Trademark Law and Practice

Universal City Studios, Inc. v. Nintendo Co.

United States District Court for the Southern District of New York, 1983

Facts:

Plaintiff Universal made multiple movies featuring King Kong, a gorilla character in the public domain. Defendant Nintendo then developed a video game called "Donkey Kong," also about a gorilla on a building, albeit a construction site rather than a skyscraper. The gorilla had been referred to as "King Kong" internally but officially was only referred to as "Donkey Kong," which was intended to mean "goofy gorilla" but was translated imperfectly. The game's cabinet had defendant's licensing displayed prominently upon it.

Issue:

Does "Donkey Kong" infringe on Universal's trademark rights to "King Kong"?

Defendant's Arguments:

  • Plaintiff's past suits over the mark give collateral estoppal effect.

  • Plaintiff's claimed grounds to ownership do not convey the trademark.

  • King Kong lacks secondary meaning and is thus an invalid trademark.

Reasoning:

  • Plaintiff had previously successfully sued RKO, another film production company. RKO counterclaimed that plaintiff was infringing on its King Kong trademark, but there is not evidence that this was intended to be claim preclusive.

  • Plaintiff claims to have purchased the trademark rights in the abstract, yet this is impossible. Trademarks only exist in connection with a product and thus can only be transferred along with the product that they are connected to. This never happened, so plaintiff could not have purchased the trademark.

  • Plaintiff's mark also lacks secondary meaning.

    • The secondary meaning has to tell consumers that the trademarked product comes from a single source. The rights to King Kong are split between four companies, and plaintiff only has the rights to one of three movie iterations of the character. Even plaintiff does not know where the boundaries between their rights are. Something defined primarily by its differences from other versions of its character cannot achieve the consistency of representation needed to obtain a secondary meaning. If businesses cannot figure out the rights, casual consumers cannot be expected to identify a single source for all King Kong products. No reasonable trier of fact could find that secondary meaning exists.
    • There are also numerous third-party commercial uses of the King Kong name. This would not justify an infringement of the name, but it would have harmed attempts to gain a secondary meaning by making it harder for consumers to distinguish a single source.
  • Furthermore, even if plaintiff had an enforceable trademark, they would also have to show that it had a likelihood of confusion with Donkey Kong. Donkey Kong is a comical, childlike gorilla that is holding Pauline at the top of a construction site while he tossing object at Mario and teasing him. King Kong is a ferocious gorilla seeking a beautiful woman he appears to be in love with but violent destroys everything around him in doing so before his own tragic, violent demise. The themes are completely different. At best, Donkey Kong may be a parody of King Kong, but that would not be infringement.

    The fact that some people were confused by the name is not enough to show likelihood of confusion on its own. Since comparison of the works did not reveal a fair jury issue concerning likelihood of confusion, one cannot arise from some such a survey result.

    Evaluating it with the Polaroid factors reveals the same result. Plaintiff's mark is not distinctive and has a dissimilar concept and feel. While there is proximity in their businesses and a chance of bridging the gap and a survey that attested to confusion, there is no evidence of actual confusion, despite Donkey Kong's great popularity. Nintendo's product is of high quality, and it seems like Nintendo did not seek to take advantage of King Kong's popularity. Finally, Nintendo has the stronger mark itself. In light of almost every factor suggesting confusion to be unlikely, no reasonable jury could find otherwise.

  • Universal also signed licensing agreements with several other developers making the games for home use. Uncontrolled licensing of a mark results in abandonment of the mark, but plaintiff maintains that the agreements were not licenses, merely covenants not to sue. Regardless of what they are called, allowing the distribution of millions of Donkey Kong products to consumers indicates that plaintiff did not believe that Donkey Kong would be confused with King Kong, reinforcing this holding.

  • In regards to plaintiff's trademark dilution claim, trademark dilution requires a trademark of "truly distinctive quality" or that has "acquired a secondary meaning in the mind of the public." It seems that the statute only protects extremely strong marks. Plaintiff also must show sufficient similarity between the marks to show that the allegedly infringing mark is likely to blur plaintiff's mark and make it lose its distinctiveness. Because plaintiff's mark has not acquired distinctiveness, it cannot qualify for the statute. Also, there is no triable issue as to whether Donkey Kong blurs plaintiff's purported King Kong mark.

Holding:

No, Donkey Kong does not infringe on Universal's trademark rights to "King Kong." Dismissed.

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