WILLIAMS ELECTRONICS, INC. v. ARTIC INTERNATIONAL, INC.,
Appellant
No. 81-2407
UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT
685 F.2d 870; 1982 U.S. App. LEXIS 16903; 215 U.S.P.Q.
(BNA) 405; Copy. L. Rep. (CCH) P25,432; 66 A.L.R. Fed. 476
May 25, 1982, Argued
August 2, 1982
OPINION OF THE COURT
SLOVITER, Circuit Judge.
Defendant Artic International, Inc. appeals from the district court's entry
of a final injunction order permanently restraining and enjoining it from
infringing plaintiff's copyrights on audiovisual works and a computer program
relating to the electronic video game DEFENDER. The district court severed
plaintiff's demand for injunctive relief from its demand for monetary damages,
and further severed plaintiff's claims of copyright infringement from its claims
of trademark infringement and unfair competition. App. at 210a. These latter
claims have not yet been adjudicated. However, because the injunction [**2]
granted by the district court goes to the merits of the dispute and has
"serious, perhaps irreparable, consequences", the order can be considered a
"routine interlocutory injunctive order" and appealable under 28 U.S.C. § 1292
(a) (1). See Shirey v. Bensalem Township, 663 F.2d 472, 476-77 & n.3 (3d Cir.
1981); Tokarcik v. Forest Hills School District, 665 F.2d 443, 446-47 (3d Cir.
1981). n1
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n1 The district court also made the requisite finding under Fed. R. Civ. P.
54(b) that there is no just reason for delay and expressly directed the entry of
a final judgment as to the demand for injunctive relief as to copyright
infringement. App. at 210a. Because we have jurisdiction under § 1292(a) (1), we
need not decide whether the Rule 54(b) determination sufficed to provide
jurisdiction under § 1291. See Shirey v. Bensalem Township, 663 F.2d at 476 n.3.
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Plaintiff-appellee Williams Electronics, Inc. manufactures and sells
coin-operated electronic [**3] video games. A video game machine [*872]
consists of a cabinet containing, inter alia, a cathode ray tube (CRT), a sound
system, hand controls for the player, and electronic circuit boards. The
electronic circuitry includes a microprocessor and memory devices, called ROMs
(R ead O nly M emory), which are tiny computer "chips" containing thousands of
data locations which store the instructions and data of a computer program. The
microprocessor executes the computer program to cause the game to operate. Judge
Newman of the Second Circuit described a similar type of memory device as
follows: "The [ROM] stores the instructions and data from a computer program in
such a way that when electric current passes through the circuitry, the
interaction of the program stored in the [ROM] with the other components of the
game produces the sights and sounds of the audiovisual display that the player
sees then hears. The memory devices determine not only the appearance and
movement of the [game] images but also the variations in movement in response to
the player's operation of the hand controls." Stern Electronics, Inc. v. Kaufman
, 669 F.2d 852, 854 (2d Cir. 1982). [**4]
In approximately October 1979 Williams began to design a new video game,
ultimately called DEFENDER, which incorporated various original and unique
audiovisual features. The DEFENDER game was introduced to the industry at a
trade show in 1980 and has since achieved great success in the marketplace. One
of the attractions of video games contributing to their phenomenal popularity is
apparently their use of unrealistic fantasy creatures, a fad also observed in
the popularity of certain current films. In the DEFENDER game, there are
symbols of a spaceship and aliens who do battle with symbols of human figures.
The player operates the flight of and weapons on the spaceship, and has the
mission of preventing invading aliens from kidnapping the humans from a ground
plane.
