Read Universal City Studios, Inc. v. Nintendo Co. on pp. 295-297 Answer the questions at the end of the case.

Universal City Studios, Inc. v. Nintendo Co.,746 F.2d 112 (2nd Cir. 1984)

This is a case concerning trademark infringement brought by Universal, who owned the rights to the name and char-acter of King Kong, against Nintendo, who produced the famous game Donkey Kong. Universal claimed that Donkey Kong infringed on the name and character of King Kong. After comparing and inspecting both the Donkey Kong game and the King Kong movies, the trial court found that the differences between the two were great and that Donkey Kong was clearly a parody of King Kong. The trial court found that there was no likelihood of consumer confusion between the two and therefore granted summary judgment. The appellate court agreed. The following is an excerpt from the appellate court's opinion.

Opinion

Background

Nintendo Co., and its wholly owned subsidiary Ninten-do of America, has engaged in the design, manufacture, importation, and sale of the extraordinarily successful video game known as "Donkey Kong." Nintendo has re-alized over $180 million from the sale of approximately 60,000 video arcade machines in the United States and Canada. Donkey Kong requires the player to maneuver a computerized man named Mario up a set of girders, ladders and elevators to save a blond pigtailed woman from the clutches of a malevolent, yet humorous gorilla, while simultaneously avoiding a series of objects such as barrels and fireballs hurled at him by the impish ape.

Universal, a giant in the entertainment industry, maintains that it owns the trademark in the name, character and story of "King Kong."

Universal filed its complaint against Nintendo in 1982, approximately nine months after Nintendo began marketing Donkey Kong. Universal alleged that the Donkey Kong name, character and story constituted false designation of origin in violation of 15 U.S.C. 1125(a) because Nintendo's "actions falsely suggest to the public that its product originates with or is authorized, sponsored or approved by the owner of the King Kong name, character and story." Universal also asserted claims based upon common law unfair competition, trademark and trade name principles.

After extensive discovery, Nintendo moved for summary judgment. The motion was granted by the district court. Specially, the court held that any trade-mark that Universal purported to own could not be the basis of a successful action under the Lanham Act be-cause it lacked "secondary meaning" as a matter of law; even if Universal's trademark had secondary meaning, there was no question of fact as to whether consumers were likely to confuse Donkey Kong and King Kong; and the common law trademark, trade name and unfair competition claims should be dismissed. This appeal followed.

Discussion

We turn first to what Universal labels the "main" is-sue, whether the district court's decision that Universal failed to raise a question of fact as to the likelihood of consumer confusion concerning the origin of Donkey Kong was erroneous.

It is well settled that the crucial issue in an action for trademark infringement or unfair competition 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.

Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity be-tween the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilitiesthe court may have to take still other variables into account.

The district court conducted a visual inspection of both the Donkey Kong game and the King Kong movies and stated that the differences between them were "great." It found the Donkey Kong game "comical" and the Donkey Kong gorilla character "farcical, childlike and nonsexual." In contrast, the court described the King Kong character and story as "a ferocious gorilla in quest of a beautiful woman." The court summarized that "Donkey Kong creates a totally different concept and feel from the drama of King Kong" and that "at best, Donkey Kong is a parody of King Kong." Indeed, the fact that Donkey Kong so obviously parodies the King Kong theme strongly contributes to the dispelling confusion on the part of the consumers.

We agree with the district court that the two characters and stories are so different that no question of fact was presented on the likelihood of consumer confusion. The two properties have nothing in common but a gorilla, a captive woman, a male rescuer and a building scenario. Universal has not introduced any evidence indicating actual consumer confusion. Where, as here, the two properties are so different, Universal's claim cannot stand without some indication of actual confusion or a "survey of consumer attitudes under actual market conditions."

Universal argues that the district court's analysis ignored its "primary" contention, "whether Donkey Kong is confusingly similar to the name King Kong." It maintains that it has presented evidence which raises questions of fact on the likelihood of confusion regard-ing the two names. After reviewing this evidence, we are satisfied that no question of fact exists and thus the decision below should be affirmed.

Universal points to the similarity of the two names, claiming that the use of the word "Kong" raises a question of fact on the likelihood of confusion. We disagree. In order to determine if confusion is likely, each trademark must be compared in its entirety; juxtaposing fragments of each mark does not demonstrate whether the marks as a whole are confusingly similar. The "Kong" and "King Kong" names are widely used by the general public and are associated with apes and other objects of enormous proportions. Nintendo's use of the prefix "Donkey" has no similarity in meaning or sound with the word "King." When taken as a whole, we find as a matter of law that "Donkey Kong" does not evoke or suggest the name of King Kong.

In sum, we find that Universal failed to raise a question of fact whether there was any likelihood that an appreciable number of prudent purchasers are likely to be misled or confused as to the source of Don-key Kong. Consequently, the district court properly granted summary judgment to Nintendo on Universal's Lanham Act claim.

The district court also correctly dismissed the common law claims because, as discussed above, Universal failed to raise a question of fact on the likelihood of confusion.

The judgment of the district court is affirmed.

Case Analysis

1.Who are the parties to this case?

2.What type of business organization is each party? How do you know? 2. Why did Universal sue Nintendo?

3.3. How did the court distinguish "King Kong" from "Donkey Kong"?