV 19-7818-CBM-(RAOx), slip op. at 19 (C.D. Cal.
May 26, 2021).
[2] Id. at 3.
[3] 17 U.S.C. § 102.
[4] See Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021) (“We shall assume, but
purely for argument’s sake, that the entire Sun Java API falls within the definition of that
which can be copyrighted.”).
[5] 15 U.S.C. § 1127.
[6] Stern Elecs., Inc. v. Kaufman, 523 F. Supp. 635 (E.D.N.Y. 1981), aff ’d, 669 F.2d 852 (2d Cir.
1982).
[7] Midway Mfg. Co. v. Bandai-America, Inc., 546 F. Supp. 125 (D.N.J. 1982).
[8] Midway Mfg. Co. v. Dirkschneider, 571 F. Supp. 282 (D. Neb. 1983).
[9] Id. at 285.
[10] Thomas M. S. Hemnes, The Adaptation of Copyright Law to Video Games , 131 U. Pa. L.
REV. 171, 220 (1982).
[11] See , e.g., Stern Elecs., 523 F. Supp. at 639–42; Bandai-America , 546 F. Supp. at 155–58;
Dirkschneider, 571 F. Supp. at 286.
[12] Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394 (D.N.J. 2012).
[13] Id. at 415.
[14] Nintendo of Am., slip op. at 13.
Copyright © 2021 Wilson Sonsini Goodrich & Rosati. All Rights Reserved.
[15] Id. at 7.
[6] Id. at 10.
[17] Id. at 14.
Copyright © 2021 Wilson Sonsini Goodrich & Rosati. All Rights Reserved.
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