Williams obtained three copyright registrations relating to its DEFENDER
game: one covering the computer program, Registration No. TX 654-755, effective
date December 11, 1980; the second covering the audio-visual effects displayed
during the game's "attract mode", n2 Registration No. PA 97-373, effective date
March 3, 1981; and the third covering the audiovisual effects displayed during
the game's "play mode", n3 Registration [**5] No. PA 94-718, effective date
March 11, 1981. Readily visible copyright notices for the DEFENDER game were
placed on the game cabinet, appeared on the CRT screen during the attract mode
and at the beginning of the play mode, and were placed on labels which were
attached to the outer case of each memory device (ROM). In addition, the
Williams program provided that the words "Copyright 1980 -- Williams Electronics
" in code were to be stored in the memory devices, but were not to be displayed
on the CRT at any time.
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n2 The "attract mode" refers to the audiovisual effects displayed before a
coin is inserted into the game. It repeatedly shows the name of the game, the
game symbols in typical motion and interaction patterns, and the initials of
previous players who have achieved high scores.
N3 The "play mode" refers to the audiovisual effects displayed during the
actual play of the game, when the game symbols move and interact on the screen,
and the player controls the movement of one of the symbols (e.g., a spaceship).
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Defendant-appellant Artic International, Inc. is a seller of electronic
components for video games in competition with Williams. The district court made
the following relevant findings which are not disputed on this appeal. Artic
has sold circuit boards, manufactured by others, which contain electronic
circuits including a microprocessor and memory devices (ROMs). These memory
devices incorporate a computer program which is virtually identical to Williams'
program for its DEFENDER game. The result is a circuit board "kit" which is sold
by Artic to others and which, when connected to a cathode ray tube, produces
audiovisual effects and a game almost identical to the Williams DEFENDER game
including both the attract mode and the play mode. The play mode and actual play
of Artic's game, entitled "DEFENSE COMMAND", is virtually [*873] identical to
that of the Williams game, i.e., the characters displayed on the cathode ray
tube including the player's spaceship are identical in shape, size, color,
manner of movement and interaction with other symbols. Also, the attract mode of
the Artic game is substantially identical to that of Williams' game, with minor
exceptions such as the [**7] absence of the Williams name and the substitution
of the terms "DEFENSE" and/or "DEFENSE COMMAND" for the term "DEFENDER" in its
display. App. at 204a-206a. Based on the evidence before it, the district court
found that the defendant Artic had infringed the plaintiff's computer program
copyright for the DEFENDER game by selling kits which contain a computer program
which is a copy of plaintiff's computer program, and that the defendant had
infringed both of the plaintiff's audiovisual copyrights for the DEFENDER game
by selling copies of those audiovisual works. App. at 207a-209a.
In the appeal before us, defendant does not dispute the findings with respect
to copying but instead challenges the conclusions of the district court with
respect to copyright infringement and the validity and scope of plaintiff's
copyrights. The recent market interest in electronic audiovisual games has
created an active market for original work, and as frequently happens, has also
spawned copies, many of which have been the subject of a flurry of recent
opinions. See, e.g., Atari, Inc. v. North American Philips Consumer Electronics
Corp., 672 F.2d 607 (7th Cir. 1982); Stern Electronics, Inc. v. Kaufman, 669
F.2d 852 (2d Cir. 1982); [**8] Midway Manufacturing Co. v. Omni Video Games,
Inc., 668 F.2d 70 (1st Cir. 1981); Midway Manufacturing Co. v. Artic
International, Inc., No. 80 C 5863 (N.D. Ill. March 10, 1982); Atari, Inc. v.
Amusement World, Inc., No. Y-81-803 (D. Md. Nov. 27, 1981); Midway Manufacturing
Co. v. Dirkschneider, 543 F. Supp. 466 (D. Neb. 1981); in Re Certain
Coin-Operated Audiovisual Games and Components Thereof (viz, Pac-Man and Rally-X
), No. 337-TA-105 (International Trade Commission July 1, 1982); In Re
Coin-Operated Audio-Visual Games and Components Thereof, No. 337-TA-87
(International Trade Commission June 25, 1981).
In the case before us, the parties agreed at the district court level that
the only issues to be decided on the injunction were legal ones. App. at 199a.
Essentially, defendant Artic attacks the validity and the scope of the
copyrights which it has been found by the district court to have infringed.
Plaintiff possesses certificates of registration issued by the Copyright Office.
Under the Copyright Act, these certificates constitute [**9] prima facie
evidence of the validity of plaintiff's copyright. 17 U.S.C. § 410(c).
Defendant, therefore, has the burden of overcoming this presumption of validity.
See Flick-Reedy Corp. v. Hydro-Line Manufacturing Co., 351 F.2d 546, 549 (7th
Cir. 1965), cert. denied, 383 U.S. 958, 86 S. Ct. 1222, 16 L. Ed. 2d 301 (1966).
With respect to the plaintiff's two audiovisual copyrights, defendant
contends that there can be no copyright protection for the DEFENDER game's
attract mode and play mode because these works fail to meet the statutory
requirement of "fixation." Section 102 of the 1976 Copyright Act, 17 U.S.C. §
102, provides in part:
(a) Copyright protection subsists . . . in 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. Works of authorship include the following categories:
(1) literary works;
. [**10] . . .
(6) motion pictures and other audiovisual works;
. . . .
(emphasis added). The fixation requirement is defined in section 101 in relevant
part as follows:
A work is "fixed" in a tangible medium of expression when its
embodiment in a copy or phonorecord, by or under the authority of the
author, is sufficiently [*874] permanent or stable to permit it to
be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration.
Defendant claims that the images in the plaintiff's audiovisual game are
transient, and cannot be "fixed," because the video game generates or creates
"new" images each time the attract mode or play mode is displayed,
notwithstanding the fact that the new images are identical or substantially
identical to the earlier ones.
We reject this contention. The fixation requirement is met whenever the work
is "sufficiently permanent or stable to permit it to be . . . reproduced, or
otherwise communicated" for more than a transitory period. Here the original
audiovisual features of the Defender game repeat themselves over and over. The
identical contention was previously made by this defendant and rejected [**11]
by the court in Midway Manufacturing Co. v. Artic International, Inc., supra,
slip op. at 16-18. Moreover, the rejection of a similar contention by the Second
Circuit is also applicable here. The court stated:
The [video game's] display satisfies the statutory definition of an
original "audiovisual work," and the memory devices of the game
satisfy the statutory requirement of a "copy" in which the work is
"fixed." The Act defines "copies" as "material objects . . . in which
a work is fixed by any method now known or later developed, and from
which the work can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device"
and specifies that a work is "fixed" when "its embodiment in a copy .
. . is sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than
transitory duration." 17 U.S.C. App. § 101 (1976). The audiovisual
work is permanently embodied in a material object, the memory devices,
from which it can be perceived with the [**12] aid of the other
components of the game.
Stern Electronics, Inc. v. Kaufman, 669 F.2d at 855-56 (footnote omitted;
emphasis added). See also Midway Manufacturing Co. v. Dirkschneider, supra, slip
op. at 13-14; Atari, Inc. v. Amusement World, Inc., supra.
Defendant also apparently contends that the player's participation withdraws
the game's audiovisual work from copyright eligibility because there is no set
or fixed performance and the player becomes a co-author of what appears on the
screen. Although there is player interaction with the machine during the play
mode which causes the audiovisual presentation to change in some respects from
one game to the next in response to the player's varying participation, there is
always a repetitive sequence of a substantial portion of the sights and sounds
of the game, and many aspects of the display remain constant from game to game
regardless of how the player operates the controls. See Stern Electronics, Inc.
v. Kaufman, 669 F.2d at 855-56. Furthermore, there is no player participation
[**13] in the attract mode which is displayed repetitively without change.
Defendant argues that there can be no copyright protection for the ROMs
because they are utilitarian objects or machine parts. Defendant's argument in
this regard is misdirected. The issue in this case is not whether plaintiff, if
it sought, could protect the ROM itself under the copyright laws. Rather, before
us is only the plaintiff's effort to protect its artistic expression in original
works which have met the statutory fixation requirement through their embodiment
in the ROM devices. Defendant Artic's challenge to the validity of a copyright
based upon this "utilitarian object" argument was recently raised by Artic and
rejected by the district court in Midway Manufacturing Co. v. Artic
International, Inc., supra, slip op. at 19-20. In granting a preliminary
injunction against Artic's infringement of audiovisual copyrights on similar
electronic video games, Judge Decker stated:
[*875] Artic initially claims that Midway's attempt to copyright the
audiovisual aspects of its games was, in reality, an attempt to
copyright the ROMs in the games. Because the ROMs are utilitarian
objects, they may [**14] not be copyrighted. . . . While the court
agrees that utilitarian objects may not be copyrighted, it appears
that Artic has misconstrued the copyrights at issue in this case. As
noted above, Midway has sought and obtained protection for the
audiovisual aspects of its games that appear on the screen. Midway no
more restricts the use of ROMs than an author with a valid copyright
restricts the use of books.
Id. at 19 (citation omitted).
Defendant also claims that plaintiff failed to comply with the statutory
deposit requirement that copies of the works as published be filed with the
Copyright Office, 17 U.S.C. § 408, because plaintiff apparently deposited
videotapes of the DEFENDER game's attract and play modes instead of depositing
the ROM circuit board or the video game machine itself. However, section 408(c)
(1) of the statute provides that the Register of Copyrights is authorized "to
specify by regulation . . . the nature of the copies or phonorecords to be
deposited" [**15] and also "may require or permit, for particular classes, the
deposit of identifying material instead of copies." The plaintiff Williams has
substantially complied with these regulations. See 37 C.F.R. § 202.20(c) (2)
(1981). The deposit of videotapes as a satisfactory method of complying with the
statutory deposit requirement has been universally accepted in cases considering
copyrights for the audiovisual works displayed in these video games. See, e.g.,
Midway Manufacturing Co. v. Artic International, Inc., supra, slip op. at 6-8,
13-15; Atari, Inc. v. Amusement World, Inc., supra. See also Stern Electronics,
Inc. v. Kaufman, 669 F.2d at 854; Midway Manufacturing Co. v. Drikschneider,
supra, slip op. at 15.
In the cases previously decided dealing with video games, the courts
considered only the copyrights secured in audiovisual works; counsel have
represented that this is the first case dealing with copyrighted computer
programs in the video game context. Defendant has conceded both in the district
court and before us that a computer program can be the subject [**16] of a
copyright as a literary text. See 1 Nimmer on Copyright § 2.04[C] (1981), cited
with approval in Stern Electronics, Inc. v. Kaufman, 669 F.2d at 855 n.3. The
parties have differed over whether such copyright protection was first extended
by the 1980 amendments to the 1976 Copyright Act, Act of Dec. 12, 1980, Pub. L.
No. 96-517, § 10, 94 Stat. 3028, which explicitly refers to computer programs in
revised sections 101 and 117, or whether the programs had already been covered
under the 1976 Copyright Act as suggested by the legislative history n4 and the
1978 report of the congressionally created National Commission on New
Technological Uses of Copyrighted Works (CONTU). n5 Since the copyright-ability
of computer programs is firmly established after the 1980 amendment to the
Copyright Act, and the infringement in this case took place after the effective
date of that Act, we need not consider the scope of prior Acts for purposes of
affirming the injunction order.
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n4 The House Report on the 1976 Act contains the following statement:
The term "literary works" does not connote any criterion of literary
merit or qualitative value: it includes catalogs, directories, and
similar factual, reference, or instructional works and compilations of
data. It also includes computer data bases and computer programs to
the extent that they incorporate authorship in the programmer's
expression of original ideas, as distinguished from the ideas
themselves.
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 54 (1976) (emphasis added). See also
S. Rep. No. 94-473, 94th Cong., 1st Sess. 50-51 (1975). [**17]
n5 The CONTU Report states that "it was clearly the intent of Congress to
include computer programs within the scope of copyrightable subject matter in
the Act of 1976." National Commission on New Technological Uses of Copyrighted
Works, Final Report 16 (1978). See also Boorstyn, Copyright Law § 2.21 (1981).
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[*876] Defendant contends that the computer program would be infringed only
if an unauthorized copy of the program text was made. Since Artic does not make
the boards but buys them from others, it argues Artic cannot be an infringer.
Brief for Appellant at 19. We believe defendant is not free to make that
argument at this phase of the litigation. The district court made a finding that
"The kits sold by defendant Artic International, Inc. contain a computer
program which is a copy of plaintiff's computer program for its video game
DEFENDER and which is the subject of copyright registration TX 654-755." App. at
209a (emphasis added). Indeed the extent of the copying could reasonably lead to
no other conclusion. n6 The parties stipulated and agreed "that there was no
dispute [**18] of fact concerning the plaintiff's copyright claim and that the
matters in dispute were solely issues of law." App. at 199a. Whether and by whom
an unauthorized copy of the computer program text was made or whether the
copying was effected by copying the ROM are issues of fact which, by agreement,
are not before us now. Since defendant has stated at oral argument that there is
no dispute that the printed circuit board which it sold contained programs which
have been copied from the plaintiff, we must sustain the district court's order
unless it can be challenged on some basis other than who is responsible for the
copying or how the copying was effected.
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n6 There is overwhelming evidence in the present case that the Williams
computer program has been copied in some form. The following facts, among
others, manifest the similarities between the Williams program and that stored
in the Artic memory devices:
(1) The game created by the Artic circuit boards contains an error
which was present in early versions of the Williams computer program
-- it displays the wrong score value for destroying a particular alien
symbol;
(2) The attract mode of both games displays a listing of high scores
achieved by previous players alongside their initials, and Artic's
game contains the initials of Williams employees, including its
president, who initially achieved the highest scores on the DEFENDER
game;
(3) Using a laboratory developmental device, Williams' employees
printed out a listing in code of the contents of the memory devices of
both games. In excess of 85% of the listings are identical;
(4) The Williams program provided that the words "Copyright 1980 --
Williams Electronics" in code were to be stored in its memory devices,
but were not to be displayed on the CRT at any time, thus providing a
"buried" or hidden copyright notice. When the contents of Artic's
memory devices were printed out by Williams' employees, the listings
contained the "buried" Williams copyright notice in code.
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Defendant argues that the basic question presented is whether the ROMs, which
it views as part of a machine, can be considered a "copy" of a copyrighted work
within the meaning of the Copyright Act. Defendant argues that a copyright for a
computer program is not infringed when the program is loaded into electronic
memory devices (ROMs) and used to control the activity of machines. That use, it
claims, is a utilitarian one not within the scope of the Copyright Act. We have
already rejected defendant's similar argument in the context of the copyrights
for the audiovisual works. Defendant makes the further point that when the issue
is the copyright on a computer program, a distinction must be drawn between the
"source code" version of a computer program, which it would hold can be afforded
copyright protection, and the "object code" stage, which it contends cannot be
so protected. n7 Its theory is that a "copy" [*877] must be intelligible to
human beings and must be intended as a medium of communication to human beings.
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n7 According to the Final Report of the National Commission on New
Technological Uses of Copyrighted Works.
A source code is a computer program written in any of several
programming languages employed by computer programmers. An object code
is the version of a program in which the source code language is
converted or translated into the machine language of the computer with
which it is to be used.
Id. at 21 n.109 (majority report). A somewhat different explanation of these
terms is provided in Commissioner Hersey's dissent to the CONTU Report:
All computer programs go through various stages of development. . .
.
. . . .
The stages of development